Rio de Janeiro IP Courts solidify understanding on which issues should be considered in SEP disputes: FRAND to be assessed based on concrete and empirical evidence instead of biased models

It is not a secret that Brazil has become an important jurisdiction for SEP disputes. Over nearly 15 years, theIt is not a secret that Brazil has become an important jurisdiction for SEP disputes. Over nearly 15 years, thecountry’s judges with jurisdiction over IP matters have been faced with cases involving SEP assertion. Morecountry’s judges with jurisdiction over IP matters have been faced with cases involving SEP assertion. Morerecently, some SEP owners have pursued an expedited calendar for evidence-production preceding anrecently, some SEP owners have pursued an expedited calendar for evidence-production preceding anadjudication on remedy, which usually takes the form of a preliminary injunction. Licks Attorneys, a law firmadjudication on remedy, which usually takes the form of a preliminary injunction. Licks Attorneys, a law firmbased in Rio, has represented every patent owner to litigate in Brazil since 2012 in more than 100 cases, morebased in Rio, has represented every patent owner to litigate in Brazil since 2012 in more than 100 cases, morethan 70 of them being SEP infringement lawsuits, and are the ones behind this strategy, which is aimed atthan 70 of them being SEP infringement lawsuits, and are the ones behind this strategy, which is aimed atbalancing due process with effective and timely relief.balancing due process with effective and timely relief.

In recent cases, implementers have been challenging the appointment of engineers as court experts for FRANDIn recent cases, implementers have been challenging the appointment of engineers as court experts for FRANDexaminations in Brazilian SEP cases, arguing that this type of examination should be conducted by professionalsexaminations in Brazilian SEP cases, arguing that this type of examination should be conducted by professionalswith proven expertise in economics. Recent developments show that the IP Courts of Rio de Janeiro have beenwith proven expertise in economics. Recent developments show that the IP Courts of Rio de Janeiro have beenconsistently rejecting such challenges and, thus, confirming that engineer experts are qualified to carry out theconsistently rejecting such challenges and, thus, confirming that engineer experts are qualified to carry out theexamination of comparable licenses to give the court a basis for assessing whether the SEP owner made aexamination of comparable licenses to give the court a basis for assessing whether the SEP owner made areasonable and non-discriminatory prior offer.reasonable and non-discriminatory prior offer.

By rejecting such maneuvers, the IP Courts of Rio de Janeiro ensure predictability and efficiency in BrazilianBy rejecting such maneuvers, the IP Courts of Rio de Janeiro ensure predictability and efficiency in BrazilianSEP litigation, reinforcing the consolidation of Brazil as a key jurisdiction for SEP owners’ interests andSEP litigation, reinforcing the consolidation of Brazil as a key jurisdiction for SEP owners’ interests anddiscarding implementers’ attempts to delay proceedings.discarding implementers’ attempts to delay proceedings.

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  Carolina Souza