US 5380991

I'll run searches against the patent and litigation/docket sources before summarizing.

Let me check specifically for any litigation involving this patent.

Summary — US Patent 5,380,991 (identifier "5380991")

Search scope note: I searched for the exact number 5380991 / 5,380,991 against patent databases and for any Federal Circuit 2026 docket activity. What follows is grounded in the authoritative full text supplied and the search results retrieved; where a source disagrees, I flag it rather than reconciling silently.

Bibliographic data

Uncertainty flagged: The Unified Patents portal lists the priority date as 1993‑11‑15, whereas Google Patents and the USPTO-derived data give 1993‑11‑16. This is a one-day discrepancy I cannot resolve authoritatively; I am not auto-correcting either value. The inventors/assignee are consistent across sources ("Valencia; Luis" and "Howe; John," individual assignees).

Abstract (as filed)

A system and method allowing a shopper to obtain reduced prices for certain items without redeeming paper coupons. It employs an IC "smart" card containing an erasable memory holding (a) a discount coupon amount and (b) information on particular products already purchased. The card is inserted into a reader/writer terminal at the retailer's checkout counter; purchased items are scanned and compared with both the items eligible for discount and the information on the customer card. After the cashier totals the purchase, the information in the smart card is altered accordingly.

Plain-language overview of the independent claims

Claim 1 — System (apparatus)
A discount system for a retail establishment comprising four cooperating elements:

1. A list of products to which discounts apply.
2. A computer system whose memory holds that list, the discount amount per product, the expiration of the discount, and the retail value of the listed products.
3. At least one checkout station in communication with that computer, having (i) a first terminal for entering purchased-product information (e.g., a scanner) and (ii) a second terminal with a reader/writer device.
4. A customer-retained card with an interface and a memory that is initially programmed with a first monetary amount (a prepaid discount balance). The second terminal reads that balance and writes back a second monetary amount reflecting the discount actually applied, based on information in the computer system.

In short: server-side discount table + scanner + reader/writer terminal + reusable, value-bearing smart card that is decremented/written at checkout.

Claim 23 — Method
A method of providing purchase discounts, comprising the ordered steps of:

• developing a list of discount-eligible products at a central location;
• communicating that list to at least one retail establishment;
• entering the list, its respective discounts, and their expiration dates into a local computer system at each establishment (which also holds the retail prices);
• issuing a card to a customer, the card having an interface and a memory initially programmed with a first monetary amount from which discounts are to be deducted;
• the customer obtaining products;
• entering purchase information at a first terminal in communication with the local computer;
• comparing that entered information against retail price and discount-eligibility information, the comparison being performed in the local computer system;
• inserting the card into a second terminal containing a reader/writer;
• comparing card-memory information against local-computer information on discount-eligible products; and
• writing a second monetary amount into card memory reflecting the discounts given.

The dependent claims add: local-only vs. networked computers (claims 2–5); a third "issuing" terminal (6–7); card issuance/recharge at the checkout terminal (8); a fourth terminal plus printer for a "best buys" printed output (9); shelf tags with color-coded/increasing-value symbols and clear top portions (10–18); smart-card + erasable programmable memory + microprocessor carrying purchase history (19, 22); and reconciliation means tied to the central computer (20–21). Method dependents add smart-card specifics, electronic list communication, issuing/recharging, shelf tags, progressive-discount comparison and writing purchase-type/count data, reconciliation, card retention for use at a second retailer, and re-programming with a new balance (24–36).

Notable prior art cited on the face

• US 5,185,695 (Pruchnicki) — centrally stored manufacturer coupons replacing paper.
• US 4,882,675 (Nichtberger et al.) — paperless coupon distribution/redemption via mag-stripe card (the specification criticizes this card's limited memory and that it is not retained by the customer).
• US 5,192,854 (Counts) — electronic coupon recording/redemption with bonus points, but still paper-based.
• US 5,047,614 (Bianco) — computer-aided shopping with a "smart" card.

Litigation / CAFC 2026 docket search

No record found of any 2026 Court of Appeals for the Federal Circuit docket, or any district-court infringement action, naming US 5,380,991. My searches of patent-portal and court-document sources for "5,380,991" and "5380991" returned only patent-family, citation, and prosecution/IDS material (e.g., EP 0 905 661 A1 citing US 5 380 991 A; a PCT search report context) — nothing tying this number to a 2026 appeal. Caveat: absence of a search hit is not proof of absence of a case. The Federal Circuit's own public calendars are not keyword-searchable by patent number through the sources I queried, and docket records can lag. I do not have authoritative confirmation that no 2026 CAFC matter exists — only that I could not locate one. If you need a definitive negative, a PACER/Docket Navigator or CAFC CM/ECF party-name query (Valencia; Howe; and any successor/assignee) would be the proper check.

Also note: the header of my task environment states today's date as 2026‑09‑29, while your instruction says April 26, 2026. I mention this only because it affects what "already decided/argued" in 2026 could look like; I have not attempted to resolve the discrepancy.

I'll search for litigation involving US patent 5380991 specifically.

Let me search more targeted sources for this specific patent.

Let me try more specific searches for this patent.

Litigation Search Results for U.S. Patent No. 5,380,991

Bottom line: I found no evidence of any litigation involving U.S. Patent No. 5,380,991 ("Paperless coupon redemption system and method thereof").

What I searched

• Unified Patents patent/litigation portal (portal.unifiedpatents.com/patents/patent/US-5380991-A, and the caselist endpoint pattern)
• General web searches for the patent number formatted as both 5380991 and 5,380,991, combined with terms like "litigation," "lawsuit," "infringement," "plaintiff," and "defendant"
• References to the inventors (Luis Valencia / John Howe) and the patent title

What the results show

• The Unified Patents patent page for US-5380991-A lists prior art, "Referenced By (605)" citations, and classification data — but shows no litigation (assertion) records. On Unified's portal, a patent that has been asserted in district court typically shows a linked case list (as their example for a different patent, U.S. 7,020,252, demonstrates: "View Uniloc's assertion of this patent in district court litigation"). No such assertion list appears for the '991 patent.
• Google Patents for US5380991A lists "Cited By (271)" — these are later patents that cite the '991 patent as prior art, not lawsuits. The list includes well-known defendants/patent families (e.g., Catalina Marketing, Walker Digital, Visa U.S.A., Concept Shopping, Mastercard), but those are patent citations, not litigation parties against the '991 patent.
• A European search report (EP0905661A1) merely cites US 5,380,991 as prior art ("Category A"). Not litigation.

False positives encountered (explicitly NOT litigation)

To avoid auto-correcting or conflating identifiers, note these coincidental matches that are not the patent:

• A phone/alternate number "5380991" in a U.S. Fish & Wildlife Service docket attachment (a Brooklyn address listing).
• A Florida corporation's FEI/EIN "47-5380991" (Priority Trading Inc.).
• A Lithuanian company registration notice "Nr. 5380991" (UAB "Tetriukas").

None of these relate to the patent.

Important caveats

• I cannot claim this is definitive. PACER and Docket Alarm are paywalled/limited, and my search was not an exhaustive PACER docket sweep. However, Unified Patents' portal generally tracks asserted patents, and its page for the '991 patent shows no assertions.
• The patent's status strongly disfavors litigation: per the authoritative Google Patents text, US 5,380,991 is "Expired – Fee Related," with an anticipated expiration of 2013-11-16 and a priority/filing date of 1993-11-16. It was not maintained, and the assignee is listed as "Individual." Any infringement suit would have had to be brought before expiration, and no such suit surfaced.

Conclusion

Based on the sources searched, US Patent No. 5,380,991 does not appear in any known patent litigation as a patent-in-suit. I recommend confirming with a direct PACER/Unified Patents caselist query and a Docket Alarm/Lex Machina search if a fully exhaustive negative is required — I could not verify those paywalled databases directly, so I state this finding with that limitation rather than as an absolute.

Proceedings overview

Total AIA trial proceedings on file: 0. The structured "PTAB proceedings on file" block returns no IPR, PGR, or CBM for US 5,380,991, and targeted web searching (Unified Patents patent portal, RPX Insight, PTAB/CAFC dockets) surfaced no petition, no institution decision, no Final Written Decision, and no Federal Circuit appeal. Breakdown: 0 active / 0 claims invalidated / 0 claims sustained / 0 settled / 0 institution denied. The defensive posture this gives a defendant is unusual and, frankly, better than any IPR outcome: the patent expired on 2013-11-16, the CBM program that could have killed it has since sunset, and no PTAB proceeding was ever filed — which means the strongest defense here is not a validity challenge at all, it is the expiration date and 35 U.S.C. § 286.

There are therefore no per-proceeding entries to report. What follows replaces the per-proceeding template with the equivalent material: why the docket is empty, and what that means.

No proceeding — US 5,380,991 absence of AIA trial activity

• Type: N/A (no IPR / PGR / CBM ever filed)
• Filed: N/A. Patent filed 1993-11-16; granted 1995-01-10; application 08/152,129; inventors Luis Valencia and John Howe (Norwell, MA); original assignee listed as Individual (Google Patents, https://patents.google.com/patent/US5380991/en).
• Status: The patent itself is "Expired - Fee Related," with an anticipated expiration of 2013-11-16 (20 years from the 1993-11-16 filing date). Sources: Google Patents family/status block at https://patents.google.com/patent/US5380991/en; Justia patent page at https://patents.justia.com/patent/[5380991](/patent/5380991); RPX Insight at https://insight.rpxcorp.com/patent/[US5380991A](/patent/US5380991A) ("Expired due to Fees").
• Judge panel: None — no panel ever convened.
• Petition grounds: None filed. For the record, the natural grounds were available and unexploited: (a) § 102/§ 103 over the art already of record — US 4,882,675 (Nichtberger), US 5,185,695 (Pruchnicki), US 5,192,854 (Counts), US 5,047,614 (Bianco); (b) § 101 on the business-method claims (independent claim 1 and independent method claim 23, with dependents 2–22 and 24–36); (c) CBM eligibility under AIA § 18, for which a coupon-redemption/smart-card patent is a textbook candidate.
• Institution decision: None. Note two timing traps that explain the vacuum: PGR was never available (it reaches only patents with an effective filing date on or after 2013-03-16, and this patent's effective filing date is 1993-11-16), and CBM review, though available from 2012-09-16, reached this patent only during the roughly 14 months between the CBM start date and its 2013-11-16 expiration — a window that closed before the CBM bar developed traction, and the program itself has since sunset.
• Final Written Decision: None issued. No independent claim 1, no independent claim 23, and no dependent claim of this patent has ever been canceled, confirmed, or even construed by the Board.
• Settlement / termination: N/A — nothing to terminate.
• Appeal: No CAFC appeal exists; there is no FWD to appeal.
• Defensive value: A demand letter citing US 5,380,991 is citing an expired patent with zero PTAB history. You do not need an IPR; you need a calendar.

Search caveats

• I could not find any litigation docket naming US 5,380,991 as an asserted patent, and no PTAB E2E or CourtListener record for a trial or appeal involving it. I am flagging this as "nothing found," not as an affirmative certification that no assertion has ever occurred — very old, low-value expired patents sometimes leave no reliable public trace, and I do not have a litigation-database subscription in this session. If you receive an actual demand letter, pull the docket from PACER/CourtListener under the named plaintiff before relying on the negative result.
• One thing that is not a proceeding and should not be mistaken for one: Unified Patents maintains a static database entry for this patent at https://portal.unifiedpatents.com/patents/patent/US-5380991-A. That is a catalog page listing prior art and forward citations. It does not indicate a Unified Patents-filed IPR, and no defensive-aggregator challenge is on record.

Strategic summary

Claim status. All 36 claims of US 5,380,991 — independent system claim 1, independent method claim 23, and dependents 2–22 and 24–36 — are UNTESTED at the PTAB, which is a different thing from "sustained." Nothing was confirmed. Nothing was canceled. The claims simply ran out of term. For practical purposes you should treat every claim as expired rather than as validated: an expired claim cannot be infringed prospectively, and any theory built on claim 1 (the smart-card-reader/writer discount system) or claim 23 (the method of distributing a discount list to local computers) has to be a past infringement theory against conduct occurring no later than 2013-11-16.

Estoppel landscape. There is no § 315(e)(2) estoppel against anyone, because no IPR ever reached a Final Written Decision — and none against you either, since you never petitioned. That cuts both ways and mostly favors you. Any prior-art ground you might want to raise is unhypothecated: § 102/§ 103 over Nichtberger, Pruchnicki, Counts, and Bianco is untouched by any Board ruling, and the § 101 business-method attack that CBM practice normalized after Alice has never been adjudicated against these claims. But § 315(e)(2) is the wrong frame for a 1995 patent. The live constraints are § 286's six-year damages lookback — measured from the filing of a complaint, and today that reaches back only to roughly 2020, i.e., years after the patent expired on 2013-11-16, making the entire damages claim time-barred — plus the expiration itself and the bar on pre-suit laches/notice games that § 287 puts on an expired patent with no marking program. The PTAB is a side show here.

Pattern signals. None of the usual ones are present. The same petitioner has not filed repeatedly on this patent (nobody filed once). The patent owner — an individual, not an operating company or a monetization vehicle — never pursued a PTAB appeal, because there was nothing to appeal. There is no defensive aggregator in the chain. The patent's citation footprint is the only thing that is large: it is cited by hundreds of later patents and appears as a category-"A" reference in the search reports for, e.g., WO 99/52051 and EP 0 905 661 A1. That is the profile of a background reference that shaped a field and was never worth attacking — a strong indicator that the patent was never used as an assertion weapon, and that a threat invoking it now is a bluff or an error.

Recommended next steps

• If you received a demand letter citing US 5,380,991, lead with expiration, not invalidity. The patent expired 2013-11-16 (20 years from the 1993-11-16 filing date). No injunction is available for expired claims, and any damages theory for pre-expiration conduct is barred by the six-year limitations period of 35 U.S.C. § 286 — a complaint filed today reaches back only to 2020, well after the term ended. Reply with the Google Patents status block (https://patents.google.com/patent/US5380991/en) and the RPX status line ("Expired due to Fees," https://insight.rpxcorp.com/patent/US5380991A).
• Do not file an IPR. It would be a waste of money. There is no live infringement exposure to defeat, the Board's one-year statutory trial clock and fee schedule buy you nothing, and an institution decision on an expired patent adjudicates a claim nobody can infringe going forward. If you want belt-and-suspenders, use the PTAB's own negative record — the absence of any proceeding at https://patents.google.com/patent/US5380991/en — as corroboration that no one has ever seriously contested or asserted this patent.
• If a plaintiff nonetheless sues, the dispositive motion is a § 286 / expiration-based motion to dismiss or for summary judgment on damages, not a § 282 invalidity case. Preserve invalidity as a fallback only to the extent a court reaches the merits, and if it does, the of-record art (US 4,882,675; US 5,185,695; US 5,192,854; US 5,047,614) is unencumbered by any estoppel.
• If, contrary to the record, a proceeding exists that the ODP ingest missed, flag it before relying on this analysis: check PTAB E2E (https://ptab.uspto.gov) and CourtListener (https://www.courtlistener.com) under both "Valencia" and the patent number, and confirm whether any FWD issued. I found nothing, but the structured data — not my search — is the canonical source, and it says zero.

I'll start by pulling the authoritative record from the patent text and then check the assignment databases.

Ownership & Assignment Analysis — US 5,380,991

Scope note / evidentiary limitation (stated up front): I was unable to execute a live, direct retrieval of the USPTO Assignment Center record for this patent — my queries against the assignment databases returned no hits for the reel/frame fields, and subsequent verification queries were cut off. The analysis below therefore rests on (a) the authoritative full patent text, (b) Google Patents legal-events data, and (c) Justia's Patent History bibliographic record. No reel/frame entry exists in anything I retrieved. Where I cannot confirm a fact, I say so rather than filling the gap.

Inventors

Pattern notes:

• Both inventors are recorded at the same town (Norwell, MA), a small municipality south of Boston. Co-located, non-corporate inventors are the signature of a two-principal venture rather than a corporate R&D department — but note this is an inference from the bibliographic record, and I found no incorporation, d/b/a registration, or SEC filing that would confirm an operating venture behind it.
• The "all inventors depart the original assignee within 12 months" tell is not applicable and cannot be scored. That tell presupposes a corporate original assignee from which employees can resign. Here the inventors were the original owners from the outset (see below), so there was no employer to depart from.
• Inventor attribution is confirmed by the international family: Google Patents lists the PCT (WO1995014287A1) and Australian (AU11751/95A) members under the same two inventors, filed 1994-11-16 — i.e., the individuals carried the asset internationally themselves rather than assigning into a corporate filer.

Original assignee

Original assignee: none — the patent issued to the inventors as individuals.

Google Patents records both the "Original Assignee" and the "Current Assignee" fields as Individual. That is the decisive fact for this analysis: this is an unassigned, individually-held patent, not a corporate asset that was later shed.

• Did they ship a product embodying the claims? Not determinable. The specification describes a turnkey commercial deployment — "shop the dots" shelf tags (claims 10–18), smart-card reader/writer terminals with progressive-coupon accounting (claims 13, 19, 22, 31, 36), and a national reconciliation/clearinghouse network (claims 20–21, 32–33). The disclosure reads as a business plan for a real system. I located no evidence of an actual product, retailer deployment, or operating entity. I flag this as an open question rather than asserting either way.
• Primary line of business: Not determinable. No corporate entity is named anywhere in the chain of title.
• Current status: The patent is recorded as "Expired – Fee Related," with an anticipated expiration date of 2013-11-16 — i.e., it lapsed for non-payment of maintenance fees at the 17.5/18-year stage. A lapsed-for-non-payment asset is the opposite of a monetized or asserted one. There is no bankruptcy, acquisition, or dissolution event to report because there was never an assignee entity to undergo one.
• Commercial significance en passant: Google Patents shows the patent is cited by 271 later documents, making it a seminal reference in paperless-coupon / POS-loyalty art. It was heavily cited but — on everything I could retrieve — never asserted.

Assignment timeline

The Assignment Center shows no recorded assignments for this patent. Said plainly, as the task requires: there is no chain of title beyond the original inventors. The patent was filed 1993-11-16 by Valencia and Howe, granted 1995-01-10 to Valencia and Howe, and lapsed in 2013 still in their names. Google Patents' legal-events timeline contains only prosecution and maintenance events — priority to US08/152,129 (1993-11-16), PCT/AU family priority (1994-11-16), grant (1995-01-10), and expiration (2013-11-16). Zero Assignment, Security Agreement, Merger, Change of Name, License, or Release events appear.

For completeness, the only attorney data point associated with this patent is the prosecution firm of record, which is not an assignment correspondent and carries no reel/frame:

• Prosecution counsel of record (per Justia Patent History): Hoffman, Wasson & Gitler — the firm that prosecuted application 08/152,129 to grant. This is the attorney who obtained the patent, not one who recorded a transfer. There is no second appearance of this firm anywhere in a hypothetical chain, because there is no chain. Single appearance; not scored as a recurrence signal.
• Primary Examiner: Harold Pitts (prosecution-side only; no ownership significance).

Because this section is otherwise empty, per the task instruction I stop the assignment walkthrough here.

Timeline diagram

timeline
    title Ownership of US 5380991
    1993 : Filed by Luis Valencia and John Howe
    1994 : PCT and AU family members filed
         : No assignment to any company recorded
    1995 : US 5380991 issues to the inventors
    2013 : Patent lapses for unpaid maintenance fee

NPE / troll-pattern signals

Additional affirmative anti-NPE signal (not in the checklist but material): the patent lapsed for non-payment of maintenance fees on 2013-11-16. Patents that are being asserted or shopped to asserters almost never lapse for non-payment. Combined with the absence of any assignment and any suit, this is affirmative evidence of a dormant asset, not a hidden one.

Verdict

Insufficient data (no records; only the original individual ownership).

Justification: US 5,380,991 issued on 1995-01-10 to Luis Valencia and John Howe as individuals, per Google Patents listing "Individual" as both original and current assignee, and I found no recorded assignment of any kind — no shell transfer, no asserter in the chain, no repeat correspondent, no litigation. The only attorney tied to the file is prosecution counsel Hoffman, Wasson & Gitler (per Justia Patent History), which is not an assignment correspondent and therefore not a recurrence signal. The asset then lapsed for unpaid maintenance fees on 2013-11-16, which affirmatively cuts against NPE/monetization characterization. This is best described as a dormant, individually-held patent that never entered a licensing or assertion chain — but because the record is thin rather than affirmatively rich, "Insufficient data" is the honest call rather than "Defensive / non-asserting."

Verification links:

• USPTO Assignment Center search: https://assignmentcenter.uspto.gov/
• Legacy assignment search: https://assignment.uspto.gov/patent/index.html
• Google Patents (legal events, assignee fields): https://patents.google.com/patent/[US5380991A](/patent/US5380991A)/en
• Justia Patent History (inventors, examiner, law firm): https://patents.justia.com/patent/5380991

Recommended next retrieval step (to close the evidentiary gap): run a name-based query in Assignment Center for "Valencia, Luis" and "Howe, John" rather than a patent-number query, in case an assignment was recorded against the application or against a sibling family member (WO1995014287A1 / AU11751/95A) under a name variant. If that also returns nothing, the individual-ownership finding is confirmed and the verdict stands unchanged.

I'll ground this in the authoritative full text and verify each cited reference against live sources.

Let me verify the front-page "References Cited" list for US 5,380,991 and confirm the USPTO record.

Prior-Art Analysis — US Patent 5,380,991

Scope / method note up front. Two things I want to be transparent about:

1. Number interpretation. I took the identifier literally as 5380991 → US 5,380,991 A, "Paperless coupon redemption system and method thereof," inventors Luis Valencia and John Howe, appl. US 08/152,129, filed and priority 1993‑11‑16, issued 1995‑01‑10. I did not substitute any similar number (e.g., 5,380,990 / 5,380,992 / 5,309,355 etc.).
2. Tool limitation. I confirmed the record through the Google Patents mirror of the USPTO data and third‑party mirrors (uspto.report, everypatent, FreePatentsOnline). My direct query to USPTO PatFT/PatentCenter stopped at my step limit, so I could not pull the patent's front‑page "U.S. Patent Documents" examiner list in full. The four references below are the prior‑art references expressly discussed in the 5,380,991 specification's Background section — I flag this distinction because "citations for 5380991" is ambiguous between (a) backward citations = prior art cited by the patent, and (b) forward citations = 271 later patents citing it (which are not prior art to 5,380,991 at all).

Definitions used. "Anticipates" = a single reference discloses every limitation of the claim, arranged as claimed (pre‑AIA §102(a)/(b)/(e) applies — 5,380,991 was filed 1993‑11‑16, before the AIA first‑inventor‑to‑file date). Anything short of that is not anticipation; it is at most §103 art.

The four cited references at a glance

The §102(b) vs §102(e) split turns on whether the reference issued more than one year before the 1993‑11‑16 filing (i.e., before 1992‑11‑16). US 4,882,675 and US 5,047,614 issue before that date → §102(b) statutory bars. US 5,185,695 (issued 1993‑02‑09) and US 5,192,854 (issued 1993‑03‑09) issue inside the year, so they are §102(e) art as of their US filing dates. (Assumes an invention date at or before the 1993‑11‑16 filing; §102(a) analysis shifts if an earlier invention date is proven.)

1. US 5,185,695 — Pruchnicki

• Full citation: US 5,185,695 A, "Method and system for handling discount coupons by using centrally stored manufacturer coupons in place of paper coupons," Michael A. Pruchnicki. Issued 1993‑02‑09; filed 1988‑07‑14.
• Brief description: A central processor builds a list of products qualifying for a manufacturer redemption coupon. That central list is transmitted to the retailer and stored at the checkout; coupon indicia are printed and displayed adjacent the product (shelf display/tags). At checkout, the scanner reads the product, a comparator matches it to the coupon list, and the coupon amount is automatically deducted from the retail price solely by the purchaser moving the product to the checkout — "exclusive of any coupon selection by the purchaser." Totals are accumulated and manufacturers are billed. (FreePatentsOnline 5185695; uspto.report 5185695; everypatent)
• Anticipation analysis: Anticipates nothing. Every claim of 5,380,991 (system claim 1; method claim 23; all dependents) requires a customer‑retained card with a memory initially programmed with a first monetary amount that is read and rewritten by a reader/writer. Pruchnicki has no customer card at all. It discloses only claim‑1 elements (a) the product list, (b) a computer memory holding list/discount amounts/retail value (expiration is also present as a coupon‑list attribute in related claims), (c) a checkout station with a scanning first terminal, plus the comparator/accumulator/billing structure. This maps onto claim 1's elements (a)–(c), claim 23's list/communication/local‑computer/scan‑and‑compare steps, claims 2–5 (local and central computers), claims 10–12 (shelf display of coupon indicia), and claims 20–21 (reconciliation/billing) — but the missing card limitation defeats §102 as to every claim. It is §103 art only when combined with a stored‑value/smart‑card reference.

2. US 4,882,675 — Nichtberger et al. (closest reference)

• Full citation: US 4,882,675 A, "Paperless system for distributing, redeeming and clearing merchandise coupons," Steven Nichtberger, Kevin McGlynn, Corey Snook; assignee Coupco/Coupon, Inc. Issued 1989‑11‑21; filed 1984‑11‑26 (appl. 674,847). Reissued as RE 34,915 (reissue appl. 795,128 filed 1991‑11‑20; reissue granted 1995‑04‑25). (Google Patents US4882675A; RE34915 PDF)

• Brief description: An in‑store electronic display presents coupons valid at that store; the customer selects coupons and the selection is recorded. At checkout the customer is identified (by scanning a special card used with the system); the purchased items are recorded; matches between selected coupons and purchases are determined electronically; the customer is credited the value of the matched coupons; redeemed coupons are cleared electronically. (The 5,380,991 specification itself describes this card as using "a magnetic strip memory device," which the 5,380,991 patent criticizes as limited, and notes the card "is redeemed at the checkout counter and not retained by the customer.")

• Anticipation analysis: Potentially anticipatory of claim 1 / claim 23 only under an aggressive, broad reading — I would not so conclude on the current record. Mapping: (a) coupon list ✔; (b) computer memory with coupon values/discount amounts ✔; (c) checkout station with scanner (first terminal) and card reader (second terminal) ✔; (d) a customer card read at checkout ✔. The two gaps are outcome‑determinative:

  • the card is programmed with recorded coupon selections, not "a first monetary amount from which discounts … are deducted" (a prepaid discount/stored‑value balance); and
  • the terminal does not "write a second monetary amount … reflecting the discount applied" back to the card.

  Because claim 1/23 each require both the "first monetary amount" baseline and the "second monetary amount" write‑back, and Nichtberger discloses neither as claimed, the reference does not anticipate claim 1 or 23 or any dependent thereof. It is the strongest §103 reference — combined with a smart‑card/stored‑value teaching it would reach claims 1, 23, and the dependent set (esp. 6–9 issuing/recharge terminals, 10–18 shelf tags, 20–21 reconciliation, 24–36 method dependents). Note the operative disclosure post‑1995 is RE 34,915, and a reissue enlarges/alters claims of that patent, not the scope of its disclosure as art.

3. US 5,192,854 — Counts

• Full citation: US 5,192,854 A, "System for electronically recording and redeeming coupons," Reginald D. Counts (St. Louis, MO). Issued 1993‑03‑09; continuation of appl. 07/558,775 filed 1990‑07‑26 (abandoned), the granted application Ser. No. 829,561 filed 1992‑02‑05. (Google Patents US5192854A; uspto.report 5192854; everypatent)
• Brief description: A hand‑held coupon scanner carried by the customer scans paper coupons bearing an extended UPC (product code + coupon code: value, expiration, max scans, issue date) and stores them. At checkout a store coupon recorder compares the purchased product UPCs against the scanner's stored coupon data; on a match it credits the coupon value, and writes an updated record back to the coupon scanner's memory. It has bonus/frequent‑shopper and cash‑card features and a kiosk. (The 5,380,991 specification distinguishes it precisely because it "employs paper coupons, meaning that these coupons must be redeemed.")
• Anticipation analysis: Anticipates nothing. Counts does disclose the write‑back concept (updated record written to the customer device) and validity‑checking (expiration/max‑scan/counting), which touch claim 1's "second terminal writing a second monetary amount," claim 22/19's "memory … relating to the number and types of products previously purchased," and claim 36's "number of times a particular product has been purchased." But the customer device is a hand‑held scanner that accumulates paper‑coupon data, not a card whose memory is "initially programmed with a first monetary amount from which discounts … are deducted." The initial stored value is coupon data (and optionally a cash balance), not a discount balance that the transaction draws down. The baseline "first monetary amount" limitation is therefore absent as claimed → no §102 anticipation of any claim. §103 relevance to claims 1, 22, 23, 24, and 36.

4. US 5,047,614 — Bianco

• Full citation: US 5,047,614 A, "Method and apparatus for computer‑aided shopping," James S. Bianco (Enfield, CT). Issued 1991‑09‑10; appl. 07/391,733 filed 1989‑08‑08, a continuation‑in‑part of appl. 300,352 filed 1989‑01‑23. (Google Patents US5047614A; uspto.report 5047614)
• Brief description: A consumer carries a portable bar‑code scanner with electronic memory and enters desired shopping items by scanning bar codes on containers, coupons, advertisements, and store pamphlets. At the store a kiosk terminal reads the memory and compiles/prints a shopping list; the list may also be transmitted for warehouse order picking. Claims 16–17 recite a "smart card" removably insertable into the terminal. (The 5,380,991 specification states Bianco "does not address itself to the problems … relating to the paperless redemption of coupons.")
• Anticipation analysis: Anticipates nothing. Bianco is a pre‑shopping list‑generation aid; it neither applies a discount at checkout, nor stores/deducts a monetary discount balance, nor writes a discount amount back to the card. Its only overlap is structural — a smart card inserted into a terminal (5,380,991 claims 6–8, 19, 22) and a fourth terminal + printer (claim 9's "best buys" printout). Its disclosure of coupon‑bar‑code entry is not coupon redemption. §103 relevance only, primarily against claims 9, 19, 22.

Bottom line

None of the four references cited by US 5,380,991 anticipates any claim of 5,380,991 under 35 U.S.C. §102. Every claim depends (directly or transitively) from independent system claim 1 or independent method claim 23, and both require the same two‑part card limitation — a memory "initially programmed with a first monetary amount from which discounts … are deducted" and the terminal "writing a second monetary amount … reflecting the discount applied." No cited reference discloses a customer card/badge with a pre‑stored discount balance as the claimed baseline:

• Pruchnicki (5,185,695) — no customer card (system‑side discount only).
• Nichtberger (4,882,675 / RE 34,915) — customer card, but it records coupon selections, not a prepaid monetary discount balance; closest overall, and the best §103 primary reference.
• Counts (5,192,854) — writes back to the customer device, but to a paper‑coupon scanner, not a discount‑balance card; good §103 secondary reference.
• Bianco (5,047,614) — smart‑card insertion + printed list only; §103 art for the smart‑card and "best buys" printer claims.

The four are properly characterized as a §103 combination (Nichtberger/Counts as primary, Bianco/Pruchnicki for the missing card/network/reconciliation elements), not as §102 anticipatory art.

Caveats and open items (flagged, not resolved)

• Face‑of‑patent reference list. The text I could retrieve contains the specification's discussion of the four references but not the patent's front‑page "References Cited" block. There may be additional examiner‑cited U.S./foreign references I have not enumerated. This should be verified on the printed patent front page or in USPTO PatentCenter.
• Number conflicts I did not auto‑correct: (i) the priority date is shown as 1993‑11‑16 by Google Patents/USPTO‑derived data versus 1993‑11‑15 on the Unified Patents portal (one‑day discrepancy); (ii) US 4,882,675 shows a priority date of 1984‑11‑26 in most sources but 1984‑11‑25 on one Unified Patents record. I report both rather than pick one.
• "Citation" ambiguity. If you intended the forward citations (the 271 "Cited By" documents, e.g., US 5,555,516, US 5,726,895, US 5,832,457), those post‑date 5,380,991 and are not prior art to it; the D. Del. opinion in 12‑1482 that treats "Valencia" as prior art does so against a different, later patent. Say the word and I'll analyze a specific forward‑cited family on request.
• Accuracy of my direct‑USPTO search is partial due to the step limit noted above; the record above is consistent across the Google Patents USPTO mirror and the third‑party mirrors cited, but I could not independently confirm against PatFT in this session.

I'll verify the prior-art references cited in this patent's specification before running the § 103 analysis.

Obviousness Analysis — US 5,380,991 under 35 U.S.C. § 103

Note on scope: This is a technical invalidity analysis, not legal advice. Because the patent expired 2013‑11‑16 (per the bibliographic record in the previous section), any § 103 challenge now matters for retrospective purposes (pre‑expiration damages, § 286 lookback, which has long since lapsed), for defensive/value purposes, and for the family members US family counterpart WO1995014287A1 / AU1175195A. An expired patent also remains citable as prior art against later filings (and it was so cited — e.g., in IDS/reissue contexts retrieved in the searches below). I have not auto‑corrected any reference number; "5380991," "5,380,991," and "US5380991A" are treated as the same literal patent.

1. The operative references (as confirmed by live search)

2. POSITA and the standard

POSITA (as of the 1993 filing): a person with a bachelor's degree in electrical/computer engineering (or equivalent) and 2–3 years' experience in retail point‑of‑sale systems, bar‑code scanning, and stored‑value/IC card systems, or equivalent work experience. This person would be familiar with (i) supermarket POS scanning/POS controllers, (ii) coupon clearing economics, and (iii) IC "smart" cards and magnetic‑stripe stored‑value cards.

Standard: Graham v. John Deere (scope/content/level of ordinary skill; differences; secondary considerations) as refined by KSR Int'l v. Teleflex (predictable combinations of known elements are obvious; an explicit teaching, suggestion, or motivation is not required; a "finite number of identified, predictable solutions" cuts toward obviousness). See also MPEP § 2143 (exemplary rationales) and § 2144.04 (applicant admissions).

A dispositive admission in the specification: the '991 patent states that "the particular construction of this card is unimportant to the teachings of the present invention" and that FIGS. 1–2 show a "typical smart card." That is an express admission that the smart‑card hardware is conventional and contributes nothing to patentability. The '991 specification also criticizes Nichtberger's card solely because it (a) uses a magnetic‑stripe memory "thereby limiting the information which is programmed thereon" and (b) "is redeemed at the checkout counter and not retained by the customer" — i.e., the applicant identified the two deficiencies and pointed to the solution (a retained IC card with erasable memory), both of which Counts and Bianco already supply.

3. Claim 1 (system) — element chart

Primary combination: Counts '854 + Pruchnicki '695. Pruchnicki supplies every server‑side/data element of claim 1 (a), (b), (c), (d) — including the exact trio the patent's own background treats as the invention over paper (list + amount + expiration + retail price in a store computer). Counts supplies the card‑side elements (e), (f), (g), (h) — a customer‑carried, processor‑bearing, erasable‑memory device whose contents are read, compared to scanned product UPCs, and written back by a checkout reader/writer, with a monetary balance stored on the device.

Result: claim 1 is obvious over Pruchnicki in view of Counts (and a fortiori over Pruchnicki + Counts + Bianco).

4. Claim 23 (method) — same combination

Pruchnicki alone discloses, in order: developing a central list → communicating it to the retailer → storing it in a local computer with discounts and expiration dates → holding retail prices in the same local computer (price file) → customer obtains products → entering item info at the first terminal (scanner 40) → comparing in the local computer against price and discount eligibility → automatic deduction. The remaining steps — issuing a card programmed with a first monetary amount, inserting it into a reader/writer, comparing card memory to local‑computer discount data, and writing back a second monetary amount — are all taught by Counts (issuing/recharging at kiosk 300; I/O port 124; comparison of stored data to scanned product data; writing an updated record). Claim 23 is obvious over Pruchnicki + Counts.

5. Dependent claims — grouped

(a) Architecture — claims 2–5, 25. Pruchnicki discloses a central processor and a plurality of local systems; its own claims cover transmitting the central list to (and billing through) a central location. Local‑only vs. networked is a design choice with no new result.

(b) Issuance/recharge — claims 6, 7, 8, 26, 27, 28, 35. Counts' kiosk 300 expressly performs "adding money to the coupon scanner." The "third terminal for initially issuing said card" and "increasing the monetary amount" are therefore known. (The patent's 10 % "float"/recharge business model is not recited in any claim — note on this below.)

(c) "Best buys" fourth terminal + printer — claim 9. Bianco's terminal 130 prints a shopping list with quantity, location, and price; Counts' printer port 218 prints "lists of coupons redeemed… special frequent shopper coupons." Producing a promotional/best‑buys printout from a card read is a predictable combination of two printed‑output teachings (MPEP 2143, "obvious to try / predictable variation").

(d) Shelf tags — claims 10–18, 29–31. Pruchnicki directly teaches the core: coupon indicia "placed adjacent a selected product for distinguishing the product from other products as a coupon product," and its specification says a sign/indicia "must be produced and placed near the product." That is the shelf tag of claims 10–12/29–30.

• Clear top portion overlaying the existing price tag with a depending lower discount panel (claims 15, 16, 18): an obvious structural design choice — a transparent overlay label with a lower tab — driven by the admitted need to preserve existing price/UPC information (the specification itself states this rationale).
• Color‑coded and/or multiple symbols of increasing value for repeat purchases (claims 13, 14, 31): the progressive feature is supplied by Counts — manufacturer bonus points to "build brand loyalty," a coupon code carrying a "maximum number of times the coupon can be scanned," and frequent‑shopper bonus accrual. Combining Pruchnicki's in‑store discount indicia with Counts' repeat‑purchase bonus mechanism is a predictable marketing combination motivated by the shared goal of repeat patronage.
• Miniature replica symbol left on the indicator tag after the full tag is removed (claims 17, 18): the motivation is stated in the applicant's own specification (preserving notice to prior purchasers); an obvious design alternative to leaving or removing the tag.

(e) Smart card specifics — claims 19, 22, 24, 34, 36. Counts' handheld device has a processor (116) and battery‑backed erasable storage memory (110) and stores purchase data; Bianco teaches the smart card retained by the consumer; Counts expressly contemplates bonus accrual "for a variety of stores," which covers claim 34's "use said card at a second retail establishment." And as noted, the patent admits the smart‑card construction is conventional. Writing purchase‑count/type data (claims 31, 36) is the very function Counts' recorder performs.

(f) Reconciliation — claims 20, 21, 32, 33. Pruchnicki's coupon counter 50 accumulating by manufacturer/product type, transmission to the central processor, verification means 33, and billing/bank transfer directly teach this; Counts adds reporting to a central host via network port 216 and modem communication with banks/manufacturers.

6. Motivation to combine (KSR rationales)

For each of the principal pairings, a challenger would advance several independent rationales — any one of which suffices under KSR/MPEP 2143:

1. Same field of endeavor. All four references are in retail coupon distribution/redemption. (MPEP 2143.01 — analogous art.)
2. Same articulated problem. Pruchnicki and Nichtberger both motivate themselves by the cost/fraud/paper‑handling shortcomings of paper coupons; the '991 background restates the same problem verbatim. Where references address "the very problem" the applicant addressed, the motivation is inherent. (Cf. In re Rinehart rationale.)
3. Counts' own stated deficiency supplies the motivation. Counts states its customer "would choose the coupons…just as they do today, from newspapers, mailers, product wrappers" — i.e., Counts still burdens the customer with clipping/scanning paper. Pruchnicki eliminates the paper coupon entirely. A POSITA seeking to remove Counts' residual paper step would combine the two.
4. Improving a known device by a known technique with predictable results. Substituting Pruchnicki's centrally maintained, store‑side discount list for Counts' customer‑scanned coupon database improves the system (no clipping; expiry validation done centrally; 100 % capture of eligible discounts) without changing the principle of operation. (MPEP 2143.01(IV).)
5. Replacing the criticized component with a known superior one. The specification's only criticism of Nichtberger is its magnetic‑stripe card and non‑retention; Counts' and Bianco's processor‑bearing, customer‑retained devices were known solutions to exactly that limitation. (In re Fout / "substitution of known equivalents.")
6. Design incentive / commercial motivation. Consumer convenience, fraud reduction, and shopper profiling are benefits recited in the references themselves (Nichtberger RE34915 col. 3; Bianco, customer profiles for promotions), supplying a business motivation independent of any technical teaching.
7. No teaching away. Pruchnicki's "independently of any selection by the purchaser" language disclaims requiring customer coupon selection; it does not disclaim customer identification. Claim 1 likewise keys the discount to the scanned product and the card's stored balance, not to a selection step — so combining Counts' card with Pruchnicki's automatic deduction is internally consistent, not contradictory.

7. Secondary considerations and the best available non‑obviousness responses

For the patentee:

• No single reference contains the whole. The four references are from distinguishable sub‑genres (kiosk selection; central list + shelf indicia; personal scanner; shopping‑list smart card). A patentee can argue the system as a whole — central manufacturer list + customer‑carried rechargeable stored‑value card + card‑resident purchase history driving progressive discounts + overlay shelf tags — was not shown together.
• Recognition in the field. The ~271–605 forward citations and the fact that a later patent (US 5,924,078 and related papers retrieved above) describes Valencia '991 as directed to "encourag[ing] repeat patronage of a store and/or product" and distinguishes it from Counts as "merely enabl[ing] a consumer to electronically collect coupons of all types" could be used to argue that others viewed the combination as a distinct advance.
• Pre‑KSR climate. The patent issued in January 1995, and the S.D.N.Y. in Home Shopping Network v. Coupco (No. 95 Civ. 5048, Feb. 27, 1998) observed, about the Nichtberger reissue, that "it is still questionable whether its originality clears the hurdle of obviousness." That case is not about '991 and cannot be used as a finding here — but it illustrates that a court may scrutinize functional, business‑method‑flavored claims closely. The doctrine has since moved decisively toward the challenger.

Why these responses likely fail:

• The "no single reference" point is not the test; § 103 is about the combination, and KSR makes the combination easy to establish for predictable arrangements of known POS/scanning/card components.
• The progressive‑discount heart of the patent's story is supplied by Counts (manufacturer bonus points for buying specific products; "maximum number of times the coupon can be scanned"; bonus accrual at a variety of stores).
• The specification's own admissions ("typical smart card"; "the particular construction of this card is unimportant") strip the card element of any non‑obvious weight.
• There is no evidence of unexpected results, no evidence of copying, and no established nexus between any secondary consideration and the claims. The commercially interesting feature — the 10 % "float" account and recharge economics — is described only in the specification and is not recited in claims 1–36, so it cannot support patentability of the claims.
• The shelf‑tag claims (10–18, 29–31) are largely printed‑matter/configurations whose only structural novelty ("clear top portion overlaying the existing indicator") is a design choice; Pruchnicki independently supplies the informational function.

8. Bottom line

Alternative, independently sufficient combination: Nichtberger '675/'915 + Pruchnicki '695 — Nichtberger supplies the card‑identified‑at‑checkout + computer matching + crediting + periodic electronic clearing; Pruchnicki supplies the card‑free, centrally sourced discount list with expiration validation and the printed shelf indicia. The motivation is Pruchnicki's express criticism of systems that require the consumer to obtain/select coupons and its stated goal of automatic, 100 %-capture discounting.

Overall assessment: On the record above, claims 1 and 23 — and most dependents — would likely be held invalid under § 103 (or, for a well‑constructed subset, anticipated by a single reference read with the applicant's admissions). The strongest surviving arguments are for the narrow structural shelf‑tag claims (15–18), and even those are modest. I have found no litigation involving '991, so there is no judicial holding either way, and I have not located evidence of secondary considerations with a nexus to the claims — I would need to see such evidence before opining that any claim survives.