Westlaw.
`
`289 F.3d 801, 62 U.S.P.Q.2d 1781
`
`(Cite as: 289 F.3d 801)
`
`P
`
`Page 1
`
`United States Court of Appeals,
`Federal Circuit.
`
`170B Federal Courts
`
`CATALINA MARKETING INTERNATIONAL,
`
`l70BXVII Courts of Appeals
`
`[1] Federal Courts 17013 C-‘-’3604(4)
`
`INC., Plaintiff—Appellant,
`v.
`
`COOLSAVINGS.COM, INC., Defendant—Appellee.
`
`No. 01-1324.
`
`May 3, 2002.
`
`Holder of patent for selection and distribution
`
`system for discount coupons brought patent
`
`in-
`
`fringement suit against firm which used a world wide
`
`web-based coupon system to monitor and control
`
`distribution of coupons from its Internet website. The
`United States District Court for the Northern District
`
`of Illinois, John W. Darrah, J., granted summary
`
`judgment to defendant, 2001 WL 300235. Plaintiff
`
`appealed. The Court of Appeals, Rader, Circuit Judge,
`
`held that: (1) phrase “located at predesignated sites
`such as consumer stores” was not a limitation on claim
`
`in which it was only part of preamble, but did limit
`
`separate claim in which it appeared in both preamble
`
`and body of claim; (2) phrase in question required
`
`designation of the physical site of the terminal before
`
`location of the terminal at a point of sale location; (3)
`
`district court's improper construction of first claim
`
`required vacatur of judgment of no literal infringe-
`
`ment; (4) web-based system did not literally infringe
`second claim that did contain limitation; and (5)
`
`prosecution history estoppel did not apply to bar claim
`
`of infringement under doctrine of equivalents.
`
`l70BXVII(K) Scope and Extent of Review
`
`l70BXVII(K)2 Standard of Review
`l70Bk3576 Procedural Matters
`
`l70Bk3604 Judgment
`
`170Bk3 604(4)
`
`k.
`
`Summary
`
`judgment. Most Cited Cases
`
`(Formerly l70Bk766)
`
`Federal Courts 170B €=*3675
`
`170B Federal Courts
`
`l70BXVII Courts of Appeals
`
`l70BXVII(K) Scope and Extent of Review
`
`l70BXVII(K)3 Presumptions
`
`l70Bk3675 k. Summary judgment.
`Most Cited Cases
`
`(Formerly l70Bk802)
`
`Court of Appeals reviews a district court's grant
`
`of summary judgment without deference, and in so
`
`doing draws all justifiable inferences in the non-
`
`movant's favor. Fed.Rules Civ.Proc.Rule 56(c), 28
`U.S.C.A.
`
`[2] Patents 291 %226.6
`
`291 Patents
`
`29 IXII Infringement
`
`Affirmed in part, reversed in part, vacated in part,
`and remanded.
`
`Matter
`
`29 lXII(A) What Constitutes Infringement
`
`29lk226.5 Substantial Identity of Subject
`
`29 lk226.6 k. Comparison with claims of
`
`West Headnotes
`
`patent. Most Cited Cases
`
`© 2014 Thomson Reuters. No Claim to Orig. US Gov. Works.
`L&H CONCEPTS 2004
`SKYHAWKE TECHNOLOGIES V. L&H CONCEPTS
`|PR2014-00437
`
`

`
`Page 2
`
`289 F.3d 801, 62 U.S.P.Q.2d 1781
`
`(Cite as: 289 F.3d 801)
`
`Before determining whether an accused device or
`
`process infringes a patent, a court must first construe
`
`the claim language to deterrnir1e the meaning and
`
`Patents 291 €>=*168(2.1)
`
`scope of the claims.
`
`291 Patents
`
`[3] Patents 291 6-—-4165(2)
`
`tent
`
`291 Patents
`
`291IX Construction and Operation of Letters Pa-
`
`29lIX(B) Limitation of Claims
`
`29lkl68 Proceedings ir1 Patent Office ir1
`
`291IX Construction and Operation of Letters Pa-
`
`tent
`
`29lIX(B) Limitation of Claims
`
`General
`
`of Claims
`
`29lkl68(2) Rejection and Amendment
`
`291k165 Operation and Effect of Claims ir1
`
`29lkl68(2.l) k.
`
`In general. Most
`
`General
`
`Cited Cases
`
`291k165(2) k. Claims as measure of
`
`patentee's rights. Most Cited Cases
`
`Patent claim language defines claim scope.
`
`When construing patent claim scope, courts may
`
`consult the specification, the prosecution history, and
`other relevant evidence.
`
`[4] Patents 291 %157(1)
`
`[6] Patents 291 €>=314(5)
`
`291 Patents
`
`291IX Construction and Operation of Letters Pa-
`
`tent
`
`291 Patents
`
`29lXII Infringement
`29lXII(B) Actions
`
`291IX(A) In General
`29lkl57 General Rules of Construction
`
`29lkl57(l) k. In general. Most Cited
`
`291k314 Hearing
`291k314(5) k. Questions of law or fact.
`Most Cited Cases
`
`Cases
`
`Generally, patent claim language receives its
`
`plain, ordinary meaning as used m the relevant art.
`
`291 Patents
`
`Patents 291 6?-‘324.5
`
`[5] Patents 291 €=>167(1)
`
`291 Patents
`
`29lXII Infringement
`29lXII(B) Actions
`
`291k324 Appeal
`
`291k324.5 k. Scope and extent of review
`
`291IX Construction and Operation of Letters Pa-
`
`in general. Most Cited Cases
`
`tent
`
`29lIX(B) Limitation of Claims
`
`Patent claim construction is a question of law,
`
`29lkl67 Specifications, Drawings, and
`
`which Court of Appeals reviews without deference.
`
`Models
`
`Cases
`
`29lkl67(l) k. In general. Most Cited
`
`[7] Patents 291 €-7165(4)
`
`© 2014 Thomson Reuters. No Claim to Orig. US Gov. Works.
`2
`
`

`
`Page 3
`
`289 F.3d 801, 62 U.S.P.Q.2d 1781
`
`(Cite as: 289 F.3d 801)
`
`291 Patents
`
`291IX(B) Limitation of Claims
`
`291IX Construction and Operation of Letters Pa-
`
`291k165 Operation and Effect of Claims in
`
`General
`
`tent
`
`291IX(B) Limitation of Claims
`
`291k165 Operation and Effect of Claims in
`
`General
`
`291k165(4) k. Reading limitations or
`
`elements into claims, or disregarding limitations or
`elements. Most Cited Cases
`
`291k165(4) k. Reading limitations or
`
`elements into claims, or disregarding limitations or
`elements. Most Cited Cases
`
`Jepson claiming in a patent generally indicates
`
`intent to use the preamble to define the claimed in-
`
`vention, thereby limiting claim scope.
`
`Whether to treat a preamble to a patent claim as a
`
`limitation is a determination resolved only on review
`
`of the entire patent to gain an understanding of what
`
`[10] Patents 291 €>='165(4)
`
`the inventors actually invented and intended to en-
`
`291 Patents
`
`compass by the claim.
`
`[3] Patents 291 €=165(4)
`
`291IX Construction and Operation of Letters Pa-
`
`tent
`
`291IX(B) Limitation of Claims
`
`291k165 Operation and Effect of Claims in
`
`291 Patents
`
`General
`
`291IX Construction and Operation of Letters Pa-
`
`291k165(4) k. Reading limitations or
`
`tent
`
`291IX(B) Limitation of Claims
`
`291k165 Operation and Effect of Claims in
`
`General
`
`291k165(4) k. Reading limitations or
`
`elements into claims, or disregarding limitations or
`elements. Most Cited Cases
`
`elements into claims, or disregarding limitations or
`elements. Most Cited Cases
`
`Dependence on a particular disputed preamble
`
`phrase for antecedent basis may limit the scope of a
`
`patent claim, because it indicates a reliance on both
`
`the preamble and claim body to define the claimed
`invention.
`
`In general, a preamble contained m a patent claim
`limits the invention if it recites essential structure or
`
`steps, or if it is necessary to give life, meaning, and
`
`[11] Patents 291 €~_-’165(4)
`
`vitality to the claim, while conversely, a preamble is
`
`291 Patents
`
`not limitir1g where a patentee defines a structurally
`
`complete invention m the claim body and uses the
`
`tent
`
`preamble only to state a purpose or intended use for
`the invention.
`
`291IX Construction and Operation of Letters Pa-
`
`291IX(B) Limitation of Claims
`
`291k165 Operation and Effect of Claims in
`
`[9] Patents 291 €b165(4)
`
`291 Patents
`
`291IX Construction and Operation of Letters Pa-
`
`tent
`
`General
`
`291k165(4) k. Reading limitations or
`
`elements into claims, or disregarding limitations or
`elements. Most Cited Cases
`
`When the preamble to a patent claim is essential
`
`© 2014 Thomson Reuters. No Claim to Orig. US Gov. Works.
`3
`
`

`
`Page 4
`
`289 F.3d 801, 62 U.S.P.Q.2d 1781
`
`(Cite as: 289 F.3d 801)
`
`to understand limitations or terms m the claim body,
`
`[14] Patents 291 €W165(4)
`
`the preamble limits claim scope.
`
`[12] Patents 291 €=>165(4)
`
`291 Patents
`
`29lIX Construction and Operation of Letters Pa-
`
`tent
`
`29lIX(B) Limitation of Claims
`
`29lkl65 Operation and Effect of Claims ir1
`
`General
`
`29lkl65(4) k. Reading limitations or
`
`291 Patents
`
`29lIX Construction and Operation of Letters Pa-
`
`tent
`
`29lIX(B) Limitation of Claims
`
`29lkl65 Operation and Effect of Claims ir1
`
`General
`
`29lkl65(4) k. Reading limitations or
`
`elements into claims, or disregarding lin1itations or
`elements. Most Cited Cases
`
`elements into claims, or disregarding lin1itations or
`elements. Most Cited Cases
`
`Preamble language which merely extols benefits
`or features of the claimed invention does not limit the
`
`When it recites additional structure or steps un-
`
`derscored as important by the specification, a pream-
`
`scope of a patent claim without clear reliance on those
`
`benefits or features as patentably significant.
`
`ble may operate as a patent claim limitation.
`
`[15] Patents 291 €=165(4)
`
`[13] Patents 291 €=>165(4)
`
`291 Patents
`
`29lIX Construction and Operation of Letters Pa-
`
`tent
`
`29lIX(B) Limitation of Claims
`
`29lkl65 Operation and Effect of Claims ir1
`
`General
`
`291kl65(4) k. Reading limitations or
`
`elements into claims, or disregarding lin1itations or
`elements. Most Cited Cases
`
`Clear reliance on the preamble durir1g patent
`
`prosecution to distinguish the claimed invention from
`
`the prior art transforms the preamble into a claim
`limitation, because such reliance indicates use of the
`
`291 Patents
`
`29lIX Construction and Operation of Letters Pa-
`
`tent
`
`29lIX(B) Limitation of Claims
`
`29lkl65 Operation and Effect of Claims ir1
`
`General
`
`29lkl65(4) k. Reading limitations or
`
`elements into claims, or disregarding lin1itations or
`elements. Most Cited Cases
`
`Prearnbles describing the use of an invention
`
`generally do not limit patent claims, because the pa-
`
`tentability of apparatus or composition claims depends
`
`on the claimed structure, not on the use or purpose of
`that structure.
`
`preamble to define, in part, the claimed invention;
`
`[16] Patents 291 €=>191
`
`without such reliance, however, a preamble generally
`
`is not
`
`limiting when the claim body describes a
`
`291 Patents
`
`structurally complete invention such that deletion of
`
`the preamble phrase does not affect the structure or
`
`steps of the claimed invention.
`
`29lX Title, Conveyances, and Contracts
`
`29lX(A) Rights of Patentees ir1 General
`
`29lkl9l k. Rights and powers of patentees
`
`as to making, use, or sale of invention. Most Cited
`
`© 2014 Thomson Reuters. No Claim to Orig. US Gov. Works.
`4
`
`

`
`Page 5
`
`289 F.3d 801, 62 U.S.P.Q.2d 1781
`
`(Cite as: 289 F.3d 801)
`
`Cases
`
`The inventor of a machine is entitled to the benefit
`
`of all the uses to which it can be put, no matter whether
`he had conceived the idea of the use or not; more
`
`291k165(4) k. Reading limitations or
`
`elements into claims, or disregarding limitations or
`elements. Most Cited Cases
`
`Preamble phrase “located at predesignated sites
`
`specifically, this means that a patent grants the right to
`
`such as consumer stores,” as used ir1 claim of patent
`
`exclude others from making, using, selling, offerir1g to
`
`for selection and distribution system for discount
`
`sale, or importir1g the claimed apparatus or composi-
`
`coupons, did not constitute a limitation of claim; ap-
`
`tion for any use of that apparatus or composition,
`
`plicant did not rely on phrase to define invention, nor
`
`whether or not the patentee envisioned such use. 35
`U.S.C.A. § 271.
`
`[17] Patents 291 €P165(4)
`
`291 Patents
`
`was phrase essential to understand lin1itations or terms
`
`in the claim body, specification in its entirety did not
`make the location of the terminals an additional
`
`structure for the claimed terminals, and applicant did
`
`not rely on preamble phrase to distinguish over ex-
`
`isting patent durir1g patent prosecution.
`
`291IX Construction and Operation of Letters Pa-
`
`tent
`
`[19] Patents 291 €=165(4)
`
`291IX(B) Limitation of Claims
`
`291k165 Operation and Effect of Claims in
`
`291 Patents
`
`General
`
`291k165(4) k. Reading limitations or
`
`tent
`
`291IX Construction and Operation of Letters Pa-
`
`elements into claims, or disregarding limitations or
`elements. Most Cited Cases
`
`291IX(B) Limitation of Claims
`
`291k165 Operation and Effect of Claims in
`
`General
`
`Statements of intended use or asserted benefits m
`
`291k165(4) k. Reading limitations or
`
`a preamble may,
`
`ir1 rare instances,
`
`limit apparatus
`
`claims, but only if the patent applicant clearly and
`
`unmistakably relied on those uses or benefits to dis-
`
`elements into claims, or disregarding limitations or
`elements. Most Cited Cases
`
`tinguish prior art, and likewise, this principle does not
`
`Phrase “located at predesigr1ated sites such as
`
`mean that apparatus claims necessarily prevent a
`
`consumer stores,” which was used in both preamble
`
`subsequent inventor from obtaining a patent on a new
`
`to, and body of, claim of patent for selection and dis-
`
`method of using the apparatus where that new method
`is useful and nonobvious.
`
`tribution system for discount coupons, operated as a
`claim limitation.
`
`[13] Patents 291 €:>165(4)
`
`[20] Patents 291 €:v101(3)
`
`291 Patents
`
`291 Patents
`
`291IX Construction and Operation of Letters Pa-
`
`tent
`
`291IV Applications and Proceedings Thereon
`291k101 Claims
`
`291IX(B) Limitation of Claims
`
`291k165 Operation and Effect of Claims in
`
`291k101(3) k. Limitations in general. Most
`Cited Cases
`
`General
`
`© 2014 Thomson Reuters. No Claim to Orig. US Gov. Works.
`5
`
`

`
`Page 6
`
`289 F.3d 801, 62 U.S.P.Q.2d 1781
`
`(Cite as: 289 F.3d 801)
`
`Phrase “located at predesignated sites such as
`
`consumer stores,” as used in claim of patent for se-
`
`To prove patent infringement, the patentee must
`show that the accused device meets each claim limi-
`
`lection and distribution system for discount coupons,
`
`tation either literally or under the doctrine of equiva-
`
`required designation of the physical site of the termi-
`
`lents; “literal infringement” requires the patentee to
`
`nal before location of the terminal at a poir1t of sale
`location.
`
`[21] Patents 291 (#2265
`
`291 Patents
`
`291XII Infringement
`
`prove that the accused device contains each limitation
`
`of the asserted claim, while infringement under the
`
`“doctrine of equivalents” requires the patentee to
`
`prove that the accused device contains an equivalent
`
`for each limitation not literally satisfied.
`
`[23] Patents 291 €>=»314(5)
`
`291XII(A) What Constitutes Ir1fringement
`
`291k226.5 Substantial Identity of Subject
`
`291 Patents
`
`Matter
`
`291k226.6 k. Comparison with claims of
`
`patent. Most Cited Cases
`
`After claim construction, fact finder m a patent
`
`infringement suit compares the properly construed
`
`291XII Infringement
`291XII(B) Actions
`
`291k314 Hearing
`291k314(5) k. Questions of law or fact.
`Most Cited Cases
`
`claims to the accused device or process.
`
`A determination of patent infringement, whether
`
`[22] Patents 291 €b226.6
`
`291 Patents
`
`291XII Ir1fringement
`
`291XII(A) What Constitutes Infringement
`
`291k226.5 Substantial Identity of Subject
`
`Matter
`
`literal or under the doctrine of equivalents, is a ques-
`tion of fact.
`
`[24] Patents 291 €>=323.2(2)
`
`291 Patents
`
`291XII Ir1fringement
`291XII(B) Actions
`
`291k226.6 k. Comparison with claims of
`
`291k323 Final Judgment or Decree
`
`patent. Most Cited Cases
`
`Patents 291 %237
`
`291 Patents
`
`291XII Ir1fringement
`
`291XII(A) What Constitutes Ir1fringement
`291k233 Patents for Machines or Manu-
`
`factures
`
`291k237 k. Substitution of equivalents.
`Most Cited Cases
`
`291k323.2 Summary Judgment
`291k323.2(2) k. Presence or absence
`of fact issues. Most Cited Cases
`
`Summary judgment of no literal infringement is
`
`proper in a patent infringement suit when, construing
`the facts in a manner most favorable to the non-
`
`movant, no reasonable jury could find that the accused
`
`system meets every limitation recited m the properly
`construed claims. Fed.Rules Civ.Proc.Rule 56(c), 28
`U.S.C.A.
`
`[25] Patents 291 €:*234
`
`© 2014 Thomson Reuters. No Claim to Orig. US Gov. Works.
`6
`
`

`
`289 F.3d 801, 62 U.S.P.Q.2d 1781
`
`(Cite as: 289 F.3d 801)
`
`291 Patents
`
`291XII Ir1fringement
`
`291XII(A) What Constitutes Infringement
`291k233 Patents for Machines or Manu-
`
`factures
`
`Cited Cases
`
`291k234 k. Identity in general. Most
`
`between the two are insubstantial to one of ordinary
`
`Page 7
`
`291k237 k. Substitution of equivalents.
`Most Cited Cases
`
`An element in the accused product is equivalent
`
`to a patent claim limitation, so that infringement under
`
`doctrine of equivalents may exist, if the differences
`
`skill m the art; insubstantiality may be determined by
`
`whether the accused device performs substantially the
`
`same function ir1 substantially the same way to obtain
`the same result as the claim limitation.
`
`Competitor's world wide web-based system for
`
`monitoring and controlling the distribution of coupons
`
`for its Internet website did not designate, or even
`
`recognize, the physical position of computers con-
`
`[23] Patents 291 <'P16s(2.1)
`
`necting to its website, and thus did not literally in-
`
`fringe claim of patent for selection and distribution
`
`291 Patents
`
`system for discount coupons that was to be “located at
`
`predesigr1ated sites such as consumer stores,” under
`
`tent
`
`which physical position of terminal had to be desig-
`
`nated before its placement at a poir1t of sale location.
`
`291IX Construction and Operation of Letters Pa-
`
`291IX(B) Limitation of Claims
`
`291k168 Proceedings ir1 Patent Office ir1
`
`[26] Patents 291 €22.37
`
`291 Patents
`
`291XII Infringement
`
`General
`
`of Claims
`
`Cited Cases
`
`291k168(2) Rejection and Amendment
`
`291k168(2.l) k.
`
`In general. Most
`
`291XII(A) What Constitutes Infringement
`291k233 Patents for Machines or Manu-
`
`factures
`
`291k237 k. Substitution of equivalents.
`Most Cited Cases
`
`Patents 291 £33237
`
`291 Patents
`
`291XII Ir1fringement
`
`An accused device that does not literally infrir1ge
`
`a patent claim may still infringe under the doctrine of
`
`equivalents if each limitation of the claim is met m the
`
`accused device either literally or equivalently.
`
`[27] Patents 291 6:237
`
`291 Patents
`
`291XII Ir1fringement
`
`291XII(A) What Constitutes Infringement
`291k233 Patents for Machines or Manu-
`
`factures
`
`291XII(A) What Constitutes Ir1fringement
`291k233 Patents for Machines or Manu-
`
`factures
`
`291k237 k. Substitution of equivalents.
`Most Cited Cases
`
`Prosecution history estoppel prevents the doctrine
`
`of equivalents from recapturing subject matter sur-
`
`rendered durir1g patent prosecution, and relevant in-
`
`quiry is whether a competitor would reasonably be-
`
`lieve that the applicant had surrendered the relevant
`
`subject matter.
`
`© 2014 Thomson Reuters. No Claim to Orig. US Gov. Works.
`7
`
`

`
`Page 8
`
`289 F.3d 801, 62 U.S.P.Q.2d 1781
`
`(Cite as: 289 F.3d 801)
`
`[29] Patents 291 €3314(5)
`
`would distinguish invention from prior art.
`
`291 Patents
`
`291XII Infringement
`291XII(B) Actions
`
`291k314 Hearing
`291k314(5) k. Questions of law or fact.
`Most Cited Cases
`
`Patents 291 €#'324.5
`
`291 Patents
`
`291XII Infringement
`291XII(B) Actions
`
`291k324 Appeal
`
`291k324.5 k. Scope and extent of review
`
`ir1 general. Most Cited Cases
`
`Patents 291 €;328(2)
`
`291 Patents
`
`291XIII Decisions on the Validity, Construction,
`
`and Infringement of Particular Patents
`29lk328 Patents Enumerated
`
`291k328(2) k. Original utility. Most Cited
`
`Cases
`
`4,449,186, 4,674,041. Cited.
`
`*804 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.
`
`Applicability of prosecution history estoppel in a
`
`Dean D. Niro, Niro, Scavone, Haller & Niro, of Chi-
`
`patent infringement suit is a legal question, which
`
`Court of Appeals reviews without deference.
`
`cago, IL, argued for defendant-appellee. With him on
`
`the brief were Thomas G. Scavone and Christopher J.
`Lee.
`
`[30] Patents 291 €:168(3)
`
`291 Patents
`
`291IX Construction and Operation of Letters Pa-
`
`tent
`
`Before MAYER, Chief Judge, RADER, and PROST,
`
`Circuit Judges.
`
`RADER, Circuit Judge.
`
`291IX(B) Limitation of Claims
`
`291k168 Proceedings ir1 Patent Office ir1
`
`On summary judgment, the United States District
`Court for the Northern District of Illir1ois held that
`
`General
`
`Coolsavings.com, Inc. (Coolsavings) did not infringe,
`
`291k168(3) k. Rejection and amend-
`
`either literally or by equivalents, the claims of Cata-
`
`ment of claims of particular patents. Most Cited Cases
`
`lina Marketing International, Inc.'s (Catalir1a's) U.S.
`
`Patent No. 4,674,041 (the '041 patent). Catalina Mktg.
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`Limitation of claim of patent for selection and
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`Int'l, Inc. V. Coolsavings.com, Inc., No. 00C 2447, slip
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`distribution system for discount coupons to systems
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`op. at 6-7, 2001 WL 300235 (N.D.Ill. Mar.28, 2001).
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`“located at predesignated sites such as consumer
`
`In the alternative, the district court applied prosecution
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`stores” was not a surrender of subject matter durir1g
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`prosecution of patent, so that patentee was not barred
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`history estoppel to bar Catalina from seeking equiva-
`lents on the location of the claimed terminals. Id.
`
`under prosecution history estoppel from asserting
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`Because the district court erroneously relied on
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`doctrine of equivalents as basis for infringement of
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`non-lin1iting language m the preamble of Claim 1 and
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`patent; language in question was not amended, and
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`misapplied prosecution history estoppel,
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`this court
`
`applicant did not argue that location of terminals
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`affirms-in-part, reverses-in-part, vacates-in-part, and
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`289 F.3d 801, 62 U.S.P.Q.2d 1781
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`(Cite as: 289 F.3d 801)
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`remands.
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`*805 I.
`
`The ‘O41 patent, filed on September 15, 1983,
`
`claims a selection and distribution system for discount
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`coupons. In a preferred embodiment, the system dis-
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`penses coupons to consumers at remote, kiosk-like
`
`terminals connected to a central ho st computer system.
`When a consumer activates the terminal m a retail
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`outlet, the terminal displays available coupons on the
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`Page 9
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`screen. The consumer selects a coupon and a printer
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`connected to the terminal prints it. The terminal se-
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`lectively communicates with the central computer
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`system to acquire coupon information for display.
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`When the number of dispensed coupons for a certain
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`product reaches a limit specified by a coupon provid-
`
`er, the central computer system stops providing that
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`particular coupon. Figure 3a depicts the terminal:
`
`
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`There are two independent claims at
`
`issue,
`
`namely Claims 1 and 25, which read as follows:
`
`selection means operatively connected with said
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`pons available for selection;
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`1. A systen [sic] for controlling the selection and
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`dispensing of product coupons at a plurality of re-
`
`mote terminals located at predesignated sites such
`as consumer stores wherein each terminal com-
`
`prises:
`
`activation means for activating such terminal for
`consumer transactions;
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`display means operatively connected with said
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`activation means for displaying a plurality of cou-
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`display means provided to permit selection of a de-
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`sired displayed coupon by the consumer;
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`print means operatively connected with said se-
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`lection means for printing and dispensing the cou-
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`pon selected by the consumer; and
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`control means operatively connected with said
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`display means
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`for monitoring each consumer
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`transaction and for controlling said display means to
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`prevent the display of coupons having exceeded
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`prescribed coupon limits.
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`289 F.3d 801, 62 U.S.P.Q.2d 1781
`
`(Cite as: 289 F.3d 801)
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`*806 25. A system for controllir1g the selection and
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`dispensing of product coupons at a plurality of re-
`
`mote terminals located at predesignated sites such
`
`as consumer stores, comprising:
`
`a plurality of free standing coupon display ter-
`
`minals located at predesignated sites such as con-
`
`sumer stores, each of said terminals being adapted
`for bidirectional data communication with a host
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`Page 10
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`said host central processing unit including means
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`for the transmitting to each terminal particular in-
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`formation for each coupon; and
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`said host central processing unit f11rther including
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`means for periodically transmitting to each terminal
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`coupon limits such as and including expiration date,
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`and total number of coupons to be dispensed.
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`‘O41 patent, col. 30,
`
`11. 46-65 and col. 32,
`
`l.
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`central processing unit;
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`67—col. 33, l. 36 (emphases added).
`
`each of said terminals comprising
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`Durir1g prosecution of the ‘O41 patent, the exarn-
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`activation means for activating such terminals for
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`consumer use by insertion of a credit card or other
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`card having customer account information stored on
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`a magnetic strip;
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`display means operatively connected with said
`
`activation means for displaying a plurality of cou-
`pons;
`
`selection means operatively connected with said
`
`display means for providing for the selection of a
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`desired displayed coupon by a consumer;
`
`print means operatively connected with said se-
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`lection means for printing and dispensing the cou-
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`pons selected;
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`terminal control means operatively connected
`
`with said display means and print means for con-
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`tinuously monitoring each customer transaction and
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`for controlling said display and print means ir1 re-
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`sponse to prescribed coupon limits;
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`means for storing consumer transactions and for
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`periodically communicating customer transactions
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`to said host central processing unit;
`
`iner rejected all of the original claims as obvious ir1
`
`light of U.S. Patent No. 4,449,186 (the Kelley patent),
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`which disclosed a terminal system for dispensing
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`airline tickets. The examiner concluded that the only
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`difference between the applicants‘ claimed invention
`
`and the Kelley patent was the location of the coupon
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`terminal. In response, the applicants provided a gen-
`eral overview of the invention and amended the
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`structural limitations of Claims 1 and 25 to distinguish
`
`the Kelley patent. The examiner again rejected all of
`
`the pending claims.
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`Responsive to the second rejection, the applicants
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`again amended Claims 1 and 25, and submitted sev-
`eral declarations to bolster their assertion of nonob-
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`viousness. The applicants did not amend the claim
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`language relating to the location of the terminals.
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`Although stating that their invention involved termi-
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`nals “located ir1 stores” for the dispensing of coupons
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`“on-site,” the applicants also did not argue that the
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`location of the terminals ir1 stores distinguished the
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`invention from the Kelley patent.
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`Coolsavir1gs uses a web-based coupon system to
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`monitor and control the distribution of coupons from
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`its www.coolsavir1gs.com website. After registering
`
`with the coolsavir1gs.com website and providing de-
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`mographic data, users can browse the website for
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`available coupons. Users then select and print coupons
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`Page 11
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`289 F.3d 801, 62 U.S.P.Q.2d 1781
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`(Cite as: 289 F.3d 801)
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`for in-store redemption. Additionally, in some cases,
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`answers to interrogatories, and admissions on file,
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`users may access a coupon provider's website for
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`together with the affidavits, if any, show that there is
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`on-lir1e redemption of a coupon offer for on-line
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`no genuine issue as to any material fact and that the
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`products. A centralized computer system stores cou-
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`moving party is entitled to a judgment as a matter of
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`pon and user data. Users may access the Coolsavings
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`*807 system from any Intemet-accessible computer
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`by simply logging onto the coolsavir1gs.com website.
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`Coolsavings received U.S. Patent No. 5,761,648 (the
`
`'648 patent) for its web-based coupon system. Cata-
`
`lina's ‘O41 patent was cited during prosecution of the '
`
`648 patent.
`
`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).
`
`[2] [3][4] [5] [6] Before determining whether an
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`Catalina
`
`sued Coolsavings,
`
`alleging
`
`that
`
`accused device or process infringes, a court must first
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`Coolsavir1gs' web-based coupon system infringed the
`
`construe the claim language to determine the meaning
`
`'041 patent. The district court construed the claim
`
`language “located at predesigr1ated sites such as con-
`
`and scope of the claims. Cybor Corp. V. FAS Techs.,
`Inc., 138 F.3d 1448, 1454, 46 USPQ2d 1169, 1172
`
`sumer stores,” and held that Coolsavings did not in-
`
`(Fed.Cir.1998) (en banc ). Claim language defines
`
`fringe, either literally or by equivalents, the construed
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`language. After determining that Coolsavings did not
`
`claim scope. SRI Int’l. V. Matsushita Elec. Corp. of
`Am., 775 F.2d 1107, 1121, 227 USPQ 577, 585
`
`infringe under the doctrine of equivalents, the district
`
`(Fed.Cir.1985) (en banc ). Generally, claim language
`
`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 m 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 equiv-
`
`alents when the applicants did not amend the disputed
`
`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 construc-
`
`tion is a question of law, which this court reviews
`
`without deference. Cybor Corp., 138 F.3d at 1456.
`
`The district court's claim construction focused
`
`A.
`
`language or argue patentability based on that lan-
`
`solely on the phrase “located at predesignated sites
`
`guage. This court has jurisdiction under 28 U.S.C. §
`1295(a)(1) (1994).
`
`such as consumer stores.” This phrase appears m the
`
`preamble of Claim 1, and m both the preamble and
`
`II.
`
`[1] This court reviews a district court's grant of
`
`summary judgment without deference. Johns Hopkins
`
`Inc., 152 F.3d 1342, 1353, 47
`Univ. V. Cellpro,
`USPQ2d 1705, 1713 (Fed.Cir.1998). Thus, this court
`
`body of Claim 25. The district court construed this
`
`disputed phrase without discussion as to whether the
`
`*808 phrase, which appears only m the preamble of
`Claim 1, was indeed a limitation of Claim 1.
`
`[7] Whether to treat a preamble as a limitation is a
`
`must decide for itself “if the pleadings, depositions,
`
`determination “resolved only on review of the entire[ ]
`
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`Page 12
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`289 F.3d 801, 62 U.S.P.Q.2d 1781
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`(Cite as: 289 F.3d 801)
`
`patent to gain an understanding of what the inven-
`
`vention, the invention so defined, and not some other,
`
`tors actually invented and intended to encompass by
`
`is the one the patent protects.”). Likewise, when the
`
`the claim.” Corning Glass Works V. Sumitomo Electric
`U.S.A., Inc., 868 F.2d 1251, 1257, 9 USPQ2d 1962,
`
`preamble is essential
`
`to understand limitations or
`
`terms in the claim body, the preamble limits claim
`
`1966 (Fed.Cir.1989); see also Applied Materials, Inc.
`V. Advanced Semiconductor Materials Am., Inc., 98
`
`F.3d 1563, 1572-73, 40 USPQ2d 1481,
`
`1488
`
`(Fed.Cir.1996)
`
`(“Whether a preamble stating the
`
`purpose and context of the invention constitutes a
`
`limitation of the claimed process is determined on the
`
`facts of each case in light of the overall form of the
`
`claim, and the invention as described m the specifica-
`
`tion and illuminated in the prosecution history.”).
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`scope. Pitney Bowes, 182 F.3d at 1306.
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`[12] Further, when reciting additional structure or
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`steps underscored as important by the specification,
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`the preamble may operate as a claim limitation.
`
`Corning Glass, 868 F.2d at 1257 (lin1iting claim scope
`
`to “optical waveguides” rather than all optical fibers ir1
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`light of specification); General Electric Ca. V. Nin-
`tendo Co., 179 F.3d 1350, 1361-62, 50 USPQ2d
`
`1910, 1918-19 (Fed.Cir.1999) (limitir1g claim scope
`
`[8] In general, a preamble limits the invention if it
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`to a “raster scarmed display device” rather than all
`
`recites essential structure or steps, or if it is “necessary
`
`display systems in view of specification's focus on the
`
`to give life, meaning, and vitality” to the claim. Pitney
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`prior art problem of displaying binary data on a raster
`
`Bowes, 182 F.3d at 1305. Conversely, a preamble is
`
`scan display device); Rowe, 112 F.3d at 479-80; Ap-
`
`not limiting “where a patentee defines a structurally
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`plied Materials, 98 F.3d at 1573.
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`complete invention m the claim body and uses the
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`preamble only to state a purpose or intended use for
`the invention.” Rowe V. Dror, 112 F.3d 473, 478, 42
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`USPQ2d 1550, 1553 (Fed.Cir.1997).
`
`[13][14] Moreover, clear reliance on the preamble
`
`during prosecution to distinguish the claimed inven-
`
`tion from the prior art transforms the preamble into a
`claim limitation because such reliance indicates use of
`
`[9][10][11] No litmus test defines when a pre