MG Freesites Ltd v. DISH Technologies L.L.C.

CourtDistrict Court, N.D. California
DecidedJanuary 24, 2024
Docket3:23-cv-03674
StatusUnknown

This text of MG Freesites Ltd v. DISH Technologies L.L.C. (MG Freesites Ltd v. DISH Technologies L.L.C.) is published on Counsel Stack Legal Research, covering District Court, N.D. California primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
MG Freesites Ltd v. DISH Technologies L.L.C., (N.D. Cal. 2024).

Opinion

1 2 UNITED STATES DISTRICT COURT 3 NORTHERN DISTRICT OF CALIFORNIA 4 5 MG FREESITES LTD, Case No. 23-cv-03674-EMC

6 Plaintiffs, ORDER GRANTING DEFENDANTS’ MOTION TO DISMISS FIRST 7 v. AMENDED COMPLAINT FOR LACK OF PERSONAL JURISDICTION AND 8 DISH TECHNOLOGIES L.L.C., et al., DENYING PLAINTIFFS’ MOTION TO ENJOIN DEFENDANTS FROM 9 Defendants. PURSUING LATER-FILED ACTION AND MOTION TO AMEND CASE 10 CAPTION

11 Docket Nos. 32, 33, 36 12

13 14 I. INTRODUCTION 15 On July 25, 2023, Plaintiff Aylo Freesites Ltd (f/k/a“MG Freesites Ltd”) filed a complaint 16 seeking a declaratory judgment that its website, Pornhub.com, does not infringe on three patents 17 exclusively owned by Defendant DISH Technologies L.L.C. (“DISH”) and exclusively licensed to 18 Defendant Sling TV L.L.C. (“Sling”). Docket No. 1. On August 22, 2023, in the District of Utah, 19 Defendants filed an action against Aylo Premium Ltd (f/k/a/ “MG Premium Ltd”), Aylo Billing 20 Ltd (f/k/a “MG Billing Ltd”), Sonesta Technologies and Yellow production, alleging infringement 21 of six patents, one of which overlaps with the original complaint here. DISH Tech., L.L.C. v. MG 22 Premium Ltd, et al., 2:23-cv-00552 (D. Utah) (“Utah Action”). On September 6, 2023, Plaintiff 23 Aylo Freesites Ltd amended the complaint pending before this Court, adding Plaintiffs Aylo 24 Billing Ltd and Aylo Premium Ltd, the five additional patents in Defendants’ Utah Action, and the 25 additional websites in Defendants’ Utah Action. Docket No. 29 (“FAC”). 26 Now pending before this Court are: (1) Defendants’ motion to dismiss the amended 27 complaint for lack of personal jurisdiction under Federal Rule of Civil Procedure 12(b)(2), or 1 Mot.”); (2) Plaintiffs’ motion to enjoin Defendants from pursuing the later-filed action, the Utah 2 Action, Docket No. 36 (“Pl’s Mot. to Enjoin); and (3) Plaintiffs Motion to Amend the Case 3 Caption, Docket No. 32 (“Pl’s Mot. to Amend). Because this Court lacks personal jurisdiction 4 over Defendants, the Court GRANTS Defendants’ motion to dismiss. Plaintiffs’ motions to 5 enjoin and amend the case caption are DENIED AS MOOT. 6 II. FACTUAL & PROCEDURAL BACKGROUND 7 A. Factual Background 8 Aylo Freesites Ltd and Aylo Premium Ltd are private limited companies organized and 9 existing in the Republic of Cyprus. FAC ¶¶ 7, 9. Aylo Billing Ltd is a private limited company 10 organized and existing in Ireland. Id. ¶ 10. Collectively, the “Aylo Entities” (Aylo Freesites Ltd, 11 Aylo Premium Ltd, and Aylo Billing Ltd) operate a number of adult streaming service websites 12 (the “Accused Websites”).1 Id. at 1, ¶¶ 2-3. Defendants DISH and Sling are both incorporated 13 and have principal places of business in Englewood, Colorado. FAC ¶¶ 15, 17. DISH is the sole 14 owner of all rights, title, and interest in the Patents-In-Suit and Sling is the exclusive licensee of, 15 and has substantial rights in, the Patents-In-Suit.2 Id. 16 Earlier this year, DISH Network’s counsel, who is based in New York, sent two email 17 communications to “MindGeek Montreal”. Id. ¶¶ 3-4. MindGeek refers to MG Freesites Ltd 18 n/k/a Aylo Freesites Ltd. FAC ¶ 66. The emails asserted that Mind Geek websites which 19 practices HTTP Live Streaming (“HLS”) infringed several of DISH’s “adjustable bit rate” 20 streaming patents. Id. ¶¶ 3-4, 6, 62-66; Docket Nos. 29-9, 29-19; D’s Mot. at 4. The claim charts 21

22 1 Pornhub.com, pornhubpremium.com, redtube.com, redtubepremium.com, youporn.com, youporngay.com, youpornpremium.com, tube8.com, gaytube.com, brazzers.com, 23 digitalplayground.com, men.com, babes.com, seancody.com, transangels.com, realitykings.com, mofos.com, twistys.com, whynotbi.com, fakehub.com, faketaxi.com, lesbea.com, danejones.com, 24 sexyhub.com, iknowthatgirl.com, milehighmedia.com, bangbros.com.

25 2 Claim 10 of United States Patent No. 10,469,555 (the “’555 Patent”); Claim 1 of United States Patent No. 10,757,156 (the “’156 Patent”); Claim 14 of United States Patent No. 11,470,138 (the 26 “’138 Patent”); Claim 16 of United States Patent No. 10,469,554 (the “’554 Patent”); Claim 1 of United States Patent No. 11,677,798 (the “’798 Patent”); Claim 8 of United States Patent No. 27 9,407,564 (the “’564 Patent”); Claim 22 of United States Patent No. 10,951,680 (the “’680 1 attached to those communications purported to show that streaming services and products used on 2 Pornhub.com infringed at least the ‘555 Patent, the ’156 Patent, and the ‘138 Patent. Id.; Docket 3 Nos. 29-10, 29-11, 29-12. The parties scheduled a call on July 26, 2023, to discuss these claim 4 charts. Id. ¶ 75. Before the scheduled call, on July 25, 2023, Plaintiff Aylo Freesites Ltd (then 5 MG Freesites) filed this original complaint seeking a declaratory judgment that its website 6 Pornhub.com does not infringe those three patents. Docket No. 1 ¶ 2. 7 Approximately one month later, on August 22, 2023, Defendants filed a lawsuit in the 8 District of Utah against Aylo Premium Ltd, Aylo Billing Ltd, MG Billing Ireland Ltd3, Sonesta 9 Technologies, Sonesta Media, and Yellow Production. Utah Action. The Utah Action alleged 18 10 adult websites (but not Pornhub.com) operated by Aylo Premium Ltd and Aylo Billing Ltd 11 infringed the same ‘138 Patent at issue in this original complaint, as well as five additional 12 patents: the ‘772 Patent, the ‘564 Patent, the ‘554 Patent, the ‘680 Patent, and the ‘798 Patent. 13 Utah Action ¶¶ 4-5, 16-21, 50-212. Approximately two weeks later, on September 6, 2023, 14 Plaintiff Aylo Freesites Ltd amended this complaint to add Plaintiffs Aylo Premium Ltd and Aylo 15 Billing Ltd, 26 websites, including the 18 websites accused in the Utah Action, and the five 16 additional patents at issue in the Utah Action. Compare Docket No. 1 ¶ 2, with FAC ¶ 2, and Utah 17 Action ¶¶ 4, 16-21. After Plaintiffs’ amendment, both this action and the Utah Action involve all 18 three Aylo Entities, Defendants DISH and Sling, 19 of the same adult websites, and six of the 19 same Patents-In-Suit. Compare FAC, with Utah Action. 20 Plaintiffs allege Defendants previously sued another entity, Jadoo TV Inc. (“Jadoo”) in this 21 district asserting the ‘564 Patent (one of the Patents-In-Suit) among other patents. Id. ¶ 23. 22 Plaintiffs allege that action went on for nearly three years and the parties ultimately entered into a 23 final consent judgment and stipulated injunction, though no exclusive licensing agreement was 24 entered into. Id. ¶ 32. Further, Defendants retained a Northern California-based attorney for the 25 present litigation. Id. ¶ 39. This same attorney served as lead counsel for Defendants in five other 26 litigations (in Texas and Delaware) asserting the Patents-In-Suit or related patents against other 27 1 entities. Id. ¶ 40. Plaintiffs also allege that Defendants advertise their satellite TV packages to 2 consumers in this district. Id. ¶¶ 42, 47. Further, that Defendants have engaged with at least 3 twelve authorized retailers within 100 miles of this courthouse to sell and offer to sell their 4 products. Id. ¶ 45; Docket No. 29-18. 5 B. Procedural Background 6 Pending before the Court is Defendants’ motion to dismiss the First Amended Complaint 7 for lack of personal jurisdiction under Federal Rule of Civil Procedure 12(b)(2), or alternatively, to 8 transfer under 28 U.S.C. § 1404(a). D’s Mot. Also pending is Plaintiffs’ motion to enjoin 9 Defendants from pursuing the action Defendants initiated in the District of Utah. P’s Mot.

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MG Freesites Ltd v. DISH Technologies L.L.C., Counsel Stack Legal Research, https://law.counselstack.com/opinion/mg-freesites-ltd-v-dish-technologies-llc-cand-2024.