Docket No. 2014-1668
NEWMAN, CLEVENGER, O’MALLEY
September 16, 2015
Brief Summary: DC grant of SJ affirmed on some grounds (infringement under DOE) but reversed on others (trade secrets).
Summary: Tivo appealed DC grant of SJ of noninfringement and no misappropriation of trade secrets to Kantar, and that Tivo could not rely upon its damages expert or seen punitive damages. The patents and technology at issue relates to techniques for processing TV viewing and consumer purchasing data “to determine what households watch and what they buy.” The infringement issue for one of Kantar’s products (CPG) turned on how to interpret the term “purchase data” and the DC found no literal or DOE (expert opinion only included “conclusory statements about” DOE) infringement under its definition thereof. The FC panel vacated the grant of SJ on literal infringement because the DC “improperly construed the parties’ stipulation and granted [SJ] on that construction, without affording TRA or Kantar notice or opportunity to present argument about the appropriate construction”, but found no error with the DOE conclusion. For another product (Auto), the DC found no infringement because it could not be shown that Kantar uses “double blind” data in its system and the FC panel agreed (“TRA failed to submit sufficient evidence to create a genuine issue….”) Regarding trade secret misappropriation, the DC dismissed the claims (as a sanction) because Tivo attempted to support its allegations too late (“on the eve of summary judgment briefing”) and failed to demonstrate its “trade secrets were protectable”. The FC panel found this to be an abuse of discretion (e.g., “no indication that [Tivo] shirked its discovery obligations”, DC apparently did not “consider the efficacy of lesser sanctions”, “unresolved question of fact as to whether the proprietary information…was known outside TRA”, DC did not consider whether “other client information” regarding contracts, etc. was secret, “[p]roprietary financial projections and strategic plans may be protectable trade secrets…where it is not publicly known, not readily identifiable without inside information, or otherwise complex”). The DC also denied Tivo’s non-patent damages claims because, in part, some testimony “was based on conjecture” but the FC panel disagreed (“A party need not rely upon an expert to demonstrate it is entitled to damages” (Apple, FC 2014); “TRA presented sufficient evidence to create a colorable question about Kantar’s intent to injure TRA.”; Kantar, which had a member on TRA’s board, may have breached its fiduciary duties to TRA.)