Voluntary Narrowing of Patents Claims Waives Right to Later Jury Trial on Untried Claims

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84-2. Voluntary Narrowing of Patents Claims Waives Right to Later Jury Trial on Untried Claims

Nuance Communs. v. Abbyy United States Software House, No. 2014-1629, 2014-1630, 2016 U.S. App. LEXIS 3009 (Fed. Cir. Feb. 22, 2016) (Before Chen, Dyk, and Prost, CJ.) (Opinion for the court, Chen, J.). Click Here for a copy of the opinion.

In a February 22, 2016 decision, the Federal Circuit affirmed a district court ruling of non-infringement for all asserted patents, where some patents and claims were not tried to the jury.

Nuance originally asserted over 140 claims from eight different patents against defendant ABBYY.  The case was quickly referred to a special master for scheduling following Markman. The master followed Nuance’s proposal to limit the patents asserted at trial to four, and the total claims to fifteen. The district court agreed, and Nuance thereafter narrowed its case further: to seven claims from three patents. The jury found non-infringement on all claims.

cafc-federal-circuit-335z copyEight months later, in a motion by ABBYY to compel costs, Nuance responded that the costs award should be stayed until its remaining patents had been tried. Nuance argued that the completed trial was only the “initial” trial and it had reserved its right to try the other patents in a subsequent trial.  The district court rejected Nuance’s arguments, finding that its judgment followed “a full and fair trial on the issues selected by Nuance for its case-in-chief,” and that it “afforded Nuance the opportunity to pursue discovery and claim construction on all its patents” but that it “agreed with Nuance’s proposal that it would conduct a single trial” on a “manageable set” of patents.

On appeal, the Federal Circuit affirmed the district court’s judgment, particularly pointing to Nuance’s affirmative decision to try a narrowed set of patents and claims.  The Court further rejected that Nuance’s “boilerplate reservation of rights” was sufficient to secure a second trial, when the court adopted the special master’s recommendations, based on Nuance’s proposals.  Finally, the Court rejected Nuance’s assertion that barring a trial on the non-litigated claims constituted a due process violation.  Nuance’s failure to make any objection prior to the entry of an unfavorable judgment defeated its due process argument.

The Author

Joseph Robinson

Joseph Robinson has over 20 years of experience in all aspects of intellectual property law. He focuses his practice in the pharmaceutical, life sciences, biotechnology, and medical device fields. His practice encompasses litigation, including Hatch-Waxman litigation; licensing; counseling; due diligence; and patent and trademark prosecution. He has served as litigation counsel in a variety of patent and trademark disputes in many different jurisdictions, and has also served as appellate counsel before the Court of Appeals for the Federal Circuit. Joe also focuses on complex inter partes matters before the U.S Patent and Trademark Office, inventorship disputes, reexaminations and reissues. His experience includes numerous interferences, a particular advantage in new U.S. Patent and Trademark Office post-grant proceedings. He also counsels on patent–related U.S. Food and Drug Administration issues, including citizen petitions, Orange Book listing, and trademark issues. For more information and to contact Joe please visit his profile page at the Troutman Sanders website.

Joseph Robinson

Robert Schaffer is an intellectual property partner at Troutman Sanders. Bob applies more than 30 years of experience to IP counseling and litigation. His work includes patent procurement, strategic planning and transactional advice, due diligence investigations, district court patent cases, and Federal Circuit appeals. He regularly handles complex and high-profile domestic and international patent portfolios, intellectual property agreements and licensing, IP evaluations for collaborations, mergers, and acquisitions. In disputed court cases Bob’s work includes representing and counseling client in ANDA litigations, complex patent infringement cases and appeals, and multidistrict and international cases. In disputed Patent Office matters his work includes representing and counseling clients in interferences, reexaminations, reissues, post-grant proceedings, and in European Oppositions. For more information and to contact Bob please visit his profile page at the Troutman Sanders website.

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  1. Ken March 4, 2016 12:57 pm

    Wow…very unfair to them, but at least other patentees are on notice to plan accordingly now.

    Interestingly, not many other areas of law often work this way…where you have to being all claims together or they’re waived.

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