While motions for reconsideration are frequently filed, they are not frequently granted. Typically they are shut down pretty easily. The rules put the moving party in a box, because parties can neither repeat arguments from their brief nor offer new arguments.
These motions are sometimes granted, though, and Judge Connolly granted one such motion late last month. I thought it would be interesting to look at what worked.
The Court had originally granted a motion to exclude expert testimony from a defendant's infringement expert, on the grounds that the expert had testified that the presence of additional structure in a means-plus-function claim results in non-infringement.
We discussed this opinion at the time, pointing out that violating a well-established rule like that one is a great way to get an expert opinion excluded.
How did they win on reconsideration?
It turns out, the original opinion was based on a misapprehension of what the expert was doing. As the motion for reconsideration explained:
The issue is not, as [plaintiff] framed the issue, whether Defendant’s expert added additional elements to the structure to argue non-infringement. The issue is whether the structure identified by [plaintiff]’s expert can perform the claimed function without some additional element(s). Defendant’s expert opined that it could not and therefore, because the structure identified by [plaintiff] could not perform the function, there was no infringement. That opinion is consistent with law and logic. In short, the argument here is all about the function, not the structure.
(italics in original). The reconsideration motion smartly portrays the issue as one of plaintiff's framing rather than the Court's, and its new articulation of the issue is super clear. The next paragraph is great too:
The Order is based on a basic principle that [defendant] does not dispute, namely, that “when all of the claimed features are present in the accused system, the use of additional features does not avoid infringement.” . . . That is sure enough true, but inapt here. Because the structure identified by [plaintiff]’s expert does not perform the claimed function, as testified to by [defendant's expert], the premise of that legal proposition, i.e., “when all of the claimed features are present in the accused system,” does not apply.
Compare the above two paragraphs to the original opposition brief, which presents the same point in a different and more obscure way:
[Defendant's expert] identified “the relevant structure in the [JoistPro that] perform[s] the identical function recited in the claim.” . . . As explained above in Section III.C, [defendant's expert] consistently opined that [plaintiff's expert] incorrectly identified the relevant structure of the JoistPro that carries out the claimed function and instead identified only a subset of the relevant structure.
(bold & italics in original). Thus, the moving party offered the same argument in both the reconsideration motion and the original briefing, but on reconsideration they clarified their original argument without directly repeating it or offering a new position.
The Court granted the motion and reversed its prior holding, adopting exactly the argument from the reconsideration motion:
[The expert's] point was that the relevant structure identified by [plaintiff]'s expert did not and could not perform the claimed function without additional elements. Accordingly, after reconsideration, I find that the challenged opinions of [the expert] were not contrary to law and therefore are admissible.