Patent Exhaustion DEFENSE must be SPECIFIC TO INFRINGING CLAIMS

In Helferich Patent Licensing, LLC v. New York Times, No. 2014-1196 (Fed. Cir. Feb. 10, 2015), the Federal Circuit held that the defense of patent exhaustion must be specific to particular claims alleged to be infringed.  In this case, Helferich sued New York Times and others for allegedly infringing claims on systems and methods on providing hyperlinked information to mobile phones. The district court granted summary judgment of non-infringement under the patent exhaustion doctrine holding that patentee's grant of broad licenses to handset manufacturers exhausted its enforcement rights not only against manufacturers but also against content providers. In reversing the district court's judgment, Judge Taranto wrote that the lower court did not focus on the particulars of the asserted claims, but instead relied on the premise that the patents "require the use of a handset device."  Rejecting the "reciprocal enhancement of utility" argument, the panel reasoned that patent exhaustion has never been applied to terminate enforcement rights with respect to activities or goods that are merely "complimentary."  Full text of the opinion is available here.