CAFC Affirms District Court Finding that Dual-Access Lock Patents are Invalid Under 101

“The representative claim was ineligible because it described ‘basic steps of using and marketing a dual-access lock for luggage inspection, a long-standing fundamental economic practice and method of organizing human activity.’”

Dual-Access Lock

Source: U.S. Patent No. 7,021,537 

On February 14, the U.S. Court of Appeals for the Federal Circuit (CAFC) affirmed the Eastern District of New York’s grant of summary judgment that inventor David Tropp’s patents were invalid because they claim ineligible subject matter under 35 U.S.C. § 101. The appeal was brought by Tropp against Travel Sentry, Inc. and other lock and luggage makers.

The asserted claims relate to U.S. Patent Nos. 7,021,537 (the ’537 patent) and 7,036,728 (‘728 patent). Representative claim 1 of the ’537 patent relates to a method of making available a dual-access lock having a combination-lock portion and a master-key-lock portion. The dual-access lock allegedly enables travelers to lock their bags while still allowing luggage screeners to access luggage (with a marked lock) with a master key.

The Representative Claim is Directed to an Abstract Idea

The district court held, and the CAFC agreed, that the representative claim was ineligible because it described “basic steps of using and marketing a dual-access lock for luggage inspection, a long-standing fundamental economic practice and method of organizing human activity.” Specifically, the district court held “the claim to be directed to an abstract idea, noting that our precedents consistently recognize the abstract character of such practices and methods.”

Further, the CAFC agreed with the district court that Tropp failed to identify an “inventive concept”, particularly the claim’s reference to a “special” lock. Tropp did not provide, in the claims or specification, “technical specification or concrete improvements.” Nor did he identify physical changes made to the lock to make the lock “special.”

The absence of this information only further supported the district court’s finding of the “generic nature” of the “special” lock. In addition, the district court noted that dual-access locks were “familiar and used in luggage screening, with bags identified by a tag to enable such use.” As a result, the district court held that “the claim fail[ed] to pass the muster under both steps of the eligibility inquiry.”

Argument Not Preserved

On appeal, Tropp argued that the representative claim 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).”

The CAFC noted that Tropp’s argument raised two substantial questions bearing on eligibility under Section 101: (1) did the claim 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, (2) could the claim pass muster under Section 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?

However, the CAFC refused to address these questions because “Tropp [had] not preserved this argument for eligibility.” In his opposition to the Section 101 summary judgment motion, Tropp described the “special” lock as “having a combination lock portion and a master key lock portion” and the “identification structure” as the claimed improved “physical components.” But the CAFC noted Tropp failed in his opposition to argue 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.”

The CAFC found Tropp’s argument for the Section 101 significance of the lock-mechanism improvement he claimed on appeal to be “materially different” from what he argued in his opposition to the Section 101 motion. Therefore, the CAFC “declined to upset the district court’s judgment based on an argument like this made for the first time on appeal.”



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Join the Discussion

9 comments so far.

  • [Avatar for Anon]
    February 18, 2022 10:21 am


    I also thought the drafting was a bit odd, but as to the 102, I invite you to review the image file wrapper, as the prosecution succeeded in ‘giving weight’ to claim elements of which the prior art was overcome (albeit timing was assisted with affidavits – something no longer possible with the AIA).

    This is one of those cases in which the facts on the ground matter.

  • [Avatar for BG]
    February 17, 2022 12:51 pm

    101 issue aside… Dual access locks have been around for scores of years. Remember our MasterLock brand locks for gym lockers? They had a combination and a master key that the school could use to open them.

    The travel lock is a nice product to have – use them all the time

    BUT – Lousy claim drafting and an easy 102.

  • [Avatar for Anon]
    February 17, 2022 09:24 am

    Josh and Pro Say – both of you are wrong, in so far as “judges” rather than “Justices” remain your focus.

    Pro Say – this is YET AGAIN another instance in which you are refusing to recognize that the primary fault is at the Supreme Court level. Certainly, there is plenty of blame to pass along to the judges of the CAFC and district courts, but make no mistake, any permanent solution MUST take into account the root of the problem.

  • [Avatar for Anon]
    February 17, 2022 09:20 am

    Primary Examiner.

    The short answer is NO – one need look no further than the Alice decision in which BOTH PARTIES averred to claims to hard good items were “101-safe” but the Court STILL struck them down as “abstract.”

  • [Avatar for Curious]
    February 16, 2022 10:04 pm

    Surely claiming a lock system/device would have most likely ensured that there would be no 101 (potential) issue?
    Read the claims of Yu v. Apple. Actually, let me help you out.

    1. An improved digital camera comprising:
    a first and a second image sensor closely positioned with respect to a common plane, said second image sensor sensitive to a full region of visible color spectrum;
    two lenses, each being mounted in front of one of said two image sensors;
    said first image sensor producing a first image and said second image sensor producing a second image;
    an analog-to-digital converting circuitry coupled to said first and said second image sensor and digitizing said first and said second intensity images to produce correspondingly a first digital image and a
    second digital image;
    an image memory, coupled to said analog-to-digital converting circuitry, for storing said first digital image and said second digital image; and
    a digital image processor, coupled to said image memory and receiving said first digital image and said second digital image, producing a resultant digital image from said first digital image enhanced with said second digital image.

    If the Federal Circuit can kill that claim, they’ll kill a claim directed to a lock system.

  • [Avatar for Pro Say]
    Pro Say
    February 16, 2022 08:14 pm

    Primary: “Surely claiming a lock system/device would have most likely ensured that there would be no 101 (potential) issue?”

    Correct; Under Alice and PTO guidance, there would be no such issue. None whatsoever.

    The problem here, of course, is that we’re all dealing with the eligibility-off-the-rails; cameras, garage door openers, and auto axles are-not-eligible CAFC.

    As Anon intimates, all of patent law has indeed been swallowed.

    Leaving American innovation choking.

    While Communist China and Russia rejoice.

    All while Congress arranges IP deck chairs . . .

  • [Avatar for Josh Malone]
    Josh Malone
    February 16, 2022 04:34 pm

    A lock is not an abstract idea. It’s tragic that judges in the United States are unwilling to follow the law. We are rapidly sliding toward third world status.

  • [Avatar for Anon]
    February 16, 2022 03:05 pm

    Did someone say “swallow all of patent law”…?

  • [Avatar for Primary Examiner]
    Primary Examiner
    February 16, 2022 02:52 pm

    The claims relate to method claims. Surely claiming a lock system/device would have most likely ensured that there would be no 101 (potential) issue?