Catalina Marketing Intern. v. Coolsavings.Com

• Decision Date: 08 May 2002
• Docket Number: No. 01-1324.,01-1324.
• Citation: 289 F.3d 801
• Parties: CATALINA MARKETING INTERNATIONAL, INC., Plaintiff-Appellant, v. COOLSAVINGS.COM, INC., Defendant-Appellee.
• Court: U.S. Court of Appeals — Federal Circuit

289 F.3d 801

CATALINA MARKETING INTERNATIONAL, INC., Plaintiff-Appellant, v. COOLSAVINGS.COM, INC., Defendant-Appellee.

No. 01-1324.

United States Court of Appeals, Federal Circuit.

May 8, 2002.

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Steven Z. Szczepanski, Jenkens & Gilchrist, of Chicago, IL, argued for plaintiff-appellant. With him on the brief were Mary Jo Boldingh, Russell J. Genet, and Michael K. Nutter.

Dean D. Niro, Niro, Scavone, Haller & Niro, of Chicago, IL, argued for defendant-appellee. With him on the brief were Thomas G. Scavone and Christopher J. Lee.

Before MAYER, Chief Judge, RADER, and PROST, Circuit Judges.

RADER, Circuit Judge.

On summary judgment, the United States District Court for the Northern District of Illinois held that Coolsavings.com, Inc. (Coolsavings) did not infringe, either literally or by equivalents, the claims of Catalina Marketing International, Inc.'s (Catalina's) U.S. Patent No. 4,674,041 (the '041 patent). Catalina Mktg. Int'l, Inc. v. Coolsavings.com, Inc., No. 00C 2447, slip op. at 6-7, 2001 WL 300235 (N.D.Ill. Mar. 28, 2001). In the alternative, the district court applied prosecution history estoppel to bar Catalina from seeking equivalents on the location of the claimed terminals. Id. Because the district court erroneously relied on non-limiting language in the preamble of Claim 1 and misapplied prosecution history estoppel, this court affirms-in-part, reverses-in-part, vacates-in-part, and remands.

I.

The '041 patent, filed on September 15, 1983, claims a selection and distribution system for discount coupons. In a preferred embodiment, the system dispenses coupons to consumers at remote, kiosk-like terminals connected to a central host computer system. When a consumer activates the terminal in a retail outlet, the terminal displays available coupons on the screen. The consumer selects a coupon and a printer connected to the terminal prints it. The terminal selectively communicates with the central computer system to acquire coupon information for display. When the number of dispensed coupons for a certain product reaches a limit specified by a coupon provider, the central computer system stops providing that particular coupon. Figure 3a depicts the terminal:

NOTE: OPINION CONTAINING TABLE OR OTHER DATA THAT IS NOT VIEWABLE

There are two independent claims at issue, namely Claims 1 and 25, which read as follows:

1. A systen [sic] for controlling the selection and dispensing of product coupons at a plurality of remote terminals located at predesignated sites such as consumer stores wherein each terminal comprises:

activation means for activating such terminal for consumer transactions;

display means operatively connected with said activation means for displaying a plurality of coupons available for selection;

selection means operatively connected with said display means provided to permit selection of a desired displayed coupon by the consumer;

print means operatively connected with said selection means for printing and dispensing the coupon selected by the consumer; and

control means operatively connected with said display means for monitoring each consumer transaction and for controlling said display means to prevent the display of coupons having exceeded prescribed coupon limits.

25. A system for controlling the selection and dispensing of product coupons at a plurality of remote terminals located at predesignated sites such as consumer stores, comprising:

a plurality of free standing coupon display terminals located at predesignated sites such as consumer stores, each of said terminals being adapted for bidirectional data communication with a host central processing unit;

each of said terminals comprising

activation means for activating such terminals for consumer use by insertion of a credit card or other card having customer account information stored on a magnetic strip;

display means operatively connected with said activation means for displaying a plurality of coupons;

selection means operatively connected with said display means for providing for the selection of a desired displayed coupon by a consumer;

print means operatively connected with said selection means for printing and dispensing the coupons selected;

terminal control means operatively connected with said display means and print means for continuously monitoring each customer transaction and for controlling said display and print means in response to prescribed coupon limits;

means for storing consumer transactions and for periodically communicating customer transactions to said host central processing unit;

said host central processing unit including means for the transmitting to each terminal particular information for each coupon; and

said host central processing unit further including means for periodically transmitting to each terminal coupon limits such as and including expiration date, and total number of coupons to be dispensed.

'041 patent, col. 30, ll. 46-65 and col. 32, l. 67-col. 33, l. 36 (emphases added).

During prosecution of the '041 patent, the examiner rejected all of the original claims as obvious in light of U.S. Patent No. 4,449,186 (the Kelley patent), which disclosed a terminal system for dispensing airline tickets. The examiner concluded that the only difference between the applicants' claimed invention and the Kelley patent was the location of the coupon terminal. In response, the applicants provided a general overview of the invention and amended the structural limitations of Claims 1 and 25 to distinguish the Kelley patent. The examiner again rejected all of the pending claims.

Responsive to the second rejection, the applicants again amended Claims 1 and 25, and submitted several declarations to bolster their assertion of nonobviousness. The applicants did not amend the claim language relating to the location of the terminals. Although stating that their invention involved terminals "located in stores" for the dispensing of coupons "onsite," the applicants also did not argue that the location of the terminals in stores distinguished the invention from the Kelley patent.

Coolsavings uses a web-based coupon system to monitor and control the distribution of coupons from its www.coolsavings.com website. After registering with the coolsavings.com website and providing demographic data, users can browse the website for available coupons. Users then select and print coupons for in-store redemption. Additionally, in some cases, users may access a coupon provider's website for on-line redemption of a coupon offer for on-line products. A centralized computer system stores coupon and user data. Users may access the Coolsavings system from any Internet-accessible computer by simply logging onto the coolsavings.com website. Coolsavings received U.S. Patent No. 5,761,648 (the '648 patent) for its web-based coupon system. Catalina's '041 patent was cited during prosecution of the '648 patent.

Catalina sued Coolsavings, alleging that Coolsavings' web-based coupon system infringed the '041 patent. The district court construed the claim language "located at predesignated sites such as consumer stores," and held that Coolsavings did not infringe, either literally or by equivalents, the construed language. After determining that Coolsavings did not infringe under the doctrine of equivalents, the district court then alternatively held that prosecution history estoppel barred Catalina from seeking equivalents on the location of the terminals.

On appeal, Catalina argues that the disputed language, which appears only in the preamble of Claim 1, is not a limitation because it merely states an intended use for the claimed system. Alternatively, Catalina contends that the district court misconstrued the "located at predesignated sites such as consumer stores" claim language. In addition, Catalina asserts that prosecution history estoppel does not bar equivalents when the applicants did not amend the disputed language or argue patentability based on that language. This court has jurisdiction under 28 U.S.C. § 1295(a)(1) (1994).

II.

This court reviews a district court's grant of summary judgment without deference. Johns Hopkins Univ. v. Cellpro, Inc., 152 F.3d 1342, 1353, 47 USPQ2d 1705, 1713 (Fed.Cir.1998). Thus, this court must decide for itself "if the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to a judgment as a matter of law." Fed. R.Civ.P. 56(c); Celotex Corp. v. Catrett, 477 U.S. 317, 322, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986). In so doing, this court draws all justifiable inferences in the nonmovant's favor. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 255, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986).

Before determining whether an accused device or process infringes, a court must first construe the claim language to determine the meaning and scope of the claims. Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1454, 46 USPQ2d 1169, 1172 (Fed.Cir.1998) (en banc). Claim language defines claim scope. SRI Int'l. v. Matsushita Elec. Corp. of Am., 775 F.2d 1107, 1121, 227 USPQ 577, 585 (Fed. Cir.1985) (en banc). Generally, claim language receives its plain, ordinary meaning as used in the relevant art. Toro Co. v. White Consol. Indus., Inc., 199 F.3d 1295, 1299, 53 USPQ2d 1065, 1067 (Fed.Cir. 1999). When construing claim scope, courts may consult the specification, the prosecution history, and other relevant evidence. Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1309, 51 USPQ2d 1161, 1169 (Fed.Cir.1999). Claim construction is a question of law, which this court reviews without deference. Cybor Corp., 138 F.3d at 1456.

A.

The district court's claim construction focused solely on the phrase "located at predesignated sites such as consumer stores." This phrase appears...