TNS MEDIA RESEARCH, LLC, dba Kantar Media Audiences, CAVENDISH SQUARE HOLDING B.V. v. Tivo Research and Analytics, Inc.

N OTE: This disposition is nonprecedential.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.,
Defendant-Appellant
______________________
2015-1252
______________________
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, for plaintiffs-appellees. Also represented by
J OHN STRAND, ERIC J. RUTT , CHARLES T. STEENBURG.
P ERRY M. G OLDBERG, Progress LLP, Los Angeles, CA,
for defendant-appellant.
______________________

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TNS MEDIA RESEARCH, LLC v. TIVO RESEARCH AND ANALYTICS 2
Before N EWMAN, CLEVENGER , and O’MALLEY , Circuit
Judges.
O’MALLEY , Circuit Judge.
Tivo Research and Analytics, Inc. dba TRA, Inc.
(“TRA”) appeals from the final judgment of the United
States District Court for the Southern District of New
York awarding attorneys’ fees to TNS Media Research,
LLC dba Kantar Media Audiences and Cavendish Square
Holding B.V. (collectively, “Kantar”). TNS Media Re-
search, LLC v. TiVo Research & Analytics, Inc., No. 11-cv-
4039, 2014 WL 5639930 (S.D.N.Y. Nov. 4, 2014) (“Attor-
neys’ Fee Decision”). For the reasons explained below, we
vacate the district court’s award of attorneys’ fees as
premature.
Kantar filed suit against TRA seeking declaratory
judgment that it did not infringe U.S. Patent No.
7,729,940 (“the ’940 Patent”), which is assigned to TRA.
TRA counterclaimed, asserting: (1) infringement of the
’940 Patent; (2) misappropriation of trade secrets;
(3) aiding and abetting breach of fiduciary duty; and
(4) breach of contract. TRA later amended its counter-
claims to include allegations of infringement of two addi-
tional patents. Kantar moved for summary judgment on
TRA’s patent infringement and trade secret claims, and
for no damages on TRA’s non-patent counterclaims. The
district court granted Kantar’s motion “as to non-
infringement, trade secrets, and non-patent damages.”
TNS Media Research, LLC v. TRA Global, Inc., 984 F.
Supp. 2d 205, 208 (S.D.N.Y. 2013).
On July 2, 2014, the parties stipulated to nominal
damages of $1 for TRA’s breach of contract and fiduciary
duty claims, and expressly reserved the right to appeal
therefrom. The parties then stipulated to the entry of
final judgment. TRA appealed that judgment to this
court, and the appeal was docketed as TNS Media Re-

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TNS MEDIA RESEARCH, LLC v. TIVO RESEARCH AND ANALYTICS 3
search, LLC v. TiVo Research & Analytics, Inc., No. 14-
1668 (“the Substantive Appeal”).
After the district court entered the stipulated judg-
ment, Kantar moved for attorneys’ fees pursuant to Rule
54(d) of the Federal Rules of Civil Procedure, 35 U.S.C.
§ 285, and the court’s inherent powers. The district court
granted Kantar’s motion. With respect to TRA’s patent
claims, the court found that the “‘totality of the circum-
stances’ dictates that TRA acted in an ‘exceptional’ man-
ner throughout this litigation.” Attorneys’ Fee Decision,
2014 WL 5639930, at *8. The court concluded, therefore,
that Kantar was “entitled to its attorneys’ fees and costs”
with respect to TRA’s patent claims under § 285. Id. The
court further found that TRA’s remaining “five trade
secret claims lacked any colorable basis and were brought
in bad faith, thus satisfying the standard for an award of
attorneys’ fees under the Court’s inherent power.” Id. at
*12. The district court directed Kantar to submit a de-
tailed request for fees and expenses recoverable pursuant
to that order. The parties thereafter stipulated to the
amount of fees at issue, and TRA now appeals from the
district court’s final decision granting Kantar’s motion for
attorneys’ fees.
In the Substantive Appeal—decided in a separate
opinion issued contemporaneously herewith—we affirmed
in part, but: (1) reversed the district court’s ruling that
TRA’s financial projections and strategic plans are not
protectable as a matter of law; (2) reversed the district
court’s decision to dismiss certain of TRA’s trade secret
claims; (3) reversed the district court’s determination that
TRA was entitled only to nominal damages on its non-
patent claims; (4) reversed the district court’s conclusion
that TRA is not entitled to injunctive relief on its fiduci-
ary duty claims as a matter of law; and (5) vacated the
district court’s decision that certain of Kantar’s products
do not infringe the asserted patent claims. Although we
agreed with some of the district court’s rulings, we con-

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TNS MEDIA RESEARCH, LLC v. TIVO RESEARCH AND ANALYTICS 4
cluded that TRA is entitled to a jury trial on at least a
subset of its claims.
A decision awarding attorney fees to a prevailing par-
ty must be vacated when the underlying decision as to
which that party prevailed is reversed. See Baker Oil
Tools, Inc. v. Geo Vann, Inc., 828 F.2d 1558, 1566 (Fed.
Cir. 1987) (“In view of our reversal of the grant of sum-
mary judgment on these issues, the [attorney fee] award
premised thereon is vacated.”). Because we are reversing-
in-part and vacating-in-part the underlying merits deci-
sion in the Substantive Appeal, we vacate the district
court’s decision awarding attorneys’ fees as premature.
We need not address the parties’ additional argu-
ments in this appeal, and we express no opinion on the
merits of the issues presented therein. In light of this
decision, this appeal is removed from the court’s October
argument calendar.
VACATED
COSTS
Each party shall bear its own costs.

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