from the United States District Court for the Eastern
District of New York in Nos. 1:06-cv-06415-ENV-RLM,
1:08-cv-04446-ENV-RLM, Judge Eric N. Vitaliano.
William L. Prickett, Seyfarth Shaw LLP, Boston, MA, argued
for cross-appellants Briggs & Riley Trav-elware LLC,
Conair Corporation, Eagle Creek, A Division of VF Outdoor,
Inc., HP Marketing Corp., Ltd., L.C. Industries, LLC,
Magellan's International Travel Corporation, Master Lock
Company LLC, Outpac Designs Inc., Samsonite Corporation, TRG
Accessories, LLC, Travel Sentry, Inc., Travelpro
International Inc., Tumi, Inc., Wordlock, Inc., eBags, Inc.
and appellee Victorinox Swiss Army, Inc. Cross-appellants
Travel Sentry, Inc., Conair Corporation, Eagle Creek, A
Division of VF Outdoor, Inc., HP Marketing Corp., Ltd., L.C.
Industries, LLC, Master Lock Company LLC, Outpac Designs
Inc., Samsonite Corporation, Travelpro International Inc.,
TRG Accessories, LLC, Wordlock, Inc. and appellee Victorinox
Swiss Army, Inc. also represented by Brian Michaelis.
Whitfield Hughes, Mayer Brown LLP, Washington, DC, argued for
appellant. Also represented by Alan M. Grimaldi, Gary Hnath,
Andrew John Pincus, Jonathan Weinberg.
Ian Bernstein, Scully, Scott, Murphy & Press-er, Garden
City, NY, for cross-appellant Briggs & Riley Travelware
Carolyn V. Juarez, Neugeboren O'Dowd PC, Boulder, CO, for
cross-appellant eBags, Inc.
J. Kenney, Birch Stewart Kolasch & Birch, LLP, Falls
Church, VA, for cross-appellant Magellan's International
P. Sirota, Baker Botts, LLP, New York, NY, for
cross-appellant Tumi, Inc. Also represented by Jennifer
Lourie, O'Malley, and Taranto, Circuit Judges.
O'MALLEY, CIRCUIT JUDGE.
the third time we have had occasion to preside over this
longstanding dispute regarding whether Travel Sentry, Inc.
("Travel Sentry") and its licensees infringe one or
more claims of two patents issued to appellant David A. Tropp
("Tropp"): U.S. Patent Nos. 7, 021, 537 ("the
'537 patent") and 7, 036, 728 ("the '728
patent"). See Travel Sentry, Inc. v. Tropp
(Travel Sentry II), 497 Fed.Appx. 958 (Fed. Cir.
2012); Tropp v. Conair Corp., 484 Fed.Appx. 568
(Fed. Cir. 2012). In this most recent iteration, Tropp
appeals from the district court's entry of summary
judgment that Travel Sentry and its licensees do not directly
infringe any of the method claims recited in the '537 and
'728 patents under 35 U.S.C. § 271(a). See
Travel Sentry, Inc. v. Tropp (Travel Sentry
III), 192 F.Supp.3d 332 (E.D.N.Y. 2016). Travel Sentry
and several of its licensees cross-appeal from the district
court's denial of their motions for attorney fees brought
under 35 U.S.C. § 285.
conclude that there are genuine disputes of material fact
regarding whether Travel Sentry directs or controls the
performance of certain steps of the claimed methods.
Accordingly, we vacate the district court's entry of
summary judgment of noninfringement in favor of Travel Sentry
and its licensees and remand for further proceedings. Because
Travel Sentry and its licensees are no longer
"prevailing parties" to whom an award of attorney
fees could be made under 35 U.S.C. § 285, we dismiss
their cross-appeal as moot.
claims of the '537 and '728 patents are directed to
methods of improving airline luggage inspection through the
use of dual-access locks. Claim 1 of the '537 patent is
representative, and recites:
A method of improving airline luggage inspection by a luggage
screening entity, comprising:
[a] making available to consumers a special lock having a
combination lock portion and a master key lock portion, the
master key lock portion for receiving a master key that can
open the master key lock portion of this special lock, the
special lock designed to be applied to an individual piece of
airline luggage, the special lock also having an
identification structure associated therewith that matches an
identification structure previously provided to the luggage
screening entity, which special lock the luggage screening
entity has agreed to process in accordance with a special
[b] marketing the special lock to the consumers in a manner
that conveys to the consumers that the special lock will be
subjected by the luggage screening entity to the special
[c] the identification structure signaling to a luggage
screener of the luggage screening entity who is screening
luggage that the luggage screening entity has agreed to
subject the special lock associated with the identification
structure to the special procedure and that the luggage
screening entity has a master key that opens the special
[d] the luggage screening entity acting pursuant to a prior
agreement to look for the identification structure while
screening luggage and, upon finding said identification
structure on an individual piece of luggage, to use the
master key previously provided to the luggage screening
entity to, if necessary, open the individual piece of
'537 patent col. 6, ll. 6-37.
comprehensive overview of the facts of these cases is
provided in Travel Sentry II. 497 Fed.Appx. at
959-63. Only background relevant to this appeal is provided
through his company Safe Skies, LLC, administers a lock
system that permits the Transportation Security
Administration ("TSA") to unlock, inspect, and
relock checked baggage. Id. at 960. Travel Sentry
also administers a system that enables a traveler to lock a
checked bag while allowing TSA to open the lock, search the
bag as needed, and then relock it. Id. at 961. The
identifying mark on Travel Sentry's locks is a red dia-
mond logo, for which Travel Sentry holds a registered
trademark. Id. Travel Sentry has entered into
license and distribution agreements with several lock
manufacturers, lock distributors, and luggage manufacturers,
under which Travel Sentry receives payments in exchange for
granting these entities the right to use and market its locks
and master keys. Id. Travel Sentry, however,
"retains the right to monitor the quality of the locks
bearing its mark and to control the distribution of master
keys, which have a distinctive shape and color."
October 2003, Travel Sentry entered into a three-page
Memorandum of Understanding ("MOU") with TSA.
Id. The MOU, which is the only written agreement
between TSA and Travel Sentry concerning Travel Sentry
certified locks, states that Travel Sentry will supply TSA
with master keys (termed "passkeys") to open
checked baggage secured with certified locks. Id.
According to the MOU, the purpose of the agreement:
is to set forth terms by which Travel Sentry will provide
TSA, at no cost, with 1, 500 complete sets of passkeys for
the TSA to distribute to field locations. These passkeys are
designed to permit TSA screeners to open checked baggage
secured with Travel Sentry certified locks without breaking
TSA will test these passkeys to ensure their operational
suitability. If TSA determines that Travel Sentry certified
locks or the passkeys required for their operation do not
perform their intended function, TSA will inform Travel
Sentry and this agreement will be considered null and void.
TSA takes no responsibility for any damage to locks or
baggage secured with Travel Sentry locks, although TSA will
make good faith efforts to distribute the passkeys and
information provided by Travel Sentry on the use of the
passkeys, and to use the passkeys to open checked baggage
secured with Travel Sentry certified locks whenever
practicable. TSA screeners will make good faith efforts to
relock Travel Sentry locks after bags are inspected.
Id. at 961.
also sets forth the responsibilities of both parties to the
agreement. With respect to TSA, the MOU provides that:
(a) TSA will accept passkey sets, as well as backup
replacement sets, from Travel Sentry and distribute the sets
to all areas where baggage is being screened;
(b) the passkeys will be stamped "Property of TSA"
and "Unlawful to Duplicate, " may include the DHS
logo if desired and authorized, and will be marked with a
tracking number in a TSA-agreed format so that they can be
easily integrated into the TSA property management system;
(c) Travel Sentry will coordinate the content of public
announcement with the TSA in advance of the program launch,
tentatively scheduled for November 12, 2003, including
promotional materials, press releases and similar media; and
(d) TSA may offer the same terms and conditions in this
agreement to any other entity that seeks to ...