If the claims of a published Patent Application are essentially the same as the claims of the subsequently granted patent, and if the infringer was aware of the published Application, he can be ordered to pay an appropriate License for the use of the invention prior to the grant of the patent. Can this infringer’s license now only be demanded if the infringer has been made aware of the Application by the patent proprietor?
Rosebud LMS Inc. had filed three patent infringement lawsuits against Adobe Systems Inc. The first Lawsuit, which was based on the parent patent US 7,454,760, was dismissed in 2010. Two years later, Rosebud filed a second lawsuit based on the second patent (US 8,046,699). While this second Lawsuit was still pending, Rosebud filed a third infringement action in 2014, which was based on a third patent (US 8,578,280). It is worth noting that the second and third Patents resulted from continuation applications that had been branched off from the parent patent. Thus, the three Patents had essentially the same descriptive text and differed primarily in the claims.
In the third Lawsuit at issue here, Rosebud sought a reasonable License because Adobe had used the third Patent Application after it was published.
Adobe argued that they did not have actual notice of the third Patent Application at the time of infringement because Rosebud had not notified Adobe of the publication of the Application.
In contrast, Rosehud argued that, based on the circumstances of the individual case, it was obvious that Adobe was aware of the published Application. Firstly, Adobe was aware of the parent patent. Secondly, Adobe had followed Rosebud’s activities and, thirdly, it was customary to check the patent and its family when alleging patent infringement and that Adobe’s lawyer should therefore have seen Rosebud’s Application.
The District Court rejected the license claim. The appeal to the Court of Appeals for the Federal Circuit (CAFC) was also unsuccessful.
The CAFC first notes that the law requires that the infringer has “actual notice” of the publication of the Patent Application. This must be actual knowledge (“actual knowledge”). A legal presumption in favor of knowledge (“constructive knowledge”) is not sufficient.
The court then explains that the term “actual notice” can be equated with “knowledge”. Therefore, not only the case constellation in which the patent infringer is informed of the Application by the patent proprietor is covered. Rather, the infringer can also obtain knowledge of the Application by other means. Adobe’s position is therefore wrong.
However, Rosebud’s argument that it is clear from the circumstances of the dispute that Adobe was aware of the publication of the Patent Application does not prevail either. Knowledge of the parent patent is not sufficient because the claims of the later divisional application are by their nature not apparent from the parent patent. Secondly, the e-mails submitted as evidence do not allow the conclusion that Adobe was actually aware of the Application. As a result, Rosebud’s Lawsuit was therefore rightly dismissed.
Note: On the one hand, this judgment shows that it is not necessary to notify a competitor of the publication of one’s own Patent Application. However, a property right notice facilitates the proof of knowledge. On the other hand, it also makes it clear that even the unlawful use of claims of a published but still unexamined Application can lead to claims for damages.
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