UPC_CoA_40/2026 – Emboline v AorticLab

Expert Commentary

Conditional Counterclaim for revocation Facts 1. This case concerns an infringement action of Emboline against AorticLab. 2. AorticLab filed a Counterclaim for revocation but declared during the hearing that it made the Counterclaim conditional on a finding that it infringed. 3. The Local Division indicated that that was possible. 4. The Local Division ruled that AorticLab did not infringe and did not decide on the Counterclaim, and ruled that, as the Counterclaim was unnecessary, AorticLab had to bear the costs. The Court of Appeal 1. The Court of Appeal agrees with the LD Munich that a Counterclaim for revocation can be made conditional. 2. In the case of an appeal where no infringement was found, the counterclaimant may appeal against the decision of the LD not to decide on the Counterclaim. 3. The counterclaimant may also lodge an appeal under the condition that the infringement claimant lodges an appeal. The appeal fee is only due if indeed the infringement claimant appeals. If not, the conditional appeal is considered not to have taken place. 4. On appeal, the conditional Counterclaim for revocation remains conditional unless the claimant in the Counterclaim wants to pursue its claim unconditionally, but then it needs leave to change the claim (R. 263 RoP and R. 222 RoP). 5. If the Court of Appeal finds infringement, it will in general itself deal with the Counterclaim for revocation. Comment 1. A very important decision! If you make your Counterclaim for revocation conditional and you win the infringement case, there is no ruling about the revocation. If the claimant in the infringement case appeals, you must also appeal. You can also file a conditional appeal and wait and see if the claimant in the infringement case appeals. 2. I recommend always appealing after such a favourable judgment. You do not have to pay the fee as long as the losing party does not appeal and you are always safe. 3. The Court of Appeal should, in the future, also rule about costs. In my opinion, as the revocation, which is made conditional, is clearly lodged as a logical defence against the infringement, it should be the claimant in the infringement proceedings who should (also) pay the costs for the revocation. The decision of LD Munich that the claimant in the conditional revocation should bear the costs because the revocation was not necessary is based on hindsight. It would, in general, be irresponsible for a defendant in infringement proceedings not to also file an invalidity defence. 4. The Munich ruling on costs make it also unattractive for the counterclaimant to make its revocation action conditional while this should be encouraged because it saves the Court and parties time.

Full Decision Text

UPC Court of Appeal UPC-CoA-40/2026 ORDER of the Court of Appeal of the Unified Patent Court issued on 16 July 2026 Patent EP 2 129 425 **HEADNOTES:** 1) Limiting a counterclaim for revocation by making it conditional upon a finding of infringement is permissible. 2) There is a need for clarification on such a conditional counterclaim if and when the infringement claimant appeals from a finding of non-infringement by the Court of First Instance. 3) In the event of an appeal by the infringement claimant, the counterclaimant may appeal against the Court of First Instance’s decision not to decide on the counterclaim for revocation. Even though upon a finding of non-infringement a decision not to decide on the counterclaim is in accordance with the counterclaimant’s request, the (conditional) counterclaimant must nevertheless be considered to have a legitimate interest in an appeal since, if the Court of Appeal were to overturn the Court of First Instance's decision and finds an infringement, the condition would be fulfilled and the decision of the Court of First Instance holding that the condition was not fulfilled must be set aside. 4) The counterclaimant may lodge an appeal pursuant to R. 220.1(a) RoP under the condition that the infringement claimant lodges an appeal against the decision in the infringeent action. Once an appeal in the infringement action is lodged, the applicable (regular) appeal fee must be paid. If no appeal against the decision in the infringement action is lodged, the condition under which the appeal in the counterclaim for revocation action was lodged is not fulfilled, the appeal is considered to be not lodged and no appeal fees shall be due. 5) On appeal, the counterclaim for revocation remains conditional, unless the counterclaimant would request to remove the condition and pursue its claim unconditionally. Such a request will then be subject to leave to change claim pursuant to R. 263 RoP by analogy, and R. 222.2 RoP. 6) If the condition to which the counterclaim for revocation action is subjected is fulfilled due to a finding of infringement by the Court of Appeal, the Court of Appeal shall as a rule not refer the counterclaim back to the Court of First Instance, but shall decide on it, in accordance with Art. 75(1) UPCA and R. 242.2(b) RoP, last sentence. **KEYWORDS** Conditional counterclaim for revocation **APPELLANT (AND CLAIMANT AND COUNTERCLAIM-DEFENDANT BEFORE THE COURT OF FIRST INSTANCE)** Emboline, Inc., Santa Cruz, United States (hereinafter ‘Emboline‘) represented by Dr. Thure Schubert, attorney at law, and other attorneys at law of the law firms Vossius & Partner Patentanwälte Rechtsanwälte mbB, Munich, Germany and KIPA AB, Helsingborg, Sweden **RESPONDENT (AND DEFENDANT AND COUNTERCLAIMANT BEFORE THE COURT OF FIRST INSTANCE)** AorticLab srl, Samone, Italy (hereinafter ‘AorticLab‘) represented by Sabine Agé, attorney at law of Hoyng Rokh Monegier, Paris, France, and other attorneys at law of the law firm André Roland, Lausanne, Switzerland **PATENT AT ISSUE** EP 2 129 425 **PANEL AND DECIDING JUDGE** Panel 2 This order was issued by Rian Kalden, presiding judge and judge-rapporteur **IMPUGNED DECISION OF THE COURT OF FIRST INSTANCE** Decision of the Local Division Munich issued on 13 January 2026 in the infringement proceedings **POINT AT ISSUE** Clarification of a conditional counterclaim for revocation **LANGUAGE OF THE PROCEEDINGS** English **REASONS** 1. In proceedings at first instance, Emboline lodged an infringement action against AorticLab. 2. AorticLab lodged a counterclaim for revocation and requested that the Local Division Munich (LDM) revoke the patent at issue in its entirety with effect in all the Contracting Member States of the UPC in which the patent has effect (Art. 65(2) UPCA, R. 25 RoP). However, during the oral hearing, Aorticlab declared that it would not pursue its counterclaim as originally filed and instead made the counterclaim dependent on the occurrence of a finding of patent infringement by the Court. 3. In its decision of 13 January 2026, the LDM considered that neither the UPCA or Rules of Procedure indicate that making a counterclaim conditional upon a finding of infringement is inadmissible and furthermore that, since Aorticlab requested this limitation without any further condition, making the counterclaim conditional upon a finding of infringement by the Court constitutes an unconditional limitation of the counterclaim in accordance with R. 263.3 RoP. 4. Since the LDM held that the patent had not been infringed, the condition for deciding the counterclaim was not fulfilled. Consequently, the LDM did not decide on the counterclaim, held that the costs incurred in relation to the counterclaim are to be considered unnecessary and, pursuant to Article 69 (3) UPCA, ordered AorticLab to bear the costs. 5. The Court of Appeal agrees with the LDM that limiting a counterclaim for revocation by making it conditional upon a finding of infringement is permissible. Even if R. 263.3 RoP is not directly applicable since it is not the claim(s) but rather the entire action that is limited by making it conditional, the balance of interests under R. 263.3 corresponds to that in the case of making a counterclaim for revocation conditional. Failing a Rule covering such a situation, R. 263.3 RoP shall apply by analogy. Thus, if the counterclaimant unconditionally requests that its claim is made conditional upon a finding of infringement, pursuant to R. 263.3 RoP by analogy, such request shall be granted. 6. Since the possibility of making a counterclaim for revocation conditional upon a finding of infringement is not expressly addressed in either the UPCA or the Rules of Procedure, there is a need for clarification on such a conditional counterclaim if and when the original infringement claimant appeals from a finding of non-infringement by the Court of First Instance. 7. In the event of an appeal by the infringement claimant (here Emboline), the counterclaimant (here Aorticlab) may appeal against the Court of First Instance’s decision not to decide on the counterclaim for revocation. Even though upon a finding of non-infringement a decision not to decide on the counterclaim is in accordance with the counterclaimant’s request, the (conditional) counterclaimant must nevertheless be considered to have a legitimate interest in an appeal since, if the Court of Appeal were to overturn the Court of First Instance's decision and finds an infringement, the condition would be fulfilled and the decision of the Court of First Instance holding that the condition was not fulfilled must be set aside. 8. The counterclaimant may lodge an appeal pursuant to R. 220.1(a) RoP under the condition that the infringement claimant lodges an appeal against the decision in the infringeent action. Once an appeal in the infringement action is lodged, the condition is fulfilled and the applicable (regular) appeal fee must be paid. If no appeal against the decision in the infringement action is lodged within the time period indicated in R. 224 RoP, then the condition under which the appeal in the counterclaim for revocation action was lodged is not fulfilled, the appeal is considered to be not lodged and no appeal fees shall be due. 9. On appeal, the counterclaim for revocation remains conditional, unless the counterclaimant would request to remove the condition and pursue its claim unconditionally. Such a request will then be subject to leave to change claim pursuant to R. 263 RoP by analogy, and R. 222.2 RoP. 10. If the condition to which the counterclaim for revocation action is subjected is fulfilled due to a finding of infringement by the Court of Appeal, the Court of Appeal shall as a rule not refer the counterclaim back to the Court of First Instance, but shall decide on it, in accordance with Art. 75(1) UPCA and R. 242.2(b) RoP, last sentence. 11. Aorticlab has not appealed against the decision of the Court of First Instance of 13 January 2026 to not decide on the counterclaim for revocation. The time period for lodging an appeal under R. 224.1(a) RoP has lapsed. 12. Since the possibility of making a counterclaim for revocation conditional upon a finding of infringement is not expressly addressed in either the UPCA or the Rules of Procedure, and it has only been clarified in this order how the counterclaimant should proceed upon a finding of non-infringement by the Court of First Instance, Aorticlab may wish to request re-establishment of rights pursuant to R. 320 RoP. Rian Kalden, presiding judge and judge-rapporteur Case management decisions or orders made by the judge-rapporteur shall be reviewed by the panel, on a reasoned Application by a party (R. 333.1 RoP).

Key Holdings

• Conditional counterclaims for revocation are permissible before the UPC.
• A conditional counterclaim remains conditional on appeal unless the claimant seeks to pursue it unconditionally, requiring leave (R. 263 RoP, R. 222 RoP).
• If an infringement claim is dismissed, the counterclaimant must appeal the decision not to decide on the conditional counterclaim if they wish it to be heard.
• A conditional appeal can be lodged, with the appeal fee only becoming due if the infringement claimant also appeals.
• The Court of Appeal will generally decide on the conditional counterclaim itself if it finds infringement.

Tags

• Conditional Counterclaim
• Revocation
• Appeal Proceedings
• Costs
• Infringement
• Procedural Law

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