Claim Construction When Uniformly Referring to Aspects of an Invention

| Joshua C. LoaderBrandon G. Smith

Chewy, Inc. v. International Business Machines Corporation

Before Moore, Chief Judge, Stoll and Cunningham. Appeal from the United States District Court for the Southern District of New York.

Summary: A feature in the specification limits the claims if the patent uniformly describes it as an aspect of the invention as a whole.  And a patentee cannot transform an abstract idea into a patent-eligible, specific implementation of that abstract idea merely by reciting conventional techniques.

Chewy, Inc. sued International Business Machines Corp. (IBM) seeking declaratory judgment of noninfringement of two IBM patents generally related to web-based advertising. In response, IBM filed counterclaims alleging infringement. The district court granted Chewy’s motion for summary judgment of noninfringement of the asserted claims of the first patent. The court also granted Chewy’s motion for summary judgment that the asserted claims of the second patent were invalid under § 101. IBM appealed both summary judgment rulings.

The Federal Circuit upheld the grant of summary judgement on most claims of the first patent because no reasonable factfinder could find that Chewy’s website or mobile applications perform the “selectively storing advertising objects” limitation recited in the claims. The Federal Circuit affirmed the lower court’s claim construction that this limitation requires storing advertising objects in anticipation of a user request and not in response to a user request. IBM argued that the passages of the patent which support this construction did not apply to the asserted claims.  The court rejected this argument because the patent uniformly referred to pre-fetching advertising objects as an aspect of the invention as a whole.

The court also affirmed the ruling that the asserted claims of the second patent were ineligible under §101. Applying step one of the Alice framework, the court determined that the asserted claims were directed to the abstract idea of identifying advertisements based on search results. Moving to step two, the court held the claims failed to recite an inventive concept.  IBM relied on various limitations – such as one reciting off-line batch processing – to argue that the claims recited specific implementations of the abstract concept of using search results to identify relevant advertisements.  The Federal Circuit disagreed, ruling that the additional limitations recited only conventional techniques rather than an inventive concept sufficient to transform the claimed abstract idea into patent-eligible subject matter.

Editor: Sean Murray