Probatter Sports, LLC v. Sports Tutor, Inc
3:05-cv-01975
| D. Conn. | Mar 29, 2019Background
- ProBatter sued Sports Tutor for patent infringement; court found infringement and tried invalidity/relief, leaving damages for later phase.
- ProBatter originally sought lost profits; nearly seven years later it disclosed a reasonable-royalty theory and produced only a 2015 license to Joyner Technologies.
- Sports Tutor later subpoenaed Sports Attack and uncovered a 2008 letter agreement between ProBatter and Sports Attack that ProBatter had not produced and had told the court did not exist.
- The 2008 Agreement (a collaboration letter) granted consulting, access to ProBatter’s source code, assignment provisions, an exclusivity/discount, and stated it "shall be construed as a binding agreement" and that ProBatter would grant Sports Attack a royalty-free license "for so long as the parties are working together."
- Sports Tutor moved to exclude all damages evidence/argument as a sanction under Fed. R. Civ. P. 37 for ProBatter’s nondisclosure; court had to decide (1) whether the 2008 Agreement was binding and (2) whether it was a license, and then what sanction, if any, was appropriate.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether the 2008 Agreement created a binding agreement in 2008 | 2008 letter was merely a precursor; formal license required; not binding until executed later | Letter expressly states it "shall be construed as a binding agreement" and parties intended immediate performance | Binding: court finds parties intended to be bound in 2008 |
| Whether the 2008 Agreement was a license (and royalty-free) | Not a license covering the disputed features; ProBatter claims it did not know Sports Attack used dynamic braking | Agreement granted broad access/consulting and an explicit royalty-free license provision; conduct and sales support an implied license | License: court finds 2008 Agreement constituted a (cross/royalty-free and implied) license |
| Whether ProBatter’s nondisclosure violated Rule 26 and Rule 37 and merits exclusion of damages evidence | ProBatter contends it had no disclosure obligation because no binding license existed | Sports Tutor says ProBatter unreasonably withheld a highly relevant comparable license, causing prejudice and extra costs | Nondisclosure unreasonable; court finds Rule 26/37 violation but declines blanket exclusion on current record |
| Appropriate sanction for nondisclosure (including potential exclusion of damages evidence) | Exclusion is too harsh; seek fees only or tailored relief | Exclusion warranted given prejudice; seeks exclusion of damages evidence and costs | Mixed: court orders meet-and-confer on inclusion/exclusion and additional discovery; awards Sports Tutor reasonable fees/costs for related damages discovery but does not wholly bar damages evidence at this time |
Key Cases Cited
- Nationwide Mut. Ins. Co. v. Allen, 83 Conn. App. 526 (discussing contract interpretation principles)
- Bender v. Bender, 292 Conn. 696 (contract language indicating conditions may show lack of intent to be bound)
- C and H Elec., Inc. v. Town of Bethel, 312 Conn. 843 (court must ascertain parties' intent from contract language as whole)
- Friedman v. Donenfeld, 92 Conn. App. 33 (factors to determine intent to be bound in informal agreements)
- Design Strategy, Inc. v. Davis, 469 F.3d 284 (Rule 37 sanctions; bad faith considered in disclosure violations)
- Patterson v. Balsamico, 440 F.3d 104 (factors to consider before excluding evidence for failure to disclose)
- Softel, Inc. v. Dragon Med. & Scientific Commc’ns, Inc., 118 F.3d 955 (standard on preclusion for disclosure failures)
- General Talking Pictures Corp. v. Western Elec. Co., 304 U.S. 175 (license as waiver not to sue in patent context)
- Spindelfabrik Suessen-Schurr v. Schubert & Salzer Maschinenfabrik AG, 829 F.2d 1075 (license construed as covenant not to sue)