New York Times Wins Patent Lawsuit Over Double Dipping

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.”

At Sheldon Mak & Anderson, we recognize that innovation is your competitive edge – and it needs protection. Recognized as one of the country’s “Best Law Firms” by U.S. News and Best Lawyers, our attorneys possess more than two decades of experience. Our full-service IP firm provides local, regional, national, and international legal services in the following areas: patents, trademarks, copyrights, trade secrets, IP litigation, international patent and trademark prosecution, licensing, alternative dispute resolution, and green technology.


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