Catalina Marketing International, Inc. v. Coolsavings.com, Inc.
289 F.3d 801 (2002)
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Rule of Law:
A patent claim's preamble is not a limitation where the patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use, unless the patentee clearly relied on the preamble during prosecution to distinguish the invention from prior art.
Facts:
- Catalina Marketing International, Inc. (Catalina) holds U.S. Patent No. 4,674,041 ('041 patent) for a selection and distribution system for discount coupons.
- The '041 patent describes a system using remote, kiosk-like terminals connected to a central host computer.
- A preferred embodiment described in the patent specifies that these terminals would be located at predesignated sites such as consumer stores for on-site coupon dispensing.
- Coolsavings.com, Inc. (Coolsavings) operates a web-based coupon system that allows users to select and print coupons from any internet-accessible computer.
- Coolsavings' system does not use physical kiosks located in stores; instead, users access a central website from their own computers.
Procedural Posture:
- Catalina Marketing International, Inc. sued Coolsavings.com, Inc. in the U.S. District Court for the Northern District of Illinois for patent infringement.
- The district court granted summary judgment in favor of Coolsavings.
- The district court held that Coolsavings did not infringe Catalina's '041 patent, either literally or under the doctrine of equivalents, based on its construction of the claim language 'located at predesignated sites such as consumer stores.'
- As an alternative holding, the district court found that prosecution history estoppel barred Catalina from claiming infringement by equivalents regarding the location of the terminals.
- Catalina (appellant) appealed the district court's decision to the U.S. Court of Appeals for the Federal Circuit, with Coolsavings as the appellee.
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Issue:
Does a phrase in a patent claim's preamble, which describes the intended location and use of an invention, limit the scope of the claim when the claim body describes a structurally complete invention and the patentee did not rely on the phrase to overcome prior art rejections?
Opinions:
Majority - Rader, Circuit Judge
No, for Claim 1; Yes, for Claim 25. A phrase in a patent claim's preamble that merely states an intended use or location does not limit the claim's scope if the claim body describes a structurally complete invention and the patentee did not rely on the preamble to establish patentability. However, if the same phrase is repeated within the body of a claim, it becomes a binding limitation. For Claim 1, the court found the preamble phrase 'located at predesignated sites such as consumer stores' was not a limitation because the claim body described a structurally complete invention, and Catalina did not rely on this location language to distinguish its invention from prior art during patent prosecution. In contrast, for Claim 25, the same phrase was recited in both the preamble and the claim body. Its inclusion in the body made it a definitive limitation. The court also held that prosecution history estoppel did not apply because the applicants never amended the claim based on the terminal's location or argued that the location was a point of patentable distinction.
Analysis:
This decision provides a crucial framework for determining when a patent claim's preamble is limiting. It reinforces the principle that an apparatus claim is defined by its structure, not its intended use, unless that use is essential to the claim's vitality or was relied upon to secure the patent. The case distinguishes sharply between non-limiting language in a preamble and limiting language explicitly included in the claim body. This ruling guides future infringement analyses by focusing on the patentee's specific claim-drafting choices and prosecution history, preventing patentees from opportunistically arguing a broader or narrower claim scope depending on litigation needs.
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