1. Key takeaways
Infringement of a medical device requires a potential use to be lege artis. A use that damages the device cannot establish infringement.
The claimant argued for an infringing use that required piercing the device's mesh. The Court held this was not a proper, professional use but an emergency measure, and thus irrelevant for the infringement assessment.
The term "engageable" requires a structure to be specifically configured and designed for its purpose, not merely capable of being used in that way (Art. 69 EPC).
A mere unforeseen possibility of hooking a device, particularly one that causes damage, is insufficient to meet the claim feature, balancing patentee protection with third-party legal certainty for a medical device.
Making a revocation counterclaim conditional on an infringement finding during the oral hearing is an admissible limitation under Rule 263.3 RoP.
In the oral hearing the defendant declared that it would not pursue the originally filed unconditional counterclaim and filed a new counterclaim dependent on the occurrence of an intra-procedural condition (i.e. finding of patent infringement). The Court found no prohibition in the UPCA or RoP, noted familiarity with conditional applications (e.g., Rule 30 RoP), and found no unfair prejudice. Since infringement was denied, the intra-procedural condition failed, and no decision was made on the counterclaim (Art. 76(1) UPCA).
No validity decision when infringement denied; Court constrained by party requests (Art. 76(1) UPCA).
As the condition (infringement) did not occur, the Court declined to decide the counterclaim; deciding otherwise would award more than requested by the defendant.
Both parties bear their own costs: infringement action was unsuccessful; counterclaim for revocation was unnecessary
The claimant was unsuccessful on infringement, and the defendant bears counterclaim costs for the same value; result: both parties bear their own overall costs (Art. 69 (2) UPCA)
Because no decision was made on the counterclaim at the defendant's request, the claimant's counterclaim-related costs were unnecessary; the defendant must bear them (Art. 69 (3) UPCA). Although the defendant was "forced" to file the counterclaim to raise invalidity, its own procedural choice to make it conditional prevented a merits decision, thus making it responsible for the costs it generated.
2. Division
LD Munich
3. UPC number
UPC_CFI_628/2024; UPC_CFI_125/2025
4. Type of proceedings
Main infringement action
5. Parties
Claimant: Emboline, Inc.
Defendant: AorticLab srl
6. Patent(s)
EP 2 129 425
7. Jurisdictions
Germany, Italy, France
8. Body of legislation / Rules
Art. 69 EPC, Art. 69 (2) UPCA; Art. 76 (1) UPCA; R. 30 RoP, R. 263.3 RoP
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
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