Federal Circuit Recognizes A Broad Scope Of Attribution Under The Doctrine Of Divided Infringement

In a recent decision, Travel Sentry, Inc. v. Tropp, __ F.3d __, Appeal Nos. 2016-2386, 2016-2387, 2016-2714, 2017-1025, Slip Op. at 20 (Dec. 19, 2017), the US Court of Appeals for the Federal Circuit reaffirmed its interpretation of the doctrine of divided infringement articulated in Akamai Technologies, Inc. v. Limelight Networks, Inc., 797 F.3d 1020 (Fed. Cir. 2015) (Akamai V). In Travel Sentry, the Federal Circuit rejected the district court's more narrow interpretation, made under the earlier standards in BMC Resources, Inv. v. Paymentech, L.P. and Muniauction, Inc. v. Thomson Corp., and vacated the court's summary judgment of non-infringement.

Divided infringement occurs when multiple actors collectively perform all the steps of a method claim, or use disparate elements of a system claim such that no one party directly infringes a patent under 35 USC section 271(a). The Federal Circuit's decision in Travel Sentry, the latest in a series of recent decisions on divided infringement, has important implications for enforcing claims when the claim elements are not performed by a single entity but by two or more parties acting in concert.

In its decisions leading up to Travel Sentry, the Federal Circuit has consistently held that one party may be held directly responsible for the actions of another under traditional agency or contract theory. However, the Federal Circuit recognized that liability for direct infringement can also be found when a two-pronged test is satisfied: first, when "an alleged infringer conditions participation in an activity or receipt of a benefit upon performance of a step," and second, when the alleged infringer "establishes the manner or timing of that performance."1 In that event, the first party may be found liable for the actions of the other, such that their combined actions can be attributed to a single entity that is liable for the entire act of infringement.

In Travel Sentry, the two patents at issue claim methods of inspecting checked airline luggage. Consumers are provided a special lock that can be opened by either a combination or a master key. The master keys are provided to a "luggage screening entity" (e.g., a security agency) that has agreed to search for special locks bearing an identifying mark and, if found, to use the master key to open and inspect the luggage as necessary. The patentee, David Tropp, sued Travel Sentry for infringement after Travel Sentry agreed to provide the Transportation Safety Administration (TSA) 1,500 master keys (or passkeys), along with instructions, to enable TSA's security officers to open and relock certified Travel Sentry locks on checked airline baggage without damaging the locks.

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