For our weekly SoCal IP Institute meeting on Monday, January 16, 2017, we will discuss the following:
TNS Media Research, LLC v. TIVO Research and Analytics, Inc., Case No. 11 Civ. 4039 (S.D.N.Y. Nov. 29, 2016) (available here). But, before you read that decision, read this one. The November 29, 2016 decision is a vacatur of the earlier, February 22, 2016 decision wherein Judge Scheindlin had found the TIVO ‘940 patent invalid under 35 U.S.C. 101 as directed to a patent-ineligible abstract idea. Specifically, Judge Scheindlin set forth a lengthy and seemingly well-reasoned opinion citing to then-recent relevant Alice decisions that supported her belief that the ‘940 claims were directed to (1) an abstract idea, including only (2) trivial pre-method data collection steps. Therefore under steps 1 and 2 of Alice, Judge Scheindlin believed the ‘940 patent to be invalid.
TIVO appears to have had some disagreement with Judge Scheindlin sufficient to request that she recuse herself from the case – a motion that was denied. Nonetheless, Judge Scheindlin retired from the bench at the end of April 2016 and the case was transferred to Judge Forrest. In June, thereafter, Judge Forrest seemingly sua sponte requested further briefing on 101 issues for the ‘940 patent, stating in her order that she believed that the interests of justice demanded reconsideration and potentially vacatur of the prior order.
After briefing, Judge Forrest entered the November 29, 2016 order linked above. In this order, Judge Forrest worked through the precedent following Judge Scheindlin’s order and looked more carefully at the claims, by way of example, claim 71 of the ‘940 patent. After this review, Judge Forrest found that Alice jurisprudence broadly asked the court to consider the following of a questioned patent claim:
(1) Is there an improvement recited?
(2) Is there a benefit recited?
(3) Is something new recited?
(4) Does the patent have one or more particular applications?
(5) What are the steps and limits to be followed in applying the invention?
Applying this broad framework, Judge Forrest found that neither step one nor step two of Alice were met by the ‘940 patent claims. She admitted that it is possible to narrow down this claim, any claim, into a simple idea, but viewed as a whole, the invention is directed to the “concrete idea that there are today numerous 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. That viewing data can be gathered as to a substantial number of households–privacy protected–and compared to equally granular data on purchasing behavior, and then various analyses can be created that rely on this level of detail. This is no abstraction and is described as an advancement.” Second, she described this invention as the type that can only be implemented on a computer, given the complexity of the task at hand. So, she believed, it would also failed the second step of Alice. For these reasons, the infringement claim regarding the ‘940 patent was returned to the case with the vacatur of the earlier Alice motion.
All are invited to join us on Monday, January 16, 2017, at noon in our Westlake Village office. This activity is approved for 1 hour of MCLE credit. If you will be joining us, please RSVP to Elisha Manzur by 9 am Monday morning.