In a February 10, 2015 decision, the Federal Circuit reversed a grant of summary judgment of non-infringement under the doctrine of patent exhaustion. Plaintiff, Helferich Patent Licensing, LLC, filed a series of patent infringement lawsuits in the Northern District of Illinois against providers of content for mobile-phone handsets, including New York Times Co. Helferich alleged that the content providers had infringed claims directed to storing and updating content and sending it to mobile devices (the “content claims”). Helferich’s patents also included claims directed to mobile devices and receiving or requesting certain content (the “handset claims”), but none of those claims were asserted against the defendants. Because Helferich had previously licensed its portfolio to most, if not all, of the manufacturers of mobile phones sold in the United States, defendants argued that Helferich’s ability to assert its claims had been exhausted, not only against purchasers of the mobile handsets, but also against the content providers. The district court agreed and entered summary judgment of non-infringement.
The Federal Circuit reversed. The court characterized the situation as “involv[ing] a single inventor’s coming up with two inventions presumed to be separately patentable, one invention to be practiced by one group of users, the other invention by another group, where each invention tends to make the other more useful when thus separately practiced.” Noting that it is “commonplace” for the value of certain products to increase when multiple people possess the same product, the court’s decision indicated that this “reciprocal enhancement of utility” was not sufficient to trigger patent exhaustion. Important to the court’s decision was the fact that there was no allegation that the authorized purchasers of handsets were practicing the content claims. According to the court’s analysis of relevant precedent, in every case finding patent exhaustion, the patentee’s claim of direct or indirect infringement ultimately depended on an assertion that the authorized purchaser of the product was practicing the asserted claims.
Helferich Patent Licensing, LLC v. New York Times Co., 2014-1196-1200 (Fed. Cir. Feb. 10, 2015).