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Helferich Patent Licensing, LLC, An Illinois Limited Liability Co.

United States Court of Appeals, Federal Circuit

February 10, 2015

HELFERICH PATENT LICENSING, LLC, an Illinois limited liability company, Plaintiff-Appellant
v.
THE NEW YORK TIMES COMPANY, a New York Corporation, Defendant-Appellee, J.C. PENNEY CORPORATION, INC., Defendant, G4 MEDIA, LLC, THE BON-TON STORES, INC., BRAVO MEDIA LLC, CBS CORPORATION, Third Party Defendants; HELFERICH PATENT LICENSING, LLC, Plaintiff-Appellant
v.
G4 MEDIA, LLC, Defendant-Appellee; HELFERICH PATENT LICENSING, LLC, Plaintiff-Appellant
v.
CBS CORPORATION, Defendant-Appellee; HELFERICH PATENT LICENSING, LLC, Plaintiff-Appellant
v.
BRAVO MEDIA, LLC, Defendant-Appellee; HELFERICH PATENT LICENSING, LLC, Plaintiff-Appellant
v.
J.C.PENNY CORPORATION, INC., Defendant-Appellee;

Page 1294

Appeals from the United States District Court for the Northern District of Illinois in Nos. 1:10-cv-04387, 1:11-cv-07395, 1:11-cv-07607, 1:11-cv-07647, 1:11-cv-09143, Judge John W. Darrah.

AARON M. PANNER, Kellogg, Huber, Hansen, Todd, Evans & Figel, PLLC, Washington, DC, argued for plaintiff-appellant Helferich Patent Licensing, LLC. Also represented by MICHAEL E. JOFFR, BRENDAN J. CRIMMINS; VICTORIA GRUVER CURTIN, Victoria Gruver Curtin, PLC, Scottsdale, AZ; STEVEN G. LISA, Law offices of Steven G. Lisa, Scottsdale, AZ, JON E. KAPPES; GERALD D. HOSIER, Law Offices of Gerald D. Hosier, Ltd., Aspen, CO.

AARON M. PANNER, Kellogg, Huber, Hansen, Todd, Evans & Figel, PLLC, Washington, DC, argued for plaintiff-appellant Helferich Patent Licensing, LLC. Also represented by MICHAEL E. JOFFR, BRENDAN J. CRIMMINS; VICTORIA GRUVER CURTIN, Victoria Gruver Curtin, PLC, Scottsdale, AZ; STEVEN G. LISA, Law offices of Steven G. Lisa, Scottsdale, AZ, JON E. KAPPES; GERALD D. HOSIER, Law Offices of Gerald D. Hosier, Ltd., Aspen, CO.

DARYL JOSEFFER, King & Spalding LLP, of Washington, DC, argued for defendant-appellee J.C. Penney Corporation, Inc. Also represented by ADAM CONRAD, Charlotte, NC; R. DAVID DONOGHUE, Holland & Knight, LLP, Chicago, IL, ANTHONY J. FUGA; BENJAMIN M. STERN, Holland & Knight, LLP, Boston, MA.

EDWARD R. REINES, Weil, Gotshal & Manges LLP, Redwood Shores, CA for third party defendants G4 Media, LLC, Bravo Media LLC, CBS Coporation. Also represented by BYRON BEEBE.

Before TARANTO, BRYSON, and CHEN, Circuit Judges.

OPINION

Page 1295

[113 U.S.P.Q.2d 1706] Taranto, Circuit Judge.

Helferich Patent Licensing, LLC, brought this action against defendants New York Times Co., G4 Media LLC, CBS Corporation, Bravo Media LLC, and J.C. Penney Corporation, Inc., alleging infringement of various claims of seven patents--U.S. Patent Nos. 7,280,838; 7,499,716; 7,835,757; 8,107,601; 8,116,741; 8,134,450; and 7,155,241. The asserted claims, generally speaking, address systems and methods for handling information [113 U.S.P.Q.2d 1707] and providing it to wireless devices, such as mobile-phone handsets. Other claims in two of these (and other) Helferich patents, claims not asserted here, address handsets and methods of using them.

The United States District Court for the Northern District of Illinois granted summary judgment of non-infringement under the doctrine of patent exhaustion. Helferich Patent Licensing, LLC v. New York Times Co., 965 F.Supp.2d 971 (N.D.Ill. 2013). It held that, by granting handset manufacturers patent licenses conferring broad authority to sell the handsets, Helferich had exhausted its ability to enforce its patents not only against acquirers of the handsets but also against the defendant content providers who use presumptively distinct inventions to manage content and deliver it to handset users. We reverse, concluding that patent exhaustion has not reached that far and should not be newly extended to do so in these cases.

Background

Helferich owns more than thirty United States patents that cover a range of distinct, though related, wireless-communication technologies. All of the patents that are relevant here derive from a common specification. One subset of Helferich's claims consists of apparatus and method claims directed, generally speaking, to mobile wireless-communication devices (handsets) and receiving and/or requesting certain content. It is useful to call those claims " handset claims." Another subset of Helferich's claims consists of claims directed, generally speaking, to systems and methods for storing and updating information of various types (content) and sending it to handsets: for example, a mobile-device news service might send a subscriber a message containing the headline of a news article along with website-location information that permits the subscriber, upon choosing to click a hyperlink, to gain access to the complete article. It is useful to call those claims " content claims," reflecting the fact that it is content providers, not possessors of handsets, that practice them.

Only content claims are asserted here. Two of the patents at issue (the '838 and the '716) contain both handset claims and content claims. The other five patents contain only content claims.

We must assume that all claims at issue are valid. The Patent and Trademark Office issued all of the asserted claims--some of them added or amended or confirmed on reexamination (initiated by defendant New York Times, J.A. 616)--thereby raising a presumption of validity. 35 U.S.C. § 282; Microsoft Corp. v. i4i Ltd. P'ship, 131 S.Ct. 2238, 2252, 180 L.Ed.2d 131 (2011). Moreover, the PTO required none of the patents containing the asserted content claims to be issued with terminal disclaimers (under 35 U.S.C. § 253

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and 37 C.F.R. § 1.321) in light of other patents; thus, it did not conclude that awarding distinct patents would constitute double patenting. See In re Hubbell, 709 F.3d 1140, 1145-46 (Fed. Cir. 2013). Specifically, we must assume that all of the asserted content claims are " 'patentably distinct from the claims of'" other patents containing handset claims, because neither the PTO nor the district court has determined--and we are not asked to determine--that the asserted content claims are " 'obvious over, or anticipated by,'" such handset claims. Id. at 1145; see generally PTO, Manual of Patent Examining Procedure § 804 (elaborating on double-patenting doctrine). In fact, during prosecution, the PTO, exercising its discretionary authority under 35 U.S.C. § 121, identified a number of separate inventions and demanded that they not be combined in a single application, leading to multiple " divisional" applications that eventually issued as separate patents.

Claim 1 of the '450 patent is an example of a content claim, one particularly directed to sending content to handsets from remote servers:

1. A method of providing content to a cell phone comprising:
a content provider causing the content to be stored in an internet accessible storage unit;
the content provider initiating a page to a content subscriber, the page including a notification that: (i) identifies the content, and (ii) includes an address of a system to be contacted to trigger retrieval of the content, but does not include the content;
wherein the page indicates that the content is available for a specified time; and
the content provider causing the content identified by the notification to become inaccessible at the internet accessible [113 U.S.P.Q.2d 1708] storage unit after the specified time identified by the initiated page.

'450 Patent, col. 19, lines 22-35; J.A. 295 (certificate of correction).

Claim 7 of the '838 patent is an example of a handset claim:

7. A method of operating a wireless communication device in a communication system that includes a plurality of information storage systems, and a mobile radiotelephone network comprising: receiving a notification message from the mobile radiotelephone network, the notification message including (a) a system identifier identifying a particular one of the plurality of information storage systems and (b) a message identifier identifying information that is stored in at least one of the plurality of information storage systems and which information is intended for a user of the wireless communication device;
alerting the user that the notification message has been received;
receiving input from the user specifying an action to delete, forward, or reply to be performed on the information corresponding to the notification message; and
transmitting via a mobile radiotelephone network, to the information storage system identified by the system identifier, an action identifier corresponding to the action specified by the user;
alerting the user that the action specified by the user has been completed.

'838 patent, col. 1, lines 28-51 (reexam. cert.). Helferich licensed its portfolio to what, at least at one time, constituted most--we may assume all--of the manufacturers of mobile handsets for sale in the United States. It is undisputed that, under the doctrine of patent exhaustion, those licenses eliminate for the owners/possessors of handsets acquired from the licensed manufacturers--" authorized acquirers" --any legal

Page 1297

restriction the patents would otherwise impose on them through the patent statute, 35 U.S.C. § § 154, 271, regarding their sale or use of their handsets.[1]

The licenses themselves generally reflect painstaking efforts to distinguish the conduct of handset makers and possessors from the conduct of others, such as content providers, and to distinguish claims practiced by the former from claims practiced by the latter. (The parties have not clearly identified and explained any differences among the licenses that would alter the analysis here.) The licenses generally indicate that the Helferich portfolio contains many claims that would not be infringed by a handset manufacturer because those claims " expressly recite material additional operations that are carried out (or material additional structure that is added) by Third Parties, including . . . Content Provider[s] . . . and/or are not substantially embodied in the products, services, or methods within the scope of the Licensed Fields," J.A. 2102 (emphasis removed)--such Licensed Fields being defined as " Mobile Wireless Communications Devices" made, used, etc., by the manufacturer licensee, J.A. 2100. The licenses generally disclaim any grant of rights to such content providers and reserve Helferich's enforcement rights against them. J.A. 2102-03. In light of those provisions, the content providers in these cases rely for protection only on the legal doctrine of patent exhaustion, not on a claim of a factually " implied license" to be found in the licenses Helferich granted to manufacturers. See Helferich, 965 F.Supp.2d at 979 (" The right of Defendants and other third parties here to practice [Helferich's] patents is based [on] exhaustion, not on an implied license . . . ." ).

Between July 2010 and March 2012, Helferich filed complaints against the defendants individually for directly infringing a number of Helferich's content claims. Helferich alleged that all defendants infringe content claims of the '838, '716, '757, '601, '741, and '450 patents and that Bravo and CBS also infringe the '241 patent.[2] Although Helferich alleged indirect infringement in the alternative, [113 U.S.P.Q.2d 1709] it is undisputed--as Helferich asserted in this court without contradiction by defendants, see Helferich Opening Br. at 23, 33--that the cases before us involve no allegation by Helferich of indirect infringement based on handset acquirers' direct infringement.

The allegations of infringement focus on defendants' conduct in storing content and delivering it to customers via mobile-device applications, text-messaging subscription services, and third-party networking programs like Facebook and Twitter. For example, Helferich contends that Bravo infringes when it (a) sends a multimedia message service (MMS) text message to a handset user that includes a brief description of video content and a plain-text uniform resource locator (URL) for the video stored on a remote server and (b) delivers that content to the ...


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