Category Archives: Damages

Courts Must Apply Phillips  Standard to Determine Claim Scope for Intervening Rights Inquiry

Author: W. Caroline Chen, Ph.D.
Editor: Jeff T. Watson

In Convolve, Inc. v. Compaq Computer Corp., No. 14-1732 (Fed. Cir. Feb. 10, 2016), the Federal Circuit reversed the district court’s grant of summary judgment of noninfringement based on its determination that liability was precluded by intervening rights.

Convolve filed suit against Seagate and Compaq in 2000, alleging, among other things, infringement of U.S. Patent No. 6,314,473. While the litigation was pending, the 473 patent underwent reexamination. During reexamination, the patentee added the word “seek” in front of “acoustic noise” in the claims in response to a prior-art rejection. On remand from a prior appeal to the Federal Circuit, the district court adopted the examiner’s finding that the “acoustic noise” was not limited to “seek acoustic noise” and held that patent infringement liability was precluded by intervening rights arising from the substantive amendment to the claims.

Continue reading

Tagged , , ,

“Actual” Knowledge Actually Means Actual  for Pre-Issuance Damages

Author: Christopher B. McKinley
Editor: Lauren J. Dreyer

In Rosebud LMS v. Adobe Sys., No. 2015-1428 (Fed. Cir. Feb. 9, 2016), the Federal Circuit affirmed summary judgment that Rosebud was not entitled to pre-issuance damages because Adobe had no actual notice of the published patent application via its knowledge of a parent application.

Rosebud sued Adobe for infringement, and Adobe moved for summary judgment on lack of damages. Adobe argued there were no pre-issuance damages because Adobe had no actual knowledge of the published patent application. Rosebud argued that the patent-in-suit was a continuation in a family of patents involved in two prior infringement suits against Adobe. So Adobe had actual knowledge of the parent patents and, according to Rosebud, would have searched for related patents and applications in the family. On appeal, the Federal Circuit held that knowledge of a parent patent did not provide actual notice of a child patent because the claims of the two patents differ. Because no evidence showed that Adobe monitored Rosebud’s products or patent activity, and the prior suits never reached the construction phase, no reasonable inference could be drawn that Adobe’s attorneys searched for applications and patents related to the parents.

Continue reading

Tagged , ,

On Remand, Federal Circuit Affirms Akamai’s $45.4M Lost Profits Damages from Limelight

Author: Gracie K. Mills
Editor: Lauren J. Dreyer

In the most recent installment of Akamai Technologies v. Limelight Networks, Nos. 09-1372, 09-1380, 09-1416, 09-1417 (Fed. Cir. Nov. 16, 2015), the Federal Circuit unanimously approved a calculation of Akamai’s damages based on lost profits, remanding for reinstatement of the jury’s $45.4 million damages award. Continue reading

Tagged , ,