Rory P. Pheiffer and Alex Nagorniy, members of Nutter's Intellectual Property Department, wrote an article in IP Litigator analyzing the Federal Circuit's recent decision in Rosebud LMS v. Adobe Systems, which found that constructive notice was insufficient to meet the actual notice requirement under 35 U.S.C. § 154(d), and that instead a patent owner must prove the infringer was actually aware of the patent at issue. In the article, "Actual Notice Requirement Presents Challenge for Collecting Pre-Issuance Damages," Rory and Alex note that the Rosebud decision illustrates the difficulty that patentees face in seeking pre-issuance damages as an additional remedy to patent infringement. They point out that while the nature of pre-issuance damages may justify the patentee having to meet the difficult standard of proving the accused infringer had knowledge of the published application, the knowledge requirement creates the perverse incentive for potential infringers to circumvent due diligence practices, thus turning a blind eye towards the possibility of infringement so as to avoid liability for pre-issuance damages.
Originally published in March/April 2016
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