In Chewy, Inc. v. International Business Machines Corp., [2022-1756] (Fed. Cir. 2024), the Federal Circuit affirmed in part. reversed in part, and remanded the distirct court’s summary judgment of non-infringement of claims of U.S. Patent No. 7,072,849, and summary judgment that claims of U.S. Patent No. 7,076,443 were directed to ineligible subject matter.

Non-Infringement of U.S. Patent No. 7,072,849

Claim 1 of the ‘849 patent stated:

Infringement of the claims ‘849 patent turned on whether the claims to improvements in web-based advertising required “prefetching” an advertising object, even though these words are not set forth in the claim. The “Summary of Invention” said:

‘849 patent, 3:6-21. The “Description of the Preferred Embodiment: said:

‘849 patent, 33:16-27.

and:

‘849 patent, 34:38-44. The Federal Circuit concluded that in light of these “repeated descriptions of the present invention, a skilled artisan would understand the claimed invention requires pre-fetching of advertising objects,” citing Verizon Servs. Corp. v. Vonage Holdings Corp., 503 F.3d 1295, 1308 (Fed. Cir. 2007) (“When a patent . . . describes the features of the ‘present invention’ as a whole, this description limits the scope of the invention.”).

IBM tried to rely on Absolute Software, Inc. v. Stealth Signal, Inc., 659 F.3d 1121,
1136–37 (Fed. Cir. 2011), where the Federal Circuit explained that the use of the phrase “present invention” or “this invention” is not always limiting, such as where the references to a certain limitation as being the “invention’ were re not uniform, or where other portions of the intrinsic evidence do not support applying the limitation to the entire patent. However, the Federal Circuit said that these “narrow exceptions” referenced in Absolute Software were not applicable, because the ’849 patent uniformly referred to the pre-fetching of advertising objects as an aspect of the invention as a whole.

U.S. Patent No. 7,076,443 is Directed to Ineligible Subject Matter

The district court held at Alice step one the asserted claims were directed to the abstract idea of identifying advertisements based on search results. The Federal Circuit agreed, noting that it has held claims to targeted advertising were directed to an abstract idea at Alice step one. IBM argued its claims recited a specific solution to unique technical problems arising from advertising over a computer network. The Federal Circuit rejected this argument, noting that the claims were not directed to any challenges unique to computer networks, or specific improvements to the functionality of the computer itself. The claims merely recite the concept of identifying advertisements based on search results, without any specificity as to how this is accomplished. The Federal Circuit said that even accepting that the claimed invention improves the specificity and relevancy of online advertisements, this “is at most an improvement to the abstract concept of targeted advertising wherein a computer is merely used as a tool.”