United States District Court, D. Delaware
ROSEBUD LMS, INC. d/b/a ROSEBUD PLM, Plaintiff,
ADOBE SYSTEMS INCORPORATED, Defendant.
SUE L. ROBINSON, District Judge.
At Wilmington this 5th day of February, 2015, having heard argument on, and having reviewed the papers submitted in connection with, Adobe Systems Incorporated's ("Adobe") motion for summary judgment of no remedies (D.I. 65); the court issues its decision based on the following reasoning:
1. Background. On February 13, 2014, plaintiff Rosebud LMS Inc. d/b/a Rosebud Plm ("Rosebud") filed this action ("Rosebud III) against Adobe alleging that Adobe's Collaborative Live feature in Adobe Acrobat infringes certain method claims of U.S. Patent No. 8, 578, 280 ("the '280 patent"). (D.I. 1) After Adobe moved to dismiss, Rosebud filed a first amended complaint ("FAC") on April 7, 2014. Adobe answered the FAG and counterclaimed on April 28, 2014. Rosebud answered the counterclaims on May 22, 2014. The court has jurisdiction pursuant to 28 U.S.C. §§ 1331 and 1338(a).
2. Rosebud is a Delaware corporation with its principal place of business in New York City, New York. Adobe is a Delaware corporation with its principal place of business in San Jose, California. This lawsuit is the third in a series of lawsuits that Rosebud has filed against Adobe beginning in 2010. The '280 patent is a continuation of the patent at issue in Rosebud 11,  U.S. Patent 8, 046, 699 ("the '699 patent"). The '699 patent from Rosebud II was, in turn, a continuation of the patent at issue in Rosebud 1,  U.S. Patent 7, 454, 760 ("the '760 patent").
3. Standard. "The court shall grant summary judgment if the movant shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law." Fed.R.Civ.P. 56(a). The moving party bears the burden of demonstrating the absence of a genuine issue of material fact. Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 415 U.S. 574, 586 n.10 (1986). A party asserting that a fact cannot be-or, alternatively, is-genuinely disputed must support the assertion either by citing to "particular parts of materials in the record, including depositions, documents, electronically stored information, affidavits or declarations, stipulations (including those made for the purposes of the motions only), admissions, interrogatory answers, or other materials, " or by "showing that the materials cited do not establish the absence or presence of a genuine dispute, or that an adverse party cannot produce admissible evidence to support the fact." Fed.R.Civ.P. 56(c)(1)(A) & (B). If the moving party has carried its burden, the nonmovant must then "come forward with specific facts showing that there is a genuine issue for trial." Matsushita, 415 U.S. at 587 (internal quotation marks omitted). The court will "draw all reasonable inferences in favor of the nonmoving party, and it may not make credibility determinations or weigh the evidence." Reeves v. Sanderson Plumbing Prods., Inc., 530 U.S. 133, 150 (2000).
4. To defeat a motion for summary judgment, the non-moving party must "do more than simply show that there is some metaphysical doubt as to the material facts." Matsushita, 475 U.S. at 586-87; see also Podohnik v. U.S. Postal Service, 409 F.3d 584, 594 (3d Cir. 2005) (stating party opposing summary judgment "must present more than just bare assertions, conclusory allegations or suspicions to show the existence of a genuine issue") (internal quotation marks omitted). Although the "mere existence of some alleged factual dispute between the parties will not defeat an otherwise properly supported motion for summary judgment, " a factual dispute is genuine where "the evidence is such that a reasonable jury could return a verdict for the nonmoving party." Anderson v. Liberty Lobby, Inc., 411 U.S. 242, 247-48 (1986). "If the evidence is merely colorable, or is not significantly probative, summary judgment may be granted." Id. at 249-50 (internal citations omitted); see also Celotex Corp. v. Catrett, 411 U.S. 317, 322 (1986) (stating entry of summary judgment is mandated "against a party who fails to make a showing sufficient to establish the existence of an element essential to that party's case, and on which that party will bear the burden of proof at trial").
5. Analysis. The parties do not dispute that the accused Collaborate Live feature of Adobe's product was discontinued and could not have been used after January 2013. (D.I. 66 at 2-3) As the '280 patent issued on November 5, 2013, Rosebud cannot recover post-issuance damages. See Welker Bearing Co. v. PHD, Inc., 550 F.3d 1090, 1095 (Fed. Cir. 2008) (citing Hoover Group, Inc. v. Custom Metalcraft, Inc., 66 F.3d 299, 304 (Fed. Cir. 1995), for the general proposition that a patentee may "obtain damages only for acts of infringement after the issuance of the [ ] patent...."). Therefore, Rosebud seeks to recover provisional remedies under 35 U.S.C. § 154(d), based on the publication of the '280 patent application on December 29, 2011.
6. Section 154(d) provides for provisional rights:
(1) In general.-In addition to other rights provided by this section, a patent shall include the right to obtain a reasonable royalty from any person who, during the period beginning on the date of publication of the application for such patent under section 122(b), ..., and ending on the date the patent is issued-
(A)(i) makes, uses, offers for sale, or sells in the United States the invention as claimed in the published patent application or imports such an invention into the United States;...
(B) had actual notice of the published patent application....
(2) Right based on substantially identical inventions.-The right under paragraph (1) to obtain a reasonable royalty shall not be available under this subsection unless the invention as claimed in the patent is substantially identical to ...