DCT
1:10-cv-04387
Helferich Patent Licensing LLC v. New York Times Co
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Helferich Patent Licensing, LLC (Illinois)
- Defendant: The New York Times Company (New York)
- Plaintiff’s Counsel: Law Offices of Steven G. Lisa, Ltd.
- Case Identification: 1:10-cv-04387, N.D. Ill., 09/24/2010
- Venue Allegations: Plaintiff alleges venue is proper because Defendant is subject to personal jurisdiction, maintains a regular and established place of business in the district, and has directed infringing content to residents of the district.
- Core Dispute: Plaintiff alleges that Defendant’s mobile alert and content delivery services infringe patents related to methods and systems for notifying a user of available content and enabling its selective retrieval.
- Technical Context: The technology concerns a two-step process for delivering content to mobile devices, where an initial notification of available content is sent separately from the full content itself, which is only delivered upon user request.
- Key Procedural History: The complaint alleges that Plaintiff provided Defendant with written notice of infringement, including detailed infringement charts, on December 29, 2009, approximately nine months prior to filing suit. The complaint also states that thirteen other companies, including Apple, Dell, and Microsoft, have taken licenses to the patent portfolio.
Case Timeline
| Date | Event |
|---|---|
| 1997-09-19 | Priority Date for U.S. Patent Nos. 7,280,838 and 7,499,716 |
| 2007-10-09 | U.S. Patent No. 7,280,838 Issued |
| 2009-03-03 | U.S. Patent No. 7,499,716 Issued |
| 2009-12-29 | Plaintiff alleges giving written notice of infringement to Defendant |
| 2010-09-24 | Complaint Filed |
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 technical challenges in early-generation paging systems, including the limited memory of mobile devices, which could be quickly exhausted by large messages, and the inefficient use of network bandwidth ("air time") from automatic acknowledgment signals transmitted by devices. ( ’838 Patent, col. 1:41-2:15).
- The Patented Solution: The invention describes a method that separates content notification from content delivery. A network first sends a "page" to a user's device, which serves as a notification that a message is available but does not include the full message content. This notification may contain descriptive information. The user can then choose when and where to download the full message, giving the user control over network transmissions and conserving device memory. (’838 Patent, Abstract; col. 3:4-14).
- Technical Importance: This two-step, user-initiated retrieval model provided a way to manage the limited memory and power resources of early mobile devices while also conserving constrained network bandwidth.
Key Claims at a Glance
- The complaint asserts independent claims 9 and 15, among others. (Compl. ¶13). Claim 9 is a representative method claim.
- The essential elements of independent claim 9 are:
- A content provider initiates communication of data to a wireless device, where the data includes an "information identifier" for remotely stored information but not the information itself.
- A content notification system processes this data into a message containing the identifier and transmits it to the wireless device.
- The content provider receives a "request message" wirelessly transmitted from the device "as a reply to the message," which includes the information identifier.
- The complaint reserves the right to assert additional claims, including dependent claims. (Compl. ¶13).
U.S. Patent No. 7,499,716 - "System and Method for Delivering Information to a Transmitting and Receiving Device"
The Invention Explained
- Problem Addressed: The ’716 Patent, part of the same family as the ’838 Patent, addresses the same technical problems of limited device memory and inefficient use of network resources in delivering content to mobile devices. (’716 Patent, col. 1:55-2:4).
- The Patented Solution: The patent describes a communication system with a memory for storing content and a controller. The controller sends a "data signal" to a cell phone that identifies available content, its location, and its type. The controller is configured to deliver the actual content only after it receives a specific request from the cell phone to do so. (’716 Patent, Abstract; col. 4:15-34).
- Technical Importance: This system architecture formalizes the two-step notification-then-retrieval process, providing a framework for content providers to manage on-demand delivery to mobile devices.
Key Claims at a Glance
- The complaint asserts independent claims 15 and 27, among others. (Compl. ¶19). Claim 15 is a representative system claim.
- The essential elements of independent claim 15 are:
- A memory configured to store content.
- A memory controller configured to cause a data signal to be directed to a cell phone, the signal including a content identifier, its location, and its type.
- The memory controller is further configured to direct the content from the memory to the cell phone "only upon receiving a request from the cell phone to do so."
- The complaint reserves the right to assert additional claims, including dependent claims. (Compl. ¶19).
III. The Accused Instrumentality
Product Identification
The accused instrumentalities are various content delivery services offered by The New York Times Company and its subsidiaries, including "Mobile Alert Services," a "Real Estate SMS message service," a "Send to Mobile" feature, and integrations with social media platforms like Twitter and Facebook. (Compl. ¶9a-f).
Functionality and Market Context
The services allow users to opt-in to receive alerts via SMS or MMS messages on their mobile devices. (Compl. ¶9a). The complaint alleges that these messages contain an "identifier, such as a URL or link," which identifies specific content (e.g., a news article) stored on Defendant's servers. (Compl. ¶8). Upon a user's request, such as by interacting with the link, the Defendant's system sends the identified content to the user's device. (Compl. ¶8, ¶9a-f). The complaint alleges that "millions, if not billions," of such messages have been sent, suggesting widespread use of the accused services. (Compl. ¶9f).
IV. Analysis of Infringement Allegations
No probative visual evidence provided in complaint.
U.S. Patent No. 7,280,838 Infringement Allegations
| Claim Element (from Independent Claim 9) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| the content provider initiating communication of data...the data including an information identifier that is associated with information stored by the content provider... | Defendant’s systems initiate and transmit an SMS alert to a user's mobile device. | ¶9a | col. 22:5-13 |
| ...wherein the information is not included in the data and is not stored in the wireless communication device; | The SMS alert contains a URL pointing to a news article but does not contain the article itself, which is stored on Defendant's servers. | ¶8 | col. 22:8-10 |
| the content provider causing the content notification system to: process the data into a message...and transmit the message to the wireless communication device; | Defendant’s systems format and send the SMS alert message to the user’s mobile device. | ¶9a | col. 8:23-26 |
| the content provider receiving a request message that is wirelessly transmitted...as a reply to the message, the request message including at least a portion of the information identifier. | When a user clicks the URL in the SMS, a request is sent from the user's device through the wireless network to Defendant’s servers to retrieve the full content. | ¶8, ¶9a | col. 9:48-52 |
U.S. Patent No. 7,499,716 Infringement Allegations
| Claim Element (from Independent Claim 15) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a memory configured to store content; | Defendant's servers and databases which store news articles, real estate listings, and other media content. | ¶8, ¶9a-f | col. 5:9-14 |
| a memory controller including a processor coupled to the memory configured to cause a data signal to be directed to a cell phone...the data signal includes...a content identifier... | Defendant's backend system that generates and sends an SMS message (the "data signal") containing a URL (the "content identifier") to a user's phone. | ¶8, ¶9a-f | col. 5:15-34 |
| wherein the memory controller is configured to direct the content corresponding to the content identifier from the memory to the cell phone only upon receiving a request from the cell phone to do so. | Defendant's system is configured to deliver the full article or content to the user's device only after the user's device transmits a request by clicking the URL. | ¶8, ¶9a-f | col. 3:6-10 |
Identified Points of Contention
- Scope Questions: The infringement theory rests on construing patent terms drafted in the context of 1990s paging technology to cover modern internet-based mobile communications. A central question may be whether a user clicking a hyperlink to send an HTTP request constitutes a "request message...as a reply" to an SMS message, as contemplated by the ’838 Patent. A second question may be whether the term "mobile radiotelephone network" from the patent era reads on the combination of cellular and internet infrastructure used by the accused services.
- Technical Questions: The complaint describes the accused services from a high-level, user-facing perspective. A key point of contention will likely be whether Defendant's backend system architecture actually contains the distinct components and performs the specific steps recited in the asserted system and method claims, a question for which the complaint does not provide sufficient detail for analysis.
V. Key Claim Terms for Construction
The Term: "information identifier" (’838 Patent, claim 9)
- Context and Importance: Plaintiff's infringement theory equates this term with a modern URL. The case may turn on whether this term, originating in the context of paging "CI data," can be construed so broadly. Practitioners may focus on this term because its scope is critical to mapping the patent onto the accused technology.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification states that the identifier "identifies the location of the stored information." (’838 Patent, col. 22:5-7). A URL serves this exact function.
- Evidence for a Narrower Interpretation: The patent repeatedly discusses the identifier in the context of "CI data" for paging systems, which may suggest a term of art specific to legacy paging protocols and distinct from a general-purpose hyperlink. (’838 Patent, col. 8:61-62).
The Term: "request message...as a reply to the message" (’838 Patent, claim 9)
- Context and Importance: Infringement requires that the user's action of retrieving content (clicking a link) be considered a "reply" to the initial notification (the SMS). Defendant may argue that an HTTP request sent to a web server is a separate communication, not a "reply" to an SMS in the manner contemplated by the patent.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent's summary describes a user being notified and then choosing to "retrieve the message...or otherwise act on the message," suggesting a broad, functional definition of the responsive action rather than a specific protocol. (’838 Patent, col. 3:24-27).
- Evidence for a Narrower Interpretation: The patent's background section discusses reply signals in the context of a "paging transceiver" transmitting "acknowledgment signals back through the paging system" to a "base station," which could support a narrower construction limited to a direct, protocol-level response within the same network channel. (’838 Patent, col. 2:16-22).
VI. Other Allegations
- Indirect Infringement: The complaint pleads active inducement in the alternative for both patents, alleging that if Defendant is not a direct infringer, it "knowingly and intentionally" encourages and aids its users to practice the patented methods by providing the accused services. (Compl. ¶14, ¶20).
- Willful Infringement: The complaint alleges willful infringement of both patents based on pre-suit knowledge. It states that Plaintiff gave Defendant written notice of infringement, including detailed infringement charts, on December 29, 2009, and that Defendant's infringement continued thereafter. (Compl. ¶10, ¶16, ¶22).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of technological translation: can claims written for 1990s-era paging systems, using terms like "paging transceiver," "information identifier," and "reply," be construed to cover modern systems where a smartphone user receives an SMS message with an embedded URL and clicks it to retrieve content from a web server?
- A second key issue will be one of architectural mapping: assuming the claim terms can be translated, does the actual backend architecture of Defendant's content-alert systems, which is not detailed in the complaint, meet the specific structural and functional limitations of the asserted system and method claims?