DISH Technologies v AYLO PREMIUM (CFI, 6 June 2025)

Dhenne Avocats · 10 October 2026

Our analysis

Summary

In a decision of 6 June 2025 (UPC_CFI_471/2023), the Mannheim Local Division dismissed the infringement action brought by DISH Technologies and Sling TV on EP 2 479 680 (adaptive bit rate video streaming) against six companies operating or servicing streaming websites, and partially revoked the now expired patent, maintaining it as per auxiliary request 12. The decision matters for three reasons: its headnotes set out a condition common to all national doctrines of equivalence (the substitute must perform substantially the same function to achieve substantially the same effect), it refuses to treat content delivery network (CDN) servers as the servers required by the claim, and it accepts seventeen auxiliary requests as reasonable in view of the number of attacks.

Facts and procedure

The patent having expired during the proceedings, the claimants pursued only information, rendering of accounts and a declaration of liability for damages in nine States (paragraphs 1, 2 and 15). The defendants filed identical counterclaims for revocation. The proprietor filed seventeen auxiliary requests (paragraphs 19 and 20). International jurisdiction had been confirmed by the Court of Appeal on 3 September 2024 for three defendants, and the same reasoning applied to the other three (paragraphs 42 and 43).

The applicable law

The Division relied on Article 69 EPC and its Protocol for the extent of protection, Article 65(2) UPCA and Article 138(1) EPC for revocation, and Rule 30.1(c) RoP for the number of auxiliary requests.

Question

Does the streaming method of the targeted websites use claim 1, literally or by equivalence, and must the patent be revoked although it has expired?

Decision

The parallel action in Germany on a patent of the same family is not abusive, since the UPCA contains no rule comparable to section 145 of the German Patent Act (paragraph 44). The request for a declaration of infringement made at the hearing, after expiry, is inadmissible: a declaration is a remedy distinct from an injunction, and no interest was shown (paragraphs 53 to 55). On the merits, the claim requires prepared files permanently held on at least one server and copies encoded at a constant bit rate. CDN caches, which store only temporarily, do not meet the first requirement, and the copies at issue are encoded at variable bit rates (paragraphs 70 to 89 and 155 to 162). The Rule 191 information requests against Cloudflare, Edgio and Reflected Networks were therefore refused as irrelevant (paragraph 159). On equivalence, the Division observed that national law may govern some acts and the UPCA others, but left the point open, since none of the substitutes performs substantially the same function to achieve the same effect (paragraphs 164 to 171). On the counterclaim, admissible despite expiry (paragraph 61), the patent as granted is novel, inventive and sufficiently disclosed but extends beyond the parent application. Auxiliary requests 1 to 11 do not cure this, whereas request 12, adding a threshold comparison, is allowed (paragraphs 101 to 152). Partial revocation was pronounced with retroactive effect notwithstanding expiry (paragraph 154). The claimants bear the court fees of the infringement action and the defendants those of the counterclaim, each side bearing its other costs. The value in dispute was set at EUR 20 million, EUR 10 million for each action (paragraphs 174 and 175).

Key points for practice

• A counterclaim directed solely at dependent claims normally lacks legal interest, since such claims do not extend the subject matter of the patent (paragraph 150).
• The holder of an expired patent cannot add, at the hearing, a request for a declaration of infringement to make up for the lost injunction (paragraphs 53 and 54).
• The appropriate number of auxiliary requests depends on the objections actually addressed: seventeen requests, many combining a few basic amendments, remained acceptable against six added-matter objections (paragraph 140).
• Practical point: a proprietor targeting online services must show where and how the files are durably stored, CDN cache servers are not enough.

Provisions applied

Agreement on a Unified Patent Court

Arts 24(1)(e), 33(1)(a), 47, 59, 63, 64, 65(2), 69(1) and 83

Rules of Procedure

Rules 30.1(c), 118.5, 190, 191, 262A, 263 and 333

European Patent Convention

Arts 54, 56, 69 and 138(1)

Regulation (EU) No 1215/2012

Arts 7(2) and 71b(1)

Case law cited

AYLO FREESITES v DISH, Court of Appeal, 3 September 2024, UPC_CoA_188/2024, Court of Appeal, 25 September 2024, UPC_CoA_182/2024, Abbott v Sibio, Court of Appeal, 14 February 2025, UPC_CoA_382/2024, The Hague Local Division, 22 November 2024, UPC_CFI_239/2023, Brussels Local Division, decision on the merits, 17 January 2025, Mannheim Local Division, 11 March 2025, UPC_CFI_159/2024 and UPC_CFI_162/2024.

Prepared by Dhenne Avocats from the official decision, consulted on 10 October 2026. The database is updated every week, on Friday. Only the official text is authoritative.