Brazilian Court-appointed expert reports demonstrate SEP owners’ FRAND compliance: Comparable licenses can lead to evidence-based preliminary injunctions

The anticipation of expert appointments has become increasingly common for SEP assertions filed in Brazil, as it allows parties to discuss the main technical disputes as early as possible, combining the legal certainty desired for this type of case with the availability of quick and assertive enforcement through preliminary injunctions protecting SEP owners’ rights.

This framework emerges from judges progressively refining their approach to SEP disputes, especially regarding technical evidence analysis. What began as an innovative case-management procedure became a widespread practice, as Judges from most of the Courts ruling on SEP disputes have either adopted or acknowledged this procedure. Six of the seven Business Courts have anticipated expert appointments in 2026[1].

Back in the 2nd half of 2024, on the JVCKenwood v. TCL case, Brazilian Business Court Judge Maria Chistina Brito Lima adopted the procedure in which the expert appointment is anticipated. Then, on early 2025, Judge Victor Agustin Cunha Jaccoud Diz Torres further evolved the procedure by granting InterDigital’s (represented by Licks Attorneys) request fora schedule to be fixed at the beginning of the lawsuit to determine deadlines leading to the submission of a court-appointed expert report and a hearing to decide on the request for PI. The decision also established procedures to assess whether the SEP owner complies with the FRAND commitment:

The issue comes down to the burden of proof: whenever a patent declared essential to a standard is at stake, the plaintiff must, in addition to proving the defendant's infringement, also prove that it complies with FRAND licensing terms.

The increased focus on the parties’ behavior provided an additional work for technical experts, as they would also have to assess case elements to determine whether there has been bad faith during negotiations. Since this analysis can sometimes focus on comparable agreements, which cannot be shared with the defendant since they comprise sensitive information from third parties, the technical expert functions as a tool for the implementer to understand if it has been discriminated against. Experts will not provide a finding of compliance with good faith duties; rather, they will answer questions to provide certainty that licensees have not enjoyed better conditions than the ones offered to the defendant. Following decisions have set specific guidelines for the elements and requirements that would have to be considered.

Brazilian Courts’ FRAND interpretation

In a landmark decision issued in the Dolby v. Roku case on December 2025, Judge Torres established for the first time the Court’s FRAND definition.

FRAND terms are those that can be rationally justified within the licensor’s rational and commercial logic and that do not seek to benefit or harm any of the market players.

The reasoning sets the framework in which compliance with FRAND commitment must be assessed, considering (i) whether there was a rationale governing an offer and (ii) if previous licensing agreements comprise any discriminatory provision. The licensing offer, in this sense, cannot be based on a random or arbitrary value, neither can seek to improperly benefit or burden any company.

Moreover, it establishes a framework with specific and simple parameters to consider, allowing outcomes based on objective measurable factors, considering the particularities of each case. Subjective matters are not considered.

Judge Torres established a premise that Judges must not define a specific FRAND value, as the circumstances of the negotiation, coupled with market intricacies, mean that a precise sum cannot be empirically demonstrated. This is a completely different approach from British and Chinese Courts, which have issued decisions unilaterally defining rates for global FRAND licensing of SEP portfolios - which Brazilian courts have now expressly rejected doing.

The precedent also criticized decisions fixing interim payments, such as the interim licenses granted by British Courts. These decisions would require a judge to establish two different figures (for the interim payments and for the final licensing), imposing considerable risk on the parties, while hindering R&D efforts by SEP owners, as part of the funds would remain unavailable.

First of all: if it is already extremely difficult to set a definitive price, establishing two figures throughout the lawsuit poses a serious risk to the parties involved, undermines legal certainty, and disqualifies the method itself by exposing the lack of mathematical or economic support for establishing a specific amount.

 (...) 

On the one hand, the SEP owner will have to contend with the practical unavailability of the funds deposited in the escrow account. This obviously entails an opportunity cost, particularly when considering investment cycles for research and innovation. On the other hand, since there is no objective formula to determine the final amount to be awarded, it is possible that the SEP owner may also become indebted to the party that had been infringing the patent.

As highlighted by the decision, the deposit of funds in escrow accounts causes economical and financial harm to SEP owners. Firstly, it prevents SEP owners from obtaining revenue from their licensing activity, one of their main sources of income. Some SEP owners are dedicated exclusively to licensing; thus, the deposit would harm their ability to obtain any revenue at all. It also restrains SEP owners’ cash flow and ability to finance their operations. As a result, SEP owners would not be able continue to operate, nor to invest in R&D in the fast-paced ICT innovation environment, ultimately facing financial distress.

Expert’s assessment of offers

With these foundations established, the scope of the analysis was limited to determining if the offer was adequate:

Instead of setting a specific figure, even with ranges of reasonableness, one should simply make a determination: was the licensor’s offer FRAND or not.

The role of the expert, in this sense, is not to define a royalty rate that should be adopted for the specific case, but rather to provide the court with a reference point for assessing whether the parties have negotiated on a good faith basis, an analysis better suited to determine parties’ willingness to reach an agreement.

This is important, as it rejects one of the main defenses presented by implementers on SEP assertions, which argue that the only relief available for these cases should be the judicial unilateral definition of royalties.

The expert report do not discuss a price-based economic analysis, which would render the decision insusceptible to objective assessment. The focus is the comparison of the SEP owners’ offer with licensing agreements settled with similar implementers and on the definition on whether the offered rate was random or based on any specific rationale - in this sense, the Court will not verify if such rationale is good or bad, only if it exists. Moreover, a range of reasonableness is to be observed. As judge Maria Izabel Gomes Sant’Anna de Araujo stated on the Interdigital v. TCL case:

I would also like to emphasize that the existence of differences in licensing fees from previous agreements does not, in and of itself, constitute a violation of FRAND, provided that such fees are reasonable, fair, and non-discriminatory.

Therefore, variations in royalty rates do not imply bad faith in negotiations. If distinctions can be factually explained from a rational and commercial point of view, considering all interests involved, fair competition and market integrity are preserved.

Parties are required to disclose information and previous licensing contracts, and all documents provided are available only to the judge and the expert, as the report cannot reveal the specific rate defined in the global agreements, to protect the confidentiality of the information.

Practical application of the framework

The first three expert reports applying the framework established by the judges have been presented in the last two months[2]. They suggest a consistent trend, as experts found that:

1. SEP owners’ offers were not discriminatory when compared to licensing agreements reached with implementers in similar positions on the market.

2. Proportionality and reasonableness were confirmed, as the rate proposed was found to have been determined based on a concrete business rationale.

3. Implementers’ counteroffers were either not presented or not adequate, as the rate was below the range of reasonableness, without any legitimate commercial or operational rationale to justify the variance.

Consequently, implementers’ defenses could not persuade either judges or the experts.

Urgency-based PIs: Still available depending on the case

Despite the trend to issue evidence-based PIs after an anticipated expert appointment, urgency-based PIs are still available to SEP owners. This judicial relief was not exempted from criticism from implementers’ representatives and foreign observers, alleging that the Brazilian jurisdiction was granting “automatic” ex parte injunctions, disregarding the effects that PIs could cause on the implementer and on the consumer market.

The available data does not support these allegations. For twelve years, most of the PIs in SEP cases were urgency-based, as judges analyzed evidence provided by the parties and issued a decision on an average of 25 days after filing. Expert appointments were issued after the PI decision, to provide technical unbiased reasoning on infringement, validity and essentiality.

Preliminary injunctions in Brazil have historically required substantial evidence, as validity was proven based on the formal granting by the Brazilian Patent and Trademark Office (BRPTO), and infringement was substantiated on expert opinions and tests done on infringing products, to confirm that the product applied the standard.

Moreover, the Court of Appeals provided multiple decisions maintaining urgency-based PIs. Since 2017, for the 17 cases where the Panel of three appellate judges issued a decision on appeal, the PI was maintained in 15 cases (88.2%), substituted by a bond in one case (5.9%), and overruled in one case (5.9%), back in 2020[3].

This means an overwhelming success rate for maintaining PIs on appeal for SEP assertions, as infringement theories led Appellate Judges to confirm the enforcement at the preliminary stage. These decisions analyzed FRAND defenses, parties’ conduct when negotiating a global licensing agreement and evidence provided by both sides of the dispute.

As urgency-based PIs can still provide a meaningful enforcement for SEP owners’ rights, its availability stands based on the Brazilian Patent Statute and the Brazilian Code of Civil Procedure, depending on the circumstances of the case, such as evidence: (i) that most of the competitors in the market are licensed; (ii) of unsuccessful negotiation attempts; (iii) of the SEP term about to expire and/or; (iv) of implementers’ delaying tactics.

Conclusion

Injunctive relief is the most effective tool for protecting patent owners’ rights. The Brazilian approach has made available two distinctive judicial reliefs, which are based on strong and compelling evidence, and are paramount to encourage the signing of global licensing agreements for SEP portfolios.

Licks Attorneys represents or has represented all patent owners for SEP assertions in Brazil. Changes and evolutions in expert reports’ proceedings have been closely monitored, as our cases help the development of novel proceedings and increase judges’ expertise on complex matters.

As such, anticipated expert analysis of SEP owners’ offers has provided an overview of licensing negotiations, as comparable licenses demonstrated FRAND compliance, with proposed rates rationally justified and proportional to similar competitors on the market. Accepting implementers’ terms would mean discriminating against willing licensees, which represent most of the market.

The procedure, which helps both parties to achieve a faster analysis of the technical issues at hand, was developed following Licks Attorneys’ requests for urgent expert evaluation on ICT cases, the first one being the Interdigital v. Disney assertion, filed on February 2025. Ever since, judges have increasingly relied on early court-appointed expert evidence as a trusted mechanism to justify the granting of a PI.

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  João Cruz