USDJ finds that baseball “can at times prove boring to watch,” and strikes out award of provisional patent rights under 35 USC § 154(d)(2)

by Robins Kaplan LLP

Baseball Quick, LLC v. MLB Advanced Media L.P. et al.

Case Number: 1:11-cv-01735-KBF

Baseball Quick developed a way to shorten the time needed to view a recorded baseball game, without omitting any outcome determinative actions. The patent at suit, U.S. Patent No. 7,628,716 (“Method of recording and playing baseball game showing each batter’s last pitch”) describes its invention, and notes that it does not create merely a highlight film:

The invention does not constitute merely a compilation of the highlights of a particular baseball game. Rather, the invention is directed to making a record of each and every outcome-determinative action that takes place during the complete game, while eliminating all of the action that ultimately does not impact on the outcome.

The patent application’s then-pending claims were published in 2003. Pending claim 1 began “I claim the name ‘Baseball Quick’ as our trademark. The name is an integral part of our invention and . . . .” Claim 4 had a more conventional structure, with a preamble and three limitations, involving recording, editing, and presenting images from a baseball game.

The patentee asked for damages for the time period between the application’s publication and the time of issuance pursuant to 35 USC § 154(d)(2). The defendants asked for this claim to be dismissed at summary judgment, arguing that the patentee could not show that the issued claims are “substantially identical” to the published claims.

Rounding third, heading home, and ignoring the boring details, the court construed eight claim terms as shown in the table below. Construction of the term “substantially” proved to be outcome determinative, as the issued claim 1, as construed, permits inclusion of images of non-game action such as a coach’s signals to players, whereas the closest published claim did not. Accordingly, the issued claims are not substantially identical to the published claims.



a method of providing a subscription for viewing a recorded baseball game

“This is a claim limitation.”


“The method of providing a subscription . . . must include the recited method steps, but may include additional steps not otherwise excluded from or contradictory to those steps. For example, ‘playing’ or ‘broadcasting’ the ‘edited recording’ for ‘subscribers’ as defined is a recited step that cannot be eliminated by unrecited method steps.”

edited recording

“A recording edited to leave not only all
(a) game action from a final pitch thrown to each player, and (b) successful and unsuccessful attempts of runners on base to advance to another base, but also may include optional material from the game recording including, but not limited to, original soundtrack recordings or narrative to explain play.”

obtaining subscribers

“Obtaining viewers that either agreed or requested in some manner to view the edited recording.”

condensed recorded game

“The edited recording.”


“Causing a device to display.”


“Simultaneously sending in a one-way transmission to multiple recipients.”

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

“Editing the game recording of each appearance-at-bat by deletion to produce an edited recording that must include all: (a) game action from a final pitch thrown to each player, and (b) successful and unsuccessful attempts of runners on base to advance to another base. Optional material that may also remain in the edited recording as part of this process includes, but is not limited to, original soundtrack recordings or narrative to explain play.”


DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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