CAFC backs Adobe in patent dispute
Adobe Systems has successfully fended off a patent infringement claim filed by software company Rosebud.
Yesterday, February 9, the US Court of Appeals for the Federal Circuit affirmed a lower court’s decision to grant Adobe’s motion for a summary judgment of non-infringement.
Rosebud had argued that the US District Court for the District of Delaware abused its discretion in dismissing the case during the discovery period.
But a three-judge federal circuit panel rejected the argument, stating that Rosebud was aware of Adobe’s filing and had not sufficiently opposed it.
The asserted patent, US number 8,578,280, covers software that facilitates collaborative work between two computers operating on the same network.
The patent is a continuation of two other patents owned by Rosebud (cited as the parent and grandparent patents). Those patents were also previously asserted against Adobe.
The latest lawsuit was filed in 2014 and concerned Rosebud’s claim for pre-issuance damages for the alleged infringement of the ‘280 patent.
Pre-issuance damages provide a patentee with the prospect of payment from a party that infringes a published application claim. The right is only provided if the third party has actual notice of the application and a patent is issued that has a substantially identical claim.
Adobe said it was not aware of the patented claims until the lawsuit was served—by which time it had stopped using the allegedly infringing products.
But Rosebud said Adobe must have been aware of the patent, because of the parties’ litigation history.
Rosebud said it is standard practice for a defendant to research patent applications related to the asserted patent and that Adobe must have been aware of the published application while it was engaged in litigation.
The federal circuit panel rejected Rosebud’s claims.
Judge Kimberly Moore, writing the 3-0 opinion, said: “Pre-issuance damages are not available unless the invention claimed in the published patent application is ‘substantially identical’ to the patented invention. Otherwise, the infringer cannot know the scope of the claimed invention.
“Knowledge of related patents does not serve this function, and is therefore legally insufficient to establish actual notice of the published patent application,” she concluded.
