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

Background

This order resolved several discovery disputes in a patent case involving Sportvision, Inc. and SportsMedia Technology Corporation, together called Sportvision, and MLB Advanced Media L.P. (MLBAM). The order addressed disputes between the parties; it reserved separate disputes involving nonparties for a later conference.

Sportvision’s motion to compel patent-license discovery

Sportvision sought patent-related documents and information from MLBAM to help establish patent damages, including a reasonable royalty. Sportvision relied on the legal factors commonly used to assess a reasonable royalty, including rates paid for comparable patent licenses.

MLBAM said the requests were overly broad and burdensome and argued that Sportvision was entitled only to information about licenses involving patents comparable to the patent at issue. MLBAM reported that it had identified 12 licenses it had taken from others and no licenses it had granted to others. It described the technologies covered by those licenses but did not produce the agreements or identify the counterparties, patents, royalty structures, or royalty amounts.

The court concluded that the brief descriptions did not show that any of the technologies were potentially comparable, although some components might bear a relationship to the technology at issue. The court therefore directed MLBAM, by January 17, 2022, to identify the patents underlying the 12 licenses in a way that would allow Sportvision to locate them in the publicly available United States Patent and Trademark Office database. MLBAM was not required at that time to produce the license agreements or other license information. Sportvision could renew its motion if, after reviewing the patents, it could specifically explain why particular licenses involved comparable technology.

In the conclusion, Sportvision’s motion to compel was granted only to that limited extent and was otherwise denied without prejudice.

MLBAM’s motion to compel and Sportvision’s motion to strike

MLBAM sought documents about four Sportvision products—the FoxTrax hockey system, the 1st & Ten first-down line, NASCAR Pointers, and MLB Virtual Ads—that Sportvision had identified as predating the patent at issue. MLBAM argued that these products might qualify as prior art, meaning earlier technology relevant to whether a patent is valid.

MLBAM had initially identified only the FoxTrax system in its invalidity contentions, which are disclosures describing the grounds on which a party challenges a patent’s validity. In July 2021, it supplemented those contentions to include all four products and identified patent claims it believed were anticipated or made obvious by them. Sportvision argued that the supplemental contentions were untimely and that the additional discovery was prejudicial and burdensome.

The court held that the patent rules did not require MLBAM to show “good cause” to supplement its contentions, but did require the supplementation to be timely. Although MLBAM knew about the products earlier, the court accepted MLBAM’s explanation that it needed nonpublic technical information in Sportvision’s possession to determine whether the products could affect patent validity. The court also found that Sportvision had notice of MLBAM’s interest in the products and had not made a specific showing of prejudice or undue burden.

MLBAM’s motion to compel production responsive to Requests for Production Nos. 142 through 147 was granted. Sportvision’s countermotion to strike MLBAM’s supplemental invalidity contentions was denied. The parties were directed to submit a joint proposal for the required document production.

Email privilege dispute

Sportvision reportedly produced an email between Sportvision and ESPN inadvertently and then sought to retrieve it as protected by the attorney-client and common-interest privileges. MLBAM requested that the court review the email privately to determine whether the privilege claim was valid. MLBAM also sought to reopen a deposition and obtain fees and costs.

The court granted MLBAM’s request for an in camera review, meaning a private review by the court. Sportvision was directed to submit the email for review. Until the court ruled on privilege, MLBAM was directed not to use or disclose the email. The court reserved decisions about reopening the deposition and awarding fees or costs.

Discovery schedule

Sportvision requested additional time for fact discovery and expert disclosures, while MLBAM asked the court to keep the existing fact-discovery deadline. The court granted Sportvision’s request to the extent stated in the order and set these deadlines:

The court reserved decision on the discovery disputes involving nonparties, pending a conference with the parties and those nonparties. The clerk was directed to close the docket entries concerning the resolved motions.