NOTE: This disposition is nonprecedential.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
BOOKING HOLDINGS INC., FKA PRICELINE GROUP INC., KAYAK SOFTWARE CORPORATION, OPENTABLE, INC., PRICELINE.COM LLC, Defendants-Appellees ______________________
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.