Amazon Users’ Patent Win Doesn’t Need Top Court Review, DOJ Says

The U.S. Supreme Court shouldn’t review a patent owner’s request to rein in the Federal Circuit’s expansion of a doctrine blocking it from suing 80 Amazon.com Inc. customers for infringement, according to a brief submitted by the solicitor general.

The U.S. Court of Appeals for the Federal Circuit erred in its use of the Kessler doctrine to bar PersonalWeb Technologies LLC from suing customers after the company voluntarily dismissed an earlier case accusing Amazon itself of infringing PersonalWeb’s data management patents, the solicitor general argued. The doctrine comes from a 1907 Supreme Court case that prevented patent infringement action against a customer of a seller who previously beat a patent infringement suit.

However, PersonalWeb’s case doesn’t warrant more review because the judgment at issue was entered after a voluntary dismissal, according to the brief.

PersonalWeb had sued 80 website operators for infringing the same five patents it had previously sued the tech giant for infringing. PersonalWeb dropped its original suit against Amazon after discovering that moving forward wouldn’t make financial sense.

The Federal Circuit found that the allegations of infringement that occurred after the dismissal of the case against Amazon were barred by the Kessler doctrine. PersonalWeb, in its petition for Supreme Court review, argued that the doctrine didn’t apply because the voluntary dismissal didn’t decide any issues, and called it an “anachronism.”

The Federal Circuit was wrong to treat the Kessler doctrine as a “freestanding basis for precluding the petitioner’s claims against Amazon’s customers,” the solicitor general said. Still, if the court had applied other principles that would bar previously litigated claims or issues, the same outcome would’ve occurred, the solicitor general said.

“And, contrary to petitioner’s contention, Kessler is not a relic, but rather announced principles that remain legally sound and practically significant,” according to the brief. “The Federal Circuit’s understanding of Kessler as a gap-filling doctrine applies only in limited circumstances that are unlikely to occur with any frequency.”

The respondents in the case include Patreon Inc., Vox Media Inc., and Vice Media LLC.

MoloLamken LLP represents PersonalWeb. Fenwick & West LLP represents the respondents.

The case is PersonalWeb Technologies LLC v. Patreon Inc., U.S., No. 20-1394, 4/8/22.