In cases in which more than one entity performs the steps of a claimed method or process, a party is liable for direct infringement only if that party exercises “control or direction” over the performance of each step of the claim, including those that the party does not itself perform. An accused infringer that merely “controls access to its system and instructs [others] on its use” is not liable for direct infringement. (This is another example of why it is important to consider the perspective with which a claim is drafted, and try to capture the acts of only one party to avoid having to rely on divided or indirect infringement theories.)
Background / Facts: The patents at issue disclose an improved method of airline luggage screening using a dual-access lock. The lock enables a traveler to secure his or her luggage while still permitting it to be accessed by a luggage screening entity with a master key. Accused infringer Travel Sentry manufactures locks providing similar functionality, and operates under an agreement with the Transportation Security Administration (“TSA”) to conduct airline luggage inspections accordingly. Several of the steps of the claimed method were performed by Travel Sentry itself in manufacturing the locks, but other steps were only performed by the TSA when it screens luggage.
Issue(s): Whether Travel Sentry sufficiently “controls or directs” the TSA in its performance of various claim steps, such that Travel Sentry is liable for the TSA’s acts under a divided infringement theory of direct infringement.
Holding(s): No. The “control or direction” standard for assessing direct infringement in cases where more than one entity performs the steps of a claimed method or process is only satisfied in situations where the law would traditionally hold the accused direct infringer vicariously liable for the acts committed by the other party in completing performance of the claimed method, such as where the accused direct infringer “contract[s] out steps of a patented process to another entity.” Here, Travel Sentry cannot be said to exert control over the TSA when the “TSA remains free to decide in the course of its screening whether or not it will use the master keys to open a Travel Sentry certified lock” and when their agreement “does not provide for any consequences of a failure to comply, and either party can unilaterally terminate it at will.” An accused infringer that merely “controls access to its system and instructs [others] on its use” is not liable for direct infringement. (Remanded for further consideration of indirect infringement, however, under the new standard in Akamai.)