Federal Circuit brings lock patent row back to life

The US Court of Appeals for the Federal Court has vacated a lower court’s entry of summary judgment in a clash over locks that airport security workers can open.

Yesterday, December 19, the Federal Circuit concluded that Travel Sentry and its licensees may be liable for patent infringement based on two recent decisions that set out a two-prong test to follow when attempting to prove that multiple parties jointly infringed a patent.

Travel Sentry is a company that develops and licenses standards used in travel security.

This was the third time the Federal Circuit has presided over the longstanding dispute regarding whether Travel Sentry and its licensees infringe two patents: US numbers 7,021,537 and 7,036,728.

The patents, owned by David Tropp, are directed to methods of improving airline luggage inspection through the use of dual-access locks.

Through his company Safe Skies, Tropp administers a lock system that allows airport security staff to unlock, inspect, and re-lock checked baggage.

Travel Sentry operates a similar system.

Back in October 2003, Travel Sentry entered into a memorandum of understanding with the Transportation Security Administration (TSA), an agency of the US Department of Homeland Security that has authority over the security of people travelling in the US.

The memorandum stated that Travel Sentry would supply the TSA with master keys to open checked baggage secured with certified locks.

Tropp appealed from the district court’s entry of summary judgment that Travel Sentry and its licensees don’t directly infringe any of the method claims of the patents.

Travel Sentry and several of its licensees cross-appealed against the district court’s denial of their motions for attorneys’ fees.

The Federal Circuit found that Judge Eric Vitaliano of the US District Court for the Eastern District of New York had erred in granting summary judgment.

Circuit Judge Kathleen O’Malley, on behalf of the court, explained that the primary issue relates to whether there is a genuine dispute over whether Travel Sentry “directs or controls the performance of certain steps of the claimed methods”.

In this case, the TSA was performing the final two steps of the patent claims.

O’Malley cited Akamai Technologies v Limelight Networks (Akamai V), a 2015 en banc decision where the Federal Circuit affirmed the principle that direct infringement under 35 USC section 271(a) occurs where all steps of a claimed method are performed by or attributable to a single entity.

The court, in Akamai V, also held that an entity is “responsible for others’ performance of method steps where that entity directs or controls others’ performance or where the actors form a joint enterprise”.

It also concluded that liability can 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 Federal Circuit had recently applied Akamai V’s “two-prong test” in Eli Lilly v Teva Parenteral Medicines, a Hatch-Waxman suit brought by Eli Lilly against several defendants seeking to launch a generic version of Eli Lilly’s chemotherapy drug.

In its decision yesterday, the court said that a reasonable jury could conclude that TSA’s performance of the final two claim steps of the patents is attributable to Travel Sentry.

“Although the partnership-like relationship between Travel Sentry and TSA differs in several respects from the … relationships in Akamai V and Eli Lilly, a common thread connects all three cases,” said O’Malley.

The common thread between the cases is that there is evidence that a third party hoping to obtain access to certain benefits can only obtain those benefits if it performs certain steps identified by the defendant, under terms described by the defendant.

The Federal Circuit vacated the summary judgment.

Then, because Travel Sentry and its licensees are no longer the prevailing parties, the cross-appeal was deemed moot by the Federal Circuit.

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