Background
David Tropp held patents on a method for improving luggage inspection by the Transportation Security Administration (TSA). The method involved: (1) making luggage locks accessible to the TSA using a master key system; (2) the TSA having access to master keys; and (3) the TSA actually using the master keys to inspect luggage without destroying the lock. Travel Sentry, Inc. licensed its dual-access lock system to luggage manufacturers and entered into an agreement with the TSA under which the TSA agreed to use Travel Sentry master keys to open and relock bags when inspecting them.
Tropp sued Travel Sentry and luggage manufacturers for divided infringement, arguing that Travel Sentry and the TSA together performed all the steps of the claimed method. The district court granted summary judgment of non-infringement, finding that Travel Sentry did not direct or control the TSA’s performance of the inspection steps.
The Court’s Holding
The Federal Circuit reversed. Applying the en banc Akamai v. Limelight (2015) standard for divided infringement — which holds that a party can be liable for another’s performance of a method step when it conditions participation in an activity on performance of that step or establishes the manner or timing of performance — the court found genuine disputes of material fact about whether Travel Sentry directed or controlled the TSA’s use of the master keys.
The court found sufficient evidence that: (1) Travel Sentry conditioned the TSA’s participation in the dual-access lock program on using Travel Sentry master keys to open and relock bags; and (2) Travel Sentry established the manner of the TSA’s performance through its agreement specifying how and when the TSA would use the keys. This was enough to create a triable issue on the direction and control question under Akamai, precluding summary judgment.
Key Takeaways
- Divided infringement under the Akamai framework can be established when one party conditions another party’s participation in a program on performing a method step — even when the second party is a government agency with independent discretion over its own operations.
- Formal contractual agreements between the accused infringer and a third party that specify how the third party will perform method steps are evidence of the “direction and control” or “condition participation” prong of the Akamai divided infringement test.
- Method patent claims that require steps performed by end users or third parties (customers, government agencies, service providers) can give rise to divided infringement liability when the patent holder can show the defendant conditions or controls the third party’s performance.
- Travel Sentry illustrates that the post-Akamai divided infringement framework is workable in non-internet contexts — it applies whenever a commercial arrangement between two parties satisfies the direction, control, or conditioning prongs of the Akamai test.
Why It Matters
Travel Sentry v. Tropp was an important application of the Federal Circuit’s en banc Akamai v. Limelight divided infringement framework in a physical products context — demonstrating that the doctrine is not limited to online platforms and internet services where companies and users share method steps. The decision helped define the contours of what it means to “condition participation” in an activity on performance of a method step, providing clearer guidance for how patent holders can establish divided infringement claims against parties who orchestrate multi-actor transactions.
For patent prosecutors and litigators, Travel Sentry reinforced that method claims requiring steps by multiple actors remain viable provided the patent holder can demonstrate that one party conditions, directs, or controls another’s performance. The decision is relevant to a wide range of commercial arrangements — including technology ecosystems, franchise systems, and platform business models — where one company establishes the conditions under which partners, users, or government entities perform specific technical steps.