Delaware Patent Litigation Report : Delaware Intellectual Property Lawyer & Attorney : Morris James Law Firm : Delaware Patent Litigation Report

The Magistrate recommends granting defendants’ motion for summary judgment that plaintiff is not entitled to provisional damages pursuant to 35 U.S.C. § 154(d).  In order for plaintiff to be entitled to provisional damages, Section 154(d) requires that plaintiff prove that defendants had "actual notice" of plaintiff’s Published Application, and that claim 1 of the Published Application is "substantially identical" to claim 1 of the issued patent-in-suit.  The Magistrate looks at the legislative history to define “actual notice” and concludes that defendants did not have actual notice of the Published Application on January 7, 2003.  Plaintiff’s provision to defendants of the Notice of Publication does not sufficient since the Notice is just one page out of nearly 7,000 pages that plaintiff produced to defendants in that same production.  Because defendants did not have actual notice of plaintiff’s Published Application, plaintiff is not entitled to provisional damages.  Based on that finding, the Magistrate does not consider whether claim 1 of the Published Application is substantially identical to claim 1 of the patent-in-suit.