Nuance Communications, Inc. et al. v. ABBYY USA Software House, Inc. et al.


Docket No. 2014-1629, 2014-1630

PROST, DYK, CHEN
February 22, 2016

Brief Summary: Nuance’s arguments that the DC improperly relied on a dicitionary definition was rejected since the parties agree to the same during a Markman hearing. Nuance’s argument regarding due process also rejected since it voluntarily narrowed its case and did not timely object to the DC’s procedures.

Summary: Nuance appealed jury finding of no infringement of its US 6,038,342 and 5,381,489 relating to optical character recognition (OCR) technology; and 6,742,161 (a non-OCR patent). Nuance argued for a new trial on the ‘342 patent because, it alleged, the DC improperly construed the term “identifying” in a Markman hearing as having its “commonly understood meaning” (“to establish the identify of”) (which was decided “in Nuance’s favor”). After the Markman hearing (during SJ briefing), though, “[i]t became apparent…that the parties disagreed as to the plain and ordinary meaning of ‘identifying,’ or at least its application to the accused devices.” Nuance argued in its appeal that the DC violated O2 Micro (FC 2008) but the FC panel disagreed because the parties had already agreed to the claim construction (Akamai, FC 2015 (after agreeing during claim construction, “the defendant could not ‘argue at the jury instruction stage…that the construction was somehow too broad.)) It also found that “even if the [DC] did err in adopting a dictionary definition…it is clear that ‘correction of the errors…would not have changed the result, given the evidence presented” (Teleflex, FC 2002). It also argued it was denied due process because the DC entered final judgment against it regarding patents it ultimately decided not to pursue in the case. After a Markman hearing on three OCR patents (including ‘342 and ‘489), a special master recommended, as Nuance proposed, to proceed with claim construction on its non-OCR patents (including ‘161 and others), then trial on both sets of patents, limit the total patents at trial to four, and the number of claims to 15 (which was then narrowed to seven claims from the ‘342, ‘489 and ‘161 patents). ABBYY argued there was no violation because “Nuance voluntarily narrowed the case to its best patents and is now simply trying to get a second bit at the apple since it lost at trial”. Nuance argued “that it expressly reserved its rights as to all patents, including those that were not selected for trial.” However, the FC panel concluded that since Nuance voluntarily narrowed its case and did not object to the DC’s procedures in timely manner, it was not entitled to another trial.

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