United States District Court, S.D. New York
OPINION & ORDER
KATHERINE B. FORREST, District Judge.
Defendant MLB Advanced Media, L.P. ("MLBAM") has brought this motion for summary judgment of non-infringement against plaintiff Baseball Quick, LLC ("Baseball Quick" or "BQ"), which brought this suit against MLBAM alleging infringement of U.S. Patent 7, 628, 716 ("the 716 Patent"). Both BQ and MLBAM produce condensed versions of baseball games that can be streamed over the internet. The 716 Patent describes a particular method for producing such a condensed game.
As the old saying goes, there is more than one way to skin a cat. Because MLBAM uses a subjective editing process focused on copying and pasting material, whereas BQ's is objective and focused on deleting material, MLBAM does not use the method described by the 716 Patent, nor does it use an equivalent method. Accordingly, the Court GRANTS summary judgment of non-infringement for MLBAM.
A. Factual Background
On June 13, 2000, BQ filed a provisional patent application for what later became the 716 Patent. At numerous points in the application process, BQ described its claimed invention as an "objective" algorithm or method for producing a condensed version of a professional baseball game. (DSOF ¶¶ 130, 133, 135.37, 139, 147-50.) The 716 Patent, which is entitled "Method of Recording and Playing Baseball Game Showing Each Batter's Last Pitch, " issued on December 8, 2009. (ECF No. 1 ex. A ("716 Patent.").) It has five numbered claims:
1. A method of providing a subscription for viewing a recorded baseball game in which players from each team appear at bat, and attempt to place a pitched baseball into play and to reach base safely; with players failing to reach base safely being out and players on base attempting unsuccessfully to advance to another base being out; the method comprising: (1) recording each appearance-at-bat for every player and game action resulting from an appearance-at-bat to produce a game recording; (2) editing the game recording of each appearance-at-bat to produce an edited recording by deleting substantially all game action other than (i) game action from a final pitch thrown to each player, (ii) successful attempts of runners on base to advance to another base not associated with the game action resulting from the final pitch and (iii) unsuccessful attempts of the runners on base to advance to another base resulting in and [sic] out not associated with the game action resulting from the final pitch; (3) obtaining subscribers for viewing the edited recording and (4) playing or broadcasting the edited recording as a condensed recorded game for viewing by the subscribers.
2. The method of claim 1 wherein the edited recording for a nine-inning baseball game is about 15 minutes.
3. The method of claim 1 wherein said step of playing or broadcasting the edited recording for viewing is conducted over the Internet.
4. The method of claim 1 wherein said step of playing or broadcasting the edited recording for viewing is conducted by playing a videotape recording.
5. The method of claim 1 wherein the edited recording contains audio explaining any substitution of players.
(716 Patent 11. 3:21-4:24.)
As can be gleaned from the text of the patent, Claim 1 is an independent claim with four numbered steps, and the remaining four claims are dependent. (See 716 Patent 11. 3:21-4:24.) Claim 1 Step 2 requires the production of "edited recording[s]" that retain "game action from a final pitch thrown to each player and all "attempts of runners on base to advance to another base not associated with the game action resulting from the final pitch." (716 Patent 11. 4:3-11.). It also permits the inclusion of "additional material, " such as "portions of an original soundtrack recorded by the announcers at the game or other added narrative, " in order to "explain pitching changes, pinch runners, and other substitutions that may affect play, as well as other aspects of the recorded action." (See 716 Patent 11. 2:34-39.) This optional material must be "from the game recording, " and may include "original soundtrack recordings or narrative to explain play." (Markman Op. at 46.)
Claim 1 Step 4 provides that the "edited recordings" are "play[ed]" or "broadcasto" for viewing by "subscribers, " (716 Patent 11. 4:20-22), who are "subscriber-viewers" that "either agreed or requested in some manner to view the edited recording, " (Markman Op. at 31, 46). "Playing" the edited recording means causing a device to display it, and "broadcasting" the edited recording means simultaneously sending it in a one-way transmission to multiple recipients. (Markman Op. at 46.)
Like BQ, MLBAM also produces condensed versions of professional baseball games, which it calls "Condensed Games." (DSOF ¶¶ 4, 6.) MLBAM's editors build Condensed Games from telecast feeds, (see DSOF ¶ 25), generally by identifying and copying clips from the game telecast and placing those clips on a timeline, (DSOF ¶ 79; see DSOF ¶ 25). The editors typically assemble the Condensed Game as the baseball game is being played. (DSOF ¶ 79.) Other graphical material, which may include graphical overlays and advertisements, is added later on. (DSOF ¶¶ 82-86.) As a final step before approval and publication, MLBAM conducts a quality control procedure, and then publishes the Condensed Game so that it is available for download on MLB.com. (PSOAF ¶¶ 28-29, 31; DRSOAF ¶ 31). Viewers can then stream the Condensed Game to an electronic device. (See DSOF ¶¶ 94, 96, 102.)
There is some dispute as to how exactly MLBAM instructed its editors to produce Condensed Games before the issuance of the 716 Patent, (see DRSOAF ¶ 15), but it is clear that before 2009, MLBAM editors were generally instructed to include "every final pitch" in Condensed Games, (PSOAF ¶ 17). At least since 2009, Condensed Games have been built by editors based on instructions provided to them by MLBAM, (DSOF ¶ 4), which have been provided in written form since at least the 2010 baseball season, (DSOF ¶ 52). Although the specific instructions have changed over time, they have generally stated that the editors can avoid "routine ground balls, routine pop outs, and routine fly balls, " and that editors can or should include, inter alia, "any action that results in a hitter reaching base and what happens after they reach, " "all runs scored, " "any costly errors, " "all [strikeout]s, " "great defensive plays, " and "anything historic." (DSOF ¶¶ 54, 59).
Between the 2010 season and August 2014, MLBAM produced approximately 11, 770 Condensed Games. (DSOF ¶ 77.) Only 15 of the Condensed Games published by MLBAM before July 2011 included all outs in the game, and all of these Condensed Games were produced during April 2010 and April 2011, the first month of the baseball season. (DSOF ¶ 72.)
B. Procedural Background
BQ filed this action on August 23, 2010. (ECF No. 1 ("Compl.").) Count I of BQ's complaint alleges infringement of the 716 Patent under 35 U.S.C. § 271(a), (b), and/or (c). (Compl. ¶¶ 17-23.) Count II of BQ's complaint requests injunctive relief for the infringement alleged in Count I. (Compl. ¶¶ 24-26.) On January 3, 2011, MLBAM filed an answer and counterclaims. (ECF No. 21 ("Answer & Countercl.").) Count I of MLBAM's counterclaims requests declaratory judgment of noninfringement ...