AnywhereCommerce, Inc. v. Ingenico, Inc.

Opinion

MEMORANDUM & ORDER

This action concerns a dispute between several entities in the mobile payments business. Plaintiffs AnywhereCommerce, Inc. ("AnywhereCommerce") and BBPOS Limited ("BBPOS") initially filed suit against Defendants Ingenico, Inc., Ingenico Corp., and Ingenico Group, SA.¹ In response, Ingenico Inc. filed counterclaims against Plaintiffs, including a claim that Plaintiffs infringed Ingenico Inc.'s rights to [*2]  nine asserted patents. Citing the undisputed fact that the asserted patents are registered to BBPOS and to AnywhereCommerce's parent company, 4361423 Canada Inc. ("436 Canada"), Plaintiffs have moved to dismiss this patent claim. Pls.' Mot. Dismiss Count VIII [#79]. Plaintiffs contend that Ingenico Inc. does not have standing to sue Plaintiffs for infringement of the asserted patents since Ingenico Inc. is not the owner or an exclusive licensee of the nine asserted patents. Plaintiffs also assert that Ingenico Inc. has failed to state sufficient facts to support its claim for patent infringement. For the reasons set forth below, the court finds that Ingenico Inc. has stated a claim for relief and, accordingly, Plaintiffs' Motion to Dismiss Count VIII of Defendant Ingenico Inc.'s Second Amended Counterclaims [#79] is DENIED.

I. Facts Alleged in the Second Amended Counterclaims

On or around May 4, 2010, BBPOS entered into an "Engineering Development and License Agreement" (the "Licensing Agreement") with a company called ROAM Data, Inc. ("ROAM").² See Licensing Agreement [#78-1]. Per the terms of the agreement, ROAM paid BBPOS and provided BBPOS with other valuable consideration in [*3]  return for BBPOS's services, including the design, manufacture, and production of certain mobile payment "Products."³ Ingenico Inc. Second Am. Countercls. ("Am. Countercls.") ¶ 14 [#78]; Licensing Agreement at 1 [#78-1]. BBPOS also provided ROAM with "a worldwide, perpetual, fully-paid license to freely use and sell the Products." Licensing Agreement at 1, ¶ 1.1 [#78-1].

The agreement was amended on or around August 15, 2011. Am. Countercls. ¶ 13 [#78]. The amendment, which continued to identify ROAM as a Delaware corporation, explained that the Licensing Agreement "originally contemplated an exclusive product license," that BBPOS had filed, or caused to be filed, a Patent Application for a secure audio-coupled card swiper, and that ROAM and BBPOS wished to amend the Agreement "to include the Patent Application within the scope of the exclusive license grant under the Agreement, [and] to clarify that the scope of the license grant under the Agreement includes any other intellectual property rights of [BBPOS] relating to the Products . . . ." Licensing Agreement at 12 [#78-1]. As amended, BBPOS granted to ROAM "a worldwide, perpetual, fully-paid license to freely use the Partner [*4]  Intellectual Property to make, have made, develop, have developed, use, sell, offer for sale, import and distribute the Products, any portion thereof, or any products similar to or based upon any Products." Id.; see also Am. Countercls. ¶ 14 [#78]. The Licensing Agreement does not identify a specific catalogue of patents or patent applications conveyed by the agreement, but instead defines "Partner Intellectual Property" to include "any and all patents and patent applications relating to the Products" (the "Licensed Patents"). Licensing Agreement at 12 [#78-1]. Included in this grant of rights was the "first right, but not the obligation, to institute, prosecute and control legal proceedings and/or administrative proceedings to prevent or restrain . . . infringement or misappropriation" of the Licensed Patents. Id. at 13.

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