Categories: Damages
      Date: Mar 22, 2016
     Title: Rosebud LMS Inc., DBA Rosebud PLM v. Adobe Ssytems Inc., No. 2015-1428 (Fed. Cir. 2016)

Written By: David Youngkin

In Rosebud LMS Inc. V. Adobe Systems Incorporated the Federal Circuit affirmed the district court’s grant of summary judgement finding that Adobe Systems was not liable for pre-issuance damages because it had no actual notice of the application which issued as U.S. Patent No. 8,578,280.

Rosebud previously filed suits against Adobe for patent infringement asserting U.S. Patents 7,454,760 and 8,046,699.  In the present suit Rosebud alleged that Adobe infringed its U.S. Patent No. 8,578,280.  The ‘280 patent is a continuation of the ‘699 patent, which is a continuation of the ‘760 patent. 

Adobe argued that Rosebud could not recover under 35 U.S.C. §271 for pre-issuance damages because it had no actual knowledge of the published application which led to the ‘280 patent.  Further, Adobe argued that notice must come directly from the patentee.   Although the Federal Circuit agreed that actual notice was required it found that no affirmative act by the patentee was necessary.  Although Adobe knew of the ‘760 and ‘690 parent patents the Federal Circuit found that Adobe did not have actual knowledge and Rosebud did not provide evidence showing that Adobe knew of the ‘280 application.  Additionally Rosebud provided no evidence showing that Adobe monitored Rosebud products or Rosebud patent activity.  Finally no reasonable inference could be drawn that Adobe’s attorneys would have found the ‘280 patent application while preparing for prior litigation.