“Actual” Knowledge Actually Means Actual for Pre-Issuance Damages

In Rosebud LMS v. Adobe Sys., No. 2015-1428 (Fed. Cir. Feb. 9, 2016), the Federal Circuit affirmed summary judgment that Rosebud was not entitled to pre-issuance damages because Adobe had no actual notice of the published patent application via its knowledge of a parent application.

Rosebud sued Adobe for infringement, and Adobe moved for summary judgment on lack of damages. Adobe argued there were no pre-issuance damages because Adobe had no actual knowledge of the published patent application. Rosebud argued that the patent-in-suit was a continuation in a family of patents involved in two prior infringement suits against Adobe. So Adobe had actual knowledge of the parent patents and, according to Rosebud, would have searched for related patents and applications in the family. On appeal, the Federal Circuit held that knowledge of a parent patent did not provide actual notice of a child patent because the claims of the two patents differ. Because no evidence showed that Adobe monitored Rosebud’s products or patent activity, and the prior suits never reached the construction phase, no reasonable inference could be drawn that Adobe’s attorneys searched for applications and patents related to the parents.