IBM v. Booking Holdings Inc. ( 2019 )

NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
INTERNATIONAL BUSINESS MACHINES
CORPORATION,
Plaintiff-Appellant
v.
BOOKING HOLDINGS INC., FKA PRICELINE
GROUP INC., KAYAK SOFTWARE CORPORATION,
OPENTABLE, INC., PRICELINE.COM LLC,
Defendants-Appellees
______________________
2018-1574
______________________
Appeal from the United States District Court for the
District of Delaware in No. 1:15-cv-00137-LPS, Chief Judge
Leonard P. Stark.
______________________
Decided: May 22, 2019
______________________
KARIM ZEDDAM OUSSAYEF, Desmarais LLP, New York,
NY, argued for plaintiff-appellant. Also represented by
JOHN M. DESMARAIS, LAURIE STEMPLER.
JONATHAN S. FRANKLIN, Norton Rose Fulbright US
LLP, Washington, DC, argued for defendants-appellees.
2 IBM v. BOOKING HOLDINGS INC.
Also represented by STEPHANIE DEBROW, Austin, TX; DAN
D. DAVISON, Dallas, TX; WARREN S. HUANG, DANIEL
LEVENTHAL, DANIEL PRATI, RICHARD STEPHEN ZEMBEK,
Houston, TX.
______________________
Before LOURIE, O’MALLEY, and TARANTO, Circuit Judges.
Opinion for the court filed by Circuit Judge LOURIE.
Dissenting opinion filed by Circuit Judge TARANTO.
LOURIE, Circuit Judge.
International Business Machines Corp. (“IBM”) ap-
peals from the United States District Court for the District
of Delaware’s grant of summary judgment that the as-
serted claims of U.S. Patent 7,072,849 (“the ’849 patent”)
were not infringed. See Int’l Bus. Machs. Corp. v. The
Priceline Grp. Inc., 271 F. Supp. 3d 667, 683 (D. Del. 2017).
Because we conclude that the district court did not err, we
affirm.
BACKGROUND
IBM owns the ’849 patent directed to a “method for pre-
senting advertising in an interactive service provided on a
computer network.” ’849 patent Abstract. According to
conventional methods, the advertising data interferes with
normal application traffic and competes for network com-
munication resources. See id. col. 2 ll. 26–30. The inven-
tors recognized the problem and sought to minimize the
potential interference between application and advertising
traffic. See id. col. 2 ll. 54–58. They achieved this by hav-
ing “the user reception system” include a “facility for stor-
ing and managing the advertising so that it can be pre-
fetched from the network and staged at the reception sys-
tem in anticipation of being called for presentation.” Id.
col. 3 ll. 16–21. The technique of storing content locally to
eliminate the need to make repeated requests for the same
content is called caching. See Appellant’s Br. 7.
IBM v. BOOKING HOLDINGS INC. 3
IBM sued The Priceline Group Inc., which subse-
quently changed its name to Booking Holdings Inc., Kayak
Software Corp., OpenTable, Inc., and priceline.com LLC
(collectively “Booking Holdings”), alleging that Booking
Holdings’ web applications and mobile applications (Price-
line, Kayak, and OpenTable) infringed claims 1, 4, 6, 8, and
12 of the ’849 patent. See Appellee’s Br. 3. It asserted that
the accused websites are coded in HTML and use an HTTP
“cache control” header that contains an explicit directive to
store or cache the associated content, in violation of the
claims of the patent. See Appellant’s Br. 8–10. Also, it al-
leged that the accused mobile applications contain source
code with the cache control directives. See id. at 11–12.
Representative claim 1 of the ’849 patent reads as fol-
lows:
1. A method for presenting advertising obtained
from a computer network, the network including a
multiplicity of user reception systems at which re-
spective users can request applications, from the
network, that include interactive services, the re-
spective 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 por-
tion of one or more screens of display; and
b. structuring advertising in a manner compat-
ible 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 con-
currently with applications, wherein structur-
ing the advertising includes configuring the
advertising as objects that include advertising
data and;
4 IBM v. BOOKING HOLDINGS INC.
c. selectively storing advertising objects at a
store established at the reception system.
Id. col. 39 ll. 43–61 (emphasis added). The district court
construed the “selectively storing advertising objects at a
store established at the reception system” (the “storing
step”) to mean “pre-fetching advertising objects and storing
at a store established at the reception system in anticipa-
tion of display concurrently with the applications.” See
Int’l Bus. Machs. Corp. v. The Priceline Grp. Inc., No. 1:15-
cv-00137-LPS, 2016 WL 6405824, at *9 (D. Del. Oct. 28,
2016) (“Claim Construction Order”).
Shortly thereafter, Booking Holdings moved for sum-
mary judgment of noninfringement, arguing that IBM
would not be able to prove direct infringement because
Booking Holdings does not perform the storing step. See
J.A. 2395–97. Booking Holdings argued that the storing
step was performed by the user’s reception system, not
Booking Holdings’, and also could not be attributed to it
under a divided infringement theory. See Akamai Techs.,
Inc. v. Limelight Networks, Inc., 797 F.3d 1020, 1022 (Fed.
Cir. 2015) (en banc). IBM responded that Booking Hold-
ings itself performed the storing step, despite the fact that
the step occurs at the user’s reception system, because, it
asserts, Booking Holdings dictates performance of the stor-
ing step through its cache control directives. See Appel-
lant’s Br. 14. Alternatively, IBM argued that even if the
storing step could not be considered to have been per-
formed by Booking Holdings, the performance by the user’s
reception system should be attributable to Booking Hold-
ings because it “directs or controls” the performance of the
step. See J.A. 3117 (quoting Akamai, 797 F.3d at 1022).
IBM contended that it need not argue “the participation or
benefit test if [Booking Holdings] otherwise control[s] the
reception system’s performance.” J.A. 3118 (citing Aka-
mai, 797 F.3d at 1023).
IBM v. BOOKING HOLDINGS INC. 5
The district court determined that IBM failed to pre-
sent evidence that Booking Holdings “direct[s] or control[s]
the web browsers’ or mobile applications’ performance of
the storing step” and granted summary judgment of nonin-
fringement. See Int’l Bus. Machs. Corp., 271 F. Supp. 3d at
683. IBM sought reconsideration of the judgment of non-
infringement for the mobile applications, arguing that the
mobile applications always have caching enabled and must
therefore carry out the cache control directives. The dis-
trict court denied the motion, determining that IBM failed
to produce evidence that Booking Holdings actually per-
formed the storing step or directed or controlled the mobile
operating systems’ caching. See Int’l Bus. Machs. Corp. v.
The Priceline Grp. Inc., No. 1:15-cv-00137-LPS, 2018 WL
746521, at *2 (D. Del. Feb. 1, 2018).
IBM appeals. We have jurisdiction under 28 U.S.C.
§ 1295(a)(1).
DISCUSSION
We review procedural matters not unique to patent law
under the law of the regional circuit. See Solarex Corp. v.
Arco Solar, Inc., 870 F.2d 642, 643 (Fed. Cir. 1989). We
thus review a grant of summary judgment under the law of
the Third Circuit. See Braintree Labs., Inc. v. Novel Labs.,
Inc., 749 F.3d 1349, 1356 (Fed. Cir. 2014). The Third Cir-
cuit reviews de novo a district court’s grant of summary
judgment applying the same standards as the district
court. See Nicini v. Morra, 212 F.3d 798, 805 (3d Cir. 2000)
(en banc). Summary judgment is appropriate when “the
movant shows that there is no genuine dispute as to any
material fact and the movant is entitled to judgment as a
matter of law.” Fed. R. Civ. P. 56(a); see also Eisai, Inc. v.
Sanofi Aventis U.S., LLC, 821 F.3d 394, 402 (3d Cir. 2016).
I. CLAIM CONSTRUCTION
IBM argues that the district erred in construing “selec-
tively storing advertising objects at a store established at
6 IBM v. BOOKING HOLDINGS INC.
the reception system” to mean “pre-fetching advertising ob-
jects and storing at a store established at the reception sys-
tem in anticipation of display concurrently with the
applications.” See Claim Construction Order, 2016 WL
6405824, at *9 (emphases added). IBM contends that the
proper construction should be “storing advertising objects
according to a predetermined storage criterion at a store
established at the reception system,” Appellant’s Br. 54 (em-
phases added), omitting reference to “pre-fetching.”
Claim construction is ultimately a question of law that
we review de novo. Teva Pharm. USA, Inc. v. Sandoz, Inc.,
135 S. Ct. 831, 841 (2015). Any subsidiary factual findings
based on extrinsic evidence “must be reviewed for clear er-
ror on appeal.” Id. But “when the district court reviews
only evidence intrinsic to the patent (the patent claims and
specifications, along with the patent’s prosecution history),
the judge’s determination will amount solely to a determi-
nation of law,” which we review de novo. Id.
However, we need not decide whether the district court
correctly construed the storing step because both the dis-
trict court’s construction and IBM’s proposed construction
require “storing” advertising objects “at the reception sys-
tem.” Compare Claim Construction Order, 2016 WL
6405824, at *9 (construing the term to mean “pre-fetching
advertising objects and storing [advertising objects] at a
store established at the reception system in anticipation of
display concurrently with the applications”), with Appel-
lant’s Br. 54 (arguing for a proposed construction of “stor-
ing advertising objects according to a predetermined
storage criterion at a store established at the reception sys-
tem”). Because, as we determine below, the infringement
analysis turns on the entity performing the storing of the
advertising objects at the reception system, and both the
district court’s construction and IBM’s proposed construc-
tion include that same requirement, the infringement anal-
ysis must focus on storing and is the same under either
construction. We therefore need not determine whether
IBM v. BOOKING HOLDINGS INC. 7
the district court’s claim construction was correct. The pre-
fetching language of the court’s construction does not im-
pact the outcome here.
II. INFRINGEMENT
IBM argues that it has presented substantial evidence
that Booking Holdings directly infringes the asserted
claims because Booking Holdings itself performs the stor-
ing step. Alternatively, it argues that even if Booking
Holdings does not perform the storing step, it is still liable
for direct infringement under divided infringement theo-
ries. See Akamai, 797 F.3d at 1022. We take each argu-
ment in turn.
Infringement is a question of fact. Alza Corp. v. Mylan
Labs., Inc., 464 F.3d 1286, 1289 (Fed. Cir. 2006). Under 35
U.S.C. § 271(a), “whoever without authority makes, uses,
offers to sell, or sells any patented invention, within the
United States or imports into the United States any pa-
tented invention during the term of the patent therefor, in-
fringes the patent.” Direct infringement requires that all
the steps of a claimed method be “performed by or attribut-
able to a single entity.” See Akamai, 797 F.3d at 1022 (cit-
ing BMC Res., Inc. v. Paymentech, L.P., 498 F.3d 1373,
1379–81 (Fed. Cir. 2007)).
IBM argues that the district court erred in granting
summary judgment of noninfringement by assuming that
this is a divided infringement case. However, IBM con-
tends that Booking Holdings “[itself] perform[s] the storing
step by dictating caching at the user’s device” via the cache
control directives. Appellant’s Br. 22. According to IBM,
this situation is similar to that in SiRF Technology, Inc. v.
International Trade Commission, 601 F.3d 1319 (Fed. Cir.
2010), which it argues held that when an accused infringer
dictates the performance of a claimed method step, that is
sufficient to hold the accused infringer responsible for per-
forming that step.
8 IBM v. BOOKING HOLDINGS INC.
Booking Holdings responds that it is undisputed that
it does not perform the storing step and that the users’
third-party web browsers and mobile operating systems
perform the local storing of advertising data at the users’
systems. In fact, Booking Holdings argues that it is not
involved in the actual storing of the data at all. According
to Booking Holdings, the storing step is performed when
the users’ browsers or mobile devices cache the advertising
data, and the district court properly granted summary
judgment of noninfringement.
We agree with Booking Holdings that the district court
properly granted summary judgment of noninfringement.
There is no dispute that the storing step occurs on the us-
ers’ device. See Appellant’s Br. 8–12; Appellee’s Br. 6–7.
The only question is whether, by setting the cache control
directives, Booking Holdings should be held liable as if it
had performed the storing step itself. IBM relies on SiRF
to argue in the affirmative. In SiRF, the defendant manu-
factured a chip incorporated in the end user’s device that
performed all the claimed method steps. Id. at 1330–31.
We specifically determined, first, that this was “not a situ-
ation . . . in which a third party actually performs some of
the designated steps . . . .” Id. at 1329 (emphasis added).
After the user put the system into operation, the user was
no longer involved in the performance of the method steps.
Id. at 1330–31. Only then did we determine that the de-
fendant in SiRF itself directly infringed. Id.
In contrast, neither party disputes that in this case, the
storing step occurs at the user’s reception system. See Ap-
pellant’s Br. 8–12; Appellee’s Br. 6–7. Therefore, this case
is distinguishable from SiRF because some third party (at
least a party that is not Booking Holdings) is involved in
the performance of a method step. While there is an open
question regarding who is actually performing the storing
step, see Oral Arg. at 11:38–12:55, 14:35–16:03, Int’l Bus.
Machs. Corp. v. Booking Holdings Inc., No. 18-1574 (Fed.
Cir. Apr. 5, 2019), http://oralarguments.cafc.uscourts.gov/
IBM v. BOOKING HOLDINGS INC. 9
default.aspx?fl=2018-1574.mp3, whether it is the user, or
the device, or the browser’s manufacturer, the answer does
not matter for our purposes. What matters in this case is
that Booking Holdings is not performing the storing step.
IBM also argues that the focus should not be on the en-
tity performing the method step, but on the entity that is
dictating its performance. See id. at 5:54–6:35; Appellant’s
Br. 23–25; Reply Br. 4. We have addressed such situations
under the divided infringement theories in Akamai. 797
F.3d at 1022–24.
Divided infringement occurs when “more than one ac-
tor is involved in practicing the steps” and “the acts of one
are attributable to the other such that a single entity is re-
sponsible for the infringement.” Id. at 1022. This can arise
“(1) where that entity directs or controls others’ perfor-
mance, and (2) where the actors form a joint enterprise.”
Id. IBM does not argue that Booking Holdings is part of a
joint enterprise with its users; we therefore focus only on
the first situation where an entity “directs or controls oth-
ers’ performance.” Id. “Whether a single actor directed or
controlled the acts of one or more third parties is a question
of fact . . . .” Id. at 1023.
We have articulated two general principles to deter-
mine if a single entity directs or controls the acts of an-
other. First, “an actor is liable for infringement . . . if it
acts through an agent (applying traditional agency princi-
ples) or contracts with another to perform one or more
steps of a claimed method” (the “agency test”). Id. Second,
“liability under § 271(a) can also be found when an alleged
infringer conditions participation in an activity or receipt
of a benefit upon performance of a step or steps of a pa-
tented method and establishes the manner and timing of
that performance” (the “benefit test”). Id. On appeal, IBM
does not argue that Booking Holdings has an agency or con-
tractual relationship with its users. See Reply Br. 7 (“IBM
10 IBM v. BOOKING HOLDINGS INC.
does not contend that Defendants direct or control the stor-
ing step by acting through an agent or contracting with an-
other.”). We thus only review IBM’s benefit test argument.
IBM argues that users of Booking Holdings’ products
receive a benefit from caching because the users can “re-
trieve content from their local device more quickly than
from [Booking Holdings’] network.” Appellant’s Br. 42. Ac-
cordingly, IBM contends that Booking Holdings infringes
under a theory of attribution because it conditions the ben-
efits from caching on executing the cache control directives.
IBM also argues that this court’s decision in Travel Sentry,
Inc. v. Tropp, 877 F.3d 1370 (Fed. Cir. 2017), held that in-
fringement could be found if an actor “‘profit[s] from direct
infringement’ . . . [and] has the right and ability to stop or
limit the infringement.” Id. at 1385 (quoting Akamai, 797
F.3d at 1023). According to IBM, Booking Holdings profits
from caching because caching improves network efficiency
by reducing requests for advertising data over the network,
and it has the right and ability to stop caching from occur-
ring.
Booking Holdings responds that IBM has waived this
argument by not presenting it before the district court. In
fact, Booking Holdings argues that, not only did IBM not
raise this argument, but it affirmatively stated in its sum-
mary judgment motion that it “need not” make arguments
that Booking Holdings “meet[s] the participation or benefit
test” because Booking Holdings “control[s] the reception
system’s performance.” J.A. 3118 (citing Akamai, 797 F.3d
at 1023). Booking Holdings further contends that even
though IBM brought Travel Sentry to the attention of the
district court, it did not argue how that case supported its
position.
We agree with Booking Holdings that IBM waived this
argument. It affirmatively stated it was not arguing di-
vided infringement under the benefit test. See id. (“De-
fendants need not meet the participation or benefit test if
IBM v. BOOKING HOLDINGS INC. 11
they otherwise control the reception system’s perfor-
mance.”). While IBM did raise the issue of divided infringe-
ment, and it argues that waiver generally does not apply to
specific arguments, see Warner-Lambert Co. v. Teva
Pharm. USA, Inc., 418 F.3d 1326, 1338 n.11 (Fed. Cir.
2005) (citing Interactive Gift Express, Inc. v. Compuserve
Inc., 256 F.3d 1323, 1346 (Fed. Cir. 2001)), that general
rule does not address the current situation. Here, IBM ex-
pressly forfeited a particular argument. See J.A. 3118.
IBM also relies on the fact that it cited Travel Sentry to the
district court and that it properly preserved the issue in
that manner. See Reply Br. 13. We do not agree. IBM
cited a case to support an argument that it had already
abandoned. Because IBM chose not to argue divided in-
fringement under the benefit test before the district court,
we will not consider it for the first time on appeal. See Sage
Prods., Inc. v. Devon Indus., Inc., 126 F.3d 1420, 1426 (Fed.
Cir. 1997) (“With a few notable exceptions, . . . appellate
courts do not consider a party’s new theories, lodged first
on appeal.”).
Lastly, IBM argues generally that the district court
erred by failing to evaluate attribution under “current
law,” Appellant’s Br. 45, and that the “principles of attrib-
ution are to be considered in the context of the particular
facts presented,” Akamai, 797 F.3d at 1023. However, it is
unclear what other legal theory IBM is asserting under
which the district court erred by not considering the “par-
ticular facts” of its case. Id. Moreover, while Akamai left
open the possibility of “other factual scenarios” that “may
arise which warrant attributing others’ performance of
method steps to a single actor,” those factual scenarios
must align with a particular “legal framework for direct in-
fringement.” Id. (listing as possible legal frameworks the-
ories from agency law, contract law, and the doctrine of
joint enterprise, from which one could hold an entity liable
for another’s action(s)). IBM has not identified a legal the-
ory that the district court failed to apply to its particular
12 IBM v. BOOKING HOLDINGS INC.
facts. Accordingly, the district court properly granted sum-
mary judgment of noninfringement.
CONCLUSION
We have considered IBM’s remaining arguments but
find them unpersuasive. For the foregoing reasons, we af-
firm the district court’s judgment of noninfringement.
AFFIRMED
NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
INTERNATIONAL BUSINESS MACHINES
CORPORATION,
Plaintiff-Appellant
v.
BOOKING HOLDINGS INC., FKA PRICELINE
GROUP INC., KAYAK SOFTWARE CORPORATION,
OPENTABLE, INC., PRICELINE.COM LLC,
Defendants-Appellees
______________________
2018-1574
______________________
Appeal from the United States District Court for the
District of Delaware in No. 1:15-cv-00137-LPS, Chief Judge
Leonard P. Stark.
______________________
TARANTO, Circuit Judge, dissenting.
I respectfully dissent from the court’s holding that, as
a matter of law, Booking Holdings does not perform the
“storing” step of the claimed methods. IBM has presented
evidence that the following process regularly occurs when
an end user visits one of the Booking Holdings websites or
uses one of the Booking Holdings mobile applications:
Booking Holdings sends advertising information to the end
user’s computer or mobile device and includes instructions
2 IBM v. BOOKING HOLDINGS INC.
in the transmission that are automatically carried out on
the end user’s equipment to store the information at issue,
without the end user’s or any other person’s intervention.
I would conclude that IBM has presented sufficient evi-
dence to create a triable issue of fact as to whether Booking
Holdings, through the instructions it gives that are auto-
matically carried out on the receiving devices, performs the
“storing” step of the claims at issue. On that basis, I would
reverse the district court’s grant of summary judgment of
non-infringement.
As the panel majority observes, our decision in SiRF
Technology, Inc. v. International Trade Commission, 601
F.3d 1319 (Fed. Cir. 2010), involved different facts from
those present here. But our system of precedent perva-
sively involves reliance on the rationales of earlier deci-
sions to resolve later cases involving different facts. Here,
SiRF is highly significant for how the analysis of the pre-
sent facts should be conducted.
First, we were careful in SiRF to discuss performance
of method steps in terms of persons (including legal per-
sons) rather than equipment. See id. at 1329–31 (discuss-
ing alleged infringer, its customers, and end users, rather
than their respective devices, as potentially performing
method steps). Indeed, the statutory provision defining
acts of patent infringement makes clear that only persons,
not equipment, can infringe a patent. See 35 U.S.C.
§ 271(a) (“[W]hoever without authority makes, uses, offers
to sell, or sells any patented invention . . . infringes the pa-
tent.” (emphasis added)); see also 1 U.S.C. § 1 (defining
“whoever” to include corporations, companies, and certain
other entities). That focus on persons, not equipment, nec-
essarily applies to determining who (not what equipment)
carries out the steps of a method claim under the
longstanding interpretation of section 271 that for a
method claim to be infringed, each step must be performed
by, or be properly attributed to, the direct infringer. See
Limelight Networks, Inc. v. Akamai Techs., Inc., 572 U.S.
IBM v. BOOKING HOLDINGS INC. 3
915, 921–22 (2014); Travel Sentry, Inc. v. Tropp, 877 F.3d
1370, 1378 (Fed. Cir. 2017); Muniauction, Inc. v. Thomson
Corp., 532 F.3d 1318, 1328–29 (Fed. Cir. 2008).
Second, we emphasized in SiRF that the inquiry must
focus on the steps that are part of the claimed method, not
actions that might well be essential to a fully functioning,
real-world operation but that are outside the claim. For
instance, the asserted claims in SiRF included steps of
“communicat[ing] the satellite ephemeris to a mobile GPS
receiver” and “transmitting the formatted data to a remote
receiver.” SiRF, 601 F.3d at 1329–30. The alleged in-
fringer argued that it did not perform those steps because,
“in order for the data to be ‘communicat[ed]’ or ‘trans-
mit[ted]’ to the GPS receiver,” the alleged infringer’s “cus-
tomers must forward this data to the mobile GPS receivers,
and the end users of the GPS devices must download the
data from the customers’ servers.” Id. at 1330. We rejected
that argument. We explained that “the actions of ‘forward-
ing’ or ‘downloading’ are not required by the claims, and,
therefore, the fact that other parties perform these actions
does not preclude a finding of direct infringement.” Id.
Related to SiRF is the district court decision in TQP
Development, LLC v. Intuit Inc., No. 12-cv-180, 2014 WL
2809841 (E.D. Tex. June 20, 2014) (Bryson, J.), which is
written in terms of direction and control under the stand-
ards for divided infringement, but is instructive on the
more general question of who performs steps of a patented
method. 1 The claimed method included two steps at a
1 In my view, IBM’s argument—based on Booking
Holdings’ sending of instructions that are automatically
implemented on the end user’s equipment without further
action by the end user or any other person—gives IBM a
triable case on whether Booking Holdings performs the
“storing” step. But if one follows Booking Holdings and
blurs the person/equipment distinction, then it seems to me
4 IBM v. BOOKING HOLDINGS INC.
transmitter (generating a first sequence of pseudo-random
key values and encrypting data) and two steps at a receiver
(generating a second sequence of pseudo-random key val-
ues and decrypting the data). See id. at *11. There was no
dispute that the defendants (at their servers) performed
the steps that occur at the transmitter. Id. The defendants
sought summary judgment of non-infringement, however,
on the ground that the steps that occur at the receiver (in-
disputably located on end users’ computers, not the defend-
ants’ own servers) were not attributable to the defendants.
The court denied summary judgment, holding that there
was a triable factual issue as to whether the steps at the
receiver were controlled by the defendants, whose websites
used an encryption algorithm covered by the claims. Id. at
*11–12. The court relied on evidence from the plaintiff that
the end users’ computers would, without end users’ inter-
vention, automatically perform the receiver-end steps once
the server transmissions were made and received. Id. at
*12. The court explained that the fact that users must take
various actions before the claimed steps could occur, such
as choosing whether to visit the defendants’ websites and
whether to configure their browsers to use the relevant en-
cryption algorithm, did not foreclose a finding of direct in-
fringement by the defendants. Id. Such users’ actions are
merely “prefatory to the steps recited in the claim” and
“only establish the setting within which infringement may
occur.” Id.
Turning back to SiRF, I note my agreement with the
panel majority here that, of course, the facts of the present
case differ from those of SiRF. In SiRF, once the customers
that the substance of IBM’s argument justifies a finding of
actionable divided infringement, whether under the “direc-
tion or control” rubric or otherwise. I agree with the panel
majority that IBM did not preserve its “conditioning receipt
of a benefit” argument for divided infringement.
IBM v. BOOKING HOLDINGS INC. 5
and end users took the necessary preparatory actions, only
the accused infringer’s hardware and software were in-
volved in performing the claimed steps. See 601 F.3d at
1331 (“Once the GPS receiver is enabled and ready to pro-
cess the data, only [the accused infringer’s] actions are in-
volved in ‘processing’ or ‘representing’ the data.”). Here, by
contrast, hardware and software created by entities other
than Booking Holdings, such as web browsers and mobile
operating systems, are involved in storing the advertise-
ments sent by Booking Holdings’ servers (or a third-party
content delivery network). For example, Booking Holdings’
mobile applications call underlying code provided by Apple
or Google to make HTTP requests for web content, and that
underlying code is executed when the Booking Holdings in-
struction to cache is received.
The existence of a factual distinction between this case
and SiRF, however, does not establish that the result here
must be different from the result reached in SiRF. The dif-
ference in facts just means that there is a new question to
be decided—one not presented or decided in SiRF, but to
be decided in light of both general legal principles and rel-
evant aspects of the reasoning of SiRF. On that question,
I do not see a basis for rejecting, as a matter of law, IBM’s
position that Booking Holdings is storing the advertising
on the end user’s equipment through its giving of instruc-
tions that are automatically executed on that equipment
without any further action by another person.
The panel majority notes that “the storing step occurs
at the user’s reception system.” Majority at 8. But that
was true in SiRF as well: it was undisputed that “the ‘pro-
cessing’ and ‘representing’ steps must take place in the mo-
bile GPS device,” which was not in the possession or control
of the accused infringer. See 601 F.3d at 1330. The court
squarely held that fact not to preclude a finding that the
accused infringer performed the steps at issue. And as
SiRF illustrates, the who-stores question does not ask
what equipment is involved but what persons are taking
6 IBM v. BOOKING HOLDINGS INC.
what action, and only the actions that are part of the spe-
cific claim steps, not actions outside those claim steps, de-
termine the answer.
At oral argument, Booking Holdings suggested that the
suppliers of the operating systems or browsers on the end
users’ devices are persons that carry out the storing (as a
matter of law). The panel majority does not adopt that con-
tention. We have held that supplying a piece of software
does not mean that the supplier is performing the steps in-
volved in executing the software. See Ericsson, Inc. v.
D-Link Sys., Inc., 773 F.3d 1201, 1221–22 (Fed. Cir. 2014);
Ricoh Co. v. Quanta Computer Inc., 550 F.3d 1325, 1335
(Fed. Cir. 2008). What the software suppliers do has al-
ready been done before the steps of the claimed methods
here begin.
The specific patent at issue does not furnish a legally
compelled answer to the who-stores question. The district
court construed the phrase “selectively storing” in claim 1
of the ’849 patent to clarify the meaning of “selectively,” but
it did not separately construe “storing” as used in any of
the claims at issue. The parties did not request such a con-
struction. In these circumstances, “storing” must be given
its ordinary meaning, and the issue of who performs the
“storing” step is a factual question.
In my view, IBM has presented enough evidence, in-
cluding expert testimony, to permit a reasonable jury to
find that Booking Holdings performs the “storing” step.
Booking Holdings has not identified a settled common us-
age that forbids IBM’s position as to “storing.” And both
SiRF’s and TQP’s reasoning provide considerable support
for the facial reasonableness of IBM’s position. In response
to user requests through web browsers or mobile applica-
tions, Booking Holdings sends advertisements that, accord-
ing to IBM’s evidence, are automatically stored on user
devices in accordance with cache control parameters pro-
grammed by Booking Holdings. I accept the premises that
IBM v. BOOKING HOLDINGS INC. 7
storage of advertisements does not occur until (1) the web-
browser or mobile-operating-system provider has written
and supplied to the end user software that carries out cach-
ing when a command to do so is received; (2) the user has
enabled (or refrained from disabling) caching on the device;
and (3) the user accesses Booking Holdings’ website or mo-
bile application. But those premises do not foreclose a find-
ing that Booking Holdings performs the “storing” step by
giving the command to cache. Those third-party actions
are not part of the claimed methods but rather “prefatory”
steps that “establish the setting within which infringement
may occur.” See TQP, 2014 WL 2809841, at *12.
For those reasons, I respectfully dissent from the hold-
ing that Booking Holdings does not perform the “storing”
step as a matter of law. I would reverse the grant of sum-
mary judgment, which rests on the “storing” ground. Book-
ing Holdings argues for affirmance on the alternative
grounds that there is no triable issue as to its “selectively”
storing, under the district court’s claim construction of “se-
lectively storing” in claim 1, and also no triable issue as to
its meeting the “predetermined amount” requirement of
claim 8. I would reject those arguments. IBM has pointed
to evidence that could reasonably be found to establish sat-
isfaction of those claim limitations, even under the adopted
construction.
I do not address the correctness of the “selectively stor-
ing” construction. That construction played no role in the
district court’s grant of summary judgment. And, as just
noted, it need not be addressed to reverse the grant of sum-
mary judgment.