AorticLab v Emboline (CoA, 20 June 2025)

Dhenne Avocats · 10 October 2026

Our analysis

Summary

By an order of 20 June 2025 (UPC_CoA_393/2025), the Court of Appeal (Judges Kalden, presiding and judge-rapporteur, Simonsson and Rombach) held that Article 69(4) UPCA does not allow a claimant in an infringement action to obtain security for costs from the defendant. It set aside the Munich Local Division’s order requiring AorticLab to provide security of EUR 200,000 in favour of Emboline and rejected the application as inadmissible. The same applies to a claimant in a revocation action under Article 32(1)(d), and the fact that the claimant is also defendant to a counterclaim for revocation makes no difference. For practitioners, security for costs remains a shield for defendants: a patentee cannot use it to guard against the insolvency of an alleged infringer.

Facts and procedure

Emboline, proprietor of EP 2 129 425, brought an infringement action against AorticLab before the Munich Local Division (UPC_CFI_628/2024), and AorticLab filed a counterclaim for revocation. Emboline sought security for costs, relying on the defendant’s allegedly unstable finances and a risk of insolvency if an injunction were granted (paragraph 1). AorticLab argued that only a defendant may make such a request (paragraph 2). By order of 16 April 2025, the Local Division ordered security of EUR 200,000, warning that failure to provide it in time could lead to a decision by default, and granted leave to appeal (paragraph 3). It reasoned that the applicant was also defendant to the counterclaim, which supported a reciprocal reading of Article 69(4) (paragraph 4). Both parties agreed that the Court should decide on the written submissions (paragraph 5).

The applicable law

Article 69(4) UPCA provides that the Court may order security for costs « at the request of the defendant ». Rule 158 RoP refers more broadly to « a party ». The Court also considered Article 24(1)(a) UPCA and Directive 2004/48 (Articles 7(2), 9(6) and 14), in the light of the CJEU judgment in Phoenix Contact v Harting of 22 April 2022 (C-44/21).

Question

May a claimant in an infringement action, which is also defendant to a counterclaim for revocation, obtain an order that the defendant provide security for costs?

Decision

No. The wording of Article 69(4) is deliberate: unlike paragraphs 1 to 3, it names the defendant alone, and the reference to Articles 59 to 62 concerns types of case, not who may apply (paragraphs 11 to 14). The provision protects a defendant against a claimant who sues without sufficient means to cover its costs (paragraph 15). Rule 158, though broader, cannot extend the Court’s powers, which must be grounded in the Agreement (paragraphs 13, 16 and 17). EU law provides no other basis: the security provisions of Directive 2004/48 protect defendants (paragraphs 18 to 21).

Since the application was lodged in the infringement action, where Emboline is claimant, it should have been dismissed (paragraphs 22 and 23). It would have failed even in the counterclaim: although a separate action (Article 32(1)(e)), a counterclaim for revocation is the direct consequence of the infringement action and the only way for the defendant to challenge validity (paragraphs 24 to 27). The protective rationale does not apply to it, security would unreasonably restrict the defence, bifurcation does not alter this, and non-payment would expose the defendant to a decision by default, whereas a claimant can always refrain from suing (paragraphs 29 to 31). The Court set aside the order, rejected the application as inadmissible and refused the request for a costs order, costs being left to the Court of First Instance (paragraph 33).

Key points for practice

• Neither a claimant in an infringement action nor a claimant in a revocation action may request security for costs under Article 69(4) UPCA, Rule 158 cannot widen the class of applicants.
• A counterclaim for revocation does not turn the defendant to an infringement action into a « claimant » exposed to security for costs.
• Broader wording in a Rule of Procedure cannot found a power that the Agreement does not confer.
• Practical point: a patentee concerned about the defendant’s solvency must look to tools other than security for costs, which is closed to it in both the infringement action and the counterclaim.

Provisions applied

Agreement on a Unified Patent Court

Arts 24(1)(a), 32(1)(d) and (e) and 69(4)

Rules of Procedure

Rules 158 and 355

Directive 2004/48/EC

Arts 7(2), 9(6) and 14

Related decisions

• Emboline, 16 April 2025, Munich Local Division order set aside by the Court of Appeal.

Prepared by Dhenne Avocats from the official decision, consulted on 10 October 2026. The database is updated every week, on Friday. Only the official text is authoritative.