Resorbing Patent Law’s Kessler Cat – Request for Comments

I have a new draft article on the Kessler Doctrine co-authored with my former student Homayoon Rafatijo and welcome comments and suggestions before it is formally published later this month.

Kessler is a 1907 Supreme Court decision that we argue should be seen as simply implementing defensive issue preclusion. At the time, the case involved some additional novelties having to do with confusion over both the new appellate federal court structure and the scope of potential anti-suit injunctions. Meanwhile, the scope of issue and claim preclusion have expanded with the merger of law & equity, creation of the Federal Rules Rules of Civil Procedure, as well as the expansion of Declaratory Judgment jurisdiction.

As issue and claim preclusion expanded, Kessler fell from fashion and was basically unneeded and unused for several decades. But, since 2014, the Federal Circuit has steadily expanded Kessler as a patent law specific form of preclusion that is separate and distinct from the traditions of claim and issue preclusion.  We argue argue this approach is wrong.

The cat: We parallel our article alongside a short parable from Paulo Coelho titled the “Importance of the Cat in Meditation.”  The basic punchline is that once people started thinking the cat was an important element of mediation, it was easier for them to scientifically explain the importance rather than let go of the meaningless attachment.  We argue that the Kessler Doctrine is following the same pathway, the Federal Circuit’s explanations do not make sense, and that it is time to resorb the doctrine into the general law of preclusion.

Thanks! Dennis Crouch

41 thoughts on “Resorbing Patent Law’s Kessler Cat – Request for Comments

  1. 6

    Off topic, but I just saw this fun little animation today and wanted to share.

    link to

    Did you know that:
    * until 1988, the Soviet patent office was receiving more applications each year than the USPTO;
    * from 1995 to 2000, the Korean patent office was receiving more applications each year than the EPO; and
    * the USPTO did not overtake the Japan patent office in total applications received each year until 2006?

    These were all surprising facts to me (shows what I know).

    1. 6.1

      They are surprising because they just did not fit into the Big Corp “Oh N0es Tr011s” propaganda.

      By the way (and opposite Paul’s laments below), the “Oh N0es Tr011s” propaganda was never about protecting Joe consumer and has always been about protecting Big Corp and the Efficient Infringer cabal.

  2. 5

    the [patent eligible subject matter jurisprudence] is following the same pathway, the Federal Circuit’s explanations do not make sense
    Fixed it. Seriously, the Federal Circuit’s explanations are just cover for what they want to do. This court appears to be intellectually dishonest.

  3. 4

    Totally off-topic, but in In re HP yesterday the CAFC granted mandamus to the ED Tex ordering transfer to ND Cal. The motions panel that granted the order was comprised of “PROST, Chief Judge, NEWMAN and LOURIE, Circuit
    Judges.” Evidently, someone needs to change the macros on Peter Marksteiner’s word processor, because Prost has not been Chief Judge for months now.

    1. 4.1

      “Prost has not been Chief Judge for months now.”

      Some innovation cancers . . . prove tougher than others to excise.

      Peter, please complete the exorcism.

  4. 1

    Just a comment re “privies in “suit between the parties or their privies.” Since “privies” is also part of the reexam and IPR estoppel statute scope, I had previously found that legal term to be poorly defined in general. But here, if we are talking about customers selling the same products sold them by the original defendant [not just a component], and being sued on the same patent, that does seem to me that they ought to to be considered “privies?” But how about the fairly common reverse situation, of patent owners deliberately only suing customers?

    1. 1.1

      Thanks Paul. The term is becoming more solid, but for many years it was poorly defined, especially as courts were wanting to extend the scope of issue preclusion but had not yet released the mutuality requirement.

    2. 1.2

      Pom Pom Paul is at it again with the Efficient Infringer intonation that somehow selective choice of who to enforce against is necessarily some type of “bad thing,” as opposed to remarking that patent infringement — by anyone — remains patent infringement.

      Here’s a clue: don’t infringe.

      1. 1.2.1

        Normal customers buying commercial products obviously normally have no financially realistic way of even knowing if they might be infringing some patent or not for every product they buy. Extensive infringement or RTU searches for all aspects of a product by its purchasers is even more unrealistic than your insistence that one is entitled to a costly IPR type prior art search level from a PTO examiner for their few hundred dollars.
        The reason some patent owners sue customers rather than manufacturers is because they know those customers do not have the extensive resources needed to defend against a patent suit. Maybe you think that is a great idea, but the only relevant question is what the courts and Congress think.


          It is not I who thinks that there is no such thing as a “consumer-get-out-of-patent-infringement card.”

          Put those pom-poms down.


            Yes, “a” and thanks for the hotlink to that Baker Botts article, which notes that “In In re PersonalWeb, the Federal Circuit affirmed the district court’s finding that a prior with-prejudice dismissal against a manufacturer operated as a [issue preclusion?] bar to subsequent litigation against the customers of the product that was previously at issue.” Also noting that there is a pending cert petition in that same case, which makes the subject article by Dennis and Homayoon Rafatijo especially timely and relevant.


            End-consumers-users almost never get sued for patent infringement only because the recoverable damages would not cover the legal expenses of suing. Threatening to sue a lot of small retail customers unless they take licenses can be lucrative, but has triggered FTC actions and several state law statutes attacking it.


              Does NOT answer the point:

              Let’s put it another way, do YOU believe that there is/should be a “consumer-get-out-of-patent-infringement card.”

              I know that you pom-pom for the other end of the spectrum (the Efficient Infringer side), but are you anti-patent on the other side of the spectrum as well?


                No, that is not my personal opinion. E.g., what if the “consumer” was buying a ten million dollar special order machine worth suing?
                But I do not understand why you and others continue to think that expressing mere unsupported personal opinions on this blog as to what They think the law Should be is of any value to anyone? [And possibly miss-leading to lay readers.] Like the dozens of erroneous personal opinions here over the years that IPRs are going to be struck down as unconstitutional [re various cert attempts]. Misleading some readers into thinking they would not need to learn IPR realities and change some of their practices. It does nothing to contribute to useful patent law learning, or Congressional changes.

                1. Where in the world do you think that my point is some type of “ mere unsupported personal opinion

                  Your rebuttal is rejected. That is beyond misinformation and is plainly false information.

                2. Apparently the George Carlin filter won’t let my message get through, so in pieces:

                  As to the Constitutional matters, your view is utter
                  seeing as you were always too much of a
                  to even engage in the merits of any such discussion, and would only
                  from the sidelines.

                3. The entire “sink or swim” one defect discussion has very real legal merit — but YOU wouldn’t understand that because you can only cheerlead and not join in any meaningful discussion.
                  That you would attempt to denigrate those that would seek to discuss such legal points is downright shameful.
                  If you cannot arm yourself to engage, then kindly STFU.

                4. I realize your reply ended up on the wrong sub-thread, but the only hill you may find yourself on is Lemming Hill.


                Customers who buy OTS goods and services should absolutely be shielded from patent infringement lawsuits. If you want your injury redressed, sue the manufacturer or provider.

                1. … and to prove my point (and draw a noticeable LACK of comment from Paul), Osita pipes in with his feelings that simply are not in accord with the law.

                  Sorry squirrel, there is no such anti-patent provision for “type of infringer,” and there shouldn’t be.

                2. I know it is not what the law is. But I will unbashful in stating that it is what the law should be.

                3. There is zero credible reason for such a carve-out to the very nature of the patent right.

                  Sure, you are unabashed in thinking this “should be,” but you should be bashed for your complete lack of understanding of what a patent right IS.

                4. And OSita, let’s see you put your own property at stake and let any and everyone (individuals) simply take and violate your property rights.

                  How fast would you backtrack when it is Your stuff?

                5. There is zero credible reason that a patent owner should be able to sue a purchaser of an OTS good or service without first suing the manufacturer or provider. None. Zip. Zero.

                  A patent is an artificial right; its bounds are defined by the public that grants it. The public can hem those rights when necessary for the good of the public. There is nothing inalienable about patents.

                  Property comes with easements all the time. Rarely are property rights absolute. Do I want people to loudly walk on a side walk next to my property? No, not really, but I also enjoy walking on sidewalks that go through other people’s property so I understand that having a sidewalk is a necessary part of being a member of the community.

                6. This is pure error: “There is zero credible reason that a patent owner should be able to sue a purchaser of an OTS good or service without first suing

                  You seek to insert a caveat where NONE exists as to the legal right at the heart of the matter.

                  I suggest that you stop, and go learn what the patent right means. You are chasing something other than the patent right.

                7. As to: “its bounds are defined by the public that grants it.

                  You mouth words that you do not understand. You rail against the very bounds set forth in our Constitution, and enacted by the designated branch of the government.

                  Inform yourself please prior to your next rant.

                8. Point to where in the Constitution the bounds of a patent right is specified. I’ll wait. Here is a hint: it’s not in Article I, Section 8, Clause 8.

                9. Your hint is in error as that section is not only geared to the delegation of authority, it is also the delegation of authority for the type of right.

                  The word “exclusive” does — and must — carry meaning.

                  That you may not like that is strictly a You problem.

                10. The patentee would still has the right to exclude. Cut off the supplier, cut off the supply. It would only require them to calibrate who to exercise this exclusionary right on. Thus, they would still have an exclusive right.

                11. You are playing 1984 with that word (given that there is no basis to allow ANYONE to infringe that exclusivity).

                  But you just be you and keep digging.

                12. Customers who buy OTS goods and services should absolutely be shielded from patent infringement lawsuits… I know it is not what the law is[, b]ut… it is what the law should be.

                  As Ken White of the PopeHat Report likes to say, anyone can sue anyone else for any reason, but that does not mean that they can win. It is hopeless to want OTS customers to be shielded from lawsuits. The most that one can reasonably hope is to make the likelihood of victory from such a suit so slight that the would-be plaintiffs lose interest.

                  As far as that goes, things look pretty good. The efforts of the various state AGs (especially VT) to enforce state consumer protection laws against MPHJ have surely encouraged those who might plan such a troll strategy to think twice.

                13. Greg’s mindset here is exactly the Efficient Infringer’s mindset and any decent (registered) patent attorney should be appalled at that mindset.

                  Again the hint: don’t infringe.

                  Views by both Pom Pom Paul and Big Pharma Greg only lead to the Sport of Kings mindset and set out disrespect to the patent system.


              Threatening to sue a lot of small retail customers unless they take licenses can be lucrative…

              What is the evidence that this is a lucrative strategy? How certain are we that MPHJ was a net earner and not a net loser after all was said and done?


                Well Greg, one might look at the “go after the little guy” model that Big Media uses, but that might cause you some more cognitive dissonance.

Comments are closed.