Foul play

Baseball hitting-machine manufacturer awarded $6.1 million for damages, breach of contract

By Douglas J. Levy

When preparing for a multimillion-dollar patent-infringement case concerning an exclusive baseball speed-and-impact measuring machine, patent-infringement attorney Andrew Kochanowski might have opted for a $2,000 scale model of the machine to be made.

Instead, he reached for his children's LEGO set.

And it gave the jurors a detailed look at the function of a machine that can't easily be transported to a courtroom.

"When I try cases, I always try to make people understand what the dispute's about," said Kochanowski, who heads the commercial litigation department at Sommers Schwartz, P.C. "I've used toys before in trials. I think it's a wonderful way to remind people you're talking about things the size of room and the main pieces of it. It's a useful prop."

Just as useful to the jury in Baum Research and Development Co., Inc., et al., v. University of Massachusetts at Lowell was Kochanowski's simplistic approach to breach of contract, patent infringement and money damage issues.

"It's always up to a jury to determine whether what you're saying makes sense," he said. "That's the beauty of the jury system. So you have to have a legitimate and realistic model. And you have to try to bring it home to the jury, because if you start talking about 'economic models,' you're going to lose everyone."

Kochanowski indeed brought it home, with a $3.1 million award for patent damages and a $3.016 million award for breach-of-contract damages.

Background of dispute

The case, tried earlier this month under Magistrate Judge Ellen S. Carmody in U.S. District Court, Western District of Michigan, dates back to 2002. That's when Baum, a Traverse City-based composite-bat maker and manufacturer of the Baum Hitting Machine, sued UMass in U.S. District Court over breach of license agreement and money damages.

Baum had originally sold and licensed the machine, one of only two in existence, for $350,000 to UMass' Baseball Research Center in December 1998. Part of the license stated that no commercial testing was to be done by the university, and the school couldn't modify the machine in any way.

But in late 1999, Baum found out that UMass breached the agreement by letting bat manufacturers use the machine to test and retest aluminum bats in order to meet Ball Exit Speed Ratio (BESR) standards. BESR is a formula calculated from the results obtained by Baum's machine, and all non-wood bats used by the NCAA and all high schools who are members of the National Federation of High School Associations must have BESR certification.

UMass charged the companies $5,000 per day for the machine's use, and tinkered with the machine to allow such testing to go unnoticed by Baum.

Baum formally terminated the agreement in January 2000, and under the contract, UMass was to turn off the machine. The school refused, claiming there was no breach of agreement.

In the September 2005 trial, also tried before Carmody, a jury ruled that UMass had been using the machine illegally and awarded $2.5 million for lost profits and damages because of it.

Yet, Carmody granted UMass' motion for a new trial on damages, as UMass asserted the award wasn't supported by the evidence. Carmody bifurcated the case so that only the contract infringement and liability aspects were recognized, but the damages would be retried along with patent infringement.

In the meantime, UMass filed an interlocutory appeal for the liability verdict. Asserting that because it's a public university and, in essence, part of the state, UMass said it had 11th Amendment protection and would be immune to being sued in federal court.

Kochanowski said that such immunity, however, can be waived if it's agreed by the federal court's jurisdiction.

The U.S. Court of Appeals for the Federal Circuit court did just that by citing a provision in Baum's contract with UMass: "This Agreement will be construed, interpreted and applied according to the laws of the State of Michigan and all parties agree to proper venue and hereby submit to jurisdiction in the appropriate State or Federal Courts of Record sitting in the State of Michigan."

'A real difference of view'

In the 2009 trial, Kochanowski used the same LEGO setup of the Baum Hitting Machine that he used in the 2005 trial, along with photos of the machine.

But getting the jury to comprehend with the nonphysical side of the machine and its capabilities, specifically, the economic ones, was another matter.

"They key to trying cases," Kochanowski said, "and I don't care if it's a dram shop case or an antitrust case, is to make the jurors understand where the parties have a real difference of view. You simply have to keep driving that home."

So he used simple evidence. One was a log that Dr. James A. Sherwood, director of UMass' Baseball Research Center, kept for every day of the machine's usage. It showed who was using it, which minimized guesswork and additional discovery.

"I think we had a very simple explanation for the [monetary] demand; you can see it right there, the whole demand of everybody wanting to use this machine is proven by 51/2 years of usage," Kochanowski said.

Paul Taylor of Plante Moran in Grand Rapids was used as an expert witness to estimate the economic damages. Taylor went through 37,500 pages of records made by the machine of how many times it was operated, and came up with a figure based on what Baum would have charged for the machine's use during that time.

"Had [UMass] used the machine properly, [Baum] would have had all this business," Kochanowski said. "We could have charged $5,000 a day, and in an industry where bat sales are $100 million a year, that's peanuts."

As for the patent issue, proving the machine was covered by Baum's patents "sounds like it should be easy, but, of course, the other side said, 'No, here are two or three reasons why your patent doesn't cover your machine.'"

Using Dr. Hal Watson Jr., a Dallas-based retired mechanical engineering professor at Southern Methodist University, as expert witness, "We contended the license agreement only allowed [UMass] to do a very limited amount of tests, and that amount of tests was in a non-commercial, that is, a non-profitmaking, nature," Kochanowski said. "[UMass] read the contract a different way."

Ultimately, he added, "Whatever it is [UMass] argued, two different juries didn't buy it."

After the trial

Kochanowski said he is seeking statutory interest from 2002 for the $3.1 million patent-damages award, which could boost the award to $4 million.

As part of federal patent law's version of punitive damages, Carmody also will have the opportunity to treble the $3.1 million award.

The defense counsel said it would wait for post-trial motions to be completed before it considers filing for appeal.

"We believe, and we're pretty confident, that UMass has acted appropriately with respect to the plaintiff's rights," said Heidi E. Harvey of Boston-based Fish & Richardson PC, who represented UMass along with co-counsel Stephen S. Muhich of Dykema and Craig R. Smith of Fish & Richardson.

Kochanowski said his assertions were effective in the outcome.

"Contract rights have teeth and patent rights have teeth, and you'd better have a good reason to breach one or the other," he said. "I think the jury here didn't see any good reasons."

He said his LEGO model didn't hurt, either, adding, "[Jurors] don't have to have a science background to get that. Juries aren't technically minded. That's a fact of life."

A Verdicts and Settlements report of Baum Research and Development Co., Inc., et al., v. University of Massachusetts at Lowell can be found on our Web site, www.milawyersweekly.com. The Verdicts and Settlements report of the 2005 Baum case can be found at www.milawyersweekly.com.

If you would like to comment on this story, please contact Douglas J. Levy at (248) 865-3107 or douglas.levy@mi.lawyersweekly.com This e-mail address is being protected from spambots. You need JavaScript enabled to view it .