Helferich Patent Licensing, LLC v. New York Times Co.

The defense of patent exhaustion requires that the patented product be sold in a licensed product that sufficiently embodies the patent. The defense prevents the patentee from pursuing infringement claims against the users of that product.

Opinion (Darrah): Helferich Patent Licensing, LLC ("Helferich") sued the New York Times Co. ("The New York Times") and four other defendants alleging they infringed claims of several of its patents that cover systems and methods for sending and receiving hyperlinks on a cellular phone via Short Message Service or Multimedia Message Service. The patents are licensed by all cellular phone manufactures, however, some of those licenses exclude several of the patents' claims from the license. Those claims form the basis of Helferich's suit. The New York Times and the other defendants moved for summary judgment of non-infringement, arguing Helferich's patents were exhausted by the licenses granted to the phone manufactures. Patent exhaustion is an affirmative defense to allegations of patent infringement. The defense requires that the patented product be sold in a licensed product that sufficiently embodies the patent, and it prevents the patentee from pursuing infringement claims against users of that product. Helferich argued that because its patents cover both phone handsets and content, the licensing of claims covering handsets does not exhaust the claims that cover content. The district court disagreed, however, holding that the defense only requires the product to sufficiently embody a patent's claims, it does not require the product to embody them completely. Because the cellular phones were already capable of allowing users to practice the patented invention, they sufficiently embodied the patents and precluded Helferich from separating its patent claims and pursuing users for infringement. Accordingly, the district courtg GRANTED the New York Times and other defendants' motion for summary judgment of non-infringement.