Supreme Court won’t reconsider Amazon patent suit
The US Supreme Court will not review a lower court’s decision to throw out patent infringement claims levied at several Amazon Web Services customers in line with a 114-year-old patent doctrine.
PersonalWeb has pursued several infringement lawsuits against Amazon and dozens of its major web services clients including Patreon, BuzzFeed and Vox Media over the past decade.
The lawsuits held that Amazon’s Simple Storage Service (S3)—an internet protocol offering data storage services—infringed several of PersonalWeb’s patents related to its proprietary data-tagging system TrueName.
Amazon was initially targeted in a 2011 lawsuit, which was dismissed with prejudice in 2014. PersonalWeb then attempted to sue several of its customers using the S3 system over similar patent infringement claims.
Amazon later intervened in the lawsuit, citing the 114-year-old Kessler doctrine—which holds that a patent owner that has unsuccessfully sued a manufacturer for infringement was barred from then suing one of its customers for infringement based on the same product—as reason to dismiss the case.
The lawsuit made it to the US Federal Circuit, where the three-judge panel agreed that Kessler barred PersonalWeb from suing the Amazon customers.
In April last year, PersonalWeb submitted a petition for a writ of certiorari to the US Supreme Court, calling into question whether the Federal Circuit “correctly interpreted” Kessler and whether the doctrine extended to cases where the prior judgment was a voluntary dismissal.
On Monday, May 16, the Supreme Court denied PersonalWeb’s petition, concluding the long-running dispute.
The long road to Kessler
PersonalWeb first sued Amazon in 2011 at the US District Court for the Eastern District of Texas, accusing the company of infringing patents related to TrueName.
However, the district court dismissed the lawsuit with prejudice in June 2014, meaning that PersonalWeb could not raise claims against Amazon again.
Four years later, PersonalWeb sued eight of Amazon’s customers in the US District Court for the Northern District of California in 2018, alleging that they had infringed the same TrueName patents with their usage of the Amazon S3 system.
Amazon intervened in the lawsuit on behalf of its customers, asking the court to declare that its customers had not infringed the patents as similar infringement claims had already been dealt with in the 2011 lawsuit.
The California court then ruled in favour of Amazon, holding that PersonalWeb was barred from raising claims over the TrueName due to the prior lawsuit dismissal.
PersonalWeb appealed this decision to the Federal Circuit, arguing that while it had claims in both rounds of litigation related to the S3, they dealt with “different features” of the system. However, the Federal Circuit was not swayed and upheld the California court’s dismissal.
In their reasoning, the Federal Circuit cited precedent in the Supreme Court’s 1907 ruling in Kessler v Eldred, which forms the basis of the Kessler Doctrine.
PersonalWeb appealed this opinion to the US Supreme Court, calling into question the Kessler doctrine and its application by the circuit.
The Supreme Court sought input on whether it should tackle the case, asking the Solicitor General’s office whether barring PersonalWeb from pursuing claims against Amazon customers was justified.
Solicitor General Elizabeth Prelogar responded in April 2022 requesting that the Supreme Court should deny PersonalWeb’s petition for a writ of certiorari.
“Contrary to petitioner’s contention, Kessler is not a relic, but rather announced principles that remain legally sound and practically significant,” Prelogar said.
However, she had reservations about how the court applied Kessler in its analysis. She added: “The Federal Circuit has invoked Kessler only to fill a perceived temporal gap when claim preclusion would not protect the manufacturer and its privies because a second suit involves conduct postdating the first judgment”.
The Supreme Court agreed with Prelogar’s view regarding the relevance of Kessler, denying the petition.
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