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Catalina Marketing International, Inc. v. Coolsavings.com, Inc.

Summary judgment of noninfringement vacated in part because court erroneously construed as "limiting" a phrase in the preamble of one of plaintiff's claims; judgment of noninfringement as to second claim affirmed because defendant's system did not literally infringe second claim as properly construed; case remanded to determine whether there was infringement under doctrine of equivalents.

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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 (N.D. Ill. Mar. 27, 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:

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