IP Law Daily, PATENT—S.D.N.Y.: MLB Advanced Media did not infringe patent for shortening baseball game videos, (Dec 8, 2014)

By Mark Engstrom, J.D.

MLB Advanced Media did not infringe a Baseball Quick patent that described a method for shortening Internet videos of baseball games, the federal district court in New York City has ruled (Baseball Quick, LLC v. MLB Advanced Media, L.P., December 4, 2014, Forrest, K.). Because Baseball Quick failed to show direct infringement, indirect infringement, or infringement under the doctrine of equivalents, summary judgment of non-infringement was granted to MLB Advanced Media.

Background

Baseball Quick (BQ) sued MLB Advanced Media (MLBAM) for the infringement of U.S. Patent No. 7,6287,716, titled “Method of Recording and Playing Baseball Game Showing Each Batter’s Last Pitch.” BQ alleged direct infringement, induced infringement, and contributory infringement. It also sought injunctive relief. MLBAM sought declaratory relief based on the invalidity and non-infringement of the asserted patent.

Direct Infringement

According to the court, BQ failed to raise a triable issue of fact regarding direct infringement because: (1) the claimed method was “objective” and allowed “little room” for editorial discretion, but the accused method was “subjective” and allowed a “great degree” of editorial discretion and (2) the claimed method was based on deletion but the accused method was based on accretion (copying and pasting).

Because the record lacked evidence of a genuine dispute of material fact regarding the performance—by MLBAM or anyone that was subject to MLBAM’s direction or control— of every step of the claimed method, MLBAM was entitled to judgment as a matter of law on BQ’s claim of direct infringement.

Doctrine of Equivalents

The court noted that a subjective or an accretive method could be equivalent to the method that was claimed by BQ. A party could, for example, create a condensed version of a baseball game by: (1) using BQ’s objective algorithm for selecting content from a game recording and (2) adding a few short clips of subjectively chosen content, such as fan reactions or a few foul balls. Similarly, a party could create a condensed version of a baseball game by objectively copying and pasting, into a new gapless recording, “all game action from final pitches and attempts by runners to advance,” rather than “deleting all other game action and eliminating the resulting time gaps.”

Nevertheless, the accused method was not a “trivially modified version” of BQ’s claimed method. The accused method was “fundamentally different” because it: (1) was subjective and based on accretion and (2) relied on value judgments by human editors rather than algorithmic rules. Because the accused method was fundamentally and non-trivially different from the claimed method, a person of ordinary skill in the art would infer substantial differences between the steps that were used by MLBAM and those that were claimed by BQ. Moreover, the substantial similarity of the end-products of the two methods was inconsequential, in the court’s view, because BQ had patented the method, not the end-product.

Because no genuine dispute of material fact was present, BQ could not show equivalence as a matter of law.

Argument-based prosecution history estoppel. MLBAM argued that argument-based prosecution history estoppel precluded BQ from asserting infringement under the doctrine of equivalents. Argument-based estoppel was generally appropriate, the court explained, when a patentee had explicitly disavowed a specific feature in the prior art; additional statements that were intended to further distinguish the claimed invention from the prior art did not constitute a clear and unmistakable surrender. Moreover, a patentee’s decision to forgo an appeal and submit an amended claim was considered a “concession” that the patented invention “did not reach as far as the original claim,” and therefore was presumed to be a “general disclaimer of the territory between the original claim and the amended claim.”

MLBAM contended that argument-based estoppel was inapplicable in this case because BQ had repeatedly stressed that its method was distinguishable from prior art due to its “objective” nature. BQ’s statements did not, however, amount to an explicit disavowal of any specific feature of the prior art, according to the court. At most, the statements revealed an attempt to “more particularly distinguish the novelty of BQ’s method.” In the court’s view, it was not clear that the statements had identified or specified any surrendered subject matter.

Accepting MLBAM’s argument would effectively eviscerate the doctrine of equivalents, the court reasoned, because all patent applicants had to describe, with particularity, how their claimed invention differed from prior art.

For those reasons, argument-based prosecution history estoppel could not prevent BQ from pursuing its infringement claim under the doctrine of equivalents. The claim could, however, be precluded by amendment-based estoppel.

Amendment-based prosecution history estoppel. During the prosecution of BQ’s patent, BQ amended the “editing” step of the claimed method. Originally, the editing step consisted of “editing the recorded appearances-at-bat to leave only the last pitch thrown to each player, plus any action ensuing after that pitch and any attempts of runners on base to advance to another base.”

In its original form, the editing step was not particular about the meaning of the term “editing.” The claim that contained the editing step was rejected, however, and BQ amended it to specify that “editing the game recording of each appearance-at-bat” would be achieved by “deleting substantially all game action” other than final pitches and attempts by runners to advance. Because MLBAM’s method was based on subjective accretion, not objective deletion, the method “[fell] within the territory that was conceded by the amendment,” according to the court.

BQ thus had to show that the amendment did not surrender the equivalent at issue. BQ could not meet that burden, the court explained, because BQ had no reason to believe that a subjective and accretive “copy-and-paste” method of editing was unforeseeable at the time of its patent application. Further, the rationale for the amendment was not “merely tangential” to the equivalent at issue. By specifying a deletion-based editing method, the amendment revealed a “core distinguishing characteristic” of the claimed equivalent.

Ultimately, BQ was estopped from asserting the doctrine of equivalents against MLBAM, with respect to editing step of the claimed method, because BQ had changed that step to clarify that “editing” meant “deleting substantially all” game action other than final pitches and attempts by runners to advance. Summary judgment was therefore granted to MLBAM on that alternative ground.

Induced and Contributory Infringement

To prevail on a claim of induced or contributory infringement, a patentee had to first prove direct infringement. Because the court ruled that BQ did not raise a triable issue of material fact regarding direct infringement, BQ could not prevail on its claims for induced or contributory infringement.

Injunctive Relief

Because the court granted summary judgment to MLBAM on BQ’s infringement claim, it also granted summary judgment to MLBAM on BQ’s claim for injunctive relief.

The case is No. 11-cv-1735 (KBF)

Attorneys: Matthew D. Murphey (Troutman Sanders LLP-CA) for Baseball Quick, LLC. Tammy H. Boggs (Foley & Lardner LLP) for MLB Advanced Media, L.P.

Companies: Baseball Quick, LLC; MLB Advanced Media, L.P.

Cases: Patent NewYorkNews