UPC Court of Appeal clarifies rules on conditional counterclaims for revocation

The order originates from the infringement proceedings between US medical device company Emboline and Italian competitor AorticLab over EP 2 129 425. The patent protects an embolic protection device. Earlier this year, the Munich local division dismissed Emboline’s infringement action concerning AorticLab’s FLOWer product. At the same time, the court did not rule on the counterclaim, since the condition of a finding of infringement was not met (case IDs: UPC_CFI_628/2024, UPC_CFI_125/2025). The panel, presided over by Matthias Zigann, ordered AorticLab to bear the costs of the counterclaim.

In an order issued last week, the Court of Appeal under presiding judge and judge-rapporteur Rian Kalden confirmed that limiting a counterclaim for revocation by making it conditional upon a finding of infringement is permissible under the UPC’s procedural framework (case ID: UPC_CoA_40/2026).

Although neither the UPC Agreement nor the Rules of Procedure expressly address this scenario, the Court of Appeal held that Rule 263.3 RoP applies by analogy. Where a counterclaimant unconditionally requests that its claim be made dependent on a finding of infringement, the request must be granted.

Procedural gap addressed

The Court of Appeal used the occasion to close a procedural gap. According to the order, if the infringement claimant appeals against a finding of non-infringement, the counterclaimant retains a legitimate interest in appealing the first-instance decision not to decide on the counterclaim. Otherwise, the counterclaimant would risk being unable to pursue revocation should the Court of Appeal reverse the finding on infringement.

To address this, the Court of Appeal set out a specific mechanism: the counterclaimant may lodge an appeal under Rule 220.1(a) RoP on the condition that the infringement claimant also appeals. If the infringement appeal is filed within the deadline under Rule 224 RoP, the condition is fulfilled and the regular appeal fee becomes due. If no appeal against the infringement decision is lodged, the counterclaim appeal is deemed not to have been lodged and no fees are payable.

The Court of Appeal further clarified that the counterclaim for revocation remains conditional on appeal, unless the counterclaimant requests to remove the condition and pursue the claim unconditionally. Such a request would then be subject to leave to change claim under Rule 263 RoP by analogy, in conjunction with Rule 222.2 RoP. Where the condition is triggered by a finding of infringement at second instance, the Court of Appeal will as a rule decide the counterclaim itself rather than remit it, relying on Article 75(1) UPCA and Rule 242.2(b) RoP.

Consequences for AorticLab

In the specific case, AorticLab did not appeal the Munich decision, and the deadline has lapsed. The Court of Appeal noted that, given the previous lack of clarity on the treatment of conditional counterclaims, AorticLab may wish to request re-establishment of rights under Rule 320 RoP. It is not yet known whether the Italian company will make use of this possibility.

However, an appeal by Emboline against the first-instance decision regarding infringement is pending (case ID: UPC-CoA-40/2026).

The underlying dispute between the two medical device manufacturers extends beyond the UPC. Emboline holds EP 425 in Germany, France and Italy, and has also enforced parallel rights before Munich Regional Court. In separate proceedings, the 21st Civil Chamber under presiding judge Hubertus Schacht recently found that AorticLab infringed Emboline’s German utility model DE 20 2016 009 224 with the same FLOWer product and issued an injunction covering Germany.

Vossius vs Hoyng ROKH Monegier

Emboline continues to rely on a mixed team from Vossius & Brinkhof UPC Litigators led by litigator Thure Schubert, who has represented the US company throughout both the UPC and national utility model proceedings. Counsel Matthias Jentsch and associate Luisa Huber also worked on the case. The patent attorneys advising on the technical aspects of the case were Ananda Landwehr and partner Arnold Asmussen.

Once again, Swedish patent attorneys Erik Krahbichler and Pär Hjalmarsson of KIPA, who advise Emboline on patent prosecution, assisted Vossius.

A Hoyng ROKH Monegier team led by Paris-based partner Sabine Agé represents AorticLab, with support from Laurène Borey and Valentin Wagner. Swiss patent attorney André Roland of André Roland SA established the client contact and continues to advise on the technical aspects of the case.