TNS Media Research, LLC v. Tivo Research & Analytics, Inc.
166 F. Supp. 3d 432
S.D.N.Y.2016Background
- TRA (assignee of three patents: ’940, ’993, ’301) sued by Kantar Media and affiliates; dispute centers on methods/systems for matching household-level viewing (clickstream/program/advertising) and purchase data, cleansing/storing it, and computing advertising metrics.
- Counterclaims: TRA alleged infringement; WPP Companies (Kantar and affiliates) moved for summary judgment arguing the asserted patent claims are invalid under 35 U.S.C. § 101.
- Representative asserted claim (’940 patent claim 71) recites: collecting household-level clickstream, advertising, program, and purchase data; matching via account identifiers (double-blind/thesaurus); storing; cleansing/editing algorithms; calculating ROI/true target metrics.
- District court previously granted summary judgment of noninfringement; Federal Circuit affirmed in part and remanded in part, prompting the court to address patent eligibility under Alice.
- Court treated claim 71 of the ’940 patent as representative of the ’993 and ’301 claims and evaluated §101 on summary judgment without applying the clear-and-convincing presumption of validity for eligibility determinations.
Issues
| Issue | Plaintiff's Argument (TRA) | Defendant's Argument (WPP Companies) | Held |
|---|---|---|---|
| Are the asserted claims directed to an abstract idea under Alice step 1? | Claims require tangible data sources (set-top boxes, cash registers) and a computer—thus not abstract. | Claims are directed to the abstract practice of collecting, matching, and analyzing consumer data (double-blind matching). | Held: Claims are directed to an abstract idea (organizing/matching data; can be done by humans). |
| Do the claims contain an inventive concept under Alice step 2? | Implementation at scale and use of conventional data sources and privacy-preserving matching provide inventive improvements. | Limitations recite routine data-gathering, storage, cleansing, and calculation—conventional computer activity insufficient. | Held: No inventive concept; claim elements are routine/conventional, so patent-ineligible. |
| May the court decide §101 now or is claim construction/discovery required (ripeness)? | Certain terms (e.g., "at a given time") require construction; §101 decision should wait. | §101 may be decided without further claim construction; many post-Alice cases resolved eligibility pre-discovery. | Held: §101 decision is ripe; no further claim construction needed for eligibility. |
| What burden/standard applies to eligibility at summary judgment? | TRA: patent validity presumed; clear-and-convincing standard applies. | WPP: §101 is a question of law; presumption of validity/clear-and-convincing not applicable to eligibility. | Held: No clear-and-convincing presumption applies to §101 eligibility; movant still must show ineligibility; court construes claims favorably to TRA. |
Key Cases Cited
- Alice Corp. v. CLS Bank, 134 S. Ct. 2347 (2014) (establishes two-step test for patent eligibility)
- Mayo Collaborative Servs. v. Prometheus Labs., 132 S. Ct. 1289 (2012) (preemption concern and step-two analysis for inventive concept)
- Bilski v. Kappos, 561 U.S. 593 (2010) (abstract ideas excluded from patentability)
- DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014) (narrow example of patent upheld under Alice where claim solved a technological problem)
- Content Extraction & Transmission LLC v. Wells Fargo, 776 F.3d 1343 (Fed. Cir. 2014) (invalidating claims directed to automated data collection/extraction)