Simpleair, Inc. v. Google LLC

United States Court of Appeals

for the Federal Circuit

______________________

SIMPLEAIR, INC.,

Plaintiff-Appellant

v.

GOOGLE LLC,

Defendant-Appellee

______________________

2016-2738

______________________

Appeal from the United States District Court for the

Eastern District of Texas in No. 2:16-cv-00488-JRG,

Judge J. Rodney Gilstrap.

______________________

Decided: March 12, 2018

______________________

JOHN JEFFREY EICHMANN, Dovel & Luner, LLP, Santa

Monica, CA, argued for plaintiff-appellant. Also repre-

sented by GREGORY S. DOVEL, SIMON FRANZINI.

CHARLES KRAMER VERHOEVEN, Quinn Emanuel Ur-

quhart & Sullivan, LLP, San Francisco, CA, argued for

defendant-appellee. Also represented by CARL G.

ANDERSON, JORDAN ROSS JAFFE; MILES DAVENPORT

FREEMAN, Los Angeles, CA.

______________________

Before LOURIE, REYNA, and CHEN, Circuit Judges.

2 SIMPLEAIR, INC. v. GOOGLE LLC

LOURIE, Circuit Judge.

SimpleAir, Inc. (“SimpleAir”) appeals from the order

of the United States District Court for the Eastern Dis-

trict of Texas dismissing SimpleAir’s complaint under

Rule 12(b)(6) as barred by claim preclusion and the Kess-

ler doctrine. SimpleAir, Inc. v. Google Inc., 204 F. Supp.

3d 908, 915 (E.D. Tex. 2016) (“SimpleAir IV”). Because

the district court erred by presuming that terminally-

disclaimed continuation patents are patentably indistinct

variations of their parent patents without analyzing the

scope of the patent claims, we vacate the district court’s

order and remand for further proceedings consistent with

this opinion.

BACKGROUND

SimpleAir initiated a series of patent infringement

lawsuits over six years ago against Google’s Cloud Mes-

saging and Cloud to Device Messaging Services (collec-

tively, “GCM”). Thus far, the litigation has resulted in

three judgments of noninfringement in Google’s favor.

Each case has involved one or more patents from a family

of patents owned by SimpleAir directed to push notifica-

tion technology. The question in this case is whether

claim preclusion or the Kessler doctrine bars SimpleAir’s

fourth suit asserting additional terminally-disclaimed

continuation patents from this family against Google and

its GCM services.

The parent patent of this family is U.S. Patent

6,021,433 (the “’433 patent”), which was filed January 24,

1997, claimed priority from a provisional application filed

January 26, 1996, issued February 1, 2000, and expired

January 24, 2017. The rest of SimpleAir’s patents assert-

ed against GCM are children of the ’433 patent linked by

continuation applications (collectively, the “child pa-

tents”). The child patents all share a common specifica-

tion with the ’433 patent and also claim priority from the

1996 provisional application. During prosecution, Sim-

SIMPLEAIR, INC. v. GOOGLE LLC 3

pleAir filed terminal disclaimers for each child patent to

overcome obviousness-type double patenting rejections at

the U.S. Patent and Trademark Office (“PTO”). The

terminal disclaimers require the child patents to expire

on the same day as the ’433 patent, see 35 U.S.C. § 253(b),

and also require the child patents to be “commonly owned

with the application or patent which formed the basis” for

the obviousness-type double patenting rejection, see 37

C.F.R. § 1.321(c)(3). The child patents issued over the

course of eight years between 2006 and 2014.

SimpleAir filed its first lawsuit against Google in

2011, asserting the ’433 patent and a continuation, U.S.

Patent 7,035,914 (the “’914 patent”). SimpleAir dismissed

its action based on the ’433 patent with prejudice, but the

parties proceeded to trial on the ’914 patent. A jury found

the ’914 patent not invalid and infringed by Google’s GCM

services, see SimpleAir, Inc. v. Google Inc., 70 F. Supp. 3d

747, 752 (E.D. Tex. 2014), but on appeal we reversed the

district court’s claim construction ruling, vacated the jury

verdict, and remanded with instructions to enter judg-

ment of noninfringement, SimpleAir Inc. v. Sony Ericsson

Mobile Commc’ns AB, 820 F.3d 419, 421 (Fed. Cir. 2016)

(“SimpleAir I”).

While SimpleAir I was proceeding, SimpleAir filed

two more complaints asserting that GCM infringed two

other continuations, U.S. Patents 8,572,279 (the “’279

patent”) and 8,601,154 (the “’154 patent”). The district

court consolidated the actions, and SimpleAir dismissed

its action based on the ’154 patent with prejudice. The

parties proceeded to trial on the ’279 patent, the jury

returned a verdict of noninfringement, and the district

court entered final judgment in accordance with the

verdict, SimpleAir, Inc. v. Google Inc., No. 2:14-cv-11

(E.D. Tex. Nov. 4, 2015) (“SimpleAir II/III”).

The present case arises from SimpleAir’s fourth com-

plaint asserting infringement by GCM, this time of U.S.

4 SIMPLEAIR, INC. v. GOOGLE LLC

Patents 8,639,838 (the “’838 patent”) and 8,656,048 (the

“’048 patent”). Like the ’914, ’154, and ’279 patents, the

’838 and ’048 patents are linked with the ’433 patent by

continuation applications and are terminally-disclaimed

to it.

The district court dismissed both complaints under

Rule 12(b)(6) as barred by claim preclusion and the Kess-

ler doctrine. SimpleAir IV, 204 F. Supp. 3d at 915. The

only element of claim preclusion in dispute was whether

the present case and the previous cases involved the same

claim or cause of action. The district court held that they

did because the ’838 and ’048 patents shared the same

title and specification with the previously adjudicated

continuation patents, and the filing of a terminal dis-

claimer to overcome the PTO’s obviousness-type double

patenting rejections indicated that the PTO believed the

content of the patents in suit to be patentably indistinct

from the earlier patents. Id. at 913. That led the district

court to conclude that the underlying invention claimed

by the various child patents was the same. Id. In its

order, the district court never compared the claims of the

’838 and ’048 patents to those of the previously adjudicat-

ed patents. Id.

Furthermore, the district court found that there was

no dispute that SimpleAir could have included the ’838

and ’048 patents in SimpleAir II/III, as the ’838 patent

issued before, and the ’048 patent issued only a few days

after, SimpleAir filed its first amended complaint in that

case. Id. at 914. By failing to amend its complaint to

include these two patents, and instead filing a new suit

just after our decision in SimpleAir I, the district court

found that SimpleAir made a “strategic decision.” Id.

The district court also observed that the PTO’s regu-

lation requiring common ownership of terminally-

disclaimed continuation patents and their parent patents

functioned to prevent successive lawsuits brought by

SIMPLEAIR, INC. v. GOOGLE LLC 5

multiple assignees, id. at 913 (citing In re Hubbell, 709

F.3d 1140, 1145 (Fed. Cir. 2013)), but did not prevent

successive suits by a single patentee. The district court

reasoned that traditional claim preclusion principles

could rectify this apparent inconsistency. Id. at 914.

Additionally, the district court held that the Kessler

doctrine barred SimpleAir’s assertion of the ’838 and ’048

patents against Google’s provision of GCM services occur-

ring after the judgment in SimpleAir II/III, although

claim preclusion did not. Id.

SimpleAir timely appealed. We have jurisdiction un-

der 28 U.S.C. § 1295(a)(1).

DISCUSSION

SimpleAir principally argues on appeal that claim

preclusion only applies when the earlier and later cases

involve the same cause of action, and “[e]ach patent

asserted raises an independent and distinct cause of

action.” Kearns v. Gen. Motors Corp., 94 F.3d 1553, 1555

(Fed. Cir. 1996). Thus, SimpleAir asserts that the district

court erred in barring assertion of the ’838 and ’048

patents under claim preclusion, as those patents were

never litigated in SimpleAir’s prior actions against

Google’s GCM services. SimpleAir contends that a com-

mon specification and a terminal disclaimer are not

sufficient to presume that distinct patents cover essential-

ly the same invention.

Google responds that, notwithstanding the fact that

the ’838 and ’048 patents were not previously litigated,

claim preclusion still bars SimpleAir’s latest action.

According to Google, SimpleAir IV involves the same

accused GCM services, as well as materially similar

continuation patents sharing a common specification with

and terminal disclaimers to a common parent patent, as

in SimpleAir I–III. This factual overlap, Google argues,

confirms that the ’838 and ’048 patents are part of the

6 SIMPLEAIR, INC. v. GOOGLE LLC

same cause of action already decided in Google’s favor,

regardless of the precise claim language. Consequently,

Google contends that the district court properly applied

claim preclusion to foreclose SimpleAir’s suit.

I.

Under the doctrine of claim preclusion, “a judgment

‘on the merits’ in a prior suit involving the same parties or

their privies bars a second suit based on the same cause of

action.” Lawlor v. Nat’l Screen Serv. Corp., 349 U.S. 322,

326 (1955). Unlike the related doctrine of issue preclu-

sion, claim preclusion forecloses successive litigation of

the same cause of action whether or not relitigation of the

cause of action involves the same issues as the earlier

suit. New Hampshire v. Maine, 532 U.S. 742, 748–49

(2001). 1

In assessing claim preclusion, we apply the law of the

regional circuit in which the district court sits, here the

Fifth Circuit. See, e.g., Senju, 746 F.3d at 1348. The test

for claim preclusion in the Fifth Circuit has four ele-

ments: (1) the parties in the later action are identical to,

or in privity with, the parties in the earlier action; (2) the

judgment in the earlier case was rendered by a court with

proper jurisdiction; (3) there has been a final judgment on

the merits; and (4) the earlier case and later case involve

the same cause of action. Duffie v. United States, 600

F.3d 362, 372 (5th Cir. 2010). The only disputed element

1 When analyzing claim preclusion, courts often use

“claim” and “cause of action” interchangeably. See Senju

Pharm. Co., Ltd. v. Apotex Inc., 746 F.3d 1344, 1349 (Fed.

Cir. 2014). For clarity, “other than in referring to the

name of the doctrine itself, we will use the longer de-

scriptor ‘cause of action’ when discussing claim preclusion

issues; the term ‘claim’ will be used to refer to patent

claims.” Id.

SIMPLEAIR, INC. v. GOOGLE LLC 7

in this appeal is whether SimpleAir IV involves the same

cause of action as the prior cases. SimpleAir IV, 204

F. Supp. 3d at 912; Appellant Br. 9–14; Appellee Br. 15.

“[W]hether a particular cause of action in a patent

case is the same as or different from another cause of

action has special application to patent cases, and we

therefore apply our own law to that issue.” Senju, 746

F.3d at 1348. Our cases generally follow the Restatement

(Second) of Judgments (1982) (hereinafter Restatement),

which defines a cause of action based on the transactional

facts from which it arises. Senju, 746 F.3d at 1349;

Acumed LLC v. Stryker Corp., 525 F.3d 1319, 1323–24

(Fed. Cir. 2008) (citing Restatement § 24); see also Hou-

ston Prof’l Towing Ass’n v. City of Houston, 812 F.3d 443,

447 (5th Cir. 2016) (also applying the Restatement’s

transactional test). In a patent suit, essential transac-

tional facts include both the asserted patents and the

accused activity. Senju, 746 F.3d at 1349; Acumed, 525

F.3d at 1324. If the overlap between the transactional

facts of the suits is substantial, the later action should

ordinarily be precluded. See Restatement § 24 cmt. b.

However, what facts make up a transaction in a given

case “is not capable of a mathematically precise defini-

tion.” Id.

Because whether a cause of action is barred by claim

preclusion is a question of law, we review de novo the

district court’s dismissal. Acumed, 525 F.3d at 1323; see

also Test Masters Educ. Servs., Inc. v. Singh, 428 F.3d

559, 571 (5th Cir. 2005).

As an initial matter, we agree with Google that claim

preclusion is not foreclosed because SimpleAir asserted

patents in this case that were not before the district court

in SimpleAir I–III. “What factual grouping constitutes a

‘transaction’ . . . [is] to be determined pragmatically,”

Restatement § 24(2), not through a rigid rule that would

prevent courts from evaluating the extent of factual

8 SIMPLEAIR, INC. v. GOOGLE LLC

overlap between cases. We do not interpret the general

statement in Kearns, 94 F.3d at 1555, to be in conflict

with general claim preclusion principles, particularly as

Kearns relied on procedural inadequacies in the earlier

case, id. at 1556, to conclude that claim preclusion did not

apply. While “[o]rdinarily” different patents will raise

different causes of action, Senju, 746 F.3d at 1349 (citing

Kearns, 94 F.3d at 1555), that factor is not dispositive and

does not substitute for the transactional approach con-

sistently followed by this court, see, e.g., id. at 1348–49;

Acumed, 525 F.3d at 1323–24.

However, although we agree with Google that there is

substantial overlap between SimpleAir IV and SimpleAir

I–III, as the asserted patents all share a common specifi-

cation and terminal disclaimer to a common parent,

ultimately we agree with SimpleAir that the overlap

discussed in the record before us is not sufficient to sus-

tain the district court’s holding of claim preclusion.

We begin with the maxim that “it is the claims of the

patent which define the invention.” Altoona Publix Thea-

tres, Inc. v. Am. Tri-Ergon Corp., 294 U.S. 477, 487 (1935)

(collecting cases). While the district court concluded that

“the underlying invention is the same” between the pa-

tents asserted throughout SimpleAir I–IV, it never ana-

lyzed the claims of any patent in making that conclusion.

SimpleAir IV, 204 F. Supp. 3d at 913. For its part, Google

argues that while comparison of the patent claims in-

volved in the earlier and later suits may be necessary in

issue preclusion, such comparison is not necessary in

evaluating claim preclusion. Google primarily relies on

Senju for this proposition. See 746 F.3d at 1353.

In Senju, the patentee in the first case alleged patent

infringement against a defendant, and the district court

held the claims invalid as obvious. Id. at 1347. After-

wards, the patentee amended and added new claims to

the patent in a reexamination proceeding, and then filed a

SIMPLEAIR, INC. v. GOOGLE LLC 9

second action for infringement against the same party.

Id. The district court held the patentee’s second action

claim-precluded by the earlier action because it raised the

same cause of action as the first case, as none of the

claims emerging from reexamination were broader than

their predecessors. Id. at 1348.

On appeal we affirmed, holding that “claims that

emerge from reexamination do not in and of themselves

create a new cause of action that did not exist before.” Id.

at 1352; see Aspex Eyewear Inc. v. Marchon Eyewear, Inc.,

672 F.3d 1335, 1341 (Fed. Cir. 2012). This conclusion

rested in part on 35 U.S.C. § 305, which states “[n]o

proposed amended or new claim enlarging the scope of a

claim of the patent will be permitted in a reexamination

proceeding under this chapter.” Given that statutory

limitation, we rejected the patentee’s argument that it

was necessary in every case to make a detailed compari-

son of the claims. Senju, 746 F.3d at 1352–53.

Unlike Senju, here the district court did not make any

determination of the scope of the ’838 and ’048 claims in

comparison with the patents litigated in SimpleAir I–III.

Furthermore, there is no prohibition on broadening claims

in continuation patents subject to a terminal disclaimer. 2

So unlike the case of reexamined claims, claims of termi-

nally-disclaimed continuation patents could “provide

larger claim scope to a patentee than the patentee had

under” the parent patent. Senju, 746 F.3d at 1353. In

this sense, continuation patents are more similar to

reissue patents, which we have distinguished from reex-

aminations in the claim preclusion context. See Aspex,

672 F.3d at 1341; 35 U.S.C. § 251(d) (“No reissued patent

2 Of course, the continuation cannot add new mat-

ter. See, e.g., Applied Materials, Inc. v. Advanced Semi-

conductor Materials, Inc., 98 F.3d 1563, 1579–80 (Fed.

Cir. 1996).

10 SIMPLEAIR, INC. v. GOOGLE LLC

shall be granted enlarging the scope of the claims of the

original patent unless applied for within two years from

the grant of the original patent.” (emphasis added)).

Here, given the substantively different requirements of

continuation patents as compared to reexaminations, the

district court erred in holding SimpleAir’s latest suit to be

claim-precluded without any comparison of the asserted

claims to the claims involved in SimpleAir I–III.

As the accused activity between two cases must be

“essentially the same” for claim preclusion to apply, see

Acumed, 525 F.3d at 1324, we adopt that standard for

comparison of the claims between asserted patents as

well. Thus, where different patents are asserted in a first

and second suit, a judgment in the first suit will trigger

claim preclusion only if the scope of the asserted patent

claims in the two suits is essentially the same. In apply-

ing that standard to the particular context here, we

conclude that claims which are patentably indistinct are

essentially the same.

Even without any direct analysis of the claims, Google

argues this standard was met here. According to Google,

“the Examiner’s obviousness-type rejection and Sim-

pleAir’s choice to file a terminal disclaimer . . . provided

sufficient evidence that SimpleAir’s terminally-disclaimed

continuation patent claims are not patentably distinct”

from the previously adjudicated claims. Appellant Br. 37.

We disagree with Google that filing a terminal dis-

claimer settles the issue of claim preclusion here. As the

district court correctly observed, the doctrine of obvious-

ness-type double patenting “was developed to ‘prevent a

patent owner from extending his exclusive right to an

invention through claims in a later-filed patent that are

not patentably distinct from the earlier filed patent,’”

SimpleAir IV, 204 F. Supp. 3d at 913 (quoting Procter &

Gamble Co. v. Teva Pharm. USA, Inc., 566 F.3d 989, 999

(Fed. Cir. 2009)). And filing a terminal disclaimer may

SIMPLEAIR, INC. v. GOOGLE LLC 11

obviate an obviousness-type double patenting rejection, 37

C.F.R. § 1.321(c), as it did for the patents at issue, in

exchange for limiting the patent term and alienability of

the resulting continuation patent, see 37 C.F.R.

§§ 1.321(d)(3), 1.321(c)(3). But our cases foreclose the

inference that filing a terminal disclaimer functions as an

admission regarding the patentability of the resulting

claims. See Motionless Keyboard Co. v. Microsoft Corp.,

486 F.3d 1376, 1385 (Fed. Cir. 2007) (“A terminal dis-

claimer is simply not an admission that a later-filed

invention is obvious.”); Ortho Pharm. Corp. v. Smith, 959

F.2d 936, 941 (Fed. Cir. 1992) (rejecting argument that

patent applicant admitted to obviousness-type double

patenting by filing terminal disclaimer); Quad Envtl.

Techs. Corp. v. Union Sanitary Dist., 946 F.2d 870, 874

(Fed. Cir. 1991) (“[T]he filing of a terminal disclaimer

simply serves the statutory function of removing the

rejection of double patenting, and raises neither presump-

tion nor estoppel on the merits of the rejection.”). As a

panel, we lack the authority to deviate from this prece-

dent, and the district court erred by holding otherwise.

Although a terminal disclaimer does not conclusively

show that a child patent involves the same cause of action

as its parent, the terminal disclaimer is still very relevant

to that inquiry. By filing a terminal disclaimer, a patent

applicant waives potentially valuable rights. We do not

lightly presume that patent applicants forfeit the right to

alienate their patents, and in certain cases years of exclu-

sivity, as a mere procedural expedient. Rather, as oc-

curred here, applicants typically file terminal disclaimers

to overcome obviousness-type double patenting rejections.

In construing the scope of claims, we give considerable

weight to statements made by patent applicants during

prosecution in order to overcome examiner rejections.

See, e.g., Alpex Comput. Corp. v. Nintendo Co. Ltd., 102

F.3d 1214, 1220 (Fed. Cir. 1996). We see no reason to

treat terminal disclaimers any differently.

12 SIMPLEAIR, INC. v. GOOGLE LLC

Thus, a terminal disclaimer is a strong clue that a pa-

tent examiner and, by concession, the applicant, thought

the claims in the continuation lacked a patentable distinc-

tion over the parent. But as our precedent indicates, that

strong clue does not give rise to a presumption that a

patent subject to a terminal disclaimer is patentably

indistinct from its parent patents. It follows that a court

may not presume that assertions of a parent patent and a

terminally-disclaimed continuation patent against the

same product constitute the same cause of action. Rather,

the claim preclusion analysis requires comparing the

patents’ claims along with other relevant transactional

facts.

While the district court did not specifically consider

the claims, SimpleAir argues on appeal that the claims in

the ’838 and ’048 patents are materially different from

those claims previously litigated in SimpleAir I-III.

Google argues to the contrary, albeit only in discussing

issue preclusion. The primary difference between the

claims of the ’838 and ’048 patents and those in the prior

litigations is the language “whether the selected remote

computing devices are online or offline to the information

providers of the received data,” ’048 patent col. 32 ll. 36–

38; ’838 patent col. 32 ll. 39–41 (emphasis added), as

compared to “whether said computing devices are online

or offline from a data channel associated with each de-

vice.” ’914 patent col. 33 ll. 34–35 (emphasis added). We

held in SimpleAir I that Google did not infringe as a

matter of law because its GCM system “sends messages

over the same communication path as other Internet

data—it does not use a separate path.” 820 F.3d at 431.

SimpleAir has not presented persuasive argument why

“online or offline to the information providers” is different

from “online or offline from a data channel.” Although

SimpleAir argues that the ’838 and ’048 patents disclose a

service that would notify the user’s computer of newly

available information and events of interest when the

SIMPLEAIR, INC. v. GOOGLE LLC 13

user’s computer is connected to the Internet but not

connected to the particular information provider, based on

the parties’ limited discussion of the claims on appeal, we

do not see how this is a fundamentally different invention

from those patents asserted in the previous suits. The

’838 and ’048 patents still rely on the same previously

asserted communications architecture with two separate

pathways for online and offline communications.

Given these similarities between the ’838 and ’048 pa-

tent claims and those of the previously adjudicated pa-

tents, we leave to the district court’s discretion on remand

whether formal claim construction is necessary to resolve

whether the ’838 and ’048 claims are essentially the same

as, i.e., patentably indistinct from, those in the previously

adjudicated parent patents.

SimpleAir also argues that claim preclusion “does not

bar a cause of action that was never actually asserted in

the prior case,” even if the cause of action could have been

added to the prior case. Appellant Br. 17–18; see Aspex,

672 F.3d at 1344–45 (quoting Gillig v. Nike, 602 F.3d

1354, 1363 (Fed. Cir. 2010)). Because the ’838 and ’048

patents issued after SimpleAir filed its complaints in

SimpleAir II and SimpleAir III, SimpleAir contends that

claim preclusion cannot bar SimpleAir from initiating a

new suit based on those patents.

SimpleAir’s argument rests on the premise that the

’838 and ’048 child patents constitute causes of action

separate from an earlier adjudication of parent patents.

But as discussed above, assertion of each new continua-

tion patent does not necessarily create a new cause of

action. That is in accordance with Aspex, where we held

that new claims emerging from reexamination did not

create new causes of action and were therefore claim-

precluded, 672 F.3d at 1341, even though the reexamined

claims did not issue until after the first suit had ended,

id. at 1339. Thus, whether the ’838 and ’048 continuation

14 SIMPLEAIR, INC. v. GOOGLE LLC

patents present the same cause of action as previously

litigated depends on the scope of their claims, not on their

dates of issuance.

Claim preclusion implicates both “the weighty policies

of judicial economy and fairness to parties.” United Mine

Workers of Am. v. Gibbs, 383 U.S. 715, 724 (1966). It

“encourages reliance on judicial decisions, bars vexatious

litigation, and frees the courts to resolve other disputes.”

Brown v. Felsen, 442 U.S. 127, 131 (1979). However,

claim preclusion “shields the fraud and the cheat as well

as the honest person,” and “therefore is to be invoked only

after careful inquiry.” Id. at 132.

The district court made a number of findings that im-

plicate the underlying policies of claim preclusion. It

found that SimpleAir engaged in strategic delay in bring-

ing its fourth suit against Google, SimpleAir IV, 204

F. Supp. 3d at 914, and that SimpleAir previously assured

the jury in SimpleAir I, over four years ago, that it would

not engage in duplicative and burdensome litigation, id.

at 915. Google also alleges on appeal that SimpleAir

coordinated its continuation patent prosecution and

litigation tactics to keep Google perpetually in court. See

Appellee Br. 55.

While these policy considerations may be persuasive,

it is our duty to faithfully apply our precedent, and that

precedent is inconsistent with the critical premise of the

district court that filing a terminal disclaimer during

prosecution of a continuation patent implies that the

continuation patent is patentably indistinct from its

parent. Our holding in this case is limited to that error:

a district court cannot presume that a terminally-

disclaimed continuation patent presents the same cause

of action as a parent patent based on the filing of the

terminal disclaimer alone. To the extent that the district

court finds that SimpleAir has engaged in improper

SIMPLEAIR, INC. v. GOOGLE LLC 15

litigation tactics, the court surely has other means for

dealing with that.

II.

Google alternatively argues that even if claim preclu-

sion does not apply, SimpleAir’s assertion of the ’838 and

’048 patents is precluded by the Kessler doctrine. We

disagree.

We have held that claim preclusion does not bar a

party from asserting infringement based on activity

occurring after the judgment in the earlier suit. See

Brain Life, LLC v. Elekta Inc., 746 F.3d 1045, 1054 (Fed.

Cir. 2014); see also Aspex, 672 F.3d at 1343. But see

Foster v. Hallco Mfg. Co., Inc., 947 F.2d 469, 472–73, 479–

80 (Fed. Cir. 1991) (indicating that products sold after an

earlier judgment could trigger claim preclusion if they

were “essentially the same” as those in the earlier suit).

However, the so-called Kessler doctrine, 3 named after

Kessler v. Eldred, 206 U.S. 285 (1907), does preclude

assertions of a patent against even post-judgment activity

if the earlier judgment held that “essentially the same”

accused activity did not infringe that patent. See Brain

Life, 746 F.3d at 1057–58. Kessler’s rationale is that the

accused activity, held in the earlier case not to infringe

the patent, acquires a limited trade right to continue

being practiced “without molestation” by the patentee or

its privies. Kessler, 206 U.S. at 285, 290; Brain Life, 746

F.3d at 1058. This doctrine protects “an adjudged non-

infringer” from “repeated harassment for continuing its

3 It is strange that we now refer to a “Kessler doc-

trine.” There are few doctrines in patent law; not even

the venerable doctrine of equivalents is called the “Graver

Tank doctrine.” So, for Kessler to be elevated to the status

of a doctrine gives it rare standing. Nonetheless, we will

not buck the rising tide.

16 SIMPLEAIR, INC. v. GOOGLE LLC

business as usual post-final judgment.” Id. at 1056 (em-

phasis in original).

In Brain Life, we held assertion of the same set of pa-

tent claims barred by both claim preclusion, id. at 1053,

and the Kessler doctrine, id. at 1058–59. We relied on the

Kessler doctrine only to bar assertion of the claims at

issue against essentially the same products made or sold

after the judgment of noninfringement in the earlier case,

id. at 1058, i.e., products that claim preclusion could not

reach because of their timing, id. at 1054. In contrast, we

have not applied the Kessler doctrine to bar a broader set

of rights than would be barred by claim preclusion. Nor

have we applied the Kessler doctrine to activity predating

the earlier judgment, as Google advocates here, Appellee

Br. 53. In effect, Google asks us to subsume claim preclu-

sion within a more expansive, sui generis Kessler doctrine.

But the Kessler doctrine just fills a particular temporal

gap between preclusion doctrines, see Brain Life, 746 F.3d

at 1056; it does not displace them.

However, as in the claim preclusion context, we also

disagree with SimpleAir’s argument that the Kessler

doctrine cannot in any case bar assertion of terminally-

disclaimed continuation patents when only parent patents

have previously been held noninfringing. If, on remand,

the district court determines that the claims of the ’838

and ’048 patents are patentably indistinct from those

previously adjudicated, and are therefore claim-precluded

with respect to pre-judgment GCM services, then the

Kessler doctrine would also bar SimpleAir’s assertions of

those patents against Google’s provision of essentially the

same GCM services post-judgment.

III.

Google also argues that issue preclusion bars Sim-

pleAir’s assertion of the ’838 and ’048 patents. Google did

not raise issue preclusion before the district court, and

accordingly the district court never addressed it. General-

SIMPLEAIR, INC. v. GOOGLE LLC 17

ly, “those issues not raised below at the district court

cannot be heard for the first time on appeal.” Conoco, Inc.

v. Energy & Envtl. Int’l., 460 F.3d 1349, 1358 (Fed. Cir.

2006). Google has not presented any circumstances that

warrant deviating from normal rules of waiver. We thus

conclude that Google waived its issue preclusion argu-

ment.

CONCLUSION

For the foregoing reasons, we vacate the district

court’s order and remand for further proceedings con-

sistent with this opinion.

VACATED AND REMANDED