Chewy, Inc. v. Int'l Bus. Machs. Corp.

• Decision Date: 09 November 2021
• Docket Number: 21-cv-1319 (JSR)
• Citation: 571 F.Supp.3d 133
• Parties: CHEWY, INC., Plaintiff, v. INTERNATIONAL BUSINESS MACHINES CORPORATION, Defendant.
• Court: U.S. District Court — Southern District of New York

571 F.Supp.3d 133

CHEWY, INC., Plaintiff,

v.INTERNATIONAL BUSINESS MACHINES CORPORATION, Defendant.

21-cv-1319 (JSR)

United States District Court, S.D. New York.

Signed November 9, 2021

Joshua Lee Raskin, Allan Andrew Kassenoff, Julie Pamela Bookbinder, Cort Welch, Vimal Kapadia, Janice Ye, Li-Yu Jade Chen, Greenberg Traurig, LLP, New York, NY, for Plaintiff.

Benjamin Joseph Rodd, Brian Matty, Edward B. Geist, Eliyahu Balsam, John Dao, Jun Tong, Karim Zeddam Oussayef, Tamir Packin, William Vieth, William Yau, Desmarais LLP, Goutam Patnaik, Denton US LLP, New York, NY, Michael Rhodes, Desmarais LLP, San Francisco, CA, for Defendant.

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, 116 S.Ct. 1384, 134 L.Ed.2d 577, (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.

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 web-based 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. ECF No. 1-1 (Patent ’849 ) at 1:16-28, 3:15-20. 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 with the service, user demographic and geographical location." 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. 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 ’443 describes systems and methods relating to associating search result items with similar or related advertisements. 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 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. See ECF No. 1-4 ("Patent ’034") at 11:13-22. 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.

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. Id. at 2:25-42. One prior art solution involved using keystrokes to navigate sequentially through the links on a given page. Id. Another involved magnifying portions of the webpage. Id. But these techniques were not intuitive. Id. In 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 "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 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

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