TRAVEL SENTRY, INC. V. TROPP 2022 U.S.P.Q.2d 155 (Fed. Cir. 2022)

By:  Gene M. Garner II, Partner

TRAVEL SENTRY, INC., Plaintiff-Appellee v. DAVID A. TROPP, Defendant-Appellant; DAVID A. TROPP, Plaintiff-Appellant v. CONAIR CORPORATION, HP MARKETING CORP., LTD., MAGELLAN’S INTERNATIONAL TRAVEL CORPORATION, TITAN LUGGAGE USA, TRG ACCESSORIES, LLC, Defendants BRIGGS & RILEY TRAVELWARE LLC, DELSEY LUGGAGE INC., L.C. INDUSTRIES, LLC, OUTPAC DESIGNS INC., TRAVELPRO INTERNATIONAL INC., VICTORINOX SWISS ARMY, INC., WORDLOCK, INC., Defendants-Appellees

In an unpublished or nonprecedential decision on February 14, 2022, the Court of Appeals for the Federal Circuit (CAFC) affirmed a decision by the United States District Court for the Eastern District of New York that all at-issue claims of U.S. Patent Nos. 7,021,537 (“the ‘537 patent”) and 7,063,728 (“the ‘728 patent”) are invalid as claiming ineligible subject matter under 35 U.S.C. 101.

Background

The parties agreed that claims 1 of the ‘537 patent is representative of all claims at-issue:

1. A method of improving airline luggage inspection by a luggage screening entity, comprising: making available to consumers a special lock having a combination lock portion and a master key lock portion, the master key lock portion for receiving 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 airline luggage, the special lock also having an identification structure associated therewith that matches an identification structure previously provided to the luggage screening entity, which special lock the luggage screening entity has agreed to process in accordance with a special procedure, marketing the special lock to the consumers in a manner that conveys to the consumers that the special lock will be subjected by the luggage screening entity to the special procedure, the identification structure signaling to a luggage screener of the luggage screening entity who is screening luggage 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 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 individual piece of luggage, to use the master key previously provided to the luggage screening entity to, if necessary, open the individual piece of luggage.

The district court summarized that claim 1 “’essentially describe(s) the basic steps of using and marketing a dual-access lock for luggage inspection, a long-standing fundamental economic practice and method of organizing human activity’” and held representative claim 1 ineligible as directed to an abstract idea based on Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1313 (Fed. Cir. 2016).

The CAFC also asserted that the district court had properly held that “Mr. Tropp identified ‘no inventive concept’  in the claim’s details” including the recitation of “special lock”.

Arguments

Mr. Tropp argued that “claim 1 is directed to ‘the creation of novel physical locks with a uniform master key (that works with a variety of locks that have different locking mechanisms).’”

The CAFC asserted that Mr. Tropp’s argument would raise two substantial questions of eligibility under 35 USC 101 which were not raised by Mr. Tropp and therefore were not addressed by the CAFC:

• • “Does the claim, properly construed, require a dual-access lock in which the key for the master-key lock portion is the same for different combination-lock mechanisms?”
  • “And if so, could the claim pass muster under  101in the absence of anything in the specification, or even in the summary judgment record, that provides details regarding the physical makeup, mechanism, or operation of such a lock indicating a concrete technical advance over earlier dual-access locks?”

In presenting these questions of eligibility, the CAFC refers to Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253 , 1258-59 (Fed. Cir. 2016) (holding invalid under § 101 a claim that “is drawn to the [abstract] idea itself” instead of “how to implement” it and noting that “[e]ven if all the details contained in the specification were imported into the [patent] claims, the result would still not be a concrete implementation of the abstract idea”); Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229 , 1241 (Fed. Cir. 2016).

In opposing the 101 summary judgement, Mr. Tropp further referenced the “’special lock having a combination lock portion and a master key lock portion” and the “identification structure” as the claimed “physical components”’”.

The CAFC also focused on arguments that Mr. Tropp could have raised but did not, and, thus, the CAFC declined to address.  For example, the CAFC noted that “Nothing in the opposition argued that the inventive concept in the claims was, or included, the creation of a new dual-access lock with a master key capable of opening dual-access locks whose combination-lock mechanisms differed from one another”.

Decision by the CAFC

The CAFC affirmed the district court’s decision that all at-issue claims of U.S. Patent Nos. 7,021,537 (“the ‘537 patent”) and 7,063,728 (“the ‘728 patent”) are invalid as claiming ineligible subject matter under 35 U.S.C. 101.

Analysis

The CAFC raised several potential arguments that perhaps could have been raised but were not raised or were not raised at appropriate times.  In doing so, the CAFC inferred that these arguments could have been a factor in whether the CAFC affirmed or would remand or overturn the district court’s decision of invalidity.

Moreover, this case is also a reminder that issues of eligibility under 35 USC 101 apply to the mechanical arts.