Emboline, Inc. v. AorticLab srl, UPC Court of First Instance, Local Division Munich, 16 April 2025, Case No. 628/2024
In a case before the Local Division Munich of the Unified Patent Court (UPC), Emboline filed a request for security for costs against AorticLab pursuant to R. 158 Rules of Procedure, citing concerns over the respondent’s financial stability. The case highlights key aspects of the UPC’s approach to security for costs and the implications for parties involved in patent infringement proceedings.
Financial Concerns
Emboline claimed infringement of European Patent No. 2129425 for an embolic protection device by AorticLab, who counterclaimed for revocation of the patent. In its Defence, AorticLab claimed that the grant of an injunction might drive them into insolvency. Emboline argued that AroticLab’s claim of potential insolvency in the event of an injunction to desist indicates a legitimate concern regarding the recoverability of legal costs.
Security for Costs
Under Article 69(4) of the Unified Patent Court Agreement (UPCA), only the defendant may request a Court to order the applicant to provide adequate security for legal costs and other expenses incurred by the defendant. AorticLab argued that Emboline as claimant/applicant was not entitled to a request for security.
Defining the Applicant
According to the UPCA, the term “applicant” includes those who file a counterclaim for revocation under Article 32(1)(e) UPCA. Consequently, for the revocation claim, AorticLab acts as applicant, while Emboline as defendant, entitling them to request security for costs. This broad definition of “applicant” ensures that parties involved in counterclaims are subject to the same procedural rules as those initiating infringement actions.
Judicial Ruling
Judge-rapporteur Tobias Pichlmaier ordered AorticLab to provide security for costs amounting to €200,000. This decision was based on the respondent’s own admission of financial instability in their Defence, despite their having raised 10.5M USD in funding.
This case exemplifies the UPC’s commitment to ensuring that parties can recover legal costs in patent litigation, particularly when financial instability is a concern. It also clarifies the procedural definitions and requirements for requesting security for costs, providing valuable insights for future cases.
The order can be found here.
