{"id":1863,"date":"2017-12-20T13:26:28","date_gmt":"2017-12-20T18:26:28","guid":{"rendered":"https:\/\/patents.harnessip.com\/?p=1863"},"modified":"2017-12-20T21:17:52","modified_gmt":"2017-12-21T02:17:52","slug":"whether-third-party-acts-are-attributable-to-infringer-in-a-divided-infringement-situation-is-question-of-fact","status":"publish","type":"post","link":"https:\/\/patents.harnessip.com\/?p=1863","title":{"rendered":"Whether Third Party Acts are Attributable to Infringer in a Divided Infringement Situation is Question of Fact"},"content":{"rendered":"

Travel Sentry, Inc. v. Tropp<\/a>, [2016-2386, 2016-2387, 2016-2714, 2017-1025] (December 19, 2017), the Federal Circuit vacated summary judgment of non-infringement, finding genuine disputes of material\u00a0fact regarding whether Travel Sentry directs or\u00a0controls the performance of certain steps of the claimed methods.<\/p>\n

The case involved U.S. Patent Nos. 7,021,537\u00a0and 7,036,728 directed to
\nmethods of improving airline luggage inspection through\u00a0the use of dual-access locks.\u00a0 The infringement claim hinged on a Memorandum of Understanding (MOU) between Travel Sentry in the TSA.\u00a0 The district court found that this did not evidence sufficient control by Travel Sentry to constitute infringement.<\/p>\n

The Federal Circuit\u00a0noted that in Akamai V, it affirmed the\u00a0principle that \u201c[d]irect infringement under \u00a7 271(a) occurs\u00a0where all steps of a claimed method are performed by or\u00a0attributable to a single entity,\u201d and held that an entity is\u00a0responsible for others\u2019 performance of method steps where
\nthat entity directs or controls others\u2019 performance or\u00a0where the actors form a joint enterprise.\u00a0 The Federal Circuit further noted that\u00a0liability under \u00a7 271(a) could be found when an alleged\u00a0infringer ‘conditions participation in an activity or receipt\u00a0of a benefit upon performance of a step or steps of a
\npatented method and establishes the manner or timing\u00a0of that performance.<\/p>\n

The Federal Circuit said that the district court reasoned that summary judgment was\u00a0appropriately awarded to Travel Sentry and its licensees
\nbecause there was simply no evidence that Travel Sentry\u00a0had any influence whatsoever on the third and fourth\u00a0steps of the method carried out by the TSA, let alone that it masterminded the entire patented process.\u00a0 In so doing the district court incorrectly found that Akamai V did not\u00a0expand the scope of direct infringement under \u00a7 271(a),\u00a0and did \u201cnot disturb the BMC Res.\/Muniauction test.\u201d<\/p>\n

The Federal Circuit reiterated that under Akamai V,\u00a0\u201cliability under\u00a0\u00a7 271(a) can also be found when an alleged infringer\u00a0conditions participation in an activity or receipt of a\u00a0benefit upon performance of a step or steps of a patented\u00a0method and establishes the manner or timing of that\u00a0 performance,\u201d\u00a0 and reiterated that whether a single actor directed or controlled the acts of\u00a0one or more third parties is a question of fact.<\/p>\n

The Federal Circuit pointed to its recent application of\u00a0\u00a7 271(a)\u00a0 in Eli Lilly v. Teva Parenteral Medicines.\u00a0 Based upon the reasoning in Akamai V and Eli Lilly, the Federal Circuit said that a reasonable jury could conclude that TSA\u2019s performance\u00a0of the final two claim steps is attributable to Travel
\nSentry such that Travel Sentry is liable for direct infringement\u00a0under \u00a7 271(a).\u00a0 The Federal Circuit found that the district erred in three respects:<\/p>\n

First, it misidentified the relevant \u201cactivity\u201d at issue,\u00a0broadly defining it as \u201cthe luggage screening mandated by\u00a0Congress,\u201d rather than more specifically as “screening luggage that TSA knows can be opened
\nwith the passkeys provided by Travel Sentry.”\u00a0 Second, the district court misapprehended\u00a0what types of \u201cbenefits\u201d can satisfy Akamai V\u2019s\u00a0first prong, noting that the jury could find that the ability to open\u00a0identifiable luggage using a master key, which would\u00a0obviate the need to break open the lock, was a sufficient benefit.\u00a0 Third, the court mischaracterized what is\u00a0required for one to \u201ccondition\u201d a third party\u2019s participation\u00a0in an activity or receipt of a benefit on the third\u00a0party\u2019s performance of one or more claim steps.<\/p>\n

Under the second Akamai prong, the Federal Circuit also found\u00a0that, drawing all justifiable inferences\u00a0in Tropp\u2019s favor, a reasonable jury could find that\u00a0Travel Sentry has established the manner or timing of\u00a0TSA\u2019s performance.<\/p>\n","protected":false},"excerpt":{"rendered":"

Travel Sentry, Inc. v. Tropp, [2016-2386, 2016-2387, 2016-2714, 2017-1025] (December 19, 2017), the Federal Circuit vacated summary judgment of non-infringement, finding genuine disputes of material\u00a0fact regarding whether Travel Sentry directs or\u00a0controls the performance of certain steps of the claimed methods. … Continue reading →<\/span><\/a><\/p>\n","protected":false},"author":2,"featured_media":0,"comment_status":"closed","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[16],"tags":[],"class_list":["post-1863","post","type-post","status-publish","format-standard","hentry","category-infringement"],"post_mailing_queue_ids":[],"_links":{"self":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1863","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/users\/2"}],"replies":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcomments&post=1863"}],"version-history":[{"count":2,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1863\/revisions"}],"predecessor-version":[{"id":1870,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1863\/revisions\/1870"}],"wp:attachment":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=1863"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=1863"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=1863"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}