In this article, Law360 profiled Finnegan's August 26 jury trial win for ABBYY and Lexmark International, Inc. In the lawsuit, rival Nuance Communications, Inc. accused the two companies of patent infringement on optical character recognition (OCR) software technology, as well as trade dress infringement for product packaging. “That ABBYY came out on top is a credit to Finnegan’s effective trial strategy,” wrote Law360.
ABBYY had been “dogged by Nuance’s litigation” for many years leading up to the trial, and at one point Nuance had alleged as much as $1 billion in damages. “This was clearly a bet-the-company case,” said Finnegan partner Erik R. Puknys. Before trial, the defense team “chipp[ed] away at Nuance's damages theories." For printer manufacturer Lexmark, who bundled OCR software, Finnegan attorneys asserted that “the $4-a-unit figure was extraordinarily high, and Lexmark would not have paid it, said Finnegan partner Lily Lim.”
At trial in the Northern District of California, Finnegan counsel told the story of ABBYY’s founding by a group of Russian students at the Moscow Institute of Physics and Technology. The start-up began offering OCR software in Russia and Europe in the early 1990s. “Their story was very similar to what you see in Northern California,” said Finnegan partner Gerald F. Ivey, who argued at trial. “We wanted to show a kinship between our young Russian graduates and the people that might be coming out of Stanford and Berkeley.”
In the late 1990s, ABBYY’s FineReader software entered the U.S. market, competing with Nuance’s OmniPage. According to Law360, “While Nuance alleged ABBYY had sought to compete unfairly in the OCR market by copying OmniPage technology, Finnegan attorneys stressed to the jury that FineReader was an innovative new product that represented a seismic leap over the patents-in-suit.” FineReader looks at adjacent letters, while OmniPage analyzes a line of text. “It’s a fundamentally different approach,” Puknys said.
To address trade dress infringement allegations, “We had to go back in time to prove our case,” said Finnegan partner Douglas A. Rettew. “We couldn’t go into a store and take a picture [of product packaging], because it’s a completely different marketplace now than it was 10 years ago.”
After a two-week trial, and about 3 hours of deliberation, the jury returned a verdict in favor of ABBYY and Lexmark, determining the patents were not infringed and Nuance’s alleged trade dress was not protectable.
