Safe Skies Eligibility Petition

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.

US7021537.

128 thoughts on “Safe Skies Eligibility Petition

  1. 13

    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.

    1. 13.1

      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.

      1. 13.1.1

        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.

    2. 13.2

      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.

      1. 13.2.1

        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.

        1. 13.2.1.1

          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

      2. 13.2.2

        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).

  2. 12

    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?

    1. 12.1

      Yes, they’re happening Paul. (thankfully)

    2. 12.2

      >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)

      1. 12.2.1

        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.

        1. 12.2.1.1

          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.

          1. 12.2.1.1.1

            Shhhh OC – those points do not support the “Desired Narrative” of “0h N0es, Tr011s”

  3. 11

    No shortage of prior art on this one.

    1. 11.1

      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.

      1. 11.1.1

        Those were the pre-guidance days, a field of volleys, with everything imaginable for fodder. Lots of experiments in patent prose !!

        1. 11.1.1.1

          Lol – for those of us with the experience and deft, it still is ‘the days of experiments in patent prose.’

          1. 11.1.1.1.1

            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.

            1. 11.1.1.1.1.1

              Whatever drugs you are on, CW, dial them down.

    2. 11.2

      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.

      1. 11.2.1

        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 ?

      2. 11.2.2

        Ah, but were the administrators at your high school marketing those locks? 😉

      3. 11.2.3

        Yes, and did that one Master Key open any locker in any high school anywhere in the USA?

    3. 11.3

      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).

      1. 11.3.1

        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.

      2. 11.3.2

        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

        1. 11.3.2.1

          Really? I think you misunderstand what that phrase means. But at least you discovered how to format it to get past the filters.

          1. 11.3.2.1.1

            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.

  4. 10

    I assume that he has one or more patents with appropriate “device/apparatus” claims that would pass muster under Alice, right?

    1. 10.1

      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.

      1. 10.1.1

        TSA is too short for a good marketing manner, I’d suggest to work “Reichsicherheitshauptamt” into the step reciting mannerism.

    2. 10.2

      Why do people keep on thinking that actual hardware somehow passes Alice?

      Actual hardware claims IN Alice were deemed Abstract.

      1. 10.2.1

        Did it fail to define a res ?

        1. 10.2.1.1

          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.

          1. 10.2.1.1.1

            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?”

            1. 10.2.1.1.1.1

              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).

              1. 10.2.1.1.1.1.1

                some aggrieved who sue the Gov for breach of trust over a patent matter,

                Lol – huh, what?

          2. 10.2.1.1.2

            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

            1. 10.2.1.1.2.1

              maent ‘jurisdictional control, in the stead of “control”. Its definitely another “look” at the elephant.

            2. 10.2.1.1.2.2

              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.

              1. 10.2.1.1.2.2.1

                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.

                1. 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.

          3. 10.2.1.1.3

            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.

            1. 10.2.1.1.3.1

              Your “sense” of what has “merit” is clouded by your raging narcissism.

              1. 10.2.1.1.3.1.1

                Oh, lighten up Francis – Chrissy is just having a little fun.

                1. 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

                2. 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”)

  5. 9

    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.

  6. 8

    Could Tropp be the new / next American Axle?

    1. 8.1

      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.

      1. 8.1.1

        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.

        1. 8.1.1.1

          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

          1. 8.1.1.1.1

            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).

    2. 8.2

      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.

      1. 8.2.1

        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….

        1. 8.2.1.1

          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.

          1. 8.2.1.1.1

            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.

            1. 8.2.1.1.1.1

              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.

              1. 8.2.1.1.1.1.1

                Take a deep breadth there Wt, and note that your comment has implications – and it is those implications that are faulty.

                1. 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.

                2. The Supreme Court isn’t taking this on.

                  Indeed, I expect that we can all agree on this point.

                3. 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.

  7. 7

    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.

    1. 7.1

      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.”

      1. 7.1.1

        Well, that’s egg on my face. I thought that Tropp was an NPE. Thanks for setting me straight.

    2. 7.2

      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.

      1. 7.2.1

        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.

        1. 7.2.1.1

          With all due respect F U on that “as a practical matter.”

          This is much more than mere egg on your face — this is a clear indication of your anti-patent bias in that this reflects the kowtow to “those that make.”

          It is well beyond “lousy,” it is asinine and anti-patent.

        2. 7.2.1.2

          There are lots of improvements made to airplanes that aren’t made by airplane manufacturers. The mechanical world is rife with sub-component manufacturers that make things that go into larger assemblies. I made an improved brake pad for use with an automobile, do I need to be making an automobile?

          It is a requirement that has little policy justification. All it does is force complete vertical integration. While complete vertical integration may be common in the biotech realm, it isn’t elsewhere.

          the people most likely to invent improved supertankers are folks who already run a fleet of supertankers
          While design and manufacture are oftentimes tied together, they are not necessarily done so. Do a search on “fabless chip makers.” Does Apple manufacture their own computer chips? I believe Foxconn does that for them. Does that mean Apple cannot get patents on any chip improvements they design?

          1. 7.2.1.2.1

            The mechanical world is rife with sub-component manufacturers that make things that go into larger assemblies.

            Right, and if you invent an improved airplane part but then claim a new airplane, you are doing it wrong. Meanwhile, if a genius works for a parts manufacturer, but spends her time inventing new airplanes: (1) you have to wonder if she has the right job; and (2) you have to wonder why her employer is not setting her more and better projects related to the products that they actually sell.

            In any event, to the extent that someone not in the (e.g.) airplane industry invents an improved airplane, there are really only two possibilities. (1) The new technology gives the user a competitive advantage over others in the field, in which case it should still be commercially feasible to sell the patent to someone in the field (at which point the working requirement would be satisfied). (2) The new technology does not give the patentee a competitive advantage in the relevant field, in which case one wonders what is the value of patenting it in the first place.

            It is a requirement that has little policy justification. All it does is force complete vertical integration.

            I agree that a working requirement would favor vertical integration. I cannot agree, however, that it would have “little policy justification.” Cohen & al. (2016) Science 352(6285):521-22 report that “after settling with NPEs (or losing to them in court), firms on average reduce… R&D… by >25%.” In other words, NPE litigation comes at the expense of domestic innovation. Anything that works selectively to reduce NPE litigation (which minimally impacting non-NPE litigation) is, therefore, good for innovation on balance.

            There are both benefits and burdens to a working requirement. On balance, however, the benefits would outweigh the burdens.

            1. 7.2.1.2.1.1

              The Cohen article is nothing more than Efficient Infringer propaganda.

            2. 7.2.1.2.1.2

              Right, and if you invent an improved airplane part but then claim a new airplane, you are doing it wrong.
              I had a partner (who was exceptionally good at licensing) say the opposite. Let’s say you invent an airplane part and just claim the part, what kind of royalty can you get on just a part in a licensing deal for the technology? Now imagine if you claim it as part of an airplane? How much royalty can you get then as part of a licensing deal?

              Just imagine that your airplane part improves the efficiency of the airplane so that it saves $500 in fuel costs on every flight. What happens if your part just costs $2000? A claim to an airplane could justify a much higher royalty than just a claim to the part.

              Meanwhile, if a genius works for a parts manufacturer, but spends her time inventing new airplanes: (1) you have to wonder if she has the right job; and (2) you have to wonder why her employer is not setting her more and better projects related to the products that they actually sell.
              You really don’t understand how this works, do you?

              Cohen & al. (2016) Science 352(6285):521-22 report that “after settling with NPEs (or losing to them in court), firms on average reduce… R&D… by >25%.”
              Why is that? Is it because they got the technology they need and don’t need to invest in more research? Is it because R&D is frequently one of the first things that company’s cut (because most companies are shortsighted) after being faced with an unexpected outlay of cash?

              In other words, NPE litigation comes at the expense of domestic innovation.
              Oh yes — we should let people infringe valid patents because having them pay to license those patents prevents them from using that money on R&D. By that logic, we should argue that companies should provide less employee benefits, because reducing those outlays (for employee benefits) would allow those companies to spend more on R&D. Some logic …

              There are both benefits and burdens to a working requirement. On balance, however, the benefits would outweigh the burdens.
              Spoken like a true believer in efficient infringement. Small companies that have problems commercializing their technology should yield to the larger behemoths of the world (we all know the names: Google, Microsoft, Facebook, Apple and the like) who have little problem throwing millions of dollars to get a product from the design board to manufacturing and have already solved the problem of supply chains to get the product from manufacturing to consumers. Big companies should continue to get bigger and small companies should know their place in the world — that’s your philosophy, right? Small companies should know their place in the world, which is to provide big companies with innovations that they can take over for pennies or the dollar (and for free, where possible).

              BTW, it was a nice little hit piece you cited to. It includes all of the common terminology employed by the efficient infringers of the world — talking about patent trolls asserting “low-quality patents.” Do you know what a low-quality patent is? Here is the definition: any patent being asserted against the big-tech oligopolies (I listed some of the names above) is a low-quality patent.

              Here is a nice little snippet from the article:
              The pass-through of NPE patent litigation proceeds to inventors is estimated to be low (18–20), so even large settlements or damage payments from targeted firms to NPEs do not clearly support external innovation.
              This is factually accurate. However, like most of the paid hitman writing similar articles, they don’t take a step back and ask the question — why is that? The reason for such a low passthrough is because operating companies would rather fight tool and nail — even against high quality patents — than to take out a reasonable license. It actually makes sense for operating companies to do so even if they may pay out more in legal fees than they would in a license (hence why it is called efficient infringement). By increasing the transactions costs for patent owners, it discourages patent owners from even asserting valid patents because it can cost a lot of money to do so. Having a valid and valuable patent as a small entity is an invitation to get IPR’d until you run out of money defending it.

              Ultimately, inventors have wizened up to how this ‘sport of kings’ is played and have sold their patents to NPEs for pennies on the dollar for what they are actually worth. The NPEs are better capable of standing toe-to-toe with these large companies. This is why there is low passthrough — inventors cannot get a reasonable license directly so they are forced to employ far more expensive means.

              1. 7.2.1.2.1.2.1

                I agree — completely — with your being disagreeable with Greg here, Wt.

              2. 7.2.1.2.1.2.2

                Yeah it shines, a little beauty in some of that cold hard real, easy, Truth you expressed !

              3. 7.2.1.2.1.2.3

                Spoken like a true believer in efficient infringement.

                Cohen & al. present an empirical analysis. You respond by citing a theoretical framework (opposition to “efficient infringement”).

                There are two scientific lines of response to an empirical analysis. One might cite contradictory empirical findings. Alternatively, one might raise methodological objections to the proffered empirical analysis.

                You offer neither. Instead, you run immediately to opposing Cohen on the grounds that you find her conclusions odious to your own preferred theoretical framework. That line of argument is a species of theology, not science.

                Fair enough, of course. I have theological commitments myself, so I do not begrudge another man his own. As I do not share this particular theological framework, however, any further conversation on the point is impossible.

                1. It is plainly false to propose that Cohen’s work is done type of objective empirical study.

                  Oft attributed to Samual Clemens…

                  link to york.ac.uk

                  Further, Greg shares that he has his share of religion…

                  Of that, there never was any doubt.

                  But does even Greg recognize the religion in the basis of his own Liberal Left mantras?

                  Dr. Lindsay’s podcast (with title aimed at “Marxism”) extends to the religion of the Far Left:

                  link to open.spotify.com

                2. And into the filter…

                  Your comment is awaiting moderation.

                  July 11, 2022 at 8:14 am

                  …. Missed the autocorrect
                  “done type” ==> “some type

                3. Cohen & al. present an empirical analysis. You respond by citing a theoretical framework (opposition to “efficient infringement”)
                  Empirical analysis? They “found” a correlation between reduced R&D and NPE litigation — ignoring that NPE litigation is probably one of dozens and dozens and dozens of different variables that could impact R&D. This correlation is far more based upon speculation (and wanting a particular answer) than actual evidence.

                4. Not only does he “calim” emperical falsely, he then accuses YOUR view to be an “unfalsifiable” one – and thereby “religious,” and dismissed out of hand.

                  Greg definitely fits into the Liberal Left tactics of the Iron Rule of Woke Projection.

                  (Wt, you are lucky that he has not played the “umbrage – I cannot see your posts” game with you)

          2. 7.2.1.2.2

            Greg has double egg on his face with his inane comments. What a dummy!

        3. 7.2.1.3

          >As a practical matter, the people most likely to invent improved supertankers are folks who already run a fleet of supertankers

          I think most research universities would beg to differ.

          OTOH, maybe excluding them from the patent system would be a net improvement. Universities are easily the most aggressive “NPEs” in the patent world, despite their marketing and 401(c)(3) status.

          1. 7.2.1.3.1

            I think most research universities would beg to differ.

            Fair enough. I will rephrase: the people most likely to invent commercially relevant improvements to supertankers are folks who already run a fleet of supertankers.

            [M]aybe excluding [research universities] from the patent system would be a net improvement.

            No “maybe” about it. It would be better for both research universities and the rest of the world if research universities were to face incentives against entering the patent arena.

            1. 7.2.1.3.1.1

              Incentives against patents…

              And Greg cannot figure out why people call him anti-patent….

            2. 7.2.1.3.1.2

              I will rephrase: the people most likely to invent commercially relevant improvements to supertankers are folks who already run a fleet of supertankers.
              No. Operating is different from manufacturing which is different from designing. While some have integrated aspects of each, there is little justification for conditioning patent protection on such an integration. Our MODERN system of commerce has recognized that in creating products/services, it is oftentimes best to rely upon conglomerations of companies who work together — each having their own expertise. As an example I referred to earlier, Apple does not make a lot of their own products. Rather, they design them because they are experts at design. Companies like Foxconn build them because they are experts at manufacturing.

              It would be better for both research universities and the rest of the world if research universities were to face incentives against entering the patent arena.
              That’s a terrible take. You think research universities will get the same funding if they cannot commercialize their inventions? And by commercialize I mean license the technology to others. Less funding = less research.

              1. 7.2.1.3.1.2.1

                Wt,

                Here your point is strengthened by noting from the very start, this country did NOT want to constrain innovation protection to a “must make” scenario, making the property right one that is Fully Alienable.

                Greg promulgates the obfuscating propaganda of “0h N0es Tr011s.”

              2. 7.2.1.3.1.2.2

                You think research universities will get the same funding if they cannot commercialize their inventions?

                The UC System generates ~$1.5 billion per year from patent licensing [1]. The UC System total annual revenue is ~$41.6 billion [2]. In other words, tech transfer generates <4% of UC operating revenues. None of that funds research, unless you are including research by the classics dept, or some such. Not “R&D” type research.

                The UT System brings in ~$695 million per year from patent licensing [1], against a backdrop of ~$22.1 billion annual revenue [3]. In other words, <4% of annual revenues, none of it funding R&D.

                I am hard pressed to believe that it would make a material difference to most research universities if their tech transfer operations totally ceased.

                (1) link to researchgate.net
                (2) link to ucop.edu
                (3) link to utsystem.edu

                1. Incidentally, I do not propose that research universities should be totally cut off from the patent system. University inventors should be able to seek patents on the same terms as any other inventor.

                  A working requirement, however, would incentivize universities to monetize their patents by selling them, rather than by licensing them out. Based on my experience of negotiating deals with research universities, I think that this would actually increase commercialization if it were allowed to happen.

                2. <4% of annual revenues
                  Tell any university system that they are going to lose 4% of their revenues, and there will be a whole lot of squawking. Many expenses cannot be cut — they are non-discretionary.

                  In this instance, if you have a former revenue generator (i.e., Research) that isn’t bringing in revenue, then odds are pretty good that less money will be devoted to supporting that former revenue generator.

                3. … less money will be devoted to supporting that former revenue generator.

                  Research universities do not “devote” money to supporting research, at least not in the hard sciences. The relationship between a university and its research faculty is much akin to a pimp and his ____s. The university expects the researchers to bring in outside funding (mostly from government grants, but grants from charitable research foundations are just as welcome), and then the university skims between 30% and 60% of those funds for providing “facilities” and “administration.”

                  Universities cannot provide “less” money to fund research because there is no amount less than $0. Universities take money from researchers, not the other way around.

                  Some of that money goes to provide research support for the humanities and social science departments, so if by “supporting” research you mean “research into XV century Italian bookbinding” or “the ethnology of Hittite migrations,” fair enough. From an R&D perspective, however, these are irrelevant.

                4. Funding of the Woke side is NOT only NOT irrelevant, it has broadly started infecting even the hard sciences (in universities).

                  Sadly, this fact is simply not going to be seen by the likes of Greg – no matter who posts it.

                5. “Many expenses cannot be cut — they are non-discretionary.”

                  Honestly not even sure if you’re joking or not. Big $$$ are being spent that didn’t used to be spent when my dad went to school. It’s not some sort of mandatory expenditures that ballooned the budget.

                6. Big $$$ are being spent that didn’t used to be spent when my dad went to school.

                  So true. Mostly administrator salaries.

      2. 7.2.2

        +1 WT

  8. 6

    OT, but a case this blog flagged in April was decided this morning, on the ability of a government employee (naval engineer) to moonlight as a patent attorney in private practice for paying clients.
    link to patentlyo.com
    link to cafc.uscourts.gov

    1. 6.1

      Thanks!

    2. 6.2

      …was decided this morning…

      I meant to say.

    3. 6.3

      Here’s the punchline:

      Before MOORE, Chief Judge, PROST and HUGHES, Circuit Judges.

      PER CURIAM.

      Kevin Correll appeals an order of the U.S. District Court for the Eastern District of Virginia denying his request to preliminarily enjoin his suspension from practice before the U.S. Patent and Trademark Office (“PTO”). For the reasons set forth below, we affirm.

  9. 5

    A claim to a method of marketing. OK. Great. Given the Supreme Court’s manifest reluctance to tangle with the laws of nature, or tangle with technological solutions to technological problems, and the continuing pressing need for it to clarify eligibility, perhaps it will find a case on marketing, that avoids all talk of “laws of nature”, a more attractive SUV for its purposes.

    In particular, I sould like to know, is “marketing” one of the “useful arts” contemplated by 35 USC 101?

    Incidentally, the recently granted European family member is EP-B-2532812. No surprise, that Travel Sentry has opposed it.

    1. 5.1

      Method of marketing granted under the EP….

      Was that “per se” or “as such?”

  10. 4

    Tough invention to claim given the Court’s “multiple infringer” precedents + master key lock art.

    1. 4.1

      Exactly. This particular patent family was proving worthless even before §101 became an issue.

      1. 4.1.1

        Worthless, Greg? In what sense?

        The invention is a commercial success, is it not? It is increasingly profitable, is it not?

        When I first read about it I thought it, a new, useful and not obvious contribution to society, notwithstanding the known technology in master keys. Such contributions ought to be eligible for patent protection, ought they not?

        1. 4.1.1.1

          An invention can be a success even where the patent is flawed. This patent is flawed, even if the invention it purports to claim is sound enough.

          1. 4.1.1.1.1

            Sad but true, that even great and unobvious inventions can have flawed patents. Classic example: Edison’s pioneer invention of the first sound recording system of any kind, but patent claims limited to only Vertical movement of a needle in a track. [How well or how much he was willing to pay for his patent attorneys is another historical question.]

        2. 4.1.1.2

          Sure, the “invention” is a commercial success. But it’s not Tropp’s invention. I don’t know who invented them, but combination locks with master keys have been around for a long, long, long, time, and by that I mean before I was in elementary school at least. Not every new, useful, and nonobvious contribution was made by the guy whose name is at the top of a patent claiming it, and not every new, useful, and nonobvious contribution was new, useful, and nonobvious at the time someone decided to write it down.

          1. 4.1.1.2.1

            id,

            I hear what you are saying, but you really do not get to play the card of “and not every new, useful, and nonobvious contribution was new, useful, and nonobvious at the time someone decided to write it down” in our legal system.

            Do you understand why?

            1. 4.1.1.2.1.1

              You’re exceptionally offensive today anon. You get your hormone treatments or something. Other people can be wrong without you flying into ‘roid rage you know. But then, you’re “anon” on the internet so you can say things that would rightfully get you a little tenderized in person. Such an angry little bantam you are!

              1. 4.1.1.2.1.1.1

                Not sure why you want to project any type of emotion to me — I am NOT angry or flying into a roid rage.

                Further, there is nothing “offensive” either in my being correct.

                Maybe less gaslighting from you and a simple, “anon is correct” will do.

                1. Nah. You can say correct things and still be wrong. It’s the total of the message that counts, not the occasional ability to string a few phrases together in the correct order. If nothing else, because you can’t be decent to anyone. Plus, you seem to have all the time in the world to respond to anything and everything, so why would I make anything easy? Mwah!

                2. LOL – get your undies out of a bunch.

                  Being “polite” has ZERO to do with being correct – total of the message or otherwise.

                  Further, what in the world are you going on about in “making it easy for me?” My suggestion was FOR YOU !

                  You can certainly choose to continue to attempt to gaslight folk and avoid the more direct (and correct) statements – but doing that is ON you – not me.

                3. I bet you’re polite in the meat space because there might be consequences. You’re rhetoric goes well beyond being “not polite.” It’s abusive and your leash could be yanked for ethical considerations. You’re wrong because you can’t be right and decent at the same time.

                4. I bet you’re polite in the meat space because there might be consequences… [Y]our leash could be yanked for ethical considerations.

                  Don’t kid yourself. “Ethical considerations” only have consequences in licensed professions with codes of ethics. There might be plenty of folks around these parts who are admitted to practice in such professions, but your interlocutor is not one of them.

                5. Bring it on, opposite of less, opposite of off.

                  I bet you’re polite in the meat space because there might be consequences.

                  Here’s a c1ue: understand the forum that you are in.

                  You’re rhetoric goes well beyond being “not polite.” It’s abusive and your leash could be yanked for ethical considerations.

                  Oh, please please please BACK THIS UP.
                  What — exactly — is the “ethical considerations” that your mental acuity discerns?

                  Oh wait, your desire for politeness cannot make up for your lack of intelligence.

                  You’re wrong because you can’t be right and decent at the same time.

                  That makes ZERO sense. Correctness is just not tethered to politeness, and your “wanting it so” IS a blight on humanity.

                  You are definitely in the wrong profession. Heck, you are in the wrong reality.

                6. Just because you’re wrong doesn’t mean he’s right. That’s a pretty basic concept, but maybe too nuanced for you? But I guess that your inability to understand that abusive behavior in the meat space could open you up to ethics issues suggests that Greg’s probably right about whether you’re even subject to ethics rules. Understanding that two people can be wrong at the same time is something a patent practitioner should comprehend, at a minimum.

                7. That you want to claim some nuance just does not apply here.

                  The am not wrong.

                  I sure may be “impolite,” but that is just too bad for you, and certainly does not rise to anywhere close to being an ethics issue.

            2. 4.1.1.2.1.2

              I assume if you had something you thought useful to say, you’d say it. Tropp didn’t invent the master-keyed combination lock, which is the profitable invention. He may or may not have devised a new marketing strategy for it, but that’s not a patentable invention in our system. If it was, advertising execs would have more patents than mechanical engineers.

              1. 4.1.1.2.1.2.1

                There are some patentable business methods. This isn’t advertising, it’s marketing, which might fit into BM. I don’t know whether this should be patentable under BM, but if this bothers you, you should look into lottery patents.

              2. 4.1.1.2.1.2.2

                You A S S ume in error as I have said something useful.

                Directly to the comment that you are replying to, I corrected your error about “having something written down.”

                I then engaged you to think about why your statement is in error. Here’s a hint: it has to do with burdens and providing a prima facie case. You just don’t get to “say” that it must have been out there.

  11. 3

    Re: “Back then, .. [t]he rule of thumb was “anything under the sun made by man” and I mean ANYTHING.”
    True, because of that rampant misquotation of the Sup. Ct. Chakrabarty decision, deliberately ignoring the immediately following sentences listing the longstanding Sup. Ct. Exceptions to “anything under the sun made by man” and their case citations.

    1. 3.1

      I think the Supreme Court started the confusion.

      Senate Report No. 1979, 82d Cong., 2d Sess. (1952) actually states:

      A person may have ”invented” a machine or a manufacture, which may include anything under the sun that is made by man, but it is not necessarily patentable under section 101 unless the conditions of the title are fulfilled.

      However, in Chakrabarty, the Supreme Court states:

      The Committee Reports accompanying the 1952 Act inform us that Congress intended statutory subject matter to “include anything under the sun that is made by man.”

      This is quite a departure from the meaning of the quote in the Senate Report.

      1. 3.1.1

        Thanks PiKa,

        I doubt that “cheerleader” Paul will venture any type of retraction, and would add that — especially — in view of patent law, ALL statements by the Supreme Court are suspect in view of self-serving (and incorrect) “interpretations” given their known power add1ct10n of sticking their fingers into wax noses.

        1. 3.1.1.1

          There is nothing to retract. I noted what the Supreme Court actually said in its Chakrabarty decision, which is the only thing that counts.

          1. 3.1.1.1.1

            I call B$ on that “nothing to retract.”

            As you continue to hew towards your cheerleading, someone actually interested with innovation protection would NOT stop with the Supreme Court getting words of Congress wrong.

            Yeah Paul – this falls into more MISinformation from you.

            It’s not a good look.

      2. 3.1.2

        Kinda like a tiger chasing its tail, a whirl. If one looks they can find large numbers of issued cases, now expired, where there was no written desc. support for a claim term, but enforcement was different back then – as if there were a presumption of validity to the patents.

  12. 2

    I was surprised this cert petition could be filed so long after his Fed. Cir. decision, but p.2 says:
    “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.”

    1. 2.1

      This is normal. Under Supreme Court Rule 13, the deadline for a cert petition is 90 days from judgment, and it can be extended by up to 60 days.

      link to law.cornell.edu

  13. 1

    Sorry to bother you with reality…

    Whether the claims at issue in Tropp’s patents reciting physical rather than computer-processing steps

    Last checked, software WORKS — in the physical world.

    This is not magic.

    (Or is it? )

    link to youtu.be

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