Travel Sentry v. Tropp (Fed. Cir. 2022)
Tropp’s patents cover special lockable airline luggage. U.S. Patent Nos. 7,021,537 and 7,036,728. Basically, TSA has a master key to get into the lock. But, folks already knew how to make a combination lock with a master key. The inventive additions here are in the way the lock is marketed and used. The claimed method requires:
- Provide a “special lock” designed to be applied to an individual piece of airline luggage having a combination lock portion and a master key lock portion and also an identifier (such as TSA APPROVED);
- Market the lock to the consumers — letting them known that the TSA has the master key;
- During baggage screening, the TSA sees the TSA-APPROVED identifier and uses the provided master key to open the luggage, if necessary.
‘537 patent, claim 1.
Travel Sentry sells luggage with TSA approved locks and sued Tropp seeking a declaratory judgment of non-infringement back in 2006. That case has been pending all this time. Most recently, the district court invalidated the claims — finding them directed to the abstract idea of “using and marketing a dual-access lock for luggage inspection, a longstanding fundamental economic practice and method of organizing human activity.” The court also found no inventive concept beyond the abstract idea itself.
On appeal, the Federal Circuit has affirmed in a short non-precedential opinion, finding that Tropp’s arugments on appeal were not properly preserved for appeal. Importantly, the Federal Circuit found that inventiveness arguments made with regard to 102/103 arguments could not be raised on appeal because Tropp did not particularly make those arguments in its eligibility briefing.
- “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).’ . . . But we do not address those questions, because Mr. Tropp has not preserved this argument for eligibility.
- “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.”
Slip Op.
The claim is to a method and, yesterday, at 2.4 in this thread, there are useful coments about that claimed method. But thinking about the underlying inventive concept, it can be claimed in product form. See for example the claim recently granted to Mr Tropp by the EPO in his divisional application 04 809 332. This was after the EPO refused his original EPO application.
While agreeing with the thought that:
“The mere inclusion of generic and well-known hardware is not enough to confer eligibility on a claim that is otherwise directed to a well known and fundamental economic process.”
I’m still inclined by the success of the EPO divisional to think that there is something here both eligible and patentable, if claimed with precision.
Or, to put it another way, isn’t the claim issued to Tropp by the EPO a basis to get something useful issued by the USPTO?
Yet another shameless “here, use my EPO Uber Alles glasses” shilling by MaxDrie.
Too much to hope for, I suppose, but what would be nice to have from a US practitioner is whether something like the claim issued by the EPO:
link to register.epo.org
has any potential for resisting attacks on its validity in the USA, and then for enforceability under the patent law of the USA. Or does it perhaps fail to embrace any real life infringing act and is anyway hopelessly indefinite, or tainted by the same lack of eligibility as the method claim?
Meanwhile, I am assuming that the issued claim will do very nicely for the commercial exploitation of the invention in Europe (at least until the ptent expires in April 2024).
It is theoretically possible, Max, and certainly a new and inventive lock would be patentable. But, from the reasons for allowance in the ‘537 patent, “the apparatus (a combination lock and a master lock portion) is well known in the art”.
Are you referring to the claim in EP2532812?
“1. A plurality of special locks having a multiplicity of sub-types such as different sizes, different manufacturing designs or styles, etc. for improving airline luggage inspection by making such inspection secure yet non-intrusive, each lock comprising:
a first lock portion in the form of any kind of locking mechanism useful for and easily accessible by the passenger and a master key lock portion, the master key lock portion being for receiving a master key that can open the master key lock portion of all sub-types of special locks,
the special lock being designed to be applied to an individual piece of airline luggage, the special lock also having indicia thereon conveying to luggage purchasers and to the luggage screening authority that the special lock is a lock that the luggage screening authority has agreed not to break.”
I think that claim is fine for eligibility, with the caveat that the second clause should be ignored as non-functional descriptive matter. The EPO appeal decision seems to hang on the fact that the claim recites a plurality of locks of different types that all use a single master key lock. I think that did exist prior to 2003 (e.g. fire department master keys that open both door locks and padlocks), but I’d have to go digging for evidence.
Dan Thanks. I am indeed referring to the claim for Europe which you helpfully include in all its (?) glory.
The case reminds me of one at the EPO about 15 years ago, in which Applicant in person prevailed upon an EPO Appeal Board during “oral proceedings” before the Board to allow a claim which, months later, the patent owner then asserted against the ECB (European Central Bank) arguing that every Euro banknote that ever issued infringed the claim. Alarm bells ringing, or what? Unfortunately for that patent owner, the issued claims turned out not to be valid. Who would have guessed?
You mention Fire Dept master keys but I think that is no different from the art that was considered by the EPO Board. Can the EPO claim’s heavy load of “non-functional descriptive matter” save the claim from crashing out (in disputed inter Partes proceedings) as obvious? Time will surely tell.
Re: alarm bells, I similarly find it odd that this case went on as long as it did… The applications were filed on November 12, 2003, which – according to Wiki – is *the same day* Travel Sentry (the accused infringer here) started public sales of its combination-and-key locks that had a TSA approved identifier and an agreement with the TSA to open them with the key rather than cutting the locks.
As noted in other comments – the prosecution involved that fact.
Not sure why you are left to wonder, given as you have already been informed that the details of the prosecution are important to the points that you want to talk about.
It’s not often one can come up with hard line stances in patent law, but I can categorically say that the words “making available to consumers” should never appear in a patent claim.
It is both humorous and quite sad that Random posts in a manner that is so self-contradictory.
“t’s not often one can come up with hard line stances in patent law” – no matter the fact that most every post BY Random is such a hard line stance.
“… but I can categorically say that the words “making available to consumers” should never appear in a patent claim.”
And Random would — of course — be absolutely wrong in his hard line stance.
Much like he is wrong in nearly ALL of his views on patent law.
That he believes so fervently is a testament to his entrenchment on the Peak of Mount S.
That he also is an examiner who is charged to evaluate patent applications under the law is a travesty.
FWIW, the judge who granted SJ is in the EDNY, not the EDTX.
Sorry, this is supposed to be in response to 1.1.3 below.
Thanks Greg.
BTW, surprised no one has noted that this meets the Alice step two requirement of being well known, not just known. E.g. many large apartment buildings have locks openable by individual tenants that are also all openable by a master-key given to the “super” or some others.
BTW, surprised no one has noted that this meets the Alice step two requirement of being well known, not just known. E.g. many large apartment buildings have locks openable by individual tenants that are also all openable by a master-key given to the “super” or some others.
Surprised you didn’t read the claim and realize that you’ve only captured a portion of the limitations. Oh wait … not surprised.
But Paul will assure you that he is completely ‘objective’ when it comes to patent law issues such as post grant reviews (after admitting in the past that he has chosen to be no longer capable of representing those seeking to obtain patent protection by withdrawing from having a USPTO registration number).
(with a Jedi hand wave) These are not the pom-poms you seek.
Tell us of all the 101 rejections you’ve beaten by arguing “every element” at Step 2B.
Tell us of all the 101 rejections you’ve beaten by arguing “every element” at Step 2B.
Step 2B isn’t where it is at. Prong Two of Step 2A is where your better arguments lie.
Does the Berkheimer Memorandum ring a bell for you, Ben?
How about the required showing to the heightened level of ‘conventional’ (especially of ordered combinations and not merely piece parts) that rises to widespread use (and to which the usual examiner levels of anticipation and obviousness do not suffice under APA standards).
For this observer from Europe, one interesting aspect is what is happening in this patent family at the EPO, namely this.
The application attracted 3rd party observations on patentability and was refused, appealed and refused again. But the divisional has got to grant and is going through the opposition period. As its claims strike me as satisfyingly broad, one supposes that at least one opposition will be filed by April of this year.
Haven’t had time yet to browse the EPO files online to see what role (if any) eligibility played in the two prosecution files.
Clever and commercially very attractive invention though, isn’t it? Whether it is “technical” or not would depend crucially (of course) on what you claim. But meanwhile, here in Germany, the appellation “TSA approved” is by now so well known that it even features as the answer to a stock question on TV game shows.
As to the USA, presumably all is not yet lost, right, for the patent owner?
Udhdhdyhh
… the ‘interesting’ aspect to the Shill of EPO Uber Alles is…
(gasp)
… what is going on in the EP ‘sovereign’
Is anyone shocked?
Nobody else is “shocked” anon. But if anybody, then it ought to be you, anon, given your obsession that the EPO’s “technical” is more restrictive than the USA’s “useful arts” test of eligibility. It was with this in mind that I wrote my original comment.
Do me a favour though, anon. Tell me whether this negative Fed Ct decision puts Mr Tropp out of the game. I mean, does he still have a sporting chance of collecting royalties under his US patent?
Or might he have better chances of collecting from his afttorneys, by starting a malpractice suit against them?
“Or might he have better chances of collecting from his afttorneys, by starting a malpractice suit against them?”
On what basis ? (serious question)
“iven your obsession that”
It is FAR less an 0bsess10n on my part and merely one that – due to YOUR posting otherwise, I am called upon to remind you of the differences. When WE get to the point of you being respectful of the differences, THEN we won’t see these types of posts, now will we?
Painting YOUR disrespect as being some foible of mine is itself highly rude and disrespectful.
As to the USA, presumably all is not yet lost, right, for the patent owner?
According to PAIR, he still has an application pending (US 16/861,850). That said, I am dubious that there is anything with (1) commercially useful scope left to claim that (2) will not run into the same issues he had here. I expect that he has reached, for all intents and purposes, the end of his road here. I do not think that either reconsideration en banc or SCOTUS certiorari is likely to save him from this CAFC panel decision.
Thanks, Greg. The wrapper at the EPO reveals claim 1 to be directed to the core inventive concept of a plurality of locks of a multiplicity of “sub-types” each of which locks includes a master key portion that can receive a common master key. A Technical Board of Appeal of the EPO found that it meets all the patentability provisions of the EPC. In particular, for the Board the claim was inventive over the Travel Sentry system as described in a piece in the NYT.
I wonder whether Mr Tropp could inject such a claim into his pending 16/861,850 and, if so, whether its issue would serve any useful purpose.
I also wonder whether any party is preparing to file an opposition to the granted European patent before the opposition period expires later this year. Meanwhile, the European patent has issued and its owner is already free to assert it against infringers (direct, contributory, joint tortfeasors, and so on) in Europe. In the EPO wrapper we see Mr Tropp informing the Board back in 2019 that he has contracted with security authorities in the UK and in Germany and expects the early arrival of counterfeit products.
Three important lessons:
1. Never agree with, stipulate to, state, or assert that any particular claim is representative of all your claims; and especially not your first independent claim.
Never. Ever.
2. Never agree with, stipulate to, state, or assert that any one claim from one patent is representative of one or more claims from one or more other patents.
Never. Ever.
3. Always initially raise and maintain all arguments which have merit.*
Always.
Force the forum(s) hearing your case do the job they’re being very well paid for.
* But no more than three if you go to SCOTUS.
Never… stipulate… that any particular claim is representative of all your claims…
Two points:
1) Even if you do not stipulate, the court is still free to treat your first independent claim as representative. E.g., In re Muchmore, 433 F.2d 824, 825 (C.C.P.A. 1970).
2) If you choose to litigate the representativeness of a given claim and insist that each be analyzed separately, not only will you likely lose that fight, but the attorneys fees petition at the end will almost write itself for the other side.
Even if you do not stipulate, the court is still free to treat your first independent claim as representative. E.g., In re Muchmore, 433 F.2d 824, 825 (C.C.P.A. 1970).
Did you read that case cite? I think not. This is what it says:
We analyze the claims in two groups, choosing a narrow claim from each group as representative. Since we agree with the board’s conclusion of obviousness as to these narrow claims, the broader claims must likewise be obvious.
[SMH]
If you choose to litigate the representativeness of a given claim and insist that each be analyzed separately, not only will you likely lose that fight, but the attorneys fees petition at the end will almost write itself for the other side.
Where does this come from? Every claim stands on its own. Dependent claim should and often do recite subject matter that is separately patentable. I frequently find Federal Circuit decisions that identify certain claims as invalid whereas other claims from the same patent as being valid.
You don’t have to argue every claim, but too many (lazy … err … I mean time-pressed) attorneys only argue a single claim.
“Where does this come from?”
Gulp, it comes from the world according to Greg (dontcha know).
It’s at the intersection of the peak of Mount S and the bubble of the polite group think/confirmation bias sphere.
I gather from your response that you took me to be making a much grander point than I had meant to convey. My apologies for the unclarity.
I certainly do not mean that it is never a good idea to argue separate claims separately. I was responding, rather, to Pro Say’s categorical assertion that one should “[n]ever… stipulate… that any particular claim is representative of all your claims,” and that one should instead “[f]orce the forum(s) hearing your case [to] do the job…” (by which, I infer he means to adjudicate every claim separately).
I think that this “make them do it all” strategy is (1) unlikely to achieve anything and (2) end up earning you a significant penalty. For one thing, even if you do not stipulate that one claim or a few claims are representative, the court will pick one to treat as representative whether you like it or not. Better to have a hand in choosing your “champion,” rather than let the court choose without your input. For another, if—for purposes of the challenge that you are actually contesting—there is no material difference among various of your claims, you will end up paying the other sides fees when you force them to contest each individually. Why pay more to achieve no more than you would have if you had made the stipulation?
“Better to have a hand in choosing your ‘champion,’ rather than let the court choose without your input.”
Point — and recommendation –well taken Greg.
Inventor advice modified: You designate the multiple claims — per patent — that you want to be treated as representative.
Perhaps one system + one method + one device, etc.
Which of your claims are both infringed (even if via DoE ) . . . and most likely to withstand 101 / eligibility attacks? Of course, who knows for sure when even garage door opener, camera. and vehicle axle claims are trashed by the off-the-eligibility-rails CAFC?
Attorneys: When a company is infringing multiple claims, why is this not standard operating procedure?
Pro Say,
Your question would be better addressed to the clients of attorneys who have final say on such things.
[T]he district court… f[ou]nd[ the claims] directed to the abstract idea of “using and marketing a dual-access lock for luggage inspection, a longstanding fundamental economic practice and method of organizing human activity.”
Longstanding, fundamental economic practice?!? I can agree that the claims fail §101*, but I am lost as to what it means to refer to “dual-access lock[s] for luggage inspection” as a “fundamental economic practice.” The word “fundamental” is just risible in this context.
* As presently implemented. I do not see that these claims actually trespass against the plain words of the §101 text, but we are years removed from the statutory text actually mattering all that much.
… and ANY attorney “OK” with that is a PART of the problem.
How would you frame this claim’s invalidity under 101?
Exactly as the CAFC did. I would have expected on the day before the opinion came out that they would deride the patentee’s advance as an “abstract idea” (although I would not have necessarily guessed that they would have the cheek to describe it as a “fundamental” economic practice), and then say that everything in the claimed method that is not the abstract idea is merely routine and conventional.
I do not mean to say that I agree with that assessment (I do not). I merely mean that I could have seen this coming years before it arrived. You look at those claims, and you should easily be able to foresee the eventual §101 loss. I doubt that the composition of the CAFC panel would even matter all that much for these claims.
“Exactly as the CAFC did … although I would not have necessarily guessed that they would have the cheek to describe it as a “fundamental” economic practice”
Well, my question was what sort of abstract idea would you then characterize it as?
Though as this was not apparent, I’m wondering how much of the need for such a step is a PTO practice rather than the “law”.
Longstanding, fundamental economic practice?!? I can agree that the claims fail §101*, but I am lost as to what it means to refer to “dual-access lock[s] for luggage inspection” as a “fundamental economic practice.” The word “fundamental” is just risible in this context.
To echo Ben’s question, why would you believe it fails 101? Just because the Federal Circuit says so is not good enough.
The “fundamental economic practice” finding, as you correctly noted, is risible. If that is a fundamental economic practice, what isn’t?
Regardless, to answer the question as to whether a claim is directed to a fundamental economic practice requires: (i) claim constructions and (ii) findings of fact. In a motion for summary judgement, under Berkheimer/Aatrix, the facts must be construed in a light most favorable to the non-movant. I don’t see where the District Court made such findings or such issues were raised before the Federal Circuit.
What is interesting is that the Federal Circuit identified certain arguments that were not made below and were made for the very first time during the appeal. I’m not sure if this is a situation in which appeal counsel was handed a horrific record from trial counsel and tried to make lemonade from lemons — it certainly has happened before.
“just because the Federal Circuit says so is not good enough.”
Sorry Wt, but I am compelled to point out that Greg DOES believe that this is good enough – (I see that you comment down below)
My guess is that you are very close to wearing out your own welcome with Greg, as this is not the first time that you have called his views out on the carpet, and he does NOT seem to be taking your (repeated) points to heart, and instead just keeps on repeating his mantra.
[W]hy would you believe it fails 101? Just because the Federal Circuit says so is not good enough.
Well, if we are going to exclude “the Federal Circuit says so,” then I do not think that this fails §101. I am not a fan of the current §101 jurisprudence, but like most of the rest of us around these parts, I know how, nevertheless, to put on my “CAFC thinking cap” and assess whether a claim will stand or fall based on the criteria that the CAFC employs (even though I am not much impressed by those criteria).
All I meant when I said that “I can agree that the claims fail §101*” is that if you had asked me yesterday (knowing what I know about CAFC case law) to advise the patentee whether those claims would or would not hold up when asserted, I would have said that they would not. This is not to say that I think that they ought not to hold up—just that they would not hold up.
Regardless, to answer the question as to whether a claim is directed to a fundamental economic practice requires: (i) claim constructions and (ii) findings of fact. In a motion for summary judgement, under Berkheimer/Aatrix, the facts must be construed in a light most favorable to the non-movant.
I really wish that this were true in practice.
Re: “I am not a fan of the current §101 [exceptions]
jurisprudence, but like most of the rest of us around these parts, I know how, nevertheless, to put on my “CAFC thinking cap” and assess whether a claim will stand or fall based on the criteria that the CAFC employs (even though I am not much impressed by those criteria).”
Indeed, what else can one do to try to give competent legal advice to real clients? [Certainly not just personal rants against it.]
How disingenuous of you Paul, to yet again take a snide shot from the sidelines with your insinuation of “not just personal rants” — AS IF anything YOU say is itself other than a just personal rant.
What else can one do?
Plenty – including fighting so that the law is put proper, or that innovators are provided maximum protection, or any other NON-Efficient Infringer platform.
You asked a question with no intent on listening to any answer that does not already fit your own personal agenda.
but like most of the rest of us around these parts, I know how, nevertheless, to put on my “CAFC thinking cap” and assess whether a claim will stand or fall based on the criteria that the CAFC employs
Thinking cap? More like dunce cap.
Regardless, the “CAFC thinking cap” is easy to employ. Is it a patent or a patent application? If yes, then patent ineligible.
That analysis captures about 90% of the 101 decisions by the Federal Circuit.
[T]he “CAFC thinking cap” is easy to employ.
Indeed it is. As I said, most of us around these parts know how to employ it. It is not a unique or esoteric skill to which I am pretending.
For all that, however, I am a bit lost as to the value of trying to assess eligibility under the maxim “[j]ust because the Federal Circuit says so is not good enough.” Cui bono?
If the CAFC holds your client’s patent to be enforceable, then the client can use the patent to achieve a useful, commercial purpose. If the CAFC holds your client’s patent to be unenforceable, then the patent serves no useful purpose.
By contrast, if a panel of malcontents on IP Watchdog or Patently-O holds your client’s patent to be “really” eligible—notwithstanding the CAFC’s contrary holding—what good does that do your client? How does that affect the price of tea in China, or any other business-relevant metric?
What the CAFC says is the only criterion that matters to those paying our bills. Why should they care if we tell them that in our hearts, their patent is still valid, but nevertheless the court will not be issuing an injunction or awarding any damages?
Re: “..if [anyone] on IP Watchdog or Patently-O holds your client’s patent to be “really” eligible–notwithstanding the CAFC’s contrary holding–what good does that do your client? How does that affect the price of tea in China, or any other business-relevant metric?”
Indeed Greg, but they may also be under the delusion that someone with actual political or legal influence is really paying attention to anything said in any of these comments by anyone.
And yet again, Paul’s own “choice” belies the nature of his “contributions.”
IF in fact you actually did believe what you post Paul, why in the world would YOU cheerlead so fervently?
I “get” that you were playing ‘patti-cake’ with Greg, but BOTH you and Greg have been so very short on actually engaging on the cognitive legal points PUT to you, that your attempt to diminish ALL comments come across as more than just a little shallow and self-serving.
YOU are always free NOT to post, in case you really wanted to put your own money where your mouth is.
[T]hey may also be under the delusion that someone with actual political or legal influence is really paying attention to… these comments…
A fair point, that. I have long held that the only reason to participate in these discussions is because one finds them personally enjoyable or personally edifying. If one thinks that one is achieving or influencing any public policy outcomes by posting on these fora, one is deceiving oneself.
Are you saying that rants about about how SCOTUS doesn’t understand patent law aren’t useful except in a cathartic sense?
Are you suggesting that personal articulations of the test for patentable subject matter have no value?
I reject your attempt at rational discourse because of reasons…
LOL – and NS II pipes in – and misses as usual, given that Paul is NOT attempting any type of rational discourse, but is instead seeking to denigrate views being expressed that he does not agree with.
Guilty as charged.
The responsibility to say what the invention is rests solely with the applicant during prosecution. At litigation, there is no similar requirement of anyone, including the adjudicator.
We recognized in Markman that having a positive procedural step to firmly and finally establish the meaning of the claims as a matter of law would result in more reliable, repeatable, and fair course of litigation.
We have long needed the same step for construction of the invention itself. What is the inventive difference between the purported invention and the prior art, as a matter of law. This would remove the need for every possible argument to be thrown into district court litigation before arrival at essentially a new trial at the CAFC. This would greatly assist in the creation of the legal fiction of PHOSITA.
In this case, is the invention the method of the TSA holding a master key to all locks, or is it the machine or manufacture to realize the operation of many different kinds of locks by a single key? Is it some of both? That should be a matter of law before the facts of the state of the art either in airline security or lock manufacturing can be assessed against the claims. That matter of law should be determined by adversarial briefing and technology demonstration, if needed, just as Markman hearings are conducted today.
Then, and only then, should the invention be classified into an acceptable 101 category.
To me, the TSA and lock-consumers having information to the effect that the TSA is able to open the lock without destroying it should not be an eligible method, for reasons I have stated hundreds of times here already.
I’m not an expert in lock-manufacturing, but I was a locksmith in college and the idea of a secondary override master key mechanism on any kind of lock is entirely obvious.
Is there valuable intellectual property here? Probably not. Is it a good organizing idea for the TSA, consumers, and lockmakers to use? Clearly it is.
That’s the nexus of the IP policy problem we have now, and the judicial procedure problem(s) we have as a result of that problem not being solved.
Using the 12(b)6 framework and misusing section 101 are failures of due process for all involved, including the public.
Sh ut up anon about terrain. Don’t even bother.
Heed your own advice son.
The longstanding, fundamental economic practice recited in the claim would be:
“making available to consumers [a product]…,
marketing the [product] to the consumers in a manner that conveys to the consumers that the [product] has [a feature]…,
[the feature] signaling to [an employee of an entity] that the [entity] has agreed to [utilize feature], and
[the entity] acting pursuant to a prior agreement to look for [the feature] and, upon finding [said feature], to [use said feature].”
For example, marketing to consumers a coupon with a “buy one, get one free” feature that signals to an employee of a grocery store that the grocery store has agreed to provide a free product with purchase of another item, and the grocery store acting pursuant to said agreement. That is certainly a fundamental economic practice, existing for at least a hundred years (an article on Time.com identifies the first coupon in 1887, but I’d be skeptical that they don’t predate that).
The claim recites the additional feature of a lock with a combination and control key, but of course, Master Lock has been manufacturing those for many decades – they’re used on most school lockers, for example. The mere inclusion of generic and well-known hardware is not enough to confer eligibility on a claim that is otherwise directed to a well known and fundamental economic process.
Or, put another way, the longstanding economic practice in the claim isn’t *the lock*, but rather, the “making available to consumers [a product]” and “marketing [the features of the product]”.
Discovery that there is a market for something and then using that discovery to market that something is patentable. It doesn’t matter if the something is new. For example, think about the invention of selling rocks as pets. Without a patent, everyone would sell rocks as pets and the world would descend into chaos.
Oh, you. 😛
Abstract iDan,
Your analysis prompted me to actually review the Image File Wrapper.
Your summary is not quite accurate, and the back and forth of the wrapper is interesting as the Printed Matter Doctrine was brought up by the examiner and the examiner had agreed that certain amendments satisfied the Doctrine, and those rejections were withdrawn.
What ended up pushing this past the cited art were affidavits of due diligence placing the invention prior to a dead-on 102 item of art.
My initial view of the claims (very strangely written) were that they were rife with “non-patentable weight” possibilities.
The fact is though, the examiner invoked such, and accepted the negotiated amendments as resolving those issues.
To NOW turn and eliminate the patentable weight is not quite kosher, eh?
Certainly, if one PARSES the claim and does not take it as a whole (or ordered combination), the entire “marketing” step looks problematic.
But just like the “mere math” in Diehr, the presence in ONE ELEMENT of ‘mere math” or “mere marketing” does not doom the claim.
“The fact is though, the examiner invoked such, and accepted the negotiated amendments as resolving those issues.
To NOW turn and eliminate the patentable weight is not quite kosher, eh?”
Meh, examiners sometimes get it wrong. “The Examiner didn’t issue this rejection, so therefore the court has to find for patentability” argument was tried in Cleveland Clinic and failed there.
Also, I’m not sure what you mean by bringing up the Printed Matter Doctrine, as I didn’t reference that. Instead, as I noted, the claim recites a fundamental economic practice and also recites generic and well-known hardware. It’s no different for the purposes of eligibility than a claim reciting “marketing and selling a product, using a computer,” and arguing that it can’t possibly be abstract because there’s hardware.
And yes, the presence of ineligible marketing limitations do not necessarily doom the claim, provided there’s something else in the claim that is eligible subject matter. But here, there isn’t. The reasons for allowance even note that the apparatus is “well known in the art” and that the lock is “available in the market”, but the Examiner simply couldn’t find marketing materials for the lock that predate the Applicant’s affidavits. Lacking such evidence, the claim had to be considered novel and eligibility – under the law at the time – wasn’t even a consideration.
Meh – you missed on a number of levels there.
This is LESS of a case (your reference of the Cleveland Clinic case – of which you also get wrong, as that case was NOT ‘the Examiner did not reject, therefore” but rather, the Examiner followed the EXPLICIT directions of the patent office who HAD followed a prior case and according to THAT case the claims were OK — THAT case simply stands for the fact that the Supreme Court has created a Gordian Knot.
I bring up the printed matter doctrine for the reasons I state. Sure, YOU did not bring it up, but then again, it is more than appareant that you did not bother actually reviewed the details of the prosecuion in your hurry to construe the claims (which IS directly on point, as you have misconstrued those claims).
Your own futher musing violates Diehr (not really a surprise at that, given the state of the Gordian Knot). Something that is NOT abstract in the understood meaning of the word does NOT become abstract merely because one of the claim elements may — in itself — be deemed Abstract. That’s the direct takeaway from Diehr. the claim — in its final “as a whole” setting, is to a physical device. Mind you, that physical device DOES have provisios that tie into meanings, contracts, and other actions of the like, but at bottom, is STILL to a physical device.
IF you want to reject (that is, not given patentable weight to any of a number of particular claim limitations), THEN the rejection would properly be a prior art rejection — NOT an eligibility rejection. And again – had you reviewed the actual prosecution, you would not make your present error in asserting that the “art” was overcome for lack of a marketing item.
This is the crux of the matter – the Court has rewritten the words of Congress and drafted a different law than the word as actually provided
THIS has a number of critical errors, including Void for Vagueness, violation of the powers of the Judiciary (violation of the Constitution’s Separation of Powers), a foundation of projected harm (innovation MAY be harmed in some unspecified future manner). and on and on and on.
“Mind you, that physical device DOES have provisios that tie into meanings, contracts, and other actions of the like, but at bottom, is STILL to a physical device.”
Wait, do you still think that “abstract” is in contradistinction to “physical”?
On its natural definition, most certainly.
Seeing as the Supreme Court refused to provide one, you are left with two options:
The Supreme Court ruling is Void for Vagueness.
Or the use as I have provided.
Okay, then you’re about 12 years behind the law. Keep trying to argue putting “computer-implemented” in the preamble makes something eligible, regardless of the rest of the claim. Bring up the MoT test while you’re at it.
hitting a filter….
Your comment is awaiting moderation.
February 18, 2022 at 10:56 am
Not so – but by all means, please go ahead and trace the proper application of law.
(and because the CAFC says so does not cut it).
And then please define “abstract” (and trace the proper source of that definition).
Any type of “Hum pty Dvm pty” ISM disqualifies you.
And then realize that I have spoken as to MoT — in legal terms — and your bland v0m 1t of the term is NOT in accord with what I have stated on that concept.
You want to just wave your hands about and pretend that you have made sense.
You have not.
You want to say “scoreboard,” when the issue is that the scoreboard is broken. I am not the one behind the times.
You can try to correct that at any time.
Wait, do you still think that “abstract” is in contradistinction to “physical”?… Okay, then you’re about 12 years behind the law.
It is the 12 years bit that I find puzzling. I was confused myself by the SCOTUS’ talk of “abstract” ideas back in the early 2010s. The way that they are using that word is not an intuitive or colloquial manner of use. It was fairly designed to confuse its intended audience.
We have now had, however, over a decade of experience with how that word gets applied, so the stubborn refusal to learn is a bit unseemly. “A word is not a crystal, transparent and unchanged, it is the skin of a living thought and may vary greatly in color and content according to the circumstances and the time in which it is used.” Towne v. Eisner, 245 U.S. 418, 425 (1918). Much of the business of lawyering—when done rightly and effectively—is to figure out the meaning of a given term in the relevant legal context, so as to apply it rightly in that context.
Evidently the SCOTUS and CAFC are not using “abstract” to mean “not physical,” so it is pointless to keep complaining that the word is being used to shoot down inventions with physical embodiments. Fool me once, shame one you; but fool me dozens and dozens of times, shame on me.
Hitting filter…
February 18, 2022 at 3:52 pm
‘When I use a word,’ Hum pty Dum pty said in rather a scornful tone, ‘it means just what I choose it to mean – neither more nor less.’
’The question is,’ said Alice, ‘whether you can make words mean so many different things.’
’The question is,’ said Hum pty Dum pty, ‘which is to be master — that’s all.
(Hint: Hum pty is not all that).
This is NOT about some choice of disregarding any “finally realized” meaning. It is about there has been NO finally realized meaning.
Greg appears to want to pretend otherwise, but my reply at 2.4.2.1.1.1.1 is directly on point.
I will gladly accept your acquiescence to the point that the Supreme Court’s writings are Void for Vagueness if you prefer.
16 years from filing suit to final judgement. Why? Disgraceful especially for a system like this so widely used.
The Court notes that there was nothing novel or “special” about the locks themselves in the agreed-to representative claim 1 or even in the spec.
Indeed. This case went many times back and forth from district court to CAFC and back. Too bad that the SJ motion for §101 did not come sooner, and save everyone a great deal of time and money.
Because the Means justify the Ends, eh?
On summary judgment?!? LOL. No wonder everyone wants to file in Texas.
I wish that your view of the law were the actual, operable law. I think that the straightforward text of §101 is fine without all of the judicial gloss that has been layered over it. I think that §101 is no more intrinsically fit for adjudication pre-discovery than any other grounds of affirmative defense.
The judiciary of competent jurisdiction, however, definitely does not agree with either of us on those points. Moreover, as “[i]t is emphatically the province… of the judicial department to say what the law is” in a common law justice system like our own, what they say counts for a great deal more than what you or I say on the matter.