Lockwood v. American Airlines, Inc.
| Decision Date | 04 March 1997 |
| Docket Number | No. 96-1168,96-1168 |
| Citation | 41 USPQ2d 1961,107 F.3d 1565 |
| Parties | , 41 U.S.P.Q.2d 1961 Lawrence B. LOCKWOOD, Plaintiff-Appellant, v. AMERICAN AIRLINES, INC., Defendant-Appellee. |
| Court | U.S. Court of Appeals — Federal Circuit |
Robert M. Taylor, Jr., Lyon & Lyon, Costa Mesa, CA, argued, for plaintiff-appellant.
Don W. Martens, Knobbe, Martens, Olson & Bear, Newport Beach, CA, argued, for defendant-appellee. With him on the brief were Joseph R. Re and Paul A. Stewart.
Before MAYER, LOURIE and RADER, C.J.
Lawrence B. Lockwood appeals from the final judgment of the United States District Court for the Southern District of California, Lockwood v. American Airlines, Inc., No. 91-1640E (CM) (S.D.Cal. Dec. 19, 1995), granting summary judgment in favor of American Airlines, Inc. In that summary judgment, the court held that (1) U.S. Patent Re. 32,115, U.S. Patent 4,567,359, and U.S. Patent 5,309,355 were not infringed by American's SABREvision reservation system, and that (2) the '355 patent and the asserted claims of the '359 patent were invalid
under 35 U.S.C. § 102 and 35 U.S.C. § 103, respectively. Lockwood v. American Airlines, Inc., 834 F.Supp. 1246, 28 USPQ2d 1114 (S.D.Cal.1993), req. for reconsideration denied, 847 F.Supp. 777 (S.D.Cal.1994) (); Lockwood v. American Airlines, Inc., 877 F.Supp. 500, 34 USPQ2d 1290 (S.D.Cal.1994) (); Lockwood v. American Airlines, Inc., 37 USPQ2d 1534, 1995 WL 822659 (S.D.Cal.1995) (). Because the district court correctly determined that there were no genuine issues of material fact in dispute and that American was entitled to judgment as a matter of law, we affirm.
The pertinent facts are not in dispute. Lockwood owns the '115, '355, and '359 patents, all of which relate to automated interactive sales terminals that provide sales presentations to customers and allow the customers to order goods and services. Lockwood sued American asserting that American's SABREvision airline reservation system infringed all three patents. SABREvision is used by travel agents to access schedule and fare information, to book itineraries, and to retrieve photographs of places of interest, including hotels, restaurants, and cruises, for display to consumers. It improves upon American's SABRE reservation system, which originated in the 1960s and which cannot display photographs.
The '115 patent, reissued in 1986, relates to a self-service sales terminal that presents audio-visual travelogs to customers. Claim 11, the only asserted claim, reads in pertinent part:
A substantially self-contained apparatus dimensioned to be easily transported and installed at a commercial location comprising:
an audio-visual means for selectively dispensing information from a plurality of data sources;
customer operated means for selecting information to be dispensed on said audio-visual means, including means for sequentially and interactively displaying alternate selections of information on said audio-visual means in response to customer's commands;
...
at least one electromechanical means for accepting payment for said item from the customer;
....
The district court held that American's SABREvision did not infringe the '115 patent because it lacked four limitations of the asserted claim. Specifically, the court found that SABREvision was not a "substantially self-contained apparatus dimensioned to be easily transported" and that it lacked the claimed "audio-visual means," "customer operated means," and "means for collecting payment."
The '359 patent discloses a system of multiple interactive self-service terminals that provide audio-visual sales presentations and dispense goods and services from multiple institutions. Claim 1, the only independent claim, reads in pertinent part:
A system for automatically dispensing information, goods, and services for a plurality of institutions in a particular industry, comprising:
...
at least one customer sales and information terminal ...
...
said sales and information terminal including:
audio-visual means for interaction with a customer, comprising:
means for storing a sequence of audio and video information to be selectively transmitted to a customer;
means for transmitting a selected sequence of said stored information to the customer customer operated input means for gathering information from a customer....
The district court held that SABREvision did not infringe the '359 patent because it lacked the "audio-visual means" and "customer operated input means." The court also held the '359 patent invalid because it would have been obvious in light of the original SABRE system in combination with the self-service terminal disclosed in U.S. Patent 4,359,631, which issued in 1982 and was subsequently reissued as the '115 patent.
Finally, the '355 patent, which issued in 1994, discloses a system for augmenting the sales and marketing capabilities of travel agents, in conjunction with airline reservation systems, by allowing travel agents to compose individual customized sales presentations for their clients. Claim 1, the only independent claim, reads in pertinent part:
A system for automatically dispensing information, goods or services for a plurality of institutions in a particular industry, comprising:
a central data processing center including means for storing service, price rate information or sales information for each institution;
at least one merchandising apparatus ...
...
said merchandising apparatus including:
a means for composing and displaying individualized sales presentations according to determinants entered into said apparatus and based on a customer's profile and requests ...
storage means holding a plurality of randomly accessible segments of data;
...
means for selectively combining said determinants to address and retrieve at least one of said segments....
The district court held that SABREvision did not infringe the '355 patent because, inter alia, it did not compose "individualized sales presentations" or "selectively combine" customer information to retrieve its photographs. The court further held the '355 patent invalid under 35 U.S.C. § 102(b) on the ground that its claims were anticipated by the '359 patent. The '355 patent issued from a chain of applications originating with the application that issued as the '359 patent. The district court held that the '355 patent is not entitled to the filing date of the original parent application and thus concluded that the '359 patent is anticipating prior art. Lockwood now appeals to this court arguing that the district court erred in its construction of the claims of all three patents and contending that summary judgment in favor of American on each issue is precluded because genuine issues of material fact remain in dispute.
We review a district court's grant of summary judgment de novo. Conroy v. Reebok Int'l, Ltd., 14 F.3d 1570, 1575, 29 USPQ2d 1373, 1377 (Fed.Cir.1994). Summary judgment is appropriate when no genuine issue as to any material fact exists and the moving party is entitled to judgment as a matter of law. Fed.R.Civ.P. 56(c). Thus, summary judgment may be granted when no "reasonable jury could return a verdict for the nonmoving party." See Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 2510, 91 L.Ed.2d 202 (1986); Conroy, 14 F.3d at 1575, 29 USPQ2d at 1377 (). In determining whether there is a genuine issue of material fact, we view the evidence in the light most favorable to the party opposing the motion with doubts resolved in favor of the opponent. Transmatic, Inc. v. Gulton Indus., Inc., 53 F.3d 1270, 1274, 35 USPQ2d 1035, 1038 (Fed.Cir.1995).
The district court held that the asserted claims of the '359 patent would have American submitted an affidavit averring that the SABRE system was introduced to the public in 1962, had over one thousand connected sales desks by 1965, and was connected to the reservation systems for most of the other airlines by 1970. Lockwood does not dispute these facts, but argues that because "critical aspects" of the SABRE system were not accessible to the public, it could not have been prior art. American's expert conceded that the essential algorithms of the SABRE software were proprietary and confidential and that those aspects of the system that were readily apparent to the public would not have been sufficient to enable one skilled in the art to duplicate the system. However, American responds that the public need not have access to the "inner workings" of a device for it to be considered "in public use" or "used by others" within the meaning of the statute.
been obvious in light of the prior art '631 patent and the original SABRE system. A determination of obviousness under 35 U.S.C. § 103 is a legal conclusion involving factual inquiries. Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044, 1050, 5 USPQ2d 1434, 1438 (Fed.Cir.1988). Lockwood argues that the subject matter of the '359 claims would not have been obvious and that the district court impermissibly drew adverse factual inferences in concluding that the patent was invalid. Lockwood first argues that the district court erred in concluding that the SABRE system qualified as prior art.
We agree with American that those aspects of the original SABRE system relied on by the district court are prior art to the '359 patent. The district court held that SABRE, which made and confirmed reservations with multiple institutions (e.g., airlines, hotels, and car rental agencies), combined with the terminal of the '631 patent rendered the asserted claims of the '359 patent obvious. The terminal...
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