AorticLab, srl v. Emboline Inc. v. UPC Court of Appeal, 17 Agust 2026, Case nos. UPC CoA-40/2026, UPC-CoA-123/2026
Conditional Counterclaim for Revocation
Infringement action and the counterclaim for revocation separate actions; relevance of intra-procedural and inter-procedural condition, application of R. 263.3 by analogy; meaning of ‘the Court’; meaning of ‘failed to decide’ in R. 242.2(b) RoP
Headnotes:
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.
A copy of the Order can be read here.
