United States District Court, S.D. New York
TNS MEDIA RESEARCH, LLC (d/b/a KANTAR MEDIA AUDIENCES) and CAVENDISH SQUARE HOLDING, B. V. Plaintiffs,
TIVO RESEARCH AND ANALYTICS, INC., Defendant. TIVO RESEARCH AND ANALYTICS, INC., Counterclaim-Plaintiff,
TNS MEDIA RESEARCH, LLC (d/b/a KANTAR MEDIA AUDIENCES); CAVENDISH SQUARE HOLDING, B
; WPP PLC; WPP GROUP USA, INC.; KANTAR GROUP LTD.; and KANTAR RETAIL AMERICA, INC., Counterclaim-Defendants.
Perry Mark Goldberg, Esq., Kevin S. Rosenberg, Esq., Mark Paluch, Esq., Goldberg, Lowenstein & Weatherwax LLP, Los Angeles, California. For Defendant and Counterclaim-Plaintiff TRA:
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. For Plaintiffs and Counterclaim-Defendants Kantar:
OPINION AND ORDER
SHIRR A. SCHEINDLIN, District Judge.
On June 14, 2011, TNS Media Research, LLC (d/b/a Kantar Media Audiences) and Cavendish Square Holding, B.V. (collectively "Kantar") initiated this litigation against TiVo Research and Analytics, Inc. ("TRA"). Kantar sought a declaratory judgment of non-infringement of United States Patent No. 7, 729, 940 (the "940 Patent"), of which TRA is the sole assignee. TRA, in response, asserted the following counterclaims: (1) patent infringement of the 940 Patent; (2) misappropriation of trade secrets; (3) aiding and abetting breach of fiduciary duty; and (4) breach of contract. TRA later amended its counterclaims to include allegations of infringement of United States Patent No. 8, 000, 993 (the "993 Patent") and United States Patent No. 8, 112, 301 (the "301 Patent") - of which TRA is the sole assignee for both.
At the close of discovery, Kantar moved for summary judgment on TRA's patent infringement and trade secret misappropriation claims, as well as for no damages on TRA's fiduciary duty, trade secrets, and breach of contract counterclaims. I granted summary judgment as to "non-infringement, trade secrets, and non-patent damages."
On July 2, 2014, the parties stipulated to nominal damages of $1 for TRA's breach of contract and fiduciary duty claims. The parties then stipulated to the entry of final judgment,  at which point, TRA appealed the final judgment to the United States Court of Appeals for the Federal Circuit.
Kantar now moves for attorneys' fees and non-taxable expenses pursuant to Federal Rule of Civil Procedure 54(b), Section 285 of Title 35 of the United States Code, and the Court's inherent power. For the following reasons, Kantar's motion is GRANTED.
A. Complaint, Counterclaims, and Preliminary Injunction
The underlying dispute in this case involves intellectual property that relates to the goal of "cross-referencing huge amounts of data from a variety of sources in order to determine which television programs are the best match for an advertiser seeking to market specific products, while protecting the privacy interests of television viewers." After Kantar commenced this action by seeking a declaration of non-infringement of the 940 Patent, TRA counterclaimed that Kantar infringed upon Claim 71 of the 940 Patent, which, in sum, 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.
On July 5, 2011, TRA moved for a preliminary injunction to enjoin Kantar from "making, selling, and offering for sale its infringing product[.]" Kantar opposed the preliminary injunction motion by arguing that the 940 Patent was invalid. Kantar also argued that its products did not infringe Claim 71 of the 940 Patent. In its brief, Kantar moved sequentially through each disputed claim term and discussed how its products did not practice those limitations. In so doing, Kantar noted, among other things, that its products do not apply a "cleansing and editing algorithm to the matched and stored data" as required in Claim 71 of the 940 Patent. Kantar argued that its products only apply such an algorithm before, not after, the data is matched and stored. TRA argued briefly in reply that the claim term at issue here - "[applying a] cleansing and editing algorithm to the matched and stored data" - "does not impose a sequential limitation."
I denied TRA's motion finding that Kantar had raised a substantial question about the validity of Claim 71 of the 940 Patent. In denying TRA's motion, I also found, among other things, that (1) the disputed language in Claim 71 of the 940 Patent - "[applying a] cleansing and editing algorithm to the matched and stored data" - required the algorithm to be applied after the data is matched and stored; (2) TRA's argument that the algorithm could be applied before the data is matched and stored "does violence to the ordinary grammatical understanding of the past tense[;]" (3) prior art substantially taught all of the limitations in Claim 71; and (4) an article written by Gerald J. Eskin constituted prior art that "taught to compare information about what programs and advertisements households actually saw with purchasing data[.]" I did not, however, reach the issue of infringement in denying TRA's motion for preliminary injunctive relief.
B. TRA Amends Its Counterclaims
On March 21, 2012, TRA sought and obtained permission to file supplemental amended counterclaims. TRA then added allegations of Kantar's infringement of two patents - the 993 Patent and the 301 Patent - that had been issued after the filing of TRA's initial counterclaims.
E. Claim Construction
On July 6, 2012, I held a Markman hearing. Prior to the hearing, the parties stipulated to the meaning of fifteen disputed claim terms, leaving only three remaining for adjudication: (1) "household level data associated with multiple consumer households[;]" (2) "household level data[;]" and (3) "cleansing and editing algorithm[.]" On August 29, 2012, I issued an Opinion and Order construing the three claim terms in dispute in the 940 Patent. I adopted TRA's proposed construction with respect to disputed claim term (1),  but adopted Kantar's proposed contstruction with respect to disputed claim term (3). I declined to construe disputed claim term (2) because my construction of (1) "resolved all relevant questions as to the meaning of the claim words [in (2)]."
In adopting Kantar's proposed construction of the phrase "cleansing and editing algorithm, " I held that "TRA's proposed construction would... render meaningless the amendments TRA added after the PTO rejected the original versions of the claim language" and that "TRA should not now be permitted to adopt a construction that undoes this prosecution history."
I also found that "[a]ccording to both proposed constructions, [several] algorithms which are described in the specification can properly be considered cleansing and editing' algorithms[.]" One such "algorithm... corrects for the false positive' problem of data collected from a set-top box that remains on even though the associated television has been turned off."
F. April 2013 Status Conference
On April 23, 2013, the Court held a status conference to discuss the possibility of eliminating some claims from the litigation - which then consisted of twenty-seven patent claims and twenty-four trade secret claims. At the conference I intimated that "Kantar has the better of it in saying this thing needs to be slimmed down. This is quite ridiculous." I added that "the case is sprawling and out of control, and it would be poor judicial management to let it continue in a sprawling and uncontrolled manner." I then ordered the parties to meet and confer by May 2, 2013 and agree on how to narrow the claims in this case. In an Endorsed Letter dated May 1, 2013, TRA agreed to reduce its number of patent claims to fifteen and its number of trade secret claims to five. The fifteen remaining patent claims related to two groups of products that TRA alleged infringed on its patents - the CPG Products and the Auto Products (collectively the "Accused Products").
I also noted at the April 23 status conference that although "I can't know whether what they tell me is accurate[, ] [Kantar alleges] that one of the experts for TRA ignores my claim construction." I continued, "[TRA] may need to think about whether to continue pressing... parts of [its] expert Mela['s report], because after I have warned you not to do it, if you do it, and Kantar is right, I am telling you now, I have got too much on my plate to waste time with frivolous motions. I will turn right to Rule 11. I don't say that lightly because I hate sanctions."
G. Summary Judgment
1. Kantar's Arguments in Favor of Summary Judgment
On June 5, 2013, Kantar moved against TRA for summary judgment. Kantar sought to "dispose of the case as a whole, " arguing that "TRA faces a lack of evidence' as to an essential element' of each of [its] claims, even after extensive discovery." Kantar argued, with respect to TRA's patent infringement theories, 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 ...