By Memorandum Opinion entered by The Honorable Richard G. Andrews in Viatech Technologies, Inc. v. Microsoft Corp., Civil Action No. 17-570-RGA (D.Del. July 18, 2019), the Court granted Defendant’s motion to dismiss in part by dismissing Plaintiff’s claims of direct and indirect infringement asserted in Count II of the Second Amended Complaint under the Kessler doctrine. The Kessler doctrine fills the gap between the doctrines of claim preclusion and issue preclusion and intends to prevent an adjudged non-infringer from repeated harassment for continuing its business as usual post-final judgment in a patent action. Id. at *5.

In Brain Life, LLC v. Elekta Inc., 746 F.3d 1045, 1055 (Fed. Cir. 2014), the Federal Circuit held as follows:

“The principle that, when an alleged infringer prevails in demonstrating noninfringement, the specific accused device(s) acquires the “status” of a noninfringing device vis-à-vis the asserted patent claims is an essential fact of a patent infringement claim. The status of an infringer is derived from the status imposed on the thing that is embraced by the asserted patent claims. And, when the devices in the first and second suits are “essentially the same,” the “new” product(s) also acquires the status of a noninfringing device vis-à-vis the same accusing party or its privies.

“Thus, where a second suit accuses the same or “essentially the same” product of infringing acts post-final judgment in the first suit, the Kessler doctrine will prevent the suit.” Viatech at *5. Given that Count II of Plaintiff’s Second Amended Complaint accused the Software Protection Platform (SPP) and Office Software Protection Platform (OSPP) when used to protect Windows or Office products of infringement, the Court determined that these products were accused in the previous suit between the parties where the SPP and OSPP software in Windows and Office products was determined not to infringe the asserted claims of U.S. Patent No. 6,920,567 (“the ‘567 patent”). Id. at *11-12. Accordingly, in granting Defendant’s motion to dismiss in part, the Court ruled that the dismissal of Count II of Plaintiff’s Second Amended Complaint fell squarely within the Kessler doctrine. Id. at *12-13.

A copy of the Memorandum Opinion is attached.

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