Been There, Done That: Kessler Doctrine Bars New Infringement Theories on Already Litigated Claims

Editor: Lauren J. Dreyer

In SpeedTrack v. Office Depot, No. 14-1475 (Fed. Cir. June 30, 2015), the Federal Circuit affirmed a finding that the Kessler doctrine precluded SpeedTrack from asserting its patent’s claims against Office Depot and others.

The Kessler doctrine gives a prevailing party the right to sell its products to customers without fear of continued challenges based on the same patent. In a previously litigated case, SpeedTrack asserted that Walmart used software owned by Oracle that allowed website visitors to search for products, but the district court found no literal infringement. In this dispute, SpeedTrack asserted similar claims against the accused infringers, including a new doctrine of equivalents theory.

The Federal Circuit held that “it is Oracle’s right that its customers should . . . be let alone by SpeedTrack, and it is SpeedTrack’s duty to let them alone.”  And even though SpeedTrack had not asserted the doctrine of equivalents in the Walmart case, the Court held that the Kessler doctrine barred not only the assertion of new claims, but new theories involving the same claims, such as the doctrine of equivalents.


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