Context: The laser technology dispute between Korean companies Seoul Viosys and Photon Wave in the Unified Patent Court (UPC) has some unusual aspects. Seoul Viosys sued Photon Wave’s France-based distributor Laser Components. Laser Components did not bring a revocation counterclaim, but intervenor Photon Wave (the actual target of the action) did. The Paris Local Division (LD), however, decided that an intervenor’s litigation claims must be consistent with those of the party it is supporting, and threw out the revocation counterclaim (May 6, 2024 ip fray article). A standalone revocation claim that Photon Wave brought in the Paris seat of the Central Division (CD) was referred to the Paris LD and declared inadmissible (see item 3.2 of our January 26, 2025 UPC Roundup).
What’s new: Today the Paris LD handed down its judgment in the infringement case (PDF (in French)). Laser Components is held liable for infringement of the patent-in-suit in France, but only there, and remedies (damages and injunction) are limited in territorial scope to France, while Seoul Viosys also wanted to include Germany and the Netherlands (and in one context the UK), but without making test purchases to prove actual infringement by the particular defendant in those other countries.
Direct impact: In commercial terms, the limitation of the scope of the ruling to a French distributor mitigates its effects on Photon Wave’s business. In any event, both parties can now appeal the unfavorable parts of the decision. Seoul Viosys could bring a new complaint against Photon Wave itself and/or its distributors in other countries in order to obtain remedies with respect to more UPCland countries.
Wider ramifications: This may be the first-ever final judgment by the UPC to be based in part on the European Court of Justice decision in BSH Hausgeräte v. Electrolux (February 25, 2025 ip fray article). The decision notes that even under the BSH standard, the French distributor, which was not shown to have committed any infringing acts outside of France, can’t be enjoined with respect to other territoties (such as the UK). Other companies of the same group do operate in those other markets, but they were not named as defendants.
Laser Components’ defense based on not really knowing about the inner workings of the products it distributes obviously got no traction. Any infringer is liable.
The patent-in-suit is EP3404726 (“Ultraviolet light-emitting device”).
The outcome is a mixed one that will make neither side happy. Seoul Viosys can now argue that it has prevailed on the technical merits and, as mentioned further above, it could bring a follow-on lawsuit against additional entities to expand the territorial scope. On the infringement side that would probably be a slam dunk, based on the same expert report that persuaded the Paris LD this time, but next time around a revocation counterclaim will likely be brought by the correct party and within the time limit. The defending side will breathe a sigh of relief because of the limited territorial scope of the decision. And even without any wrongdoing by Photon Wave or other companies of the Laser group, it is possible that other distributors would now simply source the accused chipsets somewhere else and import them into France.
So even before the appeals court hears this case, there may be some further developments in this dispute. The next steps could be an appeal by Laser Components (with support from Photon Wave) and a follow-on lawsuit by Seoul Viosys, for which the Paris LD may not be the proper venue (for instance, they might have to sue Photon Wave, a Korean company, in the Central Division, or they might sue some other distributors and then bring the case in a German division or in the Dutch one). The Court of First Instance could put the follow-on lawsuit on an expedited schedule or it might prefer to await the outcome of an appeal. It is too early to tell who has won or lost.
Panel and counsel
Panel: Presiding Judge (and here, judge-rapporteur) Camille Lignières, Judge Carine Gillet, Judge Professor Peter Tochtermann (Mannheim, Germany) and Technically Qualified Judge Anthony Soledade (who also works at INPI, the French patent office).
Counsel for plaintiff Seoul Viosys: Linklaters’s Pauline Debré and Laetitia Nicolazzi.
Counsel for defendant Laser Components: GSKH‘s Helge von Hirschhausen.
Counsel for intervenor Photon Wave: Prüfer & Partner’s Dr. Dorothea Hofer, Dr. Andreas Oser and Dr. Peter Klein.