{"id":455,"date":"2016-02-09T11:19:52","date_gmt":"2016-02-09T16:19:52","guid":{"rendered":"https:\/\/patents.harnessip.com\/?p=455"},"modified":"2016-02-11T11:23:30","modified_gmt":"2016-02-11T16:23:30","slug":"actual-knowledge-of-a-published-application-can-trigger-pre-issuance-damage-quick-put-your-head-in-the-sand","status":"publish","type":"post","link":"https:\/\/patents.harnessip.com\/?p=455","title":{"rendered":"Actual Knowledge of a Published Application Can Trigger Pre-Issuance Damage (Quick Put Your Head in the Sand)"},"content":{"rendered":"

In Rosebud LMS Inc. v. Adobe systems Inc.<\/em>, [2015-1428] (February 9, 2016), the Federal Circuit affirmed the grant of summary judgment that Adobe Systems Inc. was not liable for pre-issuance damages under 35 U.S.C. \u00a7154(d) because it had no actual notice of the published patent application that led to asserted U.S. Patent No. 8,578,280.<\/p>\n

35 USC 154(d) provides that:<\/p>\n

a patent shall include the right to obtain a reasonable royalty from any person who, during the period beginning on the date of publication of the application for such patent under section 122(b) . . .and ending on the date the patent is issued <\/span>(A)<\/span>(i) <\/span>makes, uses, offers for sale, or sells in the United States the invention as claimed in the published patent application or imports such an invention into the United States; . . . and (B) <\/span>had actual notice of the published patent application<\/p><\/blockquote>\n

The Rosebud argued that Adobe had actual notice of its patents because it had previously sued Adobe on the grandparent of the patent in suit, that Adobe followed Rosebud and its product and sought to emulate some of its product\u2019s features; and that it would have been standard practice in the industry for Adobe’s counsel to search for related patents.\u00a0 Adobe, without conceding knowledge, argued that some affirmative action on the part of Rosebud was required to put Adobe on “actual notice” of the patent.<\/p>\n

In a case of first impression, the Federal Circuit rejected the argument that some action on the part of patent owner is required for actual notice, but agreed that constructive notice is not sufficient to give “actual notice.”\u00a0 Adobe presented a compelling argument based upon the\u00a0legislative history of\u00a0154(d), but the Fedearl Circuit noted that the language enacted by Congress\u00a0was not consistent with Adobe\u2019s interpretation.\u00a0 The Federal Circuit also distinguished the interpretation of 287(a) requiring an affirmative act to put an infringer on notice to be entitled to\u00a0damages, noting the difference in the language of the two sections and noting that Congress could have used similar language in 154(d),\u00a0but did not.<\/p>\n

Noting several good reasons why some affirmative action on the part of the patent owner might make good policy sense, the Federal Circuit invited Congress to amend the statute if it wants a different result.<\/p>\n

Even under this lesser standard for actual notice, the Federal Circuit agreed that Rosebud failed to show that Adobe had actual notice of the patent.\u00a0 The Federal Circuit did not find that the earlier litigation on the grandparent of the current patent necessarily put Adobe on notice of the published application, it rejected the argument Adobe “followed” Rosebud and its products, is insufficient, and lastly rejected the argument that Adobe’s outside counsel would have discovered the publication preparing for the earlier litigation, noting that it never reached the claim construction stage because Rosebud missed all of its court-ordered deadlines.<\/p>\n

Companies should\u00a0rethink their competition\u00a0monitoring programs.\u00a0 Acquiring\u00a0actual knowledge of a published application increases the company’s exposure to pre-issuance damages.\u00a0 If\u00a0the company actually\u00a0uses its knowledge of the published application to reduce its liability — for example by designing around the claims or finding invalidating prior art — then this increased exposure is probably worth it.\u00a0 However, if the knowledge of the published application is not going to be put to good use, the increased exposure comes with no benefit.<\/p>\n

,<\/p>\n

 <\/p>\n","protected":false},"excerpt":{"rendered":"

In Rosebud LMS Inc. v. Adobe systems Inc., [2015-1428] (February 9, 2016), the Federal Circuit affirmed the grant of summary judgment that Adobe Systems Inc. was not liable for pre-issuance damages under 35 U.S.C. \u00a7154(d) because it had no actual … Continue reading →<\/span><\/a><\/p>\n","protected":false},"author":2,"featured_media":0,"comment_status":"closed","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[6],"tags":[],"class_list":["post-455","post","type-post","status-publish","format-standard","hentry","category-patent-law"],"post_mailing_queue_ids":[],"_links":{"self":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/455","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/users\/2"}],"replies":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcomments&post=455"}],"version-history":[{"count":1,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/455\/revisions"}],"predecessor-version":[{"id":456,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/455\/revisions\/456"}],"wp:attachment":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=455"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=455"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=455"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}