Munich UPC Division Permits Conditional Counterclaim in Emboline v. AorticLab Patent Dispute

In a recent proceeding before the Munich Local Division of the Unified Patent Court (UPC), Emboline Inc. brought an infringement action against AorticLab srl, alleging violation of its European patent related to an embolic protection device. The case was registered under references UPC_CFI_628/2024 and UPC_CFI_125/2025.

AorticLab, the defendant, responded by challenging the validity of Emboline’s patent and filing a counterclaim seeking revocation. During the oral hearing, AorticLab introduced an intra-procedural condition, declaring that its counterclaim for revocation would only proceed if the court found that infringement had occurred.

The court examined whether such a conditional counterclaim was permissible under the Unified Patent Court Agreement (UPCA) and the Rules of Procedure (RoP) of the UPC. The judges concluded that neither the UPCA nor the RoP precluded the admissibility of a counterclaim that was contingent on the outcome of the infringement finding.

Furthermore, the court determined that the claimant, Emboline, would not be disadvantaged by the imposition of this intra-procedural condition. As a result, the counterclaim was accepted as limited in accordance with Rule 263.3 of the Rules of Procedure.

After considering the merits of the infringement claim, the court ultimately found that Emboline’s patent was not infringed by AorticLab. Given this outcome, the conditional counterclaim for revocation did not require a substantive decision.

The court also addressed the issue of costs associated with the counterclaim. Since the counterclaim became unnecessary due to the finding of non-infringement, the court ordered AorticLab, the defendant, to bear the costs incurred in relation to the counterclaim.

This decision clarifies the UPC’s approach to conditional counterclaims and provides guidance on cost allocation when such claims become moot due to the primary outcome of the case.