United States Court of Appeals for the Federal Circuit

1 United States Court of Appeals for the Federal Circuit _____ TRAVEL sentry , INC., Plaintiff-Cross-Appellant v. DAVID A. TROPP, Defendant-Appellant ---------------------------------------- ---------------------------------------- - DAVID A. TROPP, Plaintiff-Appellant v. CONAIR CORPORATION, BRIGGS & RILEY TRAVELWARE LLC, EBAGS, INC., EAGLE CREEK, A DIVISION OF VF OUTDOOR, INC., HP MARKETING CORP., LTD., INDUSTRIES, LLC, MAGELLAN'S INTERNATIONAL TRAVEL CORPORATION, MASTER LOCK COMPANY LLC, OUTPAC DESIGNS INC., SAMSONITE CORPORATION, TRAVELPRO INTERNATIONAL INC.

2 , TRG ACCESSORIES, LLC, TUMI, INC., WORDLOCK, INC., Defendants-Cross Appellants VICTORINOX SWISS ARMY, INC., Defendant-Appellee TITAN LUGGAGE USA, DELSEY LUGGAGE INC., Defendants TRAVEL sentry , INC. v. DAVID TROPP 2 _____ 2016-2386, 2016-2387, 2016-2714, 2017-1025 _____ Appeals 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. _____ Decided: December 19, 2017 _____ 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.

3 , HP Marketing Corp., Ltd., Industries, LLC, Magellan's International Travel Corpo-ration, 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., Industries, LLC, Master Lock Company LLC, Outpac Designs Inc.

4 , Samsonite Corporation, Travelpro International Inc., TRG Accesso-ries, LLC, Wordlock, Inc. and appellee Victorinox Swiss Army, Inc. also represented by BRIAN MICHAELIS. PAUL WHITFIELD HUGHES, Mayer Brown LLP, Wash-ington, DC, argued for appellant. Also represented by ALAN M. GRIMALDI, GARY HNATH, ANDREW JOHN PINCUS, JONATHAN WEINBERG. PETER IAN BERNSTEIN, Scully, Scott, Murphy & Press-er, Garden City, NY, for cross-appellant Briggs & Riley Travelware LLC. TRAVEL sentry , INC. v. DAVID TROPP 3 CAROLYN V.

5 JUAREZ, Neugeboren O Dowd PC, Boul-der, CO, for cross-appellant eBags, Inc. ROBERT J. KENNEY, Birch Stewart Kolasch & Birch, LLP, Falls Church, VA, for cross-appellant Magellan s International Travel Corporation. NEIL P. SIROTA, Baker Botts, LLP, New York, NY, for cross-appellant Tumi, Inc. Also represented by JENNIFER COZEOLINO TEMPESTA. _____ Before LOURIE, O MALLEY, and TARANTO, Circuit Judges. O MALLEY, Circuit Judge. This is the third time we have had occasion to preside over this longstanding dispute regarding whether Travel sentry , Inc.

6 ( Travel sentry ) and its licensees infringe one or more claims of two patents issued to appellant David A. Tropp ( Tropp ): 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 F. App x 958 (Fed. Cir. 2012); Tropp v. Conair Corp., 484 F. App x 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 35 271(a).

7 See Travel sentry , Inc. v. Tropp (Travel sentry III), 192 F. Supp. 3d 332 ( 2016). Travel sentry and several of its licensees cross- appeal from the district Court s denial of their motions for attorney fees brought under 35 285. We conclude that there are genuine disputes of mate-rial fact regarding whether Travel sentry directs or controls the performance of certain steps of the claimed TRAVEL sentry , INC. v. DAVID TROPP 4 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.

8 Because Travel sentry and its licensees are no longer prevailing parties to whom an award of attor-ney fees could be made under 35 285, we dismiss their cross- appeal as moot. I. BACKGROUND A. Factual Background The 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 spe-cial lock having a combination lock portion and a master key lock portion, the master key lock portion for receiv-ing 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 air-line luggage.

9 The special lock also hav-ing an identification structure associated therewith that matches an identification structure previously provided to the luggage screening enti-ty, which special lock the luggage screening entity has agreed to process in accordance with a special proce-dure, [b] marketing the special lock to the con-sumers in a manner that conveys to the consumers that the special lock TRAVEL sentry , INC. v. DAVID TROPP 5 will be subjected by the luggage screening entity to the special proce-dure, [c] the identification structure signaling to a luggage screener of the luggage screening entity who is screening lug-gage 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 lock, and [d]

10 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 in-dividual piece of luggage, to use the master key previously provided to the luggage screening entity to, if neces-sary, open the individual piece of lug-gage. 537 patent col. 6, ll. 6 37. A comprehensive overview of the facts of these cases is provided in Travel sentry II. 497 F.