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Nokia has filed documents in courts in the United States, the U.K. and Canada asking them to bar Research In Motion from selling BlackBerry devices in those countries until RIM agrees to a new licensing agreement for Nokia-owned patents.
The patents have to do with the 802.11 wireless LAN standard.
“RIM is not entitled to manufacture or sell products compatible with the WLAN standard without first agreeing with Nokia on the royalty to be paid for its manufacture and/or sale of subscriber terminals compatible with such standards,” Nokia said in its filing, according to the IDG News Service, which reported Nov. 28 that it had obtained a copy of the filing.
The filing follows a nine-day arbitration before Sweden’s Stockholm Chamber of Commerce, a body that acts as a neutral arbiter, where the parties failed to reach an agreement, according to the report.
Nokia explained its actions in a statement to eWEEK:
Nokia and RIM agreed to a cross-license for standards-essential cellular patents in 2003, which was amended in 2008. In 2011, RIM sought arbitration, arguing that the license extended beyond cellular essentials. In November 2012, the arbitration tribunal ruled against RIM. It found that RIM was in breach of contract and is not entitled to manufacture or sell WLAN products without first agreeing [to] royalties with Nokia. In order to enforce the Tribunal’s ruling, we have now filed actions in the U.S., U.K. and Canada with the aim of ending RIM’s breach of contract.
In a 2008 statement announcing its renewed deal with RIM, Nokia officials said the agreement covers the “worldwide use of standards essential patents for GSM, WCDMA and CDMA2000 technologies.” They added that the agreement included an up-front payment to Nokia as well as on-going royalties, and that Nokia’s patent portfolio includes “approximately 300 GSM, 370 WCDMA and 170 CDMA2000 declared essential patent families.”
Florian Mueller, a patent expert and paid consultant, wrote on his FOSS Patents blog Nov. 28 that after the September arbitration in Sweden, an arbitration award was issued Nov. 6, and found for Nokia on all requests but one and denied all RIM requests but one.
“My interpretation of Nokia’s representation of the terms of the license agreement in its U.S. petition,” wrote Mueller, “is that this agreement has a mechanism according to which it must either be renewed at some point or the licensee (RIM) must stop implementing the relevant standard. This is a patentee-friendly deal structure: it eliminates the need for infringement proceedings after the expiration of the agreement.”
Both Nokia and RIM had once been market leaders but are now struggling to compete in an industry dominated by the Apple iPhone and Android-running smartphones. Nokia has committed to a new mobile operating system, Microsoft’s Windows Phone, and vowed to make smarter fiscal use of its extensive patent portfolio.
RIM has invested in an entirely new mobile platform, BlackBerry 10, which after two long delays is scheduled for a Jan. 30 release. RIM is counting on the platform, and the new smartphones it will release with it, to buoy its sinking ship, making it likely that RIM will settle the matter with Nokia ahead of January.
It is RIM’s policy, a spokesperson told eWEEK, “not to comment on pending litigation.”
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