DISH Technologies L.L.C. et al v. Aylo Freesites Ltd et al

Filing 36

MEMORANDUM DECISION AND ORDER granting Defendants' 30 Motion to Stay Pending Inter Partes Review. This case is stayed pending the conclusion of all the IPRs pending against Plaintiffs' asserted claims. Signed by Judge Dale A. Kimball on 8/28/2024. (eat)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF UTAH
DISH TECHNOLOGIES L.L.C and
SLING TV L.L.C,
Plaintiffs,
vs.

MEMORANDUM DECISION
AND ORDER

AYLO FREESITES LTD and 9219-1568
Quebec Inc.,

Case No. 2:24-cv-00066-DAK-JCB
Judge Dale A. Kimball

Defendants.
This matter is before the court on Defendants’ Expedited Motion to Stay Pending Inter
Partes Review [ECF No. 30]. The court does not believe that a hearing will significantly aid in
its determination of the motion.
BACKGROUND
On July 25, 2023, Aylo Freesites (“Aylo”) filed an action in the Northern District of
California seeking a Declaratory Judgment of non-infringement of U.S. Patent Nos. 10,469,555
(the ‘555 Patent), 10,757,156 (the ‘156 Patent), and 11,470,138 (the ‘138 Patent) in response to
Plaintiffs’ attempts to extract a license by accusing Aylo of infringing those patents. A month
later, Plaintiff DISH filed suit against Aylo in Utah against different, but related, Aylo entities
(Aylo Premium Ltd and Aylo Billing Limited) as well as several non-Aylo entities, alleging
infringement of the ‘138 Patent and U.S. Patent No. 11,677,798 (the ‘798 Patent); 10,469,554

1

(the ‘554 Patent), 10,951,680 (the ‘680 Patent); 9,407,564 (the ‘564 Patent); and 89,868,772 (the
‘772 Patent).
Aylo petitioned the USPTO for inter partes review of the ’798, ‘138, ‘554, ‘680, ‘564,
‘772, ‘555, and ‘156 Patents based on a primary prior art reference referred to as “Ogdon.” Later,
on January 30, 2024, Aylo filed a second set of IPR petitions challenging all asserted claims of
those patents based on a different primary prior art reference, “Leaning.” In mid-April, the
PTAB granted five of Aylo’s Ogdon IPR petitions, on the ‘798, ‘138, ‘554, ‘555, and ‘680
Patents, finding there was a “reasonable likelihood” that one or more asserted claims in each
patent are unpatentable in view of Ogdon. The PTAB did not institute IPRs for the ‘722, ‘564,
and ‘156 Patents. The ‘234 Patent was issued on May 21, 2024, and on the same day, Aylo filed
two IPR petitions each challenging all claims of the ‘234 Patent based on Ogdon and Leaning.
The Leaning IPR petitions, the ‘234 Patent Ogdon IPR petition, and the ‘234 Patent Leaning IPR
petition, collectively challenging all asserted claims of all Asserted Patents, are still pending
before the PTAB with institution decisions due beginning no later than August 13, 2024.
STANDARD OF REVIEW
“[D]istrict courts have broad discretion to manage their dockets, including the power to
grant a stay of proceedings.” Murata Mach, USA v. Daifuku Co., LTD., 830 F.3d 1357, 1362
(Fed. Cir. 2016). This court has repeatedly acknowledged that “[t]here is a liberal policy in favor
of granting motions to stay proceedings pending the outcome of USPTO reexamination
proceedings.” ClearPlay v. Dish Network LLC, No. 2:14-cv-00191-DN-CMR, 2021 WL
2515008, at *2 (D. Utah June 18, 2021). Courts consider three factors when deciding whether to
stay a case in favor of IPR proceedings: “(1) whether a stay will simplify the issues in question
and trial of the case; (2) whether discovery is complete and a trial date has been set; and (3)

2

whether a stay would unduly prejudice or present a clear tactical disadvantage to the non-moving
party.” Id. at *1.
DISCUSSION
After careful review, this court determines that a stay is proper in this case. Each factor is
discussed in turn.
First, a stay will simplify the issues. The majority of the Asserted Patents already have
IPRs instituted and the remaining pending IPRs challenge every asserted claim of every Asserted
Patent. The court will also benefit from the record developed during the IPR proceedings.
ClearPlay, 2021 WL 2515008, at *2. It is likely that the PTAB’s analysis with respect to the
instituted IPRs will be relevant to all Asserted Patents given that the patents are all related and
have similar specifications and share common claim terms. See IOENGINE LLC v. Paypal
Holdings, Inc., No. 18-452-WCB, 2019 WL 394058, *8–12 (D. Del. Aug. 21, 2019). Thus, the
first factor is met.
As to the second factor, this case is in its infancy. As of the date this motion was filed,
there has been no discovery, no response to a complaint, no scheduling order, and no trial date
set. Thus, there is no dispute that this second factor weighs in favor of a stay.
The third factor also weighs in favor of a stay. The “delay inherent to the [IPR] process
does not constitute, by itself, undue prejudice.” ClearPlay, 2021 WL 2515008, at *2. In fact, a
stay is favored “where the movant promptly moved for reexamination and has not used dilatory
tactics or demonstrated bad faith.” Polaris Indus. V. BRP US Inc., No. 12-01405 ADM/SER,
2012 WL 5331227, *2 (D. Minn. Oct. 29, 2012). Here, Aylo filed the Ogdon IPR Petitions
before Plaintiff DISH filed this lawsuit. Aylo filed the Leaning IPR petitions days after this

3

lawsuit was filed, and Aylo filed the ‘234 Patent IPR petitions the same day the ‘234 Patent was
issued, and Plaintiff DISH amended its complaint to add that patent.
Furthermore, Plaintiff DISH and Defendants are not competitors. Monetary relief will be
sufficient to compensate Plaintiff DISH for any damages it is able to prove, and a “stay will not
diminish the monetary damages to which [Plaintiff DISH] will be entitled to if it succeeds in the
infringement suit.” VirtualAgility Inc. v. Salesforce.com, 759 F.3d 1307, 1318 (Fed. Cir. 2014).
For these reasons, this third factor leans in favor of a stay.
CONCLUSION
For the foregoing reasons, this court GRANTS Defendants’ Expedited Motion to Stay
Pending Inter Partes Review, and this case is stayed pending the conclusion of all the IPRs
pending against Plaintiffs’ asserted claims.
DATED this 28th day of August 2024.
BY THE COURT:

DALE A. KIMBALL
United States District Judge

4