The Federal Circuit reversed. The court characterized the situation as “involv[ing] a single inventor’s coming up with two inventions presumed to be separately patentable, one invention to be practiced by one group of users, the other invention by another group, where each invention tends to make the other more useful when thus separately practiced.” Noting that it is “commonplace” for the value of certain products to increase when multiple people possess the same product, the court’s decision indicated that this “reciprocal enhancement of utility” was not sufficient to trigger patent exhaustion. Important to the court’s decision was the fact that there was no allegation that the authorized purchasers of handsets were practicing the content claims. According to the court’s analysis of relevant precedent, in every case finding patent exhaustion, the patentee’s claim of direct or indirect infringement ultimately depended on an assertion that the authorized purchaser of the product was practicing the asserted claims.
Helferich Patent Licensing, LLC v. New York Times Co., 201411961200 (Fed. Cir. Feb. 10, 2015).