VendoNet, Inc. v. Redbox Automated Retail, LLC, No. 13 C 3475, Slip Op. (N.D. Ill. Sep. 15, 2014) (Shah, J.).

Judge Shah construed the claims in this patent dispute regarding methods of giving vending machine customers access to a computer network.  Of particular note, the Court held as follows:

  • The preamble was not limiting.  The fact that the terms “website,” “homepage,” and “database” derived antecedent basis from the preamble did not make the preamble limiting because it provided no further explanation of or limitation upon any of the terms.
  • “A plurality of physical items” was construed as “more than one item, whether or not they are of the same type.”
  • “Permitting the customer to access the Internet/world wide web via the communication network in order to retrieve and/or send information to said website, said home page or said database” did not require that the customer be able to choose his own website or “surf” the Internet.
  • The Court held that step 5 in the claimed method must occur before step 7, but that step 6 need not be sequential.  In order to overcome an obviousness rejection during prosecution, the patented stated that step 5 must occur before step 7.  Having disclaimed the two steps out of order during prosecution, patented was estopped from reclaiming the ground it lost during prosecution.