MEDIA & PUBLICATIONS

Judicial systems thrive on predictability and fairness. In patent litigation, these principles are often tested, not only by global extraterritorial manoeuvres, but also by domestic tactics aimed at distorting jurisdictional rules.

Recently, in a patent infringement lawsuit filed before the Rio de Janeiro State Court (“TJRJ”), one of the 27 State Courts in the Country, Judge Victor Agustin Torres, sitting by designation on the 6^th Business Trial Court, issued a decision emphasising that good faith must prevail over procedural gamesmanship.

The Timeline: Declaratory Judgments of Non-Infringement as Procedural Torpedoes

On August 18, 2025, standard essential patent (“SEP”) implementers Hisense and Multilaser filed a declaratory judgment of non-infringement complaint against patent pool manager Access Advance and some of its High Efficiency Video Coding (HEVC/H.265) licensors (JVC, ETRI, Dolby, Sun Patent Trust, Philips, GE, NEC, Huawei, Mitsubishi and IP Bridge), before the 1^st Business Court of the São Paulo State Court (“TJSP”). This case was filed under seal, so its contents cannot be known even by the defendants until service is formally completed.

Less than a month later, JVCKenwood (“JVC”), an Access Advance licensor, filed an infringement lawsuit with a preliminary injunction request against Hisense and Multilaser before the 6^th Business Trial Court of TJRJ, alleging unauthorised implementation of HEVC technology protected by one of its SEPs. The filing led to the defendants immediately invoking the prior São Paulo lawsuit - its existence unbeknownst to JVC until then - to argue for a jurisdictional decline, claiming the lawsuits were connected under Brazilian procedural law.

In a decision issued on October 15, 2025, Judge Torres identified a troubling pattern: first, a lawsuit for declaratory judgement (“DJ”) is filed in São Paulo by an implementer regarding dozens of patents; then, when the patent owner seeks relief against infringement, the implementer files a brief demanding the case to be held by the court handling the overly broad DJ case. His warning was categorical: “This scenario is a warning to prevent the manipulation of jurisdiction rules.”. For this reason, he ruled to keep the infringement lawsuit under the jurisdiction of the TJRJ, refusing to decline its jurisdiction.

The implementers’ narrative suggests that filing an infringement lawsuit before the Rio de Janeiro’s courts was somehow opportunistic. Nothing could be further from the truth. Article 53 of the Brazilian Civil Procedure Code (“CPC”) provides that a lawsuit can be filed in the forum where the damage occurs. In this case, the infringing conduct also took place in Rio de Janeiro.

Far from violating procedural fairness, the patent owner’s choice of Rio de Janeiro reflects strict adherence to territorial principles. The IP-specialized Business Courts of Rio de Janeiro were instituted a quarter of century ago (they are the oldest in the country with jurisdiction over patent infringement) and have 13 years of experience judging SEP infringement lawsuits, which makes it an appropriate forum to discuss these matters.

When infringement occurs in Rio, the plaintiff files a lawsuit to ensure effective and timely enforcement. To suggest otherwise is to invert the logic of jurisdiction and reward abusive tactics.

Obstruction as Implementers’ Weapon

Why the insistence of implementers on DJ cases filed in São Paulo? The answer lies in the mechanics of procedural obstruction. The declaratory judgment of non-infringement filed by Hisense and Multilaser grouped 12 defendants and 12 distinct patents, generating over a hundred different claims. Such excessive accumulation of claims, coupled with the technical complexity inherent to disputes involving high tech patents, creates a procedural labyrinth designed to delay and avoid effective adjudication.

Furthermore, the preference for São Paulo was not based on any realistic expectation of preliminary injunctions granted by a Rio de Janeiro Business Court. After all, as Judge Torres mentioned in his decision, Rio’s Business Courts have been granted preliminary injunctions, only after unbiased expert analysis and/or based on well-grounded technical opinions. This practice is entirely consistent with sound judicial standards.

Implications for SEP Litigation and FRAND Dynamics

By refusing to transfer the case to the TJSP, the Rio de Janeiro ruling dismantled what comparative law scholars call the “Italian torpedo”, a tactic imported from European litigation in which declaratory lawsuits are filed in slower jurisdictions to halt enforcement elsewhere. Judge Torres explicitly referenced this literature and left no room for doubt: “This cannot be admitted.”

The decision also invoked the principle of good faith as a systemic safeguard. While acknowledging the formal connection between the São Paulo and Rio lawsuits, the judge emphasised that such consolidation is discretionary and based on convenience, which was absent in this case.

Beyond procedural clarity, the ruling has significant implications for Brazil’s SEP litigation ecosystem. When implementers resort to forum shopping, they undermine procedural integrity, privileging delay over efficient adjudication.

It also allows for the procedure for judging infringement lawsuits to be stabilized, as to prevent attempts to “race” to the Courthouse to obtain the most favourable forum. As an example, on November 1^st, 2025 Nokia filed an infringement lawsuit against Warner Bros. Discovery 66 seconds before a declaratory judgment of non-infringement was filed by the implementer.

Judge Torres’ approach, to anticipate Court Appointed-Expert evidence and deny procedural obstruction, signals an important shift on the case law. Brazilian courts are positioning themselves as forums for efficient, effective, and equitable adjudication, resisting both international overreach and domestic gamesmanship.

Building on these changes, technical evidence in JVC v. Hisense and Multilaser played a decisive role in confirming infringement. The Court Appointed-Expert, Mr. David Moura, conducted a detailed element-by-element comparison between JVC’s patent and the H.265/HEVC standard, concluding that “(...) the H.265/HEVC standard incorporates all the elements of Claim 1 and, therefore, Brazilian Patent BR 112014023933-9 is essential to the H.265/HEVC standard.” The expert was unequivocal in affirming the patent’s adherence to the standard.

This conclusion was grounded in a rigorous application of the “all elements rule”, demonstrating that the HEVC standard reproduces each functional and structural component of the claimed invention. As a result, the expert rejected Hisense and Multilaser’s non-infringement theories and stated that, from a strict technical standpoint, implementation of the standard necessarily entails use of the patented technology.

Given the established essentiality of the patent, the expert concluded that practice of the standard necessarily performs the patented method in its entirety. He emphasized: “Considering that Brazilian Patent BR 112014023933-9 is essential to the H.265/HEVC standard, and that the Defendants market devices implement this standard while the ‘Hisense’ brand does not appear on the public list of licensees available on Access Advance’s website (i.e., the list of licensees of the patent pool that includes BR 112014023933-9), the technical evidence indicates that the Defendants are using technology protected by Brazilian Patent BR 112014023933-9, owned by the Plaintiff”.

Relying on this court-supervised technical record, on December 19, 2025, Judge Torres found that patent infringement was duly established and granted JVC a preliminary injunction. In the same decision, Judge Torres imposed the first fine for bad-faith litigation in a SEP dispute in Brazil, ordering Hisense and Multilaser to bear the penalty. The Judge grounded its finding on violations of the duty of procedural probity and unjustified resistance to the regular progress of the proceedings, characterizing the defendants’ conduct as dilatory. Based on these circumstances, the Judge set the fine at 5% of the updated amount in dispute, tailored to reflect the economic benefit sought through such conduct, whether by delaying the judgment or influencing a subsequent settlement.

Shortly thereafter, a global settlement was reached between the parties, which resulted in Hisense joining Access Advance’s HEVC Advance Patent Pool.

This case exemplifies how Brazilian courts, by grounding infringement determinations in methodologically rigorous expert analysis, are strengthening legal certainty and curbing both speculative defences and opportunistic litigation strategies.

A Broader Message: Sovereignty Starts at Home

Recent global debates have focused on anti-suit injunctions and interim licenses issued by foreign courts, undermining national enforcement of patent rights, as violations of TRIPS and the Paris Convention. Yet sovereignty is not only threatened from abroad, but it can also be eroded internally when litigants exploit procedural asymmetries. 

The aforementioned decision issued by the Rio de Janeiro Business Court is, therefore, more than a local procedural topic. It reaffirms that jurisdictional rules are not bargaining chips. They exist to ensure order, predictability, and fairness, values without which innovation falters and legal certainty collapses.

By fixing competence in Rio de Janeiro despite a prior declaratory lawsuit filed in São Paulo, the 6^th Business Trial Court of TJRJ has drawn a clear line: strategic patent litigation cannot override the principle of good faith. For patent owners, the ruling maintains confidence in Brazil’s ability to deliver timely and coherent decisions. For implementers, it sends an unmistakable warning: procedural torpedoes will not prevail.

This Brazilian decision can offer a template for courts worldwide, as it prioritises efficiency, and upholds the integrity of the judicial process.

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  Carolina Souza

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  João Cruz

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  Rodolfo Barreto