262 F. Supp. 3d 278
D. Maryland2017Background
- Open Text (Canadian corp., U.S. offices including Maryland) sued former VP Steven Grimes and his new employer Nuxeo alleging he bulk-downloaded confidential Process/Sales Play files shortly before resigning, transferred them to Nuxeo, and that Nuxeo used the data and solicited Open Text employees and clients.
- Grimes signed a 2004 Employee Confidentiality, Non‑Solicitation, and Invention Assignment Agreement containing a forum‑selection clause (FSC) submitting to Ontario courts.
- Open Text filed suit in the District of Maryland and sought expedited discovery and a TRO/preliminary injunction; the court ordered preservation/sequestration of materials and appointed a Rule 706 forensic examiner.
- Defendants moved to dismiss under forum non conveniens (arguing the FSC requires Ontario jurisdiction) or to stay; they framed the motion procedurally as Rule 12(b)(6).
- The court denied the motion: it found the FSC was for Open Text’s sole benefit and Open Text waived it; Nuxeo is not a party to the Grimes Agreement and cannot enforce the FSC; and many claims (trade‑secrets, fiduciary duty, aiding/abetting, tortious interference with prospective advantage) fall outside the FSC because the alleged bulk downloading was not in the scope of employment.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Enforceability of forum‑selection clause (FSC) | Open Text can waive the FSC because it benefits only Open Text; it elected to sue in Maryland. | FSC selects Ontario and should bar suit in Maryland (forum non conveniens). | Court: FSC was for Open Text’s sole benefit and Open Text waived it; motion denied. |
| Procedural vehicle for enforcing FSC | N/A (focus on waiver and scope). | Defendants framed dismissal under Rule 12(b)(6). | Court treated motion under forum non conveniens doctrine (per Atlantic Marine/Sinochem), not Rule 12(b)(6). |
| Whether Nuxeo may invoke FSC | Open Text: Nuxeo is not a party and cannot rely on the FSC. | Nuxeo: consents to Ontario jurisdiction or is closely related so clause should apply. | Court: Nuxeo is not a party nor a third‑party beneficiary; it cannot enforce the FSC. |
| Scope of FSC re: noncontract claims | Open Text: bulk downloading and trade‑secret claims arose outside employment and thus outside FSC scope. | Defendants: claims "arise out of or relate to" the Grimes Agreement and fall within the FSC. | Court: bulk copying deviated from employment duties and was outside scope; only breach of contract and tortious interference claims would be covered if FSC were enforced; other counts survive. |
Key Cases Cited
- Sinochem Int’l Co. v. Malaysia Int’l Shipping Corp., 549 U.S. 422 (doctrine of forum non conveniens allows dismissal when an adequate alternative forum exists)
- Piper Aircraft Co. v. Reyno, 454 U.S. 235 (forum non conveniens framework)
- Atlantic Marine Construction Co. v. United States District Court, 134 S. Ct. 568 (enforcement of forum‑selection clauses and appropriate analysis)
- Claudio‑De‑Leon v. Sistema Universitario Ana G. Mendez, 775 F.3d 41 (discussion of procedural framing after Atlantic Marine)
- Weber v. PACT XPP Techs., AG, 811 F.3d 758 (circuit court discussion on proper procedural approach post‑Atlantic Marine)