Nuance Communications, Inc. v. Abbyy Software House et al
Filing
698
ORDER by Judge Jeffrey S. White denying 614 ABBYY's Motion for Summary Judgment; denying 681 Lexmark's Motion for Summary Judgment; and granting in part and denying in part 616 Nuance's Motion for Sanctions. (jswlc2, COURT STAFF) (Filed on 5/22/2013)
1
2
3
4
5
6
IN THE UNITED STATES DISTRICT COURT
7
FOR THE NORTHERN DISTRICT OF CALIFORNIA
8
NUANCE COMMUNICATIONS INC,
10
Plaintiff,
11
For the Northern District of California
United States District Court
9
12
13
14
No. C 08-02912 JSW
v.
ABBYY SOFTWARE HOUSE, et al.,
ORDER RE MOTIONS
Defendants.
/
15
Now before the Court are: (1) the motion for summary judgment filed by defendants
16
ABBYY USA Software House, Inc., ABBYY Software, Ltd., and ABBYY Production LLC
17
(collectively “ABBYY”); (2) the motion for summary judgment on the ’161 Patent filed by
18
defendant Lexmark International, Inc. (“Lexmark”): and (3) the motion for attorneys’ fees and
19
costs as part of discovery sanctions filed by plaintiff Nuance Communications, Inc. (“Nuance”).
20
The Court finds that these matters are appropriate for disposition without oral argument and it is
21
hereby deemed submitted. See Civ. L.R. 7-1(b). Accordingly, the hearing set for May 24, 2013
22
is HEREBY VACATED. Having carefully reviewed the parties’ papers, considered their
23
arguments and the relevant legal authority, the Court hereby DENIES ABBYY’s motion for
24
summary judgment; DENIES Lexmark’s motion for summary judgment; and GRANTS IN
25
PART and DENIES IN PART Nuance’s motion for sanctions.
26
The Court shall address facts from the record as necessary in the remainder of this order.
27
28
1
2
ANALYSIS
A.
3
Legal Standard on Motion for Summary Judgment.
A principal purpose of the summary judgment procedure is to identify and dispose of
Summary judgment is proper when the “pleadings, depositions, answers to interrogatories, and
6
admissions on file, together with the affidavits, if any, show that there is no genuine issue as to
7
any material fact and that the moving party is entitled to judgment as a matter of law.” Fed. R.
8
Civ. P. 56(c). “In considering a motion for summary judgment, the court may not weigh the
9
evidence or make credibility determinations, and is required to draw all inferences in a light
10
most favorable to the non-moving party.” Freeman v. Arpaio, 125 F.3d 732, 735 (9th Cir.
11
For the Northern District of California
factually unsupported claims. Celotex Corp. v. Cattrett, 477 U.S. 317, 323-24 (1986).
5
United States District Court
4
1997).
12
The party moving for summary judgment bears the initial burden of identifying those
13
portions of the pleadings, discovery, and affidavits that demonstrate the absence of a genuine
14
issue of material fact. Celotex, 477 U.S. at 323. An issue of fact is “genuine” only if there is
15
sufficient evidence for a reasonable fact finder to find for the non-moving party. Anderson v.
16
Liberty Lobby, Inc., 477 U.S. 242, 248-49 (1986). A fact is “material” if it may affect the
17
outcome of the case. Id. at 248. If the party moving for summary judgment does not have the
18
ultimate burden of persuasion at trial, that party must produce evidence which either negates an
19
essential element of the non-moving party’s claims or that party must show that the non-moving
20
party does not have enough evidence of an essential element to carry its ultimate burden of
21
persuasion at trial. Nissan Fire & Marine Ins. Co. v. Fritz Cos., 210 F.3d 1099, 1102 (9th Cir.
22
2000). Once the moving party meets its initial burden, the non-moving party must go beyond
23
the pleadings and, by its own evidence, “set forth specific facts showing that there is a genuine
24
issue for trial.” Fed. R. Civ. P. 56(e).
25
In order to make this showing, the non-moving party must “identify with reasonable
26
particularity the evidence that precludes summary judgment.” Keenan v. Allan, 91 F.3d 1275,
27
1279 (9th Cir. 1996). In addition, the party seeking to establish a genuine issue of material fact
28
must take care adequately to point a court to the evidence precluding summary judgment
2
1
because a court is “‘not required to comb the record to find some reason to deny a motion for
2
summary judgment.’” Carmen v. San Francisco Unified School Dist., 237 F.3d 1026, 1029 (9th
3
Cir. 2001) (quoting Forsberg v. Pacific Northwest Bell Telephone Co., 840 F.2d 1409, 1418
4
(9th Cir. 1988)). If the non-moving party fails to point to evidence precluding summary
5
judgment, the moving party is entitled to judgment as a matter of law. Celotex, 477 U.S. at 323.
6
B.
Motions for Summary Judgment.
7
1.
8
ABBYY moves for summary judgment on Nuance’s trade dress claims on several bases.
Trade Dress Claims.
knew of the allegedly infringing trade dress on ABBYY competing products in June of 2002,
11
For the Northern District of California
First, ABBYY moves on the basis of acquiescence and laches, arguing that although Nuance
10
United States District Court
9
Nuance did nothing to object or complain about it at that time. Nuance even went so far as to
12
congratulate ABBYY’s top management on the product, and only sued on the alleged
13
infringement six years later, after the products were already off the market. ABBYY also
14
moves for summary judgment on the trade dress claims on the basis that the Nuance’s design is
15
made up entirely of basic, commonplace elements, which are not inherently distinctive, and
16
which had not acquired secondary meaning in the marketplace. The Court finds the second
17
argument regarding the design elements and potential secondary meaning rife with disputed
18
issues of fact.
19
With regard to the defense of acquiescence and laches, the Court finds that ABBYY has
20
not waived the defense by virtue of having given notice in the pleadings and their targeted
21
discovery, and finds that Nuance did not suffer prejudice as a result. However, the Court finds
22
that the defenses are not persuasive on their merits at summary judgment. The e-mail sent to
23
ABBYY’s top management congratulating ABBYY on the release of their product does not
24
arise to the clear case of acquiescence found decisive in Conan Properties, Inc. v. Conans
25
Pizza, Inc., 752 F.2d 145 (5th Cir. 1985). In Conan, while visiting the defendant’s restaurant,
26
one of the creators of the Conan character took a picture with the defendant in front of his
27
restaurant and its allegedly infringing decor and inscribed the photograph with a congratulatory
28
message. Id. at 148. The court found that the defendant thereby clearly acquiesced to the use of
3
1
the character in the restaurant’s decor. Id. Here, however, the message congratulating
2
defendant on the release of their product does not refer to or picture the promotional or trade
3
dress materials. (See Declaration of Dean Tang, Ex. 5.) The Court does not find that the
4
congratulatory e-mail, as a matter of law, establishes that Nuance was both aware of and
5
acquiesced to ABBYY’s packaging, thereby entitling ABBBY to the defense of acquiescence or
6
laches. Accordingly, ABBYY’s motion for summary judgment on the trade dress claims is
7
DENIED.
8
2.
9
ABBYY also moves for summary judgment on the multiple patent claims remaining in
Patent Claims.
this matter. Upon careful review of the record, the expert reports, and the Court’s claim
11
For the Northern District of California
United States District Court
10
construction orders, the Court finds that there remain questions of fact regarding each of the
12
patent infringement claims which preclude the Court from granting either defendant ABBYY’s
13
or Lexmark’s motions for summary judgment. Thus, the Court DENIES ABBYY’s and
14
Lexmark’s motions for summary judgment.1
15
C.
Nuance’s Motion for Discovery Sanctions.
16
Nuance moves for attorneys’ fees and costs as part of discovery abuse sanctions
17
resulting from the late production of relevant documents from ABBYY. ABBYY contends that
18
the production was late as a result of their satisfaction of Nuance’s multiple other discovery
19
requests seeking massive amounts of irrelevant information. The Court does not find the delay
20
in production justified considering the scope of this case and the sheer amount of lawyering and
21
the parties’ investment of time and effort. Further, ABBYY’s late production required the
22
extension of time for discovery and Nuance’s retaking of many depositions which had been
23
completed prior to the original close of discovery. The Court finds sanctions under Federal
24
Rule of Civil Procedure 37 are justified for the expense Nuance incurred in the retaking of
25
otherwise-completed depositions once the Court re-opened discovery due to the late disclosures.
26
27
28
To the extent within defendants’ replies, they intend to move to strike Nuance’s
arguments, those requests to strike are DENIED.
1
4
1
According to the undisputed record of costs and fees, the amount Nuance incurred after
2
the re-opening of discovery due to the late production was $134,613.51 ($14,544.94 in costs
3
and $120,068.57 in fees). This amount is payable by ABBYY within 30 days of this order.
4
5
CONCLUSION
For the foregoing reasons, the Court DENIES ABBYY’s motion for summary judgment;
6
DENIES Lexmark’s motion for summary judgment; and GRANTS IN PART and DENIES IN
7
PART Nuance’s motion for sanctions.
8
In addition, the Court shall, by separate order, compel the parties to attend a mandatory
9
settlement conference before a Magistrate Judge to be completed by no later than July 5, 2013.
Further, in the event this matter does not settle, the Court intends to consult with Special
11
For the Northern District of California
United States District Court
10
Master Meredith Addy in the resolution of all pretrial filings, at the expense of the parties in
12
accordance with the terms of the Court’s order dated April 29, 2010.
13
14
IT IS SO ORDERED.
15
16
Dated: May 22, 2013
JEFFREY S. WHITE
UNITED STATES DISTRICT JUDGE
17
18
19
20
21
22
23
24
25
26
27
28
5
Disclaimer: Justia Dockets & Filings provides public litigation records from the federal appellate and district courts. These filings and docket sheets should not be considered findings of fact or liability, nor do they necessarily reflect the view of Justia.
Why Is My Information Online?