STJ: Ericsson wins lawsuit against Apple over 5G patents disputes

Brands have reached a global patent licensing agreement.

Ericsson announced last Friday (9) that they had reached a global patent licensing agreement with Apple, ending a legal imbroglio in several countries over the unauthorized use of patented technologies in products such as iPhone and iPad.

The announcement was made a few days after an important decision by the Brazilian Superior Court of Justice, which precluded the sale of Apple’s 5G products in Brazil, unless payment is made to Ericsson, represented before court by law firms Licks Attorneys and Salomão, Kaiuca, Abrahão, Raposo e Cotta Sociedade de Advogados. Such payment amounts to USD 3.00 (around BRL 15.70) per device sold in the country.

The unanimous decision of the 4th panel partially reestablished the effects of an injunction granted by the Court of Appeals of the state of Rio de Janeiro, “with a view to balancing the interests in dispute,” as stated by the case’s Reporting Justice Antonio Carlos Ferreira.

According to the firm, such an significant precedent marks the first time Brazil’s highest appellate court has ruled on the infringement of patents crucial to telecommunications industry standards (such as the 5G standard).

Case

The patent license agreement that allowed Apple to use Ericsson’s technologies expired in January of this year without a new agreement being signed. According to the defense, Ericsson then had to resort to the judicial system to try to prevent the infringement of its patents from causing difficult-to-redress losses.

Although lawsuits have been filed by both parties in several countries, such as the United States, Germany, England, and Colombia, the trial in Brazil was the first with a final judgment under a Superior Court, thus helping end a global legal imbroglio with a settlement between the parties.

Opinion

Commenting on the case, Carlos Aboim, founding partner of Licks Attorneys, stated:

“The Superior Court confirmed the caselaw of the Court of Appeals of the state of Rio de Janeiro in the sense that, under the terms of Article 209 of the Industrial Property Act, the offender should immediately cease the use of patented technology. The Court further understood that, since there is a previous licensing agreement, the judge may determine a payment to the holder, as a condition for technology usage. The solution serves to mitigate the irreparable loss that would be caused to the holder while the litigation runs its course. The Court also underscored the importance of law enforcement to encourage the offenders to negotiate a license, including for the use of new technologies, such as 5G.”

Rodolfo Barreto, a partner at the firm, asserted that the settlement “closes an unfair and unethical situation of patent infringement committed by those who hold great economic power, a recurrent practice in several countries, not just Brazil, known as ‘hold-out.’”

Luis Felipe Salomão Filho, from Salomão, Kaiuca, Abrahão, Raposo e Cotta Sociedade de Advogados, stressed: “If I had to summarize the vital importance of this specific case for technology developers that register patents and invest in this market, I would point to legal certainty, to the extent they can continue to invest resting assured that their inventions will be duly valued and protected in Brazil by the Judiciary. Bear in mind that these companies have offices around the world. Technologies serve the whole planet, as they make up technical standards used by all. Thus, the company can choose where it will file actions to protect its inventions, since patent protection is governed by the principle of territoriality, which is why a Brazilian court decision is only valid here, as well as the decision of any other country has effect only in that specific State.

Hence, when we have decisions like this, in which the Superior Court of Justice ratifies the understanding that a patent cannot be infringed in Brazil, without due consideration, without paying for it, it is an incentive for these technology companies not only to invest here, but also to rely on the Brazilian Judiciary to seek protection for their inventions. In this sense, this has a global effect on a large scale for all inventors, as we understand that it is a strong message from the Main Nonconstitutional Court, emphasizing that the patent system is working as intended here in Brazil, which must be abided by, and one cannot use a patent without considering royalties.”

The file is sealed.

Lawsuit: Claim 15.420

Source: https://www.migalhas.com.br/quentes/378495/stj-em-disputa-por-patentes-do-5g-ericsson-vence-acao-contra-apple