IP Law Daily, PATENT—E.D.N.Y.: Akamai decision did not preclude a finding of indirect infringement of luggage screening patent, (Jun 30, 2016)

By Jody Coultas, J.D.

Patent holder David A. Tropp could not state patent infringement claims against Travel Sentry, Inc. based on patents that describe a method of airline luggage screening, according to the federal district court in Brooklyn. The decisions in Akimai Technologies, Inc. v. Limelight Networks, Inc. did not require a different result (Travel Sentry, Inc. v. Tropp, June 29, 2016, Vitaliano, E.).

Travel Sentry owns a trademark that it licenses to lock and luggage manufacturers and distributors for use on dual-access luggage locks. Travel Sentry issued guidance to the Transportation Security Administration (TSA) agreeing to provide free master keys and training guidance on how to identify locks licensed through their trademark. The TSA agreed to test the keys and make a "good faith effort" to use the keys to open bags whenever the TSA found it "practicable" to do so.

Travel Sentry filed a complaint seeking a declaratory judgment of noninfringement, invalidity, and non-liability with respect to Tropp's patents. Tropp counterclaimed for infringement based on ownership of two patents that describe a method of airline luggage screening.

In another suit, Tropp sued 18 manufacturers and distributors of luggage (the Conair defendants) for infringement of the patents in connection with their use of Travel Sentry’s lock system. In that suit, the United States District Court for the Eastern District of New York awarded declaratory judgment of non-infringement of the '537 and '728 patents to Travel Sentry. Travel Sentry, Inc. v. Tropp (Travel Sentry I), 736 F. Supp. 2d 623, 639 (E.D.N.Y. 2010). The district court then dismissed the present case as barred by collateral estoppel based on the decision in Travel Sentry I. Tropp v. Conair Corp., No. 08-cv-4446, 2011 U.S. Dist. LEXIS 88559 (E.D.N.Y. Aug. 10, 2011).

Based on the test articulated in Akamai, 692 F.3d 1301 (Fed. Cir. 2012), the Federal Circuit affirmed the court’s direct infringement finding, but reversed and vacated the finding of no indirect infringement.

The Supreme Court reversed Akamai, holding that "[t]he statutory text and structure and our prior case law require" a finding that where there has been no direct infringement of a method patent, there can be no indirect infringement. The Federal Circuit affirmed the trial court's holding of no direct infringement in favor of Limelight. In Akamai V, the Federal Circuitheld that liability may be found under§ 271(a) where "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 law concerning direct infringement was unchanged post Akamai. Infringement requires a showing that a defendant has practiced each and every element of the claimed invention. Where multiple parties combine to perform every step of a claimed method, those parties may be held jointly liable for direct infringement in the event that one party exercised control or direction over the entire process such that every step is attributable to the controlling party. Akamai V added that infringement occurs "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 motions seeking a finding of indirect infringement must be denied in the absence of direct infringement, according to the court. There was no evidence that Travel Sentry had any influence whatsoever on the third and fourth steps of the method carried out by the TSA, or that it "masterminded" the entire patented process. The noncommittal understanding between Travel Sentry and the TSA could not render Travel Sentry vicariously liable for the TSA's actions. TSA did not take direction from Travel Sentry on the manner or timing of its luggage screening. Therefore, summary judgment was awarded to Travel Sentry and the Conair defendants.

The cases are Nos. 06-cv-6415 (ENV) (RLM) and 08-cv-4446 (ENV) (RLM).

Attorneys: Douglas A. Gross (Goetz Fitzpatrick LLP) for David A. Tropp. Heidsha Sheldon (Seyfarth Shaw LLP) and Zachary Berk (Saul Ewing LLP) for Conair Corp. Peter I. Bernstein (Scully, Scott, Murphy & Presser) and Heidsha Sheldon (Seyfarth Shaw LLP) for Briggs & Riley Travelware LLC. Christopher F. Lonegro (Ober, Kaler, Grimes and Shriver, PC) and Heidsha Sheldon (Seyfarth Shaw LLP) for Delsey Luggage Inc.

Companies: Conair Corp.; Delsey Luggage Inc.; Briggs & Riley Travelware LLC

Cases: Patent NewYorkNews