Federal Circuit: Failure to preserve key argument blunts Section 101 admissibility appeal | Knowledge


In Travel Sentry, Inc. v. Tropp, 2022 WL 443202 (Fed. Cir. Feb. 14, 2022), Mr. Tropp alleged infringement of two of his related patents. The parties agreed in the U.S. District Court for the Eastern District of New York that claim 1 of U.S. Patent 7,021,537 was representative. This patent claim reads as follows:

A method of improving airline baggage screening by a baggage screening entity, comprising:

providing consumers with a special lock having a combination lock part and a master key lock part, the master key lock part for receiving a master key which can open the master key lock part of this lock special, the special lock being adapted to be applied to an individual piece of baggage of an airline, the special lock also having an identification structure associated therewith which corresponds to an identification structure previously provided to the controlling entity baggage, which special lock that the baggage screening entity has agreed to process in accordance with a special procedure,

market the special lock to consumers in a way that indicates to them that the special lock will be subject by the baggage screening entity to the special procedure,

the identification structure signaling to a baggage checker of the baggage screening entity which checks the baggage that the baggage screening entity has agreed to subject the special lock associated with the identification structure to the special procedure and that the baggage control entity has a master key that opens the special lock, and

the baggage screening entity acting under a prior agreement to search for the identifying structure during baggage screening and, upon discovery of said identifying structure on an individual piece of baggage, to use the master key previously provided to the baggage screening entity to, if necessary, open the individual baggage.

The district court ruled the representative application ineligible under Section 101. The United States Court of Appeals for the Federal Circuit agreed that the application “sets out a method of making available to consumers a dual access lock having a combination lock part and a master-key lock part, marking it so that baggage checkers know that a master key will open it, agreeing with a controlling entity that its checkers luggage will use the key to open a marked bag if opening is necessary, and marketing the luggage to consumers as subject to this screening process.”

In short, the claim “essentially describes the basic steps of using and marketing a dual access lock for baggage inspection, a long-standing fundamental business practice and method of organizing the human activity”.

The district court “correctly held that Mr. Tropp failed to identify any ‘inventive concept’ in the particulars of the claim – specifically, in the claim’s reference to a ‘special’ lock.” When looking at the language of the claim, “no technical specification or concrete improvement, or identification of the physical modifications made to the locking mechanism to make the lock ‘special’, is found in the claim (or, for that matter, the specification).”

Mr. Tropp argued to the Federal Circuit that the claim was for the “creation of new physical locks with a uniform master key (that works with a variety of locks that have different locking mechanisms)”. The court said this assertion raises two questions about patent eligibility under Section 101:

1) Does the claim, properly construed, require a double access lock in which the key to the master lock part is the same for different combination lock mechanisms?

2) And if so, could the claim be successful under § 101 in the absence of anything in the specification, or even in the summary record, that provides details regarding the physical constitution, the mechanism or the operation of such a lock indicating a concrete technical advance compared to the old locks with double access?

The Federal Circuit, however, did not address these issues because Mr. Tropp did not pursue this admissibility argument. Nothing in his opposition to summary judgment argued that the inventive concept in the claims was, or included, the creation of a novel double-gate lock with a master key capable of opening double-gate locks whose combination lock differed from each other. Instead, Mr. Tropp’s summary judgment argument referred to the “special lock having a combination lock portion and a master key lock portion” and the “identification structure” as the claimed enhanced “physical components”.

Because Mr. Tropp “did not argue for the importance of Section 101 of improving the locking mechanism”, he claimed on appeal, “a materially different argument than what he argues,” the Federal Circuit “refused to reverse the district court’s judgment based on an argument like this made for the first time on appeal.”

More interestingly, the Federal Circuit said it “did not need to assess Mr. Tropp’s objection to another motion for summary judgment (regarding the invalidity of the prior art) or to statement of disputed facts” to determine whether they contained meaningful assertions about physical changes in the locks because Mr. Tropp did not specifically make those arguments in his eligibility briefing.

The Federal Circuit therefore upheld the district court’s judgment.

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