The opinion of the court was delivered by: 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 Non-Infringement 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 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, 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 non-movant 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.'" 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.
1. BBB's Motion for Summary Judgment on Non-Infringement
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 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 in-store 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 multiple desired ...