Magic Language in Patent Applications

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

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

Let’s start with eligibility of the ‘443 patent. The Federal Circuit affirmed the district court’s ruling that asserted claims 13, 15, 16, and 17 are ineligible under 35 U.S.C. § 101 as directed to the abstract idea of “identifying advertisements based on search results.” According to the court, the claims recite the concept “without any specificity as to how this is accomplished.”
Lets look at the claims here for a moment.  Claims 15-17 of the ‘443 patent recite a method for providing advertisements related to search result items. The method requires several steps. First, the search result items are matched with related advertisements, and the search result items that have matched advertisements are designated in some way. However, at this initial step, the claim does not identify how the matching or designation occurs. Second, for each designated search result item, a corresponding graphical user interface (GUI) is provided to allow the user to select that search result item.  This appears to be likely a pop-up screen, but again the claim does not recite how this GUI might be provided.  Third, when the user selects one of the designated search result items via its GUI, the related advertisements for that search result item are retrieved. Finally, the retrieved advertisements are formatted and displayed to the user. Claim 16 adds a further step of assigning an identifier to the user when the user submits the initial search query. This identifier allows the system to track the user’s actions (e.g., search queries and search result selections) during that search session. Claim 17 specifies that the related advertisements are advertisements for related products.
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 selection;
searching and retrieving said related advertisements for one of said search result items when said corresponding graphical user interface is selected by a user;
and, formatting and displaying said related advertisements upon selection.
16. The method of claim 15 further comprising assigning an identifier for said user when said user submits a query to said information repository.
17. The method of claim 15 wherein said related advertisements comprise related product advertisements.
At Alice step two, the court rejected IBM’s arguments that the claims contain inventive concepts. For instance, the claimed “information repository” for correlating ads with search results is merely a generic database performing well-known functions. Considering the elements as an ordered combination also did not provide an inventive concept, as the claims “do not recite any specific implementation of the abstract concept” The eligibility ruling was therefore affirmed.
= = =
On the ‘849 patent, the Federal Circuit affirmed the SDNY grant of summary judgment of non-infringement of claims 1, 2, 14, and 18, but reversed as to claim 12.




The ‘849 patent claims are directed to methods for presenting advertising content to users in an interactive service, such as a website. As described in the specification, the invention aim to avoid delays in presenting the requested application data to the user by “pre-fetching” the advertising content and storing it at the user’s computer before the user requests the associated application page. However, the claims themselves do not expressly require pre-fetching. And, importantly for this case, CHEWY’s accused process apparently does not pre-fetch.
Claim 1, which is representative of claims 2, 14, and 18, recites “selectively storing advertising objects at a store established at the reception system.” The Federal Circuit construed this limitation to require pre-fetching.  The court explained that:


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

During oral arguments, the judges repeatedly commented on how much the patentee had focused on pre-fetching.


Judge Stoll: Doesn’t your patent specification talk about how important it is? I mean, the way I read your patent specification, it says that it’s really important that you be able to pre-send down some advertisements. And the reason why you want to do that is so that your advertisements and your content aren’t being sent at the same time, creating a bandwidth problem.
Judge Moore: My big problem with your argument is really column three, right? And column three is called summary of the invention. So this is not a preferred embodiment. It’s the summary of the invention. And at column three, starting at line five-ish, you say briefly the method for presenting advertising in accordance with this invention. That’s like magic language. You know, the present invention is in accordance with this invention. That’s language that binds you, whether you like it or not. And then it goes through that paragraph and explains that advertising is prefetched. And so that is what bothers me the most is in the summary of your invention. Judge Stoll pointed out quite rightly the objects of your invention and how you’re basically showing the disadvantages of not prefetching advertising in the objects of your invention. Now, in the summary of your invention, you use this invention is language in the context of advertising being prefetched.


The court noted that during prosecution, the patentee stated that “selectively storing advertising objects” means “advertising objects are pre-fetched from the network and cached at the reception system in anticipation of being called for presentation” This prosecution history further supported the district court’s construction requiring “pre-fetching.”
In the end, the court did not find disavowal, but rather simply that the intrinsic evidence supports a particular interpretation of the claim language. “In light of the intrinsic evidence, we conclude ‘selectively storing advertising’ objects requires pre-fetching.”
But, the court contrasted claim 12 which does not recite the “selectively storing” or “pre-fetching” limitation. Instead, claim 12 focuses on targeted advertising by requiring the establishment of “characterizations” for respective users based on compiled user data. These characterizations, which can be based on the user’s interaction history and demographics, are then used to selectively supply advertisements to the user.
The important point here is that the patentee’s characterization of the invention requiring pre-fetching did not carry over into claim 12 because that claim did not have a textual hook within its claim language to associate with pre-fetching. While the specification and prosecution history emphasized the importance of pre-fetching advertising objects, claim 12 focused instead on the separate concept of establishing user-specific characterizations for ad targeting. Thus, the Federal Circuit found a genuine factual dispute regarding infringement of claim 12, as it lacked the pre-fetching limitation that doomed IBM’s infringement case on the other asserted claims.