United States District Court, D. Delaware
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,
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.
reasons stated herein, Defendants' Motion to Dismiss
and/or Compel Arbitration is DENIED without
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
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).
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).
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).
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.
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 ...