Kessler Doctrine

  • Kessler Doctrine Creates Limited Trade Right Authorizing Post-Judgment Acts That Otherwise Might Constitute Infringement: Claim preclusion does not extend to post-judgment acts of infringement, whether or not same or different product. Brain Life (Fed. Cir. 03/24/14) (applying 9th law); Mentor Graphics (Fed. Cir. 03/16/17) (same; distinguishing Foster (Fed. Cir. 09/27/91) (claim preclusion barring invalidity challenge extends to later accused product if “essentially the same” as product determined to infringe)). But Kessler (U.S. 05/13/1907) doctrine does bar allegation of infringement against materially same products post judgment (even where issue preclusion does not apply): “Simply, by virtue of gaining a final judgment of noninfringement in the first suit—where all of the claims were or could have been asserted against Elekta—the accused devices acquired a status as noninfringing devices, and Brain Life is barred from asserting that they infringe the same patent claims a second time.” Brain Life (Fed. Cir. 03/24/14) (applying 9th Cir. law). Kessler is a necessary supplement to claim and issue preclusion; it grants a “‘limited trade right’ that attaches to the product itself” and “‘bars a patent infringement action against a customer of a seller who has previously prevailed against the patentee because of invalidity or noninfringement of the patent.’” Speedtrack (Fed. Cir. 06/30/15) (aff’g Summ. J. of no equivalents infringement where accused product was not materially different from one found not to literally infringement in suit against a different user of that product; rejecting argument that Kessler right assertable only by product supplier not its customers.) Cf. Rubber Tire (U.S. 02/24/1914) (“It is a right which attaches to its product — to a particular thing — as an article of lawful commerce, and it continues only so long as the commodity to which the right applies retains its separate identity. If that commodity is combined with other things in the process of the manufacture of a new commodity, the trade right in the original part as an article of commerce is necessarily gone. So that when other persons become manufacturers on their own behalf, assembling the various elements and uniting them so as to produce the patented device — a new article — it is manifest that the respondent cannot insist upon their being protected from suit for infringement by reason merely of its right to make and sell, and the fact of its having made and sold, some component part of that article.”); Simpleair (Fed. Cir. 03/12/18) (if cause of action on continuation patents is barred under claim preclusion for alleged infringements before earlier judgment, then also barred under Kessler doctrine for provision of essentially same services post judgment). But see Mentor Graphics (Fed. Cir. 03/16/17) (Kessler doctrine does not apply to a defendant who takes a license, leading to dismissal of the suit with prejudice but who not adjudicated as an infringer, and then who later terminates its license and is sued for post-termination infringements). See Crouch, “Resorbing Patent Law’s Kessler Cat into the General Law of Preclusion” (01/03/2022) (arguing for ending the Kessler doctrine in favor of traditional issue and claim preclusion doctrines).
  • Dismissal With Prejudice Can Trigger Kessler Doctrine Even Without Issue Being Actually Litigated: Kessler doctrine extends claim preclusion to post-judgment actions even where there was no judgment of non-infringement or invalidity. In re PersonalWeb (Fed. Cir. 06/17/20) (aff’g application of Kessler doctrine in favor of Amazon’s customers for use, etc. of Amazon S3 storage service after dismissal with prejudice (without fact findings) of earlier action against Amazon alleging infringement by S3; distinguishing Mentor Graphics); Askan (Fed. Cir. 06/21/23) (non-precedential) (aff’g Summ. J. under Kessler where first action dismissed with prejudice for discovery abuses and patent owner did not create material fact dispute as to whether products in new suit were essentially the same).

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