Chewy, Inc. v. International Business Machines Corporation

Filing 90

MEMORANDUM ORDER denying as moot 76 Motion to Strike document 76 MOTION to Strike Document No. 63 Pursuant to FRCP 12(f). filed by International Business Machines Corporation, 81 MOTION to Amend/Correct 76 MOTION t o Strike Document No. 63 Pursuant to FRCP 12(f). To Amend Affirmative Defenses. filed by Chewy, Inc., 82 MOTION to Amend/Correct 76 MOTION to Strike Document No. 63 Pursuant to FRCP 12(f). First Amende d Response To Counterclaims. filed by Chewy, Inc., International Business Machines Corporation, 63 Answer to Counterclaim filed by Chewy, Inc. from the record.; granting 81 Motion to Amend/Correct 76 MOTION to Strike Document No. 63 Pursuant to FRCP 12(f)., 81 MOTION to Amend/Correct 76 MOTION to Strike Document No. 63 Pursuant to FRCP 12(f). To Amend Affirmative Defenses., 82 MOTION to Amend/Correct 76 MOTION to Stri ke Document No. 63 Pursuant to FRCP 12(f). First Amended Response To Counterclaims. ; granting 82 Motion to Amend/Correct 76 MOTION to Strike Document No. 63 Pursuant to FRCP 12(f)., 81 MOTION to Amend/Cor rect 76 MOTION to Strike Document No. 63 Pursuant to FRCP 12(f). To Amend Affirmative Defenses., 82 MOTION to Amend/Correct 76 MOTION to Strike Document No. 63 Pursuant to FRCP 12(f). First Amende d Response To Counterclaims. For the foregoing reasons, the Court adopts the claim constructions stated above and grants Chewy's motion for leave to amend its answer (which also moots IBM's motion to strike). The Clerk of the Court is direct to close docket numbers 76 and 82. SO ORDERED.. (Signed by Judge Jed S. Rakoff on 11/9/2021) (kv)

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK
-----------------------------------x
CHEWY, INC.,
:
:
Plaintiff,
:
:
-v:
:
INTERNATIONAL BUSINESS MACHINES
:
CORPORATION,
:
Defendant.
:
:
-----------------------------------x

21-cv-1319 (JSR)
MEMORANDUM ORDER

JED S. RAKOFF, U.S.D.J.
This Order sets forth the Court’s patent claim constructions
pursuant to Markman v. Westview Instruments, Inc., 517 U.S. 370,
(1996), as well as addresses a pending motion.
The Court here assumes the parties’ familiarity with the facts
and prior proceedings of this case.

See Chewy, Inc. v. Int’l Bus.

Machines Corp., 2021 WL 3727227 (S.D.N.Y. Aug. 23, 2021).

As

relevant here, on February 15, 2021, plaintiff Chewy, Inc. filed
the

instant

action

against

defendant

International

Business

Machine Corporation (“IBM”) seeking a declaratory judgment of
noninfringement as to four of IBM’s patents.

On April 19, 2021,

IBM filed its answer along with counterclaims for infringement of
those same four patents.

Then, on May 24, 2021, IBM filed its

amended answer and added a counterclaim for infringement of a fifth
patent.

On August 18, 2021, Chewy filed its answer to IBM’s

counterclaims.
1

Before the Court now are the parties’ various disputes over
claim construction as well as Chewy’s unopposed motion to amend
its affirmative defenses to IBM’s counterclaims.
BACKGROUND
The patents at issue here claim improvements to certain webbased technologies.

The claims of each of the five patents – U.S.

Patent Nos. 7,072,849 (“Patent ’849”), 9,569,414 (“Patent ’414”),
7,076,443

(“Patent

’443”),

6,704,034

(“Patent

’034”),

and

7,496,831 (“Patent ’831”)– are briefly summarized below.
A. Patent ’849
Patent ’849 claims a method for presenting advertising to a
user of an interactive service in a manner intended “to minimize
interference with retrieval and presentation of application data”
by, among other things, “storing and managing” such advertising at
the user’s reception system — that is, the user’s terminal — before
being requested by the user.
28, 3:15-20.

ECF No. 1-1 (Patent ’849) at 1:16-

The patent also claims a method of “individualizing

the advertising supplied to enhance potential user interest by
providing advertising based on a characterization of the user as
defined

by

the

user’s

interactions

demographic and geographical location.”

with

the

service,

user

Id. at 3:24-29.

B. Patent ’414
Patent ’414 describes a method for obtaining and formatting
web content.

ECF No. 41-3 (“Patent ’414”) at 9:4-17.
2

Prior to

the invention of Patent ’414, each combination of data (JavaScript
objects) and formatting (JavaScript functions) had to be stored in
a separate JavaScript library.

See id. at 1:14-50.

If developers

wanted the same data in a different format, they had to create an
entirely

new

library.

Id.

This

created

complexities

for

integrating third party content into a page, raised software
compatibility issues, and required maintaining updates across
various libraries, among other issues.

Id.

The inventors of

Patent ’414 addressed these problems by, first, separating the
data from the formatting functions.

Id. at 1:54-56.

Then, the

patented approach passes the data (a set of JavaScript objects)
through a set of JavaScript functions that then outputs the data
in a format determined by the JavaScript functions.

Id. at 1:58-

62.
C. Patent ’443
Patent
associating

’443

describes

search

advertisements.

result

systems
items

and

methods

with

similar

relating
or

to

related

ECF No. 1-3 (“Patent ’443”) at 1:63-65.

The

Patent ’443 method specifically relies on a user’s search results
(rather than search queries) to determine which advertisements to
show the user.

Under this method, a user first performs a search.

Id. at 2:23-39.

If the search returns a result, the system

searches for advertisements related to that search result.

Id.

This approach to ad-targeting stands in contrast to the “user
3

profiling” approach, which was prevalent when Patent ’443 was
issued.

Id. at 1:15-45.

The user profiling approach extracted

data from a user’s browsing behavior on a particular site to
determine the user’s interests.

The approach therefore targeted

ads based on a user’s past browsing activity on a site, as opposed
to the user’s current search terms.

Id.

D. Patent ‘034
Patent ’034 magnifies web content (“objects”) based on the
type of the content (e.g., text or images) being enlarged.
ECF No. 1-4 (“Patent ’034”) at 11:13-22.

See

If the cursor is moved

over a portion of text, for example, the text will be displayed in
an increased font size.

See id. at 5:16-41. If the cursor instead

hovers over an image, a larger version of the image will be
displayed.

See id. at 5:42-46.

And if the cursor hovers over an

audio object, its volume will be increased.

See id. at 7:22-25.

The ’034 patent recognizes that tools were previously “available
for magnifying portions of the screen for a user.”

Id. at 2:6-7.

But these tools “magnif[ied] a portion of the screen without regard
for the type of content” and performed magnification “using pixel
amplification,” which magnifies the text or image but does not
improve its clarity.

Id. at 2:7-17.

For this reason, pixel

amplification frequently produces blurry enlargements and “often
does not increase the readability of the text being magnified or
the details of the image.”

Id.
4

E. The ’831 Patent
The ’831 Patent claims a method for uncluttering hyperlinks
on

a

webpage.

See

ECF

No.

41-9

(“’831

Patent”)

12:24-30.

Specifically, the patented method unclutters hyperlinks using a
proximity policy that reformats hyperlinks by looking at their
spacing relative to other hyperlinks.

See id. at 3:7-15.

The

inventors recognized that when numerous hyperlinks were packed
into a small area it became difficult for users to interact
effectively with the webpage.
solution
through

involved
the

links

using
on

Id. at 2:25-42.

keystrokes

a

given

page.

magnifying portions of the webpage.
were

not

intuitive.

Id.

In

to

Id.

navigate
Id.

One prior art
sequentially

Another

involved

But these techniques

contrast,

the

’831

Patent

automatically unclutters and reformats a webpage to address the
spacing between the link before presenting it to a user.

Id. at

1:7-10.
CLAIM CONSTRUCTIONS
First, the Court addresses the parties’ claim construction
disputes. With regard to the five patents at issue, the parties
dispute the construction of a total of approximately two dozen
terms, implicating thirteen independent claims and a number of
additional dependent claims.

After the parties had extensively

briefed their respective positions, the Court conducted a lengthy

5

“Markman” hearing on October 8, 2021.

See Transcript, October 8,

2021 (“Tr.”).
The purpose of claim construction is to give claim terms the
meaning understood by a person of ordinary skill in the art at the
time of invention.

Phillips v. AWH Corp., 415 F.3d 1303, 1313

(Fed. Cir. 2005) (en banc).

“Properly viewed, the ‘ordinary

meaning’ of a claim term is its meaning to the ordinary artisan
after reading the entire patent.”

Id. at 1321.

A. Claim Constructions for Patent ’849
The

claim

construction

issues

discussed

in

this

section

relate to the following four independent claims of Patent ’849, as
well as a number of dependent claims:
Claim 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.
Claim 8:
A method for presenting advertising in a
computer network, the network including a multiplicity
6

of user reception systems at which respective users can
request applications that include interactive services,
the method comprising the steps of: 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.
Claim 14: 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 a user requested application may be
presented, through the network, at a first portion of
one or more screens of display; b. separately
structuring the advertising in a manner compatible to
that of the applications so that advertising may be
presented, through the network, at a second portion of
one or more screens of display concurrently with any one
of a plurality of user requested applications, c.
configuring the advertising as objects that include
advertising data, and d. selectively storing advertising
objects at a store established at the reception system.
Claim 21: 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, from the network,
applications that include interactive services, the
method comprising the steps of: a compiling data
concerning the respective users; b. establishing
characterizations for respective users based on the
compiled data; and c. structuring advertising separately
from the applications so that the advertising may be
selectively supplied, through the network, to and
7

retrieved at the reception systems for presentation to
the respective users along with a requested application
in accordance with the characterizations established for
the respective reception system users, wherein supplying
advertising data to the reception system includes
storing a predetermined amount of the advertising data
in a store established at the respective reception
systems.
1. “selectively storing advertising objects at a store
established at the reception system” (claims 1 and 14)
IBM’s Proposal

Chewy’s Proposal

storing
advertising
objects
according to a predetermined
storage criterion at a store
established at the reception
system

pre-fetching
advertising
objects and storing at a store
established at the reception
system
in
anticipation
of
display concurrently with the
applications

The primary dispute with regard to this term is whether
“advertising objects” must be “pre-fetched” (as explained below).
Chewy’s proposed construction, requiring that the objects be “prefetched,” is the one previously adopted in two cases brought by
IBM asserting this patent.

See Int’l Bus. Machines Corp. v.

Priceline Grp. Inc., 2016 WL 6405824, at *19-21 (D. Del. Oct. 28,
2016); Int’l Bus. Machines Corp. v. Groupon, Inc., 2017 WL 3310688,
at *9 (D. Del. Aug. 3, 2017).

As the Priceline court explained,

the specification “clearly describes the ‘invention’ as a whole as
including ‘pre-fetched’ advertising as an improvement over the
prior art, with such advertising being displayed ‘concurrently’
with applications.”
patent

method

was

2016 WL 6405824, at *10.
intended

to
8

speed

up

In particular, the
the

display

of

advertisements – an important advantage in the days of dial-up
connections – by “eliminat[ing] from the new page response time
the time it takes to retrieve an advertising object from the host
system based on a user’s characteristics.

This is accomplished by

using the . . . pre-fetching mechanism,” whereby the user’s system
downloads and stores the advertising in advance, before it is
needed for viewing — that is, it pre-fetches the advertising.
Patent ’849 at 34:21-44.
Chewy’s

construction,

which

reads

the

term

“selectively

storing” to include “pre-fetching” the advertising objects, is
thus consistent with the description of the invention as a whole
— most notably the “Summary of Invention,” which explains that “in
accordance with the method [of the invention], the user reception
system at which the advertising is presented includes [a] facility
for storing and managing the advertising so that it can be prefetched from the network and staged at the reception system in
anticipation of being called for presentation.”
3:16-21.

Patent ’849 at

This interpretation is also supported by the history of

proceedings in the Patent and Trademark Office – that is, the
prosecution
“selectively

history:
storing

in

an

appeal

advertising

brief,

IBM

objects”

explained

means

that

that
the

advertising objects are “pre-fetched from the network” and stored
at the user’s reception system.”

ECF No. 72-6 at 6-7.

9

IBM, on the other hand, now seeks to have the term construed
in accordance with a portion of the specification that discusses
“objects” generally — that is a portion of the specification
stating

that

“[the

reception

system]

includes

a

means

to

selectively store objects according to a predetermined storage
criterion”.

ECF No. 68 (“IBM OB”) at 2 (quoting Patent ’849 at

6:57-61); see Priceline, 2017 WL 3310688, at *9.
its

construction

because

during

Interferences

is

consistent

prosecution
(“BPAI”)

the

with

the

Board

stated

of

that

IBM argues that

prosecution
Patent

history

Appeals

“selectively

and

storing

advertising objects at a store established at the reception system”
means, in part, that “advertising objects (entities) are selected
by the system for storing at the reception system.”
at 9.

ECF No. 68-2

However, as Chewy explains, this portion of the prosecution

history is not inconsistent with Chewy’s interpretation, because
“pre-fetching advertising objects” requires, by definition, that
those

advertising

objects

were

“selected

by

the

system,”

as

fetching requires first making a selection.
IBM

also

raises

a

series

of

objections

to

Chewy’s

interpretation — expounded upon at oral argument — grounded in the
language of the specification and the claims. Ultimately, however,
none

succeeds

in

refuting

Chewy’s

argument

that

a

proper

construction reflects that “selectively storing” involves “prefetching.”

First, IBM argues that the addition of the adverb
10

“selectively” to “storing” cannot convert the single step of
“storing” into the two steps of “pre-fetching” advertising objects
and then “storing” those objects.

However, “selectively storing”

the advertising objects necessitates a selection process prior to
storage — the second action is thus implied.

And, when read in

the context of the specification, is clear that the selection
process involves pre-fetching based on a user’s characteristics.
Next, IBM raises a claim differentiation argument.

As IBM

notes, claims 9, 10, 22 and 23 explicitly use the term “pre-fetch,”
while claim 1 and 14 do not – thus, IBM states, prefetching only
applies to those claims.

However, claims 9 and 10 are dependent

claims of independent claim 8, while claims 22 and 23 are dependent
claims of independent claim 21. Notably, neither claim 8 nor claim
21 contain the “selectively storing” limitation, which appears in
claims

1,

13,

importantly,

and

IBM

14

(and

incorrectly

their

dependent

assumes

that

claims).

mention

of

More
“pre-

fetching” in dependent claims 8, 10, 22, and 23 is to express a
new limitation.

However, when read in context, it is clear that

each claim is describing the use of “pre-fetching” under the
specific circumstances discussed in those claims.

For example,

claim 22 discusses pre-fetching “when the store of advertising
data falls below a predetermined level.”

Thus, the use of the

term “prefetching” in those terms does not demonstrate that the
more general concept of prefetching cannot also be encompassed by
11

other claim terms, such as “selectively storing.”

Indeed, as the

Federal Circuit has noted, “[i]t is not unusual that separate
claims

may

especially

define
where

the

(as

invention

here)

using

independent

different
claims

terminology,

are

involved.”

Hormone Research Found. v. Genentech, Inc., 904 F.2d 1558, 1567
n.15 (Fed. Cir. 1990).
IBM also argues that the language from the “Summary of
Invention” relied upon by Chewy — “managing the advertising so
that it can be pre-fetched,” Patent ‘849 at 3:16-24 (emphasis
added) — uses the permissive “can” in describing pre-fetching,
which, IBM suggests, implies that pre-fetching is not necessary to
the patented method.

However, “can” in the at-issue sentence is

not used to indicate permissiveness. Rather, it is used to explain
that, “in accordance with the method, the user system . . .
includes

facility

for

storing

and

managing

the

advertising,”

because that facility is necessary to carry out pre-fetching, which
is itself an integral part of the patented method.

Id.

Thus, the

overall sentence is consistent with understanding pre-fetching to
be a necessary feature of the patented method.
Finally, IBM argues that Chewy’s interpretation excludes a
preferred embodiment where “objects make up one or more partitioned
applications, and are retrieved on demand by a user’s [reception
system] for interpretive execution and selective storage.”
Patent at 6:18-24 (emphasis added).
12

‘849

IBM argues that in this

embodiment, “selective storage” occurs when objects are “retrieved
on demand” — that is, in response to a “demand” — and thus are not
“pre-fetched.”

However, this preferred embodiment is referring to

the storage of objects that “make up” the “applications,” not
advertising objects.

Id.

In contrast, the patent consistently

describes advertising objects as pre-fetched and stored for future
use.
As the above reflects, a proper construction of the disputed
terms reflects that the advertising objects must be “pre-fetched.”
That said, juror’s may not be familiar with using the term “fetch”
or, relatedly, “pre-fetch,” to describe retrieving objects in this
context.

More understandable is the word “retrieving,” which – in

combination with the language from Chewy’s construction stating
that the storing occurs in “anticipation of display concurrently
with the applications” – appropriately captures the meaning of the
word “pre-fetching” but in language more accessible to a jury.1
For

these

construction

for

reasons,
the

term

the

Court

at

issue:

adopts

the

“retrieving

following
advertising

objects and storing at a store established at the reception system
in anticipation of display concurrently with the applications.”

See Jed S. Rakoff, Down with Patentese, 21 Fordham Intell. Prop.
Media & Ent. L.J. 839, 840 (2011) (noting, inter alia, the
tendency of patent lawyers and cases to substitute obscure or
confusing terms for simple English words).
13
1

2. “structuring advertising separately from the applications
so that the advertising may be selectively supplied,
through the network, to and retrieved at the reception
systems for presentation” (claim 21)
IBM’s Proposal

Chewy’s Proposal

formatting advertising in a
manner comparable to that of
applications
to
enable
the
applications to be presented at
a first portion of a display and
the advertising to be presented
concurrently
at
a
second
portion of a display and so that
it may be selectively supplied
to, through the network, and
retrieved
at
the
reception
systems

formatting
advertising
separately
from
the
applications
for
potential
supply, through the network, to
and retrieval by the reception
systems for presentation

With regard to this term, the parties primarily dispute
whether the phrase “separately from the applications” requires
further elaboration.

Although conceding that “‘separate’ is a

non-technical word,” IBM argues that “the jury would benefit from
an explanation” and that elaboration would resolve the parties’
“dispute as to the claim scope.”

ECF No. 73 (“IBM RB”) at 5.

As

such, IBM argues that the construction should replace “separately”
with language taken from the specification explaining that the
“advertising

is

structured

in

a

manner

[that]

enables

the

applications to be presented at a first portion of a display
associated with the reception system and the advertising to be
presented concurrently at a second portion of the display.” Patent
’849 at 3:10-16.
14

Chewy argues against elaborating “separately” in the manner
advocated by IBM, stating that it improperly limits that scope of
the disputed terms. In particular, Chewy notes that the limitation
proposed by IBM — “in a manner comparable to that of applications
to enable the applications to be presented at a first portion of
a display and the advertising to be presented concurrently at a
second portion of a display” — already appears in other independent
claims utilizing similar language.
13, & 14.

See, e.g., Patent ’849 at 1,

Given that the patentee chose not to recite such

limitations in claims 8 and 21, there is no basis for limiting the
“structuring advertising . . . selectively supplied” terms in the
manner proposed by IBM.

See Kara Tech. Inc. v. Stamps.com Inc.,

582 F.3d 1341, 1347 (Fed. Cir. 2009) (“[W]hen the inventor[s]
wanted to restrict the claims to require [such limitations], [they]
did so explicitly.”).
A second dispute surrounds Chewy’s proposal to include the
phrase “potential supply” to construe “may be . . . supplied.”
Chewy

argues

Priceline

and

that

this

Groupon,

is

consistent

where

the

with

Court

the

decisions

recognized

that

in

“the

intrinsic record does not support including a requirement in [the]
term that advertising actually be used” — or in this instance,
supplied — and that it is therefore appropriate to “add the word
‘potential.’”

Priceline, 2016 WL 6405824, at *11; accord Groupon,

2017 WL 3310688, at *4.

IBM does not dispute this point, but
15

instead notes that its proposal achieves the same result, while
using the permissive language — “may” — used in the claim itself.
As both parties essentially agree, the term “separately” is
no being used in some technical sense.

Because the term is non-

technical, no further construction is needed to give it the meaning
that would be accorded to it by “a skilled artisan.”

Carnegie

Inst. of Washington v. Pure Grown Diamonds, Inc., 459 F. Supp. 3d
502, 516 (S.D.N.Y. 2020).

Moreover, and more importantly, IBM

fails to explain why the Court should import into the claim a
limitation that appears explicitly in other claims.

On the other

hand, on the issue of the permissive language, IBM’s proposal is
clearer and hews closer to the claim language.
The Court accordingly adopts the following construction:
“formatting advertising separately from the applications so that
the advertising may be selectively supplied, through the network,
to and retrieved at the reception systems for presentation.”
3. “structuring advertising so that it may be selectively
supplied to and retrieved at the reception systems for
presentation” (claim 8)
IBM’s Proposal

Chewy’s Proposal

formatting advertising in a
manner comparable to that of
applications, and so that it may
be selectively supplied to and
retrieved
at
the
reception
systems,
to
enable
the
advertising to be presented

formatting
advertising
for
potential
supply
to
and
retrieval
by
the
reception
systems for presentation

16

As both parties agree, this term is identical to the one
described above except that it does not include the phrases (1)
“separately from applications” or (2) “through the network.”

As

such, the construction should be identical but omit the language
corresponding to those two phrases.
The Court accordingly adopts the following construction:
“formatting advertising so that it may be selectively supplied to
and retrieved at the reception systems for presentation.”
4. “advertising object(s)” (claims 1, 2, 3, 14, 15, 16)
IBM’s Proposal

Chewy’s Proposal

objects
that
(1)
contain data structure(s) whose subject
display data to be presented at matter concerns advertising
screen partitions and (2) whose
subject matter is selected to
concern advertising
The parties agree that “object(s)” should be construed as
“data structure(s).”
that

advertising

structures

whose

advertising.”

ECF No. 62 at 1.

objects

are

“subject

The parties further agree

defined

matter

Patent ’849 at 15:8-11.

by

is

the

patent

selected

to

as

data

concern

However, IBM argues that

the construction should further require that “advertising objects”
also “contain display data to be presented at screen partitions.”
In support, IBM notes that the specification defines advertising
objects as “substantially the same as page element objects, with
the difference being that, as their name implies, their subject
17

matter is selected to concern advertising.” Id. at 15:6-12. “Page
element objects,” in turn, are defined as follows: “Page element
objects . . . contain the display data, i.e., text and graphics,
to be presented at screen partitions.”
Putting

these

together

gives

Id. at 14:49-51.
rise

to

a

definition

of

advertising objects as data structures that “contain the display
data

to

be

presented

at

screen

partitions”

and

“concern

advertising.” IBM argues that this definition is further supported
by how the term “advertising objects” is used in the specification,
including its figures.

See id. at 12:38-41 (“in accordance with

the method of the present invention, advertising objects . . .
include the text and graphics that may be presented . . . on the
monitor screen”); see also id. at 11:21-28 & fig. 4c).
Chewy argues that this additional limitation lacks basis in
the

specification

and

introduces

unnecessary

ambiguity.

Specifically, relying on an expert declaration, Chewy argues that
that using the word “partitions” is ambiguous because it introduces
the questions of “whether [the objects] must be presented at
multiple

partitions,

and

what

defines

separate

‘screen

partitions.’”

ECF No. 71 (“Almeroth Dec.”) ¶ 72.

IBM responds

that,

extent

needed,

to

the

any

additional

clarity

is

the

specification explains that “partitions” are “areas.” See Patent
’849

at

16:15-16;

see

also

Groupon,

2017

WL

3310688,

at

*4

(defining “partition” as “area” in connection to a related patent).
18

Chewy’s arguments for ambiguity are only cursorily stated
without

substantiation

convincing.

See

beyond

Phillips,

expert

415

F.3d

say-so
at

1318

and

thus

not

(“conclusory,

unsupported assertions by experts as to the definition of a claim
term are not useful to a court”).

Moreover, they do not counter

the fact that IBM’s definition is derived directly from how the
terms are defined in the specification and accurately reflects how
the term is used within the specification.

See Phillips v. AWH

Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005) (“the inventor’s
lexicography governs”).
The Court accordingly adopts IBM’s proposed construction of
this term, i.e., “objects that (1) contain display data to be
presented at screen partitions and (2) whose subject matter is
selected to concern advertising.”
5. “characterization(s)” (claims 3, 4, 5, 6, 7, 8, 16, 17,
18, 21)
IBM’s Proposal

Chewy’s Proposal

targeting criteria for users as
defined by interaction history
with the service and such other
information
as
user
demographics and locale

data indicative of a user
characteristic,
such
as
demographics,
geography,
or
usage history

Chewy raises only one issue with IBM’s proposal: that it
suggests that all characterization need to be based at least
partially on a user’s “interaction history.”

IBM responds that

this is not its intention and suggests, as an alternative, that
19

this issue be avoided by construing the term as “targeting criteria
for users as defined by interaction history with the service and/or
such other information as user demographics and locale.”
IBM raises the separate issue that Chewy’s proposal fails to
distinguish the data underlying the characterization with the
characterization itself.
“characterizations
compiled

data.”

distinction,

IBM

for

As IBM explains, claim 8 recites that
respective

Patent

’849

appropriately

at

users

[are]

40:29-31.

looks

to

To
a

based

on

reflect

portion

of

the
this
the

specification that describes “targeting criteria” based on the
user’s data and then, in a sentence beginning “[s]tated otherwise,”
refers to “characterizations of the respective users.”

Id. at

10:8-27.
For these reasons, the Court adopts the following modified
version of IBM’s proposed construction: “targeting criteria for
users as defined by interaction history with the service and/or
such other information as user demographics and locale.”
B. Claim Constructions for Patent ’414
The claim construction issues raised by the parties relate to
two claims of Patent ’414, claim 1 and claim 3, which is itself
dependent on claim 1.

Claim 1 states as follows:

Claim 1:
A method for formatting and serving web
content, the method performed by a processor comprising:
requesting a set of JavaScript objects and a set of
JavaScript functions in a single Hypertext Transfer
Protocol (HTTP) request; and in response to the
20

requesting: obtaining the set of JavaScript objects that
represents dynamic JavaScript data; and obtaining the
set of JavaScript functions to format the set of
JavaScript objects, the set of JavaScript objects being
distinct from the set of JavaScript functions; and
formatting the set of JavaScript objects using the set
of JavaScript functions as a parameter; and outputting
at least a subset of the set of JavaScript objects in a
format determined by the set of JavaScript functions.
The parties dispute the construction of various terms in
claims 1 and 3.
extension,
“formatting

In addition, Chewy argues that claim 1 – and, by

claim

3

the

set

–
of

is

indefinite

JavaScript

because

objects

the

using

claim
the

step

set

of

JavaScript functions as a parameter” is nonsensical as written.
IBM, in response, argues that the term is not indefinite and should
be read with the addition of commas as: “formatting the set of
JavaScript objects, using the set of JavaScript functions, as a
parameter.”
“[A] patent is invalid for indefiniteness if its claims, read
in light of the specification delineating the patent, and the
prosecution history, fail to inform, with reasonable certainty,
those skilled in the art about the scope of the invention.”
Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 901
(2014).

“In evaluating a claim for indefiniteness, courts must be

mindful of the ‘inherent limitations of language,’ and understand
that ‘[s]ome modicum of uncertainty . . . is the price of ensuring
the appropriate incentives for innovation.’”

Roche Diagnostics

GMBH v. Enzo Biochem, Inc., 2017 WL 6988709, at *3 (S.D.N.Y. Oct.
21

2, 2017) (quoting Nautilus, 572 U.S. at 909).

Additionally,

because “issued patents are presumptively valid, a party seeking
to invalidate a claim as indefinite must do so by clear and
convincing evidence.”

Id. (citing Microsoft Corp. v. i4i Ltd.

P’ship, 564 U S. 91, 102-05 (2011)).
Chewy argues that the claim is naturally read as stating that
“formatting the set of JavaScript objects” is performed by “using
the set of JavaScript functions as a parameter.”

This, however,

would be understood as nonsensical to a skilled artisan, who would
understand that JavaScript objects are used as parameters — that
is, inputs — for JavaScript functions, not the other way around.
See Almeroth Decl. ¶ 93.

As written, this claim step requests the

equivalent of “toasting bread using the toaster as an input.”

Id.

Because such a step is nonsensical, the claim — Chewy argues —
must be indefinite.

See Trustees of Columbia Univ. in City of New

York v. Symantec Corp., 811 F.3d 1359, 1367 (Fed. Cir. 2016) (“The
claims are nonsensical in the way a claim to extracting orange
juice from apples would be, and are thus indefinite.”).
IBM responds that the claim is not indefinite when read in
light of the specification.

As IBM notes, in multiple places the

specification makes clear that “a set of JavaScript functions can
be created that takes the set of JavaScript objects as a parameter,
and outputs all or a subset of this data object in a format
determined by this JavaScript function.”
22

Patent ’414 at Abstract;

1:58-62;

2:4-7;

3:59-62).

Thus,

IBM

asserts,

when

read

in

combination with the specification, it is apparent that the claim
language restates this idea.

In particular, IBM argues that the

claim step should be read with commas added, such that “using the
set of Javascript function” is simply a clause explaining how
“formatting the set of JavaScript objects occurs.”

IBM suggests

that this reading is further supported by testimony of one of the
named inventors and Chewy’s expert, both of whom stated that a
skilled artisan would understand that the objects are treated as
the parameters, not the functions.

ECF No. 73-4 at 133:10-15;

Almeroth Decl. ¶ 93.
Chewy, in turn, argues that IBM is essentially asking for
judicial correction of the claim — a doctrine which requires a
showing, among other things, that the correction is not subject to
reasonable debate. See Novo Industries, L.P. v. Micro Molds Corp.,
350 F.3d 1348, 1354 (Fed. Cir. 2003).

For its part, IBM disclaims

seeking judicial correction, IBM OB at 15 (“IBM never claimed that
the patent requires judicial correction”), arguing instead that it
is merely explaining where in the sentence one should pause and
offering a construction that aligns with that offered by one of
the inventors.

See ECF No. 73-4 at 133:10-15 (“I think it says,

‘[f]ormatting the set of JavaScript objects,’ pause, ‘using the
set of functions,’ pause, ‘as a parameter.’”).

23

In the Court’s view, IBM offers convincing evidence that a
skilled artisan would understand that it is the set of objects,
rather

than

parameters.

the

set

of

functions

that

are

to

serve

as

the

But even accepting IBM’s construction, the claim step

is still nonsensical.

Under IBM’s construction, “using the set of

JavaScript functions” is construed as a dependent clause, which,
when removed renders the claim step as “formatting the set of
JavaScript objects as a parameter.”

But obviously, the set of

objects are not to be formatted as a parameter.

Thus, even as

construed, the language does not make sense.
Here, the Federal Circuit’s decision in Allen Engineering
Corp. v. Bartelli Industries, Inc., 299 F.3d 1336, 1349 (Fed. Cir.
2002), offers guidance.
steering

box

that

In that case, the claims recited a

pivoted

“its

gear

box

only

in

a

plane

perpendicular to [a] biaxial plain.” Id. As the court recognized,
a skilled artisan would know that such pivoting was impossible;
moreover, it was clear from the specification that the patentee’s
invention

required

pivoting

“perpendicular” planes.

Id.

in

“parallel”

rather

than

Although the patentee argued that

claims were valid because a skilled artisan “would understand that
the term ‘perpendicular’ in the claim should be read to mean
‘parallel,’”

the

court

held

that

claims

to

be

indefinite,

explaining that it is not the court’s “function to rewrite claims
to preserve their validity.”

Id.
24

Similarly, here, it does not appear to be possible to read
the term sensibly without rewriting it to correct the apparent
error.

While this claim may be candidate for judicial correction,

in light of IBM’s explicit disclaimer of that doctrine the Court
holds that the claim is indefinite. Because the Court finds that
claim 1 is indefinite, it does not address the parties’ arguments
as to the construction of the other disputed terms for Patent ’414,
all

of

which

relate

to

claim

1,

either

directly

or

through

this

section

dependent claim 3.
C.

Claim Constructions for Patent ’443
The

claim

construction

issues

discussed

in

relate to the following two independent claims of the ’443 patent,
in addition to certain dependent claims:
Claim 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; 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.
Claim 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 items so designated for subsequent user
25

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.
1. “associated advertisement” (claims 1, 2, 5, 10, 13, 14),
“related advertisement(s)” (claims 15, 17), “related
product advertisement(s)” (claim 17)
IBM’s Proposal

Chewy’s Proposal

[no construction necessary]

Indefinite

Chewy

argues

that

the

terms

“associated

advertisement,”

“related advertisement(s),” and “related product advertisement(s)”
are indefinite because the patent fails to explain what each term
means and/or how they are different from each other.

In support,

Chewy relies on the declaration of its expert, who states that,
“[w]hile these terms are sometimes understood at a very broad
level, the specification does not provide sufficient guidance for
a [skilled artisan] to reasonably understand the scope of the
terms.”

¶ 107.

For example, pointing to claim 1, which involves

“searching for said at least one associated advertisement within
said repository using said at least one search result item,”
Chewy’s expert explains that the patent “gives no instruction how
to do that or even how to determine if a given advertisement in
the ‘repository’ is an ‘associated advertisement.’”

Id. ¶ 108.

Similarly, in connection to claim 15, which is directed to “a
method for providing related advertisements for search result
26

items,” the expert states that the claim never defines what is a
“related

advertisement”

and

instead

“assumes

that

‘related

advertisement[s]’ are already in existence and, therefore, can be
matched to the ‘search result items.’” Id. ¶ 110.
IBM responds that the terms “associated” and “related” are
not technical terms, but rather common words that would be clear
to a jury, let alone a skilled artisan.

In support of its

contention that “related” is used in the ordinary way, IBM points
to the background of the invention, which states that “[t]he
instant

invention

associating

provides

search

a

result

new

items

method
with

and

apparatus

similar

or

for

related

advertisements,” Patent ’443 at 1:63-64, thus showing that the
term “related” is used to mean “similar.”

With regard to the term

“related product advertisement(s),” which appears in dependent
claims 9 and 17, IBM argues that there is no ambiguity because the
dependent

claims

requires

that

narrow
the

the

independent

‘associated

claims:

advertisement’

“[c]laim
(i.e.,

9
the

advertisement that is associated/linked/connected) be a ‘related
product advertisement’ (i.e., that of a similar product)” and
“[c]laim

17

requires

that

the

‘related product advertisements.’”

‘related

advertisements,’

be

IBM RB at 18.

The key question in determining definiteness is whether a
skilled artisan will be able to understand the “the scope of the
invention.”

Nautilus, 572 U.S. at 901.
27

Here, the terms, when

read in light of the patent as a whole, are sufficiently clear to
communicate the scope of the patent — namely, that it is a method
for determining which advertisements to show the user based on
what advertisements are related to the results of the search,
rather

than

advertisements

related

themselves or based on a user profile.

to

the

search

queries

Thus, although words like

“related” and “associated” may nonetheless be vague on their own,
the

specification

provides

a

conceptual

baseline

sufficient to overcome the charge of indefiniteness.

that

is

See Neev v.

Alcon Lab’ys, Inc., 2016 WL 9051170, at *4 (C.D. Cal. Dec. 22,
2016)

(“But

for

a

term

of

degree,

absolute

or

mathematical

precision is unnecessary.”), aff’d sub nom. Neev v. Alcon Lensx
Inc, 774 F. App’x 680 (Fed. Cir. 2019).
That said, as Chewy’s expert notes, the patent fails to
specify the method by which the relatedness of advertisements is
to be determined, among other technical details.

However, while

such an issue may ultimately provide a basis for a validity
challenge, the claims would not fail for indefiniteness on this
basis.

See Amgen Inc. v. Sandoz Inc., 2016 WL 4137563, at *5 (N.D.

Cal. Aug. 4, 2016) (Seeborg, J.) (“[T]he lack of precision in the
claim and specification impacts only his or her ability to practice
all embodiments of the claim — a question of enablement, not
indefiniteness.”), aff’d, 923 F.3d 1023 (Fed. Cir. 2019).

28

Accordingly,

the

Court

holds

that

no

construction

is

necessary and the terms are not indefinite.
2. “Internet search” (claim 1)
IBM’s Proposal
[no construction necessary]

Chewy’s Proposal
search
through
an
Internet
search engine, e.g.
google.com or yahoo.com

The party’s dispute regarding this term relates to whether
“Internet search” refers only to a search through an Internet
search engine — such as, google.com or yahoo.com — or whether it
also extends to searches of a particular website conducted by
utilizing the search bar on that website’s page.

In support of

its contention that the term “Internet search” refers only to
general internet searches, as opposed to searches of a single
website, Chewy points to the language of the specification stating
that a user will enter a query “to initiate a search on an Internet
search engine, e.g. yahoo.com or ibm.com/java.”

Patent ’443 at

4:52-66 (emphasis added); see also id. at 5:22-33 (“For an Internet
search, this search engine may be one of many existing types, such
as yahoo.com, ibm.com/java, and the like.”).

Both yahoo.com and

ibm.com/java refer to general search engines. See ECF 87-1 (“Emens
Tr.”) at 41:24-43:5 (explaining that IBM.com/java hosted a search
engine “dedicated to providing the ability to perform searched on
Java-related items” across the Internet).
29

In further support of

its construction, Chewy cites the testimony of the lead inventor
of the patent, who testified at deposition that the “Internet
search” is performed via a general Internet search engine, see id.
at 41:24-43:5, and the declaration of its expert, see Almeroth
Decl. ¶ 118.

Chewy also points to the part of the specification

stating that the patent is directed to “Internet Search Engine
Technology.”

See Patent ’443 at 1:10-12.

IBM responds primarily by arguing that the language of the
specification relied upon by Chewy is drawn from the preferred
embodiments

and

thus

improperly

invites

the

Court

to

import

limitations from the preferred embodiments into the claims.

See

Phillips, 415 F.3d at 1323. (“although the specification often
describes very specific embodiments of the invention, we have
repeatedly

warned

against

confining

the

claims

to

those

embodiments”). IBM also argues that the substitution of google.com
for ibm.com/java is inappropriate because the latter is a specific
search of IBM content, while Google searches everything across the
Internet.2
While it is true that it is generally “improper to read
limitations

from

a

preferred

embodiment

description

in

the

IBM also seeks to rely on testimony from an expert in an inter
partes review proceeding Chewy purportedly seeks to join. The
testimony, however, does not address the particular question at
issue here and thus does not support IBM’s broader reading of
this term. See IBM RB at 21.
30
2

specification . . . into the claims absent a clear indication in
the intrinsic record,” Liebel-Flarsheim Co. v. Medrad, Inc., 358
F.3d

898,

constitute

913
such

(Fed.
a

Cir.

2004),

limitation.

Chewy’s

Read

in

proposal
the

does

context

not

of

the

specification, the examples provided in the embodiment reflect
that the patentee understood an Internet search to refer to a
search of the Internet as a whole, rather than a particular
website.

As such, constructing the term to include exemplary

language that clarifies its meaning is appropriate.

Further, the

substitution of google.com for ibm.com/java is appropriate in
order to make the example one that will be familiar to jurors.
Accordingly, the Court adopts the construction proposed by
Chewy, that is, “search through an Internet search engine, e.g.
google.com or yahoo.com.”
3. “correlating said at least one associated advertisement
with said at least one search result item” (claim 1)
IBM’s Proposal

Chewy’s Proposal

[no construction necessary, or indefinite
alternatively]
“displaying said at least one
associated
advertisement
together with said at least one
search result item.”
Chewy argues that the claim phrase “correlating said at least
one associated advertisement with said at least one search result”
is indefinite because the term “correlating” is not defined in the
31

patent claims or specification.

IBM disagrees, arguing that

“correlating” is not a technical term but rather a common term
that, in this context, refers to establishing a nexus between the
associated

advertisement

Specifically,

IBM

argues

and
that

the

search

correlating

result

is

the

item.

result

of

“identifying at least one search result item,” “searching,” and
“identifying at least one associated advertisement” that matches
the “search result item.”

See Patent ’443, Claim 1.

In the

alternative, IBM argues that “correlating” can be construed as
“displaying . . . together.”
In support of its argument for indefiniteness, Chewy notes
that “correlating” appears in only two places in the specification
— neither of which explains what it means to “correlat[e]” an
associated advertisement with a “search result item.”
points

to

the

deposition,

testimony

stated

that

of
he

the
could

lead

inventor

not

say

if

Chewy also

who,

there

at

his

were

any

difference between “correlating” and “matching” advertisements
with search result items.

Emens Tr. at 50:21-51:22, 52:18-53:13.

Moreover, Chewy argues that IBM fails to offer any support in the
specification

that

“correlating”

refers

to

a

“nexus”

between

advertisements and search result items.
In response, IBM argues that the specification explains how
the correlating step occurs in the context of the preferred
embodiments,

where

the

specification
32

describes

a

process

of

displaying the search results with any associated products that
were determined to be related.

See Patent ’443 at 7:11-7-17.

Ultimately, the plain meaning of the term is sufficient to
overcome the challenge to indefiniteness.

As defined by Merriam-

Webster, “to correlate” is, among other things, “to present or set
forth as to show relationship.”
Online

“Correlate,” Merriam-Webster

Dictionary,

https://www.merriam-

webster.com/dictionary/correlating?src=search-dict-hed
visited October 22, 2021).

(last

When read in the context of the claim,

it is clear that this is precisely the meaning intended by the
patent: once the advertisement is found to be related to a search
result,

the

relationship.

correlating

step

refers

to

presenting

that

That said, whether so abstract a concept as is

described by this claim can survive the inquiry set out in Alice
Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 217-18 (2014), is
another question not currently before the Court.
Accordingly,

the

Court

holds

that

the

term

requires

no

construction and is not indefinite.
4. “providing said at least one associated advertisement on
demand by said user” / “on demand by said user” (claim 2)
IBM’s Proposal

Chewy’s Proposal

“on demand by said user”: upon indefinite
the user selecting a graphical
user interface to investigate
related advertisements

33

IBM argues that its construction of this term comes directly
from the specification.

In a paragraph that is introduced as

“[t]he method of the instant invention,” the specification states
that “once . . . advertisements are acquired, they may be viewed
by the user on demand.” Patent ’443 at 4:60-61. The specification
then explains that “on demand” means that “[f]or each search result
item, a graphical user interface (GUI) selection is presented,
allowing the user to select the GUI, on demand if so desired, to
investigate related advertisements.”

Id. at 4:67-5:3.

Putting

this together, the patent then equates “on demand” with “the user
selecting a graphical user interface” so as “to investigate related
advertisements.” This, IBM argues, reflects that “on demand” means
when the user selects a GUI.
This interpretation, however, fails as a matter of claim
differentiation.
depends

on

As Chewy notes, dependent claim 7, like claim 2,

claim

1,

and

specifically

recites

the

step

“displaying a graphical user interface to [the] user.”

of

IBM’s

construction of claim 2, however, reads “on demand by user” as
implying the display of a GUI. Thus, IBM’s construction improperly
reads into the term “on demand by user” a restriction that is made
explicit in another claim that is also dependent on the same
independent claim that claim 2 depends on.

See Kara Tech. Inc. v.

Stamps.com Inc., 582 F.3d 1341, 1347 (Fed. Cir. 2009) (“when the
inventor

wanted

to

restrict

the
34

claims

.

.

.

he

did

so

explicitly”). Because IBM has offered no construction that renders
this term meaningful without encroaching on the explicit language
of another claim, the Court holds that claim 2 is indefinite.
5. “a user identifier” / “assigning a user identifier” / “an
identifier for said user” (claims 10, 16)
IBM’s Proposal

Chewy’s Proposal

“user
identifier”:
session indefinite
value that is used to associate
user queries to search result
item selections
Although the term “user identifier” does not appear in the
specification, IBM’s construction derives from the use of the
similar

term

specification,

“user

session

“user

identifiers.”

profiles

appropriate advertis[ing].”

are

used

According
to

to

determine

Patent ’443 at 1:38-40.

the
the

However,

user profiling provides several challenges, including that “it is
[] difficult to identify a specific user, i.e., a user interested
in purchasing automobiles, and associate the correct advertisement
profile to the user.”

Id. at 1:46-56.

The invention claims to

solve this problem by identifying users with their sessions,
referred

to

as

the

“user

specification explains:

session

identifiers.”

As

the

“Each user performing 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.”

Id. at 6:24-27.
35

Reading the claim in the

context of the specification thus suggests that understanding
“user identifiers” to refer to these session values.

See Cox

Commc’ns, 838 F.3d at 1231 (the specification “inform[s] . . .
those skilled in the art about the scope of the invention”).
In

support

of

its

contention

that

the

claim

indefinite, Chewy relies on two pieces of evidence.
cites

its

indefinite.

expert’s

conclusory

assertion

that

terms

are

First, it

the

term

is

See Almeroth ¶ 134 (“the term ‘user identifier’ is

very broad and the specification does not provide sufficient
guidance for a POSITA to understand the scope of the term”).
“However, conclusory, unsupported assertions by experts as to the
definition of a claim term are not useful to a court.”
415 F.3d at 1318.

Phillips,

Second, Chewy points to testimony of the main

inventor in which he, at his deposition, stated his belief that
“user ID . . . is different from a user session, where a session
ID is initiated without knowledge of the user themselves or their
profile or a profile.”

Emens Tr. at 153:9-17.

But placed in

context, it is far from clear that the inventor understood the
phrase “user ID” as posed to him in the deposition to refer to the
“user

identifier”

as

specifically

used

in

the

specification.

Indeed, it appears the inventor may have reasonably understood the
questioner to be using the phrase “user ID” to refer to what the
inventor had previously referred to as a “user profile.”
at 96:2-4.

See id.

As such, this testimony is inconclusive at best in
36

terms of showing a difference between a “user identifier” and a
“user session identifier,” as used in the claim and specification,
respectively.

Chewy

has

thus

failed

to

meet

its

burden

to

establish this term’s indefiniteness.
Accordingly,

the

Court

rejects

Chewy’s

indefiniteness

contention and adopts IBM’s construction, to wit, “session value
that is used to associate user queries to search result item
selections.”
6.

“matching said search result
advertisements” (claim 15)
IBM’s Proposal

items

to

said

related

Chewy’s Proposal

[no construction necessary or analyzing a search result item
alternatively,]
for at least one keyword and
identifying an advertisement
identifying
said
related from the repository having a
advertisements
from
said word that matches that keyword
information repository having a
word that matches a keyword from
said search result items
The parties’ primary dispute is whether the Court should
construct the claim term to include a step of “analyzing.”

In

support of including an “analyzing” step in the construction, Chewy
relies primarily on the description of “[t]he associating step”
that appears in one of the “aspects” of the preferred embodiment.
Patent ’443 at 2:32-39.

Specifically, the patent explains that:

The associating step of this program storage device
further comprises: analyzing the search result to
produce at least one keyword; using the keyword to search
for the associated advertisement within the repository;
37

identifying the associated advertisement from the
repository having a word that matches the keyword as
related to the search result; and[] correlating the
associated advertisement with the search result.
Id.

Although acknowledging that this description of the matching

process appears in an embodiment, Chewy argues that because “it is
the only embodiment disclosed in the patent,” it nevertheless
“constitutes the proper construction of that claim.”

Chewy OB at

22. Additionally, Chewy cites testimony of the lead named inventor
on the patent, which Chewy characterizes as stating that “matching”
includes analyzing.

See Chewy RB at 20.

On both of these points, Chewy overstates the evidence.
First, while it is true that the specification only describes a
single preferred embodiment, the Federal Circuit as “expressly
rejected the contention that if a patent describes only a single
embodiment, the claims of the patent must be construed as limited
to that embodiment.”

Phillips, 415 F.3d at 1323; see also Warsaw

Orthopedic, Inc. v. Globus Med., Inc., 416 F. App’x 67, 69 (Fed.
Cir. 2011) (rejecting construction limiting the claim to the single
preferred

embodiment

where

“‘the

Summary

of

the

Invention’

describes various ‘aspects’ of the invention”).

Second, though

the

the

“matching”

of

his

inventor

“associating”
testimony

acknowledged
steps,

merely

the

reflect

overlap
cited
his

between
portions

belief

that

and

deposition

“matching,”

like

“associating,” involves “correlating the associated advertisement
38

with the search result” – not necessarily that “matching” involves
a separate “analyzing” step.

See Emens Tr. at 48:9-24 54:6-1,

124:21-125:10.3
IBM, on the other hand, offers a construction that equates
the matching step in independent claim 15 with the identifying
step in independent claim 1.4

This construction reflects what both

parties essentially concede, that is – that claim 15’s matching
step refers to the same process of matching a word from the related
advertisements with a keyword from the search result item that is
set out in claim 1.
15.

Compare Patent ’443, claim 1, with id., claim

Moreover, IBM’s construction captures this parallel without

the addition of an additional step is not expressly stated in claim

Chewy also argues IBM disavowed the claim scope during
prosecution when the applicant referred to Figure 1, which
illustrates the preferred embodiment, in seeking to overcome the
cited prior art. But as IBM explains, the applicant referred to
this figure to explain that the invention identifies
advertisements from the search result, rather that the initial
search query as recited by the prior art referenced, not in
order to limit the scope of the claim to include a separate
analyzing step. See ECF 69-18 at 12 (“Importantly, [the prior
art] teaches deriving product data from an initial search
argument, and determining a logical fit to the initial search
argument. The present invention discloses, teaches, and claims
identifying associated advertisement from the search result, not
the search argument.”); see also Baxalta Inc. v. Genentech,
Inc., 972 F.3d 1341, 1348 (Fed. Cir. 2020) (“in order for
prosecution disclaimer to attach, the disavowal must be both
clear and unmistakable”)
3

Although IBM,
construction is
support of this
construction is
4

in the first instance, argues that no
necessary, it fails to offer any argument in
position and thus effectively concedes that
appropriate.
39

1.

Finally, IBM’s construction – unlike Chewy’s construction –

does not eliminate references back to the preamble (through the
replacement of the words “said” with the articles “an”), nor does
it unnecessarily change the plural “search result items” and
“advertisements” into the singular.

As such, IBM’s construction

hews closer to the language of the specification.
Accordingly, the Court adopts IBM’s construction of this
term, to wit, “identifying said related advertisements from said
information repository having a word that matches a keyword from
said search result items.”
D. Claim Constructions for Patent ’034
The

claim

construction

issues

discussed

in

this

section

relate to the following four independent claims of Patent ’034, as
well as a number of dependent claims:
Claim 1:
A method in a data processing system for
presenting a set of objects on a display within the data
processing system, the method comprising: responsive to
detecting movement of a pointer over an object within
the set of objects, identifying an object for the object,
wherein the object type is one of a plurality of object
types, and wherein more than one object in the set of
objects may have a same object type; and magnifying
presentation of the object based on the object type of
the object.
Claim 11:
A method in a data processing system for
presenting
information,
the
method
comprising:
monitoring for a change in focus on the information from
a first portion of the information to a second portion
of the information; identifying a context of the second
portion of the information, wherein the context is one
of a plurality of contexts, and wherein more than one
portion of information may have a same context; and
40

magnifying presentation of the information based on the
context of the second portion of the information.
Claim 29: A data processing system for presenting a set
of objects on a display within the data processing system
comprising: identifying means, responsive to detecting
movement of a pointer over an object within the set of
objects, for identifying an object type for the object,
wherein the object type is one of a plurality of object
types, and wherein more than one object in the set of
objects may have a same object type; and magnifying means
for magnifying presentation of the object based on the
object type of the object.
Claim 39:
A data processing system for presenting
information comprising: monitoring means for monitoring
for a change in focus on the information from a first
portion of the information to a second portion of the
information; identifying means for identifying a context
of the second portion of the information second, wherein
the context is one of a plurality of contexts, and
wherein more than one portion of information may have a
same context; and magnifying means for magnifying
presentation of the information based on the context of
the second portion of the information.
1. “object type(s)” (claims 1, 8, 29)
IBM’s Proposal
[no construction necessary]

Chewy’s Proposal
type(s) of object(s) (e.g., a
graphic object, image object,
video object, text object, or
audio object)

“[A] court may not simply rely on the ‘ordinary’ meaning of
a term if that ordinary meaning does not resolve the parties’
dispute.” Simo Holdings Inc. v. Hong Kong Ucloudlink Network Tech.
Ltd., 346 F. Supp. 3d 598, 602 (S.D.N.Y. 2018).

IBM argues that

no construction is needed because the term “object type(s)” is
41

readily

understood.

But

as

Chewy

explains

in

its

brief,

construction is required in order to resolve the parties dispute
as to whether, for example, various images can be considered
different object types because they differ in terms of a certain
attribute in the source code.

See Chewy OB 25-26.

Chewy’s proposed construction primarily seeks to provide
meaning by offering examples of the sort of different types of
objects contemplated by the patent.

See, e.g., Simo Holdings, 346

F. Supp. 3d at 609 (construing term to include examples); IPXL
Holdings, L.L.C. v. Amazon.com, Inc., 333 F. Supp. 2d 513, 524
(E.D. Va. 2004) (same).

Specifically, the proposed construction

adopts a list of examples consistent with the examples provided of
object types in the specification itself. See Patent ’034 at 4:5759 (“object type” is “for example, a text object, an image object,
and an audio object”); id. at 5:66-67 (“Each object is magnified
based on its object type, such as text or image.”).
IBM raises two main points in response.

The first is that it

is inappropriate to limit the scope based on embodiment examples,
particularly where the language used is expressly exemplary in
nature.

The second is that the construction is inconsistent with

the narrower claim 2, which recites “The method of claim 1, wherein
the object type is one of a graphic object, image object, video
object, text object and an audio object.”

42

Chewy’s proposed construction, however, both is true to the
specification

and

helpfully

clarifies

understood in the relevant context.

how

the

term

would

be

Contrary to IBM’s position,

the construction does not inappropriately limit the “object types”
to those exemplary types but rather integrates those helpful
examples from the specification into the claim. Nor does it create
conflict with claim 2, because the construction makes clear the
terms are only examples, thus contemplating that some object types
may be covered that extend beyond the scope to which claim 2 is
explicitly limited.
Accordingly, the Court adopts Chewy’s proposed construction,
to wit, “type(s) of object(s) (e.g., a graphic object, image
object, video object, text object, or audio object).”
2. “context(s)” (claims 11, 18, 20, 39, 46)
IBM’s Proposal

Chewy’s Proposal

way(s) in which information is object
information
type(s)
being presented in a data (e.g.,
textual
information,
processing system
graphic
information,
image
information, video information,
or audio information)
The parties dispute regarding the construction of this term
is

largely

type(s).”

duplicative

of

their

dispute

regarding

“object

Seeking a broad construction, IBM relies on a passage

of the specification stating that “these[] different object types
are examples of different contexts for information being presented
43

in the data processing system.”

Patent ’034 at 4:59-61.

IBM

argues that this sentence speaks to the fact that context may
include

“object

types”

but

“information being presented.”

is

also

broader,

including

other

Id. 4:59-61.

Chewy, on the other hand, argues that the specification uses
the terms “object type(s)” and “context(s)” interchangeably, and
thus proposes a construction that reflects as much.
Chewy cites various portions of the specification.

In support,

See, e.g., id.

at 4:54-57 (“The present invention provides a method, apparatus,
and

computer

implemented

instructions

for

magnifying

objects

presented in a data processing system based on the context of the
objects.”); id. at 10:29-33 (“[T]he context takes the form of text
objects,

image

objects,

and

audio

objects.

Of

course,

the

mechanism of the present invention may be applied to other types
of context, such as, for example, a video object, and a graphic
object.”); id. at 6:19-23 (“[P]references may be set for context
having object types of a text object, an image object, and an audio
object.”); id. at 7:19-24 (“[I]f the context is a text object, the
object is magnified by changing the font size and/or font type of
the text within the text object. If the object is an audio object,
the object may be magnified by increasing the volume at which the
audio object is presented.”)
“Although there is a presumption that different words used in
patent claims do carry distinct meanings, it is only a presumption
44

and a presumption may be overcome.”

Helmsderfer v. Bobrick

Washroom Equip., Inc., 2007 WL 2407048, at *9 (S.D. Ohio Aug. 20,
2007), aff'd, 527 F.3d 1379 (Fed. Cir. 2008).

Based on the way

the way in which “context(s)” is used in the specification, it
appears that Chewy’s construction is truer to how the term as used
here would be understood by a skilled artisan.
As such, the Court adopts Chewy’s proposed construction, to
wit,

“object

information

type(s)

(e.g.,

textual

information,

graphic information, image information, video information, or
audio information).”
3. “magnifying the information is performed selectively such
that only a selected context is magnified” (claim 20)
IBM’s Proposal

Chewy’s Proposal

[no construction necessary]

Chewy

argues

that

[indefinite]

“neither

Patent

’034

claims

nor

the

specification provide sufficient guidance as to what ‘a selected
context’ is or how a context is selected for magnification.” Chewy
OB at 27.

In contrast, IBM argues that the claim term uses common

words, rather than terms of art that need construction, and that,
relying on the ordinary meanings of the terms, the claim language
at issue is clear about the scope of the invention. In particular,
IBM points to a passage from the specification that explains how

45

selection operates using a text magnification example. The passage
states, in full:
In these examples, the font size is larger than the
original font size for text 302.
In this example, a
preference has been set such that an object is defined
to be a word. Text 302 has an object type of text object
in these examples.
Of course, other settings may be
selected in which the object is, for example, a group of
words, a sentence, a line, a part of a line, or a
paragraph.
In this example, a group of words may be
words adjacent to the selected word or some number of
words based on a user preference.
With respect to the
amount of text that is selected to be an object, this
text may be defined in a number of ways including using
text delineation tags, such as, for example, hypertext
markup language (HTML) codes in a browser.
Patent ’034 at 5:24-36 (emphasis added).

As IBM notes, this

passage describes how to selectively group information together so
that just the desired content will be magnified, whether it
comprises a word, sentence, or paragraph.

This comports with the

ordinary meaning of the word “to select,” that is, “to choose from
a number or group” or “pick out.”
Online

Dictionary,

See “Select,” Merriam-Webster
https://www.merriam-

webster.com/dictionary/select (last visited October 26, 2021).
Chewy responds that the cited passage describes the process
for creating a text object, not the processes for defining a
selected context.

But, as discussed above and as Chewy itself

advocated, “context” is used interchangeably with “object” by the
patent — and here the process for creating a text object is an act

46

of defining the selected context.

See Patent ’034 at 5:32-33

(discussing “the amount of text that is selected to be an object”).5
Accordingly,

the

Court

holds

that

no

construction

is

necessary and that Chewy has not met its burden to establish that
the claim term is indefinite.
4. The “identifying means” terms (claims 29, 39)
Term
“identifying means .
. . for identifying
an object type for
the object” (claim
29)

IBM’s Proposal

Function:
Function:
identifying
an identifying
an
object type for the object type for the
object
object
Structure:
a
computer system with
program
code
for
detecting
pointer
movement over a new
object
to
magnify
and determining the
object type of the
object

“identifying
means
for
identifying
a
context
of
the
second
portion
of
the
information
second” (claim 39)

Chewy’s Proposal

See
Fig.
6
and
accompanying text
Function:
identifying
a
context
of
the
second
portion
of
the information

Structure:
corresponding
structure
(indefinite)

no

Function:
identifying
a
context
of
the
second
portion
of
the information

Structure:
a Structure:
computer system with corresponding
program
code
for

no

Chewy also cites conclusory statements from its expert’s
declaration, which IBM seeks to challenge in part by contrasting
the statements of Chewy’s expert in this proceeding with
testimony in the inter partes review proceeding regarding this
patent. Because no weight is accorded to conclusory statements
of an expert, the Court need not address these arguments.
47
5

detecting
pointer structure
movement over a new (indefinite)
portion
of
information
to
magnify
and
determining
the
context
of
the
portion
of
information
See
Fig.
6
and
accompanying text
The parties agree that these phrases are means-plus-function
phrases.

Under 35 U.S.C. § 112(f) (formerly § 112, ¶ 6), means-

plus-function claiming occurs when an element in a claim is a
“means or step for performing a specified function without the
recital of structure, material, or acts in support thereof . . .
.”

The “claim shall be construed to cover the corresponding

structure, material, or acts described in the specification and
equivalents thereof.”

Id.

“The construction of a means-plus-

function limitation follows a two-step approach.”

Omega Eng’g,

Inc. v. Raytek Corp., 334 F.3d 1314, 1321 (Fed. Cir. 2003).

The

first step requires identifying the function, “staying true to the
claim

language

and

the

limitations

expressly

recited

by

the

claims.” Id. The second step is “ascertain[ing] the corresponding
structures
functions.”

in

the

written

description

that

perform

those

Id.

Here, the parties agree on the claimed function, but disagree
on the structure that performs that function.
48

“In cases involving

a computer-implemented invention in which the inventor has invoked
means-plus-function claiming,” the structure disclosed in the
specification

must

be

“more

than

simply

a

general

purposes

computer.”

Aristocrat Techs. Australia Pty Ltd. v. Int’l Game

Tech.,

F.3d

521

1328,

1333

(Fed.

Cir.

2008).

inventions “require disclosure of an algorithm.”

Rather,

such

EON Corp. IP

Holdings LLC v. AT&T Mobility LLC, 785 F.3d 616, 623 (Fed. Cir.
2015). But, importantly, the algorithm need not be actual computer
code.

Rather, all that is required is a step-by-step procedure

for accomplishing a given result.”

Typhoon Touch Techs., Inc. v.

Dell, Inc., 659 F.3d 1376, 1385 (Fed. Cir. 2011).

This can be

expressed “in any understandable terms including as a mathematical
formula, in prose, . . . or as a flow chart, or in any other manner
that provides sufficient structure.”

Finisar Corp. v. DirecTV

Grp., 523 F.3d 1323, 1340 (Fed. Cir. 2008).
IBM argues that the specification sufficiently outlines the
corresponding structure through Figure 6 and the accompanying
text, which provide the structure for detecting cursor or pointer
movement over a new object to magnify and determining the object
type of the object:

49

Patent ’034, Fig. 6.

This process is described in words in the

specification with reference to the flow chart. Id. at 7:32-36,
42-45, 52-55, 61-65.

Because this flowchart and accompanying

text describes in simple steps how to monitor for a change in
focus, IBM argues that the term is not indefinite.
Chewy argues that the flowchart in Figure 6 is merely a visual
construct describing the process flow of the claim function itself,
which is insufficient to provide the corresponding structure.

In

support, it likens this case to In re Aoyama, 656 F.3d 1293, 1298
(Fed. Cir. 2011), where the Federal Circuit held that a figure
that provided only “a high level of process flow” failed to
disclose an algorithm sufficiently.

As the court in Aoyama

explained, the flowchart in dispute there simply “present[ed]
50

several results to be obtained, without describing how to achieve
those results.”

Id.

Figure 6 is comparable, Chewy argues, in

that it provides different examples of results from identifying
the nature of the object — that is, steps “OBJECT IS TEXT?” (602),
“OBJECT IS IMAGE?” (606) and “OBJECT IS AUDIO?” (610) — without
explaining in any detail how to identify if the object is an image
or text or audio.
The Court agrees.

Because the flowchart and accompanying

text fail to provide even a high-level description of the steps
for identifying the object type or context, the specification does
not adequately disclose an algorithm. Accordingly, the Court finds
that claims 29 and 39 are indefinite.

Because the Court finds

these terms indefinite, it does not address the other disputed
claim

constructions

relating

only

to

these

claims

or

their

dependent claims.
E. Claim Constructions for Patent ’831
The

claim

construction

issues

discussed

in

this

section

relate to claim 1 of Patent ’831, as well as five dependent claims:
Claim 1: A computer implemented method in a computer
system for presenting a page, the method comprising:
receiving a page; rendering the received page on a
virtual display to form a rendered page; determining
whether the rendered page falls within a proximity
policy; responsive to determining that the rendered page
does not fall within the proximity policy, reformatting
the rendered page on the virtual display to fall within
the proximity policy to form a reformatted page, wherein
the proximity policy defines a minimal spacing between
51

links of a plurality of links within the page; and
presenting the reformatted page to a user.
1. “virtual display” (claim 1)
IBM’s Proposal

Chewy’s Proposal

a web browser unit where webpage a display onto which the page is
content is projected by the projected prior to displaying it
server for display based on to the user
processed
language
interpretation
The primary dispute here is whether the “virtual display”
should be construed broadly to cover the actual display presented
to the user via the user’s web browser (as IBM contends), or
whether it should be limited to a display onto which the page is
projected “prior to displaying it to the user” and not itself ever
made visible to the user (as Chewy contends).
Chewy argues that its construction is consistent with the
claim

language

and

the

specification.

Claim

1

recites

the

following steps: (1) “rendering the received page on a virtual
display to form a rendered page”; (2) if the rendered page does
not fall within the proximity policy, “reformatting the rendered
page on the virtual display to fall within the proximity policy to
form a reformatted page,” and then (3) “presenting the reformatted
page to a user.”
the

received

page

Chewy argues that these steps make clear that
and

reformatted

page

are

rendered,

i.e.,

projected, on the “virtual display” prior to “presenting the
reformatted page to a user.”
52

In further support of this interpretation, Chewy cites two
pieces of intrinsic evidence.
introduction
invention

of

the

provides

a

The first is the language from the

specification
method

and

stating
system

that

for

“the

present

uncluttering

and

reformatting a web page before presenting the web page to a user.”
Patent ’831 at 1:8-10 (emphasis added).

Generally, “[w]hen a

patent . . . describes the features of the ‘present invention’ as
a whole, this description limits the scope of the invention.”
Regents of the Univ. of Minn. v. AGA Med. Corp., 717 F.3d 929, 936
(Fed. Cir. 2013).

As such, this is strong evidence of meaning.

Second is the specification’s diagrams, including Figure 6, which
shows the “user” (610) only interacting with “the web browser”
(606) and not the “virtual display” (608):

53

See Patent ’831 at Fig. 6. Similarly, Figure 8 depicts the browser
rendering the document on the virtual display as a step prior to
the browser rendering the “document page,” presumably to the user:

Id. at Fig. 8.
54

First, with regard to the language of claim 1, IBM argues
that

the

fact

that

the

last

method

step

is

“presenting

the

reformatted page to a user” does not necessarily imply that the
first time the user sees any rendered page is when they are
presented the “reformatted page.”

Further, the patent teaches a

preferred embodiment where the virtual display (608) “may be
internal to web browser 606 and not visible to user 610.”
7:53-57 (emphasis added).

Id. at

IBM argues that the use of the word

“may” indicates that the virtual display need not be invisible.
Second,

IBM

cites

two

pieces

of

extrinsic

evidence:

deposition testimony of Chewy’s expert in which — according to IBM
— the expert concedes that that a virtual display need not be
“invisible or visible,” IBM RB at 36 (quoting ECF No. 73-2 at
130:15-24), and the deposition testimony of one of the named
inventors, who stated that “the patent says the virtual display
may not be internal,” in which case “it would be visible to the
user,” ECF No. 73-2 at 153:17-23.
Finally, IBM argues that Chewy’s proposed construction uses
“display” in a contradictory manner, because it uses the word
“display” to refer to something it contends is not displayed to
the user.
IBM instead offers a less specific description of virtual
display as a unit of the web browser that — drawing language from
the specification — is “involved in presenting web pages to a user
55

based on results from language interpretation.”

Id. at 6:54-57.

Without contesting that the virtual display is a unit of the web
browser, Chewy argues that this construction fails to distinguish
the “virtual display” from the “actual display” on the web browser
that is ultimately seen by the user, essentially rendering the
word “virtual” superfluous.

See Mangosoft, Inc. v. Oracle Corp.,

2004 WL 2193614, at *8 (D.N.H. Sept.21, 2004), aff’d, 525 F.3d
1327 (Fed.Cir.2008) (“To avoid rendering the word ‘local’ entirely
superfluous (or, at best, redundant), it must be given a meaning
other than ‘coupled.’”).
As discussed above, the intrinsic evidence strongly supports
a construction in which the virtual display is a “display” internal
to the browser and not shown directly to the user.

The text of

the specification that IBM relies on to refute this interpretation
— stating that the virtual display “may” be internal and not
visible to the user — in no way contradicts this interpretation,
particularly because the fact that something may occur does not
necessarily imply that it also may not occur.
Moreover, the extrinsic evidence cited by IBM is insufficient
to overcome the intrinsic evidence.

The testimony from Chewy’s

expert is far more ambiguous when placed in its context, as it
appears that his comment that a display could be “invisible or
visible”

referred

to

displays

generally

“virtual display” as used in the claim.
56

and

not

specifically

See ECF No. 73-2 at 130:9-

24.

Moreover, in the quoted testimony of the inventor, the

inventor was not offering his understanding of the claim, but
rather purporting to report what the patent itself says — “the
patent says the virtual display may not be internal.”
153:17-23.

ECF 73-9 at

But here the inventor misspoke, as the patent says the

opposite – that is, that the virtual display may be internal.

As

such, this external evidence is insufficient to overcome the weight
of the intrinsic evidence from the specification.
Accordingly, the Court adopts Chewy’s proposed construction,
but with a modification to address the potential confusion of
referring to a “display” that is not actually displayed to the
user.

The construction then reads as follows: “a web browser unit

onto which the page is projected prior to displaying it to the
user.”
2. “proximity policy” (claims 1-4, 8, 9)
IBM’s Proposal

Chewy’s Proposal

policy defining spacing rules

user-defined policy specifying
spacing rules for hyperlinks

The parties’ proposed constructions present two issues for
determination: (1) whether the “proximity policy” must be “userdefined” and (2) whether the policy-defined spacing rules must be
limited to “spacing rules for hyperlinks.”

Chewy argues that both

of these limitations apply, while IBM argues that neither do.
57

a. User-defined
Chewy argues that the patent requires a user to set the
criteria

for

the

“proximity

policy.”

As

Chewy

notes,

the

specification describes various criteria that the user may use to
define the “proximity policy,” stating, for example, that “a user
may determine that vertical and horizontal spacing between any two
or more hyperlinks is . . . at least 15 pixels.”
7:65-8:25.

Patent ’831 at

The “Summary of the Invention” also clearly describes

a role for the user, stating that “[t]he policy structure of the
present invention allows the user to specify the appearance of the
electronic document page.”

Id. at 3:18-20; see also id. at 3:20-

23 (“The policy structure as defined by the user is stored such
that when the user returns to the page, the page may be displayed
according to the policy structure defined by the user.”).
Chewy also points to the prosecution history. Specifically,
in the context of distinguishing the prior art, the patentee
explained that, in contrast to a “protocol,” “a policy is a rule
or set of rules specified by a user.”

ECF No. 72-9 at 11.

It

continues, “[i]n the instant application a policy is a rule that
allows the user to specify the appearance of an electronic document
page.”

Id.

This

provides

strong

evidence

supporting

the

construction of “proximity policy” such that it must be userdefined.
F.3d

See Hockerson-Halberstadt, Inc. v. Avia Group Int’l, 222

951,

957

(Fed.

Cir.

2000)
58

(“The

prosecution

history

constitutes a public record of the patentee’s representations
concerning the scope and meaning of the claims, and competitors
are entitled to rely on those representations . . . .”)
IBM, in support of its broader construction, offers three
responses to Chewy’s arguments.

First, IBM points out that the

passage from the specification cited by Chewy describing the
criteria that can be used to set the proximity policy merely states
that a proximity policy “may be set by a user.”
7:65-8:8.

Patent ’831 at

Because “[t]his language is permissive,” IBM argues

that, it is not “the type of clear language necessary to import a
limitation into the claims.”

AbbVie Inc. v. Mylan Pharms. Inc.,

2015 WL 3505094, at *3 (D. Del. June 3, 2015).
Next, IBM argues that the Chewy mischaracterizes the passage
from the “Summary of the Invention,” which states that “[t]he
policy structure of the present invention allows the user to
specify the appearance of the electronic document page.”
’831 at 3:18-20.

Patent

According to IBM, this passage relates to the

“policy structure,” which is distinct from the “proximity policy.”
However, IBM offers no explanation for what “policy structure”
refers to if not the proximity policy.

Instead, IBM characterizes

the paragraph of the “Summary of the Invention” in which the phrase
“policy structure” appears as describing an “unclaimed concept”
that is distinct from a proximity policy.

59

IBM RB at 38.

Finally, IBM argues that Chewy’s construction would render
claim 11, which depends on claim 1, superfluous because claim 11
adds to claim 1 the requirement of “modifying the proximity policy
according to a user preference” — an addition that would accomplish
no further limitation if “proximity policy” was already defined to
mean that it was user-defined.
While IBM’s arguments are not without some import, the Court
is persuaded that Chewy’s construction is ultimately the correct
one.

“[L]anguage appear[ing] in both the Abstract and the Summary

of the Invention, . . . sections meant to describe the overall
invention,” provide strong evidence as to the scope of the claims.
Wireless Protocol Innovations, Inc. v. TCT Mobile, Inc., 771 F.
App'x 1012, 1018 (Fed. Cir. 2019).
Abstract

clearly

contemplate

Here, both the Summary and the

that

the

user

determining the “policy” that formats the page.

has

a

role

in

Contrary to IBM’s

attempt to characterize the “policy structure” as an “unclaimed
concept,” it is clear that the paragraph at issue is describing
the “mechanism” by which the “method” described in the prior
program is carried out; moreover, it states that the mechanism
“includes a preprocessing process and a policy structure for
reformatting an electronic document page.”
23.

Patent ’831 at 3:15-

Read in context, this suggests that the “policy structure” is

a mechanism embodying the proximity policy.

Additionally, and

contrary to IBM’s argument, the use of permissive language in the
60

specification appears to contemplate that a user may decline to
set a proximity policy, not that the proximity policy may be set
by someone or something other than the user.
More problematic for Chewy’s construction is the risk that
claim 11 be rendered superfluous.

However, as Chewy explained at

oral argument, claim 11 can be understood as “add[ing] another
step where,” after the rendered page is reformatted according the
proximity policy, the user “can then modify the proximity policy
to be something different and then run the steps again.”
98.

Tr. at

Indeed, this interpretation aligns with the language of the

specification, which describes the user as, in the first instance,
“defin[ing]” the policy, rather than modifying it.
’831 at 3:20-23.

See Patent

Accordingly, the Court agrees with Chewy that a

“proximity policy” must be “user-defined.”
b.

Hyperlinks

Chewy argues that the specification is clear that a key
component of the alleged invention is that it “uses a proximity
policy to reformat regions of a web page which has cluttered
hyperlinks.”

Patent

’831

at

7:64-65.

As

Chewy

notes,

the

specification provides that “[w]eb browser 606 may determine that
hyperlinks

.

.

.

are

cluttered

based

on

several

criteria,”

including “the number of hyperlinks per unit of measure, vertical
spacing

between

hyperlinks.”

hyperlinks

and/or

Id. at 7:57-62.
61

horizontal

spacing

between

IBM, on the other hand, argues that the a “proximity policy”
does not necessarily specify “spacing rules for hyperlinks,” that
is, IBM disputes that the rules need to be for spacing and that
they must be for hyperlinks.

In support of its position, IBM

points to claim 3, which, IBM argues, covers many different types
of proximity policies, only some of which involve spacing of links.
See Patent ’831, Claim 3 (“the proximity policy includes at least
one of a number of links, a spacing of links within the plurality
of links, a font setting for the plurality of links, and a number
of links per unit area” (emphasis added)).

IBM also points to

claim 13, which it argues demonstrates that the proximity policies
can be about other types of links beyond hyperlinks.

See id.,

Claim 13 (“reformatting the rendered page and set of links using
the proximity policy to form a reformatted page on the virtual
display includes at least one of a hypertext markup language (HTML)
tag and a cascading style sheet”).
However, as Chewy argues in response, claims 3 and 13 are
dependent

claims

which

add

additional

requirements

to

the

proximity policy as set out in claims 1 and 12, respectively.

And

one part of claims 1 and claims 12 is that “the proximity policy
defines a minimal spacing between links of a plurality of links
within the page.”

See id., Claim 1 & Claim 2.

This point clearly

shows that the proximity policy must address spacing for links.
Moreover, in no part of the specification is there any suggestion
62

that the “links” referenced in the claim could be anything other
than hyperlinks.

Indeed, the specification introduces the term

“links” as a concept specific to Hypertext Markup Language (HTML),
making clear that the references to “links” are to hyperlinks.
See id. at 1:45-48.

Accordingly, the policy-defined spacing rules

must be limited to “spacing rules for hyperlinks.”
For

these

reasons,

construction, to wit,

the

Court

adopts

Chewy’s

proposed

“user-defined policy specifying spacing

rules for hyperlinks.”
MOTION TO AMEND CHEWY’S ANSWER TO COUNTERCLAIMS
The Court also takes this occasion to address Chewy’s
unopposed motion to amend its answer.

On September 10, 2021,

IBM filed a motion to strike the Third, Fourth, and Fifth
Affirmative Defenses in Chewy’s Answer, ECF No. 63.
76.

See ECF No.

The basis for IBM’s motion is that the identified

affirmative defenses were stated in conclusory fashion without
any supporting factual allegations.

After the parties met and

conferred, Chewy elected not to oppose IBM’s motion to strike.
Instead, it has filed an unopposed motion for leave to amend its
affirmative defenses to address IBM’s motion to strike and to
add a new affirmative defense.

Specifically, Chewy seeks to

(1) drop its Third Affirmative Defense; (2) amend its Fourth
Affirmative Defense to add factual pleadings; (3) amend its
Fifth Affirmative Defense to drop the defense of res judicial
63