2026-08-17 - CoA - Aorticlab v. Emboline - UPC-COA-0000123/2026

1) The infringement action and the counterclaim for revocation are separate actions under the UPCA and Rules of Procedure. Making the counterclaim for revocation conditional upon a finding of infringement is an ‘inter-procedural’ condition. 2) Whether a condition is ‘intra-procedural’ in the strict sense or ‘inter-procedural’ is relevant for the question of whether a cross-appeal may be lodged, which is possible if the condition is intra-procedural in the strict sense, or a separate appeal must be lodged, which is the case if the condition is inter-procedural. 3) Whether the condition of a finding of infringement must be considered intra-procedural or inter-procedural has no relevance for the question of whether making a counterclaim conditional upon a finding of infringement is permissible. Nothing in the UPCA or Rules of Procedure suggests that this is excluded per se. 4) Where a counterclaim for revocation is made conditional upon a finding of infringement, the claims remain unchanged but are limited in terms of need for adjudication. It does not mean that the entire counterclaim for revocation action as such is made conditional upon a finding of infringement in the sense that it would not be pending as long and/or as soon as the condition is not fulfilled. R. 263.3 RoP applies by analogy (see clarification order of 16 July 2026 in UPC-CoA 40/2026). 5) Where a counterclaim for revocation is made conditional upon a finding of infringement by ‘the Court’, in the absence of an explicit indication by a party to the contrary (e.g. by explicitly referring to ‘the Court of First Instance’), ‘the Court’ must be understood as to refer to both the Court of First Instance and the Court of Appeal. Consequently, after a finding of non-infringement by the Court of First Instance, the conditional counterclaim is still ‘pending’ for the duration of the appeal period and the decision may be appealed from, after which it becomes pending before the Court of Appeal. 6) In R. 242.2(b) RoP the wording ‘failed to decide’ does not (only) refer to an ‘omission attributable to the Court’, but refers to any situation where something relevant for a decision on appeal was not decided upon at first instance, regardless of the reason therefor. There is no indication in R. 242.2(b) RoP and no reason to treat non-decided infringement and invalidity arguments differently.

The Court of Appeal established the procedural framework for a counterclaim for revocation made conditional upon a finding of infringement, rejecting the patentee's application to review the earlier clarification order under R. 333 RoP. It held that the infringement action and the counterclaim are separate actions, so such a condition is inter-procedural, which decides only whether the counterclaimant must lodge a separate appeal rather than a cross-appeal, and says nothing about whether the condition is permissible. Making a counterclaim conditional is a limitation of the claim that R. 263.3 RoP governs by analogy: it must always be allowed when requested unconditionally, needs no justification, and cannot adversely affect the other party, whereas the withdrawal rule R. 265 RoP does not apply because the action is not to cease to exist. Where the condition refers to a finding of infringement by 'the Court', it means both instances, so the counterclaim stays pending through the appeal period and can be brought before the Court of Appeal, which will decide it rather than refer it back — 'failed to decide' in R. 242.2(b) RoP covers anything left undecided at first instance for any reason. Because that framework was clarified only after the appeal periods had run, and the first-instance division had labelled the condition intra-procedural, the counterclaimant was re-established in its right to appeal under R. 320 RoP.