PDF《知识产权资讯》

3 March

2015 知识产权资讯

2015 年第

3 期www.junlong-ip.com6因为相关的专利正好是约束媒体提供方的行为的, 这些媒体提供方并不是移动设 备的授权获得者.因此,涉及提供媒体内容的专利构成了一种不同的补充发明, 这个补充发明可以独立于移动设备的发明被单独侵权. 与Helferich 案不同的是, 在Keurig 案中,涉案专利涉及的是由用户(合法授权获得者)使用的煮咖啡的 方法.被告 Sturm 公司仅仅是被诉引诱终端用户侵权,而不是被诉进行了单独 的侵犯专利权. Federal Circuit Limits Patent Exhaustion Doctrine for Complementary Technology In its

2013 decision in Keurig, Inc. v. Sturm Foods, Inc., the Federal Circuit held that a purveyor of coffee cartridges did not infringe Keurig'

s coffee brewing patents because Keurig had already made an unrestricted sale of its brewing machines to end users, such that any further use of those machines was protected by the doctrine of patent exhaustion. Yet, in its February 10,

2015 decision in Helferich Patent Licensing, LLC v. The New York Times Company, et al., the Federal Circuit held that, under certain circumstances, purveyors of media content to users of handheld mobile devices could be found liable for infringement even where the mobile device manufacturers had already paid for a license under the asserted patents. In reaching this conclusion, the Federal Circuit purported to harmonize long-standing principles of patent exhaustion, but many observers will likely view the Helferich decision as narrowing the scope of the defense. In particular, the Federal Circuit has now held that in the context of complementary technology C such as a machine and one of its components, or a computer and its software C the patent exhaustion defense only operates to protect so-called authorized acquirers of the technology, while leaving out in the cold any third parties who provide complementary components or services that are separately patented. Why Helferich Is Different Than Keurig The key to the Helferich decision was the fact that the asserted patent claims were specifically directed to a method by which a third party content provider delivers media content to a handheld mobile device. The Federal Circuit observed that under the traditional application of the patent exhaustion defense, the patent owner would have been precluded from asserting patent claims directed to the design of the handset itself, or to the end user'

s use of the handset, because the equipment had been fully licensed to the handset manufacturers, and the end users were authorized acquirers of those licensed handsets who were free to use them as they wished. The court held, however, that the doctrine of patent exhaustion did not preclude assertion of the claims at issue against the content providers because the claims were directed solely to the actions of the NEWSLETTER Volume

3 March

2015 知识产权资讯

2015 年第

3 期www.junlong-ip.com7content providers, who were not authorized acquirers of the handsets. The patent claims that covered methods of providing content thus constituted distinct complementary inventions that were separately infringed. In the Keurig case, by contrast, the asserted patent claims covered a method of brewing coffee to be performed by the end user (i.e., an authorized acquirer). The defendant, Sturm, was accused onl........