Meril v Edwards Lifesciences (CFI, 19 July 2024)

Dhenne Avocats · 10 October 2026

Our analysis

Summary

In a decision of 19 July 2024, the Paris Central Division ruled jointly on Meril Italy’s revocation action (UPC_CFI_255/2023) and on the counterclaims for revocation of Meril GmbH and Meril Life Sciences referred by the Munich Local Division (UPC_CFI_15/2023), directed against Edwards Lifesciences’ EP 3 646 825 (a transcatheter heart valve system with a frame of hexagonal cells). Claim 1 of the main request added matter by intermediate generalisation, but the patent was maintained on the basis of auxiliary request II, held clear, novel and inventive. Practitioners will note the guidance on parallel proceedings before different divisions, the admissibility of successive applications to amend, the presumption that the subsequent applicant is entitled to priority and the optional nature of the problem-solution approach.

Facts and procedure

The patent derives from a divisional of EP 3 205 309, itself a divisional of EP 2 731 552 (WO 2013/012801), and claims priority from two US applications of 15 July 2011 (P1) and 13 July 2012 (P2) (paragraph 2). Meril Italy brought the revocation action on 4 August 2023, Edwards’ preliminary objection under Article 33(2) UPCA was rejected on 13 November 2023, Meril Italy not being a party to the Munich infringement action (paragraphs 1, 5 and 6). Meril GmbH and Meril Life Sciences filed counterclaims in that action on 2 November 2023, which were referred to the Central Division on 28 March 2024 and consolidated with the revocation action (paragraphs 11 to 14). Edwards filed three applications to amend. The second was refused on 28 February 2024 and the third, with a main request and six auxiliary requests, admitted on 30 April 2024 (paragraphs 7 to 9). The joint oral hearing took place on 7 June 2024 (paragraph 15).

The applicable law

Article 33(3) and (4) UPCA and Rules 37.2, 302 and 340 RoP govern the coordination of revocation actions and counterclaims against the same patent (paragraphs 18 to 23). Rules 30 and 50 RoP govern applications to amend the patent (paragraphs 28 and 29). Validity was assessed under Articles 54, 56, 76(1), 84, 87(1) and 123(2) EPC, claims being construed in line with the Court of Appeal’s order of 26 February 2024 (paragraphs 41, 54, 75, 95 and 130).

Question

Were Edwards’ successive applications to amend admissible, and does the amended patent withstand the objections of added matter, lack of clarity, invalid priority, lack of novelty and lack of inventive step?

Decision

Consolidation before the local division under Rule 340 RoP cannot override the Central Division’s competence under Article 33(4) UPCA, and nothing provides for a joint hearing of the central and local panels. Consolidated claims keep their separate identity (paragraphs 19 to 23). The first application to amend was admissible, since an insufficient explanation makes an application unsubstantiated but not inadmissible, and the number of requests, though extremely high, was not unreasonable given the complexity of the case. Admission of the subsequent request of 12 April 2024 was confirmed (paragraphs 27 to 34).

Claim 1 of the main request takes the feature « the frame is made up entirely of hexagonal cells » while omitting the rest of the earlier application’s definition, which excluded any strut not forming part of a cell: this is an intermediate generalisation (Arts. 76(1) and 123(2) EPC) (paragraphs 62 to 67), the other added matter objections fail (paragraphs 45 to 61 and 68 to 70) and auxiliary request I does not cure the defect (paragraphs 72 and 73). Auxiliary request II, adding the nickel-cobalt-chromium-molybdenum alloy and the complete definition, is clear and adds no matter (paragraphs 74 to 82). The subsequent applicant enjoys a rebuttable presumption of entitlement to priority, which Meril did not rebut, but P1 does not directly and unambiguously disclose the claimed subject-matter, so the relevant date is 13 July 2012 (paragraphs 83 to 98). Levi, Benichou, Dimatteo and Hariton do not disclose a frame made entirely of hexagonal cells (paragraphs 99 to 118). The party disputing the technical effect bears the burden of proof (paragraph 124), the prior art, which combined hexagonal and diamond-shaped cells, gave no motivation for an all-hexagonal frame to reduce the crimping profile, and Fontaine’s article on a vascular stent addresses a different problem (paragraphs 129 to 152). The problem-solution approach is not mandatory and would lead to the same result starting from Levi (paragraphs 153 to 155).

The revocation action and the counterclaims were dismissed and the patent maintained as amended by auxiliary request II, the Registry being ordered to send the decision to the EPO and the national offices once the time limit for appeal has expired. As the claims failed only because the patent was limited during the proceedings, costs are borne 60% by the claimants and 40% by Edwards, the value of the action, set at EUR 8,000,000, also applies to the counterclaims taken together (paragraphs 156 to 159).

Key points for practice

• An application to amend with an insufficient explanation is not inadmissible and may be followed by a subsequent request under Rule 30.2 RoP (paragraphs 32 and 34).
• The subsequent applicant is presumed entitled to priority unless a separate transfer or a contrary intention of the original applicants is shown (paragraphs 90 and 91).
• The Central Division is not bound to apply the problem-solution approach when assessing inventive step (paragraph 153).
• Practical point: a proprietor that saves its patent only by limiting it during the proceedings may bear part of the costs, here 40% (paragraph 158).

Provisions applied

Agreement on a Unified Patent Court

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

Rules of Procedure

Rules 19.1, 30, 37.2, 48, 50, 302 and 340

European Patent Convention

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

Other provisions

Paris Convention for the Protection of Industrial Property, Art. 4

Case law cited

NanoString v 10x Genomics, Court of Appeal, 26 February 2024 (UPC_CoA_335/2023), Paris Local Division, 3 July 2024 (UPC_CFI_230/2023)

Related decisions

• Meril Italy v Edwards Lifesciences, 19 July 2024, decision of the same day recorded in Meril Italy’s revocation action.
• Meril Life Sciences v Edwards Lifesciences, 19 July 2024, decision of the same day recorded in Meril Life Sciences’ counterclaim.
• Edwards Lifesciences v Meril Life Sciences, 15 November 2024, Munich Local Division decision on the merits on infringement of the maintained patent.

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.