BlackBerry asks Bankruptcy court to lift stay on Avaya Patent Suit

BlackBerry asked a New York bankruptcy court Friday, to lift the stay on its patent suit against Avaya Inc., claiming that the company is continuing to sell the allegedly infringing products.

BlackBerry argued that allowing the suit against its bankrupt competitor to go forward would not interfere with the bankruptcy proceedings and is needed to stop Avaya’s continued infringement.

BlackBerry said in its filings.

“Every day that the debtor continues to import, market and sell infringing products is another day the debtor is violating the patent laws, and the only reason why BlackBerry is currently unable to take action to stop it is by virtue of the automatic stay,”

“The automatic stay is not a shield against illegal activity.”

Santa Clara, California-based Avaya filed for Chapter 11 protection in January, six months after BlackBerry filed a suit alleging that Avaya is using BlackBerry’s proprietary technology in multiple commercial products and services, including unified communications products and software, networking products like switches and routers, communication servers and client software, telepresence systems, softphones and deskphones, and mobile software.

The patents in question are numbers 9143801, 8964849, 8116739, 8886212, 8688439, 7440561, 8554218 and 737296, which were originally filed as applications at the USPTO between 1998 and 2011.

Nos. 9,143,801 and 8,964,849, relating to “significance maps” for coding video data;
No. 8,116,739, describing methods of displaying messages;
No. 8,886,212, describing tracking location of mobile devices;
No. 8,688,439, relating to speech decoding and compression;
No. 7,440,561, describing integrating wireless phones into a PBX network;
No. 8,554,218, describing call routing methods; and
No. 7,372,961, a method of generating a cryptographic public key.

Products targeted by Blackberry include Avaya’s video conferencing systems, Avaya Communicator for iPad, a product that connects mobile users to IP Office systems, and various IP desk phones.

BlackBerry argues that it should be paid for its history of innovation going back nearly 20 years.

“BlackBerry revolutionised the mobile industry. BlackBerry… has invented a broad array of new technologies that cover everything from enhanced security and cryptographic techniques, to mobile device user interfaces, to communication servers, and many other areas.”

In its filing, BlackBerry claimed that Avaya is continuing to sell the allegedly infringing products, and as a result an immediate order to allow the case to proceed is needed.

“If such order does not become immediately effective, debtor could take actions that would prejudice BlackBerry with respect to the patents being litigated in the patent infringement case,”

“Moreover, BlackBerry only has limited time to recover its R&D investments that led to the patents it is asserting (as the patents have a limited lifetime), and continued acts of infringement by debtor may lead others to infringe BlackBerry’s patents.”

BlackBerry argued that multiple bankruptcy courts have allowed intellectual property suits against bankrupt companies to go forward and that lifting the stay would simplify the bankruptcy proceedings by removing any patent issues from consideration.