On Monday, February 22, a New York federal judge ruled that three patents TiVo asserted against TNS Media Research are invalid based on the precedent set by the Supreme Court Alice Corp. vs. CLS Bank suit. This standard states that “merely requiring generic computer implementation fails to transform [an] abstract idea into a patent-eligible invention.” One of the three patents mentioned in the suit includes TiVo’s “holy grail” targeted-advertising patent.
The dispute is over TiVo’s
proprietary advertising platform, which matches television programs with
household purchase behavior. TiVo claims that this product cost $23 million and
35,000 hours to develop and argues that TNS used materials it acquired during a
potential merger between the two companies to replicate the product.
TNS sued TiVo in 2011 asking for
a declaration that certain products made by the company did not infringe TiVo’s
patented technology, which determines which TV shows are the best match for
advertisers looking to sell particular products. TiVo responded with several counterclaims,
including breach of contract, misappropriation of trade secrets, and
infringement.
In November 2013, U.S. District
Judge Shira Scheindlin threw out TiVo’s infringement and trade secrets claims,
but in September 2015 the U.S. Federal Circuit vacated this decision and
revived four of TiVo’s five trade secrets claims. In this latest ruling on
Monday, the same District Judge decided that one of the asserted patent claims
by TiVo was directed toward an abstract idea (by the Alice standard) and ruled
once again in favor of TNS. This ruling resulted in TiVo’s three patents becoming
invalid.
This ruling on the appeal seems rather interesting to me. It appears that TNS acquired proprietary information from TiVo in a less-than-proper way during merger negotiations and that TiVo should have won the patent case. However, this definitely will influence future software patent rulings, specifically the gray area between abstract ideas and patent-eligible software inventions.
This ruling on the appeal seems rather interesting to me. It appears that TNS acquired proprietary information from TiVo in a less-than-proper way during merger negotiations and that TiVo should have won the patent case. However, this definitely will influence future software patent rulings, specifically the gray area between abstract ideas and patent-eligible software inventions.
Hey Jay!
ReplyDeleteFirst, it's pretty refreshing to see a case with actual companies instead of patent trolls. It's also interesting how this is almost a "reverse" case, the company is suing to say they did not infringe on a patent instead of the regular way around, but hey, money is money. The reasoning is really cool to see that the accusations don't always get a free pass (TiVo).