By Eric Schweibenz
On March 23, 2010, Chief ALJ Paul J. Luckern issued the public version of Order No. 6 (dated March 18, 2010) in Certain Dual Access Locks and Products Containing Same (Inv. No. 337-TA-689), granting Respondents motion for summary determination of non-infringement and terminating the investigation.

By way of background, Complainants Safe Skies, LLC and David Tropp (collectively, “Safe Skies”) alleged violations of Section 337 against several respondents regarding certain dual access locks, which allegedly infringe U.S. Patent Nos. 7,021,537 (the ‘537 patent) and 7,036,728 (the ‘728 patent).  See our September 17, 2009 and October 19, 2009 posts for more details.  According to the Order, on February 23, 2010, the Respondents filed a motion for summary determination of non-infringement of all asserted claims of the ‘537 and ‘728 patents.  On February 24, 2010, the Commission Investigative Staff filed a motion for summary determination that the accused products do not infringe the asserted claims of the ‘537 and ‘728 patents.

In the Order, ALJ Luckern determined that the asserted patents claim “a method of making airline luggage inspection secure using a dual access lock that can be used by travelers to secure their luggage and accessed by a luggage screening entity using a master key.”  ALJ Luckern included the following undisputed facts in the Order:  (1) In the United States, the United States Department of Homeland Security's Transportation Security Administration (TSA) is the entity that inspects and screens airline luggage; (2) all respondents are licensees of Travel Sentry and Travel Sentry is not a party in this investigation; and (3) there is a memorandum of understanding (MOU) between the non-respondent TSA and non-respondent Travel Sentry, to which none of the respondents are a party.

ALJ Luckern determined that, “where the actions of multiple parties combine to perform every step of a claimed method, the claim is directly infringed only if one party exercises ‘control or direction’ over the entire process such that every step is attributable to the controlling party, i.e., the ‘mastermind.’” ALJ Luckern further noted that Complainants alleged joint infringement by (i) the respondents, (ii) non-respondent Travel Sentry (which provides the master key to the luggage screening entity), and (iii) non-respondent TSA (the luggage screening entity), and that the MOU is allegedly the agreement pursuant to which the TSA acts.   ALJ Luckern therefore found that “the only possible ‘mastermind’ alleged by complainants is non-respondent Travel Sentry.”  ALJ Luckern further held that even if non-respondent Travel Sentry did control non-respondent TSA and all respondents, and “the combined efforts” of these three sets of entities “infringed the asserted method claims of the patents in issue, complainants' allegation of direct infringement by joint infringers would fail, as a matter of law, because the ‘mastermind,’ i.e., Travel Sentry, is not a party in this investigation (See 74 Fed. Reg. 54065-66).”

ALJ Luckern also found that, “under the terms of the MOU, non-respondent Travel Sentry cannot require that the non-respondent TSA use the passkeys, and non-respondent Travel Sentry has no right to limit or stop use of said passkeys, even upon termination of the MOU.”  ALJ Luckern therefore held that, “complainants' allegations of direct infringement, which require, inter alia, that the non-respondent TSA practice certain elements of the asserted claims under the control or direction of non-respondent Travel Sentry, would fail as a matter of law, even if non-respondent Travel Sentry were a respondent in this investigation.”  Since the named respondents do not perform all elements of the asserted claims, and the respondents do not control or direct any non-respondents to perform the remaining elements of the claims, the respondents “cannot be held liable for direct infringement” as “a matter of law.”

The Order then concluded that “since there can be no violation of Section 337 in this investigation absent direct infringement, the investigation is terminated in toto.”