CHEWY, INC. v. IBM

Court: US Court of Appeals for the Federal Circuit

Docket: 22-1756

Opinion Date: March 5, 2024

Judge: Moore

Areas of Law: Intellectual Property, Patents

In the case before the United States Court of Appeals for the Federal Circuit, Chewy, Inc., (Chewy) brought a suit against International Business Machines Corp. (IBM) seeking a declaratory judgment of noninfringement of several IBM patents. In response, IBM filed counterclaims alleging Chewy’s website and mobile applications infringed the patents.

The patents in question relate to improvements in web-based advertising. The United States District Court for the Southern District of New York granted Chewy's motion for summary judgment of noninfringement of claims of the ’849 patent and also granted Chewy's motion for summary judgment that claims of the ’443 patent are ineligible under 35 U.S.C. § 101. IBM appealed both summary judgment rulings.

The Court of Appeals affirmed in part, reversed in part, and remand for further proceedings. The Court affirmed the lower court's decision on noninfringement of the ’849 patent, ruling that Chewy's website and applications did not infringe certain claims of the patent because they didn't perform the specific limitation of "selectively storing advertising objects" as described in the patent.

However, the Court reversed the lower court’s grant of summary judgment of noninfringement of claim 12 of the ’849 patent, concluding that there is a genuine dispute of material fact regarding whether Chewy "establish[es] characterizations for respective users."

As for the ’443 patent, the Court affirmed the lower court's ruling that the claims are ineligible under § 101. The patent claims, according to the Court, could not transform the abstract idea of identifying advertisements based on search results into patent-eligible subject matter.

MAXELL, LTD. v. AMPEREX TECHNOLOGY LIMITED

Court: US Court of Appeals for the Federal Circuit

Docket: 23-1194

Opinion Date: March 6, 2024

Judge: Taranto

Areas of Law: Intellectual Property, Patents

In a dispute between Maxell, Ltd. and Amperex Technology Limited, the United States Court of Appeals for the Federal Circuit was asked to review a decision by the United States District Court for the Western District of Texas. The case involved Maxell's U.S. Patent No. 9,077,035, which pertains to a rechargeable lithium-ion battery. Maxell had asserted that Amperex infringed upon its patent, while Amperex contested the patent's validity. The district court had deemed the claim language defining a transition metal element in the patent to be indefinite, ruling in favor of Amperex.

The Court of Appeals, however, reversed this decision. It found that the two limitations of the claims did not contradict each other. The first limitation stated that the transition metal element must contain cobalt, nickel, or manganese, while the second requirement stated that the transition metal element must contain cobalt at a content of 30% to 100% by mole. The court found it possible for a transition metal element to meet both these requirements, thus concluding that there was no contradiction. The court emphasized that all limitations of a claim must be considered to understand the invention's scope. The case was remanded for further proceedings.

PFIZER INC. v. SANOFI PASTEUR INC.

Court: US Court of Appeals for the Federal Circuit

Docket: 19-1871

Opinion Date: March 5, 2024

Judge: Lourie

Areas of Law: Government & Administrative Law, Intellectual Property, Patents

This case involves an appeal by Pfizer Inc. from decisions made by the U.S. Patent and Trademark Office Patent Trial and Appeal Board (the Board). The Board concluded that claims 1–45 of U.S. Patent 9,492,559, owned by Pfizer and related to immunogenic compositions comprising conjugated Streptococcus pneumoniae capsular saccharide antigens for use in pneumococcal vaccines, were unpatentable. The Board also denied Pfizer’s proposed amendments to the claims.

Pfizer's first challenge pertained to the Board’s conclusion regarding the molecular weight of the glycoconjugate in the patent, arguing that the Board incorrectly applied the "result-effective variable doctrine." The court disagreed, upholding the Board's decision that the molecular weight was a result-effective variable that a person of ordinary skill in the art would have been motivated to optimize.

Pfizer's second challenge related to the Board’s finding that the compositions of additional claims incorporating more specific glycoconjugates would have been obvious. The court disagreed with Pfizer's argument that without examples showing the claimed glycoconjugates would have each been immunogenic, there would have been no reasonable expectation of success.

Thirdly, Pfizer challenged the Board’s denial of its motions to amend the claims. The court affirmed the Board's decision on some of the proposed claims but vacated the decision on others, remanding them for further consideration due to the Board’s lack of clarity.

Lastly, Pfizer challenged the Patent and Trademark Office’s Director Review procedure, alleging it violated the Administrative Procedure Act (APA). The court rejected this argument, finding any potential APA violation was harmless as Pfizer had not demonstrated prejudice.

Therefore, the court affirmed the Board’s decisions in part, vacated them in part, and remanded the case back to the Board for further proceedings.