Today, our Intellectual Property group issued a client alert entitled, A New Wrinkle in the Defense of Patent Exhaustion, covering the patent infringement case, Helferich Patent Licensing LLC v. The New York Times Company, et al., in which the court granted Summary Judgment in favor of the defendants. Helferich Patent Licensing, LLC (“HPL”), the exclusive licensee of a portfolio of patents directed to sending alerts to mobile devices, sued several parties in the Northern District of Illinois to whom it had previously licensed its patents.

Effects on the Market: As stated in the client alert, HPL licensed its patents to hundreds of parties, including all players in the mobile device manufacturing industry. HPL will likely appeal the decision and could ultimately have it overturned and have the case sent back to the District Court. However, the decision clearly diminishes HPL’s position. Should HPL lose on appeal, many licensees of the HPL patents would be entitled to stop paying royalties. All HPL licensees should consult counsel to ascertain how this case affects the specific facts of their license. Also, those in the midst of negotiations with HPL should consult counsel and discuss whether to delay further negotiations until any appeals are resolved.