UPC claim interpretation: The normal use of a medical device matters

In a recent decision on the merits between Emboline Inc. and AorticLab srl (UPC_CFI_628/2024, UPC_CFI_125/2025), the Munich Local Division found that Emboline’s patent to an embolic protection device was not infringed. A key feature of the claims related to a “graspable structure” at one end of the device being “engageable by a hook”. The graspable structure is provided to allow the device to be removed from a patient by use of a hook. 

Emboline argued that the AorticLab’s device included a graspable feature, albeit one that could only be grasped if an external mesh of the product was pierced in order to access this feature using a hook. By contrast, in normal use the contested product is to be removed from the patient through a rod attached at one end. In other words, the use of a hook as taught in the patent would not constitute the normal use of the device.

Whilst the Court acknowledged that infringement is not necessarily excluded by a device normally being operated in a different manner from the patented teaching, the court highlighted that the contested product is a medical device. In particular, the Court found that infringement may only be found if an infringing use would be in line with professional practice and within recognised rules of medical science. 

As the use of a hook would lead to the product being damaged, the Court found that such a use was not relevant to the question of infringement. The term “engageable” in the claims was therefore construed such that the graspable structure must be specifically configured and designed for being engageable by a hook. Consequently, the contested embodiment was not found to fall within the scope of the claimed device. 

This decision highlights the stricter approach that the Court may assume when construing claim features relating to medical devices. In fact, if the device in question had belonged to a non-medical field, the Court may well have reached a different conclusion on the infringement decision.