Divided Infringement: Expanding the Scope of Direct Infringement

Travel Sentry v. Tropp (Fed. Cir. 2017)

Today’s opinion is the Federal Circuit’s third in this dispute between Travel Sentry and David Tropp over Tropp’s patented luggage inspection system.  The basic idea is that the luggage has a lock and TSA has a master-key.  This allows the government to search the bag and then re-lock the baggage before throwing it onto the plane.

The problem with Tropp’s method claims is that they require both (1) supplying the special lock (done by Travel Sentry) and also (2) the TSA (“luggage screening entity”) using the provided master key.  This is a problem because infringement ordinarily requires a single-entity who practices (or controls the practice) of every step of a method claim.  Here, Travel Sentry performs step-1, but not step-2.

The district court did find that that Travel Sentry facilitates TSA’s activity by supplying master locks and instructions for their use. However, that facilitation was not sufficient to satisfy the”control” or “joint enterprise” requirement under Akamai (en banc 2015).  In particular, the district court held that “there is simply no evidence that Travel Sentry had any influence whatsoever on the third and fourth steps of the method carried out by the TSA, let alone ‘masterminded’ the entire patented process.”

On appeal, the Federal Circuit has vacated this judgment – holding that the district court had too-narrowly considered the new “joint enterprise” prong of Akamai – and its factual basis.  Here, according to the appellate court, the patentee had presented sufficient evidence that the cooperation between TSA and Travel Sentry (including a Memorandum of Understanding) for a jury to attribute TSA’s activities to the accused infringer Travel Sentry.

Although the partnership-like relationship between Travel Sentry and TSA differs in several respects from the service provider-customer and physician-patient relationships in Akamai V and Eli Lilly, a common thread connects all three cases: evidence that a third party hoping to obtain access to certain benefits can only do so if it performs certain steps identified by the defendant, and does so under the terms prescribed by the defendant.

On remand, the jury may finally get its chance to decide the case.

51 thoughts on “Divided Infringement: Expanding the Scope of Direct Infringement

  1. With a bakers-dozen of defendants in this litigation, and three D.C. decisions overturned in three Fed. Cir. decisions, these clients are already likely losers just on what they must have already shelled out in attorney fees, even if their respective attorneys were fully cooperating. That and the nature of these claims would seem to lead to questions as to whether reexaminations and Alice-101 motions were filed, and if not, why not? The kinds of questions in-house-counsels should normally be asking?

  2. “[E]vidence that a third party hoping to obtain access to certain benefits can only do so if it performs certain steps identified by the defendant, and does so under the terms prescribed by the defendant.”

    Wow, it looks like the Federal Circuit will affirm my demand for revenue sharing from IKEA, with whom I am a joint enterprise partner.

    1. revenue sharing would only be reached if your “I am a joint enterprise partner” was formed as a legal contract spelling out that revenue sharing is a part of the deal.

      Last I checked, the “deal” with IKEA is exactly the opposite of your intended point.

      (sorry to ruin your play on concepts, but your play omitted a critical detail)

  3. Not my area, but if there’s a joint enterprise with TSA, shouldn’t this be in the Court of Federal Claims?

    1. They’re not suing TSA, and they’re not saying that TSA infringed. That’s the whole point – the court says that there could be direct infringement by Travel Sentry alone, even though TSA has to perform some of the steps.

      1. Interesting. Since there is only one aviation screening authority in the US, could it be that once the patent issued, the TSA would not be allowed to setup a master key relationship with anyone but the patentee? The memorandum of understanding is a red herring.

        Sheriff Taylor used to walk around Mayberry at night and open all the storefronts to check inside, using his master key of course. Of course that was on TV and so not enabled.

        The CAFC especially seems to litigate issues with no concern with the soundness of the underlying vehicle. Divided infringement is an interesting, important question, but how can a patent like this illuminate anything? It should be invalidated first, and divided infringement dealt with on another set of facts.

        1. Sheriff Taylor used to walk around Mayberry at night and open all the storefronts to check inside, using his master key of course.

          C’mon. Storefront keys are completely distinct in every way from luggage keys. Everybody knows this.

          Now, if these were digital locks that were opened with a PIN number, that would be absolutely and totally different.

        2. It should be invalidated first, and divided infringement dealt with on another set of facts.

          That would make patents even harder to monetize than they are now.

          Clearly you are an Amish infiltrator. I can smell the Soros all over you. You might as well just fly your plane into a skyscraper if you despise humanity that hard.

      2. That’s not the standard. Under 28 USC 1498, “the use or manufacture of an invention described in and covered by a patent of the United States by a contractor, a subcontractor, or any person, firm, or corporation for the Government and with the authorization or consent of the Government, shall be construed as use or manufacture for the United States.”

        I’m not sure 1498 applies here, but it is more complicated than your post implies.

  4. The problems with infringement started with the enactment of 271(a)-(c). It would have been vastly preferable to simply let the courts develop the law.

    We should all consider a simple repeal.

    Regardless, we got into this situation because Lemely, without support or any authority whatsoever, said in a law review article and in an amicus brief that direct infringement of a method claim could only be when a single party (I assume this included all that party’s employees and agents, contractors and hires) conducted every step in the method claim.

    That guy is piece of work. Predictable. But you have to check his cites, carefully. Every one of them. More often than not a case he cites supporting his proposition supports the opposite conclusion only. And the guy could not be accused of merely being sloppy. Sloppiness would suggest errors is both directions. I have never seen a Lemley error that was not in favor of his agenda.

    1. I have never seen a Lemley error that was not in favor of his agenda.

      Remind me of you.

    2. I am not following, Ned. Set Prof. Lemley to the side. How could patent law even function without a single-actor rule? If Mr. X practices only step one of a two-step claimed method, he does not infringe. If Mrs. Y practices only step two of the same method, she also does not infringe.

      Unless there is a showing of collusion between the two (joint enterprise under the single-actor case law) how can their individual, wholly unconnected acts sum up to infringement?

      1. Greg, just read Univis Lens. The Supreme Court deemed the making of the patented bifocal lens like a method claim, with the lens blanks embodying the invention. Their sale to finishers who performed the last step in the process completed the infringement. Nevertheless, the sale itself was deemed contributory.

        The lens finishers were independent actors.

        1. Ah, got it. So you mean that Akamai V restored the law to where it had been under Univis Lens? That makes sense. Thanks for clarifying.

          1. How did it get to a point such that it needed to be restored?

            (not snark)

          2. After further reflection, I do not think that my 7.2.1.1 is correct. Even pre-Akamai V, the lens grinders from Univis Lens would still have been §271(a) infringers under Muniauction. They were contracting with the blank sellers, and contract privity has always been enough to satisfy the single-actor rule.

            In other words, I am still lost as to how the single-actor rule is supposed to be problematic. Really, how could patent law work at all without the single-actor rule?

            1. Why should there be a single-actor rule?

              First, provide a straight up answer.

              Then, take a step back, review the Lemley view that innovation has become a GROUP activity, and then revisit your answer with the notion that IF a group effect occurs on one side of the coin, than why should there NOT be a mirror of a group effect on the other side of the coin?

              I already “get” that Malcolm’s view that anything positive for a patent holder must necessarily be (somehow) “bad,” but I am asking for some thoughtful reflection and incorporation of the viewpoint of someone “from the other side of the fence” when it comes to patent proclivities. There is some “goose and gander” reconciliation that should occur, eh?

            2. Please Pardon the Potential (re)Post:

              Why should there be a single-actor rule?

              First, provide a straight up answer.

              Then, take a step back, review the Lemley view that innovation has become a GROUP activity, and then revisit your answer with the notion that IF a group effect occurs on one side of the coin, than why should there NOT be a mirror of a group effect on the other side of the coin?

              I already “get” that Malcolm’s view that anything positive for a patent holder must necessarily be (somehow) “bad,” but I am asking for some thoughtful reflection and incorporation of the viewpoint of someone “from the other side of the fence” when it comes to patent proclivities. There is some “goose and gander” reconciliation that should occur, eh?

              1. IF a group effect occurs on one side of the coin, than why should there NOT be a mirror of a group effect on the other side of the coin?

                There is no coin, Billy. And even if there was a coin, your question would be nonsense.

                Good lord, better tr 0lls please.

        2. OMG it’s the Univis Lens zombie again.

      2. In theory, you could have a rule that if you perform some of the steps your self and induce another to perform the rest (using traditional inducement standards under 271(b) ) then you should be liable. That is what is really happening in many of these cases.

        But the law has developed that you first have to have a direct infringer, and then the secondary infringer is liable for inducing direct infringement.

        1. Board lawyer, the law developed the way it did because of guys like Lemley and because the Federal Circuit did not want an otherwise innocent party to be liable for the whole infringement.

          Well, boo hoo. Infringement was always strict liability until Aro Mfg. changed the law in a split decision that was plainly wrong. One thing led to another, and that wrong decision allowed infringers to get off the hook for inducing the final step in a patented process — something they were clearly liable for prior to 1952.

          1. Infringement was always strict liability

            Should read “Direct infringement was always strict liability.”

            1. Yes, that to me is the key point. Inducing infringement is NOT strict liability — you need knowledge of the patent, and intent to induce another to infringe.

              So what would be wrong with a rule that if Party A performs some of the steps in a method, and then induces Party B to complete the steps in the method, and both parties benefit from it, AND Party A has all the requisite knowledge and intent of indcument, that Pary A is liable? Party A is not an innocent party at that point.

              1. I see nothing wrong with the situation as you present it.

                But in your situation you lack the current requirement of a “direct infringer” of all the elements.

                Lacking that, “A” – being an Effcient Infringer – escapes liability completely.

                This is part of the situation in which it “takes a village.” Note that the typical “patents are bad” commentators avoided the situation you present and instead paint the different picture of the induced party (perhaps better viewed as an unsuspecting dupe) as the one that would bear the brunt of the “unfair” expansion of patent protection.

                1. I understand that under current law, there is no liability. My question was, why not create a hybrid of direct and induced infringement. Sounds like you might agree.

                  And, the second actor would not be liable under my posited theory, as he or it did not induce anything. So that obviates the unfairness argument.

            2. Anon, prior to 1952, patent infringement was strict liability no matter whether the infringement was direct, contributory or by inducement.

              1. What?

                And the world did not melt down?

                Is Malcolm aware of this?

  5. Re: “On remand, the jury may finally get its chance to decide the case.”
    Don’t count on it. In the Xerox v. Palm Pilot patent suit several years ago the D.C. judge’s three sequential S.J.s were reversed in three sequential Fed. Cir. appeals and that judge never did set a trial date.

    1. P.S. If this kind of patent was being initially sued on nowadays, validity could be decided years earlier with an IPR, independently of the split infringement mess.

  6. The CAFC wants to say if any two parties are acting toward an explicitly shared goal, they are in a “partnership” of some kind. That’s going to cover almost every set of facts, i.e. they think divided infringement is just a tool of infringers.

    Meanwhile how is this patent not utterly obvious? Master keys are nearly as old as locks themselves. Seems like an abstract idea (let’s give the TSA a master key) with no other “innovation” required. Is that what we want to protect with patents?

    1. Master keys are nearly as old as locks themselves.

      Yes but 9/11 changed everything.

      Given that airport security is basically a combination of transparent theatre and massive corporate grift, it’s a perfect playground for the world’s least ethical “innovators.”

      I don’t know how anybody feels safe up there anyway if you can’t carry your own personal handgun for defense. I mean, what would the framer’s think??? It’s like being naked up there. No wonder everyone is so impolite.

      1. Everyone should be naked up there. Would save some trouble. Or just issue Tyvek suits for all passengers…

    2. [H]ow is this patent not utterly obvious?

      That was my question. Some art unit in the PTO was really asleep at the wheel when this one went to grant.

  7. unaware that others were practicing other steps in the patent before and after her

    unaware – your straw is showing. In such a case there is no nexus with the other steps.

    You really need to get a grip – and loosen that metal headgear (it’s cutting off your circulation).

    1. your straw is showing. In such a case there is no nexus with the other steps

      “No nexus”? LOL Is “nexus” a term in the imaginary multiple actor infringement statute that Congress is going to write because “it takes a village”? ROTFLMAO

      Talk about a strawman. What a hypocrite. But we knew that already.

      1. Your post makes no sense – all we see is more of your rather (dubiously) famous Accuse Others…

        1. Your post makes no sense

          Okay, Mr. “Nexus.” Whatever you say.

  8. the jury may finally get its chance to decide the case

    There was apparently an invalidity defense offered as well, way back in 2010, but my five minutes of digging didn’t come up with the specifics. The district court opted not to rule on invalidity at the time because of the summary judgment of non-infringement. Has that issue been revisited yet?

  9. So, obviously combination locks having a master key were well known, and this patent is directed exactly to that idea, with the novelty being “TSA has the master key”?

    The steps of the method claim are: “making available to consumers a lock” […] “marketing the lock to the consumers” […] “signalling a luggage screener” [..] and “acting pursuant to a prior agreement”.

    And someone decided to take this to litigation? And they might win?

  10. Would a Lesley offshoot (it takes a village) be appropriate to rid the notion that infringement must need be a single entity (or under control of a single entity)?

    Would such a notion need be advanced by the Legislature instead?

    1. a Lesley offshoot (it takes a village)

      Try again.

      And try to remember these two thingss:

      (1) there is ZERO NADA ZILCHO inherent relationship between “inventing”, on one hand, and “infringing a patent claim”, on the other They are two completely different activities.

      (2) The reasons for requiring (for infringement purposes) a single entity or control by a single entity or at least a concerted effort between knowing players (the joint enterprise) is that if you chuck those requirements the risk of liability explodes in an unacceptable and nonsensical manner. See, e.g., the million discussions leading up to Akamai (and archived here, somewhere) where this was broken down and explained to everyone in the simplest possible terms.

      1. Your bald statement about zero relations does not past the laugh test.

        Your concern about “risk of liability” reflects more your cognitive dissonance and anti-patent leanings than it merits any real world concern.

        Your “millions of discussions” if anything like your usual tripe, is entirely unavailing.

        And lastly – you kind of miss the point that this in fact stems from the Lemley point of view. You apparently do not even understand that point of view, so ALL of your pushback here is done in complete ignorance of the Lemley model.

        Please try to inform yourself before you reply.

        1. A method with a hundred distinct steps can be practiced by one person or by a hundred separate people practicing each step in a coordinated manner.

          Given that information, how many inventors were likely needed to conceive of this method?

          1. in a coordinated manner.

            That’s rather important – and removes the strawman that you seem to want to imply.

            1. No idea what you’re talking about, “anon.” You can’t read minds. You can barely read English.

              But you sure know how to spin. Spin, cl 0wn, spin! Wheeee!!! Look at him go, folks.

              1. There’s more that Accuse Others meme…

                Weeee

        2. Your concern about “risk of liability” reflects more your cognitive dissonance and anti-patent leanings than it merits any real world concern.

          Your m 0 ther practices a prior art step. Unfortunately, the step is part of a patented process and — although she is practicing the prior art and does so entirely of her own volition, unaware that others were practicing other steps in the patent before and after her — she is dragged into Federal Court as an infringer.

          Is it “anti-patent” to be troubled by this turn of events?

Leave a Reply

Your email address will not be published. Required fields are marked *

 Notify me of followup comments via e-mail.

You can click here to Subscribe without commenting

Add a picture