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Blackberry Ltd. v. Nokia Corp.

United States District Court, D. Delaware

March 28, 2018

BLACKBERRY LIMITED, Plaintiff,
v.
NOKIA CORPORATION, NOKIA SOLUTIONS AND NETWORKS OY, NOKIA SOLUTIONS AND NETWORK HOLDINGS USA, INC., & NOKIA SOLUTIONS AND NETWORKS U.S. LLC, Defendants.

          MEMORANDUM ORDER

         Pending before the Court is Defendants' Motion to Dismiss and/or Compel Arbitration of BlackBerry Limited's Patent Infringement Claim Relating to U.S. Patent No. 8, 494, 090 ('"090 patent") in Its Amended Complaint (D.I. 24). The issues have been fully briefed. (D.I. 25, 31, 37, 42).

         On June 15, 2017, Defendants filed a motion to dismiss Plaintiffs direct, indirect, and willful infringement claims under Rule 12(b)(6). (D.I. 14). I determined that Plaintiff had adequately pled claims for direct infringement and post-suit willful infringement against Defendant Nokia Solutions and Networks U.S. LLC ("NSN US") only. (D.I. 47). I consider this motion only as to those claims that survived Defendants' motion to dismiss.

         For the reasons stated herein, Defendants' Motion to Dismiss and/or Compel Arbitration is DENIED without prejudice.

         I. BACKGROUND

         Nokia Corporation and BlackBerry (previously known as "Research in Motion Limited") entered an agreement ("Agreement") in 2003 under which each entity granted the other a nonexclusive license to various patents. (D.I. 25, p. 2; D.I. 13 at 11-12, 26). Article 12.1 selects Swedish law to govern the Agreement. The Agreement defines "Parties" as "collectively RIM and Nokia who are signatories to this Agreement." (D.I. 13 at 9). NSN U.S. is a Nokia Corporation "Affiliate" under the Agreement. (Id. at 8 (defining "Affiliate" to include wholly-owned subsidiaries); D.I. 21 at 4 (Plaintiff alleging NSN U.S. is a wholly-owned subsidiary of Nokia Corporation)).

         Article 4.2 of the 2003 Agreement provided Nokia Corporation the option "to obtain a personal, nontransferable, nonexclusive, irrevocable, worldwide, and royalty free license under any five (5) Patent Families of RIM." (D.I. 13 at 16). A 2008 amendment renewed the 2003 Agreement and amended Article 4.2 to give Nokia Corporation the option to license five additional patent families. (Id. at 34-35, 37). On December 23, 2013, Nokia Corporation opted to exercise its option under Article 4.2 to license ten patent families, including the '090 patent family. (Id. at 50-51; D.I. 25, p. 3; D.I. 42, p. 1).

         Whereas Article 2.2.5 permits Nokia Corporation to "grant sublicenses to Nokia Affiliates" on limited terms, Article 4 does not contain a provision permitting sublicenses. (D.I. 13 at 12-13, 14-19).

         Articles 12.2 and 12.3 set out an agreed method of dispute resolution:

12.2 In the event of any dispute, controversy or claim arising under, out of or relating to this Agreement and any subsequent amendments of this Agreement, including without limitation, its formation, validity, binding effect, interpretation, performance, breach or termination as well as non-contractual claims (a "Dispute"), within one month of both Parties becoming aware of such a Dispute, the Parties shall meet and attempt to resolve the Dispute.
12.3 Should the parties fail to resolve a Dispute, the Dispute shall be referred to and finally and conclusively determined by arbitration in accordance with the Rules of the Arbitration Committee of the Swedish Central Chamber of Commerce pursuant to the regulations then in force. The arbitration proceedings shall be conducted in the English language and shall be held in Stockholm, Sweden.

(Id. at 25).

         Defendants argue contract law compels Plaintiff to arbitrate its claims against Nokia Corporation and its claims against the other three Defendants, including NSN U.S. (collectively, "the NN Defendants") under equitable estoppel and third-party beneficiary theories. (D.I. 37, pp. 5, 8). Plaintiff counters that it cannot be compelled to arbitrate its claims against the NN Defendants because they are not signatories and have no rights under the Agreement. (D.I. 31, pp. 5-6; D.I. 42, p. 4).

         II. LEGAL STANDARD

         "[W]here the affirmative defense of arbitrability of claims is apparent on the face of a complaint (or. . . documents relied upon in the complaint), the [Federal Arbitration Act] would favor resolving a motion to compel arbitration under a motion to dismiss standard without the inherent delay of discovery." Guidotti v. Legal Helpers Debt Resolution, L.L.C.,716 F.3d 764, 773-74 (3d Cir. 2013) (citation omitted) (alteration in original). In reviewing a motion filed under Fed.R.Civ.P. 12(b)(6), the court must accept all factual allegations in a complaint as true and consider them in the ...


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