Emboline v AorticLab (CFI, 13 January 2026)

Dhenne Avocats · 10 October 2026

Our analysis

Summary

By a decision of 13 January 2026 in infringement action UPC_CFI_628/2024 and counterclaim for revocation UPC_CFI_125/2025, the Munich Local Division dismissed Emboline’s action against AorticLab based on EP 2 129 425 (embolic protection device), directed at the « FLOWer » device. The feature of a graspable structure engageable by a hook is not met, since using a hook is not in line with medical practice. The counterclaim, made conditional at the hearing, was not examined, and each party bears its own costs.

The decision matters for practitioners in two respects: it sets limits on infringement based on atypical use of a medical device, and it draws the costs consequences of a counterclaim made dependent on a finding of infringement.

Facts and procedure

Emboline, proprietor of EP 2 129 425, in force in Germany, France and Italy, sued AorticLab seeking, among other things, an injunction, information, recall and damages. AorticLab denied infringement and counterclaimed for revocation of the whole patent. Emboline filed four auxiliary requests (paragraph 13). At the oral hearing on 2 December 2025, AorticLab declared that it would not pursue its counterclaim as originally filed and asked for it to be decided only if infringement were found (paragraphs 61 to 63).

The applicable law

Claim scope is determined under Art. 69 EPC and its Protocol, from the standpoint of a team comprising an engineer and an interventional cardiologist (paragraph 17). The court decides in accordance with the parties’ requests and does not award more than is requested (Art. 76(1) UPCA, paragraph 68). Unnecessary costs are borne by the party that caused them (Art. 69(3) UPCA).

Question

Does a device normally removed by its rod, but which could be removed with a hook by piercing its mesh, have a structure « engageable by a hook »? Who bears the costs of a counterclaim made conditional and left undecided?

Decision

The feature requires a structure specifically configured to be engaged by a hook. It is not enough that a hook can somehow be inserted somewhere (paragraphs 41 and 42). The FLOWer device is normally removed by pulling it out using the rod to which it is attached (paragraph 53), and inserting a hook requires the mesh to be pierced and damaged, as the claimant conceded (paragraph 54). The fact that a device is normally used differently does not rule out infringement, but for a medical device infringement can only be assumed where the use is in line with professional practice (paragraph 55), hook retrieval would at best be an unconventional emergency method (paragraphs 57 and 58). The dependent claims are not infringed either (paragraph 59).

Dropping the unconditional counterclaim amounts to a limitation under Rule 263.3, and a request may be made subject to an intra-procedural condition (paragraphs 62 to 66). As the condition was not met, no ruling on validity was made (paragraphs 67 and 68). The costs of the counterclaim, now unnecessary, fall on AorticLab (paragraphs 69 to 72). The action was dismissed and each party bears its own costs.

Key points for practice

• Infringement of a medical device claim through unusual use requires that use to be in line with professional practice (paragraph 55).
• A functional feature such as « engageable » refers to a structure specifically designed for that purpose, not to any structure that happens to allow it (paragraphs 41 and 42).
• A defendant that makes its counterclaim conditional at the hearing bears its costs if the condition is not met (paragraphs 69 to 72).
• Practical point: a conditional counterclaim avoids a validity debate but comes at a price, which should be factored into the strategy before the hearing.

Provisions applied

Agreement on a Unified Patent Court

Arts 42(2), 63(1), 64(4), 65(2), 69(1) to (3), 73(1), 76(1) and 82(2)

Statute of the Court

Art. 37(2)

Rules of Procedure

Rules 23, 24(g), 25, 30, 118.5, 118.8, 150, 158.2, 220.1(a), 224.1(a), 262, 262A, 263.3, 352, 354 and 355.4

European Patent Convention

Art. 69 and Protocol on its interpretation

Directive 2004/48/EC

Art. 3(2)

Case law cited

NanoString v 10x Genomics, Court of Appeal, 26 February 2024, AorticLab v Emboline, Court of Appeal, 20 June 2025 (UPC_CoA_393/2025), Mannheim Local Division, 5 December 2025, UPC_CFI_414/2024

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.