By Jody Coultas, J.D.
The federal district court in New York City vacated its previous order dismissing a patent suit filed by TNS Media Research, LLC against TiVo Research and Analytics, Inc. In the previous ruling concerning whether TNS infringed TiVo’s patents, the court held that the patents-in-suit were invalid as directed to the abstract idea of data collection. However, having reviewed relevant Federal Circuit’s case law, and analyzing the claims in the relevant patents, the court was convinced that justice required vacatur (TNS Media Research, LLC v. TiVo Research and Analytics, Inc., November 29, 2016, Forrest, K.).
TNS, a market research company, sought a declaration that it had not infringed TiVo’s United States Patent No. 7,729,940 (the ‘940 patent). TiVo counterclaimed for infringement of the ‘940 patent and United States Patent Nos. 8,000,993 (the ‘993 patent) and 8,112,301 (the ‘301 patent).
While there are minor differences across each of the three patents, the ‘940, ‘993, and ‘301 patents describe: (1) collecting household-level data from a variety of digital sources; (2) matching the data to individual households through the use of digital double-blind matching; (3) digitally storing the matched data; (4) applying a "cleansing and editing algorithm" to the data to remove extraneous and/or private information; and (5) calculating an advertising metric based on the data. Claim 71 of the ‘940 patent was representative of the ‘993 and ‘301 patent claims.
The court previously found that the patents-in-suit were invalid as directed toward the patent-ineligible abstract ideas of data collection, data storage, and routine activities performed on the data following the double-blind match, and dismissed the infringement claims.
Previous opinion. Claim 71 of the ‘940 patent covers the gathering of data from many possible sources and matching it to individual households using digital double-blind matching. The data is digitally stored and presented to end users in the form of advertising metrics. Matching consumer data to households using a double-blind matching strategy is an abstract concept that can be performed entirely by humans, according to the court. Tangible machines were not required to collect the data required for the double-blind match.
The court also held that the claims did not contain an inventive concept that made the patents valid. The data collection, data storage, and routine "post-solution" activities covered by claim 71 were insufficiently inventive to render TiVo’s claims patentable. The remaining limitations merely implemented the core concept of the digital double-blind match of household data. Nothing in the claims covered improving the functioning of the computer itself or effected an improvement in any other technology or technical field. Also, the claims were not tied to a particular machine or apparatus.
Vacatur. Federal Rule of Civil Procedure 60(b) permits a court to relieve a party from a final judgment, order, or proceeding for "mistake . . . or any other reason that justifies relief."
Based on a detailed review of Federal Circuit and Supreme Court precedent regarding Section 101 and application of the Alice doctrine of invalidity, the court disagreed with the invalidity holding and vacated the previous ruling. At issue was whether the invention was nothing more than an abstract concept. The court concluded that claim 71 was not directed to the abstract idea of double-blind matching, and that double-blind matching was merely one aspect of the method claimed. Rather, claim 71 was directed at the idea that there are numerous digital media platforms which can be mined for information about household viewing, and that data can be as granular as whether the volume is turned down during a commercial break, or whether the channel is switched away and then switched back. The type of multi-sourced, granular collection of data that allows for real-time calculations of utility was sufficient evidence that the patent was not directed to an abstract idea.
Even if claim 71 was directed to an abstract concept, the inventiveness asserted in the patent would require vacatur of the previous opinion, according to the court. The method disclosed in claim 71 directly addresses the various problems to be addressed by the patent and provided for the improvement needed: a method that can only be implemented on a computer given the size and complexity of the task at hand, and a step-by-step way to collect, store, cleanse, and analyze data.
The court noted that there may be other issues with claim 71 that prevent TRA from ultimately prevailing on the infringement claims, but invalidity under Alice was not one of them.
The case is No. 11 Civ. 4039 (KFB).
Attorneys: Marc Joseph Rachman (Davis & Gilbert LLP) and Charles Thomas Steenburg (Wolf, Greenfield & Sacks, P.C.) for TNS Media Research, LLC d/b/a Kantar Media Audiences and Cavendish Square Holding BV. Perry Mark Goldberg (Goldberg, Lowenstein & Weatherwax LLP) and Christopher Andrew Colvin (Kramer Levin Naftalis & Frankel, LLP) for TiVo Research and Analytics, Inc. d/b/a TRA, Inc.
Companies: TNS Media Research, LLC; TiVo Research and Analytics, Inc.; TRA Global, Inc.
MainStory: TopStory Patent NewYorkNews
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