Wednesday, November 13, 2013

Catalina Marketing International v., Inc. case brief

Catalina Marketing International v., Inc. case brief summary
289 F.3d 801 (2002)

Plaintiff patent owner sued defendant corporation, alleging that the corporation's web-based coupon system infringed on its patent. On summary judgment, the United States District Court for the Northern District of Illinois held that the corporation did not infringe, either literally or by equivalents, on the owner's patent. The court also applied prosecution history estoppel to bar the owner from seeking equivalents. The owner appealed.

The owner had a patented coupon system whereby coupons were dispensed to consumers at remote, kiosk-like terminals connected to a central host computer. The corporation obtained a patent for a system that was web-based. Two patent claims were at issue in the instant case. The corporation argued and the trial court found that the phrase, "located at predesignated sites such as consumer stores," was limiting language in the preamble.


  • The Appellate court rejected the argument.  
  • The appellate court found that the owner did not rely on the phrase to define its invention nor was the phrase essential to understand limitations or terms in the claim body. 
  • Although the specification referred to terminals located at points of sale, and even once stated that terminals might be placed in retail stores, the specification, in its entirety, did not make the location of the terminals an additional structure. 
  • The doctrine of equivalents required a factual assessment of whether the corporation's system was insubstantially different from the owner's. 
  • The owner did not surrender subject matter by making allusions to terminal location, and prosecution history estoppel did not bar the owner from seeking equivalents.


The judgment of non-infringement on one claim was vacated. On a second claim, the holding of no literal infringement was affirmed, and the holding of no infringement by equivalents was vacated and remanded. The holding that prosecution history estoppel barred equivalents was reversed.

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