TNS Media Research, LLC et al v. TiVo Research and Analytics, Inc.

Filing 161

OPINION AND ORDER re: 122 MOTION for Summary Judgment Counterclaim-Defendants' Notice of Motion for Summary Judgment filed by TNS Media Research, LLC, WPP Group USA, Inc., Cavendish Square Holding B.V., WPP plc, Kantar Group Ltd., Kanta r Retail America, Inc., WPP PLC. In light of the foregoing: (1) the WPP Companies' motion for summary judgment as to non-infringement is granted; (2) the WPP Companies' motion for summary judgment as to invalidity is mooted by my holding of noninfringement; and (3) TRA's 'frozen market' theory of damages for its non-patent claims is excluded. The Clerk of the Court is directed to close this motion (Doc. No. 122). A Conference to discuss whether the remaining claims should be remanded to state court is scheduled for December 20,2013 at 4:30 p.m. (Status Conference set for 12/20/2013 at 04:30 PM before Judge Shira A. Scheindlin.) (Signed by Judge Shira A. Scheindlin on 11/25/2013) (cd)

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK

-------------------------------------------------------)( ~~~. ~~~I::::IC::::::::=i1
~
....
TNS MEDIA RESEARCH, LLC (d/b/a
KANTAR MEDIA AUDIENCES) and
CAVENDISH SQUARE HOLDING,B.V.,

. I)()Cl1)dENT

~

PIIB>

l\

Plaintiffs,
- againstTRA GLOBAL, INC. (d/b/a TRA, Inc.),

OPINION AND ORDER
Defendant.

-------------------------------------------------------)(
TRA GLOBAL, INC. (d/b/a TRA, Inc.),
Counterclaim-Plaintiff,
- againstTNS MEDIA RESEARCH, LLC (d/b/a
KANTAR MEDIA AUDIENCES);
CAVENDISH SQUARE HOLDING, B.V.;
WPP PLC; WPP GROUP USA, INC.;
KANTAR GROUP LTD.; and KANTAR
RETAIL AMERICA, INC.,
Counterclaim-Defendants.
SHIRA A. SCHEINDLIN, U.S.D.J.:

-1­

.

---.........,..--

DKrB PlIED: 111:) II?'

11 Civ. 4039 (SAS)

I.

INTRODUCTION
This is a dispute over intellectual property pertaining to marketing and

advertising analytics. Plaintiffs TNS Media Research, LLC (d/b/a Kantar Media
Audiences) (“Kantar Media”)—a market research company—and Cavendish
Square Holding B.V. (“Cavendish”)—Kantar Media’s affiliate—commenced this
action on June 14, 2011 against defendant TRA Global, Inc. (“TRA”). Kantar
Media seeks a declaration that it has not infringed United States Patent No.
7,729,940 (the “‘940 Patent”), of which TRA is the sole assignee. Cavendish
alleged in the complaint that TRA breached a contract entitling Cavendish to place
a member on TRA’s board, but subsequently dropped this claim.
Kantar Media and Cavendish are indirect subsidiaries of WPP PLC,
the United Kingdom-based parent company of the largest advertising agency group
in the world by revenue. WPP PLC (hereafter, “WPP Parent”) also maintains WPP
Group USA, Inc. (“WPP USA”), Kantar Group Ltd. (“Kantar Group”), and Kantar
Retail America, Inc. (“Kantar Retail”) (collectively with WPP PLC, Kantar Media
and Cavendish, the “WPP Companies”) as subsidiaries.
TRA asserts the following six counterclaims against CounterclaimDefendants the WPP Companies (singly or in combination): (1) patent
infringement of the ‘940 Patent (against Kantar Media); (2) patent infringement of

-2-

United States Patent No. 8,000,993 (the “‘993 Patent”) (against Kantar Media and
Kantar Retail); (3) patent infringement of United States Patent No. 8,112,301 (the
“‘301 Patent”) (against Kantar Media and Kantar Retail); (4) aiding and abetting
breach of fiduciary duty (against Kantar Media, Cavendish, WPP Parent, WPP
USA, and Kantar Group); (5) misappropriation of trade secrets (against the WPP
Companies); and (6) breach of contract (against Kantar Retail, Kantar Media, and
WPP USA).
Discovery is complete. Presently before the Court is the WPP
Companies’ motion for summary judgment. The WPP Companies argue that TRA
cannot satisfy its burden of proving: (1) cognizable trade secrets or the
misappropriation thereof; (2) non-patent damages; or (3) infringement of any of the
patent claims it asserts.1 The WPP Companies further argue that the patents
alleged by TRA are invalid, on various grounds.
The WPP Companies allege that this motion would “dispose of the
case as a whole” if granted.2 Because TRA has potentially viable theories of
damages for its non-patent claims that are not addressed in the WPP Companies’
motion, this is in fact only a partial motion for summary judgment.
1

Counterclaim-Defendants’ Memorandum in Support of Their Motion
for Summary Judgment (“WPP Mem.”) at 1.
2

See id.
-3-

For the following reasons, the motion is granted as to noninfringement, trade secrets, and non-patent damages, and moot as to invalidity.
II.

BACKGROUND 3
A.

Overview
TRA—a nested acronym4 meaning “True ROI for Media”5—was

founded in 2007 with the goal of using modern data-mining techniques to
determine the cost-effectiveness of advertisements.6 It soon embarked upon an
enviable growth trajectory. After its first financing round in August 2007, its postmoney valuation was roughly $10 million; after its second round in May 2009,
roughly $27 million; and after its third round in May 2010, roughly $54 million.7
3

The facts recited below are drawn from the pleadings, the parties’
Local Civil Rule 56.1 Statements, the affidavits submitted in connection with this
motion, and the exhibits attached thereto. These facts are undisputed unless
otherwise noted.
4

A nested acronym is an acronym that contains another acronym; in
this case, TRA contains the acronym “ROI,” which means “return on investment.”
5

2/23/09 Press Release Announcing TRA’s Partnership with Kognitio
(a hardware neutral data warehousing firm), Ex. E to Declaration of Eric Rutt
(counsel for the WPP Companies) in Support of Counterclaim-Defendants’ Motion
for Summary Judgment (“Rutt Decl.”), at SPENCE_006020.
6

See Answer, Defenses, and Supplemental and Amended
Counterclaims for Patent Infringement, Aiding and Abetting Breach of Fiduciary
Duty, Misappropriation of Trade Secrets, and Breach of Contract (“Ans.”) ¶ 22.
7

See Counterclaim-Plaintiff’s Response to L.R. 56.1 Statement of
Material Facts and Statement of Additional Material Facts (“TRA 56.1”) ¶ 71
-4-

The WPP Companies—through their investment arm, Cavendish—got
in on the ground floor, investing a substantial sum in each of TRA’s first three
financing rounds.8 The companies even engaged in merger talks—about which
more below—but these negotiations fell through shortly after the WPP Companies
spent over a billion dollars acquiring Kantar Media, a competing market analytics
provider. Subsequently TRA’s value dropped precipitously, and it was purchased
by TiVo for approximately $20 million in July 2012.9
Before delving into the summary judgment record in greater detail, it
is helpful to sketch out the contrasting versions of events urged by the parties.
TRA alleges that the WPP Companies engaged in merger negotiations solely for
the purpose of learning its trade secrets and copying its now-patented technologies;
that the WPP Companies used this knowledge to release a competing product; and
that these actions froze the market, causing its value to take a nosedive. The WPP
Companies counter that the merger negotiations failed because TRA had nothing

(citing TRA Schedule 3.2(c) (table listing initial equity of TRA’s founders, as well
as shares issued and valued received during TRA’s three financing rounds), Ex. 1510 to Declaration of Trevor V. Stockinger (counsel for TRA) in Support of TRA’s
Opposition to Counterclaim-Defendants’ Motion for Summary Judgment
(“Stockinger Decl.”)).
8

See id.

9

See id. ¶ 73.
-5-

of value to offer; that it developed its products independently over a period of
years; and that TRA’s value declined because overeager initial investors eventually
began to question TRA’s lack of sales.
TRA alleges the infringement of fifteen patent claims, five alleged
trade secrets, and the non-patent claims identified above. First, I lay out the
evidence pertaining to the patent claims; second, to trade secrets; and finally, to
non-patent damages.
B.

The Patent Claims Asserted by TRA
1.

The ‘940 Patent
a.

Claim Asserted

The ‘940 Patent—titled “Analyzing Return on Investment of
Advertising Campaigns by Matching Multiple Data Sources”—issued on June 1,
2010 with TRA designated as the sole assignee.10 As the title suggests, the claimed
invention relates to a method for correlating the ads that consumers view with their
purchasing behavior. Claim 71 is illustrative of the invention, and is the only
claim of the ‘940 Patent asserted by TRA. It is set forth in full below.

A computer-implemented method for facilitating analysis of
consumer behavior in association with advertising exposure or
program delivery, the method comprising:
10

See ‘940 Patent, Ex. S to Rutt Decl.
-6-

collecting in an advertising measurement system:
(i)

clickstream data [a recording of the user’s
input into a media device, such as a computer
or television set-top box] from a program
delivery source of a consumer, wherein
collecting the clickstream data is not
dependent on a supplemental data collection
device, and also wherein the collected
clickstream data includes household level data
a s s o c iated w ith m ultip le c o n s u m e r
households;

(ii)

advertising data associated with delivery of
the program by the program delivery source,
wherein collecting the advertising data is not
dependent on a supplemental data collection
device, and also wherein the collected
advertising data includes household level data
asso ciated w ith m u ltip le co n su m er
households;

(iii)

program data associated with the program
delivered on the program delivery source,
wherein collecting the program data is not
dependent on a supplemental data collection
device, and also wherein the collected
program data includes household level data
a s s o c iate d w ith m ultip le con s u m e r
households;

(iv)

purchase data from a purchase data source,
wherein collecting the purchase data is not
dependent on a supplemental data collection
device, and also wherein the collected
purchase data includes household level data
asso ciated w ith m u ltip le co n su m er
households;
-7-

matching at least portions of the collected advertising data, the
collected clickstream data, the collected purchase data, and the
collected program data in the advertising measurement system at
a household data level with a centrally located electronic computer
processor configured for centrally processing data received from
the program delivery source, the advertising data source, the
program data source, and the purchase data source, wherein the
matching further includes:
(i)

grouping the collected data in association with an
account identifier of each consumer household
without processing any personally identifiable
information associated with the consumer household,
and

(ii)

matching each account identifier associated with
each consumer household with other account
identifiers associated with the same consumer
household without processing any personally
identifiable information associated with the
consumer household;

storing the matched advertising data, clickstream data, purchase
data, and program data in at least one centrally located electronic
data storage medium operatively associated with the computer
processor;
applying at least one cleansing and editing algorithm to the
matched and stored data; and,
calculating at least one true target index metric based on the
matched and stored data.11
In sum, the ‘940 patent teaches a method for: (1) using a computer to

11

‘940 Patent at cols. 46:33-48:8.
-8-

collect data about (i) commands that viewers input into, e.g., a television; (ii) the
advertisements that they view; (iii) the programs they watch; and (iv) the products
they go on to purchase; (2) grouping these data with a unique identifier that does
not personally identify the viewer/purchaser, and transmitting it to a central
database; (3) storing this grouped, ‘blinded’ data in the centrally located database;
(4) cleansing and editing the data (e.g., deleting information that is irrelevant to the
advertiser using the invention, or repeated); and (5) using the data to generate
granular statistical inferences about the cost-effectiveness of advertisements. For
example, TiVo might collect data about the programs and advertisements its users
watch, while Walgreens collected their purchasing information from customer
loyalty cards; the companies might then group this data together and transmit
it—without any personally identifying information—to TRA, which could use it to
advise Proctor & Gamble whether to run ads for Tide Detergent during America’s
Got Talent.
b.

Claim Construction Proceedings

A Markman hearing was held on July 6, 2012, and I subsequently
issued an Order construing the two phrases in dispute as follows.12

12

See TNS Media Research, LLC v. TRA Global, Inc. (“Markman Op.”),
No. 11 Civ. 4039, 2012 WL 3756325, at *14 (S.D.N.Y. Aug. 29, 2012).
-9-

Disputed Phrase

Construction

“household level data associated with
multiple consumer households”

“data about a household that can be
later aggregated into a data set
including multiple consumer
households”

“cleansing and editing algorithm”

“an algorithm to remove
inconsistencies in, correct, or otherwise
improve the reliability of data collected
from a program delivery source”

The parties stipulated to the following claim term constructions,
which were entered as an Order.13
Term

Stipulated Construction

“clickstream data from a program
delivery source of a consumer”

“data describing a consumer’s
exposure to content delivered from a
program delivery source”

“advertising data associated with
deliver of the program by the program
delivery source”

“data describing advertisements
delivered from a program delivery
source”

“program data associated with the
program delivered on the program
delivery source”

“data describing media content
delivered from a program delivery
source”

“purchase data from a purchase data
source”

“data describing the purchase of a
particular product at a given time,
obtained from a purchase data source,
such as a shopping loyalty card, point
of sale collection means, or other
record of a sale of a product or service”

13

See 4/9/12 Stipulation and Order, Doc. No. 65.
-10-

Term

Stipulated Construction

“supplemental data collection device”

“a piece of hardware that is separate
from the program delivery source or
purchase data source and is used for
the exclusive purpose of recording data
that facilitates analysis of consumer
behavior”

“return on investment metric”

“a measurement of the benefit that a
particular past investment (e.g., an
advertisement) has produced in terms
of changed purchasing behavior”

“true target index report”

“a report that allows users to compare
different media environments (e.g.,
particular programs, networks, or
dayparts) based on the likelihood that
consumers who meet a particular
profile will be exposed to such media”

“demographics weighting algorithm”

“a process to account for differences
between the composition of the sample
from which data is drawn and the
composition of the larger population
that one wants to study”

2.

The ‘993 Patent

The ‘993 Patent—titled “Using Consumer Purchase Behavior for
Television Targeting”—issued on August 16, 2011, and lists TRA as the sole
assignee.14 TRA asserts that Kantar Media and Kantar Retail have infringed claims
1, 2, 3, 7, 8, and 9. These claims are quoted in full below.

14

See ‘993 Patent, Ex. T to Rutt Decl.
-11-

[Claim 1]:
A computer-implemented system for facilitating analysis of
consumer behavior in association with advertising exposure or
program delivery, the system comprising:
an advertising measurement system including at least one
electronic computer processor configured for:
[(i)]

collecting clickstream data from a program delivery source
of a consumer, wherein collecting the clickstream data is
not dependent on a supplemental data collection device,
and also wherein the collected clickstream data includes
household level data associated with multiple consumer
households;

(ii)

collecting advertising data associated with delivery of the
program by the program delivery source, wherein collecting
the advertising data is not dependent on a supplemental
data collection device, and also wherein the collected
advertising data includes household level data associated
with multiple consumer households;

(iii)

collecting programming data associated with the program
delivered on the program delivery source, wherein
collecting the programming data is not dependent on a
supplemental data collection device, and also wherein the
collected programming data includes household level data
associated with multiple consumer households;

(iv)

collecting purchase data from a purchase data source,
wherein collecting the purchase data is not dependent on a
supplemental data collection device, and also wherein the
collected purchase data includes household level data
associated with multiple consumer households; and

-12-

(v)

matching at least portions of the collected advertising data,
the collected clickstream data, the collected purchase data,
and the collected programming data at a household data
level;

wherein the collected data include a first identifier associated with
the household assigned to the program delivery source;
a module configured to use a thesaurus for:
(i)

producing data from the collected data without personally
identifiable information, and

(ii)

indexing the produced data with a second identifier,
wherein the thesaurus relates each first identifier of each
household to the second identifier;

at least one electronic data storage medium operatively associated
with the computer processor, the data storage medium configured
for storing the matched advertising data, clickstream data,
purchase data, and programming data;
a module programmed for applying at least one cleansing and
editing algorithm to the matched data or the stored data; and
a module programmed for calculating at least one return on
investment metric or true target index metric based on the
matched or stored data.15
[Claim 2]
The system of claim 1, further comprising:
a list matcher configured to:
receive data communicated in parallel from the one or more
15

Id. at cols. 42:16–43:3.
-13-

data sources, the communicated data comprising at least
personally identifiable information associated with the
household and the first identifier associated with the
household assigned by the data source;
generate the thesaurus relating each first identifier
associated with the household to the second identifier; and
send the thesaurus to the module configured to use the
thesaurus.16
[Claim 3]
The system of claim 1, wherein the thesaurus is configured for
relating an account number identifier to at least one other account
number identifier associated with the same household across
multiple data sources.17
[Claim 7]
A computer-implemented method for facilitating analysis of
consumer behavior in association with advertising exposure or
program delivery, the method comprising:
collecting in an advertising measurement system:
(i)

clickstream data from a program delivery source of
a consumer, wherein collecting the clickstream data
is not dependent on a supplemental data collection
device, and also wherein the collected clickstream
data includes household level data associated with
multiple consumer households;

16

Id. at col. 43:4-15.

17

Id. at col. 43:16-19.
-14-

(ii)

advertising data associated with delivery of the
program by the program delivery source, wherein
collecting the advertising data is not dependent on a
supplemental data collection device, and also
wherein the collected advertising data includes
household level data associated with multiple
consumer households;

(iii)

programming data associated with the program
delivered on the program delivery source, wherein
collecting the programming data is not dependent on
a supplemental data collection device, and also
wherein the collected programming data includes
household level data associated with multiple
consumer households; and,

(iv)

purchase data from a purchase data source, wherein
collecting the purchase data is not dependent on a
supplemental data collection device, and also
wherein the collected purchase data includes
household level data associated with multiple
consumer households;

matching at least portions of the collected advertising data,
the collected clickstream data, the collected purchase data,
and the collected programming data in the advertising
measurement system at a household data level with at least
one electronic computer processor configured for
processing data received from the program delivery source,
the advertising data source, the programming data source,
and the purchase data source, wherein the matching further
includes:
[(i)]

receiving data including a first identifier associated
with the household assigned by the data source, and

-15-

(ii)

electronically using a thesaurus for: producing data
without personally identifiable information, and
indexing the produced data by a second identifier,
wherein the thesaurus relates each first identifier of
the household to the second identifier; storing the
matched advertising data, clickstream data, purchase
data, and programming data in at least one electronic
data storage medium operatively associated with the
computer processor; applying at least one cleansing
and editing algorithm to the matched data or the
stored data; and, calculating at least one return on
investment metric or true target index metric based
on the matched or stored data.18

[Claim 8]
The method of claim 7, further comprising:
receiving data communicated in parallel from the one or
more data sources, the communicated data comprising at
least personally identifiable information associated with the
household and the first identifier associated with the
household assigned by the data source; and,
generating the thesaurus for relating each first identifier
associated with the household to the second identifier.19

18

Id. at cols. 43:28-44:14.

19

Id. at col. 44:15-22.
-16-

[Claim 9]
The method of claim 7, further comprising using the thesaurus for
relating an account number identifier to at least one other account
number identifier associated with the same household across
multiple data sources.20
3.

The ‘301 Patent

The ‘301 Patent—titled “Using Consumer Purchase Behavior for
Television Targeting”—issued on February 7, 2012, and lists TRA as the sole
assignee.21 TRA asserts that Kantar Media and Kantar Research have infringed
claims 1, 23, 42, 47, 49, 63, 108, and 109, which are set forth in full below.
[Claim 1]
A computer-implemented method for facilitating analysis of
consumer behavior in association with advertising exposure or
program delivery, the method comprising:
collecting in an advertising measurement system:
(i)

clickstream data from a program delivery source of
a consumer, wherein collecting the clickstream data
is not dependent on a supplemental data collection
device, and also wherein the collected clickstream
data includes household data;

20

Id. at col. 44:23-26.

21

See ‘301 Patent, Ex. U to Rutt Decl.
-17-

(ii)

advertising data associated with delivery of the
program by the program delivery source, wherein
collecting the advertising data is not dependent on a
supplemental data collection device, and also
wherein the collected advertising data includes
household level data associated with multiple
consumer households;

(iii)

programming data associated with the program
delivered on the program delivery source, wherein
collecting the programming data is not dependent on
a supplemental data collection device, and also
wherein the collected programming data includes
household level data associated with multiple
consumer households; and,

(iv)

purchase data from a purchase data source, wherein
collecting the purchase data is not dependent on a
supplemental data collection device, and also
wherein the collected purchase data includes
household data;

matching at least portions of the collected advertising data,
the collected clickstream data, the collected purchase data,
and the collected program data in the advertising
measurement system at a household data level with at least
one electronic computer processor configured for
processing data received from the program delivery source,
the advertising data source, the programming data source,
and the purchase data source, wherein the matching further
includes:
(i)

grouping the collected data in association with an
identifier of each consumer household without
processing any personally identifiable information
associated with the consumer household, and

-18-

(ii)

matching each identifier associated with each
consumer household with other identifiers associated
with the same consumer household without
processing any personally identifiable information
associated with the consumer household;

storing the matched advertising data, clickstream data,
purchase data, and programming data in at least one
electronic data storage medium operatively associated with
the computer processor;
applying at least one cleansing algorithm or editing
algorithm to the collected data, the matched data or the
stored data; and,
calculating at least one return on investment metric or true
target index metric based on the collected data, the matched
data or the stored data.22
[Claim 23]
The method of claim 1, further comprising receiving clickstream
data derived from a program delivery source comprising a
television set-top box operatively associated with a television
distribution system.23
[Claim 42]
The method of claim 1, further comprising using at least a portion
of the matched data to drive at least one addressable commercial
to the household.24

22

Id. at cols. 51:23-52:11.

23

Id. at col. 53:9-12.

24

Id. at col. 54:28-30.
-19-

[Claim 47]
The method of claim 1, wherein the purchase data are associated
with product purchase records of a discount card associated with
the consumer.25
[Claim 49]
The method of claim 1, further comprising generating a true target
index report in the advertising measurement system.26
[Claim 63]
A system for facilitating analysis of consumer behavior in
association with advertising exposure or program delivery, the
system comprising:
an advertising measurement system including an electronic
computer programmed for:
(i)

collecting clickstream data from a program delivery
source of a consumer, wherein collecting the
clickstream data is not dependent on a supplemental
data collection device, and also wherein the collected
clickstream data includes household data;

(ii)

collecting advertising data associated with delivery
of the program by the program delivery source,
wherein collecting the advertising data is not
dependent on a supplemental data collection device,
and also wherein the collected advertising data
includes household level data associated with
multiple consumer households;

25

Id. at col. 54:47-49.

26

Id. at col. 54:53-55.
-20-

(iii)

collecting programming data associated with the
program delivered on the program delivery source,
wherein collecting the programming data is not
dependent on a supplemental data collection device,
and also wherein the collected programming data
includes household level data associated with
multiple consumer households; and,

(iv)

collecting purchase data from a purchase data source,
wherein collecting the purchase data is not
dependent on a supplemental data collection device,
and also wherein the collected purchase data
includes household data;

(v)

matching at least portions of the collected
advertising data, the collected clickstream data, the
collected purchase data, and the collected program
data in the advertising measurement system at a
household data level with at least one electronic
computer processor configured for processing data
received from the program delivery source, the
advertising data source, the programming data
source, and the purchase data source, wherein the
matching further includes:
(i)

grouping the collected data in association with
an identifier of each consumer household
without processing any personally identifiable
information associated with the consumer
household, and

(ii)

matching each identifier associated with each
consumer household with other identifiers
associated with the same consumer household
without processing any personally identifiable
information associated with the consumer
household;

-21-

at least one data storage medium operatively associated with the
computer processor, the data storage medium configured for
storing the matched advertising data, clickstream data, purchase
data, and programming data;
a module programmed for applying at least one cleansing
algorithm or editing algorithm to the collected data, the matched
data or the stored data; and,
a module programmed for calculating at least one return on
investment metric or true target index metric based on the
collected data, the matched data or the stored data.27
4.

Overview of Patent Claims

As set forth by Charles F. Thomas, the WPP Companies’ technical
expert, all of the patents in suit require five basic steps:
(1)

“collecting” four different types of household-level data
(i.e., “clickstream data,” “advertising data,” “program” (or
“programming”) data, and “purchase data”) without relying
on “supplemental data collection devices;”

(2)

“matching at least portions of the [data] at a household data
level” by means of a blind-matching technique, in which:
(A)

(B)

27

the collected data is grouped together by means of an
account identifier without processing any personally
identifiable information and
different account identifiers corresponding to a
single household are associated together, also
without processing any personally identifiable
information;

Id. at cols. 55:28-56:18.
-22-

(3)

“storing” the matched data;

(4)

“applying” at least one “cleansing and editing algorithm”
(or a “cleansing algorithm” or an “editing algorithm” in the
case of the ‘301 Patent) to the data; and,

(5)

“calculating” at least one metric (with a “true target index
metric” always one of the possible options) based on the
data.28

5.

Evidence Pertaining to Infringement

TRA alleges that five products—falling into one of two product
categories—infringe its patents: (1) the Auto Products (comprising RapidView
Auto and Charter with Auto); and (2) the Consumer Packaged Goods (“CPG”)
Products (comprising RapidView Retail, RapidView for Retail, and Charter with
CPG).29 The Auto Products match information about motor vehicle registrations
maintained by J.D. Power & Associates with television viewing data, while the
CPG Products match television viewing data to data gleaned from supermarket
loyalty cards.30

28

6/4/13 Declaration of Charles J. Thomas in Support of
Counterclaim-Defendants’ Motion for Summary Judgment (“Thomas Decl.”) ¶ 26.
29

See Counterclaim-Defendants’ L.R. 56.1 Statement of Undisputed
Material Facts in Support of Their Motion for Summary Judgment (“WPP 56.1”)
¶¶ 28-29 (citing 6/4/13 Declaration of George Shababb (president of Kantar
Media) in Support of Counterclaim-Defendants’ Motions for Summary Judgment
(“Shababb Decl.”) ¶¶ 2, 17, 21).
30

See id.
-23-

In support of their motion for summary judgment of noninfringement, the WPP Companies allege that:
(1)

the CPG Products do not collect “purchase data,” as all
fifteen claims require;

(2)

the Auto Products do not perform double-blind matching of
data, as all fifteen claims require;

(3)

none of the Accused Products apply a “cleansing and
editing algorithm to the matched and stored data,” as []
claim 71 [of the ‘940 Patent] requires;

(4)

none of the Accused Products use matched data to drive an
addressable commercial, as [claim 42] of the ‘301 [Patent]
. . . requires; and

(5)

TRA has waived any argument under the doctrine of
equivalents.31

Because I conclude that summary judgment is warranted based on
arguments (1), (2), and (5), only the evidence supporting these arguments is
summarized below.

31

WPP Mem. at 19.
-24-

a.

Evidence Pertaining to Whether the CPG Products
Collect “Purchase Data”

All of the asserted claims contain the limitation “[collect] purchase
data from a purchase data source” (the “Purchase Data Limitation”). The
stipulated construction of this limitation is “data describing the purchase of a
particular product at a given time, obtained from a purchase data source, such as a
shopping loyalty card, point of sale collection means, or other record of a sale of a
product or service.”
Based on the declaration of Kantar Media’s president—George
Shababb—the WPP Companies allege that the CPG Products do not practice this
limitation, because they collect information only about user types—e.g., whether a
user is a heavy, medium, or light user of a product or product category—but not
information about when a particular purchase is made.32 Specifically, Shababb
declares that although the CPG Products receive purchase information from
consumer surveys and use it to place consumers into “user types”—e.g., “Yogurt
Category – Heavy,” “Yogurt Category – Medium” and “Yogurt Category –
Light”—these user types (and the information from which they are generated)

32

See WPP 56.1 ¶¶ 30-31 (citing Shababb Decl. ¶ 17).
-25-

“convey[] nothing about the given time when any actual purchase(s) occurred.”33
In sum, the WPP Companies acknowledge that the CPG Products utilize
information from “purchase data source[s],” but argue that they do not receive or
utilize “data describing the purchase of a particular product at a given time. . . .”
In opposition to the WPP Companies’ argument that the CPG
Products do not practice the Purchase Data Limitation, TRA alleges that: (1)
multiple Kantar witnesses have admitted that the CPG Products collect “purchase
data,” and the WPP Companies have admitted the same in Court filings; (2) the
CPG Products utilize data from customer loyalty cards; (3) the CPG Products
utilize survey information collected over “a given time,” even if they do not utilize
the precise time of a particular sale; and (4) the CPG Products practice collecting
“purchase data” as taught by the patents in suit.34 The evidence submitted by TRA
in support of these allegations is summarized below.
First, TRA presents the testimony of various Kantar witnesses who

33

Shababb Decl. ¶ 17 (citing Yogurt-data format.xls (a spreadsheet
showing the consumer purchase information inputted into the CPG Products), Ex.
E to Rutt Decl.).
34

See Counterclaim-Plaintiff’s Memorandum in Opposition to Motion
for Summary Judgment (“Opp. Mem”) at 20-25. TRA also argues that the CPG
Products infringe its patents under the doctrine of equivalents. See id. at 25-26.
The record related to this argument is discussed below.
-26-

have testified that the CPG Products use “purchase data.”35 TRA relies heavily on
the deposition testimony of Alex North — Product Manager for the RapidView
Retail CPG product — to show that the CPG Products use purchase data, which
North defined as “whether someone in [a] household had bought a product over a
given period.”36 However, the stipulated construction is “data describing the
purchase of a particular product at a given time.”37 North never adopted the
stipulated construction. In fact, when shown a series of screen shots of
InfoSysRPD — a platform used to access the CPG Products — North stated, “I

35

See TRA 56.1 ¶ 31 (citing 5/17/12 Deposition of Kathryn Casavant
(Managing Director of Kantar Retail), Ex. 15-4 to Stockinger Decl., at 249:8-11
(affirming that “RapidView for Retail [one of the CPG Products] [] utilize[s]
purchase data that comes from Kantar Retail”); 8/2/11 Declaration of George
Shababb in Support of Plaintiffs’ Opposition to Defendants’ Motion for a
Preliminary Injunction (“Shababb Inj. Decl.”), Doc. No. 35, ¶ 37 (“This is exactly
how [RapidView Retail] works as well. Based on the cross reference provided by
Experian, anonymous household-level clickstream data (received from DirecTV) is
matched with anonymous household-level purchase data (received from Kantar
Retail).”) (emphasis added); 10/16/12 Deposition of Andrew J. Brown (market
research director at Kantar Media), Ex. 2-1 to Stockinger Decl., at 43:5-20
(acknowledging that the CPG Products “collect[] purchasing information” from
Kantar Retail)).
36

Counterclaim-Plaintiffs Surreply Memorandum in Opposition to
Summary Judgment (“Surreply Mem.”) at 3 (citing 12/21/12 Deposition of Alex
North (“North Dep.”), Ex. 3-3 to Stockinger Decl., at 21:6-7) (emphasis added).
37

See 4/9/12 Stipulation and Order, Doc. No. 65 (emphasis added).
-27-

wouldn’t speculate on the precise dates of what data would be in there.” 38 North’s
testimony — like that of Shababb and the other Kantar witnesses — fails to
establish that the purchase information used by CPG Products conveys anything
about the time when any actual purchase occurred.
Second, the evidence presented by TRA that the CPG Products utilize
data from customer loyalty cards is inapposite, as these cards are used in the
stipulated construction as an example of a “purchase data source,” not as purchase

38

North Dep. 101:14-15. In their surreply papers, TRA submitted
screenshots of the CPG Products in an attempt to show that the CPG Products use
quarterly purchase data. See Screenshots, Ex. AA to Declaration of Amy T.
Brantley in Support for TRA’s Surreply (“Brantley Decl.”), at
KANTAR_0958964. At oral argument, Kantar objected to the screenshots on the
grounds that TRA had ambushed Kantar with new evidence. See 11/1/13 Oral
Argument at 53:10-14 (ALBERT: “They have added evidence as part of their
surreply brief . . . that was Exhibit AA. They didn’t have leave to . . .”). While I
have permitted TRA to proffer the screenshots, I give little weight to TRA’s
argument regarding their import. TRA’s argument that the screenshots are proof
that the CPG Products use quarterly purchase data is belied by the record. North
and Shababb testified that the CPG Products do not contain “data describing the
purchase of a particular product at a given time.” See North Dep. 101:9-21 (Q: “If
you were to click ‘Kantar Retail 2011 Q4’ that would give you the . . . purchase
data in the fourth quarter of 2011; is that correct?” NORTH: “I wouldn’t speculate
on the precise dates of what data would be in there . . . . It could be the date of the
[Experian] match.”); 6/7/12 Deposition of George Shababb 73: 7-12 (“A[]
[purchase] attribute is a descriptor. So if your household is a buyer of an analgesic,
we would have an indication that you’re an analgesic-buying household. We
would not have any information related to the actual purchases of those
analgesics.”).
-28-

data themselves.39 Wine may flow from a bottle, but not everything from a bottle
is wine. Similarly, the undisputed fact that the CPG Products utilize data from
customer loyalty cards, a “purchase data source,” does not imply that the CPG
Products utilize purchase data within the meaning of the stipulated construction.
TRA’s third contention—that the consumer survey data utilized by
the CPG Products must be collected over a “given time”—is more to the point. In
support of this contention, TRA offers the declaration of its expert Carl F. Mela,
Ph.D., who opines that:
“[A]t a given time” is not meant to refer necessarily to the
purchase of a particular product at a particular moment in time,
but can refer to a period of time, such as a month, during which
purchase events may occur. Kantar notably submits no expert
opinions in support of its theory, and Dr. Madansky [the WPP
Companies’ Expert] voices agreement with my position on this
point. The patents also support this position, for they define
purchase data broadly to include data of various timeframes and
aggregations.40
39

See TRA 56.1 ¶ 31 (citations omitted).

40

Declaration of Carl F. Mela, Ph.D. (TRA’s trade secrets, infringement,
and validity expert) in Support of Counterclaim-Plaintiff’s Memorandum in
Support of Its Opposition to the Motion for Summary Judgment (“Mela Decl.”) ¶
14 (citing ‘940 Patent at cols. 17-18; 3/6/13 Deposition of Michelle Madansky,
Ph.D.(the WPP Companies’ patent expert), Ex. 7 to Stockinger Decl., at 100-101,
204 (acknowledging that purchase data is most useful for market research when
aligned with a particular time period, and further testifying that a “given time”
under the stipulated construction of the Purchase Data could be measured in
months, quarters, years, or decades, e.g., for infrequently-purchased durable
goods)).
-29-

TRA’s final contention is that “the CPG products collect data that
include information on when a particular product or product category was
purchased. . . .”41 The basis for this assertion is Mela’s opinion that “[t]o
determine whether households are ‘heavy,’ ‘medium,’ or ‘light’ purchasers of a
product, it is necessary to define a period of time over which purchases are
made.”42 In short, based on Mela’s declaration, TRA asserts that the CPG Products
necessarily collect “data describing the purchase of a particular product at a given
time” in classifying households as heavy, medium, or light purchasers of a product,
because these terms are meaningless without reference to a period of time, even if
that period of time is not reflected in the data used by the CPG Products.
In response, the WPP Companies submit Shababb’s declaration
alleging that, although the consumer surveys used by the CPG Products “are
obviously based on a certain window over which household behavior is observed[,]
. . . the information received by the CPG Products conveys nothing about the given
time when any actual purchase(s) occurred. Nor do the CPG Products perform any
sort of analysis that depends on the length of the observation window.”43

41

TRA 56.1 ¶ 76 (citing Mela Decl. ¶ 16).

42

Mela Decl. ¶ 16.

43

Shababb Decl. ¶ 17.
-30-

b.

Evidence Pertaining to the Auto Products
i.

Double-Blind Matching of Data

All of the asserted patents require double-blind matching, i.e., using a
trusted intermediary that does not receive any operative data to match two sets of
identifiers, e.g., clickstream data and data about automobile purchases.44 Based on
Shababb’s declaration, the WPP Companies allege that the Auto Products do not
utilize double-blind matching, because: (1) Experian—Kantar Media’s third-party
partner— uses the same account identifier (set-top box information from, e.g.,
DirecTV) to match auto registration data that Kantar Media ultimately uses; and
(2) J.D.Power sends automobile registration data as well as personally identifying
information to Experian.45 In particular, Shababb alleges that “Experian. . .
appends J.D. Power[s] purchase attribute data to the DirecTV [identifier], removes
all [personally identifying information], and sends the data to [Kantar Media].
[Kantar Media] uses the same DirecTV [identifier] to correlate [set-top box] data

44

Cf. ‘940 Patent at col. 9:26-34 (household purchase and viewing
behavior is matched without any single participant gaining “access to both
household identity and household purchase or viewing behavior”); Thomas Decl.
¶¶ 20-22 (describing blind-matching generally). It is not disputed that the patentsin-suit all require double-blind matching. See Opp. Mem. at 28 (stating that the
“patents[] require[] [] matching multiple account identifiers for the same
household”).
45

See WPP 56.1 ¶¶ 30, 36, 32-38 (citing Shababb Decl. ¶ 21).
-31-

with J.D. Power[s] purchase attribute data.”46 In other words, Experian allegedly
learns both personally identifying information and purchase attribute data.
Based on an unsigned draft contract (the “Experian Contract”)
between J.D. Power and Experian, TRA contends that J.D. Power does not send
personally identifying information to Experian, and further contends that Experian
matches a DirecTV identifier to a unique identifier provided by J.D. Power, as
opposed to the names of users.47 The contract states in pertinent part:
WHEREAS, J.D. Power and Associates (“Advertiser”) is
interested in having J.D. Power’s data file matched to Kantar
Media’s [] (“Client”) data file; . . . .
J.D. Power will deliver to Experian, through Experian’s secure
data transfer site, J.D. Power’s data file, which include [sp] the
following data fields: Unique Key [identifier], last name, address,
city, state, zip code (“J.D. Power Data”) on the condition that:
1.

46

Experian will use the J.D. Power Data solely for the
purpose of performing anonymous, blind matching
of it to certain Client data (“KM Data”) provided to
Experian by Client. Experian will run a process to
associate the names and addresses from Client with
the names and address[es] from Advertiser and
create a unique identification number that
anonymously links common names and addresses
(the “MatchedID Service”).

Shababb Decl. ¶ 21.

47

See TRA 56.1 ¶ 32 (citing 4/11 Match Agreement (unsigned contract
between J.D. Power and Experian Marketing Solutions, Inc.), Ex. 9-6 to Stockinger
Decl.).
-32-

Additionally, TRA argues that Shababb lacks personal knowledge to testify as to
what information J.D. Power sends to Experian.48
ii.

Whether the Auto Products Use a ‘Thesaurus’

The asserted claims of the ‘993 Patent require the use of a “thesaurus”
for matching one household identifier to a second household identifier. The
specification of the ‘993 Patent teaches that a “thesaurus” is a table that “relates, on
a company-by-company basis, each account number to other account numbers
associated with the same household and the [unique key] [] generated in response
to the data package” received by the network operator.49 In sum, the thesaurus
relates two sets of private/public key pairs, such that no module in the
system—saves the thesaurus—receives personally identifiable information that
may be matched to operative data.50
The WPP Companies argue that the Auto Products do not employ a

48

See id.

49

‘993 Patent at col. 10:47-51.

50

See id. at col. 10:52-67; id. at col. 11:26-30 (“Thus, embodiments of
the invention overcome privacy issues by separating PII from other data and
information (e.g., media, purchase, etc.); no single party has access to both
household identity and household purchase or viewing behavior.”).
-33-

thesaurus, and therefore do not literally infringe the claims of the ‘993 Patent.51
TRA counters this argument by once again citing the Experian Contract.
c.

Evidence Pertaining to the Doctrine of Equivalents

TRA’s sole evidence that the CPG Products infringe under the
doctrine of equivalents is Mela’s declaration alleging that: (1) “[the] same evidence
of literal infringement [set forth in Mela’s expert report] helps support [the]
conclusion of infringement under the doctrine of equivalents[;]”52 and (2) the CPG
Products’ collection of purchase data inevitably evidences purchases of a particular
product over a given time period.53 The WPP Companies object that this theory
was not disclosed in Mela’s expert reports.54
C.

TRA’s Alleged Trade Secrets
TRA alleges the following five trade secrets:
(1)

Media TRAnalytics’—TRA’s product—speed, reliability,
scalability and performance;

(2)

TRA’s client lists and client interactions,

51

See WPP Mem. at 25-26.

52

Mela Decl. ¶ 17.

53

Id. ¶ 18.

54

See Counterclaim-Defendants’ Reply Memorandum in Support of
Their Motion for Summary Judgment (“Reply Mem.”) at 13-14.
-34-

(3)

TRA’s strategic plans,

(4)

TRA’s product positioning; and,

(5)

TRA’s capital structure, financials, financing proposals target
investor list, and offers to acquire or merge the company.55

The WPP Companies argue that the trade secrets alleged by TRA: (1)
are insufficiently detailed to merit trade secret protection; (2) have been publicly
disclosed; and (3) have not been used by the WPP Companies.56 One of the bases
for the WPP Companies’ motion is that, rather than identifying its trade secrets
with specificity, TRA instead cited to vast page-ranges in its omnibus discovery
materials. In its opposition to this motion, TRA has narrowed the scope of its trade
secrets to a more limited set of documents. These documents are set forth below.
1.

Evidence Presented by TRA
a.

The Creation of TRAnalytics

Based on Mela’s declaration, TRA alleges that it “created the first
economically viable single-source data system.”57 Mela’s opinion is based on the
contention that TRA’s Media TRAnalytics platform, unlike prior-art single-source

55

See TRA Supplemental Response to Interrogatories No. 7 (“TRA
Interrog. Resp.”), Ex. D to Rutt Decl.
56

See WPP Mem. at 6.

57

TRA 56.1 ¶ 84 (citing Mela Decl. ¶¶ 30-41).
-35-

solutions, employs: (1) passive data collection—with no need for survey
participants to push buttons—permitting a larger sample, and reducing the cost of
paying survey participants; and (2) efficient techniques for handling the large
sample-sizes enabled by passive data collection.58 According to a memorandum
submitted by TRA, TRAnalytics took thirty-five thousand person-hours and $23
million to develop.59
The WPP Companies deny that TRA created the first economically
viable single-source solution. They present Shababb’s declaration that Kantar
Media’s SkyView service—a predecessor to the accused products, predating Media
TRAnalytics—is an ‘economically viable’ single-source solution that remains
profitable to this day.60 In further support of this point, the WPP Companies
submit an internal TRA document dated September 1, 2009 that, in evaluating the
pros and cons of various strategic partnerships, states: “Sky already has a ‘TRA’
with TNS called SkyView . . . they use it to boost ad sales by leveraging it as an ad

58

See Mela Decl. ¶¶ 30-41.

59

See Attachment to 5/1/09 Email from Terry Kent (of TNS) to Dean
DeBiase (of TNS) Describing TRA Investment Opportunity (the email, “Kent
Email”), Ex. 4-4 to Stockinger Decl.
60

See Counterclaim-Defendants’ Reply to TRA’s L.R. 56.1 Statement of
Additional Facts (“Reply 56.1”) ¶ 84 (citing Shababb Decl. ¶ 4; Shababb Inj. Decl.
¶¶ 16-18).
-36-

premium. . . which could foul up any future negotiations with them as partner.”61
In short, the memorandum acknowledges that SkyView is similar to TRAnalytics,
and accurately speculates that this could scotch partnership talks with Kantar.
b.

The Relationship Between Kantar and TRA

The following documents submitted by TRA evidence how TRA was
perceived by the WPP Companies during the early years of TRAnalytics:
•

A memorandum sent to Brian Sullivan—of WPP—on October
4, 2008 by Bill McKenna—Kantar Media executive and TRA
board member—for the purposes of providing a
recommendation on TRA’s request for a bridge loan between
its first and second rounds of financing states that: “TRA
provides global marketers and media owners with the
continuous single source media measurement service that
Arbitron, Nielsen, IRI, GFK, TNS and other media research
service providers have unsuccessfully pursued for the better
part of the past three decades.”62

61

9/1/09 Internal TRA Memorandum, Ex. A to Rutt Decl., at
HARVEY_0000039.
62

TRA Update – Executive Summary (memorandum attached to
10/4/08 Email from McKenna to Sullivan et al.) (“McKenna Memo”), Ex. 1-7 to
Stockinger Decl., at 2.
-37-

•

A November 28, 2008 email to Mark Read—a WPP
director—from Sheila Spence—then SVP of Corporate
Development at WPP—states that Bill McKenna then felt that
extending a pro-rata stake of a $1 million bridge loan to TRA
was good business for WPP, because although TRA was losing
money, this would prevent TRA from competing more
strenuously with TNS.63 The email further states that McKenna
“want[s] to keep the TRA team and assets close and friendly
because [he] believe[s] that the TNS offering is fundamentally
flawed and will not succeed unless TNS teams up with a TRAtype advanced offering (TRA is the only one right now).”64

•

A memorandum attached to the just-mentioned Spence email
lists “Purchase data matching at the individual [household]
level for targeting and ROI” under “TRA Strengths[,]” and
states that “no one else is doing this.”65

•

Through a March 25, 2009 email, Bill Lederer—COO of Kantar

63

See 10/28/08 Email from Spence to Read, Ex. 6-1 to Stockinger Decl.

64

Id.

65

Spence Memo, Exs. 6-2 to 6-5 to Stockinger Decl.
-38-

Media—advised a Kantar Media employee to “[s]tarve TRA for
cash if you can, then offer hope in the form of a very short,
secured convertible bridge loan[]” if a certain client delayed
making a decision between TRA, Kantar Media, and another
vendor.66
•

On March 19, 2010, Eric Salama—Kantar Group’s CEO—sent
an email to various Kantar and WPP officers and directors (the
“March Salama Email”) stating that “TRA has got something
going for it and some momentum with clients and[,] []
crucially, it ‘owns’ a space [that] links [return path data] [(i.e.,
set-top box data)] and consumption[,] which is critical to us.
Could we own it through a combination of our own resources –
yes? Is it likely we can get there ourselves in the next couple of
years – not unless we do something very different.”67

All in all, the documents above show that Kantar Media was interested in TRA’s
ability to link consumer data with set-top box data in the consumer products
sphere, but was skeptical of Kantar Media’s lack of revenue traction.

66

Ex. 3-14 to Stockinger Decl.

67

3/19/10 Salama Email, Ex. 15-14 to Stockinger Decl.
-39-

c.

Lieberman’s Declaration Regarding Trade Secrets

Regarding its alleged trade secrets and the measures it took to keep
them confidential, TRA submits the declaration of its CEO, Mark S. Lieberman.
Lieberman describes TRA’s five alleged trade secrets as follows:
a.

Strategic Plans: detailed information regarding the markets
TRA is focused on and the timing of entry into new
markets, and the details of conversations with potential
strategic partners.

b.

Customers and Customer Interactions: information on
customer contract terms and pricing; customer negotiations
and the stage of negotiations; customer proposals; detailed
information about customers in the pipeline and detailed
information about potential deals with potential customers.

c.

Speed, Reliability and Performance of Media
TRAnalytics®: detailed information including the
specifications relating to speed of report generation;
combinations for ensuring reliability; the structure of the
system; the data ingestion process; the secure hosted
infrastructure; the number and capabilities of the servers;
and the combination of these elements of the system.

d.

Product Positioning: detailed internal analysis that
compares TRA to other advertising measurement
companies; internal comparison of product data; specific or
technical information relating to targeting swing
purchasers; and internal analysis on ROI.

-40-

e.

Financial Information: TRA’s detailed capital structure,
financial statements and projections, including TRA’s
income statement, profit & loss, balance sheet (actual and
projected, Capex and cash flow (actual and projected);
information costs; financing proposals; target investor lists
and offers to acquire or merge the company.68

Lieberman further alleges that the WPP Companies were provided
with documents disclosing these trade secrets at various times between 2007 and
2010, with the expectation of confidentiality, and for the purposes of either
financing or merger negotiations.69 Specifically, Lieberman alleges that: (1)
pursuant to a March 2009 NDA between Kantar Media and TRA, confidential
TRA information received by Kantar Media was not to be shared with Kantar
Media executives Dean DeBiase, Lederer, or Shababb, because they were directly
involved with Kantar Media’s strategic planning and product development, but
confidential information was transmitted to them nevertheless; and (2) TRA
provided Kantar Media with confidential demonstrations of the capabilities of
TRAnalytics in 2009 and 2010; and (3) Kantar Retail—a separate division of the
Kantar family—was provided with access to TRAnalytics as part of a purchase
data licensing agreement, and is governed by an end user license agreement

68

Declaration of Mark S. Lieberman in Support of TRA’s Opposition to
Counter-Defendants’ Motion for Summary Judgment (“Lieberman Decl.”) ¶ 6.
69

See id. ¶ 7.
-41-

(“EULA”) requiring users to maintain confidentiality.70
d.

Documents Identified by TRA Regarding the
Description of Its Trade Secrets

This section identifies the documents alleged by TRA in opposition to
the WPP Companies’ argument that it has failed to point to evidence of specificity
and use, and the WPP Companies’ reply. In brief, the WPP Companies object to
all of the documents submitted by TRA in support of its trade secrets, on the
grounds that it is too late now for TRA to finally describe its trade secrets with
specificity. The WPP Companies separately maintain that the documents alleged
by TRA do not describe protectable trade secrets, because they are too vague,
and/or because they have been publicly disclosed.
(1)

TRAnalytics’ speed, reliability, scalability and performance

(hereafter, the “TRAnalytics Secret”)
a.

Material facts alleged by TRA

TRA has never publicly disclosed the following: specific technical
information re Media TRAnaltytics’ speed, performance and
reliability, including information on the specifications relating to
speed of report generation, combinations for ensuring reliability,
methods for allowing scalability, structure of the system, its data
ingestion process, information about the secure hosted
infrastructure; information about the number and capabilities of
the servers; and information about how these elements combine

70

See id. ¶¶ 8-9.
-42-

to achieve certain results.71
b.

The WPP Companies’ Reply

Denied, and immaterial on the issues of specificity and use. TRA
publicly disclosed the identified information. The identified
information was also publicly known as TRA borrowed its
technical solution from a loyalty card data analytics company in
the UK. There is a fundamental mismatch between TRA’s
characterization of its one remaining “technical” supposed trade
secret (now, too late, defined narrowly) and its claim that Kantar
somehow “used” that supposed secret (i.e., based on the “two
week” theory and backed only by attorney speculation,
notwithstanding TRA’s prior representation to the Court that
expert testimony was necessary to establish use given the nature
of TRA’s claims and the available evidence). Separately, Rule 37
bars TRA from now identifying for the first time a small number
of pages as its supposed trade secrets, in contrast to the hundreds
of pages identified during discovery.72
c.

The Documentary Record

TRA submits the following documents in defining the TRAnalytics
Secret.
•

A March 3, 2009 non-disclosure agreement (the “March 2009 NDA”)
entered into between TRA and the WPP Companies, and signed by

71

TRA 56.1 ¶ 64 (citing Lieberman Decl. ¶¶ 6, 9-10; Ex. 10-12; Ex.
14-15; Ex. 10-10; Exs. 14-5, 14-6; Exs. 4-13 to 4-15; Exs. 5-1 to 5-3).
72

Reply 56.1 ¶ 64 (citing Ex. A, TRA0000828; Ex. E,
SPENCE_006020-22.; Ex. A, TRAE0021330 at TRAE0021330 and
TRAE0021338; Ex. R (Feb. 2008 Kognitio press release); Ex. D (Trade Secret No.
6)).
-43-

Spence—in her capacity as Senior Vice President of the WPP Group.
DeBiase, Shababb, and Lederer are explicitly named as people to
whom the information conveyed by TRA may not be transmitted.73
•

An EULA for TRAnalytics dated January 6, 2009. It provides that
“[e]ach party agrees that the Confidential Information of the
disclosing party is the property of the disclosing party at all times
during the performance of this contract and after the termination of
this contract and in perpetuity that users of the system. . . .”74

•

A table dated February 15, 2009 (the “Due Diligence Table”)
comparing the features of TRAnalytics with Kantar Media’s InfoSys
product, attached to due diligence materials produced by TRA to the
WPP Companies on March 3, 2009. For example, it reveals that
TRAnalytics is faster, better able to scale with a larger data set, etc.75

•

A memo dated May 18, 2010 summarizing the technical capabilities
of TRAnalytics. The memo reveals anodyne features of TRAnalytics,

73

See Ex. 10-12 to Stockinger Decl.

74

Ex. 14-15 to Stockinger Decl.

75

See Ex. 10-10 to Stockinger Decl.
-44-

e.g., that it employs “enterprise grade firewalls. . . .”76
•

Excerpts from a memo dated March 2009 (the “March 2009 Memo”)
titled “TRA Overview March 2009 WPP TRA Trade Secret.” The
portions of the memo cited to by TRA contain high-level statements
about TRAnalytics, e.g., that it uses “[c]lustered load balances” and
“Raid5 for storage. . . .”77

•

A network map describing the operation of TRAnalytics on a high
level, and list of computer hardware involved.78

In reply, the WPP Companies submit:
•

TRA’s response to their interrogatories, showing that TRA initially
designated a vast and undifferentiated group of documents in defining
this allege trade secret.79 The WPP Companies submit a like response
to all of TRA’s alleged trade secrets.

•

A 4/28/08 TRA press release disclosing various features of
TRAnalytics on a high level, e.g., that it is compatible with clients’

76

Exs. 14-5, 14-6 to Stockinger Decl.

77

Exs. 4-13 to 4-15 to Stockinger Decl.

78

Exs. 5-1 to 5-3 to Stockinger Decl.

79

Excerpts from 10/15/12 TRA’s Supplemental Responses to Plaintiffs’
First, Second, and Third Sets of Interrogatories, Ex. D to Rutt. Decl.
-45-

legacy systems through the use of application programming interfaces
(“APIs”).80
•

A 2/23/09 TRA press release announcing that TRA chose to use
Kognitio as the data warehousing service for TRAnalytics. In
addition to making this announcement, the press release reveals the
number of households reached by TRA, and that TRA is ISO 27001
Certified for security.81

•

A 11/14/08 Email from Brian Canning—a TRA executive—to various
TRA employees and officials, sent in the context of selecting a new
database solution for TRAnalytics. It states that Kognitio—the
solution ultimately selected by TRA—was then being used by LMG, a
United Kingdom company, and that LMG officials praised Kognitio’s
performance, support, deployment, stability, and consistency.82

•

A 2/26/08 LMG press release detailing LMG’s partnership with

80

See Press Release Introducing TRAnalytics 2.0, Ex. A to Rutt. Decl.,
at TRA0000828. An API specifies how one software layer interacts with another.
81

See Press Release Announcing TRAnalytics Partnership with
Kognitio, Ex. E to Rutt Decl., at SPENCE_006020-22.
82

See Canning Email, Ex. A to Rutt Decl., at TRAE0021330,
TRAE0021338.
-46-

Kognitio.83
(2)

TRA’s client lists and client interactions (hereafter, the “Clients

Secret”)
a.

Material facts alleged by TRA

“TRA has never publicly disclosed the following: its customer
contract terms and pricing; Information about customer negotiations and the stage
of such negotiations; customer proposals; and detailed information about
customers in the pipeline.”84
b.

The WPP Companies’ Reply

Denied, and immaterial on the issues of specificity and use. TRA
publicly disclosed the identified information. The identified
information is dated February or March 2009, more than a year
before mid-2010, when TRA alleges Kantar began improperly
using TRA information. The fact that TRA’s 2009 pipeline
included 62 companies and $24 million of potential business
would have been stale and meaningless by 2010, especially since
almost none of it became actual revenue. TRA fails to explain
how Kantar could have used this stale information. Two of the
cited pages disclose information about a “‘$500k annual deal
being negotiated” for BMS [Bristol Meyers Squibb],” a
pharmaceutical company.
TRA fails to explain how Kantar could have used such data given
that its accused products use only CPG and automotive – not
83

See LMG Press Release, Ex. R to Rutt Decl.

84

TRA 56.1 ¶ 62 (citing Leiberman Decl. ¶ 6; Ex. 10-12; Exs. 5-8, 5-10,
5-11 to 5-15; Ex. 1-5).
-47-

pharmaceutical – data.
Separately, Rule 37 bars TRA from now identifying for the first
time a small number of pages as its supposed trade secrets, in
contrast to the hundreds of pages identified during discovery.85
c.

Documentary Record

TRA submits the following documents in defining this trade secret.
•

The March 2009 NDA.

•

A slide from a PowerPoint presentation titled “TRA Overview” and
dated March 2009 (the “March 2009 PowerPoint”). It provides CBS,
Turner, General Mills, Discovery, MediaVest, and BMS as “customer
examples.”86

•

A slide from the March 2009 PowerPoint titled “Sales Pipeline
Update” listing networks, advertisers, and agencies in TRA’s sales
pipeline.87

85

Reply 56.1 ¶ 62 (citing WPP Mem. at 8 & nn. 27-28; Ex. A,
HARVEY_0004588, May 2010 ARF presentation, slide 14 (disclosing “partial list
of customers” including “P&G, Kraft, Mars, Merck, General Mills, Intel,
MediaVest, GroupM, Zenith OptiMedia, CBS, Viacom Networks, FX, National
Geographic Channel”); Ex. E, KANTAR_0383848 (April 2009 ARF presentation,
slide 7); Ex. S, ‘940 Patent, Fig. Nos. 35A, 35B, 35C, 37A, 38A, 39A and 40A
(disclosing General Mills as advertiser in sample reports); Ex. 1-5; Ex. 5-8; Ex. 510; Ex. D (Trade Secret Nos. 15 and 22)).
86

Ex. 5-8 to Stockinger Decl.

87

Ex. 5-10 to Stockinger Decl.
-48-

•

Slides from the March 2009 PowerPoint detailing TRA’s sales
pipeline, i.e., identifying clients it had under contract.88

•

A memorandum attached to a 10/20/09 Email from Sullivan to Terry
Kent—of Kantar Media—Jeff Krentz—of WPP—and Spence (the
“Sullivan Email”). The email identifies the number of clients in
TRA’s pipeline, as well as the value of these clients.89
The WPP Companies submit the following documents in reply.

•

A slide from a presentation titled “TRA Executive Summary[,]”
presented at the ARF 360 Chicago Workshop on May 25, 2010.
(ARF is an advertising industry research/trade group). The slide
discloses a “partial list” of TRA customers, including “P&G, Kraft,
Mars, Merck, General Mills, Intel, MediaVest, GroupM, Zenith
OptiMedia, CBS, Viacom Networks, FX, National Geographic
Channel. . . .”90

•

Slide seven from a presentation given by TRA to ARF on April 8,

88

See Exs. 5-11 to 5-15 to Stockinger Decl.

89

See Ex. 1-5 to Stockinger Decl.

90

May 2010 ARF Presentation, Ex. A to Rutt Decl. at
HARVEY_0004588.
-49-

2009. It discloses a number of current TRA clients.91
•

Several figures from the ‘940 Patent, which disclose General Mills at
an advertiser-client.92
(3)

TRA’s strategic plans (hereafter, the “Strategy Secret”)
a.

Material facts alleged by TRA

“TRA has never publicly disclosed the following: its strategic plans,
including detailed information regarding the markets that TRA is focused on and
its plans regarding the timing of entry into new markets.”93
b.

The WPP Companies’ Reply

Denied, and immaterial on the issues of specificity and use. TRA
publicly disclosed the identified information. Further, TRA fails
to explain how Kantar could have used TRA’s “plans regarding
the timing of entry into new markets,” all of which are dated early
2009, to decide over a year later to launch the Accused Products.
Separately, Rule 37 bars TRA from now identifying for the first
time a small number of pages as its supposed trade secrets, in
contrast to the hundreds of pages identified during discovery. In
any event, the disputed fact is immaterial because TRA’s

91

See April 2009 ARF Presentation, Ex. E to Rutt Decl., at
KANTAR_0383848.
92

‘940 Patent at Fig. Nos. 35A, 35B, 35C, 37A, 38A, 39A and 40A.

93

TRA 56.1 ¶ 65 (citing Lieberman Decl. ¶ 6; Ex. 10-12; Ex. 5-9; Exs.
4-5, 4-11; Ex. 10-11; Exs. 6-8 to 6-15).
-50-

identified information is not protectable under New York law.94
c.

Documentary Record

TRA submits the following documents in support of the Strategy
Secret.
•

The March 2009 NDA.

•

A page from the March 2009 Memo describing TRA’s “[s]trategic
[r]elationships[,]” e.g., its partnership with Experian to receive
demographic data, and its partnership with Kantar Media to receive
national and spot advertising schedules.95

•

Pages from the March 2009 Memo providing (1) a high-level
overview of TRA’s business model; and (2) a balance sheet reflecting
TRA’s staffing plan for the years 2008–2011.96

•

A table attached to the due diligence materials sent from TRA to the
WPP Companies in March 2009. The table reveals that, unbeknownst
to Kantar Media, TRA was then working with Comcast.97

94

Reply 56.1 ¶ 65 (citing Ex. A, TRA_000828-29 (April 2008 TRA
press release); Ex. D (Trade Secret No. 18)).
95

Ex. 5-9 to Stockinger Decl.

96

See Exs. 4-5, 4-11 to Stockinger Decl.

97

See Ex. 10-11 to Stockinger Decl.
-51-

•

Minutes from two TRA board meetings, held on February 2, 2009 and
May 12, 2009. The only portions of relevance to the alleged Strategy
Secret relate to future expectations , e.g., “Theme: course correction;
focus[:] build platform for $100mm revenues. . . .” Based on the
minutes, the focus of the board meetings appears to have been
launching TRAnalytics 2.0.98
In reply, the WPP Companies submit a 4/28/08 TRA press release

announcing the launch of TRAnalytics 2.0.99
(4)

TRA’s product positioning (the “Positioning Secret”)
a.

Material facts alleged by TRA

“TRA has never publicly disclosed the following: information on
product positioning, including a detailed internal analysis that compares TRA to
other advertising measurement companies; specific or technical information
relating to targeting swing purchasers; and its internal analyses on ROI.”100

98

Exs. 6-8 to 6-15 to Stockinger Decl.

99

See April 2008 TRA Press Release, Ex. A to Rutt Decl., at
TRA_0000828-29.
100

TRA 56.1 ¶ 63 (citing Lieberman Decl. ¶ 6; Ex. 10-12; Ex. 4-12; Exs.
5-4 to 5-6; Exs. 10-10, 10-11).
-52-

b.

The WPP Companies’ Reply

Denied, and immaterial on the issues of specificity and use. TRA
publicly disclosed the identified information. Separately, Rule 37
bars TRA from now identifying for the first time a small number
of pages as its supposed trade secrets, in contrast to the hundreds
of pages identified during discovery. This disputed fact is
immaterial because the identified information is not protectable as
a trade secret under New York law.101
c.

Documentary Record

In support of the Positioning Secret, TRA submits the following
documents.
•

The March 2009 NDA.

•

A table attached to the March 2009 Memo comparing TRA with four
competitors with respect to various metrics, e.g., whether they use
purchase data for household matching, whether they support the use
of an API for legacy clients, etc.102

•

A series of three graphs attached to the March 2009 Memo arguing
that the use of TRAnalytics leads to a greater marginal increase in
sales revenue per ad, due to TRAnalytics’ superior targeting of “swing

101

Reply 56.1 ¶ 63 (citing Ex. A, TRA_0000828-30 (April 2008 TRA
press release); Ex. V, KANTAR_0383848, slides 30-31; Ex. W,
http://tinyurl.com/ks6kqtf (Oct. 2009 TRA presentation available online); Ex. D
(Trade Secret No. 21)).
102

See Ex. 4-12 to Stockinger Decl.
-53-

purchasers. . . .”103
•

The Due Diligence Table comparing Kantar Media’s InfoSys product
with TRAnalytics.104
Because the issue is amenable to resolution as a matter of law based

TRA’s submission, I will not summarize the documents submitted by WPP.
(5)

TRA’s capital structure, financials, financing proposals, target

investor list, and offers to acquire or merge the company (the “Financial Secret”)
a.

Material facts alleged by TRA

TRA has never publicly disclosed the following: its detailed
capital structure; its financial statements and projections,
including its income statements, profit & loss statements, and
actual and projected balance sheets; its Capex and actual and
projected cash flow; information on its costs; its financing
proposals; its target investor lists; and offers to acquire or merge
the company.105
b.

The WPP Companies’ Reply

“Denied, and immaterial on the issues of specificity and use. TRA
disclosed the identified information without NDAs in place. Separately, Rule 37
bars TRA from now identifying for the first time a small number of pages as its

103

Exs. 5-4 to 5-6 to Stockinger Decl.

104

See Exs. 10-10, 10-11 to Stockinger Decl.

105

TRA 56.1 ¶ 61 (citing Leiberman Decl. ¶ 6; Ex. 10-12; Exs. 4-4 to
4-10; Ex. 1-4; Ex. 1-9).
-54-

supposed trade secrets, in contrast to the hundreds of pages identified during
discovery.”106
c.

Documentary Record

In support of the Financial Secret, TRA submits the following
documents.
•

The March 2009 NDA.

•

Portions of the March 2009 Memo disclosing TRA’s profit and loss
statement, balance sheet, staffing plan, etc.107

•

An attachment to the Sullivan Email prepared by the WPP
Companies’ corporate development department during TRA and the
WPP Companies’ merger negotiations. The Sullivan Email notes that
the numbers are “very stale.” The attachment is a “pro forma
combination analysis” of TRA and Kantar Media. It includes
summary financials for TRA for the years 2008, 2009, and 2010.108

•

A document titled “TRA Investment Update – 10-03-08”—and
labeled “Restricted to Internal WPP Use on a Need-to-Know

106

Reply 56.1 ¶ 61 (citing Exs. 11-8 to 11-13; Ex. D (Trade Secret No.

107

See Exs. 4-4 to 4-10 to Stockinger Decl.

108

See Ex. 1-4 to Stockinger Decl.

23)).

-55-

Basis”—originally attached to an email sent from McKenna to
Sullivan. Attached to the document is a PowerPoint reflecting TRA’s
financials. The document provides support for TRA’s allegation that
the WPP Companies intended to starve TRA for cash; it states that
“[t]he combination of higher expenses and lagging revenues has
shortened by 3-5 months the timing that [Kantar Media] had originally
forecast for TRA to require additional operating funds. . . .”109
In reply, the WPP Companies submit a table dated February 19, 2010
disclosing that TRA contacted thirty-seven potential investors in 2010 without
NDAs. The rightmost column of the table is labeled “Comments[,]” and it
indicates that the contacted investors received the information that TRA now
claims constitutes the Financial Secret: the investors comment on TRA’s “negative
gross margin,” “2010 plan,” “capital raised,” etc.110
e.

Evidence that the WPP Companies Received and
Used TRA’s Alleged Trade Secrets

TRA alleges that its trade secrets were transmitted by three separate
routes. Specifically, TRA alleges that: (1) in contravention of the March 2009

109

Ex. 1-9 to Stockinger Decl.

110

Venture Capital/Growth Equity Investors Table, Ex. 11-8 to
Stockinger Decl.
-56-

NDA, Lederer, Shababb, and DeBiase received information that TRA provided to
Kantar Media during due diligence;111 (2) Spence used her position on TRA’s
board to provide trade secrets to Kantar Media without permission from TRA;112
111

See TRA 56.1 ¶ 66 (citing the March 2009 NDA, Ex. 10-12 to 10-15;
Kent Email (email from Kent to DeBiase stating that “While Sheila had Brian
[Sullivan] give Bill [Lederer] the TRA financials my guess is we are still
prohibited from sharing much with [Kantar] Media. If things go south for Mark
[Lieberman] and TRA you can be certain he will look to see what we have
violated. He has already told Sheila that he has heard ‘us’ say negative things in
the market about TRA.”), Ex. 4-1; 4/27/09 Email from Sullivan to Lederer
(attaching TRA financial information to Lederer at Spence’s request), Exs. 14-3 to
14-4; 3/2/09 Email Chain Between Kent (the “March 2009 Kent Emails”),
Shababb, Sullivan, Spence, Krentz and Lederer (stating that Shababb is to be “kept
in the loop” regarding due diligence for TRA/WPP combination), 13-13; 10/28/09
Email Chain Between Lederer and Naresh Durty (Director of Database
Administration at Lightspeed Research) (after being sent information about TRA
and Kognitio, Lederer responds that “[w]e know TRA VERY well. . . . TRA uses
Kantar purchase data and TNS MI spots and ad ex data. . [M]y business is headed
in a remarkably similar direction.”), Ex. 16-1; 3/25/09 Emails Between Lederer
and Kent (reflecting Lederer’s views on TRA, for example that acquiring “TRA
would bring [] little to [Kantar Media] in the area of TV ratings, [because] TRA
had no proprietary data sources, no ratings pedigree, [and] few customers”), Ex.
3-13, 3-14; Lieberman Decl. ¶ 8; Attachment to 10/20/09 Email from Sullivan to
Kent and Spence (“October Sullivan Email”) (identifying the “increasingly
competitive dynamic” between Kantar Media and TRA, and laying out options),
Ex. 1-2).
112

See TRA 56.1 ¶ 67 (citing 4/27/09 Email from Sullivan to Lederer
(attaching TRA financial information to Lederer at Spence’s request), Ex. 14-3,
14-4; October Sullivan Email, Exs. 1-1 to 1-5; Document Titled “Sheila Spence
4/27/09 Email on TRA” (evaluating prospect of the WPP Companies making
tender offer for TRA) Ex. 1-15; Kent Email, Exs. 4-1 to 4-3 to Stockinger Decl.;
4/27/09 Email from Sullivan to Lederer, Spence and Kent (stating “Hi Bill, hope
you are well. Sheila asked me to send over TRA financial information that
breaks-out cost and SGA expense details. Once you have had a chance to review
-57-

and (3) “Kantar executive and TRA Board member Bill McKenna
provided trade secrets to Kantar without permission from TRA.”113 TRA further
alleges that Kantar Media and Kantar Retail used these trade secrets.114

the attached, let me know if you have any questions. During our diligence, Terry
and I spent some time with Mark and the TRA team discussing the general
assumptions behind their forecasts.”), Ex. 3-12; 05/23/10 Email from Spence to
Martin Sorrell, Salama, and Read re: TRA / Series C Participation (recommending
that the WPP Companies decline to invest in TRA’s Series C funding round,
because investing would do little for the WPP Companies strategically), Ex. 6-7).
113

TRA 56.1 ¶ 68 (citing the McKenna Email and McKenna Memo, Exs.

1-6 to 1-10).
114

See TRA 56.1 ¶¶ 69-70 (citing March 2009 NDA, Ex. 10-12; March
2009 Kent Emails, Ex. 13-13; March Salama Email, Ex. 15-14; 3/18/10
Memorandum Prepared by Richard Marks (CEO of Kantar Media) (stating that
“further investigating possible deals with TRA” is not “of interest,” because: (1)
Kantar Media already had a strategic vision for return path / set-top box data,
which TRA did not fit into; (2) TRA was losing money, and Kantar Media had
plans to make money; (3) there would be no synergies with TRA unless TRA had
game-changing software, but Kantar Media was not aware of any ‘secret sauce’;
and (4) the integration costs of joining the two teams would be high, Ex. 16-4;
Minutes from 5/18/10 TRA-Kantar meeting (discussed above), Exs. 14-4 to 14-6;
Email from Andy Brown (of Kantar Media) to Marks, Shababb and Krentz (all of
Kantar Media or Kantar Retail) (summarizing 5/18/10 meeting between TRA and
Kantar; present at the meeting for Kantar/WPP were Brown, Marks (via phone),
Shababb, Krentz, Spence and Sullivan; the summary includes information about
TRAnalytics, and notes that TRA claimed to have received patent protection for
“integrat[ing] either set top box viewing data or internet data . . . with
consumption/sales data”), Ex. 8-13; 6/4/10 Email from Shababb to Various
Kantar/WPP Employees & Officers (stating that “We have had a chance to assess
our internal capabilities relative to TRA. Generally speaking TRA demonstrates
three capabilities encompassing targeting (indexing), optimization and ROI. We
have determined that we have the ability to replicate the targeting and optimization
capabilities in our InfoSysRPD and/or Xpert systems as these exist as modules
today which clients access. . . . We suspect that the greatest revenue opportunity
-58-

The WPP Companies deny each of these allegations. Regarding the
means that the putative secrets were transmitted, they allege that: (1) Lieberman
permitted Lederer, Shababb and DeBiase to receive the identified information;115

would be targeting[,] . . . followed by optimization, followed by ROI. This being
the case we can move forward independently with our current plans by leveraging
InfoSysRPD, subject to a more thorough review of the patent.”), Ex. 13-15; 3/7/11
Press Release Trumpeting Kantar Media’s Release of Rapidview (stating that
RapidView allows ROI targeting based in part on its unprecedented sample sizes),
Ex. 15-6; Excerpt from Mela’s Amended Expert Report (stating “I have concluded
that, within a reasonable degree of expert certainty, Kantar’s single-source system
utilizes the conceptual and technical/operational trade secrets that TRA has
identified and that Kantar utilized TRA’s strategic and investment trade secrets in
deciding to enter the field with its own single-source product. . . . Kantar had full
access to TRA’s trade secrets through numerous channels: (i) through the WPP
representative on TRA’s Board; (ii) during due diligence conducted in connection
with a potential combination in 2009 and 2010; and (iii) through Kantar Retail’s
relationship with TRA as one of TRA’s data vendors. Over that time, Kantar used
its position of trust to deepen its understanding of TRA’s business but did not take
appropriate measures to protect against the improper use of TRA’s trade secrets
and confidential information. Less than one year after Kantar completed its due
diligence of TRA’s technical capabilities in the Spring of 2010, Kantar went to
market with a product offering that was similar in most major aspects to TRA’s
passive, singlesource system.”) Ex. 13-3; The Sullivan Email, Ex. 1-1; Lederer’s
above-mentioned October 28 email exchange with Naresh Adurty, Ex. 16-1;
Sullivan’s April 27 Email to Lederer Sending TRA Financial Information at
Spence’s Request, Ex. 3-12; Lederer and Kent’s March 25 Email Exchange
Regarding TRA, Ex. 3-14; Kent’s May 2009 Email Exchange with DeBiase
Regarding TRA, Ex. 4-1; 11/30/08 Email from DeBiase to Lederer (stating “[b]e
careful,[,] you were not necessarily to see that yet[,]” in response to Lederer Email
commenting on WPP Memo generated from TRA Memo provided pursuant to
merger negotiations), Ex. 15-15; 3/18/10 Marks Memo, Ex. 16-4; 6/4/10 Email
from Shababb to Kantar Officers, Ex. 13-15) (further citations omitted).
115

See Reply 56.1 ¶ 66 (citing 3/22/09 Email from Lieberman to Spence
(stating that “depending on how the valuation discussion goes tomorrow, it may be
-59-

(2) Shababb was present at a TRA meeting where slides detailing TRA’s financial
condition, etc. were presented;116 and (3) McKenna was authorized to email the
putative trade secrets to the recipients of the email submitted by TRA, as evidenced
by the fact that Lieberman thanked him for the email—and, in any event, the
information reflected therein was stale by the time of the WPP Companies’ alleged
use.117
Regarding TRA’s allegation that the WPP Companies used the alleged
trade secrets, the WPP Companies allege that: (1) the WPP Companies plainly did
not use the TRAnalytics Secret, as (i) Kantar Media’s InfoSys uses an Oracle
Database (not Kognitio, like TRA),118 (ii) Shababb’s June 2010 email states that

unnecessary for [Lederer], [Shababb] and [DeBiase] to have . . . continued access
to . . . diligence information”), Ex. V to Declaration of Eric Rutt in Support of
Counterclaim-Defendants’ Reply Regarding Their Motion for Summary Judgment
(“Rutt Reply Decl.”), at SPENCE_006682.
116

See Lieberman Decl. ¶ 10; Ex. 8-13 (stating Shababb attended the
meeting); Ex. 14-4 (the slides).
117

See Reply 56.1 ¶ 68 (citing 9/20/08 Email from Lieberman to Lederer
(stating “Thanks for making this happen Bill” in response to Lederer’s email
stating that he had “forwarded the September TRA Board package together with
my comments to Jeff Krentz”), Ex. V to Rutt Reply Decl, at TRAE0023309).
118

See Ex. 10-10 to Stockinger Decl. Furthermore, a chart prepared by
TRA in 2009 shows that Kantar Media spent thirteen years developing InfoSys and
Comtel — major components of the Accused Products. See TNS v. TRA
Comparison Chart, Ex. E to Rutt Decl. Thus, this development, which cost $15
million, occurred years before 2009 when the WPP Companies first met TRA. See
-60-

Kantar Media could “replicat[e]” the “capabilities” of TRAnalytics using preexisting InfoSys modules;119 and (iii) the Accused Products, in fact, use Kantar
Media’s Charter and DirectView services, which have existed since 2006 and
2006, respectively;120 and (2) none of the documents identified by TRA regarding
the information transmitted by McKenna and Spence evidences improper use, as
opposed to an evaluation of the potential for a merger with TRA.121
D.

Evidence Relating to Damages for TRA’s Non-Patent Claims
The WPP Companies move for summary judgment on TRA’s non-

patent claims—namely breach of fiduciary duty, breach of contract, and
misappropriation of trade secrets—on the ground that TRA has insufficient
evidence to prove that the WPP Companies caused its alleged damages. Because
this motion is based on the lack of evidence allegedly adduced by TRA, I begin
with the evidence TRA presents in opposition to the motion.
TRA alleges—and it is not disputed—that its post-money valuation
rose from $10 million (after its first financing round) to $54 million (after its third

Shababb Decl. ¶ 3.
119

Ex. 13-15 to Stockinger Decl.

120

See Reply 56.1 ¶ 69 (citing Shababb Inj. Decl. ¶¶ 9-10).

121

See id. ¶ 70.
-61-

financing round), but that it was ultimately acquired by TiVo for a mere $20
dollars in July 2012 after it was unable to solicit investors for its fourth financing
round.122 TRA’s non-patent damages theory is that based on TRA’s undisputed
value in May 2010 — $54 million — and TRA’s acquisition price in July 2012 —
$20 million, TRA lost $34 million in value over two years.123 Because only
seventy percent of this drop can be attributed to WPP Companies’ “bad acts” —
presumably releasing a competing product, “[t]otal damages under TRA’s [nonpatent] claims . . . is estimated to be in the range of approximately $21 million to
$23 million.”124
In support of its theory of damages, TRA submits: (1) portions of the
expert report of Melissa A. Bennis, its damages expert; (2) excerpts from the
deposition of Naveen Chopra, TiVO’s CFO; (3) portions of the declaration of
Stephen B. Morris—another TRA expert—in support of TRA’s motion for an
injunction; and (4) portions of Lieberman’s deposition.125 Bennis’ report

122

See TRA 56.1 ¶¶ 71-72 (citations omitted).

123

See Surreply Mem. at 12 (citing 1/11/13 Expert Report and Disclosure
of Melissa A. Bennis (TRA’s damages expert) (“Bennis Rpt.”), Ex. 20-12).
124

TRA 56.1 ¶ 73 (citing excerpts from Bennis Rpt., Ex. 20-13).

125

Id. ¶ 74 (citing Bennis Rpt., Exs. 20-5 to 20-12; 12/7/12 Deposition of
Naveen Chopra (TiVo’s CFO) (“Chopra Dep.”) (testifying that Kantar releasing a
product competing with TRAnalytics “froze the market”), Ex. 2-12 at 83:19-84:5;
-62-

documents the fact that, during TRA’s Series D financing round, investors declined
to invest for reasons such as “[lack of] revenue traction,” “[in]ability to hit
projections,” and “lack of profitability. . . .”126 The report continues:
[t]o the extent that TRA’s inability to meet revenue and profit
expectations were exacerbated at the time of the Series D round,
it is reasonable to believe it was caused by Counterclaim
Defendants’ alleged actions, which disrupted the market with a
new product and froze the market with respect to overall sales. .
. .127
The idea that the WPP Companies’ actions “froze the market” derives
from the following testimony of Chopra (which is cited in Bennis’ report):
Q.

Did TRA ever provide any information to TiVo as to what
it thought Kantar’s market share was in the narrow
competitive market it had with TRA?

A.

I don’t recall whether there was discussion in terms of
quantitative market share. One of the major themes of that
issue for TRA was the fact that, you know, they were the
original player here – small company trying to develop a
market that they and many customers thought was a big
opportunity – and they had this big issue where the large
entrenched player, TNS, that had deep relationships with a
lot of their potential customers was sitting there telling

6/29/11 Declaration of Stephen B. Morris in Support of TRA’s Motion for
Preliminary Injunction (“Morris Decl.”), Doc. No. 15 ¶¶ 16-19; 5/15/12 Deposition
of Mark Lieberman (“Lieberman Dep.”), Ex. 7-2 at 168:23-169:22 and Ex. 7-4 at
295:8-13).
126

Bennis Rpt., Ex. 20-9.

127

Id. at Ex. 20-10 (quotation marks and citation omitted).
-63-

people they were coming out with a product for a long time,
and then eventually, obviously, did come out with a
product, and that kind of froze the market and made it very
difficult for them to compete.128
The portions of Morris’ declaration submitted by TRA are of limited
interest. Morris speculates that, if TRA’s request for an injunction were not
granted, the critical period for TRA to capitalize on its proprietary technology
could pass.129
Lieberman’s testimony does more to flesh out the frozen market
theory. Lieberman testifies to his belief that Casavant’s130 “collaboration with
Kantar Media [] led to confusion in the marketplace, misappropriating our trade
secrets, infringing our patents, signaling to the marketplace that an investor of ours
was now copying what we were doing, affected our ability to raise capital, affected
valuation conversations around the value of the company[;]” and that potential
TRA investors had raised concerns about this litigation.131
It is important to note that TRA’s frozen market theory is not that

128

Chopra Dep. at 83:19-84:5.

129

See Morris Decl. ¶¶ 16-19.

130

Casavant was the managing director of Kantar Retail at all relevant
times. See supra n.35.
131

Lieberman Dep. at 168:23-169:22. Accord id. at 295:8-13.
-64-

Kantar Media poached TRA customers with the Accused Products. For example,
TRA is not seeking lost sales as a measure of damages for its non-patent claims
based on the frozen market theory.132 Instead, the frozen market theory is that the
WPP Companies, by launching the Accused Products and suing TRA, made
investors wary of TRA.133 The alleged mechanism is twofold: (1) investors were
reluctant to pump money into a company embroiled in litigation; and (2) because
the WPP Companies are a globe-spanning and powerful conglomerate, potential
investors were wary of investing in a less-established, competing company.134
Needless to say, the WPP Companies dispute TRA’s frozen market
theory. First, they allege that Bennis failed to consider that investors were wary of
TRA’s revenue traction relative to the capital that it had raised to date.135 On this
basis, the WPP Companies allege that the difference between TRA’s first three

132

See 3/13/13 Deposition of Melissa A. Bennis (“Bennis Dep.”), Ex. 9-2
to Stockinger Decl., at 87:7-21 (confirming that lost sales are not the basis for
TRA’s alleged non-patent damages).
133

See Surreply Mem. at 12 (“TRA’s actual theory is that Kantar’s
launch of a copy of TRA’s proprietary product undermined TRA’s fundamental
value proposition as a company.”).
134

See Bennis Dep. at 89:1-24 (testifying, e.g., that “WPP [] was, in
effect, acting against TRA, and WPP is a big conglomerate . . . [and] that was
concerning to investors who might have had other potential opportunities with
WPP.”).
135

See Reply 56.1 ¶ 74 (citing Bennis Rpt. at Ex. 20-9).
-65-

financing rounds and its fourth, unsuccessful, financing round is that, by the fourth
round, TRA had already raised substantial capital, without having matching
revenue. Second, the WPP Companies argue that, because they have not abused
the judicial process, filing this suit against TRA cannot constitute a bad act giving
rise to TRA’s damages.136 Finally, the WPP Companies allege that “it is improper
to treat “post-money valuation” as evidence of the fair market value of TRA.”137
III.

LEGAL STANDARD
A.

Summary Judgment Standard 138
Summary judgment is appropriate “only where, construing all the

evidence in the light most favorable to the non-movant and drawing all reasonable
inferences in that party’s favor, there is ‘no genuine issue as to any material fact

136

See id. (citing DirecTV, Inc. v. Lewis, No. 03 Civ. 6241, 2005 WL
1006030, at *5 (W.D.N.Y. Apr. 29, 2005) (collecting cases in which the courts
extended the Noerr-Pennington doctrine—that threats to commence suit are
outside the scope of the antitrust laws—beyond the confines of antitrust
jurisprudence).
137

Id. ¶ 73 (citing 4/2/13 Deposition of Brent K. Bersin (damages expert
for the WPP Companies), Ex. W to Rutt Reply Decl., at 122:1-124:24 (testifying
that a company’s post-money valuation merely reflects the addition of investment
capital to the founder’s equity, not a company’s fair market value)).
138

In a case arising under the patent laws, the rules of the regional circuit
govern the standard of review applicable to a motion for summary judgment. See,
e.g., Whitserve, LLC v. Computer Packages, Inc., 694 F.3d 10, 18 (Fed. Cir. 2012).
Accordingly, the summary judgment standard of the Second Circuit is recited
below.
-66-

and . . . the movant is entitled to judgment as a matter of law.’”139 “A genuine
dispute exists if the evidence is such that a reasonable jury could return a verdict
for the nonmoving party. A fact is material if it might affect the outcome of the
suit.”140
“The moving party bears the burden of establishing the absence of any
genuine issue of material fact.”141 To defeat a motion for summary judgment, the
non-moving party “‘must do more than simply show that there is some
metaphysical doubt as to the material facts,’”142 and “‘may not rely on conclusory
allegations or unsubstantiated speculation.’”143
In deciding a motion for summary judgment, “[t]he role of the court is
not to resolve disputed issues of fact but to assess whether there are any factual
139

Rivera v. Rochester Genesee Regional Transp. Authority, 702 F.3d
685, 692 (2d Cir. 2012) (quoting F ED. R. C IV. P. 56(c)) (some quotation marks
omitted).
140

Finn v. N.Y. State Office of Mental Health-Rockland Psychiatric Ctr.,
489 Fed. App’x 513, 514 (2d Cir. 2012) (quotation marks omitted).
141

Zalaski v. City of Bridgeport Police Dep’t, 613 F.3d 336, 340 (2d Cir.
2010) (citing Celotex Corp. Catrett, 477 U.S. 317, 322 (1986)). Accord Powell v.
Donahoe, 519 Fed. App’x 21, 22 (2d Cir. 2013).
142

Gioia v. Forbes Media LLC, 501 Fed. App’x 52, 54 (2d Cir. 2012)
(quoting Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 586–87
(1986)).
143

Robinson v. Allstate Ins. Co., 508 Fed. App’x 7, 9 (2d Cir. 2013)
(quoting Scotto v. Almenas, 143 F.3d 105, 114 (2d Cir. 1998)).
-67-

issues to be tried.”144 “‘Credibility determinations, the weighing of the evidence,
and the drawing of legitimate inferences from the facts are jury functions, not those
of a judge.’”145
B.

Patent Infringement
Section 271(a) of the Patent Act provides that: “whoever without

authority makes, uses, offers to sell, or sells any patented invention, within the
United States or imports into the United States any patented invention during the
term of the patent therefor, infringes the patent.”146 “To prove infringement, the
patentee must show that an accused product embodies all limitations of the claim
either literally or by the doctrine of equivalents.”147
1.

Literal Infringement

“Determining literal infringement is a two step process: the “proper
construction of the asserted claim and a determination whether the claim as
properly construed reads on the accused product or method. The first step is a

144

Cuff ex rel. B.C. v. Valley Cent. School Dist., 677 F.3d 109, 119 (2d

Cir. 2012).
145

Redd v. New York Div. of Parole, 678 F.3d 166, 174 (2d Cir. 2012)
(quoting Reeves v. Sanderson Plumbing Prods., Inc., 530 U.S. 133, 150 (2000)).
146

35 U.S.C. § 271(a).

147

Cephalon, 707 F.3d at 1340.
-68-

question of law, [. . .] [while] [t]he second step is a question of fact. . . .”148 Literal
infringement is established if “every limitation set forth in a claim [] [is] found in
an accused product, exactly.”149
2.

The Doctrine of Equivalents

As set forth in a recent Federal Circuit opinion:
The doctrine of equivalents allows the patentee to claim those
insubstantial alterations that were not captured in drafting the
original patent claim but which could be created through trivial
changes. However, the ‘all limitations rule’ restricts the doctrine
of equivalents by preventing its application when doing so would
vitiate a claim limitation. Equivalence is not an absolute to be
considered in a vacuum. The essential inquiry is whether “the
accused product or process contain[s] elements identical or
equivalent to each claimed element of the patented invention. One
way of proving infringement under the doctrine of equivalents is
by showing on a limitation by limitation basis that the accused
product performs substantially the same function in substantially
the same way with substantially the same result as each claim
limitation of the patented product.150
C.

Trade Secrets Under New York Law
“To establish a claim for misappropriation of trade secrets, plaintiff

148

ActiveVideo Networks, Inc. v. Verizon Commc’ns, Inc., 694 F.3d 1312,
1319 (Fed. Cir. 2012) (quotation marks and citations omitted).
149

Southwall Techs., Inc. v. Cardinal IG Co., 54 F.3d 1570, 1575 (Fed.

Cir. 1995).
150

Pozen Inc. v. Par Pharm., Inc., 696 F.3d 1151, 1167 (Fed. Cir. 2012)
(quotation marks and citations omitted) (brackets in original).
-69-

must show (1) that it possesses a trade secret, and (2) that defendant is using that
trade secret in breach of an agreement, confidence, or duty, or as a result of
discovery by improper means.”151 The Court of Appeals of New York has adopted
The Restatement of Torts’ definition of a trade secret as “‘any formula, pattern,
device or compilation of information which is used in one’s business, and which
gives him an opportunity to obtain an advantage over competitors who do not
know or use it.’”152 In deciding trade secret claims, New York courts consider the
following factors:
“(1) the extent to which the information is known outside of [the]
business; (2) the extent to which it is known by employees and
others involved in [the] business; (3) the extent of measures taken
by [the business] to guard the secrecy of the information; (4) the
value of the information to [the business] and [its] competitors;
(5) the amount of effort or money expended by [the business] in
developing the information; (6) the ease or difficulty with which
the information could be properly acquired or duplicated by
others. . . .”153
A client list may be a trade secret under New York law; however, “[a]
client list created through ‘widespread canvassing of an obvious and highly

151

Sylmark Holdings Ltd. v. Silicone Zone Intern. Ltd., 783 N.Y.S.2d
758, 770-71 (Sup. Ct. N.Y. Co. 2004).
152

Ashland Mgmt. Inc. v. Janien, 82 N.Y.2d 395, 407 (1993) (quoting
Restatement of Torts § 757).
153

Id. (quoting Restatement of Torts § 757 cmt. b).
-70-

competitive market,’ is insufficient to warrant trade secret protection.”154
IV.

DISCUSSION
A.

TRA’s Misappropriation of Trade Secrets Claim Is Dismissed
TRA identifies a large number of documents in support of its trade

secrets claim, and reviewing these documents has consumed considerable judicial
resources. In the end, this effort was conducted for little purpose. TRA’s trade
secret claim is dismissed, as: (1) it is impermissible for TRA to wait until summary
judgment to narrow the documents allegedly describing its trade secrets; and (2) in
any event, the documents now identified by TRA fail to evidence protectable trade
secrets, and/or use of those trade secrets by the WPP Companies.
1.

The WPP Companies’ Objections Under Rule 37 Are
Sustained

At a hearing held on April 23, 2013, I ordered the parties to reduce the
number of asserted patent claims and trade secrets in the case. As a result, TRA
dismissed twenty of its twenty-five trade secrets. Prior to that point, TRA asserted
hundreds of pages of documents in support of twenty-five alleged trade secrets,
with little to no indication as to how these documents combined to form trade

154

Novus Partners, Inc. v. Vainchenker, No. 11 Civ. 650683, 2011 WL
4031521, at *3 (Sup. Ct. N.Y. Co. Sept. 7, 2011) (quoting Leo Silfen, Inc. v.
Cream, 29 N.Y.2d 387, 394 (1972)).
-71-

secrets.155 It was apparently TRA’s intention to wait until it was before a jury to
define the precise contours of its trade secrets claim; but, faced with the WPP
Companies’ motion for summary judgment, it instead narrowed the range of
documents in its opposition papers.
Naturally, the WPP Companies object—under Rule 37—to TRA’s
attempt to “now identify[] for the first time [in a May 10, 2013 letter] a small
number of pages as its supposed trade secrets, in contrast to the hundreds of pages
identified during discovery. . . .”156 And even though TRA narrowed its list of
trade secrets, it reserved the “right to rely upon additional documents or testimony
related to each trade secret.”157 WPP Companies’ objection is sustained, as TRA’s
actions are in contravention of Rule 26(e).158 TRA’s “Dance of the Seven Veils

155

See TRA Interrog. Resp. at 8-27 (asserting hundreds—or
thousands—of documents, “by way of example,” for each of the twenty-five trade
secrets originally alleged by TRA).
156

Reply 56.1 ¶ 61. Rule 37(a)(4) provides that “an evasive or
incomplete disclosure, answer, or response must be treated as a failure to disclose,
answer, or respond.”
157

5/10/13 Lowenstein Letter to Strand, Ex. 2-13 Stockinger Decl., at 1.

158

Rule 26(e) provides in pertinent part that “[a] party who has . . .
responded to an interrogatory . . . must supplement or correct its disclosure or
response: in a timely manner if the party learns that in some material respect the
disclosure or response is incomplete or incorrect, and if the additional or corrective
information has not otherwise been made known to the other parties during the
discovery process or in writing. . . .”
-72-

approach to [its] trade secret claim” is manifestly prejudicial to the WPP
Companies, and taxing on the Court.159 TRA had ample opportunity to identify its
alleged trade secrets with specificity prior to the close of discovery. Because it
failed to do so, its trade secrets claim is dismissed.160
2.

TRA Has Failed to Allege Protectable Trade Secrets and/or
Evidence of Use

An alternate ground for my holding is that, even ignoring its
deficiencies in discovery, TRA has not submitted evidence from which a
reasonable jury could find that the WPP Companies have used its protected trade
secrets. Regarding the TRAnalytics Secret, the record shows that TRA disclosed
most of the properties of TRAnalytics that it now apparently claims as a trade
secret—e.g., its use of APIs to handle legacy clients—and there is no evidence in
the record that the Accused Products made use of any of the technical information
159

Sit-Up Ltd. v. IAC/InterActiveCorp., No. 05 Civ. 9292, 2008 WL
463884, at *9 (S.D.N.Y. Feb. 20, 2008) (dismissing trade secrets claim on
summary judgment for failure to identify trade secrets with specificity in
discovery).
160

See Design Strategy, Inc. v. Davis, 469 F.3d 284, 298 (2d Cir. 2006)
(recognizing that district courts have the authority to exclude evidence for failure
to supplement under 26(e)); Thibeault v. Square D Co., 960 F.2d 239, 245 (1st Cir.
1992) (“While Rule 37(b) requires that a court order must be in effect, and then
violated, as a prerequisite for the imposition of sanctions thereunder, no such
requirement exists under Rule 26(e). The rule itself furnishes fair warning. Thus,
when Rule 26(e) is flouted, district courts possess the power to impose sanctions
without first issuing a firm discovery deadline or an admonitory order.”).
-73-

alleged by TRA.161 For example, the Accused Products make use of an Oracle
database, while TRAnalytics uses Kognitio’s data warehousing capabilities.
The Clients Secret fares no better. The WPP Companies have
produced abundant evidence that TRA disclosed its clients at every turn.162 In any
event, it stretches credulity to suggest that TRA’s client list is a trade secret. There
is no evidence that TRA undertook the type of effort to develop it that would
render such a list proprietary; and “‘widespread canvassing of an obvious and
highly competitive market’ is insufficient to warrant trade secret protection.”163
Finally, TRA has submitted no evidence indicating that the WPP Companies used

161

See supra Part I.C. TRA places heavy reliance on the June 2010
Email from Shababb to Various Kantar/WPP Employees and Officers stating that
“We have determined that we have the ability to replicate the targeting and
optimization capabilities in our InfoSysRPD and/or Xpert systems. . . .” See, e.g.,
Opp. Mem. at 17-18. However, in context, it is clear that Shababb is discussing
replicating the capabilities of TRAnalytics using Kantar Media’s own technology,
as opposed to misappropriating TRA’s trade secrets in order to speed up its product
development.
162

See, e.g. Reply 56.1 ¶ 62 (citing WPP Mem. at 8 & nn. 27-28; Ex. A,
HARVEY_0004588, May 2010 ARF presentation, slide 14 (disclosing “partial list
of customers” including “P&G, Kraft, Mars, Merck, General Mills, Intel,
MediaVest, GroupM, Zenith OptiMedia, CBS, Viacom Networks, FX, National
Geographic Channel”); Ex. E, KANTAR_0383848, April 2009 ARF presentation,
slide 7; Ex. S, ‘940 Patent, Fig. Nos. 35A, 35B, 35C, 37A, 38A, 39A and 40A
(disclosing General Mills as advertiser in sample reports); Ex 1-5; Ex. 5-8; Ex 510; Ex. D (Trade Secret Nos. 15 and 22)).
163

Novus Partners, 2011 WL 4031521, at *3 (quoting Leo Silfen, Inc., 29
N.Y.2d at 394)).
-74-

its client list. It is doubtful that a world-spanning conglomerate like the WPP
Companies would have much use for a list of TRA’s clients—in the pipeline or
otherwise—and, as the WPP Companies point out, “[t]he identified information is
dated February or March 2009, more than a year before mid-2010, when TRA
alleges Kantar began improperly using TRA information[,]” such that the Clients
Secret would be stale prior to the WPP Companies’ alleged use.164
The Strategy Secret fails as a matter of law. Based on the documents
submitted by TRA, the Strategy Secret consists of little more than the aspirations
of a company struggling to achieve revenue traction. For example, TRA accuses
the WPP Companies of misappropriating its secret plan to perform a “course
correction” with the “focus” of “build[ing] [a] platform for [$100 million in]
revenues. . . .”165 This is assuredly a worthy goal. However, “information
consisting simply of business possibilities or goals is not a trade secret.”166 Thus,
the Strategy Secret is not a protectable trade secret.
The Positioning Secret likewise fails as a matter of law. “Price lists,
product samples, and ‘marketing plans’ are all items that are not, as a matter of

164

Reply 56.1 ¶ 62.

165

Exs. 6-8 to 6-15 to Stockinger Decl.

166

LinkCo, Inc. v. Fujitsu Ltd., 230 F. Supp. 2d 492, 500 (S.D.N.Y.
2002) (citation omitted).
-75-

law, protected as trade secrets.”167 The documents that TRA alleges constitute the
Positioning Secret fit comfortably within this rule. For example, the table attached
to the March 2009 Memo merely compares pertinent features of
TRAnalytics—that were publicly disclosed168 —to features of competitors that were
public knowledge. The remainder of the documents submitted by TRA in support
of the Positioning Secret are, likewise, either drawn from public information, or
merely marketing documents. Thus, the Positioning Secret fails as a matter of law.
Finally, the information that allegedly constitutes the Financial Secret
was publicly disclosed by TRA.169 In any event, TRA fails to prove that the WPP
Companies used the Financial Secrets in any way. Thus, in the end, even if TRA
were not now precluded from supplementing its discovery responses in order to
add specifics to its trade secrets claims, it would merit dismissal.
B.

Non-Patent Damages
1.

TRA’s “Frozen Market” Theory of Non-Patent Damages Is
Insufficient to Reach a Jury

167

Estee Lauder Cos. Inc. v. Batra, 430 F. Supp. 2d 158, 175 (S.D.N.Y.
2006) (quoting Gemmy Indus. Corp. v. Crisha Creations Ltd., No. 04 Civ. 1074,
2004 WL 1406075, at * 12 (S.D.N.Y. June 23, 2004)).
168

See 10/09 TRA Presentation, Ex. W to Rutt Reply Decl.

169

Venture Capital / Growth Equity Investors Table, Ex. 11-8 to
Stockinger Decl.
-76-

As an initial matter, I note that TRA’s argument that the WPP
Companies “froze the market” by initiating this suit is foreclosed by the NoerrPennington doctrine.170 Section 271(d)(3) of Title 35 excepts from patent misuse
claims the actions of a patentee that seeks “to enforce [its] patent rights against
infringement or contributory infringement. . . .”171 Here, the WPP Companies
instituted suit based on a good faith belief that their products do not infringe
TRA’s patents. A party without the monopoly power afforded by a patent should
not be more constrained in its use of the judicial process than a patentee.
In addition, Bennis’ conclusion that the “bad acts” of the WPP
Companies caused TRA to lose value has no basis. To conclude that one event
caused another because it preceded it is to commit the fallacy of post hoc ergo
propter hoc; “‘[i]t is well settled that a causation opinion based solely on a
temporal relationship is not derived from the scientific method and is therefore

170

See DirecTV, 2005 WL 1006030, at *5.

171

35 U.S.C. § 271(d)(3). See also Virginia Panel Corp. v. MAC Panel
Co., 133 F.3d 860, 869 (Fed. Cir. 1997) (“A patentee that has a good faith belief
that its patents are being infringed violates no protected right when it so notifies
infringers. Accordingly, a patentee must be allowed to make its rights known to a
potential infringer so that the latter can determine whether to cease its allegedly
infringing activities, negotiate a license if one is offered, or decide to run the risk
of liability and/or the imposition of an injunction.”).
-77-

insufficient to satisfy the requirements of [Federal Rule of Evidence] 702.’”172
“[I]t is plain that one cannot determine whether something caused an observed
effect without controlling for other equally plausible causes of that effect.”173
Bennis notes that investors during TRA’s Series D financing round
declined to invest because of “[lack of] revenue traction.”174 She concludes, “[t]o
the extent that TRA’s inability to meet revenue and profit expectations were
exacerbated at the time of the Series D round, it is reasonable to believe it was
caused by Counterclaim Defendants’ alleged actions, which disrupted the market
with a new product and froze the market with respect to overall sales. . . .”175 Such
an ipse dixit explanation ignores the undisputed fact that “[e]leven prospective
investors in TRA’s failed [fourth] financing round in 2012 identified as a concern
TRA’s lack of revenue traction given amount of capital raised to date.”176 Because
172

R.F.M.A.S., Inc. v. So, 748 F. Supp. 2d 244, 273 (S.D.N.Y. 2010)
(quoting Awad v. Merck & Co., 99 F. Supp. 2d 301, 304 (S.D.N.Y. 1999)).
173

Id.

174

Bennis Rpt., Ex. 20-9.

175

Id., Ex. 20-10 (quotation marks and citation omitted).

176

WPP 56.1 ¶ 22 (emphasis added). See TRA 56.1 ¶ 22 (disputing not
the fact that investors expressed this concern, but the inferences to be drawn from
that fact). TRA argues that its revenue to capital ratio improved between the Series
C and D rounds, such that investors would have financed the Series D round but
for Kantar’s “bad acts.” See Surreply Mem. at 14. While Bennis tracks revenue
figures during the Series C and D rounds, she altogether ignores the ratio of
-78-

Bennis fails to rule out this alternative explanation for TRA’s failed financing
round, her opinion that the WPP Companies’ bad acts caused TRA’s decline in
value does not satisfy the requirements of Rule 702.
Further, Bennis’ theory that the WPP Companies “froze the market”
appears to stem from Chopra’s deposition testimony.177 Under Federal Rule of
Evidence 703, “a party cannot call an expert simply as a conduit for introducing
hearsay under the guise that the testifying expert used the hearsay as the basis of
[her] testimony.”178 This rule is particularly applicable here, where the portion of
Chopra’s testimony relied upon by Bennis is merely relaying speculation conveyed
to Chopra by unnamed—and self-interested—sources at TRA.179
All in all, then, Bennis’ frozen market opinion rests on speculation,
unmoored from the scientific method, and conveyed through two layers of hearsay.
For this reason, it is excluded.
The only other evidence TRA offers in support of the frozen market

revenue to capital and fails to account for the amount of capital raised to date. See
TRA’s Revenue Multiple Trajectory Chart, App. B to Bennis Rpt., Ex. CC to
Brantley Decl.
177

See supra Part II.D.

178

Marvel Characters, Inc. v. Kirby, 726 F.3d 119 (2d Cir. 2013)
(quotation marks and citations omitted).
179

See Chopra Dep. at 83:19-84:5.
-79-

theory is Lieberman’s testimony.180 To the extent Lieberman’s testimony rests on
the WPP Companies initiating suit, it is foreclosed by the Noerr-Pennington
doctrine. The balance of Lieberman’s testimony rests on speculation. Nielsen—a
competitor of TRA and Kantar Media—occupied seventy-five percent of TRA’s
broader market (i.e., advertising analytics),181 the Accused Products had fewer than
half a million in revenues,182 and TRA increased its prices after the introduction of
the Accused Products.183 Given these facts, Lieberman’s testimony that TRA
suffered a competitive injury from the release of the Accused Products is an
insufficient basis for a reasonable jury to find that TRA suffered damages
measured by Lieberman’s dream of building a platform for $100 million in
revenue. The frozen market theory of damages is excluded.
2.

Dismissing TRA’s Frozen Market Theory Does Not Dispose
of TRA’s Non-Patent Claims

Contrary to the WPP Companies’ argument, excluding the frozen
market theory of damages does not dispose of TRA’s non-patent claims. TRA
notes in its opposition brief that it may be entitled to nominal damages for its

180

See Lieberman Dep. at 168:23-169:22; 295:8-13.

181

Compare WPP 56.1 ¶ 26 with TRA 56.1 ¶ 26 (citations omitted).

182

See WPP 56.1 ¶ 20 (citing Bennis Rpt. at 66).

183

See id. ¶ 21 (citations omitted).
-80-

breach of contract claim; attorneys’ fees for its breach of fiduciary duty claim; and
equitable relief for both claims.184 The WPP Companies do not dispute this point
in their reply brief.
C.

Patent Infringement
For the following reasons, the WPP Companies’ motion for a

summary judgment of non-infringement is granted, as no reasonable jury could
find that: (1) the CPG Products practice the purchase data limitation; and (2) the
Auto Products practice double-blind matching, or make use of a thesaurus. This
holding moots the remainder of the WPP Companies’ non-infringement arguments,
as well as its arguments as to patent invalidity.
1.

The CPG Products Do Not Collect Purchase Data, and
Therefore Do Not Infringe the Asserted Patent Claims
Either Literally or Under the Doctrine of Equivalents

The parties’ dispute about whether the CPG Products practice the
purchase data limitation of the patents in suit is ripe for summary adjudication, as it
turns on issues of claim construction, rather than disputed questions of fact. The
WPP Companies contend that the CPG Products do not collect or use purchase

184

See Opp. Mem. at 40 (citing T&N PLC v. Fred S. James & Co., 29
F.3d 57, 60 (2d Cir. 1994) (“[N]ominal damages are always available for breach of
contract.”); William Penn P’ship v. Saliba, 13 A.3d 749, 759 (Del. 2011)
(attorneys’ fees); Gotham Ptrs., L.P. v. Hallwood Realty Ptrs., L.P., 817 A.2d 160,
176 (Del. Sup. Ct. 2002) (equitable relief for breach of fiduciary duty claim)).
-81-

data—or, indeed, any information about when a purchase was made—although
they do categorize users into “user types.” All of the patents in suit distinguish
between “purchase data” and “user types.” For example, the specification of the
‘301 Patent provides that “[t]he ROI report may use the following data as inputs,
for example: . . . purchase data; user type (heavy, medium, or light category
purchase rate). . . .”185
Based on Mela’s declaration, TRA contends that this is a distinction
without a difference, because any classification of users into user-types must be
based on survey evidence showing those users’ purchases of a product over a
“given time.” In Mela’s opinion, the various inputs listed in the patents-insuit—e.g., dayparts, time selection (current and base period); report date range;
purchase data; user type (heavy, medium, or light category purchase rate); user
loyalty; and/or, report groupings—may overlap: “‘[T]ime selection,’ ‘date range,’
and ‘daypart’ (i.e., what part of the day) are all examples of inputs, and interrelated

185

‘301 Patent at col. 29:48-51. See ‘940 Patent at col. 26:61-64 (“The
[True Target Index] report may use the following data as inputs, for example:
campaign data; time selection (current and base period); report date range;
consumer purchase data; user type (e.g., heavy, medium, light category
purchase)”); ‘993 Patent at col. 28:1-4 (“The ROI report may use the following
data as inputs, for example: . . . purchase data; user type (heavy, medium, or light
category purchase rate)”).
-82-

types of temporal data, yet are listed separately.”186 In short, TRA argues that
although “user type” and “purchase data” are distinguished in the patents-in-suit,
this distinction is illusory, as “user types” is an input that may be subsumed within
“purchase data,” just as “time selection” is an input that may be subsumed within
“daypart.”
The fatal flaw in this theory is that the input “user type” is
categorically distinct from the temporal inputs relied upon by Mela. A “user type”
designates the relative positions of users within a set, but conveys nothing about
time. By way of analogy, designating three runners as “slow, fast, and fastest”
does not convey anything about their top one hundred meter dash time. In
contrast, collecting purchase data—i.e., “data describing the purchase of a
particular product at a given time”—plainly requires collecting data that conveys
when a purchase was made.
The evidence establishes that the CPG Products do not make use of
temporal data at all; instead, they collect only user types. Accordingly, Mela’s
opinion provides insufficient grounds for a reasonable jury to find that the CPG
Products practice the Purchase Data Limitation.
Finally, TRA argues that Kantar Media should be judicially estopped

186

Mela Decl. ¶ 16.
-83-

from denying that the CPG Products meet the purchase data limitation because
Kantar Media had argued at the preliminary injunction stage that its current method
of matching viewer data to purchase data is “virtually identical to the one that
[Kantar Media] itself started using in 2005 — years before TRA even existed, let
alone filed its patent application.”187 However, in the Second Circuit,188 “judicial
estoppel applies only when a tribunal in a prior separate proceeding has relied on a
party’s inconsistent factual representations and rendered a favorable decision.”189
Here, the Court relied on a 1985 article by Gerald J. Eskin — not on Kantar
Media’s argument — to find that prior art taught the matching of purchase data and
viewer data, and thus, denied TRA’s preliminary injunction motion.190
In addition, TRA’s citation to Kantar Media’s earlier brief is not
relevant to the Purchase Data Limitation at this juncture because that brief makes

187

Plaintiffs’ Opposition to Defendant’s Motion for Preliminary
Injunction (“Kantar Media Preliminary Injunction Opp.”), Doc. No. 31, at 13.
188

In considering this argument, the Court applies Second Circuit law, as
the issue of judicial estoppel is not unique to patent cases. See U.S. Philips Corp.
v. Sears Roebuck & Co., 55 F.3d 592, 596 n.3 (Fed. Cir. 1995) (collecting cases).
189

Lia v. Saporito, — Fed. App’x —, 2013 WL 5645562, at *2 (2d Cir.
2013) (citing Adler v. Pataki, 185 F.3d 35, 41 n.3 (2d Cir.1999)) (emphasis added).
190

See 9/22/11 Order, Doc. No. 43, at 18 (citing March 1985 Tracking
Advertising and Promotion Performance with Single-Source Data by Gerald J.
Eskin).
-84-

no mention of purchase data “at a given time.”191 In fact, the preliminary
injunction briefing occurred nearly a year before the term “purchase data” was
even construed.
Finally, Mela’s opinion that the CPG Products infringe under the
doctrine of equivalents is foreclosed. Mela’s report contains less than a page of
conclusory statements about the doctrine of equivalents and says nothing about
purchase data, but his declaration — submitted at the summary judgment stage —
includes two pages of testimony on the purchase data element.192 TRA’s untimely
expert disclosure is barred by Rule 37(c).193 In any event, Mela’s doctrine of
equivalents opinion—that collecting survey data over a period of time to generate
user types is the equivalent of collecting purchase data—is merely a repackaged
form of TRA’s literal infringement theory.194 This repackaging adds nothing to the
analysis above. Accordingly, TRA’s doctrine of equivalents theory must be

191

See Kantar Media Preliminary Injunction Opp. at 2 (arguing, among
other things, that TRA’s patents are obvious, and alleging that the CPG Products
“incorporate[] a simple ‘blind matching’ technique that is a staple of market
research, allowing [Kantar Media] to match viewer data and purchase data. . . .”).
192

See Mela Decl. ¶¶ 17-18.

193

See Fed. R. Civ. P. 37(c) (“If a party fails to provide information or
identify a witness as required by Rule 26(a) or (e), the party is not allowed to use
that information or witness to supply evidence on a motion . . . .”).
194

See Mela Decl. ¶¶ 17-18.
-85-

dismissed.
In sum, TRA’s patent infringement claims pertaining to the CPG
Products are dismissed.
2.

The Auto Products Do Not Utilize Double Blind Matching

In opposition to the WPP Companies’ argument that the Auto
Products do not practice double-blind matching, TRA submits the Experian
Contract, and objects to Shababb’s declaration “describ[ing] what J.D. Power (a
third party) sends to Experian (a third party).”195 TRA’s objection is overruled.
Shababb’s declaration describes the operation of the Accused Products, a subject
that, as the president of Kantar Media—the ultimate recipient of the data in
question—he has personal knowledge.196
TRA’s other basis for resisting summary judgment—the Experian
Contract—is a legally insufficient for a reasonable juror to conclude that the Auto
Products practice double-blind matching. I note initially that the Experian
Contract is of limited probative value, as it is unsigned.197

195

Opp. Mem. at 28 (citing Fed. R. Civ. P. 56(c)(4), Shababb Decl. ¶ 21).

196

See Shababb Decl. ¶ 21 (describing the operation of the Accused

Products).
197

Cf. Tampone v. Richmond, No. 10 Civ. 11776, 2013 WL 118431, at
*1 (E.D. Mich. Jan. 9, 2013) (granting motion in limine to exclude unsigned
operating agreement).
-86-

However, the real problem with TRA’s use of the Experian Contract
is that it does not contradict Shababb’s declaration relating to the functioning of the
Auto Products. Shababb testifies in pertinent part that:
Experian. . . appends J.D.Power purchase attribute data to the
DirecTV [identifier], removes all PII, and sends the data to
[Kantar Media]. [Kantar Media] uses the same DirecTV
[identifier] to correlate STB data with J.D.Power purchase
attribute data.198
The Experian Contract provides that Experian is to receive “J.D.
Power’s data file, which include [sp] the following data fields: Unique Key
[identifier], last name, address, city, state, zip code[,]” and that Experian is to use
this data to “perform anonymous, blind matching of it to certain Client data . . .
provided to Experian . . . .”199 Nothing in this language suggests that Shababb’s
testimony relating to the operation of the Auto Products is erroneous.
As such, TRA’s opposition to a summary judgment of noninfringement for the Auto Products boils down to a “broad, conclusory attack[] on
the credibility of [Shababb] [that] [] [can]not, by [itself], present [a] question[] of
material fact.”200 Without evidence contradicting Shababb’s testimony, a trial on

198

Shababb Decl. ¶ 21.

199

Experian Contract.

200

Island Software and Computer Serv., Inc. v. Microsoft Corp., 413
F.3d 257, 261 (2d Cir. 2005) (citation omitted) (holding that party who bears the
-87-

whether the Auto Products perform double-blind matching—or utilize a
‘thesaurus’—would consist entirely of TRA’s attorneys’ speculation that Shababb
is lying about how his company’s products work. Accordingly, the WPP
Companies’ motion for a summary judgment of non-infringement by the Auto
Products is granted.201
D.

The WPP Companies’ Patent Invalidity Contentions Are Moot
The WPP Companies raised their patent invalidity contentions as

affirmative defenses to TRA’s patent infringement claims, and the only affirmative
relief they seek is a declaratory judgment of non-infringement.202 In consequence,
the WPP Companies’ motion for a summary judgment of invalidity is moot.203

burden of proof at trial cannot dispute the evidence offered by opposing party on
summary judgment with a general attack on witnesses’ honesty).
201

Cf. Opals on Ice Lingerie v. Body Lines, Inc., 320 F.3d 362, 370 n.3
(2d Cir. 2003) (noting that “frivolous, gauzy, spurious, . . . [and] speculative”
submissions are inadequate to establish the showing necessary to survive summary
judgment) (citations omitted).
202

See Kantar Media’s Answer to TRA’s Amended Counterclaims at 38
(raising invalidity defenses to TRA’s patent infringement counterclaims). Cf. WPP
Mem. at 3 n.7 (“Should the Court grant the non-infringement portions of this
motion, it need not reach invalidity.”).
203

See Hon Hai Precision Indus. Co., Ltd. v. Wi-LAN, Inc., No. 12 Civ.
7900, 2013 WL 2322675, at *2 n.11 (S.D.N.Y. May 28, 2013) (citing Solomon
Techs., Inc. v. International Trade Comm., 524 F.3d 1310, 1319 (Fed. Cir. 2008)).
-88-

V.

CONCLUSION

In light of the foregoing: (1) the WPP Companies' motion for

summary judgment as to non-infringement is granted; (2) the WPP Companies'
motion for summary judgment as to invalidity is mooted by my holding of noninfringement; and (3) TRA's 'frozen market' theory of damages for its non-patent
claims is excluded. The Clerk of the Court is directed to close this motion (Doc.
No. 122). A Conference to discuss whether the remaining claims should be
remanded to state court is scheduled for December 20,2013 at 4:30 p.m

SO ORDERED:

Dated:

New York, New York
November 25,2013

-89­

- Appearances For Defendant and Counterclaim-Plaintiff TRA:
Nathan Lowenstein, Esq.
Perry Mark Goldberg, Esq.
Trevor Stockinger, Esq.
Goldberg, Lowenstein & Weatherwax LLP
11400 West Olympic Blvd., Suite 400
Los Angeles, California 90064
[phone]
For Plaintiffs and Counterclaim-Defendants the WPP Companies:
Marc Rachman, Esq.
Andrew Keisner, Esq.
Davis & Gilbert LLP
1740 Broadway
New York, New York 10019
[phone]
Michael A. Albert, Esq.
John Strand, Esq.
Charles Steenburg, Esq.
Eric Rutt, Esq.
Wolf, Greenfield & Sacks, P.C.
600 Atlantic Ave.
Boston, Massachusetts 02210
[phone]

-90-