On Tuesday, November 29, a New York district court threw out a previous decision invalidating three TiVo Research and Analytics patents that had been handed down by a previous judge who has now retired.
In February, U.S. District Judge Shira A. Scheindlin ruled that TiVo's patents did not pass the abstract idea test set out in Alice Corp. v. CLS Bank International. Judge Scheindlin has since retired, and Judge Katherine B. Forrest felt that because of the volume of cases that have since clarified the law, it was appropriate to revisit this case.
TiVo has come a long way since it was first introduced in 1999. At that time, it was used to digitize video from another source, such as a cable or antenna. TiVo now allows users to record shows they are interested in, as well as pause and rewind live television.
This suit stemmed from a dispute over one of their subsidiary's advertising technology. TNS Media Research LLC originally filed suit in 2011 seeking a declaration that it did not infringe TiVo's patents, and TiVo filed several counterclaims. These counterclaims included breach of contract, infringement, and trade secret misappropriation. Judge Scheindlin threw out the infringement and trade secret claims in November of 2013, but the Federal Circuit vacated the order in September of 2015. In February, Judge Scheindlin granted summary judgment in favor of TNS, ruling that TiVo's asserted patents were ineligible as directed to an abstract idea.
When Judge Forrest was assigned the case in May, 2016, she decided to reconsider the February decision invalidating the patents. On Tuesday, she ruled that Enfish v. Microsoft and Iron Gate Sec. v. Lowe's Co. clarified the law from Alice, and thus TiVo's described invention was directed to a "concrete idea" and relies on an "inventive method."
This case is unusual, and we should not expect to see decisions revisited in this manner very regularly. This case dealt with two circumstances colliding to create a perfect storm for TiVo. First, Judge Schneidlin retired, causing his docket to be reassigned. This gave Judge Forrest the opportunity to revisit the case. Second, two cases came down between Judge Schneidlin's ruling on the case and Judge Forrest reexamining it. If one or both of Enfish and Iron Gate had been decided differently, or a few months earlier or later, TiVo's patents likely would not have been reinstated.
TiVo's representatives have stated that with this ruling in hand, they intend to further pursue their original patent, misappropriation, and other claims as well.