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IN THE UNITED STATES DISTRICT COURT 

FOR THE NORTHERN DISTRICT OF ILLINOIS 

EASTERN DIVISION 

HELFERICH PATENT LICENSING, LLC, ) 

an Illinois Limited Liability Company, ) 

 Plaintiff, ) 

) 

 v. ) No. 1:11-cv-9143 

) 

 ) Hon. John W. Darrah 

J.C. PENNEY CORPORATION, INC., ) 

a Delaware Corporation, ) 

 Defendant. ) 

PLAINTIFF’S REPLY IN SUPPORT OF MOTION TO EXPEDITE 

CLAIM CONSTRUCTION 

There are no fewer than five good reasons for granting Helferich’s motion to expedite the 

Markman hearing and a trial of all common invalidity and unenforceability defenses, including 

the exhaustion defense.

1. The Case is Well Developed and Ready for Claim Construction. 

This case is well developed as a result of five years of extensive licensing, litigation and 

Patent Office proceedings, including multiple rounds of reexamination. The New York Times 

(“NYT”) correctly noted when it sought (and obtained) its stay of proceedings that, even if 

Helferich had claims confirmed in the reexamination proceedings, the case could be thereafter 

streamlined due to the Patent Office’s review of Helferich’s claim construction: 

Even in the unlikely event that the claims of the patents-in-suit survive the 

reexamination process unchanged – which they will not – the reexamination 

process nevertheless will streamline this litigation. For example, characterizations 

of the claims made by HPL during the reexamination process become part of the 

prosecution history, a source of intrinsic evidence that must be considered during 

claim construction. See E.I. du Pont de Nemours & Co. v. Phillips Petroleum Co., 

849 F.2d 1430, 1439 (Fed. Cir. 1988). Granting a stay would allow this Court, 

when later conducting its own claim construction analysis, to benefit from HPL’s 

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clarifications as to the scope of its claims during reexamination. See, e.g., In re 

Cygnus Telecomm. Tech., LLC, Patent Litig., 385 F. Supp. 2d 1022, 1024 (N.D. 

Cal. 2005) (granting a stay pending reexamination in part due to the benefits of a 

“richer prosecution history upon which to base necessary claim construction 

determinations”). Finally, a stay pending reexamination would allow the Court in 

later proceedings to benefit from the expertise of the PTO as brought to bear in 

the reexamination. See, e.g., Pass & Seymour, Inc. v. Hubbell Inc., 532 F. Supp. 

2d 418, 436 (N.D.N.Y. 2007) (“An important factor figuring into the stay 

question is the desirability of drawing upon the expertise of the PTO regarding the 

complex areas of patentability implicated in this action... [T]he parties and the 

court could benefit immensely from the expertise of the PTO.”). 

NYT Motion to Stay Pending Reexaminations, No. 1:10-cv-04387 (Dkt. 72) at 16-17. 

That is exactly what occurred. During the reexamination proceedings, Helferich 

submitted “Glossaries of Terms” for claim construction. In addition, Helferich submitted expert 

declarations confirming and supporting its glossary of construed claim terms. Contrary to 

JC Penney’s assertions that these documents are lengthy and complex, Helferich’s glossary of 

defined claim terms is only three pages long and Dr. Grindon’s expert opinion relating to claim 

construction is only 17 pages in length. See Declaration of Mr. Kappes in Support of Motion to 

Expedite, Exhibits A and B, respectively, served and filed herewith. Still further, 

notwithstanding 13 reexamination requests totaling nearly 8,000 pages, the NYT Defense Group 

has identified only three “claim construction” issues. See Declaration of Mr. Kappes ¶ 4. As 

predicted by the NYT Defense Group, the case is now ready to be streamlined as proposed by 

Helferich. Despite JC Penney’s dire predictions, there will be no problem reaching the ten term 

limit of LPR 4.1 on the expedited schedule proposed. 

Because of the rich history here, the Local Patent Rules’ “ordinary” schedule should not 

control. The Local Patent Rules provide for claim construction after exchange of two rounds of 

infringement and validity contentions, as well as extensive discovery on all issues including 

willfulness and damages, to ensure that the parties “had had sufficient time, via the discovery 

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process, to ascertain what claim terms really matter and why and can identify (as the Rules 

require) which are outcome determinative.” Local Patent Rules (“LPR”) Preamble. That is 

clearly not required in this case, which is no longer “ordinary.” Helferich proposes that the 

parties exchange one round of infringement and validity contentions, and take discovery focused 

on the “outcome determinative” claim construction issues. 

2. The Case is Ready for a Trial of Common Defenses. 

As with claim construction, the invalidity defenses were fully developed over the last five 

years. Specifically, all six of the patents asserted herein were approved after presentation to the 

Patent Office of the invalidity positions developed and provided by: 

1. Apple (now a licensee); 

2. Motorola (now a licensee); 

3. Best Buy (now a licensee); 

4. Toyota (now a licensee); 

5. HP (now a licensee); 

6. Palm (now a licensee); 

7. NYT in its invalidity contentions, under LPR 2.3; 

8. the NYT Defense Group in its first round ex parte reexamination requests; 

9. the NYT Defense Group in its second round inter partes reexamination requests. 

In addition, the ‘838 Patent was confirmed over eight NYT Defense Group reexamination 

requests, including consideration of at least some of the NYT Defense Group’s most recent third 

round (inter partes) reexaminations. Similarly, Application No. 12/580,189 (issued as U.S. 

Patent No. 8,224,294) and Application No. 12/267,436 were allowed after the Patent Office 

considered twelve of the thirteen total NYT Defense Group reexaminations.1

 

 After years of presenting scores of invalidity arguments, the NYT Defense Group’s latest 

round of reexaminations now relies on only four primary references, and does so almost entirely 

 

1

 The issue fees were paid before the thirteenth request was filed, so it was not considered. 

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in obviousness arguments.2

 Thus, as with claim construction, the invalidity defenses are also 

well focused and, subject to the Court’s claim construction, ready for an early resolution.3

 

3. A Markman Hearing is the First, Necessary Step Towards a Final Resolution. 

 If the Defendants have their way, Helferich and the Court will face a never-ending series 

of “potentially dispositive” defenses presented serially one after another over a period of many 

years. Indeed, JC Penney’s companion motion to expedite the exhaustion defense to an “early” 

decision in April (the same date Helferich proposes for a joint trial of common defenses) is 

nothing more than a disguised motion to stay everything except the exhaustion defense. To be 

clear, Helferich has no problem addressing all of the common invalidity and unenforceability 

defenses next April – including exhaustion. However, Helferich suggests that the Court do so in 

an orderly and accepted manner – after claim construction. 

Not only is the claim construction issue already well-developed (therefore the hearing 

will be efficient), but completing the Markman hearing puts one of the main foundational issues 

to bed with finality, and is a necessary step for resolving the invalidity and unenforceability 

defenses. “Because the claims of a patent measure the invention at issue, the claims must be 

interpreted and given the same meaning for purposes of both validity and infringement 

analyses.” Sterner Lighting, Inc. v. Allied Elec. Supply, Inc., 431 F.2d 539, 544 (5th Cir. 1970). 

 

2 Of the 173 invalidity arguments presented, only one anticipation argument was made, based on 

one reference against 3 claims of the ‘838 patent; that reexamination request was recently denied 

a filing date by the Patent Office 

3 Helferich proposes that the parties conduct validity discovery after the Markman hearing with 

those defendants that remain. However, given the significant focus provided by inordinately rich 

Patent Office history, Helferich has no objection to conducting validity discovery in parallel with 

the claim construction discovery, to enable the validity trial to proceed promptly after the claim 

construction ruling. 

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“The court must properly interpret the claims, because an improper claim construction may 

distort both the infringement and validity analyses.” Amazon.com, Inc. v. Barnesandnoble.com, 

Inc., 239 F.3d 1343, 1351 (Fed. Cir. 2001).4

Thus, for example, in addressing the exhaustion defense, the Court will hear arguments 

regarding the scope of the content claims versus those claims separately licensed to the handset 

companies. In other words, and unlike every case cited by JC Penney, the only “claims” licensed 

to the handset companies were those defining separate and distinct inventions infringed by the 

handsets. The claims at issue in this case, which claim separate and distinct inventions infringed 

by the content providers, were expressly excluded from the “handset” licenses. No case applies 

exhaustion where there are distinctly different inventions in different technical fields that were in 

fact properly and separately licensed in those distinct fields. 

Helferich submits it would only result in further delay and expense to yet again stay all 

proceedings to allow JC Penney to present a single defense, particularly when that defense 

clearly depends on the scope of the claims asserted against the content providers. 

4. JC Penney’s Cited Cases Do Not Apply to a Well-Developed Case. 

Unlike the cases relied on by JC Penney in its opposition, Helferich is not proposing an 

interim claim construction or a mini-Markman. Cf. Sofamor Danek Group, Inc. v. DePuyMotech, Inc., 74 F.3d 1216, 1221 (Fed. Cir. 1996) (claim construction for preliminary injunction 

not binding); Parallel Networks, LLC v. Abercrombie & Fitch, 2011 WL 3609292 (E.D. Tex. 

2011)(mini-Markman on three claim terms). Nor is this a case in which the facts and theories are 

 

4 JC Penney’s argument that its “strong anticipation, obviousness, indefiniteness, exhaustion, 

divided infringement, non-infringement, and other defenses” do not require claim construction is 

contrary to Federal Circuit law. See Response at 7. 

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unknown, and require discovery for the parties to properly choose and present the dispositive 

claim terms for construction. See S.S. White Burs, Inc. v. Neo-Flo, Inc., 2003 WL 21250553 

(E.D.Pa. May 2, 2003) (appropriate to require infringement charts before claim construction); 

Moore U.S.A., Inc. v. The Standard Register Co., 2000 WL 876884 *4 (W.D.N.Y. May 26, 

2000) (delaying discovery of proposed constructions until other discovery completed); Conopco, 

Inc. v. Warner-Lambert Co., 2000 WL 342872 (D.N.J. Jan. 26, 2000) (requiring infringement 

charts, but not specific range of “effective” material recited in claim).5

Rather, this case is more like Magna Carta Holdings, LLC v. Nextgen Healthcare 

Information Systems, Inc., 2012 WL 787505 *1 (N.D. Ill. 2012), also cited by JC Penney, in 

which the court agreed to an early construction of only one term after the dispositive nature of 

that phrase became apparent during reexamination proceedings. Here, given the extensive record 

in the reexaminations, it is appropriate to accelerate the Markman hearing, concentrating on the 

now well-developed and relatively few claim construction issues. 6 Following the exchange of 

infringement and validity contentions, as Helferich proposes, the parties should be in a position 

“to focus upon out-come determinative or otherwise significant disputes” and choose the 

appropriate ten terms for construction. See LPR 4.1, Comment; see also Local Patent Rule 4-

 

5 SS White Burs and Moore both cite Conopco for the proposition that courts should delay 

Markman until after the close of discovery. Interestingly, the case relied on in Conopco for that 

proposition actually holds that the parties need enough discovery to enable them to identify claim 

terms for construction. See Toter Inc. v. Visalia, 1997 WL 715459 *3 (E.D. Cal. 1997) (in 

denying motion for early Markman, the court “sympathizes with Plaintiff that the parties don’t 

yet know the terms in dispute”) (cited in Conopco, 2000 WL 342872 at *4). 

6 JC Penney’s reliance on Thomson Consumer Electric, Inc. v. Innovatron, S.A., 43 F. Supp.2d 26 

(D.D.C. 1999) is misplaced. In this early post-Markman opinion, the issue was not the timing of 

the Markman; rather, the court was concerned that deciding claim construction in a separate 

proceeding, without also determining infringement, would be an advisory opinion in violation of 

the Constitution’s case or controversy requirement. Id., n. 2. 

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1(b) (N.D. Cal.) (“parties shall also jointly identify the 10 terms likely to be most significant to 

resolving the parties’ dispute, including those terms for which construction may be case or claim 

dispositive”). Doing so provides the parties and the Court with “construction of outcomedeterminative or otherwise significant claim terms [that] may lead to settlement or entry of 

summary judgment.” LPR 4.1, Comment; see also Delta Frangible Ammunition, LLC v. 

Sinterfire, Inc., 2008 WL 1847701 * 1 n.1 (W.D. Pa. 2008) (implicit goal of Markman was 

promoting settlement). 

5. JC Penney’s Motion to Expedite Exhaustion is a Disguised Motion to Stay. 

As noted above, the end result sought by JC Penney (and the other defendants) is a stay 

of all proceedings (including claim construction) except for those relating to one defense 

(exhaustion). In its motion, it proposes skipping the potentially dispositive claim construction 

hearing, and completing briefing of the sole defense of exhaustion in April, 2013, eight months 

from now. Helferich likewise suggests that the exhaustion defense can be resolved in April 

2013. The difference is that Helferich believes the claim construction and validity issues are 

well developed, that a 1-2 day Markman hearing can be completed in January or February, and 

all common validity and unenforceability defenses (including exhaustion) can be resolved in 

April 2013. The timing is the same, but the results are drastically different. 

The issue of a stay was resolved by the Court months ago. The Court left no doubt as to 

its reasons for not continuing a stay in these related cases: 

[E]ven after the third round of reexamination is completed, it is possible some or 

most claims will remain, though perhaps amended, in the litigation before this 

Court. ([Helferich’s] Motion to Lift Stay at 10). To permit a continued stay in 

the New York Times case and grant stays in the Other Defendants’ cases would 

cause undue delay and create additional expense and hardship for [Helferich]. 

Permitting stays in these cases would serve only to prejudice the plaintiff, 

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[Helferich], and the stays sought by the Defendants are, at best, strategic delay 

tactics. The Motions to Stay in the Other Defendants’ cases are denied, and the 

Motion to Lift the Stay in the New York Times case is granted.7

Notwithstanding the Court’s decision, the NYT Defense Group thereafter filed five more

reexaminations. Defendants proved the Court correct. 

Further, while JC Penney continually reminds us that it did not file the reexamination 

requests, it was placed on notice years ago and declined a license repeatedly while it watched the 

reexaminations proceed. Now, JC Penney’s disguised motion to stay is yet another “strategic 

delay tactic” that would “serve only to prejudice plaintiff.” 

Helferich seeks a cost effective, prompt and final resolution of this matter. The proposed 

expedited Markman hearing and trial of common invalidity defenses accomplishes that goal. 

Helferich submits that it is time for the parties to get to work and bring this matter to a close. 

RESPECTFULLY SUBMITTED this 17th day of August, 2012. 

LAW OFFICES OF STEVEN G. LISA, LTD. 

By: /s/ Steven G. Lisa 

 Steven G. Lisa 

Attorney for Plaintiff/Counterdefendant 

Steven G. Lisa (Ill. State Bar # 6187348) 

Timothy Sperling (Ill. State Bar # 6283854) 

Jon E. Kappes (Ill. State Bar # 6291678) 

Law Offices of Steven G. Lisa, Ltd. 

55 West Monroe Street, Suite 3210 

Chicago, Illinois 60603 

Tel. & Fax: (312) 752-4357 

 

7 See Helferich Patent Licensing, L.L.C. v. New York Times Co., No. 1:10-cv-04387 (Dkt. 149), 

2012 WL 1813665 (N.D. Ill. 2012). 

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Victoria Curtin (NDIL ID #010897) 

Victoria Gruver Curtin, P.L.C. 

14555 N. Scottsdale Rd., Ste. 160 

Scottsdale, Arizona 85254 

Tel.: (480) 998-3547 

Gerald D. Hosier (Ill. State Bar # 7059) 

Law Offices Of Gerald D. Hosier, Ltd. 

P.O. BOX 12354 

ASPEN, CO 81612 

Tel: (970) 920- 3475 

Off: (970) 920-3475 

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CERTIFICATE OF SERVICE

I Laura Keller certify that on August 17, 2012, I personally caused to be served, by 

CM/ECF filing, a true and correct copy of “Plaintiff’s Reply in Support of Motion to Expedite 

Claim Construction”: 

/s/ Laura Keller 

Laura Keller 

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