MEMORANDUM & ORDER
These related patent suits have made their way around the ferris wheel once more. In the first action, Travel Sentry, and in the second, all defendants, have moved for summary judgment on grounds of noninfringement, invalidity, and 28 U.S.C. § 1498. In both actions, Tropp has filed cross-motions for summary judgment on infringement, which prompted motions to strike certain exhibits. For the reasons that follow, Travel Sentry’s motion for summary judgment on noninfringement (in the first action) is granted; defendants’ motions for summary judgment on nqnin-ftmgement in (in the second action), is granted; Tropp’s cross-motions for infringement are denied in both actions; and the motions to strike in both actions are denied as moot.
Background
A recitation of the spasmodic path that brought these motions before the Court, again, is in order. The essential facts, set forth at length in Travel Sentry, Inc. v. Tropp,
On September 10, 2010, this Court awarded summary ■ judgment to Travel Sentry on the issue of noninfringmént in the 06-cv-6415 action, finding that there was no direct infringement because no single actor performed, or directed or controlled the performance of, all of the steps of Tropp’s patents. Travel Sentry,
Tropp appealed these dеcisions to the Federal Circuit, which, grounding its opinion on the then-recently and after-decided Akamai Technologies, Inc., v. Limelight Networks, Inc. (“Akamai II”)
Prudentially, the Court stayed those motions while Akamai was appealed. The Supreme Court reversed Akamai, holding that “[t]he statutory text and structure and our prior case law require” a finding that where there has been no direct infringement of a method patent, there can be no indirect infringement Limelight Networks, Inc. v. Akamai Techs., Inc. (“Akamai III”), — U.S. —,
This time, the Federal Circuit re-affirmed the single entity rule for direct liability announced in BMC Res., Inc. v. Paymentech, L.P.,
All parties have submitted supplemental briefing on the impact of the Federal Circuit’s en banc holding Akamai V on their outstanding motions.
Discussion
That the travel path of this litigation is circular is not open to dispute. To the extent that the Federal Circuit reversed this Court’s finding of noninfringement in these actions, that reversal was bаsed on the Federal Circuit’s holding in Akamai II. That holding was itself reversed by the Supreme Court in Akamai III, but subsequent to the mandate issued by the Court of Appeals in these actions. With the dust
The key question, then, is whether the line of Akamai cases—particularly the most recent Federal Circuit decision, Aka-mai V— has expanded the scope of direct infringement. Because this Court finds it has not, the analysis and conclusions set forth in the 2010 grant of summary judgment to Travel Sentry, and subsequent dismissal of the Conair action based on collateral estoppel, remain principally the same.
The law of direct infringement post-A/camai V remains, certainly in relevant part, unchanged. “Infringement requires, as it always has, a showing that a defendant hás practiced each and every element of the claimed invention.*’ BMC Res,, Inc. v. Paymentech, L.P.,
Akamai V does not disturb the BMC Res./Muniauction test. The court declared that “[w]e will hold an entity responsible for others’ performance of method steps in two sets of circumstances: (1) where that entity directs or controls others’ performance, and (2) where the actors form a joint enterprise.” Akamai V,
Akamai V added one additional circumstance: “when an alleged infringer conditions pаrticipation in an activity or receipt of a benefit upon performance of a step- or steps of a patented method and establishes the manner or timing of that performance.” Id. In the Akamai saga, the patent at issue was a method for delivering- content over the internet. Id. at 1024. Limelight, a content delivery service,’performed all steps of the patented method except that its customers agreed to perform the last step, “tagging” and serving content, as a condition of their use of the service. Id. at 1024-25. Limelight’s customers were sent a welcome letter with instructions on how tq perform the tagging function, how to integrate Limelight’s hostname into its webpages, and were assigned a Technical Account Manager, employed by Limelight, to lead the implementation of its service. Id. at 1025. “If Limelight’s customers dо not follow these precise steps, Limelight’s service will not be -available.” Id. Moreover, “Limelight’s engineers continuously engage with customers’ activities.” Id. In sum, “Limelight’s customers do not merely
That hypothetical scenario—taking guidance and acting independently—is precisely' what the TSA has done with Travel Sentry. Travel Sentry issued guidance to the TSA in the form of a single Memorandum of Understanding (“MOU”), agreeing to provide, gratis, master keys and training guidance on how to identify locks licensed through their trademark. The TSA merely agreed to test the keys, and, if it found them satisfactory, make a “good faith effort” to use the keys to open bags whenever the TSA found it “practicable” ' to do so. The TSA was under no obligation to use the keys, was absolved of any i liability should the locks be damaged, and would suffer no consequences for failure to comply. There is no genuine material, dispute about these facts; there is simply no evidence that Travel Sentry had any influence, whatsoever on the third .and fourth steps of the method carried out by the TSA, let alone “masterminded” the entire patentеd process. The codicil to the existing law on direct infringement added by Akamai V is completely inapposite.
Tropp’s effort to manufacture a resemblance to Limelight is unavailing. Plainly, there is no similarity between a binding contractual agreement in which a third-party customer must perform steps of the patented method in order to uphold its end of the bargain and the kind of nonbinding guidance and independent action set in motion here. Tropp’s reliance on Eli Lilly & Co. v. Teva Parenteral Medicines, Inc.,
Tropp’s last-ditch argument is that, somehow, Travel Sentry and the TSA are engaged in a joint enterprise, and the Co-nair defendants and Travel Sentry are engaged in a joint enterprise, and the two “enterprises” togеther link all the entities for joint liability. In light of all else, this theory is absurd on its face. A joint enterprise requires proof of four elements:
1) an agreement, express or implied, among members of the group;
2) a common purpose to be carried out by the group;
'3) a community of pecuniary interest in that purpose, among the members; аnd
4) equal right to a voice in the direction of the enterprise, which gives . an equal right of control.
Akamai V,
Conclusion -
For the foregoing reasons, as well as those set forth in Travel Sentry, Inc. v. Tropp,
Tropp’s cross-motions for infringement are denied, and the motions to strike are denied as moot.
The Clerk of Court is directed to enter judgments accordingly and close these cases.
So Ordered.
Notes
. The appeal was initiаlly heard as a panel before rehearing en banc. See Akamai Tech
. In fact, the Federal Circuit expressly affirmed the findings in those two actions that there was no direct infringement. Travel Sentry,
. Tangentially, Tropp attempts to circumvent this defense by arguing the benefit prоng— namely, that "the TSA will not receive the benefit, i.e. reduce theft, reduce claims, and satisfy public and political pressure for safe and secure luggage.” PI. Opp., 06-cv-6415, ECF Dkt. No. 229, at 7. This argument— which has no citation and is unsupported by any admissible evidence—strains belief. The TSA screеns luggage because of the screening mandate of Congress, not because of any purported intangible benefits. The stated purpose on the TSA’s MOU with Travel Sentry itself betrays such a grand set of motivations: "The purpose of this 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 such locks.” Deck of Donald R. Dinan, 06-cv-6415, ECF Dkt. No. 228, Ex. 10. No other purposes are stated, nor can they be reasonably read into the- agreement.
. Nor is there a genuine dispute as to the absence of other elements of joint enterprise liability. Tropp's contentions to the contrary are without merit.