Unique Coupons, Inc. v. Northfield Corp.

12 F. App'x 928
CourtCourt of Appeals for the Federal Circuit
DecidedJune 13, 2001
DocketNos. 00-1300, 00-1314, 00-1315
StatusPublished
Cited by3 cases

This text of 12 F. App'x 928 (Unique Coupons, Inc. v. Northfield Corp.) is published on Counsel Stack Legal Research, covering Court of Appeals for the Federal Circuit primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Unique Coupons, Inc. v. Northfield Corp., 12 F. App'x 928 (Fed. Cir. 2001).

Opinion

DECISION

LOURIE, Circuit Judge.

Northfield Corporation and Menasha Corporation appeal from the judgment of the United States District Court for the Northern District of Illinois holding that they infringed claim 1 of U.S. Patent 5,079,901 and claim 20 of U.S. Patent 5,588,280 under the doctrine of equivalents. Unique Coupons, Inc. v. Menasha Corp., No. 96-C-7532, 1999 U.S. Dist. LEXIS 21744 (N.D.Ill. Sept. 2, 1999) (“Unique II”). Unique Coupons, Inc. cross-appeals from the district court’s damages award, its denial of Unique’s motion to find willful infringement, and its modification of the permanent injunction to allow Northfield and Menasha to continue to use and resell their existing devices. Because the district court erred in its construction of the claims of the ’901 and ’280 patents, and Northfield does not infringe those patents as a matter of law, we reverse.

[930]*930BACKGROUND

Unique is the exclusive licensee of the ’901 and ’280 patents, which relate to devices used to insert coupons from a continuous coupon web into packages such as cereal cartons. Agreement of Jan. 1,1991. The assignee of the patents, Carol Witt, is the sole owner of Unique. Unique II at * 5. Ms. Witt entered into a patent license agreement with Unique, which granted Unique “the sole, exclusive and worldwide right and license to use the Patents and Technical Information to make, have made, use,- develop, commercialize, market and sell Licensed Products.” Agreement of Jan. 1, 1991, § 2.1. The agreement also gave Unique the right to sue infringers, sublicense, and assign the patents, the latter two rights being subject to Witt’s approval. Id. at §§ 2.2, 6.1, 8. Unique paid Witt a paid-up license fee of $27,381.74 for five years under a license agreement of May 1, 1990, which was acknowledged in the subsequent January 1, 1991 agreement as the same license fee for that later agreement. Id. at § 5.1. Unique also paid Witt royalties until the 1991 agreement was amended to be royalty-free on January 1,1992.

Northfield manufactures the Northfield Model 1600 (“Model 1600”). Unique II at *11. Menasha markets and distributes the Model 1600 for rental and sale. Id. at *30.

Two patent claims are at issue on appeal and read as follows:

1. A method for positioning coupons, one at a time, at a predetermined location at a predetermined time, each of said coupons having a leading edge and a trailing edge, said coupons being provided as a stream of coupons in a continuous web with a forward-most coupon having its trailing edge connected to the leading edge of the next coupon in said continuous web by a weakened web portion extending transversely of said web, and each successive coupon being similarly connected in said web, said method comprising the steps of: providing a timing signal related to said predetermined time at which said for-wardmost coupon is to be positioned at said predetermined location; sensing the presence of and the absence of a coupon at a sensing position along a coupon path relative to said predetermined location;
advancing said continuous web along said coupon path toward said predetermined location in response to said timing signal and sensing the presence of said forwardmost coupon at said sensing position;
bursting said forwardmost coupon from the next coupon in said continuous web along said weakened web portion while at least a portion of said forwardmost coupon is at said coupon sensing position;
moving said forwardmost coupon toward said predetermined location at a predetermined speed, whereby said forward-most coupon is positioned relative to said predetermined location at said predetermined time; and arresting travel of said continuous web upon the sequential sensing of the absence of said forwardmost coupon and then the presence of the next succeeding coupon at said sensing position.

’901 patent, col. 13, I. 40 to col. 14, I. 6 (emphasis added).

20. A method of delivering coupons, one at a time, to moving containers as the containers move past a predetermined point of insertion, the coupons being provided in a continuous web wherein a trailing edge of a forwardmost coupon is detachably connected to a leading edge of a successive coupon by a [931]*931weakened separable portion there between and wherein each coupon after the successive coupon is similarly connected in the web, the method thereby manufacturing containers having coupons therein and comprising the steps of:
sensing the movement of the containers relative to the predetermined point of insertion and generating a timing signal based upon the movement of the containers, the timing signal pertaining to when one of the containers will be at the predetermined point of insertion; sensing the presence and absence of the forwardmost coupon at a sensing position and generating a sensing signal pertaining thereto;
providing a coupon separation and delivery subassembly between the continuous web of coupons and the predetermined point of insertion, the subassembly including feed rolls and positioning rolls, the positioning rolls disposed downstream of the feed rolls;
advancing the continuous web of coupons utilizing the feed rolls;
providing a first output signal based in part upon the timing signal and the sensing signal; and
separating the forwardmost coupon from the successive coupon in response to the first output signal and delivering the forwardmost coupon to one of the moving containers as said container moves past the predetermined point of insertion.

’280 patent, col. 17, I. 10 to col. 18, I. 20 (emphasis added).

Figure 10 of the ’901 and ’280 patents illustrates the claimed invention and is reproduced below:

[[Image here]]

[932]*932In the abstract, summary of the invention, and detailed description of the preferred embodiments, the patents specify that the position of the coupon sensor 62 is between the positioning rolls 48 and 50 and the feed rolls 36 and 38. ’901 patent, abstract; col. 3, II. 25-28; col. 5, II. 48-52; col. 6; II. 6-9; col. 7; II. 27-30; col. 11, II. 56-58. ’280 patent, abstract; col. 3, II. 27-29; col 5, II. 46-49; col. 6, II. 4-6; col. 7, II. 21-24; col. 11, II. 35-37. In a preferred embodiment, photoelectric container sensors 24 and 26 are positioned to generate a timing signal so that the signal processor 70 can calculate the line speed of each container and the time at which the container will reach the location of coupon insertion. ’901 patent, col. 10, II. 18-37. At that time, the signal processor commands the feed rolls 36 and 38 to accelerate, thereby moving the forwardmost coupon 20 of the coupon web to the positioning rolls 48 and 50. Id. at col. 10, II. 37-41. The positioning rolls 48 and 50, which operate at a greater rotational speed than the feed rolls 36 and 38, form a bight that receives the leading edge of the forwardmost coupon 20. Id. at col. 11, II. 34 — 44. The tensile force created by the two sets of rolls operating at different speeds then severs or “bursts” the coupons at a perforated line. Id. at col. 11, II. 45-47. The coupon inserting head 8 then injects the coupons into the containers. Id.

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Bluebook (online)
12 F. App'x 928, Counsel Stack Legal Research, https://law.counselstack.com/opinion/unique-coupons-inc-v-northfield-corp-cafc-2001.