DCT

1:10-cv-04387

Helferich Patent Licensing LLC v. New York Times Co

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Key Events
Amended Complaint

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:10-cv-04387, N.D. Ill., 03/20/2012
  • Venue Allegations: Plaintiff alleges venue is proper because Defendant conducts substantial business in the district, including printing and distributing its newspaper, and directs infringing activities to residents by sending infringing messages into the district.
  • Core Dispute: Plaintiff alleges that Defendant’s mobile alert and content delivery services infringe six patents related to systems and methods for wirelessly delivering content to mobile devices.
  • Technical Context: The technology concerns methods for notifying a mobile device that content is available and allowing a user to retrieve that content on demand, a foundational process for modern digital media and news alerts.
  • Key Procedural History: The complaint details an extensive history of patent reexamination proceedings at the U.S. Patent and Trademark Office (PTO) initiated by the Defendant and a "NYT Defense Group." Plaintiff alleges that after three rounds of ex parte and inter partes reexamination requests, the PTO confirmed the patentability of hundreds of claims across the asserted patent families and denied multiple requests for reexamination outright. This history suggests that the validity of the asserted patents has been previously scrutinized by the PTO over art and arguments presented by the Defendant.

Case Timeline

Date Event
1997-09-19 Earliest Priority Date for ’838, ’716, ’757, ’741, and ’450 Patents
1999-03-29 Earliest Priority Date for ’601 Patent
2007-10-09 ’838 Patent Issued
2009-03-03 ’716 Patent Issued
2009-12-29 Plaintiff gives written notice to Defendant of infringement of ’838 and ’716 patents
2010-04-27 Plaintiff gives written notice to Defendant of infringement of ’757 claims
2010-11-16 ’757 Patent Issued
2011-02-25 Defendant files ex parte reexamination requests for ’757, ’716, ’838 patents
2011-09-06 "NYT Defense Group" files inter partes reexamination requests for same patents
2011-10-28 PTO denies inter partes reexamination request for ’838 patent
2011-11-04 PTO denies inter partes reexamination requests for ’757 and ’716 patents
2012-01-31 ’601 Patent Issued
2012-02-14 ’741 Patent Issued
2012-03-13 ’450 Patent Issued
2012-03-20 Complaint Filing Date

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 7,280,838 - "Paging Transceivers and Methods for Selectively Retrieving Messages"

The Invention Explained

  • Problem Addressed: The patent's background describes challenges in early paging systems, including limited device memory, conservation of network bandwidth ("air time"), and the inability to disable automatic reply transmissions in environments where they could be hazardous, such as on an airplane or near electronic detonators (Compl. ¶12; ’838 Patent, col. 1:41-col. 2:67).
  • The Patented Solution: The invention is a system where a paging transceiver receives a notification that a message is available—along with a short description—but does not automatically download the full message content. This decouples the alert from the content delivery, allowing the user to decide when and where to retrieve the full message, thereby conserving device memory and network resources while giving the user greater control (’838 Patent, Abstract; col. 3:4-15).
  • Technical Importance: This two-step "notify-then-pull" approach was a method to manage the technical constraints of early wireless data networks and resource-limited mobile devices (Compl. ¶12).

Key Claims at a Glance

  • The complaint asserts method claims 9, 10, 12, 13, 15, 16, 18, 19, and 20 (Compl. ¶33). Claim 9 is an independent method claim.
  • Claim 9 (Independent):
    • A method of operating a wireless communication device that includes an information identifier associated with information stored by a content provider.
    • The method comprises receiving a notification message from the content provider, the message including the information identifier but not the associated information.
    • The device alerts the user that the notification has been received.
    • The device receives input from the user specifying an action to be performed on the information (e.g., delete, forward, or reply).
    • The device transmits a request message to the content provider indicating the action to be performed.
  • The complaint also notes Defendant will infringe claims 97-101 and 105-110 upon issuance of a Reexamination Certificate (Compl. ¶33).

U.S. Patent No. 7,499,716 - "System and Method for Delivering Information to a Transmitting and Receiving Device"

The Invention Explained

  • Problem Addressed: This patent, part of the same family as the ’838 Patent, addresses the need for more sophisticated ways to manage and deliver content to mobile devices beyond simple notifications, particularly in an internet-connected context (’716 Patent, col. 1:20-25).
  • The Patented Solution: The patent describes a system where a content provider stores content and sends a notification to a mobile device. The notification includes an identifier (such as a URL) and may also specify a time that the content is available. The system can then receive a request from the device and deliver the corresponding content, which may be dynamic (i.e., changed since the notification was sent) (’716 Patent, Abstract; Compl. ¶12). A key visual in the patent, Figure 11, shows a data structure for the notification message, including fields for a "System ID," "Transceiver ID," "Message ID," and "Message Type" ('716 Patent, Fig. 11).
  • Technical Importance: The invention provides a framework for delivering time-sensitive and dynamic content (like news, promotions, or stock prices) to mobile users, a key feature of modern mobile internet services (Compl. ¶12).

Key Claims at a Glance

  • The complaint asserts claims 15, 17, 18, 21-27, 30, 32, 33, 36-41, 83, 85, 86, 89-94, 97, 99, 100, and 103-107 (Compl. ¶40). Claim 15 is an independent system claim.
  • Claim 15 (Independent):
    • A content communication system.
    • It comprises a memory configured to store content.
    • It also comprises a memory controller with a processor coupled to the memory.
    • The controller is configured to cause a data signal to be directed to a cell phone, where the signal includes a content identifier, the content's location, and its type.
    • The controller is configured to direct the content to the cell phone only upon receiving a request from the cell phone to do so.

U.S. Patent No. 7,835,757 - "System and Method for Delivering Information to a Transmitting and Receiving Device"

  • Technology Synopsis: This patent relates to systems where a content provider causes a notification to be sent to a mobile device, where the notification includes an identifier for content stored at a specific location. The content provider's system later receives a request from the mobile device that includes the identifier and, in response, causes the content to be delivered (Compl. ¶12, 47-48).
  • Asserted Claims: Claims 1-13 and 15-20, among others (Compl. ¶47). Claim 1 is independent.
  • Accused Features: The Defendant's "Mobile Alert Services" and other messaging platforms that send notifications with links (URLs) to user devices are accused of infringing (Compl. ¶13, 48).

U.S. Patent No. 8,107,601 - "Wireless Messaging System"

  • Technology Synopsis: This patent describes methods for delivering content where a notification is sent to a mobile device indicating that content is available at a remote location. The device user can then initiate a request to retrieve the content, which may involve dynamic information such as changing prices or promotions (Compl. ¶12, 54-55).
  • Asserted Claims: Claims 1, 3, 4, 9-11, 16, and 17 (Compl. ¶54). Claim 1 is independent.
  • Accused Features: The Defendant's various SMS-based alert services are accused of practicing the claimed methods of sending notifications that allow users to request and receive content (Compl. ¶13, 55).

U.S. Patent No. 8,116,741 - "System and Method for Delivering Information to a Transmitting and Receiving Device"

  • Technology Synopsis: This patent covers systems and methods for delivering information to a mobile device by first sending a notification with a content identifier, such as a URL. The system is configured to handle requests for dynamic content and can inform the recipient of the time that content is available (Compl. ¶12, 61-62).
  • Asserted Claims: Claims 1-9, 11-18, 20, 21, 23, 24, 26, and 27 (Compl. ¶61). Claim 1 is independent.
  • Accused Features: The Defendant's mobile alert services, which send SMS messages with URLs that link to news articles and other information, are the accused instrumentalities (Compl. ¶13, 62).

U.S. Patent No. 8,134,450 - "Content Provision to Subscribers via Wireless Transmission"

  • Technology Synopsis: This patent relates to providing content to subscribers by sending a wireless notification that identifies the content and a system to contact for retrieval. A key aspect is that the content itself is not sent until the subscriber's device transmits a request back to the provider's system (Compl. ¶12, 68-69).
  • Asserted Claims: Claims 1, 3-8, 10, 13-15, 17-23, and 27-28 (Compl. ¶68). Claim 1 is independent.
  • Accused Features: Defendant's SMS-based notification systems are accused of infringing by sending alerts that prompt users to click a link to retrieve the full content (Compl. ¶13, 69).

III. The Accused Instrumentality

Product Identification

  • The accused instrumentalities are a collection of messaging services offered by Defendant The New York Times Company ("NYT") and its subsidiaries, including "Mobile Alert Services" (e.g., Breaking News Alerts, Sports Alerts), a "Real Estate SMS message service," a "Send to Mobile" feature, and alert services from Boston Globe and CalorieCount.com (Compl. ¶13(a)-(e)). The complaint also implicates NYT's use of social media platforms like Twitter and Facebook to send SMS messages to followers (Compl. ¶13(f)).

Functionality and Market Context

  • The complaint alleges these services function by initiating and causing SMS or MMS messages to be sent to users' mobile devices (Compl. ¶13). These messages contain a notification and an "identifier of content (such as a URL) within the notification" (Compl. ¶13(a)). The complaint asserts that these URLs often link to "dynamic content" that can change between the time of notification and retrieval, may be "shortened URLs," or may be associated with information indicating a limited time of availability (Compl. ¶13(a)). These services represent NYT's method for distributing breaking news, articles, and other media directly to its audience on mobile platforms.

IV. Analysis of Infringement Allegations

’838 Patent Infringement Allegations

Claim Element (from Independent Claim 9) Alleged Infringing Functionality Complaint Citation Patent Citation
A method of operating a wireless communication device, wherein the wireless communication device includes an information identifier... The complaint alleges infringement by end-users' mobile devices, which receive notifications containing identifiers (URLs) for content stored by NYT (Compl. ¶13, 35). ¶13, ¶35 col. 21:56-62
receiving a notification message from the content provider, wherein the notification message includes the information identifier... NYT's services send SMS/MMS alerts to user devices, which serve as the notification messages containing URLs (Compl. ¶13(a)). ¶13(a) col. 9:38-44
wherein the information associated with the information identifier is not included in the notification message... The SMS/MMS alerts contain a link to the content (e.g., a news article) but not the full content itself (Compl. ¶12). ¶12 col. 3:4-10
alerting a user of the wireless communication device that the notification message has been received... Standard functionality of a mobile phone, which alerts the user upon receipt of an SMS/MMS message (Compl. ¶34-35). ¶34, ¶35 col. 9:19-24
receiving input from the user specifying an action to be performed on the information associated with the information identifier... The user interacts with the mobile device's interface to select the URL within the SMS message, which constitutes input to retrieve the content (Compl. ¶35). ¶35 col. 10:25-30
transmitting, from the wireless communication device, a request message to the content provider indicating the action to be performed... When a user clicks the URL, the mobile device transmits a request over the network to NYT's servers to retrieve the web page content (Compl. ¶12). ¶12 col. 10:59-67
  • Identified Points of Contention:
    • Scope Questions: A central question may be whether the term "paging transceiver" as described in the patent's specification can be construed to read on the modern smartphones and mobile devices used to receive NYT's SMS alerts. Further, it may be disputed whether a standard URL constitutes an "information identifier" as contemplated by the patent.
    • Technical Questions: The infringement theory relies on the actions of end-users operating their mobile devices. A potential issue is whether NYT's systems practice the claimed methods, or whether liability depends on inducement of infringement by the users. The complaint does not specify the technical steps performed by NYT's servers versus the user's device for each claim element.

’716 Patent Infringement Allegations

Claim Element (from Independent Claim 15) Alleged Infringing Functionality Complaint Citation Patent Citation
A content communication system, comprising: a memory configured to store content... NYT's servers store content such as news articles, real estate listings, and other media on an "internet accessible website" (Compl. ¶12). ¶12 col. 4:51-67
a memory controller including a processor coupled to the memory, the controller configured to cause a data signal to be directed to a cell phone... NYT's system is configured to initiate and send SMS/MMS messages to subscribers' mobile devices (Compl. ¶13, 41). ¶13, ¶41 col. 5:15-24
wherein the data signal includes a content identifier that identifies the content, an identification of the content's location, and an identification of the content's type... The SMS/MMS messages allegedly include a URL (identifier and location) that points to content like news or media (type) (Compl. ¶12). ¶12 col. 7:61-67
wherein the memory controller is configured to direct the content corresponding to the content identifier to the cell phone only upon receiving a request from the cell phone to do so. NYT's system delivers the full content (e.g., the web page) only after the user's device sends a request by clicking the URL (Compl. ¶12). ¶12 col. 3:4-15
  • Identified Points of Contention:
    • Scope Questions: The definition of "memory controller" will be a key issue. A question will be whether NYT's distributed server architecture, which sends SMS messages via third-party telecommunication carriers, meets the claim limitation of a "controller configured to cause a data signal to be directed to a cell phone."
    • Technical Questions: The complaint alleges that NYT's system performs the claimed functions, but provides limited architectural detail. A key technical question will be what evidence demonstrates that a single "content communication system" under NYT's control performs all the recited steps, from causing the initial signal to receiving the subsequent request and directing the content. The complaint's exhibit B includes a screenshot of an IDS form from the prosecution of a related patent, showing an examiner's initials acknowledging consideration of a prior art patent ('757 Patent). This visual evidence is used to support allegations of misrepresentation by the Defendant during reexamination (Compl., Ex. B, p. 53).

V. Key Claim Terms for Construction

  • Term from ’838 Patent, Claim 9: "information identifier"

    • Context and Importance: This term's construction is critical because the infringement allegation hinges on a standard URL being an "information identifier." If the term is construed more narrowly to require a specific type of code unique to the patented paging system, the infringement case could be weakened.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The specification is not tied exclusively to one format. The detailed description refers to exchanging various types of "data," including "identification data" and "command data," suggesting the identifier could be any data structure that points to information ( ’838 Patent, col. 6:50-55).
      • Evidence for a Narrower Interpretation: The patent is titled "Paging Transceivers" and the background focuses heavily on that technology. A defendant may argue that the term should be limited to the types of identifiers used in the paging protocols of that era, rather than general-purpose internet URLs.

  • Term from ’716 Patent, Claim 15: "memory controller... configured to cause a data signal to be directed to a cell phone"

    • Context and Importance: This term is central to whether NYT's system architecture infringes. NYT likely uses a complex, distributed system that relies on third-party mobile carriers to deliver SMS messages. Practitioners may focus on whether "causing a data signal to be directed" requires direct control over the transmission path or if initiating the process through a carrier network is sufficient.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The patent describes a "system" that communicates with a "base station" which is in turn connected to the Public Switched Telephone Network (PSTN) (’716 Patent, Fig. 3; col. 5:15-20). This suggests the "system" is not required to be a single monolithic entity and can operate through intermediary networks.
      • Evidence for a Narrower Interpretation: The block diagrams show a direct logical connection between the "paging terminal controller" and the "base station" (’716 Patent, Fig. 3). A defendant might argue this implies a level of direct control and integration not present in NYT's use of public SMS gateways.

VI. Other Allegations

  • Indirect Infringement: Plaintiff pleads indirect infringement in the alternative for each patent, alleging that if NYT is not a direct infringer, it actively induces or contributes to the infringement of the asserted claims by causing "numerous SMS notifications... to be sent to its subscribers' mobile devices" (Compl. ¶35, 42, 49, 56, 63, 70). The allegation is that NYT provides the means and encouragement for its subscribers to use their devices in an infringing manner.
  • Willful Infringement: The complaint makes extensive allegations of willful infringement. The basis includes alleged pre-suit notice of infringement dating back to December 2009 for the ’838 and ’716 patents (Compl. ¶14, 36, 43). Willfulness is further alleged based on Defendant's post-notice conduct, which Plaintiff characterizes as a bad-faith strategy of filing "repeated, staggered and seriatim reexamination requests" and making dozens of "false or misleading statements to the PTO" during those proceedings in a plan to "harass HPL, increase HPL's expenses, and stall HPL's licensing program" (Compl. ¶22, 27-31).

VII. Analyst’s Conclusion: Key Questions for the Case

  • A core issue will be one of claim construction and technological evolution: can claim terms rooted in the context of 1990s-era "paging transceivers" and their associated protocols be construed to cover modern systems using smartphones, SMS/MMS gateways, and standard internet URLs? The outcome of this question will heavily influence the infringement analysis.
  • A key procedural and validity question will be the impact of the extensive reexamination history: given that the PTO confirmed the patentability of numerous claims over prior art submitted by the Defendant, the case will test what new arguments or evidence, if any, the Defendant can present in district court to challenge the patents' validity more successfully than it did before the agency.
  • A central evidentiary question will be one of system architecture and control: does the evidence show that NYT's distributed content-delivery platform, which leverages third-party carrier networks, constitutes a single "system" that performs the specific, ordered steps recited in the asserted claims, or is the allegedly infringing conduct a combination of actions by NYT, carriers, and end-users that does not map cleanly onto any single party?