Chewy, Inc. v. International Business Machines Corporation

United States Court of Appeals
for the Federal Circuit
______________________
CHEWY, INC.,
Plaintiff-Appellee
v.
INTERNATIONAL BUSINESS MACHINES
CORPORATION,
Defendant-Appellant
______________________
2022-1756
______________________
Appeal from the United States District Court for the
Southern District of New York in No. 1:21-cv-01319-JSR,
Judge Jed S. Rakoff.
______________________
Decided: March 5, 2024
______________________
J OSHUA L EE RASKIN, Greenberg Traurig LLP, New
York, NY, argued for plaintiff-appellee. Also represented
by J ULIE P AMELA BOOKBINDER, V IMAL K APADIA .
K ARIM ZEDDAM O USSAYEF , Desmarais LLP, New York,
NY, argued for defendant-appellant. Also represented by
J OHN M. D ESMARAIS , T AMIR P ACKIN.
______________________
Before M OORE, Chief Judge, STOLL and CUNNINGHAM ,
Circuit Judges.
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CHEWY , INC. v. IBM 2
MOORE, Chief Judge.
International Business Machines Corp. (IBM) appeals
the United States District Court for the Southern District
of New York’s grant of summary judgment of noninfringe-
ment of claims 1, 2, 12, 14, and 18 of U.S. Patent No.
7,072,849. IBM also appeals the district court’s grant of
summary judgment that claims 13, 15, 16, and 17 of U.S.
Patent No. 7,076,443 are ineligible under 35 U.S.C. § 101.
For the following reasons, we affirm in part, reverse in
part, and remand for further proceedings.
BACKGROUND
IBM owns the ’849 and ’443 patents, which generally
relate to improvements in web-based advertising. The ’849
patent discloses improved methods for presenting adver-
tisements to a user of an interactive service. ’849 patent at
2:48–49. In the prior art, advertisements would be down-
loaded at the same time as applications. Id. at 2:20–26.
This conventional method diminished service response
time as it required application traffic to compete with ad-
vertising traffic for network communication services. Id.
at 2:20–36. The claimed methods minimize advertising
traffic’s interference with the retrieval and presentation of
application data by, inter alia, “storing and managing” ad-
vertising at the user reception system before it is requested
by the user. Id. at 1:17–28, 3:5–23. The advertising may
be “individualized to the respective users based on charac-
terizations of the respective users as defined by the inter-
action history with the service and such other information
as user demographics and locale.” Id. at 10:19–23.
The ’443 patent discloses improved systems and meth-
ods for targeting advertisements. ’443 patent at 2:24–39.
At the time of the invention, relevant advertisements
would be identified based on user profiles or search queries.
See id. at 1:29–62. These conventional approaches would
identify outdated or narrowly limiting advertisements. See
id. Recognizing these deficiencies, the claimed invention
instead identifies advertisements based on search results.
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CHEWY , INC. v. IBM 3
Id. at 2:24–39. For example, a user may search “washer
machine” and get a search result for the “WashMax” ma-
chine. See J.A. 2255 ¶ 31. The claimed method would use
the information contained in the “WashMax” search result
to identify advertisements. See id.
Chewy, Inc. sued IBM seeking a declaratory judgment
of noninfringement of several IBM patents, including the
’849 and ’443 patents. In response, IBM filed counter-
claims alleging Chewy’s website and mobile applications
infringed the patents. Following claim construction and
discovery, the district court granted Chewy’s motion for
summary judgment of noninfringement of claims 1, 2, 12,
14, and 18 of the ’849 patent. Chewy, Inc. v. Int’l Bus.
Machs. Corp., 597 F. Supp. 3d 669, 679–83 (S.D.N.Y. 2022)
(Summary Judgment Decision). The district court also
granted Chewy’s motion for summary judgment that
claims 13, 15, 16, and 17 of the ’443 patent are ineligible
under § 101. Id. at 691–93. IBM appeals both summary
judgment rulings. We have jurisdiction under 28 U.S.C.
§ 1295(a)(1).
D ISCUSSION
We review the district court’s summary judgment rul-
ings under the law of the regional circuit, here the Second
Circuit. High Point Design LLC v. Buyers Direct, Inc., 730
F.3d 1301, 1311 (Fed. Cir. 2013). The Second Circuit re-
views the “district court’s grant of summary judgment de
novo, construing the evidence in the light most favorable to
the nonmoving party and drawing all reasonable infer-
ences in that party’s favor.” Kuebel v. Black & Decker Inc.,
643 F.3d 352, 358 (2d Cir. 2011). Summary judgment is
appropriate when “there is no genuine dispute as to any
material fact and the movant is entitled to judgment as a
matter of law.” Fed. R. Civ. P. 56(a).
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CHEWY , INC. v. IBM 4
I. I NFRINGEMENT OF THE ’849 P ATENT
A. Claims 1, 2, 14, and 18
IBM appeals the district court’s grant of summary
judgment of noninfringement with respect to claims 1, 2,
14, and 18 of the ’849 patent. Claim 1 is representative and
recites:
1. A method for presenting advertising obtained
from a computer network, the network including a
multiplicity of user reception systems at which re-
spective users can request applications, from the
network, that include interactive services, the re-
spective reception systems including a monitor at
which at least the visual portion of the applications
can be presented as one or more screens of display,
the method comprising the steps of:
a. structuring applications so that they
may be presented, through the network, at
a first portion of one or more screens of dis-
play; and
b. structuring advertising in a manner
compatible to that of the applications so
that it may be presented, through the net-
work, at a second portion of one or more
screens of display concurrently with appli-
cations, wherein structuring the advertis-
ing includes configuring the advertising as
objects that include advertising data and;
c. selectively storing advertising objects at a
store established at the reception system.
’849 patent at 39:43–61 (emphasis added).
The district court granted summary judgment of non-
infringement of claims 1, 2, 14, and 18 because no reason-
able factfinder could find Chewy’s website or mobile
applications perform the selectively storing limitation re-
cited in the claims. Summary Judgment Decision, 597 F.
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CHEWY , INC. v. IBM 5
Supp. 3d at 679–81. IBM raises two challenges to the dis-
trict court’s grant of summary judgment. First, IBM ar-
gues the district court improperly construed the selectively
storing limitation. Second, IBM argues, even if we accept
the district court’s construction, there are material factual
disputes precluding summary judgment.
i
The district court construed “selectively storing adver-
tising objects at a store established at the reception sys-
tem” as “retrieving advertising objects and storing at a
store established at the reception system in anticipation of
display concurrently with the applications.” Chewy, Inc. v.
Int’l Bus. Machs. Corp., 571 F. Supp. 3d 133, 141–43
(S.D.N.Y. 2021) (Claim Construction Order). In other
words, the advertising objects must be “pre-fetched.” Id.
IBM argues the proper construction does not require pre-
fetching. We agree with the district court’s construction.
We review the district court’s claim construction de
novo, except for necessary subsidiary facts based on extrin-
sic evidence, which we review for clear error. Teva Pharms.
USA, Inc. v. Sandoz, Inc., 574 U.S. 318, 325–27 (2015).
Claim terms are generally given their plain and ordinary
meaning, which is the meaning one of ordinary skill in the
art would ascribe to a term when read in the context of the
claim, specification, and prosecution history. See Phillips
v. AWH Corp., 415 F.3d 1303, 1313–14 (Fed. Cir. 2005) (en
banc).
The written description of the ’849 patent supports the
district court’s construction. The written description con-
sistently describes the invention as including pre-fetching
of advertising objects. In the “Summary of Invention” sec-
tion, the ’849 patent provides:
[T]he method for presenting advertising in accord-
ance with this invention achieves the above-noted
and other objects by featuring steps for presenting
advertising concurrently with service applications
at the user reception system; i.e., terminal. . . . [I]n
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CHEWY , INC. v. IBM 6
accordance with the method, the user reception sys-
tem at which the advertising is presented includes
[a] facility for storing and managing the advertis-
ing so that it can be pre-fetched from the network
and staged at the reception system in anticipation
of being called for presentation.
’849 patent at 3:5–21 (emphases added). This pre-fetching
“minimizes the potential for communication line interfer-
ence between application and advertising traffic” present
in the prior art and “makes the advertising available at the
reception system so as not to delay presentation of the ser-
vice applications.” Id. at 3:21–24.
The written description also provides:
In accordance with the method of the present inven-
tion, Ad manager 442 is invoked by object inter-
preter 435 to return the object id of the next
available advertisement to be displayed. Ad man-
ager 442 maintains a queue of advertising object
id’s targeted to the specific user currently accessing
interactive network 10. Advertising objects are pre-
fetched from interactive system 10 from a person-
alized queue of advertising ids . . . .
Id. at 33:16–27; see also id. at 34:38–44 (“[T]wo very im-
portant response time problems have been solved by ad
manager 442 of the present invention. The first is to elimi-
nate from the new page response time the time it takes to
retrieve an advertising object from the host system. This
is accomplished by using the aforementioned pre-fetching
mechanism.”). In light of these repeated descriptions of the
present invention, a skilled artisan would understand the
claimed invention requires pre-fetching of advertising ob-
jects. See 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 argues these descriptions of “this invention,” “the
method,” and “the present invention” do not limit the scope
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CHEWY , INC. v. IBM 7
of the entire invention. According to IBM, these passages
describe only the invention claimed in unasserted depend-
ent claims 9, 10, 22, and 23, which explicitly recite “pre-
fetching.”1
In support, IBM relies on Absolute Software, Inc. v.
Stealth Signal, Inc., where we explained the “use of the
phrase ‘present invention’ or ‘this invention’ is not always
so limiting, such as where the references to a certain limi-
tation as being the ‘invention’ are not uniform, or where
other portions of the intrinsic evidence do not support ap-
plying the limitation to the entire patent.” 659 F.3d 1121,
1136–37 (Fed. Cir. 2011) (collecting cases). These narrow
exceptions referenced in Absolute Software are not applica-
ble here. The ’849 patent uniformly refers to the pre-fetch-
ing of advertising objects as an aspect of the invention as a
whole. See, e.g., ’849 patent at 3:16–21, 33:16–27, 34:38–
44. That dependent claims 9, 10, 22, and 23 recite “pre-
fetching” does not negate these clear limiting disclosures.
Patentees are free to use different terminology in different
claims to define the invention. See Hormone Rsch. Found.,
Inc. v. Genentech, Inc., 904 F.2d 1558, 1567 n.15 (Fed. Cir.
1990) (“It is not unusual that separate claims may define
the invention using different terminology, especially where
(as here) independent claims are involved.”). The asserted
claims 1, 2, 14, and 18 capture the concept of pre-fetching
of advertising objects by reciting “selectively storing adver-
tising objects,” while dependent claims 9, 10, 22, and 23
capture this concept by reciting “pre-fetching.”
IBM argues the selectively storing limitation does not
require pre-fetching because the written description states:
“RS [reception system] 400 includes a means to selectively
store objects according to a predetermined storage criterion,
thus enabling frequently used objects to be stored locally at
the RS, and causing infrequently used objects to forfeit
1 Claims 9 and 10 depend from unasserted independ-
ent claim 8, and claims 22 and 23 depend from unasserted
independent claim 21.
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CHEWY , INC. v. IBM 8
their local storage location.” ’849 patent at 6:57–61 (em-
phasis added). This passage, however, refers to “objects”
generally, not advertising objects specifically. See id. at
Fig. 4c (depicting an advertising object as one object type).
Whenever the ’849 patent discusses storing advertising ob-
jects specifically, it requires pre-fetching. See, e.g., id. at
33:21–27 (“Advertising objects are pre-fetched from interac-
tive system 10 . . . .”), 33:63–65 (“Advertising objects are
pre-fetched, so they are available in RS local store 440 when
requested by object interpreter 435 as it builds a page.”).
While the patent may not require the general class of ob-
jects to be pre-fetched, it does require the specific subclass
of advertising objects to be pre-fetched.
The prosecution history further supports the district
court’s construction. In an appeal brief filed during prose-
cution of the ’849 patent, IBM stated, in a section titled
“Summary of Claimed Subject Matter”:
To further reduce the likelihood of application
presentation delay, the specification describes se-
lectively storing advertising objects at the
user reception system so that when advertising
is to be presented, its data might be found available
at the reception system without going back to the
host. The method which is described provides for
storing and managing advertising objects so that
advertising objects may be separately pre-
fetched from the network and cached at the re-
ception system in anticipation of being called for
presentation.
J.A. 4604–05 (emphases in original) (internal citations
omitted). In other words, IBM explained that selectively
storing advertising objects means advertising objects are
pre-fetched.
In light of the intrinsic evidence, we conclude selec-
tively storing advertising objects requires pre-fetching. We
therefore affirm the district court’s construction of the se-
lectively storing limitation in claims 1, 2, 14, and 18.
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CHEWY , INC. v. IBM 9
ii
IBM argues, even if we adopt the district court’s con-
struction, the district court erred in granting summary
judgment of noninfringement as to claims 1, 2, 14, and 18
because there is a factual dispute regarding whether
Chewy’s website and mobile applications selectively store
advertising objects under this construction. Chewy’s
source code states Chewy “prefetches/preloads” such that
“near of view images are preloaded lazily before they come
into view.” J.A. 13372; see also J.A. 10816 ¶ 30 (Dr.
Schmidt testifying “the specific library Chewy utilizes con-
firms that Chewy prefetches advertising images”). Accord-
ing to IBM, this reference to pre-fetching meets the court’s
construction.
The district court, however, determined these refer-
ences to “prefetching/preloading” in Chewy’s source code
“do[] not bear on whether it performs the function of
‘prefetching’ as it is used in the specification.” Summary
Judgment Decision, 597 F. Supp. 3d at 681 n.3. The district
court clarified its construction “requires that the advertis-
ing objects be ‘pre-fetched’ in the sense that they are re-
trieved before the user has requested the page in connection
with which they are to appear.” Id. at 680 (emphasis
added). Because the evidence showed the accused instru-
mentalities retrieve advertising objects in response to a
user requesting the relevant page, the district court deter-
mined no reasonable factfinder could find Chewy selec-
tively stores advertising objects. Id. at 679–81; see also id.
at 680 (“[B]efore any purported advertising objects are
cached, the user must first request them from Chewy’s
server.”).
IBM argues the district court improperly narrowed its
construction to carve out Chewy’s pre-fetching functional-
ity. We do not agree. Instead, the district court clarified
that its construction of selectively storing does not include
retrieving an advertising object on demand by the user.
See id. at 680 (“[A]n object is not ‘pre-fetched’ when it is
‘retrieved on demand’ by the user, that is – an object is only
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CHEWY , INC. v. IBM 10
‘pre-fetched’ if it is retrieved and stored at the user’s termi-
nal ‘before being requested by the user.’” (quoting Claim
Construction Order, 571 F. Supp. 3d at 138, 143)).
This clarification is consistent with the written descrip-
tion of the ’849 patent. The patent explains advertisements
are retrieved and stored before the user requests a page
such that relevant advertisements are available once the
user requests the page. See ’849 patent at 3:5–25, 33:16–
27; see also, e.g., id. at 33:63–65 (“Advertising objects are
pre-fetched, so they are available in RS local store 440
when requested by object interpreter 435 as it builds a
page.”). Thus, when the user requests the page, the user’s
system does not need to download the advertisements from
the network, which would slow down the retrieval and
presentation of the requested content. See id. at 34:41–44
(noting the “pre-fetching mechanism” “eliminate[s] from
the new page response time the time it takes to retrieve an
advertising object from the host system”).
It is undisputed Chewy retrieves advertisements in re-
sponse to a user requesting a page. Because the claimed
selectively storing limitation requires retrieving advertise-
ments in anticipation of the user requesting the page in
connection with which they are to appear, we conclude
there is no material factual dispute as to whether Chewy
performs this limitation. We affirm the district court’s
grant of summary judgment of noninfringement of claims
1, 2, 14, and 18 of the ’849 patent.
B. Claim 12
IBM appeals the district court’s grant of summary
judgment of noninfringement with respect to claim 12 of
the ’849 patent. Claim 12, which depends from claim 8,
recites:
8. A method for presenting advertising in a com-
puter network, the network including a multiplic-
ity of user reception systems at which respective
users can request applications that include inter-
active services, the method comprising the steps of:
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CHEWY , INC. v. IBM 11
a. compiling data concerning the respective
users;
b. establishing characterizations for respec-
tive users based on the compiled data; and
c. structuring advertising so that it may be
selectively supplied to and retrieved at the
reception systems for presentation to the
respective users in accordance with the
characterizations established for the re-
spective reception system users, wherein
structuring advertising includes supplying
advertising data to the reception system
and storing a predetermined amount of the
advertising data in a store established at
the respective reception systems.
12. The method of claim 8 wherein the supplying
of advertising data to the reception system for
presentation includes the reception system re-
questing advertising data from the network when
advertising data sought to be presented is unavail-
able at the reception system.
Id. at 40:24–40, 51–56 (emphasis added).
The district court granted summary judgment of non-
infringement of claim 12 because it determined no reason-
able factfinder could find Chewy’s website or mobile
applications “establish[] characterizations for respective
users based on the compiled data.” Summary Judgment
Decision, 597 F. Supp. 3d at 682–83. This limitation, as
construed by the district court, requires delivering adver-
tisements to a user based on user-specific targeting crite-
ria, such as the user’s interaction history or demographics.
See id. at 682 (construing “characterizations” as “targeting
criteria for users as defined by interaction history with the
service and/or such other information as user
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CHEWY , INC. v. IBM 12
demographics and locale”).2 The court found no genuine
dispute as to the fact that Chewy’s instrumentalities do not
perform this limitation because the record undisputedly
showed they deliver advertisements based on the page the
user is currently viewing, regardless of the individual
user’s interaction history or demographics. Id. at 682–83.
IBM argues there is a genuine dispute of material fact
as to whether Chewy “establish[es] characterizations for
respective users,” precluding summary judgment. We
agree.
IBM first points to Chewy’s privacy policy as creating
a genuine factual dispute. Chewy’s privacy policy informs
users that Chewy uses “what ads you see, what ads you in-
teract with, and other actions you take on our Services” to
“provide you” with “personalized or targeted ads . . . based
on information from activities such as browsing or purchas-
ing.” J.A. 14509 (emphases added); see J.A. 9267–69 ¶ 199
(Schmidt Decl.). The district court found this evidence does
not support a finding that Chewy uses the claimed charac-
terization-based targeting. Summary Judgment Decision,
597 F. Supp. 3d at 683. According to the district court, “the
information collection and use described in the privacy pol-
icy is wholly consistent with the . . . method of delivering
advertisement related to particular product pages.” Id.
This reasoning, however, fails to draw all reasonable infer-
ences in the nonmoving party’s (IBM’s) favor. See Kuebel,
643 F.3d at 358.
When viewed through the proper lens, the privacy pol-
icy supports a finding that Chewy delivers advertisements
based on the individual user’s interaction history. The pri-
vacy policy explains that Chewy collects information about
a specific user’s browsing and purchasing history and uses
that information to provide users with “personalized or tar-
geted ads.” J.A. 14509. Accordingly, we conclude the pri-
vacy policy creates a genuine issue of material fact
2 The parties do not challenge this construction on
appeal.
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CHEWY , INC. v. IBM 13
regarding whether Chewy “establish[es] characterizations
for respective users.”
While the privacy policy alone is sufficient to preclude
summary judgment, IBM also points to a Chewy internal
document describing Chewy’s “Currently Launched Strat-
egies” to show Chewy uses individualized targeting crite-
ria. This document explains one of Chewy’s strategies
“recommends products from a Pet Parent[’]s order history
based on the likelihood it is the right time to re-purchase,”
which “becomes more focused on the specific Pet Parent as
they repurchase at their own intervals.” J.A. 14204. In
other words, Chewy delivers an advertisement to repur-
chase an item based on the customer’s (i.e., Pet Parent’s)
previous order history.
Chewy raises three arguments in response to the “Cur-
rently Launched Strategies” document. First, Chewy ar-
gues IBM did not cite this document in its summary
judgment briefing below. We find the relevant documents
show otherwise. In its summary judgment opposition brief,
J.A. 8563, IBM cited paragraphs 78–84 of its Rule 56.1
Statement, J.A. 14831–32. These paragraphs in turn re-
peatedly cited to Exhibit 93, the same “Currently
Launched Strategies” document IBM cites on appeal. J.A.
14832 ¶¶ 81–84 (citing J.A. 14204 (Ex. 93)). This document
was thus before the district court as part of the summary
judgment record.
Second, Chewy argues this document does not describe
the use of targeting criteria specific and individualized to
the respective user because all users that previously
bought the item would receive the same advertisement to
repurchase that item. We are not persuaded. The fact that
all customers who previously bought an item would receive
the same advertisement does not mean the advertisement
was not based on the individual user’s interaction history.
Third, Chewy argues there is no evidence showing how
this feature works. Chewy criticizes IBM for not relying on
any portion of Chewy’s source code to show which
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CHEWY , INC. v. IBM 14
advertisements are displayed based on individualized tar-
geting criteria. According to Chewy, this shows no such
code exists. See J.A. 11455 ¶ 85 (Almeroth Decl.). We do
not agree. At summary judgment, IBM may establish a
genuine factual dispute “by relying upon its documentary
evidence, without necessarily identifying the precise loca-
tion of the allegedly infringing code.” Amdocs (Israel) Ltd.
v. Openet Telecom, Inc., 761 F.3d 1329, 1343 (Fed. Cir.
2014). Chewy’s “Currently Launched Strategies” docu-
ment sufficiently describes the accused functionality to cre-
ate a genuine dispute of fact. This document explains
Chewy delivers advertisements to specific customers to re-
purchase items based on their previous order history. J.A.
14204. This supports a finding that Chewy delivers adver-
tisements based on the individual user’s interaction his-
tory, as claimed.
In light of Chewy’s privacy policy and “Currently
Launched Strategies” document, there is a genuine dispute
of material fact regarding whether Chewy “establish[es]
characterizations for respective users.” We therefore re-
verse the district court’s grant of summary judgment of
noninfringement of claim 12 of the ’849 patent and remand
for further proceedings.
II. ELIGIBILITY OF THE ’443 P ATENT
IBM appeals the district court’s grant of summary
judgment that claims 13, 15, 16, and 17 of the ’443 patent
are ineligible under 35 U.S.C. § 101. Claim 13, which de-
pends from unasserted claims 1 and 5, recites:
1. A method of targeting at least one associated
advertisement from an Internet search having ac-
cess to an information repository by a user, com-
prising:
identifying at least one search result item
from a search result of said Internet search
by said user;
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CHEWY , INC. v. IBM 15
searching for said at least one associated
advertisement within said repository using
said at least one search result item;
identifying said at least one associated ad-
vertisement from said repository having at
least one word that matches said at least
one search result item; and
correlating said at least one associated ad-
vertisement with said at least one search
result item.
5. The method of claim 1 further comprising:
designating said at least one search result
item matched to said at least one associ-
ated advertisement for subsequent selec-
tion by a user.
13. The method of claim 5 further comprising per-
forming an off-line batch process for each of said at
least one search result item, wherein said batch pro-
cess identifies said at least one associated advertise-
ment for said at least one search result item.
’443 patent at 8:5–17, 27–30, 52–56 (emphases added).
Independent claim 15 and dependent claims 16 and 17
recite:
15. A method for providing related advertisements
for search result items from a search of an infor-
mation repository, comprising:
matching said search result items to said
related advertisements;
designating each of said search result
items that have said related advertise-
ments matched therewith;
providing a corresponding graphical user
interface for each of said search result
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CHEWY , INC. v. IBM 16
items so designated for subsequent user se-
lection;
searching and retrieving said related ad-
vertisements for one of said search result
items when said corresponding graphical
user interface is selected by a user; and,
formatting and displaying said related ad-
vertisements upon selection.
16. The method of claim 15 further comprising as-
signing an identifier for said user when said user
submits a query to said information repository.
17. The method of claim 15 wherein said related
advertisements comprise related product adver-
tisements.
Id. at 8:61–9:13 (emphases added).
Patent eligibility is ultimately a question of law we re-
view de novo. See Berkheimer v. HP Inc., 881 F.3d 1360,
1365 (Fed. Cir. 2018). Eligibility may depend on underly-
ing issues of fact. Id. To determine patent eligibility, we
apply the Supreme Court’s two-step Alice framework. See
Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217–18 (2014).
At step one, we determine whether the claims are “directed
to a patent-ineligible concept,” such as an abstract idea. Id.
If so, at step two we “examine the elements of the claim to
determine whether it contains an ‘inventive concept’ suffi-
cient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Id. at 221 (quoting Mayo Collabora-
tive Servs. v. Prometheus Lab’ys, Inc., 566 U.S. 66, 72, 79–
80 (2012)). Specifically, we determine whether the claim
elements, individually and as an ordered combination, con-
tain an inventive concept, which is more than merely im-
plementing an abstract idea using “well-understood,
routine, [and] conventional activities previously known to
the industry.” Content Extraction & Transmission LLC v.
Wells Fargo Bank, Nat’l Ass’n, 776 F.3d 1343, 1347–48
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CHEWY , INC. v. IBM 17
(Fed. Cir. 2014) (alteration in original) (quoting Alice, 573
U.S. at 225).
A
The district court held at Alice step one the asserted
claims are directed to the abstract idea of identifying ad-
vertisements based on search results. Summary Judgment
Decision, 597 F. Supp. 3d at 691–92. IBM argues the
claims are instead directed to a patent-eligible improve-
ment in online advertising: obtaining search results from a
user’s search query and using those search results to iden-
tify targeted advertisements. We agree with the district
court.
The claims broadly recite correlating advertisements
with search results using a generic process. For example,
claim 13 recites a method of associating advertisements
with search results by identifying at least one search result
item from a user’s Internet search; searching for and iden-
tifying an associated advertisement in an information re-
pository that matches the search result item; and
correlating the search result item and associated advertise-
ment using an off-line batch process. ’443 patent at 8:5–
17, 27–30, 52–56. Similarly, claim 15 recites a method for
providing related advertisements by matching the search
results to related advertisements; providing a graphical
user interface (GUI) for each search result; and searching,
retrieving, and displaying related advertisements for each
search result when selected by a user on the GUI. Id. at
8:61–9:8.
We have held claims to targeted advertising were di-
rected to an abstract idea at Alice step one. See Custome-
dia Techs., LLC v. Dish Network Corp., 951 F.3d 1359,
1362–65 (Fed. Cir. 2020) (holding claims “are directed to
the abstract idea of using a computer to deliver targeted
advertising to a user”); see also Intell. Ventures I LLC v.
Cap. One Bank (USA), 792 F.3d 1363, 1369–70 (Fed. Cir.
2015) (holding “tailoring information based on [provided]
data” is an abstract idea). Correlating advertisements with
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CHEWY , INC. v. IBM 18
search results is a type of targeted advertising and is thus
abstract.
IBM nevertheless argues these claims recite a specific
solution to unique technical problems arising from adver-
tising over a computer network, such as advertisements be-
ing limited to the user’s search query. According to IBM,
the claimed method of identifying advertisements based on
search results, rather than search queries, improves the
specificity and relevancy of online advertisements. See
’443 patent at 5:20–21 (“These search results provide a
more narrowly defined basis for selecting target advertise-
ments for each user.”). IBM argues this specific improve-
ment is analogous to the claimed improvement in Packet
Intelligence LLC v. NetScout Systems, Inc., 965 F.3d 1299
(Fed. Cir. 2020). There, we held eligible claims directed to
“a specific improvement in computer technology: a more
granular, nuanced, and useful classification of network
traffic.” Id. at 1309–10.
Unlike the claims in Packet Intelligence, the ’443 pa-
tent claims are not directed to any challenges unique to
computer networks, or specific improvements to the func-
tionality 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 accom-
plished. Even accepting that the claimed invention im-
proves the specificity and relevancy of online
advertisements, this “is at most an improvement to the ab-
stract concept of targeted advertising wherein a computer
is merely used as a tool.” Customedia, 951 F.3d at 1365.
We conclude claims 13, 15, 16, and 17 are directed to
the abstract idea of identifying advertisements based on
search results at Alice step one. We therefore proceed to
Alice step two.
B
The district court determined the claims fail to recite
an inventive concept at Alice step two. Summary Judg-
ment Decision, 597 F. Supp. 3d at 692–93. IBM argues the
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CHEWY , INC. v. IBM 19
asserted claims contain three distinct inventive concepts.
First, IBM argues claims 13 and 15 recite an inventive re-
pository configured to associate search results with adver-
tisements. Second, IBM argues claim 13 recites using off-
line batch processing in an unconventional way. Third,
IBM argues claim 16 recites refining the targeting criteria
by assigning session identifiers when the user enters a
search query. We conclude none of these claim elements,
individually or as an ordered combination, constitute an in-
ventive concept sufficient to transform the claimed ab-
stract idea of identifying advertisements based on search
results into patent-eligible subject matter.
i
IBM first argues claims 13 and 15 comprise an in-
ventive information repository specifically configured to
correlate advertisements with search results. Claim 13 re-
cites “searching for said at least one associated advertise-
ment within said repository using said at least one search
result item” and “identifying said at least one associated
advertisement from said repository having at least one
word that matches said at least one search result item.”
’443 patent at 8:10–15 (emphases added). Similarly, claim
15 recites “matching said search result items to said re-
lated advertisements,” id. at 8:64–65, which the district
court construed as “identifying said related advertisements
from said information repository having a word that
matches a keyword from said search result items.” Sum-
mary Judgment Decision, 597 F. Supp. 3d at 678 (emphasis
added). Simply put, the claims recite an information re-
pository (i.e., database) of search results and associated ad-
vertisements. See ’443 patent at 6:18–21 (“The primary
purpose of product database 110 is [to] provide a repository
for potentially matching product advertisements for the
search results.”).
Using a generic database to store the information used
in correlating advertisements with search results is not an
inventive concept. While IBM argues the claimed reposi-
tory is specialized, this is not supported by the ’443 patent.
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CHEWY , INC. v. IBM 20
Instead, the patent broadly refers to an “information repos-
itory” with no further details. See id. at 2:23–49; see also
id. at 5:24–26 (“The search is to an information repository
generally, and more specifically, to a server or wide area
network.”). “The concept of data collection, recognition,
and storage is undisputedly well-known. Indeed, humans
have always performed these functions.” Content Extrac-
tion, 776 F.3d at 1347. The claimed use of a conventional
repository for storing advertisements and associated
search results in a well-known way is insufficient to trans-
form the abstract idea into patent-eligible subject matter.
ii
IBM next argues claim 13 contains the inventive con-
cept of using off-line batch processing in an unconventional
way—with a repository that associates search results with
advertisements. Claim 13 recites “performing an off-line
batch process for each of said at least one search result
item, wherein said batch process identifies said at least one
associated advertisement for said at least one search result
item.” ’443 patent at 8:52–56 (emphases added). According
to IBM’s expert Dr. Schmidt, the prior art methods of iden-
tifying advertisements based on search queries or user pro-
files could not use off-line batch processing in an efficient
manner. J.A. 10472–74 ¶¶ 79–82. On the other hand, the
claimed method of identifying advertisements based on
search results allows for the use of off-line batch processing
to increase processing efficiency. Id.
Even accepting this as true, we conclude the use of off-
line batch processing in combination with a repository that
associates search results with advertisements is not an in-
ventive concept. It is undisputed off-line batch processing
was conventional at the time of invention. See J.A. 10472
¶ 79. The ’443 patent does not suggest the claimed inven-
tion uses off-line batch processing in an unconventional
manner. See ’443 patent at 6:66–7:5 (“[T]he product match-
ing manager 140 may be adapted to perform an off-line
batch process for each search result item in the search en-
gine repository.”). The claimed invention uses
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CHEWY , INC. v. IBM 21
conventional off-line batch processing to more efficiently
implement the abstract idea of identifying advertisements
based on search results. See Appellant’s Opening Br. at
52–53 (arguing the use of off-line batch processing “im-
prove[s] the speed of websites” and “increase[s] processing
efficiency”). This is insufficient to transform claim 13 into
patent-eligible subject matter. We have repeatedly held
“claiming the improved speed or efficiency inherent with
applying the abstract idea on a computer [does not] provide
a sufficient inventive concept.” Intell. Ventures, 792 F.3d
at 1367.
iii
IBM argues claim 16 recites the inventive concept of
assigning a session value in an unconventional way and at
an unconventional time. Claim 16 recites “assigning an
identifier for said user when said user submits a query to
said information repository.” ’443 patent at 9:9–11. The
district court construed “identifier for said user” as a “ses-
sion value that is used to associate user queries to search
result item selections.” Claim Construction Order, 571 F.
Supp. 3d at 153–54. According to Dr. Schmidt, assigning a
session value to associate user queries to search results is
a more precise method of identifying users as compared to
the prior art method of aggregating all user activity across
multiple sessions. J.A. 10476–78 ¶¶ 89–92. Dr. Schmidt
further opines that assigning a session value at the time a
user submits a search query, rather than attempting to rec-
reate a user’s session after it has ended, requires “less pro-
cessing . . . on the backend” because the association of
queries and search results has already been created. J.A.
10476 ¶ 91.
We conclude the claimed use of session values, individ-
ually or in combination with the remaining elements of
claim 16, is not a sufficient inventive concept. The ’443 pa-
tent generally discloses assigning a session value to associ-
ate search queries and search results but provides no
additional detail as to how this is done in an unconven-
tional way. ’443 patent at 6:24–27 (“Each user performing
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CHEWY , INC. v. IBM 22
a query is assigned a user session identifier. This session
identifier is used to associate user queries to search result
items selections, i.e., product selections.”). Claim 16 simply
recites using a user session identifier to implement the ab-
stract idea of correlating advertisements with search re-
sults, which is not an inventive concept. See Secured Mail
Sols. LLC v. Universal Wilde, Inc., 873 F.3d 905, 911–12
(Fed. Cir. 2017) (holding the use of a “unique, sender-gen-
erated identifier” is not a sufficient inventive concept at Al-
ice step two). While Dr. Schmidt testifies the claimed use
of session values is more precise and requires less pro-
cessing on the backend, this alone is insufficient to trans-
form the abstract idea into a patent-eligible concept. See
Intell. Ventures, 792 F.3d at 1367.
iv
IBM argues the claims recite an inventive concept as
an ordered combination because the claims describe a spe-
cific method of using search results in targeted advertising.
We do not agree. The claims recite the generic process of
obtaining search results from a search query and using the
search results to identify advertisements. See, e.g., ’443 pa-
tent at 8:5–17, 27–30, 52–56. The claims do not recite any
specific implementation of the abstract concept of using
search results to identify relevant advertisements and thus
do not contain an inventive concept. But see Weisner v.
Google, LLC, 51 F.4th 1073, 1086 (Fed Cir. 2022) (holding
claim “plausibly captures an inventive concept in the form
of a specific technique for using physical location history
data to improve computerized search results”).
We conclude claims 13, 15, 16, and 17 do not contain an
inventive concept sufficient to transform the claimed ab-
stract idea into patent-eligible subject matter. Accord-
ingly, we affirm the district court’s grant of summary
judgment that claims 13, 15, 16, and 17 of the ’443 patent
are ineligible under § 101.
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CHEWY , INC. v. IBM 23
CONCLUSION
We have considered the parties’ remaining arguments
and find them unpersuasive. We affirm the district court’s
grant of summary judgment of noninfringement of claims
1, 2, 14, and 18 of the ’849 patent. We reverse the district
court’s grant of summary judgment of noninfringement of
claim 12 of the ’849 patent and remand for further proceed-
ings. We affirm the district court’s grant of summary judg-
ment that claims 13, 15, 16, and 17 of the ’443 patent are
ineligible under § 101.
AFFIRMED IN PART, REVERSED IN PART, AND
REMANDED
COSTS
No costs.
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