Inventor Asks SCOTUS to Consider Patent Eligibility Again, Distinguishing Case from American Axle

“While the American Axle petition and the U.S. Solicitor General’s brief recommending certiorari both presented strong arguments for the Court to review the case, it ultimately ‘proved ill-suited to the task of reexamining the judicially created exceptions to Section 101 and the Alice framework.’”

Despite the U.S. Supreme Court’s rejection of the petition in American Axle v. Neapco just a few days earlier, inventor David Tropp on July 5 again asked the Court to unravel U.S. patent eligibility law. Tropp, who owns two patents relating to luggage lock technology that enables airport screening of luggage while still allowing the bags to remain locked, is asking the Court to answer the question: “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).”

The U.S. Court of Appeals for the Federal Circuit (CAFC) ruled in February 2022 that the district court was correct in holding all of the claims at issue patent ineligible because they “essentially describe the basic steps of using and marketing a dual-access lock for luggage inspection, a long-standing fundamental economic practice and method of organizing human activity.” The CAFC agreed that the claims were directed to an abstract idea and that its precedents have “consistently recognize[d] the abstract character of such practices and methods.” The district court also found that Tropp had identified “no inventive concept” in the claims and the CAFC agreed.

In his petition, however, Tropp argues that “the patents recite a series of steps involving a physical process that uses a physical apparatus, and…record evidence showed innovation over the prior art.”

The patents are U.S. Patent No. 7,021,537 (issued Apr. 4, 2006) and U.S. Patent No. 7,036,728 (issued May 2, 2006). They cover a physical process for screening luggage without breaking locks involving a special dual-access lock and an identification structure. Tropp has been selling the locks since soon after filing for the patents and “has enjoyed tremendous success in the travel industry, quickly becoming the new standard for luggage locks.” The litigation has been ongoing for more than 15 years.

Tropp’s petition explains that, while the American Axle petition and the U.S. Solicitor General’s brief recommending certiorari both presented strong arguments for the Court to review the case, it ultimately “proved ill-suited to the task of reexamining the judicially created exceptions to Section 101 and the Alice framework.” The petition continues:

Arguably, broader issues about the continued viability and proper scope of the Alice framework applied only “tangentially” in that case…. And in any event, American Axle turned in large measure on a fact bound application of the natural law exception that was raised by the court of appeals sua sponte. [citations mitted]

In contrast, Tropp’s petition “lacks those issues that might get in the way of addressing the full scope of the Alice framework.” It also involves the abstract idea exception, “which ‘has arisen much more frequently’ in this Court’s 35 U.S.C. § 101 cases.”

The case represents a good vehicle for providing guidance on Section 101 because it can “provide an appropriate blank slate for the Court to revisit or modify the Alice framework, either broadly or as confined to innovations involving physical processes,” says the petition. The patents also involve physical products and processes and stand in stark contrast to the patents at issue in cases like Alice, Mayo and Bilski. The Court would also have a chance to weigh in on Alice step two, and the facts of the case make it clear that the Federal Circuit’s Section 101 analysis has expanded far beyond the statutory text” to “encompass considerations addressed by other express prerequisites 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.’”

The petition concludes:

Matters of obviousness and novelty have no place in the 35 U.S.C. § 101 inquiry, which is meant to be “only a threshold test” of patent eligibility. [I]t unnecessarily injects confusion and delay into what should be a matter decided definitively at the outset. Indeed, it leads precisely to situations like the one herewhere, in a case that had been winding its way through the courts for fifteen years on various other Patent Act issues, respondents effectively got another, bigger bite at the apple under the guise of 35 U.S.C. § 101 patenteligibility review…. That approach will hinder American global competitiveness and innovationwhether that innovation would come from the researchanddevelopment arm of a major corporation or from a smalltime inventor like the petitioner here, who practices his innovation with a specific solution to a specific problem.





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Join the Discussion

9 comments so far.

  • [Avatar for Mouhamad]
    July 16, 2022 09:56 pm

    May not relate to this specific case. I believe Obama and Hatch did a hatchet job on the patent process.

  • [Avatar for Anon]
    July 14, 2022 11:24 am

    As with American Axle, this has zero chance of cert (that’s my prediction).

  • [Avatar for concerned]
    July 13, 2022 05:36 pm

    This invention was pursuant to a Congressional action.

    My process also solved a problem occurring in a government program put in place by Congress. When the Board called the correction of errors and omissions made by working professionals and experts “insignificant post solution activity” I challenged the Board with the statement that “bringing a matter into compliance with law is not insignificant.” The Board replied my process does not do the same.

    Of course that is what my process does, the examiners never disputed that assertion. The Board got caught with their pants down with that statement implying Congressional acts are insignificant and tried to save face by making a statement that is not correct.

    The Board and the patent process bends over backwards to reject/invalidate patents.

    The appointed geniuses will be the only ones left solving society’s problems if this nonsense continues too long.

  • [Avatar for David Lewis]
    David Lewis
    July 13, 2022 04:01 pm

    Of course, the issue here centers on at least the clauses in the claims that recite,
    “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 baggage screening entity acting pursuant to a prior agreement to look for the identification….” Although not inherently necessary for patent eligibility, it would be helpful if this clause in-and-of-itself sounded a bit more like a physical process (or just incidental to a physical process) and less like a business method. Perhaps the petition should talk more about why the claim as-a-whole is still a method of use of a physical product rather than a business method and why the CAFC has misconstrued the current Supreme Court precedent (unless it already does that to the extent possible).

  • [Avatar for B]
    July 13, 2022 02:43 pm

    @ Pro Say “Superb petition. Well-deserving, better-than-Axle case.”

    I agree that the petition was well-written and hit all the good and necessary points. With that said, the SCOTUS will not likely touch this case. The SCOTUS knows it screwed up and Justice Thomas et al. are looking for a cheap out

  • [Avatar for Pro Say]
    Pro Say
    July 13, 2022 11:44 am

    Superb petition. Well-deserving, better-than-Axle case.

    And yes . . . the Alice-Mayo framework needs to be torched.

  • [Avatar for B]
    July 13, 2022 10:02 am

    Best of luck, and while the petitioner is 100% correct on everything, the courts do not care.

    The whole Alice-Mayo framework needs to be torched

  • [Avatar for concerned]
    July 13, 2022 08:21 am

    Our CAFC appeal went in a different direction.

    Dobbs: Courts have no authority to engraft personal views and words unto statutory texts, thus rendering judicial exceptions.

    Due Process: The capricious process of patent prosecution really gives no due process. Sure, the USPTO goes through the steps. However, added undefined words to the law, inconsistent case law that contradicts the express law and which case law can come up with any desired conclusion, evidence not inspected or considered, statements not supported by the record, collateral estoppel using cases in other fields of technology that the inventor was not a party, etc.

    Not a level playing field.

    Good luck!

  • [Avatar for concerned]
    July 13, 2022 07:46 am

    CNBC just announced that Colorado has the #1 workforce via a study of best states for business. No doubt.

    John Galt and others have moved to Colorado, my first patent attorney moved there, and other inventors will probably join them soon.

    Congress said ANY new and useful process. The appointed geniuses say “Wait a minute.”

    If the process solves a problem and meets s102, s103 and s112, give the inventor the patent.

    Otherwise, have the remaining appointed geniuses elsewhere solve society’s problems since they know more the Congress.