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30 June 2015Patents

Canon and HP blocked from invoking century-old patent doctrine

Technology companies including Canon and HP have been told that they cannot rely on a more than 100-year-old US doctrine to dismiss patent infringement claims.

In a judgment handed down at the US District Court for the Northern District of California, Judge Claudia Wilken said that an earlier victory for the companies at the US International Trade Commission (ITC) would not trigger the so-called Kessler doctrine.

The Kessler doctrine stems from the US Supreme Court’s 1907 ruling Kessler v Eldred in which it ruled that a company that has previously secured a judgment of non-infringement can use that ruling to prevent future claims of infringement.

In the case, which began at the ITC in 2012, California-based company Technology Properties accused Canon and HP, as well online retailer Newegg and electronics company Epson, of importing and selling products that allegedly violated its patents covering memory card readers.

Technology Properties also sued the companies at the US District Court for the Eastern District of Texas but the litigation was stayed pending the outcome of the ITC’s investigation.

In 2013, the ITC said that the defendants’ products did not infringe the patents. The case due to be heard in Texas was transferred to the California district court.

The four companies asked the Californian court to take into account the ITC’s ruling and the Kessler doctrine by issuing a judgment of non-infringement.

But Wilken said the Kessler doctrine should not apply to decisions handed down by the ITC because it evolved from an agency created nine years after the Supreme Court’s ruling in Kessler.

She wrote in the judgment: “There is no possibility that the Supreme Court had ITC judgments in mind when it decided Kessler because the ITC’s predecessor agency, the United States Tariff Commission, was not created until nine years after Kessler in 1916.”

Wilken added that US Congress has specifically said that patent-based cases considered by the ITC neither purport to be, nor can be, regarded as binding interpretations of US patent laws.

Neither Canon, HP, Newegg nor Epson had responded to a request for comment at the time of publication but WIPR will update the story should the companies get in touch.

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