February 17, 2022

Federal Circuit: Failure to Preserve Key Argument Blunts Section 101 Eligibility Appeal

Holland & Knight Section 101 Blog
Anthony J. Fuga
Section 101 Blog

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 at the U.S. District Court for the Eastern District of New York that claim 1 of U.S. Patent 7,021,537 was representative. That patent claim reads:

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 held the representative claim to be ineligible under Section 101. The U.S. Court of Appeals for the Federal Circuit agreed that the claim "recites a method of making available to consumers a dual-access lock having a combination-lock portion and a master-key-lock portion, marking it so that luggage screeners know a master key will open it, agreeing with a screening entity that its luggage screeners 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 luggage inspection, a long-standing fundamental economic practice and method of organizing human activity."

The district court "properly held that Mr. Tropp identified no 'inventive concept' in the claim's details – in particular, in the claim's reference to a 'special' lock." When looking at the claim language, "no technical specifications or concrete improvements, or identification of what physical changes are made to the lock mechanism to make the lock 'special,' is found in the claim (or, for that matter, the specification)."

Mr. Tropp argued at the Federal Circuit that the claim was 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 court stated that this contention raised two questions bearing on Section 101 patent eligibility:

1) 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?

2) And if so, could the claim pass muster under § 101 in 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?

The Federal Circuit, however, did not address those questions because Mr. Tropp did not preserve this eligibility argument. Nothing in his summary judgment 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. 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 improved "physical components."

Because Mr. Tropp "did not argue for the Section 101 significance of the lock-mechanism improvement" he asserted on appeal, "an argument materially different from what he did argue," the Federal Circuit "declined to upset the district court's judgment based on an argument like this made for the first time on appeal."

Most interesting, the Federal Circuit stated that it "need not evaluate Mr. Tropp's opposition to a different summary judgment motion (concerning prior art invalidity) or the statement of disputed facts" to determine whether they contained meaningful assertions about physical changes in the locks because Mr. Tropp did not make those arguments specifically in his eligibility briefing.

The Federal Circuit, accordingly, affirmed the district court's judgment.

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