The Patent Trial and Appeal Board (PTAB) Denies Aylo Freesites Petition, Citing General Plastics Factors

As reported by Jones Day’s patent blog, the Patent Trial and Appeal Board (PTAB) has denied a second inter partes review (IPR) petition filed by the plaintiff in Aylo Freesites against DISH Technologies’ U.S. Patent No. 11,677,798.

The PTAB had previously instituted IPR based on Aylo’s first petition but found that the second petition failed to justify its staggered filing.

Aylo initially filed an IPR petition in October 2023, challenging claims of the ’798 patent, which covers adaptive-rate shifting for streaming content. More than three months later, Aylo filed a second petition, arguing that new prior art had been uncovered, necessitating additional challenges.

Applying the General Plastic factors (whether the petitioner knew or should have known of the prior art at the time of the first petition), the Board determined that the second petition’s claims significantly overlapped the first, and Aylo should have known of the primary reference cited in its second petition.

Aylo contended that its initial petition was filed hastily due to ongoing litigation pressures and that subsequent changes in DISH’s claims warranted additional challenges.

The Patent Trial and Appeal Board concluded that Aylo’s decision to file its first petition without completing a thorough prior art search was a tactical choice rather than a justified necessity.

The Board found that Aylo reasonably could have anticipated shifts in DISH’s asserted claims and should have identified the prior art reference. Given these findings, the PTAB determined that the General Plastic factors weighed against a second review. It emphasized that petitioners must conduct comprehensive prior art searches and consolidate all reasonable challenges into an initial IPR petition. 

Jones Day suggests that IP litigants should be aware that the PTAB is unlikely to allow a second IPR petition to cite prior art references on the same patent that a reasonably diligent prior art search would have revealed prior to filing the initial petition.

Practitioners should challenge potentially relevant claims in an initial IPR petition rather than limiting their petition to claims that are actively asserted in parallel litigation.