Motorola Mobility, Inc. v. Apple, Inc.

Filing 158

NOTICE by Apple, Inc., Motorola Mobility, Inc. of Filing Supplemental Authority on Claim Construction (Attachments: # 1 Exhibit 1, # 2 Exhibit 2, # 3 Exhibit 3, # 4 Exhibit 4, # 5 Exhibit 5, # 6 Exhibit 6, # 7 Exhibit 7, # 8 Exhibit 8)(Giuliano, Douglas)

Exhibit 7

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(Cite as: 661 F.Supp.2d 280)

United States District Court,
E.D. New York.
TRAVEL SENTRY, INC., Plaintiff,
v.
David A. TROPP, Defendant.
No. 06–CV–6415 (ENV).
Sept. 24, 2009.
Background: Competitor brought action against
owner of two patents for method of improving airline luggage inspection via dual-locking luggage
lock system, seeking declaration that patents were
invalid, and thus that competitor did not infringe
upon patents by developing similar system. Owner
sought validation of patents and injunction against
further infringement.
Holdings: After Markman hearing, the District
Court, Vitaliano, J., held that:
(1) term “master key” referred to any key that could
open master key lock portion or locking mechanisms of special locks described in patent;
(2) term “identification structure” referred to indicia associated with lock that signaled to screener
that lock was subject to special procedure;
(3) terms “baggage screener” and “baggage screening entity” were synonymous with terms “luggage
screener” and “luggage screening entity”;
(4) terms “baggage screener” and “baggage screening entity” described those screening procedures
taking place solely in relation to air travel;
(5) phrase “making available to consumers a special
lock” meant simply “causing the special lock to be
available to consumers”;
(6) term “prior agreement” referred to prior arrangement between luggage screening entity and
another party to process special locks in accordance
with special procedure;
(7) term “special procedure” was not limited by requirement that screeners relock bag after inspection, but rather referred to procedure for processing

special locks; and
(8) term “marketing” was not so unamenable to
construction as to render claim invalid.
So ordered.
West Headnotes
[1] Patents 291

314(5)

291 Patents
291XII Infringement
291XII(B) Actions
291k314 Hearing
291k314(5) k. Questions of law or
fact. Most Cited Cases
The construction of a patent, including the
terms of art within a claim, is a question of law for
the court.
[2] Patents 291

165(1)

291 Patents
291IX Construction and Operation of Letters
Patent
291IX(B) Limitation of Claims
291k165 Operation and Effect of Claims
in General
291k165(1) k. In general. Most Cited
Cases
Patents 291

167(1)

291 Patents
291IX Construction and Operation of Letters
Patent
291IX(B) Limitation of Claims
291k167 Specifications, Drawings, and
Models
291k167(1) k. In general. Most Cited
Cases
Patents 291

168(2.1)

291 Patents

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291IX Construction and Operation of Letters
Patent
291IX(B) Limitation of Claims
291k168 Proceedings in Patent Office in
General
291k168(2) Rejection and Amendment
of Claims
291k168(2.1) k. In general. Most
Cited Cases
When construing a patent, the court looks first
to the intrinsic evidence, such as the patent and its
claims, its specification, and the prosecution history, if available.
[3] Patents 291

165(2)

291 Patents
291IX Construction and Operation of Letters
Patent
291IX(B) Limitation of Claims
291k165 Operation and Effect of Claims
in General
291k165(2) k. Claims as measure of
patentee's rights. Most Cited Cases

Cases
Patent claim construction begins with the
claims themselves, since they define the scope of
the patented invention, but, because claims are part
of a fully integrated writing instrument, claim terms
are considered in the context of the patent as a
whole, including the specification as well as the
other claims.
[4] Patents 291

291 Patents
291IX Construction and Operation of Letters
Patent
291IX(A) In General
291k162 k. Contemporaneous construction of inventor. Most Cited Cases
Though the plain and ordinary meanings of patent claim words are presumed, an inventor can act
as his own lexicographer and assign a different
meaning to those words, so long as they are clearly
and deliberately stated in the patent or the prosecution history.
[5] Patents 291

Patents 291

157(1)

165(5)

291 Patents
291IX Construction and Operation of Letters
Patent
291IX(B) Limitation of Claims
291k165 Operation and Effect of Claims
in General
291k165(5) k. Construction of particular claims as affected by other claims. Most Cited
Cases
Patents 291

162

167(1)

291 Patents
291IX Construction and Operation of Letters
Patent
291IX(B) Limitation of Claims
291k167 Specifications, Drawings, and
Models
291k167(1) k. In general. Most Cited

291 Patents
291IX Construction and Operation of Letters
Patent
291IX(A) In General
291k157 General Rules of Construction
291k157(1) k. In general. Most Cited
Cases
Patents 291

159

291 Patents
291IX Construction and Operation of Letters
Patent
291IX(A) In General
291k159 k. Extrinsic evidence in general.
Most Cited Cases
If applying the ordinary meaning of a term
would create ambiguity or confusion in a patent
claim, a court can look to other intrinsic evidence,
or, if necessary, extrinsic evidence, to ascertain the

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proper meaning; however, a party advocating an alternative reading of an otherwise clear claim term
must show why the ordinary meaning is not the appropriate interpretation.
[6] Patents 291

159

291 Patents
291IX Construction and Operation of Letters
Patent
291IX(A) In General
291k159 k. Extrinsic evidence in general.
Most Cited Cases
Although intrinsic evidence is the most important source for disputed meanings of a patent claim,
a court can consider extrinsic evidence, including
expert and inventor testimony, dictionaries, and
learned treatises, when appropriate.
[7] Patents 291

159

291 Patents
291IX Construction and Operation of Letters
Patent
291IX(A) In General
291k159 k. Extrinsic evidence in general.
Most Cited Cases
Extrinsic evidence is used only if needed to assist in determining the meaning or scope of the
technical terms in the patent claims, since such
evidence is considered less reliable than intrinsic
evidence.
[8] Patents 291

157(1)

291 Patents
291IX Construction and Operation of Letters
Patent
291IX(A) In General
291k157 General Rules of Construction
291k157(1) k. In general. Most Cited
Cases
A court need not construe all claims proposed
by the parties, but may limit patent construction to
those claims which may prove dispositive.
[9] Patents 291

157(1)

291 Patents
291IX Construction and Operation of Letters
Patent
291IX(A) In General
291k157 General Rules of Construction
291k157(1) k. In general. Most Cited
Cases
If there is a fundamental dispute regarding the
scope of a patent claim term, it is the court's duty to
resolve it.
[10] Patents 291

101(2)

291 Patents
291IV Applications and Proceedings Thereon
291k101 Claims
291k101(2) k. Construction in general.
Most Cited Cases
Term “master key,” as used in two patents for
method of improving airline luggage inspection via
dual-locking luggage lock system, referred to any
key, including electronic or other sensor mechanisms, that could open master key lock portion or
locking mechanisms of special locks described in
patent; although specifications expanded ordinary
and plain meaning of “master key” to include electronic and other sensor mechanisms, limiting
“master key” to single key or electronic sensor
mechanism or limiting definition to “dedicated”
key lock portion was overly restrictive.
[11] Patents 291

101(2)

291 Patents
291IV Applications and Proceedings Thereon
291k101 Claims
291k101(2) k. Construction in general.
Most Cited Cases
Term “identification structure,” as used in two
patents for method of improving airline luggage inspection via dual-locking luggage lock system, referred to indicia associated with lock that signaled
to luggage or baggage screener that lock was subject to special screening procedure; specifications
did not support limiting definition by type of indicia.

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[12] Patents 291

101(2)

291 Patents
291IV Applications and Proceedings Thereon
291k101 Claims
291k101(2) k. Construction in general.
Most Cited Cases
Terms “baggage screener” and “baggage
screening entity” in one patent for method of improving airline luggage inspection via dual-locking
luggage lock system were synonymous with terms
“luggage screener” and “luggage screening entity”
as used in patent owner's other patent for such
method; one patent was continuation-in-part of other patent, there was no indication that person of ordinary skill in art considered “baggage” as covering
different scope than “luggage,” and, according to
prosecution history, change in terms from “luggage
screening authority” to “baggage screening entity”
was intended to extend term to nongovernmental
entities but was not intended to imply any difference between “baggage” and “luggage.”
[13] Patents 291

101(2)

291 Patents
291IV Applications and Proceedings Thereon
291k101 Claims
291k101(2) k. Construction in general.
Most Cited Cases
Terms “baggage screener” and “baggage
screening entity,” as used in two patents for method
of improving airline luggage inspection via duallocking luggage lock system, described those
screening procedures taking place solely in relation
to air travel; claim terms and their written descriptions focused solely on method's usefulness and applicability for improving air travel screening procedures.
[14] Patents 291

162

291 Patents
291IX Construction and Operation of Letters
Patent
291IX(A) In General

291k162 k. Contemporaneous construction of inventor. Most Cited Cases
When the inventor acts as his own lexicographer, he controls how expansive or narrow the scope
of his definition should be, though this asserted
definition must be supported by the patent specification.
[15] Patents 291

165(3)

291 Patents
291IX Construction and Operation of Letters
Patent
291IX(B) Limitation of Claims
291k165 Operation and Effect of Claims
in General
291k165(3) k. Construction of language of claims in general. Most Cited Cases
While an inventor's anticipation that an invention would be used in a particular way does not always mean that the patent's scope is applied only in
that context, it is both permissible and proper to
limit the claims when a patent, read as a whole,
makes clear that the claimed invention is actually
narrower than the claim language implies.
[16] Patents 291

101(2)

291 Patents
291IV Applications and Proceedings Thereon
291k101 Claims
291k101(2) k. Construction in general.
Most Cited Cases
Phrase “making available to consumers a special lock,” as used in two patents for method of improving airline luggage inspection via dual-locking
luggage lock system, meant simply causing the special lock to be available to consumers and was not
limited to manufacturing, selling, offering for sale,
or distributing locks only; read together, claims of
both patents described ways beyond those limitations that would constitute making a special lock
available to consumers.
[17] Patents 291

165(5)

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291 Patents
291IX Construction and Operation of Letters
Patent
291IX(B) Limitation of Claims
291k165 Operation and Effect of Claims
in General
291k165(5) k. Construction of particular claims as affected by other claims. Most Cited
Cases
Under the doctrine of claim differentiation,
there is a presumption that the independent claims
in two patents are not interpreted to include the limitations of the dependent claims.
[18] Patents 291

101(2)

291 Patents
291IV Applications and Proceedings Thereon
291k101 Claims
291k101(2) k. Construction in general.
Most Cited Cases
Term “prior agreement,” as used in two patents
for method of improving airline luggage inspection
via dual-locking luggage lock system, referred to
prior arrangement between luggage screening entity
and another party to process special locks in accordance with special procedure; patent claims lent
no support to narrowly construing “prior agreement” as agreement that is legally binding and enforceable by law, but rather contemplated some coordination and pre-planning on part of screening
entities regarding possession of master keys to special locks.
[19] Patents 291

101(3)

291 Patents
291IV Applications and Proceedings Thereon
291k101 Claims
291k101(3) k. Limitations in general.
Most Cited Cases
Term “special procedure,” as used in two patents for method of improving airline luggage inspection via dual-locking luggage lock system, was
not limited by requirement that screeners relock bag
after inspection, but rather referred to procedure for

processing special locks, in which screening entity
acted pursuant to prior agreement to look for identification structure while screening luggage and,
upon finding that identification structure on an individual piece of luggage, to use master key previously provided to screening entity to open it; specifications focused on opening of luggage as opposed to relocking it.
[20] Patents 291

101(6)

291 Patents
291IV Applications and Proceedings Thereon
291k101 Claims
291k101(6) k. Ambiguity, uncertainty or
indefiniteness. Most Cited Cases
Term “marketing,” as used in two patents for
method of improving airline luggage inspection via
dual-locking luggage lock system, was not so unamenable to construction that reasonable notice as
to scope of claim was wanting, and thus competitor
failed to meet its burden to prove that term was so
indefinite as to render claim invalid; claims did not
support limiting term to “offering for sale or
selling,” but rather supported construction of term
to mean “selling or promoting the sale” of special
lock to consumers in manner that conveyed to them
that lock was subject to special screening procedure
by which screening entity would use master key to
open lock, rather than clipping lock, in order to perform inspection. 35 U.S.C.A. §§ 112, 282.
[21] Patents 291

101(6)

291 Patents
291IV Applications and Proceedings Thereon
291k101 Claims
291k101(6) k. Ambiguity, uncertainty or
indefiniteness. Most Cited Cases
When a patent claim cannot be construed, it is
indefinite and therefore invalid. 35 U.S.C.A. § 112.
[22] Patents 291

112.5

291 Patents
291IV Applications and Proceedings Thereon

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291k112 Conclusiveness and Effect of Decisions of Patent Office
291k112.5 k. Sufficiency of evidence to
offset effect of decision in general. Most Cited
Cases
An issued patent is presumed valid, so the
party attacking a claim term on validity grounds
must overcome that presumption by clear and convincing evidence. 35 U.S.C.A. § 282.
[23] Patents 291

101(6)

291 Patents
291IV Applications and Proceedings Thereon
291k101 Claims
291k101(6) k. Ambiguity, uncertainty or
indefiniteness. Most Cited Cases
Even where a patent construction reached is
one as to which reasonable persons can disagree,
that claim is not indefinite.
Patents 291

328(2)

291 Patents
291XIII Decisions on the Validity, Construction,
and Infringement of Particular Patents
291k328 Patents Enumerated
291k328(2) k. Original utility. Most Cited
Cases
7,021,537, 7,036,728. Construed and Ruled
Valid by.
*283 Heidsha Sheldon, Peter S. Brooks, William
Loening Prickett, Seyfarth Shaw LLP, Boston, MA,
James S. Yu, Seyfarth Shaw LLP, New York, NY,
for Plaintiff.
Donald R. Dinan, Roetzel & Andress, LPA, Washington, DC, for Defendant.
*284 MEMORANDUM AND ORDER
VITALIANO, District Judge.
On December 4, 2006, plaintiff Travel Sentry,
Inc. (“Travel Sentry”) commenced a declaratory action against defendant David Tropp (“Tropp”) to invalidate two of Tropp's patents and, consequently,

to find Travel Sentry non-liable for their infringeFN1
ment.
Tropp seeks validation and an injunction
against further infringement. A hearing was held
pursuant to Markman v. Westview Instruments, Inc.,
517 U.S. 370, 373, 116 S.Ct. 1384, 134 L.Ed.2d
577 (1996) on December 16, 2008 to address the
proposed construction of claims.
FN1. Travel Sentry originally filed suit
against Tropp and his company, Safe
Skies, in the United States District Court
for the District of New Hampshire. That
suit was dismissed for lack of subject matter jurisdiction and against Tropp for lack
of personal jurisdiction. Travel Sentry, Inc.
v. Tropp, No. 06–CV–118, 2006 WL
3478997, at *5–6 (D.N.H. Dec. 1, 2006).
An earlier New York action, Travel Sentry,
Inc. v. Tropp, et al., No. 05–cv–2338
(E.D.N.Y.), was also initiated by Travel
Sentry asserting claims of unfair competition and defamation; counterclaims for
misappropriation of trade secrets and unjust enrichment were interposed. That case
ultimately settled.
I. BACKGROUND
Tropp owns the two patents at issue in this action: (1) United States Patent No. 7,021,537, filed
November 12, 2003, and issued April 4, 2006
[hereinafter “537 patent” ] and (2) United States
Patent No. 7,036,728, filed November 12, 2004 and
issued May 2, 2006 [hereinafter “728 patent”]. The
728 patent claims priority from and is a continuation in part of the 537 patent. Both patents are entitled “Method of Improving Airline Luggage Inspection” and describe a method of airline luggage
screening via a dual-access luggage lock system.
By making use of a special lock, an owner can secure his luggage while also giving a screening entity, such as the Transportation Security Administration (TSA), access to the luggage without clipping the lock or damaging the luggage. Travel Sentry is involved in developing a similar locking program. In fact, John Vermilye, Travel Sentry's CEO

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and founder, was a TSA consultant who worked on
designing and implementing the TSA's luggage
screening program in 2002.
II. DISCUSSION
A. Standards Governing Claim Construction
[1][2] The construction of a patent, including
the terms of art within a claim, is a question of law
for the court. Markman v. Westview Instruments,
Inc., 517 U.S. 370, 373, 116 S.Ct. 1384, 134
L.Ed.2d 577 (1996). The construing court looks
first to the intrinsic evidence—the patent and its
FN2
claims, its specification,
and the prosecution
history if available. See Vitronics Corp. v. Conceptronic, Inc. 90 F.3d 1576 (Fed.Cir.1996).
FN2. “Specification” and “written description” are used interchangeably in this opinion.
[3][4][5] Claim construction begins with the
claims themselves since they define the scope of
the patented invention. Phillips v. AWH Corp., 415
F.3d 1303, 1312 (Fed.Cir.2005) (en banc); see also
Corning Glass Works v. Sumitomo Elec. U.S.A.,
Inc., 868 F.2d 1251, 1257 (Fed.Cir.1989) (the
claims determine “the metes and bounds of the
right which the patent confers on the patentee to exclude others from making, using, or selling the protected invention”). But, because claims “are part of
a ‘fully integrated writing instrument,’ ” Phillips,
415 F.3d at 1315 (citing Markman v. Westview Instruments, Inc., 52 F.3d 967, 978 (Fed.Cir.1995),)
aff'd, ( *285517 U.S. 370, 116 S.Ct. 1384, 134
L.Ed.2d 577 (1996)), claim terms are considered in
the context of the patent as a whole, including the
specification as well as the other claims. Id. (citing
Multiform Desiccants, Inc. v. Medzam, Ltd., 133
F.3d 1473, 1477 (Fed.Cir.1998)); see also ACTV,
Inc. v. Walt Disney Co., 346 F.3d 1082, 1088
(Fed.Cir.2003) (surrounding words in claim are
also considered in determining the ordinary and
customary meaning of disputed terms). Though the
plain and ordinary meanings of claim words are
presumed, an inventor can act as his own lexicographer and assign a different meaning to those

words, so long as they are clearly and deliberately
stated in the patent or the prosecution history. Phillips, 415 F.3d at 1316. Additionally, if applying the
ordinary meaning of a term would create ambiguity
or confusion in a claim, a court can look to other intrinsic evidence (or, if necessary, extrinsic evidence) to ascertain the proper meaning; however, a
party advocating an alternative reading of an otherwise clear claim term must show why the ordinary
meaning is not the appropriate interpretation.
Robert L. Harmon, Patents and the Federal Circuit
302 § 6.2 (8th ed.2007).
[6][7] Although intrinsic evidence is the most
important source for disputed meanings of a claim,
a court can consider extrinsic evidence, including
expert and inventor testimony, dictionaries, and
learned treatises, when appropriate. Markman, 52
F.3d at 980. But, there is a caution—extrinsic evidence is used only “if needed to assist in determining
the meaning or scope of technical terms in the
claims”. Id. Such evidence is considered less reliable than intrinsic evidence, though dictionaries
and related sources can often aid the court in understanding a word's ordinary meaning as understood
by those skilled in the art at the time of the patent's
prosecution. Phillips, 415 F.3d. at 1318, 1321–23.
[8][9] In constructing claims, a court can use
its discretion to cabin its consideration to only
those issues that “cut to the heart of the matter”—in
other words, a court need not construe all claims
proposed by the parties, but limit construction to
those claims which may prove dispositive. O2 Micro Intern. Ltd. v. Beyond Innovation Tech. Co.,
521 F.3d 1351, 1362 (Fed.Cir.2008). Nonetheless,
if there is “a fundamental dispute regarding the
scope of a claim term, it is the court's duty to resolve it.” Id.
B. CONSTRUCTION OF DISPUTED TERMS
The parties have offered the following proposed terms for construction: (1) master key, (2)
identification structure, (3) baggage screening entity, (4) baggage screener, (5) making available to
consumers a special lock, (6) prior agreement, (7)

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special procedure and, (8) marketing. Unless otherwise demonstrated, the Court presumes that claim
terms appearing in the same patent or in related patents contain the same construed meaning. See, e.g.,
Omega Eng'g, Inc. v. Raytek Corp., 334 F.3d 1314,
1334 (Fed.Cir.2003).
The 537 patent contains four independent
claims. Claim 1 of the 537 patent recites:
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 *286 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.
Independent claim 9 of the same patent has
identical language to claim 1, but substitutes
“combination lock portion” with the term “first lock
portion” and contemplates a method where the
identification structure is located directly on the
lock. Claims 14 and 18 also contain identical language to claim 1, but contemplate a method where
the identification structure is “integrally formed”
with the lock. The 728 patent contains two independent claims. Claim 1 of the 728 patent recites:
1. A method of improving carrier baggage inspection by a baggage screening entity, comprising:
making available to consumers a special lock,
having a combination lock portion and having 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 carrier baggage, the special lock also having an identification structure
associated therewith that matches a corresponding identification structure previously provided
to the baggage screening entity, which special
lock the baggage 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 baggage screening entity to the special procedure,
the identification structure signaling to a baggage screener of the baggage screening entity
that the baggage screening entity has agreed to
subject the special lock associated with the
identification structure to the special procedure, and
the baggage screening entity acting pursuant to
a prior agreement to look for the identification

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structure while screening baggage and, upon
finding said identification structure on an individual piece of baggage, to use the special procedure previously agreed to by the baggage
screening entity to, if necessary, open the individual piece of baggage.
Claim 10 contains identical language as claim
1, but substitutes the combination *287 lock portion
covered in claim 1 with a “first lock portion”.
1. “MASTER KEY”
[10] The term “master key” appears in both the
537 and the 728 patents. Claim 1 of the 537 patent
claims, in relevant part, a method of improving airline luggage screening 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 ...” Claim 1 of the 728 patent claims, in
relevant part, a method of improving carrier baggage inspection comprising: “making available to
consumers a special lock, having a combination
lock portion and having 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 ...”
Tropp's construction of “master key” is a
simple one. He suggests that “master key” is “a key
that can open multiple locks, citing the American
Heritage College Dictionary, which defines the
term” “master key” as “[a] key that opens each of a
given set of locks.” (Def.'s Ex. 5). Travel Sentry's
proposed construction of the same term is a “single
key or electronic sensor mechanism having the ability to open a dedicated key lock portion of multiple
different locks.”
In advancing this definition, Travel Sentry argues that there are “no material differences”
between the two constructions, but for the inclusion
of electronic sensor mechanisms. Tropp disagrees.
Specifically, he objects to limiting “master key” to
a “single key” since the written description allows

for multiple master keys to be held by baggage
screening officials, and because “the significant
characteristic of a master key is that it can open
each of a given set of locks—not whether there is a
single key or multiple keys that have that capability.” (Def.'s Reply Br. 7). Tropp also argues against
Travel Sentry's use of “dedicated” and the insertion
of “electronic sensor mechanism” in construing
“master key” since the term “key” already embodies and contemplates electronic keys and the word
“dedicated” is unsupported by the patents' claims.
The Court agrees with Tropp that “master key”
does not require the word “single” to make the construction clear, and accordingly, the Court declines
to read this limitation into the proposed construction of “master key”. On the other hand, the ordinary meaning of “master key,” does not make clear
that its definition includes electronic or other sensor
mechanisms, as the claim language, the surrounding
claims, and the specifications suggest. In any event,
and critically, the patents' written descriptions
clearly teach that the definition of “master key,” as
it is used in the patents, extends beyond its centuries-laden description, i.e. a metal, jagged edge object, by contemplating electronic and other sensor
mechanisms within the scope of the term. See Genzyme Corp. v. Transkaryotic Therapies Inc., 346
F.3d 1094, 1098 (Fed.Cir.2003) (a patentee can expand the scope of the term's generally understood
meaning in the context of his claims). The specifications to the 728 and 537 patents state that “the
terms ‘master key’ and ‘master key lock portion’
are broad terms intended to also include electronic
or other sensor mechanisms for opening up the
master key lock portion in [the special lock]” and
that the “invention contemplates using in certain
embodiments a special lock [ ] that makes use of an
electronic sensor instead of a traditional physical
key even though such a traditional physical key is
typically understood by the term ‘master key’. In
such a case the locking mechanism inside [the] special lock [ ] would not *288 be a traditional master
key lock mechanism but rather would be a locking
mechanism that is opened by an electronic sensor.”

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537 patent, col.5, ll.41–52; 728 patent, col. 6, ll.
66–67, col. 7, ll. 1–10 (emphasis added). In urging
the Court to incorporate “electronic sensor mechanism” in its proposed construction, Travel Sentry
similarly points to this same language, contrasting
it with the term's plain meaning, which, as evidenced by a dictionary definition, has described
“master key” as “a key designed to open several
different locks”. Merriam–Webster's Collegiate
Dictionary 764 (11th ed.2006).
While it is clear that the specifications expand
the ordinary and plain meaning of “master key” to
include electronic and other sensor mechanisms,
see Phillips, 415 F.3d at 1316 (“the specification
may reveal a special definition given to a claim
term by the patentee that differs from the meaning
it would otherwise possess ... in such cases, the inventor's lexicography governs.”), limiting “master
key” to “a single key or electronic sensor mechanism” appears overly restrictive since the patent
clearly contemplates other kinds of mechanisms
that may also qualify as a “master key”, and, as the
specifications to both patents teach—“master key”
is meant to be broadly construed.
Travel Sentry's argument that the key lock portion is “dedicated” is also unduly limiting in light
of the specifications of the patents-in-suit. In describing the interaction of the master key with the
master key lock portion of the special lock, the specifications state that when an electronic or other
sensor mechanism is used to open up the master
key lock portion of the special lock, that locking
mechanism would not be a traditional master key
lock mechanism but a locking mechanism opened
by an electronic sensor. The language of the claims
does not support a limitation that the locking mechanism or master key lock portion, electronic or otherwise, be “dedicated”. When a patent's specification does not provide for the proffered restriction
stated in the proposed construction, that limitation
should not be then read into the claim terms. Teleflex, Inc. v. Ficosa North Am. Corp., 299 F.3d
1313, 1327 (2002) (claim terms take their ordinary

and accustomed meanings unless the patentee
shows an intent to deviate from them, or by using
words of manifest exclusion or restriction, clearly
disavows a claim's scope). Indeed, under a fair
reading of the specifications to both patents, it is
contemplated that sensor mechanisms would not
have a dedicated key lock portion. Instead, the patents' written descriptions focus on the interaction
between the “master key” (in its traditional physical
incarnation or otherwise) and the locking mechanism, which may include (but is not limited to) a
dedicated key lock portion.
Therefore, in light of the patents' written descriptions, the Court construes the claim term “master key” in the 728 and 537 patents to be a key, including electronic or other sensor mechanisms, that
can open the master key lock portion or locking
mechanisms of the special locks described in the
patent.
2. “IDENTIFICATION STRUCTURE”
[11] The term “identification structure” appears
in independent claims 1,9,14, and 18 of the 537 patent and independent claims 1 and 10 of the 728 patent. Claim 1 of the 537 patent states that:
the special lock [would have 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*289 ... 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 ... 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 open the luggage].
537 patent, col. 6, ll. 14–19, 23–29 & 31–37.

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Claims 4 and 6, dependent to claim 1, contemplate
the identification structure being located directly or
formed integrally with the special lock. Claim 9 is
nearly identical to claim 1 but the special lock
would have a first lock as opposed to a combination
lock (covered by claim 1). Claim 14 and dependent
claim 15 contemplate a special lock with a combination lock portion and a master key lock portion,
where the identification structure is integrally
formed with the special lock, while claim 18 covers
the same scope as claim 14 but contemplates a special lock with a first lock portion and a master lock
portion. Claim 1 of the 728 patent, with respect to
the term “identification structure” in sum and substance resembles claim 1 of the 537 patent, but replaces references to “airline luggage,” “airline luggage inspection,” “luggage screener,” and “luggage
screening entity” with “carrier baggage inspection”,
“baggage screening entity”, and “baggage screener”. Similarly, as with the 537 patent, claims 4 and
5, dependent to claim 1, contemplate the identification structure described in claim 1 as being integrally formed with the special lock where the signaling from the identification structure is visual. Claim
10 of the 728 patent resembles claim 1 in sum and
substance but contemplates a first lock portion as
opposed to a combination lock portion.

serting that Tropp's proposed construction is
“imprecise, circular, and inappropriately vague.”
(Pl.'s Br. 8).

Tropp's proposed construction for identification
structure is “indicia associated with a lock that signals to a luggage or baggage screener that the lock
is subject to a special screening procedure.” Travel
Sentry's proposed claim construction for
“identification structure” is “an indicia such as a
marking, stamping, etching, casting, molding, labeling, inscribing of an alphanumeric symbol, logo,
or other distinctive marking.” Tropp contends that
Travel Sentry's proposed construction only provides
examples of indicia but does nothing to further construction of the term “identification structure”.
(Def.'s Br. 9). Travel Sentry acknowledges that the
term “indicia” is a broad term and argues that the
specifications use the term “indicia” in referring to
the identification structure but does not otherwise
distinguish its definition from Tropp's beyond as-

The specifications, therefore, do not support
reading Travel Sentry's proposed limitations into
the claim terms. See Specialty Composites v. Cabot
Corp., 845 F.2d 981, 987 (Fed.Cir.1988). Read in
light of the specifications, the claims clearly contemplate that the identification structure may be associated with a lock (e.g., on a tag near the lock),
on the lock, or the identification structure can even
be the lock itself. The examples enumerated by
Travel Sentry in its definition do not appear in the
claims nor are they even acknowledged in the patents' specifications. Accordingly, the Court finds
that grafting these examples onto the definition
serves no purpose and would, in any event, be misleading. To that end, the Court adopts Tropp's construction and construes “ identification structure as
indicia associated with a lock that signals to a lug-

The claim language in both the 728 and 537
patents contemplate that “identification structure”
is broader than the examples offered by Travel Sentry. The patents-in-suit provide for embodiments
where the identification structure may be “located
directly” on the special lock, or “integrally formed”
with it. The claims do not support limiting identification structure to “an indicia such as a marking,
stamping, etching, casting, molding, labeling, inscribing of an alphanumeric symbol, logo, or other
distinctive marking.” The specification to the 728
patent states that “indicia” is a “broad term and can
also include the special lock itself ... a distinctive
physical characteristic such shape, texture, weight
and/or other characteristic such as color, that makes
it instantly recognizable by individuals ...
[a]lternatively, *290 a distinctive chemical or electronic characteristic can be used—in short, any distinctive characteristic that can be instantly recognized by persons looking for it.” 728 patent, col.4,
ll. 44–55. The 537 patent also supports a broad
reading of the identification structure. 537 patent,
col. 4, ll. 1–16, col. 5, 24–31.

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gage or baggage screener that the lock is subject to
a special screening procedure.”
3. “BAGGAGE SCREENER” AND “BAGGAGE
SCREENING ENTITY”
Tropp's proposed construction for baggage
screening entity is “an entity that screens baggage”.
Travel Sentry's proposed construction is “[a]ny
governmental agency or non-governmental organization that screens or inspects luggage prior to being
loaded aboard aircraft.” Similarly, Tropp defines
baggage screener as “a person who screens baggage” while Travel Sentry defines the term as
“[a]ny person employed by a governmental agency
or non-governmental organization that screens and
inspects luggage prior to being loaded abroad aircraft.”
The terms “baggage screener” and “baggage
screening entity” appear in independent claims 1
and 10 of the 728 patent. While Tropp, unsurprisingly, takes issue with nearly every aspect of Travel
Sentry's proposed construction of “baggage screener” and “baggage screening entity”, the conflict
between Tropp's and Travel Sentry's proposed constructions of “baggage screener” and “baggage
screening entity” centers materially on three issues:
(1) whether luggage and baggage are synonyms, (2)
whether the screening is limited in scope to screening done in connection with air travel only, and (3)
whether it should be further confined to screening
that occurs prior to the baggage being boarded onto
aircraft.
a. Whether baggage is synonymous with luggage
[12] The words “luggage” and “baggage” appear in both patents. The 728 patent claims “a
method of improving carrier baggage inspection by
a baggage screening entity” and replaces all references to “luggage” and “luggage screening entity”
in the 537 patent to “baggage” and “baggage
screening entity” in the 728 patent. However, while
the claims in the 728 patent use the word
“baggage”, the term “luggage” appears predominantly in the specifications of both patents, and both
patents are titled “Method of Improving Airline

Luggage Inspection”.
The 728 patent is a continuation-in-part from
the 537 patent. The written descriptions of the 728
and the 537 patents are identical in their treatment
of “baggage”, although the word appears sparsely
in them. The “background of the invention and discussion of the prior art” sections of the 728 and 537
patents state that “[d]ue *291 to the threat of terrorism ... the TSA ... announced that with respect to
luggage at United States airports if a TSA baggage
screener was unable to open a traveler's bag for inspection because the bag was locked, the screener
would have to break the locks on the traveler's bag.
Hence, travelers should leave their bags unlocked
... [b]eginning Jan. 1, 2003 the TSA's federal workers started screening luggage at U.S. airports and
when it deemed it necessary it started clipping
locks on this luggage in order to open and inspect
the luggage. 537 patent, col. 1, ll. 13–25.”
[T]ravelers, just getting accustomed to the new security laws, may have legitimate concerns about
baggage inspections ... [i]n addition, working as a
TSA luggage screener is a highly demanding and
stressful job. 537 patent, col. 2, ll. 8–14. Stated differently, there is no indication from the patent's
specifications or the prosecution history of either
FN3
patent
that a person of ordinary skill in the art
considers “baggage” as covering a different scope
than luggage. It appears that both patents use the
word “baggage” synonymously with “luggage”
which impels the Court to conclude that “baggage”
is not ascribed a different meaning from “luggage”
within the context of the claims.
FN3. Interpretations made in the prosecution of a parent application can also affect
related continuation in part applications
arising from that same patent. See, e.g.,
Omega Eng'g v. Raytek Corp., 334 F.3d
1314, 1333–34 (Fed.Cir.2003).
Additionally, the prosecution history for the
728 patent suggests that the word “luggage screening authority” was changed to “baggage screening
entity” to “broaden it” to indicate that the term ex-

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tended to nongovernment entities, but there is no
similar argument or remarks made by Tropp indicating that “baggage” should be, and was intended to
be given a different meaning from “luggage”
FN4
(Def.'s Reply Br. Attach.).
Accordingly,
“baggage screener” and “baggage screening entity”
in the 728 patent are synonymous with “luggage
screener” and “luggage screening entity” as used in
the 537 patent.
FN4. Reading “baggage” and “luggage” as
synonyms is supported not only by the specifications, but also by the fact that the
plain meaning of the words themselves are
consistent with the patents' written descriptions. Webster's Third New International
Dictionary ( “Webster's” ) defines both
luggage and baggage as synonyms of the
other. Webster's at 162, 1344 (2002). Oxford American Dictionary ( “Oxford” )
defines baggage as a synonym for luggage.
Oxford, at 121 (2001).
b. Scope of baggage screening
[13][14] Travel Sentry argues further that
“baggage screener” and “baggage screening entity”
should be limited to screenings related to air travel
only. This Court agrees. The claim terms of the patents and their written descriptions focus solely on
the method's usefulness and applicability for improving air travel screening procedures. When the
inventor acts as his own lexicographer, he controls
how expansive or narrow the scope of his definition
should be, though this asserted definition must be
supported by the specification. See Jonsson v. Stanley Works, 903 F.2d 812, 819 (Fed.Cir.1990).
Independent claims 1, 9, 14, and 18 in the 537
patent claim “a method of improving airline luggage inspection by a luggage screening entity”. Independent claims 1 and 10 in the 728 patent claim
“a method of improving carrier baggage inspection
by a baggage screening entity”, but the language in
the 728 patent's specification is nearly identical to
the 537 patent with respect to the invention's objectives and benefits. Thus, the specifications for

both *292 patents clearly support a finding that the
field of the invention extends to air-related travel
only. See, e.g., SciMed Life Sys., Inc. v. Advanced
Cardiovascular Sys. Inc., 242 F.3d 1337
(Fed.Cir.2001) (“Where the specification makes
clear that the invention does not include a particular
feature, that feature is deemed to be outside the
reach of the claims of the patent, even though the
language of the claims, read without reference to
the specification, might be considered broad
enough to encompass the feature in question.”).
The patents-in-suit are entitled “Method of Improving Airline Luggage Inspection”. In describing
the field of the invention, both patents state that
(“[t]he field of this invention is methods of improving airline luggage inspection, and more particularly, methods of making such inspection less intrusive and more secure”). 537 patent, col. 1, ll.
6–8; 728 patent, col. 1, ll. 20–22. Furthermore, the
specifications in both patents identically extol the
benefits of the invention to air-travelers and airport
screeners and are replete with references to screening procedures and problems unique to air travel.
For example, the patents discuss the benefits of the
invention, which include addressing the concerns of
“close to half a billion” airline travelers who pass
through airports in the United States. 537 patent,
col. 2, ll. 17–20; 728 patent, col. 2, ll. 33–37. The
patents also state that “there is a compelling and
immediate need for a method of inspecting luggage
at airports that does not create a security risk and
that is not damaging or aggravating to passengers.”
537 patent, col. 2, ll. 21–24; 728 patent, col. 2, ll.
38–41. The laundry list of important objects and advantages of the invention focus entirely on its usefulness in screening luggage at airports, i.e. to
provide a method of screening “at airports that
avoids forcible opening of luggage”; to
“non-intrusively search[ ] passenger's luggage at
airports”, to provide a method of “airport luggage
screening that allows the luggage screening authority to get its work done more efficiently.” 537 patent, col. 2, col. 2, ll. 55–56, 60–61, 30–32; 728 patent, col. 3, ll. 5–6, 10–11, 48–50. However, notably

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absent from the patents' written descriptions is any
discussion of screening procedures for methods
outside of the air travel context; the specifications
do not even imply that the procedures covered in
the patents extend beyond that scope. The short of
it is that both patents focus unequivocally and exclusively on the use of the invention in improving
screening procedures related to air travel.
[15] While an inventor's anticipation that an invention would be used in a particular way does not
always mean that the patent's scope is applied only
in that context, see Northrop Grumman Corp. v. Intel Corp., 325 F.3d 1346 (Fed.Cir.2003), it is both
permissible and proper to limit the claims when a
patent, read as a whole, makes clear that the
claimed invention is actually narrower than the
claim language implies. See Alloc. Inc. v. ITC, 342
F.3d 1361, 1370 (Fed.Cir.2003). The Court need
not go even that far. Here, the patents-in-suit as a
whole support a construction that the terms
“baggage screener” and “baggage screening entity”
describe those screening procedures that take place
FN5
solely in relation to air travel.
FN5. While the 537 patent uses “luggage
screener” and “luggage screening entity”,
as the Court has determined, these terms
are synonymous with “baggage screener”
and “baggage screening entity” as they appear in the 728 patent. Accordingly, the
analysis regarding the scope of the screening methods and the finding that the patents cover screening procedures only in the
context of air travel applies to both patents.
Travel Sentry also argues that such screening
procedures should be further *293 limited to those
that occur prior to the boarding of the luggage onto
aircraft. Unlike the prior limitation, this one is unsupported by the claims and the Court rejects it.
The written descriptions do not specify or even imply that such screening is limited to pre-boarded
luggage nor do the specifications even require that
such luggage be boarded onto aircraft. The Court
reaches a similar conclusion with respect to Travel

Sentry's parse-out of “entity” as “a government
agency or non-governmental organization” in construing the terms. Such line-drawing is, frankly, superfluous for this claim-constructing exercise. At
best, the specification of either patent suggests that
an entity pertains to some authority responsible for
screening, but the Court does not see the utility that
is (singularly) apparent to Travel Sentry in defining
“entity” as a government authority or a nongovernment authority. More importantly, beyond
burdening these terms with mere surplusage, there
is no genuine dispute, no difference, between
Tropp's and Travel Sentry's proposed constructions
of an “entity”.
Accordingly, the Court construes “ baggage
screener” as a person who screens baggage, and “
baggage screening entity” as an “entity that screens
baggage”; “ baggage” is understood as a synonym
for “luggage”. As for the term “screening”, covered
is any and all screening occurring within the scope
of air travel.
4. “MAKING AVAILABLE TO CONSUMERS
A SPECIAL LOCK”
[16] Independent claims 1 and 10 of the 728
patent recite methods for improving carrier baggage
inspection including the step of: “making available
to consumers a special lock.” Independent claims 1,
9, 14, and 18 of the 537 patent refer, substantively,
to the same step. Tropp's proposed construction of
“making available to consumers a special lock” is
“[c]ausing, or otherwise facilitating, a special lock
to be made available to consumers.” Travel Sentry
proposes that the term “making available” means
“[m]anufacturing, selling, offering for sale, or distributing locks.”
Travel Sentry argues, essentially, that “making
available to consumers a special lock” should be
read and understood as making available such locks
in a commercial context. (Markman Hr'g Tr. 7).
Specifically, Travel Sentry states that “making
available” should mean “manufacturing, selling, offering for sale, or distributing locks.” Travel Sentry
argues that the Tropp's proposed construction is

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vague and unsupported by the patents themselves or
the prosecution histories. Tropp, for his part, argues
that “making available” is plainly understood as being broader than simply “manufacturing, selling,
offering for sale, or distributing locks”.
The Court is in accord with Tropp that “making
available” as used in the claim terms, does not restrict “making available” to “manufacturing,
selling, offering for sale, or distributing locks.”
While claims 3 and 5 of the 537 patent, dependent
to claim 1, recite that a step of making available to
consumers involves “mass producing the special
lock and selling the special lock to the consumers,”
independent claims 9, 14, and 18, which also contain the term, include no such limiting language.
Furthermore, the 537 patent's specification gives no
indication that “making available to consumers a
special lock” is limited to the manufacture, sale,
distribution, or offering for sale of the locks. The
537 patent is focused on teaching a method of improving airline luggage inspection, of which making a special lock available to airline travelers is
one step to that method. 537 Patent, col. 2, ll.
28–32.
[17] This reading is further bolstered by how
the term is used in the 728 patent. *294 See, e.g.,
Omega Eng'g, Inc. v. Raytek Corp., 334 F.3d 1314,
1334 (Fed.Cir.2003) (presumption that claim terms
appearing in related patents contain the same construed meaning). Dependent claims 3, 7, 8, 9, 12,
18, 19 and 20 of the 728 patent demonstrate that the
term was meant to at least include methods such as
selling the lock directly or indirectly, 728 patent,
col. 8, ll. 7–9, mass producing the lock for ultimate
provision to the consumer, id. at ll. 16–19, providing the identification structure to a third party, id. at
ll. 20–23, and causing the lock having the identification structure to be made available to consumers,
id. at ll. 24–27. Claims 12, 18, 19, and 20 are dependent to claim 10 and contain identical language
as claims 3, 7, 8 and 9. In other words, these claims
recite the method of independent claims 1 and 10
and each adds a limitation to the term “making

available to consumers a special lock.” Under the
doctrine of claim differentiation, there is a presumption that the independent claims in both patents are not interpreted to include the limitations of
the dependent claims. While this doctrine is not a
rigid rule, see. e.g., Laitram v. Morehouse Indus.,
143 F.3d 1456, 1463 (Fed.Cir.1998), there is a
strong presumption that an independent claim is not
restricted by the limitations found in a dependent
claim, since that would render the dependent claim
superfluous. Acumed LLC v. Stryker Corp., 483
F.3d 800, 806 (Fed.Cir.2007); see also Andersen
Corp. v. Fiber Composites, LLC., 474 F.3d 1361,
1369–70 (Fed.Cir.2007); Robert L. Harmon, Patents & the Federal Circuit 390–93, § 6.7 (8th ed.
2007) (“In the most specific sense, ‘claim differentiation’ refers to the presumption that an independent claim should not be construed as requiring a
limitation added by a dependent claim”). The Court
declines to narrowly construe “making available to
consumers a special lock” to “manufacturing,
selling, offering for sale, or distributing locks”.
Read together, the claims of both patents
strongly support a construction that does not limit
“making available to consumers a special lock” to
manufacturing, selling, offering for sale, or distributing locks only, since they describe ways beyond
those named by Travel Sentry that would constitute
“making a special lock available to consumers”.
Furthermore, Travel Sentry has not pointed to any
evidence within the patents' written descriptions nor
their prosecution histories demonstrating that Tropp
intended to restrict “making available to consumers
a special lock” to “manufacturing, selling, offering
for sale, or distributing locks,” as a step in teaching
a method of improving airline luggage screening.
Accordingly, the term should not be limited to the
few particular methods enumerated by Travel Sentry. In sum, since neither the claims nor the patents'
written descriptions provide a reason for limiting
“making available to consumers a special lock” in
the way Travel Sentry advocates, the Court construes “ making available to consumers a special
lock” as “causing the special lock to be available to

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consumers”.
5. “PRIOR AGREEMENT”
[18] Travel Sentry proposes that “prior agreement” be defined as an “an agreement that is binding and enforceable by law between the baggage
screening entity and another party to process locks
pursuant to the special procedure.” Tropp advances
an alternative definition: “a prior arrangement
between the luggage or baggage screening entity
and another party to process special locks in accordance with a special procedure.”
The term “prior agreement” appears in claims
1, 9, 14, and 18 of the 537 patent and claims 1 and
10 of the 728 patent. *295 The dispute over whether the term “baggage” should be construed as synonymous with “luggage” having been resolved, the
principal remaining difference in the parties' proposed constructions hinges on whether a prior
agreement, within the meaning of the claims, must
be understood as a legally binding and enforceable
agreement. Essentially, Travel Sentry argues that
the whole objective of the invention is defeated if
the screening entity can choose whether or not to
follow the agreed-upon special procedure at its own
whim. (Pl.'s Br. 13).
The patent claims themselves lend no support
to narrowly construing “prior agreement” as an
agreement that is legally binding and enforceable
by law. “Prior agreement”, as reflected in the claim
language of both patents, contemplates some coordination and pre-planning on the part of the
screening entities regarding possession of the master keys to the special locks. That is all. Additionally, the specifications of both patents fail to draw
any distinctions about how formal such arrangements should be; neither party has pointed to any
prosecution history supporting any such limiting
distinction. Since the Court finds no need to construe “prior agreement” claustrophobically, it rejects any requirement that a “prior agreement” must
be a legally binding and enforceable one. Therefore, the Court construes the term “ prior agreement” as “a prior arrangement between the luggage

screening entity and another party to process special locks in accordance with the special procedure.”
6. “SPECIAL PROCEDURE”
[19] The term “special procedure” appears in
claims 1, 9, 14, and 18 of the 537 patent and claims
1 and 10 of the 728 patent. Claim 1 of the 537 patent has the relevant term at issue. It claims, in relevant part:
a “method for improving airline luggage inspection by a luggage screening entity, comprising:
making available to customers 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 previously provided to the
luggage screening entity, which special lock the
luggage screening entity has agreed to process in
accordance with a special procedure.
537 patent, col. 6, ll. 6–18. Claim 1 also addresses “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. As
with the other terms, claims 9, 14, and 18, as relating to “special procedure”, largely track the language in claim 1, and similarly, claims 1 and 10 of
the 728 patent do so as well.
Travel Sentry's proposed construction of
“special procedure” is “[a] procedure whereby a
baggage screening entity has instructed baggage
screeners to look for indicia on luggage locks and,
upon finding the indicia, the baggage screener
would, if necessary to inspect a piece of luggage,
use a single master key provided to the luggage
screening entity to open the luggage lock and then
relock it after inspecting the bag.” Tropp proposes
that “special procedure” be construed as “[a] procedure for processing ‘special locks,’ as recited in

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respective claims, in which the luggage or baggage
screening entity has agreed to act pursuant to a prior agreement to look for the identification structure
while screening luggage or baggage, and, upon
finding said identification *296 structure on an individual piece of luggage or baggage, to, e.g., use
the master key previously provided to the luggage
or baggage screening entity to, if necessary, open
the individual piece of luggage or baggage.”
While both proposed constructions are long in
verbiage, there is about a penny's worth of difference between them, if that much. Travel Sentry, in
fact, concedes that its construction is not materially
different from Tropp's. (Markman Hr'g Tr. 10).
Tropp, for his part, repeats his objection to adding
the word “single” before “master key”, and disagrees with interpreting “special procedure” with
the unsupported limitation that a screener must relock the bag after inspecting it.
Again, the Court agrees with Tropp that the
claims do not support a requirement that the special
procedure involves “a single master key” only
(emphasis added). With respect to the additional
step of relocking the lock after inspecting a
bag—while a reasonable expectation and
(presumably) desired result at the conclusion of a
baggage screening process, it is, ultimately, an limitation unsupported in the claims. See Renishaw
PLC v. Marposs Societa' per Azioni, 158 F.3d 1243,
1249 (Fed.Cir.1998) (“If we need not rely on a limitation to interpret what the patentee meant by a
particular term or phrase in a claim, that limitation
is ‘extraneous' and cannot constrain the claim”). In
both the 728 and 537 patents, the relocking of a bag
is not addressed in the claims themselves nor is it
mentioned in the specification of either patent. The
written descriptions, in highlighting the important
objectives and advantages of the invention, focuses
on allowing luggage screeners to avoid damaging
travelers' luggage and avoiding the hassle, labor,
expense, and resulting injuries that arise from clipping locks. The “special procedure” in the patents'
claims, read in light of the specifications, appears

to focus on the opening of luggage as opposed to
the relocking of it.
Therefore, while Travel Sentry's position is
reasonable, the Court declines to read a limitation
into the term “special procedure” requiring screeners to relock the bag after an inspection. To that
end, the Court, with modification, adopts the following proposed construction (particularly where
Travel Sentry has acknowledged no significant difference in the two constructions) and construes “
special procedure” as a procedure for processing
special locks, as recited in the respective claims, in
which the screening entity has agreed to act pursuant to a prior agreement to look for the identification structure while screening luggage, and, upon
finding that identification structure on an individual
piece of luggage, to, use the master key previously
provided to the screening entity to, if necessary,
open the luggage.
7. “MARKETING”
[20] The term “marketing” appears in the 537
patent in independent claims 1,9,14 and 18 and
claims 1 and 10 of the 728 patent. The 537 patent
states the following in claim 1: “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.” With respect to “marketing” the language is identical in claims 9, 14, and 18 and substantially similar to the claim term “marketing”
which also appears in the 728 patent.
Travel Sentry argues that neither the 537 nor
the 728 patent specifications adequately describe
what “marketing the special lock to consumers”
means, rendering the term “marketing” indefinite
and the claims, therefore, invalid under *29735
FN6
U.S.C. § 112.
(Pl.'s Br. 15). Alternatively,
Travel Sentry proposes that the Court construe the
term ‘marketing’ as “offering for sale or selling”
since, “at its core, marketing a product is about offering and selling that product.” (Id. 17).
FN6. Under § 112, a patent's specification

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must “contain a written description of the
invention, and of the manner and process
of making it and using it, in such full,
clear, concise, and exact terms as to enable
any person skilled in the art ... to make and
use the same”. 35 U.S.C. § 112 ¶ 1. The
claims of a patent “particularly point[ ]out
and distinctly claim[ ] the subject matter
which the applicant regards as his invention.” 35 U.S.C. § 112 ¶ 2.
Contrarily, Tropp urges that “marketing” is a
common term with a well-understood meaning, and
that Travel Sentry's proposed construction limiting
“marketing” to sales-related activities in unsupported by the patents' language. Tropp, consistent with
this theme, advances a construction of “marketing”
as “promoting the sales of the special locks by conveying to consumers that the special lock will be
subjected by the luggage/baggage screening entity
FN7
to a special screening procedure.”
FN7. In support of this meaning, Tropp
cites Webster's II New College Dictionary,
“marketing” is defined as: 1) The act or
process of buying and selling in a market.
2) The commercial functions involved in
transferring goods from producer to consumer. 3) The act or business of promoting
sales of a product, as by advertising or
packaging. Webster's II New College Dictionary 686 (3d ed. 2005).
To reiterate, claim terms are to be given their
ordinary and customary meaning unless it appears
from the specification and prosecution history that
they were used differently by the inventor. Phillips
v. AWH Corp., 415 F.3d 1303, 1312–13
(Fed.Cir.2005). In some cases, the ordinary meaning of claim language may be readily apparent even
to lay judges and claim construction in such cases
involves little more than the application of the
widely accepted meaning of commonly understood
words. Id. However, if the ordinary meaning itself
is disputed by the parties, and the meaning of the
claim term as understood by persons of skill in the

art is not readily apparent, then the Court must determine what claim scope is appropriate for that
meaning in the context of the patents-in-suit. O2
Micro Intern. v. Beyond Innovation Tech., 521 F.3d
1351, 1361 (Fed.Cir.2008). Here, both parties assert
that their proffered definition of “marketing” is the
understood and customary meaning of that term.
Against this harmonious backdrop, the claims,
read in light of the specifications, support a broader
reading of the term “marketing” than simply
“offering for sale or selling”—the definition espoused by Travel Sentry. Claim 1 in both patents
states in relevant part that the invention comprises
“[m]arketing 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.” This claim addresses promoting the availability of the special
lock to allow for a consumer's understanding that
an arrangement exists where the lock would be subject to a special procedure (i.e. one that avoids the
clipping or other destruction of the lock and/or luggage by the luggage screener). Claim 3, which is
dependent to claim 1, states that “a step of making
available to consumers a special lock involves
selling the special lock directly or indirectly to the
consumers.”
The specification to the 728 patent states that
“[a]s a result of marketing the special lock to consumers or to airline travelers, the indicia conveys to
luggage purchasers that the special lock is a lock
that *298 the luggage screening authority has
agreed not to break”. 728 patent, col. 4, ll. 24–28.
The background of the invention and discussion of
the prior art in both the 537 and 728 patents discuss
inter alia, the plummeting of sales after TSA began
clipping locks, 537 patent, col. 1, ll. 62–63; 728
patent, col. 2, ll. 9–10, and that the present invention would be valuable to prospective luggage purchasers or lock purchasers since the indicia would
convey to luggage purchasers that the special lock
is ‘approved’ by “a luggage screening authority, ”
537 patent, col. 2, ll. 36–38, 728 patent, col. 60–66.

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Indeed, the focus of the patents is on the system or
method or improving airline luggage inspection,
not, simply, sale of the lock itself—a conclusion
also supported by the patents' prosecution histories.
Furthermore, Travel Sentry's own submissions in
support of its proposed construction are consistent
with a broader reading of “marketing”, all of which
evidences that the plain and ordinary meaning of
“marketing” extends beyond the mere act of
FN8
“offering for sale or selling.”
FN8. In any event, even assuming that the
Court should consider Travel Sentry's submitted definitions, they are unavailing
since they are also consistent with a more
expansive interpretation of “marketing”
beyond “selling or offering for sale”.
In short, the patent claims, read in light of the
written descriptions, do not support limiting the ordinary meaning of “marketing” to “offering for sale
or selling”. See, e.g., Rexnord Corp. v. Laitram
Corp., 274 F.3d 1336, 1344–46, 1348
(Fed.Cir.2001) (crediting the broader interpretation
of a claim term's ordinary meaning when there was
no indication in the intrinsic evidence that a more
restrictive definition be adopted). Accordingly, the
Court construes “ marketing” within the context of
the patents as “selling or promoting the sale” of the
special lock to consumers in a manner that conveys
to them that the lock is subject to a special screening procedure.
[21][22][23] As might be expected in light of
the foregoing, Travel Sentry's invalidity argument
founded on the asserted indefiniteness of
“marketing” is rejected. The definiteness requirement of § 112 ensures that the claims, as written,
provide notice of that patent's scope so that the public can determine whether or not there is a danger
of infringing the patent. See All Dental Prodx, LLC
v. Advantage Dental Prods., Inc., 309 F.3d 774,
779 (Fed.Cir.2002). When a claim cannot be construed, it is indefinite and therefore invalid. Aero
Prods. Int'l, Inc. v. Intex Recreation Corp., 466
F.3d 1000, 1016 (Fed.Cir.2006). This includes in-

stances where the claim language is so inherently
standardless that it cannot be meaningfully applied.
Datamize, LLC v. Plumtree Software, Inc., 417 F.3d
1342, 1354 (Fed.Cir.2005). An issued patent is presumed valid, 35 U.S.C. § 282, so the party attacking a claim term on validity grounds must overcome that presumption by clear and convincing
evidence. Bancorp Servs., LLC v. Hartford Life Ins.
Co., 359 F.3d 1367, 1371 (Fed.Cir.2004). Even
where a construction reached is one which reasonable persons can disagree, that claim is not indefinite. Id. If the claims read in light of the specification reasonably apprise those skilled in the art of
the scope of the invention, § 112 demands no more.
Id. (citing Personalized Media Commc'ns, LLC v.
Int'l Trade Comm'n, 161 F.3d 696, 705
(Fed.Cir.1998)).
Here, the claims and specifications sufficiently
provide
an
appropriate
understanding
of
“marketing”. As demonstrated above, the claim
term “marketing” is not so unamenable to construction that reasonable notice as to the scope of the
claim is wanting. As a result, the Court concludes
*299 that Travel Sentry fails to meet its burden in
proving by clear and convincing evidence that the
term “marketing” is indefinite as to render the
claim invalid under § 112.
CONCLUSION
The Court construes the terms as follows:
Master key is a key, including electronic or other
sensor mechanisms, that can open the master key
lock portion or locking mechanisms of the special
locks described in the patent.
Identification structure is indicia associated
with a lock that signals to a luggage or baggage
screener that the lock is subject to a special
screening procedure.
Baggage screener is a person who screens baggage. “Baggage” is a synonym for “luggage”.
The “screening” covered is any and all screening
occurring within the scope of air travel.

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Baggage screening entity is an entity that
screens baggage. “Baggage” is a synonym for
“luggage”. The “screening” covered is any and
all screening occurring within the scope of air
travel.
Making available to consumers a special lock
is causing the special lock to be available to consumers.
Prior agreement is a prior arrangement between
the luggage screening entity and another party to
process special locks in accordance with the special procedure.
Special procedure is as a procedure for processing special locks, as recited in the respective
claims, in which the screening entity has agreed
to act pursuant to a prior agreement to look for
the identification structure while screening luggage, and, upon finding that identification structure on an individual piece of luggage, to, use the
master key previously provided to the screening
entity to, if necessary, open the luggage.
Marketing is selling or promoting the sale of the
special lock to consumers in a manner that conveys to them that the lock is subject to a special
screening procedure.
SO ORDERED.
E.D.N.Y.,2009.
Travel Sentry, Inc. v. Tropp
661 F.Supp.2d 280, 2009 Markman 3055345
END OF DOCUMENT

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