Plaintiff to pay BlackBerry’s fees, drop patent misuse, civil extortion claims

A Mountain View technology company that had accused BlackBerry Ltd. of patent misuse and civil extortion in an infringement dispute has dropped those claims from the case and agreed to pay the defendant's legal fees.

The lawsuit is an unusual example of a plaintiff in a patent lawsuit alleging pre-litigation infringement claims are extortion, according to John C. Hueston, co-founder of Hueston Hennigan LLP, who represents defendant BlackBerry.

"It's one of the few times [the claim] has ever been asserted in this context," Hueston said in an interview Wednesday. The outcome "sends the right message of deterrence."

Under a joint stipulation last week, MobileIron agreed to dismiss, with prejudice, five of its 10 claims, including patent misuse and civil extortion. Five other patent infringement claims were dismissed without prejudice.

On Dec. 10, Chief U.S. Magistrate Judge Joseph C. Spero of San Francisco signed the stipulation, which requires MobileIron to pay BlackBerry's attorney fees and costs concerning those claims. MobileIron Inc. v. BlackBerry Corp. et al., 20-CV02877 (N.D. Cal., filed April 27, 2020).

The legal battle pitted Hueston and partner Moez M. Kaba against I. Neel Chatterjee, a partner with Goodwin Procter who represents Mountain View-based MobileIron.

In court papers, Kaba cited a 9th U.S. Circuit Court of Appeals decision from 1994 as well as a 1998 U.S. Court of Appeals for the Federal Circuit ruling to argue civil extortion is an "'exceedingly narrow concept' reserved for extreme misconduct."

"Here, BlackBerry did nothing that it didn't have the right to do: '[F]ederal authority makes clear that it is not improper for a patent owner' -- like BlackBerry -- 'to advise possible infringers' -- like MobileIron -- 'of its belief that a particular product may infringe the patent.'" Mikohn Gaming Corp. v. Acres Gaming, Inc., 165 F.3d 891, 897 (Fed. Cir. 1998).

"The parties disagree about the merits of each other's patent claims," Kaba wrote. "That disagreement is common and what pre-litigation correspondence and the litigation process are designed to address.

"But disagreeing with a litigation opponent is not a tort," he added. "It certainly is not the stuff of civil extortion."

In court papers opposing a motion to dismiss, Chatterjee characterized the pre-litigation letters as "a bad-faith scare tactic."

"Blackberry intentionally dangled the force of its entire patent portfolio in MobileIron's face as a warning of what Blackberry could do if MobileIron did not negotiate a license agreement with it," Chatterjee added.

While the patents were in inter partes review pending BlackBerry's motion to dismiss, the companies agreed to the stipulation.

Neither Chatterjee nor MobileIron returned messages seeking comment Wednesday.