Digest of Speedtrack, Inc. v. Office Depot, Inc.No. 2014-1475 (Fed. Cir. June 30, 2015) (precedential). On appeal from the N.D. Cal. Before Prost, Mayer, and O’Malley.

Procedural Posture: Plaintiff patentee appealed from district court’s summary judgment finding, inter alia, Plaintiff’s claims barred by the Kessler doctrine. CAFC affirmed.

Kessler Doctrine: Plaintiff asserted the patent in suit against a customer of the “IAP software.” In a prior lawsuit, plaintiff had asserted the same patent with respect to the same IAP software, and the software manufacturer had obtained final judgment of non-infringement. The Federal Circuit held that plaintiff’s claims in the present case were barred by the Kessler doctrine, which “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.” In an action against a manufacturer or supplier of an allegedly infringing device, the Federal Circuit explained, when the alleged infringer demonstrates noninfringement, “the specific accused device(s) acquires the ‘status’ of a noninfringing device vis-à-vis the asserted patent claims.” Here, the IAP software had acquired the status of a noninfringing product in the prior case.

The Federal Circuit further held that not only the manufacturer, but also the customer can invoke the Kessler doctrine. The rationale underlying the Kessler doctrine, the Federal Circuit held, would support permitting customers to assert it as a defense to infringement claims: Allowing customers to assert a Kessler defense would be consistent with the goal of protecting the manufacturer’s right to sell an exonerated product free from interference or restraint. The right granted by the Kessler doctrine attaches to the non-infringing product, the Federal Circuit explained, and is a right designed to protect the unencumbered sale of that product.