Litigation

Aylo Freesites Ltd. v. DISH Technologies LLC

Terminated

IPR2024-00940

Terminated
2026-02-03

Patents at issue (1)

11991234B2

Plaintiffs (1)

Defendants (1)

Summary

An IPR proceeding that was terminated on February 3, 2026, after a Final Written Decision was vacated. The termination occurred because the petitioner's need to add a real party in interest rendered the petition time-barred.

Case overview & background

Plain-language overview of the case: parties, accused product, patents at issue, and why the suit matters.

This case provides a significant look into the procedural intricacies of inter partes review (IPR) proceedings at the Patent Trial and Appeal Board (PTAB) and their interplay with district court litigation. The petitioner, Aylo Freesites Ltd., is an operating company based in Cyprus and part of the Canadian-owned Aylo conglomerate, which runs numerous adult entertainment websites including Pornhub. The patent owner, DISH Technologies LLC, is the intellectual property enforcement arm of U.S.-based satellite and streaming provider DISH Network. DISH has actively litigated its portfolio of patents related to adaptive bitrate (ABR) streaming, a technology that adjusts video quality in real-time based on a user's internet speed. This IPR was filed by Aylo in response to litigation where DISH accused Aylo's streaming services of infringing U.S. Patent No. 11,991,234 B2, which covers methods for adaptive-rate shifting of streaming content.

The proceeding took place at the USPTO's PTAB, a specialized administrative body that provides a faster and more streamlined venue than federal court for challenging the validity of issued patents. Such IPRs are a common defensive strategy for companies accused of infringement, and the parallel district court case between Aylo and DISH in Utah was stayed pending the outcome of this PTAB review. The case is particularly notable for its rare and impactful procedural conclusion. After the PTAB had already conducted a full trial and issued a Final Written Decision on the merits of the patent's validity, the decision was vacated sua sponte by the Director of the USPTO on February 3, 2026.

The vacatur and subsequent termination of the entire proceeding occurred because Aylo was required to add a previously undisclosed real party in interest (RPI), an affiliated company named 9219-1468 Quebec Inc. Under PTAB rules, the addition of a new RPI caused the petition's effective filing date to be moved to the date of the correction. This new filing date fell more than one year after the RPI had been served with a complaint for patent infringement, rendering the IPR petition time-barred under 35 U.S.C. § 315(b). The Director's decision to vacate a final decision on these grounds, effectively nullifying the outcome, underscores the critical and unforgiving nature of the RPI identification requirement and serves as a cautionary example of how a procedural error can unwind a year-long administrative trial, regardless of the underlying technical merits.

Key legal developments & outcome

Major rulings, motions, claim construction, settlements, and the present posture or final disposition.

Key Legal Developments and Outcome

The dispute between Aylo Freesites and DISH Technologies centered on an inter partes review (IPR) at the Patent Trial and Appeal Board (PTAB), which was influenced by and ran parallel to a federal district court infringement action. The IPR was ultimately terminated on procedural grounds just as it reached finality, due to a critical issue regarding the identification of all interested parties.

Parallel Litigation: DISH v. Aylo (D. Utah)

  • 2024-01-24: DISH Technologies LLC and Sling TV LLC filed a patent infringement lawsuit against Aylo Freesites Ltd. in the U.S. District Court for the District of Utah, docketed as Case No. 2:24-cv-00066. The filing of this complaint and its subsequent service on all real parties in interest established the start of the one-year statutory window for Aylo to file any IPR petitions against the asserted patents.
  • 2024-05-24: The court issued a Memorandum Decision and Order granting DISH's motion for alternate service of process on the defendants. This order is a key event for calculating the one-year time bar under 35 U.S.C. § 315(b) for any real parties in interest served under this ruling.
  • 2024-08-28: Following the institution of the IPR, the district court granted Aylo's motion to stay the litigation pending a final written decision from the PTAB. The court determined a stay was warranted to simplify issues and because the case was still in its early stages.

PTAB IPR Proceeding: IPR2024-00940

  • 2024-05-21: Aylo Freesites Ltd. filed a petition for inter partes review challenging the validity of claims in DISH's U.S. Patent No. 11,991,234 B2.
  • 2024-11-21: The PTAB determined that Aylo had established a reasonable likelihood that it would prevail in challenging at least one claim of the '234 patent and accordingly issued a decision instituting the IPR trial.
  • 2025-08-22: The PTAB scheduled an oral hearing for the parties to present their final arguments.
  • Late 2025 / Early 2026 (Specific Date Not Available): At a critical juncture after the trial was underway, Aylo filed updated mandatory notices to identify an additional real party in interest (RPI). This disclosure proved fatal to its petition.
  • Early 2026 (Specific Date Not Available): The PTAB panel proceeded to a Final Written Decision on the merits of the patentability challenge. The outcome of this decision is unknown, as it was promptly vacated.
  • 2026-02-03 (Termination): In a dispositive ruling, USPTO Director John Squires issued a "Decision Vacating Final Written Decision, and Terminating the Proceeding" (Paper 75). This decision was made pursuant to the Director Review process. The Director's reasoning was as follows:
    • The correction of a petition to add a new RPI requires that the petition be accorded a new filing date corresponding to when the correction was made.
    • With this new, later filing date, Aylo's petition was now considered filed more than one year after the date the newly identified RPI had been served with the complaint in the Utah district court action.
    • As a result, the petition was statutorily time-barred under 35 U.S.C. § 315(b).

Final Outcome

The IPR proceeding was terminated on procedural grounds, not on the substantive merits of Aylo's invalidity arguments. The Final Written Decision was vacated, rendering it a nullity. The case stands as a significant example of the PTAB's strict enforcement of the requirement to identify all real parties in interest at the outset of a proceeding. A failure to do so, if corrected late in the process, can have case-dispositive consequences by resetting the petition's filing date and triggering the one-year statutory time bar. Following the termination, the stay in the District of Utah litigation would be lifted, allowing DISH's infringement suit to proceed.

Plaintiff representatives

Counsel of record for the plaintiff(s): attorneys, firms, and roles (lead counsel, of counsel, local counsel).

Based on a review of filings in the inter partes review and related district court litigation, the petitioner, Aylo Freesites Ltd., was represented by attorneys from the Intellectual Property Litigation group of Venable LLP.

Venable LLP

  • Frank M. Gasparo (Lead Counsel)

    • Firm & Office: Venable LLP, New York, NY.
    • Note: Co-chair of Venable's IP Litigation Technology Group and a member of the firm's board, he has served as lead counsel in numerous patent cases in district courts, the ITC, and in post-grant proceedings before the USPTO.

  • Ralph A. Dengler (Lead Counsel)

    • Firm & Office: Venable LLP, New York, NY.
    • Note: A first-chair trial attorney and U.S. Marine Corps combat veteran, he litigates patent, trademark, and trade secret matters in diverse technological fields, including streaming media, software, and telecommunications.

  • Ian G. Paquette (Of Counsel)

    • Firm & Office: Venable LLP, Washington, DC.
    • Note: A former primary patent examiner at the USPTO, his practice focuses on patent litigation in district courts and the ITC, as well as PTAB proceedings.

  • J. Daniel Kang (Of Counsel)

    • Firm & Office: Venable LLP, New York, NY.
    • Note: A registered patent attorney with a background in electrical engineering, he handles complex patent litigation needs across the U.S. and Europe, particularly in software, streaming media, and telecommunications.

  • Philip T. Sheng (Of Counsel)

    • Firm & Office: Venable LLP, San Francisco, CA.
    • Note: A former law clerk to Chief Judge Randall Rader of the Federal Circuit, he specializes in complex IP disputes before the ITC, federal courts, and the USPTO for telecommunications and technology clients.

  • Parker G. Zimmerman (Of Counsel)

    • Firm & Office: Venable LLP, New York, NY.
    • Note: With a background in computer science, he focuses on IP litigation and leverages his experience in patent prosecution to assist with technology-focused cases.

Defendant representatives

Counsel of record for the defendant(s): attorneys, firms, and roles (lead counsel, of counsel, local counsel).

Based on a review of the official filings with the USPTO's Patent Trial and Appeal Board (PTAB) and other public records, the counsel of record for patent owner DISH Technologies LLC in IPR2024-00940 are from the law firm Baker Botts L.L.P..

The team has a history of representing DISH in high-stakes patent disputes, including district court litigation, International Trade Commission (ITC) investigations, and other PTAB proceedings.

Counsel for DISH Technologies LLC

Name Role Firm & Office Location Notable Experience
Eliot D. Williams Lead Counsel Baker Botts L.L.P.
Washington, D.C.		 Co-Chair of the firm's PTAB Trials practice; has appeared as counsel in over 300 PTAB trials and argued nearly two dozen cases at the Federal Circuit.
G. Hopkins Guy, III Lead Counsel Baker Botts L.L.P.
Palo Alto, CA		 Lead trial attorney with extensive experience in high-tech patent litigation and over 75 PTAB matters, frequently representing DISH.
Thomas B. Carter, Jr. Of Counsel Baker Botts L.L.P.
Houston, TX		 Special Counsel with experience in patent litigation and adversarial USPTO proceedings, including inter partes reviews, across telecommunications and other tech sectors.
Lauren J. Dreyer Of Counsel Baker Botts L.L.P.
Washington, D.C.		 Partner focused on high-stakes patent litigation and appeals; played a key role in a significant trial victory for DISH that overturned a major liability finding.
Robert Maier Of Counsel Baker Botts L.L.P.
New York, NY		 Partner and Chair of the firm's New York Intellectual Property group, leading teams in major patent cases across district courts, the ITC, and the PTAB.
Kurt Pankratz Of Counsel Baker Botts L.L.P.
Dallas, TX		 Partner and first-chair trial lawyer serving as Chair for the firm's Dallas Intellectual Property department, with extensive experience in high-tech patent disputes.
Jamie R. Lynn Of Counsel Baker Botts L.L.P.
Palo Alto, CA		 Partner who has represented DISH in patent infringement disputes before the International Trade Commission.
Ali Dhanani Of Counsel Baker Botts L.L.P.
Palo Alto, CA		 Partner who has been part of the Baker Botts team representing DISH in significant patent litigation, including matters before the Federal Circuit.
Andrew Wilson Of Counsel Baker Botts L.L.P.
Washington, D.C.		 Counsel who has represented DISH in patent disputes at the PTAB and ITC.
Zacharias E. Shepard Of Counsel Baker Botts L.L.P.
Palo Alto, CA		 Associate who appeared on filings for DISH in this IPR proceeding.