Preliminary injunction on infringement of SEPs upheld by Brazil’s Superior Court of Justice (STJ)

November 26, 2015

Brazil applies the general rules on the enforcement of Standard Essential Patents (SEPs), allowing patent owners to enjoin infringers from using patented inventions, including via ex parte preliminary injunctions for NPEs.On November 13, 2015 the Superior Court of Justice dismissed ZTE’s appeal challenging the preliminary injunction granted by the Rio de Janeiro State Court in Vringo’s SEP infringement case. This is the first SEP case to reach the STJ, the court with nationwide jurisdiction for nonconstitutional matters. Vringo’s lawsuit seeks the enforcement of an SEP covering telecom infrastructure equipment, such as network controllers (RNCs and eNodeBs). The infringing devices were being imported and sold in Brazil by ZTE.The preliminary injunction was granted ex parte, based on prima facie evidence of infringement. In addition, the lower courts granted Vringo’s request to search and seize infringing products at ZTE’s warehouse in Sao Paulo. Four different appeals seeking to overrule the injunctionwere denied at the trial and the appellate courts. The Superior Court of Justice has now issued its first ruling upholding the decision rendered bythe Rio de Janeiro State Court of Appeals, that had also confirmed the preliminary injunction. The decision by Justice Sanseverino concludes that ZTE’s appeal should be denied:“In summary, the appeal is against the grant of an ex parte preliminary injunction, since the evidence was unilaterally presented by the appellee, without prior hearing of the defendant. The appeal also states that the injunction is irreversible, because it ‘keeps theDefendant from fulfilling contractual obligations with mobile phone companies, subjecting them to fines and severance payments, which will be passed on to the consumers’.[…]The request on appeal shall not be granted […] the appealed decision, sovereign on the analysis of the evidence and probative material admitted to the records, was rendered under the following terms:[…]‘On the contrary, the reasoning of the magistrate a quo has logic and common sense, as it considered the fast technological progress experienced by modern society and the several possibilities to extend the dispute, the magistrate foresaw that if the recognition of the rightwas delayed, it would result in an effective irreparable risk to the heritage of the Plaintiff’.”(pages 2 and 3 of the translation)The STJ’s Vringo decision represents a major precedent for patent owners demonstrating that the Brazilian legal system does not discriminate against NPEs and that the country is determined to leave behind its past as a patent piracy haven.An English version of the decision is available: