Case: 22-1756 Document: 60 Page: 1 Filed: 03/05/2024
`
`
`
`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
`______________________
`
`JOSHUA LEE RASKIN, Greenberg Traurig LLP, New
`York, NY, argued for plaintiff-appellee. Also represented
`by JULIE PAMELA BOOKBINDER, VIMAL KAPADIA.
`
` KARIM ZEDDAM OUSSAYEF, Desmarais LLP, New York,
`NY, argued for defendant-appellant. Also represented by
`JOHN M. DESMARAIS, TAMIR PACKIN.
` ______________________
`
`Before MOORE, Chief Judge, STOLL and CUNNINGHAM,
`Circuit Judges.
`
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`CHEWY, INC. v. IBM
`
`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
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`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).
`
`DISCUSSION
`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
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`I.
`
`INFRINGEMENT OF THE ’849 PATENT
`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
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`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
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`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
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`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
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`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
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`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
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`‘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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`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
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`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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`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
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`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.
`ELIGIBILITY OF THE ’443 PATENT
`II.
`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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`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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`Case: 22-1756 Document: 60 Page: 16 Filed: 03/05/2024
`
`16
`
`CHEWY, INC. v. IBM
`
`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
`
`

`

`Case: 22-1756 Document: 60 Page: 17 Filed: 03/05/2024
`
`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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`C