Case 1:21-cv-01319 Document 1 Filed 02/15/21 Page 1 of 10
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE SOUTHERN DISTRICT OF NEW YORK
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`Civil Action No.: ______________
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`COMPLAINT
`FOR DECLARATORY JUDGMENT
`OF NON-INFRINGEMENT
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`JURY TRIAL DEMANDED
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`CHEWY, INC.,
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` v.
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`INTERNATIONAL BUSINESS
`MACHINES CORPORATION,
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`
`
`Plaintiff,
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`
`
`
`Defendant.
`
`
`Plaintiff Chewy, Inc. (“Chewy”), for its Complaint against Defendant International
`Business Machines Corporation (“IBM” or “Defendant”) seeking declaratory judgment of non-
`infringement as to the following patents: U.S. Patent Nos. 7,072,849 (the “’849 patent”), 9,569,414
`(the “’414 patent”), 7,076,443 (the “’443 patent”), and 6,704,034 (the “’034 patent”) (collectively,
`the “Asserted Patents”), alleges as follows:
`
`NATURE OF THE ACTION
`1.
`This is an action arising under the patent laws of the United States, 35. U.S.C. § 1
`et seq., and the Declaratory Judgment Act, 28 U.S.C. §§ 2201 and 2202, seeking a declaratory
`judgment of non-infringement of the Asserted Patents and for such other relief as the Court deems
`just and proper.
`2.
`True and correct copies of the Asserted Patents are attached as Exhibits 1–4.
`
`THE PARTIES
`3.
`Plaintiff Chewy, Inc. is a corporation organized under the laws of Delaware, with
`its principal place of business at 1855 Griffin Road, Dania Beach, Florida 33004.
`4.
`On information and belief, Defendant International Business Machines Corporation
`is a New York corporation having its principal place of business at 1 New Orchard Road, Armonk,
`New York 10504.
`5.
`On information and belief, Defendant is the assignee of the ’849 patent, the ’414
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`Case 1:21-cv-01319 Document 1 Filed 02/15/21 Page 2 of 10
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`patent, the ’443 patent, and the ’034 patent.
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`JURISDICTION AND VENUE
`6.
`This action arises under the Patent Laws of the United States, 35 U.S.C. §§ 1 et
`seq., and the Declaratory Judgment Act, 28 U.S.C. §§ 2201–2202. This Court has subject matter
`jurisdiction over this matter pursuant to 28 U.S.C. 1331, and 1338(a). As discussed further below
`in paragraphs 13–24, an actual and justiciable controversy exists between Chewy and Defendant
`as to non-infringement of the Asserted Patents.
`7.
`This Court has personal jurisdiction over Defendant because, on information and
`belief, Defendant is organized under the laws of New York and maintains its principal place of
`business in this jurisdiction.
`8.
`Venue is proper in this judicial district pursuant to 28 U.S.C. §§ 1391(b) and
`1391(c).
`
`THE ASSERTED PATENTS
`9.
`The ’849 patent is titled “Method for Presenting Advertising in an Interactive
`Service.” The ’849 patent issued on July 4, 2006 to named inventors Robert Filepp, Alexander W.
`Bidwell, Francis C. Young, Allan M. Wolf, Duane Tiemann, Mel Bellar, Robert D. Cohen, James
`A. Galambos, Kenneth H. Appleman, and Sam Meo. The face of the ’849 patent states that the
`patent was initially assigned to IBM.
`10.
`The ’414 patent is titled “Method, Framework, And Program Product For
`Formatting And Serving Web Content.” The ’414 patent issued on February 14, 2017 to named
`inventors Jennifer Lai, Zhiqiang Liu, Brian J. McDonald, Laurie Miller, Yael Ravin, and Karen A.
`Ughetta. The face of the ’414 patent states that the patent was initially assigned to IBM.
`11.
`The ’443 patent is titled “System And Technique For Automatically Associating
`Related Advertisements To Individual Search Results Items Of A Search Result Set.” The ’443
`patent issued on July 11, 2006 to named inventors Michael L. Emens and Reiner Kraft. The face
`of the ’443 patent states that the patent was initially assigned to IBM.
`12.
`The ’034 patent is titled “Method And Apparatus For Providing Accessibility
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`Through A Context Sensitive Magnifying Glass.” The ’034 patent issued on March 9, 2004 to
`named inventors Herman Rodriguez, Newton James Smith, Jr., and Clifford Jay Spinac. The face
`of the ’034 patent states that the patent was initially assigned to IBM.
`
`THE PARTIES’ DISPUTE CONCERNING THE ASSERTED PATENTS
`13. While IBM has obtained thousands of patents over the past 20 years, it is widely
`accepted that IBM does not itself make or sell any products or services covered by the vast majority
`of those patents. Instead, IBM has an army of lawyers who try to patent just about anything (see
`“IBM Shamed Into Giving Away Awful Patent On Email Out-Of-Office Messages,”
`https://www.techdirt.com/articles/20170301/16185236820/ibm-shamed-into-giving-away-awful-
`patent-email-out-of-office-messages.shtml), and then aggressively seeks to license those patents.
`(See “Today’s IBM is Acting Like a Patent Troll and Arming Active Patent Trolls, Just Like
`Microsoft Does,” http://techrights.org/2018/10/03/ibm-suing-the-whole-industry/.)
`14.
`As part of its licensing campaign, IBM has accused numerous well-known web-
`based companies of infringing very early Internet patents and demanded large sums in royalty
`payments to avoid costly litigation. (See “Today’s IBM is Acting Like a Patent Troll and Arming
`Active Patent Trolls, Just Like Microsoft Does,” http://techrights.org/2018/10/03/ibm-suing-the-
`whole-industry/) (“IBM uses old software patents for blackmail.”). Many of those companies
`accused of infringement refused to take licenses and were ultimately sued by IBM. For example,
`since 2013, IBM has sued Twitter (2013), Priceline (2015), Groupon (2016), Expedia (2017),
`Zillow (2019) and Airbnb (2020). And, in the end, almost all them “basically surrendered and
`agreed to pay IBM loads of money without an actual trial that tests the patents at hand” (Id.). Only
`the litigation against Zillow is outstanding.
`15.
`In furtherance of this campaign of seeking exorbitant licensing fees for early
`Internet patents having no value, on July 6, 2020, Ms. Leann M. Pinto of IBM sent a letter to Mr.
`Sumit Singh, CEO of Chewy, with the subject line “Notice of Infringement for IBM US Patent
`Nos.: 7,072,849; 9,569,414; 7,076,443; and 6,704,034.” The letter states that Chewy “is infringing
`at least [the four Asserted Patents] by operation of its website Chewy.com.” The letter also states
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`that “IBM views your continued use of all of these inventions as a serious matter” and that, while
`IBM “prefer[s] a negotiated business resolution,” it “has been forced to resolve infringement of its
`patents through judicial proceedings at times.” The letter further states that IBM has “initiated
`patent litigations against Amazon, Priceline, Expedia, Zillow, Airbnb, and Groupon, among others,
`to redress the unauthorized use of IBM’s patented inventions.”
`16.
`On July 31, 2020, Mr. Tom McBride of IBM sent four claim charts to Chewy
`allegedly showing how the operation of Chewy.com infringes claim 1 of the ’849 patent, claim 1
`of the ’414 patent, claims 1 and 5 of the ’443 patent, and claim 1 of the ’034 patent.
`17.
`On October 6, 2020, Mr. Joshua L. Raskin of Greenberg Traurig sent a response to
`IBM on behalf of Chewy. The letter states, among other things, that “Chewy does not infringe any
`of the asserted claims of [the Asserted Patents] and, therefore, Chewy declines IBM’s invitation
`to meet or otherwise discuss a ‘business resolution.’” The letter further states that:
`
`Chewy’s website cannot infringe claim 1 of the ’849 patent for at least the reason
`that the website does not pre-fetch advertising objects for future use, while the
`claim recites the step of “selectively storing advertising objects at a store
`established at the reception system,” which has been construed to require “pre-
`fetching advertising objects and storing at a store established at the reception
`system in anticipation of display concurrently with the applications”;
`Chewy’s website cannot infringe claim 1 of the ’414 patent for at least the reason
`that the website utilizes JavaScript objects and JavaScript functions that are fetched
`via separate requests, while the claim recites the step of requesting a set of
`JavaScript objects and a set of JavaScript functions in a single HTTP request;
`Chewy’s website cannot infringe claim 1 or claim 5 of the ’443 patent for at least
`the reasons that the website does not associate any advertisements based on the
`words in the selected search result item, while claims 1 and 5 each requires the step
`of “identifying said at least one associated advertisement from said repository
`having at least one word that matches said at least one search result item”; and
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`
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`Chewy’s website cannot infringe claim 1 of the ’034 patent for at least the reason
`that the claim requires the step of “magnifying presentation of the object based on
`the object type of the object,” and the images on Chewy’s website are magnified
`based on a data-zoom-id=“Zoomer” attribute and not because they are images.
`Accordingly, the October 6, 2020 letter states that “Chewy does not infringe . . . and declines
`IBM’s invitation to discuss any ‘business resolution.’” The letter concludes by stating that,
`“[s]hould IBM continue to assert its baseless claims, you are hereby on notice that Chewy reserves
`all rights, including to seek its fees and costs.”
`18.
`In response to the October 6, 2020 letter, on October 16, 2020, Ms. Pinto, on behalf
`of IBM, sent a letter purporting to rebut Chewy’s non-infringement positions as to the four
`Asserted Patents. The letter states that “IBM respectfully reiterates its request for a meeting with
`Chewy so that you may have a better understanding of IBM’s position with respect to the four
`IBM patents that Chewy continues to infringe.” In addition, in a cover email, Mr. Tom McBride,
`also on behalf of IBM, stated that, “[b]ased on the IBM patents being practiced by Chewy, we
`estimated the damages and future royalties. For Chewy, it exceeds $83 M. Not counting
`willfulness, this is the amount we would be seeking if this matter goes to trial.” IBM then offered
`to settle the dispute based on a payment by Chewy of $36 million in exchange for a cross-license,
`pointing out that others have paid IBM for cross-licenses ranging from $20 million to $57.5
`million. IBM also stated that “[t]his offer expires December 31, 2020.”
`19.
`On December 9, 2020, Mr. Raskin sent another letter to IBM, addressed to Ms.
`Pinto. Among other things, the letter reiterates that “Chewy does not infringe any valid claim of
`the four asserted IBM patents” and thus “declines to attend a meeting to discuss [IBM’s meritless
`infringement allegations].”
`20.
`On December 17, 2020, Ms. Pinto replied to the December 9, 2020 letter, stating
`that “Chewy’s continued and unfounded assertions that IBM’s infringement proofs are ‘meritless’
`and patterns of behavior in its dealings with IBM would support enhanced damages under 35
`U.S.C. § 284.” In addition, the letter stated that, “[b]y refusing to engage in business discussions,
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`Chewy risks litigation and a finding of enhanced damages for willful infringement.” Ms. Pinto
`further demanded “options for a meeting between the parties to occur before December 31, 2020.”
`21.
`On January 4, 2021, Mr. Raskin sent Ms. Pinto another letter on behalf of Chewy
`reaffirming Chewy’s position that it does not infringe any valid claim of the Asserted Patents.
`Specifically, the letters states that “[y]our threats of ‘willful infringement’ and ‘enhanced damages’
`have no merit, as Chewy has repeatedly explained that it does not infringe any asserted claim of
`any IBM patent. Moreover, in addition to not being infringed, none of those claims are valid.” The
`letter also states that “Chewy takes allegations of patent infringement seriously, including those
`being made by IBM. Chewy would therefore welcome the opportunity to discuss your licensing
`offer, but only after IBM has adequately responded to Chewy’s non-infringement and invalidity
`positions. Until that time, Chewy does not see how such a discussion will be productive.”
`22.
`On January 12, 2021, Ms. Pinto of IBM wrote yet another letter to Mr. Raskin,
`stating that “IBM maintains that Chewy infringes each of the IBM patents identified above as
`asserted in the claim charts already provided to Chewy and as further explained in IBM’s
`correspondence addressed to Chewy to date.” The letter further states that, “[i]f Chewy persists in
`maintaining its conclusory denials of infringement, it will become even more apparent that a
`meeting to aid Chewy’s understanding of IBM’s position on each patent is imperative. For Chewy
`to continue to resist such a meeting to address its (mis)understandings and ill-placed positions only
`further supports acts arising to willful infringement. That said, we direct your attention to the
`public pleadings in the recently-settled IBM litigation with Airbnb. Triggered by Chewy’s refusal
`to engage in meaningful discussions to clarify points of contention, IBM will be forced to take
`more aggressive measures.”
`23.
`IBM has previously asserted at least the ’849 patent, the ’414 patent, and the ’443
`patent against various companies including Amazon, Priceline, Expedia, Zillow, Airbnb, and
`Groupon.
`24.
`Based on the above-described actions, Chewy is under a reasonable apprehension
`that it will be sued by IBM for the alleged infringement of the Asserted Patents. Accordingly, as
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`further described herein, an actual and justiciable controversy exists between Chewy and IBM as
`to the non-infringement of the Asserted Patents.
`
`FIRST CLAIM FOR RELIEF
`
`(Declaratory Judgment of Non-Infringement of the ’849 Patent)
`Chewy restates and realleges each of the assertions set forth in the paragraphs
`
`25.
`
`above.
`
`26.
`Chewy has not infringed and does not infringe any claim of the ’849 patent directly
`or indirectly, either literally or under the doctrine of equivalents.
`27.
`For example, and without limitation, as discussed in Chewy’s various letters to IBM
`discussed above, the accused Chewy website does not practice the “selectively storing advertising
`objects at a store established at the reception system” limitation.
`28.
`There is an actual controversy, within the meaning of 28 U.S.C. §§ 2201 and 2202,
`between Chewy and Defendant concerning the non-infringement of the ’849 patent.
`29.
`Chewy is therefore entitled to a declaratory judgment that it has not infringed the
`’849 patent, directly or indirectly, either literally or under the doctrine of equivalents.
`
`SECOND CLAIM FOR RELIEF
`
`(Declaratory Judgment of Non-Infringement of the ’414 Patent)
`Chewy restates and realleges each of the assertions set forth in the paragraphs
`
`30.
`
`above.
`
`31.
`Chewy has not infringed and does not infringe any claim of the ’414 patent directly
`or indirectly, either literally or under the doctrine of equivalents.
`32.
`For example, and without limitation, as discussed in Chewy’s various letters to IBM
`discussed above, the accused Chewy website does not practice the “requesting a set of JavaScript
`objects and a set of JavaScript functions in a single Hypertext Transfer Protocol (HTTP) request”
`limitation.
`33.
`There is an actual controversy, within the meaning of 28 U.S.C. §§ 2201 and 2202,
`between Chewy and Defendant concerning the non-infringement of the ’414 patent.
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`34.
`Chewy is therefore entitled to a declaratory judgment that it has not infringed the
`’414 patent, directly or indirectly, either literally or under the doctrine of equivalents.
`
`THIRD CLAIM FOR RELIEF
`
`(Declaratory Judgment of Non-Infringement of the ’443 Patent)
`Chewy restates and realleges each of the assertions set forth in the paragraphs
`
`35.
`
`above.
`
`36.
`Chewy has not infringed and does not infringe any claim of the ’443 patent directly
`or indirectly, either literally or under the doctrine of equivalents.
`37.
`For example, and without limitation, as discussed in Chewy’s various letters to IBM
`discussed above, the accused Chewy website does not practice the “identifying said at least one
`associated advertisement from said repository having at least one word that matches said at least
`one search result item” limitation.
`38.
`There is an actual controversy, within the meaning of 28 U.S.C. §§ 2201 and 2202,
`between Chewy and Defendant concerning the non-infringement of the ’443 patent.
`39.
`Chewy is therefore entitled to a declaratory judgment that it has not infringed the
`’443 patent, directly or indirectly, either literally or under the doctrine of equivalents.
`
`FOURTH CLAIM FOR RELIEF
`
`(Declaratory Judgment of Non-Infringement of the ’034 Patent)
`Chewy restates and realleges each of the assertions set forth in the paragraphs
`
`40.
`
`above.
`
`41.
`Chewy has not infringed and does not infringe any claim of the ’034 patent directly
`or indirectly, either literally or under the doctrine of equivalents.
`42.
`For example, and without limitation, as discussed in Chewy’s various letters to IBM
`discussed above, the accused Chewy website does not practice the “magnifying presentation of the
`object based on the object type of the object” limitation.
`43.
`There is an actual controversy, within the meaning of 28 U.S.C. §§ 2201 and 2202,
`between Chewy and Defendant concerning the non-infringement of the ’034 patent.
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`44.
`Chewy is therefore entitled to a declaratory judgment that it has not infringed the
`’034 patent, directly or indirectly, either literally or under the doctrine of equivalents.
`
`PRAYER FOR RELIEF
`WHEREFORE, Chewy respectfully requests the following relief:
`A.
`A judgment declaring that Chewy has not infringed and does not infringe any claim
`of the ’849 patent, directly or indirectly, either literally or under the doctrine of equivalents;
`B.
`A judgment declaring that Chewy has not infringed and does not infringe any claim
`of the ’414 patent, directly or indirectly, either literally or under the doctrine of equivalents;
`C.
`A judgment declaring that Chewy has not infringed and does not infringe any claim
`of the ’443 patent, directly or indirectly, either literally or under the doctrine of equivalents;
`D.
`A judgment declaring that Chewy has not infringed and does not infringe any claim
`of the ’034 patent, directly or indirectly, either literally or under the doctrine of equivalents;
`E.
`A judgment that this is an exceptional case under 35 U.S.C. § 285 and an award to
`Chewy of its costs, expenses, and reasonable attorneys’ fees incurred in this action;
`F.
`An award to Chewy of any and all other relief to which Chewy may show itself to
`be entitled; and
`G.
`An award to Chewy of any other relief that the Court may deem just and proper
`under the circumstances.
`
`DEMAND FOR JURY TRIAL
`Pursuant to Fed. R. Civ. P. 38(b), Chewy demands a trial by jury as to all issues and claims
`so triable.
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`DATED: February 15, 2021
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`GREENBERG TRAURIG, LLP
`
`By: /s/ Joshua L. Raskin
`
`
`Joshua L. Raskin
`RaskinJ@gtlaw.com
`Allan A. Kassenoff
`KassenoffA@gtlaw.com
`GREENBERG TRAURIG, LLP
`MetLife Building
`200 Park Avenue
`New York, NY 10166
`Telephone: 212.801.9200
`Facsimile: 212.801.6400
`
`Counsel for Plaintiff Chewy, Inc.
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