Lockwood v. American Airlines, Inc., 107 F.3d 1565 (1997)
`65 USLW 2632, 41 U.S.P.Q.2d 1961
`
`
`
`KeyCite Yellow Flag - Negative Treatment
` Distinguished by Allergan, Inc. v. Alcon Inc., D.Del., December 8, 2005
`107 F.3d 1565
`United States Court of Appeals,
`Federal Circuit.
`
`Lawrence B. LOCKWOOD, Plaintiff–Appellant,
`v.
`AMERICAN AIRLINES, INC., Defendant–Appellee.
`
`No. 96–1168.
`|
`March 4, 1997.
`
`Holder of patents for computerized system of tailoring
`sales presentations to travel agents' customers brought
`action against airline, claiming that airline's computerized
`reservation system was infringing. The United States
`District Court for Southern District of California, William
`B. Enright, J., held that patents were invalid and not
`infringed, 877 F.Supp. 500, 834 F.Supp. 1246, and patent
`holder appealed. The Court of Appeals, Lourie, Circuit
`Judge, held that: (1) one patent was invalid in light of
`prior art; (2) patent claim required device with compact
`physical dimensions that could be easily transported;
`(3) patent required device that could produce audio-
`visual presentation; (4) “customer” within meaning of
`patent did not include travel agents; and (5) prosecution
`history precluded finding of infringement under doctrine
`of equivalents.
`
`Affirmed.
`
`Attorneys and Law Firms
`
`*1567 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.
`
`Opinion
`
`LOURIE, Circuit Judge.
`
`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 inval *1568 id 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) (holding the '115 and '359
`patents not infringed); Lockwood v. American Airlines,
`Inc., 877 F.Supp. 500, 34 USPQ2d 1290 (S.D.Cal.1994)
`(holding the asserted claims of the '355 patent invalid and
`not infringed); Lockwood v. American Airlines, Inc., 37
`USPQ2d 1534, 1995 WL 822659 (S.D.Cal.1995) (holding
`the '359 patent invalid). 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.
`
`BACKGROUND
`
`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:
`
` © 2017 Thomson Reuters. No claim to original U.S. Government Works.
`
`1
`
`1
`
`USAA 1055
`USAA v Asghari-Kamrani
`CBM2016-00063
`CBM2016-00064
`
`

`

`Lockwood v. American Airlines, Inc., 107 F.3d 1565 (1997)
`65 USLW 2632, 41 U.S.P.Q.2d 1961
`
`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 ...
`
`...
`
`means for transmitting a selected sequence of said
`stored information to the customer;
`
`*1569 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;
`
`said sales and information terminal including:
`
`...
`
`audio-visual means for interaction with a customer,
`comprising:
`
`means for selectively combining said determinants to
`address and retrieve at least one of said segments....
`
`means for storing a sequence of audio and video
`information to be selectively transmitted to a customer;
`
` © 2017 Thomson Reuters. No claim to original U.S. Government Works.
`
`2
`
`2
`
`

`

`Lockwood v. American Airlines, Inc., 107 F.3d 1565 (1997)
`65 USLW 2632, 41 U.S.P.Q.2d 1961
`
`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.
`
`DISCUSSION
`
`[1]
` 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 (“The moving
`party ... may discharge its burden by showing the district
`court that there is an absence of evidence to support the
`nonmoving party's case.”). 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).
`
`A. Validity
` [3]
`[2]
` The district court held that the asserted claims of
`the '359 patent would have *1570 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.
`
`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.
`
`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 of the '631 patent admittedly lacked this
`“multiple institution” feature. It is undisputed, however,
`that the public was aware that SABRE possessed this
`capability and that the public had been using SABRE to
`make travel reservations from independent travel agencies
`prior to Lockwood's date of invention.
`
`If a device was “known or used by others” in this country
`before the date of invention or if it was “in public use”
`in this country more than one year before the date of
`application, it qualifies as prior art. See 35 U.S.C. §
`102(a) and (b) (1994). Lockwood attempts to preclude
`summary judgment by pointing to record testimony that
`one skilled in the art would not be able to build and
`practice the claimed invention without access to the secret
`aspects of SABRE. However, it is the claims that define
`a patented invention. See Constant v. Advanced Micro–
`
` © 2017 Thomson Reuters. No claim to original U.S. Government Works.
`
`3
`
`3
`
`

`

`Lockwood v. American Airlines, Inc., 107 F.3d 1565 (1997)
`65 USLW 2632, 41 U.S.P.Q.2d 1961
`
`Devices, Inc., 848 F.2d 1560, 1571, 7 USPQ2d 1057,
`1064 (Fed.Cir.1988). As we have concluded earlier in this
`opinion, American's public use of the high-level aspects
`of the SABRE system was enough to place the claimed
`features of the '359 patent in the public's possession. See
`In re Epstein, 32 F.3d 1559, 1567–68, 31 USPQ2d 1817,
`1823 (Fed.Cir.1994) (“Beyond this ‘in public use or on
`sale’ finding, there is no requirement for an enablement-
`type inquiry.”). Lockwood cannot negate this by evidence
`showing that other, unclaimed aspects of the SABRE
`system were not publicly available. Moreover, the '359
`patent itself does not disclose the level of detail that
`Lockwood would have us require of the prior art. For
`these reasons, Lockwood fails to show a genuine issue of
`material fact precluding summary judgment.
`
`[4]
` Lockwood further argues that even if the SABRE
`system is effective prior art, the combination of that
`system and the '631 patent would not have yielded
`the invention of the '359 patent. The terminal in the
`claims of the '359 patent includes a number of means-
`plus-function limitations, subject to 35 U.S.C. § 112, ¶
`6, including “means for gathering information from a
`customer” and “means for storing a sequence of audio
`and video information to be selectively transmitted to
`a customer.” Means-plus-function clauses are construed
`“as limited to the corresponding structure[s] disclosed in
`the specification and equivalents thereof.” In re *1571
`Donaldson Co., 16 F.3d 1189, 1195, 29 USPQ2d 1845, 1850
`(Fed.Cir.1994) (in banc); see 35 U.S.C. § 112, ¶ 6 (1994).
`Lockwood argues that the structures disclosed in the '359
`patent differ substantially from the terminal disclosed in
`the '631 patent and that, at the very least, his expert's
`declaration raised genuine issues of material fact sufficient
`to preclude summary judgment.
`
`We do not agree. We believe that American has met
`its burden, even in light of the presumption of patent
`validity, to show that the means limitations relating to
`the terminal in the claims of the '359 patent appear in
`the '631 specification. Lockwood has failed to respond
`by setting forth specific facts that would raise a genuine
`issue for trial. Specifically, Lockwood has not alleged
`that the '631 disclosure lacks the structures disclosed
`in the '359 patent specification or their equivalents. As
`the district court noted, Lockwood's expert, Dr. Tuthill,
`relied on structures that are not mentioned in either
`the '631 or the '359 patents. For example, Tuthill states
`that the claimed invention differs from the '631 patent
`
`because the terminal described in the '631 patent uses
`a “backward-chaining” system to solve problems while
`the '359 patent uses a “forward-chaining” system. Yet
`neither the '359 nor the '631 patents mentions backward–
`or forward-chaining. Nor does the '359 specification
`describe any hardware or software structure as being
`limited to any particular problem-solving technique.
`In addition, Lockwood argues that the hardware and
`software disclosed in the two patents are not equivalent to
`each other. However, the '359 patent claims the hardware
`and software in broad terms, and the patents both
`describe similar computer controlled self-service terminals
`employing video disk players that store and retrieve
`audio-visual information. For example, with regard to
`the “means for controlling said storage and transmitting
`means,” Lockwood's expert avers that the “structure
`described in the '359 patent which corresponds to this
`means is the processor unit and the application program
`which the processor executes.” Yet, the only software
`descriptions in the '359 patent consist of high level
`exemplary functional flowcharts. Lockwood's arguments
`and his expert's statements are thus conclusory. They fail
`to identify which structures in the '359 patent are thought
`to be missing from the '631 patent disclosure. Accordingly,
`we agree with the district court that Lockwood's and his
`expert's declarations have not adequately responded to
`American's motion by raising genuine issues of material
`fact, and we therefore conclude that the district court
`properly held the asserted claims of the '359 patent to have
`been obvious as a matter of law.
`
`[5]
` Lockwood also argues that the district court erred
`in holding the '355 patent invalid as anticipated by the
`'359 patent. The '359 patent issued in 1986 from the
`first application in a chain of five applications which
`ultimately issued as the '359 patent. It is undisputed
`that the '359 patent discloses the invention ultimately
`claimed in the '355 patent. Because the third, fourth, and
`fifth applications were filed more than one year after
`the '359 patent issued, the validity of the '355 patent
`turns on whether it is entitled to the filing date of the
`second application, the relevant subject matter of which
`is undisputedly entitled to the benefit of the original
`application.
`
`[6]
` In order to gain the benefit of the filing date of an
`earlier application under 35 U.S.C. § 120, each application
`in the chain leading back to the earlier application must
`comply with the written description requirement of 35
`
` © 2017 Thomson Reuters. No claim to original U.S. Government Works.
`
`4
`
`4
`
`

`

`Lockwood v. American Airlines, Inc., 107 F.3d 1565 (1997)
`65 USLW 2632, 41 U.S.P.Q.2d 1961
`
`U.S.C. § 112. In re Hogan, 559 F.2d 595, 609, 194 USPQ
`527, 540 (CCPA 1977). The district court held that two of
`the three intervening applications failed to maintain the
`continuity of disclosure and thus concluded that the '355
`patent was not entitled to the necessary earlier filing date.
`
`used in the claims ....”), the specification must contain an
`equivalent description of the claimed subject matter. A
`description which renders obvious the invention for which
`an earlier filing date is sought is not sufficient.
`
`[12]
`that his expert's
`further argues
` Lockwood
`[11]
`[10]
`[9]
`[8]
`[7]
` Lockwood argues that the
`
`
`
`
`declaration was sufficient to raise a genuine issue of
`district court erred by looking solely at the applications
`material fact regarding what the intervening applications
`themselves. We do not agree. It is the disclosures of the
`disclosed to one skilled in the art. However, as American
`applications that count. Entitlement to a filing date does
`argues, one intervening application failed to disclose
`not extend to subject matter which is not disclosed, but
`a computer system connected to multiple vendors and
`*1572 would be obvious over what is expressly disclosed.
`another, while disclosing a central computer with a video
`It extends only to that which is disclosed. While the
`disk player, failed to disclose individual merchandising
`meaning of terms, phrases, or diagrams in a disclosure is
`apparatus that contained video disk players or other
`to be explained or interpreted from the vantage point of
`equivalent storage means. Lockwood's expert averred that
`one skilled in the art, all the limitations must appear in
`the disclosed terminal in the former application “can be
`the specification. The question is not whether a claimed
`connected” to multiple vendors and that, although the
`invention is an obvious variant of that which is disclosed
`latter application only “discusses the use of a television
`in the specification. Rather, a prior application itself
`set and a keypad at a consumer's home,” it would have
`must describe an invention, and do so in sufficient detail
`been apparent to one skilled in the art that “Lockwood
`that one skilled in the art can clearly conclude that the
`also envisioned the use of a terminal” containing a
`inventor invented the claimed invention as of the filing
`video disk player. That does not solve Lockwood's
`date sought. See Martin v. Mayer, 823 F.2d 500, 504,
`problem. Lockwood claimed a distinct invention from
`3 USPQ2d 1333, 1337 (Fed.Cir.1987) (stating that it is
`that disclosed in the specification. It is not sufficient for
`“not a question of whether one skilled in the art might be
`purposes of the written description requirement of § 112
`that the disclosure, when combined with the knowledge in
`able to construct the patentee's device from the teachings
`the art, would lead one to speculate as to modifications
`of the disclosure.... Rather, it is a question whether the
`that the inventor might have envisioned, but failed to
`application necessarily discloses that particular device.”)
`(quoting Jepson v. Coleman, 50 C.C.P.A. 1051, 314 F.2d
`disclose. Each application in the chain must describe
`533, 536, 136 USPQ 647, 649–50 (1963)). Lockwood
`the claimed features. It is undisputed that one of the
`argues that all that is necessary to satisfy the description
`intervening applications does not describe an individual
`requirement is to show that one is “in possession” of
`terminal containing a video disk player. Therefore, the
`the invention. Lockwood accurately states the test, see
`declaration by Lockwood's expert does not raise a genuine
`Vas–Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563–64, 19
`issue of material fact. The district court correctly held
`USPQ2d 1111, 1117 (Fed.Cir.1991), but fails to state how
`that the '355 patent was invalid as anticipated by the '359
`patent.
`it is satisfied. One shows that one is “in possession” of the
`invention by describing the invention, with all its claimed
`limitations, not that which makes it obvious. Id. (“[T]he
`applicant must also convey to those skilled in the art that,
`as of the filing date sought, he or she was in possession of
`the invention. The invention is, for purposes of the ‘written
`description’ inquiry, whatever is now claimed.”) (emphasis
`in original). One does that by such descriptive means
`as words, structures, figures, diagrams, formulas, etc.,
`that fully set forth the claimed invention. Although the
`exact terms need not be used in haec verba, see Eiselstein
`v. Frank, 52 F.3d 1035, 1038, 34 USPQ2d 1467, 1470
`(Fed.Cir.1995) (“[T]he prior application need not describe
`the claimed subject matter in exactly the same terms as
`
`B. Infringement
`[15]
`[14]
`[13]
` Determining whether a patent claim
`
`
`has been infringed requires a two-step analysis: “First,
`the claim must be properly construed to determine its
`scope and meaning. *1573 Second, the claim as properly
`construed must be compared to the accused device
`or process.” Carroll Touch, Inc. v. Electro Mechanical
`Sys., Inc., 15 F.3d 1573, 1576, 27 USPQ2d 1836, 1839
`(Fed.Cir.1993). Claim construction is to be determined
`by the court. Markman v. Westview Instruments, Inc.,
`517 U.S. 370, ––––, 116 S.Ct. 1384, 1387, 134 L.Ed.2d
`577, 38 USPQ2d 1461, 1463 (1996) (“We hold that the
`
` © 2017 Thomson Reuters. No claim to original U.S. Government Works.
`
`5
`
`5
`
`

`

`Lockwood v. American Airlines, Inc., 107 F.3d 1565 (1997)
`65 USLW 2632, 41 U.S.P.Q.2d 1961
`
`construction of a patent, including terms of art within its
`claim, is exclusively within the province of the court.”). In
`construing the claims, the court looks to the claims, the
`specification, the prosecution history, and, if necessary,
`extrinsic evidence. Vitronics Corp. v. Conceptronic, Inc., 90
`F.3d 1576, 1582, 39 USPQ2d 1573, 1576 (Fed.Cir.1996).
`Application of the properly construed claim to the accused
`device is a question of fact.
`
`[17]
` Second, Lockwood asserts that the term “audio-
`visual” refers to either video presentations or audio
`presentations, but not necessarily to both. We disagree.
`The '115 patent specification states that the unit displays
`travel documentaries and that a “high-quality audio-
`visual travelog can utilize practically all the human
`senses to motivate and influence a customer.” During
`prosecution, Lockwood argued:
`
`[16]
`the district court
`that
` Lockwood argues
`misconstrued all four elements of the '115 patent claims
`cited by the district court. First, Lockwood contends that,
`properly construed, the term “self-contained” means an
`“apparatus or collection of components which includes
`the materials necessary for the apparatus to function on its
`own” and that the language “easily transported” includes
`a collection of components of comparable size and weight
`to those disclosed.
`
`American argues that Lockwood's interpretation of these
`terms is flatly inconsistent with his interpretation before
`the Patent and Trademark Office (PTO). We agree.
`The limitation “self-contained apparatus dimensioned
`to be easily transported” was added after the PTO
`rejected Lockwood's claims as obvious in light of a
`business transaction computer system disclosed in U.S.
`Patent 3,705,384. In response to the rejection, Lockwood
`distinguished the prior art system, which was composed of
`multiple cabinets that filled a room, stating, “[a]pplicant's
`device, on the other hand, is a free-standing self contained
`unit which can be moved from location to location.”
`During the prosecution of the patent, Lockwood thus
`differentiated his device from the prior art because of its
`compact physical dimensions, not because of its ability
`to “function on its own.” In fact, the interpretation of
`the words “self-contained” that Lockwood now advances
`is insufficient to distinguish his invention from the prior
`art because the prior art patent also discloses a system
`that can function independently. Lockwood cannot now
`argue for an interpretation inconsistent with this earlier
`representation. “Claims may not be construed one way
`in order to obtain their allowance and in a different
`way against accused infringers.” Southwall Techs., Inc. v.
`Cardinal IG Co., 54 F.3d 1570, 1576, 34 USPQ2d 1673,
`1677 (Fed.Cir.), cert. denied, 516 U.S. 987, 116 S.Ct.
`515, 133 L.Ed.2d 424 (1995); see Unique Concepts, Inc.
`v. Brown, 939 F.2d 1558, 1562, 19 USPQ2d 1500, 1504
`(Fed.Cir.1991).
`
`Although certain alpha numeric
`data are presented in the [prior
`art] reference, and such as
`in
`airport
`terminals which display
`schedules,
`etc.,
`these are
`to
`be distinguished from applicant's
`device which actually presents brief
`travelogues and other movie-quality
`audio visual presentations to sell a
`product.
`
`Although Lockwood correctly notes that the disclosed
`terminal displays an initial selection menu that does not
`produce any sound, this menu is not referred to as an
`“audio-visual” presentation. Rather, the selection menu
`is merely a method used for choosing an “audio-visual”
`presentation. Examination of the claims, specification,
`and prosecution history leads us to conclude that the
`district court correctly interpreted this term as requiring
`a device that produces both audio and video. It is
`undisputed that the SABREvision system cannot produce
`audio presentations.
`
`[18]
`*1574
` Third, Lockwood argues that the word
`“customer” should be construed to mean “someone with
`whom you do business” and therefore that American's
`“customers” are the travel agents that use SABREvision.
`American counters that the patent itself explicitly excludes
`travel agents from the definition of “customer.” We
`agree. The specification states that the purpose of
`the invention is to replace travel agents so that the
`customer can purchase travel-related goods and services
`directly. It is “a new device capable of performing the
`promotion and sales of services such as those commonly
`dispensed by travel agencies, in a fully automated
`fashion and from easily accessible locations.” Given
`the patent specification's use of the term “customer,”
`it is clear that the accused device lacks this essential
`limitation. SABREvision is not used by, nor is it designed
`to be used by, the customers who are purchasing
`the goods and services. Lockwood does not genuinely
`
` © 2017 Thomson Reuters. No claim to original U.S. Government Works.
`
`6
`
`6
`
`

`

`Lockwood v. American Airlines, Inc., 107 F.3d 1565 (1997)
`65 USLW 2632, 41 U.S.P.Q.2d 1961
`
`dispute American's contention that SABREvision uses a
`command structure that requires experience to operate,
`nor does he argue that SABREvision is suitable for self-
`service operation by the consumers of the travel related
`goods and services.
`
`[19]
` Finally, Lockwood argues that a genuine issue
`of fact was raised regarding whether SABREvision
`has a structure equivalent to the disclosed structures
`relating to the claimed “means for accepting payment.”
`With SABREvision, a travel agent enters credit card
`information through the keyboard, which does not
`contain a magnetic card reader as disclosed in the patent.
`American argues that, as a matter of law, a keyboard
`which requires manual labor is not equivalent to a
`card reader. Lockwood replies that the card reader also
`requires manual labor; the user must pass the card
`through the reader. Even if SABREvision's keyboard
`were arguably structurally equivalent to the card reader
`disclosed in the specification, we disagree that this would
`raise a genuine issue of material fact. We have already
`determined that the district court correctly concluded
`that at least three limitations in claim 11 are not found
`in the accused device. Any error with regard to the
`presence or absence of additional limitations would be
`harmless. Thus, any dispute relating to those limitations
`is immaterial. Accordingly, we conclude that the district
`court did not err in holding that as a matter of law
`SABREvision does not literally infringe claim 11.
`
`[21]
`[20]
` Lockwood also argues that the district
`
`court erred in concluding on summary judgment that
`there was no
`infringement under the doctrine of
`equivalents. Lockwood first argues that the district court
`impermissibly imposed an equitable threshold before
`applying the doctrine. Because the court proceeded
`to apply the doctrine notwithstanding its statements
`regarding equitable factors, see Hebert v. Lisle Corp., 99
`F.3d 1109, 1117, 40 USPQ2d 1611, 1616 (Fed.Cir.1996)
`(“As discussed in Hilton Davis [Chemical Co. v. Warner–
`Jenkinson Co.], 62 F.3d [1512] at 1521, 35 USPQ2d [1641]
`at 1647–48 [(Fed.Cir.1995)], infringement by technologic
`equivalents, like literal infringement, does not have an
`equitable threshold.”), this error was harmless. After
`analyzing the prosecution history, the court correctly
`concluded that prosecution history estoppel precludes a
`finding of infringement under the doctrine of equivalents.
`
`[22]
` Prosecution history estoppel precludes a patentee
`from obtaining in an infringement suit protection for
`subject matter which it relinquished during prosecution
`in order to obtain allowance of the claims. Zenith
`Lab., Inc. v. Bristol–Myers Squibb Co., 19 F.3d 1418,
`1424, 30 USPQ2d 1285, 1290 (Fed.Cir.1994). “Whenever
`prosecution history estoppel is invoked as a limitation to
`infringement under the doctrine of equivalents, ‘a close
`examination must be made as to, not only what was
`surrendered, but also the reason for such a surrender.’
`” Insta–Foam Prods., Inc. v. Universal Foam Sys., Inc.,
`906 F.2d 698, 703, 15 USPQ2d 1295, 1298 (Fed.Cir.1990)
`(quoting *1575 Bayer Aktiengesellschaft v. Duphar Int'l
`Research B.V., 738 F.2d 1237, 1243, 222 USPQ 649, 653
`(Fed.Cir.1984)).
`
`During prosecution, Lockwood stressed the “audio-visual
`means” limitation to overcome a rejection over the
`prior art. As noted by the district court, Lockwood
`distinguished his invention from another prior art patent
`which used an alpha-numeric display, stating that it “does
`not feature any means to promote the goods or services
`by audio or audio-visual means.” Lockwood did not
`draw a distinction between alpha-numeric displays and
`graphical displays. Rather, he drew a distinction between
`purely visual displays and those that contained audio as
`well. Thus, Lockwood is estopped from asserting that
`the SABREvision display, which does not produce audio
`or audio-visual presentations, is equivalent to his audio-
`visual means.
`
`Lockwood makes similar arguments challenging the
`district court's construction of the terms “customer”
`and “audio-visual” in the '359 patent. We find these
`arguments equally unpersuasive. The claims of the
`'359 patent explicitly state that the audio-visual means
`comprises means for “transmitting a selected sequence
`of said stored information to a customer” and that the
`stored information is “a sequence of audio and video
`information.” Clearly, the claims require that both video
`and audio information be presented to the customer.
`
`In addition, the '359 pate