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TNS Media Research, LLC v. TRA Global, Inc.

United States District Court, S.D. New York

October 3, 2013

TNS MEDIA RESEARCH, LLC (d/b/a KANTAR MEDIA AUDIENCES) and CAVENDISH SQUARE HOLDING, B.V., Plaintiffs, -
v.
- TRA GLOBAL, INC. (d/b/a TRA, Inc.), Defendant. TRA GLOBAL, INC. (d/b/a TRA, Inc.), Counterclaim-Plaintiff, -
v.
- 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

Page 282

For TRA, Defendant and Counterclaim-Plaintiff: Nathan Lowenstein, Esq., Perry Mark Goldberg, Esq., Trevor Stockinger, Esq., Goldberg, Lowenstein & Weatherwax LLP, Los Angeles, California.

For WPP Companies, Plaintiffs and Counterclaim-Defendants: Marc Rachman, Esq., Andrew Keisner, Esq., Davis & Gilbert LLP, New York, New York; Michael A. Albert, Esq., John Strand, Esq., Charles Steenburg, Esq., Eric Rutt, Esq., Wolf, Greenfield & Sacks, P.C., Boston, Massachusetts.

OPINION

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OPINION AND ORDER

Shira A. Scheindlin, U.S.D.J.

I. INTRODUCTION

This is a dispute over intellectual property pertaining to marketing and advertising analytics. Plaintiffs TNS Media Research, LLC (d/b/a Kantar Media Audiences) (" Kantar Media" )--a market research company--and Cavendish Square Holding B.V. (" Cavendish" )--Kantar Media's affiliate--commenced this action on June 14, 2011 against defendant TRA Global, Inc. (" TRA" ). Kantar Media seeks a declaration that it has not infringed United States Patent No. 7,729,940 (the " '940 Patent" ), of which TRA is the sole assignee. Cavendish alleged in the complaint that TRA breached a contract entitling Cavendish to place a member on TRA's board, but subsequently dropped this claim.

Kantar Media and Cavendish are indirect subsidiaries of WPP PLC, the United Kingdom-based parent company of the largest advertising agency group in the world by revenue. WPP PLC (hereafter, " WPP Parent" ) also maintains WPP Group USA, Inc. (" WPP USA" ), Kantar Group Ltd. (" Kantar Group" ), and Kantar Retail America, Inc. (" Kantar Retail" ) (collectively with WPP PLC, Kantar Media and Cavendish, the " WPP Companies" ) as subsidiaries.

TRA asserts the following six counterclaims against Counterclaim-Defendants the WPP Companies (singly or in combination): (1) patent infringement of the '940 Patent (against Kantar Media); (2) patent infringement of United States Patent No. 8,000,993 (the " '993 Patent" ) (against Kantar Media and Kantar Retail); (3) patent infringement of United States Patent No. 8,112,301 (the " '301 Patent" ) (against Kantar Media and Kantar Retail); (4) aiding and abetting breach of fiduciary duty (against Kantar Media, Cavendish, WPP Parent, WPP USA, and Kantar Group); (5) misappropriation of trade secrets (against the WPP Companies); and (6) breach of contract (against Kantar Retail, Kantar Media, and WPP USA).

Discovery is complete. Presently before the Court is the WPP Companies' motion for summary judgment. The WPP Companies argue that TRA cannot satisfy its burden of proving: (1) cognizable trade secrets or the misappropriation thereof; (2) non-patent damages; or (3) infringement of any of the patent claims it asserts.[1]

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The WPP Companies further argue that the patents alleged by TRA are invalid, on various grounds.

The WPP Companies allege that this motion would " dispose of the case as a whole" if granted.[2] Because TRA has potentially viable theories of damages for its non-patent claims that are not addressed in the WPP Companies' motion, this is in fact only a partial motion for summary judgment.

For the following reasons, the motion is granted as to non-infringement, trade secrets, and non-patent damages, and moot as to invalidity.

II. BACKGROUND[3]

A. Overview

TRA--a nested acronym[4] meaning " True ROI for Media" [5]--was founded in 2007 with the goal of using modern data-mining techniques to determine the cost-effectiveness of advertisements.[6] It soon embarked upon an enviable growth trajectory. After its first financing round in August 2007, its post-money valuation was roughly ten million dollars; after its second round in May 2009, roughly twenty-seven million dollars; and after its third round in May 2010, roughly fifty-four million dollars.[7]

The WPP Companies--through their investment arm, Cavendish--got in on the ground floor, investing a substantial sum in each of TRA's first three financing rounds.[8] The companies even engaged in merger talks--about which more below--but these negotiations fell through shortly after the WPP Companies spent over a billion dollars acquiring Kantar Media, a competing market analytics provider. Subsequently TRA's value dropped precipitously, and it was purchased by TiVo for approximately $20 million in July 2012.[9]

Before delving into the summary judgment record in greater detail, it is helpful to sketch out the contrasting versions of events urged by the parties. TRA alleges that the WPP Companies engaged in merger negotiations solely for the purpose

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of learning its trade secrets and copying its now-patented technologies; that the WPP Companies used this knowledge to release a competing product; and that these actions froze the market, causing its value to take a nosedive. The WPP Companies counter that the merger negotiations failed because TRA had nothing of value to offer; that it developed its products independently over a period of years; and that TRA's value declined because overeager initial investors eventually began to question TRA's lack of sales.

TRA alleges the infringement of fifteen patent claims, five alleged trade secrets, and the non-patent claims identified above. First, I lay out the evidence pertaining to the patent claims; second, to trade secrets; and finally, to non-patent damages.

B. The Patent Claims Asserted by TRA

1. The '940 Patent

a. Claim Asserted

The '940 Patent--titled " Analyzing Return on Investment of Advertising Campaigns by Matching Multiple Data Sources" --issued on June 1, 2010 with TRA designated as the sole assignee.[10] As the title suggests, the claimed invention relates to a method for correlating the ads that consumers view with their purchasing behavior. Claim 71 is illustrative of the invention, and is the only claim of the '940 Patent asserted by TRA. It is set forth in full below.

A computer-implemented method for facilitating analysis of consumer behavior in association with advertising exposure or program delivery, the method comprising:
collecting in an advertising measurement system:
(i) clickstream data [a recording of the user's input into a media device, such as a computer or television set-top box] from a program delivery source of a consumer, wherein collecting the clickstream data is not dependent on a supplemental data collection device, and also wherein the collected clickstream data includes household level data associated with multiple consumer households;
(ii) advertising data associated with delivery of the program by the program delivery source, wherein collecting the advertising data is not dependent on a supplemental data collection device, and also wherein the collected advertising data includes household level data associated with multiple consumer households;
(iii) program data associated with the program delivered on the program delivery source, wherein collecting the program data is not dependent on a supplemental data collection device, and also wherein the collected program data includes household level data associated with multiple consumer households;
(iv) purchase data from a purchase data source, wherein collecting the purchase data is not dependent on a supplemental data collection device, and also wherein the collected purchase data includes household level data associated with multiple consumer households;
matching at least portions of the collected advertising data, the collected clickstream data, the collected purchase data, and the collected program data in the advertising measurement system at a

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household data level with a centrally located electronic computer processor configured for centrally processing data received from the program delivery source, the advertising data source, the program data source, and the purchase data source, wherein the matching further includes:
(i) grouping the collected data in association with an account identifier of each consumer household without processing any personally identifiable information associated with the consumer household, and
(ii) matching each account identifier associated with each consumer household with other account identifiers associated with the same consumer household without processing any personally identifiable information associated with the consumer household;
storing the matched advertising data, clickstream data, purchase data, and program data in at least one centrally located electronic data storage medium operatively associated with the computer processor;
applying at least one cleansing and editing algorithm to the matched and stored data; and,
calculating at least one true target index metric based on the matched and stored data.[11]

In sum, the '940 patent 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. For example, TiVo might collect data about the programs and advertisements its users watch, while Walgreens collected their purchasing information from customer loyalty cards; the companies might then group this data together and transmit it--without any personally identifying information--to TRA, which could use it to advise Proctor & Gamble whether to run ads for Tide Detergent during America's Got Talent.

b. Claim Construction Proceedings

A Markman hearing was held on July 6, 2012, and I subsequently issued an Order construing the two phrases in dispute as follows.[12]

Disputed Phrase

Construction

" data about a household that can be

" household level data associated with

later aggregated into a data set

multiple consumer households"

including multiple consumer

households"

" an algorithm to remove

" cleansing and editing algorithm"

inconsistencies in, correct, or otherwise

improve the reliability of data collected

from a program delivery source"

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The parties stipulated to the following claim term constructions, which were entered as an Order.[13]

Term

Stipulated Construction

" clickstream data from a program

" data describing a consumer's

delivery source of a consumer"

exposure to content delivered from a

program delivery source"

" advertising data associated with

" data describing advertisements

deliver of the program by the program

delivered from a program delivery

delivery source"

source"

" program data associated with the

" data describing media content

program delivered on the program

delivered from a program delivery

delivery source"

source"

" data describing the purchase of a

particular product at a given time,

" purchase data from a purchase data

obtained from a purchase data source,

source"

such as a shopping loyalty card, point

of sale collection means, or other

record of a sale of a product or service"

" a piece of hardware that is separate

from the program delivery source or

" supplemental data collection device"

purchase data source and is used for

the exclusive purpose of recording data

that facilitates analysis of consumer

behavior"

" a measurement of the benefit that a

" return on investment metric"

particular past investment ( e.g., an

advertisement) has produced in terms

of changed purchasing behavior"

" a report that allows users to compare

different media environments ( e.g .,

" true target index report"

particular programs, networks, or

dayparts) based on the likelihood that

consumers who meet a particular

profile will be exposed to such media"

" a process to account for differences

between the composition of the sample

" demographics weighting algorithm"

from which data is drawn and the

composition of the larger population

that one wants to study"

2. The '993 Patent

The '993 Patent--titled " Using Consumer Purchase Behavior for Television Targeting" --issued on August 16, 2011, and lists TRA as the sole assignee.[14] TRA asserts that Kantar Media and Kantar Retail have infringed claims 1, 2, 3, 7, 8, and 9. These claims are quoted in full below.

[Claim 1]:

A computer-implemented system for facilitating analysis of consumer behavior in association with advertising exposure

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or program delivery, the system comprising:
an advertising measurement system including at least one electronic computer processor configured for:
[(i)] collecting clickstream data from a program delivery source of a consumer, wherein collecting the clickstream data is not dependent on a supplemental data collection device, and also wherein the collected clickstream data includes household level data associated with multiple consumer households;
(ii) collecting advertising data associated with delivery of the program by the program delivery source, wherein collecting the advertising data is not dependent on a supplemental data collection device, and also wherein the collected advertising data includes household level data associated with multiple consumer households;
(iii) collecting programming data associated with the program delivered on the program delivery source, wherein collecting the programming data is not dependent on a supplemental data collection device, and also wherein the collected programming data includes household level data associated with multiple consumer households;
(iv) collecting purchase data from a purchase data source, wherein collecting the purchase data is not dependent on a supplemental data collection device, and also wherein the collected purchase data includes household level data associated with multiple consumer households; and
(v) matching at least portions of the collected advertising data, the collected clickstream data, the collected purchase data, and the collected programming data at a household data level;
wherein the collected data include a first identifier associated with the household assigned to the program delivery source;
a module configured to use a thesaurus for:
(i) producing data from the collected data without personally identifiable information, and
(ii) indexing the produced data with a second identifier, wherein the thesaurus relates each first identifier of each household to the second identifier;
at least one electronic data storage medium operatively associated with the computer processor, the data storage medium configured for storing the matched advertising data, clickstream data, purchase data, and programming data;
a module programmed for applying at least one cleansing and editing algorithm to the matched data or the stored data; and
a module programmed for calculating at least one return on investment metric or true target index metric based on the matched or stored data.[15]
[Claim 2]
The system of claim 1, further comprising:
a list matcher configured to:
receive data communicated in parallel from the one or more data sources, the communicated data comprising at least personally identifiable information associated with the household and the first identifier associated with the household assigned by the data source;

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generate the thesaurus relating each first identifier associated with the household to the second identifier; and
send the thesaurus to the module configured to use the thesaurus.[16]
[Claim 3]
The system of claim 1, wherein the thesaurus is configured for relating an account number identifier to at least one other account number identifier associated with the same household across multiple data sources.[17]
[Claim 7]
A computer-implemented method for facilitating analysis of consumer behavior in association with advertising exposure or program delivery, the method comprising:
collecting in an advertising measurement system:
(i) clickstream data from a program delivery source of a consumer, wherein collecting the clickstream data is not dependent on a supplemental data collection device, and also wherein the collected clickstream data includes household level data associated with multiple consumer households;
(ii) advertising data associated with delivery of the program by the program delivery source, wherein collecting the advertising data is not dependent on a supplemental data collection device, and also wherein the collected advertising data includes household level data associated with multiple consumer households;
(iii) programming data associated with the program delivered on the program delivery source, wherein collecting the programming data is not dependent on a supplemental data collection device, and also wherein the collected programming data includes household level data associated with multiple consumer households; and,
(iv) purchase data from a purchase data source, wherein collecting the purchase data is not dependent on a supplemental data collection device, and also wherein the collected purchase data includes household level data associated with multiple consumer households;
matching at least portions of the collected advertising data, the collected clickstream data, the collected purchase data, and the collected programming data in the advertising measurement system at a household data level with at least one electronic computer processor configured for processing data received from the program delivery source, the advertising data source, the programming data source, and the purchase data source, wherein the matching further includes:
[(i)] receiving data including a first identifier associated with the household assigned by the data source, and
(ii) electronically using a thesaurus for: producing data without personally identifiable information, and indexing the produced data by a second identifier, wherein the thesaurus relates each first identifier of the household to the second identifier; storing the matched advertising data, clickstream data, purchase data, and programming data in at least one electronic data

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storage medium operatively associated with the computer processor; applying at least one cleansing and editing algorithm to the matched data or the stored data; and, calculating at least one return on investment metric or true target index metric based on the matched or stored data.[18]
[Claim 8]
The method of claim 7, further comprising:
receiving data communicated in parallel from the one or more data sources, the communicated data comprising at least personally identifiable information associated with the household and the first identifier associated with the household assigned by the data source; and,
generating the thesaurus for relating each first identifier associated with the household to the second identifier.[19]
[Claim 9]
The method of claim 7, further comprising using the thesaurus for relating an account number identifier to at least one other account number identifier associated with the same household across multiple data sources.[20]

3. The '301 Patent

The '301 Patent--titled " Using Consumer Purchase Behavior for Television Targeting" --issued on February 7, 2012, and lists TRA as the sole assignee.[21] TRA asserts that Kantar Media and Kantar Research have infringed claims 1, 23, 42, 47, 49, 63, 108, and 109, which are set forth in full below.

[Claim 1]
A computer-implemented method for facilitating analysis of consumer behavior in association with advertising exposure or program delivery, the method comprising:
collecting in an advertising measurement system:
(i) clickstream data from a program delivery source of a consumer, wherein collecting the clickstream data is not dependent on a supplemental data collection device, and also wherein the collected clickstream data includes household data;
(ii) advertising data associated with delivery of the program by the program delivery source, wherein collecting the advertising data is not dependent on a supplemental data collection device, and also wherein the collected advertising data includes household level data associated with multiple consumer households;
(iii) programming data associated with the program delivered on the program delivery source, wherein collecting the programming data is not dependent on a supplemental data collection device, and also wherein the collected programming data includes household level data associated with multiple consumer households; and,
(iv) purchase data from a purchase data source, wherein collecting the purchase data is not dependent on a supplemental data collection device, and also wherein the collected purchase data includes household data;

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matching at least portions of the collected advertising data, the collected clickstream data, the collected purchase data, and the collected program data in the advertising measurement system at a household data level with at least one electronic computer processor configured for processing data received from the program delivery source, the advertising data source, the programming data source, and the purchase data source, wherein the matching further includes:
(i) grouping the collected data in association with an identifier of each consumer household without processing any personally identifiable information associated with the consumer household, and
(ii) matching each identifier associated with each consumer household with other identifiers associated with the same consumer household without processing any personally identifiable information associated with the consumer household;
storing the matched advertising data, clickstream data, purchase data, and programming data in at least one electronic data storage medium operatively associated with the computer processor;
applying at least one cleansing algorithm or editing algorithm to the collected data, the matched data or the stored data; and,
calculating at least one return on investment metric or true target index metric based on the collected data, the matched data or the stored data.[22]
[Claim 23]
The method of claim 1, further comprising receiving clickstream data derived from a program delivery source comprising a television set-top box operatively associated with a television distribution system.[23]
[Claim 42]
The method of claim 1, further comprising using at least a portion of the matched data to drive at least one addressable commercial to the household.[24]
[Claim 47]
The method of claim 1, wherein the purchase data are associated with product purchase records of a discount card associated with the consumer.[25]
[Claim 49]
The method of claim 1, further comprising generating a true target index report in the advertising measurement system.[26]
[Claim 63]
A system for facilitating analysis of consumer behavior in association with advertising exposure or program delivery, the system comprising:
an advertising measurement system including an electronic computer programmed for:
(i) collecting clickstream data from a program delivery source of a consumer, wherein collecting the clickstream data is not dependent on a supplemental data collection device, and also wherein the collected clickstream data includes household data;
(ii) collecting advertising data associated with delivery of the program by the program delivery source,

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wherein collecting the advertising data is not dependent on a supplemental data collection device, and also wherein the collected advertising data includes household level data associated with multiple consumer households;
(iii) collecting programming data associated with the program delivered on the program delivery source, wherein collecting the programming data is not dependent on a supplemental data collection device, and also wherein the collected programming data includes household level data associated with multiple consumer households; and,
(iv) collecting purchase data from a purchase data source, wherein collecting the purchase data is not dependent on a supplemental data collection device, and also wherein the collected purchase data includes household data;
(v) matching at least portions of the collected advertising data, the collected clickstream data, the collected purchase data, and the collected program data in the advertising measurement system at a household data level with at least one electronic computer processor configured for processing data received from the program delivery source, the advertising data source, the programming data source, and the purchase data source, wherein the matching further includes:
(i) grouping the collected data in association with an identifier of each consumer household without processing any personally identifiable information associated with the consumer household, and
(ii) matching each identifier associated with each consumer household with other identifiers associated with the same consumer household without processing any personally identifiable information associated with the consumer household;
at least one data storage medium operatively associated with the computer processor, the data storage medium configured for storing the matched advertising data, clickstream data, purchase data, and programming data;
a module programmed for applying at least one cleansing algorithm or editing algorithm to the collected data, the matched data or the stored data; and,
a module programmed for calculating at least one return on investment metric or true target index metric based on the collected data, the matched data or the stored data.[27]

4. Overview of Patent Claims

As set forth by Charles F. Thomas, the WPP Companies' technical expert, all of the patents in suit require five basic steps:

(1) " collecting" four different types of household-level data ( i.e., " clickstream data," " advertising data," " program" (or " programming" ) data, and " purchase data" ) without relying on " supplemental data collection devices; "
(2) " matching at least portions of the [data] at a household data level" by means of a blind-matching technique, in which:
(A) the collected data is grouped together by means of an account identifier without processing any personally identifiable information and
(B) different account identifiers corresponding to a single household are associated together, also without

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processing any personally identifiable information;
(3) " storing" the matched data;
(4) " applying" at least one " cleansing and editing algorithm" (or a " cleansing algorithm" or an " editing algorithm" in the case of the '301 Patent) to the data; and,

(5) " calculating" at least one metric (with a " true target index metric" always one of the possible options) based on the data.[28]

5. Evidence Pertaining to Infringement

TRA alleges that five products--falling into one of two product categories--infringe its patents: (1) the Auto Products (comprising RapidView Auto and Charter with Auto); and (2) the Consumer Packaged Goods (" CPG" ) Products (comprising RapidView Retail, RapidView for Retail, and Charter with CPG).[29] The Auto Products match information about motor vehicle registrations maintained by J.D. Power & Associates with television viewing data, while the CPG Products match television viewing data to data gleaned from supermarket loyalty cards.[30]

In support of their motion for summary judgment of non-infringement, the WPP Companies allege 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.[31]

Because I conclude that summary judgment is warranted based on arguments (1), (2), and (5), only the evidence supporting these arguments is summarized below.

a. Evidence Pertaining to Whether the CPG Products Collect " Purchase Data"

All of the asserted claims contain the limitation " [collect] purchase data from a purchase data source" (the " Purchase Data Limitation" ). The stipulated construction of this limitation is " data describing the purchase of a particular product at a given time, obtained from a purchase data source, such as a shopping loyalty card, point of sale collection means, or other record of a sale of a product or service."

Based on the declaration of Kantar Media's president--George Shabbab--the WPP Companies allege that the CPG Products do not practice this limitation, because they collect information only about user types-- e.g., whether a user is a

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heavy, medium, or light user of a product or product category--but not information about when a particular purchase is made.[32] Specifically, Shabbab declares that although the CPG Products receive purchase information from consumer surveys and use it to place consumers into " user types" -- e.g., " Yogurt Category -- Heavy," " Yogurt Category -- Medium" and " Yogurt Category -- Light" --these user types (and the information from which they are generated) " convey[] nothing about the given time when any actual purchase(s) occurred." [33] In sum, the WPP Companies acknowledge that the CPG Products utilize information from " purchase data source[s]," but argue that they do not receive or utilize " data describing the purchase of a particular product at a given time . . . ."

In opposition to the WPP Companies' argument that the CPG Products do not practice the Purchase Data Limitation, TRA alleges that: (1) multiple Kantar witnesses have admitted that the CPG Products collect " purchase data," and the WPP Companies have admitted the same in Court filings; (2) the CPG Products utilize data from customer loyalty cards; (3) the CPG Products utilize survey information collected over " a given time," even if they do not utilize the precise time of a particular sale; and (4) the CPG Products practice collecting " purchase data" as taught by the patents in suit.[34] The evidence submitted by TRA in support of these allegations is summarized below.

First, TRA presents the testimony of various Kantar witnesses who have testified that the CPG Products use " purchase data." [35] However, none of these witnesses state that this purchase data includes " data describing the purchase of a particular product at a given time," as the stipulated construction requires; instead, these witnesses all acknowledge that the CPG Products utilize 'purchase data' in the ordinary sense of 'data about purchases,' a proposition that is not in dispute. Likewise, TRA's citation to Kantar's brief in opposition to TRA's motion for a preliminary injunction is not relevant to the Purchase Data Limitation at this juncture, because this brief makes no mention of purchase data " at a given time." [36]

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Second, the evidence presented by TRA that the CPG Products utilize data from customer loyalty cards is inapposite, as these cards are used in the stipulated construction as an example of a " purchase data source ," not as purchase data themselves.[37] Wine may flow from a bottle, but not everything from a bottle is wine. Similarly, the undisputed fact that the CPG Products utilize data from customer loyalty cards, a " purchase data source," does not imply that the CPG Products utilize purchase data within the meaning of the stipulated construction.

TRA's third contention--that the consumer survey data utilized by the CPG Products must be collected over a " given time" --is more to the point. In support of this contention, TRA offers the declaration of its expert Carl F. Mela, Ph.D., who opines that:

" [A]t a given time" is not meant to refer necessarily to the purchase of a particular product at a particular moment in time, but can refer to a period of time, such as a month, during which purchase events may occur. Kantar notably submits no expert opinions in support of its theory, and Dr. Madansky [the WPP Companies' Expert] voices agreement with my position on this point. The patents also support this position, for they define purchase data broadly to include data of various timeframes and aggregations.[38]

TRA's final contention is that " the CPG products collect data that include information on when a particular product or product category was purchased. . . ." [39] The basis for this assertion is Mela's opinion that " [t]o determine whether households are 'heavy,' 'medium,' or 'light' purchasers of a product, it is necessary to define a period of time over which purchases are made." [40] In short, based on Mela's declaration, TRA asserts that the CPG Products necessarily collect " data describing the purchase of a particular product at a given time" in classifying households as heavy, medium, or light purchasers of a product, because these terms are meaningless without reference to a period of time, even if that period of time is not reflected in the data used by the CPG Products.

In response, the WPP Companies submit Shabbab's declaration alleging that, although the consumer surveys used by the CPG Products " are obviously based on a certain window over which household behavior is observed[,] . . . the information received by the CPG Products conveys nothing about the given time when any actual purchase(s) occurred. Nor do the CPG Products perform any sort of analysis that depends on the length of the observation window." [41]

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b. Evidence Pertaining to the Auto Products

i. Double-Blind Matching of Data

All of the asserted patents require double-blind matching, i.e., using a trusted intermediary that does not receive any operative data to match two sets of identifiers, e.g., clickstream data and data about automobile purchases.[42] Based on Shabbab's declaration, the WPP Companies allege that the Auto Products do not utilize double-blind matching, because: (1) Experian--Kantar Media's third-party partner--uses the same account identifier (set-top box information from, e.g., DirecTV) to match auto registration data that Kantar Media ultimately uses; and (2) J.D.Power sends automobile registration data as well as personally identifying information to Experian.[43] In particular, Shabbab alleges that " Experian. . . appends J.D. Power[s] purchase attribute data to the DirecTV [identifier], removes all [personally identifying information], and sends the data to [Kantar Media]. [Kantar Media] uses the same DirecTV [identifier] to correlate [set-top box] data with J.D. Power[s] purchase attribute data." [44] In other words, Experian allegedly learns both personally identifying information and purchase attribute data.

Based on an unsigned draft contract (the " Experian Contract" ) between J.D. Power and Experian, TRA contends that J.D. Power does not send personally identifying information to Experian, and further contends that Experian matches a DirecTV identifier to a unique identifier provided by J.D. Power, as opposed to the names of users.[45] The contract states in pertinent part:

WHEREAS, J.D. Power and Associates (" Advertiser" ) is interested in having J.D. Power's data file matched to Kantar Media's [] (" Client" ) data file; . . . .
J.D. Power will deliver to Experian, through Experian's secure data transfer site, J.D. Power's data file, which include [sp] the following data fields: Unique Key [identifier], last name, address, city, state, zip code (" J.D. Power Data" ) on the condition that:
1. Experian will use the J.D. Power Data solely for the purpose of performing anonymous, blind matching of it to certain Client data (" KM Data" ) provided to Experian by Client. Experian will run a process to associate the names and addresses from Client with the names and address[es] from Advertiser and create a unique identification number that anonymously links common names and addresses (the " MatchedID Service" ).

Additionally, TRA argues that Shabbab lacks personal knowledge to testify as to what information J.D. Power sends to Experian.[46]

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ii. Whether the Auto Products Use a 'Thesaurus'

The asserted claims of the '993 Patent require the use of a " thesaurus" for matching one household identifier to a second household identifier. The specification of the '993 Patent teaches that a " thesaurus" is a table that " relates, on a company-by-company basis, each account number to other account numbers associated with the same household and the [unique key] [] generated in response to the data package" received by the network operator.[47] In sum, the thesaurus relates two sets of private/public key pairs, such that no module in the system--saves the thesaurus--receives personally identifiable information that may be matched to operative data.[48]

The WPP Companies argue that the Auto Products do not employ a thesaurus, and therefore do not literally infringe the claims of the '993 Patent.[49] TRA counters this argument by once again citing the Experian Contract.

c. Evidence Pertaining to the Doctrine of Equivalents

TRA's sole evidence that the CPG Products infringe under the doctrine of equivalents is Mela's declaration alleging that: (1) " [the] same evidence of literal infringement [set forth in Mela's expert report] helps support [the] conclusion of infringement under the doctrine of equivalents[; ]" [50] and (2) the CPG Products' collection of purchase data inevitably evidences purchases of a particular product over a given time period.[51] The WPP Companies object that this theory was not disclosed in Mela's expert reports.[52]

C. TRA's Alleged Trade Secrets

TRA alleges the following five trade secrets:

(1) Media TRAnalytics'--TRA's product--speed, reliability, scalability and performance;
(2) TRA's client lists and client interactions,
(3) TRA's strategic plans,
(4) TRA's product positioning; and,
(5) TRA's capital structure, financials, financing proposals target investor list, and offers to acquire or merge the company.[53]

The WPP Companies argue that the trade secrets alleged by TRA: (1) are insufficiently detailed to merit trade secret protection; (2) have been publicly disclosed; and (3) have not been used by the WPP Companies.[54] One of the bases for the WPP Companies' motion is that, rather than identifying its trade secrets with specificity, TRA instead cited to vast page-ranges in its omnibus discovery materials. In its opposition to this motion, TRA has narrowed the scope of its trade secrets to a more limited set of documents. These documents are set forth below.

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1. Evidence Presented by TRA

a. The Creation of TRAnalytics

Based on Mela's declaration, TRA alleges that it " created the first economically viable single-source data system." [55] Mela's opinion is based on the contention that TRA's Media TRAnalytics platform, unlike prior-art single-source solutions, employs: (1) passive data collection--with no need for survey participants to push buttons--permitting a larger sample, and reducing the cost of paying survey participants; and (2) efficient techniques for handling the large sample-sizes enabled by passive data collection.[56] According to a memorandum submitted by TRA, TRAnalytics took thirty-five thousand person-hours and twenty-three million dollars to develop.[57]

The WPP Companies deny that TRA created the first economically viable single-source solution. They present Shabbab's declaration that Kantar Media's SkyView service--a predecessor to the accused products, predating Media TRAnalytics--is an 'economically viable' single-source solution that remains profitable to this day.[58] In further support of this point, the WPP Companies submit an internal TRA document dated September 1, 2009 that, in evaluating the pros and cons of various strategic partnerships, states: " Sky already has a 'TRA' with TNS called SkyView . . . they use it to boost ad sales by leveraging it as an ad premium. . . which could foul up any future negotiations with them as partner." [59] In short, the memorandum acknowledges that SkyView is similar to TRAnalytics, and accurately speculates that this could scotch partnership talks with Kantar.

b. The Relationship Between Kantar and TRA

The following documents submitted by TRA evidence how TRA was perceived by the WPP Companies during the early years of TRAnalytics:

o A memorandum sent to Brian Sullivan--of WPP--on October 4, 2008 by Bill McKenna--Kantar Media executive and TRA board member--for the purposes of providing a recommendation on TRA's request for a bridge loan between its first and second rounds of financing states that: " TRA provides global marketers and media owners with the continuous single source media measurement service that Arbitron, Nielsen, IRI, GFK, TNS and other media research service providers have unsuccessfully pursued for the better part of the past three decades." [60]
o A November 28, 2008 email to Mark Read--a WPP director--from Sheila Spence--then SVP of Corporate Development at WPP--states that Bill McKenna then felt that extending a pro-rata stake of a one million dollar bridge loan to TRA was good business for WPP, because although

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TRA was losing money, this would prevent TRA from competing more strenuously with TNS.[61] The email further states that McKenna " want[s] to keep the TRA team and assets close and friendly because [he] believe[s] that the TNS offering is fundamentally flawed and will not succeed unless TNS teams up with a TRA-type advanced offering (TRA is the only one right now)." [62]
o A memorandum attached to the just-mentioned Spence email lists " Purchase data matching at the individual [household] level for targeting and ROI" under " TRA Strengths[,]" and states that " no one else is doing this." [63]
o Through a March 25, 2009 email, Bill Lederer--COO of Kantar Media--advised a Kantar Media employee to " [s]tarve TRA for cash if you can, then offer hope in the form of a very short, secured convertible bridge loan[]" if a certain client delayed making a decision between TRA, Kantar Media, and another vendor.[64]
o On March 19, 2010, Eric Salama--Kantar Group's CEO--sent an email to various Kantar and WPP officers and directors (the " March Salama Email" ) stating that " TRA has got something going for it and some momentum with clients and[,] [] crucially, it 'owns' a space [that] links [return path data] [( i.e., set-top box data)] and consumption[,] which is critical to us. Could we own it through a combination of our own resources -- yes? Is it likely we can get there ourselves in the next couple of years -- not unless we do something very different." [65]

All in all, the documents above show that Kantar Media was interested in TRA's ability to link consumer data with set-top box data in the consumer products sphere, but was skeptical of Kantar Media's lack of revenue traction.

c. Lieberman's Declaration Regarding Trade Secrets

Regarding its alleged trade secrets and the measures it took to keep them confidential, TRA submits the declaration of its CEO, Mark S. Lieberman. Lieberman describes TRA's five alleged trade secrets as follows:

a. Strategic Plans: detailed information regarding the markets TRA is focused on and the timing of entry into new markets, and the details of conversations with potential strategic partners.
b. Customers and Customer Interactions: information on customer contract terms and pricing; customer negotiations and the stage of negotiations; customer proposals; detailed information about customers in the pipeline and detailed information about potential deals with potential customers.
c. Speed, Reliability and Performance of Media TRAnalytics® : detailed information including the specifications relating to speed of report generation; combinations for ensuring reliability; the structure of the system;

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the data ingestion process; the secure hosted infrastructure; the number and capabilities of the servers; and the combination of these elements of the system.
d. Product Positioning: detailed internal analysis that compares TRA to other advertising measurement companies; internal comparison of product data; specific or technical information relating to targeting swing purchasers; and internal analysis on ROI.
e. Financial Information: TRA's detailed capital structure, financial statements and projections, including TRA's income statement, profit & loss, balance sheet (actual and projected, Capex and cash flow (actual and projected); information costs; financing proposals; target investor lists and offers to acquire or merge the company.[66]

Lieberman further alleges that the WPP Companies were provided with documents disclosing these trade secrets at various times between 2007 and 2010, with the expectation of confidentiality, and for the purposes of either financing or merger negotiations.[67] Specifically, Lieberman alleges that: (1) pursuant to a March 2009 NDA between Kantar Media and TRA, confidential TRA information received by Kantar Media was not to be shared with Kantar Media executives Dean DeBiase, Lederer, or Shabbab, because they were directly involved with Kantar Media's strategic planning and product development, but confidential information was transmitted to them nevertheless; and (2) TRA provided Kantar Media with confidential demonstrations of the capabilities of TRAnalytics in 2009 and 2010; and (3) Kantar Retail--a separate division of the Kantar family--was provided with access to TRAnalytics as part of a purchase data licensing agreement, and is governed by an end user license agreement (" EULA" ) requiring users to maintain confidentiality.[68]

d. Documents Identified by TRA Regarding the Description of Its Trade Secrets

This section identifies the documents alleged by TRA in opposition to the WPP Companies' argument that it has failed to point to evidence of specificity and use, and the WPP Companies' reply. In brief, the WPP Companies object to all of the documents submitted by TRA in support of its trade secrets, on the grounds that it is too late now for TRA to finally describe its trade secrets with specificity. The WPP Companies separately maintain that the documents alleged by TRA do not describe protectable trade secrets, because they are too vague, and/or because they have been publicly disclosed.

(1) TRAnalytics' speed, reliability, scalability and performance (hereafter, the " TRAnalytics Secret" )

a. Material facts alleged by TRA

TRA has never publicly disclosed the following: specific technical information re Media TRAnaltytics' speed, performance and reliability, including information on the specifications relating to speed of report generation, combinations for ensuring reliability, methods for allowing scalability, structure of the system, its data ingestion process, information about the secure hosted infrastructure; information about the number

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and capabilities of the servers; and information about how these elements combine to achieve certain results.[69]

b. The WPP Companies' Reply

Denied, and immaterial on the issues of specificity and use. TRA publicly disclosed the identified information. The identified information was also publicly known as TRA borrowed its technical solution from a loyalty card data analytics company in the UK. There is a fundamental mismatch between TRA's characterization of its one remaining " technical" supposed trade secret (now, too late, defined narrowly) and its claim that Kantar somehow " used" that supposed secret (i.e., based on the " two week" theory and backed only by attorney speculation, notwithstanding TRA's prior representation to the Court that expert testimony was necessary to establish use given the nature of TRA's claims and the available evidence). Separately, Rule 37 bars TRA from now identifying for the first time a small number of pages as its supposed trade secrets, in contrast to the hundreds of pages identified during discovery.[70]

c. The Documentary Record

TRA submits the following documents in defining the TRAnalytics Secret.

o A March 3, 2009 non-disclosure agreement (the " March 2009 NDA" ) entered into between TRA and the WPP Companies, and signed by Spence--in her capacity as Senior Vice President of the WPP Group. DeBiase, Shabbab, and Lederer are explicitly named as people to whom the information conveyed by TRA may not be transmitted.[71]
o An EULA for TRAnalytics dated January 6, 2009. It provides that " [e]ach party agrees that the Confidential Information of the disclosing party is the property of the disclosing party at all times during the performance of this contract and after the termination of this contract and in perpetuity that users of the system. . . ." [72]
o A table dated February 15, 2009 (the " Due Diligence Table" ) comparing the features of TRAnalytics with Kantar Media's InfoSys product, attached to due diligence materials produced by TRA to the WPP Companies on March 3, 2009. For example, it reveals that TRAnalytics is faster, better able to scale with a larger data set, etc.[73]
o A memo dated May 18, 2010 summarizing the technical capabilities of TRAnalytics. The memo reveals anodyne features of TRAnalytics, e.g., that it employs " enterprise grade firewalls. . . ." [74]
o Excerpts from a memo dated March 2009 (the " March 2009 Memo" ) titled " TRA Overview March 2009 WPP TRA Trade Secret." The portions of the memo cited to by TRA contain

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high-level statements about TRAnalytics, e.g., that it uses " [c]lustered load balances" and " Raid5 for storage. . . ." [75]
o A network map describing the operation of TRAnalytics on a high level, and list of computer hardware involved.[76]

In reply, the WPP Companies submit:

o TRA's response to their interrogatories, showing that TRA initially designated a vast and undifferentiated group of documents in defining this allege trade secret.[77] The WPP Companies submit a like response to all of TRA's alleged trade secrets.
o A 4/28/08 TRA press release disclosing various features of TRAnalytics on a high level, e.g., that it is compatible with clients' legacy systems through the use of application programming interfaces (" APIs" ).[78]
o A 2/23/09 TRA press release announcing that TRA chose to use Kognitio as the data warehousing service for TRAnalytics. In addition to making this announcement, the press release reveals the number of households reached by TRA, and that TRA is ISO 27001 Certified for security.[79]
o A 11/14/08 Email from Brian Canning--a TRA executive--to various TRA employees and officials, sent in the context of selecting a new database solution for TRAnalytics. It states that Kognitio--the solution ultimately selected by TRA--was then being used by LMG, a United Kingdom company, and that LMG officials praised Kognitio's performance, support, deployment, stability, and consistency.[80]
o A 2/26/08 LMG press release detailing LMG's partnership with Kognitio.[81]

(2) TRA's client lists and client interactions (hereafter, the " Clients Secret" )

a. Material facts alleged by TRA

" TRA has never publicly disclosed the following: its customer contract terms and pricing; Information about customer negotiations and the stage of such negotiations; customer proposals; and detailed information about customers in the pipeline." [82]

b. The WPP Companies' Reply

Denied, and immaterial on the issues of specificity and use. TRA publicly disclosed the identified information. The identified information is dated February or March 2009, more than a year before mid-2010, when TRA alleges Kantar began improperly using TRA information. The fact that TRA's 2009 pipeline included 62 companies and $24 million of potential business would have been stale and meaningless by 2010, especially

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since almost none of it became actual revenue. TRA fails to explain how Kantar could have used this stale information. Two of the cited pages disclose information about a " '$500k annual deal being negotiated" for BMS [Bristol Meyers Squibb]," a pharmaceutical company.
TRA fails to explain how Kantar could have used such data given that its accused products use only CPG and automotive -- not pharmaceutical -- data.
Separately, Rule 37 bars TRA from now identifying for the first time a small number of pages as its supposed trade secrets, in contrast to the hundreds of pages identified during discovery.[83]

c. Documentary Record

TRA submits the following documents in defining this trade secret.

o The March 2009 NDA.
o A slide from a PowerPoint presentation titled " TRA Overview" and dated March 2009 (the " March 2009 PowerPoint" ). It provides CBS, Turner, General Mills, Discovery, MediaVest, and BMS as " customer examples." [84]
o A slide from the March 2009 PowerPoint titled " Sales Pipeline Update" listing networks, advertisers, and agencies in TRA's sales pipeline.[85]
o Slides from the March 2009 PowerPoint detailing TRA's sales pipeline, i.e., identifying clients it had under contract.[86]
o A memorandum attached to a 10/20/09 Email from Sullivan to Terry Kent--of Kantar Media--Jeff Krentz--of WPP--and Spence (the " Sullivan Email" ). The email identifies the number of clients in TRA's pipeline, as well as the value of these clients.[87]

The WPP Companies submit the following documents in reply.

o A slide from a presentation titled " TRA Executive Summary[,]" presented at the ARF 360 Chicago Workshop on May 25, 2010. (ARF is an advertising industry research/trade group). The slide discloses a " partial list" of TRA customers, including " P& G, Kraft, Mars, Merck, General Mills, Intel, MediaVest, GroupM, Zenith OptiMedia, CBS, Viacom Networks, FX, National Geographic Channel. . . ." [88]
o Slide seven from a presentation given by TRA to ARF on April 8, 2009. It discloses a number of current TRA clients.[89]
o Several figures from the '940 Patent, which disclose General Mills at an advertiser-client.[90]

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(3) TRA's strategic plans (hereafter, the " Strategy Secret" )

a. Material facts alleged by TRA

" TRA has never publicly disclosed the following: its strategic plans, including detailed information regarding the markets that TRA is focused on and its plans regarding the timing of entry into new markets." [91]

b. The WPP Companies' Reply

Denied, and immaterial on the issues of specificity and use. TRA publicly disclosed the identified information. Further, TRA fails to explain how Kantar could have used TRA's " plans regarding the timing of entry into new markets," all of which are dated early 2009, to decide over a year later to launch the Accused Products. Separately, Rule 37 bars TRA from now identifying for the first time a small number of pages as its supposed trade secrets, in contrast to the hundreds of pages identified during discovery. In any event, the disputed fact is immaterial because TRA's identified information is not protectable under New York law.[92]

c. Documentary Record

TRA submits the following documents in support of the Strategy Secret.

o The March 2009 NDA.
o A page from the March 2009 Memo describing TRA's " [s]trategic [r]elationships[,]" e.g., its partnership with Experian to receive demographic data, and its partnership with Kantar Media to receive national and spot advertising schedules.[93]
o Pages from the March 2009 Memo providing (1) a high-level overview of TRA's business model; and (2) a balance sheet reflecting TRA's staffing plan for the years 2008-2011.[94]
o A table attached to the due diligence materials sent from TRA to the WPP Companies in March 2009. The table reveals that, unbeknownst to Kantar Media, TRA was then working with Comcast.[95]
o Minutes from two TRA board meetings, held on February 2, 2009 and May 12, 2009. The only portions of relevance to the alleged Strategy Secret relate to future expectations, e.g., " Theme: course correction; focus[:] build platform for $100mm revenues. . . ." Based on the minutes, the focus of the board meetings appears to have been launching TRAnalytics 2.0.[96]

In reply, the WPP Companies submit a 4/28/08 TRA press release announcing the launch of TRAnalytics 2.0.[97]

(4) TRA's product positioning (the " Positioning Secret" )

a. Material facts alleged by TRA

" TRA has never publicly disclosed the following: information on product positioning, including a detailed internal analysis that compares TRA to other advertising measurement companies; specific or technical information relating to targeting

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swing purchasers; and its internal analyses on ROI." [98]

b. The WPP Companies' Reply

Denied, and immaterial on the issues of specificity and use. TRA publicly disclosed the identified information. Separately, Rule 37 bars TRA from now identifying for the first time a small number of pages as its supposed trade secrets, in contrast to the hundreds of pages identified during discovery. This disputed fact is immaterial because the identified information is not protectable as a trade secret under New York law.[99]

c. Documentary Record

In support of the Positioning Secret, TRA submits the following documents.

o The March 2009 NDA.
o A table attached to the March 2009 Memo comparing TRA with four competitors with respect to various metrics, e.g., whether they use purchase data for household matching, whether they support the use of an API for legacy clients, etc.[100]
o A series of three graphs attached to the March 2009 Memo arguing that the use of TRAnalytics leads to a greater marginal increase in sales revenue per ad, due to TRAnalytics' superior targeting of " swing purchasers. . . ." [101]
o The Due Diligence Table comparing Kantar Media's InfoSys product with TRAnalytics.[102]

Because the issue is amenable to resolution as a matter of law based TRA's submission, I will not summarize the documents submitted by WPP.

(5) TRA's capital structure, financials, financing proposals, target investor list, and offers to acquire or merge the company (the " Financial Secret" )

a. Material facts alleged by TRA

TRA has never publicly disclosed the following: its detailed capital structure; its financial statements and projections, including its income statements, profit & loss statements, and actual and projected balance sheets; its Capex and actual and projected cash flow; information on its costs; its financing proposals; its target investor lists; and offers to acquire or merge the company.[103]

b. The WPP Companies' Reply

" Denied, and immaterial on the issues of specificity and use. TRA disclosed the identified information without NDAs in place. Separately, Rule 37 bars TRA from now identifying for the first time a small number of pages as its supposed trade secrets, in contrast to the hundreds of pages identified during discovery." [104]

c. Documentary Record

In support of the Financial Secret, TRA submits the following documents.

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o The March 2009 NDA.

o Portions of the March 2009 Memo disclosing TRA's profit and loss statement, balance sheet, staffing plan, etc .[105]

o An attachment to the Sullivan Email prepared by the WPP Companies' corporate development department during TRA and the WPP Companies' merger negotiations. The Sullivan Email notes that the numbers are " very stale." The attachment is a " pro forma combination analysis" of TRA and Kantar Media. It includes summary financials for TRA for the years 2008, 2009, and 2010.[106]
o A document titled " TRA Investment Update -- 10-03-08" --and labeled " Restricted to Internal WPP Use on a Need-to-Know Basis" --originally attached to an email sent from McKenna to Sullivan. Attached to the document is a PowerPoint reflecting TRA's financials. The document provides support for TRA's allegation that the WPP Companies intended to starve TRA for cash; it states that " [t]he combination of higher expenses and lagging revenues has shortened by 3-5 months the timing that [Kantar Media] had originally forecast for TRA to require additional operating funds. . . ." [107]

In reply, the WPP Companies submit a table dated February 19, 2010 disclosing that TRA contacted thirty-seven potential investors in 2010 without NDAs. The rightmost column of the table is labeled " Comments[,]" and it indicates that the contacted investors received the information that TRA now claims constitutes the Financial Secret: the investors comment on TRA's " negative gross margin," " 2010 plan," " capital raised," etc.[108]

e. Evidence that the WPP Companies Received and Used TRA's Alleged Trade Secrets

TRA alleges that its trade secrets were transmitted by three separate routes. Specifically, TRA alleges that: (1) in contravention of the March 2009 NDA, Lederer, Shabbab, and DeBiase received information that TRA provided to Kantar Media during due diligence; [109] (2) Spence

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used her position on TRA's board to provide trade secrets to Kantar Media without permission from TRA; [110] and (3) " Kantar executive and TRA Board member Bill McKenna provided trade secrets to Kantar without permission from TRA." [111] TRA further alleges that Kantar Media and Kantar Retail used these trade secrets.[112]

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The WPP Companies deny each of these allegations. Regarding the means that the putative secrets were transmitted, they allege that: (1) Lieberman permitted Lederer, Shababb and DeBiase to receive the identified information; [113] (2) Shababb was present at a TRA meeting where slides detailing TRA's financial condition, etc. were presented; [114] and (3) McKenna was authorized to email the putative trade secrets to the recipients of the email submitted by TRA, as evidenced by the fact that Lieberman thanked him for the email--and, in any event, the information reflected therein was stale by the time of the WPP Companies' alleged use.[115]

Regarding TRA's allegation that the WPP Companies used the alleged trade secrets, the WPP Companies allege that: (1) the WPP Companies plainly did not use the TRAnalytics Secret, as (i) Kantar Media's InfoSys uses an Oracle Database (not Kognitio, like TRA),[116] (ii) Shabbab's June 2010 email states that Kantar Media could " replicat[e]" the " capabilities" of TRAnalytics using pre-existing InfoSys modules; [117] and (iii) the Accused Products, in fact, use Kantar Media's Charter and DirectView services, which have existed since 2006 and 2006, respectively; [118] and (2) none of the documents identified by TRA regarding the information transmitted by McKenna and Spence evidences improper use, as opposed to an evaluation of the potential for a merger with TRA.[119]

D. Evidence Relating to Damages for TRA's Non-Patent Claims

The WPP Companies move for summary judgment on TRA's nonpatent claims--namely breach of fiduciary duty, breach of contract, and misappropriation of trade secrets--on the ground that TRA has insufficient evidence to prove that the WPP Companies caused its alleged damages.

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Because this motion is based on the lack of evidence allegedly adduced by TRA, I begin with the evidence TRA presents in opposition to the motion.

TRA alleges--and it is not disputed--that its post-money valuation rose from ten million dollars (after its first financing round) to fifty-four million dollars (after its third financing round), but that it was ultimately acquired by TiVo for a mere twenty million dollars in July 2012 after it was unable to solicit investors for its fourth financing round.[120] TRA's non-patent damages theory is that " [h]ad [its] value continued to grow on the same trajectory it did during its first three rounds of financing, its expected value in July 2012 was $199 million[,]" [121] but that certain unspecified " bad acts" of the WPP Companies--presumably, releasing a competing product--" caused [its] diminution in value." [122]

In support of its theory of damages, TRA submits: (1) portions of the expert report of Melissa A. Bennis, its damages expert; (2) excerpts from the deposition of Naveen Chopra, TiVO's CFO; (3) portions of the declaration of Stephen B. Morris--another TRA expert--in support of TRA's motion for an injunction; and (4) portions of Lieberman's deposition. Bennis' report documents the fact that, during TRA's Series D financing round, investors declined to invest for reasons such as " [lack of] revenue traction," " [in]ability to hit projections," and " lack of profitability. . . ." [123] The report continues:

[t]o the extent that TRA's inability to meet revenue and profit expectations were exacerbated at the time of the Series D round, it is reasonable to believe it was caused by Counterclaim Defendants' alleged actions, which disrupted the market with a new product and froze the market with respect to overall sales. . . .[124]

The idea that the WPP Companies' actions " froze the market" derives from the following testimony of Chopra (which is cited in Bennis' report):

Q. Did TRA ever provide any information to TiVo as to what it thought Kantar's market share was in the narrow competitive market it had with TRA?
A. I don't recall whether there was discussion in terms of quantitative market share. One of the major themes of that issue for TRA was the fact that, you know, they were the original player here -- small company trying to develop a market that they and many customers thought was a big opportunity -- and they had this big issue where the large entrenched player, TNS, that had deep relationships with a lot of their potential customers was sitting there telling people they were coming out with a product for a long time, and then eventually, obviously,

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did come out with a product, and that kind of froze the market and made it very difficult for them to compete.[125]

The portions of Morris' declaration submitted by TRA are of limited interest. Morris speculates that, if TRA's request for an injunction were not granted, the critical period for TRA to capitalize on its proprietary technology could pass.[126]

Lieberman's testimony does more to flesh out the frozen market theory. Lieberman testifies to his belief that Casavant's[127] " collaboration with Kantar Media [] led to confusion in the marketplace, misappropriating our trade secrets, infringing our patents, signaling to the marketplace that an investor of ours was now copying what we were doing, affected our ability to raise capital, affected valuation conversations around the value of the company[; ]" and that potential TRA investors had raised concerns about this litigation.[128]

It is important to note that TRA's frozen market theory is not that Kantar Media poached TRA customers with the Accused Products. For example, TRA is not seeking lost sales as a measure of damages for its non-patent claims based on the frozen market theory.[129] Instead, the frozen market theory is that the WPP Companies, by launching the Accused Products and suing TRA, made investors wary of TRA. The alleged mechanism is twofold: (1) investors look askance on pumping money into a company embroiled in litigation; and (2) because the WPP Companies are a globe-spanning and powerful conglomerate, potential investors were wary of investing in a less-established, competing company.[130]

Needless to say, the WPP Companies dispute TRA's frozen market theory. First, they allege that Bennis failed to consider that investors were wary of TRA's revenue traction relative to the capital that it had raised to date.[131] On this basis, the WPP Companies allege that the difference between TRA's first three financing rounds and its fourth, unsuccessful, financing round is that, by the fourth round, TRA had already raised substantial capital, without having matching revenue. Second, the WPP Companies argue that, because they have not abused the judicial process, their instituting this suit against TRA cannot constitute a bad act giving rise to TRA's damages.[132] Finally, the WPP Companies allege that " it is improper to treat " post-money valuation" as evidence of the fair market value of TRA." [133]

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III. LEGAL STANDARD

A. Summary Judgment Standard[134]

Summary judgment is appropriate " only where, construing all the evidence in the light most favorable to the non-movant and drawing all reasonable inferences in that party's favor, there is 'no genuine issue as to any material fact and . . . the movant is entitled to judgment as a matter of law.'" [135] " A genuine dispute exists if the evidence is such that a reasonable jury could return a verdict for the nonmoving party. A fact is material if it might affect the outcome of the suit." [136]

" The moving party bears the burden of establishing the absence of any genuine issue of material fact." [137] To defeat a motion for summary judgment, the non-moving party " 'must do more than simply show that there is some metaphysical doubt as to the material facts,'" [138] and " 'may not rely on conclusory allegations or unsubstantiated speculation.'" [139]

In deciding a motion for summary judgment, " [t]he role of the court is not to resolve disputed issues of fact but to assess whether there are any factual issues to be tried." [140] " 'Credibility determinations, the weighing of the evidence, and the drawing of legitimate inferences from the facts are jury functions, not those of a judge.'" [141]

B. Patent Infringement

Section 271(a) of the Patent Act provides that: " whoever without authority makes, uses, offers to sell, or sells any patented invention, within the United States or imports into the United States any patented invention during the term of the patent therefor, infringes the patent." [142] " To prove infringement, the patentee must show that an accused product embodies all limitations of the claim either literally or by the doctrine of equivalents." [143]

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1. Literal Infringement

" Determining literal infringement is a two step process: the " proper construction of the asserted claim and a determination whether the claim as properly construed reads on the accused product or method. The first step is a question of law, [. . .] [while] [t]he second step is a question of fact. . . ." [144] Literal infringement is established if " every limitation set forth in a claim [] [is] found in an accused product, exactly." [145]

2. The Doctrine of Equivalents

As set forth in a recent Federal Circuit opinion:

The doctrine of equivalents allows the patentee to claim those insubstantial alterations that were not captured in drafting the original patent claim but which could be created through trivial changes. However, the 'all limitations rule' restricts the doctrine of equivalents by preventing its application when doing so would vitiate a claim limitation. Equivalence is not an absolute to be considered in a vacuum. The essential inquiry is whether " the accused product or process contain[s] elements identical or equivalent to each claimed element of the patented invention. One way of proving infringement under the doctrine of equivalents is by showing on a limitation by limitation basis that the accused product performs substantially the same function in substantially the same way with substantially the same result as each claim limitation of the patented product.[146]

C. Trade Secrets Under New York Law

" To establish a claim for misappropriation of trade secrets, plaintiff must show (1) that it possesses a trade secret, and (2) that defendant is using that trade secret in breach of an agreement, confidence, or duty, or as a result of discovery by improper means." [147] The Court of Appeals of New York has adopted The Restatement of Torts' definition of a trade secret as " 'any formula, pattern, device or compilation of information which is used in one's business, and which gives him an opportunity to obtain an advantage over competitors who do not know or use it.'" [148] In deciding trade secret claims, New York courts consider the following factors:

" (1) the extent to which the information is known outside of [the] business; (2) the extent to which it is known by employees and others involved in [the] business; (3) the extent of measures taken by [the business] to guard the secrecy of the information; (4) the value of the information to [the business] and [its] competitors; (5) the amount of effort or money expended by [the business] in developing the information; (6) the ease or difficulty with which the information could be properly acquired

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or duplicated by others. . . ." [149]

A client list may be a trade secret under New York law; however, " [a] client list created through 'widespread canvassing of an obvious and highly competitive market,' is insufficient to warrant trade secret protection." [150]

IV. DISCUSSION

A. TRA's Misappropriation of Trade Secrets Claim Is Dismissed

TRA identifies a large number of documents in support of its trade secrets claim, and reviewing these documents has consumed considerable judicial resources. In the end, this effort was conducted for little purpose. TRA's trade secret claim is dismissed, as: (1) it is impermissible for TRA to wait until summary judgment to narrow the documents allegedly describing its trade secrets; and (2) in any event, the documents now identified by TRA fail to evidence protectable trade secrets, and/or use of those trade secrets by the WPP Companies.

1. The WPP Companies' Objections Under Rule 37 Are Sustained

At a hearing held on April 23, 2013, I ordered the parties to reduce the number of asserted patent claims and trade secrets in the case. As a result, TRA dismissed twenty of its twenty-five trade secrets. Prior to that point, TRA asserted hundreds of pages of documents in support of twenty-five alleged trade secrets, with little to no indication as to how these documents combined to form trade secrets.[151] 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 the WPP Companies' motion for summary judgment, it instead narrowed the range of documents in its opposition papers.

Naturally, the WPP Companies object--under Rule 37--to TRA's attempt to " now identify[] for the first time a small number of pages as its supposed trade secrets, in contrast to the hundreds of pages identified during discovery. . . ." [152] This objection is sustained, as TRA's actions are in contravention of Rule 26(e).[153] TRA's " Dance of the Seven Veils approach to [its] trade secret claim" is manifestly prejudicial to the WPP Companies, and taxing on the Court.[154] TRA had ample opportunity to identify its alleged trade secrets with specificity prior to the close of discovery.

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Because it failed to do so, its trade secrets claim is dismissed.[155]

2. TRA Has Failed to Allege Protectable Trade Secrets and/or Evidence of Use

An alternate ground for my holding is that, even ignoring its deficiencies in discovery, TRA has not submitted evidence from which a reasonable jury could find that the WPP Companies have used its protected trade secrets. Regarding the TRAnalytics Secret, the record shows that TRA disclosed most of the properties of TRAnalytics that it now apparently claims as a trade secret-- e.g., its use of APIs to handle legacy clients--and there is no evidence in the record that the Accused Products made use of any of the technical information alleged by TRA.[156] For example, the Accused Products make use of an Oracle database, while TRAnalytics uses Kognitio's data warehousing capabilities.

The Clients Secret fares no better. The WPP Companies have produced abundant evidence that TRA disclosed its clients at every turn.[157] In any event, it 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; and " 'widespread canvassing of an obvious and highly competitive market' is insufficient to warrant trade secret protection." [158] Finally, TRA has submitted no evidence indicating that the WPP Companies used its client list. It is doubtful that a world-spanning conglomerate like the WPP Companies would have much use for a list of TRA's clients--in the pipeline or otherwise--and, as the WPP Companies point out, " [t]he identified information is dated February or March 2009, more than a year before mid-2010, when TRA alleges Kantar began improperly using TRA information[,]" such that the Clients Secret would be stale prior to the WPP Companies' alleged use.[159]

The Strategy Secret fails as a matter of law. Based on the documents submitted by TRA, the Strategy Secret consists of

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little more than the aspirations of a company struggling to achieve revenue traction. For example, TRA accuses the WPP Companies of misappropriating its secret plan to perform a " course correction" with the " focus" of " build[ing] [a] platform for [one hundred million dollars in] revenues. . . ." [160] This is assuredly a worthy goal. However, " information consisting simply of business possibilities or goals is not a trade secret." [161] Thus, the Strategy Secret is not a protectable trade secret.

The Positioning Secret likewise 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." [162] The documents that TRA alleges constitute the Positioning Secret fit comfortably within this rule. For example, the table attached to the March 2009 Memo merely compares pertinent features of TRAnalytics--that were publicly disclosed[163] --to features of competitors that were public knowledge. The remainder of the documents submitted by TRA in support of the Positioning Secret are, likewise, either drawn from public information, or merely marketing documents. As such, the Positioning Secret fails as a matter of law.

Finally, the information that allegedly constitutes the Financial Secret was publicly disclosed by TRA.[164] Thus, in the end, even if TRA were not now precluded from supplementing its discovery responses in order to add specifics to its trade secrets claims, it would merit dismissal.

B. Non-Patent Damages

1. TRA's " Frozen Market" Theory of Non-Patent Damages Is Insufficient to Reach a Jury

As an initial matter, I note that TRA's argument that the WPP Companies " froze the market" by initiating this suit is foreclosed by the Noerr-Pennington doctrine.[165] Section 271(d)(3) of Title 35 excepts from patent misuse claims the actions of a patentee that seeks " to enforce [its] patent rights against infringement or contributory infringement. . . ." [166] Here, the WPP Companies instituted suit based on a good faith belief that their products do not infringe TRA's patents. It cannot be the case that a party without the monopoly power afforded by a patent is more constrained in its use of the judicial process than a patentee.

The other alleged ground for TRA's frozen market theory of non-patent damages--that the WPP Companies locked the market up by releasing competing products--is equally untenable. TRA's assertion

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that " [h]ad [its] value continued to grow on the same trajectory it did during its first three rounds of financing, its expected value in July 2012 was $199 million" rests on sheer speculation.[167] There is no technical or scientific basis for the conclusion that TRA was predestined to continue growing at the rate suggested by its first three financing rounds. As the Second Circuit has noted, " New York law does not countenance damage awards based on '[s]peculation or conjecture.'" [168]

In addition to providing no scientific basis to suggest that TRA was foreordained to grow exponentially, Bennis' conclusion that the " bad acts" of the WPP Companies caused TRA to lose value has no basis. To conclude that one event caused another because it preceded it is to commit the fallacy of post hoc ergo propter hoc ; " '[i]t is well settled that a causation opinion based solely on a temporal relationship is not derived from the scientific method and is therefore insufficient to satisfy the requirements of [Federal Rule of Evidence] 702.'" [169] In particular, " [i]t is plain that one cannot determine whether something caused an observed effect without controlling for other equally plausible causes of that effect." [170]

It is undisputed that " [e]leven prospective investors in TRA's failed [fourth] financing round in 2012 identified as a concern TRA's lack of revenue traction given amount of capital raised to date." [171] Because Bennis fails to rule out this alternative explanation for TRA's failed financing round, her opinion that the WPP Companies' bad acts caused TRA's decline in value does not satisfy the requirements of Rule 702.

Further, Bennis' theory that the WPP Companies 'froze the market' appears to stem from Chopra's deposition testimony.[172] Under Federal Rule of Evidence 703, " a party cannot call an expert simply as a conduit for introducing hearsay under the guise that the testifying expert used the hearsay as the basis of [her] testimony." [173] This rule is particularly applicable here, where the portion of Chopra's testimony relied upon by Bennis is merely relaying speculation conveyed to Chopra by unnamed--and self-interested--sources at TRA.[174]

All in all, then, Bennis' frozen market opinion rests on speculation, unmoored from the scientific method, and conveyed through two layers of hearsay. For this reason, it is excluded.

The only other evidence TRA offers in support of the frozen market theory is Lieberman's testimony.[175] To the extent Lieberman's testimony rests on the WPP Companies initiating suit, it is foreclosed by the Noerr-Pennington doctrine. The balance of Lieberman's testimony rests on speculation. Nielsen--a competitor of

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TRA and Kantar Media--occupied seventy-five percent of TRA's broader market ( i.e., advertising analytics),[176] the Accused Products had fewer than half a million dollars in revenues,[177] and TRA increased its prices after the introduction of the Accused Products.[178] Given these facts, Lieberman's testimony that TRA suffered a competitive injury from the release of the Accused Products is an insufficient basis for a reasonable jury to find that TRA suffered damages measured by Lieberman's dream of building a platform for one hundred million dollars in revenue. The frozen market theory of damages is excluded.

2. Dismissing TRA's Frozen Market Theory Does Not Dispose of TRA's Non-Patent Claims

Contrary to the WPP Companies' argument, excluding the frozen market theory of damages does not dispose of TRA's non-patent claims. TRA notes in its opposition brief that it 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.[179] The WPP Companies do not dispute this point in their reply brief.

C. Patent Infringement

For the following reasons, the WPP Companies' motion for a summary judgment of non-infringement is granted, as no reasonable jury could find that: (1) the CPG Products practice the purchase data limitation; and (2) the Auto Products practice double-blind matching, or make use of a thesaurus. This holding moots the remainder of the WPP Companies' non-infringement arguments, as well as its arguments as to patent invalidity.

1. The CPG Products Do Not Collect Purchase Data, and Therefore Do Not Infringe the Asserted Patent Claims Either Literally or Under the Doctrine of Equivalents

The 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. The WPP Companies contend that the CPG Products do not collect or use purchase data--or, indeed, any information about when a purchase was made--although they do categorize users into " user types." All of the patents in suit distinguish between " purchase data" and " user types." For example, the specification of the '301 Patent provides that " [t]he ROI report may use the following data as inputs, for example: . . . purchase data; user type (heavy, medium, or light category purchase rate). . . ." [180]

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Based on Mela's declaration, TRA contends that this is a distinction without a difference, because any classification of users into user-types must be based on survey evidence showing those users' purchases of a product over a " given time." In Mela's opinion, the various inputs listed in the patents-in-suit-- e.g., dayparts, time selection (current and base period); report date range; purchase data; user type (heavy, medium, or light category purchase rate); user loyalty; and/or, report groupings--may overlap: " '[T]ime selection,' 'date range,' and 'daypart' ( i.e., what part of the day) are all examples of inputs, and interrelated types of temporal data, yet are listed separately." [181] In short, TRA argues that although " user type" and " purchase data" are distinguished in the patents-in-suit, this distinction is illusory, as " user types" is an input that may be subsumed within " purchase data," just as " time selection" is an input that may be subsumed within " daypart."

The fatal flaw in this theory is that the input " user type" is categorically distinct from the temporal inputs relied upon by Mela. A " user type" designates the relative positions of users within a set, but conveys nothing about time. By way of analogy, designating three runners as " slow, fast, and fastest" does not convey anything about their top one hundred meter dash time. In contrast, collecting purchase data-- i.e., " data describing the purchase of a particular product at a given time" --plainly requires collecting data that conveys when a purchase was made.

The evidence establishes that the CPG Products do not make use of temporal data at all; instead, they collect only user types. Accordingly, Mela's opinion provides insufficient grounds for a reasonable jury to find that the CPG Products practice the Purchase Data Limitation.

For the same reason, Mela's opinion that the CPG Products infringe under the doctrine of equivalents is foreclosed. Mela's doctrine of equivalents opinion--that collecting survey data over a period of time to generate user types is the equivalent of collecting purchase data--is merely a repackaged form of TRA's literal infringement theory.[182] This repackaging adds nothing to the analysis above. Accordingly, TRA's doctrine of equivalents theory must be dismissed.

In sum, TRA's patent infringement claims pertaining to the CPG Products are dismissed.

2. The Auto Products Do Not Utilize Double Blind Matching

In opposition to the WPP Companies' argument that the Auto Products do not practice double-blind matching, TRA submits the Experian Contract, and objects to Shabbab's declaration " describ[ing] what J.D. Power (a third party) sends to Experian (a third party)." [183] TRA's objection is overruled. Shabbab's declaration describes the operation of the Accused Products, a subject that, as the president of Kantar Media--the ultimate recipient of the data in question--he has personal knowledge.[184]

TRA's other basis for resisting summary judgment--the Experian Contract--is a legally insufficient for a reasonable juror to conclude that the Auto Products practice double-blind matching. I note initially

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that the Experian Contract is of limited probative value, as it is unsigned.[185]

However, the real problem with TRA's use of the Experian Contract is that it does not contradict Shabbab's declaration relating to the functioning of the Auto Products. Shabbab testifies in pertinent part that:

Experian. . . appends J.D.Power purchase attribute data to the DirecTV [identifier], removes all PII, and sends the data to [Kantar Media]. [Kantar Media] uses the same DirecTV [identifier] to correlate STB data with J.D.Power purchase attribute data.[186]

The Experian Contract provides that Experian is to receive " J.D. Power's data file, which include [sp] the following data fields: Unique Key [identifier], last name, address, city, state, zip code[,]" and that Experian is to use this data to " perform anonymous, blind matching of it to certain Client data . . . provided to Experian . . . ." [187] Nothing in this language suggests that Shabbab's testimony relating to the operation of the Auto Products is erroneous.

As such, TRA's opposition to a summary judgment of non-infringement for the Auto Products boils down to a " broad, conclusory attack[] on the credibility of [Shabbab] [that] [] [can]not, by [itself], present [a] question[] of material fact." [188] Without evidence contradicting Shabbab's testimony, a trial on whether the Auto Products perform double-blind matching--or utilize a 'thesaurus'--would consist entirely of TRA's attorneys' speculation that Shabbab is lying about how his company's products work. Accordingly, the WPP Companies' motion for a summary judgment of non-infringement by the Auto Products is granted.[189]

D. The WPP Companies' Patent Invalidity Contentions Are Moot

The WPP Companies raised their patent invalidity contentions as affirmative defenses to TRA's patent infringement claims, and the only affirmative relief they seek is a declaratory judgment of non-infringement.[190] In consequence, the WPP Companies' motion for a summary judgment of invalidity is moot.[191]

V. CONCLUSION

In light of the foregoing: (1) the WPP Companies' motion for summary judgment

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as to non-infringement is granted; (2) the WPP Companies' motion for summary judgment as to invalidity is mooted by my holding of non-infringement; and (3) TRA's 'frozen market' theory of damages for its non-patent claims is excluded. The Clerk of the Court is directed to close this motion (Doc. No. 122). A Conference is scheduled for October 16 at 2:30 p.m.

SO ORDERED:


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