   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., L.C. INDUSTRIES, LLC,
    MAGELLAN'S INTERNATIONAL TRAVEL
CORPORATION, MASTER LOCK COMPANY LLC,
      OUTPAC DESIGNS INC., SAMSONITE
 CORPORATION, TRAVELPRO INTERNATIONAL
   INC., TRG ACCESSORIES, LLC, TUMI, INC.,
              WORDLOCK, INC.,
           Defendants-Cross Appellants

              VICTORINOX SWISS ARMY, INC.,
                    Defendant-Appellee

 TITAN LUGGAGE USA, DELSEY LUGGAGE INC.,
                Defendants
2                       TRAVEL SENTRY, INC.   v. DAVID TROPP



                ______________________

      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., HP Marketing Corp., Ltd., L.C.
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., L.C. Industries, LLC, Master
Lock Company LLC, Outpac Designs Inc., 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. 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. (“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 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 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.
    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
4                        TRAVEL SENTRY, INC.   v. DAVID TROPP



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 attor-
ney fees could be made under 35 U.S.C. § 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, 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] 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. App’x at 959–63.
Only background relevant to this appeal is provided here.
    Tropp, through his company Safe Skies, LLC, admin-
isters 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-
6                        TRAVEL SENTRY, INC.   v. DAVID TROPP



mond logo, for which Travel Sentry holds a registered
trademark. Id. Travel Sentry has entered into license
and distribution agreements with several lock manufac-
turers, lock distributors, and luggage manufacturers,
under which Travel Sentry receives payments in ex-
change 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.”
Id.
    In 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 loca-
    tions. These passkeys are designed to permit TSA
    screeners to open checked baggage secured with
    Travel Sentry certified locks without breaking
    such locks.
    TSA will test these passkeys to ensure their oper-
    ational 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, alt-
    hough TSA will make good faith efforts to distrib-
    ute the passkeys and information provided by
TRAVEL SENTRY, INC.   v. DAVID TROPP                      7



    Travel Sentry on the use of the passkeys, and to
    use the passkeys to open checked baggage secured
    with Travel Sentry certified locks whenever prac-
    ticable. TSA screeners will make good faith ef-
    forts to relock Travel Sentry locks after bags are
    inspected.
Id. at 961.
    The MOU 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 back-
    up replacement sets, from Travel Sentry and dis-
    tribute 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 integrat-
    ed 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 No-
    vember 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
    provide similar services.
See id. at 961–62. With regard to Travel Sentry’s respon-
sibilities, the MOU states that:
    (a) Travel Sentry acknowledges that the TSA
    cannot make or infer any exclusive endorsement
    of Travel Sentry certified locks, nor can Travel
    Sentry claim that any such endorsement exists.
8                        TRAVEL SENTRY, INC.   v. DAVID TROPP



    Travel Sentry may not use the DHS/TSA logo on
    any of its locks or distributed print or other media
    materials unless specifically authorized to do so in
    writing;
    (b) Travel Sentry understands that the TSA in-
    tends to develop a functional standard, open to
    the public, for ‘Independent Dual Custody Opera-
    tion Locking Systems.’ By moving ahead with its
    program in advance of the publication and adop-
    tion of this standard, Travel Sentry or any other
    entity takes some degree of risk in that their lock-
    ing system may not meet the final version of the
    functional standard; and
    (c) Travel Sentry will provide TSA with all neces-
    sary screener training materials, in sufficient
    quantities, on lock recognition, use of passkeys to
    open locks and ordering of replacement or addi-
    tional sets of passkeys. Travel Sentry will work
    with TSA in ensuring distribution of training ma-
    terials to all checked baggage screening sites.
See id. at 962. Finally, the MOU states that its terms will
remain in effect until terminated, and that either party
may terminate the MOU upon thirty days’ notice to the
other party. Id.
                B. Procedural Background
    The procedural histories of these cases closely tracked
the developments in Akamai Technologies, Inc. v. Lime-
light Networks, Inc., Civ. Action No. 06–11109–RWZ (D.
Mass.), a case that resulted in a number of decisions from
this court and one from the Supreme Court examining the
respective scopes of divided and induced infringement.
    Travel Sentry II primarily concerned Tropp’s appeal of
the district court’s 2010 grant of summary judgment that
Travel Sentry does not directly or indirectly infringe
TRAVEL SENTRY, INC.   v. DAVID TROPP                      9



claims of either patent. See generally Travel Sentry II,
497 F. App’x 958. The district court, relying on this
court’s precedents in BMC Resources, Inc. v. Paymentech,
L.P., 498 F.3d 1373 (Fed. Cir. 2007), Muniauction, Inc. v.
Thomson Corp., 532 F.3d 1318 (Fed. Cir. 2008), and
Golden Hour Data Systems, Inc. v. emsCharts, Inc., 614
F.3d 1367 (Fed. Cir. 2010), held that Travel Sentry could
be held liable as a direct infringer under 35 U.S.C.
§ 271(a) only if it “controls the TSA’s performance” of the
last two claim steps. Travel Sentry, Inc. v. Tropp (Travel
Sentry I), 736 F. Supp. 2d 623, 636 (E.D.N.Y. 2010).
    The district court then considered whether the MOU
was sufficient “to establish the ‘control or direction’ re-
quirement for joint infringement liability established by
the Federal Circuit in BMC Resources and Muniauction.”
Id. at 638. The district court answered this question in
the negative, reasoning that, “[q]uite simply, Tropp points
to no evidence at all that could morph this relatively
noncommittal ‘understanding’ between Travel Sentry and
the TSA into a contract that renders Travel Sentry vicari-
ously liable for the TSA’s actions.” Id. (citation omitted).
The district court then observed that the MOU (1) does
not subject TSA “to any concrete or enforceable obligation
to use the master keys at all,” (2) expressly absolves TSA
“of liability for any locks that are damaged during the
luggage screening process,” (3) does not “provide for any
consequences of a failure to comply,” and (4) can unilater-
ally be terminated by either party. Id. In the district
court’s view, “all that the MOU proves is that Travel
Sentry facilitates the TSA’s access to Travel Sentry’s lock
system (i.e., supplies it with the master keys and provides
instructions and guidance to TSA screeners on how to use
the system),” which the court found to be analogous to the
situation in Muniauction, in which we held that a defend-
ant is not liable for direct infringement where it merely
“controls access to its system and instructs [third parties]
10                         TRAVEL SENTRY, INC.   v. DAVID TROPP



on its use . . . .”   Id. (citing Muniauction, 532 F.3d at
1329).
     The district court then disposed of Tropp’s indirect in-
fringement claim, reasoning that, “in the absence of a
showing that any entity has directly infringed Tropp’s
patents, any claim by him against Travel Sentry for
indirect infringement fails as a matter of law.” Id. at 639.
This is because, under this court’s then-prevailing law,
“[l]iability for indirect infringement can arise only in the
presence of direct infringement.” Id. at 639 (citing
Dynacore Holdings Corp. v. U.S. Philips Corp., 363 F.3d
1263, 1272 (Fed. Cir. 2004)).
    After the district court decided Travel Sentry I, but
before we issued our opinion in Travel Sentry II, we
issued our en banc opinion in Akamai Technologies, Inc. v.
Limelight Networks, Inc. (Akamai II), 692 F.3d 1301 (Fed.
Cir. 2012) (en banc) (per curiam), rev’d, 134 S. Ct. 2111
(2014). In Akamai II, we “reconsider[ed] and overrule[d]”
our earlier decision in BMC, in which we “held that in
order for a party to be liable for induced infringement,
some other single entity must be liable for direct in-
fringement.” 692 F.3d at 1306 (citing BMC, 498 F.3d
1373). Akamai filed a petition for writ of certiorari, which
the Supreme Court granted.
     Travel Sentry II was decided shortly after Akamai II
issued. Although we concluded in Travel Sentry II that
the district court did not err in its direct infringement
analysis, we vacated the district court’s grant of summary
judgment and remanded “for a determination whether,
under the standard set forth in [Akamai II], Travel Sentry
is liable for indirect infringement.” Travel Sentry II, 497
F. App’x at 966–67.
    On remand, the district court entertained a second
round of summary judgment motions in both actions, but
stayed consideration of these motions pending the out-
TRAVEL SENTRY, INC.   v. DAVID TROPP                      11



come of Limelight’s appeal of Akamai II to the Supreme
Court. On June 2, 2014, the Supreme Court issued its
opinion in Limelight Networks, Inc. v. Akamai Technolo-
gies, Inc. (Limelight), reversing the judgment below and
remanding for further proceedings. 134 S. Ct. 2111, 2120
(2014). We issued a panel opinion in Akamai Technolo-
gies, Inc. v. Limelight Networks, Inc. (Akamai IV), 786
F.3d 899 (Fed. Cir. 2015), and then an en banc opinion in
Akamai Technologies, Inc. v. Limelight Networks, Inc.
(Akamai V), 797 F.3d 1020 (Fed. Cir. 2015) (en banc), both
of which addressed the scope of direct infringement under
§ 271(a) in instances where no single actor performs all
steps of a method claim. In Akamai V, we affirmed the
principle that “[d]irect infringement under § 271(a) occurs
where all steps of a claimed method are performed by or
attributable to a single entity,” and held that an entity is
responsible for others’ performance of method steps where
that entity directs or controls others’ performance or
where the actors form a joint enterprise. 797 F.3d at
1022. We also concluded that, on the facts presented,
liability under § 271(a) could be found when an alleged
infringer “conditions participation 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. at 1023 (citation omitted).
    In the wake of Akamai V, the parties in this proceed-
ing submitted supplemental briefs to the district court
regarding the impact of that opinion on the parties’ sum-
mary judgment positions. The district court subsequently
entered a memorandum and order in both actions, again
granting the motions for summary judgment on nonin-
fringement filed by Travel Sentry and its licensees and
denying Tropp’s cross-motions for summary judgment on
infringement. See Travel Sentry III, 192 F. Supp. 3d 332.
The district court reasoned that summary judgment was
appropriately awarded to Travel Sentry and its licensees
because “there is simply no evidence that Travel Sentry
12                        TRAVEL SENTRY, INC.   v. DAVID TROPP



had any influence whatsoever on the third and fourth
steps of the method carried out by the TSA, let alone
‘masterminded’ the entire patented process.” Id. at 336.
It also wrote that TSA:
     faces no consequences from or by anyone for non-
     compliance if it chooses at any time not to use the
     master keys, even if it did, at times, use the mas-
     ter keys.    There is, bluntly, nothing to suggest
     that the TSA “needs” Travel Sentry to carry out
     the luggage screening mandated by Congress. It
     could design its own keys, break the locks on the
     luggage, or screen the luggage in another way. It
     certainly does not take direction from Travel Sen-
     try on the manner or timing of its luggage screen-
     ing.    In sum, the unusual circumstances of
     Akamai are not mimicked here.
Id. at 336–37 (footnote omitted). Importantly, in explain-
ing the legal standard it employed to reach these conclu-
sions, the district court found that Akamai V did not
expand the scope of direct infringement under § 271(a),
and did “not disturb the BMC Res./Muniauction test.” Id.
at 335. It essentially concluded that Akamai V was
strictly limited to its own facts, and therefore left all
existing law under § 271(a) intact. The district court
entered final judgments in both actions the same day, and
Tropp timely appealed.
    Travel Sentry and its licensees thereafter filed mo-
tions for attorney fees and costs pursuant to 35 U.S.C.
§§ 285 and 1927. The district court denied both motions,
and certain of these entities timely appealed.
    We have jurisdiction over these appeals pursuant to
28 U.S.C. § 1295(a)(1). The district court properly exer-
cised federal question jurisdiction over both actions pur-
suant to 28 U.S.C. §§ 1331 and 1338.
TRAVEL SENTRY, INC.   v. DAVID TROPP                     13



                 C. Standards of Review
    “We review a grant of summary judgment under the
law of the regional circuit.” Phil-Insul Corp. v. Airlite
Plastics Co., 854 F.3d 1344, 1353 (Fed. Cir. 2017) (citing
Grober v. Mako Prods., Inc., 686 F.3d 1335, 1344 (Fed.
Cir. 2012)). The Second Circuit reviews the grant of
summary judgment de novo. Major League Baseball
Props., Inc. v. Salvino, Inc., 542 F.3d 290, 309 (2d Cir.
2008). Summary judgment is proper when, drawing all
justifiable inferences in the non-movant’s favor, “there is
no genuine dispute as to any material fact and the mo-
vant is entitled to judgment as a matter of law.” Fed. R.
Civ. P. 56(a); see Anderson v. Liberty Lobby, Inc., 477 U.S.
242, 255 (1986).
                        II. DISCUSSION
    The primary issue in this appeal relates to attribu-
tion: Is there a genuine dispute of material fact regarding
whether TSA’s performance of the final two steps of the
claims the ’537 and ’728 patents is attributable to Travel
Sentry such that Travel Sentry is responsible for directly
infringing these claims? To properly frame this question,
we first examine the “governing legal framework for
direct infringement” outlined in Akamai V, 797 F.3d at
1023, and then consider how this framework was applied
both to the facts in Akamai V and to those in a more
recent decision from this court: Eli Lilly and Co. v. Teva
Parenteral Medicines, Inc., 845 F.3d 1357 (Fed. Cir. 2017).
                  A. Akamai v. Limelight
     The patent at issue in Akamai covered methods for ef-
ficiently delivering web content, and its claims required
the performance of a number of steps, including, “for a
given page normally served from the content provider
domain, tagging . . . embedded objects of the page so that
requests for the . . . objects resolve to the domain instead
of the content provider domain.” Akamai Techs., Inc. v.
14                        TRAVEL SENTRY, INC.   v. DAVID TROPP



Limelight Networks, Inc., 629 F.3d 1311, 1316 (Fed. Cir.
2010) (emphasis altered). Limelight’s customers per-
formed this “tagging” step using “instructions” provided
by Limelight, and a jury, after being instructed that
Limelight could directly infringe only if it “directed or
controlled” its customers’ performance of this step, found
that Limelight infringed the claims. See Akamai II, 692
F.3d at 1306. The district court thereafter granted Lime-
light’s motion for judgment as a matter of law based on
this court’s opinions in BMC and Muniauction. Id. at
1306–07.
     As referenced above, we held on appeal that a defend-
ant may be liable for induced infringement of a method
claim if the defendant either has performed some of the
steps of a claimed method and has induced other parties
to commit the remaining steps or has induced other
parties to collectively perform all of the steps of a claimed
method. Id. at 1313. In so holding, we expressly recon-
sidered and overruled our earlier decision in BMC, in
which we “held that in order for a party to be liable for
induced infringement, some other single entity must be
liable for direct infringement.” Id. at 1306 (citing BMC,
498 F.3d at 1373). We reversed the district court’s entry
of judgment of noninfringement, holding that, “[w]hile we
do not hold that Akamai is entitled to prevail on its theory
of direct infringement, the evidence could support a
judgment in its favor on a theory of induced infringe-
ment.” Id. at 1319.
    Akamai appealed to the Supreme Court, which reaf-
firmed the principle that, “where there has been no direct
infringement, there can be no inducement of infringement
under § 271(b).” Limelight, 134 S. Ct. at 2117. The
Court, however, expressly declined Akamai’s invitation to
review the merits of this court’s direct infringement
standard set forth in BMC and Muniauction, but noted
that, “on remand, the Federal Circuit will have the oppor-
TRAVEL SENTRY, INC.   v. DAVID TROPP                       15



tunity to revisit the § 271(a) question if it so chooses.” Id.
at 2120.
     We accepted the Supreme Court’s invitation to revisit
the contours of § 271(a). See Akamai V, 797 F.3d at 1020;
Akamai IV, 786 F.3d at 903–05. In Akamai V, we began
by affirming BMC’s “single-actor rule,” writing that,
“[d]irect infringement under § 271(a) occurs where all
steps of a claimed method are performed by or attributa-
ble to a single entity.” Id. at 1022 (citing BMC, 498 F.3d
at 1379–81). We next observed that, “[w]here more than
one actor is involved in practicing the steps, a court must
determine whether the acts of one are attributable to the
other such that a single entity is responsible for the
infringement.” Id. We then held that an entity will be
held “responsible for others’ performance of method steps
[under § 271(a)] in two sets of circumstances: (1) where
that entity directs or controls others’ performance, and (2)
where the actors form a joint enterprise.” Id. at 1022. It
is the first of these circumstances—where an entity
directs or controls another’s performance—that lies at the
heart of this appeal.
    We observed that we had previously held an actor “li-
able for infringement under § 271(a) if it acts through an
agent (applying traditional agency principles) or contracts
with another to perform one or more steps of a claimed
method.” Id. at 1023 (citing BMC, 498 F.3d at 1380–81).
We went on to conclude, however, that “liability under
§ 271(a) can also be found when an alleged infringer
conditions participation 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. (citing Metro–Goldwyn–Mayer Studios
Inc. v. Grokster, Ltd., 545 U.S. 913, 930 (2005), for the
proposition that “an actor ‘infringes vicariously by profit-
ing from direct infringement’ if that actor has the right
and ability to stop or limit the infringement”). We recog-
nized that, “[i]n those instances, the third party’s actions
16                         TRAVEL SENTRY, INC.   v. DAVID TROPP



are attributed to the alleged infringer such that the
alleged infringer becomes the single actor chargeable with
direct infringement.” Id. Importantly, we stated that,
“[w]hether a single actor directed or controlled the acts of
one or more third parties is a question of fact . . . .” Id. at
1023.
    Applying this framework, we concluded that “Akamai
presented substantial evidence demonstrating that Lime-
light conditions its customers’ use of its content delivery
network upon its customers’ performance of the tagging
and serving steps, and that Limelight establishes the
manner or timing of its customers’ performance.” Id. at
1024. With respect to the first prong—“conditioning use
of the content delivery network”—we pointed out that
“the jury heard evidence that Limelight requires all of its
customers to sign a standard contract,” which “delineates
the steps customers must perform if they use the Lime-
light service,” including “tagging and serving content.”
Id.
     With respect to the second prong—“establishing the
manner or timing of performance”—we examined the
actions taken by Limelight with respect to each customer
desiring to use Limelight’s services. We began by noting
that, “[u]pon completing a deal with Limelight, Limelight
sends its customer a welcome letter instructing the cus-
tomer how to use Limelight’s service.” Id. at 1024. This
letter “tells the customer that a Technical Account Man-
ager employed by Limelight will lead the implementation
of Limelight’s services,” and also “contains a hostname
assigned by Limelight that the customer ‘integrate[s] into
[its] webpages,’” the process of which “includes the tag-
ging step.” Id. at 1025. We then observed that “Limelight
provides step-by-step instructions to its customers telling
them how to integrate Limelight’s hostname into its
webpages if the customer wants to act as the origin for
content,” and explained that, “[i]f Limelight’s customers
do not follow these precise steps, Limelight’s service will
TRAVEL SENTRY, INC.   v. DAVID TROPP                   17



not be available.” Id. Finally, we pointed out that “the
jury heard evidence that Limelight’s engineers continu-
ously engage with customers’ activities.” Id. “In sum,” we
wrote, “Limelight’s customers do not merely take Lime-
light’s guidance and act independently on their own.” Id.
“Rather, Limelight establishes the manner and timing of
its customers’ performance so that customers can only
avail themselves of the service upon their performance of
the method steps.” Id.
        B. Eli Lilly v. Teva Parenteral Medicines
    We recently applied Akamai V’s “two-prong test” in
Eli Lilly, a Hatch-Waxman suit brought by Eli Lilly
against several defendants seeking to launch a generic
version of Eli Lilly’s chemotherapy drug. 845 F.3d at
1362. The claims in that case comprise three relevant
steps: (1) administering a particular dosage of folic acid
prior to the first administration of the chemotherapy drug
pemetrexed disodium; (2) administering a particular
dosage of vitamin B12 prior to the first administration of
pemetrexed disodium; and (3) administering pemetrexed
disodium. Id. at 1362. Though physicians administered
vitamin B12 and pemetrexed, their patients “self-
administer[ed] folic acid with guidance from physicians.”
Id. Eli Lilly’s theory of infringement therefore required
establishing that physicians were liable for divided in-
fringement, as the defendants were accused of inducing
physicians’ direct infringement of the method claims. Id.
Following a bench trial, the district court, applying Aka-
mai V, concluded that the defendants would induce in-
fringement of the claims if their generic version of
pemetrexed was launched. Id. at 1363.
    We agreed. With respect to Akamai V’s first prong,
we concluded that the district court’s finding that physi-
cians “condition” pemetrexed treatment on the admin-
istration of folic acid was supported by the record
evidence. Eli Lilly, 845 F.3d at 1366. We first observed
18                       TRAVEL SENTRY, INC.   v. DAVID TROPP



that the defendants’ Physician Prescribing Information,
which is “directed to the physician,” explained that folic
acid is a “[r]equirement for [p]remedication” in order “to
reduce the severity” of the toxicity of the drug. Id. We
then noted both that the product labeling repeatedly
states that physicians should “[i]nstruct patients” to take
folic acid, and that the Patient Information informs
patients that physicians may withhold pemetrexed treat-
ment based on the results of blood tests and patients’
condition. Id. Finally, we recognized that the parties’
experts did not genuinely dispute that it is “standard
practice” to withhold pemetrexed treatment if a patient
fails to follow the required regimen of folic acid pretreat-
ment. Id.
     Importantly, in reaching our conclusion that Akamai
V’s “conditioning” prong was satisfied, we rejected three
arguments advanced by the defendants. First, we agreed
with their submission “that mere guidance or instruction
is insufficient to show ‘conditioning’ under Akamai V,” but
observed that “the evidence regarding the critical nature
of folic acid pretreatment and physicians’ practices sup-
port a finding that physicians cross the line from merely
guiding or instructing patients to take folic acid to condi-
tioning pemetrexed treatment on their administration of
folic acid.” Id. Indeed, this evidence showed that, if a
patient does not take folic acid as instructed, then a
physician, in his or her discretion, need not provide
pemetrexed treatment based on the patient’s failure to
perform the step of folic acid administration. Id.
    We next dismissed the defendants’ contention that
physicians must “go further to ‘verify compliance’ with
their instructions or to ‘threaten’ denial of pemetrexed
treatment,” explaining that conditioning “does not neces-
sarily require double-checking another’s performance or
making threats.” Id.
TRAVEL SENTRY, INC.   v. DAVID TROPP                       19



    Finally, we rejected the defendants’ argument that an
actor can only condition the performance of a step “by
imposing a legal obligation to do so, by interposing
that step as an unavoidable technological prerequisite to
participation, or, as in [Akamai V], both.” Id. at 1366–67.
We noted that, although we found “conditioning” in Aka-
mai V based on evidence that Limelight required all of its
customers to sign a standard contract delineating the
steps that customers had to perform to use Limelight’s
service, “we did not limit ‘conditioning’ to legal obligations
or technical prerequisites.” Id. at 1367. We also clarified
that the standard contract in Akamai V “was not signifi-
cant for imposing potential civil liability but for ‘deline-
at[ing] the steps’ that customers would have to perform ‘if
[they] wish[ed] to use [defendant’s] product.’” Id. at 1367
n.5 (quoting Akamai V, 797 F.3d at 1024). We similarly
recognized that “we did not focus on whether a customer’s
failure to perform certain steps might have made it tech-
nologically impossible for other steps to occur.” Id. (cita-
tion omitted).
    Based on this understanding of Akamai V, we found
that the district court’s conclusion that physicians estab-
lish the manner and timing of patients’ folic acid intake
was not clearly erroneous, agreeing with Eli Lilly that
expert testimony and product labeling demonstrated that
“physicians prescribe or specify a dose of folic acid, specify
that patients must ingest the folic acid daily during a
particular span of days, and withhold pemetrexed if
patients do not follow orders.” Id. at 1367.
    Akamai V and Eli Lilly highlight the importance of
correctly identifying the relevant “activity” or “benefit”
that is being conditioned upon the performance of one or
more claim steps. The cases also emphasize that the
context of the claims and conduct in a particular case will
inform whether attribution is proper under Akamai V’s
two-prong test.
20                        TRAVEL SENTRY, INC.   v. DAVID TROPP



          C. Application to the Facts of this Case
    We find that, under the circumstances presented here,
a reasonable jury could conclude that TSA’s performance
of the final two claim steps is attributable to Travel
Sentry such that Travel Sentry is liable for direct in-
fringement under § 271(a). Although the partnership-like
relationship between Travel Sentry and TSA differs in
several respects from the service provider-customer and
physician-patient relationships in Akamai V and Eli Lilly,
a common thread connects all three cases: evidence that
a third party hoping to obtain access to certain benefits
can only do so if it performs certain steps identified by the
defendant, and does so under the terms prescribed by the
defendant. The district court, however, did not make this
connection. Instead, it concluded that the “unusual
circumstances of Akamai are not mimicked here.” Travel
Sentry III, 192 F. Supp. 3d at 337.
    In reaching this conclusion, the district court erred in
a number of ways. The district court interpreted Akamai
V too narrowly when it concluded that the decision “did
not disturb” any aspects of our holdings in BMC and
Muniauction. While we did reaffirm the concept of a
single-actor theory of direct infringement, we made clear
that the restrictive view of when the acts of a third party
can be attributable to another evidenced in those cases is
no longer the governing law. In other words, we “broad-
en[ed] the circumstances in which others’ acts may be
attributed to an accused infringer to support direct-
infringement liability for divided infringement, relaxing
the tighter constrains on such attribution reflected in our
earlier precedents and in the three previous rulings for
Limelight on direct infringement.” Mankes v. Vivid Seats
Ltd., 822 F.3d 1302, 1305 (Fed. Cir. 2015) (citations
omitted).
   Based in large measure on this reading of Akamai V
and its impact on the law of direct infringement under
TRAVEL SENTRY, INC.   v. DAVID TROPP                     21



§ 271(a), the district court committed three specific errors
in its analysis of Tropp’s claims against Travel Sentry.
First, it misidentified the relevant “activity” at issue,
broadly defining it as “the luggage screening mandated by
Congress.” Id. at 336. Second, the district court misap-
prehended what types of “benefits” can satisfy Akamai V’s
first prong. Third, the court mischaracterized what is
required for one to “condition” a third party’s participa-
tion in an activity or receipt of a benefit on the third
party’s performance of one or more claim steps. We
address each of these, in turn.
                1. Akamai V’s First Prong
    We begin with the district court’s characterization of
the relevant “activity.” The district court did not explain
why the relevant activity in this case is “luggage screen-
ing” generally, and Travel Sentry has not tendered a
compelling defense of this definition on appeal. The
district court’s characterization is inconsistent with the
MOU, which describes a far more specific set of objectives.
TSA, in signing the MOU, agreed to make good faith
efforts to “distribute the passkeys and information pro-
vided by Travel Sentry on the use of the passkeys,” to “use
the passkeys to open checked baggage secured with
Travel Sentry certified locks whenever practicable,” and
to have its employees “relock Travel Sentry locks after
bags are inspected.” J.A. 86. These stated purposes make
clear that the “activity” in which TSA sought to partici-
pate is screening luggage that TSA knows can be opened
with the passkeys provided by Travel Sentry.
    The district court’s characterization of the activity is
also inconsistent with Akamai V. If it were true that the
relevant activity could be abstracted in the manner Travel
Sentry suggests—i.e., if we were to generalize from an
agreement between two entities to engage in only limited
aspects of an activity that the relevant activity is the
entire set of activities—then we would not have found
22                        TRAVEL SENTRY, INC.   v. DAVID TROPP



Limelight liable for direct infringement. Indeed, although
Limelight circumscribed its customers’ ability to access its
own content delivery network, there was no evidence that
it restricted these individuals’ access to other networks or
their ability to service their own webpages. The district
court in this case erred by defining the relevant activity in
an unduly broad manner.
    The district court’s mischaracterization of the rele-
vant activity likewise tainted its view of which, if any,
“benefits” Travel Sentry conditions on TSA’s performance
of the final two claim steps. The district court, in a foot-
note, rejected Tropp’s argument that Akamai V’s first
prong was satisfied because TSA would not receive cer-
tain benefits—i.e., “reduc[ing] theft, reduc[ing] claims,
and satisfy[ing] public and political pressure for safe and
secure luggage”—unless it practiced the final two claim
steps using the passkeys and training provided by Travel
Sentry. Travel Sentry III, 192 F. Supp. 3d at 337 n.3.
The district court reasoned that TSA “screens luggage
because of the screening mandate of Congress, not be-
cause of any purported intangible benefits,” and explained
that the “stated purpose on the TSA’s MOU with Travel
Sentry itself betrays such a grand set of motivations.” Id.
    This understanding of the benefits that Travel Sentry
conditions on TSA’s performance of the final two claim
steps is impermissibly narrow. As the district court
acknowledged, the MOU explains that the passkeys that
Travel Sentry agreed to provide, and did in fact provide,
to TSA “are designed to permit TSA screeners to open
checked baggage secured with Travel Sentry certified
locks without breaking such locks.” J.A. 86. In other
words, a reasonable juror could conclude that the “benefit”
to TSA contemplated in the MOU is the ability to open
identifiable luggage using a master key, which would
obviate the need to break open the lock. Indeed, it is
irrelevant that TSA screens luggage pursuant a mandate
from Congress—what matters is how the agency accom-
TRAVEL SENTRY, INC.   v. DAVID TROPP                      23



plishes its luggage screening objective, and whether a
benefit flows to TSA from the particular screening method
it has chosen.
     Viewing the MOU and other record evidence in the
light most favorable to Tropp, we find that reasonable
jurors could conclude both that TSA receives a benefit
from being able to identify Travel Sentry-marked luggage
and, where necessary, open that luggage using passkeys
that Travel Sentry provided, and that such a benefit is
the type of benefit contemplated in Akamai V. The fact
that TSA entered into the MOU with Travel Sentry
implies that TSA believed it would receive some benefit
from the arrangement, be it tangible (e.g., a reduction in
the number of claims submitted by aggrieved travelers or
an improvement in the health of its employees) or intan-
gible (e.g., promotion of the public’s perception of the
agency). 1 Indeed, these are some of the benefits recited in
the specification of the ’537 patent. See ’537 patent col. 1,
l. 33–col. 2, l. 24. Travel Sentry does not dispute, moreo-
ver, that TSA receives a benefit from following what it
describes as the “Travel Sentry standard.” See Appellee
Br. 4 (describing Travel Sentry’s lock system as “stream-
lin[ing] the opening of locks during screening” and being
“more efficient than the more cumbersome TSA Key Ring
program”); see also id. at 15–17, 37.
    We next consider whether a reasonable jury could
conclude that Travel Sentry “conditions” TSA’s participa-
tion in the correctly defined activity or receipt of the
correctly identified universe of benefits on TSA’s perfor-
mance of the final two claim steps. We answer this ques-


    1   We reject the district court’s suggestion that “in-
tangible benefits” that are conditioned upon performance
of claim steps are insufficient to satisfy the first prong of
Akamai V. Cf. Travel Sentry III, 192 F. Supp. 3d at 336
n.3.
24                        TRAVEL SENTRY, INC.   v. DAVID TROPP



tion in the affirmative. Not only has Travel Sentry sup-
plied TSA with passkeys and training that enable TSA to
screen for its luggage, but the relevant “activity” is coex-
tensive with the final two claim steps. Indeed, the third
step of Tropp’s independent method claims requires
having an identification structure that signals to a lug-
gage screener that the lock may be opened with a master
key. ’537 patent col. 6, ll. 23–29. The fourth and final
step, meanwhile, requires having the luggage screener,
acting pursuant to a prior agreement to look for the
identification structure, use the master key, where neces-
sary, to open the lock. Id. at col. 6, ll. 30–36. These two
steps define the relevant activity in this case. 2 Similarly,
whatever benefits flow to TSA from identifying luggage
with Travel Sentry’s dual-access locks and from opening
these locks with the passkeys that Travel Sentry provided
can only be realized if TSA performs the final two claim
steps. Travel Sentry’s arguments to the contrary, to the
extent they are not premised on an erroneous definition of
the relevant activity, go to Akamai V’s second prong, and
are therefore considered below.
    In sum, we conclude that the district court erred in
concluding that Akamai V’s first prong could not be
satisfied as a matter of law on the undisputed facts of this
case. We now turn to the second prong of the new Akamai
V test. 3



     2  Travel Sentry does not dispute Tropp’s submission
that “TSA cannot perform the claimed steps without the
directions and instrumentalities provided by Travel
Sentry, nor can it perform in a way that differs from the
method established by Travel Sentry.” Appellant Br. 20.

     3  In Akamai V, we not only formulated a previously
unrecognized category of cases in which attribution under
§ 271(a) can be found, but also observed that, “[i]n the
TRAVEL SENTRY, INC.   v. DAVID TROPP                     25



               2. Akamai V’s Second Prong
     We likewise conclude that, drawing all justifiable in-
ferences in Tropp’s favor, a reasonable jury could find that
Travel Sentry has established the manner or timing of
TSA’s performance. It is undisputed that Travel Sentry
entered into the MOU with TSA, provided TSA with
passkeys and instructional materials on how to identify
locks licensed with Travel Sentry’s trademark, and re-
placed passkeys. See Appellee Br. 5 n.3. The MOU sets
forth the steps TSA would need to follow in order to use
Travel Sentry’s standard and obtain the associated bene-
fits. It is also undisputed that TSA has used Travel
Sentry’s lock system. See J.A. 722–23. There is evidence
in the record, moreover, that Travel Sentry established its
identifying mark, owns and licenses the trademark to
that mark, and controls the design of the locks and pass-
keys. Based on this evidence, a trier of fact could reason-
ably find that Travel Sentry has established the manner
of TSA’s performance of the third and fourth steps of
Tropp’s independent method claims.
    The district court found that there is no attribution
here because, in its view, the facts place this case within
Akamai V’s “hypothetical scenario” under which third
parties “merely take [the alleged infringer’s] guidance and
act independently on their own.” Travel Sentry III, 192 F.
Supp. 3d at 335–36 (quoting Akamai V, 797 F.3d at 1025).
In reaching this conclusion, the district court reasoned
that “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 ‘master-
minded’ the entire patented process.” Id. at 336. As
explained above, however, to the extent BMC or Muniauc-


future, other factual scenarios may arise which warrant
attributing others’ performance of method steps to a
single actor.” 797 F.3d at 1023.
26                        TRAVEL SENTRY, INC.   v. DAVID TROPP



tion employed or implied a “mastermind” theory of liabil-
ity under § 271(a), that theory is no longer the governing
standard.
    The district court’s analysis also fails to acknowledge
“the context of the particular facts presented” in this case.
Akamai V, 797 F.3d at 1023. In Akamai V, Limelight
required its customers to clear certain technological
hurdles before it granted them access to its content deliv-
ery network. We observed that, “[i]f Limelight’s custom-
ers do not follow [certain] precise steps, Limelight’s
service will not be available.” Id. at 1025. We found that
Limelight established the manner and timing of its cus-
tomers’ performance because it provided them with de-
tailed instructions regarding how to complete these steps
and dedicated resources toward helping the customers
resolve problems encountered along the way. Id.
    Here, it is true that Travel Sentry does not require
TSA to accomplish a series of technological feats in order
to participate in the Travel Sentry standard. Nor is there
evidence that Travel Sentry supervises TSA’s conduct or
has employees or other resources dedicated to resolve
issues TSA encounters along the way. But the record
suggests that, in order for TSA to receive the benefits that
flow from inspecting luggage with Travel Sentry’s dual-
access locks, it must use the passkeys that Travel Sentry
distributed—and, on request, replaces—to open those
locks, pursuant to the MOU. Travel Sentry has also
provided TSA with training materials to help TSA screen-
ers identify luggage bearing such locks.
     A reasonable jury could conclude that those activities
by Travel Sentry do establish the manner of TSA’s per-
formance of the final two claim steps. It is just as true in
this case as it was in Akamai V that, if TSA “do[es] not
follow the[] precise steps” of identifying luggage bearing a
Travel Sentry certified lock, and, where necessary, using
the passkey provided by Travel Sentry to open said lock,
TRAVEL SENTRY, INC.   v. DAVID TROPP                      27



then “[Travel Sentry’s] service will not be available.” Id.
The steps TSA must take are fewer and less complicated
than those required by Limelight’s customers in Akamai
V, but this is a function of the different contexts presented
in the two cases. In Akamai V—and in Eli Lilly as well—
there was evidence in the record that individuals who
desired the benefits of a particular service could be denied
access to the service unless they satisfied certain condi-
tions imposed by the service provider. The benefits these
individuals were seeking, however, were not coextensive
with the claim steps they were required to perform;
rather, they could receive a benefit from the service
provider after completion of these prerequisite steps.
Here, by contrast, the benefits TSA allegedly seeks flow
directly from its performance of the final two claim steps.
This is because the very activity in which TSA seeks to
participate is the very activity identified in the claim
steps.
    Travel Sentry’s remaining arguments to the contrary
are unavailing. Travel Sentry first submits that, because
TSA “is under no obligation to perform any particular
luggage screening activity in order to receive anything
from Travel Sentry,” the parties’ relationship “falls into
the category of ‘nonbinding guidance and independent
action’” that presents the “exact hypothetical” of “taking
guidance and acting independently” that we addressed in
Akamai V. Appellee Br. 12–13 (citing Akamai V, 797 F.3d
at 1025). Travel Sentry is mistaken. Although it is true
that TSA is under no obligation to adhere to the terms of
the MOU, it is equally true that TSA cannot unlock
luggage bearing Travel Sentry certified locks for screen-
ing or realize the benefits of such screening unless it
performs the final two claim steps. Stated a different
way, TSA only receives something of value from Travel
Sentry when it performs these claim steps.
    In Eli Lilly, we rejected the related argument that an
actor can only condition the performance of a step “by
28                       TRAVEL SENTRY, INC.   v. DAVID TROPP



imposing a legal obligation to do so, by interposing that
step as an unavoidable prerequisite to participation, or, as
in [Akamai V], both.” 845 F.3d at 1366–67. We observed
that, in Akamai V, “we did not limit ‘conditioning’ to legal
obligations or technological prerequisites,” and recognized
that the standard contract in that case “was not signifi-
cant for imposing civil liability but for ‘delineat[ing] the
steps’ that customers would have to perform ‘if [they]
wish[ed] to use [defendant’s] product.’” Id. at 1367 & n.5
(quoting Akamai V, 797 F.3d at 1024). Here, too, it is
irrelevant that TSA can choose to accomplish its luggage
screening mandate through other means. What is critical
is that TSA must perform the final two claim steps if it
wishes to participate in the activity of screening luggage
bearing Travel Sentry certified locks by opening such
locks with the passkeys Travel Sentry provided.
    Travel Sentry also submits that Tropp is incorrect in
asserting “that TSA ‘cannot’ perform the two claimed
steps ‘without’ Travel Sentry,” arguing that, “[i]n addition
to the scenarios described by the district court (i.e., TSA
could design its own keys, break the locks, or screen
luggage a different way . . . ), TSA could figure out the
last two steps of Tropp’s claims from a variety of other
sources,” including reading the instructions on the pack-
aging of dual access locks sold by other companies and
referencing its own website. Appellee Br. 19–20. These
arguments fall short. First, TSA would not be participat-
ing in the relevant activity or receiving the relevant
alleged benefit if it were to “break the locks” or “screen
luggage in a different way.” Second, it is immaterial to
the second prong of Akamai V’s new test that TSA “could
figure out” the final two claim steps from a source other
than Travel Sentry. Finally, the record contains no
evidence that TSA either has “design[ed] its own keys” or
has exclusively used copies of the passkeys distributed by
Travel Sentry to open luggage bearing Travel Sentry
certified locks, such that it would not be performing the
TRAVEL SENTRY, INC.   v. DAVID TROPP                       29



final claim step. Rather, the record suggests that TSA
uses the passkeys distributed by Travel Sentry to open
luggage with certified locks when the agency deems it
necessary to screen such luggage. ’537 patent col. 6, ll.
32–36 (requiring the luggage screening entity, upon
finding the identification structure, “to use the master key
previously provided to the luggage screening entity to, if
necessary, open the individual piece of luggage”).
               3. The Importance of Context
    “[P]rinciples of attribution are to be considered in the
context of the particular facts presented,” Akamai V, 797
F.3d at 1023, and we are satisfied that the context of this
case can justify attributing TSA’s performance of the final
two claim steps to Travel Sentry. Our conclusion finds
additional support in Grokster, a case on which we relied
in formulating Akamai V’s two-prong test. Indeed, imme-
diately after setting forth this test, we cited to Grokster, a
case concerning indirect infringement in the copyright
context, for the proposition that “an actor ‘infringes vicar-
iously by profiting from direct infringement’ if that actor
has the right and ability to stop or limit the infringe-
ment.” Akamai V, 797 F.3d at 1023 (citing Grokster, 545
U.S. at 930). Here, Travel Sentry “has the right and
ability to stop or limit” TSA’s ability to practice the final
two claim steps—and thus receive the benefits that follow
from practicing those steps—through a number of means,
including terminating the MOU, discontinuing its practice
of replacing passkeys that are damaged or lost, and
changing the design of future locks such that the keys
previously provided to TSA no longer work.
    Accordingly, we conclude that the district court erred
in granting summary judgment of noninfringement in
favor of Travel Sentry and its licensees. We, thus, vacate
that judgment. Because Travel Sentry and its licensees
are no longer “prevailing parties” within the meaning of
§ 285, we dismiss their cross-appeal as moot. Cf. 35
30                        TRAVEL SENTRY, INC.   v. DAVID TROPP



U.S.C. § 285 (“The court in exceptional cases may award
reasonable attorney fees to the prevailing party.”).
                       III. CONCLUSION
    For the foregoing reasons, we vacate the district
court’s judgment of noninfringement in favor of Travel
Sentry and its licensees and remand for further proceed-
ings. We dismiss as moot the cross appeal filed by Travel
Sentry and its licensees concerning the district court’s
denial of these entities’ motions for attorney fees.
              VACATED AND REMANDED
                           COSTS
     Costs to Tropp.
