Earlier this week, in Arendi Holding Ltd., v. Microsoft Corp., C.A. No. 09-119-JJF-LPS (D. Del. Mar. 22, 2010), Magistrate Judge Stark issued a Report and Recommendation that Judge Farnan grant Microsoft’s motion for summary judgment on Arendi’s claims for provisional damages under 35 U.S.C. § 154(d). Section 154 allows a patentee to pursue “provisional” damages for the period before the patent is actually granted, reaching back to the date on which the application was published. Id. at 10-12. It requires, however, that the accused infringer had “actual notice of the published patent application.” Id. at 11; 35 U.S.C. § 154(d).
The question is: what does “actual notice” mean? Magistrate Judge Stark determined that the statute focuses on the accused infringer, not the patent applicant, and so the notice need not have come from the patent applicant. Id. at 14. Further, the accused infringer need only have had actual notice of “the published patent application,” rather than specific notice of infringement. Id. at 14-15. The statute does, however, require actual notice, not constructive notice, and that is what decided the issue here..
Under the facts before the Court, Microsoft received notice solely as part of a 7,000 page document production in another case. Magistrate Judge Stark found that to be insufficient:
[A] single-page Notice of Publication dropped into nearly 7,000 pages of document production is analogous to a published application being available in a database but not expressly drawn to the attention of the alleged infringer. The authors of the legislative history did not intend for § 154( d)’ s actual notice requirement to be deemed satisfied by mere availability of a patent application in a public database.
Id. at 19. Thus, he recommended that Microsoft’s motion for summary judgment on § 154 issues be granted. Id.