In Rosebud LMS Inc. v. Adobe Systems Inc., Appeal No. 2015-1428, the Federal Circuit affirmed the district court’s grant of summary judgement that Adobe was not liable for pre-issuance damages under 35 U.S.C. 154(d) because it had no actual notice of the published patent application.

Rosebud sued Adobe for patent infringement two times prior to the instant action. After those cases were dismissed, Rosebud filed the instant action asserting a new continuation patent related to the patents from the prior cases.  Adobe, however, had discontinued use of the accused technology long before the patent had issued.  Adobe therefore moved for summary judgment of no remedies claiming Rosebud was not entitled to any pre-issuance damages under 35 U.S.C. § 154(d) because Adobe had no “actual notice” of the published application that led to the patent. Rosebud did not oppose the motion but instead argued that there were genuine issues of material fact as to whether Adobe’s outside counsel in the prior cases had searched for and found the related application which led to the continuation patent. The district court rejected Rosebud’s argument and granted Adobe’s motion for summary judgment.  

On appeal, the Federal Circuit affirmed the district court’s decision, finding that Adobe’s knowledge of the parent applications was insufficient to establish actual notice under § 154(d). Specifically, the Court explained that although affirmative acts of notification are not required for “actual notice” under § 154(d), Rosebud’s circumstantial evidence was simply insufficient to raise a genuine issue of material fact with respect to Adobe’s knowledge of the continuation application.