Kessler Doctrine: Does it Survive?

In May 2020, the Supreme Court decided the trademark case of Lucky Brand  Dungarees, Inc. v. Marcel Fashions Grp., Inc., 140 S. Ct. 1589 (2020) and expressly refused to extend preclusion doctrines in the trademark realm beyond their traditional bounds set by the doctrines of issue and claim preclusion.

One month later, the Federal Circuit decided In re PersonalWeb Techs. LLC,  2020 WL 3261168 (Fed. Cir. June 17, 2020) and happily extended a quirky patent law preclusion doctrine beyond those traditional bounds.  See Kessler v. Eldred, 206 U.S. 285 (1907) (Kessler doctrine). In its decision, the Federal Circuit explained its expansion of Kessler “fills the gap left by claim and issue preclusion.” see Brain Life, LLC v. Elekta Inc., 746 F.3d 1045 (Fed. Cir. 2014).

Now, PersonalWeb has petitioned the Supreme Court for writ of ceritorari — pointing largely to Lucky Brands for its foundation. Questions Presented:

This Court has repeatedly held that, absent guidance from Congress, courts should not create special procedural rules for patent cases or devise novel preclusion doctrines that stray beyond the traditional bounds of claim and issue preclusion. Nonetheless, over the past seven years, the Federal Circuit has created and then repeatedly expanded a special, patent-specific preclusion doctrine that it attributes to this Court’s 114-year-old decision in Kessler v. Eldred, 206 U.S. 285 (1907)—a case this Court has not cited for almost 70 years. The Federal Circuit now routinely applies its so-called “Kessler doctrine” to reject suits like this one that would survive under ordinary preclusion principles.

The questions presented are:

1. Whether the Federal Circuit correctly interpreted Kessler to create a freestanding preclusion doctrine that may apply even when claim and issue preclusion do not.

2. Whether the Federal Circuit properly extended its Kessler doctrine to cases where the prior judgment was a voluntary dismissal.

The petition does two things here: (1) calls into question whether Kessler still applies and (2) even if Kessler itself is still good law, explains how the Federal Circuit has improperly extended the doctrine in cases such as PersonalWeb and Brain Life.

Read the petition: PersonalWeb petition

Read my prior post below:

Preclusion: Expanding Upon the Kessler Doctrine


2 thoughts on “Kessler Doctrine: Does it Survive?

  1. 2

    Curious, if PersonalWeb’s cert petition is “pointing largely to [the recent Sup. Ct.] Lucky Brands for its foundation,” why does not either “Question Presented” argue that inconsistency?

  2. 1

    PersonalWeb was robbed (and their brief is superb).

    The CAFC’s misuse and misapplication of the Kessler Doctrine is just the latest innovation-killing rabbit they’ve pulled out of their patent-hating hat.

    They might as well just tape a big sign across their courtroom doors proclaiming:

    “Go away! No patents for you!”

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