Late Arguments and Intermediary Liability: The Milan Local Division on EP 3 960 072 B1
The Milan Local Division clarifies the admissibility of late claim construction arguments in provisional measures and establishes the liability of EU Authorised Representatives under the Medical Devices Regulation.
The tension between the strict front-loaded nature of Unified Patent Court proceedings and the fundamental right to be heard continues to shape procedural practice. In the context of provisional measures, the Milan Local Division has now clarified how this balance applies to late-filed claim construction arguments. In UPC-CFI-0001086/2026, the panel admitted new non-infringement defences submitted only one month before the oral hearing, establishing that an overly rigid application of procedural deadlines must not disproportionately impair the effectiveness of the right of defence.
Why did the Milan Local Division admit late arguments on claim construction?
The respondents introduced new arguments concerning the interpretation and infringement of feature 1.6 in their final written submission. The applicant objected to this late filing. However, the Court admitted the arguments, reasoning that claim construction is a matter of law which the panel may elaborate ex officio. The panel noted that rejecting the submissions before the Court of First Instance would likely result in the Court of Appeal considering them anyway, effectively losing one level of jurisdiction on a substantive issue, citing UPC CoA no. 36/2026. Crucially, the applicant merely objected to the late filing without requesting a short time limit to file a reply. Because the applicant had an adequate opportunity to respond during the oral hearing, the admission did not violate the adversarial principle.
How did the panel construe functional claim features against a single detailed embodiment?
The substantive dispute over EP 3 960 072 B1 centered on whether the claims were structurally limited to the single embodiment described in the patent, which featured a movable inner housing for a continuous glucose monitoring sensor. The respondents argued for a narrow construction, asserting that the claimed downward movement and retraction were enabled only by this specific inner housing. The Court rejected this, adopting a balanced construction. The panel found that the functional wording of the claim must be interpreted in light of the principles disclosed in the embodiment, without being strictly confined to every structural detail. Because the patent explicitly contemplated alternative mechanisms, such as trigger or spring mechanisms, the movable inner housing was not a limiting feature.
How does an inventive step attack undermine a sufficiency of disclosure defence?
The respondents challenged the validity of the patent, arguing that implementing the claimed functions without the specific inner housing would require inventive skill to overcome a physical impossibility. The Court observed a significant internal contradiction in this position. While arguing a lack of inventive step, the respondents proposed combining two prior art documents to create a functional insertion device that achieved the claimed outcome without using the specific inner housing. The panel held that this proposed workable alternative severely undermined the assertion that the patent failed to enable such alternatives without undue burden. Consequently, the Court found it more likely than not that the patent was valid.
Why was the EU Authorised Representative held liable as an infringer?
A notable aspect of the order is the treatment of the fifth respondent, the designated EU Authorised Representative under the Medical Devices Regulation. The panel held that the designation of an authorised representative constitutes a necessary legal precondition for a non-EU manufacturer to market medical devices within the Union. By assuming this role, the representative made a material and legally relevant contribution to the placing of the allegedly infringing products on the market. Applying the standard from UPC CoA no. 534/2024, the Court concluded that the representative was not a mere passive intermediary and qualified as an infringer under Article 25 UPCA and Article 63 UPCA.
What must practitioners anticipate regarding an interim award of costs after this order?
When seeking an interim award of costs under Rule 211.1(d) RoP, successful applicants typically expect an award of up to 50 percent of the applicable ceiling. However, this order demonstrates that pre-litigation conduct can justify a downward departure. Because the respondents complied with a prior undertaking to notify the applicant two months in advance of their intended market entry, the Court reduced the interim award of costs to 30 percent of the ceiling. Practitioners should advise clients that transparent pre-litigation communication and adherence to notice agreements can directly mitigate exposure to orders for an interim award of costs in Applications for provisional measures.
Sources
Further Reading
Articles related to the topics covered above.
Thresholds vs Optimization: The Court of Appeal on Software Method Claims
The Court of Appeal clarifies the distinction between binary threshold checks and continuous optimization algorithms in software method claims, while addressing the admissibility of late-filed non-infringement arguments.
Comity and Claim Construction: The Court of Appeal on Foreign Designations and Measurement Fluctuations
The Court of Appeal establishes a framework for adjudicating non-EU/LC European patents and clarifies that precise numerical claim values do not automatically include measurement fluctuations.
Evidentiary Gaps and Single-Appliance Claims in UPC Preliminary Injunctions
The Düsseldorf Local Division dismissed a preliminary injunction request after the applicant relied on marketing materials showing sequential treatment phases to prove infringement of a single-appliance method claim.