David Tropp sued Travel Sentry for patent infringement back in 2006. That was the same year that I first taught a patent law class. Back then, eligibility was almost an unknown concept in patent litigation. The rule of thumb was “anything under the sun, made by man,” and I mean ANYTHING. But as we crawled into the 2010s, eligibility emerged as a powerful tool to invalidate issued patent claims–including Tropp’s covering covering a TSA-approved luggage lock. The basic idea here is to give TSA a master key, or as the district court suggested: “using and marketing a dual-access lock for luggage inspection.”
Tropp recently petitioned the Supreme Court seeking a writ of certiorari on the following question:
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 Corp Pty v. CLS Bank Int’l, 573 U.S. 208 (2014).
Tropp Petition. The parties agreed that the following claim is representative:
1. A method of improving airline luggage inspection by a luggage screening entity, comprising:
making available to consumers a special lock having a combination lock portion and a master key lock portion, the master key lock portion for receiving a master key that can open the master key lock portion of this special lock, the special lock designed to be applied to an individual piece of airline luggage, the special lock also having an identification structure associated therewith that matches an identification structure previously provided to the luggage screening entity, which special lock the luggage screening entity has agreed to process in accordance with a special procedure,
marketing the special lock to the consumers in a manner that conveys to the consumers that the special lock will be subjected by the luggage screening entity to the special procedure,
the identification structure signaling to a luggage screener of the luggage screening entity who is screening luggage that the luggage screening entity has agreed to subject the special lock associated with the identification structure to the special procedure and that the luggage screening entity has a master key that opens the special lock, and
the luggage screening entity acting pursuant to a prior agreement to look for the identification structure while screening luggage and, upon finding said identification structure on an individual piece of luggage, to use the master key previously provided to the luggage screening entity to, if necessary, open the individual piece of luggage.
I don’t see anything wrong with this claim other than it would be easy to design around.
Probably really good 103 arguments can be made and probably this should fall under 103 but 101? No it should be eligible.
Sure. As usual with these §101 cases, there may well be a problem with the claim, but not anything that—according to the plain words of the statutory text—ought really to constitute a §101 problem.
I just read some DC opinions where they invalidated claims with 101.
The opinions are just so offensive. They have a judge with no technical background reducing claims to “inventive concept” and reducing the claims to what he thinks applies to the “inventive concept” and then claiming they are “purely functional” and then invalidating everything.
It is just absurd.
I don’t really disagree with you point, but I can’t help but reflect on how 101 became a problem because 103 was a problem.
Why don’t you take a couple hours and try to write up a pre-KSR 103 rejection for these claims?
I think that if KSR had happened in 1995, we never would have gotten Alice in 2014.
I do not think that KSR really worked all that much of a sea-change in practical effect. Most claims that will fail at the CAFC under KSR standards would probably have failed at the CAFC pre-KSR as well, and most that would have survived at the CAFC pre-KSR will usually survive post-KSR as well.
The real sea-change in obviousness came not from KSR, but from the AIA. I certainly agree, however, with your supposition that if the sea-change in obviousness had come sooner, it would have prevented the deformation of subject-matter eligibility law. If the AIA had arrived in 2007, we would probably never have gotten Mayo/Alice in the 2010s.
See, Table 1 in Prof. R’s 2015 empirical study of obviousness pre- and post-KSR. The CAFC went from holding claims nonobvious a little over half the time (54%) pre-KSR to holding them nonobvious a little under half the time (43%) post-KSR. Not nothing, to be sure, but the bulk of cases reach the same outcome pre- and post-KSR.
The bit that really changed was when the AIA made it possible to present an obviousness challenge early in a trial, without going through all of discovery first. That is making much more of a difference than KSR ever did.
link to patentlyo.com
“can’t help but reflect on how 101 became a problem because 103 was a problem.”
Does anyone see the “Ends Justify the Means” problem embedded in Ben’s ‘observation’ (meaning not a problem with Ben’s observation, but an indictment against the Court employing Ben’s observation).
The plaintiff in this long patent litigation is an individual inventor who either had or obtained the financing for it. That is far less common than patent suits by corporations or PAE plaintiffs, as easily shown by scanning the regular lists of new patent suits on Gene’s blog or elsewhere. Most PAE suits are on patents purchased from companies or bankrupt companies that owned those patents [unlike their inventors], so it is not surprising that those inventors get nothing even if the PAE wins. But the patent-selling company may get a percentage. Suits on private inventor patents are sufficiently expensive and risky that I have not even heard of a law firm taking one on a “contingent fee” basis in some years either. Has anyone?
Yes, they’re happening Paul. (thankfully)
>Most PAE suits are on patents purchased from companies or bankrupt companies that owned those patents
It’s worth remembering that one of the reasons those companies were able to get financing is that VC’s can sell the IP if the company failed.
But, even ignoring financial realities, I’ll argue that most founders should sell their patents as soon as possible. Patent licensing / litigation is a specialized task that will require a ton of executive bandwidth (more than a startup can really afford)
Something to remember about selling patents to PAEs who sue on them is that the original company owner and/or inventors can still get hit with time consuming third party document discovery and depositions about that invention and patent.
Sure, but now: (i) it’s just a depo and (ii) the owner/inventor doesn’t care about the outcome of the case.
If they really want to minimize the work, they could repeat “I don’t remember” for a few hours and be done with it.
Shhhh OC – those points do not support the “Desired Narrative” of “0h N0es, Tr011s”
No shortage of prior art on this one.
With a filing date back in 2003, do you remember what the state of the art was back then? Maybe you have a better memory than mine, but I really could not say what relevant technologies existed back before 12 Nov 2003.
Those were the pre-guidance days, a field of volleys, with everything imaginable for fodder. Lots of experiments in patent prose !!
Lol – for those of us with the experience and deft, it still is ‘the days of experiments in patent prose.’
yeah, like, if claims can be made to “information” encoded on a DNA strand in some biotech patents, maybe then look at it as if it could be also analog to computer instructions encoded on a floppydisk. For ever new problem, reveals pointing to maybe a “higher law” solution.
Whatever drugs you are on, CW, dial them down.
Yeah, the technology appears to be what we had on high school lockers in the 1960’s. The students each had a unique combination to their assigned locker, and the school administration had a master key that could open any locker without resort to use of the combinations.
MHO, YMMV, etc. Be well.
haha, the modern “master key”, is 35 USC 101 in the hands of the wrong people !
I think to maybe go back and re-read Peter A. Alces’ “The Law of Fraudulent Transactions”
Question: Is it possible for a court to commit Fraud on the PTO ?
Ah, but were the administrators at your high school marketing those locks? 😉
Yes, and did that one Master Key open any locker in any high school anywhere in the USA?
Maybe, but the very first lesson that a patent practitioner learns is that prior art is applied via 102/103. That’s Patent 101, not 35 USC 101. And all those “learned” judges on the Court can’t tell the difference. Prior art should be irrelevant to 101. I’d even argue that “laws of nature” and “natural phenomenon” should be applied via 102/103, not 101; and that most “abstract ideas” should be applied via 112, not 101 (though 101 might be applied via the “useful” standard for abstract ideas).
What you are describing is the old CCPA approach to §101. That was much the better approach, but we are going to need an assist from Congress before we can get back to that way of thinking about the allocation of work among the various statutory sections. The courts definitely favor an approach in which §101 does all the work.
And yet, gnd, you would be fine with Greg’s “polite” but otherwise totally reprehensible “oh well, we should just accept bad law” positions…
Grow
A
Pair
Really? I think you misunderstand what that phrase means. But at least you discovered how to format it to get past the filters.
Oh there is no doubt that I understand that phrase – not any doubt that it fits to you.
Further, the formatting here is NOT to avoid the filters, as the phrase is not one on the George Carlin list, but instead was provided for its ‘choppy’ effect.
But perhaps that was just too subtle for you.
I assume that he has one or more patents with appropriate “device/apparatus” claims that would pass muster under Alice, right?
It includes the label “TSA Approved” and a master key in the possession of the TSA that will reflect sunlight if taken outdoors during the day.
TSA is too short for a good marketing manner, I’d suggest to work “Reichsicherheitshauptamt” into the step reciting mannerism.
Why do people keep on thinking that actual hardware somehow passes Alice?
Actual hardware claims IN Alice were deemed Abstract.
Did it fail to define a res ?
No.
Quite in fact, both sides had stipulated that the hardware claims had MET the statutory category of ‘Machine’ in 35 USC 101 (and also had admitted to the claim meeting the other 101 requirement of utility in the patent sense).
Just did not matter to the Supreme Court.
By the by — I believe that you still owe me a response to a “res” discussion on an earlier thread.
In other words – the claims meeting 101 were not even AT issue (FOR 101) in front of the Court, but the Court still reached out and decided the matter.
Can you say, “exceed their authority?”
Maybe for some aggrieved who sue the Gov for breach of trust over a patent matter, it is a defense of Gov. to say, “Hey look, your patent never defined a res, so there was never any trust relationship, case dismissed”
But your question “What is the res of a method claim?” It might be an abstract notion (as opposed to an abstract idea).
“some aggrieved who sue the Gov for breach of trust over a patent matter,”
Lol – huh, what?
hmm.. on your question about whether a method claim defines a res ? The sys didn’t have a reply link. It was a great question, one I didn’t get far with cuz I’d thougt of it previously and was so happy to see you ask it right off the bat like that. I like to come in at things from different angles, just for academic folly but once out of 100 of them bear fruit, kinda like snag-fishing for salmon, lol.
Maybe I’m wrong but conclude that a patent defines a trust relationship, where the trustee is the US Gov, and the patentee is the temporary sole beneficiary, until the term runs out and then everybody benefits.
The gov is the trustee, because the patent resides in its records. The location of the res, is within that 10-mile or less square of land. Maybe.
In order for there to be a res in the first place, one might think that a patent claim would need to define a res. If it doesn’t, then there’s no Trust relationship.
Is there any fruit from thinking along these lines ? IDK. But if I can state with certainty that a valid patent claim MUST define a res, maybe I make progress.
I ask…. what if a patent claim doesn’t define a res ??? haha, there can be no Trust relationsip, b/c there can be no physical control over the in rem of the patent, so it becomes….. dare I suggest… frivolty ? be well
maent ‘jurisdictional control, in the stead of “control”. Its definitely another “look” at the elephant.
The point of asking is to draw you away from this “res” business.
Infringement — like trespass — is not a “res” type of thing.
One of the things my Uncle Peter told me (besides the famous one), is that it is ok to have an open mind — just not so open that your brain falls out.
Trespass requires, correct me if I’m wrong, the definition of what is trespassed. In land, its the metes and bounds on the deed, and a trespasser violates the exclusivity inherent in ownership. So, the land is defined. In a patent ? I think for composition or machine claims which concretely describe a device or pile of powder, the res is present in the claims as in a property deed, sort of.
Method claims ? hmm, the best I can come up with is the source of the res for a method claim is 35 USC 282, which confers presumption of validity by statute since methods don’t define a “real” thing. Provided the requirements and conditions referred to in 101 are met, sec. 282 maybe breathes the res of life into a method claim. If a claim in a method patent weren’t presumed valid, there’s be nothing there.
That’s not how res is applied.
There is no statutory basis to approach infringement differently for one statutory category versus another.
I appreciate your “interest,” but your musings do not fit this universe.
It would be interesting to see what legal scholars think about the res of a method patent. They certainly can’t say that method claims don’t have one. My lay view is that a claim to a method, is a claim to a set of instructions. What’s the res ? Maybe, its the exclusive right to”potential or actual ability to cause a transformation of _____ whatever using said process.” I don’t know this stuff, just never saw anyone else look at it this way, and sense it might have some merit.
Your “sense” of what has “merit” is clouded by your raging narcissism.
Oh, lighten up Francis – Chrissy is just having a little fun.
Thanks for the reply on the res stuff. I did a goog search for “res of a patent” and zip, zero zilch, nada. Yet, I know you know, a patent must have a res.
I come at this from the angle of software patents, which is outside my area but I still watch it.
Maybe my reasoning is wrong, but the way I see it, you’d asked about what is the res of a method patent, and maybe we’ve identified a “difference in character” between the res of one type of patent vs. another.
So, in the “scientific method”… the theory should have some predictability. Ask myself “What can I predict about what the character of the res of a software patent might need to be like.
Can I go back through all the cases concerning businss methods, and other judicial exceptions, and now, with my “res goggles” on, ask what the res was in each of those cases, and whether what the actors were really arguing over, might have something to do with the res, or its character ? I don’t know. Just grasping at straws.
But, I still sense strongly a patent must have a res, and nobody’s mentioned it. Since probably some smart ppl read these boards, if theres anything to it, maybe we’ll see more.
haha, one beauty of free speech, is that bad ideas disappear easily 🙂
Where’s your res ? !!
be good, best to ya
Well Chrissy – I cannot help you chase a a rabbit that disappears from the present universe, so your “Yet, I know you know, a patent must have a res. – I come at this from the angle of software patents, which is outside my area but I still watch it.” won’t let me help you.
There are no straws to be grasped in this universe – googles or no googles.
(your “sense’ is simply not applicable, and in this instance, is – as it must be – immediately preceded by the three letters, “n,” “o,” and “n”)
I could see these claims getting past the low bar of Section 101. That said, 0.001% chance the Supreme Court takes this case. Even assuming for argument’s sake that the lower courts made a mistake on this one, the function of the Supreme Court is not to correct errors that are limited to the facts of one particular case.
Could Tropp be the new / next American Axle?
There will always be a “next” American Axle, even long after everyone has forgotten American Axle entirely. No matter how many times SCOTUS plays Lucy to the patent community’s Charlie Brown, the hunger to believe that the Court is going to correct its own mess refuses to die. At any given moment, there is always some long-shot victim of Alice willing to file a cert. petition, and the Charlie Browns of the patent world will pin their hopes to that new cert. petition each time, unwilling ever to learn from the previous dozen experiences.
Re: “the hunger to believe that the Court is going to correct its own mess refuses to die … unwilling to learn from the previous [cert attempts].”
Part of that is ignoring the important fact that there are majority deciders of prior “unpatentable subject matter” decisions still on the Supreme Court, including justices of the new conservative majority. Attacking one’s own prior decisions is not the same as attacking older decisions by other justices. Also, patent law is not one of their religious or other conservative “hot button” issues. Also, unlike many readers here, none are patent practitioners, and protecting American business and consumers from patent suit interruptions or costs seems to have about the same value weight for them as helping patent owners win lawsuits.
protecting American business and consumers from patent suit interruptions or costs seems to have about the same value weight for them as helping patent owners win lawsuits
That’s no way to run a kleptocracy
marty — employing his “Opposite Day” colors, as the kleptocracy IS running along the lines that the Efficient Infringers want (with the Court making a mess of eligibility law).
Could Tropp be the new / next American Axle?
Anybody could be the new American Axle. However, these claims have little hope of surviving. This is a business method — regardless of one wants to define it. If claims to modifying an axle (i.e., the tuning in American Axle) didn’t interest SCOTUS, these will not. This will be an easy denial of cert.
I reject the notion that claims to a device can be so casually classified as “business method.”
Further, you appear to agree that business methods (on some per se level) are outside the scope of innovation protection.
Talk about lousy ideas….
I reject the notion that claims to a device can be so casually classified as “business method.”
Whether YOU reject it or not, that is what this is.
making available to consumers a special lock having a combination lock portion and a master key lock portion, the master key lock portion for receiving a master key that can open the master key lock portion of this special lock, the special lock designed to be applied to an individual piece of airline luggage, the special lock also having an identification structure associated therewith that matches an identification structure previously provided to the luggage screening entity, which special lock the luggage screening entity has agreed to process in accordance with a special procedure,
marketing the special lock to the consumers in a manner that conveys to the consumers that the special lock will be subjected by the luggage screening entity to the special procedure,
the identification structure signaling to a luggage screener of the luggage screening entity who is screening luggage that the luggage screening entity has agreed to subject the special lock associated with the identification structure to the special procedure and that the luggage screening entity has a master key that opens the special lock, and
the luggage screening entity acting pursuant to a prior agreement to look for the identification structure while screening luggage and, upon finding said identification structure on an individual piece of luggage, to use the master key previously provided to the luggage screening entity to, if necessary, open the individual piece of luggage.
What is the structure? A special lock having a combination lock portion and a master key lock portion and an identification structure? This isn’t some software claim where the operations being perform inherently change the structure of the hardware performing the operations.
Further, you appear to agree that business methods (on some per se level) are outside the scope of innovation protection.
Did I say that? No. I was commenting on the likelihood of the Supreme Court granting cert. In this instance, SCOTUS is less likely to grant cert on a business method than on a classic “mechanical” invention.
There is a difference between understanding how the law is currently being applied versus having an opinion as to how the law should be applied. You seem to have a propensity to make erroneous assumptions for the sole purpose of being disagreeable.
Oh, I certainly “got” that you were making a comment on the likelihood of grating cert – but you were a bit careless in your formation, and to which I took justifiable note.
For example, your own “being disagreeable” is quite in evidence below in that you want to take Greg to task.
Mind you, I happen to not only agree, but would remind you that Greg’s background is pharma, so he is perfectly willing to turn a blind eye to the dangers presented to software.
JUST as you appear to be perfectly willing to turn a blind eye to the dangers presented to business methods.
By the by – I am perfectly aware of the difference between understanding hoe the law is currently being applied versus having an opinion [how quaint of you to use that phrasing] as to how the law should be applied.
I merely pointed out that YOUR opinion of how the law should be applied (inherent in your comment) was a lousy idea.
For example, your own “being disagreeable” is quite in evidence below in that you want to take Greg to task.
Whataboutism is not a good counter-argument.
I happen to not only agree, but would remind you that Greg’s background is pharma, so he is perfectly willing to turn a blind eye to the dangers presented to software.
That I’m well are of. One of Greg’s failings is not not looking at the big picture.
JUST as you appear to be perfectly willing to turn a blind eye to the dangers presented to business methods.
Again, I said NOTHING about business methods beyond inferring that the Supreme Court is less likely to take up a business method than it is to take up one that is more mechically-oriented — particular if the goal of SCOTUS is to clarify the law.
I merely pointed out that YOUR opinion of how the law should be applied (inherent in your comment) was a lousy idea.
Again, I said nothing about how the law should be applied — inherently or not. There is a snowball’s chance is hell that the SCOTUS will take this up. Hence, the claims will not survive because the CAFC has already declared them to be dead. I presented no opinion as to whether the CAFC got it right or wrong. The fact is that the claims are currently dead now, and my opinion is that there is a next to nothing chance SCOTUS will take this up. Nothing about that inherently requires that I agree with the CAFC.
Take a deep breadth there Wt, and note that your comment has implications – and it is those implications that are faulty.
your comment has implications – and it is those implications that are faulty
The Supreme Court isn’t taking this on. I would bet good money on it. There are far better cases for SCOTUS to take than this one if SCOTUS had any interest in clarifying 101. They haven’t. I see absolutely no reason why SCOTUS would find this interesting. Nothing about these observations are faulty.
The Supreme Court isn’t taking this on.
Indeed, I expect that we can all agree on this point.
Greta awesome and I completely agree with you that the Supreme Court won’t grant cert on this one.
Still does not address YOUR implications in YOUR comment that I took issue with.
Here’s a hint: just as you got upset (er u m, became disagreeable) with Greg when Greg dissed on software, you played the role of Greg in relation to business methods.
Too many people think that it is fine to diss business methods.
It is not.
David Tropp sued Travel Sentry for patent infringement back in 2006. That was the same year that I first taught a patent law class.
Over 15 years of litigation with no solid result—in either direction—for all that time and money. This sort of case makes one wonder whether Congress would not do better to add a working requirement to the U.S. patent laws.
Both the NPEs and the defendants sued by the NPEs would be better served—in the end—if the lawsuit ends early, instead of dragging on for years before it ends with a whimper. A working requirement would give the courts a quick, solid reason to end the case early, before it turns into a case of throwing good money after bad.
I don’t follow this comment, as this case doesn’t appear to involve NPEs. Page 6 of the petition (& fn3) says this:
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), link to safeskieslocks.com. 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
[footnote 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, http://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.”
Well, that’s egg on my face. I thought that Tropp was an NPE. Thanks for setting me straight.
A working requirement would give the courts a quick, solid reason to end the case early
A working requirement? That is a lousy idea.
Do I have to build a supertanker if my invention is directed to an improved supertanker?
Do I have to build a semiconductor fab if my invention is directed to an improved method of creating a microprocessor?
What happens to those people whose inventions follow up on another invention (i.e., an improvement to an existing invention) whereby making the invention necessarily infringes another patent(s). Will they be forced to infringe in order to have standing?
Lousy, lousy, lousy idea.
Do I have to build a supertanker if my invention is directed to an improved supertanker?
Do I have to build a semiconductor fab if my invention is directed to an improved method of creating a microprocessor?
As a practical matter, the people most likely to invent improved supertankers are folks who already run a fleet of supertankers, and the folks most likely to invent a method of microprocessor manufacture are folks who already have fabs in operation. I am cheerfully willing to concede (see #7.1.1) that my #7 is not that convincing, but this objection does not seem that forceful.