Akin IP Lawyers Pen Law360 Article on Impact of Expanded Kessler Doctrine

Law360 has published the article “Overlooked Patent Cases: Preclusion’s Effect On Settlement,” written by Akin Gump intellectual property partner Andrew Holtman, senior counsel Melissa Gibson and associate Hannah Price. Part of an ongoing series by the firm’s IP lawyers, this article addresses the impact of a 2020 ruling by the U.S. Court of Appeals for the Federal Circuit expanding the century-old Kessler doctrine.

The authors begin with a history of the Kessler doctrine, noting that it was adopted by the U.S. Supreme Court in 1907 “to prevent patent owners from bringing follow-on suits against customers of a seller who previously prevailed against said patent.” Last year, they write, the Federal Circuit renewed consideration of the doctrine’s application and scope, broadening it “by barring follow-on patent infringement actions that were finally decided but not actually litigated.”

As a result of this change, Holtman, Gibson and Price note, district courts “have begun to articulate how the newer scope applies.” They then discuss several recent rulings, observing that the expansion of the Kessler doctrine “is a cautionary tale to patent owners about the importance of preserving rights for future patent litigations against third parties in settlement agreements.”

To read the article in its entirety, please click here.