Posts Tagged: "Kessler doctrine"

Federal Circuit Bars New Suits Against Amazon Under Claim Preclusion, Kessler Doctrine

The U.S. Court of Appeals for the Federal Circuit today ruled in In Re PersonalWeb Technologies, Inc. that a district court’s 2014 dismissal of a patent infringement suit brought by PersonalWeb against Amazon barred PersonalWeb’s new infringement actions against Amazon and its customers. The Court affirmed the United States District Court for the Northern District of California’s finding that the lawsuits against Amazon and its customers—Patreon, Vox Media, Dictionary.com, Vice Media, Oath, Inc., Buzzfeed, Popsugar and Ziff Davis—were barred in part by a 1907 Supreme Court ruling, Kessler v. Eldred, which said that a losing patent holder cannot later assert the same patents against the winning party’s customers.

SimpleAir v. Google: Consider the Scope of the Claims in a Claim Preclusion Analysis

On March 12, 2018, the Federal Circuit held in SimpleAir, Inc. v. Google LLC, No. 2016-2738, that a terminal disclaimer does not raise a presumption that a continuation patent is patentably indistinct from its parent patent.  In SimpleAir, the issue was whether an action asserting infringement of two patents was barred by claim preclusion or the Kessler doctrine when the same activity had been judged not infringing in earlier litigations involving other patents in the same family, all of which were related as continuations, and all of which included terminal disclaimers to the ultimate parent patent.  The Federal Circuit held that notwithstanding the terminal disclaimers, the district court could not simply rely on a presumption that the claims were patentably indistinct, and instead must compare the scope of the claims to determine whether claim preclusion or the Kessler doctrine applies. 

Preclusion Applies Only If Scope of Patent Claims in Both Suits are Essentially the Same

In SimpleAir v. Google, The district court found claim preclusion applied because the patents at issue had the same title and specification as previously litigated patents, SimpleAir files a terminal disclaimer to overcome obviousness-type double patenting, and Simple Air could have included the newly asserted patents in its previous actions. However, the district court never compared the claims of the patent at issue to the claims of the previously litigated patents.

Federal Circuit says Kessler Doctrine did not preclude claims asserted against Google

Google also argued that, if claim preclusion did not bar SimpleAir’s infringement claims, than the Kessler doctrine barred them. This doctrine, stemming from a 1907 decision by the U.S. Supreme Court in Kessler v. Eldred, has been used to protect a party’s rights to continue a practice accused of infringement if an earlier judgment found that essentially the same activity did not infringe the patent. While the Federal Circuit has relied on the Kesler doctrine to bar patent assertion against similar activities or products found not to infringe, the doctrine has not been applied to bar a broader set of rights than would have been barred by claim preclusion.