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

289 F.3d 801 (2002)

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Nature of the Case

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Facts

P's '041 patent claims a selection and distribution system for discount coupons. The system dispenses coupons to consumers at remote, kiosk-like terminals connected to a central host computer system. During prosecution of the '041 patent, the examiner rejected all of the original claims as obvious in light of Patent '186 (the Kelley patent), which disclosed a terminal system for dispensing airline tickets. The examiner concluded that the only difference between P's claimed invention and the Kelley patent was the location of the coupon terminal. P 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. P 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 'on-site,' P also did not argue that the location of the terminals in stores distinguished the invention from the Kelley patent. D uses a web-based coupon system to monitor and control the distribution of coupons from its website. D received Patent '648 patent for its web-based coupon system. P's '041 patent was cited during the prosecution of the '648 patent. P sued D alleging infringement the '041 patent. The district court construed the claim language 'located at predesignated sites such as consumer stores,' and held that D did not infringe, either literally or by equivalents. The court also held that prosecution history estoppel barred P from seeking equivalents on the location of the terminals. P appealed. P 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. P 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.