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`16-CV-3852 (JPO)
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`OPINION AND ORDER
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`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF NEW YORK
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`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,
`
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`Plaintiffs,
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`
`
`-v-
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`ROVI CORPORATION; ROVI GUIDES, INC.;
`ROVI TECHNOLOGIES CORP.; and VEVEO,
`INC.,
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`
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`J. PAUL OETKEN, District Judge:
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`Defendants.
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`On June 1, 2016, Comcast1 filed a motion for preliminary injunction, seeking to enjoin
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`Rovi2 from continuing to prosecute their patent infringement claims against Plaintiffs in the
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`Eastern District of Texas and before the International Trade Commission (“ITC”). (See Dkt. No.
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`25). On August 16, 2016, the Court denied Plaintiffs’ motion for a preliminary injunction, granted
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`Defendants’ motion to the extent that it requested a stay, and denied as moot Plaintiffs’ letter motion
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`to stay the ITC proceedings. (See Dkt. No. 75.) In an Opinion and Order dated December 14,
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`2016, the Court further denied Comcast’s motion to enjoin Rovi from prosecuting its ITC action.
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`
`1
`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 (collectively, “Comcast” or “Plaintiffs”).
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`Rovi Corporation; Rovi Guides, Inc.; Rovi Technologies Corp.; and Veveo Inc.
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`(together, “Rovi” or “Defendants”).
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`1
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` 2
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`Case 1:16-cv-03852-JPO Document 101 Filed 05/15/17 Page 2 of 9
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`See Comcast Corp. v. Rovi Corp., No. 16 Civ. 3852, 2016 WL 7235802 (S.D.N.Y. Dec. 14,
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`2016).
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`Comcast has moved for reconsideration of the December Order pursuant to Local Civil
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`Rule 6.3. (Dkt. No. 90.) For the reasons that follow, the motion is denied.
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`In addition, on October 25, 2016, when the United States District Court for the Eastern
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`District of Texas granted Plaintiffs’ motions to change venue to this Court (Dkt. No. 79-1), that
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`court had before it two fully briefed motions to stay, Rovi Guides, Inc. v. Comcast Corp., No. 16
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`Civ. 9278 (S.D.N.Y. June 9, 2016), Dkt. Nos. 108, 109. For the reasons that follow, those
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`motions are also denied.
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`I.
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`Motion to Reconsider
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`A.
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`Legal Standard
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`“A motion for reconsideration is an extraordinary remedy to be employed sparingly in the
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`interests of finality and conservation of scarce judicial resources.” Indergit v. Rite Aid Corp., 52
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`F. Supp. 3d 522, 523 (S.D.N.Y. 2014) (internal quotation marks omitted) (quoting Drapkin v.
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`Mafco Consol. Grp., Inc., 818 F. Supp. 2d 678, 695 (S.D.N.Y. 2011)). “To prevail, the movant
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`must demonstrate either (i) an intervening change in controlling law; (ii) the availability of new
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`evidence; or (iii) the need to correct clear error or prevent manifest injustice.” Id. (quoting Jacob
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`v. Duane Reade, Inc., 293 F.R.D. 578, 580-81 (S.D.N.Y. 2013)). “[T]he movant cannot rely
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`upon facts, issues, or arguments that were previously available but not presented to the court, or
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`reargue issues that have already been considered.” Id. A motion for reconsideration is not “a
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`second bite at the apple.” Goonan v. Fed. Reserve Bank of N.Y., No. 12 Civ. 3859, 2013 WL
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`1386933, *2 (S.D.N.Y. Apr. 5, 2013).
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`B.
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`Discussion
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`Familiarity with the underlying facts of this case, as set forth in the Court’s December 14,
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`2
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`Case 1:16-cv-03852-JPO Document 101 Filed 05/15/17 Page 3 of 9
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`2016, Opinion and Order, is presumed. In relevant part, the Court determined that the forum
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`selection clause of the expired patent license agreement (the “Patent Agreement”) did not cover
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`the present action. (Dkt. No. 84 at 7.) The Court reasoned that, while patent infringement claims
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`do arise from license agreements, the present action did not trigger the forum-selection clause of
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`the Patent Agreement because Rovi is seeking relief for allegedly infringing activity that
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`occurred only after the expiration of the agreement. (Id. (citing Texas Instruments Inc. v.
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`Tessera, Inc., 231 F.3d 1325, 1328 (Fed. Cir. 2000); Innovative Display Techs. LLC v. Microsoft
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`Corp., No. 13 Civ. 783, 2014 WL 2757541 (E.D. Tex. June 17, 2014)).)
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`Comcast now requests that the Court reconsider its holding in light of statements made by
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`Rovi before the ITC. Comcast argues that these statements demonstrate that, despite Rovi’s
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`prior assurances to this Court, Rovi is indeed seeking relief as to alleged unfair acts that occurred
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`before the expiration of the Patent Agreement. (See Dkt. No. 91.) If true, according to Comcast,
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`the forum-selection clause in the Patent Agreement is triggered and the Court should enjoin the
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`ITC action. (See Dkt. No. 91 at 11-12.)
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`As an initial matter, the statements made by Rovi in the ITC proceedings were not
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`available to the Court when it issued its December 14, 2016, order. As such, they are properly
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`considered on a motion for reconsideration.3 See Indergit, 52 F. Supp. 3d at 523.
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`In particular, Comcast points to two aspects of the now-developed ITC record that it
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`argues undermines Rovi’s previous assertions that it is seeking only post-expiration relief: (1)
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`Comcast’s alleged stockpiling of infringing products while the Patent Agreement was in effect,
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`and (2) Comcast’s testing of infringing products after importation while the Patent Agreement
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`3
`Comcast also argues that its invocation of the Patent Agreement as a defense is
`sufficient to trigger the forum-selection clause. (Dkt. No. 91 at 10.) But this argument is not
`appropriate on a motion for reconsideration, as Comcast previously made this argument to the
`Court. (See Dkt. No. 27 at 13, 19.) See Indergit, 52 F. Supp. 3d at 523.
`3
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`Case 1:16-cv-03852-JPO Document 101 Filed 05/15/17 Page 4 of 9
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`was in effect.
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`First, in Rovi’s pre-hearing brief filed with the ITC, Rovi claimed that Comcast
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`“import[ed] and stockpile[d] . . . products . . . under license” so that it could “distribute those
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`infringing imported products with impunity immediately after” the LDA expired, and that
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`Comcast “buil[t] up its inventory with imported products under license” that it is
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`“leas[ing] . . . after the license has expired.” (Dkt. No. 94-1 at 3, 9.) Comcast now argues that
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`Rovi is seeking relief in the ITC for this “stockpiling,” which took place before the expiration of
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`the Patent Agreement, thus triggering the forum-selection clause. Indeed, Comcast argues that
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`the ITC does not have jurisdiction over Rovi’s claims unless Rovi’s claims are based on the
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`unfair act of importing and stockpiling the allegedly infringing products. (Dkt. No. 91 at 7.)
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`Second, Rovi represented to the ITC that Comcast’s testing of the allegedly infringing
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`products upon receipt infringes the asserted patents. (See id. at 4.) Comcast argues that,
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`because Comcast had not acquired any allegedly infringing products since three months prior to
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`the expiration of the Patent Agreement, any testing activity must have occurred while the Patent
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`Agreement was still in effect. (Id. at 10.) Thus, Comcast argues, Rovi has sought relief in the
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`ITC for unfair acts that occurred before the expiration of the Patent Agreement. (Id.)
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`But Rovi continues to plausibly maintain that it is not seeking the relief that Comcast
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`believes it to be seeking. Instead, it argues that it is seeking relief in the ITC based on two
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`alleged unfair acts: (1) importation of products after the expiration of the Patent Agreement, and
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`(2) sales/distribution of products from inventory after the expiration of the Patent Agreement.
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`(Dkt. No. 96 at 4.)
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`Comcast has not shown that Rovi is seeking relief in the ITC for any unfair act consisting
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`of pre-expiration activity, including any stockpiling or testing of the allegedly infringing
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`products. Throughout its representations to the ITC, Rovi has consistently asserted that
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`4
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`Case 1:16-cv-03852-JPO Document 101 Filed 05/15/17 Page 5 of 9
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`Comcast’s activity before the expiration of the Patent Agreement was lawful and that it is
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`seeking relief for unfair acts that occurred only after the expiration of that agreement. (See, e.g.,
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`Dkt. No. 94-1 at 9 (arguing that Comcast does not “point to any authority that that would allow
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`the distribution of imported, infringing products after a license has expired, and they cite no
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`authority to suggest that the Commission is powerless to reach the millions of imported
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`infringing products deployed by Comcast.” (emphasis added)); Dkt. No. 97-1 at 3 (“To be clear:
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`Rovi’s claims in this Investigation are based solely on violations of Section 337 that have taken
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`place after the expiration of the Patent License. All such violations fall within the purview of the
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`Commission, including ‘importations’ that violate Section 337, and independently, ‘sales after
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`importation’ that violate Section 337.”); id. at 6 (“Comcast’s rights to practice the Asserted
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`Patents terminated with [the Patent Agreement.]”).)
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`This is consistent with Rovi’s representations to the ITC that “an Accused Product
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`imported under license might still serve as a basis for a violation of Section 337 if a ‘sale after
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`importation’ takes place after expiration of the Patent License,” regardless of “whether or not the
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`product was licensed when imported.” (Dkt. No. 97-1 at 3.) And while this Court does not
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`presume to decide any jurisdictional issue that the parties may raise at the ITC, Rovi’s arguments
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`appear consistent with the scope of the ITC’s jurisdiction. See Certain Elec. Devices with Image
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`Processing Sys., Components Thereof, & Associated Software, Inv. No. 337-TA-724, 2012 WL
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`3246515, at *11 (U.S.I.T.C. Dec. 21, 2011) (“[T]he statutory language of section 337 now
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`expressly defines the relevant unfair acts to be importation, sale for importation, and sale after
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`importation of ‘articles that – infringe’ U.S. patents.” (quoting 19 U.S.C. § 1337(a)(1)(B)(i))).
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`Given the “extraordinary” nature of a motion for reconsideration, and because Comcast
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`has failed to demonstrate that the forum-selection clause in the expired Patent Agreement was
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`triggered by Rovi’s statements in the ITC proceedings—which is the only new evidence raised
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`5
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`Case 1:16-cv-03852-JPO Document 101 Filed 05/15/17 Page 6 of 9
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`on the motion for reconsideration—Comcast’s motion is denied. See Indergit, 52 F. Supp. 3d at
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`523.
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`II. Motion to Stay
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`On October 25, 2016, the United States District Court for the Eastern District of Texas
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`granted Plaintiffs’ motions to change venue to this Court. (Dkt. No. 79-1.) Pending before that
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`court was a motion to stay the proceedings. (Rovi Guides, Inc. v. Comcast Corp., No. 16 Civ.
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`9278 (S.D.N.Y. June 9, 2016), Dkt. No. 108 (“Motion to Stay”)).4
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`In the Motion to Stay, Comcast argues for a stay of proceedings as they relate to U.S.
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`Patent 8,755,666 (“the ’666 patent”).5 The ’666 patent is closely related to three patents at issue
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`in the ITC action: U.S. Patent No. 8,578,413 (“the ’413 patent”), which is the ’666 patent’s
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`immediate parent; U.S. Patent No. 8,046,801 (“the ’801 patent”), which is the ’666 patent’s
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`grandparent; and U.S. Patent No. 8,006,263 (“the ’263 patent”), which also descends from the
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`’801 patent. All four patents share the same inventors and title. Moreover, the ’666 patent’s
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`specification is identical to that of the ’413 and ’801 patents. (See Motion to Stay at 3-4.)
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`Accordingly, Comcast argues, proceedings on the ’666 patent should be stayed.
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`
`4
`Defendants ARRIS International plc, ARRIS Group, Inc., ARRIS Technology,
`Inc., ARRIS Enterprises LLC, ARRIS Solutions, Inc., Pace Ltd. (now known as “ARRIS Global
`Ltd.”)1, Pace Americas Holdings, Inc., Pace Americas Investments, LLC, and Pace Americas,
`LLC (collectively, “ARRIS”), joined Comcast’s motion to stay with respect to the ’666 patent.
`Rovi Guides, Inc. v. Comcast Corp., No. 16 Civ. 9278 (S.D.N.Y. June 9, 2016), Dkt. No. 109.
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` 5
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`Comcast’s request for a stay of the entire case pending the disposition of a motion
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`before the Eastern District of Texas to change venue (which was granted at Dkt. No. 79-1), and a
`motion before this Court for a preliminary injunction (which was denied at Dkt. No. 84), is
`denied as moot. (See Motion to Stay at 13-15.) The portion of ARRIS’s separate motion
`seeking to stay proceedings pending the disposition of the motion to transfer is similarly denied
`as moot. Rovi Guides, Inc. v. Comcast Corp., No. 16 Civ. 9278 (S.D.N.Y. June 9, 2016), Dkt.
`No. 109.
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`6
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`Case 1:16-cv-03852-JPO Document 101 Filed 05/15/17 Page 7 of 9
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`A.
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`Legal Standard
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`“[T]he power to stay proceedings is incidental to the power inherent in every court to
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`control the disposition of the causes on its docket with economy of time and effort for itself, for
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`counsel, and for litigants.” Landis v. N. Am. Co., 299 U.S. 248, 254 (1936); see also TradeWinds
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`Airlines, Inc. v. Soros, No. 08 Civ. 5901, 2011 WL 309636, at *3 (S.D.N.Y. Feb. 1, 2011). On a
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`motion to stay, the Eastern District of Texas (the court to which the motion was originally
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`submitted) considers: “(1) whether a stay will unduly prejudice or present a clear tactical
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`disadvantage to the nonmoving party, (2) whether a stay will simplify the issues in question and
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`trial of the case, and (3) whether discovery is complete and whether a trial date has been set.”
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`Soverain Software LLC v. Amazon.com, Inc., 356 F. Supp. 2d 660, 662 (E.D. Tex. 2005).6 “[I]f
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`there is even a fair possibility that the stay for which [the movant] prays will work damage to
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`someone else,” the movant “must make out a clear case of hardship or inequity in being required
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`to go forward.” Landis, 299 U.S. at 255.
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`B.
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`Discussion
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`Comcast does not argue that it is entitled to a mandatory stay under 28 U.S.C. § 1659(a),
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`which gives a respondent in an ITC proceeding a statutory right to stay “proceedings in [a] civil
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`action with respect to any claim that involves the same issues involved in the proceeding before
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`6
`The standard in the Eastern District of Texas does not vary significantly from that
`in this district. This Court considers “(1) the private interests of the plaintiffs in proceeding
`expeditiously with the civil litigation as balanced against the prejudice to the plaintiffs if
`delayed; (2) the private interests of and burden on the defendants; (3) the interests of the courts;
`(4) the interests of persons not parties to the civil litigation; and (5) the public interest.” In re
`OxyContin Antitrust Litig., No. 04 MD 1603, 2012 WL 5184949, at *6–7 (S.D.N.Y. Oct. 19,
`2012) (internal quotation marks omitted) (quoting Soros, 2011 WL 309636, at *3). “In
`balancing these factors, ‘the basic goal is to avoid prejudice.’” Id. (quoting Soros, 2011 WL
`309636, at *3). Because the parties’ briefs are addressed to the transferor court, and because the
`parties did not provide supplemental materials, the Court addresses the arguments as made to
`that court, where this motion to stay was filed in June 2016.
`7
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`Case 1:16-cv-03852-JPO Document 101 Filed 05/15/17 Page 8 of 9
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`the Commission.” Instead, it argues that the Court should use its inherent power to stay the case
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`given the close relationship between the patents at issue in the ITC proceedings and the ’666
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`patent. But the Court is not convinced that a stay is justified.
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`First, the claims against Comcast in this case and the claims against Comcast in the ITC
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`are not identical. Rovi points out that the ’666 patent raises issues that will not be addressed by
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`the ITC, such that a stay of the case with respect to the ’666 patent pending disposition of the
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`ITC proceeding will not significantly simplify the case. (Rovi Guides, Inc. v. Comcast Corp.,
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`No. 16 Civ. 9278 (S.D.N.Y. June 9, 2016), Dkt. No. 121 at 13-14.) See, e.g., Saxon Innovations,
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`LLC v. Palm, Inc., No. 09 Civ. 272, 2009 WL 3755041, at *2 (E.D. Tex. Nov. 4, 2009) (finding
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`it “unlikely that a stay would simplify the issues in question” where the ITC “will not consider
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`[the movant’s] arguments and theories regarding infringement or invalidity” of the patent-at-
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`issue).
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`Moreover, some significant discovery on the ’666 patent has already taken place in this
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`case. On April 17, 2017, the parties submitted a Joint Claim Terms Chart for the eight patents-
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`at-issue, including the ’666 patent. Rovi Guides, Inc. v. Comcast Corp., No. 16 Civ. 9278
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`(S.D.N.Y. June 9, 2016), Dkt. No. 268. While the motion has been pending for over a year,
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`presently, the parties are in the process of briefing and arguing their preferred constructions to
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`the Court. Rovi Guides, Inc. et al. v. Comcast Corporation et al., No. 16 Civ. 9278 (S.D.N.Y.
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`June 9, 2016), Dkt. No. 199. Staying the case as to the ’666 patent at this stage of discovery to
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`wait for the ITC proceedings to conclude, would only delay the resolution of issues for which the
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`parties have already conducted significant discovery.
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`Furthermore, Rovi argues that if the Court were to grant the stay, Rovi will be unable to
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`seek a timely remedy for Comcast’s alleged infringement of this patent. Rovi Guides, Inc. v.
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`Comcast Corp., No. 16 Civ. 9278 (S.D.N.Y. June 9, 2016), Dkt. No. 121 at 10. And because
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`8
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`Case 1:16-cv-03852-JPO Document 101 Filed 05/15/17 Page 9 of 9
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`Comcast and Rovi compete for market share, a delay in Rovi’s ability to pursue its legal claims
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`may prejudice Rovi to the extent that it loses customers to Comcast, which might also harm Rovi
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`in related markets. See id. at 11. See Systemation, Inc. v. Engel Indus., Inc., 194 F.3d 1331,
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`1999 WL 129640, at *3, 6 (Fed. Cir. 1999) (finding that “damages would be very difficult to
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`calculate due in part to the sales that would be lost in related markets to the claimed product
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`market”).
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`The Court, therefore, declines to exercise its discretion to stay the case with respect to the
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`’666 patent where, as here, “there is . . . a fair possibility that the stay for which [Comcast] prays
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`will work damage to” Rovi and where Comcast has made no showing “of hardship or inequity in
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`being required to go forward.” Landis, 299 U.S. at 255.
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`III. Conclusion
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`For the foregoing reasons, Comcast’s motion for reconsideration of the Court’s
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`December 14, 2016, order and Comcast’s and ARRIS’s motions to stay are DENIED.
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`The Clerk of Court is directed to close the motion at Docket Number 90.
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`SO ORDERED.
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`Dated: May 15, 2017
`New York, New York
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`____________________________________
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` J. PAUL OETKEN
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` United States District Judge
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`9
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