In its decision on the merits in UPC_CFI_628/2024 (with the related revocation counterclaim UPC_CFI_125/2025), the Munich Local Division of the Unified Patent Court (UPC) addressed two practically relevant issues:
- how to assess infringement of a medical device claim where the patentee relies on a possible, unintended, use of the accused medical device, and
- whether a revocation counterclaim may be made conditional on the outcome of the infringement finding. The decision was issued on 13 January 2026.
Background
The claimant, Emboline, Inc., asserted infringement of EP 2 129 425 (“Embolic protection device”) in Germany, France and Italy against AorticLab srl in respect of its “FLOWer” device. The dispute focused on claim 1, which defines a device that inter alia includes a “pull loop or other graspable structure … engageable by a hook … within a retrieval catheter”.
Key findings of the decision
Claim construction: “engageable” requires design intent and suitability
The Munich Local Division (LD) held that “engageable” as defined in claim 1 means the graspable structure, and the claimed device overall, must be specifically configured and designed to be engaged by the hook in the stated retrieval set-up. According to the LD, “graspability” must be achieved without modifying the graspable structure or other claimed components.
The LD rejected an interpretation under which any structure that could, in an unforeseen way, be caught by a hook would suffice. For a medical device intended for use in a blood vessel, the feature was understood to require a purposeful and targeted retrieval concept; mere “somehow engageable” capability was deemed incompatible with medical safety/quality standards and third-party legal certainty under the Protocol to Article 69 EPC.
Infringement: “possible use” must be lege artis for medical devices
The claimant relied on a removal method of the accused device in which a hook engages a “V-shaped” structure. The LD found, however, that this method required piercing and damaging of a mesh of the device.
While the LD accepted the general proposition that infringement of device claim is not excluded merely because the accused device is normally used in a “non-infringing” way, it introduced a medical-device-specific threshold: possible patent-compliant use is relevant only if it is in line with professional practice and recognised rules of medical science. The LD explained “lege artis” use as performance in accordance with recognised medical standards, including correct insertion/removal to avoid complications.
On the facts, hook-based retrieval damaging the mesh of the accused device was held not to be proper, professional and intended use. It was characterised at most as an emergency, unconventional measure and therefore irrelevant for infringement. Consequently, the infringement action was dismissed.
Conditional revocation counterclaim, no validity decision, and costs
At the oral hearing, the defendant replaced its counterclaim with one conditional on a finding of infringement. The LD treated this as an admissible limitation. The LD held that intra-procedural conditions are not prohibited by the UPCA or Rules and do not disadvantage the other party.
Because infringement was denied, and in view of the conditional counterclaim, the LD did not decide on the validity of the patent. It did, however, order the defendant to bear the “unnecessary” costs of the counterclaim. The claimant bore the costs for the infringement action.
Conclusion
The Munich Local Division’s decision (13 January 2026) indicates that, at least for medical devices, “possible use” infringement arguments must be assessed against lege artis practice, and that claim features such as “engageable” may demand purposeful design suitability, not opportunistic capability. Procedurally, it confirms the admissibility of conditional revocation counterclaims, while illustrating the consequences for validity adjudication and costs where the condition is not met.
