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

Each week, we succinctly summarize the preceding week of Federal Circuit precedential patent opinions. We provide the pertinent facts, issues, and holdings. Our Review allows you to keep abreast of the Federal Circuit’s activities – important for everyone concerned with intellectual property. We welcome any feedback you may provide.

– Joe Robinson, Bob Schaffer, Lindsay Henner, Parker Hancock, and Puja Dave

troutman-sanders-long

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.

Share

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author as of the time of publication and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com.

Join the Discussion

One comment so far.

  • [Avatar for Ken]
    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.