Sportvision, Inc v. MLB Advanced Media L.P.

Background

Sportvision, Inc. and SportsMEDIA Technology Corp. sued MLB Advanced Media, LP (MLBAM), asserting patent infringement, trade-secret misappropriation, breach of contract, and unfair competition claims. The order addressed objections to a magistrate judge’s ruling on the plaintiffs’ motion to strike portions of MLBAM expert Dr. Ravin Balakrishnan’s report concerning indefiniteness—the legal issue of whether patent claims are stated clearly enough.

The magistrate judge denied the motion to strike but found that Dr. Balakrishnan’s indefiniteness opinions were untimely. The magistrate judge allowed the plaintiffs to depose Dr. Balakrishnan and submit a rebuttal expert report addressing those opinions. She also awarded the plaintiffs reasonable attorneys’ fees for preparing the motion to strike, taking the deposition, and preparing the rebuttal report. The magistrate judge further barred both sides from offering additional invalidity contentions or expert opinions without prior permission from the court.

MLBAM objected, arguing that Dr. Balakrishnan’s opinions were timely under the scheduling orders and patent rules, that the additional discovery was unnecessary, and that the fee award was improper. The plaintiffs opposed the objections.

Review Standard

Because the magistrate judge’s order did not terminate any claim or defense, the district court treated it as a non-dispositive pretrial order. Under Federal Rule of Civil Procedure 72(a), the district court reviewed the challenged portions for clear error or a ruling contrary to law. A ruling is clearly erroneous when the reviewing court has a firm conviction that a mistake was made.

Court’s Analysis

Timeliness of the Expert Opinions

Judge Gardephe concluded that the scheduling orders required the parties to identify supporting expert testimony for disputed claim terms, including indefiniteness, by deadlines in October 2020. MLBAM did not identify the expert opinions later provided by Dr. Balakrishnan, and some terms he addressed had not previously been identified as indefinite in the parties’ disputed-terms chart.

The court also agreed that the disclosure was untimely because the parties had chosen to address indefiniteness during claim construction rather than at summary judgment. MLBAM had represented that the evidentiary record was complete and that it did not need additional expert testimony on the issue. The fact that the court had not yet issued its claim-construction ruling did not make the later disclosure timely.

Deposition and Rebuttal Report

The court affirmed the magistrate judge’s decision to allow the plaintiffs to depose Dr. Balakrishnan and submit a rebuttal report. Judge Gardephe concluded that these measures appropriately addressed the prejudice caused by the late disclosure. The plaintiffs had previously argued the indefiniteness issues without having an opportunity to question Dr. Balakrishnan about his opinions, while MLBAM had deposed the plaintiffs’ expert before submitting its claim-construction briefing and before the claim-construction hearing.

Attorneys’ Fee Award

The court vacated the award of attorneys’ fees and remanded that issue to the magistrate judge for further briefing and consideration. Although Federal Rule of Civil Procedure 37(c)(1) can authorize reasonable expenses when required information is disclosed late without substantial justification, the plaintiffs’ motion to strike did not request attorneys’ fees. The court therefore concluded that MLBAM was not adequately notified that a fee sanction might be imposed and did not have an opportunity to address whether such an award was appropriate.

Disposition

The court overruled MLBAM’s objections in part and sustained them in part. Judge Figueredo’s order was affirmed in part and vacated in part: the fee award was vacated and remanded, while the remainder of the order—including the denial of the motion to strike and the permission for the plaintiffs to depose Dr. Balakrishnan and submit a rebuttal report—was affirmed. The plaintiffs’ motion to compel and MLBAM’s motion for a stay were denied as moot because the expert-discovery stay had been lifted. The clerk was directed to terminate those motions and the motion to strike.