Boston University Business Law Discussion

INSTRUCTIONSMOCK LEGAL ARGUMENT ASSIGNMENT
SI464: Professor Fazio
For this assignment, you will research, write a short position paper (3-5 pages), and argue
opposite sides of an issue (5-7 minutes) in a recent intellectual property case. Arguments by
students on opposing sides will be made before a visiting IP attorney who will serve as a judge.
The cases are at different stages of the judicial process (one involves a newly filed case before
the U.S. District Court in the Central District of California, one involves a motion for a new trial
before a district court, and two involve Writs of Certiorari to the U.S. Supreme Court). All raise
important IP issues that shape the nature of competition and level of investment in emerging
industries.
Students will be evaluated based on their demonstrated understanding of the intellectual property
right at issue, the depth of their analysis involving the issue in dispute, and the clarity and
persuasiveness of arguments made. Written submissions and arguments must contain references
to the cases or other source materials relied upon. Writing quality will be an important
component of grades awarded. Papers that include typographical, grammatical or citation errors,
lack organization and structure, and/or fail to present or support a coherent argument, will
receive lower grades.
Due date: October 19, 2022 12:50 PM. Papers are due at the start of class. Arguments will be
held between 5:00 and 8:00 PM on that day in room ____. Those students with immovable
conflicts will be given the opportunity to present their arguments during regularly scheduled
class time. Class for all other students will be cancelled that day.
Class working session: October 17, 2021. I have left this class session open to use as a
working session for this assignment. If you would like to practice your oral argument, get
feedback on your written briefs, review questions about the law, etc., you may use this class
working session to do so. Of course, you may also reach out to me separately or during office
hours, as well.
Instructions: This entire assignment is worth 25 points.

The Paper (your legal brief, 15 points)
o You must submit a double-spaced, typed brief that is no longer than 5 pages. The
brief must summarize your legal issue, the relevant facts and your arguments.
You must cite to the cases you are using as precedent. Create a caption for your
brief that follows the model of the opinion or complaint in your case. For
citations: use Bluebook form and follow the BU law library guide.
1
o Write your brief before preparing your oral argument. The “process of
committing one’s arguments and reasoning to writing requires a greater level of
critical and creative thinking than merely expressing one’s thoughts orally.”1

Oral argument (10 points)
o Preparation

Oral argument is a different and complementary form of advocacy to your
written brief. It is interactive and presents an opportunity for the IP
attorney who will be acting as our judge to ask questions and the party
(you) to respond to the judge’s concerns.

Oral arguments can proceed in any number of ways. You have to be
prepared to walk through your main arguments, but also be ready for the
argument to proceed more like a question and answer session with the
judge. In oral arguments, it is not appropriate to ask the judge to let you
finish and reserve their questions to the end (as you might do in a
presentation).

Your notes for oral argument should be different from your written brief
(and likely in bullet-point format). The idea is for you to internalize your
arguments prior to your “hearing before the court” and to use your notes
as a shorthand reference. You should be able to demonstrate in-depth
knowledge of the arguments without reading the written brief to the judge.
o Presenting your argument (5-7 minutes)


Rules of the road:

All oral arguments will be presented in person.

Formal business attire is required.

Address the judge as “Your Honor.”

Assume that the judge has little to no background or knowledge
about the law or the case.

You should not use an electronic device (e.g., laptop, tablet or
phone) during your oral argument.
Basic structure (your oral argument you should include):

Who you represent and their role in the case (e.g., petitioner or
respondent, appellant or appellee, applicant or examining attorney,
plaintiff or defendant).

Brief background about the case and statement of your issue.
1 Mark R. Kravitz, Written and Oral Persuasion in the United States Courts: A District Judge’s Perspective on Their
History, Function and Future, The Journal of Appellate Practice and Process, Vol. 10 Issue 2 Article 3.
https://lawrepository.ualr.edu/cgi/viewcontent.cgi?article=1280&context=appellatepracticeprocess
2

A clear statement of the facts in the light most favorable to your
own side.

Your Main Arguments: You should have 2-3 main arguments to
present to the judge. As part of your argument, you must refer to
two (2) cases as precedent that support your argument. You must
explain the precedent cases and how their facts and decisions align
with yours.

Conclusion: Summarize (very briefly!) your arguments and ask
the judge to find in your favor.
Cases and Issues:

David A. Tropp v. Travel Sentry, Inc. et al., Docket No. 22-22, U.S. Supreme Court
o Brief background: This case was originally filed in the U.S. District Court for the
Eastern District of New York and later appealed to the Federal Circuit Court of
Appeals. Tropp then asked the U.S. Supreme Court to hear the case. The
Supreme Court is currently considering it petition for writ of certiorari.
o Issue for your assignment: Is the claimed invention patent eligible? Does the
patent application describe a new and useful process or instead an abstract idea?
o Materials: Please see the Questrom Tools Folder labelled Tropp v. Travel Sentry
for the relevant materials. You should retrieve and read the following documents,
preferably in this order:

The opinions below at the Federal Circuit Court and District Court levels
(these decisions declare which party won the case before the case got to
the Supreme Court). These decisions will be important because they will
be your first encounter of the facts, issue and decision of your case from
the district court (also called the trial court) and the appellate court (also
called circuit court), which is just below the Supreme Court. The opinion
below will favor the side of the Respondent and Respondents will want to
highlight this fact.

The Writ of Certiorari (a request by the petitioner – who lost at the
Appellate Court level – for the Supreme Court take the case). The “Writ
of Cert.” lays out the reason why the Petitioner is appealing the decision
of the appellate court.2

The Reply of the Respondent (which highlights the Respondent’s — who
won at the Appellate Court level — main arguments and opposes the Writ
2When a Writ of Cert. is accepted by the Supreme Court, it usually means that the case raises legal issues:
(1) of
national importance; (2) that have divided the federal appellate courts; or (3) that have not yet been decided by
the Supreme Court. The Supreme Court can deny a Writ of Cert. for any reason (and even if one or more of the
above factors is present).
3
of Cert.). Please note: The Reply deadline is September 7. This brief
will not be available before that time.


You may (but do not have to) also read and use the amicus brief. Amicus
briefs are submitted by outside parties (often experts in legal jurisprudence
or a related industry) on behalf of one side or the other to amplify,
complement or clarify the arguments made by that side.
The Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmith, Docket No. 21-869,
U.S. Supreme Court.
o Brief Background: This case was originally filed in the U.S. District Court for the
Southern District of New York and later appealed to the Second Circuit Court of
Appeals. The District Court found the works to be fair use and non-infringing.
Goldsmith appealed and the Second Circuit Court of Appeals reversed, finding
the works not to be fair use as a matter of law. The Andy Warhol Foundation for
the Visual Arts filed a writ of Certiorari. The Supreme Court granted that writ
and will hear oral argument on the case on October 12.
o Issue for your assignment: Whether Andy Warhol’s use of Goldsmith’s
photograph in his paintings of Prince was transformative (and thus fair) or
infringing use of Goldsmith’s copyrighted image? ?
o Materials: Please see the Supreme Court Docket at:
https://www.supremecourt.gov/docket/docketfiles/html/public/21-869.html. You
should read the following documents, preferably in this order:


The Second Circuit’s March 26, 2021 Opinion finding that Warhol’s
works were not protected by the fair use doctrine. (This can be found
starting at page 52 to the Foundation’s Petition for a Writ of Certiorari.)

The District Court’s opinion finding that Warhol’s works were fair use.
(This can be found starting at page 104 to the Foundation’s Petition for a
Writ of Certiorari.)

The Petition for a Writ of Certiorari filed December 9, 2021.

The Brief of respondents Lynn Goldsmith, et al., filed February 4, 2022.

The Reply of petitioner The Andy Warhol Foundation for the Visual Arts,
Inc. filed February 23, 2022

You may (but do not have to) also read and use the amici briefs. Amici
briefs are submitted by outside parties (often experts in legal jurisprudence
or a related industry) on behalf of one side or the other to amplify,
complement or clarify the arguments made by that side. Multiple briefs
have been filed in this case.
Clipbandits, LLC v. K & Soda, LLC d/b/a 818 Spirits, Case 2:22-cv-01071, U.S. District
Court, Central District of California
4
o Brief Background: This complaint was filed February 16, 2022, by the owner and
distributor of Tequila 512, Clipbandits, against the owner and distributor of
Tequila 818, K & Soda (which Kendall Jenner has helped to promote). The
defendants have answered the complaint and it appears that the parties are
completing discovery. The case is scheduled for trial this fall. (The public (us) is
not provided access to discovery and limited information about the case has been
made public). We will proceed as if this case were at the motion to dismiss stage
and the legal claims are being argued: (1) as a matter of law; and (2) based on
what is available through search of the Trademark Status and Document Retrieval
System (tsdr.uspto.gov).
o Issue for your assignment: Is there a likelihood of confusion between Tequila 512
and Tequila 818? (Make sure to use and apply the Sleekcraft factors). In the
alternative, can there be no likelihood of confusion because the 512 mark is not a
valid mark?
o Materials:

Please see the Clipbandits/K&Soda Folder on QTools for a copy of the
complaint

Please also review the TSDR systems for the applications and current
status concerning related Clipbandits (512) marks.


https://tsdr.uspto.gov/#caseNumber=4280076&caseSearchType=U
S_APPLICATION&caseType=DEFAULT&searchType=statusSea
rch

https://tsdr.uspto.gov/#caseNumber=90810263&caseType=SERIA
L_NO&searchType=statusSearch
Please also review the TSDR systems for the applications and current
status concerning related K & Soda (818) mark.



https://tsdr.uspto.gov/#caseNumber=88581842&caseType=SERIA
L_NO&searchType=statusSearch
You should make sure to retrieve and read all related documents that are
available (including by using the dropdown menu of the document
description bar) for each of these marks. You may have to copy and paste
these links into your browser window for it to work.
Financial Information Technologies, LLC v. iControl Systems, USA, LLC, Case 8:17-cv00190-SDM-SPF
o Brief Background: Fintech filed suit against iControl for theft of trade secrets and
prevailed at trial. iControl filed a motion for a new trial and Fintech opposed. The
5
motion was denied. iControl appealed. The case appears to have settled, leaving
final resolution of the issues below open.
o Issue for your assignment: Do Fintech’s user portal and system interfaces qualify
as trade secrets?

Limit your brief and argument to the user portal and systems interfaces,
only.
o Materials: Please see the Fintech/iControl folder in QT which includes iControl’s
motion for a new trial and Fintech’s opposition.

You may want to review other cases cited within the party’s briefs on the
user portal and user system interfaces.
6
06-CV-6415 (ENV) (RLM), 08-CV-4446 (ENV) (RLM)
United States District Court, E.D. New York.
Travel Sentry, Inc. v. Tropp
527 F. Supp. 3d 256 (E.D.N.Y. 2021)
Decided Mar 14, 2021
06-CV-6415 (ENV) (RLM), 08-CV-4446 (ENV)
(RLM)
2021-03-14
TRAVEL SENTRY, INC., Plaintiff, v. David A.
TROPP, Defendant. David A. Tropp, Plaintiff, v.
Conair Corp., et al., Defendants.
Heidsha Sheldon, Pro Hac Vice, Peter S. Brooks,
William Loening Prickett, Pro Hac Vice, Andrew
Theodore Stark, Pro Hac Vice, Seyfarth Shaw
LLP, Boston, MA, James S. Yu, Seyfarth Shaw
LLP, New York, NY, for Travel Sentry, Inc. Brian
W. Nolan, Gregory Apgar, Pro Hac Vice, Mayer
Brown LLP, Douglas A. Gross, Goetz Fitzpatrick
LLP, New York, NY, Jamie B. Beaber, Pro Hac
Vice, Tiffany Miller, Pro Hac Vice, Mayer Brown
LLP, Donald R. Dinan, Washington, DC, Amanda
Bonner, Pro Hac Vice, Luiz Miranda, Pro Hac
Vice, Michael Word, Pro Hac Vice, Robert Pluta,
Pro Hac Vice, Mayer Brown LLP, Chicago, IL, for
David A. Tropp.
VITALIANO, D.J.
258 *258
Heidsha Sheldon, Pro Hac Vice, Peter S. Brooks,
William Loening Prickett, Pro Hac Vice, Andrew
Theodore Stark, Pro Hac Vice, Seyfarth Shaw
LLP, Boston, MA, James S. Yu, Seyfarth Shaw
LLP, New York, NY, for Travel Sentry, Inc.
Brian W. Nolan, Gregory Apgar, Pro Hac Vice,
Mayer Brown LLP, Douglas A. Gross, Goetz
Fitzpatrick LLP, New York, NY, Jamie B. Beaber,
Pro Hac Vice, Tiffany Miller, Pro Hac Vice,
Mayer Brown LLP, Donald R. Dinan, Washington,
DC, Amanda Bonner, Pro Hac Vice, Luiz
Miranda, Pro Hac Vice, Michael Word, Pro Hac
Vice, Robert Pluta, Pro Hac Vice, Mayer Brown
LLP, Chicago, IL, for David A. Tropp.
MEMORANDUM AND ORDER
259 VITALIANO, D.J.*259 In the latest installment of
this litigation that has aged for 15 years with
multiple round trips to the court of appeals, Travel
Sentry, Inc. (“Travel Sentry”) has moved for
summary judgment, contending that the subject
patent claims owned by David A. Tropp (“Tropp”)
are ineligible for patent protection under 35 U.S.C.
§ 101. Seeking essentially the same relief, Travel
Sentry has additionally moved for summary
judgment under 35 U.S.C. § 103 and 28 U.S.C. §
1498. Tropp opposes all three motions, and in
doing so, has filed certain exhibits which Travel
Sentry now moves to strike.
For the reasons that follow, Travel Sentry’s motion
for summary judgment under 35 U.S.C. § 101 is
granted. Travel Sentry’s motion to strike is granted
with respect to documents material to the instant
motion for summary judgment under § 101. As a
result, Travel Sentry’s second and third motions
for summary judgment are denied as moot.1
1 In a related case, David A. Tropp v. Conair
Corp. et al. , No. 8-CV-4446 (ENV)
(RLM), defendants moved for summary
judgment on the grounds that they did not
directly or indirectly infringe upon Tropp’s
patents. Because this decision ultimately
finds that Tropp’s patents are directed to
ineligible subject matter under 35 U.S.C. §
1
Travel Sentry, Inc. v. Tropp
101, the motions for summary judgment on
a non-infringement basis are similarly
denied.
Background 2
2 Except where otherwise noted, the facts set
forth in this opinion are admitted by the
parties.
Travel
Sentry’s
statement
of
527 F. Supp. 3d 256 (E.D.N.Y. 2021)
The Court presumes familiarity with the
prolonged history and facts of this case, which are
set forth at length in Travel Sentry, Inc. v. Tropp ,
736 F. Supp. 2d 623 (E.D.N.Y. 2010), vacated ,
497 F. App’x. 958, 959 (Fed. Cir. 2012), remanded
260 to *260 192 F. Supp. 3d 332, 333 (E.D.N.Y. 2016).
Neither facts nor procedural history will be
needlessly repeated.
undisputed material facts pursuant to Local
Rule 56.1, submitted in conjunction with
both of its pending motions for summary
judgment in the Travel Sentry action, is
referenced as “TS 56.1 ¶ ___”; Tropp’s
Rule
56.1
Statement
submitted
in
opposition to Travel Sentry’s motions is
referenced as “Tropp 56.1 ¶ ___”; and
Travel Sentry’s Reply to Tropp’s Rule 56.1
Statement is referenced as “TS Reply 56.1
¶ ___”. In order to extricate the facts
relevant to the Court’s summary judgment
inquiry from this panoply of statements,
the Court applies the following principles:
(1) any fact alleged in a moving party’s
Rule 56.1 statement, supported in fact by
the record, and not specifically and
expressly
contradicted
by
properly
supported allegations in the nonmoving
party’s Rule 56.1 statement, is deemed
admitted by the nonmoving party; (2) any
fact alleged in a moving party’s Rule 56.1
statement, supported in fact by the record,
which
is
controverted
specifically
by
and
allegations
expressly
in
the
nonmoving party’s Rule 56.1 statement that
are properly supported in fact by the
record, is not deemed admitted by the
nonmoving party; (3) any fact alleged in a
moving party’s Rule 56.1 statement that is
not supported by citations to admissible
evidence in the record is not deemed
admitted by the nonmoving party; and (4)
any party’s assertion of a legal conclusion
in the guise of an undisputed statement of
fact is disregarded. See E.D.N.Y. Local
Rule 56.1(b), (e); Wojcik v. 42nd St. Dev.
In 2003 and 2004, Tropp registered two patents
that describe a method of airline luggage
screening through the use of a dual-access lock,
which enables a traveler to secure his or her
luggage while still permitting it to be accessed by
a luggage screening entity with a master key, a
concept as old as the forgotten high school locker
key. Tropp 56.1 ¶ 54; Ex. 7, Dkt. 293. Travel
Sentry owns a trademark that it licenses to lock
and luggage manufacturers and distributors for use
on dual-access luggage locks. Luggage
manufactured in accord with the lock standard
licensed by Travel Sentry enables the traveling
public to lock their checked baggage during travel
while still allowing TSA to open the lock and
search the bags as needed, and then re-lock them.
TS 56.1 ¶ 2; Tropp 56.1 ¶ 2.
Both rely in part on a dual-access lock, a type of
lock that can be opened using a combination code
and a master key. TS 56.1 ¶ 27; Tropp 56.1 ¶ 5;
Ex. 7. Neither Tropp’s patents nor Travel Sentry’s
license breaks new ground, which certainly helps
explain the similarities between them. The origins
of this type of lock can be traced back to, at least,
the 1950s and 60s, when Corbin Russwin, Inc.
first developed a “construction master key
system.” TS 56.1 ¶ 57; Tropp 56.1 ¶ 57. Since
then, in addition to Corbin Russwin, other
companies such as Master Lock Company, LLC
(“Master Lock”) and Smarte Carte, Inc. (“Smarte
Carte”), have been selling dual-access lock
products for decades. TS 56.1 ¶ 59; Tropp 56.1 ¶
59.
Project, Inc. , 386 F. Supp. 2d 442, 448 &
n.5 (S.D.N.Y. 2005).
2
Travel Sentry, Inc. v. Tropp
Luggage makers were no strangers to the concept.
For example, in the 1990s Samsonite sold an
“Epsilon” lock line, which included locks that
incorporated both combination and key portions.
TS 56.1 ¶ 69; Tropp ¶ 69. In the early 1960s,
Samsonite sold a Streamlite product line which
could be opened using a single master key. TS
56.1 ¶ 70; TS Reply 56.1 ¶ 70. The Samsonite key
bore an indicia code of “170S” and could open
almost every hard-set Samsonite case made from
1965 until 1999. TS 56.1 ¶ 70; TS Reply 56.1 ¶
70. Samsonite also sold, in as early as 1992, an
individual piece of luggage titled the Samsonite’s
Oyster luggage that could be opened using a
combination or key portion and was accessible by
a master key. TS 56.1 ¶ 75; TS Reply 56.1 ¶ 75.
Rings holding baggage “master keys” were present
at airports and used by airline baggage personnel
since the 1970s. TS 56.1 ¶ 76; TS Reply 56.1 ¶ 76.
The key rings allowed airline baggage agents to
unlock checked baggage whenever the need arose
for security purposes. TS 56.1 ¶ 76; TS Reply 56.1
¶ 76. Baggage personnel would utilize the key
rings by matching the indicia on the key to a
manufacturer or other logo on the bag or number
on the lock in order to open the lock. TS 56.1 ¶
77; TS Reply 56.1 ¶ 77. These key rings were in
existence in many U.S. and non-domestic airports
up until TSA was formed in 2001. TS 56.1 ¶ 78;
TS Reply 56.1 ¶ 78.
527 F. Supp. 3d 256 (E.D.N.Y. 2021)
3 Familiarity with the Court’s September 24,
2009 Markman decision, construing the
claims of the 537 and 728 patents, is
presumed. See Travel Sentry, Inc. v. Tropp ,
661 F. Supp. 2d 280 (E.D.N.Y. 2009).
The 728 patent claims priority from and is a
continuation-in-part of the 537 patent. The 537
patent contains four independent claims: 1, 9, 14
and 10. The 728 patent contains two independent
claims: 1 and 10. Claim 1 of the ’537 patent is
representative:
The patents in dispute are: (1) U.S. Patent No.
7,021,537, filed November 12, 2003, and dated
April 4, 2006 (” 537 patent”); and (2) U.S. Patent
No. 7,036,728, filed November 12, 2004 and
dated May 2, 2006 (” 728 patent”).3 Both are
entitled “Method of Improving Airline Luggage
Inspection.” According to the patents, Tropp’s
invention addresses “a compelling and immediate
261 need” for a method of inspecting luggage *261 that
does not create security risks associated with
unlocked baggage and does not damage luggage
or aggravate passengers. ’537 patent col.2 ll.21–
24.
3
Travel Sentry, Inc. v. Tropp
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,
527 F. Supp. 3d 256 (E.D.N.Y. 2021)
Tropp Br. at 4, Dkt. 294; Travel Sentry, Inc. v.
Tropp , 661 F. Supp. 2d 280, 286 (E.D.N.Y. 2009).
Gratefully, at this point, the relevant facts admit to
a shortcut. The parties agree that this claim is
representative of the independent claims of both
patents. Tropp Br. at 7; TS Br. at 3, Dkt. 289.4
Because the claims do not differ in any material
way for purposes of patent subject matter
eligibility, a separate analysis of each is
unnecessary. See Mortgage Grader, Inc. v. First
Choice Loan Services Inc. , 811 F.3d 1314, 1324
n.6 (Fed. Cir. 2016) (noting that there was no need
to address the four asserted claims individually
because there was no contention that the claims
differed in any material way as to the patent262 eligibility inquiry).*262 Legal Standard
4 Claim 9 of the 537 patent is identical to
claim 1 except for substitution of the
phrase “having a combination lock portion”
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.
with “having a first lock portion.” Claims
14 and 18 of the 537 patent mirror claims 1
and 9, but substitute the phrase “matches
an
identification
“corresponds
with
structure”
a
with
corresponding
identification structure.” Claims 1 and 10
of the 728 patent also mirror claims 1 and 9
of the 537 Patent, but: (a) substitute the
word
“luggage”
substitute
the
with
“baggage;”
(b)
phrase
“matches
an
identification structure” with “matches a
corresponding identification structure;” and
(c) substitute the phrase “the master key
previously provided to” with “the special
procedure previously agreed to by.”
A grant of summary judgment as permitted by
Rule 56 of the Federal Rules of Civil Procedure is
appropriate in a patent case where no genuine
issue of material fact exists and the movant is
entitled to judgment as a matter of law. See
Barmag Barmer Maschinenfabrik AG v. Murata
Mach., Ltd. , 731 F.2d 831 (Fed. Cir. 1984)
(summary judgment on issue of validity);
Townsend Eng’g Co. v. HiTec Co. , 829 F.2d 1086,
1089 (Fed. Cir. 1987) (summary judgment on
4
Travel Sentry, Inc. v. Tropp
issue of infringement). Summary judgment may
be granted in favor of a moving party on an
ultimate issue of fact where the party carries its
burden of “pointing out to the district court that
there is an absence of evidence to support the
nonmoving party’s case.” Celotex Corp. v. Catrett ,
477 U.S. 317, 325, 106 S. Ct. 2548, 2553, 91
L.Ed.2d 265 (1986). Celotex went on to explain,
when “a party [ ] fails to make a showing
sufficient to establish the existence of an element
essential to that party’s case, and on which that
party will bear the burden of proof at trial …. there
can be ‘no genuine issue as to any material fact,’
since a complete failure of proof concerning an
essential element of the nonmoving party’s case
necessarily renders all other facts immaterial.” 477
U.S. at 322–23, 106 S. Ct. at 2552.
Beyond that, “[w]hen deciding issues in a patent
case, a district court applies the law of the circuit
in which it sits to nonpatent issues and the law of
the Federal Circuit to issues of substantive patent
law.” In re Omeprazole Patent Litig. , 490 F. Supp.
2d 381, 399 (S.D.N.Y. 2007) (citing Invitrogen
Corp. v. Biocrest Mfg., L.P. , 424 F.3d 1374, 1378–
79 (Fed. Cir. 2005) ); see, e.g. , Desenberg v.
Google, Inc. , No. 09-CV-10121, 2009 WL
2337122, at *5 (S.D.N.Y. July 30, 2009).
Discussion
1. Motions to Strike
At the outset, the Court notes that the parties have
engaged in a flurry of muddled motion practice
such that the docket is now filled with corrected
motions, stricken motions, and attempts to
“renew” motions to strike from several years ago.
After wading through the morass of filings on the
docket, the Court determines that the only exhibit
referenced in the pending motions to strike
remotely relevant to the Court’s analysis under 35
U.S.C. § 101 is the patent ineligibility section of
the Declaration of Timothy Laabs (“Laabs
report”). Dkt. 422. None of the other challenged
documents are relevant to this decision; nor are
those cited to in any of the briefs in the instant
527 F. Supp. 3d 256 (E.D.N.Y. 2021)
motion. As a result, the requests to strike these
exhibits are collectively denied as moot. See, e.g. ,
Fubon Ins. Co. Ltd. v. OHL Int’l , No. 12-CV5035, 2014 WL 1383604, at *11 (S.D.N.Y. Mar.
31, 2014) ; Data Engine Tech. LLC v. Google LLC
, No. 14-CV-1115, 2020 WL 5411188, at *6 (D.
Del. 2020). As for the Laabs report, the Court only
addresses the patent ineligibility section. The other
portions of the report are not relevant to the
Court’s analysis under 35 U.S.C. § 101, and Travel
Sentry’s motion to strike them is similarly denied
as moot.
Analytically, as required by Rule 26, a party must
“disclose to the other parties the identity of any
witness it may use at trial to present evidence
under Federal Rule of Evidence 702, 703, or 705,”
and must make such disclosures “at the times and
in the sequence that the court orders.” Fed. R. Civ.
P. 26(a)(2)(A) & (D) ; DVL, Inc. v. Niagara
Mohawk Power Corp. , 490 F. App’x. 378, 381 (2d
Cir. 2012). In deciding whether to exercise
discretion to preclude evidence submitted in
violation of Rule 26(a), courts in this Circuit
263 consider: “(1) plaintiffs’ explanation *263 for their
failure to comply with the disclosure requirement;
(2) the importance of the testimony of the
potentially precluded witness; (3) the prejudice
suffered by the opposing party as a result of
having to prepare to meet the new testimony; and
(4) the possibility of a continuance.” BF Advance,
LLC v. Sentinel Ins. Co., Ltd. , No. 16-CV-5931,
2018 WL 4210209, at *6 (E.D.N.Y. Mar. 20,
2018) (citing Patterson v. Balsamico , 440 F.3d
104, 117 (2d Cir. 2006) ).
The parties quibble over whether the Laabs report,
which was disclosed for the first time in Tropp’s
opposition brief, exceeds the scope of expert
opinions permitted by the March 4th discovery
order, (“the March 4th Order”). At that time,
Magistrate Judge Roanne L. Mann, who had the
laboring oar in the pretrial management of this
case, addressed whether discovery should be
reopened in advance of yet another round of
dispositive motions. Judge Mann only permitted
5
Travel Sentry, Inc. v. Tropp
limited fact discovery—taking care to expressly
note that Tropp’s demands must be “narrowly
drawn” as to prevent abuse of this limited
opportunity—and declined to reopen expert
discovery prior to the resolution of the upcoming
dispositive motions. She noted, however, that this
ruling “[did] not preclude Tropp, in opposing
summary judgment, from proffering expert
opinions that reference newly exchanged
supplemental discovery. ” Mem. and Order dated
Mar. 4, 2020 at 3, Dkt. 398 (emphasis added).
That is, new expert discovery was expressly
prohibited unless it was tethered to new fact
discovery concerning events occurring since May
28, 2013. Id.
Contrary to Tropp’s argument here, the plain
language of the March 4th Order leaves no room
for doubt; it clearly states that opinions were
solely permitted on new discovery not new
theories. Id. Consequently, Judge Mann’s directive
is fatal to Tropp’s proffer. The patent ineligibility
section in the Laabs report, plainly and
unmistakably, violates the Court’s order. It
contains not a single reference or rebuttal to any
new discovery. Instead, the report opines on the
purported advantages of Tropp’s claims and makes
legal conclusions as to their genericness. He bases
these declarations primarily on the patent claims
themselves—claims which have been at the heart
of this case from the very beginning.
Another stumbling block to the report’s
admissibility: it primarily offers impermissible
legal conclusions disguised as opinions about facts
offered to support legal conclusions. See, e.g. ,
Laabs report ¶ 79 (“[I]t is my opinion that Mr.
Tropp’s patent claims include steps that were not
routine, well-known, or conventional at the time
of invention.”), ¶ 82 (“In my opinion, Mr. Tropp’s
claimed processes provide an inventive
concept[.]”),
¶
86
(“Travel
Sentry’s
oversimplification of the claims and their
inventive concept is incorrect.”).
527 F. Supp. 3d 256 (E.D.N.Y. 2021)
In short, whether Tropp’s claims are patent eligible
because they contain non-generic elements or
contain an inventive concept are questions of law
reserved to the Court’s province. Laabs’s
statements would impermissibly intrude upon that
province. See, e.g. , ICON Health & Fitness, Inc.
v. Polar Electro Oy , 243 F. Supp. 3d 1229, 1241–
42 (D. Utah 2017) (striking expert report because
“patent-eligible subject matter is a question of
law” and the report’s “legal conclusions invade the
province of the Court”); Genband US LLC v.
Metaswitch Networks Corp. , No. 14-CV-33, 2016
WL 98745, at *3 (E.D. Tex. Jan. 8, 2016) (“The
Court is responsible for deciding disputed
questions of law, and the Federal Circuit has
consistently disfavored reliance on expert
testimony as the basis for legal conclusions.”)
(striking an expert’s opinion on subject matter
264 eligibility *264 because it did nothing more than
analyze the law and offer legal conclusions).
Nor do any of the remaining factors countenance
against striking the ineligibility section of the
Laabs report. The testimony is not important,
which Tropp himself concedes. See Tropp Br. at 8
n. 3 (“Tropp need not rely on any expert testimony
to defeat Travel Sentry’s motion.”). Nor need the
Court rely on the Laabs report in deciding subject
matter eligibility under 35 U.S.C. § 101. See, e.g. ,
Mortgage Grader , 811 F.3d at 1325–26 (“[T]he
court did not rely on them in its § 101 analysis.
Instead, in making its patent-eligibility
determination, the district court looked only to the
claims and specifications of the patents-in-suit.”);
Markman v. Westview Instruments, Inc. , 52 F.3d
967, 991 n.4 (Fed. Cir. 1995) (“[a] patent law
expert’s opinion on the ultimate legal conclusion is
neither required nor indeed ‘evidence’ at all”
(internal citations omitted)); Avia Group Int’l, Inc.
v. L.A. Gear Cal., Inc. , 853 F.2d 1557, 1564 (Fed.
Cir. 1988) (“an expert’s opinion on the legal
conclusion of obviousness is neither necessary nor
controlling”). And even if the Court were to
consider the expert report, it would not change the
Court’s analysis. A single report does not
6
Travel Sentry, Inc. v. Tropp
necessarily raise a genuine issue of material fact.
See Mortgage Grader , 811 F.3d at 1325–26
(collecting cases). Further, as mentioned, the
Report merely rehashes many of Tropp’s legal
arguments in its opposition brief and makes
generalized legal conclusions based on the patent
claims already available to the Court.
The third and fourth factors also weigh in favor of
preclusion. Allowing the ineligibility section of
the Laabs report would prejudice Travel Sentry
since it has not been given the opportunity to
depose Tropp’s expert or offer a rebuttal expert.
See BF Advance , 2018 WL 4210209, at *7 ;
Richman v. Respironics, Inc. , No. 8-CV-9407,
2012 WL 13102265, at *11 (S.D.N.Y. 2012) (postdiscovery expert disallowed in long and protracted
litigation with pending summary judgment
motions; continuance would cause prejudice).
Accordingly, the patent ineligibility section of the
Laabs report is ordered stricken.
2. Patent Ineligibility5
5 Tropp’s brief inaccurately states that four
years ago the Court considered and
rejected Travel Sentry’s argument that
Tropp’s patent are invalid under 35 U.S.C.
§ 101. In actuality, the Court merely denied
Travel
Sentry’s
supplemental
request
briefing
to
submit
regarding
the
Supreme Court’s decision in Alice Corp. ,
finding them unnecessary at the time given
the already pending motions for summary
judgment. The Court ultimately granted
Travel Sentry’s motion for summary
judgment
solely
on
non-infringement
grounds and has not previously addressed
any ineligibility arguments under § 101.
See Travel Sentry , 736 F. Supp. 2d at 623.
Section 101 of the Patent Act defines patenteligible subject matter: “Whoever invents or
discovers any new and useful process, machine,
manufacture, or composition of matter, or any new
and useful improvement thereof, may obtain a
patent therefor, subject to the conditions and
requirements of this title.” 35 U.S.C. § 101. The
527 F. Supp. 3d 256 (E.D.N.Y. 2021)
Supreme Court has long-recognized, however,
implicit exceptions to this provision: “[l]aws of
nature, natural phenomena, and abstract ideas are
not patentable.” Alice Corp. Pty. Ltd. v. CLS Bank
Intern. , 573 U.S. 208, 216, 134 S.Ct. 2347, 189 L.
Ed. 2d 296 (2014) (internal quotation marks
omitted). The purpose of these exceptions is to
protect the “basic tools of scientific and
technological work.” Mayo Collaborative Servs. v.
Prometheus Labs., Inc. , 566 U.S. 66, 86, 132 S.
Ct. 1289, 1293, 182 L. Ed. 2d 321 (2012). ”
‘[M]onopolization of those tools through the grant
265 of a *265 patent might tend to impede innovation
more than it would tend to promote it,’ thereby
thwarting the primary object of the patent laws.”
Alice Corp. , 573 U.S. at 216, 134 S.Ct. 2347
(quoting Mayo , 132 S. Ct. at 1293 ). Given the
objectives of its statutory mission, it is not
surprising that “[p]atent eligibility under § 101 is a
pure question of law.” Iron Gate Security, Inc. v.
Lowe’s Companies, Inc. , No. 15-CV-8814, 2016
WL 4146140, at *5 (S.D.N.Y. 2016) (internal
quotation marks omitted).
To distinguish ineligible patents that claim laws of
nature, natural phenomena, and abstract ideas
from those that claim patent-eligible applications
of those concepts, the Supreme Court has
articulated a two-part test. Alice Corp. , 573 U.S.
at 217, 134 S.Ct. 2347. First, courts must
determine whether the claims at issue are directed
to one of those patent-ineligible concepts. Id.
Second, if and only if the answer to the first
question is yes, courts must next consider the
elements of each claim, both “individually and as
an ordered combination,” to determine whether
additional elements “transform the nature of the
claim” into a patent-eligible application. Id. Step
two of this test has been described as a search for
an “inventive concept”—i.e. an element or
combination of elements that is “sufficient to
ensure that the patent in practice amounts to
significantly more than a patent upon the
[ineligible concept] itself.” Id. at 217–218, 134
S.Ct. 2347 (internal quotation marks omitted).
7
Travel Sentry, Inc. v. Tropp
a. Abstract Idea
Travel Sentry contends that Tropp’s patent claims
are directed to an abstract idea. “The ‘abstract
ideas’ category embodies the longstanding rule
that an idea of itself is not patentable.” Id. (internal
quotation marks and alterations omitted).
“The Supreme Court has not established a
definitive rule to determine what constitutes an
‘abstract idea’ sufficient to satisfy the first step of
the Mayo/Alice inquiry. Rather, both [the Federal
Circuit] and the Supreme Court have found it
sufficient to compare claims at issue to those
claims already found to be directed to an abstract
idea in previous cases.” Enfish, LLC v. Microsoft
Corp. , 822 F.3d 1327, 1334 (Fed. Cir. 2016). In
addition, the Federal Circuit has articulated some
other
guiding
principles.
For
instance,
“fundamental economic practice[s] long prevalent
in our system of commerce,” “longstanding
commercial practice[s]” and “method[s] of
organizing human activity” are ineligible abstract
ideas. Intellectual Ventures I LLC v. Symantec
Corp. , 838 F.3d 1307, 1313 (Fed Cir. 2016). In
contrast, claims that purport to improve the
functioning of the technology itself or improve an
existing technological process are likely not
directed towards an abstract idea. Enfish , 822
F.3d at 1335. That is, courts should examine
whether the disputed patents “focus on a specific
means or method that improves the relevant
technology or are instead directed to a result or
effect that itself is the abstract idea and merely
invoke generic processes and machinery.” McRO,
Inc. v. Bandai Namco Games Am. Inc. , 837 F.3d
1299, 1314 (Fed. Cir. 2016).
Here, the Court finds that Tropp’s claims are
directed to an ineligible abstract idea, namely the
application of dual-access locks to airport luggage
inspection. The Court agrees with Travel Sentry
that Tropp’s method patents have essentially
described the basic steps of using and marketing a
dual-access lock for luggage inspection, a longstanding fundamental economic practice and
527 F. Supp. 3d 256 (E.D.N.Y. 2021)
266 method of organizing human activity.*266 Tropp’s
main contention is that Travel Sentry has cast his
claims in far too general a light, and that his
claims actually describe specific equipment, a
specific method of marketing, and specific
arrangements with screening entities. Tropp Br. at
8–9.6 He points to the patent language as proof,
noting that the language explains that the patent
involves a “special lock” with an “identification
structure” that will be subject to a “special
procedure” with the luggage entity that has the
master key to open the “special lock.” Id. But the
cited language disproves Tropp’s very point—they
demonstrate that his claims are not specific at all;
rather they involve generic and vague descriptions
and an over-reliance on the word “special” without
anything more. Notably absent from the patent
claims are any technical specifications or concrete
improvements. The methods described—”special
procedure,” “prior agreement,” “marketing … in a
manner that conveys”—are neither complex nor
specific. The cited language simply describe an
idea that has for a long time been incorporated in
other uses.
6 Tropp’s brief also includes a cursory throw-
away line that his claims “do not preempt
all marketing, selling, and inspecting
luggage locks at airports.” Tropp Br. at 9.
No further briefing has been provided on
this issue, nor did Travel Sentry mention
preemption in its opening or reply brief. As
such, the Court will not separately address
the issue of preemption.
Tropp next contends that his claims affect the
“physical world” and as a result, should not be
held as abstract or invalid under § 101. Tropp Br.
at 11. The argument is foreclosed. The Federal
Circuit has rejected this overly simplistic way of
analyzing abstract ideas. See Solutran, Inc. v.
Elavon, Inc. , 931 F.3d 1161, 1168 (Fed. Cir.
2019) (“Contrary to Solutran’s arguments, the
physicality of the paper checks being processed
and transported is not by itself enough to exempt
the claims from being directed to an abstract
8
Travel Sentry, Inc. v. Tropp
idea.”); see also In re Marco Guldenaar Holding
B.V. , 911 F.3d 1157, 1161 (Fed. Cir. 2018) (“[T]he
abstract idea exception does not turn solely on
whether the claimed invention comprises physical
versus mental steps.”).
Simply put, the fact that Tropp’s claims involve
physical and tangible components does not change
the conclusion that his claims are directed to an
abstract idea. The very cases Tropp cites to help
illuminate the difference between an abstract idea
with physical components and a concrete claim
that alters an underlying technology, and proves
the counterpoint. For example, in Carrum Techs.,
LLC v. BMW of N. Am. LLC , the Court noted that
the patent, an adaptive cruise control system with
lateral acceleration sensors that change vehicle
control, was not abstract because it was “directed
to a physical system operating in threedimensional space that, when certain conditions
are met, physically impacts the speed of a moving
object.” No. 18-CV-1645, 2019 WL 1779863, at
*3 (D. Del. Apr. 23, 2019). Similarly, in Jaguar
Land Rover v. Bentley Motors Ltd. , the patents at
issue made a technological improvement that
“physically changes the subsystems of the
vehicle.” 388 F.Supp.3d 665, 679 (E.D. Va. 2019).
In other words, the patents at issue actually
changed how a physical object, like a luggage
lock, operates by improving the underlying
technology. In comparison, Tropp’s claims are not
directed towards improving how a physical object
like a car operates; instead, they are directed at
improving the economic practice of luggage
inspection. As this abstract utility, Tropp’s claims
resemble other claims that have involved physical
parts but have ultimately been found to be directed
267 to nothing more *267 than an ineligible abstract
idea. See, e.g. , Voter Verified, Inc. v. Election Sys.
& Software LLC , 887 F.3d 1376, 1385 (Fed. Cir.
2018) (holding that patent claim which purported
to improve self-verifying voting systems was
directed to the abstract human activity of voting
despite describing physical components such as
ballots); Smart Sys. Innovations, LLC v. Chicago
527 F. Supp. 3d 256 (E.D.N.Y. 2021)
Transit Auth. , 873 F.3d 1364, 1371 (Fed. Cir.
2017) (method patent using physical bankcards to
improve fare systems in mass transit was directed
to the abstract concept of paying for a subway or
bus ride with a credit card); In re Smith , 815 F.3d
816 (Fed. Cir. 2016) (“method of conducting a
wagering game” using a deck of playing cards was
drawn to an abstract idea).
Bluntly, Tropp’s claims are not unlike many other
ineligible claims which purport to improve a longstanding economic practice and rely on generic
technology. See, e.g. , FairWarning IP, LLC v.
Iatric Sys., Inc. , 839 F.3d 1089, 1093–95 (Fed.
Cir. 2016) (holding that patent claims
“purport[ing] to accelerate the process of
analyzing audit log data” with general purpose
computing technology did not describe patent
eligible subject matter); Electric Power Grp., LLC
v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir.
2016) ; Baggage Airline Guest Servs., Inc. v.
Roadie, Inc. , 351 F. Supp. 3d 753, 760 (D. Del.
2019).
Recognizing that inquiries regarding a patent
ineligibility challenge are fact intensive, analysis
of the invalidation of a patent claim cut from
similar cloth should prove helpful. For example, in
SP Plus Corp. , the district court invalidated two
patents, which allegedly created a “novel
apparatus” of a self-releasing parking boot,
because they were directed to the abstract idea of
expediting the vehicle’s release from an
immobilization device via self-service. The Court
noted that while the patent streamlined the tedious
and annoying process of waiting for a parking
attendant to release an immobilized vehicle from a
parking boot, it was ultimately directed to
improving a fundamental human activity. SP Plus
Corp. v. IPT, LLC , No. 16-CV-2474, 2017 WL
2226240, at *10 (E.D. La. 2017), aff’d , 706 F.
App’x 688 (Fed. Cir. 2017). It was all the more
telling that the patent claims described the boot
and application method with generic terms such as
“unique code” and “remote computer system.” Id.
Likewise, Tropp’s patents attempt to alleviate the
9
Travel Sentry, Inc. v. Tropp
hassle of cut baggage locks. And while applying
dual-access locks to luggage inspection may help
streamline a tedious process, at bottom, the
method merely describes the marketing and use of
generic technology towards the fundamental
economic practice of luggage inspection. Simply
adding adjectives such as “special” and “specific”
throughout the claims and briefing does not
persuade otherwise. Therefore, the Court finds that
Tropp’s patents are directed to patent-ineligible
subject matter.
b. Inventive Concept
Having found that Tropp’s claims are directed to
an abstract idea, the Court must now “examine the
elements of the claim to determine whether it
contains an inventive concept sufficient to
transform the claimed abstract idea into a patenteligible application.” Alice Corp. , 573 U.S. at
221, 134 S.Ct. 2347 (internal quotations omitted).
“A claim that recites an abstract idea must include
additional features to ensure that the [claim] is
more than a drafting effort designed to
monopolize the [abstract idea].” Id. (internal
quotations omitted). “If a claim’s only inventive
concept is the application of an abstract idea using
conventional and well-understood techniques, the
claim has not been transformed into a patent268 eligible application of an abstract *268 idea.” BSG
Tech LLC v. Buyseasons, Inc. , 899 F.3d 1281,
1290–91 (Fed. Cir. 2018) (internal quotation
marks omitted). Recitation of generic functions of
existing technology are similarly non-inventive,
see Affinity Labs of Tex. LLC v. DIRECTV, LLC ,
838 F.3d 1253, 1263 (Fed. Cir. 2016), and the
“mere recitation of concrete, tangible components
is insufficient to confer patent eligibility to an
otherwise abstract idea,” In re TLI Comms. LLC
Patent Lit. , 823 F.3d 607, 613 (Fed. Cir. 2016).
On the other hand, claims that “effect an
improvement in any other technology or technical
field” may qualify as an inventive concept.7 Alice
Corp. , 573 U.S. at 225, 134 S.Ct. 2347.
527 F. Supp. 3d 256 (E.D.N.Y. 2021)
7 “The difference between what the second
step of Alice examines, and that which a
court would examine in analyses under §§
102 and/or 103, is that step two of Alice is
limited
to
claimed
benefits
and
improvements, versus true novelty or
obviousness as measured against prior art.”
Verint Systems Inc. v. Red Box Recorders
Ltd. , 226 F. Supp. 3d 190, 199 (S.D.N.Y.
2016).
Here, no inventive concept exists to save Tropp’s
claims. Tropp’s claims simply describe a wellunderstood and conventional device, a dual-access
lock, and incorporates it with the fundamental
economic practice of baggage inspection at
airports. This is precisely the type of claim that
has been rejected by courts as ineligible under §
101. See, e.g. , Alice , 134 S.Ct. at 2358 (“Stating
an abstract idea while adding the words ‘apply it
with a computer’ simply combines these two
steps, with the same deficient result.”); Becton
Dickinson and Co. v. Baxter Intern., Inc. , 127 F.
Supp. 3d 687, 694 (W.D. Tex. 2015), aff’d , 639 F.
App’x. 652 (Fed. Cir,2016) (holding ineligible
remote viewing technology to supervise pharmacy
employees because it “merely [applies] existing
technology to the abstract and arguably age-old
process of supervising and verifying the work of a
nonpharmacist … rather than having created a
technological innovation”); Content Extraction
and Transmission LLC v. Wells Fargo Bank, Nat.
Ass’n , 776 F.3d 1343, 1348 (Fed. Cir. 2014)
(finding no inventive concept in CET’s use of a
generic scanner and computer to perform wellunderstood, routine, and conventional activities
commonly used in industry such as scanning and
digitizing information).
Tropp again belabors the fact that there are details,
such as an “identification structure,” “special
procedure,” and “manner” of marketing the
“special lock,” that prove the non-routine and nonconventional nature of this claim. But, as
mentioned already, Tropp’s arguments only
highlight the generic nature of these alleged
10
Travel Sentry, Inc. v. Tropp
details. Simply adding the adjective “special”
throughout a claim does not create an inventive
concept.
Tropp also argues, albeit briefly, that regardless of
whether
the
locks
are
“conventional”
“implementing a well-known technique with
particular devices in a specific combination … can
be inventive.” Cellspin Soft, Inc. v. Fitbit, Inc. ,
927 F.3d 1306, 1318 (Fed. Cir. 2019). While this
is certainly true, there is no evidence of that
inventive combination here. The claim
combination of a dual-access lock with an indicia
of some sort, described using its generic functions,
to the well-known technique of inspecting luggage
lacks anything inventive. Nor does adding a
generic “prior agreement” element or a routine
marketing
element
create
an
inventive
combination. See Ultramercial, Inc. v. Hulu, LLC,
772 F.3d 709, 716 (Fed. Cir. 2014) (adding routine
steps to the advertising process does not transform
an abstract idea into patent-eligible subject
matter). It is a cold, hard fact that Tropp’s
proffered “combination” does not significantly
269 deviate *269 from the use of dual access locks and
master key rings already available on the market.
TS 56.1 ¶¶ 59, 61, 66, 70, 71, 74; Tropp 56.1 ¶¶
59, 61, 66, 70, 71, 74; compare Cellspin Soft , 927
F.3d at 1318 (finding that because Cellspin had
pointed to evidence showing how its
implementation of Bluetooth using a two-step,
two-device structure had not been implemented in
a similar way, changed the order of data
transmission to make data capture devices smaller,
cheaper, and with less hardware and software,
there was an inventive concept that added
“significantly more” than “merely apply[ ] an
abstract idea to a ‘particular technological
environment’ “).
The Court is also unpersuaded that any of the
purported advantages and improvements of
Tropp’s claim demonstrate anything inventive.
Tropp contends that his claims provide a number
of improvements in the field of luggage screening
that go beyond merely increasing the efficiency of
527 F. Supp. 3d 256 (E.D.N.Y. 2021)
the luggage screening process such as creating a
less intrusive and more comfortable search for the
passenger and ensuring that the “special lock”
need not be broken. Tropp Br. at 15.8 What Tropp
has described, however, is simply the advantages
of having a dual access lock with a master key
provided to baggage personnel during luggage
inspection. And while there are certainly
advantages to having this combination, there is
nothing inherently inventive in applying this
conventional technology to this particular
environment. Tropp does not, nor can he, claim to
have invented any specialized technology to
perform any of these functions.
8 Tropp also claims that Travel Sentry made
several admissions about the numerous
advantages to Tropp’s claimed invention in
its other motions for summary judgment.
But the evidence cited refers to Travel
Sentry’s claims about its own system and
general improvements in efficiency to the
luggage screening process in the context of
28 U.S.C. § 1498. The cited paragraphs are
not, as Tropp attempts to characterize
them, admissions about Tropp’s claims.
Further
Tropp’s
unpersuasive
arguments
since,
as
are
mentioned,
arguments about improving the efficiency
of methods of organizing a human activity,
such as luggage inspection, do not equate
to an innovative concept.
In sum, there is no evidence that any of the
elements of Tropp’s claims, either individually or
as an ordered combination, contain an inventive
concept sufficient to save his patent claims from
ineligibility. Consequently, his claims are patent
ineligible under 35 U.S.C. § 101.
Conclusion
For the foregoing reasons, the Court concludes
that Tropp’s claims are patent ineligible under 35
U.S.C. § 101. Travel Sentry’s motions to strike are
granted in part with respect to the patent
ineligibility section of the Laabs report and denied
as moot in all other respects. The remaining
11
Travel Sentry, Inc. v. Tropp
527 F. Supp. 3d 256 (E.D.N.Y. 2021)
motions for summary judgment are similarly
denied as moot. The Clerk of Court is directed to
enter judgment accordingly in each case and to
close both cases.
So Ordered.
12
Case: 21-1908
Document: 68
Page: 1
Filed: 02/14/2022
NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
TRAVEL SENTRY, INC.,
Plaintiff-Appellee
v.
DAVID A. TROPP,
Defendant-Appellant
______________________
2021-1908
______________________
Appeal from the United States District Court for the
Eastern District of New York in No. 1:06-cv-06415-ENVRLM, Senior Judge Eric N. Vitaliano.
————————————————-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
Case: 21-1908
2
Document: 68
Page: 2
Filed: 02/14/2022
TRAVEL SENTRY, INC. v. TROPP
LUGGAGE INC., L.C. INDUSTRIES, LLC, OUTPAC
DESIGNS INC., TRAVELPRO INTERNATIONAL
INC., VICTORINOX SWISS ARMY, INC.,
WORDLOCK, INC.,
Defendants-Appellees
______________________
2021-1909
______________________
Appeal from the United States District Court for the
Eastern District of New York in No. 1:08-cv-04446-ENVRLM, Senior Judge Eric N. Vitaliano.
______________________
Decided: February 14, 2022
______________________
WILLIAM L. PRICKETT, Seyfarth Shaw LLP, Boston, MA,
argued for Travel Sentry, Inc., Briggs & Riley Travelware
LLC, Delsey Luggage, Inc., L.C. Industries, LLC, Outpac
Designs, Inc., Travelpro International Inc., Victorinox
Swiss Army, Inc., and Wordlock, Inc.
ERIC A. WHITE, Mayer Brown LLP, Washington, DC,
argued for David A. Tropp. Also represented by JAMIE B.
BEABER, ANDREW JOHN PINCUS; ROBERT G. PLUTA, Chicago,
IL.
PETER BERNSTEIN, Scully, Scott, Murphy & Presser,
Garden City, NY, for defendant-appellee Briggs & Riley
Travelware LLC.
MICHAEL A. SCHOLLAERT, Baker Donelson Bearman
Caldwell & Berkowitz, PC, Baltimore, MD, for defendantappellee Delsey Luggage Inc. Also represented by EMILY
R. BILLIG.
______________________
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TRAVEL SENTRY, INC. v. TROPP
3
Before LOURIE, SCHALL, and TARANTO, Circuit Judges.
PER CURIAM.
These two patent cases involve David Tropp’s U.S. Patent Nos. 7,021,537 and 7,036,728. The district court
granted summary judgment against Mr. Tropp on the
ground that all the at-issue claims of those patents—of
which the parties agree claim 1 of the ’537 patent is representative—are invalid because they claim ineligible subject
matter under 35 U.S.C. § 101. Travel Sentry, Inc. v. Tropp,
527 F. Supp. 3d 256, 259 (E.D.N.Y. 2021). Mr. Tropp appeals. We affirm.
The district court correctly held representative claim 1
ineligible. 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. The district court summarized: The
claim “essentially describe[s] the basic steps of using and
marketing a dual-access lock for luggage inspection, a longstanding fundamental economic practice and method of organizing human activity.” Id. at 265.
The court properly held the claim to be directed to an
abstract idea, noting that our precedents consistently recognize the abstract character of such practices and methods. See, e.g., Intellectual Ventures I LLC v. Symantec
Corp., 838 F.3d 1307, 1313 (Fed. Cir. 2016). The court also
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. Travel Sentry, 527 F. Supp. 3d
at 267–69. No “technical specifications or concrete improvements,” or identification of what physical changes are
made to the lock mechanism to make the lock “special,” is
Case: 21-1908
4
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TRAVEL SENTRY, INC. v. TROPP
found in the claim (or, for that matter, the specification),
id. at 266, an absence that “only highlight[s] the generic
nature” of the “special lock” and other details to which Mr.
Tropp pointed, id. at 268. And there is no genuine dispute
about the fact that dual-access (combination/key) locks
were familiar and used in luggage screening, with bags
identified by a tag to enable such use. Id. at 268–69. In
these circumstances, the claim fails to pass muster under
both steps of the eligibility inquiry. See Simio, LLC v.
FlexSim Software Prods., Inc., 983 F.3d 1353, 1364 (Fed.
Cir. 2020) (observing that where the focus of the claimed
advance is abstract, an abstract-idea improvement cannot
transform the ineligible claim into an eligible one).
In this court, Mr. Tropp argues 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).” Tropp Opening Br. 18. This
contention raises at least two substantial questions bearing on eligibility under § 101: 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 § 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? See,
e.g., 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). But
we do not address those questions, because Mr. Tropp has
not preserved this argument for eligibility.
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5
In his opposition to the § 101 summary judgment motion, Mr. Tropp 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.” J.A. 1659 (internal quotation
marks and citation omitted). Nothing in that 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. We need
not evaluate Mr. Tropp’s opposition to a different summary
judgment motion (concerning prior art invalidity) or the
statement of disputed facts under Local Civil Rule 56.1 to
determine whether they contained meaningful assertions
about physical changes in the locks. In his opposition to
the § 101 motion, Mr. Tropp did not argue for the § 101 significance of the lock-mechanism improvement he now asserts to be required, an argument materially different from
what he did argue. We decline to upset the district court’s
judgment based on an argument like this made for the first
time on appeal. See, e.g., Icon Health & Fitness, Inc. v.
Strava, Inc., 849 F.3d 1034, 1040 (Fed. Cir. 2017).
AFFIRMED
No. A-_________
In the Supreme Court of the United States
__________
DAVID A. TROPP,
Applicant,
V.
TRAVEL SENTRY, INC., BRIGGS & RILEY TRAVELWARE LLC, DELSEY LUGGAGE INC., L.C.
INDUSTRIES, LLC, OUTPAC DESIGNS INC., TRAVELPRO INTERNATIONAL INC.,
VICTORINOX SWISS ARMY, INC., WORDLOCK, INC.,
Respondents.
__________
APPLICATION FOR AN EXTENSION OF TIME
WITHIN WHICH TO FILE A PETITION FOR A WRIT OF CERTIORARI
TO THE UNITED STATES COURT OF APPEALS
FOR THE FEDERAL CIRCUIT
__________
To the Honorable John G. Roberts, Jr., Chief Justice of the United States and
Circuit Justice for the United States Court of Appeals for the Federal Circuit:
Pursuant to 28 U.S.C. § 2101(d) and Rule 13.5 of the Rules of this Court,
applicant David Tropp respectfully requests a 30-day extension of time, to and
including Tuesday, June 14, 2022, within which to file a petition for a writ of
certiorari to review the judgment of the Federal Circuit in this case.
A panel of the Federal Circuit issued its opinion on February 14, 2022.
Unless extended, the time to file a petition for writ of certiorari will expire on May
16, 2022 by operation of Rule 13.1 of the Rules of this Court. This application is
being filed at least 10 days prior to that date. See S. Ct. R. 13.5. The jurisdiction of
2
this Court will be invoked under 28 U.S.C. § 1254(1). A copy of the panel opinion
and judgment is attached.
1. Following the September 11 attacks, Congress mandated that the newly
created Transportation Security Administration (TSA) inspect all baggage going
through airports. R.2789. Applicant David Tropp and his company, Safe Skies,
devised a method to satisfy that congressional mandate. That method employs new
“special locks”—locks that can be opened by a master key given to screening agents,
with physical features on the locks including an identification structure printed on
the locks that signals to the screener that the master key will open them—and a
prior agreement with TSA to match lock and key to conduct its screening. R.23-32,
33-43.
Tropp filed for and received method patents for his new screening process
relying on “special locks.” See U.S. Patent No. 7,021,537 (issued Apr. 4, 2006); U.S.
Patent No. 7,036,728 (issued May 2, 2006). Both patents have survived
reexamination by the Patent & Trademark Office. R.2741-56; R.2757-69. The
patents describe steps in the physical world, involving new physical locks and new
identification structures physically printed on the locks.
Tropp is not merely a patent holder; he practices his invention. E.g., Travel
Sentry, Inc. v. Tropp, 497 F. App’x 958, 960 (Fed. Cir. 2012). And his method has
enjoyed tremendous success in the travel industry, quickly becoming the new
standard for baggage locks. R.2223.
3
In 2006, Tropp brought this patent infringement action against his industry
rival in the luggage lock industry, Travel Sentry, which practices his special-lock
invention on behalf of several of its luggage manufacturer licensee clients. R.172023. Over a decade after this case was filed, and including several trips up to the
Federal Circuit on other matters, the trial court held Tropp’s patents to be directed
to patent-ineligible abstract subject matter under 35 U.S.C. § 101. See Travel
Sentry, Inc. v. Tropp, 527 F. Supp. 256, 265-69 (E.D.N.Y. 2021).
The Federal Circuit affirmed. On step one of the patent-eligibility framework
set forth in Alice Corp. v. CLS Bank International, 573 U.S. 208 (2014), the panel
pointed to Federal Circuit precedent to hold that the patent claims are directed to a
“longstanding fundamental economic practice and method of organizing human
activity.” Slip op. 3 (citations omitted). Then, also under recent Federal Circuit
precedent, the panel collapsed the Alice step-two inquiry into the first. Id. at 4
(stating that “where the focus of the claimed advance is abstract, an abstract-idea
improvement cannot transform the ineligible claim into an eligible one”) (citing
Simio, LLC v. FlexSim Software Prods., Inc., 983 F.3d 1353, 1364 (Fed. Cir. 2020)).*
Ultimately, the Federal Circuit held Tropp’s patents claim ineligible subject
matter under 35 U.S.C. § 101. That result cannot be squared with the patent claims
and specifications, which teach the creation of a novel combination of steps that
* Separately, the panel concluded that Tropp did not preserve an argument that his patents
also teach “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.” Slip op. 5. Tropp’s certiorari
petition will not rely on that additional argument for eligibility, and thus will not seek review of that
aspect of the Federal Circuit’s decision.
4
made significant physical improvements over the prior art of luggage locks to
address a novel security challenge.
2. The certiorari petition will argue, among other things, that review is
warranted because the panel’s application of 35 U.S.C. § 101 is untethered to the
statutory text. The panel’s patent-eligibility analysis in this case applies the
rationale of the Federal Circuit’s prior ruling in American Axle & Manufacturing,
Inc. v. Neapco Holdings, Inc., 967 F.3d 1285 (Fed. Cir. 2020), in which a divided
court held ineligible a patent that described a new industrial process. Several
judges dissented from the Federal Circuit’s decision not to rehear American Axle en
banc, stating that “[t]he court’s rulings on patent eligibility have become so diverse
and unpredictable as to have a serious effect on the innovation incentive in all fields
of technology.” American Axle & Mfg. v. Neapco Holdings LLC, 966 F.3d 1347, 1358
(Fed. Cir. 2020) (mem. op.) (Newman, J., dissenting, joined by Moore, C.J., and
O’Malley, Reyna, and Stoll, JJ.).
A certiorari petition seeking review of the judgment in American Axle is
pending before this Court. See American Axle & Mfg, Inc. v. Neapco Holdings LLC,
petition for cert. pending, No. 20-891 (filed Dec. 28, 2020). The Court in May 2021
invited the Solicitor General to file a brief expressing the views of the United
States, and that brief has not yet been filed.
Like the ruling in American Axle, the decision below is in clear tension with
this Court’s precedents. By employing a broad conception of the judicially created
exceptions to patentability, the Federal Circuit has invalidated patents that claim
5
improvements squarely in the physical realm. The Federal Circuit has thereby
transformed the patent-eligibility inquiry into something far different—and far
more damaging to innovation—than this Court ever contemplated in its decisions
addressing Section 101.
For example, the patent claims at issue in Alice and Mayo v. Prometheus, 566
U.S. 66 (2012), both involved the generic performance on a computer of an existing
human process. And the patent in Bilski v. Kappos, 561 U.S. 593 (2010), similarly
involved a mental process—hedging risk in commodity brokerage transactions—
that amounted to no more than solving a math equation.
But this case, like American Axle, involves improved physical products and a
new physical process. Indeed, Tropp’s patents claim a new physical process to
address a novel congressional challenge that demanded maximum efficiency—
universal baggage-screening on a massive scale. Far from the realm of
manipulating ideas, that process takes place in the real world nearly every minute
of every day.
As in American Axle, there is copious record evidence showing innovation
over the prior art. These are new locks and master keys that have displaced earlier
luggage locks. Earlier locks lacked unique identification structures to match lock
and key, and nothing in the record even suggests that these locks were up to the
task of solving the post-September 11 universal screening mandate. E.g., R.1082. To
the contrary, the record evidence shows that TSA was breaking those locks. R.107071; R.1188; R.1705, 1715; R.1844. Just as the American Axle petition argues, this
6
sort of record evidence requires that the jury determine whether the innovations
claimed in the patent are sufficiently innovative over the prior art.
And, like American Axle, this case demonstrates how the Federal Circuit’s
current Section 101 patent-eligibility inquiry has expanded to encompass
considerations addressed by other express pre-requisites for patentability, in
contravention of this Court’s admonition that these other requirements exist
“wholly apart from whether the innovation falls into a category of statutory subject
matter.” Diamond v. Diehr, 450 U.S. 175, 190 (1981). In American Axle, the Federal
Circuit’s broad reading of the Section 101 inquiry swept in issues more
appropriately addressed by another section of the Act (Section 112—enablement).
Similarly here, much of Travel Sentry’s arguments before the district court and the
court of appeals about the prior art are appropriately addressed in other sections of
the Act (Sections 102 and 103—novelty and non-obviousness).
3. Applicant requests this extension of time to file his petition for a writ of
certiorari because he intends to ask the Court to hold his petition for a decision in
American Axle, should the Court grant certiorari in that case. As discussed above,
this case is closely related to the pending petition in American Axle. Through that
petition, the Court would have an opportunity to address the Federal Circuit’s
application of 35 U.S.C. § 101 patent eligibility. The Court called for the views of the
Solicitor General on the American Axle petition nearly a year ago, on May 3, 2021.
The Solicitor General’s recommendation seems likely to be filed shortly, so that the
Court can decide whether to grant review before it rises at the end of June. An
7
extension therefore would better enable the parties and the Court to consider a
petition requesting a hold in this case in light of a grant of certiorari in American
Axle.
In addition, counsel primarily responsible for preparing the petition have
had, and will continue to have, responsibility for a number of other matters with
proximate due dates. In the past several weeks, for instance, counsel have been
occupied with briefing in the Second Circuit (Cedeno v. Argent Tr. Co., No. 21-2891
(2d Cir.)) and Central District of California (Maxell, Ltd. v. Vizio, Inc., No. 2:21-cv6758 (C.D. Cal.)) as well as time-sensitive written work product advising responses
to the evolving Russian-Ukrainian conflict and the imposition of sanctions against
Russia. Counsel with principal drafting responsibility is currently occupied
preparing extensive pre-trial briefing in American Trucking Ass’n v. Alviti, No. 1:18cv-378 (D.R.I.), ahead of a May 23, 2022 trial date. And counsel also have
obligations in pending matters in state court—e.g., NAV Consulting, Inc. v.
Sudrania Fund Servs. Corp., No. 1-21-1025 (Ill. App. Ct.) (reply brief due May 3,
2022), and Juarez v. Nestlé Waters N.A., Inc., No. 2020-56391 (Tex. 113th Dist. Ct.)
(discovery and pre-trial briefing)—and are scheduled to attend several out-of-state
hearings in the weeks immediately before the petition for a writ of certiorari is
currently due to be filed. Accordingly, an extension of time is warranted.
8
For the foregoing reasons, the application for a 30-day extension of time, to
and including June 14, 2022, within which to file a petition for a writ of certiorari in
this case should be granted.
Respectfully submitted.
___________________________
ERIC A. WHITE*
JAMIE B. BEABER
Mayer Brown LLP
1999 K Street, N.W.
Washington, D.C. 20006
(202) 263-3000
eawhite@mayerbrown.com
* Counsel of Record
April 25, 2022
No.
In the Supreme Court of the United States
DAVID A. TROPP,
Petitioner,
v.
TRAVEL SENTRY, INC., BRIGGS & RILEY TRAVELWARE
LLC, DELSEY LUGGAGE INC., L.C. INDUSTRIES, LLC,
OUTPAC DESIGNS INC., TRAVELPRO INTERNATIONAL
INC., VICTORINOX SWISS ARMY, INC., WORDLOCK, INC.,
Respondents.
On Petition for a Writ of Certiorari to
the United States Court of Appeals
for the Federal Circuit
PETITION FOR A WRIT OF CERTIORARI
ERIC A. WHITE
Counsel of Record
JAMIE B. BEABER
Mayer Brown LLP
1999 K Street, NW
Washington, DC 20006
(202) 263-3000
eawhite@mayerbrown.com
Counsel for Petitioner
i
QUESTION PRESENTED
Inventor David Tropp owns and practices two
patents that disclose a solution to the problem of
screening all passenger luggage for flights originating
in the United States, following the September 11
attacks. Through a series of specific claimed steps, his
patents describe a method of providing consumers
with special dual-access luggage locks that a
screening entity would access in accordance with a
special procedure and corresponding key controlled by
the luggage screening entity, all while allowing the
luggage to remain locked following screening. The
question presented is:
Whether the claims at issue in Tropp’s patents
reciting physical rather than computer-processing
steps are patent-eligible under 35 U.S.C. § 101, as
interpreted in Alice Corporation Pty v. CLS Bank
International, 573 U.S. 208 (2014).
ii
PARTIES TO THE PROCEEDING AND
CORPORATE DISCLOSURE STATEMENT
Petitioner is David A. Tropp, a natural person.
Respondents are Travel Sentry, Inc., Briggs &
Riley Travelware LLC, Delsey Luggage, Inc., L.C.
Industries, LLC, Outpac Designs, Inc., TravelPro
International Inc., Victorinox Swiss Army, Inc., and
Wordlock, Inc.
iii
RELATED PROCEEDINGS
There are no pending proceedings directly related
to this case.
iv
TABLE OF CONTENTS
Page
Question Presented …………………………………………….. i
Parties to the Proceeding and Corporate
Disclosure Statement……………………………………. ii
Related Proceedings ………………………………………….. iii
Opinions Below ……………………………………………………1
Jurisdiction …………………………………………………………2
Statutory Provision Involved ………………………………..2
Introduction ………………………………………………………..2
Statement …………………………………………………………..3
A. Patent Eligibility ……………………………………..3
B. The Patents at Issue…………………………………4
C. Proceedings Below ……………………………………6
Reasons for Granting the Petition ………………………. 11
I. This Court’s Guidance on 35 U.S.C. § 101
Patent Eligibility Is Needed …………………………. 12
II. This Case Would Provide a Good Vehicle for
the Court’s Guidance on 35 U.S.C. § 101
Patent Eligibility…………………………………………. 18
Conclusion ……………………………………………………….. 25
Appendix A – The Federal Circuit’s decision
(February 14, 2022) …………………………………….. 1a
Appendix B – The district court’s decision
(March 19, 2021) …………………………………………. 6a
Appendix C – The district court’s judgment
(March 22, 2021) ……………………………………….. 30a
v
TABLE OF AUTHORITIES
Cases
Page(s)
Alice Corp. Pty. v. CLS Bank Int’l,
573 U.S. 208 (2014) ……….. i, 2, 3, 11, 15, 18, 20, 21
American Axle & Mfg., Inc. v. Neapco Holdings
LLC, 966 F.3d 1347 (Fed. Cir. 2020) …………. 11, 13
American Axle & Mfg., Inc. v. Neapco Holdings,
LLC, 2022 WL 2347622 (U.S. June 30, 2022) ….. 17
Diamond v. Diehr,
450 U.S. 175 (1981) ………………………………………. 23
Hikma Pharms. USA Inc. v. Vanda Pharms.
Inc., 140 S. Ct. 911 (2020)……………………………… 14
HP, Inc. v. Berkheimer,
140 S. Ct. 911 (2020) ……………………………….. 13, 14
Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66 (2012) ……… 3, 4, 15, 20, 21
Spireon, Inc. v. Procon Analytics, LLC,
2022 WL 2347633 (U.S. June 30, 2022) ………….. 18
Travel Sentry, Inc. v. Tropp,
497 F. App’x 958 (Fed. Cir. 2012) ………… 4, 5, 6, 23
Travel Sentry, Inc. v. Tropp,
877 F.3d 1370 (Fed. Cir. 2017) ………………………… 7
Statutes and regulation
28 U.S.C.:
§ 1254(1) ……………………………………………………….. 2
§ 1331……………………………………………………………. 7
§ 1338(a) ……………………………………………………….. 7
vi
TABLE OF AUTHORITIES
(continued)
35 U.S.C.:
§ 101 ………………………….. i, 2, 3, 6, 8, 11, 12, 14, 17
18, 19, 20, 22, 23, 24, 25
§ 102 …………………………………………………………… 22
§ 103 …………………………………………………………… 23
2019 Revised Patent Subject Matter
Eligibility Guidance, 84 Fed. Reg. 50
(Jan. 7, 2019) ……………………………………………….. 14
Other authorities
Shahrokh Falati, Patent Eligibility of
Disease Diagnosis, 21 N.C. J.L. &
Tech 63 (Mar. 2020) ……………………………………… 12
Tanner Mort, Abstract Ideas: The Time
Has Come for Congress to Address the
Patentability of Software and Business
Method Inventions,
56 Idaho L. Rev. 383 (2020) …………………………… 17
Safe Skies Luggage Locks, https://www.
safeskieslocks.com/index.php ………………………….. 6
TSA, Travel Tips,
https://www. tsa.gov/travel/travel-tips……………… 6
U.S. Patent No. 7,021,537
(issued Apr. 4, 2006) …………………….. 5, 7, 9, 11, 19
U.S. Patent No. 7,036,728
(issued May 2, 2006) ……………………………… 5, 7, 11
U.S. Patent & Trademark Office, Patent
eligible subject matter: Public views
on the current jurisprudence in the
United States (June 2022) …………………………….. 12
In the Supreme Court of the United States
DAVID A. TROPP,
Petitioner,
v.
TRAVEL SENTRY, INC., BRIGGS & RILEY TRAVELWARE
LLC, DELSEY LUGGAGE INC., L.C. INDUSTRIES, LLC,
OUTPAC DESIGNS INC., TRAVELPRO INTERNATIONAL INC.,
VICTORINOX SWISS ARMY, INC., WORDLOCK, INC.,
Respondents.
On Petition for a Writ of Certiorari to
the United States Court of Appeals
for the Federal Circuit
PETITION FOR A WRIT OF CERTIORARI
Petitioner David A. Tropp respectfully petitions
for a writ of certiorari to review the judgment of the
United States Court of Appeals for the Federal Circuit
in this case.
OPINIONS BELOW
The opinion of the court of appeals (Pet. App. 1a5a) is not published in the Federal Reporter but is
available at 2022 WL 443202. The opinion of the
district court (Pet. App. 6a-29a) is published at Travel
Sentry, Inc. v. Tropp, 527 F. Supp. 256 (E.D.N.Y.
2021).
(1)
2
JURISDICTION
The judgment of the court of appeals was entered
on February 14, 2022. On April 28, 2022, the Court
extended the time within which to file any petition for
a writ of certiorari to June 14, 2022. On June 6, 2022,
the Court further extended the time to file any
petition for a writ of certiorari to July 5, 2022. The
jurisdiction of this Court is invoked under 28 U.S.C.
§ 1254(1).
STATUTORY PROVISION INVOLVED
35 U.S.C. § 101 provides:
Inventions Patentable
Whoever invents or discovers any new
and useful process, machine, manufacture,
or composition of matter, or any new and
useful improvement thereof, may obtain a
patent therefor, subject to the conditions
and requirements of this title.
INTRODUCTION
The only issue in this case is whether two of
petitioner David Tropp’s method patents are patenteligible under 35 U.S.C. § 101. The Federal Circuit
held that they are not because they are directed to an
“abstract idea”—even though the patents recite a
series of steps involving a physical process that uses a
physical apparatus, and even though record evidence
showed innovation over the prior art. In so holding,
the court of appeals employed the two-step patenteligibility framework in Alice Corporation Pty. v. CLS
Bank International, 573 U.S. 208, 216 (2014), to
invalidate patents far different from the kind that this
Court has said fall within the category of judicially
created exceptions to patent eligibility. There is a
3
pressing need of obvious national importance for this
Court’s intervention, both to revisit the Alice two-step
framework and to provide much-needed guidance on
the scope of the judicially created exceptions to 35
U.S.C. § 101.
STATEMENT
A. Patent eligibility
The Patent Act defines the subject matter eligible
for patent protection as “any new and useful process,
machine, manufacture, or composition of matter.” 35
U.S.C. § 101. This Court has recognized three
“implicit exception[s]” to Section 101: “laws of nature,
natural phenomena, and abstract ideas.” Alice Corp.
Pty. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014)
(internal quotation marks omitted). An invention that
claims a law of nature, physical phenomenon, or
abstract idea, without more, is not eligible for patent
protection, while an invention that “integrate[s]” one
of those “into something more” may be patent-eligible.
Id. at 217 (citing Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66, 73 (2012)).
This Court has developed a two-step test for
distinguishing between patents that claim only laws
of nature, natural phenomena, and abstract ideas,
and patents that claim patent-eligible applications of
those concepts. First, a court determines “whether the
claims at issue are directed to [a] patent-ineligible
concept.” Alice, 573 U.S. at 217. If they are, the court
searches for an “inventive concept” by asking, “[W]hat
else is there in the claims before us?” Ibid. (internal
quotation marks omitted). In answering that second
question, the court considers “the elements of each
claim both individually and ‘as an ordered
combination’ to determine whether the additional
4
elements ‘transform the nature of the claim’ into a
patent-eligible application.” Ibid. (quoting Mayo, 566
U.S. at 73).
B. The patents at issue
The two patents at issue here both concern a
physical process for screening luggage without
breaking locks. Following the September 11 attacks,
Congress mandated that the newly created
Transportation Security Administration (TSA)
inspect all checked airline luggage for flights
originating in the United States. C.A. App. 2789. In
announcing the new policy, TSA advised travelers to
leave their checked luggage unlocked and warned that
its agents would cut locks if necessary to complete the
inspection. Travel Sentry, Inc. v. Tropp, 497 F. App’x
958, 959 (Fed. Cir. 2012).
Petitioner devised a method that accommodates
TSA’s need to inspect luggage, while simultaneously
providing passengers a means to lock their checked
bags and keep them locked after screening. That
method employs new “special locks”—locks that can
be opened by their owner but also by a matching
master key given to screening agents, with physical
features on the locks including an identification
structure that signals to the screeners that they can
open the special locks with that corresponding master
key controlled by the luggage screening entity in an
agreed screening process. C.A. App. 23-32, 33-43.1
Petitioner first conceived of his invention in December
2002, after reviewing TSA’s announcement of the upcoming
screening mandate and recognizing the serious problems it
would cause to have millions of bags left unlocked or with broken
locks. C.A. App. 1694. Petitioner documented those problems and
his solution in an invention journal, in which he identified the
1
5
To secure his inventions, Tropp applied for and
obtained U.S. patents. Pet. App. 8a. Among those are
U.S. Patent No. 7,021,537 (issued Apr. 4, 2006) and
U.S. Patent No. 7,036,728 (issued May 2, 2006)—the
two at issue in this case. Those patents disclose an
improved method of screening airline luggage using a
special dual-access lock and an identification
structure. Id. at 10a-12a. The patents describe a
method of providing consumers with dual-access
luggage locks that a screening entity would access in
accordance with a special procedure and a
corresponding key controlled by the luggage screening
entity. Ibid.; see also C.A. App. 29 at Claim 1; C.A.
App. 40 at Claim 1. The locks are marked with an
“identification structure,” which signals to the
screening entity that it holds a master key to that
lock, and would subject the lock to the special
procedure. Pet. App. 10a-12a; C.A. App. 29 at Claim
1; C.A. App. 40 at Claim 1. Acting pursuant to agreed
process, the screening entity uses the master key to
open the special locks, inspect the luggage, and re-lock
them. Pet. App. 10a-12a; C.A. App. 29 at Claim 1; C.A.
App. 40 at Claim 1.2 The Patent & Trademark Office
security and privacy concerns associated with TSA’s plan to clip
passengers’ locks as well as the likely downturn in lock sales that
would result from such a process, and identified the solution he
would later patent. Ibid.
2 Soon after Tropp filed his patent application, TSA notified
Tropp that the agency would recognize the Safe Skies master key
and lock system. Travel Sentry, 497 F. App’x at 960. TSA and
Safe Skies entered into a memorandum of understanding. Under
the terms of that agreement, Safe Skies provides TSA personnel
with training materials to recognize Safe Skies locks and a
master key to open and re-lock those locks; TSA agrees,
“whenever practicable,” to use the master key to open luggage
locked with Safe Skies locks. See, e.g., id. at 961.
6
twice confirmed the patentability of the patent claims
in reexamination. C.A. App. 2741-48.
Petitioner is not merely a patent holder; he
practices his invention. E.g., Travel Sentry, 497 F.
App’x at 960. Soon after filing for the two patents at
issue, petitioner incorporated Safe Skies, LLC, and
began manufacturing and selling locks that could be
identified with a red flame logo. Safe Skies Luggage
Locks (last accessed July 4, 2022), https://www.
safeskieslocks.com/index.php. He began selling these
“Liberty Locks” online, through mail order, as well as
to large retailers. Travel Sentry, 497 F. App’x at 960.
Petitioner’s method has enjoyed tremendous success
in the travel industry, quickly becoming the new
standard for luggage locks. See, e.g., C.A. App. 2223.3
C. Proceedings below
1. The parties have been litigating this case in the
Eastern District of New York for over fifteen years—
long before Alice impacted 35 U.S.C. § 101 law.
Petitioner’s industry rival, Travel Sentry, practices
3 Indeed, since 2004, petitioner has sold millions of dollars’
worth of locks throughout the United States and around the
world. E.g., C.A. App. 2202. Safe Skies locks are sold either
integrated into commercial luggage lines, such as Calvin Klein®
and Tommy Hilfiger®, or standalone through dozens of retailers,
such as Walgreens, Kmart, Bed Bath and Beyond, and others.
E.g., ibid. Safe Skies also sells its locks directly to travelers
through its website, www.safeskieslocks.com. TSA offers a direct
link to the Safe Skies website, explaining that “TSA officers have
tools for opening and re-locking baggage with accepted and
recognized locks, such as Safe Skies® and Travel Sentry®,
reducing the likelihood of damaging the lock or bag if a physical
inspection is required.” See TSA, Travel Tips, https://www.
tsa.gov/travel/travel-tips; see also C.A. App. 1269 (encouraging
passengers to “use a TSA-recognized lock and avoid having your
lock broken if a physical inspection is required”).
7
petitioner’s special-lock invention on behalf of its
luggage manufacturer licensee clients—collectively,
respondents in this case. In 2006, Travel Sentry sued
Tropp for a declaratory judgment of non-infringement
and invalidity of the ’537 and ’728 patents. See Pet.
App. 7a. Tropp counterclaimed for infringement. Ibid.
In 2008, Tropp brought a separate infringement claim
against several of Travel Sentry’s licensees. See ibid.4
Like Safe Skies, Travel Sentry marks locks using
an identification structure—a red diamond. C.A. App.
1699. And like Safe Skies, Travel Sentry signed an
agreement with the TSA that sets forth a similar joint
plan for cooperatively implementing a lock-andmaster-key program. Ibid. Travel Sentry agreed to
provide TSA with sets of keys to open its locks. Ibid.
And Travel Sentry agreed to provide TSA with
screener training materials and instructions for
identifying and unlocking Travel Sentry locks. Ibid.
Unlike Safe Skies, Travel Sentry does not make
and sell locks. C.A. App. 1699. Instead, it licenses its
red
diamond
trademark
to
various
lock
manufacturers and distributors who pay Travel
Sentry for the privilege of marking their own locks
with the logo. C.A. App. 1699-1700.
2. Over a decade after this case was filed, and
after several trips to the Federal Circuit and back on
other matters,5 the trial court held Tropp’s patents to
4 The district court had jurisdiction over petitioner’s claims
under 28 U.S.C. § 1331 and 1338(a).
5 See, e.g., Travel Sentry, 497 F. App’x at 959-60 (vacating
and remanding grant of summary judgment to Travel Sentry on
non-infringement); Travel Sentry, Inc. v. Tropp, 877 F.3d 1370,
1380 (Fed. Cir. 2017) (again reversing summary judgment for
Travel Sentry on non-infringement).
8
be directed to patent-ineligible abstract subject
matter under 35 U.S.C. § 101. See Pet. App. 18a-28a.
The district court considered the following
representative claim containing a series of steps:
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
9
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.
Pet. App. 11a-12a; C.A. App. at Claim 1 (’537 Patent).
Applying the Alice framework, the district court
held that the claims at issue are ineligible for patent
protection because they concern only abstract ideas.
Pet. App. 20a-24a. In the court’s view, the patent
claims involved “the application of dual-access locks
to airport luggage inspection,” “a long-standing
fundamental economic practice and method of
organizing human activity.” Id. at 21a.
The district court further concluded that the
patent claims did not contain an inventive concept
sufficient to transform an abstract idea into
something patent-eligible. Pet. App. 25a-28a. The
court’s analysis on the second step of the Alice
framework largely mirrored its analysis on the first.
Again, the court stated that the patent claims “simply
describe a well-understood and conventional device, a
dual-access lock, and incorporate[] it with the
fundamental economic practice of baggage inspection
at airports.” Id. at 26a.
All told, the district court devoted little attention
to the second stage of Section 101 patent-eligibility
analysis. See, e.g., Pet. App. 25a-28a. It discounted
petitioner’s
arguments
about
an
inventive
combination of elements in the patent claims that
made an entirely new process possible—the post-
10
September 11 system of mass baggage screening, C.A.
App. 19—concluding that the “proffered ‘combination’
does not significantly deviate from the use of dual
access locks and master key rings already available on
the market,” C.A. App. 18. The court did not address
petitioner’s evidence showing a material dispute of
fact as to inventiveness over the prior art, e.g., C.A.
App. 1676-83, 1702. See Pet. App. 25a-28a. Nor did
the court look to details in the patent claims,
specifications, or drawings; identify the relevant
activity at issue; or analyze the claimed benefits. See
ibid.
3. Petitioner appealed to the Federal Circuit.
Petitioner explained that his patents for a physical
process that makes use of a physical apparatus were
not directed to an ineligible concept, and that even if
they were they would still be eligible because they
contained an inventive concept sufficient to transform
them into a patent-eligible application. Petitioner also
flagged in his briefs that the Supreme Court “could
address the scope of judicially created exceptions to
patent eligibility and delineate the extent to which
* * * patent eligibility at either step is a question of
law for the court based on the scope of the claims or a
question of fact for the jury based on the state of art
at the time of the patent.” Tropp CAFC No. 21-1908
Br. of Appellants at ix-x (ECF No. 35) (discussing
American Axle & Mfg., Inc. v. Neapco Holdings LLC,
No. 20-891).
The Federal Circuit affirmed. See Pet. App. 1a-5a.
On step one of the Alice patent-eligibility framework,
the panel pointed to Federal Circuit precedent to hold
that the patent claims are directed to a “longstanding
fundamental economic practice and method of
organizing human activity.” Pet. App. 3a (citations
11
omitted).6 Then, also under recent Federal Circuit
precedent, the panel collapsed the Alice step-two
inquiry into the first. Id. at 4a (stating that “where the
focus of the claimed advance is abstract, an abstractidea improvement cannot transform the ineligible
claim into an eligible one”).7
REASONS FOR GRANTING THE PETITION
The decision below rests on an application of the
two-step framework this Court set out in Alice
Corporation Pty. v. CLS Bank International, 573 U.S.
208 (2014), for determining whether claims are
ineligible for patent protection because they concern
one of this Court’s “implicit exception[s]” (id. at 216)
to 35 U.S.C. § 101. The only issue in this case is
whether the claims in petitioner’s patents are patenteligible under 35 U.S.C. § 101. Applying the Alice
framework, the district court found the claims
ineligible as directed to an abstract concept, and the
Federal Circuit panel affirmed. Pet. App. 1a-5a, 6a29a.
The Court should grant certiorari to address the
scope of judicially created exceptions to 35 U.S.C.
§ 101 patent eligibility and the Alice framework.
Separately, the panel concluded that petitioner did not
preserve an argument that the ’537 and ’728 patents also teach
“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.” Pet. App. 4a. Petitioner
does not seek this Court’s review of that aspect of the Federal
Circuit’s decision.
6
7 Petitioner did not seek en banc review; the Federal Circuit
had recently split evenly on en banc review in American Axle &
Manufacturing, Inc. v. Neapco Holdings LLC, 966 F.3d 1347
(Fed. Cir. 2020), showing that the full court of appeals was
deadlocked on the issue of 35 U.S.C. § 101 patent eligibility.
12
Through this case, the Court could provide guidance
on the proper application of the Alice framework or
otherwise clarify the breadth of assessing whether
patents fall into one of the judicially created
exceptions to patent eligibility. Either way, the
Court’s action is needed to return this inquiry to
something closer to the statutory text at issue here,
which broadly authorizes the issuance of a patent for
“any new and useful process, machine, manufacture,
or composition of matter, or any new and useful
improvement thereof.” 35 U.S.C. § 101.
I.
THIS COURT’S GUIDANCE ON 35 U.S.C.
§ 101 PATENT ELIGIBILITY IS NEEDED
A. It is by this point well-known that the U.S.
Patent & Trademark Office, judges, congressmen,
industry leaders, practitioners, and scholars alike
have been calling for additional guidance on how to
assess whether patents fall into one of the judicially
created exceptions to 35 U.S.C. § 101. See, e.g., U.S.
Patent & Trademark Office, Patent eligible subject
matter: Public views on the current jurisprudence in
the United States 18-41 (June 2022) (noting that many
stakeholders find the current state of 35 U.S.C. § 101
law unclear and unpredictable, with consequences for
American innovation investment, competition, and
even national security); Shahrokh Falati, Patent
Eligibility of Disease Diagnosis, 21 N.C. J.L. & Tech.
63, 99, 125 (Mar. 2020). The “Mayo/Alice test has been
very difficult for patent stakeholders, including
examiners, inventors, patent owners, patent lawyers
and judges alike, to implement and/or interpret
because it remains unclear what the boundaries of
Section 101 are.” Falati, supra, at 99. Indeed, the
pr…