Meril Italy v Edwards Lifesciences (CFI, 19 July 2024)

Dhenne Avocats · 10 October 2026

Our analysis

Summary

In a decision on the merits of 19 July 2024, the Paris Central Division dismissed Meril Italy Srl’s revocation action (UPC_CFI_255/2023) and the counterclaims for revocation of Meril GmbH and Meril Life Sciences Pvt Ltd, which had been referred by the Munich Local Division and joined to the action, and maintained Edwards Lifesciences’ EP 3 646 825 as amended by auxiliary request II of 12 April 2024. The patent concerns a prosthetic heart valve whose frame consists entirely of hexagonal cells, combined with a balloon delivery catheter. For practitioners, the decision lays down a rebuttable presumption of priority entitlement in favour of the subsequent applicant, confirms that the party seeking revocation bears the burden of proving the relevant facts, and clarifies how the central division deals with counterclaims referred by a local division.

Facts and procedure

The patent stems from a chain of divisional applications and claims two US priorities of 15 July 2011 and 13 July 2012 (paragraphs 2 and 83). The initial application to amend was held admissible. A second request of 22 January 2024, comprising 41 auxiliary requests, was rejected as not reasonably justified. A later request of 12 April 2024 was admitted (paragraphs 7 to 9 and 24 to 34). The Munich Local Division referred the counterclaims (CC_584916/2023 and CC_585030/2023) to the Central Division, which joined them to the revocation action and held a single oral hearing on 7 June 2024 (paragraphs 13 to 15).

The applicable law

The grounds of invalidity relied on arise under Articles 54, 56, 76(1), 84, 87(1) and 123(2) EPC. The interplay of parallel proceedings is governed by Article 33 UPCA and Rules 302 and 340. Claim construction follows the Court of Appeal order of 26 February 2024: the claim is the decisive basis, with the description and drawings used to interpret it (paragraph 41).

Question

Does the patent, as amended, meet the requirements as to added matter, clarity, priority, novelty and inventive step, and how does a revocation action before the central division interact with counterclaims referred by a local division?

Decision

On the interplay of proceedings, the Division held that Article 33(3) leaves the local division a case-by-case discretion, that joinder under Rule 340 cannot override the central division’s competence under Article 33(4), and that joined claims keep their separate identity (paragraphs 18 to 23). The main request contained an impermissible intermediate generalisation, as it omitted the definition of the homogeneous pattern (paragraphs 63 to 66 and 71). Auxiliary request II was clear and did not add matter (paragraphs 76 to 82). The subsequent applicant enjoys a rebuttable presumption of entitlement to priority, which Meril did not rebut (paragraphs 87 to 91), the first priority was nonetheless not validly claimed, since that document disclosed neither a frame made entirely of hexagonal cells nor the absence of a leaflet structure and sealing skirt, so the relevant date is 13 July 2012 (paragraphs 96 to 98). No prior art disclosed all the features (paragraphs 99 to 118). As Meril, which bore the burden of proof, failed to disprove the asserted technical effect (paragraphs 124 and 125) and the prior art did not suggest an all-hexagonal frame (paragraphs 133 to 138), inventive step was acknowledged (paragraphs 154 and 155). Costs were split 60% jointly to Meril Italy and the counterclaimants and 40% to Edwards, the patent having survived only because it was limited. The value was set at EUR 8,000,000 for the action, the same value applying to the counterclaims taken together (paragraphs 158 and 159).

Key points for practice

• The subsequent applicant who shows it acquired the right to the application is presumed entitled to priority. The opponent must prove a separate dispositive act or a contrary intention.
• The party seeking revocation must prove the facts contradicting the asserted technical effect. Inconclusive expert declarations are not enough.
• Joining a revocation action with referred counterclaims does not merge the claims or deprive the central division of its competence.
• Practical point: a patentee that saves its patent only by limiting it during the proceedings may bear a substantial share of the costs, even though the action is dismissed.

Provisions applied

Agreement on a Unified Patent Court

Art. 33(2), (3)(b) and (4)

Rules of Procedure

Rules 19.1(b), 30, 37.2, 48, 50, 302 and 340

European Patent Convention

Art. 54, Art. 56, Art. 76(1), Art. 84, Art. 87(1), Art. 88(1), Art. 123(2) and (3)

Case law cited

Court of Appeal, 26 February 2024, UPC_CoA_335/2023, Paris Local Division, 3 July 2024, UPC_CFI_230/2023, Munich Local Division, order of 28 March 2024, EPO Enlarged Board of Appeal, G 1/22 and G 2/22, 10 October 2023, and G 2/98, 31 May 2001

Prepared by Dhenne Avocats from the official decision, consulted on 10 October 2026. The database is updated every week, on Friday. Only the official text is authoritative.