Digest of Helferich Patent Licensing v. The New York Times Co., et al., Nos. 2014-1196, 2014-1197, 2014-1198, 2014-1199, 2014-1200 (Fed. Cir. Feb. 10, 2015) (precedential). On appeal from N.D. Ill. Before Taranto, Bryson, and Chen.

Procedural Posture: Plaintiff appealed from a summary judgment of non-infringement under the doctrine of patent exhaustion. CAFC reversed.

  • Patent Exhaustion: The patents-in-suit are directed to sending text messages with a link to a website, and a user can click on the link to retrieve content from the website. The patents include handset claims and content claims. Plaintiff Helferich has granted licenses to virtually all mobile handset manufacturers for the handset claims. The defendants in this case are content providers. The district court granted summary judgment and held that, by granting the handset manufacturers licenses to sell handsets, Helferich had exhausted its ability to enforce the patents against not only acquirers of the handsets but also against the content providers. The CAFC reversed, finding that patent exhaustion did not bar Helferich’s claims against content providers. Noting that the Helferich patents contained both handset and content claims, the CAFC characterized the situation as a single inventor having two separate inventions, each of which is (presumably) patentable in its own right. One of these inventions can be practiced by one group of users, and the other invention can be practiced by another group of users, and the practice of each invention makes the other more useful. The CAFC ruled that the patent exhaustion doctrine “has never been applied to terminate patent rights in such complementary activities or goods in these circumstances,” and refused to extend the doctrine in this case.