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.

Case: 22-1756 Document: 60 Page: 1 Filed: 03/05/2024
2 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 noninfringement 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 advertisements to a user of an interactive service. ’849 patent at 

2:48–49. In the prior art, advertisements would be downloaded 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 advertising 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” advertising 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 characterizations of the respective users as defined by the interaction 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 methods 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” machine. 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 counterclaims 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 rulings 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 reviews 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 inferences 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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4 CHEWY, INC. v. IBM

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 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. 

’849 patent at 39:43–61 (emphasis added).

The district court granted summary judgment of noninfringement of claims 1, 2, 14, and 18 because no reasonable factfinder could find Chewy’s website or mobile 

applications perform the selectively storing limitation recited 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 district court’s grant of summary judgment. First, IBM argues 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 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.” 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 prefetching. 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 extrinsic 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 consistently describes the invention as including pre-fetching 

of advertising objects. In the “Summary of Invention” section, the ’849 patent provides: 

[T]he method for presenting advertising in accordance 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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6 CHEWY, INC. v. IBM

accordance with the method, the user reception system at which the advertising is presented includes 

[a] facility for storing and managing the advertising 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 interference 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 service applications.” Id. at 3:21–24. 

The written description also provides: 

In accordance with the method of the present invention, Ad manager 442 is invoked by object interpreter 435 to return the object id of the next 

available advertisement to be displayed. Ad manager 442 maintains a queue of advertising object 

id’s targeted to the specific user currently accessing 

interactive network 10. Advertising objects are prefetched from interactive system 10 from a personalized queue of advertising ids . . . . 

Id. at 33:16–27; see also id. at 34:38–44 (“[T]wo very important response time problems have been solved by ad 

manager 442 of the present invention. The first is to eliminate 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 objects. 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 dependent claims 9, 10, 22, and 23, which explicitly recite “prefetching.”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 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.” 659 F.3d 1121, 

1136–37 (Fed. Cir. 2011) (collecting cases). These narrow

exceptions referenced in Absolute Software are not applicable here. The ’849 patent uniformly refers to the pre-fetching 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 “prefetching” 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 advertising 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 independent claim 8, and claims 22 and 23 depend from unasserted 

independent claim 21.

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8 CHEWY, INC. v. IBM

their local storage location.” ’849 patent at 6:57–61 (emphasis 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 objects specifically, it requires pre-fetching. See, e.g., id. at 

33:21–27 (“Advertising objects are pre-fetched from interactive 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 objects 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 prosecution 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 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. 

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 selectively storing advertising objects requires pre-fetching. We 

therefore affirm the district court’s construction of the selectively 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 construction, 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 confirms that Chewy prefetches advertising images”). According to IBM, this reference to pre-fetching meets the court’s 

construction.

The district court, however, determined these references 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 advertising objects be ‘pre-fetched’ in the sense that they are retrieved 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 instrumentalities retrieve advertising objects in response to a

user requesting the relevant page, the district court determined no reasonable factfinder could find Chewy selectively 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 functionality. 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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10 CHEWY, INC. v. IBM

‘pre-fetched’ if it is retrieved and stored at the user’s terminal ‘before being requested by the user.’” (quoting Claim 

Construction Order, 571 F. Supp. 3d at 138, 143)). 

This clarification is consistent with the written description 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 response to a user requesting a page. Because the claimed 

selectively storing limitation requires retrieving advertisements 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 computer network, the network including a multiplicity of user reception systems at which respective 

users can request applications that include interactive 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 respective 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 respective 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 requesting advertising data from the network when 

advertising data sought to be presented is unavailable at the reception system.

Id. at 40:24–40, 51–56 (emphasis added).

The district court granted summary judgment of noninfringement of claim 12 because it determined no reasonable 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 advertisements to a user based on user-specific targeting criteria, 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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12 CHEWY, INC. v. IBM

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 interact 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 purchasing.” 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 characterization-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 policy is wholly consistent with the . . . method of delivering 

advertisement related to particular product pages.” Id. 

This reasoning, however, fails to draw all reasonable inferences in the nonmoving party’s (IBM’s) favor. See Kuebel, 

643 F.3d at 358. 

When viewed through the proper lens, the privacy policy supports a finding that Chewy delivers advertisements 

based on the individual user’s interaction history. The privacy 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 targeted ads.” J.A. 14509. Accordingly, we conclude the privacy 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 Strategies” to show Chewy uses individualized targeting criteria. 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 repurchase an item based on the customer’s (i.e., Pet Parent’s) 

previous order history.

Chewy raises three arguments in response to the “Currently Launched Strategies” document. First, Chewy argues 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 repeatedly 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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14 CHEWY, INC. v. IBM

advertisements are displayed based on individualized targeting 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 location 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” document sufficiently describes the accused functionality to create a genuine dispute of fact. This document explains 

Chewy delivers advertisements to specific customers to repurchase items based on their previous order history. J.A. 

14204. This supports a finding that Chewy delivers advertisements based on the individual user’s interaction history, 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 reverse 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 PATENT

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 depends from unasserted claims 1 and 5, recites:

1. A method of targeting at least one associated 

advertisement from an Internet search having access to an information repository by a user, comprising:

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 advertisement from said repository having at 

least one word that matches said at least 

one search result item; and

correlating said at least one associated advertisement 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 associated advertisement for subsequent selection by a user.

13. The method of claim 5 further comprising 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 8:5–17, 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 information repository, comprising:

matching said search result items to said 

related advertisements;

designating each of said search result 

items that have said related advertisements matched therewith;

providing a corresponding graphical user 

interface for each of said search result 

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16 CHEWY, INC. v. IBM

items so designated for subsequent user selection; 

searching and retrieving said related advertisements for one of said search result 

items when said corresponding graphical 

user interface is selected by a user; and,

formatting and displaying said related advertisements upon selection.

16. The method of claim 15 further comprising assigning 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 advertisements.

Id. at 8:61–9:13 (emphases added).

Patent eligibility is ultimately a question of law we review de novo. See Berkheimer v. HP Inc., 881 F.3d 1360, 

1365 (Fed. Cir. 2018). Eligibility may depend on underlying 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’ sufficient to ‘transform’ the claimed abstract idea into a patenteligible application.” Id. at 221 (quoting Mayo Collaborative 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, contain an inventive concept, which is more than merely implementing 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 advertisements 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 improvement in online advertising: obtaining search results from a 

user’s search query and using those search results to identify 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 identifying an associated advertisement in an information repository that matches the search result item; and 

correlating the search result item and associated advertisement 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 directed to an abstract idea at Alice step one. See Customedia 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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18 CHEWY, INC. v. IBM

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 advertising over a computer network, such as advertisements being 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 advertisements for each user.”). IBM argues this specific improvement 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 patent claims are not directed to any challenges unique to 

computer networks, or specific improvements to the functionality 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 accomplished. Even accepting that the claimed invention improves the specificity and relevancy of online 

advertisements, this “is at most an improvement to the abstract 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 Judgment 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 repository configured to associate search results with advertisements. Second, IBM argues claim 13 recites using offline 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 inventive concept sufficient to transform the claimed abstract idea of identifying advertisements based on search 

results into patent-eligible subject matter.

i 

IBM first argues claims 13 and 15 comprise an inventive information repository specifically configured to

correlate advertisements with search results. Claim 13 recites “searching for said at least one associated advertisement 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 related 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.” Summary Judgment Decision, 597 F. Supp. 3d at 678 (emphasis 

added). Simply put, the claims recite an information repository (i.e., database) of search results and associated advertisements. 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 repository is specialized, this is not supported by the ’443 patent. 

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20 CHEWY, INC. v. IBM

Instead, the patent broadly refers to an “information repository” 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 Extraction, 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 transform the abstract idea into patent-eligible subject matter.

ii

IBM next argues claim 13 contains the inventive concept 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 identifying advertisements based on search queries or user profiles 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 offline batch processing in combination with a repository that 

associates search results with advertisements is not an inventive 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 invention uses off-line batch processing in an unconventional 

manner. See ’443 patent at 6:66–7:5 (“[T]he product matching manager 140 may be adapted to perform an off-line 

batch process for each search result item in the search engine 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 “improve[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 “session 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 recreate a user’s session after it has ended, requires “less processing . . . 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, individually or in combination with the remaining elements of 

claim 16, is not a sufficient inventive concept. The ’443 patent generally discloses assigning a session value to associate search queries and search results but provides no 

additional detail as to how this is done in an unconventional way. ’443 patent at 6:24–27 (“Each user performing 

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22 CHEWY, INC. v. IBM

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 abstract idea of correlating advertisements with search results, 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-generated identifier” is not a sufficient inventive concept at Alice step two). While Dr. Schmidt testifies the claimed use 

of session values is more precise and requires less processing on the backend, this alone is insufficient to transform 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 specific 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 patent 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 abstract idea into patent-eligible subject matter. Accordingly, 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 proceedings. 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.

AFFIRMED IN PART, REVERSED IN PART, AND 

REMANDED

COSTS

No costs.

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