Aesculap AG v. Shanghai International Holding Corporation GmbH (Europe), Decision of the Düsseldorf Local Division of the UPC, 1 September 2026, UPC_CFI_307/2025
In a decision that follows and confirms the approach adopted in the preliminary injunction proceedings between the parties on 10 July 2025 (ORD_32728/2026), the Düsseldorf Local Division (LD) of the Unified Patent Court (UPC) has provided further guidance on the role of an EU authorised representative under the UPCA.
While the LD held that an EU authorised representative is not, by that status alone, a direct patent infringer or accessory, it confirmed that it may qualify as an intermediary under Article 63(1)(2) UPCA where its services constitute a necessary condition for placing infringing medical devices on the market.
In the UPC’s first significant application of the framework for managing long-arm jurisdiction claims set out in the Court of Appeal’s decision in Fujifilm v. Kodak, the LD granted a permanent injunction against the EU authorised representative, covering France, Germany and the United Kingdom. The UK part of the injunction is conditional on the patent not being subsequently invalidated in the United Kingdom. On the facts, the LD declined to stay the injunction pending the outcome of the Dyson v. Dreame CJEU referral.
Background
Aesculap AG, a German surgical instrument manufacturer, brought an infringement action before the Düsseldorf LD against three entities of the Chinese Bojin group concerning European Patent EP 2 892 442 B1, in force in Germany, France and the United Kingdom. The proceedings related to two surgical cutting tools marketed under the Bojin brand.
Before commencing the main action, Aesculap obtained interim relief against Shanghai International Holding Corporation GmbH (Europe) (“SIH Europe”), a Hamburg based company acting solely as the EU authorised representative of the Chinese manufacturer Bojin under Article 11 of the EU Medical Devices Regulation (MDR). The order was granted on the basis that SIH Europe could be held liable as an intermediary by virtue of its role as the product’s EU authorised representative. SIH Europe did not appeal that order.
In the main proceedings, two accused products were at issue: the “Bojin diamond burr” and the “Bojin rose burr”. Shortly before the decision was handed down, Aesculap settled with the first and third defendants (the Chinese manufacturer and its distribution arm), leaving SIH Europe as the sole remaining defendant.
International jurisdiction
The LD first swiftly confirmed its international jurisdiction, noting that jurisdiction was deemed accepted under Rule 19(7) RoP, as none of the defendants had raised an objection.
In any event, and consistently with the Court of Appeal’s decisions in Dyson v. Dreame, Kodak v. Fujifilm and Fujifilm v. Kodak, the Düsseldorf LD held that it had international jurisdiction on the basis of SIH Europe’s domicile in Hamburg pursuant to Article 4(1) of the Brussels Ia Regulation. The Court expressly confirmed that it was not necessary to assess the plausibility of any infringing acts committed by SIH Europe in the United Kingdom in order to establish jurisdiction in respect of the UK designation of the patent.
Claim construction
The central claim construction dispute concerned the term “preferably” in claim 1. The claim requires the functional “torque transmission” section to comprise a “dihedron”, with two diametrically opposed contact planes that “preferably” converge in a wedge-shaped manner towards the “axial locking” section. The defendants argued that “preferably” qualified only the wedge-shaped form of the convergence, not the convergence itself. On that interpretation, embodiments with parallel contact planes would fall outside the scope of the claim. Aesculap contended that “preferably” qualified the entire convergence feature, such that the claim also encompassed embodiments with parallel contact planes.
The Court sided with Aesculap. After analysing the wording and structure of the claim, it held that “preferably” qualified the wedge-shaped convergence as a whole, in a manner consistent with the treatment of optional features elsewhere in the claim. This interpretation was further supported by the patent description, which expressly criticised the axial force component generated by wedge shaped surfaces and identified fully parallel contact planes as a valid embodiment.
The Court also emphasised that, under Article 70(1) EPC, the German text is the authoritative version of the patent and cannot be restricted by reference to the English or French translations where the German wording is internally coherent.
Accordingly, the Court found that the accused surgical cutting tools marketed under the Bojin brand implemented all features of claims 1 and 6, as construed above, and therefore infringed the patent.
Liability of SIH Europe: not an infringer but an intermediary
The most significant aspect of the decision concerns the legal status of SIH Europe. Although the accused products were found to infringe Aesculap’s patent, SIH Europe was not held liable as a direct infringer, joint tortfeasor, instigator, or accessory. Instead, its liability arose solely as an intermediary within the meaning of Article 63(1)(2) UPCA.
No direct infringement or accessory liability – SIH Europe’s role was limited to that of EU authorised representative under Article 11 MDR, with responsibility for regulatory compliance functions. The Court accepted that SIH Europe neither imported nor distributed the accused products, particularly as Aesculap did not substantiate its allegations to the contrary. It further held that issuing a CE conformity declaration, although a prerequisite for placing the products on the EU market, amounted only to a preparatory act and was therefore insufficient to establish liability as a joint tortfeasor, instigator, or accessory under the principles developed in Philips v. Belkin, Moderna v. Genevant, and Occlutech v. Lepu.
Liability as an intermediary – The Court nevertheless found SIH Europe liable under Article 63(1)(2) UPCA as an intermediary whose services were used to place the infringing products on the market. Referring to Koninklijke Philips v. Edrich, the Court clarified that the concept of an intermediary is not confined to providers of intermediary services within the meaning of the Digital Services Act. Rather, it extends to any person who, without using the patented invention themselves, provides a service that constitutes a necessary condition for the infringement. The Court also confirmed that Article 63(1)(2) UPCA does not require any breach of a duty of care.
The Court considered that an EU authorised representative performs an indispensable function in the lawful marketing of medical devices, since such products cannot be distributed within the European Union without that appointment. By accepting that role, SIH Europe enabled the accused products to be placed on the market. The Court therefore concluded that SIH Europe was in a position to influence, and ultimately stop, the infringement by terminating its services, and thus qualified as an intermediary for the purposes of Article 63 UPCA.
Remedies
Germany and France – Against SIH Europe as an intermediary, the Court granted an injunction under Articles 25(a), 26 and 63(1) UPCA ordering SIH Europe to cease providing its services as EU authorised representative in Germany and France in respect of the infringing products, together with a right to information under Article 67(2)(b) UPCA, under coercive penalties
United Kingdom – Following the Court of Appeal’s approach in Kodak v. Fujifilm and Fujifilm v. Kodak, the Court held that it may issue orders extending to non-EU Contracting States subject to a suspensive condition that the patent is not declared invalid by the competent national authority. Infringement of the UK designation falls to be assessed under UK substantive law pursuant to Article 8 of the Rome II Regulation read in conjunction with Article 24(2)(a) UPCA.
Aesculap established that UK law permits injunctions against an intermediary and that SIH Europe, as EU authorised representative, had created a necessary precondition for the infringing products to reach the UK market, thereby securing an injunction extending to the UK, subject to the condition that the patent is not subsequently found invalid by the UK national courts.
However, Aesculap failed to demonstrate that acting solely as an EU authorised representative under Article 11 MDR would suffice to classify SIH Europe as a patent infringer under Section 60 of the Patents Act 1977, with the Court finding that Glaxo Wellcome v Sandoz [2017] EWCA Civ 227 on joint and several liability did not assist on that point. Since SIH Europe was liable only as an intermediary, no information order could be made in respect of the UK, the right to information under Section 61 of the Patents Act 1977 accruing only against a patent infringer.
No stay of proceedings pending the CJEU referral
The Court declined to stay the proceedings despite the referral to the Court of Justice of the European Union (CJEU) made by the Court of Appeal on 6 March 2026 in Dyson v. Dreame, which concerned, among other issues, the conditions under which an authorised representative may be held liable as an intermediary under Article 63 UPCA. Notably, neither party had requested a stay, and the Court exercised its discretion under Rule 295(m) RoP of its own motion, concluding that a stay was neither justified nor appropriate.
The Court acknowledged that the CJEU referral may provide guidance on the requirements for intermediary liability, particularly on whether merely creating the legal conditions enabling a service is sufficient, or whether further conduct is required. However, it identified two reasons for refusing a stay.
First, the question referred to the CJEU arose exclusively in the context of interim proceedings and concerned the General Product Safety Regulation and the Market Surveillance Regulation, rather than the MDR governing SIH Europe’s role in the present case.
Second, it remained uncertain, and in any event not sufficiently likely, that the CJEU’s answer would provide conclusions directly applicable to the MDR framework, especially as the referral was expressly limited to those specific Regulations.
The Order can be read here.
