Paris Local Division

UPC_CFI_238/2024 Final Order on admissibility of the Court of First Instance of the Unified Patent Court

delivered on 24/01/2025

CLAIMANT

Photon Wave Co., Ltd. 52, Jugyang 763 beon-gil, Wonsam-myeon, Cheoin-gu, Yongin-si, - 17166 - Gyeonggi-do -

KR

Represented by Dorothea Hofer

DEFENDANT

Seoul Viosys Co., Ltd. 65-16, Sandan-ro 163 beongil, Danwon-gu, Ansan-si, - 15429 - Gyeonggi-do - KR

Represented by

Pauline Debré

PATENT AT ISSUE

COMPOSITION OF PANEL - FULL PANEL

Presiding judge &

Camille Lignières

Judge-rapporteur

Legally qualified judge

Carine Gillet

Legally qualified judge

Peter Tochtermann

Technically qualified judge

Antony Soledade

LANGUAGE OF PROCEEDINGS: English

ORDER

FACTS AND PROCEEDINGS

On 5 December 2023, Seoul Viosys, the owner of patent EP 3404726 (EP'726), fi led an infringement acƟon against Laser Components before the Paris Local Division (ACT 588685/2023).

On 12 February 2024, the present Court declared admissible the intervenƟon of Photon Wave in the infringement acƟon.

The parƟes exchanged their statements on 18 March 2024 (Statement of defence from Laser Components without counterclaim for revocaƟon), 16 May 2024 (Seoul Viosys reply) and 14 June 2024 (Laser Components and Photon Wave, as intervener).

On 18 March 2024, Photon Wave filed on its own moƟon a statement of defense requesƟng the right to file either an independent counterclaim for a declaraƟon of invalidity or a counterclaim for a declaraƟon of invalidity pursuant to ArƟcle 33(4) UPCA be fore the Paris Local Division. By order dated 6 May 2024, the Paris Local Division ruled that Photon Wave, as intervener, did not lodge within the Ɵme limit prescribed to the main defendant, its request for revocaƟon of the patent at issue.

On 17 May 2024, Photon Wave brought before the Central Division in Paris, an acƟon for revocaƟon of the patent belonging to Seoul Viosys (ACT 28074/2024). Seoul Viosys lodged a preliminary objecƟon on 6 August 2024 (App. 45571/2024), to which Photon Wave answered on 16 August 2024.

On 24 July 2024, the Paris Local Division denied the request for stay lodged by PHOTON WAVE. The Oral hearing was scheduled for March 13, 2025 (Order of September 30, 2024), with an Interim conference scheduled for January 24, 2025, which was rescheduled for February 7, 2025 (Order of January 16, 2025).

The Paris Central Division ruled as follows in its Preliminary ObjecƟon Order dated January 5, 2025:

-The preliminary ObjecƟon is admissible,

• • Photon Wave's main request that the Central Division declare itself competent to hear the revocaƟon acƟon is rejected,

-The auxiliary request to transfer the revocaƟon acƟon to the Local Division is ordered

• -Photon Wave shall bear 80 % of the legal costs of the preliminary objecƟon, incurred by Seoul Viosys.

The case was transferred to the Paris Local Division and the Judge-Rapporteur in this case considered that it was in the interest of the proper administraƟon of jusƟce to deal first with the quesƟon of the admissibility of this acƟon before the Local D ivision, which was disputed by the parƟes.

-SEOUL VIOSYS argues that:

• -Local Division has no jurisdicƟon to hear the RevocaƟon acƟon pursuant to ArƟcle 33(4) UPCA,
• -the acƟon is manifestly inadmissible on the basis of R. 361 RoP, arguing that:
• -a party to a pending infringement acƟon can only challenge the validity of the patent through a counterclaim, Seoul Viosys based its asserƟon that Photon Wave is restricted to a counterclaim for revocaƟon also on Rule 25(1) RoP .

-since Photon Wave decided not to fi le a nullity counterclaim, it is therefore now precluded from aƩacking the Patent's validity through any other procedural route,

• -such ruling is aligned with the principle of fairness,
• -Should the revocaƟon acƟon be deemed admissible, it should not be joined to the Infringement acƟon.

PHOTON WAVE responds that the revocaƟon acƟon is admissible, arguing that Rule 361 RoP provides no basis for ruling the acƟon for revocaƟon inadmissible:

• -the jurisdicƟon of the UPC is not disputed in the case at hand,
• -the inadmissibility is not immediately apparent as the quesƟon is in debate in the doctrine (Bopp/Kircher v Tilmann/Plassmann),
• -in addiƟon, inadmissibility does not result from ArƟcles 32 and 33 UPCA:
• -Art. 33(4) UPCA does not contain any limitaƟon whatsoever to the right of any party concerned by a patent to file a (separate/independent) revocaƟon acƟon.
• -the wording of Art. 33(3) UPCA does not explicitly require a counterclaim for revocaƟon when an infringement acƟon has been brought between two parƟes. Rather, the counterclaim is considered only as an opƟon in relaƟon to a pending infringement acƟ on.

PHOTON WAVE contends that the admissibility does also not result from Rule 25 RoP, arguing that Rule 25 RoP and the term regime governing the defence- as Tilmann does - that a party to infringement proceedings is not allowed to file revocaƟon acƟon under Art. 32(1) d) UPCA, this will lead to a con fl ict between Rule 25 RoP and Art. 33(4) UPCA.

PHOTON WAVE refers to a Central Division Munich order staƟng: 'RevocaƟon acƟons may be brought to the UPC at any Ɵme. It is only a quesƟon at which division within the UPC this has to be done, with the aforemenƟoned possibility of correcƟng this aŌer bringing the acƟon to - what later, if and when an objecƟon is made, turns out to be - the wrong division.'

On PHOTON WAVE's view, inadmissibility order would be not aligned with the principle of fairness, regarding its status of intervener and its status of a small or medium size company,

Finally, PHOTON WAVE suggests joining the present proceedings to the infringement acƟon case.

LEGAL FRAMEWORK

Art. 33 UPCA - Competence of the divisions of the Court of First Instance:

• 3. A counterclaim for revocaƟon as referred to in ArƟcle 32(1)(e) may be brought in the case of an acƟon for infringement as referred to in ArƟcle 32(1)(a).
• 4. AcƟons referred to in ArƟcle 32(1)(b) and (d) shall be brought before the central division. If, however, an acƟon for infringement as referred to in ArƟcle 32(1)(a) between the same parƟes relaƟng to the same patent has been brought before a local or a regional division, these acƟons may only be brought before the same local or regional division.

Rule 25 RoPCounterclaim for revocaƟon:

• 1. If the Statement of defence includes an asserƟon that the patent alleged to be infringed is invalid the Statement of defence shall include a Counterclaim against the proprietor of the patent for revocaƟon of said patent in accordance with Rule 42.

Rule 361 AcƟon manifestly bound to fail:

Where it is clear that the Court has no jurisdicƟon to take cognisance of an acƟon or of certain of the claims therein or where the acƟon or defence is, in whole or in part, manifestly inadmissible or manifestly lacking any foundaƟon in law, the Court may, aŌer giving the parƟes an opportunity to be heard, give a decision by way of order.

GROUNDS

Competence

Regarding the quesƟon of the competence of the local division for the revocaƟon acƟon, although the first sentence of ArƟcle 33.4 UPCA affirms the principle of the competence of the central division, the second sentence indicates that in the event of parallel proceedings before this local division (dealing with the same patent and the same parƟes), there is an excepƟon and a revocaƟon acƟon must be brought before the local division.

The Court therefore considers that it is not on the basis of lack of competence that the revocaƟon from PHOTON WAVE acƟon can be rejected in the case at hand.

Inadmissibility

1-Contrary to what SEOUL VIOSYS claims, the contested acƟon is not manifestly inadmissible in the sense provided by rule 361 RdP . In fact, the applicaƟon of the combined rules of ArƟcles 32 and 33 UPCA as well as the role of the intervener as provided for in the UPC legal texts and th e qualificaƟon as a "party" are sƟll open to legal discussion in their applicaƟon, (even if the decisions already rendered by the UPC, parƟcularly in the dispute before the present court opposing SEOUL VIOSYS and PHOTON WAVE have shed light on this debate.) Accordingly, the legal basis provided by rule 361 RoP for declaring PHOTON WAVE's revocaƟon acƟon inadmissible before this Division is not appropriate in the present case.

2With respect to PHOTON WAVE's interpretaƟon of ArƟcle 33 -3 UPCA that a counterclaim "may" be brought in an infringement acƟon:

The Court notes that, in this context, the expression "may be" means that the defendant has the possibility in his statement of defence to challenge the validity of the patent that is asserted against him and that he can choose to challenge only the infringement that is alleged against him.

In the parallel infringement acƟon (ACT 588685/2023), the defendant chose not to raise a counterclaim in its statement of defence. If it had done so, it could only have done so before the local division and within the mandatory Ɵme limits for the wriƩen procedure set out in the Rules of Procedure.

Consequently, contrary to what PHOTON WAVE argues, the Court considers that there is no contradicƟon between the Rules of Procedure and the provisions of the UPCA in ArƟcle 33.3 which uses 'may", and in the last sentence of ArƟcle 33.4, which states that an acƟon for revocaƟon of a patent must only be raised before the local division in charge of the infringement acƟon for that patent.

3-Furthermore, the order ruled by the Central Division of Munich (CD Munich, order 560432 case CFI_1/2023) to which PHOTON WAVE refers in support of its reasoning is not relevant to the present case since it refers to a situaƟon provided for in ArƟcle 33 .5 UPCA (CD fi rst seized), which is different from that provided for in ArƟcle 33.4 UPCA.

4PHOTON WAVE's argument that the Court cannot prohibit it from seeking revocaƟon of the patent at issue, based on a breach of the principle of fairness, is not persuasive. In fact, this principle of fairness shall be combined with the principle of e ffi ciency which also governs the rules of procedure before the UPC. In the parallel infringement acƟon, PHOTON WAVE had access to all the documents in the fi le as early as 20 February 2024 and it was only on 18 March 2024, i.e. the last day of the deadline for fi ling the statement of defence, that it requested an extension of the deadline for filing submissions for revocaƟon of the patent in quesƟon, without any addiƟonal jusƟficaƟon. It was up to the defendant and the intervener to be diligent.

In order to avoid any dilatory strategy on the part of the defence, which would consist of having an intervener intervene late in order to delay the proceedings in bad faith to the detriment of the interests of the Claimant in the infringement acƟon, and taking into account the fact that the intervener (in accordance with Rule 313.2 RoP) can only intervene to support the procedural strategy of the defendant, the panel rejected this request for an extension of Ɵme. In this regard, the Court expressly refer s to the grounds for its previous orders in the infringement acƟon dated of 13 March 2024 (ORD_13006-ACT_588685/2023-UPC_CFI_440/2023) and dated of 6 May 2024 (ORD_18404/2024-ACT_588685/2023-UPC_CFI_440/2023).

The Court notes that the intervener will sƟll have the possibility of acƟng independently before the UPC to challenge a patent that is, in his view, invalid, but outside the context of an infringement acƟon pending before the local division seized of an acƟon that is currently at the interim conference stage.

As SEOUL VIOSYS has argued, the intervener cannot circumvent the rules set out in the Rules of Procedure on the role of the intervener vis-àvis the defendant in an infringement acƟon which has already been unduly slowed by PHOTON WAVE's various unsuccess ful aƩempts to circumvent its mandatory Ɵme limits under the Rules on the exchange of pleadings in an infringement acƟon.

5-For these reasons and in conformity with the principles of fairness and e ffi ciency which govern proceedings before the UPC, the ArƟcles 32 and 33 UPCA and of the rules on the role of the intervener as provided for by the RoP, a standalone acƟon for revocaƟon of the patent EP 726 is therefore inadmissible before the present Division, in the case at hand.

• 6 As to costs, SEOUL VIOSYS requested an increase of its representaƟon costs considering PHOTON WAVE's procedural conduct. PHOTON WAVE contested this request as unjusƟfied, poinƟng out in parƟcular that the preliminary objecƟon had been raised by SE OUL VIOSYS before the Central Division.

In light of Art. 69 UPCA, Rule 152 RoP and the AdministraƟve CommiƩee's decision of 24 April 2023 on the Scale of ceilings for recoverable costs, the Court sees no reason to increase the costs ceiling, in the case at hand.

Therefore, SEOUL VIOSYS's request for a 50% increase of the legal costs ceiling is not granted.

The Court orders that:

• the revocaƟon acƟon before the present Division is inadmissible,

-PHOTON WAVE shall bear the costs of the present proceedings and the request from SEOUL VIO- SYS for increasing the legal costs ceiling is rejected.

Issued in Paris, on 24 January 2025

Camille Lignières , Presiding judge and Judge-rapporteur

Carine Gillet , Legally qualified judge

Peter Tochtermann , Legally qualified judge

Anthony Soledade , Technically qualified judge

Charlotte Ferhat , Clerk

INFORMATION ABOUT APPEAL

AN APPEAL AGAINST THE PRESENT DECISION MAY BE LODGED AT THE COURT OF APPEAL, BY ANY PARTY WHICH HAS BEEN UNSUCCESSFUL, IN WHOLE OR IN PART, IN ITS SUBMISSIONS, WITHIN TWO MONTHS OF THE DATE OF ITS NOTIFICATION (ART. 73(1) UPCA, R. 220.1(A), 224.1(A) ROP).

ORDER DETAILS

Order no. ORD_3876/2025 in ACTION NUMBER: ACT_28074/2024

UPC number: UPC_CFI_238/2024

Action type:

Revocation Action