NY Patent Decisions Blog

Be Careful What You Wish For, You Just Might Get It: Reconsidering When To Ask for Reconsideration

On July 12, 2017, District Judge Alvin K. Hellerstein granted a motion for reconsideration by Intellectual Ventures II L.L.C. (“IV”) of the Court’s prior Order of April 28, 2017.  At the time of the motion, the only patent at issue in the case was U.S. Patent No. 7,634,666 (“the ’666 Patent”).  The Court had originally denied JP Morgan Chase & Co.’s (“JPMC’s”) motion for summary judgement on noninfringement because while the accused devices didn’t actually infringe, there was a material issue of fact on “whether the Crypto Cards are capable of infringing on the ’666 Patent.” (emphasis added).  IV asked the court to reconsider whether the accused devices actually infringed.

The Court noted that a motion for reconsideration is “an extraordinary remedy to be employed sparingly in the interests of finality and conservation of scarce judicial resources.”  These motions are only granted “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.”

IV passed this strict standard and had their motion for reconsideration granted; however, winning that motion ended poorly for them.  In the initial Order, the Court determined that JPMC’s devices potentially were capable of infringing the patent.  Upon reconsideration, the Court maintained that JPMC’s devices did not actually infringe the ’666 Patent and reversed its previous holding by ruling that they were not capable of infringing.  The Court found that a patent must reference “capability” in order for an infringing article to be “capable” of infringing the patent.  Thus, on request for reconsideration by plaintiff, defendant JPMC was granted full summary judgment and IV’s complaint was dismissed.

Intellectual Ventures II L.L.C. v. JP Morgan Chase & Co et al., 13-Civ-3777