CodePro Innovations LLC v. Safeway Inc.
MEMORANDUM ORDER re: claim construction. Signed by Judge Mary Pat Thynge on 5/14/13. (cak)
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
CODEPRO INNOVATIONS LLC,
CODEPRO INNOVATIONS LLC,
THE STOP & SHOP SUPERMARKET
COMPANY LLC AND GIANT FOOD LLC,
) C.A. No.: 12-970-MPT
) C.A. No.: 12-1482-MPT
The above-captioned matters are two patent actions initiated by Codepro
Innovations LLC (“Codepro”),1 consolidated for the purpose of a limited early claim
construction,2 against Safeway Inc. (“Safeway”),3 and also against The Stop & Shop
Supermarket Company LLL (“Stop & Shop”) and Giant Food LLC (“Giant”) (collectively
“defendants”),4 alleging infringement of U.S. Patent Nos. 5,717,866 (“the ‘866 patent”)
and 5,924,078 (“the ‘078 patent”) (collectively the “patents-in-suit”). The parties
requested early claim construction for a single claim term, “promotional code,” which is
Codepro is the assignee of both the 5,717,866 and the 5,924,078 patents. The inventor of both
patents is Walter L. Naftzger.
C.A. No.: 12-970-MPT.
C.A. No.: 12-1482-MPT.
common to both patents.5 Briefing on this issue is completed,6 and the Markman
hearing on the parties’ respective constructions on the disputed term occurred on April
22, 2013. This memorandum order sets forth the court’s construction of that term.
The patents-in-suit are related. The ‘866 patent is a divisional patent of the ‘078
patent, and issued before the ‘078 patent. Both patents share similar specifications.
Construction of the disputed claim term, promotional code, is the same for both patents.
Background and Claims of the Patents-in-Suit
The ‘078 patent, titled consumer provided promotional code actuatable point-of-
sale discounting system, was filed on June 28, 1996, and issued July 13, 1999.7 The
‘866 patent, captioned method for comparative analysis of consumer response to
product promotions, was filed on August 1, 1996 and issued February 10, 1998.8 The
patents-in-suit generally relate to point-of-sale systems which are capable of providing
discounts in response to customer usage of “promotional codes.”9 Claim 1 of the ‘078
patent as exemplary of that patent recites:
A computer-implemented discounting system for use in conjunction with a
point-of-sale transaction device comprising:
a device which accepts promotional codes entered as a series of
a memory subsystem, said memory subsystem storing information related
Although the parties filed briefs in both matters, the briefs are the same in each case.
Defendants were required to file joint briefs. As a result, reference to the docket entries in this opinion are
just to the earlier filed matter 12-970-MPT, but equally apply to the second action, 12-1482-MPT. Briefing
in the first action is as follows: Codepro’s opening brief (D.I. 99), defendants’ opening brief (D.I. 95),
Codepro’s responsive brief (D.I. 103), and defendants’ responsive brief (D.I. 101).
D.I. 104, Ex. A.
Id., Ex. B.
See id. Ex. A at 2:48-55; D.I. 96, Ex. 2 at 3:10-19.
to at least one promotion, said information comprised of a promotional
code, a product code and a discount amount for each of said at least one
a software module, coupled to said device and said memory subsystem;
said software module receiving said promotional codes entered by
customers using said device, using said information held in said memory
subsystem to determine if said entered promotional codes relates to one
or more of said at least one promotion and transmitting discount
information for said promotions related to said entered promotional codes
to said point-of-sale transaction device, and wherein said software module
compares said received promotional codes with said promotional codes
stored in said memory subsystem and, if said received promotional codes
match one of said promotional codes stored in said memory subsystem,
said software module transfers said product code and said discount
amount corresponding to said matched promotional code to said point-ofsale transactional device.10
Claim 1 of the ‘866 patent recites:
A method for comparative analysis of consumer response to product
promotions which provide discounts during point-of-sale transaction,
comprising the steps of:
storing in a memory subsystem of a computer system, a series of at least
two promotional codes and a corresponding series of at least two
promotional information entries, each one of said series of promotional
codes and corresponding one of said series of promotional information
entires related to separate promotions for a product;
determining a total number of times a first one of said series of
promotional codes is transmitted to said computer system via a user
interface, coupled to said computer system, by consumers responding to a
first promotion for said product, said consumers transmitting said first
promotional code receiving a first discount included as part of a first
promotional information entry which corresponds to said first promotional
determining a total number of times a second one of said series of
promotional codes is transmitted to said computer system via said user
interface by consumers responding to a second promotion for said
D.I. 104, Ex. A, claim 1.
product, said consumers transmitting said second promotional code
receiving a second discount included as part of a second promotional
information entry which corresponds to said second promotional code; and
comparing said total number of times said first one of said series of
promotional codes is transmitted to said computer system to said total
number of times said second one of said series of promotional codes is
transmitted to said computer system.11
“The words of a claim are generally given their ordinary and customary meaning
as understood by a person of ordinary skill in the art when read in the context of the
specification and prosecution history.”12 The claims are not read in a vacuum, but are
read in “context of the entire patent, including the specification.”13 Although claim terms
define the invention, the “specification, the prosecution history, and extrinsic evidence
concerning . . . the meaning of technical terms” help the court understand what the
disputed claim language means to one of ordinary skill in the art at the time of the
invention.14 “The best source for understanding a technical term is the specification
from which it arose, informed, as needed, by the prosecution history.”15
“There are two exceptions to this general rule: 1) when a patentee sets out a
definition and acts as his own lexicographer, or 2) when the patentee disavows the full
D.I. 96, Ex. B claim 1.
Thorner v. Sony Computer Entertainment Amer. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012)
(citing Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc)); see also Phillips, 415 F.3d
at 1313 (“We have made clear . . . that the ordinary and customary meaning of a claim term is the
meaning that the term would have to a person of ordinary skill in the art in question at the time of the
invention, i.e., as of the effective filing date of the patent application.” (citing Innova/Pure Water, Inc. v.
Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1116 (Fed. Cir. 2004)).
Phillips, 415 F.3d at 1313.
Id., 415 F.3d at 1314.
Id. 1315 (quoting Multiform Desiccants, Inc. v. Medzam, Ltd., 133 F.3d 1473, 1478 (Fed. Cir.
scope of a claim term either in the specification or during prosecution.”16 In order for a
patentee to act as his own lexicographer he “must ‘clearly set forth a definition of the
disputed claim term other than its plain and ordinary meaning.”17 An inventor has
clearly set forth a definition if the same “word [is used] in the same manner in all
embodiments.”18 A patentee may disavow claim scope “‘[w]here the specification
makes clear that the invention does not include a particular feature.’”19 This disavowal
takes the particular feature “‘outside the reach of the claims . . . even though the
language of the claims . . . might be considered broad enough to encompass the feature
In construing the term, the court must take care that it does not “read limitations
from the specification into the claims,” and does “not redefine words.”21 “It is the claims
that define the metes and bounds of the patentee’s invention, [and] [t]he patentee is free
to choose a broad term and expect to obtain the full scope of its plain and ordinary
meaning unless the patentee explicitly redefines the term or disavows its full scope.”22
“a series of characters
associated with discount
“a paperless coupon advertised as a
code that corresponds to and
promotes a product; not a customer
Thorner, 669 F.3d at 1365. See Vitronics Corp. v. Conceptronics, Inc., 90 F.3d 1576, 1582
(Fed. Cir. 1996).
Thorner, 669 F.3d at 1365 (quoting CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366
(Fed. Cir. 2002)).
Id. at 1365.
Id. at 1366 (quoting SciMed Life Sys., Inc. v. Adv. Cardiovascular. Sys., Inc., 242 F.3d 1337,
1341 (Fed. Cir. 2001)).
Id. (quoting SciMed Life Sys., 242 F.3d at1341.
Id. at 1366.
Id. at 1367.
CodePro argues its construction gives “clarity to the claim language and flows
from the language of the claims” pointing primarily to language in the field of the
invention, parts of other claims, and the four embodiments to support its admittedly
broad, plain meaning for promotional code.23 It contends defendants’ construction
violates the fundamental principles of not “reading limitations from the specification into
the claims, by importing such language as ‘paperless coupon,’ ‘advertised,’ and cannot
be ‘a customer identification code.’”24 By incorporating a negative claim limitation
regarding customer identification code, it maintains defendants attempt to rewrite the
claim term by inserting a disclaimer unsupported by the intrinsic record.25 CodePro
further contends defendants’ construction, by including “correspond to a product” and
“promote a product,” incorporates functional limitations taken from the background
section and the preferred embodiments.26 Since the specifications only describe the
problems in the prior art, those descriptions do not constitute any disavowal of claim
scope.27 In responding to defendants’ arguments, CodePro notes the claims never
D.I. 99 at 5 (citing D.I.104, Ex. A at 18:24-25 claim 1 of the ‘078 patent “a device which accepts
promotional codes entered as a series of characters”); id. (referencing D.I. 104, Ex. A. at 21:54-58 claim
24 “determines if said received codes are promotional codes and transmits discount information, for each
determined promotional code”); id. at 5-6 (citing D.I.104, Ex. A at 23:24-33 Claim 30); id. at 6 (D.I. 104, Ex.
A at 1:7-12 Field of Invention); id. ( referencing D.I. 104, Ex. A at 2:57-65 the first embodiment, and
emphasizing within this embodiment “promotional codes entered as a series of characters” and
“determines if the entered promotional codes relate to one of the promotions”); see also id. at 6-8 (further
support that promotional code consists of a series of character which are related to a discount) (emphasis
D.I. 99 at 9 (emphasis in original).
Id. at 10 (citing Amgen, Inc. v. Ariad Pharms., Inc. 577 F. Supp. 2d 724, 729 (D. Del. 2008)
(“[T]o the extent that a patentee’s claim construction is tantamount to rewriting the claims to insert a
negative claim limitation, it is noted that a negative limitation or exclusionary proviso must have basis in
the original disclosure.”).
Id. at 9.
D.I. 103 at 5.
discuss how a consumer learns of the promotional code making the limitation
“advertised” improper.28 Defendants language “corresponds to and promotes a
product,” according to CodePro, is specifically contradicted by the specifications of the
asserted patents, which contain a “variety of correlations between promotional codes,
products and other criteria . . . so that a single promotional code can correspond to
multiple products.”29 Similarly, defendants’ limitation excluding a customer identification
number is not consistent with the intrinsic evidence, as argued by CodePro, because
the only reference to a customer identification number in the specifications relates to the
discussions of the prior art reference, Valencia,30 which addresses the use of a smart
card, but provides no support for distinguishing promotional code from a customer
identification number.31 CodePro argues the difference between the inventions of the
patents and Valencia is the “manner in which information is provided to the system
(magnetic card versus manual input),” with the patents silent on differentiating between
promotional code and other types of codes or numbers.32
Defendants criticize CodePro’s approach to claim construction as violating the
Philips court admonition of “[r]ather than starting with a broad definition and whittling
down,”courts should “focus at the outset on how the patentee used the claim term in
Id. at 5 (quoting Epistar Corp. v. ITC, 566 F.3d 1321, 1335 (Fed. Cir. 2009) (“A patentee’s
discussion of the shortcomings of certain techniques is not a disavowal of the use of those techniques in a
manner consistent with the claimed invention.”).
Id. at 6 (cting D.I. 100, Ex. A at 13:28-35 (“In one embodiment of the invention, the promotional
code entries 20-N may include multiple entries having the same promotional code entered in the
promotional code filed 20-N-1 but different promotional information entered in the other fields, for example,
the product code field 20-N-4 and/or the discount field 20-N-5. By doing so, a discount for any member
of a product family may be provided by use of a single promotional code.”)) emphasis in brief).
U.S. Pat. No. 5,380,991.
D.I. 103 at 8, (citing D.I. 104, Ex. A at 2:14-19; 6:28-40).
Id. at 8.
the claims, specification, and prosecution history.”33 They point to CodePro’s cursory
reference to the ‘866 patent, and argue its preamble to claim 1 expressly limits
promotional code “to separate promotions for a product,”34 thereby limiting the scope
of the invention to product promotions, and similarly restricting the scope of promotion
code. Because of the emphasis in the specifications to address the problems of the
prior art, defendants maintain promotional code should be limited to publicly distributed
promotional codes, as well as paperless coupons for promotion of a product.35
Defendants point to the embodiments of the ‘078 patent regarding promotional
code, noting the patentee recognized his invention as the use of promotional codes in
lieu of paper coupons.36 They also maintain the prosecution history for both patents
supports their position since the patentee acknowledged promotional codes as
synonymous with paperless coupons, as evidenced by his differentiation of the prior art
reference, Weinblatt,37 and the description by the Patent Office in the online search
request form of the ‘866 patent.38
Defendants also claim that by distinguishing Valencia in the specifications, and
D.I. 101 at 2 (discussing Philips v. AWH Corp., 415 F.3d 1303, 1321 (Fed. Cir. 2005)).
Id. at 3, 9-10 (emphasis in brief).
D.I. 95 at 5 (relying on the ‘078 patent at 1:49-2:52).
Id. at 6 (citing ‘078 patent at 16:58-61).
Id. When the examiner cited U.S. Patent No. 5,515,270 (“Weinblatt”), as a prior art reference, to
overcome anticipation, the patentee argued: “Weinblatt does not offer paperless coupons or any other
type of discount . . . . einblatt has no mechanism to offer promotional codes or paperless coupons to
consumers, such that the consumer receives a discount for purchasing a product using the promotional
code. Claims 1, 3-24 and 31-39, as amended, all require a system that accepts promotional codes which
are used to deliver discounts to consumers, or the step of discounting an item based on the receipt of a
valid promotional code.” See D.I. 96, Ex. 3 at 4-5.
Id. See D.I. 96, Ex. 4 (“An advertising/promotional sales method where consumers (potential
consumers) instead of using physical coupons may by audio media . . . as well as other physical
advertising sources . . . get a product’s promotion code and give this for entry into the computer at the
point of sale and get a discount off the product just as a coupon would have.”).
Weinblatt during prosecution, the patentee disclaimed customer identification numbers
to provide discounts,39 because Valencia teaches a smart card issued to a customer,
which contains the customer’s identification number, and to overcome Weinblatt which
offered a “unique personal code,” the patentee distinguished the present invention that
uses a promotional code.40
Since the patents are related and share similar specifications and a claim term,
the court “must interpret the claim consistently across all asserted patents.”41 The term
“promotional code” appears in all independent claims of the patents-in-suit. The ‘078
patent is “a point-of-sale discounting system in which the consumer uses publicly
distributed promotional codes while the sales transaction is on-going to automatically
receive discounts on purchase goods. It is, therefore, the object of the invention to
provide such a point-of-sale discounting system.”42 The background of the invention of
the ‘078 patent describes how a consumer obtains or is aware of a promotional code.
Promotional codes are publicly distributed to consumers.43 The specification of the ‘078
patent further acknowledges the problem in the prior art it addresses, that is, the failure
“to overcome the aforenoted deficiency . . . in that discounts are not usedto attract the
consumer to the store. Instead, the discounts are made available to all consumers who
visit the store and select coupons.”44 Specifically, the prior art failed to “directly motivate
a consumer to, in response to a specific advertised promotion, visit a particular store to
D.I. 95 at 10.
Id.; see also D.I. 101 at 9.
NTP v. Research In Motion, Ltd., 418 F.3d 1282, 1293 (Fed. Cir. 2005).
D.I. 104, Ex. A at 2:48-55.
Id. at 2:50.
Id. at 2:25-27.
take advantage of the promotion.”45 Although “retailers have long relied upon the
discounting of goods as a method to attract customers” by reducing the price on
selected goods and using the media through advertisements to promote the selected
price reductions, referred to as “specials,” “advertised specials are disliked by many
retailers because of its inability to discriminate between price-conscious and casual
After a series of embodiments and aspects, the specification summarizes as
By providing the aforementioned system, a discounting system having a
number of characteristics advantageous to retailers has been designed.
Specifically, by requiring the consumer to provide a promotional code
advertised in the media in order to receive a discount upon purchasing the
advertised goods, the retailer can provide the discount only to those
consumers whose purchase is motivated by the discount while selling the
goods at full price to those consumers whose purchase is unmotivated by
the promotion. hus, the cost, to the retailer, for promoting the sale of
goods using discounts can be substantially reduced.47
Claim 1 of the ‘078 patent recites a system comprising “a device which accepts
promotional codes entered as a series of characters.48 Claim 1 also states that a
memory subsystem stores information related to at least one promotion,49 and this
information is comprised of a promotional code, a product code, and discount amount.50
It further requires “a software module coupled to said device and said memory
subsystem,” with the software module “receiving said promotional codes entered by
Id. at 2:42-44.
Id. at 1:14-17.
Id. at 18:1-12 (emphasis added).
Id. at 18:20-25.
Id. at 18:26-27.
Id. at 18:27-30.
consumers using said device.”51
Claim 1 of the ‘866 patent is a method claim “comprising the steps of . . . by
consumers responding to a first promotion for said product, said consumers transmitting
said first promotional code receiving a first discount . . . .”52 As with the ‘078 patent, the
specification of the ‘866 patent represents:
Thus, there has been described and illustrated herein, a system which
analyses [sic]customer response to product promotions based upon
consumer usage of promotional codes in connection with point-of-sale
discounting systems in which the consumer uses publicly distributed
promotional codes while the sales transaction is on-going to automatically
receive discounts on purchased goods. By providing the aforementioned
system, it is now possible to readily compare consumer response to
various advertising campaigns in which promotional codes were
distributed, thereby enabling the retailer to carefully tailor future
advertising campaigns based upon consumer usage of promotional codes
distributed in prior advertising campaigns.” 53
The use of promotional codes is part of a system to accomplish the objectives of
the patents-in-suit; it not the only means within the patented systems to meet their
objectives. Rather, it is the combinations within the claims or a series of steps that
permit retailers to distinguish between price conscious and casual consumers under the
‘078 patent, and through the ‘866 patent, allow them to compare consumer responses
to various advertising campaigns, and thereafter appropriately modify future advertising
When describing each invention as a whole, the patents state the object of each
invention is to provide a system in which the consumer uses publicly distributed
Id. at 18:31-34.
D.I. 96, Ex. 2 at 16:65-67; 17:11-14.
Id. at 16:44-56 (emphasis added).
promotional codes.54 The specification further explains in multiple references
throughout the ‘078 patent that the discounting system taught is one where the
consumer uses publicly distributed promotional codes, which differentiate groups of
consumers, the stated object of that invention.55 The ‘866 patent also teaches publicly
distributed promotional codes.56
CodePro suggests that because the claims are silent on how a consumer learns
of a promotional code, any limitation in that regard operates as improper importation
from the specification. That argument ignores Philips, which recognized that “claims
‘must be read in view of the specification, of which they are a part,’”57 as the
specification is the “highly relevant . . . single best guide to the meaning of a disputed
D.I.104, Ex. A at 2:48-55; id., Ex. B at 3:12-15.
Id., Ex. A at 2:50-51; See also id. at 11:41-44 (“The printer is most commonly used during
analysis of consumer response to advertisements which provide the promotional codes used to generate
discounts when purchasing items.); id. at 16:53-58 (“Consumers will enter the retailer’s establishment
knowing one or more promotional codes and will enter the promotional codes during point-of-sale
transactions. It is contemplated that consumers will learn the promotional codes from advertisements run
by the retailer in the print, radio or television media . . .However, should the retailer decide to associate
multiple promotional codes with a single product, considerable information regarding the success of
alternate advertising campaigns may be derived . . . .”); id. at 17:4-12 (“However, promotional code ‘123'
may be printed in an advertisement in a daily newspaper while the promotional code ‘124' may be printed
in a weekly entertainment magazine. Thus, consumers who decide to purchase the item based upon the
advertisement in the daily newspaper will use one promotional code to receive the discount while
consumers who decide to purchase the item based upon the advertisement in the weekly magazine will
use a different promotional code to receive the discount.”); id. 17:30-42 (discussing the information on the
relative success of advertising campaigns obtained through the use of promotional codes, “if 10,000
consumers entered the promotional code advertised in the daily newspaper, while only 150 consumers
entered the promotional code advertised in the weekly entertainment magazine, it may be readily
ascertained that the advertised product is not particularly appealing to the demographic group who
purchase and read the weekly entertainment magazine. Thus, by analyzing the list of promotional codes
and associated promotional code counts, a retailer may readily discern which advertising media is best
equipped to reach consumers of various goods.”).
D.I. 104, Ex. B at 3:30-36; 10:20-24; 16:44-54 (In describing the system, the patent states it is a
point-of-sale discounting system “in which the consumer uses publicly distributed promotional codes . . . to
automatically receive discounts on purchased goods,” and which allows the retailer “to readily compare
consumer response to various advertising campaigns in which the promotional codes were distributed
. . . .).
Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005) (en banc).
term.”58 Here, the specifications of the patents-in-suit in describing the present
inventions and in the written descriptions direct the manner in which consumers obtain
or are aware of promotional codes, that is, through public distribution or
Defendants’ argument that CodePro’s proposal of “a series of characters” makes
claims 1 and 16 of the ‘078 patent superfluous, and violates the tenet of giving meaning
to all terms of the claim, misstates Codepro’s entire construction, and attempts to isolate
each phrase rather than reading the proposed construction as a whole. Defendants’
argument fails to address CodePro’s modifying language that the series of characters
be associated with discount information, and ignores the language of the claims and
Claim 1 states how promotional codes are to be entered (as a series of
characters); it does not provide as an element “associated to discount information.”
Claim 16, a dependent claim, limits promotional code to a series of alpha-numeric
characters, does not provide as an element an association to discount information, and
requires a separate key to indicate that the series of alpha-numeric characters is a
promotional code. As the specification repeatedly acknowledges, promotional codes
are comprised of a series of characters which are related to discount information.60
CodePro’s proposal does not only construe a promotional code as a series of
characters, but also requires those characters be associated with discount information.
See Honeywell Int’l Inc. v. ITT Indus., Inc., 452 F.3d 1312, 1318 (Fed. Cir. 2006) (noting “the
public is entitled to take the patentee at his word”).
D.I. 104, Ex. A at 2:57-59; id. at 4:18-21; id. at 10:63-65; id. at 11:10-15; id. at 13:42-26; id. at
14:9-16; id. 14:29-35.
Regarding defendants’ arguments that construction requires the limitation
“paperless coupon,” the intrinsic record only references this term on two occasions: in
the discussion in the specification of the prior art reference “Valencia,” and in the
prosecution history of the ‘078 patent where the applicant distinguished the Weinblatt
prior art reference. Regarding Valencia, the specification claims the prior art reference
discloses a smart card “capable of electronically carrying a number of paperless
coupons.”61 When the card is inserted in a device, potential discounting information is
retrieved from the card.62 The specification distinguishes Valencia because, unlike the
‘078 patent, it does not “directly motivate a consumer to, in response to a specific
advertised promotion, visit a particular store to take advantage of the promotion.”63
Nothing in the specification’s reference to Valencia limits promotional code to a
paperless coupon. This finding equally applies to the ‘866 patent, since its discussion of
Valencia is exactly the same as the ‘078 patent.64
In distinguishing Weinblatt, the applicant argued the reference “does not offer
‘paperless coupons’ or any other type of discount for items bought by the consumer.”65
It is a system to determine the efficacy of an advertising or promotional campaign
without any associated discount.66 In differentiating Weinblatt, the applicant stated the
reference provides “no mechanism to offer promotional codes or paperless coupons to
consumers, such that the consumer receives a discount for purchasing a product using
Id. at 2:36-39.
Id. at 2:39-41.
Id. at 2:42-44.
D.I. 104, Ex. B at 2:29-59.
D.I 96, Ex. 3 at 4.
the promotional code.”67 That language does not demonstrate that the applicant
intended promotional codes to be synonymous with paperless coupons. Weinblatt was
distinguished from the ‘078 patent because the reference is not a discounting system.68
Despite defendants’ arguments to the contrary, there is no clear disavowal or disclaimer
by the patentee in the specifications or the prosecution history for the limitation
In CodePro’s objection to defendants’ proposed language of “corresponds to and
promotes a product,” it argues such language requires one-to-one correspondence
between promotional code and a product, and thereby excludes a preferred
embodiment, which allows one promotional code to correspond to multiple or a family of
products.69 Defendants rely on areas in the specification of the ‘078 patent that
promotional codes correspond to a product.70 They also point to the ‘866 patent as
additional evidence that the invention covers promotional codes corresponding to
products based on its title, its representation of the present invention and the patent’s
Id. at 5 (emphasis added).
Contrary to defendants’ argument, the language quoted from the examiner’s Search Notes
when read in context with the entire entry does not equate promotional code with paperless coupons.
Rather, it distinguishes the system in the ‘866 patent from the coupon system. Id., Ex. 4 (“Also pulls
potential customers into the store rather than coupon systems that require the customer to already be in
the store (e.g. coupon racks in store).”). Further, the Search Notes is not an analysis by the examiner in
an office action, nor a representation or disclaimer by the applicant during the patent prosecution. Rather,
they describe a search field.
D.I. 103 at 6 (citing 104, Ex. A at 13:28-35 (“In one embodiment of the invention, the
promotional code entries 20-N may includes multiple entries having the same promotional code field 20-N1 but different promotional information entered in other fields [product code and/or discount fields] . . . . By
doing so, a discount for any member of a product family may be provided by the use of a single
D.I. 95 at 9 (citing ‘078 patent at 6:61-62; 13:36-38; 16:11-12 all referencing promotional code
which corresponds to or is associated with the purchased product or a single product code, or products
corresponding to promotional codes).
All embodiments of both patents acknowledge a relationship between
promotional codes, discounts and a product or products or product promotions.72 In
each embodiment and the aspects following an embodiment, use or entry of the
promotional code or codes correspond to a discount and a product or products.73
D.I. 95 at 9-10 (citing the ‘866 patent at 1:19-22, “The present invention generally relates to
systems for comparative analysis of consumer response to product promotions and, more particularly
relates to a system which analyzes consumer response to product promotions based upon consumer
usage of promotional codes.”); D.I. 101 at 5 (referencing the ‘866 patent at 3:37-39, under the summary of
the invention, the first embodiment states “[e]ach one of the series of promotional codes/promotional
entries related to separate promotions for a product); id. at 4:4-7 (“In the second embodiment the present
invention is of a method for consumer analysis or consumer response to product promotions.”).
D.I. 96, Ex. 1 ‘078 patent at 2:57-64 (describing the first embodiment “which accepts
promotional codes . . . determines if the entered promotional codes relate to one of the promotions. If so,
discount information is transmitted . . . .”); id. at 2:67-3:1(regarding an aspect of the first embodiment, “for
each one of the promotions, a promotional code, product code and discount amount . . . .”); id. 3:9-12(“In
another aspect thereof . . . [after receiving the promotional code] the software module transfers the
product code and discount amount . . . .”); Regarding the first embodiment of the ‘078 patent, see also id.
D.I. 96, Ex. 1 ‘078 patent at 3:24-45 (concerns the second embodiment which discusses a
“discounting system” and “discounting information” in relation to promotions using promotional codes); id.
at 3:46-49, 3:53-54, 3:63-64, 4:1-2, 4:10-12 (describing aspects of the second embodiment): id. at 4:27-39
(describing the third embodiment as transmitting “discount information for each determined promotional
code”); id. at 4:41-65 (discussing aspects of the third embodiment which activate or makes up the
discounting device); id. at 4:66-5:2 (another aspect of the third embodiment “in which at least one
promotional code, together with corresponding . . . product codes and discount amounts are stored . . . .”);
id. at 5:13-29 (describing another aspect of the third embodiment which compares the product code and
discount amount corresponding to a first promotional code).
D.I. 96, Ex. 1 ‘078 patent at 5:31-45 (addressing the fourth embodiment where a series of
promotion codes is compared to a corresponding series of promotional information which result in the cost
of the point-of-sale transaction being discounted using the transmitted promotional information). All
aspects of the fourth embodiment allow a discount amount on a product if corresponded to the
promotional code. See id. at 5:46-6:6.
The first embodiment of the ‘866 patent states “[i]n the first embodiment, the present invention is
of a method for analyzing consumer response to product promotions which provide discounts during pointof-sale transactions.” See D.I. 96, Ex. 2 at 3:23-25 (emphasis added). All aspects following are
dependent. Id. at 3:39-4:3.
As to the second embodiment, “the present invention is of a method for comparative analysis of
consumer response to product promotions which provide discounts during point-of-sale transactions.” Id.
at 4:4-7 (emphasis added). The aspect following is dependent on the second embodiment.
In so finding, the court need not address defendants’ arguments that the preamble to claim 1 of
the ‘866 patent is limiting. The court is mindful, however, of Catalina Mktg. Int’l v. Coolsavings.com, Inc.,
289 F.3d 801, 808 (Fed. Cir. 2002) and Pitney Bowes, Inc. v. Hewlett-Packard,Co., 182 F.3d 1298, 1305
(Fed. Cir. 1999).
As to the final limitation proposed by defendants, that is, “not a customer
identification code,” although Valencia may have disclosed a “smart card . . . issued to
each consumer which would include the customer’s identification number,”74 no where
in the specification of either patent-in-suit did the patentee distinguish Valencia based
on a customer or personal identification code. As discussed previously herein, the
patentee pointed out this prior art reference did not encourage customers to visit a
particular store in response to an advertised promotion. Defendants’ argument that the
patentee clearly distinguished Weinblatt because it did not offer a mechanism, such as
a promotional code, for discounts to consumer, but offered a unique customer or
personal code instead, misstates the patentee’s response to the examiner’s office
action and comments.75 Rather, as previously noted, the patentee distinguished
Weinblatt system because it offered no means, “such that the consumer receives a
discount for purchasing a product using a promotional code,” where “promotional codes
. . . are used to deliver discounts,” or “the step of discounting an item based on the
receipt of a valid promotional code.”76 Nothing in the prosecution history regarding
Weinblatt warrants a negative implication or demonstrates a clear disclaimer or
Order and Disposition
At Wilmington, the 14th day of May, 2013 having reviewed the papers submitted
D.I. 96, Ex. 8 at 3:16-17.
D.I. 101 at 9.
D.I. 96, Ex. 3 at 5.
Omega Eng’g, Inc v. Raytek Corp., 334 F.3d 1314, 1325-26 (Fed. Cir. 2003) (“Rather, we have
required the alleged disavowing statements to be both so clear as to show reasonable clarity and
deliberateness . . . . Consequently, . . . our precedent requires that the alleged disavowing actions or
statements made during prosecution be both clear and unmistakable.”) (internal citations omitted).
with the parties’ proposed claim constructions, heard oral argument, and considered the
parties arguments (whether those arguments were explicitly discussed supra);
IT IS ORDERED, ADJUDGED, and DECREED the disputed claim language of
the patents-in-suit, as identified by the parties, and construed consistent with the
tenants of claim construction set forth by the United States Court of Appeals for the
Federal Circuit in Phillips v. AWH Corp., is as follows:
A series of publicly distributed or advertised characters
associated with discount information corresponding to
a product or products
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