District Judge Katherine B. Forrest granted defendant MLB Advanced Media’s motion for summary judgment of non-infringement of plaintiff Baseball Quick’s U.S. Patent No. 7,628,716 (“the ’716 patent”) that describes a method for producing a condensed versions of baseball games.
The court found that Baseball Quick’s claimed method is objective, allows little room for editorial discretion, and is based on a deletion method. MLB’s method is subjective, based on editors’ discretion, and is based on an accretion (copying and pasting) method. The court went on to find that MLB’s method was not “merely some trivially modified version of [Baseball Quick’s] claimed method” but is “fundamentally different.” Accordingly, the court held that MLB does not use Baseball quick’s method and thus does not infringe the ’716 patent, either directly or under the Doctrine of Equivalents. The court dismissed Baseball Quick’s arguments that “there is no discernable difference between [the condensed games] that contain all final pitches as opposed to those that do not,” stating that Baseball quick’s patent is for a method, not the end-product of a method. The court was also not convinced by Baseball Quick’s argument that MLB’s editing process must be based on “destructive editing,” where the full game recordings are destroyed during the production. It found that the ’716 patent issued “well into the digital era . . . making any arguments premised on the idea that the patent contemplates the ‘destructive’ editing of film or analog recording media borderline frivolous.” Finally, the court also held that Baseball Quick was estopped from asserting the doctrine of equivalents against MLB because of prosecution history estoppel, specifically amendment-based estoppel, because Baseball Quick changed claim 1 to clarify that “editing” meant “deleting substantially all” game action other than final pitches and attempts for runners to advance during prosecution. The court dismissed MLB’s argument that argument-based estoppel should apply. The court noted that “all patent applicants must explain with particularity how their claimed invention differs from prior art in order to obtain a patent” and MLB’s arguments would “effectively eviscerate the doctrine of equivalents.”
Case: Baseball Quick v. MLB Advanced Media LP, No. 11 Civ. 1735 (KBF), 2014 BL 340883, (S.D.N.Y. Dec. 4, 2014).