Determining a “Joint Enterprise” in the Wake of Akamai’s Divided Infringement StandardsDecember 21, 2017

On December 19, 2017, the Federal Circuit released an opinion in Travel Sentry, Inc. v. Tropp, clarifying further the requirements for satisfying divided infringement, i.e. infringement involving multiple actors carrying out the claimed steps of a method patent where no single accused infringer has performed all the steps. The opinion stems from a series of cases between Travel Sentry and David Tropp. Tropp owns patents directed to methods of improving airline luggage inspection through the use of dual-access locks. The luggage has a dual lock system where one lock combination is available to the consumer, and the other is a master key lock portion available to the TSA. In practice, the TSA can search the bag and re-lock the baggage, providing the consumer with secure baggage before and after TSA inspection.

Tropp’s method patents require the steps of (1) making the dual lock available to the consumer and (2) providing the master key lock portion to the TSA. Travel Sentry clearly provides the first step, but the TSA provides the second step, rather than Travel Sentry itself. Thus, the key issue is whether the TSA’s activity of supplying and utilizing the master key was sufficiently controlled and/or properly a “joint enterprise” as required by Akamai v. Limelight.

The district court determined that Travel Sentry “facilitated” the TSA’s activity, but that this facilitation did not rise to the level of control, or of a joint enterprise under Akamai. Travel Sentry’s actions fell short because there was not enough evidence to show Travel Sentry was able to influence the TSA’s actions to the point where Travel Sentry “masterminded” the enactment of the patented process.

Upon review, the Federal Circuit vacated the district court’s judgment on the grounds that the district court interpreted Akamai’s understanding of “joint enterprise” too narrowly. In addition, the district failed to consider “the context of the particular facts presented” in the case, such as the level of cooperation expected between a government agency and an infringer. The Federal Circuit noted that evidence of cooperation that was presented may be sufficient for a jury to attribute the TSA’s activities to Travel Sentry.

Regardless of the outcome upon remand to the district court, the Federal Circuit’s opinion in this case opens up a broader understanding of a “joint enterprise” within the context of divided infringement.

Sarah Dickhut is an Associate Attorney in the Chemical/Biotech Patent Practice Group at McKee, Voorhees & Sease, PLC. For additional information please visit www.ipmvs.com or contact Sarah directly via email at sarah.dickhut@ipmvs.com.