PTAB challenges

Proceedings overview

The U.S. Patent 11,470,138 B2 has been involved in four AIA trial proceedings: two inter partes reviews (IPRs) that proceeded to a final written decision, and two IPRs that were denied institution on procedural grounds. In the two IPRs that reached a final written decision, claims 6, 8-13, and 18-20 of the patent were confirmed patentable. This indicates a hardened defensive posture for the patent owner, Dish Technologies LLC, as several claims have survived PTAB challenges.

IPR2024-00044 — fuboTV Inc. v. DISH Technologies LLC

• Type: Inter Partes Review
• Filed: October 12, 2023
• Status: Final Written Decision. Claims 6, 8-13, and 18-20 confirmed patentable.
• Judge panel: Information not explicitly found in search results.
• Petition grounds: Specific grounds (claims, art, statutory basis) were not detailed in the search results but generally involved challenges to patentability.
• Institution decision: The petition was instituted, allowing the trial to proceed to a final written decision. The exact date and reasoning for institution were not found in the search results.
• Final Written Decision (Issued between April 14-17, 2025): The PTAB confirmed the patentability of claims 6, 8-13, and 18-20 of U.S. Patent 11,470,138 B2.
• Settlement / termination: No information about settlement was found.
• Appeal: Dish Technologies L.L.C. has appealed from the PTO regarding this IPR, with case number 2026-1542 filed at the Federal Circuit on March 20, 2026.
• Defensive value: This proceeding significantly strengthens the patent. A defendant facing assertion on claims 6, 8-13, or 18-20 will find it much harder to invalidate them at the PTAB or in district court using the same or substantially similar prior art or arguments. The patent owner's appeal suggests further efforts to defend the patent's validity.

IPR2024-00902 — DirecTV, LLC v. DISH Technologies LLC

• Type: Inter Partes Review
• Filed: April 10, 2024
• Status: Final Written Decision. Claims 6, 8-13, and 18-20 confirmed patentable.
• Judge panel: Information not explicitly found in search results.
• Petition grounds: Specific grounds (claims, art, statutory basis) were not detailed in the search results but generally involved challenges to patentability.
• Institution decision: The petition was instituted, leading to a final written decision. The exact date and reasoning for institution were not found in the search results.
• Final Written Decision (Issued between April 14-17, 2025): The PTAB confirmed the patentability of claims 6, 8-13, and 18-20 of U.S. Patent 11,470,138 B2.
• Settlement / termination: No information about settlement was found.
• Appeal: No specific appeal for IPR2024-00902 was found in the search results.
• Defensive value: Similar to IPR2024-00044, this proceeding reinforces the patentability of claims 6, 8-13, and 18-20. It indicates that the PTAB found these claims to withstand challenges based on the prior art presented by DirecTV.

IPR2024-00512 — Cox Communications, Inc., and Cox Media Group, LLC v. DISH Technologies LLC

• Type: Inter Partes Review
• Filed: January 22, 2024
• Status: Not Instituted - Procedural. The Board declined to institute a trial.
• Judge panel: Information not explicitly found in search results.
• Petition grounds: Not applicable due to denial of institution.
• Institution decision: Denied institution. While specific details for this IPR's denial were not explicitly provided, the search results indicate that the PTAB has been willing to deny IPR institution when parallel district court litigation is well underway, especially if the district court is likely to resolve the validity issues first, often applying Fintiv factors. The "Not Instituted - Procedural" status suggests a similar discretionary denial, possibly due to the ongoing district court case (1:23-cv-00987) involving Cox and this patent.
• Final Written Decision: Not applicable as institution was denied.
• Settlement / termination: Not applicable as institution was denied.
• Appeal: No appeal information found.
• Defensive value: This denial means that Cox (and potentially its privies) is estopped from raising the same grounds in district court or the ITC that it raised or reasonably could have raised in this IPR petition. It also signals the PTAB's tendency to deny institution in light of advanced parallel litigation, which is a consideration for future petitioners.

IPR2025-00469 — Fandango Media Inc. v. DISH Technologies LLC

• Type: Inter Partes Review
• Filed: January 17, 2025
• Status: Not Instituted - Procedural. The Board declined to institute a trial.
• Judge panel: Information not explicitly found in search results.
• Petition grounds: Not applicable due to denial of institution. However, a preliminary response brief for this IPR argued against institution, stating the petition was "redundant, untimely, and unsupported".
• Institution decision: Denied institution. This denial likely resulted from discretionary factors, such as the Fintiv framework, given that a "first wave" of IPRs had already led to final written decisions confirming the patentability of claims of U.S. Patent 11,470,138 B2. The patent owner argued the petition was redundant.
• Final Written Decision: Not applicable as institution was denied.
• Settlement / termination: Not applicable as institution was denied.
• Appeal: No appeal information found.
• Defensive value: Similar to IPR2024-00512, this denial reinforces the PTAB's use of discretionary denial, particularly when prior IPRs have already addressed the patentability of claims or when petitions are deemed redundant. Fandango (and potentially its privies) is estopped from raising the same grounds in future proceedings.

Strategic summary

Based on the PTAB proceedings, claims 6, 8-13, and 18-20 of U.S. Patent 11,470,138 B2 have been Sustained as patentable in two separate inter partes reviews (IPR2024-00044 and IPR2024-00902) that proceeded to final written decisions. These claims represent a core subset of the patent's scope that has withstood validity challenges at the PTAB. Independent claim 1 was not explicitly addressed as sustained or canceled in the available search snippets for these FWDs; the snippets only specifically confirm patentability of claims 6, 8-13, and 18-20. Therefore, the status of claim 1 remains Untested at the PTAB, or its outcome was not explicitly mentioned in the available FWD summaries.

The estoppel landscape dictates that petitioners fuboTV Inc. and DirecTV, LLC (and their respective privies) are barred under 35 U.S.C. § 315(e)(2) from asserting in district court or the ITC any invalidity grounds they raised or reasonably could have raised against claims 6, 8-13, and 18-20 in their respective IPRs. Similarly, Cox Communications, Inc., Cox Media Group, LLC, and Fandango Media Inc. (and their privies) are estopped from raising the grounds presented in their petitions for IPR2024-00512 and IPR2025-00469, which were denied institution on procedural grounds. For a defendant currently being asserted against, this means that prior-art grounds previously litigated and decided against the petitioners, or which could have been raised, are no longer available. However, a defendant not in privy with these petitioners might still be able to pursue IPR or district court invalidity challenges using different prior art or arguments, particularly against claims not explicitly confirmed patentable.

The patent owner, Dish Technologies LLC, has demonstrated an aggressive posture by actively defending the patent at the PTAB and appealing at least one of the IPR outcomes (IPR2024-00044) to the Federal Circuit. The denials of institution for IPR2024-00512 and IPR2025-00469 highlight the PTAB's willingness to use discretionary denial, particularly where parallel district court litigation is advanced or petitions are considered redundant, which can further strengthen the patent owner's position by limiting avenues for validity challenges.

Recommended next steps

• For any defendant facing assertion of U.S. Patent 11,470,138 B2, it is crucial to review the full Final Written Decisions for IPR2024-00044 and IPR2024-00902 to understand the specific reasoning behind the PTAB's confirmation of patentability for claims 6, 8-13, and 18-20. The available information suggests these decisions were issued between April 14-17, 2025. These documents will provide precise details on the claims addressed and the prior art considered.
• Given that DISH Technologies L.L.C. has appealed the outcome of IPR2024-00044 to the Federal Circuit (Case Number 2026-1542, filed March 20, 2026), closely monitor the progress and disposition of this appeal. The Federal Circuit's decision could further impact the validity and enforceability of the claims.
• Analyze the unconfirmed claims, particularly independent claim 1, to identify potential new prior art or invalidity arguments under 35 U.S.C. §§ 102, 103, or 112 that were not raised or decided in the completed IPRs. Since claim 1 is independent, its status impacts all dependent claims.
• If considering a new IPR, carefully assess the Fintiv factors and the impact of the procedural denials in IPR2024-00512 and IPR2025-00469. Recent PTAB practice, especially after changes in early to mid-2025, emphasizes discretionary denial in cases with parallel litigation or redundant petitions. Any new petition would need strong arguments to differentiate itself from prior unsuccessful challenges.