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.