UPC_CFI_628/2024

EMBOLIC PROTECTION DEVICE

InfringementMain Infringement ActionMunich LDInfringementCase Closed

Overview Decisions Reasoning Citations Documents Timeline

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 possible In medical devices, irregular patent-compliant use constitutes infringement only if consistent with professional practice and recognised medical science rules Conditional 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

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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.