United States District Court, S.D. New York
COMCAST CORPORATION; COMCAST CABLE COMMUNICATIONS, LLC; COMCAST CABLE COMMUNICATIONS MANAGEMENT, LLC; COMCAST OF HOUSTON, LLC; COMCAST BUSINESS COMMUNICATIONS, LLC; COMCAST HOLDINGS CORPORATION; COMCAST SHARED SERVICES, LLC; and COMCAST STB SOFTWARE I, LLC, Plaintiffs,
ROVI CORPORATION; ROVI GUIDES, INC.; ROVI TECHNOLOGIES CORP.; and VEVEO, INC., Defendants.
OPINION AND ORDER
PAUL OETKEN United States District Judge.
1, 2016, Comcast filed a motion for preliminary injunction,
seeking to enjoin Rovi from continuing to prosecute their patent
infringement claims against Plaintiffs in the Eastern
District of Texas and before the International Trade
Commission (“ITC”). (See Dkt. No. 25).
On August 16, 2016, the Court denied Plaintiffs' motion
for a preliminary injunction, granted Defendants' motion
to the extent that it requested a stay, and denied as moot
Plaintiffs' letter motion to stay the ITC proceedings.
(See Dkt. No. 75.) In an Opinion and Order dated
December 14, 2016, the Court further denied Comcast's
motion to enjoin Rovi from prosecuting its ITC action.
See Comcast Corp. v. Rovi Corp., No. 16 Civ. 3852,
2016 WL 7235802 (S.D.N.Y. Dec. 14, 2016).
has moved for reconsideration of the December Order pursuant
to Local Civil Rule 6.3. (Dkt. No. 90.) For the reasons that
follow, the motion is denied.
addition, on October 25, 2016, when the United States
District Court for the Eastern District of Texas granted
Plaintiffs' motions to change venue to this Court (Dkt.
No. 79-1), that court had before it two fully briefed motions
to stay, Rovi Guides, Inc. v. Comcast Corp., No. 16
Civ. 9278 (S.D.N.Y. June 9, 2016), Dkt. Nos. 108, 109. For
the reasons that follow, those motions are also denied.
Motion to Reconsider
“A motion for reconsideration is an extraordinary
remedy to be employed sparingly in the interests of finality
and conservation of scarce judicial resources.”
Indergit v. Rite Aid Corp., 52 F.Supp.3d 522, 523
(S.D.N.Y. 2014) (internal quotation marks omitted) (quoting
Drapkin v. Mafco Consol. Grp., Inc., 818 F.Supp.2d
678, 695 (S.D.N.Y. 2011)). “To prevail, the movant must
demonstrate either (i) an intervening change in controlling
law; (ii) the availability of new evidence; or (iii) the need
to correct clear error or prevent manifest injustice.”
Id. (quoting Jacob v. Duane Reade, Inc.,
293 F.R.D. 578, 580-81 (S.D.N.Y. 2013)). “[T]he movant
cannot rely upon facts, issues, or arguments that were
previously available but not presented to the court, or
reargue issues that have already been considered.”
Id. A motion for reconsideration is not “a
second bite at the apple.” Goonan v. Fed. Reserve
Bank of N.Y., No. 12 Civ. 3859, 2013 WL 1386933, *2
(S.D.N.Y. Apr. 5, 2013).
with the underlying facts of this case, as set forth in the
Court's December 14, 2016, Opinion and Order, is
presumed. In relevant part, the Court determined that the
forum selection clause of the expired patent license
agreement (the “Patent Agreement”) did not cover
the present action. (Dkt. No. 84 at 7.) The Court reasoned
that, while patent infringement claims do arise from license
agreements, the present action did not trigger the
forum-selection clause of the Patent Agreement because Rovi
is seeking relief for allegedly infringing activity that
occurred only after the expiration of the agreement.
(Id. (citing Texas Instruments Inc. v. Tessera,
Inc., 231 F.3d 1325, 1328 (Fed. Cir. 2000);
Innovative Display Techs. LLC v. Microsoft Corp.,
No. 13 Civ. 783, 2014 WL 2757541 (E.D. Tex. June 17, 2014)).)
now requests that the Court reconsider its holding in light
of statements made by Rovi before the ITC. Comcast argues
that these statements demonstrate that, despite Rovi's
prior assurances to this Court, Rovi is indeed seeking relief
as to alleged unfair acts that occurred before the
expiration of the Patent Agreement. (See Dkt. No.
91.) If true, according to Comcast, the forum-selection
clause in the Patent Agreement is triggered and the Court
should enjoin the ITC action. (See Dkt. No. 91 at
initial matter, the statements made by Rovi in the ITC
proceedings were not available to the Court when it issued
its December 14, 2016, order. As such, they are properly
considered on a motion for reconsideration. See
Indergit, 52 F.Supp.3d at 523.
particular, Comcast points to two aspects of the
now-developed ITC record that it argues undermines Rovi's
previous assertions that it is seeking only post-expiration
relief: (1) Comcast's alleged stockpiling of infringing
products while the Patent Agreement was in effect, and (2)
Comcast's testing of infringing products after
importation while the Patent Agreement was in effect.
in Rovi's pre-hearing brief filed with the ITC, Rovi
claimed that Comcast “import[ed] and stockpile[d] . . .
products . . . under license” so that it could
“distribute those infringing imported products with
impunity immediately after” the LDA expired, and that
Comcast “buil[t] up its inventory with imported
products under license” that it is “leas[ing] . .
. after the license has expired.” (Dkt. No. 94-1 at 3,
9.) Comcast now argues that Rovi is seeking relief in the ITC
for this “stockpiling, ” which took place before
the expiration of the Patent Agreement, thus triggering the
forum-selection clause. Indeed, Comcast argues that the ITC
does not have jurisdiction over Rovi's claims unless
Rovi's claims are based on the unfair act of importing
and stockpiling the allegedly infringing products. (Dkt. No.
91 at 7.)
Rovi represented to the ITC that Comcast's testing of the
allegedly infringing products upon receipt infringes the
asserted patents. (See Id. at 4.) Comcast argues
that, because Comcast had not acquired any allegedly
infringing products since three months prior to the
expiration of the Patent Agreement, any testing activity must
have occurred while the Patent Agreement was still in effect.
(Id. at 10.) Thus, Comcast ...