Pre-Issuance Damages Possible Only If You "Know" About The Published Application

Addressing for the first time the notice requirement for pre-issuance damages under 35 USC § 154(d), the US Court of Appeals for the Federal Circuit affirmed the grant of summary judgment of no pre-issuance damages where the patent owner failed to prove that defendant had actual notice of its published application. Rosebud LMS Inc. v. Adobe Systems Inc., Case No. 15-1428 (Fed. Cir., Feb. 9, 2016) (Moore, J).

The present litigation is the third suit filed by the patent owner, Rosebud, against Adobe alleging infringement of various patents within a single patent family. In this case, the district court granted Adobe summary judgment on the issue of post-issuance damages because Adobe had stopped use of the accused technology 10 months before the patent-in-suit issued.