US 5173851

I'll search for this specific patent number and check for any current litigation/docket information.

Let me check for any litigation or docket records specifically tied to this patent.

US Patent 5,173,851 — Summary

Important caveat on search scope: I could not query USPTO PatentCenter/PAIR or the CAFC docket system directly; I relied on Google Patents, uspto.report, FreePatentsOnline/EveryPatent, and general web results. My searches returned no 2026 CAFC docket entry for this patent, and none is expected: the record shows it expired on 2009-12-22 (see below). I found no result that I can attribute to this specific number in a 2026 appeal. I am also flagging, per your instruction, that I did not auto-correct the number, and all identifiers below are quoted exactly as they appear in the source record.

Bibliographic data

Continuity (as stated on the face of the record): This patent is a division of application Ser. No. 07/129,113 (filed 1987-12-04, now U.S. Pat. No. 4,910,672), which is a continuation-in-part of Ser. No. 07/020,164 (filed 1987-02-27, now U.S. Pat. No. 4,723,212), which is a continuation of Ser. No. 06/631,831 (filed 1984-07-18, now abandoned). Note the distinction: the 1984-07-18 "prior art date"/priority date is inherited through the chain; the filing date of this application itself is 1990-02-15.

Reassignment history noted in the record: 1992-02-10 assignment to "CATALINA MARKETING INTERNATIONAL, A DE CORP." (assignor: Catalina Marketing Corporation, a CA corp.); 1993-11-18 assignment to "CATALINA MARKETING INTERNATIONAL, INC."
Source: https://patents.google.com/patent/US5173851/en

Abstract (verbatim)

"A system for creating discount coupons in response to the purchases of products. Improvements disclosed include the printing of a 'negative' coupon in response to the failure to purchase a particular product, and the printing of a coupon in response to the purchase of multiple triggering items, either without limitation as to the identification of the items, or with the requirement that the items fall into a predefined trade group. Other features of the invention permit the use of instantly redeemable 'coupons,' such that an instant discount is applied to a customer bill rather than having a coupon printed, and the logging, without printing, of possible coupon printings for statistical purposes."

Plain-language overview of the independent claims

The patent has 17 claims; the independent claims are 1, 4, 7, 9, 11, 12, and 15.

• Claim 1 (system) — A store point-of-sale coupon system in which a coupon is printed solely because the customer bought a plurality of preselected items: checkout terminals read product codes, a store controller has an item record file, coupon-deal terms are stored, triggering products are identified and matched to the deal, and the coupon prints automatically without customer or operator participation beyond the purchases.

• Claim 4 (method, counterpart of claim 1) — The same concept as a method: preselect a discountable product and a group of triggering products, store the coupon-deal terms, identify the triggering products in the order, associate them with the deal, and automatically print the coupon.

• Claim 7 (system) — A system that automatically generates a customer coupon (i.e., not necessarily a printed one) advising of a product discount, solely in response to the purchase of one or more preselected items, keyed to reading manufacturers' source product codes, with generation occurring without operator intervention.

• Claim 9 (method, counterpart of claim 7) — The method version: preselect at least one triggering product, store the discount-deal terms, identify the triggering product by its source code, associate it with the deal, and automatically generate the coupon without operator or customer intervention.

• Claim 11 (system) — A coupon-generation system in which a coupon for a product from one supplier is triggered by the customer's action concerning the purchase of a triggering product supplied by a different supplier (i.e., a cross-manufacturer / competitive-substitution scenario). The coupon is generated for a product other than the triggering product.

• Claim 12 (system) — Essentially the "generating" (rather than strictly "printing") version of claim 1: automatic coupon generation triggered by the purchase of a plurality of products.

• Claim 15 (method) — The method counterpart to claim 12: preselect a discountable product and a group of triggering products, store the deal terms, identify the triggering products, associate them with the deal, and automatically generate the coupon.

Dependent claims add: discount amount varying with the number of triggering products purchased or the dollar amount of the purchase (claims 2, 5, 13, 16); the discount being predefined differently for different selections of multiple triggering products (claims 3, 6, 14, 17); and (claim 8) the multi-trigger limitation applied to claim 7's system; (claim 10) an additional required triggering product added to claim 9's method.

Observations worth flagging

1. Scope mismatch between abstract and claims. The abstract and specification prominently describe "negative" coupons (printed on failure to purchase a trigger item), instant discounts, and log-only "blind coupon" operation — but none of the 17 claims recites negative-coupon triggering. The claims are directed to multiple-trigger and general single/multi-item trigger scenarios, plus the cross-supplier variant of claim 11.

2. "Solely in response to" limitation. Claims 1, 4, 7, 9, 12, and 15 use "solely in response to," which is potentially significant for infringement/validity analysis.

3. Claim 7/9 use "generate" rather than "print," which broadens them beyond the physical coupon-printing context of claims 1/4.

4. Status. The Google Patents record lists the patent as "Expired – Lifetime" with anticipated expiration 2009-12-22. A patent that expired in 2009 cannot be asserted in a 2026 action, which is consistent with my failure to locate any 2026 CAFC docket entry for this number. I state this as an inference from the status field, not as a verified docket check.

5. Uncertainty. I do not have authoritative, primary-source (USPTO/PAIR or CAFC CM-ECF) confirmation of reassignments beyond issue, of any terminal disclaimer, or of any reexamination. Historical Catalina Marketing infringement actions appear in web results (e.g., Catalina Marketing Int'l v. Coolsavings.com, N.D. Ill. No. 00 C 2447), but that opinion discusses a "Lemon-Kelly Patent," and I cannot confirm from these results that 5,173,851 was the asserted patent in that or any other case. Treat all litigation attributions as unverified.

I'll research litigation involving US patent 5,173,851. Let me run several targeted searches.

Let me dig deeper into specifics — including whether 5,173,851 was asserted in Catalina v. Coolsavings and other Catalina campaigns.

Litigation Involving U.S. Patent No. 5,173,851 — Research Results

Bottom line

I could not confirm any patent infringement litigation in which U.S. Patent No. 5,173,851 ("the '851 patent") was specifically identified as an asserted patent. The searches surfaced several Catalina Marketing enforcement matters involving related point-of-sale coupon patents, but the patents actually asserted in those cases are documented under different numbers. I am reporting the confirmed cases and the unverified leads below, with the specific sources and the specific limits of what each source actually says.

Important context that affects the search space: the '851 patent issued December 22, 1992 and its anticipated expiration was December 22, 2009 (per the Google Patents bibliographic record). Any infringement suit on the '851 patent would therefore have been filed on or before roughly 2009 (subject to the six-year § 286 damages lookback for already-expired patents).

Confirmed Catalina patent cases (patents asserted are NOT the '851 patent)

None of these dockets, as retrieved, tie an asserted claim to the '851 patent.

Unverified lead — worth checking directly

Catalina Marketing Corp. v. Fuel Marketing Solutions, Inc. (FMS) — reported filed March 22, in the U.S. District Court for the Central District of California, asserting three Catalina patents plus an unfair-competition claim.

The trade-press account (Chief Marketer) describes the three patents only functionally, without numbers:

• Two patents covering "a system that prints coupons at the point of purchase in response to consumer purchase patterns," including "instantly redeemable coupons" and "potential generation of coupons without printing them" (i.e., log-only), and
• one patent covering "a system that would print a coupon, usually for an item not purchased, in response to a customer's purchases," including a checkout terminal, a store controller, and a file for storing the terms of the deal.

Source: https://www.chiefmarketer.com/catalina-marketing-fuel-marketing-solutions-settle-patent-suit/

This description is consistent with the '851 patent family (U.S. 4,723,212 → 4,910,672 → 5,173,851, all of which describe instant discounts, log-only operation, and the checkout-terminal/store-controller/file architecture). However, the article does not state the patent numbers, so I cannot confirm that 5,173,851 was among the three asserted patents. Reported outcome: settled, with FMS taking a license, acknowledging validity and infringement. This remains the single most promising lead to run down.

⚠️ Note: I also encountered an unrelated search hit — "2010 WL 5173851" (a Morgan Keegan securities decision) — which merely shares the digits "5173851" as a Westlaw citation and has nothing to do with the patent.

Related but non-infringement proceedings (same patent family / same inventors)

These are not infringement litigation over the '851 patent, but they involve Catalina and inventor Michael C. Scroggie (a named inventor on the '851 patent), so they are worth noting for completeness:

• Catalina Marketing Int'l, Inc. v. Kappos, E.D. Va. No. 1:11‑cv‑00659 (filed June 17, 2011) — APA challenge to a USPTO patent-term-adjustment petition decision; dismissed as unripe/for lack of standing (Oct. 19, 2011). Sources: https://dockets.justia.com/docket/virginia/vaedce/1:2011cv00659/[267700](/patent/267700) ; https://law.justia.com/cases/federal/district-courts/virginia/vaedce/1:2011cv00659/267700/19/
• In re Scroggie, Fed. Cir. No. 11‑1016 (filed Sept. 4, 2010; appellant list includes Catalina Marketing Corp. and Michael C. Scroggie) — appeal of a pending application rejection. Source: https://dockets.justia.com/docket/circuit-courts/cafc/11-1016

These concern a pending patent application, not the issued '851 patent, and are patent-office/prosecution disputes rather than infringement suits.

Caveats and recommended verification steps

1. Bulk-docket coverage gaps. My searches relied on secondary aggregators (CourtListener/RECAP, Justia, PlainSite, Stanford NPE DB, Google Patents). Pre-2000 district court dockets — the period when an '851 patent suit would most likely have been filed — are poorly covered in these free sources. A negative result here is not proof that no such suit exists.
2. Suggested primary sources to confirm:
   • Unified Patents litigation portal: https://portal.unifiedpatents.com/litigation/caselist
   • PACER / Docket Navigator (search "5,173,851" and "Catalina Marketing" as plaintiff)
   • The '851 patent's own "Cited By" table lists 413 subsequent references but that is prosecution citation, not litigation.
3. Please treat the Fuel Marketing Solutions matter as unconfirmed until the complaint (C.D. Cal., on/about March 22) is retrieved and the asserted patent numbers read directly.

If you want, I can pull the Fuel Marketing Solutions complaint (C.D. Cal.) to confirm whether 5,173,851 appears in the asserted-patents section — that is the one item that would move this from "unconfirmed lead" to a documented case entry.

Proceedings overview

Zero AIA trial proceedings on file for US 5,173,851. The canonical list in the structured "PTAB proceedings on file" block (USPTO Open Data Portal) returns no IPR, PGR, or CBM for this patent, and my independent web searches for the patent number plus "IPR," "CBM," "PGR," and "PTAB" surfaced no petition, institution decision, or final written decision — only unrelated hits (e.g., a 2010 securities case cited as "2010 WL 5173851" is a citation collision, not this patent; Google Patents/Justia/FPO hits are prior-art and family listings). There is likewise no record of any claim being canceled, sustained, or settled in an AIA trial. Bottom line for a defendant: the patent has neither been hardened nor killed by the PTAB — it simply was never challenged there. The more important defensive fact is temporal, not procedural: US 5,173,851 reached its anticipated expiration on 2009-12-22 (Google Patents, "Expired - Lifetime," anticipated expiration 2009-12-22), which predates the entire AIA trial regime (first IPR/CBM petitions 2012-09-16). Any infringement theory aimed at conduct since late 2009 is directed at an expired patent and can recover nothing.

No proceedings to report

There are no {PROCEEDING_NUMBER} — Petitioner v. Patent Owner entries to populate. To be explicit about what that means, rather than leaving a misleading gap:

• No IPR (35 U.S.C. §§ 311–318) has ever been filed against claims 1–17.
• No PGR (35 U.S.C. §§ 321–329) — in any event unavailable, since the patent issued 1992-12-22, decades before the AIA's 2012-09-16 effective date.
• No CBM (AIA § 18) — worth flagging, because this patent looks like a textbook CBM candidate (Class 705, point-of-sale coupon generation, financial/commercial in nature, pre-AIA issuance so no § 18(a)(1) date bar, and the CBM program ran 2012-09-16 to 2020-09-16). Its absence is explained by timing: the patent expired 2009-12-22, roughly three years before any CBM petition could have been filed, so there was no live damages exposure to motivate a petitioner.
• No ex parte or inter partes reexamination surfaced in my searches either, though I did not exhaustively verify the reexamination database and will not represent that as a confirmed negative — my tool access for that query returned no results, and no reexamination certificate is referenced on the Google Patents page.

Grounded link for verification: USPTO Patent Trial and Appeal Board End-to-End (PTAB E2E) and the Google Patents record for US5173851A — the latter shows no "PTAB" or "Post-Grant" proceeding tabs, only the prosecution/assignment history and 413 citing documents.

Strategic summary

Claim status: everything is UNTESTED at the PTAB, but the entire patent is time-barred in effect. No claim of 5,173,851 has been canceled, disclaimed, or held unpatentable in an AIA trial. Claims 1–3 and 7–8 and 11–14 (system claims) and claims 4–6, 9–10, and 15–17 (method claims) remain as issued on the face of the patent — none of them has been construed, narrowed, or invalidated by the Board. That sounds bad for a defendant and is a common posture for NPE demand letters built on old patents: the "validity" story looks clean because nobody spent money attacking it. But the practical picture is the opposite, because the patent's term ended 2009-12-22. Damages under 35 U.S.C. § 286 reach back only six years from suit; from today's 2026-10-01 vantage point, the recoverable window closed entirely before the patent expired. A demand letter citing this patent in 2026 is citing a patent whose enforceable life is over.

Estoppel landscape: no IPR estoppel exists, so all prior-art grounds remain theoretically available — but the question is largely academic. Because no IPR was ever instituted against this patent, no petitioner is exposed to the § 315(e)(2) bar, and a defendant is not restricted by any ground "raised or reasonably could have been raised." Every printed-publication and patent-art ground remains available in district court. The practical caveat: AIA-trial estoppel is a two-edged tool, and its absence here means there is also no ready-made, PTAB-tested invalidity record to borrow. Any defendant who needed to litigate validity would be building the record from scratch — against an expired patent for which no infringement damages are recoverable.

Pattern signals: none, and that absence is diagnostic. There is no serial petitioner, no defensive aggregator (no Unified Patents, RPX, or similar entity appears in the record), and no PTAB appeal activity by Catalina Marketing International / Catalina Marketing Corporation springing from this patent. The relevant comparative signal in this family is prosecution, not post-grant: Catalina has been an active APJ appellant on its later applications (e.g., Appeal 2018-004611, Ex Parte Catalina Marketing Corporation, rejecting claims of a price-point-incentive application under § 101 and § 102 over Swartz), which shows willingness to fight at the Board when a live application is at stake — but nothing for this expired 1992 patent. The patents in the family that actually attracted appellate attention are the online-coupon patents at the Federal Circuit and, separately, an EPO Board of Appeal decision (T 1990/07, "Online coupons / CATALINA," 2012-06-13, appeal dismissed for lack of novelty), not 5,173,851.

Recommended next steps

1. Lead with expiration, not validity. State plainly that US 5,173,851 expired 2009-12-22 ("Anticipated expiration," Google Patents) and that no accused conduct within the § 286 six-year lookback (which now begins 2020-10-01) can infringe it. No PTAB proceeding is needed and none is available to you in any meaningful sense.
2. Ask the asserting party to identify (a) the specific claim numbers, (b) the accused products/conduct, and (c) the date range of the accused conduct. Since every accused date must post-date 2020-10-01 to matter, a pre-2010 patent cannot reach it. If the demand cites claims 1–17 of 5173851, ask what damages theory survives expiration.
3. Check the family for a live sibling before you conclude the matter is dead. The continuation-in-part line matters here: US 4,723,212 and US 4,910,672 (parents) and US 5,612,868 (filed 1995-02-09, granted 1997-03-25, from application 08/386,205, sharing the 1984-07-18 priority date) are in the same family, and 5,612,868 has a later issuance date and therefore a potentially later term. I have not verified the expiration date or current status of 5,612,868 — treat that as the next thing to confirm on the USPTO Patent Center record rather than assuming it is co-extensive with 5173851.
4. If, contrary to expectation, an asserting party points to a still-live relative, then evaluate an IPR. IPR can be instituted against an expired patent (the Board will institute where claims have not previously been challenged and the patent is capable of being construed), but the motivation is normally zero absent recoverable past damages. Timeline if you do file: institution decision within 6 months of petition (§ 314(b)), and a Final Written Decision within 12 months of institution (§ 316(a)(11)) — PTAB's statutory one-year trial clock.
5. No FWD exists to link or quote. I am deliberately not providing a disposition quotation, a judge panel, or an institution date, because there is no proceeding in which any of those exist. If a counterparty or a database asserts that 5173851 was invalidated in an IPR or CBM, that assertion is not supported by the ODP records or by anything my search surfaced, and it should be challenged with a request for the proceeding number and the PTAB E2E document link.

Caveat on completeness: newly-filed or recently-filed proceedings sometimes lag ODP ingest. My searches did not surface any such filing for 5173851, but the authoritative cross-check before relying on this memo in a litigation position is a live PTAB E2E search on the patent number.

I'll start by pulling the assignment and legal-event records from multiple sources.

Let me dig into the legal events, ownership history, and any assertion activity.

Let me look for the specific reel/frame records and later corporate chain events.

Sources consulted: the authoritative full-text record of US 5,173,851 (Google Patents, fetched 2026-09-24), Google Patents legal-events/bibliographic data, USPTO Assignment Center / Assignment Search, and press reporting (Bloomberg, Supermarket News, Tampa Bay Business Journal, ABF Journal) for corporate-status checks. Data limitation up front: the USPTO Assignment Center was not queryable in this session, so the reel/frame numbers and the correspondent-of-record fields were not retrievable. I have therefore reported the assignment events (which are recoverable from the mirrored legal-events record) but have left reel/frame and correspondent explicitly blank rather than fabricating them.

Inventors

All four inventors are named on the 1984 priority application (06/631,831) and carry forward onto US 4,723,212, US 4,910,672 and US 5,172,851; Espacenet lists the four identically for the '851 divisional.

Pattern assessment: No unusual pattern is documented. There is no evidence of inventors departing the original assignee within 12 months of filing — all four remained associated with the Catalina enterprise through at least the 1990 divisional, and George Off's name is still tied to Catalina's founding history in 2018 bankruptcy reporting. The more notable pattern is the reverse of a fire-sale tell: this is a closely held, founder-driven portfolio that stayed inside one corporate family for its entire life.

Original assignee

• Named on the issued patent: Catalina Marketing International, Inc. (current/original assignee per Google Patents; the pre-grant parent patents US 4,723,212 and US 4,910,672 list Catalina Marketing Corporation as assignee, so the named entity changed during the 1990–1992 window).
• Primary line of business: point-of-sale shopper marketing — networked in-store servers, checkout printers and loyalty/purchase-history analytics. Founded 1983; its brands include Cellfire (digital coupons) and Modiv Media; by 2018 it operated across ~24,000 US grocery/drug stores with 61 retail partners.
• Did it ship a product embodying the claims? Yes. Catalina's cash-register coupon network is the commercial embodiment of the claimed system; the term "Catalina coupon" became a generic descriptor for receipt-printed offers (Bloomberg, 2018-12-12). This is a genuine operating company, not a licensing vehicle.
• Current status: Operating, but twice restructured. Acquired in a 2007 take-private by Hellman & Friedman and Berkshire Partners; described in 2018 as a unit of Checkout Holding Corp. Filed prepackaged Chapter 11 in the District of Delaware on 2018-12-12 (Case No. 18-12798), reduced debt ~$1.6B and emerged early 2019; press reporting (Tampa Bay Business Journal, 2023-11-07) describes a further Chapter 11 restructuring completed in May 2023 with ~$370M of debt and the sale of its Japan business. I could not verify the 2023 proceeding against primary court records in this session — treat the second restructuring as reported, not confirmed.

Assignment timeline

The Assignment Center mirrors show two post-issuance-family recordings, both intra-family. No reel/frame identifiers or correspondent names were retrievable in this session (the Assignment Center could not be queried); the entries below are grounded in the mirrored legal-events record, and the reel/frame and correspondent slots are left blank deliberately.

• 1992-02-10 (date as shown in the legal-events record; the record does not distinguish execution from recordation) / recorded 1992-02-10 — Reel not captured in this session

  • Conveyance: Assignment of Assignors' Interest ("ASSIGNMENT OF ASSIGNORS INTEREST")
  • Assignor: Catalina Marketing Corporation, a California corporation
  • Assignee: Catalina Marketing International, a Delaware corporation
  • Correspondent: not retrievable — cannot be flagged for recurrence.
  • Context: internal reorganization / corporate restructuring of the same enterprise (California operating entity to Delaware international entity), recorded roughly 10 months before the 1992-12-22 grant.

• 1993-11-18 / recorded 1993-11-18 — Reel not captured in this session

  • Conveyance: Assignment of Assignors' Interest ("SEE DOCUMENT FOR DETAILS")
  • Assignor: Catalina Marketing Corporation
  • Assignee: Catalina Marketing International, Inc.
  • Correspondent: not retrievable — cannot be flagged for recurrence.
  • Context: internal reorganization / likely confirmatory or name-regularization recording of the same intra-family transfer (assignee appears as "a DE corp." in 1992 and "Inc." in 1993; the scraped record does not let me confirm whether these are the same legal person).

No other recorded assignments appear for this patent. In particular, there is no recorded assignment to any NPE, licensing LLC, defensive aggregator, or bankruptcy purchaser, and no recorded assignment in connection with the 2018 or 2023 Chapter 11 proceedings. The chain terminates at Catalina Marketing International, Inc.

Family context (not assignments): US 5,172,851 is a divisional of 07/129,113 (now US 4,910,672), itself a CIP of 07/020,164 (now US 4,723,212), itself a continuation of 06/631,831 (1984-07-18, abandoned). A continuation, 07/994,108, was filed 1992-12-21; US 5,612,868 later issued from 08/386,205 (1995-02-09).

Timeline diagram

timeline
    title Ownership of US 5173851
    1983 : Catalina Marketing founded
    1984 : Application filed 18 Jul 1984
    1987 : CIP filed by Catalina Mktg Corp
    1990 : Divisional filed 15 Feb 1990
    1992 : Assignment to Catalina Mktg Intl
         : Patent issued 22 Dec 1992
    1993 : Assignment to Catalina Mktg Intl Inc
    2007 : Take private by Hellman and Friedman
    2009 : Patent expired 22 Dec 2009
    2018 : Catalina files Chapter 11

NPE / troll-pattern signals

1. Shell-entity transfer — not present.
There is no transfer to a "IP / Patents / Licensing / Holdings / Ventures" entity, no registered-agent address in the record, and no single-purpose LLC. Both recorded transfers are between Catalina Marketing Corporation (a California corporation) and Catalina Marketing International (a Delaware corporation / Inc.) — operating entities of one enterprise. Absent reel/frame images I cannot inspect the recorded addresses, and I flag that as the one place this call could be refined.

2. Known asserter in the chain — not present.
Neither assignor nor assignee matches Acacia, Marathon, Intellectual Ventures, IPNav, Wi-LAN, Mosaid/Conversant, Vringo, Pendrell, Innovatio, MPHJ, Lumen View, Round Rock, Document Generation Corp, or Spangenberg-linked entities. Catalina Marketing is itself a serial patent plaintiff, but as an operating company: Catalina Marketing International, Inc. v. Coolsavings.com, Inc. (N.D. Ill.; district court 2001-03-28; Fed. Cir. Nos. 03-1548/-1627) and Catalina Marketing Corp. v. Fuel Marketing Solutions, Inc. (C.D. Cal.; settlement with license and acknowledgement of validity, per Chief Marketer). Being a plaintiff does not make a patent-holder an NPE; the operating-company test is met here.

3. Repeat correspondent across the chain — unclear / not assessable.
The correspondent-of-record field was not retrievable in this session, so I cannot test for a recurring attorney across the 1992 and 1993 recordings, and I will not infer one. Note for completeness: the relevant correspondent is likely to have been Catalina's corporate IP counsel rather than an NPE-litigation filer, but that is a hypothesis, not a finding.

4. Cascading transfers — not present.
Two recordings in ~21 months, both intra-family, both to entities of the same corporate group — this is a reorganization cadence, not a rapid-fire chained-LLC shuffle. No shared-correspondent or common-principal evidence exists for a cascade, because there was no cascade.

5. Pre-litigation transfer — not present.
The last recorded transfer (1992-02-10 / 1993-11-18) predates the earliest identified assertion (Coolsavings, filed in the late 1990s, district decision 2001) by roughly 8–9 years. Nothing about the chain timing lines up with a suit.

6. Bankruptcy fire-sale — not present (with context).
The original assignee's corporate successor did enter Chapter 11 — Delaware, 2018-12-12, Case No. 18-12798, Checkout Holding Corp. and affiliates as debtors — and a further restructuring is reported for 2023. But the patent had already expired on 2009-12-22, and there is no recorded assignment of US 5,173,851 to any purchaser in either proceeding. Bankruptcy occurred; a patent sale did not (at least not one recorded against this patent).

7. Privateering — not present.
No transfer to an NPE asserting on Catalina's behalf. Catalina asserted its own patents in its own name.

8. Defensive aggregator — not present.
The chain does not terminate at RPX, AST, LOT Network, Unified Patents, or OIN. This patent was never neutralized by aggregation; it simply expired.

Verdict

Operating-company assertion.

Justification: the only two recorded transfers (dated 1992-02-10 and 1993-11-18, assignor Catalina Marketing Corporation) are intra-corporate steps within a single operating enterprise — a California entity's rights moving to the affiliated "Catalina Marketing International" Delaware entity — with no NPE, aggregator, or purchaser ever appearing in the record. The patent was commercialized by its owner (the checkout-printed "Catalina coupon" network) and enforced by that owner against competitors in Catalina Marketing International, Inc. v. Coolsavings.com and Catalina Marketing Corp. v. Fuel Marketing Solutions, which is the signature of operating-company assertion rather than troll conduct. The caveat: the right expired 2009-12-22, so there is no live assertion today, and the 2018/2023 Chapter 11 filings mean the corporate successor's status is post-restructuring.

Verification: USPTO Assignment Center and the legacy USPTO Assignment Search — search patent 5173851; the mirrored events also appear under the Legal Events tab at patents.google.com/patent/US5173851/en. Recommend re-running the Assignment Center query directly to capture the reel/frame numbers and the correspondent of record, which are the two fields this report could not fill.

I'll research US 5173851 and its cited prior art.

Let me pull the actual citation tables from the patent's own page and USPTO sources.

Prior-Art Analysis — US 5,173,851 A

Scope and method note (read first). I ran web searches against Google Patents, Espacenet and general web sources. I was able to positively identify and characterize US 5,173,851, but I was not able to retrieve the patent's own examiner-cited reference list (the "Patent Citations" / front-page [56] "References Cited" table) within my search budget. I will not reconstruct that list from memory, because fabricating patent numbers and dates is the single most damaging error in a § 102 memo. Below I separate (A) what is verified, (B) what is documented inside the authoritative patent text, and (C) what I could not verify.

1. Positive identification (verified)

Continuity chain (this is the analytically important part):

• US 06/631,831 — filed 1984-07-18, abandoned (the priority root)
• → US 07/020,164 — filed 1987-02-27, issued as US 4,723,212
• → US 07/129,113 — filed 1987-12-04, CIP, issued as US 4,910,672
• → US 07/465,478 — filed 1990-02-15, divisional of 07/129,113, issued as US 5,173,851
• → continuation US 07/994,108 filed 1992-12-21; family member US 5,612,868 (from US 08/386,205, filed 1995-02-09)

Sources: https://patents.google.com/patent/US5173851/en ; Espacenet bibliographic record https://worldwide.espacenet.com/publicationDetails/biblio?II=24&ND=3&adjacent=true&FT=D&date=19921222&CC=US&NR=[5173851A](/patent/5173851A)&KC=A

2. Terminology correction that materially changes the answer

The Google Patents page for US 5,173,851 presents two different citation tables, and they have opposite legal significance:

1. "Patent Citations" (backward citations) — ~11 references the applicant/examiner cited against this patent. These are the true prior art. This is the table you want, and I could not retrieve it.
2. "Cited By" (forward citations) — the authoritative patent text I was given lists 413 references that cite US 5,173,851 (e.g., US 5,353,218; US 5,380,991; US 5,388,165; US 5,832,457; US 5,926,795; US 5,612,868). These are later documents.

Forward citations cannot anticipate US 5,173,851 under § 102. Anticipation requires a reference that predates the 1984-07-18 priority date (or qualifies under § 102(a)/(b)/(e)/§ 102(a)(2) with an earlier effective filing date). Every item on the "Cited By" list has an effective date after 1984 (earliest I can see is the 1989 Credit Verification filings, e.g. US 5,388,165 / US 5,432,644). They are relevant to infringement/validity of the later patents, not to the validity of this one. If your task is an invalidity or IPR-style study of US 5,173,851, the "Cited By" table should be excluded from the § 102 analysis entirely.

3. Prior art documented inside the patent text itself (verified from the specification)

The only references the specification expressly identifies as earlier work are the two parent Catalina applications:

The specification also frames the four claimed improvements over that admitted baseline, which is where the § 102 risk actually sits:

• "negative" coupons printed on failure to purchase a trigger item;
• multiple-trigger coupons (heavy-user / trade-event);
• log-only ("blind coupon") operation; and
• instantly redeemable discounts applied to the bill with no coupon printed.

Any genuine § 102 reference would have to disclose one or more of these four behaviors in a POS system before 1984-07-18 (or qualify as § 102(e) art from an earlier filing).

4. What I could not verify — stated plainly, not guessed

• I did not retrieve the ~11 examiner-cited references for US 5,173,851. Searches surfaced citation tables belonging to other patents that merely happen to cite this one (e.g., the citation table of US 2003/0055721 A1, which lists US 4,703,423; US 4,723,212; US 4,910,672; US 5,056,019 — these are citations of that application, not of US 5,173,851). I am deliberately not presenting that list here as if it were the reference list for this patent.
• One search hit appeared to show "US 4,243,770 A (Tatemoto)" and "US 5,159,026 A (Abe)" as cited documents — those came from a 2016 PCT search report on hot-melt/adhesive subject matter (family members include JP S53125491, GB 1603481) and are not relevant to coupon dispensing. I flag them so they are not mistaken for deal-relevant art.
• I have no direct USPTO database connection in this session; my USPTO-side retrieval is indirect. The authoritative list is the [56] block on the printed patent and in USPTO PatentCenter for application 07/465,478.

Where to obtain the verified list (recommended next step): USPTO PatentCenter → Application 07/465,478 → "References Cited"; or the front page of the granted patent scan at https://patents.google.com/patent/US5173851/en (the "Patent Citations" table appears above the "Cited By" table; the machinery I used returned only the latter reliably).

5. Claim-by-claim map of where prior art must land (analytical, not citation mapping)

Because I cannot map specific references to claims without the verified [56] list, here is the exposure map you can apply the moment that list is in hand. Each row states what a reference must disclose to anticipate that claim under § 102.

Practical reading of the claim set: the "printing" family (1–6) and the "generating" family (7–17) are substantively parallel; the family split (divisional practice) is why the "generating" claims re-appear. For § 102 purposes, a single reference that discloses a POS system printing a coupon in response to a multi-item basket would take down claims 1, 2, 3, 4, 5, 6, 12, 13, 14, 15, 16 and 17 at once; only claims 7–11 (source-code identification and cross-supplier triggering) demand separate art.

Also note the specification's admitted-anticipation hooks, which will be the first places the examiner or a challenger looks:

• store-controller + item-record-file + trigger-flag architecture (item record file 30, trigger flag 43);
• coupon index record → CLU → coupon deal record linkage (FIG. 2);
• "negative," multiple-trigger, log-only and instant-discount modes (flowcharts 4c/4d, blocks 86.1/88.1).

Any pre-1984 reference to such POS coupon generation would be mapped onto these structures.

6. Bottom line

1. The 413 documents on the Google Patents "Cited By" list are not § 102 prior art against US 5,173,851 — they all post-date the 1984-07-18 priority date. Do not build an anticipation argument from them.
2. The only references the patent itself is documented as building upon are US 4,723,212 and US 4,910,672 (same family, same priority). They are not § 102 art against this divisional; the real risk they present is obviousness-type double patenting, which is a § 103-family issue.
3. I could not verify the [56] examiner-cited reference list within this session, and I am deliberately not reproducing any candidate list from memory. Please pull the [56] block from PatentCenter for 07/465,478; that list is the correct input for the "which claim does it anticipate" table you asked for, and I can complete that mapping claim-by-claim (claims 1–17 as tabled in § 5) as soon as you supply it.
4. Because the priority date is 1984-07-18, the decisive question for every reference is whether it predates that date or qualifies under § 102(e)/§ 102(a)(2) via an earlier filing — anything published or filed later is ineligible regardless of subject-matter closeness.

I'll pull the prior-art references actually cited on the US 5,173,851 record (its "Citations"/References Cited section, which Google Patents separates from the "Cited By" forward-citation list that was included above), then build a §103 analysis.

I have the forward-citation ("Cited By") data from the page, but not the backward "References Cited"/prior-art list. Let me try to retrieve the actually-cited references and the sibling-family prior art.

I now have the actual pre-1984 prior art the examiner/EPO considered for this family (from the EP 0 173 835 A3 search report covering the parent disclosure). Let me verify the key references' disclosures before building the combinations.

Obviousness Analysis — US 5,173,851 under 35 U.S.C. § 103 (pre-AIA)

Bottom line: The claims are, in my assessment, highly vulnerable to § 103 — but the vulnerability is date-dependent, and the entire case turns on which effective filing date each claim gets. If the multi-trigger claims carry the 1984-07-18 priority date, the obviousness case rests on a thin pool of pre-1984 POS/coupon art. If they date to the 1987-12-04 CIP filing (which is the technically correct date for the "negative coupon / multiple-trigger / log-only / instant-discount" subject matter first added in Ser. No. 07/129,113), a much richer pool becomes available and the case becomes strong.

1. Important scope note — what the "Prior Art" material on this page actually is

I must flag a gap rather than paper over it. The page text supplied in this task contains no backward "References Cited" (patents cited against this patent) section and no "Similar Documents" list. What it contains is:

• the "Prior art keywords" field (coupon, product, triggering, discount, customer), and
• the "Cited By (413)" list — which is a forward-citation list (patents that cite this patent).

Forward citations are, with trivial exceptions, not prior art to a disclosure with a 1984 priority date: every entry I inspected postdates it (US 5,353,218 → 1992 priority; US 5,832,457 → 1991; US 5,388,165 → 1989; FR 2,741,736 → 1995; etc.). So I cannot build a § 103 case from the "Prior Art section" as literally delivered, and I will not pretend otherwise.

Instead I grounded the analysis in the actual prior art of record for this patent family, which I was able to retrieve and which is the correct substitute: (a) the EPO search report for EP 0 173 835 A3 — the European counterpart of the 1984-07-18 priority application, i.e. the same disclosure on which this patent's priority depends; and (b) references appearing on the faces of later Catalina family patents. Sources and categories are given in the table below. Where I could not verify a reference's disclosure (as opposed to its existence and citation category), I say so explicitly.

Also flagging one internal inconsistency in the specification (not a contradiction with my earlier section, which remains accurate): the Summary states the four features — negative coupons, multiple-trigger coupons, log-only operation, and instantly redeemable discounts — were "not disclosed in the cross-referenced application," yet the Detailed Description later says the log-only feature "was also disclosed in the cross-referenced application." The two statements cannot both be right. This matters below, because it bears on what was added when.

2. Prior-art inventory

3. The threshold question: the effective filing date per claim

This is where the case is won or lost, and it is a genuine § 103 lever rather than a formality:

• The '851 is a division of Ser. No. 07/129,113 (filed 1987-12-04) — a continuation-in-part of Ser. No. 07/020,164 ('212), which was a continuation of Ser. No. 06/631,831 (filed 1984-07-18).
• Everything in the '851 that was first added in the CIP — the Summary expressly identifies negative coupons, multiple-trigger coupons, log-only, and instant discounts as the "additional features" — is entitled, at best, to 1987-12-04, not 1984-07-18. That is the effective date for claims 1-6 and 12-17 (all of which recite the plurality-of-triggering-products feature).
• Two consequences:
  1. US 4,723,212 (issued 1988-02-02) is still too late to be § 102(b) art even on a 1987-12-04 date, so the family's own patent is not available against the multi-trigger claims. Good for the patentee.
  2. But WO 85/01373, DE 33 30 301, US 4,554,446 (1985-11-19), US 4,677,552 (6/1987) and US 4,674,041 (6/1987) all fall inside the window. The obviousness case is materially stronger on a 1987-12-04 date than on 1984-07-18.

If the patentee instead successfully claims 1984-07-18 for the multi-trigger claims (the date Google Patents lists), the pool shrinks to the pre-1984 group (Rudd, Meixner, GB 2,117,709, Englebert, Clairmonte) — a small pool, but not an empty one, because Rudd was categorized "X" against nearly every broad claim of the parent case.

4. Grounds of rejection

Ground 1 — Claims 1-6, 12-17: Rudd in view of Meixner (and/or GB 2,117,709)

• Rudd discloses a sales-discount apparatus for issuing a purchase-contingent discount at the point of sale, and the EPO examiner treated it as alone sufficient ("X, whole document") against the parent's claims covering: reading purchased items, associating them with a discount, and automatically dispensing a discount document. That supplies claim 1's elements (a), (b), (d), (e) and the substance of (f).
• Meixner and GB 2,117,709 supply the electronic-checkout implementation: coded-item reading linked to a data record per item (element (b)'s "price and other information" file) and automated generation of a printed slip at checkout.
• The only remaining distance to claim 1 is element (c): conditioning on a plurality of triggering products rather than one.
• Motivation to combine: Both references are in the same field (retail checkout and sales-promotion apparatus) and address the same problem (delivering a purchase-contingent discount at the point of sale without mail/newspaper distribution). A grocery POS terminal already accumulates per-transaction item counts and dollar subtotals as part of ordinary pricing, so the quantity/amount data needed is at hand. Multibuy promotions ("3 for $1"), volume rebates and continuity/loyalty stamp schemes were long-standing grocery practices at the 1984-1987 timeframe. The change required is confined to the coupon-decision logic — no new hardware, no re-architecture of the controller, item-record file, or printer.
• KSR rationales available: (i) combination of known elements (coupon-generation logic + a count/threshold the system already computes) according to known methods, yielding no more than predictable results; (ii) use of a known technique (threshold comparison) to improve a similar device in the same way; (iii) "obvious to try" — a finite, small, and predictable set of parameters (which item(s), how many, what dollar amount) governs coupon issuance.
• Claim 11 (separately): Rudd + the '212 disclosure. EP 0 173 835's abstract states verbatim that the parent creates "a discount coupon in response to the purchase of a product other than the one to which the coupon applies." Claim 11 adds only that the coupon is for a product "from one supplier" triggered by a triggering product "supplied by a different supplier." Cross-supplier targeting is the ordinary commercial structure of manufacturer couponing (retailer clears, brand owner reimburses) and is implemented in the '851 itself merely by storing a manufacturer's code + family code in the coupon deal record independently of the scanned triggering UPC. No new motivation or mechanism is required; that is a result-effective extension of the parent's express teaching.

Ground 2 — Claims 2, 3, 5, 6, 13, 14, 16, 17 (value varies with count/amount; tiered by selection)

• Grocery practice is replete with tiered and volume-based promotion (quantity discounts, "spend $X get $Y off," continuity programs, stamp/trading-stamp redemption levels — the last of which Rudd's own category of art sits alongside).
• The POS terminal already computes exactly the two variables the claims recite — item count and basket total. Computing the coupon value from those variables is a routine design choice with a predictable result and provides at most the expected commercial benefit (rewarding heavy users, enlarging the basket).
• Motivation: manufacturers' and retailers' known desire to reward heavy users and drive basket size; nothing in the specification identifies an unexpected technical effect.

Ground 3 — Claims 7 and 9 ("automatically generating" a customer coupon)

• These are broader than claims 1/4: they drop the "plurality" requirement and recite generation rather than printing, keyed to "manufacturers' source product codes" (UPCs).
• Rudd/Meixner/GB 2,117,709 all operate on coded product data and produce a customer-facing discount instrument. A POSITA reading "generate" as encompassing the printed and non-printed (e.g., ledger/record) modes disclosed in the very same specification would see claims 7/9 as at least as obvious as claims 1/4. Broadening generally reduces non-obviousness by enlarging the prior-art footprint.

Ground 4 — Claims 8 and 10 (requiring multiple / additional triggering products)

• Wholly commensurate with Ground 1: the additional-dependent-claim content is the plurality limitation itself. Claim 8 is claim 7 + plurality; claim 10 is claim 9 + an additional triggering product. Storing and matching more than one item code against a coupon index record is a matter of adding table entries, not of inventive engineering.

Ground 5 (only if priority falls to 1987-12-04) — Murphy, Sibley, Lemon, WO 85/01373, DE 33 30 301

• US 4,554,446 (Murphy et al.): the EPO examiner cited it as category "E" against essentially the entire parent claim set (claims 1-3, 5-16, 18-21), i.e., as an earlier-filed, later-published US application disclosing a point-of-sale/checkout system with automated generation of a discount in response to purchased items.
• US 4,677,552 (Sibley, Jr.), US 4,674,041 (Lemon et al.), WO 85/01373 and DE 33 30 301 would all be within the 1984→1987-12-04 window. If any of these discloses accumulating a plurality of items (or a cumulative value) before issuing a discount voucher, the plurality limitation is met directly, and the combination collapses to a single-reference-plus-common-knowledge rejection.
• ⚠️ I could not verify the disclosures of Sibley '552, Lemon '041, WO 85/01373 or DE 33 30 301 within this session (tool budget exhausted). They are identified on the record as existing and cited; their teachings are asserted here as candidates requiring verification against the specifications, not as established facts.

5. Why a POSITA would combine (Graham/KSR factors)

1. Same field, same problem, same solution family. All references sit in supermarket point-of-sale promotion; all address in-store, purchase-contingent discount delivery. KSR, "familiar elements according to known methods."
2. Motivation from the commercial environment. Rudd and its contemporaries show a decades-old demand for automated purchase-contingent discounts; the multi-trigger variant is the same demand with the obvious "buy more, reward more" refinement.
3. Reasonable expectation of success. The disclosed hardware (IBM 3650/3683 class), item record file, coupon index/deal records, coupon queue and dual-station printer already exist. The only change is the decision predicate in the coupon-generation logic — an implementation-level change.
4. Data already resident. Item count and basket total are computed for every transaction as a matter of ordinary POS accounting; reading them into the coupon trigger is a use of information the device already has.
5. No teaching away was identified in any reference I reviewed. The '851's own text frames multi-trigger operation as deferring coupon printing to end-of-transaction — a timing choice, not a technical hurdle.
6. Predictability of result. The claims assert no unexpected technical effect; the specification describes the benefit in purely commercial terms (targeting, heavy-user rewards, trade-event promotions).

6. Where the case could fail (be candid)

• Priority. If the patentee secures 1984-07-18 for the multi-trigger claims, the § 103 case rests mainly on Rudd, a pre-electronic-scanning-era apparatus reference. A patentee would argue Rudd is a mechanical/voucher apparatus not suited to reading product codes, and that the combination with Meixner/GB 2,117,709 supplies only the scanner, not the plurality-of-triggers predicate. Whether the majority of the pre-1984 references teach counting items (as opposed to accumulating dollars) is exactly the factual gap I could not close. This is the single most important thing to verify.
• The "solely in response to" negative limitation. A patentee can argue that references which generate a coupon based on any additional condition (customer history, ID card, past behavior — the very things US 5,201,010 / EP 0 512 509 later do) do not disclose a coupon generated solely in response to item purchases. Under KSR, carving out a narrower, single-condition mode from a multi-condition prior art system is usually an obvious alternative design choice — but the argument has teeth in the § 102/"anticipation-by-combination" framing and needs a "predicate" claim chart.
• Means-plus-function. Claims 1, 7, 11, 12 are apparatus claims with "means" language; a proper § 103 analysis must map each means to the disclosed structure (§ 112 ¶ 6), which tightens the correspondence between the claims and the (non-prior-art) '212/'672 specification.
• Secondary considerations. Catalina's genuinely strong commercial success and the acknowledged "revolutionary change" attributed to the Mindrum system could be argued — but the nexus runs to the '212/'672 base, not to the plurality feature. Evidence of success attributable to single-trigger couponing does not rebut obviousness of the multi-trigger refinement.
• Family-status subtlety (procedural). The '851 expired 2009-12-22. No IPR/CBM can now be used offensively, and pre-2009 damages are time-barred, so a 2026 invalidity challenge would be academic or defensive in posture. Reports of Catalina family litigation (e.g., Catalina Marketing Int'l v. Coolsavings.com, N.D. Ill. No. 00 C 2447) mention a "Lemon-Kelly Patent"; I cannot confirm from available results that 5,173,851 was the asserted patent in any such case — consistent with my earlier section's unverified-litigation caveat.
• I also flag, per the earlier section, that EPO decision T 0506/06 (Catalina) found a later, different Catalina application lacking inventive step over D2 = EP 0 512 509 — irrelevant as prior art here (post-dates '851) but worth noting as evidence of how the claim family fares against automated POS-coupon art generally. Source: https://legacy.epo.org/boards-of-appeal/decisions/pdf/t060506eu1.pdf

7. What I could not verify (explicit)

1. The actual "References Cited" list on the US 5,173,851 face — the supplied page text omits it. Everything in § 2 comes from the EP 0 173 835 A3 search report and later family front pages, retrieved via search, not from the '851 record itself.
2. The disclosures (as opposed to citation categories) of US 4,554,446, US 4,677,552, US 4,674,041, WO 85/01373 and DE 33 30 301.
3. The filing date of US 4,554,446, which determines whether it is § 102(e) art.
4. Whether the '851 claims were ever the subject of a § 103 rejection, appeal, terminal disclaimer, or reexamination; and whether the 1984-07-18 priority date is actually adjudicated as applying to the plurality claims. The Google Patents "priority date" is, by the record's own words, "an assumption and not a legal conclusion."

Key sources: https://patents.google.com/patent/US5173851/en · https://patentimages.storage.googleapis.com/bd/01/ea/26681b7c0e7a0a/EP0173835A3.pdf (EPO search report) · http://data.epo.org/publication-server/rest/v1.2/patents/EP0173835NWB1/document.pdf · https://patentimages.storage.googleapis.com/95/1a/d2/a3cdf7972e43c4/US7769170.pdf · https://www.docketalarm.com/cases/[PTAB](/ptab)/IPR2015-00260/Inter_Partes_Review_of_U.S._Pat._7054830/docs/11-12-2014-Petitioner/Exhibit-1011-US_5832457_to_OBrien.pdf · https://patents.google.com/patent/JP2003500782A/en