BlackBerry Limited et al. v. Avaya Inc.

I'll research this case thoroughly before drafting.

Good foundation. Now let me dig into the '961 patent itself, the PTAB proceedings, and how the case ended.

Now the key question: how did the Avaya case end, and did Avaya itself file IPRs?

Case Overview & Background

The parties. The plaintiffs are two BlackBerry entities: BlackBerry Limited, a Canadian corporation headquartered in Waterloo, Ontario (the former Research In Motion), and BlackBerry Corporation, a Delaware corporation with its principal place of business in San Ramon, California (N.D. Tex. ECF No. 59 at 1–2). BlackBerry is an operating company, not a classic NPE/PAE — but by 2016 it was openly pivoting toward monetization of a portfolio reported at roughly 38,000–40,000 patents after its handset business collapsed; CEO John Chen told investors in May 2016 that the company was in "patent licensing mode," following a 2015 royalty-bearing cross-license with Cisco (Ars Technica; IAM). The defendant, Avaya Inc., is a Delaware corporation then headquartered in Santa Clara, California — an enterprise communications and unified-communications vendor (Aura/CMS platforms, IP Office, Scopia videoconferencing endpoints, IP desk phones, EC500 cellular extension). Avaya's litigation posture was shaped heavily by its Chapter 11 filing in January 2017, which automatically stayed this case under 11 U.S.C. § 362(a); the bankruptcy court partially lifted the stay solely to let Judge Lynn decide the pending transfer motion, and Avaya emerged from bankruptcy in late 2017 (ECF No. 59 at 1–2).

The technology accused. BlackBerry's 115-page complaint, filed July 27, 2016, targeted a broad cross-section of Avaya's portfolio rather than a single product line: Avaya Scopia XT room systems accused of implementing the H.265/HEVC video standard; Avaya Communicator for iPad and IP Office integration; IP desk phones and PBX-adjacent software; and — most consequentially — any Avaya product "that include[s] OpenSSL and the Open SSL elliptic curve cryptography" library, expressly including CMS, Breeze, Aura and conferencing systems (see Ars Technica; French coverage similarly lists CMS, Breeze and Aura). BlackBerry alleged pre-suit notice by letter dated December 17, 2015, and pleaded willfulness. The complaint asserted eight patents: (1) 9,143,801 — context-model/"significance map" coding of video transform coefficients (HEVC); (2) 8,964,849 — encoding/decoding of significant-coefficient-group flags (HEVC); (3) 8,116,739 — dynamic session placeholder for threaded message display in a messaging GUI; (4) 8,886,212 — tracking the location of mobile devices; (5) 8,688,439 — speech encoding/decoding; (6) 7,440,561 — integrating wireless handsets into an enterprise PBX (EC500); (7) 8,554,218 — routing outbound calls from a wireless device through an enterprise network; and (8) 7,372,961 — "Method of Public Key Generation," the Certicom-originated patent on eliminating bias in ephemeral-key generation. The '961 patent (issued 2008; BlackBerry acquired Certicom in 2009) addresses the DSS/DSA weakness in which computing k = SHA‑1(seed) mod q skews the key distribution and exposes the long-term private key to lattice-style recovery; the claimed fix re-hashes/rejects rather than modularly reduces, producing an unbiased k (IPR2019-00923 institution decision). Note: this profile is keyed to the '961 patent, but the case as pleaded was an eight-patent action — the '961 is simply the patent that outlived the case and carried forward into later campaigns.

Posture, venue, and why it matters. The suit landed in the Northern District of Texas, Dallas Division, before Chief Judge Barbara M.G. Lynn (case suffix "-M"), not in the Eastern District's Marshall/Rockwall dockets — a deliberate choice BlackBerry supported with Avaya's Dallas office, data center, reseller network and public-sector customer base. After TC Heartland (May 2017), Avaya moved to transfer to the Northern District of California under § 1404(a) and contested venue under § 1400(b); the court heard argument September 28, 2017 and denied both the transfer motion and Avaya's motion to supplement on October 10, 2017 (ECF No. 59), walking through the Fifth Circuit's Volkswagen II private- and public-interest factors. That ruling is the case's most-cited artifact: a post-Heartland data point in which a large, bankrupt, California-headquartered defendant could not extort a convenience transfer out of Dallas. On the merits the case never reached claim construction — the parties filed a joint stipulation of dismissal in February 2018, and the docket is recorded as closed 02/15/2018 (per the Caselaw Access-derived docket summary); a contemporaneous Cantech Letter analysis reports termination on February 23, 2018. The termination date discrepancy is unresolved in the sources I could reach, and the dismissal papers themselves were not available to me — treat the Feb. 2018 settlement/closure as well-corroborated but the precise date as unverified. Separately, Avaya filed a wave of PTAB petitions on July 31, 2017 (IPR2017-01851 on the '212, ‑01852 on the '739, ‑01897 on the '218, and ‑01898 on a fourth asserted patent); at least the '739 challenge was instituted on February 13, 2018 (institution decision). I could not confirm whether any Avaya petition targeted the '961 specifically, and given the February 2018 dismissal, Avaya's IPRs were likely mooted by settlement rather than resolved on the merits.

Why it is notable. Three reasons. First, it was the opening shot of BlackBerry's licensing campaign and the first time the Certicom ECC portfolio was asserted against a mainstream enterprise vendor — the accusation that merely *using OpenSSL's

I'll research this case systematically, starting with the docket and key rulings.

Now let me dig into the specifics: the '961 patent's IPR, the bankruptcy stay, and the case's ultimate disposition.

Let me get the full docket from CourtListener and verify the dismissal details.

BlackBerry Ltd. v. Avaya Inc., No. 3:16-cv-02185-M (N.D. Tex., Dallas Div.)

Bottom line: This case never reached claim construction or trial. It was a short, hard-fought portfolio suit (8 patents, 105-page complaint) that was functionally decided by two external events — Avaya's Chapter 11 filing (which stayed the case) and Avaya's four inter partes review petitions (all instituted in February 2018, all terminated two weeks later) — followed by a confidential settlement and stipulated dismissal in February 2018. The '961 patent itself was never the subject of an Avaya IPR; its later validity history comes from the BlackBerry v. Facebook line of cases.

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Chronological timeline

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1. Filing and initial pleadings (2016-07-27)

BlackBerry Limited (Waterloo, Ontario) and BlackBerry Corporation (San Ramon, CA) sued Avaya Inc. (Delaware; principal place of business Santa Clara, CA) in the Northern District of Texas, Dallas Division, before Chief Judge Barbara M.G. Lynn, Civil Action No. 3:16-cv-02185-M. Complaint filed 2016-07-27 (Dkt. 1), cause of action 35 U.S.C. § 271, jury demanded. (Justia docket; complaint text via kipdf mirror of Dkt. 1)

Eight patents asserted (per the complaint and contemporaneous reporting):

• 9,143,801 and 8,964,849 — "significance maps" for video coding (H.265/HEVC)
• 8,116,739 — message/thread display UI
• 8,886,212 — mobile device location tracking
• 8,688,439 — speech decoding/compression
• 7,440,561 — integrating wireless phones into a PBX network (Avaya EC500)
• 8,554,218 — call routing
• 7,372,961 — "Method of Public Key Generation" (Vanstone et al.; filed 2001-12-26; issued 2008-05-13), asserted against products that "include OpenSSL and Open SSL elliptic curve cryptography," including Avaya CMS and conferencing systems

The complaint pleaded willful infringement, inducement and contributory infringement, exceptional-case fees under § 285, and relied on a 2015-12-17 notice letter to Avaya. Venue was pleaded on Avaya's Coppell, Texas facility (described as a two-story, 96,500 sq. ft. office/data center), resellers, and a Texas DIR contract. (Ars Technica, Aug. 2016; Dkt. 1 excerpts)

BlackBerry's litigation counsel was Quinn Emanuel Urquhart & Sullivan (confirmed in PTAB filings: James M. Glass, Sam Stake, Ogi Zivojnovic). Avaya's IPR counsel was Holland & Knight (Michael B. Eisenberg, Benjamin M. Stern, Allison Lucier), per the IPR2017-01851 power of attorney.

Not verified: I could not obtain the answer/counterclaim docket entries. Free docket mirrors expose only the transfer order (Dkt. 59) for this case, and the full docket (~75 entries) sits behind PACER. A declaratory-judgment counterclaim of non-infringement/invalidity is near-certain in practice, but I have no citation for its filing date or contents and will not assert it.

2. The bankruptcy stay (2017-01-19)

Avaya filed a voluntary Chapter 11 petition on 2017-01-19 (confirmed indirectly by Avaya's 10-Q, which states it ceased recording interest expense on pre-petition debt "[e]ffective January 19, 2017"). The district court then stayed all proceedings under 11 U.S.C. § 362(a); the bankruptcy court partially lifted the stay solely to allow Judge Lynn to decide Avaya's pending transfer motion. This is recited on the face of the transfer opinion (Dkt. 59). The stay is the single most consequential procedural fact in the case: it froze the litigation for roughly a year and forced BlackBerry to litigate the '961 and its other patents elsewhere if it wanted a merits ruling.

3. Pre-trial motions of substance

(a) Motion to transfer venue — DENIED (2017-10-10). Avaya moved under 28 U.S.C. § 1404(a) to move the case to the Northern District of California (Dkt. 42), and separately moved to supplement the record with post-stay events (Dkt. 56). After argument on 2017-09-28, Judge Lynn denied both in a Memorandum Opinion and Order entered 2017-10-10 (Dkt. 59). The opinion applied TC Heartland LLC v. Kraft Foods Group Brands LLC, 137 S. Ct. 1514 (2017), for § 1400(b) and the Fifth Circuit's In re Volkswagen (5th Cir. 2008) (en banc) private/public-interest factors, holding Avaya fell short of showing the transferee forum was clearly more convenient. (Dkt. 59, via Justia; N.D. Tex. Blog, 2017-11-26)

(b) Stay pending IPR — no ruling found. Avaya's four IPR petitions were filed 2017-07-31, but I found no motion in the district court to stay the case pending IPR and no ruling on one. The practical effect of a stay was already supplied by the bankruptcy automatic stay, so the issue appears to have been moot.

(c) Motion to dismiss / summary judgment / Markman — none identified. I found no Rule 12(b)(6) order (e.g., an Alice § 101 challenge), no summary judgment order, and no claim construction order or Markman hearing in this case. Given the § 362 stay (Jan. 2017 onward) and dismissal in Feb. 2018, the case closed before the Markman stage. Treat "no Markman in the Avaya case" as a negative finding from available records, not a positively confirmed fact — the full PACER docket was not accessible to me.

4. Parallel PTAB proceedings (the decisive track)

On 2017-07-31, Avaya filed four simultaneous IPR petitions challenging four of the eight asserted patents:

The Board (APJs Zecher, Arpin, Harlow) instituted all four. The institution decision in IPR2017-01852 expressly identifies the N.D. Tex. case as the related litigation and notes Avaya's parallel petitions against the '212, '218, and '561 patents. In IPR2017-01852 the Board instituted review of claims 1–5, 9, 11–15, 19, 21–25, and 29 of the '739 patent.

Then everything stopped. On 2018-02-23 the parties filed joint motions to terminate each IPR under 35 U.S.C. § 317(a), stating: "[t]he parties have settled their dispute," that they "have agreed to dismiss the related district court litigation with respect to the '212 patent upon the effective date of their settlement," and that they "anticipate that this litigation proceeding will be dismissed as part of the parties' Settlement Agreement." (Joint Motion to Terminate, IPR2017-01851) The settlement agreement was filed

I'll research the counsel of record for BlackBerry in this case.

Bottom line

Counsel for the plaintiffs (BlackBerry Limited and BlackBerry Corporation) did appear and litigated this case through its Feb. 23, 2018 dismissal, so nothing is "sealed/no appearance." The docket-derived plaintiff-side appearance list is short and reproducible, but I was not able to pull an image of the complaint's signature block (Dkt. 1) or a docket sheet that independently labels "lead" vs. "local" counsel, so I flag confidence levels below rather than inventing role designations. N.D. Tex. practice does not require a formal "lead counsel" designation, and no such designation appears in the record I could access.

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Plaintiffs' counsel of record

The following ten attorneys are listed in the PACER-derived party/counsel data as Plaintiff Attorneys, "Designation: Retained" in No. 3:16-cv-02185-M (Justia docket; UniCourt case record reflecting PACER counsel data as of the 2018 closure).

Practical read: the plaintiff team looks like an out-of-state trial team (consistent with a September 12, 2016 pro hac vice application filed in this case — the application is referenced in a later N.D. Tex. pro hac vice form at CourtListener, gov.uscourts.txnd.239595, Dkt. 68) working with Dallas counsel. The pro hac vice activity is documented; the identity of the sponsoring local firm as Carter Arnett is an inference, not a docket citation.

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Do not confuse: defendant-side and PTAB counsel

• Avaya's district-court counsel listed in the same docket data are Joshua C. Krumholz and Jon G. Shepherd — these are defense counsel, not plaintiffs'.
• Avaya's PTAB counsel in the parallel IPRs (IPR2017-01851, -01897, etc.) were Holland & Knight LLP (Michael B. Eisenberg, Benjamin M. Stern, Allison Lucier) per Avaya's power of attorney filed July 31, 2017.
• BlackBerry's PTAB counsel was Oblon, McClelland, Maier & Neustadt LLP — Robert C. Mattson (lead), Sameer Gokhale, Marc Weinstein — per BlackBerry's mandatory notices in IPR2017-01851 (Sept. 1, 2017). Note this is separate from the district-court team in the table above; I found no evidence the Oblon attorneys appeared in the N.D. Tex. case.

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Case-status detail relevant to counsel (updates the prior summary)

• The case was stayed in January 2017 after Avaya's Chapter 11 filing, and on February 23, 2018 the parties jointly stipulated to dismissal; no claim construction order or briefing occurred. Sources: Unified Patents' IPR petition (Mar. 14, 2019), recounting the procedural history ("stayed in January 2017 ... On February 23, 2018, both parties jointly stipulated that the case be dismissed. No claim construction briefing or order was entered"); Cantech Letter (Mar. 11, 2018); Justia docket (venue-transfer denial, Dkt. 59, Oct. 10, 2017). This resolves the "final disposition not verified" item in the existing summary.
• The '961 patent was asserted only in this case and later in BlackBerry's 2018 suits (e.g., against Facebook) — useful for arguing the '961 was never construed.

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What I could not verify (and how to close it)

1. Firm names/offices for Asperger, Johnson, Leefer, Burns, Zado, Torkelson, Sistos, Lordgooei, Maroulis. These need Dkt. 1 (signature block), the Dkts. 2–10 notices of appearance, or the Sept. 2016 pro hac vice motions. My web sources surface names only; I declined to attribute firms on name-similarity.
2. Any formal "lead counsel" designation. None appears in the record I could access; any statement that X was "lead trial counsel" would be inference.
3. In-house counsel. No BlackBerry in-house attorney appears in the counsel data; BlackBerry used outside counsel. I found no appearance by a BlackBerry legal-department attorney, but I cannot exclude one filed under seal or in a corporate disclosure statement.

If you can share Dkt. 1 or the appearances docket, I'll firm up the firm/office fields and confidence levels immediately.

I'll research the docket and counsel appearances for Avaya in this case.