Nokia Corp. v. Qualcomm, Inc.), No. 06-509-JJF (D. Del. Aug. 29, 2006)
Upon a motion to remand filed by Nokia, Judge Farnan remanded this dispute back to the Delaware Court of Chancery, where the suit was originally filed. The court decided whether Nokia’s claims arose under federal patent law despite the fact that the claims are for breach of contract. Distinguishing the Federal Circuit U.S. Valves case (that found a federal question existed where interpretation of a patent was necessary to determine rights under a licensing agreement), the court held that interpretation of the patents at issue was not necessary to determine the parties’ contractual obligations. The court found that the interpretation of provisions in Nokia’s license agreement with Qualcomm depends on whether certain patents are declared “essential” under European Telecommunications Standards Institute (ETSI) procedures. Because the court found that Qualcomm had already voluntarily declared the patents “essential,”; however, no interpretation of the patents was necessary to interpret the license agreement.