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

Filing 204

OPINION AND ORDER re: 191 MOTION for Attorney Fees, filed by TNS Media Research, LLC, WPP Group USA, Inc., Cavendish Square Holding B.V., WPP plc, Kantar Group Ltd., Kantar Retail America, Inc., WPP PLC. For the foregoing reasons, Kantar's motion for attorneys' fees and non-taxable expenses is GRANTED. Kantar is directed to submit a detailed request for the fees and expenses incurred as a direct result of TRA's conduct identified in this Order. Such submission must be made by November 24, 2014. (Signed by Judge Shira A. Scheindlin on 11/4/2014) (ja)

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK
TNS MEDIA RESEARCH, LLC (d/b/a
KANTAR MEDIA AUDIENCES) and
CAVENDISH SQUARE HOLDING, B.V.,

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- against TIVO RESEARCH AND ANALYTICS,
INC.,
OPINION AND ORDER
Defendant.
TIVO RESEARCH AND ANALYTICS,
INC.,

11 Civ. 4039 (SAS)

Counterclaim-Plain tiff,
- against TNS 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.:
I.

INTRODUCTION
On June 14, 2011, TNS Media Research, LLC (d/b/a Kantar Media

1

l
.
~

i

Audiences) and Cavendish Square Holding, B.V. (collectively “Kantar”) initiated
this litigation against TiVo Research and Analytics, Inc. (“TRA”).1 Kantar sought
a declaratory judgment of non-infringement of United States Patent No. 7,729,940
(the “‘940 Patent”), of which TRA is the sole assignee.2 TRA, in response,
asserted the following counterclaims: (1) patent infringement of the ‘940 Patent;
(2) misappropriation of trade secrets; (3) aiding and abetting breach of fiduciary
duty; and (4) breach of contract.3 TRA later amended its counterclaims to include
allegations of infringement of United States Patent No. 8,000,993 (the “‘993
Patent”) and United States Patent No. 8,112,301 (the “‘301 Patent”) — of which
TRA is the sole assignee for both.
At the close of discovery, Kantar moved for summary judgment on
TRA’s patent infringement and trade secret misappropriation claims, as well as for
no damages on TRA’s fiduciary duty, trade secrets, and breach of contract

1

On October 25, 2013, TRA changed its name from TRA Global, Inc.
to TiVo Research and Analytics, Inc. See Stipulation and Order at 2 [Dkt. No.
188].
2

See Complaint ¶¶ 8, 16-18. Kantar also alleged breach of contract,
but subsequently dropped this claim. See id. ¶¶ 19-22 (detailing Kantar’s breach of
contract claim); see also 5/1/13 Endorsed Letter at 1 [Dkt. No. 119] (“Kantar is . . .
dropping its breach of contract claim against TRA.”).
3

See Answer ¶¶ 105-129; see also Amended Answer ¶¶ 104-151.
2

counterclaims.4 I granted summary judgment as to “non-infringement, trade
secrets, and non-patent damages.”5
On July 2, 2014, the parties stipulated to nominal damages of $1 for
TRA’s breach of contract and fiduciary duty claims.6 The parties then stipulated to
the entry of final judgment,7 at which point, TRA appealed the final judgment to
the United States Court of Appeals for the Federal Circuit.8
Kantar now moves for attorneys’ fees and non-taxable expenses
pursuant to Federal Rule of Civil Procedure 54(b), Section 285 of Title 35 of the
United States Code, and the Court’s inherent power.9 For the following reasons,
Kantar’s motion is GRANTED.
II.

BACKGROUND

4

See generally Counterclaim-Defendants’ Notice of Motion and
Motion for Summary Judgment [Dkt. No. 122].
5

TNS Media Research, LLC v. TRA Global, Inc., 984 F. Supp. 2d 205,
208 (S.D.N.Y. 2013) (“TNS IV”).
6

See generally Stipulation and Order.

7

See generally Judgment [Dkt. No. 189].

8

See generally Notice of Appeal [Dkt. No. 194].

9

See generally Counterclaim-Defendants’ Notice of Motion for
Attorneys’ Fees [Dkt. No. 191]. Kantar presently estimates its sum at
approximately five million dollars. See Counterclaim-Defendants’ Memorandum
in Support of Their Motion for Attorneys’ Fees (“Kantar AF Mem.”) at 2 n.2.
3

A.

Complaint, Counterclaims, and Preliminary Injunction

The underlying dispute in this case involves intellectual property that
relates to the goal of “cross-referencing huge amounts of data from a variety of
sources in order to determine which television programs are the best match for an
advertiser seeking to market specific products, while protecting the privacy
interests of television viewers.”10 After Kantar commenced this action by seeking
a declaration of non-infringement of the ‘940 Patent, TRA counterclaimed that
Kantar infringed upon Claim 71 of the ‘940 Patent, which, in sum, teaches a
method for:
(1) using a computer to 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.11
On July 5, 2011, TRA moved for a preliminary injunction to enjoin

10

Amended Answer ¶ 22.

11

TNS IV, 984 F. Supp. 2d at 210-11.
4

Kantar from “making, selling, and offering for sale its infringing product[.]”12
Kantar opposed the preliminary injunction motion by arguing that the ‘940 Patent
was invalid.13 Kantar also argued that its products did not infringe Claim 71 of the
‘940 Patent.14 In its brief, Kantar moved sequentially through each disputed claim
term and discussed how its products did not practice those limitations.15 In so
doing, Kantar noted, among other things, that its products do not apply a
“cleansing and editing algorithm to the matched and stored data” as required in
Claim 71 of the ‘940 Patent.16 Kantar argued that its products only apply such an
algorithm before, not after, the data is matched and stored.17 TRA argued briefly in
reply that the claim term at issue here — “[applying a] cleansing and editing
algorithm to the matched and stored data” — “does not impose a sequential

12

Notice of Motion and Motion for Preliminary Injunction Against
Plaintiff/Counterclaim-Defendant TNS Media Research, LLC d/b/a Kantar Media
Audiences at 1 [Dkt. No. 11].
13

See Plaintiffs’ Opposition to Defendant’s Motion for a Preliminary
Injunction at 12-21.
14

See id. at 9-12.

15

See id.

16

See id. at 11-12.

17

See id.
5

limitation.”18
I denied TRA’s motion finding that Kantar had raised a substantial
question about the validity of Claim 71 of the ‘940 Patent.19 In denying TRA’s
motion, I also found, among other things, that (1) the disputed language in Claim
71 of the ‘940 Patent — “[applying a] cleansing and editing algorithm to the
matched and stored data” — required the algorithm to be applied after the data is
matched and stored;20 (2) TRA’s argument that the algorithm could be applied
before the data is matched and stored “does violence to the ordinary grammatical
understanding of the past tense[;]”21 (3) prior art substantially taught all of the
limitations in Claim 71;22 and (4) an article written by Gerald J. Eskin constituted
prior art that “taught to compare information about what programs and
advertisements households actually saw with purchasing data[.]”23 I did not,

18

Reply Memorandum in Support of Preliminary Injunction Against
Plaintiff/Counterclaim-Defendant TNS Media Research, LLC d/b/a Kantar Media
Audiences at 8.
19

See generally TNS Media Research, LLC v. TRA Global, Inc., No. 11
Civ. 4039, 2011 WL 4425415, at *6 (S.D.N.Y. Sept. 22, 2011) (“TNS I”).
20

See id. at *5.

21

Id.

22

See id. at *6.

23

Id. at *5 & n.61.
6

however, reach the issue of infringement in denying TRA’s motion for preliminary
injunctive relief.24
B.

TRA Amends Its Counterclaims
On March 21, 2012, TRA sought and obtained permission to file

supplemental amended counterclaims.25 TRA then added allegations of Kantar’s
infringement of two patents — the ‘993 Patent and the ‘301 Patent — that had
been issued after the filing of TRA’s initial counterclaims.26
E.

Claim Construction
On July 6, 2012, I held a Markman hearing.27 Prior to the hearing, the

parties stipulated to the meaning of fifteen disputed claim terms, leaving only three
remaining for adjudication: (1) “household level data associated with multiple
consumer households[;]” (2) “household level data[;]” and (3) “cleansing and

24

See id. at *3 (noting that only “[i]f the court finds that a patent is
valid, the court should proceed to analyze infringement claims”).
25

See generally Notice of Motion for Leave to File TRA Global, Inc.’s
Supplemental and Amended Counterclaims [Dkt. No. 56]; TNS Media Research,
LLC v. TRA Global, Inc., No. 11 Civ. 4039, 2012 WL 2052679 (S.D.N.Y. June 4,
2012).
26

See Amended Answer ¶¶ 116-127.

27

See generally Markman Hearing Transcript [Dkt. No. 87].
7

editing algorithm[.]”28 On August 29, 2012, I issued an Opinion and Order
construing the three claim terms in dispute in the ‘940 Patent.29 I adopted TRA’s
proposed construction with respect to disputed claim term (1),30 but adopted
Kantar’s proposed contstruction with respect to disputed claim term (3).31 I
declined to construe disputed claim term (2) because my construction of (1)
“resolved all relevant questions as to the meaning of the claim words [in (2)].”32
In adopting Kantar’s proposed construction of the phrase “cleansing
and editing algorithm,” I held that “TRA’s proposed construction would . . . render
meaningless the amendments TRA added after the PTO rejected the original
versions of the claim language” and that “TRA should not now be permitted to

28

See TNS Media Research, LLC v. TRA Global, Inc., No. 11 Civ. 4039,
2012 WL 3756325, at *3 (S.D.N.Y. Aug. 29, 2012) (“TNS III”); see also Parties
Joint Claim Construction Statement at 3-4 [Dkt. No. 51].
29

See generally TNS III, 2012 WL 3756325. The parties stipulated to
the constructions of the other claim terms in the ‘940 Patent. See id. at *3 (citing
Parties Joint Claim Construction Statement at 3-4). The parties also stipulated to
all of the claim terms in the ‘993 Patent and the ‘301 Patent. See generally 9/19/12
Joint Claim Construction Statement - Stipulations and Order Concerning Claim
Construction [Dkt. No. 93].
30

See TNS III, 2012 WL 3756325, at *7, *11.

31

See id. at *13.

32

Id. at *11.
8

adopt a construction that undoes this prosecution history.” 33
I also found that “[a]ccording to both proposed constructions,
[several] algorithms which are described in the specification can properly be
considered ‘cleansing and editing’ algorithms[.]”34 One such “algorithm . . .
corrects for the ‘false positive’ problem of data collected from a set-top box that
remains on even though the associated television has been turned off.” 35
F.

April 2013 Status Conference
On April 23, 2013, the Court held a status conference to discuss the

possibility of eliminating some claims from the litigation — which then consisted
of twenty-seven patent claims and twenty-four trade secret claims.36 At the
conference I intimated that “Kantar has the better of it in saying this thing needs to
be slimmed down. This is quite ridiculous.”37 I added that “the case is sprawling
and out of control, and it would be poor judicial management to let it continue in a

33

Id. at *13.

34

Id. at *12.

35

Id.

36

See 4/23/13 Status Conference Transcript (“4/23/13 Tr.”) at 3:4-5, 15-

37

Id. at 2:23-24.

21.

9

sprawling and uncontrolled manner.”38 I then ordered the parties to meet and
confer by May 2, 2013 and agree on how to narrow the claims in this case.39 In an
Endorsed Letter dated May 1, 2013, TRA agreed to reduce its number of patent
claims to fifteen and its number of trade secret claims to five.40 The fifteen
remaining patent claims related to two groups of products that TRA alleged
infringed on its patents — the CPG Products and the Auto Products (collectively
the “Accused Products”).
I also noted at the April 23 status conference that although “I can’t
know whether what they tell me is accurate[,] [Kantar alleges] that one of the
experts for TRA ignores my claim construction.”41 I continued, “[TRA] may need
to think about whether to continue pressing . . . parts of [its] expert Mela[’s report],
because after I have warned you not to do it, if you do it, and Kantar is right, I am
telling you now, I have got too much on my plate to waste time with frivolous
motions. I will turn right to Rule 11. I don’t say that lightly because I hate
sanctions.”42
38

Id. at 3:10-13.

39

See id. at 12:23-24.

40

See 5/1/13 Endorsed Letter at 1 [Dkt. No. 119].

41

4/23/12 Tr. at 4:3-4, 6-7.

42

Id. at 4:24-5:4.
10

G.

Summary Judgment
1.

Kantar’s Arguments in Favor of Summary Judgment

On June 5, 2013, Kantar moved against TRA for summary
judgment.43 Kantar sought to “dispose of the case as a whole,” arguing that “TRA
faces a ‘lack of evidence’ as to an ‘essential element’ of each of [its] claims, even
after extensive discovery.”44 Kantar argued, with respect to TRA’s patent
infringement theories, 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.45
2.

TRA’s Opposition to Summary Judgment
a.

TRA’s Argument that Kantar’s Products Apply a

43

See generally Counterclaim-Defendants’ Notice of Motion and
Motion for Summary Judgment [Dkt. No. 122].
44

Counterclaim-Defendants’ Memorandum in Support of Their Motion
for Summary Judgment at 1.
45

TNS IV, 984 F. Supp. 2d. at 218.
11

Cleansing and Editing Algorithm After the Data Is
Matched and Stored
In opposition to the motion, TRA asserted that Kantar’s products did
in fact apply a “cleansing and editing algorithm” after the data had been matched
and stored.46 TRA proposed two ways in which Kantar’s products apply such an
algorithm in accordance with the Court’s previous claim constructions.47 One way
was by a “false positive” algorithm.48 However, in supporting this contention,
TRA relied on the deposition testimony of Alex North, a Kantar employee.49 In
that deposition, the following exchange occurred between TRA’s attorney and
North:
Q:

A:
Q:

[L]et’s say you wanted to focus on consumers who saw a
particular program and you wanted to make sure that they
saw enough of the program to make it worthy of being in
your sample. For example, let’s say they had to watch for
at least a minute for it to be worthy of being in the sample
and not — not a false positive.
Okay
Can you run those sorts of metrics to refine your sample to
weed out false positives and things that might corrupt the
data?

...
46

See Counterclaim-Plaintiff’s Memorandum in Opposition to Motion
for Summary Judgment (“TRA SJ Opp.”) at 28-29.
47

See id.

48

See id.

49

See id. at 29.
12

A:

If your definition of a false positive is you don’t want
anyone who’s watched for less than one minute, for
example, I believe that’s one of the criteria in [one of
Kantar’s products].50

This definition of “false positive” differs from that which the Court adopted in its
claim construction opinion.51 Furthermore, TRA’s expert, Carl Mela, adopted this
deposition testimony, and therefore this different definition of “false positive,” in
his declaration, which TRA attached as an exhibit to its opposition.52 Mela stated:
I understand that the Court in its Claim Construction Order itself,
quoting from the patent, mentioned examples of cleansing and
editing algorithms such as false positive algorithms and intab
determination algorithms. . . . [I]n my opinion Kantar performs
these types of cleansing and editing algorithms in a way that
satisfies claim 71 [of the ‘940 Patent]. Alex North has indicated
that [one of Kantar’s products] can run false positive
algorithms[.]53
TRA, however, did not mention this argument again — not in its surreply nor at

50

Deposition Transcript of Alex North, Ex. 3 to Declaration of Trevor
V. Stockinger (counsel for TRA) in Support of TRA’s Opposition to
Counterclaim–Defendants’ Motion for Summary Judgment (“Stockinger Decl.”),
at 105:23-106:25.
51

See TNS III, 2012 WL 3756325, at *12 (“[T]he ‘false positive’
problem of data collected from a set-top box that remains on even though the
associated television has been turned off.”).
52

See Declaration of Carl F. Mela, Ph.D., in Support of
Counterclaim–Plaintiff’s Memorandum in Support of Its Opposition to the Motion
for Summary Judgment (“Mela Decl.”) ¶ 13.
53

Id.
13

oral argument. Nor was this argument addressed by the Court in its summary
judgment opinion.
b.

TRA’s Doctrine of Equivalents Theory

TRA also opposed summary judgment by arguing that in addition to
the CPG Products literally infringing its patents, they also infringed under the
doctrine of equivalents.54 TRA had initially raised this argument in Mela’s
February 2, 2013 expert report, but in less than a page and without discussing
“purchase data” — the critical claim term.55 With its opposition, however, TRA
submitted a declaration from Mela that contained two full paragraphs explaining
TRA’s doctrine of equivalents theory, including a discussion of “purchase data.” 56
In its reply brief, Kantar objected to this new, more-substantiated doctrine of
equivalents theory as untimely and barred by Federal Rule of Civil Procedure
37(c).57
54

See TRA SJ Opp. at 25-26.

55

See Excerpts from Amended Export Report and Disclosure of C. Mela
Feb. 11, 2013, Ex. C to Declaration of Eric Rutt in Support of CounterclaimDefendants’ Motion for Summary Judgment at 213.
56

See Mela Decl. ¶¶ 17-19.

57

See Counterclaim-Defendants’ Reply Memorandum in Support of
Their Motion for Summary Judgment (“Kantar SJ Reply”) at 13. Rule 37(c)
provides, “[i]f 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, at a hearing, or at a trial, unless the failure was
14

c.

TRA’s Judicial Estoppel Argument

TRA also argued that “Kantar should be judicially estopped from
contending that its products do not collect and utilize the ‘purchase data’ in
question.”58 TRA contended that the Court, in denying TRA’s motion for a
preliminary injunction, had relied on Kantar’s position “that its products utilized
‘purchase data’ [in order to find] that [Kantar’s] prior art was invalidating.”59 But
TRA asserted that now to avoid infringement “Kantar takes the exact opposite
position on purchase data, claiming its products do not utilize ‘purchase data.’”60
d.

TRA’s Argument that the Auto Products Practice
Double-Blind Matching

TRA argued as well that the Auto Products practice double-blind
matching.61 In an effort to rebut the testimony of Kantar’s president, George
Shababb, that the Auto Products do not practice double-blind matching, TRA
produced a contract between Experian and J.D. Power & Associates (the “Experian

substantially justified or is harmless.” Fed. R. Civ. P. 37(c).
58

TRA SJ Opp. at 21.

59

Id. at 22.

60

Id.

61

See id. at 27.
15

Contract”) that TRA claimed contradicted Shababb’s testimony.62 TRA also
claimed that Shababb lacked personal knowledge from which to testify about
whether or not the Auto Products practice double-blind matching.63
3.

The Court Grants Summary Judgment

On November 25, 2013, I issued an Opinion and Order on Kantar’s
motion for summary judgment.64 I granted the motion, but only as to noninfringement, misappropriation of trade secrets, and non-patent damages.65 I held
that TRA still “may be entitled to nominal damages for its breach of contract
claim; attorneys’ fees for its breach of fiduciary duty claim; and equitable relief for
both claims.”66
a.

Dismissal of TRA’s Trade Secret Claims

I dismissed all five of TRA’s trade secret claims: (1) TRAnalytics
Secret; (2) Clients Secret; (3) Strategy Secret; (4) Positioning Secret; and (5)
Financial Secret.67 I first noted that

62

See id.

63

See id. at 28.

64

See TNS IV, 984 F. Supp. 2d 205.

65

See id. at 208.

66

Id. at 242.

67

Id. at 239-40.
16

[a]s a result [of the April 23, 2013 status conference], TRA
dismissed [nineteen] of its twenty-[four] trade secrets. Prior to that
point, TRA asserted hundreds of pages of documents in support
of twenty-[four] alleged trade secrets, with little to no indication
as to how these documents combined to form trade secrets. 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 [a] motion for summary judgment, it instead narrowed the
range of documents in its opposition papers.68
But I then explained that “reviewing these documents . . . consumed considerable
judicial resources. . . . [and] was conducted for little purpose.”69 I sustained
Kantar’s Rule 37 objection to this belated narrowing of documents and dismissed
TRA’s five trade secret claims for violating Federal Rule of Civil Procedure
26(e).70 I noted that “TRA’s ‘Dance of the Seven Veils approach to [its] trade
secret claim’ is manifestly prejudicial to [Kantar], and taxing on the Court.”71
Furthermore, I stated that “TRA had ample opportunity to identify its alleged trade
secrets with specificity prior to the close of discovery . . . [but] it failed to do

68

Id. at 238.

69

Id.

70

See id. at 238-39. Rule 26(e) provides, in pertinent part, “[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. . . .” Fed. R. Civ. P. 26(e).
71

TNS IV, 984 F. Supp. 2d at 239.
17

so[.]”72
As an alternative reason for dismissing TRA’s trade secret claims, I
held that the documents now identified by TRA “[f]ailed to [a]llege [p]rotectable
[t]rade [s]ecrets, and/or [e]vidence of use” by Kantar.73 In each of the five trade
secret claims, I found that either TRA had (1) alleged a non-protectable trade secret
as a matter of law; (2) publicly disclosed the trade secret; (3) not evidenced use of
the trade secret by Kantar; or (4) done some combination of the above.74 The
following summarizes my holdings with respect to each of the five trade secret
claims:
TRAnalytics Secret: “TRA disclosed most of the properties of
TRAnalytics that it now apparently claims as a trade secret . . .
and there is no evidence in the record that [Kantar’s products]
made use of any of the technical information alleged by TRA.”75
Clients Secret: “[Kantar has] produced abundant evidence that
TRA disclosed its clients at every turn. . . . [I]t 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. . . . [Nor is there] evidence

72

Id.

73

Id. “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.’” Id. (citing 5/10/13 Letter from Nathan N. Lowenstein (counsel for
TRA) to John L. Strand (counsel for Kantar), Ex. 2 to Stockinger Decl., at 1).
74

See TNS IV, 984 F. Supp. 2d at 239-40.

75

Id. at 239 (emphasis added).
18

indicating that [Kantar] used its client list.”76
Strategy Secret: “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.”77
Positioning Secret: “The Positioning Secret . . . fails as a matter
of law. ‘Price lists, product samples, and ‘marketing plans’ are all
items that are not, as a matter of law, protected as trade secrets.’
The documents that TRA alleges constitute the Positioning Secret
fit comfortably within this rule.”78
Financial Secret: “[T]he information that allegedly constitutes
the Financial Secret was publicly disclosed by TRA. In any event,
TRA fails to prove that [Kantar] used the Financial Secrets in any
way.”79
As to non-infringement, I held that “[t]he 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.”80 I found that these three products “[d]o
[n]ot [c]ollect [p]urchase [d]ata, and [t]herefore [d]o [n]ot [i]nfringe the [a]sserted
[p]atent [c]laims [e]ither [l]iterally or [u]nder the [d]octrine of [e]quivalents[.]”81

76

Id. (emphasis added).

77

Id. at 240 (emphasis added).

78

Id. (emphasis added).

79

Id. (emphasis added).

80

Id. at 242-43.

81

Id. at 242.
19

In so holding, I barred TRA’s doctrine of equivalents theory for three reasons: (1)
TRA’s timely assertion of its theory in “Mela’s report contains less than a page of
conclusory statements about the doctrine of equivalents and says nothing about
purchase data[;]”82 (2) Mela’s subsequent “declaration — submitted at the
summary judgment stage — [which] include[d] two pages of testimony on the
purchase data element[,]” was “untimely expert disclosure [and] barred by Rule
37(c)[;]”83 and (3) TRA’s doctrine of equivalents opinion “is merely a repackaged
form of TRA’s literal infringement theory.”84 I also rejected TRA’s theory of
judicial estoppel because “the Court [had] relied on a 1985 article by Gerald J.
Eskin — not on [Kantar’s] argument — to find that prior art taught the matching of
purchase data and viewer data[.]”85
As to the Auto Products, I held that they “[d]o [n]ot [u]tilize [d]ouble
[b]lind [m]atching[.]”86 I found that (1) Shabbab had personal knowledge; 87 and
(2) “[n]othing in [the Experian Contract] suggests that Shabbab’s testimony

82

Id. at 244.

83

Id.

84

Id.

85

Id.

86

Id.

87

See id.
20

relating to the operation of the Auto Products is erroneous.” 88 Thus, “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.”89 And therefore,
“[w]ithout evidence contradicting Shabbab’s testimony, a trial on whether the [two
products] perform double-blind matching . . . would consist entirely of TRA’s
attorney’s speculation that Shabbab is lying about how his company’s products
work.”90
H.

Final Judgment and Appeal
In a subsequent Opinion and Order, I held, among other things, that

(1) TRA could not obtain injunctive relief for its breach of fiduciary claim or its
breach of contract claim;91 (2) “TRA may request attorneys’ fees [for its breach of
fiduciary duty claim] only by motion after judgment has entered[;]”92 and (3)
“TRA may be able to recover nominal damages on its [contract and fiduciary duty
88

Id. at 245.

89

Id. (citing Island Software and Computer Serv., Inc. v. Microsoft
Corp., 413 F.3d 257, 261 (2d Cir. 2005) (citation omitted)).
90

Id.

91

See TNS Media Research, LLC v. TRA Global, Inc., No. 11 Civ. 4039,
2014 WL 1370279, at *1 (S.D.N.Y. Apr. 7, 2014).
92

Id. at *2.
21

claims].”93
As a result of these holdings, only one issue remained for trial:
nominal damages for breach of contract and aiding and abetting breach of fiduciary
duty.94 However, on July 2, 2014, the parties stipulated to nominal damages of
$1.95
With no issues remaining for trial, both parties stipulated to the entry
of final judgment.96 On July 22, 2014, TRA appealed the final judgment to the
United States Court of Appeals for the Federal Circuit.97 Kantar now moves
against TRA for an award of attorneys’ fees and non-taxable expenses.
IV.

APPLICABLE LAW
A.

Sanctions Under 35 U.S.C. § 285
Section 285 provides, in its entirety, that “[t]he court in exceptional

cases may award reasonable attorney fees to the prevailing party.” In Octane
Fitness, LLC v. ICON Health & Fitness, Inc., the Supreme Court eschewed the
former interpretation of section 285, and articulated a new, more flexible standard
93

Id.

94

See generally Stipulation and Order.

95

See id. at 1.

96

See generally Judgment.

97

See generally Notice of Appeal.
22

by which to assess sanctions under section 285.98 The Court held that
an “exceptional” case is simply one that stands out from others
with respect to the substantive strength of a party’s litigating
position (considering both the governing law and the facts of the
case) or the unreasonable manner in which the case was litigated.
District courts may determine whether a case is “exceptional” in
the case-by-case exercise of their discretion, considering the
totality of the circumstances.99
Under this standard, “a district court may award fees in the rare case in which a
party’s unreasonable conduct — while not necessarily independently sanctionable
— is nonetheless so ‘exceptional’ as to justify an award of fees.”100 Section 285
“demands a simple discretionary inquiry; it imposes no specific evidentiary
burden, much less such a high one.”101 However, “[t]he purpose of section 285,
unlike that of Rule 11, is not to control the local bar’s litigation practices . . . but is
remedial and for the purpose of compensating the prevailing party for the costs it
incurred in the prosecution or defense of a case where it would be grossly unjust,
based on the baselessness of the suit or because of litigation or Patent Office

98

134 S. Ct. 1749, 1756 (2014) (“Th[e] [former interpretation]
superimpose[d] an inflexible framework onto statutory text that is inherently
flexible.”).
99

Id.

100

Id. at 1757.

101

Id. at 1758.
23

misconduct, to require it to bear its own costs.”102 Section 285, in essence, may
require “in exceptional cases . . . the losing party to reimburse the prevailing party
its attorney fees.”103
B.

Sanctions Under the Court’s Inherent Power
A court “may exercise its inherent power to sanction a party or an

attorney who has ‘acted in bad faith, vexatiously, wantonly, or for oppressive
reasons.’”104 To impose sanctions, “a court must find clear evidence that (1) the
offending party’s claims were entirely without color, and (2) the claims were
brought in bad faith — that is, ‘motivated by improper purposes such as
harassment or delay.’”105 A claim entirely without color “lacks any legal or factual
basis.”106 A colorable claim, however, “has some legal and factual support,

102

Highmark, Inc. v. Allcare Health Mgmt. Sys., Inc., 687 F.3d 1300,
1310 n.1 (Fed. Cir. 2012), vacated and remanded, 134 S. Ct. 1744 (2014). Accord
Gametek LLC v. Zynga, Inc., No. CV 13–2546 RS, 2014 WL 4351414, at *3 (N.D.
Cal. Sept. 2, 2014) (citing Highmark, 687 F.3d at 1310 n.1).
103

Phonometrics, Inc. v. ITT Sheraton Corp., 64 Fed. App’x 219, 222
(Fed. Cir. 2003).
104

Ransmeier v. Mariani, 718 F.3d 64, 68 (2d Cir. 2013) (quoting
Chambers v. NASCO, Inc., 501 U.S. 32 (1991)).
105

Eisemann v. Greene, 204 F.3d 393, 396 (2d Cir. 2000) (quoting
Schlaifer Nance & Co. v. Estate of Warhol, 194 F.3d 323, 336 (2d Cir. 1999)).
106

Sierra Club v. United States Army Corps of Eng’rs, 776 F.2d 383, 390
(2d Cir. 1985) (citing Nemeroff v. Abelson, 620 F.2d 339, 348 (2d Cir. 1980)).
24

considered in light of the reasonable beliefs of the individual making the claim.”107
As a matter of proof, “bad faith may be inferred ‘only if actions are so completely
without merit as to require the conclusion that they must have been undertaken for
some improper purpose such as delay.’”108 Moreover, “[t]he court’s factual
findings of bad faith must be characterized by ‘a high degree of specificity.’”109
VI.

DISCUSSION
A.

Kantar’s Request for Attorneys’ Fees and Expenses Is Granted
Kantar seeks attorneys’ fees and non-taxable expenses under section

285 for TRA’s assertion of its patent-related claims. In its papers, Kantar describes
a litany of instances that allegedly demonstrate the “exceptional” nature of this
case. While some of these instances support an “exceptional” case finding more
than others, the “totality of the circumstances” dictates that TRA acted in an
“exceptional” manner throughout this litigation. In one instance, TRA even
ignored an express warning from the Court not to take certain action — otherwise
sanctions would follow — and TRA nevertheless proceeded. Thus, with respect to

107

Nemeroff, 620 F.2d at 348.

108

Schlaifer Nance, 194 F.3d at 336 (quoting Shafii v. British Airways,
PLC, 83 F.3d 566, 571 (2d Cir.1996) (quotations omitted)).
109

Milltex Indus. Corp. v. Jacquard Lace Co., 55 F.3d 34 (2d Cir. 1995)
(quoting Oliveri v. Thompson, 803 F.2d 1266, 1272 (2d Cir. 1986) (quotations
omitted)).
25

TRA’s patent-related claims, Kantar is entitled to its attorneys’ fees and costs for
the following reasons.
1.

TRA’s “Matched and Stored” Argument Lacked Merit

At the preliminary injunction stage, TRA pressed a proposed
construction of “[applying a] cleansing and editing algorithm to matched and
stored data” that lacked merit. TRA proposed a construction that would allow for
the algorithm to be applied before the data is matched and stored. The Court,
however, held that TRA’s proposed construction “does violence to the ordinary
grammatical understanding of the past tense.”110 No correct application of the rules
of grammar could have supported TRA’s proposed construction. Thus, TRA’s
proposed construction lacked merit and was frivolous.
TRA argues now, however, that it cannot be sanctioned because the
Court did not rule on the basis of the “matched and stored” construction, but rather
ruled on the basis of patent validity.111 This argument lacks merit as well.
Adjudicating the preliminary injunction motion required the Court to construe

110

See TNS I, 2011 WL 4425415, at *5.

111

See Counterclaim-Plaintiff’s Memorandum in Opposition to Motion
for Attorneys’ Fees (“TRA AF Opp.”) at 5.
26

disputed claim terms — including “matched and stored.”112 Moreover, TRA
should not now be excused for its frivolous argument simply because the question
of patent validity did not directly hinge on the Court’s construction of “matched
and stored.”
Additionally, TRA argues that it later adhered to the Court’s
construction and proposed two separate ways that Kantar’s products apply a
cleansing and editing algorithm to data already matched and stored.113 But as
explained below, this contention is not entirely accurate. Further, belated
reasonable arguments do not compensate for earlier frivolous ones.
TRA also argues that “when TRA moved for an injunction it was not
clear that [the construction of ‘matched and stored’] would even be an issue: the
patent contains no express sequence of steps . . . and Federal Circuit authority
provides that ‘[u]nless the steps of a method actually recite an order, the steps are
not ordinarily construed to require one.’” 114 However, I addressed this precise
argument in denying TRA’s preliminary injunction motion.115 Basic grammar —
112

See TNS I, 2011 WL 4425415, at *3 (“The court must construe claim
terms before determining whether a patent is obvious in light of prior art.”).
113

See TRA AF Opp. at 5-6.

114

Id. at 4-5 (quoting Interactive Gift Express, Inc. v. Compuserve Inc.,
256 F.3d 1323, 1342 (Fed. Cir. 2001)).
115

See TNS I, 2011 WL 4425415, at *5.
27

specifically, the past tense — imparts an express sequential limitation.116
TRA also argues that the Court cannot award sanctions on the basis of
a position “argued only once, in just two short paragraphs[, and] only in
rebuttal[.]”117 But length and placement of an argument should not dictate its level
of frivolity. Nor should it matter that Kantar initially raised the issue. It behooved
TRA to abandon the issue and recognize its lack of merit.
In the same vein, TRA argues that if its argument truly lacked any
merit, Kantar should have led with this argument in its opposition to the
preliminary injunction motion.118 Kantar, however, organized its brief to mirror
the steps of the patent.119 Moreover, TRA cites no case law to show that the order
in which an opponent raises counterarguments somehow reflects the degree to
which one’s own arguments lack merit.
TRA lastly contends that the Court’s use of “do[ing] violence”
equates to a “simpl[e] compari[son] [of] competing interpretations and

116

See id.

117

TRA Opp. at 5.

118

See id.

119

See Counterclaim-Defendants’ Reply in Support of Their Motion for
Attorneys’ Fees at 2; see also generally Plaintiffs’ Opposition to Defendant’s
Motion for a Preliminary Injunction.
28

identif[ication] [of] a basis for preferring one[.]”120 But TRA fails to understand
that courts rarely portray litigants’ positions as “do[ing] violence.”
For these reasons, I find that TRA’s proposed construction of
“matched and stored” was frivolous. This conclusion supports the finding of an
“exceptional” case.
2.

Kantar’s “Cleansing and Editing Algorithm” Argument

TRA also deserves to be sanctioned for proposing a construction of
“cleansing and editing algorithm” that the Court later held “render[ed] meaningless
the amendments TRA added after the [Patent and Trademark Office] rejected the
original versions of the claim language.”121 The Court previously determined that
TRA’s proposed construction “undoes th[e] prosecution history.”122 TRA argues in
response that sanctioning it here would be “nitpick[ing]” and that TRA, if
anything, acted reasonably and cooperatively throughout claim construction.123
TRA notes that it stipulated to the meaning of fifteen disputed terms and, of the
three terms the Court construed, TRA only lost one — “cleansing and editing
120

TRA AF Opp. at 5.

121

See Kantar AF Mem. at 5; see also TNS III, 2012 WL 3756325, at

122

See Kantar AF Mem. at 5; see also TNS III, 2012 WL 3756325, at

123

See TRA AF Opp. at 6.

*13.
*13.

29

algorithm.”124 TRA now characterizes the Court’s rejection of its proposed
construction as “inferring from the prosecution history that the term should have
the more restrictive meaning.”125 But that characterization grossly understates the
Court’s view. The Court did not just “infer” from the prosecution history; rather
the Court concluded that TRA had attempted to undo that which the PTO had
required TRA to amend in order to obtain its patent. This attempt to undo the
prosecution history vitiates any reasonableness or cooperation otherwise
demonstrated by TRA during claim construction.
TRA also argues that the Court’s construction of “cleansing and
editing algorithm” was not dispositive in the case because the Court ultimately
ruled on other grounds at summary judgment.126 As such, TRA argues that its
proposed construction cannot form the basis for an award of attorneys’ fees.
However, a finding of frivolity does not depend on whether the issue ultimately
disposed of the case or motion. Rather, frivolity can exist in isolation. Parties
cannot litigate a case by presenting multiple alternative arguments, some of which
lack merit, then later take shelter under the meritorious ones when facing a motion

124

Id.

125

Id.

126

Id.
30

for attorneys’ fees. Moreover, Kantar pursued summary judgment on the ground
that “none of [its products] apply a ‘cleansing and editing algorithm to the matched
and stored data,’ as [] claim 71 [of the ‘940 Patent] requires[.]”127 That the Court
chose not to adjudicate summary judgment on this basis does not show that TRA’s
arguments had merit.
TRA notes, however, that at summary judgment it adopted the Court’s
construction and showed that Kantar’s products still infringed. 128 But as stated
above, belated reasonable arguments do not compensate for earlier frivolous ones.
Further, TRA’s contention that it adhered to the Court’s constructions is not
entirely accurate. In attempting to argue that Kantar’s products infringed under the
Court’s construction of “cleansing and editing algorithm,” TRA contorted the
definition of “false positive.” Prior to claim construction, both parties had
stipulated to the meaning of “false positive” and the Court adopted it.129 However,
despite the Court’s warning not to ignore previously construed terms,130 TRA
127

TNS IV, 984 F. Supp. 2d at 218.

128

See TRA AF Opp. at 6.

129

See TNS III, 2012 WL 3756325, at *12.

130

“[TRA] may need to think about whether to continue pressing . . .
parts of [its] expert Mela[’s report], because after I have warned you not to do it, if
you do it, and Kantar is right, I am telling you now, I have got too much on my
plate to waste time with frivolous motions. I will turn right to Rule 11. I don’t say
that lightly because I hate sanctions.” 4/23/12 Tr. at 4:24-5:4.
31

relied upon an incorrect definition of “false positive” when arguing that Kantar’s
products did in fact apply a cleansing and editing algorithm.131 Such failure to
heed a Court warning strongly favors the finding of an “exceptional” case.
In response, TRA does not dispute that it contorted the meaning of
“false positive.” Rather, TRA argues that this issue was “inconsequential” and that
it consisted of only “one paragraph of a much longer declaration, and the cited
deposition testimony was just one piece of evidence in support of that opinion.” 132
Moreover, TRA asserts that its reliance on the meaning of “false positive” was
“merely the first of two alternate bases for arguing that Kantar’s products practice
a ‘cleansing and editing’ limitation.”133 TRA also notes that “[n]ot a single line of
TRA’s surreply, nor a single moment of oral arguement, were devoted to this issue,
and the Court did not decide it.”134 However, each of these arguments lack force.
First, ignoring a court warning is never inconsequential. It does not matter that the
Court paid little attention to this issue in deciding summary judgment, or that
TRA’s expert only mentioned it in one paragraph of his declaration. Second, TRA

131

See Counterclaim-Plaintiff’s Memorandum in Opposition to Motion
for Summary Judgment at 29.
132

TRA AF Opp. at 8.

133

Id.

134

Id.
32

cannot immunize itself from liability simply by pointing out that its “false
positive” interpretation formed only one of two alternate bases for its infringement
argument. Ignoring a Court’s directive is separate and apart from whether TRA’s
argument as a whole lacked merit.
Lastly, TRA argues that its decision to appeal the final judgment of
this case should divest this Court of jurisdiction to determine if TRA’s distortion of
“false positive” contributes to a finding of an “exceptional” case.135 TRA believes
the Court would have ruled in its favor on the issue of whether Kantar’s products
do in fact apply a cleansing and editing algorithm after the data is matched and
stored.136 But, TRA argues, the Federal Circuit now has exclusive jurisdiction to
determine whether TRA’s argument has merit.137 However, in determining
whether this case is “exceptional,” I am not deciding the merits of TRA’s “false
positive” argument. Rather, I am holding that TRA’s decision to flout the Court’s
claim construction is further evidence that this case is “exceptional,” thereby
warranting an award of attorneys’ fees.
3.

Judicial Estoppel

135

See id.

136

See TRA AF Opp. at 8.

137

See id.
33

TRA’s judicial estoppel argument in its surreply also favors a finding
of an “exceptional” case. As I held at summary judgment, “the Court relied on a
1985 article by Gerald J. Eskin — not on Kantar[’s] argument — to find that prior
art taught the matching of purchase data and viewer data, and thus, denied TRA’s
preliminary injunction motion.”138 Had TRA read the preliminary injunction
decision, it would have been apparent that the Court did not rely on an inconsistent
Kantar position. Nevertheless, TRA pressed its baseless judicial estoppel
argument.
4.

Doctrine of Equivalents

TRA’s assertion of the doctrine of equivalents as a basis for finding
infringement also contributes to the “exceptional” nature of this case. In the first
instance, Kantar’s only timely assertion of its doctrine of equivalents theory
consisted of “less than a page of conclusory statements . . . and sa[id] nothing
about purchase data.”139 Then, when TRA added substance to its doctrine of
equivalents theory at summary judgment, I held that it was both untimely and of no
added value.140 However, TRA argues now that it reasonably asserted its further-

138

TNS IV, 984 F. Supp. 2d at 244.

139

Id.

140

See id.
34

substantiated doctrine of equivalents theory because parties waive timeliness
objections “all the time and for all sorts of reasons.”141 But here, Kantar provided
no indication that it would waive a timeliness objection and TRA should not have
relied on that as a basis for arguing it in the first place. In fact, Kantar, in its
summary judgment reply brief, raised a timeliness objection in its first opportunity
to do so.142 TRA thus exercised poor judgment in attempting to assert its doctrine
of equivalents theory and should therefore be liable for the unnecessary attorneys’
fees imposed on Kantar as a result.
5.

Shabbab Speculation

TRA’s “broad, conclusory attack”143 on Shabbab’s credibility
reinforces an “exceptional” case finding. In attempting to avoid summary
judgment, TRA offered two arguments in opposition to Kantar’s assertion that its
products did not perform double-blind matching.144 However, the first argument
— that the Experian Contract contradicted Shabbab’s testimony — failed because
the Court held that “[n]othing in [the Experian Contract’s] language suggests that
Shababb’s testimony relating to the operation of the Auto Products is
141

TRA AF Opp. at 16.

142

See Kantar SJ Reply at 13.

143

TNS IV, 984 F. Supp. 2d at 245.

144

See id. at 244-45.
35

erroneous.”145 Thus, TRA’s second argument — that Shabbab lacked personal
knowledge146 — remained its only chance of avoiding summary judgment on this
issue. However, a “broad, conclusory attack” on Shabbab’s credibility cannot
present a question of material fact.147 Moreover, Shabbab, “as the president of
Kantar [] — the ultimate recipient of the data in question — [] has personal
knowledge.”148 Therefore, TRA’s entire effort here boiled down to (1) a contract
that did not contradict Shabbab, and (2) a “broad, conclusory attack” on Shabbab’s
credibility. As the Court stated, “[w]ithout evidence contradicting Shababb’s
testimony, a trial on whether the Auto Products perform double-blind matching . . .
would consist entirely of TRA’s attorneys’ speculation that Shababb is lying about
how his company’s products work.”149 TRA’s arguments here were frivolous and
merit an award of attorneys’ fees.
B.

Kantar’s Request for Attorneys’ Fees Under the Court’s Inherent
Power Is Granted with Respect to the Five Trade Secrets
Adjudicated at Summary Judgment
TRA initially claimed that Kantar had misappropriated twenty-four

145

Id. at 245.

146

See id. at 244.

147

See id. at 245 (citing Island Software, 413 F.3d at 261).

148

Id. at 244.

149

Id. at 245.
36

trade secrets.150 However, following the April 23, 2013 status conference, TRA
reduced its number of trade secret claims to five.151 While the nineteen dismissed
trade secret claims may have no merit, the record contains insufficient detail for the
Court to determine their frivolity. However, the remaining five trade secret claims
do provide the Court with a foundation upon which to determine their relative
merit. Upon such a review, I find that these five trade secret claims lacked any
colorable basis and were brought in bad faith, thus satisfying the standard for an
award of attorneys’ fees under the Court’s inherent power.
1.

The Court Has Jurisdiction to Determine Whether TRA’s
Trade Secret Claims Warrant an Award of Attorneys’ Fees
Under the Court’s Inherent Power

TRA argues that its pending appeal in the Federal Circuit divests this
Court of jurisdiction to determine whether Kantar may collect attorneys’ fees in
this litigation.152 That is incorrect. District courts retain jurisdiction to decide
motions for attorneys’ fees even if the underlying merits decision has been
appealed.153 Thus, the Court has jurisdiction to determine whether, under the
150

See 5/1/13 Endorsed Letter at 1 [Dkt. No. 119].

151

See id.

152

See TRA AF Opp. at 21.

153

See Tancredi v. Metropolitan Life Ins. Co., 378 F.3d 220, 225 (2d Cir.
2004) (“[N]otwithstanding a pending appeal, a district court retains residual
jurisdiction over collateral matters, including claims for attorneys’ fees.”).
37

Court’s inherent power, TRA can collect its attorneys’ fees with respect to the five
trade secret claims adjudicated at summary judgment.
2.

The Five Trade Secret Claims Adjudicated at Summary
Judgment Had No Colorable Basis and Were Brought in
Bad Faith

The Court’s summary judgment decision makes clear that “reviewing
the[] documents [TRA produced to support its trade secret claims] [] consumed
considerable judicial resources [and] was conducted for little purpose.”154
Ultimately, the Court held that “TRA [h]as [f]ailed to [a]llege [p]rotectable [t]rade
[s]ecrets and/or [e]vidence of [u]se[.]”155
In its summary judgment opinion, the Court discussed the merits of
each of the five trade secret claims.156 The Court’s discussion and subsequent
dismissal of each claim demonstrates that each was baseless. Under New York
law, non-disclosure of the trade secret, as well as use of the trade secret by the
alleged misappropriating party, form critical components of the standard for trade
secret misappropriation.157 In dismissing each of the five claims the Court relied

154

TNS IV, 984 F. Supp. 2d at 238.

155

Id. at 239.

156

See id. at 239-40.

157

See id. at 237 (citing Sylmark Holdings Ltd. v. Silicone Zone Intern.
Ltd., 783 N.Y.S.2d 758, 770-71 (Sup. Ct. N.Y. Co. 2004)).
38

on the complete absence of one or both of these components.158 And in some
instances the Court held that TRA’s trade secret claims failed as a matter of law.159
TRA’s analysis lacked critical elements of a claim for trade secret
misappropriation. For that reason, TRA’s claims were frivolous. In fact, I find
here that bad faith may be inferred because TRA’s claims were “so completely
without merit as to require the conclusion that they must have been undertaken for
some improper purpose[.]” Indeed, that TRA waited until summary judgment to
narrow the number of documents pertaining to its trade secret claims shows that
“[i]t was apparently TRA’s intention to wait until it was before a jury to define the

158

See, e.g., TNS IV, 984 F. Supp. 2d at 239 (“[T]he record shows that
TRA disclosed most of the properties of TRAnalytics[.]”); id. (“[T]here is no
evidence in the record that [Kantar’s products] made use of any of the technical
information alleged by TRA.”); id. at 240 (“[Kantar has] produced abundant
evidence that TRA disclosed its clients at every turn. . . . TRA has submitted no
evidence indicating that [Kantar] used its client list.”); id. (“[T]he Financial Secret
was publicly disclosed by TRA. . . . TRA fails to prove that [Kantar] used the
Financial Secrets in any way.”).
159

See, e.g., id. at 239 (“[I]t 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[.]”); id. at 240 (“The
Strategy Secret fails as a matter of law. . . . [T]he Strategy Secret consists of little
more than the aspirations of a company struggling to achieve revenue traction.”);
id. (“The Positioning Secret . . . fails as a matter of law. ‘Price lists, product
samples, and ‘marketing plans’ are all items that are not, as a matter of law,
protected as trade secrets.’ The documents that TRA alleges constitute the
Positioning Secret fit comfortably within this rule.”).
39

precise contours of its trade secrets claim.”160 And as the Court held at summary
judgment, “TRA’s ‘Dance of the Seven Veils approach to [its] trade secret claim’
is manifestly prejudicial to [Kantar], and taxing on the Court.”161 This delay by
TRA, when it “had ample opportunity to identify its alleged trade secrets with
specificity prior to the close of discovery,”162 reinforces a finding of bad faith.
Because I find that TRA’s trade secret claims had no colorable basis and were
brought in bad faith, Kantar is entitled, under the Court’s inherent power, to collect
attorneys’ fees for its efforts in defending against these allegations.
C.

Scope of Award of Attorneys’ Fees Under Section 285 and the
Court’s Inherent Power
The attorneys’ fees and non-taxable expenses that Kantar may collect

from TRA are limited to those fees and expenses that are causally-related to the
misconduct or frivolous arguments detailed in this Opinion and Order. The
purpose of section 285 “is remedial and for the purpose of compensating the
prevailing party for the costs it incurred in the . . . defense of a case where it would

160

Id. at 238. Moreover, even when TRA did agree to narrow the
quantity of its trade secret claims, it still reserved the “right to rely upon additional
documents or testimony related to each trade secret.” 5/10/13 Lowenstein Letter to
Strand, Ex. 2 to Stockinger Decl., at 1. Thus, TRA’s narrowing of the
documentary evidence was somewhat disingenuous.
161

TNS IV, 984 F. Supp. 2d at 239.

162

Id.
40

be grossly unjust, based on the baselessness of the suit or because of litigation . . .
misconduct, to require it to bear its own costs.”163 Therefore, Kantar, in order to
collect any attorneys’ fees or costs for its defense of the patent-related claims, must
demonstrate it incurred those fees and expenses as a direct result of TRA’s
litigation misconduct or frivolous arguments (as described in this Opinion and
Order).
Similarly, with respect to the non-patent-related attorneys’ fees
awarded under the Court’s inherent power, Kantar must demonstrate that the fees it
seeks to collect are only those fees that directly resulted from its defense against
the five trade secret claims that were adjudicated at summary judgment. No fees or
costs will be awarded as a result of the trade secret claims dropped subsequent to
the April 23, 2013 status conference.

163

Highmark, Inc., 687 F.3d at 1310 n.1.
41

IV.

CONCLUSION

For the foregoing reasons, Kantar's motion for attorneys' fees and
non-taxable expenses is GRANTED. Kantar is directed to submit a detailed
request for the fees and expenses incurred as a direct result of TRA's conduct
identified in this Order. Such submission must be made by November 24, 2014.

Dated:

New York, New York
November 4, 2014

42

- Appearances For Defendant and Counterclaim-Plaintiff TRA:
Perry Mark Goldberg, Esq.
Kevin S. Rosenberg, Esq.
Mark Paluch, Esq.
Goldberg, Lowenstein & Weatherwax LLP
11400 West Olympic Blvd., Suite 400
Los Angeles, California 90064
[phone]
For Plaintiffs and Counterclaim-Defendants Kantar:
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]

43