Seoul Viosys Co., Ltd. v. P3 International Corporation
MEMORANDUM OPINION & ORDER re: 123 MOTION for Reconsideration re; 116 Order on Motion for Judgment on the Pleadings, with Alternative Request for Pre-motion Conference, filed by P3 International Corporation. Defendant's motion for reconsideration of the Court's September 22 Order is DENIED. This resolves Dkt. No. 123, and as further set forth herein. (Signed by Judge Alison J. Nathan on 1/12/2018) (ras)
UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK
Seoul Viosys Co., Ltd.,
OPINION & ORDER
P3 International Corp.,
ALISON J. NATHAN, District Judge:
Plaintiff Seoul Viosys Co., Ltd. brings various claims for patent infringement against
Defendant P3 International Corporation. On September 22, 2017, the Court denied Defendant's
motion for judgment on the pleadings and for an award of attorney's fees. Dkt. No. 116
[hereafter, "September 22 Order"]. Now before the Court is Defendant's motion for
reconsideration of the September 22 Order. Dkt. Nos. 123-24.
For the reasons set forth below, Defendant's motion is denied.
The Court assumes familiarity with the matter, the factual background of which is more
fully described in the Court's September 22 Order. See Dkt. No. 116.
On November 16, 2016, Defendant P3 International Corporation filed a motion for
judgment on the pleadings with respect to two of the seven patents at issue in the amended
complaint. Dkt. No. 19. In its motion, Defendant relied on matters outside of the pleadings with
respect to each patent at issue. As a result, the Court faced a choice between excluding the
materials or converting the motion into one for summary judgment per Federal Rule of Civil
In addressing Defendant's motion on the '207 Patent, the Court acknowledged that it
could have elected to convert the motion but declined to do so, citing two main reasons. First,
the Court found that although Plaintiff did acknowledge the possibility of conversion in its
opposition brief, the Court could not be sure that each party had a "full and fair opportunity" to
present its arguments on summary judgment. Dkt. No. 116 at 6-7 (quoting First Fin. Ins. Co. v.
Allstate Interior Demolition Corp., 193 F.3d 109, 115-16 (2d Cir. 1999)). Second, the Court
noted that at the time the motion was filed, Plaintiff had not yet had any opportunity for
discovery and found that discovery would be relevant to Plaintiff's defense against summary
judgment. Id. at 7. Given this, the Court concluded that Plaintiff should be allowed to seek
discovery with respect to the purported prior art before the Court entertains a motion for
summary judgment. Id.
With respect to Defendant's motion on the '626 Patent, the Court rejected Defendant's
arguments on both grounds asserted. The Court first found that Plaintiff had alleged sufficient
detail so as to give Defendant fair notice of its claims of infringement, denying Defendant's
argument that Plaintiff had failed to adequately state a claim. Id. at 8. Second, as with
Defendant's motion on the '207 Patent, the Court found that Defendant's argument that 35
U.S.C. § 287(b)(2) precluded any chance that Plaintiff would receive a remedy for any
infringement of the '626 Patent by importation relied upon evidence outside of the pleadings. Id.
at 9. The Court again exercised its discretion in declining to convert the motion into one for
summary judgment, finding that Plaintiff should have the opportunity for discovery into
Defendant's inventory or importation history. Id.
In its rulings then, the Court did not address the merits of Defendant's contentions, but
merely determined it premature to consider the extraneous evidence and convert the motions into
those for summary judgment. Approximately one month after the Court's September 22 Order
was issued, Magistrate Judge Sarah Netburn, who has ably overseen the parties' many discovery
disputes, set a schedule for the close of discovery and for summary judgment practice. Dkt. No.
127. Fact discovery closed on November 3, 2017, and expert discovery closed on December 29,
2017. Id. Summary judgment motions from each side are due in the first months of 2018. Id.
Despite this established schedule, which Defendant knew Judge Netburn was about to set
at the time it filed the present motion, see Dkt. No. 122, Defendant moves the Court for
reconsideration of its September 22 Order.
Standard of Review
Federal Rule of Civil Procedure 59(e) and Local Civil Rule 6.3 govern motions for
reconsideration, and are intended to "ensure the finality of decisions and to prevent the practice
of a losing party examining a decision and then plugging the gaps of a lost motion with
additional matters." Medisim Ltd. v. BestMed LLC, No. 10-CV-2463 (SAS), 2012 WL 1450420,
at *1 (S.D.N.Y. Apr. 23, 2012) (citation and internal quotation marks omitted). The standard for
granting a motion for reconsideration "is strict," Analytical Surveys, Inc. v. Tonga Partners, L.P.,
684 F.3d 36, 52 (2d Cir. 2012), because "reconsideration of a previous order is an extraordinary
remedy to be employed sparingly in the interests of finality and conservation of scarce judicial
resources." In re Health Mgmt. Sys., Inc. Secs. Litig., 113 F. Supp. 2d 613, 614 (S.D.N.Y. 2000)
(citation and internal quotation marks omitted). For this reason, "[a] motion for reconsideration
may not be used to advance new facts, issues or arguments not previously presented to the Court,
nor may it be used as a vehicle for relitigating issues already decided by the Court." R.FMA.S.,
Inc. v. Mimi So, 640 F. Supp. 2d 506, 509 (S.D.N.Y. 2009) (quoting Davidson v. Scully, 172 F.
Supp. 2d 458, 461 (S.D.N.Y. 2001)). Instead, "[a] motion for reconsideration should be granted
only when the defendant identifies an intervening change of controlling law, the availability of
new evidence, or the need to correct a clear error or prevent manifest injustice." Kole! Beth
Yechiel Mechil ofTartikov, Inc. v. YLL Irrevocable Trust, 729 F.3d 99, 104 (2d Cir. 2013)
(citation and internal quotation marks omitted); see also Shrader v. CSX Transp., Inc., 70 F .3d
255, 257 (2d Cir. 1995).
Defendant's Motion Simply Relitigates Decided Issues and Presents No Clear
Error or Controlling Law
Defendant's motion for reconsideration makes four primary arguments. First, Defendant
argues that Plaintiff knew that it had provided no notice to Defendant of its alleged infringement
of Plaintiff's '626 method patent, 1 and that Plaintiff knew Defendant had not sold the products
allegedly infringing its '207 Patent for more than a year prior to the date it applied for that
patent. Dkt. No. 124 at 2. Defendant made these same arguments in its initial motion for
judgment on the pleadings, see Dkt. No. 19 at 1-2, 6-7, and the Court considered them in its
September 22 Order. See Dkt. No. 116 at 5-7, 9. Defendant's relitigation of these matters is not
sufficient to warrant reconsideration. See R.FMA.S., Inc., 640 F. Supp. 2d at 509.
In its memorandum oflaw, Defendant mentions a '607 Patent not at issue in its motion for judgment of the
pleadings. Dkt. No. 124 at 2. The Court assumes Defendant meant to refer to the '626 Patent, and excuses the
Second, Defendant submits additional evidence outside of the pleadings - Plaintiffs
response to Defendant's discovery request- in an attempt to bolster its initial argument that
Plaintiff "admitted" that it failed to provide Defendant with the requisite notice. Dkt. No. 124 at
3 & Ex. 1. Again, these additional facts do not address the Court's procedural grounds for
denying Defendant's motion and are best raised as part of any motion for summary judgment
Defendant may choose to file.
Third, Defendant urges the Court to reconsider its decision to decline to convert its
motion, arguing that Plaintiff would have suffered no surprise or prejudice if the Court had
converted. Id. at 3-4. Defendant argues that Plaintiffs opposition, which challenged the motion
for judgment on the pleadings on procedural grounds, "recognized that the motion relied on the
evidence submitted, and expressly framed it as a Rule 56 summary judgment motion," and yet
"declined to submit the required affidavit specifying any facts it might have needed to respond,
as mandated by Rule 56(d)." Id. at 3 & n.4; Dkt. No. 126 at 3. These arguments were previously
made in Defendant's reply brief in support of the underlying motion, see Dkt. No. 27 at 8-9, and
were considered by the Court in its September 22 Order. See Dkt. No. 116 at 6-7. Defendant
provides no authority for the proposition that Plaintiff was obligated to, in its response to a
motion for judgment on the pleadings, provide an affidavit pursuant to Rule 56( d). That is the
expectation when a party is resisting summary judgment on the ground that it needs additional
discovery, see Gurary v. Winehouse, 190 F.3d 37, 43-44 (2d Cir. 1999), but to obligate a party
presented with a motion for judgment on the pleadings - even one that notes the potentiality for
conversion to summary judgment - to simultaneously submit an affidavit as though opposing
summary judgment is expecting too much. While Defendant essentially argues that Plaintiff is
acting too clever by half in bolstering its position that conversion to a motion for summary
judgment was improper by not making any real effort to discover facts contradicting Defendant's
declarations, the Defendant's attempt to use Plaintiff's recognition of potential conversion of
Defendant's motion as evidence that Plaintiff is playing games in order to preserve its procedural
objection, might be similarly labeled as too clever. See Dkt. No. 124 at n.4 (citing Shakespeare in
arguing that Plaintiff was "hoisted on his own petard"). Ultimately, Defendant provides no
controlling authority suggesting that the Court's exercise of discretion was contrary to law, and
the Court finds no reason for reconsideration on these grounds.
Fourth, Defendant argues that the Court "misconstrued" its assertion that Plaintiff
"admitted" the invalidity of its '207 Patent by alleging that the P7880 Bug Trap, which was
purportedly sold more than one year prior to Plaintiff's application for its patent, infringes its
patent. Dkt. No. 124 at 5-6. Again, the Court understood the argument Defendant made in its
brief, but concluded that it necessarily relied upon evidence outside of the pleadings. See Dkt.
No. 116 at 5-6. Even now, in arguing for reconsideration, Defendant writes that Plaintiff's
assertions, "when considered together with the evidence of those prior sales," are tantamount to
an admission that prior art invalidated Plaintiff's patent claims. Id. But this evidence of prior
sales was not in the pleadings. Defendant's misplaced citation to two Federal Circuit cases Evans Cooling and Vanmoor- is telling, as in those cases, unlike this case, the Federal Circuit
was reviewing the district court's grant of summary judgment, and there were no disputes as to
whether the products offered for sale prior to the critical date included the patented features. See
Evans Cooling Sys., Inc. v. Gen. Motors Corp., 125 F.3d 1448, 1449 (Fed. Cir. 1997); Vanmoor
v. Walmart Stores Inc., 201 F.3d 1363, 1366-67 (Fed. Cir. 2000). By contrast, at the point this
motion was initially filed, discovery had not yet begun. That Plaintiff provides no contravening
facts at that early stage - or even now in opposition to this motion - does not suggest the Court
erred in declining to convert the motion to one for summary judgment. Defendant may relitigate
this issue upon the close of discovery in its motion for summary judgment.
For the foregoing reasons, Defendant's motion for reconsideration of the Court's
September 22 Order is DENIED.
This resolves Dkt. No. 123.
New York, New York
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