In Aylo Freesites Ltd v. Dish Technologies LLC, C.A. No. 24-086-GBW (D. Del.), the plaintiff had originally brought a declaratory judgment claim in N.D. Cal., which was dismissed for lack of personal jurisdiction.
The accused infringer then filed suit here in Delaware. That same day, the patentee filed a complaint in the District of Utah, where it had also previously sued some related entities. Both of the D. Utah cases are stayed pending IPR.
The patentee then moved to transfer the DJ complaint from D. Del. to the District of Utah.
Judge Williams granted the motion to transfer, finding that the plaintiff's forum preference was outweighed by the combination of the patentee's preference, the location of actions giving rise to the claim (the original invention, commercialization, and witnesses in Utah), and the convenience of the patentee's witnesses.
One interesting argument against transfer was that the accused product, a pornography website, is alleged to be inaccessible in the transferee district:
Private Factor 3: Actions Giving Rise to the Claim
[The patentee] argues that this factor favors transfer to Utah because (1) the Asserted Patents originated in Utah, (2) the inventors reside there, and (3) the company that commercialized and developed the Asserted Patents was a Utah company. . . . [The accused infringer] counters by focusing on the fact that its websites are "blocked in Utah and alleged infringing activity is not occurring in Utah." . . . In reply, [the patentee] alleges that an unquantified number of Utahans view [the accused] sites, and that the alleged infringement occurred prior to [the accused infringer's] decision to block access to their sites in Utah. . . . On balance, this factor weighs in favor of transfer.
Aylo Freesites Ltd v. Dish Technologies LLC, C.A. No. 24-086-GBW, at 14 (D. Del. Oct. 8, 2025).
It's not clear how much weight the Court gave that consideration under the "Actions Giving Rise to the Claim" factor, other than that it wasn't enough to outweigh the facts that the patents originated there and that the inventors and commercializing company reside there—which would have been a pretty high bar to pass.
The Court also noted this issue under Factor 1, the plaintiff's forum preference:
[The accused infringer's] briefing evinces a preference to avoid litigating in Utah due to [its] perception of Utah's "known anti-pornography stance" and practical difficulties associated with accessing [its] websites in light of certain Utah legislation. D.I. 9 at 2 (referencing another lawsuit brought by DISH against another adult-content provider), id. at 14 (citing a "biased jury pool"), id. at 19 (similar). On balance, this factor weighs against transfer.
Id. I get the sense that the inaccessibility issues did not get a lot of play with the Court. That's not surprising, given that, as the Court noted, the plaintiff made the decision not to provide its service in Utah. Id.
This is not mentioned in the opinion, but it looks like Utah passed an age verification law, and the accused infringer made the decision to make its website inaccessible there rather than comply with it.
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