A Cautionary Tale: When Patentee’s Voluntary Election to Try Subset of Patents Justifies Noninfringement Judgment for All Asserted Patents

Author: Lauren J. Dreyer
Editor: Kevin D. Rodkey

In Nuance Communications v. ABBYY USA Software House, No. 2014-1629 (Fed. Cir. Feb. 22, 2016), the Federal Circuit affirmed a noninfringement judgment against the patentee, Nuance, for all patents in Nuance’s complaint, even those not tried before the jury.

Nuance sued ABBYY and others for infringement, asserting eight patents in its complaint. As the case progressed, Nuance repeatedly agreed to reduce the number of asserted patents and claims, but only after it got full discovery and claim construction rulings on all of its patents. The goal, Nuance told the district court, was to identify its “best” patents during discovery and then assert only a manageable subset of its “strongest” patents in a single trial. On the recommendation of a special master, the district court adopted Nuance’s proposal to reduce the number of patents to four, but Nuance ultimately chose to assert only three patents at trial. After a jury found that ABBYY did not infringe the three patents at trial, the district court entered final judgment for ABBYY. Later, in ruling on ABBYY’s motion for payment of costs, the district court clarified that the judgment applied to all of Nuance’s patents, including those that were not tried.

The Federal Circuit affirmed the judgment, noting that Nuance repeatedly elected to move forward on fewer patents and fewer claims. Nuance argued that it expressly reserved its right to try the unselected patents at a later time, but the Federal Circuit found Nuance’s “boilerplate reservation of rights” insufficient to overcome the special master’s recommendation and Nuance’s intention to have one trial on a subset of its “best” patents. The Court also rejected Nuance’s argument under In re Katz, 639 F.3d 1303 (Fed. Cir. 2011), that the excluded claims presented unique legal issues and their exclusion violated due process. The Court held that Nuance failed to show that it attempted to protect its due-process rights, because it made no objection or assertion that excluding the claims could deprive it of due process.


DISCLAIMER: Although we wish to hear from you, information exchanged in this blog cannot and does not create an attorney-client relationship. Please do not post any information that you consider to be personal or confidential. If you wish for Finnegan, Henderson, Farabow, Garrett & Dunner, LLP to consider representing you, in order to establish an attorney-client relationship you must first enter a written representation agreement with Finnegan. Contact us for additional information. One of our lawyers will be happy to discuss the possibility of representation with you. Additional disclaimer information.

Tagged , , ,

Leave a Reply

Fill in your details below or click an icon to log in:

WordPress.com Logo

You are commenting using your WordPress.com account. Log Out / Change )

Twitter picture

You are commenting using your Twitter account. Log Out / Change )

Facebook photo

You are commenting using your Facebook account. Log Out / Change )

Google+ photo

You are commenting using your Google+ account. Log Out / Change )

Connecting to %s

%d bloggers like this: