A Cautionary Tale Of Language Used In Prosecution History

Osha Bergman Watanabe & Burton LLP


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The recent Federal Circuit decision regarding U.S. Patent No. 7,072,849 in Chewy, Inc. v. International Business Machines Corp. illustrates the importance of carefully...
United States Media, Telecoms, IT, Entertainment
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The recent Federal Circuit decision1 regarding U.S. Patent No. 7,072,849 in Chewy, Inc. v. International Business Machines Corp. illustrates the importance of carefully selecting both claim language and the words used throughout prosecution of the patent application.

The 849 Patent generally relates to improved methods for presenting advertisements to a user of an interactive service. Specifically, the claimed methods minimize advertising traffic's interference with the retrieval and presentation of application data by "storing and managing" advertising at the user reception system before it is requested by the user.

Chewy, Inc. sued International Business Machines Corp. (IBM) seeking a declaratory judgment of noninfringement of several IBM patents, including US 7,072,849. 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 most asserted claims because no reasonable factfinder could find Chewy's website or mobile applications perform the selective storing limitation recited in the claims. IBM appealed the summary judgment ruling.

Claim 1 recites:

1. A method for presenting advertising obtained from a computer network, the network including a multiplicity of user reception systems at which respective users can request applications, from the network, that include interactive services, the respective 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 display; and

b. structuring advertising in a manner compatible to that of the applications so that it may be presented, through the network, at a second portion of one or more screens of display concurrently with applications, wherein structuring the advertising includes configuring the advertising as objects that include advertising data and;

c. selectively storing advertising objects at a store established at the reception system.

IBM disputed the district court's interpretation of "selectively storing advertising objects at a store established at the reception system" as "retrieving advertising objects and storing at a store established at the reception system in anticipation of display concurrently with the applications." The district court referred to this as "pre-fetching." IBM argued that pre-fetching is not required by claim 1 or other similar independent claims.

IBM argued that, while the written description consistently describes the invention as including pre-fetching, the terms "this invention," "the method," and "the present invention" do not limit the scope of the entire invention. In another case, the CAFC had previously explained that "use of the phrase 'present invention' or 'this invention' is not always so limiting, such as where the references to a certain limitation as being the 'invention' are not uniform, or where other portions of the intrinsic evidence do not support applying the limitation to the entire patent."2 Specifically, IBM argued that 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 their local storage location."

However, the CAFC did not agree, stating that the narrow exceptions referenced in Absolute Software are not applicable, as the 849 Patent uniformly refers to the pre-fetching of advertising objects. Every time the patent discussed advertising objects specifically, as opposed to general objects, pre-fetching was said to be required. The CAFC further cited an appeal brief filed to the Board of Patent Appeals and Interferences (the predecessor to the Patent Trial and Appeal Board) during prosecution wherein IBM stated the following:

"To further reduce the likelihood of application presentation delay, the specification describes selectively 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 prefetched from the network and cached at the reception system in anticipation of being called for presentation."

The decision concluded that, while the 849 Patent may not require the general class of objects to be pre-fetched, it does require the specific subclass of advertising objects to be pre-fetched. Indeed, by IBM's own admissions in the appeal brief, pre-fetching is a key feature of the claimed invention. Therefore, the CAFC affirmed the district court's grant of summary judgment of noninfringement of claim 1 and similar claims.

In conclusion, this decision highlights the dangers of relying on broad terms (objects) that can be undercut by specific examples (advertising objects). The decision also underscores the importance of specifications that support the broadest inventions claimed while avoiding embodiments that can be found limiting during prosecution due to claim construction, even if they do not appear explicitly in the claim language.


1. Chewy, Inc. v. Int'l Bus. Mach. Corp., -- F.4th --, 2024 WL 925884 (Fed. Cir. Mar. 5, 2024).

2. Absolute Software, Inc. v. Stealth Signal, Inc., 659 F.3d 1121, 1136–37 (Fed. Cir. 2011).

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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