The opinion of the court was delivered by: Shira A. Scheindlin, U.S.D.J.
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 against TRA for breach of contract.*fn1 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.
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.*fn3 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.*fn4
In June 2010, the Patent and Trademark Office issued the '940 Patent, with TRA designated as the sole assignee.*fn5 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").*fn6 TRA claims that Kantar approached it about licensing the '940 Patent in August 2010;*fn7 Kantar denies this and states instead that TRA made repeated efforts to license Patent '940 to it for a substantial fee.*fn8 The parties never agreed to a license.
Kantar released RVR in March 2011.*fn9 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.*fn10 Kantar also argues that the '940 Patent is invalid as obvious.*fn11 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.*fn12
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
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.*fn13 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.*fn14 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.*fn15
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.*fn16 Second, he asserts that 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.*fn17
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."*fn18 He states that with two exceptions, Claim 71 was taught by prior art as early as 1985.*fn19
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.*fn20 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 assigned -- was taught by prior art from 2000, and that privacy protection was required by Federal law.*fn21 As a result, he concludes that the method of matching and grouping data required by Claim 71 "would have been obvious to try. . . ."*fn22
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.*fn23 Second, he asserts that prior art did not
teach matching of purchase and media-exposure data.*fn24
Third, he notes ...