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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.
Eight 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.