Federal Circuit No. 2016-2386
Travel Sentry v. David Tropp, Case No. 2016-2386 (Fed. Cir. December 19, 2017)
Federal Circuit holds that multiple parties can act together to infringe a method claim
By Arun Shome
In Travel Sentry v. David Tropp, Case No. 2016-2386 (Fed. Cir. December 19, 2017), the Federal Circuit addressed the issue of divided infringement, where more than one entity practices the steps in a method claim.
The plaintiff Tropp owned a patent for a method of providing locks to consumers and having a “luggage screening entity” open the locks. In short, the claimed lock could be used by a consumer to secure luggage, but the “luggage screening entity” would have a master key that could open the lock. Parties other than the luggage owner and the “luggage screening entity,” such as would-be thieves, would be unable to easy open the lock.
Tropp also owned a company that sold similar locks. Tropp argued that a competitor, another company that sold similar locks, and the federal Transportation Security Administration (TSA) collectively infringed the patent in suit.
The Federal Circuit vacated a grant of summary judgement of non-infringement entered by the district court. The court first reviewed the relevant case law governing divided infringement.
In a previous case, Muniauction, the Federal Circuit held that “a method’s steps have not all been performed as claimed by the patent unless they are all attributable to the same defendant, either because the defendant actually performed those steps or because he directed or controlled others who performed them.” Muniauction, Inc. v. Thomson Corp., 532 F.3d 1318 (2008).
The Federal Circuit also created a second test for determining whether multiple parties infringe directly in Akamai Technologies, Inc. v. Limelight Networks, Inc. (Fed. Cir. 2015) (en banc). Liability under 271(a) can also be found where an alleged infringer (1) “conditions participation in an activity or receipt of a benefit upon performance of a step or steps of a patented method,” and (2) “establishes the manner or timing of that performance.”
Turning to the facts in Travel Sentry, the court reviewed a “Memorandum of Understanding” signed by both the TSA and Travel Sentry. According to this memo, Travel Sentry would provide master keys to the TSA that could open locks, and the TSA agreed to make good faith efforts to use these master keys.
The Federal Circuit applied the second test from Akamai and found that, under prong 1, a reasonable jury could find Travel Sentry confers a benefit to the TSA: a reduction in claims from aggrieved travelers, and improved public image from fewer lock breaks. Also, the activity that the TSA performed was coextensive with the scope of the last two steps of the claim.
The Federal Circuit also found that under prong 2, a reasonable jury could find that Travel Sentry establishes the manner and timing of TSA's performance. Travel Sentry provided the master keys to the TSA and also supplied instructional/training materials on how to use the master keys.
As a result, the summary judgment of non-infringement was vacated since there was a genuine issue of material fact as to whether Travel Sentry and the TSA collectively infringed the patent in suit.