MLB Can't Duck Digital Ticket IP Suit Despite Plaintiff Swap

By Elaine Brise?o

Law360 (December 9, 2024, 4:24 PM EST) -- A New York federal judge declined to toss a digital ticketing patent holder's amended infringement complaint against Major League Baseball's interactive division, reasoning that the complaint was still valid even though the inventor substituted his company as the plaintiff.

U.S. District Judge Paul A. Engelmayer also refused Friday to impose dueling sanctions requested by defendant MLB Advanced Media LP and plaintiff eChanging Barcode LLC, noting it would be premature. Judge Engelmayer said courts often deny motions for sanctions if it would force the court to prejudge the merits of the case.

"With the court just today having upheld eChanging's amended complaint as properly filed, and with no case management plan yet in place or discovery taken, there has not yet been an opportunity for the parties to test the merits," the order says.

In an Aug. 20 filing, MLB asked the court to strike the amended complaint from the record because it was improperly filed, but the judge did not agree.

Alan Amron was listed as the plaintiff in the initial complaint, but he was terminated from the lawsuit and eChanging became the plaintiff with the filing of an amended complaint. MLB argued it was "improper" for the company to file the amended complaint because it was not initially listed as a plaintiff.

However, Judge Engelmayer noted that a July 18 order from the court "expressly granted leave to file the amended complaint and directed plaintiff to incorporate the substitution and any other desired changes." The court did not specify that Amron had to be the party filing the amended complaint, the judge said Friday.

Amron, the order notes, assigned ownership rights of the patent in question to eChanging, which would allow the company to become the "successor in interest" and therefore be substituted as the plaintiff.

The league claimed in its bid for sanctions that Amron "orchestrated a fraudulent scheme to revive the patent" in 2023 by falsely telling the USPTO that the abandonment was unintentional, which led to the patent's revival. EChanging has said the patent was never abandoned and Amron did not deceive the patent office.

"In the present early posture of this case, imposing sanctions would be premature," the order says.

"The questions implicated by MLBAM's motion — whether Amron's complaint contains 'obvious defects and falsehoods,' ... and whether 'the 715 patent was intentionally abandoned because it lacked value,' ... — are inherently entwined with the merits of this case."

EChanging attorney David Hecht of Hecht Partners LLP told Law360 on Monday that the court's decision was "not at all surprising."

"MLBAM has sought to delay resolution of this case on the merits while continuing to exploit the patented rotating bar code technology without a license, which is described on its own website as a 'new, secure technology' that 'ensures that you have a genuine ticket and that you won't have any issues entering the stadium on game days,'" he said.

A representative for the defendant did immediately respond to a request for comment.

The patent-in-suit is U.S. Patent No. 9,047,715.

EChanging is represented by David Lawrence Hecht of Hecht Partners LLP and Gerard Francis Dunne of Law off of Gerard F. Dunne PC.

MLB is represented by Alan E. Littmann and Jennifer M. Hartjes of Goldman Ismail Tomaselli Brennan & Baum LLP.

The case is eChanging Barcode LLC v. MLB Advanced Media LP, case number 1:24-cv-02930, in the U.S. District Court for the Southern District of New York.

Editing by Mary grace Anderson. For a reprint of this article, please contact [email protected].

https://www.law360.com/articles/2271020/mlb-can-t-duck-digital-ticket-ip-suit-despite-plaintiff-swap