PTAB challenges

Proceedings overview

There are two AIA trial proceedings on file for US Patent 11,991,234 B2. One proceeding (IPR2024-00940) initially reached a Final Written Decision but was subsequently vacated and terminated due to procedural issues, meaning no claims were invalidated. The other proceeding (IPR2024-00941) was not instituted. Therefore, all claims of US 11,991,234 B2 remain sustained and untested through PTAB proceedings, giving the patent a hardened defensive posture against future IPRs on the same grounds.

IPR2024-00940 — Aylo Freesites Ltd v. DISH Technologies LLC

• Type: Inter Partes Review
• Filed: 2024-05-21
• Status: Final Written Decision, but subsequently vacated and terminated. The proceeding was terminated because the Petitioner, Aylo Freesites Ltd, was required to disclose additional real parties in interest (RPIs), which resulted in the petition being accorded a new filing date that rendered it time-barred under 35 U.S.C. § 315(b).
• Judge panel: John A. Squires (Under Secretary of Commerce for Intellectual Property and Director of the USPTO)
• Petition grounds: I am unable to confirm the specific petition grounds (e.g., specific claims, prior art, or statutory basis) with high confidence from the provided information. However, the case involved a motion to exclude evidence related to an obviousness analysis.
• Institution decision: The proceeding was initially instituted, but this decision was later vacated.
• Final Written Decision (if issued): A Final Written Decision was issued, but it was subsequently vacated by the Director of the USPTO on February 3, 2026. Therefore, no claims were ultimately canceled or held unpatentable in this proceeding.
• Settlement / termination: The proceeding was terminated on February 3, 2026, due to the time-bar resulting from the corrected RPI identification.
• Appeal: No appeal of the vacated Final Written Decision is indicated in the provided information, as the proceeding was terminated.
• Defensive value: This proceeding indicates that the patent owner successfully defended against a challenge on procedural grounds. While a Final Written Decision was initially reached, its vacatur and the subsequent termination mean that no claims of US 11,991,234 B2 were invalidated. This strengthens the patent's defensive position, particularly against any future challenges relying on similar RPI issues or time-bar arguments by the same petitioner or its privies.

IPR2024-00941 — Aylo Freesites Ltd v. DISH Technologies LLC

• Type: Inter Partes Review
• Filed: 2024-05-21
• Status: Not Instituted - Procedural.
• Judge panel: Not publicly available in the provided search results.
• Petition grounds: I am unable to confirm the specific petition grounds (e.g., specific claims, prior art, or statutory basis) with high confidence from the provided information. However, it is related to "Adaptive-Bitrate Streaming Patents" and has a declaration from inventor R. Drew Major in support of Patent Owner's response.
• Institution decision: Denied on procedural grounds.
• Final Written Decision (if issued): No Final Written Decision was issued as institution was denied.
• Settlement / termination: The proceeding was not instituted.
• Appeal: No appeal is indicated as institution was denied.
• Defensive value: The non-institution of this IPR means that the patent owner successfully fended off a challenge without the merits of the claims being fully adjudicated by the PTAB. This is a favorable outcome for the patent owner, leaving the claims intact and reducing the likelihood of future challenges on the same grounds by the same petitioner due to estoppel.

Strategic summary

Currently, all claims of US 11,991,234 B2 remain SUSTAINED and UNTESTED on the merits through PTAB proceedings. IPR2024-00940, while initially proceeding to a Final Written Decision, was ultimately vacated and terminated on procedural grounds related to Real Parties in Interest and time-barring. IPR2024-00941 was denied institution on procedural grounds. This means that a defendant currently facing assertion of this patent will find that the claims have not been narrowed or cancelled by the PTAB.

The estoppel landscape is favorable for the patent owner, Dish Technologies LLC. For both IPR2024-00940 and IPR2024-00941, the petitioner, Aylo Freesites Ltd, and its privies are likely estopped under 35 U.S.C. § 315(e)(2) from raising any ground that was raised or reasonably could have been raised in those petitions. Since the patent claims remain intact, other potential defendants are not estopped from challenging the patent on any grounds. There is a pattern of challenges against Dish Technologies LLC's patents by Aylo Freesites Ltd, including related patents in the "ABR Patents" family.

Recommended next steps

Given that all claims of US 11,991,234 B2 remain intact and have survived two PTAB challenges on procedural grounds, potential defendants should focus on:

• Conducting a thorough prior art search, especially for art not considered in the IPRs (though the merits were not reached in the IPRs, the petitions did assert obviousness grounds).
• Developing new non-obviousness arguments not presented in the IPRs.
• Analyzing the specific procedural grounds for termination and non-institution to avoid similar pitfalls if considering a new PTAB petition.
• Investigating potential arguments related to patent eligibility under 35 U.S.C. § 101, as this ground is not available in IPRs but can be in PGR or CBM proceedings if applicable, or in district court.