BED BATH & BEYOND INC. v. SEARS HOLDING CORPORATION et al

Filing 175

OPINION. Signed by Judge Susan D. Wigenton on 6/4/2012. (nr, ) (Main Document 175 replaced on 6/4/2012) (ak).

UNITED STATES DISTRICT COURT
DISTRICT OF NEW JERSEY

BED BATH & BEYOND, INC.,
Plaintiff,
v.
SEARS BRANDS, LLC
Defendant.

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Civil Action No. 08-5839 (SDW)(MCA)

OPINION

June 4, 2012

WIGENTON, District Judge.
Before the Court is Plaintiff Bed Bath & Beyond, Inc.’s (“Plaintiff” or “BBB”) Motion
for Summary Judgment on Non-Infringement of U.S. Patent No. 5,970,474 (the “’474 patent”)
and Plaintiff’s Motion for Partial Summary Judgment Limiting Defendant Sears’ (“Defendant”
or “Sears”) Damages Claim for Failure to Comply with the Marking Requirement of 35 U.S.C.
§ 287 pursuant to Fed. R. Civ. P. 56(c) (“Motions”). This Court has jurisdiction pursuant to 28
U.S.C. §§ 1331 and 1338. Venue is proper in this District pursuant to 28 U.S.C. §§ 1391(b) and
1400. These Motions are decided without oral argument pursuant to Fed. R. Civ. P. 78. For the
reasons stated below, this Court denies Plaintiff’s Motion for Summary Judgment on NonInfringement and grants its Motion for Partial Summary Judgment Limiting Sears’ Damages.

FACTUAL AND PROCEDURAL HISTORY
On October 19, 1999, the ’479 patent titled “Registry Information System For Shoppers”
was issued to Michael Leroy et al. As this Court noted in its Markman Opinion, “the patent
describes a system that provides solutions to problems commonly faced by retail store gift
registry systems, such as: (1) duplicate gift purchases by customers due to delayed updates to gift
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registry records; and (2) difficulties retrieving gift registry records where the registrant and the
purchaser are not in the proximity to the same store.” (Docket Entry No. 111 at 1-2) (citing ’474
patent col. 1:21-28). The Abstract describes the patent as “[a] product information system for
selecting, monitoring and [the] purchasing of products in a retail establishment [which] includes
a product selection device, a data processor, a registry retrieval device, a point-of-sale data input
device, and a host computer.” (Abstract.) The ’474 patent consists of two independent claims
which are substantially similar: claim 1, which is to be implemented in a “retail establishment”
and claim 17, which is to be implemented in “[a]n inter-site” system. (Id. cls. 1, 17; col. 2:16,
2:44.) Claims 2-16 are dependent on claim 1 and claims 18-22 are dependent on claim 17.
BBB, which owns and operates retail and online stores, also offers a bridal and gift
registry as part of its services. (Compl. ¶¶ 8-9.) On July 18, 2008, Defendant contacted BBB
and informed it that its gift registry system infringed on one or more claims of the ’474 patent.
(Faegenburg Decl. Ex. B.) Plaintiff responded to the charge of infringement. Subsequently, on
November 11, 2008, Defendant once again informed BBB that its gift registry system infringed
on the ’474 patent. (Compl. ¶¶ 11-12.) Consequently, on November 26, 2008, Plaintiff initiated
this action seeking a declaration of non-infringement. On June 15, 2009, Sears filed an Answer
and Counterclaim alleging that BBB’s bridal and gift registry infringes the ’474 patent. (Def.’s
Countercl. ¶¶ 28-31.)
On August 20, 2010, this Court conducted a claim construction hearing. At the Markman
hearing the parties asked the Court to address three claim terms: (1) “desired items”; (2) “data
processor”; and (3) “retail establishment,” “retail site,” and “inter-site.” (Docket Entry No. 111
at 2). This Court concluded that: “desired items” meant “one or more items desired”; (id. at 6);
“data processor” is a “device that processes data by collecting and routing the data, or by adding,

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modifying, and associating the data”; (id. at 10); and “retail establishment” and “retail site”
meant “a store location” and “inter-site” meant “a plurality of store locations.” (Id. at 16).

SUMMARY JUDGMENT STANDARD
Summary judgment is appropriate “if the movant shows that there is no genuine dispute
as to any material fact and the movant is entitled to judgment as a matter of law.” Fed. R. Civ. P.
56(a). The “mere existence of some alleged factual dispute between the parties will not defeat an
otherwise properly supported motion for summary judgment; the requirement is that there be no
genuine issue of material fact.” Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 247–48 (1986).
A fact is only “material” for purposes of a summary judgment motion if a dispute over that fact
“might affect the outcome of the suit under the governing law.” Id. at 248. A dispute about a
material fact is “genuine” if “the evidence is such that a reasonable jury could return a verdict for
the nonmoving party.” Id. The dispute is not genuine if it merely involves “some metaphysical
doubt as to the material facts.” Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574,
586 (1986).
The moving party must show that if the evidentiary material of record were reduced to
admissible evidence in court, it would be insufficient to permit the nonmoving party to carry its
burden of proof. Celotex Corp. v. Catrett, 477 U.S. 317, 322-23 (1986). Once the moving party
meets its initial burden, the burden then shifts to the nonmovant who must set forth specific facts
showing a genuine issue for trial and may not rest upon the mere allegations, speculations,
unsupported assertions or denials of its pleadings. Shields v. Zuccarini, 254 F.3d 476, 481 (3d
Cir. 2001). “In considering a motion for summary judgment, a district court may not make
credibility determinations or engage in any weighing of the evidence; instead, the non-moving
party’s evidence ‘is to be believed and all justifiable inferences are to be drawn in his favor.’”
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Marino v. Indus. Crating Co., 358 F.3d 241, 247 (3d Cir. 2004) (quoting Anderson, 477 U.S. at
255).
The nonmoving party “must present more than just ‘bare assertions, conclusory
allegations or suspicions’ to show the existence of a genuine issue.” Podobnik v. U.S. Postal
Serv., 409 F.3d 584, 594 (3d Cir. 2005) (quoting Celotex Corp., 477 U.S. at 325). Further, the
nonmoving party is required to “point to concrete evidence in the record which supports each
essential element of its case.” Black Car Assistance Corp. v. New Jersey, 351 F. Supp. 2d 284,
286 (D.N.J. 2004). If the nonmoving party “fails to make a showing sufficient to establish the
existence of an element essential to that party’s case, and on which . . . [it has] the burden of
proof,” then the moving party is entitled to judgment as a matter of law. Celotex Corp., 477 U.S.
at 322-23.

DISCUSSION
1. BBB’s Motion for Summary Judgment on Non-Infringement
a. Literal Infringement
i. BBB’s In-Store System
There are two steps in a patent infringement analysis.

Tate Access Floors, Inc. v.

Interface Architectural Res., Inc., 279 F.3d 1357, 1365 (Fed. Cir. 2002). The first step is to
define the meanings of the claims of the patent. Markman, 52 F.3d at 976. Thereafter, the court
must compare the claims as construed with the alleged infringing product. Tate, 279 F.3d at
1365. This Court has already undertaken the first step of the infringement analysis. Therefore, it
will now determine if BBB’s bridal and gift registry system infringes on one or more claims of
the ’474 patent. BBB maintains that it is entitled to summary judgment because its bridal and
gift registry does not infringe the ’474 patent. According to Plaintiff, its system “does not meet
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the claim limitation requiring an in-store data processor adapted to collect and then route to a
registry database.” (Pl.’s Br. 2.) Plaintiff bases this argument entirely on its assertion that this
“Court’s Markman opinion establishes[] that th[e] data processor must be capable of storing data
identifying multiple items to be routed, such that the claims do not encompass a router only
capable of one-item-at-a-time operation, such as BBB’s.”

(Id.) (emphasis added).

In the

Markman opinion, this Court observed that: “while the customer can purchase one or more
desired items, nowhere do the specifications or the claim language contemplate an in-store
processor incapable of collecting more than one item from a registrant.” (Docket Entry No. 111
at 10). BBB, relying on this observation, contends that this Court construed “collect” to mean
the ability to hold or store data identifying multiple items “at any one time” or “at the same time”
from the same registrant. (Pl.’s Br. 13; Pl.’s Reply Br. 9.)
“Collect” was not one of the terms presented to the Court for construction. As a result,
this Court did not define “collect” in the Markman opinion and Plaintiff cannot make “collect” a
construed claim. Therefore, it follows logically that Plaintiff’s construction of “collect” has no
basis in this Court’s Markman opinion. As an initial matter, this Court seeks to clarify that the
sentence Plaintiff relies on was merely an observation the Court made. Contrary to BBB’s
position, this Court never held, found, or concluded that the “data processor” must be “capable of
holding, storing, or ‘collecting’ more than one item from a registrant” at a time. (Pl.’s Reply Br.
1, 4.) Tellingly, the words “store,” “hold” or “at a time” are absent from the statement BBB
relies on. In fact, these words are not used in the context Plaintiff is proposing anywhere in the
Markman opinion. Furthermore, although this Court observed that “the data sent between the instore processor and the host computer are always depicted as a plurality of desired items,”
(Docket Entry No. 111 at 10), this Court did not hold that the in-store processor stores or holds

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multiple desired items at any one time. This Court would not have construed “collect” because
the parties never presented it for construction. Therefore, BBB’s reliance on that sentence as
support for its contention that this Court constructed “collect” to mean hold or store multiple
items at a time is misplaced.
Moreover, “the specification is always highly relevant to the claim construction analysis.
Usually it is dispositive; it is the single best guide to the meaning of a disputed term.’” Phillips
v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005), cert. denied, 546 U.S. 1170 (2006)
(internal quotation marks and citation omitted). The only place the word “store” or “storage” is
found in the patent is in connection with the host computer.

For instance, the preferred

embodiment from the specification describes the “host computer” as having “a storage unit for
maintaining the registry database.” (’474 patent cols. 7:9-11.) Additionally, the specification for
the host computer provides that the various “desired items” are “sent to the host computer
through the in-store processor to create the registry database, which is stored in the host
computer.” (Id. cols. 8:6-10.) Claims 1 and 17 of the ’474 patent also describe the host
computer as “having a storage unit for maintaining the registry database.” (Id. cls. 1, 17.)
On the other hand, the words “store,” “storage” or “hold” are not associated with “data
processor” anywhere in the specifications or claims of the ’474 patent.

For example, the

specification’s preferred embodiments indicate that the “data processor” is “adapted to
communicate with the product selection devices . . . through the local area network . . . to thereby
collect the codes of desired items selected by the registrant. The processor then routes the
desired items to the host computer [] to create a registry database.”

(Id. cols. 6:34-39.)

Furthermore, claims 1 and 17 of the ’474 patent describe the “data processor” as being in
“communication with said local area network adapted to communicate with the product selection

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device via said local area network to thereby collect the desired items selected by the registrant
and route said desired items to said registry database on said host computer.” (Id. cls. 1, 17.)
Therefore, neither the claim language nor the specification supports BBB’s contention. Plaintiff
is adding extra limitations into the claim and neither it nor this Court may do so. See Am.
Piledriving Equip., Inc. v. Geoquip, Inc., 637 F.3d 1324, 1331 (Fed. Cir. 2011) (“It is well settled
that the role of a district court in construing claims is not to redefine claim recitations or to read
limitations into the claims.”).
Although Sears’ expert, Dr. William Beckmann (“Beckmann”), testified that Sears’ data
processor has the “additional functionality, namely the ability to store information about desired
items,” he clarified that the storage feature or “backup functionality,” is “not the normal mode of
operation, [and] [i]s not part of the claimed invention.” 1 (Faegenburg Decl. Ex. E, Beckmann
Dep. 37:17-19, 38:1-2, 45:21-24.) Sears’ position is supported by the specifications and claim
language because the data processor’s ability to store is not claimed in the patent.

It is

established law that “what is not claimed is public property. The presumption is, and such is
generally the fact, that what is not claimed was not invented by the patentee . . . The patent itself,
as soon as it is issued, is the evidence of this. The public has the undoubted right to use . . . what
is not specifically claimed in the patent.” Johnson & Johnston Assocs. v. R.E. Serv. Co., 285
F.3d 1046, 1053 (Fed. Cir. 2002) (citation omitted); see also Phillips, 415 F.3d at 1312 (noting
that the “bedrock principle” of patent law is that “claims of a patent define the invention to
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Plaintiff, relying on Fowle v. C & C Cola, 868 F.2d 59, 67 (3d Cir. 1989), urges this Court not consider
Beckmann’s expert report because it is unsworn. (Pl.’s Reply 10.) BBB’s argument lacks merit because Sears
provided Beckmann’s sworn deposition testimony which is sufficient under the December 2010 amendment to
Federal Rule of Civil Procedure 56. See Deuber v. Asbestos Corp., Civ. A. No. 10-78931, 2011 U.S. Dist. LEXIS
150102, at *25 (E.D. Pa. Dec. 2, 2011) (stating that submitting a sworn deposition of the expert cures the deficiency
in an unsworn report). In fact, Plaintiff’s reliance on Fowle v. C & C Cola is misplaced because that expert report,
unlike Beckmann’s, was not attached to the expert’s deposition. 868 F.2d at 67; Airlines Reporting Corp. v. Belfon,
Civ. 2003/146, 2010 U.S. Dist. LEXIS 97349, at *23 n.4 (D.V.I. Sept. 15, 2010) (concluding that although no
affidavit or deposition was attached to the expert’s report, the report was nonetheless admissible because a transcript
of the expert’s deposition in which he authenticates his expert report was provided to the court).

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which the patentee is entitled the right to exclude.”). Consequently, the data processor’s ability
to store is not part of the invention. Because “claim construction analysis must begin and remain
centered on the claim language itself,” Innova/Pure Water, Inc. v. Safari Water Filtration Sys.,
Inc., 381 F.3d 1111, 1116 (Fed. Cir. 2004), a feature that is not part of the patent, cannot be used
as a basis to find non-infringement. See Dillon Pulley Co. v. McEachran, 69 F.2d 144, 147 (6th
Cir. 1934) (“[T]he question of infringement must be determined by a consideration of that which
is the invention, and for which monopoly was granted.”).
Additionally, BBB’s position that the data processor must be capable of collecting
multiple items at a time is not supported by the Abstract, the specification’s preferred
embodiment, or the parties’ joint construction.

The Abstract describes that “desired items

consecutively selected by the registrant are added to the registry database to create a registry
list.” (Abstract) (emphasis added). Similarly, in the specification’s preferred embodiment,
“desired items consecutively selected by the registrants are added to the registry to create a
registry list.” (’474 patent cols. 7:11-13.) The parties’ joint construction defines “consecutively
selected” as “chosen one after another.” (Docket Entry No. 56-2 at 1) (emphasis added).
Therefore, BBB’s current position that the data processor must collect multiple items at any
given time is a departure from its previous construction and inconsistent with the specification’s
preferred embodiment. In fact, Plaintiff concedes that the parties agreed that “consecutively
selected” will mean “chosen one after another.” (Pl.’s Reply 7.) Nonetheless, it contends that
the phrase “says nothing about whether those items can be held in the ISP before being routed to
the host computer.” (Id.) The Markman opinion also says nothing about whether those items
can be held or stored in the data processor before it is routed.

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Plaintiff’s construction of “collect” is also not supported by this Court’s construction of
“data processor” and is inconsistent with the Court’s construction of “desired items.” “Data
processor” is described in both claims 1 and 17 as “being in communication with said local area
network adapted to communicate with the product selection device via said local area network to
thereby collect the desired items selected by the registrant and route said desired items to said
registry database on said host computer.” (’474 patent cls. 1, 17) (emphasis added). This Court
held that “data processor” is a “device that processes data by collecting and routing the data, or
by adding, modifying, and associating the data.” (Docket Entry No. 111 at 10) (emphasis
added). This construction does not reference the number of items selected at a time or whether
those items have to be stored. Moreover, this Court construed “desired items” to mean “one or
more items desired.” (Id. at 6). In the claim language, “collect” obviously qualifies “desired
items.” As such, BBB’s construction that “collect” requires “more than one desired item from a
given registrant at any given time,” (Pl.’s Br. 20), is at odds with the Court’s construction of
“desired items,” which means “one or more items.” Because BBB’s contention that its system
does not infringe the ’474 patent is based on an unsupported construction of “collect,” it has not
established that if the evidentiary material of record were reduced to admissible evidence in
court, it would be insufficient to permit the nonmoving party to carry its burden of proof.
Celotex Corp., 477 U.S. at 322-23.
Alternatively, Sears has provided evidence indicating that BBB’s router meets BBB’s
construction of “collect.” For instance, Sears’ expert, Beckmann, testified that the router in
Plaintiff’s system can collect multiple items from a registrant. Beckmann testified as follows:
Q.
Okay . . . in your opinion[,] what would you consider to be
an example of an in-store processor that is capable of collecting
more than one item from a registrant?

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A.
Okay . . . I’m going to assume that when she wrote
“collecting,” she’s used . . . the word “collect” as it appears in the
patent.
Is that in agreement with what you asked?
Q.
Sure.
A.
Okay. A good example is the router such as the Cisco 2811
that the BBB stores employ.
(Faegenburg Decl. Ex. E, Beckmann Dep. 18:15-19, 19:2-10.)
Additionally, BBB’s Laura Lane (“Lane”) testified that a registrant “can enter in a
quantity instead of having to scan the same item multiple times” on BBB’s system. (Steedle
Decl. Ex. 2, Lane Dep. 343:10-14, 344:2-24; see also Steedle Decl. Ex. 3, Daghlian Dep. 60:1721.) Furthermore, Vatche Daghlian (“Daghlian”) testified that two different scanners can add
information to the same registry at the same time on Plaintiff’s system. (Steedle Decl. Ex. 3,
Daghlian Dep. 288:19-289:7.) Plaintiff’s router can also add a collection of Stocking Keeping
Units (“SKU”) 2 to a registry at one time.

Daghlian explained that the collection SKU

functionality “allow[s] a customer to scan a parent SKU, and it would have associated children
with it, they would be able to add it in one shot to the registry.” (Id. at 111:9-12.) In fact,
Plaintiff’s expert, Michael Shamos (“Shamos”) retracted his assertion that “[i]t is physically
impossible for the code and the quantity to even be resident in the router at the same time.”
(Steedle Decl. Ex. 5, Shamos Dep. 194:7-11.) Shamos testified that he “recognize[s] that it’s not
physically impossible for the code and quantity to be resident” in the router at the same time and
“agree[d] that the Bed Bath & Beyond router does sometimes transfer the code and the quantity
at the same time.” (Id. at 194:16-19, 20-24.)
Defendant has also provided evidence that BBB’s router has the ability to hold or store
information. For example, Beckmann testified that “[i]f there’s a network interruption and it is

2

A SKU “is a number or string of alpha and numeric characters that uniquely identify a product.”
http://www.techterms.com/definition/sku (last visited May 30, 2012).

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very constrained in time, th[e] storage will be maintained” in Plaintiff’s router. (Faegenburg
Decl. Ex. E, Beckmann Dep. 40:3-16.) Kevin Wagner, who is responsible for data center
operations for BBB, also testified that “one of the things that the router does is at least wait for
some period of time to give the scanner a chance to convey information[.]” (Steedle Decl. Ex. 4,
Wagner Dep. 122:24-123:3.) Overall, this Court concludes that Sears has “set forth specific
facts showing the existence of [a genuine] issue for trial.” Shields, 254 F.3d at 481 (citing Fed.
R. Civ. P. 56(e)). Consequently, Plaintiff’s motion for summary judgment on non-infringement
is denied.
ii. BBB’s Internet Registry
Although this Court concluded in its Markman opinion that the claim terms “retail
establishment,” “retail site,” and “inter-site” did not include websites, (Docket Entry No. 111 at
14-15), Defendant “is seeking damages for the use of the infringing BBB system by users who
either select or purchase items in the brick-and-mortar stores, using the infringing system.”
(Def.’s Br. 9.) Sears depicts the infringing transactions as follows:

In-Store Selection
Online Selection

In-Store Purchase
Scenario 1 (infringing)
Scenario 2 (infringing)

Online Purchase
Scenario 3 (infringing)
Scenario 4 (non-infringing)

In Centillion Data Sys. LLC v. Qwest Commc’ns Int’l, Inc., the court concluded that
“direct infringement by ‘use’ of a system claim ‘requires a party . . . to use each and every . . .
element of a claimed [system].’” 631 F.3d 1279, 1284 (Fed Cir. 2011) (alterations in original).
The parties do not dispute that Scenario 1 is eligible for infringement or that Scenario 4 is not
eligible for infringement.

(Def.’s Br. 9, 28; Pl.’s Br. 26.)

However, BBB contends that

Scenarios 2 and 4 do not infringe on the ’474 patent because Sears cannot establish that each use
of BBB’s internet registry “involves the use of each and every element of the patented system.”

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(Pl.’s Br. 25.) For instance, Plaintiff maintains that “a handheld production selection device” is
not used in Scenario 2. (Id. at 26.) Similarly, it asserts that Defendant cannot demonstrate that a
“point-of-sale input device” is utilized in Scenario 3 as the claims require. (Id.)
This Court concludes that Sears has provided evidence indicating that there is some
fluidity within Scenario 2. For example, Lisa Nemeth (“Nemeth”) and Richard McMahon
(“McMahon”) testified that registrants “can add items on the Internet to an existing [in-store]
registry” and vice versa. (Steedle Decl. Ex. 10, Nemeth Dep. 227:1-3; Steedle Decl. Ex. 16,
McMahon Dep. 146:25-147:7.) Additionally, individuals can purchase items on an in-store
registry on the internet. (Steedle Decl. Ex. 10, Nemeth Dep. 227:4-7.) Most significantly,
McMahon testified that if a registrant creates a registry online and he/she subsequently goes to a
store and adds additional items, BBB does not have the ability to track those items that were
added online and those that were added in-store. (Steedle Decl. Ex. 16, McMahon Dep. 148:2025.) In fact, Christine Hutra testified that if a registrant starts his/her registry online, that
registrant’s designation as an online registrant will not change even if he/she subsequently goes
to the store and adds items to the existing online registry. (Steedle Decl. Ex. 17, Hutra Dep.
80:2-22.) Therefore, Defendant has set forth specific facts showing a genuine issue for trial
precluding summary judgment on Scenario 2. Shields, 254 F.3d at 481.
Sears, however, has failed to establish that Scenario 3 employs all of the ’474 patent’s
elements. As BBB points out, transactions in Scenario 3 do not use a “point-of-sale input
device” as required by the ’474 patent. (Pl.’s Br. 26.) Defendant’s reliance on NTP, Inc. v.
Research in Motion, Ltd., 418 F.3d 1282 (Fed. Cir. 2005) is misplaced. In NTP, the issue before
the court was not whether the accused system used all of the elements of the patent. In fact, in
Centillion Data Sys. LLC, the court explained that the accused system in NTP “was ‘using’

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every element of the system.”

631 F.3d at 1284.

Rather, “the issue was whether [the]

infringement occurred within the United States.” Id. at 1283 (citing NTP, Inc., 418 F.3d at
1313). Therefore, contrary to Sears’ position, in order to demonstrate direct infringement it must
establish that Scenario 3 uses every element of the ’474 patent. Here, Defendant has failed to
establish that Scenario 3 uses the “point-of-sale input device” claimed in the ’474 patent.
Consequently, Scenario 3 does not directly infringe on the ’474 patent.

See Metrologic

Instruments, Inc. v. PSC, Inc., Civ. A. No. 99-4876, 2004 U.S. Dist. LEXIS 24949, at *38
(D.N.J. Dec. 13, 2004) (citing Telemac Cellular Corp. v. Topp Telecom, Inc., 247 F.3d 1316,
1330 (Fed. Cir. 2001)) (“To determine whether the accused devices infringe, it must be
determined whether each and every element of the asserted claim is present in the accused
device. If a single claim element is not present, the claim is not infringed.”).
b. Doctrine of Equivalents Infringement
i. BBB’s In-Store Registry
Alternatively, this Court finds that summary judgment is precluded under the doctrine of
equivalents. The doctrine of equivalents is based on the principle that “if two devices do the
same work in substantially the same way, and accomplish substantially the same result, they are
the same, even though they differ in name, form, or shape.” Graver Tank & Mfg. Co. v. Linde
Air Prods. Co., 339 U.S. 605, 608 (1950) (internal quotation marks and citation omitted). To
establish infringement under this doctrine, “the patentee has the burden of proving a real identity
of means, operation, and result.” Ziegler v. Phillips Petroleum Co., 483 F.2d 858, 868 (5th Cir.
1973), cert. denied, 414 U.S. 1079 (1973).
BBB argues that unlike Sears’ in-store data processor, its router is not capable of
“stor[ing] data regarding multiple selected items from a registrant . . . as this Court has construed

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the claims.” (Pl.’s Br. 23.) Plaintiff, once again, is basing non-infringement on this Court’s
alleged construction of “collect.” However, as stated earlier, BBB’s construction of “collect” is
not supported by this Court’s Markman opinion or the claim language. Therefore, that is not a
basis to grant summary judgment.
ii. BBB’s Internet Registry
Plaintiff contends that its registry does not infringe under the doctrine of equivalents.
According to BBB, Sears’ position that BBB’s internet registry infringes the ’474 patent
“completely vitiate[s] limitations of the claims.” (Pl.’s Br. 27.) However, Sears is not alleging
that the internet functionality alone infringes the ’474 patent.

Instead, it is asserting that

Plaintiff’s internet registry and in-store registry are “integrated within one and the same system”
because Plaintiff “does not use a separate system for Internet registry selections or purchases.”
(Faegenburg Decl. Ex. C ¶ 141.) Beckmann testified that Plaintiff’s “use of the Internet for its
gift registry functionality still works with the infringing system.” (Id. ¶ 142.)
At this juncture, Sears’ “evidence is to be believed and all justifiable inferences are to be
drawn in [its] favor.” Marino, 358 F.3d at 247 (internal quotation marks omitted). Additionally,
the Supreme Court has instructed that “[a] finding of equivalence is a determination of fact” and
“[l]ike any other issue of fact, final determination requires a balancing of credibility,
persuasiveness and weight evidence.” Graver Tank & Mfg. Co., 339 U.S. at 609-10; see also
Boehringer Ingelheim Animal Health v. Schering-Plough Corp., 6 F. Supp. 2d 324, 329 (D.N.J.
1998 (citing Hilton Davis Chem. Co v. Warner-Jenkinson Co., 62 F.3d 1512 (Fed. Cir. 1995))
(“According to the Federal Circuit, infringement under the doctrine of equivalents is an issue of
fact to be submitted to the jury.”). However, such determinations are improper at the summary
judgment stage. Marino, 358 F.3d at 247; see also Petruzzi’s IGA v. Darling-Delaware, 998

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F.2d 1224, 1230 (3d Cir.), cert. denied, 510 U.S. 994 (1993) (“[A]t the summary judgment stage,
a court is not to weigh the evidence or make credibility determinations. Instead, these tasks are
left for the fact-finder.”) (internal citation omitted). Consequently, this Court concludes that the
determination of whether Scenarios 2 and 3 infringe the ’474 patent under the doctrine of
equivalents is a question best left to the factfinder. Hence, summary judgment is denied.
2. Plaintiff’s Motion for Partial Summary Judgment on Limiting Sears’ Damages
BBB contends that Sears’ damages should be limited to the damages it incurred after July
18, 2008, because Sears failed to mark its patent as required by 35 U.S.C. § 287(a). Pursuant to
§ 287(a), a patentee must notify the public “of a patent’s existence when it covers a product
made by the patentee or a licensee.” MOSAID Techs., Inc. v. Samsung Elecs. Co., 362 F. Supp.
2d 526, 555 (D.N.J. 2005); see also Dunlap v. Schofield, 152 U.S. 244, 247-48 (1894) (noting
that the purpose of the marking requirement is to give notice of the patent to the public). 3
Section 287(a) provides in relevant part:
Patentees, and persons making, offering for sale, or selling within
the United States any patented article for or under them . . . may
give notice to the public that the same is patented, either by fixing
thereon the word “patent” or the abbreviation “pat.”, together with
the number of the patent, or by fixing thereon the word “patent” or
the abbreviation “pat.” together with an address of a posting on the
Internet . . . that associates the patented article with the number of
the patent, or when, from the character of the article, this can not
[sic] be done, by fixing to it, or to the package wherein one or
more of them is contained, a label containing a like notice. In the
event of failure so to mark, no damages shall be recovered by the
patentee in any action for infringement, except on proof that the
infringer was notified of the infringement and continued to infringe
thereafter, in which event damages may be recovered only for
infringement occurring after such notice. Filing of an action for
infringement shall constitute such notice.

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Section 287’s marking requirement does “not apply where the patent is directed to a process or method.” Crown
Packaging Tech., Inc. v. Rexam Beverage Can Co., 559 F.3d 1308, 1316 (Fed. Cir. 2009). The patent in this case is
directed at a system. (Def.’s Br. 29.) Therefore, the notice requirement applies.

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35 U.S.C. § 287(a) (emphasis added).
Notice may be actual or constructive. Actual notice requires the patentee to “provide the
accused infringer with specific and actual notice that charges infringement of an identified patent
by a specific accused product.” Metrologic Instruments, Inc., 2004 U.S. Dist. LEXIS 24949, at
*51 (citing Amsted Indus. v. Buckeye Steel Castings Co., 24 F.3d 178, 185 (Fed. Cir. 1993)). A
patentee provides constructive notice by adhering to the strict marking requirements set forth in §
287. Metrologic Instruments, Inc., 2004 U.S. Dist. LEXIS 24949, at *51. The patentee must
also establish that it has “consistently [and continuously] marked substantially all of its patented
products, and it was no longer distributing unmarked products.” Am. Med. Sys., Inc. v. Med.
Eng’g Corp., 6 F.3d 1523, 1537, 1538 (Fed. Cir. 1993), cert. denied, 511 U.S. 1070 (1997). The
burden of proving adherence to § 287’s requirements lies with the patentee. Maxwell v. J.
Baker, Inc., 86 F.3d 1098, 1111 (Fed. Cir. 1996); see also Dunlap v. Schofield, 152 U.S. 244,
247-48 (1984) (“[T]he burden of proving [notice] is upon the [patentee].”). Compliance with §
287’s notice requirement is a question of fact. Maxwell, 86 F.3d at 1111.
Here, Sears does not contend that it was not required to mark the ’474 patent or that it
complied with § 287. In fact, Sears’ in-house counsel, Mary Tortorice’s (“Tortorice”), testimony
establishes that Sears was aware that it was required to mark its patent but failed to comply with
§ 287’s requirements. Tortorice testified that in the summer of 2008, Sears and its sub-licensee,
Kmart, marked the patent on their website and in the store.

(Faegenburg Decl. Ex. K;

Faegenburg Decl. Ex. J, Tortorice Dep. 138:13-139:4, 141:9-24.)

However, the markings

subsequently fell off and although Tortorice has directed Sears to put the markings up again it
has failed to do so. (Id. at 138:3-8, 142:23-143:3.) Therefore, Sears did not mark the patent

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consistently and continuously as required by the statute. Am. Med. Sys., Inc., 6 F.3d at 1537,
1538.
Defendant’s opposition simply asserts that Plaintiff cannot dispute that Defendant
practices the ’474 patent and in the next breath maintain that Defendant had an obligation to
mark the invention. (Def.’s Opp’n Br. 1.) Defendant then argues that “[i]f . . . BBB stipulates
that Sears is using its own invention, then Sears will stipulate that it should have marked and will
not seek damages for the time period before July 18, 2008, when it gave BBB actual notice of
infringement.” (Id.) This Court concludes that this assertion alone is insufficient to withstand a
motion for summary judgment. Sears has not demonstrated a genuine dispute as to any material
fact on the issue of whether it provided constructive notice. As stated earlier, Defendant has not
argued that it marked the invention. The basis of Defendant’s counterclaim is that it practices
the ’474 invention. As a result, it was required to mark it under § 287(a). Because Sears has not
provided any evidence indicating that it marked the invention, it can only recover damages for
infringement occurring after it sent BBB actual notice. Therefore, Sears is precluded from
collecting damages prior to July 18, 2008.

CONCLUSION
For the reasons stated above, BBB’s Motion for Summary Judgment on NonInfringement is DENIED and its Motion for Partial Summary Judgment Limiting Sears’
Damages is GRANTED.

s/ Susan D. Wigenton, U.S.D.J.

cc:

Magistrate Judge Madeline C. Arleo

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