Petition for Writ of Certiorari — Richard Sowinski, Petitioner v. California Air Resources Board
Supreme Court briefMar 22, 2021
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No.
In the Supreme Court of the United States
RICHARD SOWINSKI, PETITIONER
v.
CALIFORNIA AIR RESOURCES BOARD
ON PETITION FOR A WRIT OF CERTIORARI
TO THE UNITED STATES COURT OF APPEALS
FOR THE FEDERAL CIRCUIT
PETITION FOR A WRIT OF CERTIORARI
ANTHONY GRAHAM
GRAHAM & MARTIN LLP
2901 West Coast Hwy., Ste. 200
Newport Beach, CA 92663
DANIEL L. GEYSER
Counsel of Record
ALEXANDER DUBOSE &
JEFFERSON LLP
Walnut Glen Tower
8144 Walnut Hill Lane, Ste. 1000
Dallas, TX 75231
(214) 396-0441
dgeyser@adjtlaw.com
QUESTION PRESENTED
Under this Court’s settled law, the world of res judicata “comprises two distinct doctrines”—issue preclusion
and claim preclusion. Lucky Brand Dungarees, Inc. v.
Marcel Fashions Group, Inc., 140 S. Ct. 1589, 1594 (2020).
Those two categories represent the “‘uniform federal
rule[s]’ of res judicata’” (Taylor v. Sturgell, 553 U.S. 880,
891 (2008))—there is no third doctrine “unmoored from
th[ose] two guideposts” (Lucky Brand, 140 S. Ct. at 1595).
Except, of course, in the Federal Circuit. For years
now, the Federal Circuit has adopted its own unique version of res judicata as a “necessary supplement to issue
and claim preclusion.” SpeedTrack, Inc. v. Office Depot,
Inc., 791 F.3d 1317, 1329 (Fed. Cir. 2015). Under this doctrine, any time a defendant prevails in an infringement action, all future infringement suits involving the same activity are barred—even if the new suit involves new issues
and new claims that no court has ever resolved. The Federal Circuit has candidly acknowledged that its departure
from generally applicable legal principles is “questionable” (Brain Life, LLC v. Elekta Inc., 746 F.3d 1045, 10571058 (Fed. Cir. 2014)), but it believes its hands are tied by
a century-old decision from this Court, and it refuses to
apply traditional preclusion rules “unless and until [this]
Court” says otherwise. SpeedTrack, 791 F.3d at 1329.
The Federal Circuit invoked its unique rule here to
preclude a second infringement suit after a first was dismissed for failure to prosecute—even though the second
suit targeted only post-judgment claims and the issue of
infringement was never actually litigated (much less resolved) in either action. The question presented is:
Whether the Federal Circuit erred in creating and applying a patent-specific preclusion doctrine that bars new
issues and new claims that would survive the “uniform”
(I)
II
preclusion rules applied by this Court and every other circuit.
III
RELATED PROCEEDINGS
United States District Court (N.D. Cal.):
Richard Sowinski v. California Air Resources Board,
No. 18-3979 (Sept. 25, 2018) (judgment)
Richard Sowinski v. California Air Resources Board,
No. 18-3979 (Jan. 18, 2019) (order denying reconsideration)
United States Court of Appeals (Fed. Cir.):
Richard Sowinski v. California Air Resources Board,
No. 19-1558 (Aug. 21, 2020) (judgment)
Richard Sowinski v. California Air Resources Board,
No. 19-1558 (Oct. 23, 2020) (order denying rehearing)*
Although not directly related to these proceedings, this case relates to earlier proceedings in Dr. Richard Sowinski v. California Air
Resources Board, et al., No. 30-2015-00822179 (Cal. Superior Ct.)
(complaint filed Nov. 24, 2015, and removed to federal court on Dec.
21, 2015); Richard Sowinski v. California Air Resources Board, et
al., No. 15-2123 (C.D. Cal.) (Aug. 18, 2016) (dismissal order); and
Richard Sowinski v. California Air Resources Board, et al., No. 171219 (Fed. Cir.) (Dec. 18, 2017) (judgment).
*
IV
TABLE OF CONTENTS
Page
Opinions below ................................................................................ 1
Jurisdiction ...................................................................................... 1
Introduction ..................................................................................... 2
Statement ......................................................................................... 6
Reasons for granting the petition............................................... 12
A. The Federal Circuit’s Kessler theory
misreads Kessler, undermines traditional
preclusion doctrine, and impermissibly
departs from general legal principles in
patent cases alone ............................................................ 12
B. The Federal Circuit’s decisions conflict
with decisions of the Third and Fourth
Circuits, which correctly construed Kessler ................ 20
C. The proper application of preclusion
doctrine in patent cases nationwide
presents an important question that
warrants review in this case........................................... 21
Conclusion ...................................................................................... 23
Appendix A — Court of appeals opinion (Aug. 21, 2020) ........ 1a
Appendix B — District court dismissal order
(Sept. 25, 2018) ................................................. 10a
Appendix C — District court order denying reconsideration
(Jan. 18, 2019) ................................................... 16a
Appendix D — Court of appeals order (Oct. 23, 2020) .......... 18a
TABLE OF AUTHORITIES
Cases:
Allen v. McCurry, 449 U.S. 90 (1980) ............................ 17, 18
Blonder-Tongue Labs., Inc. v. Univ. of Ill.
Found., 402 U.S. 313 (1971) ............................... 7, 8, 15, 18
Comm’r v. Sunnen, 333 U.S. 591 (1948) ............................. 18
V
Page
Cases—continued:
Dickinson v. Zurko, 527 U.S. 150 (1999) ............................ 14
eBay v. MercExchange, LLC, 547 U.S. 388 (2006) ........ 6, 14
Gen. Chem. Co. v. Standard Wholesale Phosphate &
Acid Works, Inc., 101 F.2d 178 (4th Cir. 1939) ............. 20
Kessler v. Eldred, 206 U.S. 285 (1907)........................ passim
Lawlor v. Nat’l Screen Serv. Corp.,
349 U.S. 322 (1955) ............................................................ 15
Lucky Brand Dungarees, Inc. v. Marcel Fashions
Group, Inc., 140 S. Ct. 1589 (2020) ........................ passim
Medtronic, Inc. v. Mirowski Family Ventures, LLC,
571 U.S. 191 (2014) ............................................................ 14
Mentor Graphics Corp. v. EVE-USA, Inc.,
851 F.3d 1275 (Fed. Cir. 2017) ........................................ 15
MGA, Inc. v. Gen. Motors Corp., 827 F.2d 729
(Fed. Cir. 1987) ........................................................... 4, 6, 9
Parklane Hosiery Co. v. Shore, 439 U.S. 322 (1979) ......... 17
PersonalWeb Techs. LLC, In re,
961 F.3d 1365 (Fed. Cir. 2020) ............................... passim
Rubber Tire Wheel Co. v. Goodyear Tire &
Rubber Co., 232 U.S. 413 (1914) .............................. 4, 5, 15
SCA Hygiene Prods. Aktiebolag v. First Quality
Baby Prods., 137 S. Ct. 954 (2017).................................. 14
Selden Co. v. Gen. Chem. Co.,
73 F.2d 195 (3d Cir. 1934) ................................................ 20
SimpleAir, Inc. v. Google LLC, 884 F.3d 1160
(Fed. Cir. 2018) ........................................................... 15, 16
Sowinski v. Cal. Air Resources Bd., 730 F. App’x 615
(Fed. Cir. 2017) ................................................................. 10
Sowinski v. Cal. Air Resources Bd., No. 15-2123,
2016 WL 5886902 (C.D. Cal. 2016) ................................. 10
SpeedTrack, Inc. v. Office Depot, Inc.,
791 F.3d 1317 (Fed. Cir. 2015) ............................... passim
STC.UNM v. Intel Corp., 767 F.3d 1351
(Fed. Cir. 2014) ................................................................. 15
VI
Page
Cases—continued:
Storey v. Cello Holdings, LLC, 347 F.3d 370
(2d Cir. 2003) ..................................................................... 15
Taylor v. Sturgell, 553 U.S. 880 (2008) ...................... passim
Teva Pharm. USA, Inc. v. Sandoz, Inc.,
574 U.S. 318 (2015) ............................................................ 14
Whole Woman’s Health v. Hellerstedt,
136 S. Ct. 2292 (2016) ......................................................... 2
Statutes and rules:
28 U.S.C. 1254(1) ...................................................................... 2
Patent Act of 1952, 35 U.S.C. 1 et seq. ........................ passim
35 U.S.C. 281 ..................................................................... 17
35 U.S.C. 282(b)................................................................. 17
35 U.S.C. 285 ..................................................................... 19
Fed. R. Civ. P. 11.................................................................... 19
Fed. R. Civ. P. 52.................................................................... 14
In the Supreme Court of the United States
No.
RICHARD SOWINSKI, PETITIONER
v.
CALIFORNIA AIR RESOURCES BOARD
ON PETITION FOR A WRIT OF CERTIORARI
TO THE UNITED STATES COURT OF APPEALS
FOR THE FEDERAL CIRCUIT
PETITION FOR A WRIT OF CERTIORARI
Dr. Richard Sowinski respectfully petitions for a writ
of certiorari to review the judgment of the United States
Court of Appeals for the Federal Circuit in this case.
OPINIONS BELOW
The opinion of the court of appeals (App., infra, 1a-9a)
is reported at 971 F.3d 1371. The order of the district
court dismissing the complaint (App., infra, 10a-15a) is
unreported but available at 2018 WL 9841114. The order
of the district court denying reconsideration (App., infra,
16a-17a) is unreported.
JURISDICTION
The judgment of the court of appeals was entered on
August 21, 2020. A petition for rehearing was denied on
October 23, 2020 (App., infra, 18a-19a). On March 19,
2020, the Court extended the time within which to file a
(1)
2
petition for a writ of certiorari due on or after the order’s
date to 150 days from “the date of the lower court judgment * * * or order denying a timely petition for rehearing”; that order had the effect of extending the deadline
to file this petition to March 22, 2021. The jurisdiction of
this Court is invoked under 28 U.S.C. 1254(1).
INTRODUCTION
This case presents an important and recurring question of patent law and res judicata where the Federal Circuit has once again departed from the general legal principles applied by this Court and other circuits.
For decades now (and beyond), this Court has limited
res judicata to “two distinct doctrines”—issue preclusion
and claim preclusion. Lucky Brand Dungarees, Inc. v.
Marcel Fashions Group, Inc., 140 S. Ct. 1589, 1594 (2020).
Issue preclusion prevents “a party from relitigating an issue actually decided in a prior case and necessary to the
judgment.” Ibid. Claim preclusion “prohibits ‘successive
litigation of the very same claim’ by the same parties.”
Whole Woman’s Health v. Hellerstedt, 136 S. Ct. 2292,
2305 (2016). Taken together, preclusion thus bars attempts to reassert the same claim, but not new claims that
“‘postdate the filing of the initial complaint’” (Lucky
Brand, 140 S. Ct. at 1596 (emphasis added)); and it bars
“‘matter[s] actually at issue and determined in the original action’” (id. at 1595 (quoting Davis v. Brown, 94 U.S.
423, 428 (1877)), but leaves open new issues that were not
“actually litigated and resolved” (Taylor v. Sturgell, 553
U.S. 880, 892 (2008)). This Court has never recognized any
third category “unmoored” from those “two guideposts,”
and its “case law indicates that any such preclusion
* * * must, at a minimum, satisfy the strictures of issue
preclusion or claim preclusion.” Ibid.
3
Not so, however, in the Federal Circuit. For the better
part of a decade, the Federal Circuit has applied “a separate and distinct doctrine known as the Kessler Doctrine,”
which precludes “claims that are not otherwise barred by
claim or issue preclusion.” Brain Life, LLC v. Elekta Inc.,
746 F.3d 1045, 1056-1057 (Fed. Cir. 2014). Under this doctrine, once an accused infringer prevails in a prior suit, the
challenged activity acquires “a limited trade right” that
precludes any future litigation over the same activity—
even if the new lawsuit targets post-judgment infringement or raises new issues that were never actually litigated or resolved in any court. SpeedTrack, Inc. v. Office
Depot, Inc., 791 F.3d 1317, 1325, 1328 (Fed. Cir. 2015); see
also In re PersonalWeb Techs. LLC, 961 F.3d 1365, 13761377 (Fed. Cir. 2020).
In adopting this unique rule, the Federal Circuit fully
acknowledged that its position is squarely at odds with
“traditional” principles of issue and claim preclusion.
Brain Life, 746 F.3d at 1055-1056. But the Federal Circuit
concluded it was “bound” by Kessler v. Eldred, 206 U.S.
285 (1907), an obsolete decision that pre-dated the modern
rules of preclusion. Indeed, even in adopting its outlier position, the Federal Circuit admitted that Kessler’s “continuing force” is “questionable” at best, and its “viability
under current estoppel law may be of less value now than
it was at the time it was handed down.” Brain Life, 746
F.3d at 1058. But the Federal Circuit declared its hands
tied: “[w]e may only apply the law as it continues to exist”
(ibid.), and “we must follow Kessler unless and until the
Supreme Court overrules it” (SpeedTrack, 791 F.3d at
1329).
The Federal Circuit’s position is wrong on every level,
starting with its obvious misreading of Kessler itself.
Kessler did not adopt some new patent-specific form of
preclusion; it was an anti-suit injunction case. It arose
4
during “the heyday of the federal mutuality of estoppel
rule.” MGA, Inc. v. Gen. Motors Corp., 827 F.2d 729, 733
(Fed. Cir. 1987). A patentee had sued a manufacturer for
infringement, lost after full litigation, and then sued the
manufacturer’s customers over the “same” products.
Kessler, 206 U.S. at 288. Without modern preclusion doctrine, those customers could not invoke (non-mutual) issue preclusion to avoid relitigating the identical issues established in the manufacturer’s earlier lawsuit. The Court
thus allowed an anti-suit injunction because the customers otherwise had no “[]adequate” remedy against duplicative litigation seeking to undo the manufacturer’s
“judgment right.” Id. at 289-290; see Rubber Tire Wheel
Co. v. Goodyear Tire & Rubber Co., 232 U.S. 413, 418
(1914) (describing Kessler as redressing the lack of an
“adequate remedy”).1
That is no longer true today: customers (or the manufacturer itself) may now invoke non-mutual issue preclusion to avoid duplicative litigation. Kessler thus no longer
applies even on its own terms: the modern rules of preclusion provide the “adequate remedy” that was missing in
Kessler, and there is no need for a (rare) anti-suit injunction—the second court can apply modern preclusion principles to protect a party’s legitimate interests in the first
judgment. (And those legitimate interests do not include
barring future suits raising new issues and new claims—
all of which are preserved under today’s doctrine.)
The Federal Circuit’s misreading of Kessler is only the
start of its problems. The Federal Circuit never explains
how it jumped from Kessler’s holding (which involved relitigation over the same products and issues) to barring
new issues and claims in subsequent litigation. Kessler
Claim preclusion would not apply because the new litigation (although targeting the same products) was against different defendants.
1
5
was designed to protect a manufacturer’s rights in a final
judgment, not to expand those rights. See Kessler, 206
U.S. at 289 (“If rights between litigants are once established by the final judgment * * * those rights must be
recognized in every way, and wherever the judgment is
entitled to respect, by those who are bound by it.”) (emphases added). It is hornbook law that judgments only
stand for the issues and claims actually resolved in a suit.
See Lucky Brand, 140 S. Ct. at 1594-1595. Because the
“identical” product was at issue (Rubber Tire, 232 U.S. at
417), Kessler had no occasion to decide whether its antisuit injunction would bar new legal or factual issues arising in post-judgment claims. Even were the Federal Circuit “bound” by Kessler, that decision never endorsed expanding a judgment to reach issues and claims that were
never litigated. Contra, e.g., PersonalWeb, 961 F.3d at
1379 (rejecting the contention that “the issue of non-infringement must be ‘actually litigated’ in order to invoke
the Kessler doctrine”); App., infra, 8a.
Perhaps realizing that its reading of Kessler founders
under any ordinary view of preclusion, the Federal Circuit has floated the idea that Kessler reflects “a matter of
substantive patent law.” SpeedTrack, 791 F.3d at 1329.
But Kessler did not adopt a patent-specific rule of preclusion. While Kessler factually arose in a patent dispute, the
Court’s rationale was not patent-specific. It did not once
cite any provision of the Patent Act or describe a single
consideration unique to patent cases. Indeed, the Court
did not even mention the word “patent” in the operative
section of its opinion. See 206 U.S. at 289-290. There is
simply no indication, anywhere, that this Court understood Kessler to announce a new substantive rule requiring patent-specific preclusion—let alone anything in Title
35 today independently authorizing the so-called “Kessler
doctrine” as a statutory defense.
6
Contrary to the Federal Circuit’s views, Kessler does
not compel a departure from the traditional rules of preclusion universally applied everywhere else. The Federal
Circuit reached the opposite conclusion despite this
Court’s declaration that preclusion rules are “‘uniform,’”
not context-dependent (Taylor, 553 U.S. at 891), and contrary to this Court’s repeated directive to avoid patentspecific departures from general legal principles. E.g.,
eBay v. MercExchange, LLC, 547 U.S. 388, 394 (2006).
The Federal Circuit further reached this conclusion despite the contrary decisions of two other circuits, which
correctly read Kessler as consistent with this Court’s preclusion framework (before the Federal Circuit obtained
exclusive jurisdiction over patent cases).
Just last Term, this Court granted review in a trademark dispute where the Second Circuit had adopted a
unique form of preclusion—barring defenses that were
never before litigated in a new action based on new claims
that post-dated any prior judgment. Lucky Brand, 140 S.
Ct. at 1594-1595. This Court unanimously reversed, and
this case now presents the mirror image of the Second
Circuit’s mistake. Yet even when this error was pointed
out to the full Federal Circuit, the Court denied rehearing
without a single judge requesting a vote.
The Federal Circuit misread Kessler to stand for a
proposition that it never decided, and it will continue to
apply a flawed preclusion framework until this Court intervenes. Because this case is an ideal vehicle for resolving this important legal question, the petition should be
granted.
STATEMENT
1. a. This Court decided Kessler during “the heyday of
the federal mutuality of estoppel rule.” Brain Life, 746
F.3d at 1057 (quoting MGA, 827 F.2d at 733). At the time,
7
claim preclusion and issue preclusion were limited to the
same parties or privies from earlier litigation. See MGA,
827 F.2d at 733. This meant that third parties could not
invoke earlier judgments to prevent duplicative litigation,
even when an identical issue had been litigated and resolved in an earlier case, and even when subsequent litigation would effectively contradict rights established in
the original judgment. See Blonder-Tongue Labs., Inc. v.
Univ. of Ill. Found., 402 U.S. 313, 321-322 (1971) (describing “the judge-made doctrine of mutuality”).
The Court in Kessler sought an equitable remedy to
overcome these shortcomings. Kessler involved repeat litigation between a patentee and a manufacturer. The patentee sued the manufacturer for infringement, lost, and
then sued the manufacturer’s customers for the same alleged infringement. Kessler, 206 U.S. at 285-287. This put
the manufacturer in a bind: despite prevailing on the earlier suit, its customers now faced the same claims over the
same allegations. This resulted in serious problems for
the manufacturer: the Court identified actual evidence of
“harass[ment],” prejudice (including the “actual effect” of
lost sales), a risk of a “multiplicity of suits,” and the lack
of any “[]adequate” remedy to protect the manufacturer’s
“judgment right.” Id. at 288-290.
The Court accordingly authorized an anti-suit injunction to enjoin the patentee from filing future suits against
the manufacturer’s customers over the same products.
206 U.S. at 288-290. That injunction had the effect of establishing issue preclusion without “mutuality”: without
Kessler’s equitable relief, a customer could not avoid relitigating identical questions resolved in the manufacturer’s earlier suit. But by enjoining future actions, Kessler put an end to identical, duplicative suits designed to
harass the manufacturer’s customers or undermine the
manufacturer’s earlier win. Id. at 289 (the manufacturer
8
was entitled to enforce his “right[] * * * once established
by the final judgment”).
Decades after Kessler, the Court would later overturn
the old “mutuality” rule in Blonder-Tongue. See 402 U.S.
at 349 (authorizing defensive issue preclusion and rejecting the “uncritical acceptance of the principle of mutuality
of estoppel”). This change effectively rendered Kessler
obsolete: after Blonder-Tongue, non-mutual issue preclusion now provides the “adequate remedy” that was missing in Kessler, and third parties can now prevent baseless
attempts to relitigate matters decided in earlier litigation.
b. After years of applying this Court’s traditional preclusion doctrine, the Federal Circuit revisited Kessler in
Brain Life. As relevant here, a patentee sued a manufacturer for infringement, lost, and then sued the same manufacturer for infringing the same patent, but asserted a
different set of patent claims, and targeted new acts of infringement post-dating the first suit. See 746 F.3d at
1051-1052.2 The court initially recognized that neither issue nor claim preclusion would bar the new action: “traditional notions of claim preclusion do not apply when a patentee accuses new acts of infringement, i.e., post-final
judgment, in a second suit—even where the products are
the same in both suits”: and issue preclusion did not apply
because the relevant allegations “were not fully, fairly,
and actually litigated to finality.” Id. at 1055-1056.
Yet the court nevertheless found that the new action,
despite surviving modern preclusion principles, was precluded by Kessler. See 746 F.3d at 1059. As the court rea-
The plaintiff in the second action was actually a privy of the original patentee, a detail irrelevant to the panel’s analysis. Because each
party represented effectively the same interest, each entity was considered effectively the same party for preclusion purposes. See 745
F.3d at 1050-1051 & n.1.
2
9
soned, Kessler granted a “‘limited trade right’” over “specific products” held not to infringe, “even when the specific acts of infringement would not be barred by claim
preclusion.” 746 F.3d at 1057 (quoting MGA, 827 F.2d at
734). Because, under this view, the products “acquire[] the
status of a noninfringing device,” it was irrelevant that the
new action involved post-judgment claims or new issues.
Id. at 1058-1059. Once the patentee lost the first suit, its
subsequent claims were barred by Kessler. Id. at 1059.
In so holding, the court recognized that Kessler might
have been a mere “exception” to the old “mutuality requirement,” and the decision’s “continuing force” was
“questionable” after modern “developments.” 746 F.3d at
1057-1058. Yet the court still found itself “bound” to apply
Kessler, “even if its viability under current estoppel law
may be of less value now than it was at the time it was
handed down”: “Whether the Kessler Doctrine is an exception to the mutuality of estoppel rule or a matter of
substantive patent law is a question we cannot answer. We
may only apply the law as it continues to exist.” Id. at
1058.
The Federal Circuit has since reaffirmed its views in
Brain Life in a series of published opinions, including
denying rehearing in many of those cases. See, e.g., PersonalWeb, 961 F.3d at 1379 (unequivocally applying Kessler to issues not litigated in an earlier suit); SpeedTrack,
791 F.3d at 1328-1329 (refusing to back away from Brain
Life).
2. The material facts relevant to this petition are remarkably straightforward.
a. Dr. Richard Sowinski (petitioner here) is the inventor of “an electronic method and apparatus for validating
and trading consumer pollution-control tax credits.” App.,
infra, 2a. He obtained a patent on his invention (U.S. Pa-
10
tent No. 6,601,033), and later sued the California Air Resources Board (respondent here) for infringing his rights
when conducting California’s Cap-and-Trade Program
auctions. Ibid.
Petitioner’s first suit was filed in California state court
and later removed to federal district court. After dispositive motions were filed, petitioner failed to respond; the
case was then dismissed with prejudice under the district
court’s local rules for failure to prosecute. App., infra, 3a,
9a; see Sowinski v. Cal. Air Resources Bd., No. 15-2123,
2016 WL 5886902, at *2-*3 (C.D. Cal. 2016). Due to the
procedural default, the court “did not address the underlying merits” of petitioner’s infringement allegations.
Sowinski v. Cal. Air Resources Bd., 730 F. App’x 615, 617
(Fed. Cir. 2017) (appeal from first lawsuit); see App., infra, 9a (petitioner “did not obtain resolution of the question of infringement”).
b. After that earlier litigation became final, petitioner
brought a second suit against the same defendant, asserting the same patent against the same infringing activity—
but limited to “damages only for infringement after the
decision in Sowinski I.” App., infra, 4a.3
The district court dismissed the action. App., infra,
10a-15a. Although the suit targeted only post-judgment
infringement, the district court found that “res judicata
bars [petitioner’s] claims.” Id. at 12a. The court noted that
petitioner’s “causes of action” were “all predicated on [respondent’s] alleged infringement” of the same patent, and
thus were “clearly barred by res judicata.” Id. at 14a-15a.
Petitioner sought reconsideration, but the district
court again reaffirmed that “res judicata bars [petitioner’s] instant lawsuit.” App., infra, 16a-17a. The court
This suit was originally filed in state court, voluntarily dismissed,
and refiled in federal court. App., infra, 4a.
3
11
noted petitioner’s allegation that respondent “violates the
patent on a yearly basis when it runs the CARB Auction,”
but reasoned that petitioner’s lawsuit is still “predicated
on the same conduct as [petitioner’s] previous suit.” Ibid.
3. a. The Federal Circuit affirmed. App., infra, 1a-9a.
The court acknowledged that petitioner’s new claims
arose after the first lawsuit (App., infra, 4a, 7a), and that
no court had ever resolved “the question of infringement”
on the merits (id. at 9a). But the court noted that petitioner “alleges no different conduct or acts” in suing the
same defendant for post-judgment infringement. Id. at
7a. In that situation, the court held, “when the act has
been adjudged not wrongful, its repetition cannot be challenged in a subsequent suit.” Id. at 8a-9a (so holding even
though the initial suit was dismissed for “failure to respond”). Because respondent obtained “a prior judgment
of non-infringement,” Brain Life foreclosed any future litigation against the same products or methods. Id. at 8a
(citing Brain Life, 746 F.3d at 1054).
Petitioner’s suit was therefore barred despite raising
legal and factual issues regarding infringement that no
court had ever adjudicated, and raising new claims that
arose after the first suit was over. App., infra, 7a-9a. Respondent’s activity, the panel concluded, had “‘acquire[d]
the “status” of a noninfringing device vis-à-vis the asserted patent claims.’” App., infra, 8a (quoting Brain
Life, 746 F.3d at 1057).
b. Petitioner sought rehearing before the full court,
highlighting the same issues presented in this petition, including the disconnect between this Court’s Lucky Brand
decision and the Federal Circuit’s creation of a “third”
preclusion doctrine “unmoored” from issue or claim preclusion. C.A. Reh’g Pet. 2-3, 7-9. The Federal Circuit denied rehearing without any recorded dissent. App., infra,
18a-19a.
12
REASONS FOR GRANTING THE PETITION
According to the Federal Circuit, Kessler establishes
a patent-specific rule of preclusion: any activity declared
non-infringing (for any reason) in prior litigation is automatically immune from subsequent litigation over the
same patent, even if that subsequent litigation involves
entirely new issues and new claims. See, e.g., App., infra,
7a-9a; SpeedTrack, 791 F.3d at 1323-1325; Brain Life, 746
F.3d at 1057-1059. The Federal Circuit below thus invoked Brain Life (which, in turn, invoked Kessler) to bar
petitioner’s lawsuit, even though it would survive under
this Court’s traditional preclusion framework.
The Federal Circuit’s position is mistaken. Its holding
creates a direct conflict with the “uniform” preclusion
rules applied in all other circuits. It violates this Court’s
recent (and repeated) instruction against creating patentspecific exceptions to general legal principles. It is based
on a demonstrable misreading of Kessler itself, endorsing
a view rejected by two circuits. And it implicates a rule of
law that is important, recurring, and entrenched (as the
Federal Circuit has now reaffirmed on multiple occasions). Until this Court intervenes, the Federal Circuit’s
outlier view will incorrectly dictate the preclusive effects
of prior judgments in all patent cases nationwide. Further
review is plainly warranted.
A. The Federal Circuit’s Kessler Theory Misreads
Kessler, Undermines Traditional Preclusion Doctrine, And Impermissibly Departs From General
Legal Principles In Patent Cases Alone
Under the Federal Circuit’s misreading of Kessler, the
nation’s patent law now conflicts with the law of every
other circuit (and this Court) on general preclusion principles.
13
1. By adopting its own unique form of res judicata, the
Federal Circuit has run headlong into this Court’s recent
guidance on preclusion. In Lucky Brand, this Court could
not have spoken any more plainly in explaining there are
“two distinct doctrines regarding the preclusive effect of
prior litigation”—issue preclusion and claim preclusion.
140 S. Ct. at 1594. The Court did not hint at any room
available for a third “standalone category”: “our case law
indicates that any such preclusion * * * must, at a minimum, satisfy the strictures of issue preclusion or claim
preclusion.” Lucky Brand, 140 S. Ct. at 1595.
Yet even after Lucky Brand, the Federal Circuit has
continued to apply a third doctrine “unmoored from
th[ose] two guideposts.” 140 S. Ct. at 1594. And it has done
so unabashedly: the court admits it is “fill[ing] the gap” in
this Court’s traditional preclusion framework, and barring claims that would otherwise proceed under “claim or
issue preclusion.” Brain Life, 746 F.3d at 1055-1056; see
also PersonalWeb, 961 F.3d at 1377 (“the Kessler doctrine
serves to fill the ‘temporal gap’ left by claim preclusion,
even if that gap is not filled by issue preclusion”). But it
insists its position is compelled by this Court’s own cases,
and it will adhere to its practice “unless and until the Supreme Court” says otherwise. SpeedTrack, 791 F.3d at
1329.
The Federal Circuit is profoundly mistaken. Just as
there is no obvious basis for “‘defense preclusion’” (Lucky
Brand, 140 S. Ct. at 1595), there is no obvious basis for a
patent-specific preclusion framework. This Court has
long confirmed that preclusion rules are “‘uniform.’” Taylor, 553 U.S. at 891 (federal courts “develop[] ‘uniform
federal rule[s]’ of res judicata”). Those traditional rules
are faithfully applied in all other circuits, and yet those
rules are now disuniform in the Federal Circuit alone.
14
There is no justification for treating patent cases differently for preclusion purposes.
Indeed, on the contrary, this Court has repeatedly
cautioned against creating patent-specific exceptions to
general legal norms: “‘[p]atent law is governed by the
same common-law principles, methods of statutory interpretation, and procedural rules as other areas of civil litigation.’” SCA Hygiene Prods. Aktiebolag v. First Quality
Baby Prods., 137 S. Ct. 954, 964 (2017).4 The Federal Circuit’s position directly violates that clear admonition: issue and claim preclusion are not merely general legal
rules, but “‘uniform’” rules. Taylor, 553 U.S. at 891. Although a suit arising on these facts in any non-patent dispute would proceed, the Federal Circuit’s precedent imposes a bar exceeding traditional limits on both issue and
claim preclusion. See, e.g., SpeedTrack, 791 F.3d at 3128
(“the Kessler doctrine is a necessary supplement to issue
and claim preclusion”); Brain Life, 746 F.3d at 1055-1056
(Kessler “precludes some claims that are not otherwise
barred by claim or issue preclusion”). This represents the
“further removal of patent causes from the mainstream of
the law” that this Court routinely grants review to correct. STC.UNM v. Intel Corp., 767 F.3d 1351, 1355 (Fed.
See also, e.g., Teva Pharm. USA, Inc. v. Sandoz, Inc., 574 U.S.
318, 324-325 (2015) (reaffirming that general principles governing review under Fed. R. Civ. P. 52 apply in patent cases); Medtronic, Inc.
v. Mirowski Family Ventures, LLC, 571 U.S. 191, 193-194 (2014) (reaffirming that general principles governing declaratory judgments
apply in patent cases); eBay v. MercExchange, LLC, 547 U.S. 388,
391-392, 394 (2006) (reaffirming that general principles governing injunctive relief apply in patent cases); Dickinson v. Zurko, 527 U.S.
150, 165 (1999) (reaffirming that general principles governing agency
review apply to USPTO decisions).
4
15
Cir. 2014) (Newman, J., dissenting from denial of rehearing en banc).5
2. The Federal Circuit failed to identify adequate support for its patent-specific departure from “the two guideposts of issue preclusion and claim preclusion.” Lucky
Brand, 140 S. Ct. at 1595. Kessler itself does not provide
any such justification, and nothing in Title 35 independently supports a patent-specific preclusion doctrine.
a. The Federal Circuit demonstrably misread Kessler
itself. First and foremost, Kessler did not authorize a new
category of preclusion. It was an anti-suit injunction case.
It authorized an equitable remedy because issue preclusion was unavailable under the old “mutuality” rule, leaving the judgment-winner “without adequate remedy” to
protect its rights in “the decree.” Rubber Tire, 232 U.S. at
418. That essential predicate no longer exists today: under
modern preclusion rules, parties can invoke non-mutual
issue preclusion (Blonder-Tongue, 402 U.S. at 349), and
block repetitive litigation designed to unwind the actual
rights captured in a prior judgment. That provides the
“adequate remedy” missing in Kessler; there is no need to
To the extent the panel believed that ordinary claim preclusion
applied, it was plainly wrong: “claim preclusion does not bar a party
from asserting infringement based on activity occurring after the
judgment in the earlier suit.” SimpleAir, Inc. v. Google LLC, 884 F.3d
1160, 1170 (Fed. Cir. 2018); see also Lawlor v. Nat’l Screen Serv.
Corp., 349 U.S. 322 (1955) (prior judgments “cannot be given the effect of extinguishing claims which did not even then exist and which
could not possibly have been sued upon in the previous case”); Storey
v. Cello Holdings, LLC, 347 F.3d 370, 383-384 (2d Cir. 2003) (Sotomayor, then-J.). Indeed, while the panel quoted Lawlor for support,
Lawlor cuts exactly the other way. See Mentor Graphics Corp. v.
EVE-USA, Inc., 851 F.3d 1275, 1300 (Fed. Cir. 2017); Storey, 347 F.3d
at 383 (so explaining). The panel’s invocation of Brain Life thus made
clear exactly what it was doing: invoking the Federal Circuit’s Kessler
doctrine to bar new issues and claims that no court had resolved.
5
16
rewrite today’s preclusion doctrine to achieve the same
result.
But even setting that initial error aside, the Federal
Circuit never explains why it invokes Kessler to bar new
issues and claims extending beyond the initial judgment.
If the Federal Circuit were truly concerned about protecting “the manufacturer’s judgment right” (SpeedTrack,
791 F.3d at 1328-1329), it should have limited preclusion
to the issues and rights actually determined in the prior
case. Lucky Brand, 140 S. Ct. at 1594-1595. And, indeed,
that was the entire focus of Kessler itself. See, e.g., Kessler, 206 U.S. at 289 (seeking to preserve the judgment’s
“full effect”). A judgment’s “effect” is limited to the issues
and claims adjudicated in that suit; it does not convey
any “right” to issues and claims that no one litigated.
Under the Federal Circuit’s theory, however, a judgment’s “effects” under Kessler are not preserved, but expanded: rather than protecting the rights secured by the
judgment, the Federal Circuit grants an entirely new set
of rights never adjudicated in any suit. It forecloses legal
issues that were never “actually litigated” (PersonalWeb,
961 F.3d at 1377) and bars post-judgment claims that no
court ever resolved (SimpleAir, Inc. v. Google LLC, 884
F.3d 1160, 1170 (Fed. Cir. 2018)). Kessler had no occasion
even to address those issues (since both suits presented
the same questions); if the Federal Circuit believes an expansive form of preclusion exists, it must identify it somewhere other than Kessler.
b. The Federal Circuit did not suggest such support
might exist in Title 35, and for good reason: there is no
textual hook in the Patent Act authorizing a unique rule
of preclusion.
Nothing in Title 35 supports the Federal Circuit’s position. When Congress directed that a “patentee shall
have remedy by civil action for infringement of his patent”
17
(35 U.S.C. 281), it nowhere limited that right to a single
opportunity to seek relief involving any given activity.
There is no special statutory preclusion defense—even
though Congress expressly enumerated other defenses
(35 U.S.C. 282(b)). The Federal Circuit simply grafted on
an extratextual right that is not grounded in the Act itself.
And while the Federal Circuit speculated that Kessler
may have “espouse[d] a specific doctrine of substantive
patent law” (Brain Life, 746 F.3d at 1057), a quick review
of the opinion proves that is wrong. There is no indication
that Kessler’s analysis was predicated on the patent subject-matter of that case, rather than the happenstance
that it factually involved patents. Kessler did not cite a single provision of the Patent Act; it did not reference any
specific patent doctrine, or suggest any basis for cabining
its rule to patent disputes. Kessler’s core reasoning—describing the anti-suit injunction, the defendant’s concrete
harm, and the need to protect the judgment’s “effects”—
did not even utter any word specific to patents, much less
endorse a patent-specific jurisprudence. See 206 U.S. at
288-290. Indeed, the word “patent” does not even appear
in the critical last two pages of the Court’s four-page opinion (id. at 289-290).
The Federal Circuit also overlooks that BlonderTongue itself was a patent case, yet no one maintains that
its holding is limited to the patent context. On the contrary, this Court has repeatedly cited Blonder-Tongue as
setting new rules of preclusion across all substantive areas. E.g., Taylor, 553 U.S. at 899, 907; Allen v. McCurry,
449 U.S. 90, 94-95 (1980); Parklane Hosiery Co. v. Shore,
439 U.S. 322, 326-327 (1979). There is no reason to presume that Kessler silently announced a “specific doctrine
of substantive patent law,” while Blonder-Tongue, also a
patent case, articulated general preclusion principles.
18
c. Nor can the Federal Circuit justify its position on
policy grounds.
First, the Federal Circuit insists that its Kessler doctrine is a “necessary supplement” to avoid suits that would
escape ordinary preclusion: otherwise, the court reasons,
“a patent owner could file suit against the manufacturer’s
customers under any claim or theory not actually litigated
against the manufacturer as long as it challenged only
those acts of infringement that post-dated the judgment
in the first action.” SpeedTrack, 791 F.3d at 1328; see also
PersonalWeb, 961 F.3d at 1376. In other words, without
the so-called Kessler doctrine, traditional claim and issue
preclusion would operate exactly as they are intended—
with new issues and new claims preserved for future review. Lucky Brand, 140 S. Ct. at 1594-1595 (“‘[i]f the second lawsuit involves a new claim or cause of action, the
parties may raise assertions or defenses that were omitted from the first lawsuit even though they were equally
relevant to the first cause of action’”; “where two lawsuits
involve[] different claims, preclusion operates ‘only upon
the matter actually at issue and determined in the original
action’”).
That is a reason to reject the Federal Circuit’s holding,
not endorse it. Parties have no legitimate interest in
avoiding unresolved issues and claims; preclusion prevents litigation over decided questions. This Court’s doctrine is calibrated to respect the parties’ interest in finality while preserving “a full and fair opportunity to litigate” new matters. Blonder-Tongue, 402 U.S. at 329; see
also Allen, 449 U.S. at 95 (emphasizing “limitation[s]” on
estoppel); Comm’r v. Sunnen, 333 U.S. 591, 599-600 (1948)
(imposing limitations on estoppel to “avoid injustice”).
No court has confronted petitioner’s infringement allegations on the merits or addressed his claims for postjudgment infringement—yet the Federal Circuit still held
19
his lawsuit was barred. App., infra, 5a-9a. The Federal
Circuit’s aggressive preclusion rules are not merely filling
a “gap” (Brain Life, 746 F.3d at 1056), but moving the line
between what may and may not proceed. That upsets this
Court’s careful balance in this area.
Second, the Federal Circuit suggests that permitting
suits that survive this Court’s traditional preclusion
framework would somehow authorize “harassment.”
SpeedTrack, 791 F.3d at 1328-1329. Yet it is not “harassment” to ask parties to litigate new and unresolved legal
questions, a result contemplated by this Court’s timetested framework. Taylor, 553 U.S. at 891. And where a
litigant steps over the line, defendants have ample tools at
their disposal without automatic preclusion: Courts may
issue sanctions for baseless filings (Fed. R. Civ. P. 11),
award attorney’s fees in exceptional cases (35 U.S.C. 285),
and even grant anti-suit injunctions in extraordinary situations to prevent concrete harassment. If a patentee
brings a second lawsuit that is doomed to fail—based on a
weak sliver of an unresolved issue remaining from an original action—it faces a material risk of serious economic
consequence. And, of course, any defendant wishing to secure global relief always has the option of seeking a declaratory judgment on any issues not raised directly in an
initial complaint, which itself could cut off future litigation.
These tools and safeguards protect the legitimate interests of defendants in patent cases. There is no reason
that the traditional preclusion rules adequate everywhere
else are somehow inadequate here.
20
B. The Federal Circuit’s Decisions Conflict With Decisions Of The Third And Fourth Circuits, Which
Correctly Construed Kessler
In misreading Kessler to decide a question that it neither addressed nor resolved, the Federal Circuit created
a direct (and unacknowledged) conflict with other circuits.
According to the Federal Circuit, once products are
found non-infringing, a patentee is “barred from asserting
that the[ accused products] infringe the same patent
claims a second time,” even on entirely new legal issues.
Brain Life, 746 F.3d at 1058. Yet, as noted above, Kessler
did not confront a suit with new issues, and two circuits
have rejected the Federal Circuit’s logic on that basis.
In Selden Co. v. Gen. Chem. Co., 73 F.2d 195 (3d Cir.
1934), the Third Circuit recognized that Kessler was
properly limited to issues actually resolved in the first action, declaring that Kessler “does not apply” because “the
issues involved in the Maryland suit were not the same as
those covered in the Pennsylvania suit.” 73 F.2d at 197.
Likewise, in Gen. Chem. Co. v. Standard Wholesale Phosphate & Acid Works, Inc., 101 F.2d 178 (4th Cir. 1939), the
Fourth Circuit explained that a Kessler “injunction” was
“refused” because “the issues involved [in each suit] were
not the same.” 101 F.2d at 183.
These circuits, unlike the Federal Circuit, limited
Kessler to its proper scope. Their reading preserves the
fundamental limits on issue preclusion and avoids a conflict with “uniform” preclusion principles. In taking the
opposite approach, the Federal Circuit alone remains out
of step with this Court’s controlling precedent.
21
C. The Proper Application Of Preclusion Doctrine
In Patent Cases Nationwide Presents An Important Question That Warrants Review In This
Case
1. The Federal Circuit’s departure from traditional
preclusion principles raises issues of obvious legal and
practical importance.
The Federal Circuit’s refusal to apply this Court’s uniform framework upsets the careful balance struck by preclusion doctrine for decades. It affects the rights of litigants to have their day in court, without promoting any
legitimate countervailing interests in judicial economy or
repose. The issue continues to generate litigation, with the
Federal Circuit forced to round out new aspects of its
unique doctrine in a series of published decisions. See,
e.g., PersonalWeb, supra; SimpleAir, supra; SpeedTrack,
supra; BrainLife, supra. And it (ironically) encourages
even more litigation, as patentees are forced to assert
every possible claim (and every possible legal theory) in a
first action to avoid forfeiting it later—even if the magnitude of infringement is minor at the outset. Cf., e.g., Oral
Arg. Tr. at 28-29, Lucky Brand, supra (No. 18-1086) (Jan.
13, 2020) (Roberts, C.J.) (identifying a similar dynamic);
id. at 34-35 (Gorsuch, J.) (same).
The Federal Circuit has exclusive jurisdiction over patent appeals, and it has now set the preclusion rule for patent cases nationwide. And despite recognizing that its position is “questionable,” it refuses to back down until this
Court corrects its mistake. Brain Life, 746 F.3d at 1058.
This Court granted review in Lucky Brand to review an
analogous decision by the Second Circuit, and there is an
equally compelling reason to grant review here. The Federal Circuit’s error will otherwise persist until this Court
intervenes.
22
2. This case is a strong vehicle for resolving the question presented. The presentation is as clean as it gets: petitioner’s complaint was dismissed exclusively on preclusion grounds; there is no dispute that issue preclusion
does not apply (since infringement was never litigated on
the merits in the first suit); and there is no dispute that
claim preclusion does not apply (because petitioner limited his new complaint to “infringement that occurred after conclusion of his prior suits”). App., infra, 2a, 4a, 7a9a. The action would therefore survive under this Court’s
traditional preclusion framework, but was foreclosed under the Federal Circuit’s unique views.
The issue is important and recurring, and it was outcome-determinative below. Further percolation is pointless: the Federal Circuit is fully aware of the counterarguments, but it has declared itself bound by its (mis)understanding of Kessler. Further review is necessary to resolve the conflict between the preclusion rules applied in
the Federal Circuit and those applied everywhere else.
23
CONCLUSION
The petition for a writ of certiorari should be granted.
Respectfully submitted.
ANTHONY GRAHAM
DANIEL L. GEYSER
GRAHAM & MARTIN LLP
Counsel of Record
2901 West Coast Hwy., Ste. 200 ALEXANDER DUBOSE &
Newport Beach, CA 92663
JEFFERSON LLP
Walnut Glen Tower
8144 Walnut Hill Lane, Ste. 1000
Dallas, TX 75231
(214) 396-0441
dgeyser@adjtlaw.com
MARCH 2021
This is a copy of a public record, reproduced as it was published. It is not legal advice, and it may not be the version a court would rely on. Check the official source before you cite it.