Patent Case Summaries | Week Ending March 8, 2024 | Alston & Bird
Chewy, Inc. v. International Business Machines Corp., No. 2022-1756 (Fed. Cir. (S.D.N.Y.) Mar. 5, 2024). Opinion by Moore, joined by Stoll and Cunningham.
IBM owns two patents that generally relate to improvements in web-based advertising. Chewy sued IBM seeking a declaratory judgment of noninfringement of both patents. After claim construction and discovery, Chewy moved for summary judgment of noninfringement of certain claims and separately moved for summary judgment that certain claims are ineligible under § 101. The district court granted both motions, and IBM appealed.
First, the Federal Circuit affirmed the district court’s determination of noninfringement because no reasonable factfinder could find that Chewy’s accused website or mobile applications perform a claim limitation requiring “selectively storing advertising objects.” IBM argued that the district court improperly construed this limitation to require that advertising objects are “pre-fetched,” but the Federal Circuit disagreed. The written description “consistently describes the invention as including pre-fetching of advertising objections,” and the prosecution history included an explanation that selectively storing advertising objects means that advertising objects are pre-fetched.
IBM next argued that even under the adopted construction, there are material factual disputes precluding summary judgment. The Federal Circuit disagreed except as to dependent claim 12, which requires “establishing characterizations for respective users based on [certain] compiled data.” Addressing claim 12 in particular, the court ruled that Chewy’s privacy policy and a “Currently Launched Strategies” document both create a genuine dispute of material fact about whether Chewy “establish[es] characterizations for respective users.” The Federal Circuit therefore reversed and remanded as to claim 12.
Turning to the district court’s ruling on patent ineligibility, the Federal Circuit affirmed. Applying the two-step Alice framework, the Federal Circuit ruled at step one that the claims are directed to an abstract idea, as they “broadly recite correlating advertisements with search results using a generic process.” The claims “merely recite the concept of identifying advertisements based on search results, without any specificity as to how this is accomplished.”
Under Alice step two, the Federal Circuit held that the claims fail to recite an inventive concept. None of the claim limitations, individually or as an ordered combination, constituted “an inventive concept sufficient to transform the claimed abstract idea of identifying advertisements based on search results into patent-eligible subject matter.” The claims simply “recite the generic process of obtaining search results to identify relevant advertisements and thus do not contain an inventive concept.”
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Pfizer Inc. v. Sanofi Pasteur Inc., et al., Nos. 2019-1871, -1873, -1875, -1876, -2224 (Fed. Cir. (PTAB) Mar. 5, 2024). Opinion by Lourie, joined by Bryson and Stark.
Pfizer owns a patent directed to immunogenic compositions for use in pneumococcal vaccines. Across five IPR petitions, Merck and Sanofi separately challenged all claims of the Pfizer patent as obvious over the prior art. The Patent Trial and Appeal Board instituted review and issued final written decisions that collectively found all claims unpatentable. The Board also denied contingent motions to amend filed by Pfizer, finding that Merck and Sanofi had each demonstrated that the proposed substitute claims were unpatentable. Pfizer appealed.
The Federal Circuit affirmed the Board’s conclusion that all claims were unpatentable as obvious. First, the court rejected Pfizer’s argument that the Board erred in applying the result-effective variable doctrine. Pfizer argued that the doctrine is appropriate only when there is a complete overlap between a range in the prior art and a claimed range. The Federal Circuit disagreed. An overlap between a claimed range and a prior art range “creates a presumption of obviousness that can be rebutted with evidence that the given parameter was not recognized as result-effective.” But this does not mean the determination whether a variable is result-effective “is only appropriate when there is such an overlap.” A routine-optimization analysis considers whether skilled artisans “would have been motivated, with a reasonable expectation of success, to bridge any gaps in the prior art to arrive at a claimed invention.” “Where that gap includes a parameter not necessarily disclosed in the prior art, it is not improper to consider whether or not it would have been recognized as result-effective.” “If so, then the optimization of that parameter is normally obvious.”
Second, the Federal Circuit held that substantial evidence supports the Board’s unpatentability findings. The court rejected Pfizer’s argument that, because the unpredictability of the art is high, and because the prior art lacks examples showing the key features, there would have been no reasonable expectation of success. The Federal Circuit explained that a prior art reference “is not limited to its specific working examples,” and “the expectation of success need only be reasonable, not absolute.”
Third, the Federal Circuit affirmed-in-part and vacated-in-part the Board’s denial of Pfizer’s motions to amend certain claims.
As to one proposed amended claim, the Federal Circuit affirmed the Board’s conclusion that it would have been obvious to arrive at the claimed composition with a reasonable expectation of success. Pfizer argued that “where the prior art contains evidence directly showing that others failed to achieve the claimed invention (as here), there can be no finding of obviousness.” The Federal Circuit disagreed that this is the case here. Although the prior art did not cover all variations, “a finding of obviousness does not require a guarantee of success.”
As to the remaining proposed amended claims, which contained a further requirement, the Federal Circuit vacated and remanded because the Board did not provide a “reasoned basis” for its finding “sufficient to permit meaningful judicial review.” Although Sanofi and the PTO argued that the same evidence addressed earlier also supported obviousness of these claims, the Federal Circuit “[could not] say, with any modicum of certainty, that that is the case.”
Lastly, the Federal Circuit addressed Pfizer’s argument that the PTO’s Director Review procedure violates the APA because it was not promulgated through notice-and-comment rulemaking. The court explained that “even if the PTO’s guidance governing Director Review was not exempt from notice-and-comment rulemaking, any error by the PTO in that regard would be harmless absent a showing of prejudice by the party challenging the agency action.” Pfizer did not show such prejudice here, and so “any APA violation by the PTO was harmless and cannot serve as a basis to reverse or vacate the Board’s decisions.”
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Maxell, Ltd. v. Amperex Technology Ltd., No. 2023-1194 (Fed. Cir. (W.D. Tex.) Mar. 6, 2024). Opinion by Taranto, joined by Prost and Chen.
Maxell owns a patent that describes and claims a rechargeable lithium-ion battery. The claims require a transition metal element M1 “selected from Co, Ni and Mn,” and the claims also require that “the content of Co” in M1 is from 30% by mole to 100% by mole.
Amperex asserted that the claims are indefinite because these two claim limitations recite a contradiction. The district court held a claim construction hearing and agreed, reasoning that the first limitation does not require cobalt (because using nickel or manganese suffices) while the second limitation requires the presence of cobalt. As the court explained, “for an element to simultaneously be optional and required is a contradiction on its face.” The district court thus entered summary judgment for Amperex, and Maxwell appealed.
The Federal Circuit reversed, concluding that “there is no contradiction in the claim language at issue in this case.” The court explained that “it is perfectly possible for a transition metal element to meet both requirements,” and therefore the limitations are not contradictory, “even if there was a more artful way of stating the two requirements within the same claim.” The Federal Circuit stated that “it makes no difference, at least here, that the two requirements are placed in separate limitations” as “such placement does not alter the logical point that it is possible to meet both requirements, meaning there is no contradiction.” The Federal Circuit thus reversed and remanded the indefiniteness ruling and partial final judgment.
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