In a decision of 13 January 2026, the Munich Local Division dismissed an infringement action concerning EP 2 129 425 (“Embolic protection device”). The Court held that the attacked medical device did not implement claim 1 because the allegedly infringing “graspable structure … engageable by a hook” was neither intended nor suitable for retrieval in a medically acceptable manner.
In addition, the Local Division finds that (i) an unconditional transition from an unconditional counterclaim to a dependent counterclaim triggers a limitation within the meaning of Rule 263.3 RoP; and (ii) if the counterclaimant requests that no decision be taken on the counterclaim (because the intra-procedural condition does not occur), the counterclaimant bears the counterclaim costs.
The claimant, Emboline, sued AorticLab for alleged infringement of EP 2 129 425, a patent granted in December 2023 and in force in Germany, France and Italy. The attacked embodiment was AorticLab’s embolic protection device “FLOWer”.
The dispute centred on whether the attacked embodiment included, within the meaning of claim 1, a “pull loop or other graspable structure … engageable by a hook … within a retrieval catheter” and connected to retraction members.
In parallel, the defendant had filed a counterclaim for revocation. However, at the oral hearing it no longer pursued the counterclaim as filed and instead limited it by making the request for a revocation decision dependent on a finding of infringement.
The Court first confirmed a principle that has been recurring in UPC practice: patent infringement is not automatically excluded merely because a device is normally operated in a non-infringing way and customers do not regularly apply the patented teaching. If the patented teaching remains possible when using the device, infringement may still be established.
This part of the reasoning aligns with the objective character of claim features: where a product includes means that allow implementation of the claim, the defendant cannot necessarily avoid infringement by pointing to a different preferred or instructed use.
However, the Court introduced a restriction for medical devices. It held that the possibility of an irregular yet patent-compliant use can only be treated as infringement if such use is in line with professional practice and the recognised rules of medical science.
This was not framed as a mere evidentiary point about how frequently physicians would use the feature, but as a normative filter: in the medical context, claim implementation by an abnormal, unsafe or non-standard “emergency manoeuvre” should not count as a legally relevant infringing use.
In this regard the Court was not convinced that the attacked embodiment was “engageable by a hook” within the meaning of claim 1 as construed. The claimant relied on a V-shaped section as a graspable structure.
However:
Against that background, the Court concluded there was no basis to assume that hook retrieval constituted a method lege artis, i.e. performed professionally and according to current medical standards. The “mere” physical possibility to insert a hook somewhere into a structure was insufficient, not least due to safety and quality requirements for medical devices and the need for legal certainty for third parties.
Accordingly, the infringement action failed.
During the oral hearing the defendant altered its procedural position: instead of pursuing the counterclaim unconditionally, it asked the Court to decide the counterclaim only in the event that infringement was found.
The Court treated this as an unconditional limitation of the counterclaim within the meaning of Rule 263.3 RoP. This classification matters: the counterclaim ceased to be an autonomous request for a decision on validity and became dependent on the procedural event of an infringement finding.
The Court further clarified that the limitation itself was not made conditional (e.g. not dependent on the admissibility of the limitation). In the Court’s view, the counterclaim was therefore limited “without restriction”.
The Court held that neither UPCA nor the RoP exclude an intra-procedural condition (i.e. a request that the Court decide only if a certain event occurs within the proceedings). It relied on the broader procedural logic of the RoP, pointing out that the system is familiar with conditional requests (in particular Rule 30 RoP).
Importantly, the Court also addressed fairness: a conditional counterclaim of this kind does not disadvantage the claimant because, if infringement is denied, there is no legitimate interest in forcing a validity decision “for the sake of it”.
Because infringement was dismissed, the intra-procedural condition did not occur. Under Art. 76.1 UPCA, the Court may not decide beyond the requests submitted; it therefore made no decision on the counterclaim.
The Court nevertheless had to allocate costs resulting from the counterclaim.
It held that because the defendant was responsible for structuring the counterclaim as conditional, it was also responsible for the procedural consequence that no decision could be rendered on it. In that situation, the costs incurred by the counterclaim were treated as unnecessary costs caused by the defendant within the meaning of Art. 69.3 UPCA.
As a result, the defendant had to bear the costs of the counterclaim.
At the same time, Emboline lost the infringement action and therefore had to bear the costs of that action. Since both proceedings had the same value, the Court applied Art. 69.2 UPCA overall and ordered that each party bear its own costs.
