A federal judge in the Southern District of New York granted counterclaim-defendant TNS’s motion for summary judgment ruling that three patents related to targeted-advertising were invalid under Alice. As a preliminary matter, the court rejected Tivo’s (TRA) presumption of validity argument noting that “[t]he presumption of validity—and its concomitant clear and convincing evidence standard—does not apply to section 101 claims.” In analyzing the patents, the court found that all three patents describe the same basic invention in five basic steps: “(1) collecting household-level data from a variety of digital sources, (2) matching this data to individual households through the use of digital double-blind matching, (3) digitally storing this matched data, (4) applying a “cleansing and editing algorithm” to the data to remove extraneous and/or private information, and (5) calculating an advertising metric based on the data.” Accordingly, the court found claim 71 of the ’940 patent to be representative of all asserted claims—essentially a method for correlating the advertisements that consumers view and their purchasing behavior.
In applying the Alice standard, the court ruled that “[b]ecause the asserted claims are directed to an abstract idea and nothing in the claims comprises an inventive concept, TRA claims are patent-ineligible. Under step one of Alice, the court stated that the “abstract nature of TRA’s patent is confirmed by the fact that TRA’s claim, as a whole, can be performed by humans rather than computers” and are therefore, “directed towards a patent-ineligible abstract idea.” Under step two of Alice, the court found that the asserted claims lacked an inventive concept stating that “claim 71 of the ‘940 patent recites only “well-understood, routine, [or] conventional activities” such as data collection, data storage, and routine ‘post-solution’ activities (activities performed on the data following the double-blind match) that are insufficiently inventive to render TRA’s claims patentable.”
TNS Media Research LLC et al. v. TiVo Research and Analytics Inc., Case No. 1:11-cv-04039 (S.D.N.Y. Feb. 22, 2016) (Scheindlin, J.).)