In HELFERICH PATENT LICENSING, LLC v. THE NEW YORK TIMES CO., the Federal Circuit declined to expand the doctrine of patent exhaustion such that a license to an entity practicing a first set of patent claims exhausts the patentee’s rights to enforce a second set of distinct, though related, patent claims against a different entity.

Helferich sued several media providers for infringing patents related to wireless devices.  The district court granted summary judgment of noninfringement based on patent exhaustion and held that, by granting handset manufacturers patent licenses to sell the handsets, Helferich had exhausted its ability to enforce its patents against the media providers interacting with the already-licensed handsets.  Helferich appealed.

The Federal Circuit reversed.  The handset-manufacturer licenses distinguished claims that would be infringed by handset manufacturers from claims that would be infringed by media providers and disclaimed any grant of rights to such media providers.  Therefore, the media providers could rely only on the legal doctrine of patent exhaustion, and not on a factually implied license.  The Federal Circuit explained that patent exhaustion applies when an authorized acquirer uses the claimed invention.  The doctrine does not apply where, as here, the alleged infringement involves distinct, though related, patented inventions.