ABA supports use of 'Kessler doctrine' to discourage patent trolls
In 1907, the U.S. Supreme Court held in Kessler v. Eldred that after Eldred unsuccessfully sued Kessler for infringing his patent for an electrical cigar lighter, he couldn’t sue Kessler’s customers or Kessler, who intervened on their behalf, for infringing his patent on the same product.
In advocating for Resolution 509, which supports the use of the Kessler doctrine, William LaFuze, a Section of Intellectual Property Law delegate to the House of Delegates, noted the longevity of the doctrine’s use.
The Kessler doctrine is unique to patent law and distinct from claim preclusion and issue preclusion, two other defenses that apply generally to civil litigation claims, according to the report that accompanies the resolution. It fills a “gap” left by claim preclusion and issue preclusion, which could allow a patent owner to bring another lawsuit against a product that was already found not to have infringed a patent.
“This resolution applies only to patent litigation and cases, so those of you who aren’t patent litigation lawyers can relax,” LaFuze said. “Those of you who are patent litigation lawyers can also relax. This resolution is not controversial … our entire purpose of moving this resolution is to establish a well-developed core principle in current jurisprudence.”
LaFuze pointed out that the U.S. Court of Appeals for the Federal Circuit, which hears appeals on patent cases, has followed the Kessler doctrine over the past decade. However, he added, the Supreme Court recently showed interest in a case involving the doctrine.
Could it come before the high court?
In 2020, the Federal Circuit affirmed a California federal court’s decision that information technology company PersonalWeb Technologies could not sue Amazon’s customers for infringing one of its products after asserting the same infringement claims against Amazon in an earlier lawsuit in Texas.
In that case, PersonalWeb stipulated the dismissal of all its claims against Amazon with prejudice, and the court entered final judgment against PersonalWeb. While PersonalWeb argued the dismissal did not represent an adjudication of noninfringement and was insufficient to trigger the Kessler doctrine, the Federal Circuit disagreed.
“We have characterized the Kessler doctrine as granting a ‘limited trade right’ that attaches to the product itself,” the Federal Circuit said in its opinion. “The scope of that right is not limited to cases involving a finding of non-infringement that was necessary to the resolution of an earlier lawsuit, but extends to protect any products as to which the manufacturer established a right not to be sued for infringement.”
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PersonalWeb filed a cert petition with the Supreme Court, which invited the acting solicitor general to file a brief in the case. The Supreme Court ultimately denied PersonalWeb’s petition in May.
“We don’t know that another case is not going to come up with the same issue about the Kessler doctrine,” LaFuze said. “We believe the ABA should have policy in the form of this resolution that tracks the core issues in the Kessler doctrine, that would continue to promote the vitality of this doctrine.”
The House of Delegates overwhelmingly passed the measure. With its approval, the Section of Intellectual Property Law can support amicus curiae brief in future judicial proceedings involving this issue. It also allows the ABA to advocate for and support related legislation.