United States District Court, S.D. Texas, Houston Division
OPINION AND ORDER
MELINDA HARMON UNITED STATES DISTRICT JUDGE
before the Court in the above-referenced cause is Defendants
Geo-Steering Solutions, Inc. and Geo-Steering Solutions USA,
Inc.'s (collectively, “GSSI”) Motion for
Reconsideration of Order. Doc. 150. Having considered the
Motion, Response, Reply, and the law, the Court grants
GSSI's Motion and modifies its prior Opinion and Order as
facts of this case are recited extensively in this
Court's prior Opinion and Order and will not be repeated
at length here. The crux of the parties' dispute is
whether GSSI-one of BHL's direct competitors in the oil
and gas exploration industry-developed its geosteering
software using BHL's software. See Docs. 1, 19.
Believing that it did, BHL first sent a warning letter to
GSSI threatening legal action for its alleged violations of
BHL's intellectual property rights. Doc. 19-8. When GSSI
failed to respond, BHL initiated this suit. See Doc.
Original Complaint, BHL cites 28 U.S.C. §
as grounds for this Court's jurisdiction. Id.
¶ 1. BHL's Complaint also notes that the software
GSSI allegedly misappropriated provides an electronic
reminder to the licensed user that “Boresight's
Software is subject to copyright protection, ” and
argues that it is the sole owner of the software and trade
secrets at issue. Id. ¶¶ 20, 62. GSSI
responded by asserting eight counterclaims against BHL,
including three requests for copyright non-infringement
declarations. Doc. 19 at ¶¶ 10-36.
6, 2015, BHL filed its Motion to Dismiss. Doc. 27. In its
Motion it argued that the Court lacks subject-matter
jurisdiction of GSSI's copyright non-infringement
counterclaims because BHL did not assert a copyright claim in
its Complaint and there is no “substantial controversy
of sufficient immediacy and reality between [the parties] to
warrant the Court's jurisdiction over these three
counterclaims.” Id. at 12.
March 29, 2016, the Court granted BHL's Motion and
dismissed, with prejudice, the three copyright
non-infringement claims at issue in the present Motion for
Reconsideration. Doc. 140. BHL subsequently filed its proposed
First Amended Complaint in which it removed its
“inadvertent reference to a copyright statute.”
Motion for Reconsideration argues that the Court erred in
dismissing its declaratory-judgment claims because the Court
(1) relied on overruled case law to determine there was no
substantive cause of action; and (2) misapplied current
precedent to the facts of this case to conclude that the
controversy was not sufficiently immediate and real to render
it an actual controversy under the Declaratory Judgment Act
(“DJA”). Id. After a thorough review of
the law, the Court agrees.
motion for reconsideration “calls into question the
correctness of a judgment.” In re Transtexas Gas
Corp., 303 F.3d 571, 581 (5th Cir. 2002). “[S]uch
a motion is not the proper vehicle for rehashing evidence,
legal theories, or arguments that could have been offered or
raised before the entry of judgment.” Templet v.
Hydro Chem., Inc., 367 F.3d 473, 479 (5th Cir. 2004)
(citing Simon v. United States, 891 F.2d 1154, 1159
(5th Cir. 1990)). Rather, it merely serves to allow “a
party ‘to correct manifest errors of law or fact or to
present newly discovered evidence.'” Waltman v.
Int'l Paper Co., 875 F.2d 468, 473 (5th Cir. 1989)
(quoting Keene Corp. v. Int'l Fidelity Ins. Co.,
561 F.Supp. 656, 665 (N.D. Ill. 1982), aff'd,
735 F.2d 1367 (7th Cir. 1984)). A motion for reconsideration
may also be used to bring an intervening change in the
controlling law to the court's attention. Schiller v.
Physicians Res. Grp., Inc., 342 F.3d 563, 567- 68 (5th
Cir. 2003) (citing In re Benjamin Moore & Co.,
318 F.3d 626, 629 (5th Cir. 2002)). Nevertheless,
“[r]econsideration of a judgment after its entry is an
extraordinary remedy that should be used sparingly.”
Templet, 367 F.3d at 479 (citing Clancy v.
Emp'rs Health Ins. Co., 101 F.Supp.2d 463, 465 (E.D.
Motion for Reconsideration, GSSI first directs the
Court's attention to Reed Elsevier, Inc. v.
Muchnick, 559 U.S. 154, 169 (2010), a decision in which
the Supreme Court held that the Copyright Act's
“registration requirement is nonjurisdictional.”
Doc. 150 at 3-6 (quoting Muchnick, 559 U.S. at 169
(internal quotation marks omitted)). GSSI also contends that
“[a]part from the jurisdictional issue, ” the
Supreme Court has made it clear that a declaratory-judgment
defendant does not need to be able to sue the
declaratory-judgment plaintiff in order for the plaintiff to
file its declaratory judgment suit and for the Court to have
jurisdiction over the matter.” Id. at 6, 7.
(citing MedImmune, Inc. v. Genetech, Inc., 549 U.S.
118, 132 (2007)).
the Court's earlier Order and Opinion was based on
pre-Reed district court decisions, the Court vacates
the portion of its earlier Opinion in which it held that
GSSI's declaratory-judgment claims for copyright
non-infringement were barred because BHL could not assert a
copyright infringement claim against Defendants without proof
of copyright registration. See Doc. 140 at 9-10.
next urges that the Court's alternative ground for
dismissing its counterclaims- that the controversy between
the parties was not immediate and real enough to render it an
“actual controversy” under the DJA-is flawed
because: (1) BHL had already sued GSSI for misappropriating
BHL's software when GSSI counterclaimed for declaratory
judgments of copyright non-infringement; (2) BHL threatened
legal action against GSSI for copyright infringement before
GSSI sought declaratory judgment; and (3) GSSI is engaged in
actual manufacture, use, or sale of the GSSI software at
issue in this case. Doc. 150 at 8-12. BHL renews its ...