| [BHERIHG ADVOGADOS] SEP Litigation Figures in Brazil |
| 작성자 : KINPA(ksy@kinpa.or.kr)
작성일 : 2025-11-19 조회수 : 86 |
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| SEP Litigation Figures in Brazil |
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| Tendencies
in Brazil
Preliminary injunction scenario
While ex parte preliminary injunctions continue to be granted in SEP cases, a few recent decisions from the Rio de Janeiro Business Courts indicate that some trial judges have required
preliminary assessments by court-appointed experts to establish the necessary technical basis before ruling on such requests. As a result, some decisions on preliminary injunction requests have been postponed pending this expedited technical review,
which can be issued within a few weeks. Nevertheless, significant preliminary injunctions (some granted
ex parte) were issued in the past quarter, leading to enforcement measures against implementers and suppliers, including
border seizures by the Brazilian Customs targeting imported products (as in
Huawei v. MediaTek) and the disabling of patented functionalities in infringing products (as in
Godo Kaisha v. BYD). New declaratory non-infringement actions At the same time, filing
declaratory non-infringement actions, proceedings for early production of evidence, and actions to discuss FRAND licences are a growing trend among SEP licensees in Brazil, particularly before the Sao Paulo State Court. As most prior SEP infringement
cases have been adjudicated primarily by the Rio de Janeiro State Court ? a venue regarded as favourable to licensors ? licensees have been proactively seeking to establish alternative jurisdictions ? before an infringement action is even brought. It remains too early to determine whether the Sao Paulo State Court will emerge as a more favourable venue for licensees, but we will continue to closely monitor how
these cases develop. CADE's perspective Alongside the evolving legal landscape, in July 2025, the Brazilian Administrative Council for Economic Defense (CADE) has published a report on SEPs, signalling that
the antitrust authority is closely monitoring the increasing disputes surrounding these patents. The report was published following the investigation initiated by Lenovo and Motorola against Ericsson, for the alleged abuse of dominant position in the licensing
of SEPs. According to the complaints, Ericsson allegedly refused to license its SEPs independently within Brazil, instead conditioning access on the signing of a global licensing agreement. CADE’s study explores how different countries approach SEPs, with a focus on legislation, litigation, and the role of FRAND licensing. While noting that Brazil still
lacks specific regulations or clear guidelines on the topic, it emphasizes the importance of existing measures to protect SEPs owners from free-riding and unfair practices such as “hold-out”. According to CADE, from a innovation perspective, when implementers refuse to pay royalties, it discourages future R&D investments, which can be “more harmful to
innovation, because, in this case, resist investing in a given standard (for instance, due to a lack of agreement on royalty rates), the innovator will be unable to make their innovation economically viable”. |
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| | | Nokia v. ASUS May 6th, 2025 ? H.264 Nokia v. Hisense May 6th, 2025 ? H.264 NEC v. Transsion & Positivo June 18th, 2025 ? H.265 Godo Kaisha v. BYD June 26th, 2025 ? 4G/LTE Philips v. Shenzhen & Positivo July 29th, 2025 ? HEVC Jvckenwood v. Hisense & Multilaser* September 11th, 2025
Dolby v. Roku* October 10th, 2025 |
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| Nokia v. ACER May 6th, 2025 ? H.264 NEC v. HMD & Multi June 13th, 2025 ? AAC Jvckenwood v. Transsion & Positivo June 23th, 2025 ? H.265 Panasonic v. HMD & Multilaser July 27th, 2025 ? AAC Nokia v. MTV & Paramount August 21st, 2025 ? H.264 Interdigital v. Shenzhen & Positivo* September 24th, 2025 Nokia v. Warner Bros November 1st, 2025
? AVC/HEVC |
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| | Nokia v. Amazon May 16th ? HEVC
Godo Kaisha v. BYD September 9th, 2025. Mediatek v. Huawei* October, 2025 |
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| Dolby v. Shenzhen & Positivo July 20th, 2025.
Huawei v. Mediatek* October, 2025 |
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| | | Recent
Preliminary
Injunction Decisions |
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| Nokia v. ACBZ on May 23rd, 2025 (16 days after filing) ?
H.264 Judge Caroline Rossy Brandao Fonseca (3rd Business Court of Rio de Janeiro State) - “The likelihood of success on the merits is demonstrated by the plaintiff’s ownership of the patent (...), expert opinions from professionals in the field (...),
and tests conducted on the infringing products, duly recorded in notarial minutes. (...) At least at this preliminary stage, patent infringement has been established. It is also noted that, prior to filing the present lawsuit, the plaintiff attempted to resolve
the matter through administrative means for eight (8) years. The defendant does not deny these attempts at conciliation. (...) This confirms that judicial intervention was sought only as a last resort to put an end to the ongoing infringement. As for the risk
of harm, it is clear that the legal framework itself establishes that the patent holder has the right to prevent third parties from using the patented invention (...).”
Dolby v. Shenzhen & Positivo on June 10th, 2025 (70 days after filing) ? AAC Reporting Appellate Judge Leila Santos Lopes (18th Chamber of Private Law of Rio de Janeiro State Court), at appellate level - “Based on a summary assessment, there is evidence supporting the appellant’s claim, particularly in light of the fact that the issue of the patent's essentiality does not deprive the
holder of the exclusive rights conferred by the patent, nor of the prerogative to prevent unauthorized third-party use. Compliance with FRAND terms will still be subject to further evidentiary proceedings."
Godo Kaisha v. BYD on July 6th, 2025 (16 days after filing) ? LTE Judge Caroline Rossy Brandao Fonseca (3rd Business Court of Rio de Janeiro State) - “The case records also demonstrate the use of the technology developed by the plaintiff, as evidenced by the technical reports submitted to the case file. It has been shown that the
defendant is the only automaker in Brazil using said technology without providing proper compensation. (...) As for the risk of harm or the danger to the useful result of the proceedings, considering that the patent registration has a limited term (expiring
in 2030) and that only about five years of exclusive use remain, it is clear that there is relatively little time left to economically exploit the patent. (...) The legal protection granted to patents aims, above all, to prevent unfair competition by discouraging
the unauthorized use of third-party inventions and the resulting unjust enrichment at the expense of the rightful holder's intellectual effort."
Interdigital v. Disney on September 10th, 2025 (219 days after filing) ? AVC and HEVC Judge Simone Gastesi Chevrand (7th Business Court of Rio de Janeiro), after the preliminary examination phase. - “In light of the technical report filed in the case records, prepared by a court-appointed expert of recognized competence, the alleged patent infringement was confirmed. Indeed, after
defining the scope of patents PI 0305519-1 and PI 0318825-5 and confirming that they are not standard-essential, the expert concluded that there was infringement by the defendant through the encoding and importation of video content in the H.264/AVC and H.265/HEVC
formats using the explicit weighted prediction process. The report is extensive, delves into technical matters, thoroughly addresses the parties’ questions, and answers those raised by the Court. There is no reason for it not to be fully adopted.”
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| | As Brazil’s SEP landscape continues to evolve, staying ahead of the trends is key.
Our team remains available to assist in assessing potential impacts on your licensing and enforcement strategies in Brazil. For further information, please contact us
at sep@bhering.adv.br. |
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