TNS Media Research, LLC et al v. TiVo Research and Analytics, Inc.
Filing
43
OPINION AND ORDER re: 11 MOTION for Preliminary Injunction against Plaintiff/Counterclaim-Defendant TNS Media Research, LLC d/b/a Kantar Media Audiences filed by TRA Global, Inc. Kantar and Cavendish have raised a substantial question about the validity of Claim 71 of the '940 Patent. Because TRA has not shown that said question lacks substantial merit, TRA's motion for a preliminary injunction is denied. The Clerk of Court is directed to close this motion (docket #11). A conference is scheduled for October 20 at 3:30 PM. ( Status Conference set for 10/20/2011 at 03:30 PM before Judge Shira A. Scheindlin.) (Signed by Judge Shira A. Scheindlin on 9/22/2011) (pl)
UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK
._--------------------------------------------------
)(
TNS MEDIA RESEARCH, LLC (d/b/a
KANTAR MEDIA AUDIENCES),
and
CA VENDISH SQUARE HOLDING B.V.,
OPINION AND ORDER
Plaintiffs/Counterclaim
Defendants,
11 Civ. 4039 (SAS)
- againstTRA GLOBAL, INC. (d/b/a TRA, INC.),
Defendant/Coun terclaim
Plaintiff.
_--------------------------------------------------
.
)(
SHIRA A. SCHEINDLIN, U.S.D.J.:
I.
INTRODUCTION
Plaintiffs TNS Media Research, LLC d/b/a Kantar Media Services
("Kantar") and Cavendish Square Holdings B.V. ("Cavendish") bring this action
against TRA Global, Inc. ("TRA") seeking a declaratory judgment that Kantar's
RapidView for Retail product ("RVR") did not infringe on U.S. Patent No.
7,729,940 ("'940 Patent"), which TRA owns. Cavendish also brings a claim
-1
against TRA for breach of contract.1 TRA asserts various affirmative defenses and
brings counterclaims for patent infringement, breach of fiduciary duty,
misappropriation of trade secrets, and breach of contract.
Currently before the court is TRA’s motion for a preliminary
injunction requiring Kantar to cease making RVR, and to cease selling it or
offering it for sale, on the basis that it infringes Claim 71 of the ‘940 Patent. For
the reasons set forth below, the motion is denied.
II.
BACKGROUND2
TRA is a media research company that began operations in 2007.
Cavendish invested in TRA in August of that year, and, in return, received TRA
stock and the right to a seat on TRA’s board of directors.3 Near the end of 2008,
Cavendish filled that seat with a senior vice president from WPP PLC, the parent
company to both Cavendish and Kantar.4
In June 2010, the Patent and Trademark Office issued the ‘940 Patent,
1
See Complaint ¶¶ 17-21.
2
The facts in this case are contested and presented here based on the
limited record available at this stage in the litigation.
3
See Answer and Counterclaim (“Answer”) ¶¶ 46, 56-59.
4
See 8/2/11 Declaration of Sheila Spence, Cavendish’s Representative
on TRA’s Board of Directors, in Opposition to TRA’s Motion for Preliminary
Injunction (“Spence Decl.”) ¶¶ 3-4.
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with TRA designated as the sole assignee.5 Shortly thereafter, TRA created Media
TRAnalytics (“MTRA”), a product based on the ‘940 Patent. MTRA collects and
matches four kinds of data: data from cable and satellite set-top boxes to determine
what channel a household is watching (“clickstream data”); programming data that
allows it to determine what show was on that channel; advertising data that allows
it to determine what ads ran during that show; and, finally, data about what the
household purchases. These data are then anonymously analyzed and used to
generate reports to help advertisers determine the return on their investment in
previous ads (“ROI reports”) and how to invest their future advertising dollars
(“planning reports”), as well as second-by-second TV ratings reports (“ratings
reports”).6 TRA claims that Kantar approached it about licensing the ‘940 Patent
in August 2010;7 Kantar denies this and states instead that TRA made repeated
efforts to license Patent ‘940 to it for a substantial fee.8 The parties never agreed to
a license.
5
See Answer ¶ 106.
6
See 7/1/11 Declaration of Mark Lieberman, CEO of TRA, in Support
of TRA’s Motion for Preliminary Injunction (“Lieberman Decl.”) ¶¶ 8-13.
7
See Answer ¶ 95.
8
See Spence Decl. ¶ 10.
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Kantar released RVR in March 2011.9 Kantar claims that RVR is
based on its own technology and does not infringe the ‘940 Patent, while also
pointing out differences between RVR and MTRA.10 Kantar also argues that the
‘940 Patent is invalid as obvious.11 For its part, TRA claims that Kantar obtained
its confidential information from Cavendish’s representative on the TRA board of
directors, that Kantar used this information to develop RVR, and that RVR in fact
infringes on Claim 71 of the ‘940 Patent.12
The parties have submitted expert declarations regarding the technical
merits of TRA’s motion for a preliminary injunction. The experts disagree about
whether RVR infringes on Claim 71 of the ‘940 Patent, and whether Claim 71 is
valid.
A.
Expert Declarations on Infringement
9
See 6/28/11 Press Release from Kantar, Ex. A to Delcaration of Stu
Gray, Independent Consultant to TRA, at 1.
10
For example, Kantar states that RVR does not create ROI reports. See
Plaintiffs’ Reply Memorandum of Law in Opposition to Defendant’s Motion for
Preliminary Injunction (“Opp. Mem.”) at 23.
11
See 8/2/11 Declaration of George Shabab, President of Kantar, in
Opposition to TRA’s Motion for Preliminary Injunction (“Shabab Decl.”) ¶ 26;
Complaint ¶ 18.
12
See Answer ¶¶ 105-129. While the Answer claims that RVR directly
infringes Claims 1 and 71, this opinion only discusses Claim 71 because that is the
only claim contested by either side in this motion.
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TRA’s expert splits Claim 71 into five steps – collecting data,
matching it on a computer, storing the matched data electronically, applying a
cleansing and editing algorithm, and calculating a “true target index metric” – and
states that RVR “literally infringes” each step.13 Kantar’s expert asserts that RVR
does not infringe on Claim 71 for two reasons. First, he claims that RVR collects
“market-level data” on programming and advertising, whereas Claim 71
contemplates collecting “household level data associated with multiple
households” for programming and advertising.14 Second, he asserts that RVR
applies a “cleansing and editing algorithm” to its input data sets before matching
them, whereas Claim 71 applies the algorithm to the data post-matching.15
TRA’s expert makes two points in rebuttal. First, he states that
“market-level data” is synonymous with “household level data associated with
multiple consumer households” for purposes of Claim 71.16 Second, he asserts that
13
6/28/11Declaration of Richard Fenwick, Expert for TRA, in Support
of TRA’s Motion for Preliminary Injunction (“Fenwick Decl.”) ¶ 6.
14
8/1/11 Declaration of Michael I. Shamos, Ph.D., J.D., Expert for
Kantar and Cavendish, in Opposition to TRA’s Motion for Preliminary Injunction
(“Shamos Decl.”) ¶¶ 6-12.
15
Id. ¶¶ 13-15.
16
8/10/11 Supplemental Declaration of Richard Fenwick, Expert for
TRA, in Support of TRA’s Motion for Preliminary Injunction (“Fenwick Supp.
Decl.”) ¶¶ 26-27.
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RVR “appl[ies] at least one cleansing and editing algorithm to the matched and
stored data” by editing its raw clickstream data prior to matching, and by
converting the matched data sets into user-friendly form.17
B.
Expert Declarations on Validity
Kantar’s expert argues that Claim 71 is “invalid because it covers
subject matter that would have been obvious at the time of the invention.”18 He
states that with two exceptions, Claim 71 was taught by prior art as early as 1985.19
As to the first exception – that the 1985 prior art did not teach the use of a set-top
box to collect clickstream data – he claims that “artisans would substitute the
[now] commonplace set-top boxes” for older external meters. and that a 2002
patent intimated such a substitution.20 He claims that the second exception – that
the 1985 prior art did not teach the use of a trusted third party to group and match
the collected data sets “without processing any personally identifiable information
associated with the consumer household” to which an account identifier has been
17
Id. ¶¶ 30-44. Plaintiffs filed a sur-reply to the memorandum of law to
which the Fenwick Supplemental Declaration was attached, but did not submit a
supplemental declaration from their own expert.
18
Shamos Decl. ¶ 16.
19
See id. ¶ 20.
20
Id. ¶¶ 23-25.
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assigned – was taught by prior art from 2000, and that privacy protection was
required by Federal law.21 As a result, he concludes that the method of matching
and grouping data required by Claim 71 “would have been obvious to try. . . .”22
TRA’s expert responds in three ways. First, he asserts that the 1985
prior art made use of a supplemental data collection device to obtain purchase data,
the need for which was eliminated by Claim 71.23 Second, he asserts that prior art
did not teach matching of purchase and media-exposure data.24 Third, he notes that
Kantar previously offered a product without Claim 71’s privacy protections.25
III.
LEGAL STANDARDS
A.
Patent Validity
Patents are presumptively valid by statute.26 Nonetheless, they may
be deemed invalid if “the differences between the subject matter sought to be
patented and the prior art are such that the subject matter as a whole would have
21
See id. ¶¶ 27-30.
22
Id. ¶ 32.
23
See Fenwick Supp. Decl. ¶ 4.
24
See id. ¶ 15. Kantar claims that the same prior art does in fact teach
such matching. See Plaintiffs’ Sur-Reply Memorandum of Law in Opposition to
Defendant’s Motion for Preliminary Injunction (“Supp. Opp. Mem.”) at 2.
25
See Fenwick Supp. Decl. ¶13.
26
See 35 U.S.C. § 282.
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been obvious at the time the invention was made to a person having ordinary skill
in the art to which said subject matter pertains.”27
1.
Claim Construction
The court must construe claim terms before determining whether a
patent is obvious in light of prior art.28 First, the court should look at the actual
claim language. Absent “an express intent to impart a novel meaning to claim
terms,” the claim language is given its “ordinary and customary meaning. . . .”29
During this process, the court may look to the claim and the specification, the
prosecution history, and dictionaries, amongst other things. While a novel or
unique definition in the specification is “usually . . . dispositive,”30 “[t]he claim is
the measure of [the patentee’s] right to relief, and while the specification may be
referred to to limit the claim, it can never be made available to expand it.”31
2.
Comparing Claim to Prior Art
27
Id. § 103.
28
See Telflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1324 (Fed.
Cir. 2002).
29
Mars, Inc. v. H.J. Heinz Co., L.P., 377 F.3d 1369, 1373 (Fed. Cir.
2004).
30
Telflex, Inc., 299 F.3d at 1324-25.
31
Johnson & Johnson Assoc. Inc. v. R.E. Service Co., Inc., 285 F.3d
1046, 1052 (Fed. Cir. 2002) (quotation marks and citations omitted).
-8-
Once the court has construed the claim terms, it proceeds to determine
whether a patent claim is obvious by looking at “the scope and content of the prior
art, the differences between the prior art and the claims at issue, and the level of
ordinary skill in the pertinent art.”32 Additionally, a court may find a patent
obvious “if it would have been obvious to a person having ordinary skill to try a
course of conduct. . . .”33 At trial, the alleged infringer must make a showing of
obviousness by clear and convincing evidence.34
3.
Secondary Factors of Non-Obviousness
Once the alleged infringer has made out a prima facie case that a
patent is obvious, a court must consider secondary factors of non-obviousness
before reaching its final decision.35 The patentee bears the burden of
demonstrating a nexus between any secondary factor of non-obviousness and the
32
Bayer Schering Pharma AG v. Barr Labs., Inc., 575 F.3d 1341, 1347
(Fed. Cir. 2009).
33
Id. at 1348 (citing KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 402
(2007)).
34
Microsoft Corp. v. i4i Ltd. P’ship, 131 S. Ct. 2238, 2242 (2011).
35
See Bayer Schering Pharma AG, 575 F.3d at 1348. Indeed, when the
patentee presents such factors, it is legal error for a court not to consider them. See
In Re Huai-Hung Kao, 639 F.3d 1057, 1067 (Fed. Cir. 2011) (citations omitted).
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patent claim.36 Therefore, if a secondary factor arises from something beyond the
claim or something that is taught by prior art, it is insufficient to overcome a prima
facie case of invalidity.37
B.
Patent Infringement
If the court finds that a patent is valid, the court should proceed to
analyze infringement claims.38 Analysis of patent infringement involves two steps.
First, as in the validity analysis, the court must construe the patent claims. Second,
the court must compare “the properly construed claims to the device accused of
infringing.”39 If the patentee can then “show the presence of every element or its
equivalent in the accused device,” the court should find that the accused device
36
See J.T. Eaton & Co, Inc. v. Atlantic Paste & Glue Co., 106 F.3d
1563, 1571 (Fed. Cir. 1997).
37
See Ormco Corp. v. Align Tech., Inc., 463 F.3d 1299, 1311-12 (Fed.
Cir. 2006). For example, if a patentee raises the commercial success of his
patented device as a secondary factor, but that success is in fact due to excellent
salesmanship unrelated to the patent claim, it is not pertinent to the nonobviousness analysis. See id.
38
The analysis proceeds in this sequence because “a judgment of
invalidity necessarily moots the issue of infringement.” TypeRight Keyboard
Corp. v. Microsoft Corp., 374 F.3d 1151, 1157 (Fed. Cir. 2004).
39
Markman v. Westview Instruments, Inc., 52 F.3d 967, 976 (Fed. Cir.
1995).
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infringes the patent.40
C.
Preliminary Injunction
Injunctive relief in patent cases is authorized by statute.41 A
preliminary injunction, however, is “an extraordinary remedy never awarded as of
right.”42 A party seeking a preliminary injunction must therefore establish “[1] that
[it] is likely to succeed on the merits, [2] that [it] is likely to suffer irreparable harm
in the absence of preliminary relief, [3] that the balance of equities tips in [its]
favor, and [4] that an injunction is in the public interest.”43 A movant seeking a
preliminary injunction that would alter the status quo must establish the same
factors by a “clear showing” that it is entitled to the relief it requests.44
In order to show a likelihood of success on the merits in a patent case,
the patentee “must show that it will likely prove infringement, and that it will
40
Uniloc USA, Inc, v. Microsoft Corp., 632 F.3d 1292, 1301 (Fed. Cir.
2011).
41
See 35 U.S.C. § 283.
42
Winter v. Natural Res. Def. Council, Inc., 557 U.S. 7, 24 (2008).
43
Titan Tire Corp. v. Case New Holland, Inc., 566 F.3d 1372, 1375-76
(Fed. Cir. 2009) (quotation marks and citations omitted).
44
Citigroup Global Mkts., Inc. v. VCG Special Opportunities Master
Fund Ltd., f/k/a CDO Plus Master Fund Ltd., 598 F.3d 30, 35 (2d Cir. 2010).
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likely withstand challenges, if any, to the validity of the patent.”45 This means that
“[a] preliminary injunction should not issue if an alleged infringer raises a
substantial question regarding either infringement or validity.”46 Raising such a
question requires “more than a scintilla but less than a preponderance of the
evidence.”47
Once the accused infringer has made its required showing, “the
burden shifts to the patentee to show that the defense lacks substantial merit.”48 A
patentee who does not meet this burden “is not entitled to a preliminary
injunction,” regardless of the weight of the other factors, because it has not shown
a likelihood of success on the merits.49
45
Titan Tire Corp., 566 F.3d at 1376.
46
AstraZeneca LP v. Apotex Inc., 633 F.3d 1042, 1050 (Fed. Cir. 2010)
(emphasis added).
47
Abbott Labs. v. Sandoz, Inc., 544 F.3d 1341, 1364 (Fed. Cir. 2008).
The showing required at the preliminary injunction stage is lower than at trial
because the essential issue at the preliminary injunction stage is vulnerability, not
validity. See Atlanta Pharma AG v. Teva Pharms. USA, Inc., 566 F.3d 999, 1006
(Fed. Cir. 2009).
48
Atlanta Pharma AG, 566 F.3d at 1006.
49
National Steel Car, Ltd. v. Canadian Pacific Ry., Ltd., 357 F.3d 1319,
1325 (Fed. Cir. 2004). This is in marked distinction to older case law that holds
that none of the preliminary injunction factors are dispositive. See, e.g., Hybritech
Inc. v. Abbott Labs., 849 F.2d 1446, 1451 (Fed. Cir. 1988) (citing Roper Corp. v.
Litton Sys. Inc., 757 F.2d 1266, 1269 n.2 (Fed. Cir. 1985)).
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IV.
DISCUSSION
Validity of Claim 71 of the ‘940 Patent
A.
Claim Construction
As a threshold matter, I must construe the disputed language in Claim
71. The parties dispute the meaning of the phrases “household level data
associated with multiple consumer households” and “[applying] a cleansing and
editing algorithm to the matched and stored data.”
1.
“Household Level Data Associated with Multiple Consumer
Households”
TRA’s expert asserts that the market-level programming and
advertising data used by RVR falls within the meaning of “household level data
associated with multiple consumer households” because “each set of this data. . .
discloses. . . what show each of multiple consumer households in a given area is
watching, and what advertisement they saw in that area.”50 There are several
problems with this assertion.
As a preliminary matter, TRA’s expert misstates the way RVR works,
as explained by Kantar’s expert. According to Kantar’s expert, the programming
and advertising data sets that RVR uses do not, and alone cannot, reveal what any
individual consumer household has seen by way of programming or advertisement.
50
Fenwick Supp. Decl. ¶ 27.
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Instead, RVR uses these data sets to determine what the raw clickstream data it
obtains from set-top boxes actually means.51
Furthermore, “household level data associated with multiple consumer
households,” when given its ordinary meaning, would not cover a data set simply
because it could be used to determine something about multiple households on a
household-by-household basis. Instead, when given its ordinary meaning, that
phrase would require that there be some household level data to begin with, and
that the same be later aggregated into a data set including multiple consumer
households.
Claim 71 attaches this phrase to each of the four sets of data its
proposed system collects. The specification and description, however, do not
contemplate that each data set would be of the same kind or collected in the same
way. The claim contemplates that clickstream data will be collected from each
individual household via set-top boxes, and provided to the proposed system by a
third-party data vendor;52 likewise, the claim contemplates that purchase data will
51
See Shamos Decl. ¶ 9. By way of example, raw clickstream data
would indicate that Household A watched Channel X at Time Y, whereas the
programming and advertising data would indicate what shows and ads ran on
Channel X at Time Y, and thus enable one to determine what Household A actually
saw.
52
See ‘940 Patent col. 20 ll. 13-17.
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be collected from each individual household by means of a unique store discount
card, also provided by a third-party data vendor.53 Programming data, however,
would come directly from cable operators or a third-party data vendor without ever
being collected on the household-level, and advertising data would come either
directly from the television networks or the advertisers seeking to make use of the
proposed system.54
It appears, then, that “household level data associated with multiple
consumer households” is to have different meanings in different contexts. In the
context of clickstream and purchase data, its meaning is the ordinary meaning
explained above. In the context of programming and advertising data, however,
the inventors of the ‘940 Patent appear to have intended a specialized meaning of
“usable to determine what programs and advertising each of multiple consumer
households saw.” I therefore construe the phrase according to its ordinary meaning
when applied to the former data sets, and according to its specialized meaning
when applied to the latter.
2.
Applying a “Cleansing and Editing Algorithm to the
Matched and Stored Data”
Kantar and Cavendish assert that “[applying] a cleansing and editing
53
See id. col. 3 l. 66 - col. 4 l. 4 and col. 20 ll. 43-44.
54
See id. col. 20 ll. 17-42.
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algorithm to the matched and stored data” requires the algorithm to be applied after
the relevant data sets are matched and stored in a computer system.55 Relying on
the specification accompanying Claim 71, TRA’s expert asserts that the algorithm
may be applied before any matching of the data sets occurs, and that the term
“matched and stored” “is a descriptive reference to the data to which the algorithm
is applied” that “does not impose a sequential limitation. . . .”56 This interpretation
does violence to the ordinary grammatical understanding of the past tense in a
manner that would expand the coverage of the claim rather than limit it. Because
the specification cannot, as a matter of law, expand the claim, I find that
“[applying] a cleansing and editing algorithm to the matched and stored data”
means “applying a cleansing and editing algorithm to the data after it is matched
and stored.”
B.
Comparison of the Prior Art and the ‘940 Patent
Having construed the disputed portions of Claim 71, I must now
determine what differences, if any, exist between Claim 71 and the prior art. At
the preliminary injunction stage, this effectively means that I must determine
whether Kantar and Cavendish have raised substantial questions of obviousness
55
Supp. Opp. Mem. at 4.
56
Fenwick Supp. Decl. ¶¶ 39-41.
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and whether TRA has shown that those questions lack substantial merit.
I must first examine Claim 71, so that I may compare it to the prior
art. Claim 71 consists of five basic steps. First, the proposed system collects
clickstream, advertising, programming, and purchase data without the use of
supplemental data collections devices. Second, the proposed system matches the
data on a household-by-household basis, without using personally identifiable
information. Third, the proposed system stores the matched data on a computer.
Fourth, the proposed system applies a “cleansing and editing algorithm” to the data
stored on the computer after it is matched. Fifth, the proposed system generates a
planning report based on the matched data.57
After a careful review of the record currently before me, I conclude
that Kantar and Cavendish have shown the prior art to teach six things. First, I
find that prior art taught the use of a set-top box –which is not a “supplemental
data collection device” – to collect clickstream data.58 Second, I find that one of
Kantar’s own products taught the collection and use of programming and
advertising data from third parties without the use of a supplemental data collection
device, in a manner consistent with the specialized meaning of “household level
57
See ‘940 Patent col. 46 l. 33 - col. 48 l. 9.
58
See 9/19/02 United States Patent Application of Conkwright, Vinson,
and Foster (“CVF App.”), Ex. 4 to Shamos Decl., ¶ 21.
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data associated with multiple consumer households” noted above.59 Third, I find
that the same Kantar product taught to match programming and advertising data
with clickstream data to determine what programs and advertisements individual
households actually saw.60 Fourth, I find that prior art taught to compare
information about what programs and advertisements households actually saw with
purchasing data, said purchasing data being “household level data associated with
multiple consumer households” consistent with the ordinary meaning of that
phrase noted above;61 particularly, it taught the use of household-specific cards to
track buying behavior at the point of purchase.62 Fifth, I find that prior art taught
the use of a trusted third-party “matcher” to protect the personal information of
households whose behavior is analyzed.63 Sixth, I find that prior art taught the
59
See Shabab Decl. ¶ 22.
60
See id.
61
See March 1985 Tracking Advertising and Promotion Performance
with Single-Source Data by Gerald J. Eskin (“Eskin”), Ex. 3 to Shamos Decl., at
37. See also CVF App. ¶ 19.
62
See Eskin at 31. The specifications of the ‘940 Patent expressly state
that the use of a card in this way “[is] not considered within the scope of the term
‘supplemental data collection’ device as applied herein.”
63
See 1/2/00 European Patent Application of Kohan and Langer, Ex. 8
to Shamos Decl., ¶ 5.
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generation of planning reports.64
Comparing these findings to Claim 71, I find that the prior art
substantially taught all of the limitations in Claim 71. I further find that it would
have been obvious to a person reasonably skilled in the art to attempt to combine
these teachings, even though no single device embodied them all. I therefore
conclude that, on the record currently before me, Kantar and Cavendish have met
their burden of raising a substantial question about the validity of Claim 71 by
“more than a scintilla” of evidence.
C.
Whether the Question of Claim 71’s Validity Lacks Substantial
Merit
I must now consider whether TRA has shown that the substantial
question of validity that Kantar and Cavendish raise lacks substantial merit. While
the Federal Circuit has not clearly stated what kinds of evidence a court may
consider in this regard, I must, at the very least, consider the secondary factors of
non-obviousness that TRA raises.65 As noted above, however, if TRA cannot
64
See Eskin at 39-40. The article refers to the creation of “leverage
indexes,” which can be used to determine when an advertisement for a given
product would be most effectively placed, both generally and on a show-by-show
level. Id. I note that this is substantially similar to the meaning that the
specification gives to the phrase “true target index” report, the name TRA gives to
planning reports. See ‘940 Patent col. 26 ll. 46-60.
65
See Defendant’s Reply Memorandum in Support of Motion for
Preliminary Injunction at 4-5.
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demonstrate a “nexus” between these factors and its patent, it is legally
inappropriate for me to consider them.
Amongst the secondary factors TRA raises, only the allegation of
copying is supported with the required nexus. TRA argues that the similarities
between RVR and MTRA are most likely explained by copying, and that Claim 71
is therefore not obvious. TRA presents the following four facts as evidence of
copying: first, that Kantar and Cavendish were investors in TRA; second, that
Cavendish’s duly appointed member of TRA’s board of directors had access to
inside information; third, that RVR and MTRA provide similar reports to their
users; and fourth, that RVR and MTRA use many of the same data vendors.66
Kantar and Cavendish dispute each of these arguments. First,
Cavendish’s representative on TRA’s board denies sharing any confidential
information with Kantar or Cavendish, or knowing of RVR before its release.67
Second, Kantar and Cavendish flatly deny that RVR produces ROI reports.68
Third, Kantar and Cavendish point out that Kantar used the data vendors common
66
Id.
67
See Spence Decl. ¶¶ 6-8.
68
See Opp. Mem. at 23. Plaintiffs do not, however, deny producing
planning and ratings reports.
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to RVR and MTRA since before TRA entered the market. 69 Because I find these
arguments approximately equal in persuasive value to TRA's arguments, I find that
TRA has not shown by even a preponderance of the evidence that the obviousness
defense raised by Kantar and Cavendish lacks substantial merit. 70
v.
CONCLUSION
Kantar and Cavendish have raised a substantial question about the
validity of Claim 71 of the '940 Patent. Because TRA has not shown that said
question lacks substantial merit, TRA's motion for a preliminary injunction is
denied. The Clerk of Court is directed to close this motion (docket # 11). A
conference is scheduled for October 20 at 3:30 PM.
SO ORDERED:
Dated:
69
September 22, 2011
New York, New York
See Supp. Opp. Mem. at 3.
Beeause I find that Kantar and Cavendish have raised substantial
questions regarding the validity of Claim 71 of the '940 Patent, I need not reach
70
the question of infringement at this time. See TypeRight Keyboard Corp., 374 F.3d
at 1157.
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- Appearances For Plaintiffs:
Marc Joseph Rachman, Esq.
Christopher Andrew Keisner, Esq.
Davis & Gilbert, LLP
1740 Broadway
New York, NY 10019
(212) 468-4800
Charles Thomas Steenburg, Esq.
John L. Strand, Esq.
Michael A. Albert, Esq.
Robert M. Abrahamsen, Esq.
Wolf, Greenfield, & Sacks, P.C.
600 Atlantic Avenue
Boston, MA 02210
(617) 646-8265
For Defendant:
Matthew Russell Maron, Esq.
Ira Brad Matetsky, Esq.
Ganfer & Shore, LLP
360 Lexington Avenue
New York, NY 10017
(212) 922-9250
Richard P. Doyle, Esq.
Janssen Doyle LLP
140 Brookwood Road
Suite 102
Orinda, CA 94653
(925) 295-1805
-22-
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