Chewy, Inc. v. International Business Machines Corp.
(IBM)
Docket No. 2022-1756 (https://cafc.uscourts.gov/opinions-orders/22-1756.OPINION.3-5-2024_2280474.pdf)
MOORE, STOLL, CUNNINGHAM
March 5, 2024
Brief Summary: DC finding of noninfringment partially affirmed; ineligibility under 101 affirmed.
Summary: IBM appealed DC grant of summary judgment (SJ) of noninfringement of certain claims of US 7,072,849 and its 35 USC 101 ineligibility determination regarding the claims of US 7,076,443, both patents being related to improvements in web-based advertising. The FC panel opinion explains that “[i]n the prior art, advertisements would be downloaded at the same time as applications” resulting in a “diminished service response” while the claimed methods avoid this by “‘storing and managing’ advertising at the user reception system before it is requested by the user”. The DC determined that “a skilled artisan would understand the claimed invention requires pre-fetching of advertising objects”, and the FC panel agreed (Verizon, FC 2007 (“When a patent . . . describes the features of the ‘present invention’ as a whole, this description limits the scope of the invention.”); Absolute Software, FC 2011 (“use of the phrase ‘present invention’ or ‘this invention’ is not always so limiting”); Hormone, FC 1990 (“[i]t is not unusual that separate claims may define the invention using different terminology”)). The FC panel also agreed with the DC that Chewy’s system does not perform the pre-fetching function as described in the ‘849 patent specification and therefore affirmed noninfringement of ‘849 claims 1, 2, 14, and 18 (e.g., “no material factual dispute as to whether Chewy performs this limitation”). The FC panel reversed the DC’s grant of SJ of noninfringement of ‘849 claim 12 because “there is a genuine dispute of material fact regarding whether Chewy ‘establish[es] characterizations for respective users’” and remanded that portion of the decision. IBM also appealed the DC’s determination of ineligibility of the ‘443 patent under section 101. Under step one of the Alice test (Alice, US 2014), the DC held the claims “are directed to the abstract idea of identifying advertisements based on search results” and the FC panel agreed (like Customedia Techs., FC 2020 and Intell. Ventures, FC 2015), distinguishing this case from Packet Intelligence (FC 2020 (“eligible claims directed to ‘a specific improvement in computer technology’”) as argued by IBM. The FC panel found that the ‘443 claims “are not directed to any challenges unique to computer networks, or specific improvements to the functionality of the computer itself” and “are directed to the abstract idea of identifying advertisements”. The DC also found the ‘443 claims “fail to recite an inventive concept at Alice step two” and the FC panel agreed (e.g., “[t]he concept of data collection, recognition, and storage is undisputedly well-known” (Content Extraction, FC 2014), ““claiming the improved speed or efficiency inherent with applying the abstract idea on a computer [does not] provide a sufficient inventive concept” (Intell. Ventures), “the abstract idea of correlating advertisements with search results…is not an inventive concept” (Secured Mail, FC 2017), no inventive ordered combination, only a generic process (Weisner, FC 2022).