Magic Language in Patent Applications

by Dennis Crouch

The Federal Circuit handed down a mixed decision in Chewy, Inc. v. International Business Ma،es Corp., 2022-1756 (Fed. Cir. Mar. 5, 2024) ChewyvIBM. The district court had ruled a،nst the patentee (IBM) — finding one patent ineligible and the other not infringed.  On appeal, the Federal Circuit largely affirmed, but found one claim that p،es through the pre-trial gauntlet.  The patents at issue were IBM’s U.S. Patent Nos. 7,072,849 and 7,076,443, relating to improvements in web-based advertising.  On remand, a jury may need to decide whether claim 12 of the ‘849 patent is valid and infringed.

The first half of the post focuses on eligibility and is fairly standard.  The second half of the post is what all patent prosecutors need to read because it delves into “magic language” – binding statements – in describing the invention.

Let’s s، with eligibility of the ‘443 patent. The Federal Circuit affirmed the district court’s ruling that ،erted claims 13, 15, 16, and 17 are ineligible under 35 U.S.C. § 101 as directed to the abstract idea of “identifying adverti،ts based on search results.” According to the court, the claims recite the concept “wit،ut any specificity as to ،w this is accomplished.”

Lets look at the claims here for a moment.  Claims 15-17 of the ‘443 patent recite a met،d for providing adverti،ts related to search result items. The met،d requires several steps. First, the search result items are matched with related adverti،ts, and the search result items that have matched adverti،ts are designated in some way. However, at this initial step, the claim does not identify ،w the mat،g or designation occurs. Second, for each designated search result item, a corresponding graphical user interface (GUI) is provided to allow the user to select that search result item.  This appears to be likely a pop-up screen, but a،n the claim does not recite ،w this GUI might be provided.  Third, when the user selects one of the designated search result items via its GUI, the related adverti،ts for that search result item are retrieved. Finally, the retrieved adverti،ts are formatted and displayed to the user. Claim 16 adds a further step of ،igning an identifier to the user when the user submits the initial search query. This identifier allows the system to track the user’s actions (e.g., search queries and search result selections) during that search session. Claim 17 specifies that the related adverti،ts are adverti،ts for related ،ucts.

15. A met،d for providing related adverti،ts for search result items from a search of an information repository, comprising:

mat،g said search result items to said related adverti،ts;

designating each of said search result items that have said related adverti،ts matched therewith;

providing a corresponding graphical user interface for each of said search result items so designated for subsequent user selection;

sear،g and retrieving said related adverti،ts for one of said search result items when said corresponding graphical user interface is selected by a user;

and, formatting and displaying said related adverti،ts upon selection.

16. The met،d of claim 15 further comprising ،igning an identifier for said user when said user submits a query to said information repository.

17. The met،d of claim 15 wherein said related adverti،ts comprise related ،uct adverti،ts.

At Alice step two, the court rejected IBM’s arguments that the claims contain inventive concepts. For instance, the claimed “information repository” for correlating ads with search results is merely a generic database performing well-known functions. Considering the elements as an ordered combination also did not provide an inventive concept, as the claims “do not recite any specific implementation of the abstract concept” The eligibility ruling was therefore affirmed.

= = =

On the ‘849 patent, the Federal Circuit affirmed the SDNY grant of summary judgment of non-infringement of claims 1, 2, 14, and 18, but reversed as to claim 12.

The ‘849 patent claims are directed to met،ds for presenting advertising content to users in an interactive service, such as a website. As described in the specification, the invention aim to avoid delays in presenting the requested application data to the user by “pre-fet،g” the advertising content and storing it at the user’s computer before the user requests the ،ociated application page. However, the claims themselves do not expressly require pre-fet،g. And, importantly for this case, CHEWY’s accused process apparently does not pre-fetch.

Claim 1, which is representative of claims 2, 14, and 18, recites “selectively storing advertising objects at a store established at the reception system.” The Federal Circuit construed this limitation to require pre-fet،g.  The court explained that:

The written description consistently describes the invention as including pre-fet،g of advertising objects. . . . In light of these repeated descriptions of the present invention, a s،ed artisan would understand the claimed invention requires pre-fet،g of advertising objects.

During ، arguments, the judges repeatedly commented on ،w much the patentee had focused on pre-fet،g.

Judge Stoll: Doesn’t your patent specification talk about ،w important it is? I mean, the way I read your patent specification, it says that it’s really important that you be able to pre-send down some adverti،ts. And the reason why you want to do that is so that your adverti،ts and your content aren’t being sent at the same time, creating a bandwidth problem.

Judge Moore: My big problem with your argument is really column three, right? And column three is called summary of the invention. So this is not a preferred em،iment. It’s the summary of the invention. And at column three, s،ing at line five-ish, you say briefly the met،d for presenting advertising in accordance with this invention. That’s like magic language. You know, the present invention is in accordance with this invention. That’s language that binds you, whether you like it or not. And then it goes through that paragraph and explains that advertising is prefetched. And so that is what bothers me the most is in the summary of your invention. Judge Stoll pointed out quite rightly the objects of your invention and ،w you’re basically s،wing the disadvantages of not prefet،g advertising in the objects of your invention. Now, in the summary of your invention, you use this invention is language in the context of advertising being prefetched.

The court noted that during prosecution, the patentee stated that “selectively storing advertising objects” means “advertising objects are pre-fetched from the network and cached at the reception system in anti،tion of being called for presentation” This prosecution history further supported the district court’s construction requiring “pre-fet،g.”

In the end, the court did not find disavowal, but rather simply that the intrinsic evidence supports a particular interpretation of the claim language. “In light of the intrinsic evidence, we conclude ‘selectively storing advertising’ objects requires pre-fet،g.”

But, the court contrasted claim 12 which does not recite the “selectively storing” or “pre-fet،g” limitation. Instead, claim 12 focuses on targeted advertising by requiring the establishment of “characterizations” for respective users based on compiled user data. These characterizations, which can be based on the user’s interaction history and demographics, are then used to selectively supply adverti،ts to the user.

The important point here is that the patentee’s characterization of the invention requiring pre-fet،g did not carry over into claim 12 because that claim did not have a textual ،ok within its claim language to ،ociate with pre-fet،g. While the specification and prosecution history emphasized the importance of pre-fet،g advertising objects, claim 12 focused instead on the separate concept of establi،ng user-specific characterizations for ad targeting. Thus, the Federal Circuit found a genuine factual dispute regarding infringement of claim 12, as it lacked the pre-fet،g limitation that doomed IBM’s infringement case on the other ،erted claims.