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UPC CFI 628/2024

Oct 28, 2024·EP2129425 +1 more: EMBOLIC PROTECTION DEVICE

Case details
Status
Case Closed
Action
Infringement
Category
Main Infringement Action
Parties
Claimants
Reps: Thure Schubert (Vossius & Brinkhof UPC Litigators)
Respondents
Reps: Sabine Agé (Hoyng Rokh Monegier)
Division
Munich LD
Judges
Technology
Medical Devices · Implants · Pharmaceutical & Medical
Language
English
First decided
Jan 13, 2026
Claims
At issueall
Not infringedall
Notes: Infringement action dismissed for EP 2 129 425; conditional counterclaim for revocation not decided as condition (infringement finding) not met.
Decisions
  • 2026-01-13
    Not infringedInfringement meritsInfringement Action

    Final decision on the merits in infringement action by Emboline, Inc. against AorticLab srl (EP 2 129 425, medical device). Court dismissed the infringement action finding the patent not infringed. The defendant's counterclaim for revocation was conditional (dependent on a finding of infringement), and since no infringement was found, no decision was made on the counterclaim. Both parties bear their own costs. Key headnotes: infringement not excluded by normal non-infringing operation if patent-compliant use remains possible; irregular use of a medical device in line with professional practice can constitute infringement; conditional counterclaim limited in scope (Rule 263.3 RoP).

    Legal issues:Infringement of medical device patentNormal non-infringing operation not excluding infringementConditional counterclaim for revocation (Rule 263.3 RoP)Intra-procedural condition for counterclaim decisionCosts where no decision on counterclaim (Art. 69(3) UPCA)
Documents
Document titleDatePublic
Other Documents2026-05-11Not public
Receipt2026-05-04Not public
Cover sheet2026-05-04Not public
Application document Claimant2026-05-04Not public
Note2026-02-26Not public
action.communication.general2026-02-23Not public
Decision2026-01-13Public
action.phaseChange.caseClose2026-01-13Not public
action.issueDecision.decision2026-01-13Not public
Decision2026-01-13Not public
Note2025-12-04Not public
action.phaseChange.oralPhaseClose2025-12-04Not public
action.issueOrder.order2025-11-28Not public
Order2025-11-28Not public
Other Documents2025-11-24Not public
action.issueOrder.order2025-11-01Not public
Order2025-11-01Not public
Cover sheet2025-10-13Not public
Other document2025-10-13Not public
Receipt2025-10-13Not public
Cover sheet2025-10-13Not public
Other document2025-10-13Not public
Receipt2025-10-13Not public
Acknowledgement-of-lodging2025-06-17Not public
Exhibit_HRM_222025-06-17Not public
Exhibit_HRM_182025-06-17Not public
Exhibit_HRM_232025-06-17Not public
Exhibit_HRM_192025-06-17Not public
Exhibit_HRM_202025-06-17Not public
2025-06-17_AorticLab Rejoinder to SoC_Reply to CfR_Defence to AAP_(UPC_CFI_628_2024)2025-06-17Not public
Exhibit_HRM_212025-06-17Not public
Acknowledgement-of-lodging2025-04-17Not public
VB192025-04-17Not public
VB172025-04-17Not public
VB162025-04-17Not public
VB222025-04-17Not public
Reply to the Statement of Defense2025-04-17Not public
VB232025-04-17Not public
VB212025-04-17Not public
VB242025-04-17Not public
VB182025-04-17Not public
VB202025-04-17Not public
VB252025-04-17Not public
VB152025-04-17Not public
VB262025-04-17Not public
Headnote-and-Keywords2025-04-16Not public
Outcome of the Order2025-04-16Not public
order security for costs2025-04-16Public
Panel-Appointment2025-04-16Not public
Hearing-Dates2025-04-14Not public
Scheduling2025-04-14Public
Hearing-Dates2025-04-14Not public
Submissions_Sur-reply2025-04-04Not public
Further comments App_8962-20252025-03-28Not public
2025-03-07_AorticLab_Response to Application for a Security for Costs_UPC_CFI_628_2024_signed2025-03-07Not public
Comment on App_8962-20252025-02-24Not public
Receipt2025-02-24Not public
Exhibit VB142025-02-21Not public
Exhibit VB13a2025-02-21Not public
Exhibit VB13b2025-02-21Not public
Application for security2025-02-21Not public
Exhibit VB122025-02-21Not public
Formal-checks_Notification-of-positive-outcome2025-02-18Not public
Acknowledgement-of-lodging2025-02-17Not public
Exhibit HRM_012025-02-17Not public
Exhibit_HRM_102025-02-17Not public
AorticLab Statement of Defence and Counterclaim for Revocation2025-02-17Not public
Exhibit_HRM_15b2025-02-17Not public
Exhibit_HRM_122025-02-17Not public
Exhibit_HRM_142025-02-17Not public
Exhibit_HRM_05a2025-02-17Not public
Exhibit_HRM_132025-02-17Not public
Exhibit_HRM_06b2025-02-17Not public
Exhibit_HRM_06a2025-02-17Not public
Exhibit_HRM_112025-02-17Not public
Exhibit_HRM_042025-02-17Not public
Exhibit_HRM_09b2025-02-17Not public
Exhibit_HRM_16b2025-02-17Not public
Exhibit_HRM_05b2025-02-17Not public
Exhibit_HRM_05c2025-02-17Not public
Exhibit_HRM_16a2025-02-17Not public
Exhibit_HRM_032025-02-17Not public
Exhibit HRM_022025-02-17Not public
Exhibit_HRM_16c2025-02-17Not public
Exhibit_HRM_09a2025-02-17Not public
Exhibit_HRM_082025-02-17Not public
Exhibit_HRM_15a2025-02-17Not public
Exhibit_HRM_072025-02-17Not public
Acknowledgement-of-change-of-a-representative2025-01-24Not public
Application-RoP293-Receipt2025-01-24Not public
Formal-checks_Notification-of-positive-outcome2025-01-24Not public
Application-RoP2932025-01-23Not public
Application to change a representative2025-01-23Not public
Power of Attorney2025-01-23Not public
Notification Of Service2024-12-16Not public
Postal Service2024-12-16Not public
Acknowledgement of access to case2024-12-09Not public
Receipt_physicalExhibit2024-11-29Not public
EB Physical Exhibit2024-11-29Not public
Outcome of the Order2024-11-25Not public
App_62401-20242024-11-25Public
Receipt2024-11-25Not public
Exhibit VB042024-11-22Not public
Confirmation of Receipt2024-11-22Not public
Panel-Appointment2024-11-11Not public
communicationCheck2024-11-06Not public
Document from EPO2024-11-05Not public
Letter-for-Service2024-10-30Not public
Panel-Appointment2024-10-30Not public
EPO-Request-for-case-pending2024-10-30Not public
Receipt2024-10-30Not public
Formal-checks_Notification-of-positive-outcome2024-10-30Not public
Acknowledgement-of-lodging2024-10-28Not public
Exhibit-VB022024-10-28Not public
Statement of Claim2024-10-28Not public
Proof of payment2024-10-28Not public
Exhibit-VB102024-10-28Not public
Exhibit-VB012024-10-28Not public
Exhibit-VB062024-10-28Not public
Exhibit-VB032024-10-28Not public
Exhibit-VB092024-10-28Not public
Exhibit-VB072024-10-28Not public
Exhibit-VB052024-10-28Not public
Exhibit-VB112024-10-28Not public
Exhibit-VB082024-10-28Not public
Plain-English summary

Emboline Inc. sued AorticLab srl for infringement of EP 2 129 425 B1 (an embolic protection device for use during cardiac procedures). The Munich Local Division dismissed the infringement action, finding the accused device is normally operated in a non-infringing mode and no irregular patent-compliant use consistent with professional medical practice was shown; AorticLab's conditional counterclaim (dependent on a finding of infringement) was not decided because the triggering condition did not arise, and both parties bore their own costs.

Accepted arguments
What the court agreed with — by party.

  • AorticLab's embolic protection device does not use the patented teaching of EP 2 129 425 in its normal operation

    RespondentLegal basis: Art. 25 UPCA; claim construction; direct infringement

    Note: Munich Local Division dismissed the infringement action, finding the device is normally operated in a non-infringing manner and that no patent-compliant use consistent with professional medical practice was demonstrated.

  • Conditional counterclaim (dependent on finding of infringement) is procedurally valid and limits the court's scope of decision

    RespondentLegal basis: R. 263.3 RoP; Art. 76(1) UPCA

    Note: Court confirmed that an unconditional-to-conditional transition of a counterclaim constitutes a limitation under R. 263.3 RoP, and that since the condition (infringement finding) did not occur, no decision on the counterclaim was required.

Rejected arguments
What the court did not agree with — and why.

  • AorticLab's device infringes EP 2 129 425 because irregular patent-compliant use by medical professionals constitutes infringement

    ClaimantLegal basis: Art. 25 UPCA; Headnote 1

    Reason: Patent infringement is not excluded merely because normal operation is non-infringing, BUT in the medical device context irregular patent-compliant use only constitutes infringement if in line with professional practice and recognised rules of medical science — claimant failed to demonstrate this.

Key legal principles
Doctrines and rules cited in the reasoning.
Patent infringement not excluded by fact device normally operates non-infringingly, as long as patent-compliant use remains possibleIn medical devices, irregular patent-compliant use constitutes infringement only if consistent with professional practice and recognised medical science rulesConditional counterclaim dependent on intra-procedural event (infringement finding) is procedurally valid and limits court's mandate (R. 263.3 RoP; Art. 76(1) UPCA)If condition for counterclaim decision does not occur, counterclaimant bears costs for counterclaim as unnecessary costs (Art. 69(3) UPCA)Both parties bear their own costs where claimant fails on infringement and counterclaimant's conditional counterclaim is not decided

Browse other cases on this principle.

Claim construction notes

The court addressed the scope of EP 2 129 425 in relation to the AorticLab embolic protection device. The key question was whether an irregular but technically patent-compliant use mode of the device (not its normal operating mode) could constitute infringement. The court held that in the medical device context such use must align with professional practice and recognised medical science — a requirement the claimant failed to satisfy.