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

• Decision Date: 10 March 1994
• Docket Number: Civ. No. 91-1640-E(CM).
• Citation: 847 F. Supp. 777
• Parties: Lawrence B. LOCKWOOD, Plaintiff, v. AMERICAN AIRLINES, INC., Defendant.
• Court: U.S. District Court — Southern District of California

847 F. Supp. 777

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

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

United States District Court, S.D. California.

March 10, 1994.

Robert A. Taylor, Jr., Allan W. Jansen and Corrine M. Freeman of Lyon & Lyon, Costa Mesa, CA, and Douglas E. Olson of Lyon & Lyon, San Diego, CA, for plaintiff.

Don W. Martens, Joseph R. Re and Paul A. Stewart of Knobbe, Martens, Olson & Bear, Newport Beach, CA, Thomas L. Crisman of Johnson & Gibbs and R. Bruce Wark, Dallas, TX, for defendant.

MEMORANDUM DECISION AND ORDER

ENRIGHT, District Judge.

BACKGROUND

Plaintiff Lockwood is moving for reconsideration of this court's July 30, 1993 order granting defendant's motion for summary judgment on non-infringement grounds, 834 F.Supp. 1246. In our lengthy July 30, 1993 decision this court held that as to both patents in issue, the '115 and '359 patents, no literal infringement had occurred. As to the applicability of the doctrine of equivalents to the two patents, this court held that the doctrine of equivalents should not apply because no facts presented supported an application of the doctrine and plaintiff was estopped to use the doctrine of equivalents under the doctrine of prosecution history estoppel. Under this doctrine a patentee may not rely on the doctrine of equivalents where the reliance would be inconsistent with amendments or arguments the patentee made before the patent examiner. (July 30, 1993 opinion, at page 1252).

On September 21, 1993, this court refused to enter a final judgment in the case as to the infringement issue, but rather kept the two remaining counterclaims of defendant American Airlines to be heard in the normal course. On January 11, 1994, this court granted the defendant's motion to strike plaintiff's jury demand and granted defendant's request to file a second amended answer. Plaintiff is currently seeking a writ of mandamus from the Federal Circuit to reinstate his jury demand in this case.

Before this court addresses the substantive issues in plaintiff's motion for reconsideration, this court notes that because the plaintiff is seeking review of an interlocutory order prior to entry of final judgment, this court may review the substance of the motion at its own discretion. See generally Marconi Wireless Telegraph Co. of America v. United States, 320 U.S. 1, 48, 63 S.Ct. 1393, 1415, 87 L.Ed. 1731 (1943); El Cajon Cinemas v. American Multi-Cinema, 832 F.Supp. 1395 (S.D.Cal.1993). However, this court is mindful that in exercising its discretion to address the motion on its merits, the court does not wish to encourage the late filing of motions for reconsideration. The parties should be aware that subsequent motions may not be greeted in such a favorable manner in the future.

Plaintiff states reconsideration is essentially based on new facts relating to the doctrine of equivalents. Plaintiff's underlying substantive argument involves the perceived narrow parameters of the interpretation of the scope of the patented devices provided by this court in our July 30, 1993 decision. Plaintiff further argues that even if the summary judgment is upheld, plaintiff will be severely prejudiced if the trial on validity goes as planned because if the summary judgment is overturned by the circuit, the validity issues will have to be retried. This argument was previously considered and properly rejected in our September 21, 1993 order.

Plaintiff argues that the doctrine of equivalents is applicable in this case and under the doctrine the devices are the equivalent because only "insubstantial" differences exist between defendant's SABREvision and the patented devices. Plaintiff argues that they are providing three new pieces of information to the court to support this conclusion. First, the declarations of two experts outlining the "function, way, result" test of the doctrine of equivalents and how both the '115 and '359 patents meet these criteria. Second, the plaintiff supplies a report showing the number of times the patents have been cited in other patents and how this supports the theory that the patents are "pioneering inventions" and, as such, the balance to consider the doctrine of equivalents weighs more heavily in their favor. International Visual Corp. v. Crown Metal Mfg., 991 F.2d 768 (Fed.Cir.1993).

In a concurring opinion in International Visual Corp., a Federal Circuit judge did note that if an invention was a pioneering invention it would be considered when determining whether the doctrine of equivalents should be applied. However, in that same opinion the judge noted that the application of the doctrine is the exception not the rule, especially in light of the policy of encouraging the public to rely on the stated claims of a patent. Id. at 774. In our prior opinion of July 30, 1993, this court noted the doctrine was the exception not the rule, and declined to apply the doctrine (see July 30, 1993 order 834 F.Supp. at page 1252). This court does not see any reason to depart from its prior decision. The new information provided by the plaintiff mainly goes to how the doctrine would apply not whether it should apply.

Plaintiff argues the doctrine of equivalents should be applied to the entire structure of the system, focusing on the terms "customer" and "audio visual" device. This court fairly exhaustively addressed these two terms in its July 30, 1993 decision, and sees no new reason to change or reevaluate them here. (See July 30, 1993 opinion 834 F.Supp. at page 1253). Plaintiff also outlines how under the doctrine of equivalents the claimed inventions and the SABREvision device are equivalent as to their electromechanical means of accepting payment, and their self-contained and transportable descriptions. These two elements were also previously discussed in our July 30, 1993 opinion at pages 1250 and 1252. Again, the court sees no reason to deviate from our previous assessment of these two elements.

Defendant counters that the "new" evidence provided by plaintiff consists of two experts' opinions that were previously provided and considered by the court in the July 30, 1993 order.

Regarding the application of the doctrine of equivalents, defendants argue that this court already held no equitable facts existed...