Travel Sentry, Inc. v. Tropp

527 F.Supp.3d 256

TRAVEL SENTRY, INC., Plaintiff,

v.David A. TROPP, Defendant.

David A. Tropp, Plaintiff,

v.Conair Corp., et al., Defendants.

06-CV-6415 (ENV) (RLM), 08-CV-4446 (ENV) (RLM)

United States District Court, E.D. New York.

Signed March 14, 2021

Filed March 19, 2021

Heidsha Sheldon, Pro Hac Vice, Peter S. Brooks, William Loening Prickett, Pro Hac Vice, Andrew Theodore Stark, Pro Hac Vice, Seyfarth Shaw LLP, Boston, MA, James S. Yu, Seyfarth Shaw LLP, New York, NY, for Travel Sentry, Inc.

Brian W. Nolan, Gregory Apgar, Pro Hac Vice, Mayer Brown LLP, Douglas A. Gross, Goetz Fitzpatrick LLP, New York, NY, Jamie B. Beaber, Pro Hac Vice, Tiffany Miller, Pro Hac Vice, Mayer Brown LLP, Donald R. Dinan, Washington, DC, Amanda Bonner, Pro Hac Vice, Luiz Miranda, Pro Hac Vice, Michael Word, Pro Hac Vice, Robert Pluta, Pro Hac Vice, Mayer Brown LLP, Chicago, IL, for David A. Tropp.

MEMORANDUM AND ORDER

VITALIANO, D.J.

In the latest installment of this litigation that has aged for 15 years with multiple round trips to the court of appeals, Travel Sentry, Inc. ("Travel Sentry") has moved for summary judgment, contending that the subject patent claims owned by David A. Tropp ("Tropp") are ineligible for patent protection under 35 U.S.C. § 101. Seeking essentially the same relief, Travel Sentry has additionally moved for summary judgment under 35 U.S.C. § 103 and 28 U.S.C. § 1498. Tropp opposes all three motions, and in doing so, has filed certain exhibits which Travel Sentry now moves to strike.

For the reasons that follow, Travel Sentry's motion for summary judgment under 35 U.S.C. § 101 is granted. Travel Sentry's motion to strike is granted with respect to documents material to the instant motion for summary judgment under § 101. As a result, Travel Sentry's second and third motions for summary judgment are denied as moot.¹

Background ²

The Court presumes familiarity with the prolonged history and facts of this case, which are set forth at length in Travel Sentry, Inc. v. Tropp , 736 F. Supp. 2d 623 (E.D.N.Y. 2010), vacated , 497 F. App'x. 958, 959 (Fed. Cir. 2012), remanded to 192 F. Supp. 3d 332, 333 (E.D.N.Y. 2016). Neither facts nor procedural history will be needlessly repeated.

In 2003 and 2004, Tropp registered two patents that describe a method of airline luggage screening through the use of a dual-access lock, which enables a traveler to secure his or her luggage while still permitting it to be accessed by a luggage screening entity with a master key, a concept as old as the forgotten high school locker key. Tropp 56.1 ¶ 54; Ex. 7, Dkt. 293. Travel Sentry owns a trademark that it licenses to lock and luggage manufacturers and distributors for use on dual-access luggage locks. Luggage manufactured in accord with the lock standard licensed by Travel Sentry enables the traveling public to lock their checked baggage during travel while still allowing TSA to open the lock and search the bags as needed, and then re-lock them. TS 56.1 ¶ 2; Tropp 56.1 ¶ 2.

Both rely in part on a dual-access lock, a type of lock that can be opened using a combination code and a master key. TS 56.1 ¶ 27; Tropp 56.1 ¶ 5; Ex. 7. Neither Tropp's patents nor Travel Sentry's license breaks new ground, which certainly helps explain the similarities between them. The origins of this type of lock can be traced back to, at least, the 1950s and 60s, when Corbin Russwin, Inc. first developed a "construction master key system." TS 56.1 ¶ 57; Tropp 56.1 ¶ 57. Since then, in addition to Corbin Russwin, other companies such as Master Lock Company, LLC ("Master Lock") and Smarte Carte, Inc. ("Smarte Carte"), have been selling dual-access lock products for decades. TS 56.1 ¶ 59; Tropp 56.1 ¶ 59.

Luggage makers were no strangers to the concept. For example, in the 1990s Samsonite sold an "Epsilon" lock line, which included locks that incorporated both combination and key portions. TS 56.1 ¶ 69; Tropp ¶ 69. In the early 1960s, Samsonite sold a Streamlite product line which could be opened using a single master key. TS 56.1 ¶ 70; TS Reply 56.1 ¶ 70. The Samsonite key bore an indicia code of "170S" and could open almost every hard-set Samsonite case made from 1965 until 1999. TS 56.1 ¶ 70; TS Reply 56.1 ¶ 70. Samsonite also sold, in as early as 1992, an individual piece of luggage titled the Samsonite's Oyster luggage that could be opened using a combination or key portion and was accessible by a master key. TS 56.1 ¶ 75; TS Reply 56.1 ¶ 75. Rings holding baggage "master keys" were present at airports and used by airline baggage personnel since the 1970s. TS 56.1 ¶ 76; TS Reply 56.1 ¶ 76. The key rings allowed airline baggage agents to unlock checked baggage whenever the need arose for security purposes. TS 56.1 ¶ 76; TS Reply 56.1 ¶ 76. Baggage personnel would utilize the key rings by matching the indicia on the key to a manufacturer or other logo on the bag or number on the lock in order to open the lock. TS 56.1 ¶ 77; TS Reply 56.1 ¶ 77. These key rings were in existence in many U.S. and non-domestic airports up until TSA was formed in 2001. TS 56.1 ¶ 78; TS Reply 56.1 ¶ 78.

The patents in dispute are: (1) U.S. Patent No. 7,021,537, filed November 12, 2003, and dated April 4, 2006 (" 537 patent"); and (2) U.S. Patent No. 7,036,728, filed November 12, 2004 and dated May 2, 2006 (" 728 patent").³ Both are entitled "Method of Improving Airline Luggage Inspection." According to the patents, Tropp's invention addresses "a compelling and immediate need" for a method of inspecting luggage that does not create security risks associated with unlocked baggage and does not damage luggage or aggravate passengers. ’537 patent col.2 ll.21–24.

The 728 patent claims priority from and is a continuation-in-part of the 537 patent. The 537 patent contains four independent claims: 1, 9, 14 and 10. The 728 patent contains two independent claims: 1 and 10. Claim 1 of the ’537 patent is representative:

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.

Tropp Br. at 4, Dkt. 294; Travel Sentry, Inc. v. Tropp , 661 F. Supp. 2d 280, 286 (E.D.N.Y. 2009).

Gratefully, at this point, the relevant facts admit to a shortcut. The parties agree that this claim is representative of the independent claims of both patents. Tropp Br. at 7; TS Br. at 3, Dkt. 289.⁴ Because the claims do not differ in any material way for purposes of patent subject matter eligibility, a separate analysis of each is unnecessary. See Mortgage Grader, Inc. v. First Choice Loan Services Inc. , 811 F.3d 1314, 1324 n.6 (Fed. Cir. 2016) (noting that there was no need to address the four asserted claims individually because there was no contention that the claims differed in any material way as to the patent-eligibility inquiry).

Legal Standard

A grant of summary judgment as permitted by Rule 56 of the Federal Rules of Civil Procedure is appropriate in a patent case where no genuine issue of material fact exists and the movant is entitled to judgment as a matter of law. See Barmag Barmer Maschinenfabrik AG v. Murata Mach., Ltd. , 731 F.2d 831 (Fed. Cir. 1984) (summary judgment on issue of validity); Townsend Eng'g Co. v. HiTec Co. , 829 F.2d 1086, 1089 (Fed. Cir. 1987) (summary judgment on issue of infringement). Summary judgment may be granted in favor of a moving party on an ultimate issue of fact where the party carries its burden of "pointing out to the district court that there is an absence of evidence to support the nonmoving party's case." Celotex Corp. v. Catrett , 477 U.S. 317, 325, 106 S. Ct. 2548, 2553, 91 L.Ed.2d 265 (1986). Celotex went on to explain, when "a party [ ] fails to make a showing sufficient to establish the existence of an element essential to that party's case, and on which that party will bear the burden of proof at trial .... there can be ‘no genuine issue as to any material fact,’ since a complete failure of proof concerning an essential element of the nonmoving party's case necessarily renders all other facts immaterial." 477 U.S. at 322–23, 106 S. Ct. at 2552.

Beyond that, "[w]hen deciding issues in a patent case, a district court applies the law of the circuit in which it sits to nonpatent issues and the law of the Federal Circuit to issues of substantive patent law." In re Omeprazole Patent Litig. , 490 F. Supp. 2d 381, 399 (S.D.N.Y. 2007) (citing Invitrogen Corp. v. Biocrest Mfg., L.P. , 424 F.3d 1374, 1378–79 (Fed. Cir. 2005) ); see, e.g. , Desenberg v. Google, Inc. , No. 09-CV-10121, 2009 WL 2337122, at...