Lockwood v. American Airlines, Inc., Civ. No. 91-1640-E(CM).

• Decision Date: 01 December 1994
• Docket Number: Civ. No. 91-1640-E(CM).
• Citation: 877 F. Supp. 500
• Parties: Lawrence B. LOCKWOOD, Plaintiff, v. AMERICAN AIRLINES, INC., Defendant.
• Court: U.S. District Court — Southern District of California

877 F. Supp. 500

Lawrence B. LOCKWOOD, Plaintiff, v. AMERICAN AIRLINES, INC., Defendant.

Civ. No. 91-1640-E(CM).

United States District Court, S.D. California.

December 1, 1994.

COPYRIGHT MATERIAL OMITTED

Robert M. Taylor, Jr., Corrine M. Freeman, James P. Brogan, Lyon & Lyon, Costa Mesa, CA, Douglas E. Olson, La Jolla, CA, for plaintiff and counterdefendant.

Don W. Martens, Joseph R. Re, Paul A. Stewart, Knobbe, Martens, Olson, & Bear, San Diego, CA, Thomas L. Crisman, Roger L. Maxwell, Johnson & Gibbs, Dallas, TX, for defendant and counterclaimant.

MEMORANDUM DECISION AND ORDER

ENRIGHT, District Judge.

BACKGROUND

This case began as a patent infringement claim by plaintiff Lockwood against defendant American Airlines. Plaintiff claimed infringement of two United States patents (numbers '115 and '359) and defendant filed counterclaims seeking declarations that the two patents are invalid, unenforceable, not infringed, and seeking attorney fees. On July 30, 1993, this court entered summary judgment for non-infringement by defendant on the two patents. Subsequently this court denied plaintiff's request to enter final judgment and instructed the parties to proceed on the remaining counterclaims. Additionally, the court denied plaintiff's motion for reconsideration of the July 30, 1993 order on March 10, 1994. In July 1994, the court granted plaintiff leave to file a second amended complaint to include infringement on a newly-issued patent, number 5,309,355 ("'355"), which is at issue in these motions.

The parties now present the court with two substantive motions: (1) defendant's motion for summary judgment of non-infringement of patent '355 and plaintiff's cross-motion for summary judgment of infringement of patent '355 and (2) defendant's motion for summary judgment of invalidity of patent number '355.

DISCUSSION

I. STANDARD OF REVIEW

Federal Rule of Civil Procedure 56(c) mandates the entry of summary judgment against a party which "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." Celotex Corp. v. Catrett, 477 U.S. 317, 322, 106 S.Ct. 2548, 2552, 91 L.Ed.2d 265 (1986). The party moving for summary judgment bears the burden of proving that there is no genuine issue of material fact and that judgment may be entered as a matter of law. Richards v. Neilsen Freight Lines, 810 F.2d 898, 902 (9th Cir.1987). "A party opposing a properly supported motion for summary judgment ... `must set forth specific facts showing that there is a genuine issue for trial.'" Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 250, 106 S.Ct. 2505, 2511, 91 L.Ed.2d 202 (1986) (citing Fed.R.Civ.P. 56(e)) (footnotes omitted). The evidence of the non-movant is to be believed, and all justifiable inferences are to be drawn in his favor. Id. at 255, 106 S.Ct. at 2513-14.

The construction of claims is a question of law which may be resolved pursuant to summary adjudication. Intellicall, Inc. v. Phonometrics, Inc., 952 F.2d 1384, 1387 (Fed. Cir.1992). The words in a claim should be given their ordinary meaning, unless it appears that the inventor used them differently. See ZMI Corp. v. Cardiac Resuscitator Corp., 844 F.2d 1576, 1579 (Fed.Cir.1988). Additionally, the claims of a patent must be interpreted in light of the specification and prosecution history. Graham v. John Deere Co., 383 U.S. 1, 33, 86 S.Ct. 684, 701, 15 L.Ed.2d 545 (1966).

II. AMERICAN'S MOTION FOR SUMMARY JUDGMENT OF NON-INFRINGEMENT OF PATENT '355 AND LOCKWOOD'S MOTION FOR SUMMARY JUDGMENT OF INFRINGEMENT OF PATENT '355

A. Background

Lockwood originally alleged that American's SABREvision computer reservation system infringed Lockwood's 1982 patent (number '115) and his 1986 patent (number '359). On July 30, 1993, the court ruled on summary judgment that American infringed neither patent. Since that time, Lockwood has amended his complaint to allege that American's SABREvision system infringes another patent, the 1994 patent (number '355).

The Sabrevision system is a manually operated system in which a travel agent gathers sales information from a customer either in person or by telephone. The travel agent then uses a computer terminal access schedule, cost and availability information stored in the central Sabre computer. The travel agent may also access a stored library of still photographs of places of interest to travelers such as hotels, restaurants, and cruise ships, as well as maps of countries, cities and airports, and display these still images on the computer terminal screen. The travel agent then gives the information to the customer as if it had been accessed in the agent's library of travel reference books.

If the customer decides to purchase a ticket, the travel agent solicits credit information or accepts cash payment from the customer. If a credit card is used, the travel agent must manually type in the credit information on the keyboard of the agent's computer terminal. Once credit is approved, the Sabre host computer commands a ticket printer at the travel agency to print a ticket which the travel agent delivers to the customer. The Sabrevision system accepts no information directly from the customer. On a technical level, the system consists of two major sub-systems, the first located at the office of a travel agent and the second comprises the host computer, and the communications network and links.

B. Discussion

The 1994 patent contains only one independent claim, Claim 1, and if American does not infringe this claim, then it cannot infringe any of the dependent claims as a matter of law. Becton Dickinson & Co. v. C.R. Bard, Inc., 922 F.2d 792, 798 (Fed.Cir.1990). Lockwood's 1994 patent claims an automated machine which generates sales presentations tailored to individual customer's needs: the computer accepts information about a customer, analyzes it and then composes and displays a motion-picture sales presentation tailor-made to that customer.

American asserts that the SABREvision system is an enhancement of American's SABRE computer reservation system, which is a worldwide network of travel agent computer terminals that American has used since the early 1960s. The SABREvision enhancement consists primarily of a videodisc, known as a CD-ROM, added to the SABRE system. Essentially, this videodisc is an electronic library which is intended to supplement or replace the library of tour books which most travel agents maintain.

1. Literal Infringement

This court finds that American's system does not literally infringe the 1994 patent. Literal infringement may be found only where the accused product includes components or functions which exactly correspond to each and every claim limitation. London v. Carson Pirie Scott & Co., 946 F.2d 1534, 1538 (Fed.Cir.1991). To determine whether the claims of a patent are literally infringed, the claims must be construed in light of the prosecution history. The court previously ruled that American does not infringe two of Lockwood's patents and it stated that Lockwood could not establish infringement merely by submitting declarations of expert witnesses who ignore the specification and file history of the patents. Lockwood v. American Airlines, Inc., 834 F.Supp. 1246, 1254 (S.D.Cal.1993), reh'g denied, 847 F.Supp. 777 (1994). The court does not entirely disagree with American's assertion that Lockwood makes the same "mistake" again because, like before, Lockwood relies almost exclusively on the opinion of his expert witness, Dr. Tuthill, whose declaration is irreconcilable with the specification and file history of the 1994 patent.

Here, Lockwood does not refer to the specification or prosecution history of the 1994 patent. See Senmed, Inc. v. Richard-Allan Medical Industries, Inc., 888 F.2d 815, 819 (Fed.Cir.1989) (Where specification and prosecution history are clear, they are "as a matter of law, compelling and conclusive of the proper claim interpretation."). Rather than look to the specification and prosecution history, Lockwood and his expert invoke the SABREvision device as their principle claim construction tool, repeatedly looking to the structure and functions of the SABRE system device to construe the language of the claims.

In addition, the court finds that Lockwood possibly narrowed the meaning of his claims in order to gain their allowance: American introduces evidence that Lockwood expressly represented to the Patent and Trademark Office ("PTO") that his claims regarding the 1994 patent are narrower in scope than the claims of his 1986 patent. See American's Motion, pp. 5-7; Exh. 246 and 247. Lockwood argued that the 1994 claims should therefore be patentable as well, and the PTO thereafter withdrew its rejection and allowed the 1994 patent to issue. The court finds American's argument persuasive that Lockwood cannot now claim that American infringes his "narrow" 1994 patent when the court has already ruled on summary judgment that American does not infringe any claim of the broader 1986 order.

Additionally, the court finds that literal infringement has not occurred because Lockwood's patent possesses claims which are not part of American's system. American's SABREvision does not include the automated "merchandising apparatus" required by Lockwood's claims. According to Claim 1 in Lockwood's patent, the apparatus is a "merchandising apparatus" which is more sophisticated than American's machine for retrieving a single still photograph from a videodisc. In addition, the court finds that SABREvision system does not display the "individualized sales presentation" evident in Lockwood's patent. American persuasively argues that this specification is an audio-visual presentation which is more elaborate and sophisticated than SABREvision's display of a single still photograph. Unlike American's system, Lockwood's machine analyzes the customer's characteristics and...