LD Munich, January 13, 2026, Decision on the merits, UPC_CFI_628/2024; UPC_CFI_125/2025

The claimant argued for an infringing use that required piercing the device’s mesh. The Court held this was not a proper, professional use but an emergency measure, and thus irrelevant for the infringement assessment.

A mere unforeseen possibility of hooking a device, particularly one that causes damage, is insufficient to meet the claim feature, balancing patentee protection with third-party legal certainty for a medical device.

In the oral hearing the defendant declared that it would not pursue the originally filed unconditional counterclaim and filed a new counterclaim dependent on the occurrence of an intra-procedural condition (i.e. finding of patent infringement). The Court found no prohibition in the UPCA or RoP, noted familiarity with conditional applications (e.g., Rule 30 RoP), and found no unfair prejudice. Since infringement was denied, the intra-procedural condition failed, and no decision was made on the counterclaim (Art. 76(1) UPCA).

As the condition (infringement) did not occur, the Court declined to decide the counterclaim; deciding otherwise would award more than requested by the defendant.

The claimant was unsuccessful on infringement, and the defendant bears counterclaim costs for the same value; result: both parties bear their own overall costs (Art. 69 (2) UPCA)

Because no decision was made on the counterclaim at the defendant’s request, the claimant’s counterclaim-related costs were unnecessary; the defendant must bear them (Art. 69 (3) UPCA). Although the defendant was “forced” to file the counterclaim to raise invalidity, its own procedural choice to make it conditional prevented a merits decision, thus making it responsible for the costs it generated.