Top 20 Defense Results: Nuance Communications Inc. v. ABBYY Software House Inc.

When Russia-based ABBYY Production LLC hired new outside counsel in 2011 to fend off patent infringement claims brought by Massachusetts-based Nuance Communications Inc., the litigation between the two companies had already entered its fourth year.

Two years later, Finnegan, Henderson, Farabow, Garrett & Dunner LLP secured a comprehensive defense victory for ABBYY and Lexmark International Inc., a Kentucky-based printer manufacturer and ABBYY customer. Nuance Communications Inc. v. ABBYY USA Software House Inc., 08-2912 (N.D. Cal., filed June 9, 2008).

The Finnegan team led by the firm's Palo Alto office managing partner Erik R. Puknys overcame experienced lawyers from both Morrison & Foerster LLP and Wilson Sonsini Goodrich & Rosati PC.

Puknys said his firm entered the lawsuit at the same time that ABBYY hired a new director of litigation, Peter Kirk.

"The main in-house counsel was completely new to the case," Puknys said of Kirk. "He understood the technology really well, got us meetings with the engineers and up to speed on the technology really quickly."

ABBYY and Nuance both develop optical character recognition software that allows computers to search through digital documents. Nuance claimed at trial that ABBYY infringed two patents related to optical character recognition and a patent describing document processing over a computer network.

Nuance's expert witness testified that ABBYY and Lexmark should pay $107 million in damages, but jurors found no infringement of any of the three patents asserted by Nuance. Jurors also determined that Nuance's software packaging, which Nuance alleged ABBYY infringed, was not protectable trade dress.

Nuance filed an appeal to the U.S. Court of Appeals for the Federal Circuit last month, while ABBYY submitted a conditional cross-appeal.

- KEVIN LEE

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