Baseball Quick, LLC v. MLB Advanced Media. L.P. et al
Filing
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MEMORANDUM OF LAW in Support re: 63 MOTION Relief Pursuant to Rule 56(d) re: 55 MOTION for Summary Judgment... Document filed by Baseball Quick, LLC. (Heaton, Timothy)
UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK
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BASEBALL QUICK, LLC,
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Plaintiff,
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v.
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MLB ADVANCED MEDIA, L.P., ET AL.,
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Defendants.
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Civil Action No. 11-CV-01735
(TPG)(MHD)
ECF CASE
PLAINTIFF BASEBALL QUICK, LLC’S MEMORANDUM IN SUPPORT OF ITS
MOTION FOR RELIEF PURSUANT TO RULE 56(D)
Plaintiff Baseball Quick, LLC (“Plaintiff” or “Baseball Quick” or “BQ”) provides this
memorandum in support of its motion for relief pursuant to Rule 56(d)1.
I.
INTRODUCTION
On June 22, 2011, Defendant Advanced Media, L.P. (“Defendant” or “MLBAM”) moved
for summary judgment (Dkt. 43). The motion relies upon numerous factual underpinnings that
have not been tested through discovery. It was filed despite MLBAM’s refusal to participate in
the discovery process. In fact, MLBAM has yet to provide written responses or objections to
BQ’s document requests and interrogatories, although such responses were due on July 6, 2011,
and MLBAM has not served initial disclosures. Having provided no discovery whatsoever,
MLBAM improperly seeks a judicial determination of noninfringement of the patent-in-suit.
II.
FACTUAL BACKGROUND
This case was transferred here from the Southern District of California earlier this year.
(Dkt. 43). As explained in the Declaration of Matthew D. Murphey (“Murphey Decl.”), being
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Rule 56(f) was redesignated Rule 56(d) in 2010. Any references in this memorandum to Rule
56(f) as applied by pre-2010 caselaw shall be understood to refer to the current Rule 56(d).
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filed concurrently herewith, after the transfer, this Court held an informal conference on May
13th, at BQ’s request. At the conference, BQ requested that discovery commence and that the
Court set a claim construction briefing schedule; MLBAM requested that the Court schedule
briefing on an early summary judgment on the issue of infringement of the patent-in-suit. The
Court stated that MLBAM could proceed with its motion and ordered that the parties agree upon
a briefing schedule. The Court never suspended the operation of Rule 26 nor ordered that
discovery could not proceed pursuant to the Federal Rules of Civil Procedure and this Court’s
local rules. (Murphey Decl. ¶ 2).
A few weeks after the Court’s conference, pursuant to and in compliance with its Rule
26(f) obligations, MLBAM’s lead counsel Cynthia Franecki participated in the preparation of a
joint Rule 26(f) planning conference report, which was filed with the Court. (Report of Parties’
Planning Meeting and Proposed Discovery Plan (June 16, 2011, Dkt. 51) (“Rule 26(f) Report”))
(Murphey Decl. ¶ 3).
As more fully explained in the Murphey declaration, in the Rule 26(f) Report, BQ
proposes a full case schedule, yet MLBAM refused to respond substantively, taking the position
that this Court suspended all discovery pending its summary judgment motion. BQ disagrees
and believes that discovery is open as in the usual course. (Murphey Decl. ¶ 4).
MLBAM has rebuffed all attempts by BQ to obtain discovery in this matter, having failed
to respond to BQ’s written discovery (document requests and interrogatories) and having not
served its initial disclosures (Murphey Decl. ¶ 5, 6 and Exs. A, B, C).
MLBAM’s summary judgment motion relies upon numerous facts and declaration
testimony that have been untested through the discovery process. Yet, as set forth in BQ’s
summary judgment opposition, at least two of the major “undisputed facts” upon which
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MLBAM’s motion relies are demonstrably incorrect: i.e. (1) that no Condensed Games after the
issuance of the patent show the final pitch to each batter; and (2) the failure to mention the
availability of Condensed Games through paid mobile device applications (such as “At Bat 11”).
These untruths demonstrate quite clearly the rationale behind MLBAM’s resistance to providing
discovery and rush to summary judgment. Without discovery there is no way of knowing what
other statements may be incorrect. As such, discovery is necessary so that the Court may
evaluate BQ’s claim of patent infringement in light of a full and accurate disclosure of all
information relevant to Condensed Games. (Murphey Decl. ¶ 11-12).
BQ seeks discovery into numerous “undisputed” statements of facts upon which
MLBAM relies. Generally, the issues raised relate to (a) the content of and editing process used
to create Condensed Games, including any revisions since first introduced; (b) identification of
all platforms through which Condensed Games are made available; and (c) identification of the
payment required to access Condensed Games on each platform, including any changes since it
was first introduced.
The MLBAM “undisputed facts” into which BQ seeks discovery are set forth in greater
detail in the Murphey Declaration, ¶ 13-15. BQ also seeks discovery into statements set forth in
the Declaration of Dinn Mann. (Murphey Decl. ¶ 16). The requested discovery includes
document production and interrogatory responses, to be followed by deposition testimony. See
Murphey Decl. ¶ 18-21.
During a meet and confer on July 15th, MLBAM stated that it does not intend to respond
to BQ’s written discovery, based on its position that discovery has been stayed. (Murphey Decl.
¶ 8). BQ has separately sought an order compelling responses, by way of a letter delivered to the
Court on July 21, 2011. MLBAM offered to consider providing specific discovery needed by
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BQ to respond to MLBAM’s discovery motion. BQ provided specific requests in writing – the
same requests being made here through this motion and declaration – and also requested that
MLBAM agree to stay BQ’s deadline for its summary judgment opposition pending such
discovery. (Murphey Decl. Ex. D). MLBAM did not respond until 5:16 PM on the day BQ’s SJ
opposition was due, claiming to not understand the requested discovery and requesting to
schedule a phone call. (Murphey Decl. ¶ 9). There was no time for further discussion before the
filing of this brief and BQ’s summary judgment opposition.2
III.
MLBAM’S PREMATURE SUMMARY JUDGMENT MOTION SHOULD BE
DENIED, AND BASEBALL QUICK PERMITTED TO CONDUCT NECESSARY
DISCOVERY
A.
Second Circuit Courts Disfavor the Grant of Summary Judgment in the
Absence of Discovery and Have Consistently Granted Requests for Rule
56(d) Discovery Properly Supported by a Rule 56(d) Affidavit
The Second Circuit has held that summary judgment is only appropriate where “after
discovery, the nonmoving party has failed to make a sufficient showing on an essential element
of [its] case with respect to which it has the burden of proof” Hellstron v. United States Dep’t of
Veterans Affairs, 201 F.3d 94, 97 (2d Cir. 2000). Further:
Only in the rarest of cases may summary judgment be granted against a plaintiff
who has not been afforded the opportunity to conduct discovery.
Id.. In Hellstron, the court reversed summary judgment where the plaintiff had no opportunity to
conduct discovery, including the chance to take any depositions, because plaintiff had no chance
to adduce evidence to support his claim. Id. at 97-98.
Rule 56(d) provides that “summary judgment be refused where the nonmoving party has
not had the opportunity to discovery information that is essential to his opposition.” Anderson v.
Liberty Lobby, Inc., 477 U.S. 242, 250 n.5 (1986). The rule prevents a respondent from being
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BQ will, of course, inform the Court if the parties are able to reach agreement on the relief requested through this
motion.
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“railroaded” by a premature motion for summary judgment. Celotex Corp. v. Catrett, 477 U.S.
317, 326 (1986).
The rule states:
(d) When facts are unavailable to the Nonmovant. If a nonmovant
shows by affidavit or declaration that, for specified reasons, it
cannot present facts essential to justify its opposition, the court
may:
(1) defer considering the motion or deny it;
(2) allow time to obtain affidavits or declarations or to take
discovery; or
(3) issue any other appropriate order.
Rule 56(d), Fed. R. Civ. P.
In a recent case, then Circuit Judge Sotomayor explained that a court should defer
decision on a motion for summary judgment where a party advises the court that it needs
discovery to be able to present facts to defend against the motion. Miller v. Wolpoff &
Abramson, LLP, 321 F.3d 292, 303 (2d Cir. 2003) (quoting Commercial Cleaning Servs, L.L.C.
v. Colin Serv. Systems, Inc., 271 F.3d 374, 386 (2d. Cir. 2001)). Judge Sotomayor set forth the
Second Circuit’s requirements for a party seeking to resist summary judgment on the grounds of
the need for discovery under Rule 56(d). The party must submit an affidavit showing:
(1) what facts are sought [to resist the motion] and how they are to be obtained;
(2) how those facts are reasonably expected to create a genuine issue of material fact;
(3) what effort affiant has made to obtain them; and
(4) why the affiant was unsuccessful in those efforts
Id.. In Miller, the plaintiff alleged violation of debt collection statutory requirements. A key
issue was the level of professional attorney involvement in the preparation of demand letters sent
on attorney letterhead. Summary judgment was premature where plaintiff had no opportunity to
investigate the conclusory statements made in attorney affidavits regarding office practices, and
no opportunity to depose the attorneys. Miller, 321 F.3d at 307.
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Further, the Second Circuit vacated a grant of summary judgment where interrogatory
responses and document productions were provided only three days prior to the deadline for
opposing summary judgment, and there had been no time for depositions. Meloff v. New York
Life Ins. Co., 51 F.3d 372, 375 (2d Cir. 1995).
Applying Rule 56(d), a court in this district denied a motion for summary judgment. G-I
Holdings, Inc. v. Baron & Budd, 2002 U.S. Dist. Lexis 19006 (S.D.N.Y. Oct. 10, 2002) (Sweet,
J.) (providing leave to renew upon the close of limited discovery). Defendants filed a summary
judgment motion relying upon two affidavits, id. at *4-8. Defendants provided no discovery that
had been previously noticed and refused to make the affiants available for deposition. Id.
Applying the 2nd Circuit’s four-part Rule 56(d) test set forth above, the Court denied summary
judgment, ordering that depositions proceed and discovery be answered. (Id. at *11-16).
More recently, courts in this circuit have denied summary judgment motions where, as
here, defendant filed its motion prior to providing discovery and were unwilling to engage in any
discovery prior to decision on its summary judgment motion. Salazar-Martinez v. Fowler
Brothers, Inc., 2011 U.S. Dist. LEXIS 26381 (W.D.N.Y. Mar. 15, 2011). Similarly, a motion for
summary judgment was denied without prejudice and additional time granted for discovery
where defendants filed a summary judgment motion less than one month after their amended
answer and there was insufficient time for plaintiff to obtain material information. Carpenter v.
Churchville Greene Homeowner’s Association, Inc., 2011 U.S. Dist. Lexis 17042, *2 (W.D.N.Y.
Feb. 22, 2011). Plaintiff had timely requested additional discovery pursuant to Rule 56(d) and
argued that depositions would allow them to show the individual defendants should be held
liable. Carpenter, 2011 U.S. Dist. Lexis 17042 at *11.
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B.
Summary Judgment of Noninfringement is Inappropriate in a Patent Case
Without the Opportunity for Discovery and a Proper Claim Construction
Analysis
In the context of a patent case, as here, the Federal Circuit has stated:
The grant of summary judgment of non-infringement, with respect to accused
devices whose components or methods are not readily observable and are in
dispute, requires sufficient discovery to assure that the issue has been fully and
fairly resolved. Rule 56(f) serves the dual purpose of safeguarding against too
hasty a grant of summary judgment, while requiring that parties who seek time for
additional discovery have not been dilatory.
Vivid Technologies, Inc. v. American Science & Engineering, Inc., 200 F.3d 795, 809 (Fed. Cir.
1999). In Vivid Technologies, the district court had stayed discovery, issued a claim
construction, and granted summary judgment after denying plaintiff’s Rule 56(f) discovery
request. Id. at 807. The defendant supported its motion for summary judgment with an affidavit,
and the plaintiff opposed with contravening affidavits. The Federal Circuit stated that the
competing facts “were material to the issue of infringement, and could not be resolved adversely
to [plaintiff]. The denial of discovery with respect thereto inhibited [plaintiff’s] opposition to
[defendant’s summary judgment motion].” Id. at 809. Because plaintiff made a timely Rule
56(f) request directed to specific statements of material fact in the summary judgment motion
and affidavit, it was entitled to discovery relevant to the material facts in dispute. Id. at 810.
The Federal Circuit vacated the summary judgment grant and permitted discovery on remand.
Id. at 810, 812.
MLBAM further invites this Court to commit reversible error by rushing to summary
disposition without a detailed factual inquiry, by preventing the parties from engaging in
discovery, and by depriving them of the opportunity for detailed claim construction briefing and
a full Markman hearing. See, e.g., Eon-Net LP v. Flagstar Bancorp, 249 Fed. Appx. 189, 194-95
(Fed. Cir. 2007) (“We have previously held that where a district court construes a patent without
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following the necessary steps, we should remand the matter for further proceedings . . .”); Allen
Eng’g Corp. v. Bartell Indus., 299 F.3d 1336, 1346 (Fed. Cir. 2002) (remand required by
“district court’s failure to construe the claims limitations at issue, and its inadequate factual
findings on infringement”).
In Allen Engineering, the Court never conducted a Markman hearing, nor construed the
asserted claims of the patent-in-suit. Allen Eng’g Corp., 299 F.3d at 1343. The Court construed
none of the claim limitations appearing in an independent claim that it found was literally
infringed. Id. at 1346. The Federal Circuit stated: “[o]n remand, the district court must construe
the disputed limitations of all of the claims remaining in suit and must then compare each of
those limitations, as construed, to the corresponding elements of [the accused products] to
determine infringement.” Id.
C.
MLBAM’s Summary Judgment Motion Should Be Denied and BQ Granted
Discovery
Here, as in the cases cited above (G-1 Holdings Inc., Salazar-Martinez, Carpenter),
Advanced Media seeks summary judgment yet has provided no discovery. Yet, it is the “rarest
of cases” where summary judgment should be granted against a plaintiff prior to the opportunity
for discovery. Hellstron, 201 F.3d at 97. As in Vivid Technologies, BQ’s Rule 56(d) request is
directed to the need for discovery regarding specific “undisputed” facts upon which Advanced
Media’s motion relies. BQ should not be “railroaded” by a premature motion for summary
judgment. Celotex, 477 U.S. at 326.
BQ has shown that at least some of MLBAM’s “undisputed facts” are entirely untrue.
The known misrepresentations likely only scratch the surface, and establish the need for
discovery in order to uncover the entire universe of correct and accurate information regarding
MLBAM’s Condensed Games and infringement activities.
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BQ has set forth in detail the specific facts into which discovery is sought; has explained
that those facts are directly relevant to purported “undisputed facts” set forth by Advanced
Media; and has set forth the proposed means of discovery – document production, interrogatory
responses, and deposition testimony. See Murphey Decl., ¶ 18-21. Further, BQ previously
requested the discovery sought through document requests, interrogatories, and a written letter
setting forth specific Rule 56(d) requests (sent at MLBAM’s invitation) and has been unable to
obtain the discovery. See Murphey Decl., ¶ 5-10. As such, BQ’s request fully satisfies the
requirements for Rule 56(d) discovery, and should be granted. Miller, 321 F.3d at 303 (2d Cir.
2003).
IV.
CONCLUSION
For at least the reasons set forth above, BQ respectfully requests that this Court deny
Advanced Media’s summary judgment motion as premature, and permit BQ to take the
discovery needed to develop facts in opposition. Alternatively, BQ requests that the Court defer
consideration of the motion until such time as discovery has been completed.
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Dated: July 22, 2011
TROUTMAN SANDERS LLP
/s/ Timothy P. Heaton
Timothy P. Heaton
TROUTMAN SANDERS LLP
The Chrysler Building
405 Lexington Avenue
New York, NY 10174-0700
Telephone: 212.704.6417
Facsimile: 212.704.8383
E-mail: timothy.heaton@troutmansanders.com
Matthew D. Murphey (Pro Hac Vice)
TROUTMAN SANDERS LLP
11682 El Camino Real, Suite 400
San Diego, CA 92130-2092
Telephone: 858.509.6000
Facsimile: 858.509.6040
E-mail: matt.murphey@troutmansanders.com
Douglas D. Salyers (Pro Hac Vice )
Paul E. McGowan (Pro Hac Vice )
TROUTMAN SANDERS LLP
600 Peachtree Street, N.E. Suite 5200
Atlanta, GA 30308-2216
Telephone: 404.885.3000
Facsimile: 404.885.3900
E-mail: doug.salyers@troutmansanders.com
E-mail: paul.mcgowan@troutmansanders.com
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