The New York Times recently won a significant patent victory in a case involving those text messages you receive on your cell phone with product updates and breaking news. A federal district judge in Chicago found that Helferich Patent Licensing LLC (HPL), the company that holds the patent for the technology, could not extract royalties from both cell phone makers and content providers.

The Facts of the Case

HPL holds a portfolio of patents that includes the methods and systems that send and receive hyperlinks to websites to a cellular phone. The user can then click on the link to view the full content on the sender’s website. HPL licenses the technology to cell phone manufacturers and content providers.

HPL filed a patent infringement lawsuit against defendants New York Times, CBS, G4 Media LLC, NBC’s Bravo Media LLC unit and JC Penny after the companies refused to enter licensing agreements. In their defense, the companies argue that the patents at issue are exhausted based on the existing agreements with cell phone manufacturers.

The Court’s Decision

U.S. District Judge John Darrah agreed, dismissing the case on summary judgment. He rejected HPL’s argument that the doctrine of patent exhaustion was inapplicable because the inventions include distinct “handset” and “content” claims.

“The doctrine of patent exhaustion is designed to avoid double recovery by a patentee, promote the orderly administration of patent rights, provide an efficient method for determining the termination of a patent monopoly, and promote fair competition,” Darrah explained. “To permit Helferich to recover multiple times on the same patent by selling licenses to the patents piece by piece (or claim by claim) is contradictory to these policies.”

How Can I Help?

To learn more about the doctrine of patent exhaustion and how it may impact your licensing agreements,, please contact me for a free 30 minute consultation at nvantreeck@usip.com or call TOLL FREE at 1-855-UR IDEAS (1-855-874-3327) and ask for Norman.

– Ex astris, scientia –

I am and avid amateur astronomer and intellectual property attorney in Pasadena, California and I am a Rising Star as rated by Super Lawyers Magazine.  As a former Chief Petty Officer in the U.S. Navy, I am a proud member of the Armed Service Committee of the Los Angeles County Bar Association working to aid all active duty and veterans in our communities. Connect with me on Google +

Norman