IP Law Daily, PATENT—D. Utah: Czech pornographic streaming service is subject to jurisdiction in U.S., but claims stayed pending IPR, (Feb 21, 2025)

By Kevin M. Finson, J.D.

An objection to personal jurisdiction over defendants located in the Czech Republic was denied because the defendants had submitted to the jurisdiction of the court by litigating prior motions in the case.

An operator of pornographic streaming websites outside the United States was not entitled to dismissal of patent claims asserted against it on personal jurisdiction grounds, the U.S. District Court in Salt Lake City has held. The website operator had already litigated other motions in the case and failed to raise the personal jurisdiction issue at the first opportunity. The suit, however, was stayed pending the outcome of inter partes review of the asserted patents instituted by the Patent Trial and Appeal Board (Dish Technologies L.L.C. v. WebGroup Czech Republic, A.S., No. 2:23-cv-00553-RJS-JCB (D. Utah. Feb. 20, 2025)).

DISH Technologies, LLC and Sling TV, LLC (collectively, DISH) were the owner and exclusive licensee, respectively, of U.S. Patents Nos. 10,469,554 (the ’554) patent; 11,677,798 (the ’798 patent); 9,407,564 (the ’564 patent); 10,951,680 (the ’680 patent); 8,868,772 (the ’772 patent); and 11,470,138 (the ’138 patent), all of which were directed to adaptive bitrate streaming technology, meaning a technology that allowed video streaming to adapt to the amount of bandwidth available at any particular time. WebGroup Czech Republic, A.S. and NKL Associates, S.R.O. (collectively, WebGroup) were Czech companies which operated pornographic streaming service websites including https://www.xvideos.com and https://www.xnxx.com. DISH brought suit against WebGroup alleging infringement of all six patents. WebGroup moved to dismiss, arguing that the court lacked personal jurisdiction over it because WebGroup had no operations in the United States and that the complaint failed to state a claim for direct infringement.

Personal jurisdiction. The court found that WebGroup had waived its objections to personal jurisdiction by not presenting them that the first opportunity. WebGroup had previously filed a pre-answer motion seeking transfer to the District of Delaware and had also filed a motion to stay the case pending resolution of inter partes review proceedings which had begun before the Patent Trial and Appeal Board (PTAB). The court held that by litigating these motions without making mention of the personal jurisdiction issue WebGroup had submitted to the jurisdiction of the court.

Failure to state a claim. WebGroup argued that it could not be liable for direct infringement because each asserted claim required elements to be performed by another party and because several steps of the asserted claims were performed only outside of the United States. WebGroup presented a declaration of its Director as well as documentary evidence directed to those issues. The court found that, because the motion required consideration of facts outside the pleadings, it would have to be converted to a motion for summary judgment. The court declined to do so at this stage of the proceeding, noting that, among other issues, proper resolution of the arguments would rely on claim construction, which had not happened yet.

The court denied the motion to dismiss and subsequently granted WebGroup’s unopposed motion to stay the case pending resolution of the inter partes review proceeding before the PTAB.

The Case is No. 2:23-cv-00553-RJS-JCB.

Judge: Shelby, R.

Attorneys: Ali Nooruddin Dhanani (Baker Botts LLP) for Dish Technologies LLC. Jacob L. Fonnesbeck (SF Firm LP) for WebGroup Czech Republic A.S.

Companies: Dish Technologies LLC; WebGroup Czech Republic A.S

Cases: Patent UtahNews