Case 1:18-cv-01046-PAB-SKC Document 22 Filed 07/03/18 USDC Colorado Page 1 of 21
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`UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF COLORADO
`
`REALTIME ADAPTIVE STREAMING,
`LLC
`
`
`Plaintiff,
`
`v.
`
`AVAYA INC.
`
`
`
`Defendant.
`
`
`
`
`
`Case No. 1:18-cv-01046-PAB-STV
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`
`
`JURY TRIAL DEMANDED
`
`
`DEFENDANT AVAYA INC.’S ANSWER, AFFIRMATIVE DEFENSES, AND
`COUNTERCLAIMS TO PLAINTIFF REALTIME
`ADAPTIVE STREAMING L.L.C.’S COMPLAINT
`
`
`
`
`
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`Defendant Avaya Inc. (“Defendant” or “Avaya”), by and through its undersigned
`
`counsel, hereby answers the Complaint for Patent Infringement (the “Complaint,” Dkt. No. 1) of
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`Plaintiff Realtime Adaptive Streaming LLC (“Plaintiff” or “Realtime”), on personal knowledge
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`as to its own activities and on information and belief as to the activities of others. Avaya denies
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`each and every allegation in the Complaint, unless expressly admitted herein.
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`PARTIES
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`
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`Avaya lacks knowledge or information sufficient to form a belief as to the truth of
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`the allegations in Paragraph 1 of the Complaint, and therefore denies all such allegations.
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`
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`Avaya admits that it is a Delaware corporation with its principal place of business
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`in Santa Clara, California. Avaya admits that it has locations at 8744 Lucent Boulevard,
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`Highlands Ranch, CO 80129 and 12121 Grant Street, Thornton, CO 80241. Avaya admits that
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`
`
`UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF COLORADO
`
`REALTIME ADAPTIVE STREAMING,
`LLC
`
`
`Plaintiff,
`
`v.
`
`AVAYA INC.
`
`
`
`Defendant.
`
`
`
`
`
`Case No. 1:18-cv-01046-PAB-STV
`
`
`
`JURY TRIAL DEMANDED
`
`
`DEFENDANT AVAYA INC.’S ANSWER, AFFIRMATIVE DEFENSES, AND
`COUNTERCLAIMS TO PLAINTIFF REALTIME
`ADAPTIVE STREAMING L.L.C.’S COMPLAINT
`
`
`
`
`
`
`Defendant Avaya Inc. (“Defendant” or “Avaya”), by and through its undersigned
`
`counsel, hereby answers the Complaint for Patent Infringement (the “Complaint,” Dkt. No. 1) of
`
`Plaintiff Realtime Adaptive Streaming LLC (“Plaintiff” or “Realtime”), on personal knowledge
`
`as to its own activities and on information and belief as to the activities of others. Avaya denies
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`each and every allegation in the Complaint, unless expressly admitted herein.
`
`PARTIES
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`
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`Avaya lacks knowledge or information sufficient to form a belief as to the truth of
`
`the allegations in Paragraph 1 of the Complaint, and therefore denies all such allegations.
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`
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`Avaya admits that it is a Delaware corporation with its principal place of business
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`in Santa Clara, California. Avaya admits that it has locations at 8744 Lucent Boulevard,
`
`Highlands Ranch, CO 80129 and 12121 Grant Street, Thornton, CO 80241. Avaya admits that
`
`
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`Case 1:18-cv-01046-PAB-SKC Document 22 Filed 07/03/18 USDC Colorado Page 2 of 21
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`it offers products and/or services, including those accused of infringement in the Complaint, to
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`customers located in the District of Colorado. Avaya admits that it may be served through its
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`registered agent, the Corporation Company, 7700 E. Arapahoe Rd. Suite 220, Centennial, CO
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`80112-1268. Avaya denies the remaining allegations of Paragraph 2 of the Complaint.
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`JURISDICTION AND VENUE
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`
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`Paragraph 3 of the Complaint sets forth conclusions of law to which no response
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`is required. To the extent a response is deemed to be required, however, Avaya admits that the
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`Complaint is styled as an action for patent infringement arising under the patent laws of the
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`United States, Title 35 of the United States Code and that the Complaint purports to assert that
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`subject matter jurisdiction exists over such claims under 28 U.S.C. § 1331 and § 1338(a). Avaya
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`denies the remaining allegations in Paragraph 3 of the Complaint.
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`
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`Paragraph 4 of the Complaint sets forth conclusions of law to which no response
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`is required. To the extent a response is deemed to be required, however, Avaya does not dispute
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`for purposes of this case that it is subject to personal jurisdiction in this Court. Avaya denies that
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`it has committed acts of direct or indirect infringement in the District of Colorado. Avaya denies
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`the remaining allegations of paragraph 4 of the Complaint.
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`
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`Paragraph 5 of the Complaint sets forth conclusions of law to which no response
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`is required. To the extent a response is deemed to be required, however, does not dispute that
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`venue lies in this Court as to the present case under 28 U.S.C. § 1400(b). Avaya admits that it is
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`registered to do business in Colorado, that it has transacted business in the District of Colorado,
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`and that it has facilities in the District of Colorado. Avaya denies that it has committed acts of
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`2
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`Case 1:18-cv-01046-PAB-SKC Document 22 Filed 07/03/18 USDC Colorado Page 3 of 21
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`direct or indirect infringement in the District of Colorado. Avaya denies the remaining
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`allegations in Paragraph 5 of the Complaint.
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`THE PATENTS-IN-SUIT
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`
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`Avaya admits that the Complaint purports to assert U.S. Patent Nos. 7,386,046
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`(the “’046 Patent”), 8,934,535 (“the ’535 Patent”), and 9,769,477 (the “’477 Patent”) (the
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`“Patents-In-Suit”). Avaya denies that it has committed any act of infringement
`
`
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`Avaya admits that a purported copy of the ’046 Patent is attached to the
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`Complaint as Exhibit A, which lists the patent title as “Bandwidth Sensitive Data Compression
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`and Decompression,” and lists the patent as being issued on June 10, 2008. Avaya lacks
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`knowledge or information sufficient to form a belief as to the truth of the remaining allegations
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`of Paragraph 7 of the Complaint, and therefore denies all such allegations.
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`
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`Avaya admits that a purported copy of the ’535 Patent is attached to the
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`Complaint as Exhibit B, which lists the patent title as “Systems and methods for video and audio
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`data storage and distribution,” and lists the patent as being issued on January 13, 2015. Avaya
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`lacks knowledge or information sufficient to form a belief as to the truth of the remaining
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`allegations of Paragraph 8 of the Complaint, and therefore denies all such allegations.
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`
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`Avaya admits that a purported copy of the ’477 Patent is attached to the
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`Complaint as Exhibit C, which lists the patent title as “Video data compression systems,” and
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`lists the patent as being issued on September 19, 2017. Avaya lacks knowledge or information
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`sufficient to form a belief as to the truth of the remaining allegations of Paragraph 9 of the
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`Complaint, and therefore denies all such allegations.
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`3
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`Case 1:18-cv-01046-PAB-SKC Document 22 Filed 07/03/18 USDC Colorado Page 4 of 21
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`RESPONSE TO COUNT I
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`[ALLEGED] INFRINGEMENT OF U.S. PATENT NO. 7,386,046
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`
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`Avaya repeats and incorporates by reference the foregoing paragraphs, as if fully
`
`set forth herein.
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`Denied.
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`Denied.
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`The documents cited in paragraph 13 of the Complaint speak for themselves.
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`Avaya denies that these documents contain a full, complete, and accurate description of the
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`Accused Instrumentalities. Avaya admits that certain Accused Instrumentalities utilize or
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`support certain aspects of the H.264 standard and/or HLS technology. Avaya denies the
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`remaining allegations of paragraph 13 of the Complaint.
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`
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`The documents cited in paragraph 14 of the Complaint speak for themselves.
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`Avaya denies that these documents contain a full, complete, and accurate description of the
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`Accused Instrumentalities. Avaya admits that certain Accused Instrumentalities utilize or
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`support certain aspects of the H.264 standard. Avaya denies the remaining allegations of
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`paragraph 14 of the Complaint.
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`
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`The documents cited in paragraph 15 of the Complaint speak for themselves.
`
`Avaya denies that these documents contain a full, complete, and accurate description of the
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`Accused Instrumentalities. Avaya admits that certain Accused Instrumentalities utilize or
`
`support certain aspects of the H.264 standard. Avaya denies the remaining allegations of
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`paragraph 15 of the Complaint.
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`4
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`The documents cited in paragraph 16 of the Complaint speak for themselves.
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`Avaya denies the remaining allegations of paragraph 16 of the Complaint at least because Avaya
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`lacks sufficient information or belief as to the content or accuracy of the referenced Wikipedia
`
`articles.
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`
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`The documents cited in paragraph 17 of the Complaint speak for themselves.
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`Avaya denies that these documents contain a full, complete, and accurate description of the
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`Accused Instrumentalities. Avaya denies the remaining allegations of paragraph 17 of the
`
`Complaint.
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`
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`The documents cited in paragraph 18 of the Complaint speak for themselves.
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`Avaya denies these documents contain a full, complete, and accurate description of the Accused
`
`Instrumentalities. Avaya denies the remaining allegations of paragraph 18 of the Complaint.
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`
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`The documents cited in paragraph 19 of the Complaint speak for themselves.
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`Avaya denies that these documents contain a full, complete, and accurate description of the
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`Accused Instrumentalities. Avaya denies the remaining allegations of paragraph 19 of the
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`Complaint.
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`
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`Denied.
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`Denied.
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`Denied.
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`Avaya admits that it had knowledge of the ’046 Patent as of the service of the
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`Complaint. Avaya denies the remaining allegations in Paragraph 23 of the Complaint.
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`
`
`
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`Denied.
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`Denied.
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`5
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`Denied.
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`Denied.
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`RESPONSE TO COUNT II
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`[ALLEGED] INFRINGEMENT OF U.S. PATENT NO. 8,934,535
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`Avaya repeats and incorporates by reference the foregoing paragraphs, as if fully
`
`set forth herein.
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`
`
`
`
`
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`Denied
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`Denied.
`
`The documents cited in paragraph 31 of the Complaint speak for themselves.
`
`Avaya denies that these documents contain a full, complete, and accurate description of the
`
`Accused Instrumentalities. Avaya admits that certain Accused Instrumentalities utilize or
`
`support certain aspects of the H.264 standard and/or HLS technology. Avaya denies the
`
`remaining allegations of paragraph 31 of the Complaint.
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`
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`The documents cited in paragraph 32 of the Complaint speak for themselves.
`
`Avaya denies that these documents contain a full, complete, and accurate description of the
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`Accused Instrumentalities. Avaya denies the remaining allegations of paragraph 32 of the
`
`Complaint.
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`
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`The documents cited in paragraph 33 of the Complaint speak for themselves.
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`Avaya denies the remaining allegations of paragraph 33 of the Complaint at least because Avaya
`
`lacks sufficient information or belief as to the content or accuracy of the referenced Wikipedia
`
`articles.
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`6
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`The documents cited in paragraph 34 of the Complaint speak for themselves.
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`Avaya denies that these documents contain a full, complete, and accurate description of the
`
`Accused Instrumentalities. Avaya denies the remaining allegations of paragraph 34 of the
`
`Complaint.
`
`
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`Avaya admits that certain Accused Instrumentalities utilize or support certain
`
`aspects of the H.264 standard and/or HLS technology. Avaya denies the remaining allegations
`
`of paragraph 35 of the Complaint.
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`
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`The documents cited in paragraph 36 of the Complaint speak for themselves.
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`Avaya denies that these documents contain a full, complete, and accurate description of the
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`Accused Instrumentalities. Avaya denies the remaining allegations of paragraph 36 of the
`
`Complaint.
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`
`
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`Denied.
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`Denied.
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`Denied.
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`Denied.
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`Avaya admits that it had knowledge of the ’535 Patent as of the service of the
`
`Complaint. Avaya denies the remaining allegations in Paragraph 41 of the Complaint.
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`Denied.
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`Denied.
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`Denied.
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`Denied.
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`RESPONSE TO COUNT III
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`
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`7
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`Case 1:18-cv-01046-PAB-SKC Document 22 Filed 07/03/18 USDC Colorado Page 8 of 21
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`[ALLEGED] INFRINGEMENT OF U.S. PATENT NO. 9,769,477
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`
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`Avaya repeats and incorporates by reference the foregoing paragraphs, as if fully
`
`set forth herein.
`
`
`
`
`
`
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`Denied.
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`Denied.
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`The documents cited in paragraph 49 of the Complaint speak for themselves.
`
`Avaya denies that these documents contain a full, complete, and accurate description of the
`
`Accused Instrumentalities. Avaya denies the remaining allegations of paragraph 49 of the
`
`Complaint.
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`
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`The documents cited in paragraph 50 of the Complaint speak for themselves.
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`Avaya denies that these documents contain a full, complete, and accurate description of the
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`Accused Instrumentalities. Avaya denies the remaining allegations of paragraph 50 of the
`
`Complaint.
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`
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`The documents cited in paragraph 51 of the Complaint speak for themselves.
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`Avaya denies the remaining allegations of paragraph 51 of the Complaint at least because Avaya
`
`lacks sufficient information or belief as to the content or accuracy of the referenced Wikipedia
`
`articles.
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`
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`The documents cited in paragraph 52 of the Complaint speak for themselves.
`
`Avaya denies that these documents contain a full, complete, and accurate description of the
`
`Accused Instrumentalities. Avaya denies the remaining allegations of paragraph 52 of the
`
`Complaint.
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`8
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`Case 1:18-cv-01046-PAB-SKC Document 22 Filed 07/03/18 USDC Colorado Page 9 of 21
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`The documents cited in paragraph 53 of the Complaint speak for themselves.
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`Avaya denies that these documents contain a full, complete, and accurate description of the
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`Accused Instrumentalities. Avaya denies the remaining allegations of paragraph 53 of the
`
`Complaint.
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`
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`Avaya admits that certain Accused Instrumentalities utilize or support certain
`
`aspects of the H.264 standard and/or HLS technology. Avaya denies the remaining allegations
`
`of paragraph 54 of the Complaint.
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`
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`The documents cited in paragraph 55 of the Complaint speak for themselves.
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`Avaya denies that these documents contain a full, complete, and accurate description of the
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`Accused Instrumentalities. Avaya denies the remaining allegations of paragraph 55 of the
`
`Complaint.
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`
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`
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`
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`Denied.
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`Denied.
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`Denied.
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`Avaya admits that it had knowledge of the ’477 Patent as of the service of the
`
`Complaint. Avaya denies the remaining allegations in Paragraph 59 of the Complaint.
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`Denied.
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`Denied.
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`Denied.
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`Denied.
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`RESPONSE TO PRAYER FOR RELIEF
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`9
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`Case 1:18-cv-01046-PAB-SKC Document 22 Filed 07/03/18 USDC Colorado Page 10 of 21
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`Avaya denies the underlying allegations of Realtime’s Prayer for Relief, denies that
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`Realtime is entitled to any relief whatsoever, and requests that the Court deny all relief to
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`Realtime, enter judgment in favor of Avaya, and award Avaya its attorneys’ fees as the
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`prevailing party in the action.
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`[REALTIME’S] DEMAND FOR JURY TRIAL
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`Avaya is not required to provide a response to Realtime’s request for a trial by jury.
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`GENERAL DENIALS
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`Avaya denies all allegations in the Complaint not specifically admitted above.
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`AFFIRMATIVE AND OTHER DEFENSES
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`Avaya’s Affirmative Defenses are listed below. Avaya reserves the right to amend this
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`Answer to add additional Affirmative Defenses, including allegations of inequitable conduct,
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`and/or any other defenses currently unknown to Avaya, as they become known throughout the
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`course of discovery in this action. Assertion of a defense is not a concession that Avaya has the
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`burden of proving the matter asserted.
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`FIRST AFFIRMATIVE DEFENSE
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`(Non-Infringement)
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`Avaya has not infringed and is not infringing, either directly, contributorily, by
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`inducement, jointly or in a divided manner, either literally or under the doctrine of equivalents,
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`or otherwise, any valid and enforceable claim of the ’046 Patent, the ’535 Patent, or the ’477
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`Patent.
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`
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`SECOND AFFIRMATIVE DEFENSE
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`(Invalidity)
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`10
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`Case 1:18-cv-01046-PAB-SKC Document 22 Filed 07/03/18 USDC Colorado Page 11 of 21
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`The claims of the ʼ046 Patent, the ’535 Patent, and ’477 Patent are invalid and/or
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`unenforceable for failing to meet one or more of the requisite statutory and decisional
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`requirements and/or conditions for patentability specified in 35 U.S.C. §§ 101, 102, 103, 112,
`
`and/or 116, the non-statutory doctrine of double patenting, and the rules, regulations, and laws
`
`pertaining thereto. For example, to the extent that Realtime alleges that H.264 infringes claims of
`
`the ʼ046 Patent, the ʼ535 Patent, and the ’477 Patent, those claims are invalid over prior art video
`
`compression standards such as H.262 (MPEG-2 Part 2). By way of another example, at least
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`some of the asserted claims are directed to patent-ineligible subject matter.
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`THIRD AFFIRMATIVE DEFENSE
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`(Limitation on Damages)
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`Realtime’s right to seek damages and other remedies from Avaya is limited by 35 U.S.C.
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`§§ 285, 286, 287, and/or 288, and may additionally be limited by 28 U.S.C. § 1498.
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`FOURTH AFFIRMATIVE DEFENSE
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`(Injunctive Relief Unavailable)
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`Realtime is not entitled to injunctive relief at least because any injury to Realtime is not
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`immediate or irreparable, and Realtime has an adequate remedy at law for its allegations.
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`FIFTH AFFIRMATIVE DEFENSE
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`(Prosecution History Estoppel)
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`To the extent that Realtime alleges infringement under the doctrine of equivalents,
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`Realtime’s alleged cause of action is barred, including, without limitation, by way of example,
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`under the doctrine of prosecution history estoppel, claim vitiation, and/or recapture. By virtue of
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`statements made, amendments made, and/or positions taken during the prosecution of the
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`applications for the ʼ046 Patent, the ʼ535 Patent, and the ’477 Patent, and any application to
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`which these patents claim priority, and in view of any statements made, amendments made
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`and/or positions that Realtime has taken or will take before the U.S. Patent and Trademark
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`Office during, for example, reexamination or inter partes review, Realtime is estopped from
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`asserting that the ʼ046 Patent, the ʼ535 Patent, and the ’477 Patent cover or include any of the
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`accused products or services of Avaya.
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`SIXTH AFFIRMATIVE DEFENSE
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`(Improper Venue)
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`Realtime’s claims for relief from Avaya are barred because venue in this judicial District
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`is improper. Moreover, Realtime fails to meet its burden to demonstrate that venue is proper in
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`the judicial District with respect to Avaya.
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`RESERVATION OF RIGHTS
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`Avaya reserves all affirmative defenses available under Rule 8(c) of the Federal Rules of
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`Civil Procedure, the patent laws of the United States, and all other defenses, at law or in equity,
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`that may now exist or in the future be available based on discovery and further investigation of
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`the case.
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`AVAYA COUNTERCLAIMS
`
`Counterclaim-Plaintiff Avaya, on personal knowledge as to its own acts, and on
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`information and belief as to all others, based on its own investigation, allege Counterclaims
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`against Realtime as follows:
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`PARTIES
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`12
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`1.
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`Avaya is a company organized under the laws of the State of Delaware. Avaya
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`can be served through its registered agent, The Corporation Company, 7700 E. Arapahoe Rd.
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`Suite 220, Centennial, CO 80112-1268.
`
`2.
`
`On information and belief based solely on Paragraph 1 of the Complaint,
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`Realtime is a Texas limited liability company organized and existing under the laws of the State
`
`of Texas. Realtime purports to have a place of business at 1828 E.S.E. Loop 323, Tyler, Texas
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`75701.
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`3.
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`On information and belief, Realtime’s registered agent is National Registered
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`Agents, Inc. 1999 Bryan St., STE. 900 Dallas, TX 75201.
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`JURISDICTION AND VENUE
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`4.
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`The jurisdiction of this Court is proper under 28 U.S.C. §§ 1331, 1338, 2201,
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`and/or 2202.
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`5.
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`These counterclaims arise under the Federal Declaratory Judgment Act, 28 U.S.C.
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`§ 2201, et seq., and the Patent Act of the United States, 35 U.S.C. § 101, et seq. An actual
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`controversy exists under the Declaratory Judgment Act because Realtime’s Complaint alleges
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`that Avaya infringes U.S. Patent Nos. 7,386,046 (the “’046 Patent”), 8,934,535 (“the ’535
`
`Patent”), and 9,769,477 (the “’477 Patent”), which Avaya denies.
`
`6.
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`This Court has personal jurisdiction over Realtime because it filed the Complaint
`
`in this Court.
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`7.
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`For purposes of these counterclaims, venue is appropriate in this judicial District
`
`under 28 U.S.C. §§ 1391 and/or 1400(b), at least based on Realtime’s filing of this action in this
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`13
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`Case 1:18-cv-01046-PAB-SKC Document 22 Filed 07/03/18 USDC Colorado Page 14 of 21
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`District. Avaya, however, does not waive its objections to venue over Realtime’s Complaint, as
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`filed in this District.
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`FIRST COUNTERCLAIM
`
`DECLARATORY JUDGMENT OF NON-INFRINGEMENT OF THE ʼ046 PATENT
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`8.
`
`Avaya restates and incorporates by reference the entirety of the foregoing
`
`paragraphs, as if fully set forth herein.
`
`9.
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`Realtime claims that it is the owner of the ’046 Patent. Realtime has accused
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`Avaya of infringing allegedly valid claims of the ’046 Patent in its Complaint, filed against
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`Avaya on May 4, 2018.
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`10.
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`Avaya denies that it directly, indirectly, or contributorily and/or by inducement,
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`infringes any valid claim of the ʼ046 Patent, either literally or under the doctrine of equivalents,
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`willfully or otherwise.
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`11.
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`Accordingly, a valid and justiciable controversy has arisen and exists between
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`Realtime and Avaya as to whether the ʼ046 Patent is infringed.
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`12.
`
`Based on the foregoing, and pursuant to 28 U.S.C. §§ 2201 and 2202 et seq.,
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`Avaya seeks, and is entitled to, a declaratory judgment that it does not infringe any claim of the
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`ʼ046 Patent, directly, indirectly, contributorily, and/or by inducement, either literally or under the
`
`doctrine of equivalents, willfully or otherwise.
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`SECOND COUNTERCLAIM
`
`DECLARATORY JUDGMENT OF INVALIDITY OF THE ʼ046 PATENT
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`13.
`
`Avaya restates and incorporates by reference the entirety of the foregoing
`
`paragraphs, as if fully set forth herein.
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`14
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`14.
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`A judicial declaration that the ’046 Patent is invalid because it fails to satisfy the
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`conditions for patentability specified in Title 35 of the United States Code is necessary and
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`appropriate at this time so that Avaya can ascertain their rights and duties with respect to the
`
`’046 Patent. Avaya has no adequate remedy at law.
`
`15.
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`Pursuant to the Federal Declaratory Judgment Act, 28 U.S.C. §§ 2201 et seq., and
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`Title 35 of the United States Code, Avaya therefore requests a judicial declaration that one or
`
`more claims of the ’046 Patent are invalid and/or unenforceable at least because they fail to
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`satisfy one or more conditions for patentability specified in 35 U.S.C. §§ 101, 102, 103, 112,
`
`and/or 116, the non-statutory doctrine of double patenting, and the rules, regulations, and laws
`
`pertaining thereto. For example, to the extent that Realtime alleges that H.264 infringes claims of
`
`the ʼ046 Patent, those claims are invalid over prior art video compression standards such as
`
`H.262 (MPEG-2 Part 2).
`
`THIRD COUNTERCLAIM
`
`DECLARATORY JUDGMENT OF NON-INFRINGEMENT OF THE ʼ535 PATENT
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`16.
`
`Avaya restates and incorporates by reference the entirety of the foregoing
`
`paragraphs, as if fully set forth herein.
`
`17.
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`Realtime claims that it is the owner of the ’535 Patent. Realtime has accused
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`Avaya of infringing allegedly valid claims of the ’535 Patent in its Complaint, filed against
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`Avaya on May 4, 2018.
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`18.
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`Avaya denies that it directly, indirectly, or contributorily and/or by inducement,
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`infringes any valid claim of the ʼ535 Patent, either literally or under the doctrine of equivalents,
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`willfully or otherwise.
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`15
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`Case 1:18-cv-01046-PAB-SKC Document 22 Filed 07/03/18 USDC Colorado Page 16 of 21
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`19.
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`Accordingly, a valid and justiciable controversy has arisen and exists between
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`Realtime and Avaya as to whether the ʼ535 Patent is infringed.
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`20.
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`Based on the foregoing, and pursuant to 28 U.S.C. §§ 2201 and 2202 et seq.,
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`Avaya seeks, and is entitled to, a declaratory judgment that it does not infringe any claim of the
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`ʼ535 Patent, directly, indirectly, contributorily, and/or by inducement, either literally or under the
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`doctrine of equivalents, willfully or otherwise.
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`FOURTH COUNTERCLAIM
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`DECLARATORY JUDGMENT OF INVALIDITY OF THE ʼ535 PATENT
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`21.
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`Avaya restates and incorporates by reference the entirety of the foregoing
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`paragraphs, as if fully set forth herein.
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`22.
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`A judicial declaration that the ’535 Patent is invalid because it fails to satisfy the
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`conditions for patentability specified in Title 35 of the United States Code is necessary and
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`appropriate at this time so that Avaya can ascertain their rights and duties with respect to the
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`’535 Patent. Avaya has no adequate remedy at law.
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`23.
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`Pursuant to the Federal Declaratory Judgment Act, 28 U.S.C. §§ 2201 et seq., and
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`Title 35 of the United States Code, Avaya therefore requests a judicial declaration that one or
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`more claims of the ’535 Patent are invalid and/or unenforceable at least because they fail to
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`satisfy one or more conditions for patentability specified in 35 U.S.C. §§ 101, 102, 103, 112,
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`and/or 116, the non-statutory doctrine of double patenting, and the rules, regulations, and laws
`
`pertaining thereto. For example, to the extent that Realtime alleges that H.264 infringes claims of
`
`the ʼ535 Patent, those claims are invalid over prior art video compression standards such as
`
`H.262 (MPEG-2 Part 2)
`
`
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`16
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`Case 1:18-cv-01046-PAB-SKC Document 22 Filed 07/03/18 USDC Colorado Page 17 of 21
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`FIFTH COUNTERCLAIM
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`DECLARATORY JUDGMENT OF NON-INFRINGEMENT OF THE ʼ477 PATENT
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`24.
`
`Avaya restates and incorporates by reference the entirety of the foregoing
`
`paragraphs, as if fully set forth herein.
`
`25.
`
`Realtime claims that it is the owner of the ’477 Patent. Realtime has accused
`
`Avaya of infringing allegedly valid claims of the ’477 Patent in its Complaint, filed against
`
`Avaya on May 4, 2018.
`
`26.
`
`Avaya denies that it directly, indirectly, or contributorily and/or by inducement,
`
`infringes any valid claim of the ’477 Patent, either literally or under the doctrine of equivalents,
`
`willfully or otherwise.
`
`27.
`
`Accordingly, a valid and justiciable controversy has arisen and exists between
`
`Realtime and Avaya as to whether the ’477 Patent is infringed.
`
`28.
`
`Based on the foregoing, and pursuant to 28 U.S.C. §§ 2201 and 2202 et seq.,
`
`Avaya seeks, and is entitled to, a declaratory judgment that it does not infringe any claim of the
`
`’477 Patent, directly, indirectly, contributorily, and/or by inducement, either literally or under the
`
`doctrine of equivalents, willfully or otherwise.
`
`SIXTH COUNTERCLAIM
`
`DECLARATORY JUDGMENT OF INVALIDITY OF THE ʼ477 PATENT
`
`29.
`
`Avaya restates and incorporates by reference the entirety of the foregoing
`
`paragraphs, as if fully set forth herein.
`
`30.
`
`A judicial declaration that the ’477 Patent is invalid because it fails to satisfy the
`
`conditions for patentability specified in Title 35 of the United States Code is necessary and
`
`
`
`17
`
`
`
`Case 1:18-cv-01046-PAB-SKC Document 22 Filed 07/03/18 USDC Colorado Page 18 of 21
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`appropriate at this time so that Avaya can ascertain their rights and duties with respect to the
`
`’477 Patent. Avaya has no adequate remedy at law.
`
`31.
`
`Pursuant to the Federal Declaratory Judgment Act, 28 U.S.C. §§ 2201 et seq., and
`
`Title 35 of the United States Code, Avaya therefore requests a judicial declaration that one or
`
`more claims of the ’477 Patent are invalid and/or unenforceable at least because they fail to
`
`satisfy one or more conditions for patentability specified in 35 U.S.C. §§ 101, 102, 103, 112,
`
`and/or 116, the non-statutory doctrine of double patenting, and the rules, regulations, and laws
`
`pertaining thereto. For example, to the extent that Realtime alleges that H.264 infringes claims of
`
`the ʼ477 Patent, those claims are invalid over prior art video compression standards such as
`
`H.262 (MPEG-2 Part 2)
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`PRAYER FOR RELIEF
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`WHEREFORE, Avaya respectfully requests that this Court enter judgment in its favor
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`and against Realtime, and grant the following relief:
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`a. A complete denial of Realtime’s requests for damages, costs, attorney fees,
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`injunction, and any other form of relief;
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`b. Dismissal with prejudice of all claims in Realtime’s Complaint against Avaya;
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`c. A permanent injunction restraining Realtime and its respective officers, partners,
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`employees, agents, parents, subsidiaries, and affiliates, and any other persons acting
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`on its behalf or in concert with it, from charging, suing or threatening, orally or in
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`writing, that the ʼ046 Patent, the ʼ535 Patent, and the ’477 Patent have been infringed
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`by Avaya under any subsection of 35 U.S.C. §§ 271 or 281;
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`
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`18
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`
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`Case 1:18-cv-01046-PAB-SKC Document 22 Filed 07/03/18 USDC Colorado Page 19 of 21
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`d. A declaration that Avaya has not and does not infringe any valid and enforceable
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`claim of the ʼ046 Patent, the ʼ535 Patent, or the ’477 Patent.
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`e. A declaration that each and every claim of the ʼ046 Patent, the ʼ535 Patent, and the
`
`’477 Patent is invalid.
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`f. A declaration that this is an exceptional case under 35 U.S.C. § 285 and awarding to
`
`Avaya its reasonable costs and expenses of litigation, including but not limited to
`
`attorneys’ fees and expert witness fees;
`
`g. An award to Avaya of its costs and disbursements in defending in this action brought
`
`by Realtime; and
`
`h. An award to Avaya of any and all further relief as the Court may deem just and
`
`proper.
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`DEMAND FOR JURY TRIAL
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`Pursuant to Federal Rule of Civil Procedure 38(b), Avaya hereby demands a trial by jury
`
`on all issues so triable raised by Realtime’s Complaint or by Avaya’s Answer.
`
`
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`19
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`Case 1:18-cv-01046-PAB-SKC Document 22 Filed 07/03/18 USDC Colorado Page 20 of 21
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`Dated: July 3, 2018
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`Respectfully submitted,
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`
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`/s/ Christopher O. Green____________
`Christopher O. Green
`Noah C. Graubart
`Jonathan B. Bright
`FISH & RICHARDSON P.C.
`1180 Peachtree Street, N.E., 21st Floor
`Atlanta, GA 30309
`Telephone: (404) 892-5005
`Facsimile: (404) 892-5002
`cgreen@fr.com
`graubart@fr.com
`jbright@fr.com
`
`
`ATTORNEYS FOR DEFENDANT
`AVAYA INC.
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`20
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`Case 1:18-cv-01046-PAB-SKC Document 22 Filed 07/03/18 USDC Colorado Page 21 of 21
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`CERTIFICATE OF SERVICE
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`I hereby certify that the counsel of record who are deemed to have consented to
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`
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`electronic service are being served on July 3, 2018, with a copy of this document via the Court’s
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`CM/ECF system per District of Colorado Civil Local Rule 5.1(d). Any other counsel of record
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`will be served by electronic mail, facsimile transmission and/or first class mail on this date.
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`/s/ Christopher O. Green
`Christopher O. Green
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`21
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