(Adds comment from New York Times, no comment from CBS)
By Diane Bartz
WASHINGTON Feb 10 The New York Times Co
, J.C. Penney Corp and CBS Corp lost a round on
Tuesday in a patent fight with Helferich Patent Licensing LLC,
which had accused them of infringing on patents for looking at
websites on mobile telephones.
The U.S. Court of Appeals for the Federal Circuit overturned
a lower court decision which had said that because the mobile
phone makers had licensed the patents there was no need for
content providers to do so.
"We reverse, concluding that patent exhaustion has not
reached that far," the court, which specializes in patent
appeals, said in its decision.
Between mid-2010 and March 2012, Helferich filed complaints
against the New York Times, J.C. Penney Corp, G4 Media LLC, the
Bon-Ton Stores, and CBS. Helferich said the companies infringed
patents for handling content on smartphones.
The handset makers licensed the Helferich patents, so
smartphone users are not liable for infringement under the
theory of "patent exhaustion," which says that if a corporation
licenses a patent then the purchaser of the corporation's
product does not infringe on the patent-holder's rights.
In 2013, the U.S. District Court for the Northern District
of Illinois granted the New York Times and other content
providers victory in a summary judgment saying that they were
also covered by licenses to handset makers. Helferich appealed,
and the Federal Circuit overturned the summary judgment
That said, the court left the door open to a patent
exhaustion defense that is presented differently.
"We do not foreclose an exhaustion defense that is tied to
particular handset claims and targets particular content
claims," the court said in its decision, calling the defense
presented by the content companies a "broad-brush defense."
Brian Buroker of Gibson Dunn, who argued for the New York
Times, said that he was disappointed in the decision and that
they were considering an appeal.
Buroker also said that they had asked the U.S. Patent and
Trademark Office to re-examine portions of six of the seven
patents in the litigation. The USPTO tossed out many of the key
claims, which, if upheld, would mean that they are invalid, he
CBS declined comment. Representatives of Helferich, J.C.
Penney Corp, G4 Media LLC and Bon-Ton could not immediately be
reached for comment.
The case is Helferich Patent Licensing, LLC v. The New York
Times Company, J.C. Penney Corp, G4 Media LLC, the Bon-Ton
Stores and CBS Corp in the U.S. Court of Appeals for the Federal
Circuit, No. 2014-1196.
(Reporting by Diane Bartz; Editing by Grant McCool)