Federal Circuit Summaries

Before Lourie, O’Malley, and Taranto. Appeal from the United States District Court for the Eastern District of New York.

Summary: For divided infringement under § 271(a), an accused infringer does not avoid liability merely because the third party is not obligated to perform the patented steps. As long as the third party must perform the patented steps to receive value from the accused infringer, the third-party’s actions may be attributed to the accused infringer.

Tropp’s patent claims a method for using a dual-access lock in an airline luggage inspection system. The patented method includes steps to be performed by a luggage screener, e.g., TSA. Travel Sentry and the TSA have a written memorandum of understanding concerning TSA’s handling of Travel Sentry’s locks. Travel Sentry provides master keys to the TSA and trains the TSA on how to identify Travel Sentry’s locks.

The district court granted Travel Sentry’s motion for summary judgment of no direct infringement, finding that “there is simply no evidence that Travel Sentry had any influence whatsoever on … the method carried out by the TSA…” The district court determined that because the TSA faces no consequences by not taking direction from Travel Sentry, TSA’s voluntary compliance with instructions could not be attributed to Travel Sentry.

The Federal Circuit vacated and found that a reasonable jury could conclude that TSA’s performance of the patented steps are attributable to Travel Sentry. The court applied its holding in Akamai V that liability under § 271(a) could 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 patented method” and “establishes the manner or timing of that performance.” The court emphasized the importance of identifying the relevant “activity,” the types of “benefits” that can satisfy Akamai V, and what is required for one to “condition” a third party’s participation in an activity. The court held that a reasonable jury could find a) the TSA derived a benefit from employing Travel Sentry’s luggage system (namely, not having to break consumer’s locks); b) this benefit was conditioned upon the TSA’s performance of the patented method; and c) the written agreement between Travel Sentry and the TSA indicates that Travel Sentry established the manner or timing of the performance by the TSA.