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
Patent no. Proprietor
EP3404726 Seoul Viosys Co., Ltd.

COMPOSITION OF PANEL– FULLPANEL
Presiding judge & Camille Lignières
Judge-rapporteur
Legally qualified judge Carine Gillet
Legally qualified judge Peter Tochtermann
Technically qualified judge Antony Soledade

LANGUAGE OFPROCEEDINGS: English

ORDER

FACTS AND PROCEEDINGS
On 5 December 2023, Seoul Viosys, the owner of patent EP 3404726 (EP’726), filed an infringement
ac􀆟on against Laser Components before the Paris Local Division (ACT 588685/2023).
On 12 February 2024, the present Court declared admissible the interven􀆟on of Photon Wave in
the infringement ac􀆟on.
The par􀆟es exchanged their statements on 18 March 2024 (Statement of defence from Laser Com-
ponents without counterclaim for revocation), 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 mo􀆟on a statement of defense reques􀆟ng the
right to file either an independent counterclaim for a declara􀆟on of invalidity or a counterclaim for
a declara􀆟on of invalidity pursuant to Article 33(4) UPCA before 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 􀆟me limit prescribed to the main defendant, its request for revocation of the patent at
issue.
On 17 May 2024, Photon Wave brought before the Central Division in Paris, an ac􀆟on for revocation
of the patent belonging to Seoul Viosys (ACT 28074/2024). Seoul Viosys lodged a preliminary ob-
jection 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 Objection Order dated January 5,
2025:
-The preliminary Objection is admissible,
- Photon Wave's main request that the Central Division declare itself competent to hear the revo-
cation action is rejected,
-The auxiliary request to transfer the revocation ac􀆟on to the Local Division is ordered
-Photon Wave shall bear 80 % of the legal costs of the preliminary objec􀆟on, incurred by Seoul
Viosys.
The case was transferred to the Paris Local Division and the Judge-Rapporteur in this case consid-
ered that it was in the interest of the proper administration of justice to deal first with the ques-
tion of the admissibility of this ac􀆟on before the Local Division, which was disputed by the par-
ties.
-SEOUL VIOSYS argues that:
-Local Division has no jurisdiction to hear the Revocation action pursuant to Article 33(4) UPCA,
-the ac􀆟on is manifestly inadmissible on the basis of R. 361 RoP, arguing that:
-a party to a pending infringement ac􀆟on can only challenge the validity of the patent through a
counterclaim, Seoul Viosys based its asser􀆟on that Photon Wave is restricted to a counterclaim
for revoca􀆟on also on Rule 25(1) RoP.
-since Photon Wave decided not to file a nullity counterclaim, it is therefore now precluded from
atiacking the Patent’s validity through any other procedural route,
-such ruling is aligned with the principle of fairness,
-Should the revocation ac􀆟on be deemed admissible, it should not be joined to the Infringement
action.
PHOTON WAVE responds that the revocation action is admissible, arguing that Rule 361 RoP pro-
vides no basis for ruling the action for revocation inadmissible:
-the jurisdiction of the UPC is not disputed in the case at hand,
-the inadmissibility is not immediately apparent as the ques􀆟on is in debate in the doctrine
(Bopp/Kircher v Tilmann/Plassmann),
-in addi􀆟on, inadmissibility does not result from Articles 32 and 33 UPCA:
-Art. 33(4) UPCA does not contain any limitation whatsoever to the right of any party con-
cerned by a patent to file a (separate/independent) revocation action.
-the wording of Art. 33(3) UPCA does not explicitly require a counterclaim for revoca􀆟on
when an infringement ac􀆟on has been brought between two par􀆟es. Rather, the counterclaim is
considered only as an op􀆟on in rela􀆟on to a pending infringement ac􀆟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 revoca􀆟on ac􀆟on under Art. 32(1) d) UPCA, this
will lead to a conflict between Rule 25 RoP and Art. 33(4) UPCA.
PHOTON WAVE refers to a Central Division Munich order sta􀆟ng: “Revocation actions may be
brought to the UPC at any time. It is only a question at which division within the UPC this has to
be done, with the aforementioned possibility of correcting this after bringing the action to – what
later, if and when an objection is made, turns out to be – the wrong division.”
On PHOTON WAVE’s view, inadmissibility order would be not aligned with the principle of fair-ness,
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 ac􀆟on case.
LEGAL FRAMEWORK
Art. 33 UPCA - Competence of the divisions of the Court of First Instance:
3. A counterclaim for revocation as referred to in Article 32(1)(e) may be brought in the case of an
action for infringement as referred to in Article 32(1)(a).
4. Ac􀆟ons referred to in Article 32(1)(b) and (d) shall be brought before the central division. If,
however, an action for infringement as referred to in Article 32(1)(a) between the same parties
relating to the same patent has been brought before a local or a regional division, these actions
may only be brought before the same local or regional division.
Rule 25 RoP– Counterclaim for revocation:
1. If the Statement of defence includes an assertion that the patent alleged to be infringed is invalid
the Statement of defence shall include a Counterclaim against the proprietor of the patent for
revoca􀆟on of said patent in accordance with Rule 42.
Rule 361 – Ac􀆟on manifestly bound to fail:
Where it is clear that the Court has no jurisdiction to take cognisance of an ac􀆟on or of certain of
the claims therein or where the action or defence is, in whole or in part, manifestly inadmissible or
manifestly lacking any foundation in law, the Court may, a􀅌er giving the par􀆟es an opportunity to
be heard, give a decision by way of order.
GROUNDS
Competence
Regarding the question of the competence of the local division for the revocation action, although
the first sentence of Article 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 divi-
sion (dealing with the same patent and the same parties), there is an excep􀆟on and a revocation
ac􀆟on must be brought before the local division.
The Court therefore considers that it is not on the basis of lack of competence that the revoca􀆟on
from PHOTON WAVE action can be rejected in the case at hand.
Inadmissibility
1-Contrary to what SEOUL VIOSYS claims, the contested action is not manifestly inadmissible in the
sense provided by rule 361 RdP. In fact, the applica􀆟on of the combined rules of Articles 32 and 33
UPCA as well as the role of the intervener as provided for in the UPC legal texts and the qualification
as a "party" are still open to legal discussion in their application, (even if the decisions already
rendered by the UPC, particularly 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 revocation action inadmissible before this Division is not
appropriate in the present case.

2- With respect to PHOTON WAVE's interpretation of Article 33-3 UPCA that a counterclaim "may"
be brought in an infringement ac􀆟on:
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 action (ACT 588685/2023), the defendant chose not to raise a counter-claim
in its statement of defence. If it had done so, it could only have done so before the local
division and within the mandatory 􀆟me limits for the written procedure set out in the Rules of
Procedure.
Consequently, contrary to what PHOTON WAVE argues, the Court considers that there is no con-
tradic􀆟on between the Rules of Procedure and the provisions of the UPCA in Article 33.3 which
uses “may", and in the last sentence of Article 33.4, which states that an action for revocation of a
patent must only be raised before the local division in charge of the infringement action 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 pre-
sent case since it refers to a situation provided for in Ar􀆟cle 33.5 UPCA (CD first seized), which is
different from that provided for in Article 33.4 UPCA.
4-PHOTON WAVE's argument that the Court cannot prohibit it from seeking revoca􀆟on of the pa-tent
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 efficiency which also governs the rules of pro-
cedure before the UPC. In the parallel infringement action, PHOTON WAVE had access to all the
documents in the file as early as 20 February 2024 and it was only on 18 March 2024, i.e. the last
day of the deadline for filing the statement of defence, that it requested an extension of the dead-
line for filing submissions for revocation of the patent in ques􀆟on, without any additional justifica-
􀆟on. 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 ac􀆟on, 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 􀆟me. In this regard, the Court
expressly refers to the grounds for its previous orders in the infringement ac􀆟on 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 s􀆟ll have the possibility of ac􀆟ng independently before the
UPC to challenge a patent that is, in his view, invalid, but outside the context of an infringement
ac􀆟on pending before the local division seized of an ac􀆟on that is currently at the interim confer-ence
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-à-vis the defendant in an infringement action which has
already been unduly slowed by PHOTON WAVE's various unsuccessful attempts to circumvent its
mandatory 􀆟me limits under the Rules on the exchange of pleadings in an infringement action.

5-For these reasons and in conformity with the principles of fairness and efficiency which govern
proceedings before the UPC, the Ar􀆟cles 32 and 33 UPCA and of the rules on the role of the inter-
vener as provided for by the RoP, a standalone ac􀆟on for revocation of the patent EP 726 is there-fore
inadmissible before the present Division, in the case at hand.
6 - As to costs, SEOUL VIOSYS requested an increase of its representation costs considering PHOTON
WAVE's procedural conduct. PHOTON WAVE contested this request as unjustified, pointing out in
particular that the preliminary objec􀆟on had been raised by SEOUL VIOSYS before the Central Di-vision.
In light of Art. 69 UPCA, Rule 152 RoP and the Administrative Commitiee'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 revocation action 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

INFORMATION ABOUT APPEAL
AN APPEAL AGAINST THE PRESENTDECISION MAY BE LODGED AT THECOURT OFAPPEAL, 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