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Judge Forrest Vacates Judge Scheindlin’s Prior Decision Invalidating TiVo Patents Under § 101

On November 29, 2016, District Judge Katherine B. Forrest (S.D.N.Y.) vacated the February 22, 2016 decision of Judge Shira A. Scheindlin, which had granted a motion to dismiss, brought by alleged infringers TNS Media Research, LLC and  Cavendish Square Holding B.V. (collectively, the declaratory judgment “Plaintiffs”), based on subject matter ineligibility of the asserted patents under 35 U.S.C. § 101. 

Judge Forrest was assigned the case following Judge Scheindlin’s retirement on April 29, 2016.  After Judge Scheindlin left the bench, Judge Forrest invited briefing on whether Judge Scheindlin’s earlier decision invalidating the asserted patents under § 101 should be reconsidered.  On November 29, she concluded that, though Judge Scheindlin’s earlier decision was a “reasoned attempt to follow what was, at the time, somewhat confused law” under Alice Corp. Pty. Ltd. v. CLS Bank International, 134 S. Ct. 2346 (2014) (“Alice”), it is nevertheless clearly erroneous in light of the subsequent case law of the Federal Circuit. 

As explained by Judge Forrest, the exemplary claim at issue, which claims a method of “how to measure the effectiveness of advertising in a fragmented data environment,” is not directed to patent ineligible subject matter under either prong of the Alice test.

On the first prong of the Alice test, whether the claim is directed to an “abstract idea,” Judge Forrest held that to the contrary, it is directed to a “concrete idea,” i.e., “that there are today numerous digital media platforms which can be mined for information about second-by-second or minute-by-minute household viewing; that data can be as granular as whether the volume is turned down during a commercial break, or whether the channel is switched away and then switched back.”

On the second prong (described by the Court as “inventiveness”), Judge Forrest held that the “inventiveness asserted in the patent (which this Court has no reason or factual basis to second guess) allows it to survive step two of the Alice analysis,” in that it claims to solve the problems of, e.g., “advertisers not having an ability assess [sic] utility in real time, or with a sufficiently large sample size . . .”

According to Judge Forrest, “So long as ‘methods’ are patent-eligible, claim 71 must pass muster under Alice . . . while it is possible there are other issues with claim 71 that prevent TRA from ultimately prevailing in this matter, failing step two of Alice is not one of them.”

-By Ryan Mott and Lewis Popovski

Case: TNS Media Research LLC, et al. v. TIVO Research and Analytics, et al., No. 11-cv-4039-KBF (S.D.N.Y. Nov. 29, 2016).  The patents-in-suit are U.S. Patent Nos. 7,729,940, 8,000,993, and 8,112,301.