## Facts

- Catalina owned U.S. Patent No. 4,674,041, directed to a system for selecting and dispensing discount coupons at remote terminals connected to a central host.
- A described embodiment used kiosk-like terminals at retail outlets where consumers viewed available coupons, selected them, and printed them at the terminal.
- Claim 1’s preamble referred to “remote terminals located at predesignated sites such as consumer stores.”
- Coolsavings operated a web-based coupon system accessed through users’ computers over the Internet, rather than terminals placed in consumer stores.
- Catalina alleged infringement of claims 1 and 25, both literally and under the doctrine of equivalents.

## Issues

1. Whether the location phrase in Claim 1’s preamble (“located at predesignated sites such as consumer stores”) limits Claim 1’s scope.
2. Whether Claim 25, which includes the location phrase in the body of the claim, is literally infringed by an Internet-based coupon system.
3. Whether prosecution history estoppel bars Catalina’s doctrine-of-equivalents theory concerning terminal location.

## Decision

- The Federal Circuit reversed the district court’s construction that treated Claim 1’s preamble location phrase as a claim limitation.
- The court held the Claim 1 preamble language was nonlimiting because it did not recite essential structure or steps, was not needed to understand claim body terms, and was not relied upon to distinguish prior art.
- The court affirmed summary judgment of no literal infringement of Claim 25 because the location language appears in Claim 25’s body and requires terminals at predesignated sites such as consumer stores, which Coolsavings did not use.
- The court vacated, in part, the summary judgment premised on prosecution history estoppel as applied to the doctrine of equivalents and remanded for further proceedings.
- Disposition: affirmed-in-part, reversed-in-part, vacated-in-part, and remanded.

## Legal Principles

- Preamble language is not automatically limiting; it limits a claim only when it recites essential structure or steps, is necessary to give the claim life and meaning, or was clearly relied upon during prosecution to distinguish prior art.
- Introductory language that merely states a purpose, intended use, or benefits of an otherwise structurally defined invention is generally nonlimiting absent clear reliance.
- When a location requirement is recited in the body of a claim as part of its structural limitations, it constrains claim scope and must be met for literal infringement.
- Prosecution history estoppel must be tied to the actual prosecution record and cannot be applied broadly without support; improper application can require vacatur and remand of a doctrine-of-equivalents ruling.

## Conclusion

The Federal Circuit held that Claim 1’s preamble reference to terminals at “consumer stores” did not limit claim scope, affirmed that Claim 25’s in-body location requirement defeated literal infringement by a web-based system, and vacated and remanded the doctrine-of-equivalents ruling after finding prosecution history estoppel had been applied too broadly.


Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801 (Fed. Cir. 2002)