Rosebud filed a patent infringement action Adobe and Adobe moved for summary judgment arguing that Rosebud had no remedy for its patent against Adobe. Adobe based its summary judgment motion on the argument that the patent-in-suit did not issue until after Adobe's accused product was discontinued.

As set out by the district court, the parties did not dispute that the accused feature of Adobe's product (Collaborate Live) was discontinued and could not have been used after January 2013. As the '280 patent issued on November 5, 2013, Rosebud could not recover post-issuance damages. Instead, Rosebud sought to recover provisional remedies under 35 U.S.C. § 154(d), based on the publication of the '280 patent application on December 29, 2011, which requires the defendant to have actual knowledge of the published patent application.

The district court further explained that "[p]ursuant to the plain language of § 154(d), the alleged infringer must have 'actual notice' of the 'published patent application.' Section 154(d) imposes no requirement that the "actual notice" be provided by an affirmative act of the patent applicant. Nor does the statute require an explanation of the infringing conduct."

Rosebud contended that the "actual notice" requirement was met based on the following evidence: "(1) Adobe had all of the information contained in the '280 patent application by virtue of the information contained in the '760 application; (2) one line of Adobe's source code for the accused collaborative live feature makes a reference to a Rosebud sample; (3) a few Adobe-produced emails discuss an unidentified trial product of Rosebud and the '760 patent; and (4) standard practice for patent litigators [is] to search for patents and applications related to the asserted patent, referencing the '760 patent litigation."

The district court disagreed that any of this evidence constituted actual notice. "Clearly, none of Rosebud's evidence identifies the '280 application by name. At best, it is evidence of constructive notice which, consistent with the statutory language, the case law, and the legislative history,' does not constitute 'actual notice' for purposes of claiming provisional remedies. Moreover, the court rejects any inference that Adobe had an affirmative duty to search for patent applications published by Rosebud because of the parties' litigation history."

Accordingly, the district court granted Adobe's motion for summary judgment. "In sum, § 154(d) provides an extraordinary remedy to a patentee - collecting damages before its patent issues. The conclusion reached at bar - that actual, not constructive, notice is required - is consistent with the notion that such an extraordinary remedy provided therein should not be awarded unless the alleged infringer actually knows about the patent application and engages in the infringing conduct with such knowledge."

Rosebud LMS, Inc. v. Adobe Systems Inc., Case No. 14-194-SLR (D. Del. Feb. 9, 2015)