Front Row Techs., LLC v. NBA Media Ventures, LLC

125 F.Supp.3d 1260

Front Row Technologies, LLC, Plaintiff,

v.NBA Media Ventures, LLC, MLB Advanced Media, L.P., Mercury Radio Arts, Inc., GBTV, LLC, Major League Baseball Properties, Inc., & Premiere Radio Networks, Inc., Defendants.

Front Row Technologies, LLC, Plaintiff,

v.MLB Advanced Media, L.P., Mercury Radio Arts, Inc., d/b/a ‘The Glen Beck Program, Inc.’, & GBTV, LLC, Defendants.

Front Row Technologies, LLC, Plaintiff,

v.Turner Sports Interactive, Inc., and Turner Digital Basketball Services, Inc., Defendants.

Front Row Technologies, LLC, Plaintiff,

v.NBA Media Ventures, Turner Sports Interactive, Inc. & Turner Digital Basketball Services, Inc., Defendants.

No. CIV 10–0433 JB/SCY

No. CIV 12–1309 JB/SCY

No. CIV 13–0636 JB/SCY

No. CIV 13–1153 JB/SCY

United States District Court, D. New Mexico.

Filed November 19, 2015

Bryan J. Davis, William Garth Gilchrist, Davis, Gilchrist & Lee, P.C. Albuquerque, New Mexico, Alfonso Garcia Mr. Chan, Christopher L. Evans, Mr. Shore Mr. Chan DePumpo LLP, Dallas, Texas, Attorneys for Plaintiff Front Row Technologies, LLC

Alan E. Littmann, Brian Patrick O'Donoghue, Douglas J. Winnard, Goldman Ismail Tomaselli Brennan & Baum, LLP, Chicago, Illinois, Emil Kiehne, Modrall Sperling Roehl Harris & Sisk PA, Albuquerque, New Mexico, Cynthia J. Rigsby, Foley & Lardner, LLP, Milwaukee, Wisconsin, Attorneys for Defendant MLB Advanced Media, L.P.

MEMORANDUM OPINION AND ORDER

James O. Browning, UNITED STATES DISTRICT JUDGE

THIS MATTER comes before the Court on the Defendants' Memorandum of Law in Support of their Motion for Entry of a Prosecution Bar Provision in the Protective Order, filed February 20, 2014 (Doc. 204)("Motion"). The Court held a hearing on October 27, 2015. The primary issues are: (i) whether the Court should grant a prosecution bar, which would prohibit Front Row's counsel from simultaneously participating in this litigation and prosecuting related patents; and (ii) whether the proposed prosecution bar is reasonable. The Court concludes that a prosecution bar is appropriate to protect the Defendants' confidential technical information. It determines that the Defendants' proposed prosecution bar, modified with some of Front Row's suggested changes, is reasonable. Consequently, the Court will grant the Motion in part and deny it in part.

FACTUAL BACKGROUND

The Court takes its facts from the Plaintiff's Fourth Amended Complaint for Patent Infringement and Jury Demand, filed April 23, 2013 (Doc. 149) ("Complaint"). It also draws on Plaintiff Front Row Technologies, LLC's Opposition to Defendants' Motion for Entry of a Prosecution Bar Provision in the Protective Order, filed March 10, 2014 (Doc. 205)("Response"), for important details where necessary.

Plaintiff Front Row Technologies ("Front Row") is a New Mexico limited liability company that holds patents related to streaming video on mobile devices. See Complaint ¶¶ 1–20, at 1–5. Front Row owns "all rights, title, and interest in and under" ten such patents:

1. United States Patent No. 8,090,321 ("321 patent"), titled "Transmitting Sports and Entertainment Data to Wireless Hand Held Devices over a Telecommunications Network," which duly and legally issued on January 3, 2012;2. United States Patent No. 8,086,184 ("184 patent"), titled "Transmitting Sports and Entertainment Data to Wireless Hand Held Devices over a Telecommunications Network," which duly and legally issued on December 27, 2011;

3. United States Patent No. 8,270,895 ("895 patent"), titled "Transmitting Sports and Entertainment Data to Wireless Hand Held Devices over a Telecommunications Network," which duly and legally issued on September 18, 2012;

4. Plaintiff Front Row Technologies is the owner of all rights, title and interest in and under United States Patent No. 7,812,856 ("856 patent"), titled "Providing Multiple Perspectives of a Venue Activity to Electronic Wireless Hand Held Devices," which duly and legally issued on October 12, 2010;

5. United States Patent No. 7,796,162 ("162 patent"), titled "Providing Multiple Synchronized Camera Views for Broadcast from a Live Venue Activity to Remote Viewers," which duly and legally issued on September 14, 2010;

6. United States Patent No. 7,884,855 ("855 patent"), titled "Displaying Broadcasts of Multiple Camera Perspective Recordings from Live Activities at Entertainment Venues on Remote Video Monitors," which duly and legally issued on February 8, 2011;

7. United States Patent No. 7,782,363 ("363 patent"), titled "Providing Multiple Video Perspectives of Activities through a Data Network to a Remote Multimedia Server for Selective Display by Remote Viewing Audiences," which duly and legally issued on August 24, 2010;

8. United States Patent No. 8,184,169 ("169 patent"), titled "Providing Multiple Video Perspectives of Activities through a Data Network to a Remote Multimedia Server for Selective Display by Remote Viewing Audiences," which duly and legally issued on May 22, 2012;

9. United States Patent No. 8,401,460 ("460 patent"), titled "Transmitting Sports and Entertainment Data to Wireless Hand Held Devices over a Telecommunications Network," which duly and legally issued on March 19, 2013; and

10. United States Patent No. 7,376,388 ("388 patent"), titled "Broadcasting Venue Data to a Wireless Hand Held Device," which duly and legally issued on May 20, 2008.

Complaint ¶¶ 11–20, at 3–5. Front Row alleges that all of these patents are valid and enforceable. See Complaint ¶¶ 21–31, at 5–6.

Inventors Luis Ortiz and Kermit Lopez founded Front Row in 2000. See Motion at 7; Response at 3. Front Row's lead litigation counsel in this matter are Michael Shore and Alfonso Chan of Shore Chan DuPumpo LLP, an intellectual property firm based in Dallas, Texas. See Motion at 7; Response at 3. Mr. Shore, Mr. Chan, Ortiz, and Lopez also co-founded and co-own Micro–Gaming Ventures LLC, another entity that pursues patents related to mobile smartphone gambling. See Motion at 7; Response at 1, 3.

Defendant MLB Advanced Media, L.P. is in the business of broadcasting sporting events through electronic and wireless means, and of selling software to support that broadcasting. See Complaint ¶ 2, at 1–2. Its primary product relevant to this litigation is the "At Bat 13" smartphone application, the official application of Major League Baseball. Complaint ¶ 33, at 6.

Defendants Mercury Radio Arts, Inc. and GBTV, LLC, create and distribute multimedia content over the internet. They are both associated with talk show host and radio personality Glenn Beck. See Complaint ¶¶ 4–5, at 2.

Defendant Premiere Radio Networks, Inc. is a "national radio network that produces radio programming and services for radio stations, and distributes its own and various third-party radio programs to radio station affiliates throughout the world." Complaint ¶ 5, at 2.

Defendant NBA Media Ventures, LLC, like MLB Advanced Media, L.P., is in the business of broadcasting sporting events through electronic and wireless means, and of selling software to support that broadcasting. See Complaint ¶¶ 6, 37, at 2, 8. Its primary products relevant to this litigation are "NBA League Pass Mobile" and "NBA League Pass Broadband," which provide video of National Basketball Association games to consumers over the internet. Complaint ¶¶ 37, at 8.

PROCEDURAL BACKGROUND

The Defendants have moved to insert a prosecution bar into the parties' existing protective orders. Front Row opposes the entry of a prosecution bar and, in the alternative, argues that the court should modify the Defendants' preferred language. Although the parties have worked to reach an agreement, there are still significant differences between their proposed prosecution orders.

1. The Motion and Proposed Text.

Between November and December of 2013, Front Row and Defendants traded electronic messages with different proposals for the prosecution bar. See Email from Doug Winnard, Goldman Ismail Tomaselli Brennan & Baum, LLP, to Christopher Evans, Shore Chan Dupumpo LLP (dated October 15, 2013), filed February 20, 2014 (Doc. 204–10). The parties ultimately failed to reach an agreement on the prosecution bar's proper scope. They thus submitted the agreed-upon parts of the protective order to the Court. See Email from Chris Evans, Shore Chan DePumpo LLC, to Andrew Allen, Vinson & Elkins (dated December 4, 2013), filed February 20, 2014 (Doc. 204–17).

On December 10, 2013, the Court entered the parties' agreed-upon Protective Orders in each of Front Row's cases against the Defendants. See Protective Order Governing Discovery of Confidential and Proprietary Information, filed December 10, 2013 (Doc. 192); and Protective Order Governing Discovery of Confidential and Proprietary Information, filed December 10, 2013 (Doc. 44)(entered in separate docket for member case Front Row Techs. v. Time Warner Inc. et al, No. CIV 13–0636 JB/SCY). These Protective Orders included placeholder language in paragraph 9: "This paragraph is reserved for a possible Prosecution Bar. The parties disagree on whether such a bar is necessary. Thus, the issue will be briefed separately." Protective Order Governing Discovery of Confidential and Proprietary Information, filed February 20, 2014 (Doc. 204–2)("The Defendants' Proposal").

On February 20, 2014, all of the Defendants moved for a prosecution bar to be inserted into the Protective Orders in each of their cases. See Motion at 1. The Defendants explain that prosecution bars prohibit anyone who receives another party's confidential technical information in discovery from prosecuting patents "concerning the technological subject matter of the patents-in-suit." Motion at 1–2. The bar, the Defendants state, would prevent Front Row from seeking additional patents based on their confidential information. See Motion at 1–2.

The Defendants include their proposed text for the prosecution bar as part of their Motion. See Protective Order Governing Discovery of Confidential and Proprietary Information, filed February 20, 2014 (...