Case 3:11-cv-02353-N Document 225 Filed 03/21/12 Page 1 of 5 PageID 3189
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`IN THE UNITED STATES DISTRICT COURT
`NORTHERN DISTRICT OF TEXAS
`DALLAS DIVISION
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`Civil Action No. 3:11-CV-2353-N
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`§§
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`§§
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`MOBILEMEDIA IDEAS LLC,
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`Plaintiff,
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`v.
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`§
`§
`RESEARCH IN MOTION LIMITED, et al.,§
`§
`§
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`Defendants.
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`ORDER
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`This Order addresses Defendants Research in Motion Limited and Research in Motion
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`Corporation’s (collectively “RIM”) motion to stay [102]. For the following reasons, the
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`Court grants in part and denies in part RIM’s motion.
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`I. THE COURT STAYS THE NOKIA-MMI PATENT CLAIMS
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`The Fifth Circuit has held that the mandatory stay provision of the Federal Arbitration
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`Act, 9 U.S.C. § 3, applies to claims involving non-signatories to an arbitration agreement
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`where (1) the arbitrated and litigated disputes involve the same operative facts, (2) the claims
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`are inherently inseparable, and (3) the litigation has a critical impact on the arbitration.
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`Waste Mgmt., Inc. v. Residuos Industriales Multiquim, S.A., 372 F.3d 339, 343 (5th Cir.
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`2004). Here, RIM contends that nonparty Nokia licensed it five of the patents-in-suit: United
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`States Patent Nos. 5,479,476 (the “‘476 patent”), 5,845,219 (the “‘219 patent”), 6,055,439
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`(the “‘439 patent”), 6,253,075 (the “‘075 patent”), and 6,427,078 (the “‘078 patent”)
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`(collectively the “Nokia-MMI Patents”). Nokia later assigned the Nokia-MMI Patents to
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`ORDER – PAGE 1
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`
`
`IN THE UNITED STATES DISTRICT COURT
`NORTHERN DISTRICT OF TEXAS
`DALLAS DIVISION
`
`Civil Action No. 3:11-CV-2353-N
`
`§§
`
`§§
`
`MOBILEMEDIA IDEAS LLC,
`
`Plaintiff,
`
`v.
`
`§
`§
`RESEARCH IN MOTION LIMITED, et al.,§
`§
`§
`
`Defendants.
`
`ORDER
`
`This Order addresses Defendants Research in Motion Limited and Research in Motion
`
`Corporation’s (collectively “RIM”) motion to stay [102]. For the following reasons, the
`
`Court grants in part and denies in part RIM’s motion.
`
`I. THE COURT STAYS THE NOKIA-MMI PATENT CLAIMS
`
`The Fifth Circuit has held that the mandatory stay provision of the Federal Arbitration
`
`Act, 9 U.S.C. § 3, applies to claims involving non-signatories to an arbitration agreement
`
`where (1) the arbitrated and litigated disputes involve the same operative facts, (2) the claims
`
`are inherently inseparable, and (3) the litigation has a critical impact on the arbitration.
`
`Waste Mgmt., Inc. v. Residuos Industriales Multiquim, S.A., 372 F.3d 339, 343 (5th Cir.
`
`2004). Here, RIM contends that nonparty Nokia licensed it five of the patents-in-suit: United
`
`States Patent Nos. 5,479,476 (the “‘476 patent”), 5,845,219 (the “‘219 patent”), 6,055,439
`
`(the “‘439 patent”), 6,253,075 (the “‘075 patent”), and 6,427,078 (the “‘078 patent”)
`
`(collectively the “Nokia-MMI Patents”). Nokia later assigned the Nokia-MMI Patents to
`
`ORDER – PAGE 1
`
`
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`Case 3:11-cv-02353-N Document 225 Filed 03/21/12 Page 2 of 5 PageID 3190
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`Plaintiff MobileMedia Ideas LLC (“MMI”) subject to all encumbrances. MMI subsequently
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`brought the instant suit against RIM for infringement of the Nokia-MMI Patents, among
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`others. RIM’s license agreement with Nokia contained an arbitration provision stating that
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`“any dispute, controversy[,] or claim arising under, out of[,] or relating to this Agreement .
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`. . shall be referred to and finally and conclusively determined by arbitration.” RIM’s Mot.
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`Stay, Ex. A ¶¶ 12.2, 12.3 [102-2]. Accordingly, RIM instituted an arbitration proceeding
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`seeking a judgment from the arbitrator that RIM has a license to the Nokia-MMI Patents.
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`Both this suit and the RIM-Nokia arbitration involve the same operative facts – rather,
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`they beg the same question – whether RIM has the right to utilize the Nokia-MMI Patents.
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`The claims also are inherently inseparable because RIM’s license defense in the instant suit
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`is precisely the subject of the arbitration. Finally, the litigation of the license issue is likely
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`to have a critical impact on the arbitration. The Court’s finding as to the existence of RIM’s
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`license to the Nokia-MMI Patent will render the arbitration redundant. Ultimately, the
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`question the Court is asked to address in determining whether the claims are referable to
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`arbitration is “whether proceeding with litigation will destroy the signatories’ right to a
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`meaningful arbitration.” Adams v. Ga. Gulf Corp., 237 F.3d 538, 541 (5th Cir. 2001). The
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`Court holds that it unquestionably will. Accordingly, because five of the claims are referable
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`to arbitration under the arbitration agreement between Defendants and Nokia, the Court stays
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`those claims.
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`ORDER – PAGE 2
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`
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`Case 3:11-cv-02353-N Document 225 Filed 03/21/12 Page 3 of 5 PageID 3191
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`II. THE COURT DECLINES TO STAY THE REMAINING CLAIMS
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`“Stays of nonarbitrable causes of action are within the court’s discretion to control its
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`docket.” M & I Elec. Indus., Inc. v. Rapistan Demag Corp., 814 F. Supp. 545, 547 (E.D.
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`Tex. 1993); see also In re Compl. of Hornbeck Offshore (1984) Corp., 981 F.2d 752, 755
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`(5th Cir. 1993). RIM bears a heavy burden in justifying a discretionary stay. See Coastal
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`(Berm.) Ltd. v. E.W. Saybolt & Co., 761 F.2d 198, 204 n.6 (discussing movant’s burden).
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`“Where a discretionary stay is proposed, something close to genuine necessity should be the
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`mother of its invocation.” Id. RIM argues that the Court should stay the remaining claims
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`because they are subject to reexamination.
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`This Court has held that “litigation and reexamination are not mutually exclusive
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`alternatives for the parties to test the validity of a patent – they may be concurrent
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`proceedings.” Guardian Techs., LLC v. X10 Wireless Tech., Inc., 2011 WL 308658, at *2
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`(N.D. Tex. 2011) (Boyle, J.) (quoting BarTex Research, LLC v. FedEx Corp., 611 F. Supp.
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`2d 647, 650 (E.D. Tex. 2009)). “In deciding whether to stay litigation pending reexamination
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`of a patent, courts consider three main factors: ‘1) whether a stay will unduly prejudice or
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`present clear tactical disadvantage to the nonmoving party, 2) whether a stay will simplify
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`the issues in question and the trial of the case, and 3) whether discovery is complete and
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`whether a trial date has been set.’” Id. (citing BarTex Research, 611 F. Supp. 2d at 649-50).
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`The Court considers each factor in turn.
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`First, MMI asserts that many of the patents-in-suit are near the end of their terms, so
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`that an indefinite delay for the reexamination process may leave MMI irreparably harmed.
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`ORDER – PAGE 3
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`
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`Case 3:11-cv-02353-N Document 225 Filed 03/21/12 Page 4 of 5 PageID 3192
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`MMI’s Opp’n to RIM’s Mot. Stay 11-12 [158]; see BarTex Research, 611 F. Supp. 2d at 652
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`(finding irreparable harm would occur by lengthy delay resulting from reexamination even
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`where company was a nonpracticing entity and would be able to collect damages for
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`infringement during the stay if court were to later hold that defendant infringed the patents).
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`The Court agrees. “[U]ltimate resolution of the reexamination proceedings and any appeals
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`could take several years.” Guardian Techs., 2011 WL 308658, at *2 (citing BarTex
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`Research, 611 F. Supp. 2d at 651). Thus, the Court finds that a stay will unduly prejudice
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`MMI.
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`Second, the Court is not convinced that reexamination will simplify the issues for trial.
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`MMI informs the Court that the U.S. Patent and Trademark Office (“PTO”) has completed
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`reexamination of eight of the patents-in-suit and has declined to modify or cancel them. See
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`MMI’s Opp’n to Defs.’ Suppl. Br. Supp. Mot. Stay 3 [223]. As to the remaining
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`reexaminations, the Court cannot say that it is likely that the claims will be modified or
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`cancelled. Indeed, statistics provide that where a third party seeks an ex parte reexamination,
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`the PTO cancels the claims only thirteen percent of the time. See Mike’s Train House, Inc.
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`v. Broadway Ltd. Imports, LLC, 2011 WL 836673, at *3 n.2 (D. Md. 2011) (citing data from
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`December 2010). And, even if the PTO upholds the validity of the patents, that outcome
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`does not prevent RIM from continuing to assert invalidity in court. Id. Thus, staying the
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`case conserves few resources.
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`Lastly, this case has been pending for almost two years. The claim construction
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`hearing is set for June 2012 and the trial is set for February 2013, less than a year away [222].
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`ORDER – PAGE 4
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`
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`Case 3:11-cv-02353-N Document 225 Filed 03/21/12 Page 5 of 5 PageID 3193
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`Additionally, the parties have actively been engaged in discovery. Thus, the Court finds no
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`reason to further delay this already two-year old proceeding. All three factors militate
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`against granting a stay. Because the Court in its discretion determines that RIM did not show
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`that a stay of the remaining claims is warranted, the Court declines to stay those claims.
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`CONCLUSION
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`The Court orders claims one through five, concerning the ‘476 patent, the ‘219 patent,
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`the ‘439 patent, the ‘075 patent, and the ‘078 patent, stayed pending arbitration, but does not
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`stay MMI’s remaining claims.
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`Signed March 21, 2012.
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` _________________________________
`David C. Godbey
`United States District Judge
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`ORDER – PAGE 5
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