Federal Circuit: Dual-Access Lock Patents Invalid

The Federal Circuit has affirmed the Eastern District of New York’s grant of summary judgment that dual-access lock patents were invalid because they claimed ineligible subject matter under 35 U.S.C. § 101, which states that

Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.

The requirement that something be “new” to be patentable is often called the “novelty” requirement.

An invention isn’t new (“novel”) and therefore isn’t patentable if it was known to the public before the filing date of the patent application, or before its date of priority if the applicant claims priority of an earlier patent application. The purpose of the novelty requirement is to prevent prior art from being patented again. People may be constantly “reinventing the wheel,” as the saying goes, but they can’t patent the wheel if it already exists.

The two patent cases involved David Tropp’s U.S. Patent Nos. 7,021,537 and 7,036,728. One claim, as the court noted,

recites a method of making available to consumers a dual-access lock having a combination-lock portion and a master-key-lock portion, marking it so that luggage screeners know a master key will open it, agreeing with a screening entity that its luggage screeners will use the key to open a marked bag if opening is necessary, and marketing the luggage to consumers as subject to this screening process.

As the district court stated, the claim

essentially describe[s] the basic steps of using and marketing a dual-access lock for luggage inspection, a longstanding fundamental economic practice and method of organizing human activity.

The Federal Circuit said that the claim was directed to an abstract idea of a double lock.

Tropp claimed that his lock was “special.” However, as the court noted,

No “technical specifications or concrete improvements,” or identification of what physical changes are made to the lock mechanism to make the lock “special,” is found in the claim (or, for that matter, the specification), … an absence that “only highlight[s] the generic nature” of the “special lock” and other details to which Mr. Tropp pointed…

Tropp argued that claim 1 was 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).”

However, said the court,

This contention raises at least two substantial questions bearing on eligibility under § 101: Does the claim, properly construed, 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, could the claim pass muster under § 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?

The court cited the case of Affinity Labs of Tex., LLC v. DIRECTV, LLC for the principal that a claim that “is drawn to the [abstract] idea itself” instead of “how to implement” is invalid under § 101.