• by Wayne Friedman , Steve McClellan  @mp_mcclellan, September 26, 2011

Kantar Media won a major court battle in its head-to-head competition with TRA Global Inc. over a media planning tool that marries TV ratings with shopping data information.

A New York Federal judge ruled in favor of Kantar Media, rejecting TRA's request for a preliminary injunction stopping Kantar Media from offering its RapidView media planning tool. RVR allows users to create and analyze TV audience profiles, based on shopping behaviors, including brand loyalty and product category usage.

TRA had asked the court to freeze RVRs commercial activity at least until its lawsuit against Kantar, alleging patent infringement related to technology that drives its similar TRAnalytics service, is resolved. WPP and Kantar actually filed suit first in June, alleging breach of contract with a request for a ruling that it did not infringe on TRA patents. TRA's suit followed shortly thereafter.

TRA alleges that Kantar Media and Cavendish Square Holdings, both owned by WPP Group, had investments in TRA that allowed them access to information.

TRA says Kantar approached TRA about obtaining a license for its software. Kantar disputes this, saying that TRA was actively looking to sell a license for a substantial fee. TRA started up operations in 2007. Kantar began RapidView for Retail in March 2011 but says it did not infringe on TRA's patent.

Both the RapidView and TRAnalytics services match consumer purchase patterns with TV audience data. The companies pitch the services to clients as both planning and ROI analytics tools.

Judge Shira Scheindlin, of the federal court for the Southern District of New York, concluded that Kantar Media had raised a "substantial question about the validity" of the patent claim on which TRA had based its motion for a preliminary injunction.

The focus of her decision was a legal tenet applied to determine the validity of patents known as "prior art." Patents, she said, may be deemed invalid "if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains."

Because Kantar succeeded in raising substantial "prior art" questions related to the TRA patent that the latter didn't refute, the injunction was denied.

Commenting on the decision, George Shababb, president of Kantar Media Audiences North America, stated, "TRA's patent relates to basic techniques that audience measurement firms have been using for decades."

The case proceeds on a dual track, including further pre-trial proceedings in the lawsuit in which TRA continues to pursue a permanent shuttering of RVR and damages. There is also a court-ordered non-binding mediation session that starts later this month.

Mark Lieberman, chairman and CEO, TRA Inc., stated: "We will continue to move forward aggressively with this litigation to protect our intellectual property, as well as employees' and shareholder's investment."