TNS Media Research, LLC v. Tivo Research & Analytics, Inc.

NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
TNS MEDIA RESEARCH, LLC, dba Kantar Media
Audiences, CAVENDISH SQUARE HOLDING B.V.,
Plaintiffs-Appellees
v.
TIVO RESEARCH AND ANALYTICS, INC.,
dba TRA, INC.,
Defendant-Appellant
______________________
2014-1668
______________________
Appeal from the United States District Court for the
Southern District of New York in No. 1:11-cv-04039-SAS,
Judge Shira Ann Scheindlin.
______________________
Decided: September 16, 2015
______________________
MICHAEL A. ALBERT, Wolf, Greenfield & Sacks, P.C.,
Boston, MA, argued for plaintiffs-appellees. Also repre-
sented by JOHN STRAND, ERIC J. RUTT, CHARLES T.
STEENBURG.
PERRY M. GOLDBERG, Progress LLP, Los Angeles, CA,
argued for defendant-appellant.
______________________
2 TNS MEDIA RESEARCH, LLC v. TIVO RESEARCH AND ANALYTICS
Before NEWMAN, CLEVENGER, and O’MALLEY, Circuit
Judges.
O’MALLEY, Circuit Judge.
Tivo Research and Analytics, Inc. dba TRA, Inc.
(“TRA”) appeals a judgment of the district court granting
summary judgment in favor of TNS Media Research, LLC
dba Kantar Media Audiences and Cavendish Square
Holding B.V. (collectively, “Kantar”). Kantar initially
filed suit in the district court, seeking a declaratory
judgment that it did not infringe U.S. Patent No.
7,729,940 (the “’940 Patent”). Tivo Research and Analyt-
ics, Inc. dba TRA, Inc. (“TRA”) counterclaimed, asserting
infringement of the ’940 Patent, and also U.S. Patent Nos.
8,000,993 (the “’993 Patent”); and 8,112,301 (the “’301
Patent”), misappropriation of trade secrets, and breach of
contract and fiduciary duty claims against Kantar. The
district court determined at summary judgment that
Kantar’s two categories of accused products—the Auto
Products and the Consumer Packaged Goods (“CPG”)
Products—did not infringe the patents-in-suit, that Kan-
tar did not misappropriate TRA’s trade secrets, that TRA
could not rely upon its damages expert’s testimony or
report to support its claim for damages with respect to its
non-patent claims, and that TRA could not seek punitive
damages against Kantar. Ultimately, the district court
determined that TRA only could pursue a request for
nominal damages for its remaining breach of contract and
fiduciary duty claims, but, was not entitled to do so before
a jury. The parties agreed to settle that remaining claim,
however, and the court entered final judgment.
We affirm-in-part, reverse-in-part, vacate-in part, and
remand. Specifically, because the district court correctly
determined that TRA’s Auto Products do not meet the
“double blind matching” limitation, we affirm this part of
the judgment. But because the district court’s non-
infringement ruling as to Kantar’s CPG Products was
TNS MEDIA RESEARCH, LLC v. TIVO RESEARCH AND ANALYTICS 3
based on a disputed stipulation, we vacate this decision
and remand for further proceedings. We also reverse the
district court’s decision to dismiss TRA’s claims for mis-
appropriation of trade secrets as a discovery sanction, and
vacate and remand its alternative ruling that TRA’s client
secrets and its TRAnalytics product are not protectable.
We reverse the district court’s ruling that TRA’s financial
projections and strategic plans are not protectable as a
matter of law. We affirm, however, its determination that
TRA’s product positioning secrets are not protectable as a
matter of law. We also affirm the district court’s exclu-
sion of the “frozen market” opinion expressed by TRA’s
damages expert. But, we reverse its determination that,
without this report, TRA submitted insufficient evidence
to support a claim for compensatory damages. We also
reverse the district court’s conclusion that TRA was only
entitled to nominal damages on its non-patent claims
after its summary judgment ruling, thereby mooting the
district court’s determination that TRA was not entitled
to a jury trial as to those claims. And, we reverse the
district court’s conclusion that TRA is not entitled to
injunctive relief on its fiduciary duty claims as a matter of
law. Ultimately, although we agree with some of the
district court’s rulings, we conclude that TRA has a right
to a jury trial on at least a subset of its claims. Finally,
we reject TRA’s request that the case be reassigned to
another judge on remand.
BACKGROUND
Companies spend billions of dollars on advertising
each year hoping to reach potential customers. But it can
be difficult to determine how effective these advertise-
ments are. TRA sought to address this problem in the
television context by developing techniques for processing
television viewing data and consumer purchasing data to
create reports that can be used to determine what house-
holds watch and what they buy. TRA claims its solution,
implemented in its Media TRAnalytics product, allows
4 TNS MEDIA RESEARCH, LLC v. TIVO RESEARCH AND ANALYTICS
companies to target their advertisements more strategi-
cally and to assess the effectiveness of these ads. This
solution is protected by the patents-in-suit, which all
relate to systems and uses of consumer data in advertis-
ing.
A. Patents-in-Suit
Specifically, the ’940 Patent is directed to a method
for collecting, matching, and analyzing television viewing
and consumer purchasing data to create reports determin-
ing the return on advertising investments and other
metrics. Although there were other prior art methods for
performing such a task, the ’940 Patent differed in that it
claimed a method that did not require the installation of
supplemental equipment in homes or retail locations or a
consumer’s “opt-in” permission, all while maintaining the
privacy of the consumer.
Claim 71 is illustrative of the invention, and it recites:
[a] computer-implemented method for facilitating
analysis of consumer behavior in association with
advertising exposure or program delivery, the
method comprising:
collecting in an advertising measurement system:
(i) clickstream data from a program deliv-
ery source of a consumer, wherein collect-
ing the clickstream data is not dependent
on a supplemental data collection device,
and also wherein the collected clickstream
data includes household level data associ-
ated with multiple consumer households;
(ii) advertising data associated with deliv-
ery of the program by the program deliv-
ery source, wherein collecting the
advertising data is not dependent on a
supplemental data collection device, and
TNS MEDIA RESEARCH, LLC v. TIVO RESEARCH AND ANALYTICS 5
also wherein the collected advertising data
includes household level data associated
with multiple consumer households;
(iii) program data associated with the pro-
gram delivered on the program delivery
source, wherein collecting the program da-
ta is not dependent on a supplemental da-
ta collection device, and also wherein the
collected program data includes household
level data associated with multiple con-
sumer households; and,
(iv) purchase data from a purchase data
source, wherein collecting the purchase
data is not dependent on a supplemental
data collection device, and also wherein
the collected purchase data includes
household level data associated with mul-
tiple consumer households;
matching at least portions of the collected adver-
tising data, the collected clickstream data, the col-
lected purchase data, and the collected program
data in the advertising measurement system at a
household data level with a centrally located elec-
tronic computer processor configured for centrally
processing data received from the program deliv-
ery source, the advertising data source, the pro-
gram data source, and the purchase data source,
wherein the matching further includes:
(i) grouping the collected data in associa-
tion with an account identifier of each
consumer household without processing
any personally identifiable information
associated with the consumer household,
and
6 TNS MEDIA RESEARCH, LLC v. TIVO RESEARCH AND ANALYTICS
(ii) matching each account identifier asso-
ciated with each consumer household with
other account identifiers associated with
the same consumer household without
processing any personally identifiable in-
formation associated with the consumer
household;
storing the matched advertising data, clickstream
data, purchase data, and program data in at least
one centrally located electronic data storage me-
dium operatively associated with the computer
processor;
applying at least one cleansing and editing algo-
rithm to the matched and stored data; and,
calculating at least one true target index metric
based on the matched and stored data.
The ’993 Patent, titled “Using Consumer Purchase
Behavior for Television Target,” is similar to the ’940
Patent, and is directed to a system for facilitating the
analysis of consumer data associated with advertising
exposure. Likewise, the ’301 Patent is directed to a
related invention, a computer-implemented method and
system directed towards facilitating the analysis of con-
sumer behavior associated with advertising exposure.
To help aid the growth of the company, TRA sought
outside investment. It successfully went through three
rounds of financing, the first resulting in a post-money
valuation of roughly $10 million in August 2007, the
second resulting in a valuation of roughly $27 million in
May 2009, and the third resulting in a valuation of rough-
ly $54 million in May 2010. Kantar, a market research
company, participated in these rounds via its investment
arm, Cavendish Square Holding B.V., investing a sub-
stantial sum in each round. These investments granted
TNS MEDIA RESEARCH, LLC v. TIVO RESEARCH AND ANALYTICS 7
Kantar access to TRA’s board which, in turn, gave it
access to TRA’s trade secrets.
During this time, the companies also engaged in mer-
ger discussions, but these plans fell through shortly after
Kantar spent almost two billion dollars acquiring TNS
Media Research, a competing market analytics company.
Soon after Kantar’s acquisition of TNS Media Research,
Kantar released its own analytics product, which directly
competed with TRA’s Media TRAnalytics product. It was
during this time that TRA attempted to undergo a fourth
round of financing, but was unable to raise the necessary
funds. This led to a substantial drop in value and, subse-
quently, TiVO purchased TRA for approximately $20
million in July 2012.
B. District Court Proceedings
Believing that Kantar’s competing product was in fact
infringing its patent rights, TRA contacted Kantar in
March 2011 about the product. In response, Kantar filed
a declaratory judgment action, seeking a judgment that it
did not infringe the ‘940 Patent. TRA answered and
counterclaimed, alleging: (1) patent infringement of the
‘940, ‘993, and ‘301 Patents; (2) misappropriation of trade
secrets; (3) breach of contract; and (4) breach of fiduciary
duty. The district court ultimately resolved every one of
the many issues raised by these pleadings as a matter of
law. A detailed description of the court’s multiple and
interrelated rulings is, thus, necessary to understand the
issues we address on appeal.
1. Patent Claims
At the time of the district court’s November 2013
summary judgment order, TRA asserted that Kantar’s
two types of products—the Auto Products (comprising
Kantar’s Rapidview Auto and Charter with Auto prod-
ucts) and the CPG Products (comprising its Rapidview
Retail, Rapidview for Retail, and Charter with CPG
8 TNS MEDIA RESEARCH, LLC v. TIVO RESEARCH AND ANALYTICS
products)—directly infringed claim 71 of the ’940 Patent,
claims 1, 2, 3, 7, 8, and 9 of the ’993 Patent, and claims 1,
23, 42, 47, 49, 63, 108, and 109 of the ’301 Patent. TNS
Media Research, LLC v. TRA Global, Inc., 984 F. Supp. 2d
205, 209–14 (S.D.N.Y 2013) (“Summary Judgment Op.”).
Kantar’s Auto Products match information regarding
motor vehicle registrations maintained by J.D. Power &
Associates (“J.D. Power”) with television viewing data,
while its CPG Products match data collected from super-
market loyalty cards with television viewing data. Kan-
tar countered that none of its accused products directly
infringe the asserted claims, alleging that: (1) its Auto
Products did not perform double blind matching of data as
required by all asserted claims; (2) its CPG Products did
not collect “purchase data” as all fifteen asserted claims
require; (3) TRA waived any argument that its CPG
Products infringed under the doctrine of equivalents; (4)
Kantar’s accused products did not meet the “cleansing
and editing algorithm to the matched and stored data”
limitation of claim 71 of the ’940 Patent; and (5) that none
of the accused products meet the claim limitation embod-
ied in claim 42 of the ’301 Patent. The district court
found that summary judgment was warranted based on
the first three arguments, and declined to address the
other two.
With respect to the “purchase data” limitation, the
parties stipulated that “purchase data” meant “data
describing the purchase of a particular product at a given
time, obtained from a purchase data source, such as a
shopping loyalty card, point of sale collection means, or
other record of a sale of a product or service.” Id. at 218
(emphasis added). Although Kantar conceded that its
CPG Products did utilize information from “purchase data
source[s],” it argued that its products did not meet the
“purchase data” limitation, because they did not collect
data about the time at which a purchase was made, but
TNS MEDIA RESEARCH, LLC v. TIVO RESEARCH AND ANALYTICS 9
only categorized the users into types, such as heavy,
medium, or light user. Id.
Because the dispute between the parties concerned
how to interpret the term “purchase data,” the district
court found the issue was purely one of claim construc-
tion, and, thus, was amenable to summary judgment. Id.
at 243. It determined that the asserted patents distin-
guish between “purchase data” and “user types.” For
example, the ’301 Patent explains that “[t]he ROI [return
on investment] report may use the following data as
inputs, for example: . . . purchase data; user type (heavy,
medium, or light category purchase rate). . . .” 301 Patent
col. 29:48–51). Although TRA argued that this distinction
was meaningless because a classification of users into
types necessarily must consider the users’ purchase of
products over a given time, the district court disagreed,
ruling that “user type” only conveys relative purchasing
information, whereas “purchase data” requires data about
when an actual purchase was made. Summary Judgment
Op., 984 F. Supp. 2d at 243. Additionally, the district
court rejected TRA’s allegation that Kantar should be
estopped from arguing that it does not meet the “purchase
data” limitation, because Kantar argued at the prelimi-
nary injunction stage that its current method of matching
viewer data to purchase data was nearly identical to what
it had been doing before TRA received a patent. Under
applicable Second Circuit law, judicial estoppel only
applies when the court relies on a party’s prior incon-
sistent arguments. Here, because the district court did
not rely upon Kantar’s assertion in denying TRA’s motion
for a preliminary injunction, it declined to find that TRA
was estopped from raising its present argument. Id. at
244. 1 Accordingly, the district court concluded that
1 This estoppel issue is not before us on appeal.
10 TNS MEDIA RESEARCH, LLC v. TIVO RESEARCH AND ANALYTICS
Kantar’s CPG Products did not literally infringe the
asserted claims.
The district court also concluded that the CPG Prod-
ucts did not infringe the asserted claims under the doc-
trine of equivalents. It found that TRA’s expert report
only made conclusory statements about the doctrine of
equivalents and did not mention the “purchase data”
limitation in this discussion. Id. at 244. Because it felt
that TRA failed to explain this theory adequately in its
report, the district court found that TRA could no longer
assert it. Although TRA attempted to amend its expert
report by submitting an expert declaration during sum-
mary judgment briefing, the district court found that
these untimely disclosures were barred under Fed. R. Civ.
P. 37(c). Thus, the district court also dismissed TRA’s
doctrine of equivalents infringement theory for the CPG
Products.
Regarding the accused Auto Products, both sides
agreed that all the asserted patent claims require double
blind matching. Double blind matching is a process
where no data supplier provides both behavioral data—in
this case automobile registration data and television
viewing data—and personally identifying information—
such as names—to the same party at the same time. See
’940 Patent, col. 9:26–34 (“[N]o single party has access to
both household identity and household purchase or view-
ing behavior. A party that knows a household identity,
for example, will not know the behavior of the household;
likewise, a party that knows the behavior of a household
will not know the identity of that household.”). Instead,
one data supplier will provide a trusted third party with
personal information and an abstract identification code
for each household, while a second data supplier will
provide the same third party with personal information
and an abstract identification code. At the same time, the
two data suppliers will each send the behavioral data
linked to an abstract identification code to the party that
TNS MEDIA RESEARCH, LLC v. TIVO RESEARCH AND ANALYTICS 11
ultimately will match the two sets of behavioral data, in
this case the market researcher. By separating the iden-
tifying information from the behavioral data, a party,
aside from the original data collectors, cannot know both
the name of a person and behavioral information about
that person. The third party will then correlate the two
identification codes via matching personal information. It
will then provide this correlation to the market research-
er, who will use information to associate the two different
behavioral data points, collected by the two data suppliers
in order, to generate a market research report.
It was undisputed that in order to generate reports
regarding the effectiveness of automobile advertisements,
Kantar matches household automobile registration data
and television viewing data. And, it was also uncontested
that Kantar relies upon Experian to provide it with
automobile registration data. But the parties disputed
whether Experian receives personally identifiable infor-
mation along with the automobile registration data. To
support its claims that Kantar’s Auto Products utilize
double blind matching, TRA cited an unsigned draft
contract between J.D. Power and Experian, which stated
that J.D. Power would not send personal identifying
information to Experian, and that Experian would use
anonymous, blind matching to pair data from set-top
providers, like DirecTV, with auto registration data
provided by J.D. Power, using a unique identifier, as
opposed to relying upon the names of consumers. Sum-
mary Judgment Op., 984 F. Supp. 2d at 221. Kantar
disputed TRA’s interpretation of the contract, arguing
that the contract did not address whether J.D. Power
provides additional information to Experian and did not
explain what “Unique Key ID” meant.
The district court agreed with Kantar. It first noted
that TRA’s Experian contract was unsigned, and, thus,
was of limited value. Id. at 245. But, more importantly,
the district court concluded that the unsigned contract did
12 TNS MEDIA RESEARCH, LLC v. TIVO RESEARCH AND ANALYTICS
not contradict the declaration from Kantar Media’s presi-
dent, Shabbab, who stated that “Experian . . . appends
J.D. Power[s] purchase attribute data to the DirecTV
[identifier], removes all [personally identifying infor-
mation], and sends that data to [Kantar Media]. [Kantar
Media] uses the same DirecTV [identifier] to correlate
[set-top box] data with J.D. Power[s] purchase attribute
data.” Id. In the absence of any evidence contradicting
Shabbabb’s testimony, the district court granted Kantar’s
motion for summary judgment of non-infringement with
respect to Kantar’s Auto Products.
2. Trade Secret Claims
TRA also alleged that Kantar misused its confidential
information—which Kantar received during the merger
discussions and via its appointed board member—in order
to assess whether to launch its competing product and to
accelerate its own product development. But for this
improper use, TRA contended that Kantar would have
been unable to release a competing product as quickly as
it did. Originally, TRA asserted that Kantar misappro-
priated twenty four categories of trade secrets but, in
order to streamline this case for trial, the district court
ordered TRA to reduce the number of asserted trade
secrets in April 2013. Following this order, TRA agreed to
reduce the number of trade secrets to the following five:
“(1) Media TRAnalytics’—TRA’s product—speed, reliabil-
ity, scalability and performance; (2) TRA’s client lists and
client interactions[;] (3) TRA’s strategic plans[;] (4) TRA’s
product positioning[;] and, (5) TRA’s capital structure,
financials, financing proposals target investor list, and
offers to acquire or merge the company.” Summary
Judgment Op., 984 F. Supp. 2d at 222.
After this reduction, Kantar filed a motion for sum-
mary judgment arguing, in part, that TRA could not show
any misappropriation of a trade secret because it had
failed to sufficiently identify any trade secret during
TNS MEDIA RESEARCH, LLC v. TIVO RESEARCH AND ANALYTICS 13
discovery. The district court agreed, ruling that TRA’s
attempt to identify a small number of documents to
support its five categories of trade secrets for the first
time on the eve of summary judgment briefing was in
violation of Fed. R. Civ. P. 26(e), which requires a party to
supplement or correct its disclosure or response in a
timely manner. Because allowing TRA to remedy its
deficiency after the close of discovery would be prejudicial
to Kantar and taxing on the district court, the district
court dismissed TRA’s trade secret claim as a sanction
under Fed. R. Civ. P. 37. Id. at 239.
The district court, moreover, concluded that, even if it
did consider the merits of TRA’s misappropriation claims,
TRA had failed to submit sufficient evidence that would
demonstrate that Kantar used TRA’s alleged trade secrets
or that TRA’s secrets were protectable. Summary Judg-
ment Op., 984 F. Supp. 2d at 239. Specifically, with
respect to the Media TRAnalytics trade secret, the district
court determined that TRA had disclosed most of the
properties of the system to the public, such as its use of
application program interfaces (“APIs”) to handle legacy
clients, and that TRA failed to provide evidence that
Kantar’s products used any of TRA’s technical infor-
mation. Id. Similarly, the district court found that TRA’s
client lists were also disclosed to various companies, that
there was no evidence to support the claim that TRA took
the necessary steps to protect this information, and that
there was no proof that Kantar used these client lists. Id.
at 240. Regarding TRA’s strategic plans, the district
court concluded that these plans were merely goals of the
company, which are not protectable trade secrets under
New York law, and, thus, failed as a matter of law. Id.
Likewise, the district court determined that TRA’s prod-
uct placement strategies did not qualify as a trade secret,
because they were mere marketing plans, which are
unprotectable as a matter of law. Id. Lastly, the district
court concluded that TRA’s financial information was not
14 TNS MEDIA RESEARCH, LLC v. TIVO RESEARCH AND ANALYTICS
secret because it was publicly disclosed by TRA and that,
even if the information was undisclosed, there was no
evidence that Kantar used this information. Therefore,
assuming arguendo that TRA was allowed to supplement
its responses to add details regarding its trade secrets,
the district court concluded that summary judgment
would have been appropriate nevertheless. Id.
3. Non-Patent Damages
In addition to arguing that TRA could not satisfy its
burden of proving that Kantar misappropriated TRA’s
trade secrets and Kantar infringed TRA’s patents, Kantar
also argued that TRA could not establish that it was
entitled to damages for Kantar’s alleged breach of fiduci-
ary duty, breach of contract, and misappropriation of
trade secrets. Summary Judgment Op., 984 F. Supp. 2d
at 233–34. TRA’s main damages theory turned on Kan-
tar’s decisions to release a competing product and to file a
declaratory judgment against TRA which, according to
TRA, froze the market. Specifically, TRA alleged that
Kantar’s actions spooked investors, because investors are
hesitant to fund companies embroiled in litigation and are
reluctant to invest in less-established companies—like
TRA—when they are competing against a powerful and
well-known company such as Kantar. Id. at 235. TRA
estimated Kantar’s actions cost it $21–23 million. TRA
calculated this figure by considering the value of TRA
before Kantar’s allegedly improper acts—$54 million—in
May 2010 and after—$20 million—in July 2012 and
reducing this figure by thirty percent because only seven-
ty percent of this loss was attributable to Kantar. Id. at
234. To support its damages theory, TRA submitted: (1)
an expert report by its damages expert, Melissa Bennis;
(2) a portion of a declaration of its CEO, Mark Lieberman;
(3) a portion of a declaration of Naveen Chopra, TiVo’s
CEO; and, (4) a portion of a declaration of Stephen B.
Morris, another TRA expert that had been proffered, in
support of its motion for an injunction. Id. at 234.
TNS MEDIA RESEARCH, LLC v. TIVO RESEARCH AND ANALYTICS 15
As for TRA’s claim that Kantar’s release of a compet-
ing product caused TRA harm, the district court deter-
mined that the opinion of TRA’s damages expert, Ms.
Melissa Bennis, did not satisfy the requirements of Fed-
eral Rule of Evidence 702 (“FRE”) for several reasons.
Bennis asserted that TRA’s inability to acquire more
financing in a fourth round of investments was caused, in
large part, by Kantar’s decision to release a competing
product. The district court found that this opinion, based
solely on a temporal relationship, was insufficient to
satisfy the rigors of FRE 702(c). Summary Judgment Op.,
984 F. Supp. 2d at 241. The district court also found that
Bennis’s opinion was flawed because it failed to consider
the alternative explanations given for TRA’s failure—that
investors were concerned about TRA’s lack of revenue
given the amount of capital already raised. Id. Lastly,
the district court determined that Bennis’s report relied
upon mere speculation by Chopra that Kantar’s product
caused the market to freeze, making it difficult for TRA to
compete. Id. For these reasons, the district court ex-
cluded Bennis’s report.
Without Bennis’s report, the only other evidence prof-
fered by TRA to support its “frozen market” theory was
Liberman’s testimony. But the district court found that
his testimony was based on conjecture and could not alone
be relied upon to justify TRA’s damages. Id. at 242.
Thus, the district court excluded the entire theory from
the case. Id. Without this theory, the court found no
other basis for a request for compensatory damages and,
thus, barred TRA from seeking any.
As for TRA’s possible claim for nominal damages for
TRA’s remaining non-patent claims—breach of fiduciary
and contract claims—its request for attorneys’ fees for its
breach of fiduciary duty claim and its request for equita-
ble relief for both claims in the form of an injunction, the
district court concluded that Kantar’s motion for sum-
mary judgment did not dispose of these claims, and the
16 TNS MEDIA RESEARCH, LLC v. TIVO RESEARCH AND ANALYTICS
court delayed consideration of these claims until a later
date. Summary Judgment Op., 984 F. Supp. 2d at 242,
246. The district court subsequently ordered the parties
to meet and confer to decide what, if any, remedies were
still available to TRA and, if the parties disagreed, to file
an appropriate motion. TNS Media Research, LLC v.
TRA Global, Inc., No 1:11-cv-4039, slip op. at 2 (S.D.N.Y.
April 7, 2014), ECF No. 185 (“Damages Order”). Unable
to reach an agreement, Kantar filed a motion to limit
TRA’s remedies and strike its jury demand. Upon consid-
eration, the district court granted in part the motion,
concluding that TRA was not entitled to any remedy,
aside from nominal damages. Id. at 13.
With respect to TRA’s request for injunctive relief for
its breach of fiduciary duty claim, the district court con-
cluded that such relief was now moot. TRA argued that
Kantar breached its fiduciary duty to TRA by manipulat-
ing its representative on TRA’s board to gain improper
access to TRA’s confidential information. In light of this
access, TRA sought to enjoin Kantar from continuing to
breach its fiduciary duties to TRA. Since 2012, Kantar no
longer had a representative on the board, however. Id. at
3. With no fiduciary to enjoin, the district court concluded
that TRA had no basis for injunctive relief.
As for TRA’s breach of contract claim, the district
court determined that two out of the four asserted con-
tracts—a 2008 non-disclosure agreement (“NDA”) and a
2009 NDA—had expired, mooting a request for injunctive
relief as to those contracts. Id. at 4. And, although the
other two contracts—a 2007 NDA and an End-User
License Agreement (“EULA”)—had yet to expire, the
district court concluded that its prior summary judgment
ruling foreclosed any relief. Under the 2007 NDA, TRA
granted Kantar access to its confidential information.
TRA alleged Kantar used this information to copy TRA’s
patented method of creating target indices, but the dis-
trict court had already determined that Kantar’s accused
TNS MEDIA RESEARCH, LLC v. TIVO RESEARCH AND ANALYTICS 17
method of creating market research reports was different
than TNA’s and granted summary judgment of non-
infringement on this basis. Damages Order, at 5. There-
fore, the court concluded that TRA could not now claim
damages for Kantar’s alleged misuse of this information.
Similarly, the EULA between TRA and Kantar granted
Kantar access to TRA’s Media TRAnalytics product. TRA
asserted that Kantar breached the contract by incorporat-
ing this information into its own products, but the district
court had already determined that Kantar did not use any
of TRA’s technical information related to the TRAnalytics
product. Without evidence that TRA improperly used this
confidential information, the district court determined
that TRA could not pursue damages for Kantar’s alleged
breach of this agreement.
TRA also sought a jury trial on attorneys’ fees, based
on the disputed contracts. 2 The district court denied this
request. It explained that attorneys’ fees are only award-
ed after entry of judgment unless the law requires those
fees be proven at trial as an element of damages. Id. at 6.
Because none of the contracts asserted by TRA included a
provision for attorneys’ fees, the district court concluded
that TRA could not rely on those contracts to support its
claim to a jury trial. Accordingly, the district court found
that TRA was not entitled to a trial on attorneys’ fees, but
the court recognized that TRA could request those fees
after a judgment had been entered.
Next, the district court considered whether TRA could
recover nominal damages for its breach of contract and
fiduciary duty claims. Id. at 7. TNS alleged that TRA
waived any claim to such damages by failing to specifical-
ly plead them in its complaint. But, the district court
found that this failure did not prevent TRA from pursuing
2 The district court rejected this claim, but TRA
does not dispute it on appeal.
18 TNS MEDIA RESEARCH, LLC v. TIVO RESEARCH AND ANALYTICS
such relief, because a general request for damages can
include nominal damages. Id. Thus, the district court
found that TRA could seek nominal damages in this case.
Id. It, however, concluded that TRA could not try this
issue to a jury, noting that TRA’s request was below
twenty dollars—the threshold amount for a right to a jury
trial under the Seventh Amendment to the U.S. Constitu-
tion. Damages Order, at 7 n.23.
In addition to its other damages theories, TRA also
argued that the district court’s prior decision eliminating
its frozen market theory did not foreclose its ability to
pursue its compensatory damages theories, including “loss
of exclusive use” and unjust enrichment. The district
court disagreed. It first noted that it understood TRA’s
only compensatory damages theory to be its “frozen
market” theory, because TRA stated in its summary
judgment briefing that it was not seeking “lost profits,”
“lost sales,” or “price erosion.” Id. at 8. Because the
district court had already addressed this theory in its
resolution of Kantar’s motion for summary judgment, the
district court found that TRA could no longer pursue any
other theory for compensatory damages.
The district court concluded, moreover, that even con-
sidering the merits of these alternative theories, it would
conclude that TRA’s alternative theories failed as a mat-
ter of law. Id. TRA alleged that part of its loss in value
was attributable to its loss in the exclusive use of its trade
secrets. The district court, however, found it already had
ruled that TRA failed to put forth sufficient evidence that
Kantar caused any of TRA’s loss in value, thereby barring
a “loss of exclusive use” claim. Id. at 9. As for TRA’s
unjust enrichment claim, the district court found that
TRA’s damages expert’s brief discussion of this theory was
legally insufficient. Thus, the district court found that
TRA had failed to meet its burden that it was entitled to
damages under this theory. Id. at 10.
TNS MEDIA RESEARCH, LLC v. TIVO RESEARCH AND ANALYTICS 19
Lastly, the district court considered TRA’s assertion
that it was entitled to punitive damages on its breach of
contract and fiduciary duty claims because of Kantar’s
egregious behavior. The district court stated that, in
order to be awarded punitive damages, one must “satisfy
the [] ‘very high threshold of moral culpability.’” Damages
Order, at 10–11 (quoting In re Methyl Tertiary Butyl
Ether, 725 F.3d 65, 128 (2d Cir. 2013)). Under New York
law, a party must demonstrate that a defendant acted
with actual malice or such reckless disregard that borders
on criminality to be awarded punitive damages. Although
there was evidence that Kantar hoped to starve TRA for
cash, there was no evidence that Kantar actually acted on
those intentions. It determined that there was also
evidence that TRA authorized the disclosure of confiden-
tial information to Kantar, which suggested that Kantar
had a good faith belief that it was authorized to share this
information. Without any proof of egregious conduct, the
district court concluded that TRA was not entitled to
punitive damages. Id. at 13.
Following this decision, only TRA’s claim for nominal
damages arising from Kantar’s alleged breach of contract
and fiduciary duty remained. TNS Media Research, LLC
v. TRA Global, Inc., No. 1:11-cv-4039, slip op. at 1
(S.D.N.Y. July 2, 2014), ECF No. 188. Ultimately, the
parties agreed that it would be wasteful to conduct a
bench trial on these claims when so little was at stake.
Accordingly, Kantar agreed to pay TRA $1 in nominal
damages, thereby mooting the final issue left in the case.
The parties acknowledged that this agreement did not
foreclose the parties from pursuing claims reinstated after
an appeal. Id. In light of the parties’ agreement, the
district court entered a final judgment.
TRA timely appealed to this court. We have jurisdic-
tion pursuant to 28 U.S.C. § 1295(a)(1) (2012).
20 TNS MEDIA RESEARCH, LLC v. TIVO RESEARCH AND ANALYTICS
DISCUSSION
A. Trade Secret Claims
Trade secret misappropriation is a matter of state
law. See Atl. Res. Mktg. Sys., Inc. v. Troy, 659 F.3d 1345,
1356 (Fed. Cir. 2011). The parties agree that New York
law applies to TRA’s trade secret claims against Kantar.
We review the grant of summary judgment under the law
of the regional circuit. Charles Mach. Works, Inc. v.
Vermeer Mfg. Co., 723 F.3d 1376, 1378 (Fed. Cir. 2013).
The Second Circuit reviews the grant or denial of sum-
mary judgment de novo. Petrosino v. Bell Atl., 385 F.3d
210, 219 (2d Cir. 2004). Summary judgment is appropri-
ate when, drawing all justifiable inferences in the non-
movant’s favor, there exists no genuine issue of material
fact and the movant is entitled to judgment as a matter of
law. Fed. R. Civ. P. 56(c); Anderson v. Liberty Lobby, Inc.,
477 U.S. 242, 255 (1986). Additionally, this court reviews
a district court’s decision to exclude evidence and impose
discovery sanctions under the law of the relevant regional
circuit. See Meyer Intellectual Props. Ltd. v. Bodum, Inc.,
690 F.3d 1354, 1358 (Fed. Cir. 2012). In the Second
Circuit, such rulings are reviewed for abuse of discretion.
See Phoenix Assocs. III v. Stone, 60 F.3d 95, 100 (2d Cir.
1995); Thomas E. Hoar, Inc. v. Sara Lee Corp., 900 F.2d
522, 525 (2d Cir. 1990).
1. Discovery Sanctions
TRA argues that the district court erroneously dis-
missed its trade secret claims, contending that the district
court abused its discretion in dismissing the claims as a
sanction for TRA’s discovery violations. First, TRA dis-
putes the district court’s conclusion that it improperly
waited until summary judgment to narrow its claims. See
Summary Judgment Op., 984 F. Supp. 2d at 239. Accord-
ing to TRA, it voluntarily agreed to reduce the number of
asserted trade secrets and did so, in part, at the district
court’s express invitation. To be punished for such a
TNS MEDIA RESEARCH, LLC v. TIVO RESEARCH AND ANALYTICS 21
reduction was improper especially considering that it had
not violated any court order previously, which is a pre-
requisite to dismissal of all or part of a cause of action as
a sanction under the Federal Rules of Civil Procedure.
Additionally, TRA claims that the district court’s conclu-
sion that Kantar was severely prejudiced by TRA’s dis-
covery failures is unsupported as there was no evidence
suggesting that Kantar misunderstood TRA’s claims or
that it required additional depositions or subpoenas for
additional documents. Because this was TRA’s only
discovery shortcoming, it argues that there was no reason
for the district court to issue such as a harsh sanction.
Kantar disputes TRA’s allegations, explaining that
TRA failed throughout the course of the litigation to
sufficiently identify its trade secrets. For example, when
Kantar requested more information about TRA’s trade
secrets in June 2012, TRA conceded that its responses
were inadequate. Although TRA amended these respons-
es in October 2012, Kantar alleges that these amend-
ments were still insufficient because they merely listed
several hundred documents, without explaining how these
documents demonstrated the existence of trade secrets.
And, even though the district court suggested that TRA
reduce the number of its trade secrets in April 2013,
Kantar contends that this was not an invitation for TRA
to supplement its deficient disclosures because the discov-
ery deadline had passed. Because TRA failed to identify
its trade secrets adequately, Kantar contends that the
district court correctly concluded that TRA had violated
Federal Rule of Civil Procedure 26(e) (“FRCP”). And,
because FRCP37(c) permits a district court to exclude
information that should have been disclosed under FRCP
26, Kantar contends that dismissing TRA’s claims was
well within the district court’s discretion.
Federal Rule of Civil Procedure 26(e)(1)(A) provides
that a party who has responded to an interrogatory “must
supplement or correct its disclosure or response . . . in a
22 TNS MEDIA RESEARCH, LLC v. TIVO RESEARCH AND ANALYTICS
timely manner if the party learns that in some material
respect the disclosure or response is incomplete or incor-
rect, and if the additional or corrective information has
not otherwise been made known to the other parties
during the discovery process or in writing . . . .” “If a
party fails to provide information or identify a witness as
required by Rule 26(a) or (e), the party is not allowed to
use that information or witness to supply evidence on a
motion, at a hearing, or at a trial, unless the failure was
substantially justified or is harmless.” Fed. R. Civ. P.
37(c) (emphasis added).
Additionally or instead of this sanction, a district
court:
(A) may order payment of the reasonable expens-
es, including attorney's fees, caused by the failure;
(B) may inform the jury of the party's failure; and
(C) may impose other appropriate sanctions, in-
cluding any of the orders listed in Rule
37(b)(2)(A)(i)-(vi).
Id. Therefore, a failure to follow Rule 26(e) will warrant
preclusion of omitted information, “unless the failure was
substantially justified or is harmless.” Id. “Failure to
timely amend a contention interrogatory can bar use of a
theory of liability, especially when such failure results in
prejudice to the adverse party.” N.J. Dep't of Envtl. Prot.
v. Atl. Richfield Co., No. 1:00-cv-1898, 2014 U.S. Dist.
LEXIS 15966, at *9 (S.D.N.Y. Feb. 6, 2014) (citing
Unigene Labs. v. Apotex, Inc., No. 06-cv-5571, 2010 U.S.
Dist. LEXIS 67444, at *6 (S.D.N.Y. July 7, 2010), aff’d,
655 F.3d 1352 (Fed. Cir. 2011) (“[W]here there is substan-
tial prejudice to the Plaintiffs—namely, not being advised
of the contours of [a] claim until long after the termina-
tion of discovery and the filing of dispositive motions—the
Defendants’ failure to amend their contentions results in
[a] claim being deemed waived.”)).
TNS MEDIA RESEARCH, LLC v. TIVO RESEARCH AND ANALYTICS 23
Here, the district court concluded that TRA violated
Rule 26 when it narrowed its trade secret claims on May
10, 2013. We note that on April 23, 2013, the court or-
dered TRA to reduce its trade secret claims. In response
to that order the parties stipulated, with the court’s
approval, that TRA would reduce its trade secret claims
by May 10. While this does not necessarily establish that
TRA complied with Rule 26, it is also not clear that TRA’s
actions—to reduce its trade secret claims on the court-
approved timeline—rise to the level of violating the rules
of procedure. For the reasons below, we conclude the
district court abused its discretion when it dismissed all of
TRA’s trade secret claims as a discovery sanction. On
remand, the district court should both address whether
TRA violated Rule 26 and, if there was a violation, craft a
more appropriate sanction.
We find that the district court abused its discretion
when it dismissed all of TRA’s trade secrets claims as a
discovery sanction. Generally, “[a] district court ‘abuses’
or ‘exceeds’ the discretion accorded to it when (1) its
decision rests on an error of law (such as application of
the wrong legal principle) or a clearly erroneous factual
finding, or (2) its decision—though not necessarily the
product of a legal error or a clearly erroneous factual
finding—cannot be located within the range of permissi-
ble decisions.’” Zervos v. Verizon N.Y., Inc., 277 F.3d 635,
650 (2d Cir. 2002) (quoting Zervos v. Verizon N.Y, Inc.,
252 F.3d 163, 169 (2d Cir. 2001)). In order to determine
the appropriate sanction for a discovery violation, the
Second Circuit considers several factors including “(1) the
willfulness of acts underlying noncompliance; (2) the
efficacy of lesser sanctions; (3) the duration of noncompli-
ance; and (4) whether the noncompliant party was on
notice that it faced possible sanctions,’” but no one factor
is dispositive. Agiwal v. Mid Island Mortg. Corp., 555
F.3d 298, 302–03 (2d Cir. 2009); see also SEC v. Razmi-
lovic, 738 F.3d 14, 25 (2d Cir. 2013) (noting that "these
24 TNS MEDIA RESEARCH, LLC v. TIVO RESEARCH AND ANALYTICS
factors are not exclusive, and they need not each be
resolved against the [sanctioned] party").
Considering these factors, it is clear that a dismissal
was an inappropriate sanction in these circumstances.
First, there is no indication that TRA purposefully
shirked its discovery obligations. Cf. Robertson v.
Dowbenko, 443 F. App’x 659, 661 (2d Cir. 2011) (noting
that willful non-compliance exists when a party has
“repeatedly failed to respond to interrogatories and pro-
duce documents . . . in violation of the district court’s
orders”). Instead, the record suggests that TRA actually
tried to meet its obligations, as evidenced by its decision
to amend its initial disclosures in response to Kantar’s
complaint that such disclosures were deficient and the
fact that it was not until Kantar lobbied the court in April
2013 to order TRA to identify and limit its trade secrets in
anticipation of trial that TRA became aware that Kantar
still believed its disclosures were inadequate. When the
court ordered the parties to confer in the hopes of stream-
lining the case, moreover, TRA responded by reducing the
number of trade secret claims asserted. It did so within
days of the court’s suggestion and well before Kantar filed
its motion for summary judgment. We see no discovery
violation which would warrant such a harsh sanction,
especially one imposed without warning.
There is also nothing in the record that evinces the
district court considered the efficacy of lesser sanctions.
World Wide Polymers, Inc. v. Shinkong Synthetic Fibers
Corp., 694 F.3d 155, 159 (2d Cir. 2012) (finding that a
dismissal of a party’s damages claim was inappropriate,
in part, because “there [was] no indication in the record
that the district court considered any lesser sanctions”).
Most importantly, there was no indication prior to the
district court’s summary judgment order that TRA’s
discovery shortcomings could result in a dismissal of its
trade secret claims. Id. at 160 (“Parties must be given
notice and an opportunity to respond before a cause of
TNS MEDIA RESEARCH, LLC v. TIVO RESEARCH AND ANALYTICS 25
action, or potential remedy, is dismissed as a sanction for
failure to comply with court orders.”); cf. Sit-Up v.
IAC/InterActive Corp., No. 05-CIV.-9292, 2008 U.S. Dist.
LEXIS 12017, at *16–19 (S.D.N.Y. Feb. 20, 2008) (before
dismissing trade secret claims, the court afforded plaintiff
two opportunities to amend its disclosures and warned
them that failure to provide more detailed responses
would result in their dismissal). Although Kantar dis-
putes this conclusion, arguing that the district court did
warn TRA at the April 2013 conference that its trade
secret claims may be dismissed, a review of the record
belies that contention. The district court did no more than
state that Kantar’s motion for summary judgment of no
trade secret misappropriation would be granted if the
secrets identified did not meet the legal definition of a
trade secret—it did not say that TRA’s claims might be
dismissed as a discovery sanction. And, although the
district court justified its decision because it said TRA’s
actions were prejudicial to Kantar, the district court failed
to explain why this was the case. See Shcherbakovskiy v.
Da Capo Al Fine, Ltd., 490 F.3d 130, 140 (2d Cir. 2007)
(“With no findings or explanation from the district court,
we cannot conclude that the sanction of dismissal of the
complaint and granting of the counterclaims was appro-
priate.”). Thus, while the facts perhaps suggest that some
sanction was appropriate, the record before us does not
support dismissal. Accordingly, we reverse the district
court’s decision to dismiss TRA’s trade secret claims.
2. Summary Judgment of Trade Secrets
In the alternative, the district court concluded that
TRA’s trade secrets claims would be dismissed on the
merits even if they had not been dismissed as a sanction.
TRA argues that this decision was incorrect because there
were material factual disputes that prohibited it, both
regarding whether TRA’s information was secret and
whether Kantar wrongfully used it.
26 TNS MEDIA RESEARCH, LLC v. TIVO RESEARCH AND ANALYTICS
Under New York law, a trade secret is “any formula,
pattern, device or compilation of information which is
used in one’s business, and which gives him an opportuni-
ty to obtain an advantage over competitors who do not
know or use it.” Ashland Mgmt. Inc. v. Janien, 82 N.Y.2d
395, 407 (1993) (quotation omitted). When a party alleges
misappropriation of a trade secret, they must show: “(1)
that it possessed a trade secret, and (2) that the defend-
ants used that trade secret in breach of an agreement,
confidential relationship or duty, or as a result of discov-
ery by improper means.” N. Atl. Instruments, Inc. v.
Haber, 188 F.3d 38, 43–44 (2d Cir. 1999). “The existence,
vel non, of a trade secret usually is treated as a question
of fact.” Chevron U.S.A., Inc. v. Roxen Serv., Inc., 813
F.2d 26, 29 (2d Cir. 1987).
In determining whether information constitutes a
trade secret, New York courts have considered the follow-
ing factors:
(1) the extent to which the information is known
outside of the business; (2) the extent to which it
is known by employees and others involved in the
business; (3) the extent of measures taken by the
business to guard the secrecy of the information;
(4) the value of the information to the business
and its competitors; (5) the amount of effort or
money expended by the business in developing the
information; (6) the ease or difficulty with which
the information could be properly acquired or du-
plicated by others.
N. Atl. Instruments, Inc., 188 F.3d at 44 (quoting Re-
statement of Torts § 757, comment b).
a. Media TRAnalytics
With respect to TRA’s proprietary information related
to how Media TRAnalytics operates, i.e. its speed, reliabil-
ity, scalability, and performance, the district court con-
TNS MEDIA RESEARCH, LLC v. TIVO RESEARCH AND ANALYTICS 27
cluded that the evidence on the record demonstrated that
TRA disclosed most of the product’s properties it was now
claiming as a trade secret, and that Kantar’s accused
products did not make use of any of the allegedly protect-
ed technical information. Summary Judgment Op., 984 F.
Supp. 2d at 239. Because TRA failed to submit evidence
from which a reasonable jury could find that its Media
TRAnalytics secrets were in fact secret and that Kantar
used this information, the district court granted summary
judgment as to this information.
The evidence, however, does not support the district
court’s decision. A review of the record reveals that the
publicly available documents that allegedly disclosed
TRA’s highly confidential information merely provided an
overview of Media TRAnalytics. There remains an unre-
solved question of fact as to whether the propriety infor-
mation about Media TRAnalytics was known outside
TRA. See Lehman v. Dow Jones & Co., 783 F.2d 285, 298
(2d. Cir. 1986) (“Secrecy is a question of fact.”). And, this
fact is material because it bears on whether this infor-
mation constitutes a trade secret. See N. Atl. Instru-
ments, Inc., 188 F.3d at 44. Thus, it was inappropriate for
the district court to grant summary judgment of no trade
secret misappropriation as to the Media TRAnalytics
secret.
The district court also erred in its determination re-
garding Kantar’s use of the Media TRAnalytics secret.
TRA accused Kantar of using this proprietary information
in order to gain a competitive advantage over TRA. It did
not allege that Kantar incorporated TRA’s technical
information into its own product. The district court only
considered the later possibility and disregarded evidence
that Kantar improperly used this secret to create a prod-
uct that could compete with Media TRAnalytics product,
something it allegedly could not have done but for its
improper use of the trade secret. Accordingly, there is
still a question as to whether Kantar used the proprietary
28 TNS MEDIA RESEARCH, LLC v. TIVO RESEARCH AND ANALYTICS
information, and, thus, summary judgment was improper
under these circumstances.
b. TRA’s Customer Information
The district court also concluded that TRA’s infor-
mation regarding customer contract terms and pricing,
customer negotiations, customer proposals, and potential
customers were not protectable as trade secrets. Sum-
mary Judgment Op., 984 F. Supp. 2d at 239–40. Specifi-
cally, the district court found that TRA publicly disclosed
its clients and that there was no evidence that TRA
attempted to develop its client list in a way that would
render the list proprietary. Id. at 239. It also determined
that TRA failed to provide evidence that Kantar used
TRA’s client list. Id. at 240. Accordingly, the district
court also granted summary judgment of no trade secret
misappropriation as to TRA’s customer information.
With respect to customer lists and information associ-
ated with customer preferences, even where some of that
information may be publicly available, courts have held
that “where a company's customers are not readily ascer-
tainable, but must be cultivated with great effort and
secured through the expenditure of considerable time and
money, the names of those customers are [protectable]
trade secrets.” Tactica Int'l, Inc. v. Atl. Horizon Int’l, Inc.,
154 F. Supp. 2d 586, 606 (S.D.N.Y. 2001) (quotations and
citations omitted); see also Oppenheimer & Co., Inc. v.
Northstar Agri Indus., LLC, No. 651839/2103, 2013 N.Y.
Misc. LEXIS 5142, at *20 (Sup. Ct. 2013) (“The identity of
a client is not a trade secret ‘where the customers are
readily ascertainable outside the employer’s business as
prospective users or consumers of the employer’s services
or product.’”) (quoting Leo Silfen v. Cream, 29 N.Y.2d 387,
392 (1972)). Here, there was no evidence that TRA un-
dertook the type of effort required to develop a proprietary
client list. Additionally, there was unrefuted evidence
that TRA’s customers were not secret. See Defiance
TNS MEDIA RESEARCH, LLC v. TIVO RESEARCH AND ANALYTICS 29
Button Mach. Co. v. C&C Metal Prods. Corp., 759 F.2d
1053, 1063 (2d Cir. 1985) (explaining that once a client
list is disclosed, even if inadvertently, the “information
ceases to be a trade secret and will no longer be protect-
ed”). Thus, the district court did not err in its analysis
with respect to this information.
But in addition to TRA’s client list, TRA also alleged
other client information was protectable, such as custom-
er contract terms, customer proposals, and customer
pricing. The district court did not, however, consider
whether this customer data was protectable. The Second
Circuit has recognized that such “non-business infor-
mation—for example, related to customers, merchandis-
ing, cost and pricing, and systems and methods—are also
protected.” Lehman v. Dow Jones Co., 783 F.2d 285, 297
(2d Cir. 1986). Because the district court failed to evalu-
ate whether all of TRA’s customer information was pro-
tectable, summary judgment that Kantar did not
misappropriate TRA’s client information was inappropri-
ate.
c. TRA’s Financial Information
Similarly, the district court concluded that details
about TRA’s capital structure, income statements, finan-
cial projections, and strategic plans were not entitled to
protection because the information was publicly disclosed
and there was no evidence that Kantar used the infor-
mation. Summary Judgment Op., 984 F. Supp. 2d at 240.
We disagree. Confidential business documents alone are
not trade secrets because these documents are “simply
information as to single or ephemeral events in the con-
duct of the business [and not] a process or device for
continuous use in the operation of the business.” Softel,
Inc. v. Dragon Med. & Sci. Comm’ns, Inc., 118 F.3d 955,
968 (2d Cir. 1997); see Bear, Stearns Funding, Inc. v.
Interface Grp., 361 F. Supp. 2d 283, 305–06 (S.D.N.Y.
2005) (finding that financial information, including terms
30 TNS MEDIA RESEARCH, LLC v. TIVO RESEARCH AND ANALYTICS
of a loan agreement, and personal financial information,
is not a trade secret). It is also true that market research
and business goals are not protectable trade secrets.
LinkCo. v. Fujistu Ltd., 230 F. Supp. 2d 492, 500 (S.D.N.Y
2002) (“Marketing concepts and new product ideas are not
considered trade secrets. Similarly, information consist-
ing simply of business possibilities or goals is not a trade
secret.”); see also Hudson Hotels Corp. v. Choice Hotels
Int’l, 994 F.2d 1173, 1177 (2d Cir. 1993) (finding that a
marketing concept is not a trade secret). Proprietary
financial projections and strategic plans may be protecta-
ble trade secrets, however, where it is not publicly known,
not readily identifiable without inside information, or
otherwise complex. Here, Kantar’s appointed Board
member allegedly learned critical proprietary plans for
future development. TRA alleges that Kantar then decid-
ed to go into competition using this proprietary infor-
mation, to which TRA claims Kantar did not otherwise
have access. Drawing all reasonable inferences in favor of
TRA, we find that TRA’s allegations are sufficient to
survive summary judgment. The district court’s summary
judgment concerning financial information and strategic
plans is modified accordingly; further factual development
as to these claims remains.
d. TRA’s Product Positioning
As for TRA’s information related to its relative posi-
tion in the market compared to similar companies, the
district court found that such information was not pro-
tectable as trade secrets. Summary Judgment Op., 984 F.
Supp. 2d at 240. Additionally, the district court concluded
that, even if the documents could be protected, the docu-
ments alleged to constitute product positioning secrets
were publically disclosed. Id.
As previously explained, “[a] trade secret is a process
or device for continuous use in the operation of a busi-
ness”—it does not encompass marketing materials. Here,
TNS MEDIA RESEARCH, LLC v. TIVO RESEARCH AND ANALYTICS 31
TRA only cites to documents that generically compare
Media TRAnalytics to other systems on the market and
list the potential return on investment for Media TRAna-
lytics’ users. Because this information is not recognized
as a trade secret, the district court properly dismissed this
allegation.
B. Damages for Non-Patent Claims
1. TRA’s Frozen Market Theory
TRA also disputes the propriety of the district court’s
decision to exclude Bennis’s opinion that Kantar’s actions
froze the market to TRA’s detriment. TRA additionally
contends that the district court’s decision to find that,
absent this report, TRA had failed to produce sufficient
evidence to establish it was entitled to compensatory
damages was improper.
Federal Rule of Evidence 702 requires an expert’s tes-
timony to be based on sufficient facts or data and be the
product of reliable principles and methods. A district
court “should exclude expert testimony if it is speculative
or conjectural or based on assumptions that are ‘so unre-
alistic and contradictory as to suggest bad faith’ or to be
in essence ‘an apples and oranges comparison.’” Zerega
Ave. Realty Corp. v. Horneck Offshore Transp., LLC, 571
F.3d 206, 214 (2d Cir. 2009) (quoting Boucher v. U.S.
Suzuki Motor Corp., 73 F.3d 18, 21 (2d Cir. 1996)). But,
when a party objects to an expert simply on grounds that
the report is based on questionable data, this objection
goes to the weight of the evidence and not the admissibil-
ity and, thus, does not provide a basis for excluding an
expert’s report. Id.
We review the district court’s decision to exclude ex-
pert testimony for abuse of discretion. Tokai Corp. v.
Easton Enterprises, Inc., 632 F.3d 1358, 1364 (Fed. Cir.
2011); Amorgianos v. National R.R. Passenger Corp., 303
F.3d 256, 264 (2d Cir. 2002). And we conclude that the
32 TNS MEDIA RESEARCH, LLC v. TIVO RESEARCH AND ANALYTICS
court did not abuse its discretion when it excluded the
“frozen market” opinion in Bennis’s report. In her report,
Bennis explained TRA’s state in 2008 and its optimistic
outlook for future growth. She then detailed the problems
associated with TRA’s fourth round of financing, noting
that many investors declined to invest because of a lack of
strategic fit whereas others mentioned concerns about
management structure and sales cycle length. But,
Bennis also noted that the timing of TRA’s fourth round of
financing occurred after Kantar decided to release a
product that competed directly with TRA’s Media TRAna-
lytics product. Because the investors’ comments were
similar to those made in prior rounds of financing, Bennis
determined that these types of miscellaneous individual
concerns did not hinder TRA’s ability to raise capital
during its fourth round of investing. Instead, Bennis
concluded that it was Kantar’s decision to enter the
market that severely impacted TRA’s financial future.
But Bennis did not analyze the actual impact of Kan-
tar’s release of a competing product into the marketplace;
she merely assumed that this factor impacted TRA’s
market value without any explanation. Although TRA
argues that these criticisms go to the weight—not the
admissibility—of the report, her report merely speculates
why TRA’s value dropped from $54 million to $20 million.
She provides no reason why the loss in TRA’s value is
actually linked to Kantar’s behavior aside from the fact
that Kantar’s conduct occurred between the third and
fourth round of investing. See R.F.M.A.S. Inc. v. So., 748
F. Supp. 2d 244, 273 (S.D.N.Y. 2010) (“As one court has
observed, it is well settled that a causation opinion based
solely on a temporal relationship is not derived from the
scientific method and is therefore insufficient to satisfy
the requirements of Fed. R. Evid. 702.”). This error is
compounded by the fact that Bennis ignored the undis-
puted statements from investors, who said they did not
invest in TRA’s fourth round of financing because they
TNS MEDIA RESEARCH, LLC v. TIVO RESEARCH AND ANALYTICS 33
were concerned about TRA’s lack of revenue traction
given the amount of capital already raised. And, on the
fact that her opinion was based, in part, on Kantar’s
decision to file its declaratory judgment action—which is
not a “bad act” that could cause compensable damages for
TRA. For these reasons, we conclude that the district
court did not abuse its discretion when it excluded Ben-
nis’s expert report. 3
Without this report, the district court determined that
TRA lacked sufficient evidence to support a request for
compensatory damages. A party need not rely upon an
expert to demonstrate it is entitled to damages, however.
See Apple Inc. v. Motorola, Inc., 757 F.3d 1286, 1330 (Fed.
Cir. 2014) (finding that the absence of expert testimony
did not negate the right to recover damages). While it
may be inappropriate to allow an expert to premise an
opinion upon no more than a temporal relationship be-
tween TRA’s dramatically divergent valuations, the jury
is entitled to consider that fact, among others, when
assessing TRA’s request for compensatory damages. See
Brooktree Corp v. AMD, 977 F.2d 1555, 1578 (Fed. Cir.
1992) (“As in damages determinations in general, the
measurement of actual damages is a question of fact.”).
Here, TRA had lay witness testimony from its own
CEO, Mark Lieberman, and TiVo’s CEO, Naveen Chopra,
to support its claim for damages. “The Federal Rules of
Evidence allow a lay witness to testify in the form of an
opinion, provided such testimony ‘is limited to those
opinions or inferences which are (a) rationally based on
the perception of the witness and (b) helpful to a clear
understanding of the witnesses’ testimony or the deter-
mination of a fact in issue.’” Lightfoot v. Union Carbide
3 Of course, the district court has the discretion to
allow supplemental expert reports on remand if it deems
such reports appropriate.
34 TNS MEDIA RESEARCH, LLC v. TIVO RESEARCH AND ANALYTICS
Corp., 110 F.3d 898, 911 (2d Cir. 1977) (quoting Fed. R.
Evid. 701). A CEO with personal knowledge of his busi-
ness is certainly capable of providing evidence regarding
the impact of a new competing product and estimating the
losses attributable to this new product. See Securitron
Magnalock Corp. v. Schnabolk, 65 F.3d 256, 265 (2d Cir.
1995) (stating that a company president can testify about
“lost profits where the projection is based on evidence of
decreased sales”). Because TRA was able to cite to other
evidence in the record indicating that Kantar’s actions led
to confusion in the marketplace and affected TRA’s mar-
ket position and ability to raise capital, it was inappropri-
ate for the district court to prohibit TRA from pursuing a
claim for damages premised on its contention that Kan-
tar’s actions had a deleterious effect on its market value. 4
2. TRA’s unjust enrichment theory
TRA also challenges the district court’s decision that
TRA was not entitled to seek damages based on an unjust
enrichment theory. First, TRA argues that the district
court erred when it concluded that TRA had only asserted
one compensatory theory, i.e. its “frozen market” theory,
and that, even if TRA had asserted more theories, the
district court erred when it concluded TRA could not
assert them as a matter of law.
During the summary judgment stage, Kantar alleged
that TRA failed to offer any admissible evidence that
Kantar caused TRA any non-patent damages. In re-
4 TRA also argues that the district court erred
when it concluded that TRA had no right to a jury trial
solely on its claim for nominal damages regarding its
breach of contract and fiduciary duty claims. Because we
conclude that TRA can still pursue a theory for compensa-
tory damages, we need not consider whether TRA was
entitled to a trial on nominal damages alone.
TNS MEDIA RESEARCH, LLC v. TIVO RESEARCH AND ANALYTICS 35
sponse, TRA noted that it did not seek lost profits, lost
sales or price erosion, asserting that its damages theory
was based on the diminution of TRA’s value caused by
Kantar’s bad acts. Although TRA may have alluded to
other theories to support its damages claim earlier in the
litigation, TRA expressly limited itself during the sum-
mary judgment phase to just one theory. Accordingly, the
district court did not err in concluding that TRA dropped
its other compensatory damages theories before the
summary judgment phase of the case. 5
3. Punitive Damages
TRA also argues that the district court erred when it
concluded that TRA was not entitled to punitive damages
for its breach of fiduciary duty and contract claims. 6 TRA
contends that it was at an unfair disadvantage when the
district court entertained Kantar’s motion to strike TRA’s
jury demand, because the district court treated this
motion effectively as a summary judgment motion, with-
out affording TRA the benefit of additional pages to detail
its opposition. It alleges that the district court failed to
address these procedural concerns, and also failed to draw
5 At the district court, TRA also asserted a “loss of
use” damages theory, but in its opening brief here, TRA
does not discuss this theory. Because TRA failed to
address this issue in its opening brief, TRA has waived
any argument regarding its “loss of use” damages theory.
See SmithKline Beecham Corp. v. Apotex Corp., 439 F.3d
1312, 1319 (Fed. Cir. 2006) (“Our law is well established
that arguments not raised in the opening brief are
waived.”) (citation omitted).
6 This ruling assumed that TRA’s trade secret
claims were no longer in the case. To the extent those
claims result in any compensatory damages judgment,
they may also support a request for punitive damages.
We leave that question to be resolved on remand.
36 TNS MEDIA RESEARCH, LLC v. TIVO RESEARCH AND ANALYTICS
all reasonable inferences in TRA’s favor when it decided
that TRA could not pursue its claim for punitive damages.
This was especially prejudicial, according to TRA, because
the district court previously had limited the parties to a
single round of summary judgment briefing.
TRA overstates what occurred at the district court.
Although TRA did raise its procedural concerns with the
district court, TRA did not request additional pages or file
a motion to strike Kantar’s purported summary judgment
motion as untimely. Further, to the extent that TRA was
disadvantaged by the district court’s failure to allow TRA
to present additional evidence, TRA has not cited to any
rule or procedure that prevented TRA from submitting
additional documentation with its opposition to Kantar’s
motion. Thus, it is difficult to say that TRA truly was at a
disadvantage here. Additionally, while TRA asserts that
the district court stated there would only be one round of
summary judgment briefing, this statement was made
before the district court, in its ruling on Kantar’s motion
for summary judgment, asked that the parties attend a
scheduling conference to address how to best proceed with
the remaining claims. At this scheduling conference, the
district court discussed the possibility of allowing Kantar
to file a motion to strike, and the district court agreed to
allow Kantar to file such a motion. See TNS Media Re-
search, LLC v. TRA Global, Inc., No. 1:11-cv-4039 (Jan. 9,
2014), ECF No. 164 (Transcript of Dec. 20, 2013 hearing).
Thus, there is no reason to find that the district court’s
procedures in disposing of TRA’s claims for punitive
damages were improper in this case.
We agree with TRA, however, that in resolving this
question as a matter of law, the district court did not
consider the evidence in the light most favorable to TRA.
Here, the district found that “TRA present[ed] no evidence
that Kantar acted on its alleged intentions” to starve TRA
for cash. Damages Op. at 12. But there was evidence on
the record that Kantar “intended to starve TRA for cash,”
TNS MEDIA RESEARCH, LLC v. TIVO RESEARCH AND ANALYTICS 37
attempted to “slow and frustrate TRA’s ability to obtain
financing,” and “disclosed confidential information in
violation of the NDAs.” Damages Op. at 11–13. In order
to receive punitive damages, one must demonstrate that a
party has acted with actual malice or such wanton, willful
or reckless disregard for a plaintiff’s rights. See In re
Methyl Tertiary Butyl Ether, 725 F.3d at 128. Intent is
quintessentially a question of fact. See Waltree Ltd. v.
ING Furman Selz LLC, 97 F. Supp. 2d 464, 470 (S.D.N.Y.
2000) (“Under New York law, punitive damages are
available in a tort action . . . Whether to award punitive
damages . . . is a question of fact for the jury.”) And,
where there is a genuine issue of material fact, summary
judgment is inappropriate. Fed. R. Civ. P. 56. In this
case, TRA presented sufficient evidence to create a color-
able question about Kantar’s intent to injure TRA. Thus,
it was inappropriate for the district court to find, as a
matter of law, that TRA could not demonstrate that it was
entitled to punitive damages.
4. Injunctive Relief
Additionally, TRA challenges the district court’s rul-
ing that TRA could not seek injunctive relief for its re-
maining non-patent claims. In particular, TRA alleges
that the district court erred when it concluded that the
2009 NDA had expired, thereby mooting its claim for
injunctive relief on its breach of contract theory, and that
relief for its fiduciary duty claim was also moot, because
Kantar no longer had a fiduciary on TRA’s board. We
agree with TRA’s position.
With respect to the 2009 NDA, TRA does not dispute
that the 2009 NDA contained a confidentiality provision
lasting for 18 months. TRA argues that, because other
provisions of the contract were still enforceable—
especially, the term affording TRA the right to seek
equitable relief, including an injunction, in the event of a
breach—TRA could still pursue its claim for injunctive
38 TNS MEDIA RESEARCH, LLC v. TIVO RESEARCH AND ANALYTICS
relief based on the NDA. After a contract has expired,
injunctive relief based upon that contract is moot. Carbon
Fuel Co. v. United Mine Workers of Am., 444 U.S. 212, 214
n.2 (1979) (“The contracts have expired, and the question
of injunctive relief is out of the case.”); Planned
Parenthood v. Steinhaus, 60 F.3d 122, 125 (2d Cir. 1995)
(noting that a request for injunctive relief is moot after a
contract has expired). TRA accused Kantar of breaching
the confidentiality provision of the 2009 NDA, but once
that provision expired, TRA’s ability to seek injunctive
relief was moot. The fact that other aspects of the con-
tract remained enforceable cannot revive the NDA.
Accordingly, the district court did not err in dismissing
TRA’s claim for an injunction under the 2009 NDA.
The district court did err, however, in dismissing as
moot TRA’s theory that Kantar breached its fiduciary
duty to TRA . In its ruling, the court emphasized that
Kantar no longer has a member on TRA’s board and there
is no indication that Kantar would rejoin its board. But
the district court ignored TRS’s allegation that Kantar’s
representative learned critical information during his
time of active board membership. TRA alleged that
Kantar violated its fiduciary obligation to TRA when it
manipulated its own TRA board member to obtain im-
proper access to TRA’s confidential information and trade
secrets. Under New York law, “a fiduciary relationship is
necessarily fact-specific, and is not dependent on a con-
tractual relationship.” Koether v Sherry, 977 N.Y.S.2d
667, 667 (N.Y. Sup. Ct. 2013) (citing First Keystone Con-
sultants, Inc. v DDR Construction Services, 904 N.Y.S.2d
113 (2d. Dept 2010)). And, a Board member’s fiduciary
obligations do not cease when his or her term of office
ceases. See Roslyn Union Free School Dist. v Barkan, 16
N.Y.3d 643, 647 (2011) (reinstating cause of action for
breach of fiduciary duty against a former board member).
TRA’s request for injunctive relief is not moot simply
because Kantar no longer has a representative on its
TNS MEDIA RESEARCH, LLC v. TIVO RESEARCH AND ANALYTICS 39
Board. The district court could issue an injunction pro-
hibiting use of information learned while Kantar did have
a representative on TRA’s Board. We find that the dis-
trict court should consider a renewed request by TRA for
injunctive relief if, after trial, TRA establishes that Kan-
tar has breached and threatens to continue to breach its
fiduciary duties to TRA.
C. Patent claims
To prove infringement, the patentee must show that
the accused device contains each and every limitation,
literally or under the doctrine of equivalents. See Erics-
son, Inc. v. D-Link Sys., 773 F.3d 1201, 1215 (Fed. Cir.
2015). In this case, TRA argues that the district court
erred when it concluded that all of TRA’s accused prod-
ucts do not infringe the patents-in-suit.
1. CPG Products
When determining whether a patent is infringed, the
court must first construe the disputed claims and then
compare the claims to the allegedly infringing devices.
See Grober v. Mako Prods., Inc., 686 F.3d 1335, 1344 (Fed.
Cir. 2012) (citing Cybor Corp. v. FAS Techs., Inc., 138
F.3d 1448, 1454 (Fed. Cir. 1998)).
During claim construction, the parties agreed to con-
strue “purchase data” as “data describing the purchase of
a particular product at a given time, obtained from a
purchase data source, such as a shopping loyalty card,
point of sale collection means, or other record of a sale of a
product or service.” See Summary Judgment Op., 984 F.
Supp. 2d at 218. But at the summary judgment stage, the
parties contested whether they actually agreed how
“purchase data” should be construed. In particular, the
parties disputed if the phrase “at a given time” should be
defined. TRA asserted that it should, because it impacted
the scope of the claim. Kantar disagreed, arguing that
the issue could be avoided because the accused CPG
40 TNS MEDIA RESEARCH, LLC v. TIVO RESEARCH AND ANALYTICS
Products indicated nothing at all about time, meaning
there was no need to construe what “at a given time”
might mean. In order to resolve Kantar’s summary
judgment motion, the district court decided to further
construe the parties’ stipulated construction. It then
applied this second construction to the disputed CPG
Products, without further input from the parties. We find
this procedure improper.
“[P]arties in patent cases frequently stipulate to a
construction or the court construes a term, only to have
their dispute evolve to a point where they realize that a
further construction is necessary.” GE Lighting Sols.,
LLC v. AgiLight, Inc., 750 F.3d 1304, 1310 (Fed. Cir.
2014). Generally, when a determinative claim construc-
tion dispute arises, a district court must resolve it. See 02
Micro Int’l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d
1351, 1360 (Fed. Cir. 2008) (“The purpose of claim con-
struction is to determine the meaning and scope of the
patent claims asserted to be infringed. When the parties
raise an actual dispute regarding the proper scope of
these claims, the court, not the jury, must resolve that
dispute.”) (quotation omitted); see also Advanced Fiber
Techs. Trust v. J&L Fiber Servs., Inc., 674 F.3d 1365,
1373 (Fed. Cir. 2012) (finding that a court may construe a
term found only in the construction, and not in the claims,
if the correct construction of a claim term necessitates it).
And, although a district court has great latitude in how it
conducts the claim construction process, the parties must
be involved. See Ballard Med. Prod. v. Allegiance
Healthcare Corp., 268 F.3d 1352, 1358 (Fed. Cir. 2001)
(“Markman does not require a district court to follow any
particular procedure in conducting claim construction.”);
Eon-Net LP v. Flagstar Bancorp, 249 F. App’x 189, 198
(Fed. Cir. 2007) (vacating and remanding a summary
judgment ruling because the district court had failed to
afford the non-moving party notice and opportunity to
present its claim construction arguments during the
TNS MEDIA RESEARCH, LLC v. TIVO RESEARCH AND ANALYTICS 41
relevant briefing). Here, neither party was afforded the
opportunity to present its own claim construction argu-
ments before the district court sua sponte decided the
claim construction issue, i.e. how to define “at a given
time” itself. It appears, moreover, that additional input
may have altered the court’s view of this determinative
question. Because the district court improperly construed
the parties’ stipulation and granted summary judgment
based on that construction, without affording TRA or
Kantar notice or opportunity to present argument about
the appropriate construction, we vacate the district
court’s grant of summary judgment of non-infringement
as to Kantar’s CPG Products and remand for further
proceedings.
TRA also objects to the district court’s ruling that it
could not pursue its doctrine of equivalents argument
simply because its infringement expert did not opine
adequately on the matter. TRA explains that it supported
this theory with both expert and non-expert testimony,
and that the district court erred when it found that TRA
needed expert testimony to prove infringement under the
doctrine of equivalents.
TRA is correct that a party is not required to submit
expert testimony as evidence of equivalents. See AquaTex
Indus. v. Techniche Sols., 479 F.3d 1320, 1329 (Fed. Cir.
2007) (stating that “evidence of equivalents must be from
the perspective of someone skilled in the art, for example
‘testimony of experts or others versed in the technology;
by documents, including texts and treatises; and, of
course, by the disclosures of the prior art’”) (quoting
Graver Tank & Mfg. Co. v. Linde Air Products Co., 339
U.S. 605, 609 (1950)). But, despite its contention to the
contrary, the only evidence TRA submitted to establish
that Kantar’s CPG Products infringed under the doctrine
of equivalents was its expert report. See Summary
Judgment Op., 984 F. Supp. 2d at 222 (noting that “TRA’s
sole evidence that the CPG Products infringe under the
42 TNS MEDIA RESEARCH, LLC v. TIVO RESEARCH AND ANALYTICS
doctrine of equivalents is Mela’s [TRA’s expert] declara-
tion”). Where the nonmoving party submits evidence that
is “merely colorable, or is not significantly probative,
summary judgment may be granted.” Anderson, 477 U.S.
at 249. Without any other evidence for the district court
to consider, we find that the court did not err when it
dismissed TRA’s doctrine of equivalents theory with
respect to Kantar’s CPG products.
2. Auto Products
The district court also found that Kantar’s Auto Prod-
ucts did not infringe the asserted claims because the
products did not perform double-blind matching. Id. at
244–45. Accordingly, the district court granted summary
judgment of non-infringement as to these products as
well. On appeal, TRA argues that the district court
improperly found that there was no evidence to support
TRA’s claim that Kantar’s Auto Products perform this
required step. If the district court had properly made all
reasonable inferences in its favor, as is required during
summary judgment, TRA argues that the district court
would have concluded that the unsigned draft contract
between J.D. Power and Experian was evidence that
refuted Kantar’s claim that Kantar’s Auto Products do not
perform double blind matching. We find TRA’s argu-
ments unpersuasive.
Essentially, the dispute between the parties is how
the unsigned draft contract between J.D. Power and
Experian should be interpreted—does Experian receive
the behavioral data, in this case automotive registration
data, in addition to the personal identifying information,
such as names, or does it simply receive an account num-
ber linked to personal identifying information from J.D.
Power. If Experian only receives an account number,
without information about automotive purchases, TRA
argues that Kantar’s Auto Products meet the double blind
matching limitation.
TNS MEDIA RESEARCH, LLC v. TIVO RESEARCH AND ANALYTICS 43
The contested contract states that “J.D. Power will de-
liver to Experian . . . J.D Power’s data file, which include
the following data fields: Unique Key ID, last name,
address, city, state, zip code (“J.D. Power Data”).” Id. at
221. Experian then will use this information:
solely for the purpose of performing anonymous,
blind matching of it to certain Client data (“[Kan-
tar] data”) provided to Experian by Client [Kan-
tar]. Experian will run a process to associate the
names and addresses from Client with the names
and address from Advertiser and create a unique
identification number that anonymously links
common names and addresses.
Id. After Experian matches the data, it “will send the
matched IDs to KantarMedia for use by KantarMedia in
order to improve advertising relevance and measure-
ment.” Joint Appendix at 1669.
“Summary judgment of non-infringement . . . is ap-
propriate where the patent owner’s proof is deficient in
meeting an essential part of the legal standard of in-
fringement, because such failure will render all other
facts immaterial.” TechSearch L.L.C. v. Intel Corp., 286
F.3d 1360, 1369 (Fed. Cir. 2002) (citing London v. Carson
Pirie Scott & Co., 946 F.2d 1534, 1537 (Fed. Cir. 1991)
(“There can be no genuine issue as to any material fact
where the nonmoving party’s proof is deficient in meeting
an essential part of the applicable legal standard.”)); see
also Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248
(1986) (explaining that proof is sufficient if “the evidence
is such that a reasonable jury could return a verdict for
the nonmoving party”). On summary judgment, all infer-
ences must be drawn in favor of the nonmoving party.
Anderson, 477 U.S. at 256. In response to a well-
supported summary judgment motion, however, to create
a triable issue of fact the nonmoving party must proffer
evidence sufficient for a jury to find for that party. Id. at
44 TNS MEDIA RESEARCH, LLC v. TIVO RESEARCH AND ANALYTICS
249-50. In this case, we find that TRA failed to submit
sufficient evidence to create a genuine issue as to whether
Kantar’s Auto Products satisfy the double blind matching
limitation.
In its opposition to Kantar’s summary judgment mo-
tion, TRA alleged that the “Unique key ID” is the masked
automobile registration data, such that Experian does not
receive both individuals’ personal information and their
automobile registration data, but it failed to provide any
support for this allegation. And, a review of the record
fails to provide any further insight. Without any evidence
regarding the meaning of “Unique key ID,” one cannot say
that it is necessarily an abstract identification code that
does not reveal anything about and individual’s automo-
bile registration. See TechSearch, 286 F.3d at 1372
(“[I]nfringement must be shown literally or equivalently
for each limitation; general assertions of facts, general
denials, and conclusory statements are insufficient to
shoulder the non-movant’s burden.”). But, even assuming
that “Unique key ID” is an abstract identification code
related to automobile registration, the unsigned contract
states Kantar will provide Experian with the other data to
match to J.D. Power’s data. It is unknown if Experian
utilizes the same process when it receives masked data
from the set-top box provider, who provides Experian with
the television viewing data in Kantar’s Auto Products
process. There is also no indication if this other client
data includes behavioral information. TRA was required
to submit sufficient evidence to raise a genuine issue of
material fact. There is simply no evidence that Experian
utilizes double blind matching for Kantar’s Auto Products.
Accordingly, the district court did not err in granting
TNS MEDIA RESEARCH, LLC v. TIVO RESEARCH AND ANALYTICS 45
summary judgment of non-infringement with respect to
Kantar’s Auto Products. 7
D. Reassignment of the Case on Remand
Lastly, TRA argues that, if this case were to be re-
manded, it should be assigned to a new judge. Specifical-
ly, TRA alleges that, in light of the nature, extent, and
frequency of the district court’s errors, it would be neces-
sary to reassign the case, in order to avoid the district
court’s bias against TRA to permeate the case. In re-
sponse, Kantar contends that such a request is moot if
this Court affirms the district court but, even if this Court
does remand this case, Kantar argues that TRA has failed
to demonstrate such a serious measure is required in this
case. Kantar cites to several instances where the district
court made allowances for TRA, such as allowing TRA a
surreply during summary judgment briefing, affording it
the opportunity to present its summary judgment argu-
ments at a hearing, and granting TRA permission to
amend its pleadings. Further, Kantar alleges that a
7 TRA also argues that the district court’s ruling
regarding the “cleansing and editing algorithm” limitation
of the ’940 Patent was erroneous. TRA acknowledges that
this construction was not the basis for the grant of sum-
mary judgment of non-infringement, but it nevertheless
contends that this Court should address the construction.
Although we may review a non-dispositive claim construc-
tion, we decline to do so on the record before us. See
Chimie v. PPG Indus., Inc., 402 F.3d 1371, 1375 n.2 (Fed.
Cir. 2005) (deciding to consider the construction of a term
that “was not dispositive to the district court's decision
[because it] may be relevant on remand”); Arlington
Indus. v. Bridgeport Fittings, Inc., 632 F.3d 1246, 1256–
57 (Fed. Cir. 2011) (declining to address a non-dispositive
claim construction, in part, because more briefing was
required to address the issue).
46 TNS MEDIA RESEARCH, LLC v. TIVO RESEARCH AND ANALYTICS
reassignment would waste judicial resources, as the
district court judge has spent over three years working on
the case and, therefore, is the most familiar with it.
Accordingly, Kantar argues that reassignment is not
warranted in this case.
We find TRA’s extraordinary request inappropriate in
this case. In the Second Circuit, such a request “is a
serious request rarely made and rarely given.” United
States v. Awadallah, 436 F.3d 125, 135 (2d Cir. 2006).
TRA is correct that the Second Circuit does allow such
reassignment, but the instances where the Second Circuit
reassigned a case are much more egregious than the case
we have before us today. See United States v. Steppello,
664 F.3d 359, 367 (2d Cir. 2011) (assigning the case to a
new judge after the “district judge denied [a] motion [to
reconsider] without comment” when the Second Circuit
had clearly addressed the same issue after the district
court’s original decision but came to the opposite conclu-
sion); Armstrong v. Guccione, 470 F.3d 89, 113 (2d Cir.
2006) (“Further, while we emphasize that we have never
found any fault in Judge Owen's skillful handling of this
case, we believe that on the seventh anniversary of Arm-
strong's confinement, his case deserves a fresh look by a
different pair of eyes. We therefore direct the district
court to reassign the case randomly to a different district
court judge on remand.”); Chase Manhattan Bank v.
Affiliated FM Ins. Co., 343 F.3d 120, 128 (2d Cir. 2003)
(reassigning the case because the original judge “was
required to disqualify himself” since he had a financial
interest in a party). While we have disagreed with some
of the district court’s rulings, we have affirmed many
others. Because there does not appear to be any glaring
errors that warrant a fresh set of eyes, reassignment is
not warranted in this case.
TNS MEDIA RESEARCH, LLC v. TIVO RESEARCH AND ANALYTICS 47
CONCLUSION
For the foregoing reasons, we affirm the district
court’s conclusion that there is insufficient evidence from
which a reasonable juror could conclude that Kantar’s
Auto Products do not infringe the asserted patent claims,
that TRA’s product positioning secrets are not protectable
as a matter of law, and that TRA’s damages expert failed
to comply with Fed. R. of Evid. 702. We reverse the
district court’s ruling that TRA’s financial projections and
strategic plans are not protectable as a matter of law. We
reverse the district court’s decision to dismiss TRA’s
misappropriation of trade secret claims as a discovery
sanction and its decision to dismiss TRA’s remaining
trade secrets claims as a matter of law. We also reverse
the district court’s determination that TRA was entitled
to only nominal damages on its non-patent claims, which
moots the propriety of the district court’s conclusion that
TRA was not entitled to a jury trial as to those claims.
And, we reverse the district court’s conclusion that TRA is
not entitled to injunctive relief on its fiduciary duty
claims as a matter of law. Lastly, we vacate the district
court’s decision that Kantar’s CPG Products do not in-
fringe the asserted patent claims. We remand for further
proceedings consistent with this opinion.
AFFIRMED IN PART, VACATED IN PART, AND
REMANDED