            In the United States Court of Federal Claims
                                          No. 13-232C

                               (Filed Under Seal: August 18, 2015)
                                   (Reissued: August 26, 2015)

 *************************************   )              Patent case; defendants’ motion
                                         )              for summary judgment on grounds
 CAMERON LANNING CORMACK,                )              of non-infringement
                                         )
                   Plaintiff,            )
                                         )
       v.                                )
                                         )
 UNITED STATES,                          )
                                         )
                   Defendant,            )
       and                               )
                                         )
 NORTHROP GRUMMAN SYS. CORP.,            )
                                         )
                   Defendant-Intervenor. )
                                         )
 *************************************

       James L. Beausoleil, Jr., Duane Morris LLP, Philadelphia, Pennsylvania, for plaintiff.
With him at the hearing was Michael G. McManus, Duane Morris LLP, Washington, D.C. With
him on the briefs and at the hearing were Jeffrey S. Pollack, Duane Morris LLP, Philadelphia,
Pennsylvania, and Patrick D. McPherson and Kristina Caggiano Kelly, Duane Morris LLP,
Washington, D.C.

        Scott Bolden, Commercial Litigation Branch, Civil Division, United States Department
of Justice, Washington, D.C., for defendant. With him on the briefs were Stuart F. Delery,
Assistant Attorney General, Civil Division, Benjamin C. Mizer, Principal Deputy Assistant
Attorney General, Civil Division, John Fargo, Director, Commercial Litigation Branch, Civil
Division, and Stephen M. Chong, Attorney, Commercial Litigation Branch, Civil Division,
United States Department of Justice, Washington, D.C., and Michael F. Kiely, United States
Postal Service, Washington, D.C.

       Gregory H. Lantier, Wilmer Cutler Pickering Hale and Dorr LLP, Washington, D.C., for
defendant-intervenor. With him at the hearing were Todd Zubler and Brittany Amadi, Wilmer
Cutler Pickering Hale and Dorr LLP, Washington, D.C.
                                      OPINION AND ORDER1

LETTOW, Judge.

        This case concerns U.S. Patent No. 7,781,693 (“the ’693 patent”), entitled “Method
and System for Sorting Incoming Mail.” Plaintiff, Mr. Cameron Lanning Cormack, alleges
that the United States, through the United States Postal Service (“Postal Service” or “Service”),
has infringed claims 1-5, 9-13, and 19 of the ’693 patent and is therefore liable for damages
under 28 U.S.C. § 1498(a).2 Compl. at 2.3 Mr. Cormack claims that the Postal Service infringed
the ’693 patent by contracting with Northrop Grumman Systems Corporation (“Northrop
Grumman Systems”) for the manufacture and delivery of mail sorting devices called Flats
Sequencing Systems (“FSS”). Compl. ¶¶ 8-9, 32. Mr. Cormack specifically alleges that
Northrop Grumman Systems has manufactured and delivered 102 FSS machines to the Postal
Service pursuant to the contract, and the Service continues to use those machines. Compl. ¶¶ 13,
15, 28. Pending before the court is the defendants’ motion for summary judgment pursuant to
RCFC 56. See Def. United States of America and Def.-Intervenor Northrop Grumman Systems
Co.’s Mem. of Law in Support of Their Mot. for Summary Judgment (“Defs.’ Mot.”), ECF No.
82. Defendants aver that the allegedly infringing FSS machine used by the Postal Service
fundamentally differs from the invention described and claimed in the ’693 patent for two
reasons: (1) it is incapable of performing “sortation in a single pass” as described in the ’693
patent and interpreted by the court in its claim construction; and (2) unlike the ’693 patent, which
requires the depositing of mailpieces into “receiving bins,” which periodically empty if and when
new unassigned mailstops are identified, the FSS deposits mail into structures that are only


       1
         Because this opinion and order might have contained confidential information within the
meaning of Rule 26(c)(1)(G) of the Rules of the Court of Federal Claims (“RCFC”) and the
protective order entered in this case, it was initially filed under seal. The parties were requested
to review this opinion and order and to provide proposed redactions. No redactions were
requested.
       2
           In pertinent part, Subsection 1498(a) of Title 28 provides:

                 Whenever an invention described in and covered by a patent of the
                 United States is used or manufactured by or for the United States
                 without license of the owner thereof or lawful right to use
                 or manufacture the same, the owner’s remedy shall be by action
                 against the United States in the United States Court of Federal
                 Claims for the recovery of his reasonable and entire compensation
                 for such use and manufacture.

28 U.S.C. § 1498(a).
       3
         The patent application was filed and granted before the effective date of the Leahy-
Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011). The court in considering
the issues in this case relies upon the applicable law at the time of issuance. See Tobinick v.
Olmarker, 753 F.3d 1220, 1223 n.1 (Fed. Cir. 2014).
                                                   2
emptied when full. Id. at 1. Plaintiff opposes this motion, arguing that the FSS is capable of
achieving sortation in a single pass because the first “pass” of the mail through the FSS is
actually a “sequencing primer.” Pl. Cameron Lanning Cormack’s Mem. of Law in Opp’n to
Defs.’ Mot. for Summary Judgment (“Pl.’s Opp’n”) at 1, ECF No. 85. Additionally, plaintiff
argues that the FSS deposits mail into structures that qualify as “receiving bins” as interpreted by
the court pursuant to its claim construction. See id. at 2.

       For the reasons stated below, defendants’ motion for summary judgment is granted.

                                         BACKGROUND

        The invention at issue is a method and system for sorting incoming mail in a “single
pass.” Compl. ¶ 5-6; Pl.’s Opp’n at 1. Mr. Cormack alleges that he invented a system that
improved traditional single-pass automatic mail sorting systems by incorporating technology that
allows for the dynamic assignment of mailstops and receiving bins, reducing the number of
receiving bins required by the system. See Pl.’s Opening Claim Construction Br. (“Pl.’s Claim
Construction Br.”) at 8-9, ECF No. 66; see also Compl. ¶ 5, 7. Mr. Cormack’s invention was
primarily intended for use at institutions including universities and other similar entities that
receive large amounts of incoming mail. See Defs.’ Opening Claim Construction Br. (“Defs.’
Claim Construction Br.”) at 6-7, ECF No. 65.

                                       A. The ’693 Patent

         The ’693 patent was issued to Mr. Cormack on August 24, 2010. Compl. ¶ 6. It
incorporates both method and system claims for automated mail sorting, particularly with respect
to incoming mail. See ’693 patent, col. 1, lines 6-9, ECF No. 65-2 (“The invention disclosed
herein relates generally to methods and systems for automated mail sorting and, more
particularly, methods and systems for the automated sorting of incoming mail.”); see also ’693
patent, col. 1, line 55-58 (“It is . . . desirable to provide a mail sorting method and system having
the ability to sort incoming mailpieces using a single pass process with fewer receiving bins than
the number of mailstops being sorted.”). The method and system achieve sortation in a single
pass. A noted advantage of Mr. Cormack’s invention over prior art was that it employed a
dynamic process that enabled receiving bins periodically to be emptied and reassigned while the
mail was being sorted. ’693 patent, col. 2, lines 20-49. Accordingly, Mr. Cormack’s invention
required fewer receiving bins than mailstops, allowing it to take advantage of a reduced footprint
and lower cost than a “multi-pass” system. ’693 patent, col. 1, lines 44-48. It also enabled
relatively fast speed and reduced wear and tear compared to a multi-pass system. ’693 patent,
col. 1, lines 49-54; see also ’693 patent, col. 1, lines 26-30 (“The requirement for a large number
of receiving bins increases the cost of [single-pass] machines. These machines also have very
large footprints when outfitted with a substantial number of receiving bins.”).4


       4
         Automated mail sorting has existed for over 100 years. See Defs.’ Claim Construction
Br. at 2. The original automated mail sorting systems—so-called traditional single-pass
systems—deposited mailpieces into individual bins, each of which corresponded to a particular
sorting destination. Pl.’s Opp’n at 5 (citing Pl.’s Opp’n Ex. 1 (Decl. of Edward Cohen (May 19,
2015))). Eventually, as mail volumes and the number of sorting destinations increased, the
                                                  3
                                  B. The Flat Sequencing System

        The accused mail sorting system is called the “Flats Sequencing System.” “Flats” refers
to the “oversized mailpieces, such as magazines, catalogues, and advertisements” that the FSS
sorts. Defs.’ Mot. at 3.5 “Sequencing” refers to the “delivery point sequence” type of sortation
that the system performs. Id.6 Finally, “system” refers to the physical arrangement employed,
which comprises several subsystems, including the Flats Sorting Machine, the “Stand-Alone
Mail Prep,” and the Automated Trail Management System. Id. at 4. The FSS physically
measures over a football field in length. Id.

      In the early 2000s, Northrup Grumman Systems entered negotiations to provide
automated mail sorting systems to the Postal Service, culminating in the entry of the parties into


number of sorting destinations began to exceed the number of bins that feasibly could be
incorporated into a sortation system. See id. Accordingly, adaptations were developed. See id.
One adaptation was the development of methods for manually or automatically emptying or
replacing bins as they became full. See id. Another adaptation enabled the system to split the
sorting algorithm across multiple passes of mail through the machine. See id.; see also Defs.’
Claim Construction Br. at 5. Sortation in multiple passes was generally achieved in one of two
ways: (1) separating mail into “genera” and then reloading the mail into the sorting machine and
“run[ning] a new sorting algorithm to sort the genus into species” or (2) assigning mailstops to
each available bin until the machine ran out of bins and then collecting the overflow output for
reloading and reprocessing until all of the mail was sorted. Pl.’s Opp’n at 5-6. The machines
that achieve sortation by splitting the sortation across multiple passes of mail are traditionally
referred to as “multi-pass” systems. See id. at 6.
       5
         “Flats” differ from letter-sized mailpieces because they are more varied in size and other
characteristics, i.e., “envelopes vs. open magazines and plastic wrapped magazines, single flyers
vs. loose sheets and bound pages, etc.” Defs.’ Mot. Ex. 16, at 5 (FSS Concept of Operations
(Mar. 15, 2006)). Flats accordingly must be processed by a more complicated system, “featuring
multiple feeders and larger outputs.” Id.
       6
         Delivery Point Sequence processing sorts the mail not only by carrier but also by
mailstop order for each carrier “such that the flats for the carrier’s first delivery point on his or
her route will be at the top of the stack, the flats for the second delivery point will be
immediately underneath, et cetera.” Defs.’ Mot. at 3-4. A delivery point is a place where mail is
to be delivered, such as “a particular house or a particular business address.” Hr’g Tr. 10:11-12
(Aug. 3, 2015). In the past, the Postal Service operated machines that sorted mail solely based
on carrier. See Pl.’s Opp’n at 6 (citing id. Ex. 1). Mail carriers received a bundle containing
mail in no particular sequence and “therefore needed to [manually] arrange the mail within their
bundles to correspond to the sequence of stops along their route prior to leaving for their
delivery, or they would need to dig around within the bundle to find the mail for each stop as
they arrived.” Id. at 6-7 (citing Pl.’s Opp’n Ex. 2, at 19-20 (Dep. of Leung Shiu (Apr. 22,
2015))). Delivery point sequence sortation saved man-hours by automatically organizing each
carrier’s bundle sequentially. Id. at 7.


                                                  4
Contract No. 3AAFLT-07-B-0004 (the “FSS contract”) on February 23, 2007. Compl. ¶ 8.
During their initial negotiations, the parties planned to include single-pass functionality in
addition to two-pass Delivery Point Sequence processing as part of the FSS contract. See Defs.’
Mot. Ex. 8, at 3373 (FSS Production Statement of Work Section D Technical Design Description
(Apr. 2008)) (“The Supplier shall design and provide the FSS as a fully automated system for
sorting mail under two methods, Delivery Point Sequence (DPS) and single[-]pass Non-DPS.
For the DPS method, the FSS must be a fully automated two[-]pass operation . . . .”); see also id.
at 3385 (“The FSS must be designed to operate in the following modes: two[-]pass Delivery
Point Sequencing (DPS) operation and single[-]pass non-DPS operation.”). However, during
negotiations, the requirement of single-pass functionality was removed from the contract and
single-pass functionality was never designed or implemented. See id. Ex. 7, at 4083 (revised
Section 1.1 of FSS contract) (“The Supplier shall design and provide the FSS as a fully
automated system for sorting mail under a two-pass Delivery Point Sequence (DPS) method.”)
(emphasis added); see also id. at 7; Hr’g Tr. 17:2 to 18:7 (Aug. 3, 2015).7 As a result, Northrup
Grumman Systems developed the FSS to sort mail exclusively by Delivery Point Sequence
processing. See Defs.’ Mot. at 7.

         Delivery Point Sequence processing requires mail to be processed twice. See Defs.’ Mot.
at 7. As the system is currently used by the Postal Service, during the first pass, mailpieces are
sorted by “stop group.” See id. at 5-6. “A ‘stop group’ is one of the ‘stops’ on every mail
carrier’s route. Thus, ‘stop group 1’ comprises the first stops on all of the mail carriers’ routes
(e.g., the first house that each of the carriers will reach on each of their respective routes). ‘Stop
group 2’ comprises the second stops on all of the mail carriers’ routes . . . and so forth.” Id. at 5.
Accordingly, after the completion of the initial pass, each group contains the intermingled mail
for “dozens of addresses – e.g., the mail for all of the first houses of all of the mail carriers’
routes.” Id. at 6 (emphasis in original). The mailpieces are then reloaded in reverse order such
that “the first stop group to be loaded is the stop group for the last stops on all mail carriers’
routes (e.g., the last houses that the carriers will reach on their respective routes),” and the
mailpieces are run through the system again. Id. (emphasis in original). During the second pass,
the mail is sorted according to mail carrier until all of the stop groups have been processed. Id.
Once sorting is complete, the mail is ordered in “delivery point sequence” for each carrier,
meaning that “the mail destined for the first stop on that carrier’s route is on top, the mail
destined for the second stop is immediately underneath, and so forth . . . .” Id. at 6-7.




       7
        Further citations to the transcript of the hearing held on August 3, 2015 will omit
reference to the date.


                                                  5
         The primary physical components of the FSS include two input lines8 and a sorting
carousel conveyor with 360 sorter output bins.9 See Defs.’ Mot. at 9 & n.4.10 Mail enters the
system through one of the two input lines, where it is scanned. See id. at 9. The mailpieces are
then carried inside one of three angled slots of a bucket-like container on the carousel conveyor
from the input line over one of 90 output bins into which the mailpieces will be deposited. See
id. at 8-9 (citing id. Ex. 1, at 1806 (FSS Plant Supervisor/In-Plant Support Specialist User Guide
(May 19, 2011)). Each output bin consists of a single rigid blue plastic tray with an open top that
is held in place by a series of parallel rails that act to transport the blue plastic trays. See id. at 9-
10.11 The System Controller tracks each mailpiece as it travels down the conveyor in the
carousel bucket. See id. at 12 (citing id. Ex. 1, at 1806). Once a carousel bucket carrying a
mailpiece reaches its designated output bin, the bucket slot containing the mailpiece opens and
the mail drops into the blue plastic tray below. See id. at 11-12 & Ex. 13, at 6345 (FSS Phase II
Maintenance Training Student Training Manual) (“As the mail passes its destination output bin,
the bucket flap opens to place the mailpiece into a [blue plastic tray].”). Each blue plastic tray is
marked with an individual bar code that is permanently affixed to the tray, which enables the
FSS to keep track of where each blue plastic tray is located in the system. See Hr’g Tr. 45:18 to
46:25. If the blue plastic tray becomes full, the relevant place-and-transfer device removes the
full blue plastic tray and replaces it with an empty one. See Defs.’ Mot. at 12-13 (citing id. Ex.
14 (photograph of place-and-transfer device)). The full blue plastic tray is moved along a
separate conveyor to a staging area, where it remains “until all the mail has been fed for the pass
and has dropped into the output bins.” Id. at 14 (quoting id. Ex. 15, at 4810 (Software Design
Description for FSS) (Feb. 16, 2011)) (emphasis omitted); id. Ex. 1, at 1807. After all of the
mailpieces have completed their second pass, the blue plastic trays are taken to a staging area
where the flats are removed and “combined to create full street trays, and placed vertically into
street trays with the bindings to the right.” Id. Ex. 1, at 1807. The various FSS components are
depicted in the photographs shown below:




        8
         Each input line contains two mail feeders, one camera, a labeler, a printer, and a
“[v]erifier.” See Defs.’ Mot at 9.
        9
        180 outputs are served by the upper input line and 180 are served by the lower input line.
Defs.’ Mot. Ex. 4, at 142 (FSS Sort Controller Module).
        10
         The relevant physical components are controlled by a separate executable software
application which runs on an Intel-based processor board under control of the VxWorks
operating system. Defs.’ Mot. Ex. 4, at 142.

         There is no surface beneath the blue plastic trays “and there is nothing in front of or
        11

behind” the blue plastic trays. Defs.’ Mot. at 11.


                                                    6
Defs.’ Mot. Ex. 10 (photograph of rails, blue plastic bins, and conveyor buckets).




Defs.’ Mot. Ex. 3 (photograph of blue plastic trays below conveyor buckets).




                                                7
Defs.’ Mot. Ex. 14 (photograph of place-and-transfer device).

                                 PROCEDURAL HISTORY

         Mr. Cormack filed his complaint in this court on April 3, 2013. On June 24, 2013,
Northrup Grumman Systems filed a Motion to Intervene pursuant to RCFC 14 and RCFC 24 on
the grounds that its contract with the Postal Service contained an indemnity clause specifying
that it was obligated to indemnify the United States against liability for patent infringement.
Northrop Grumman Systems Co.’s Mot. to Intervene, ECF No. 13. On that same day, the court
granted Northrop Grumman Systems’ motion. Order of June 24, 2013, ECF No. 16; see also
Cormack v. United States, 117 Fed. Cl. 392, 396 (2014) (“Cormack I”) (addressing discovery
disputes).12

       After explication by the parties of issues and defenses, and completion of some
discovery, the parties submitted briefs on claim construction and presented oral arguments at a
Markman hearing held on August 27, 2014. The court subsequently issued its claim construction
opinion on November 4, 2014. See Cormack v. United States, 119 Fed. Cl. 63 (2014) (“Cormack
III”).

        On February 13, 2015, defendants filed their motion for summary judgment of non-
infringement. See Defs.’ Mot. Plaintiff filed his response on May 19, 2015. See Pl.’s Opp’n.

       12
         A subsequent opinion addressed discovery of documents claimed to be protected by the
attorney-client privilege against disclosure. See Cormack v United States, 118 Fed. Cl. 39 (2014)
(“Cormack II”).
                                               8
On June 19, 2015, defendants filed their reply to plaintiff’s response. See Def. United States of
America and Def.-Intervenor Northrop Grumman Systems Co.’s Reply Br. in Support of Their
Mot. for Summary Judgment (“Defs.’ Reply”), ECF No. 88. Plaintiffs filed a sur-reply on June
30, 2015, see Pl. Cameron Lanning Cormack’s Unopposed Sur-Reply in Opp’n to Defs.’ Mot.
for Summary Judgment (“Pl.’s Surreply”), ECF No. 89-1, and defendants filed a rejoinder on
July 9, 2015, see Def. United States of America and Def.-Intervenor Northrop Grumman
Systems Co.’s Response to Pl.’s Sur-Reply in Support of Their Mot. for Summary Judgment,
ECF No. 91-1. A hearing on defendants’ motion was held on August 3, 2015. Accordingly, the
matters before the court are fully briefed and ready for disposition.

                                STANDARDS FOR DECISION

                          A. A Claim Pursuant to 28 U.S.C. § 1498(a)

        Pursuant to 28 U.S.C. § 1498, the United States has waived sovereign immunity and
granted this court exclusive jurisdiction to adjudicate patent infringement claims against the
federal government “[w]henever an invention described in and covered by a patent of the United
States is used or manufactured by or for the United States without license of the owner thereof or
lawful right to use or manufacture the same.” 28 U.S.C. § 1498(a); see also Martin v. United
States, 99 Fed. Cl. 627, 632-33 (2011) (recognizing that Section 1498, rather than the Tucker
Act, 28 U.S.C. § 1491(a), grants this court jurisdiction over patent infringement claims against
the United States). Moreover, the statute additionally provides that “the use or manufacture of
an invention described in and covered by a patent of the United States by a contractor, a
subcontractor, or any person, firm, or corporation for the [g]overnment and with the
authorization or consent of the [g]overnment, shall be construed as use or manufacture for the
United States.” 28 U.S.C. § 1498(a) (emphasis added). Such an unauthorized “use or
manufacture of an invention” under Section 1498(a) is analogous to a taking of property under
the Fifth Amendment of the United States Constitution. See Motorola, Inc. v. United States, 729
F.2d 765, 768 (Fed. Cir. 1984); see also Hughes Aircraft Co. v. United States, 29 Fed. Cl. 197,
208 (1993). The government’s “taking” of a non-exclusive and compulsory license to any
United States patent occurs “as of the instant the invention is first used or manufactured by [or
for] the [g]overnment.” Decca Ltd. v. United States, 640 F.2d 1156, 1166 (Ct. Cl. 1980); see
also Liberty Ammunition, Inc. v. United States, 119 Fed. Cl. 368, 385 (2014), appeals pending,
Nos. 15-5057, 15-5061 (Fed. Cir.).

       The government has waived sovereign immunity only for the compulsory taking of a
non-exclusive patent license, and the government’s liability under 28 U.S.C. § 1498 diverges
from private liability under 35 U.S.C. § 271:

               Government liability under Section 1498 arises from the “use[ ] or
               manufacture[ ] by or for the United States.” There is no mention
               of liability for a “sale” to the United States of a device covered by
               a patent. In contrast, with respect to private liability for patent




                                                 9
                 infringement, the “sale” of a patented device is specifically defined
                 in 35 U.S.C. § 271 as an act of infringement . . . .13

de Graffenried v. United States, 25 Cl. Ct. 209, 215 (1992) (alteration in original); compare 28
U.S.C. § 1498, with 35 U.S.C. § 271.

                                       B. Patent Infringement

        “The court determines whether the government has engaged in direct infringement [of a
patent] using a two-step process that parallels the analysis for infringement litigation between
private parties.” Liberty Ammunition, 119 Fed. Cl. at 385 (citing Lemelson v. United States, 752
F.2d 1538, 1548 (Fed. Cir. 1985)); Casler v. United States, 15 Cl. Ct. 717, 731 (1988), aff’d, 883
F.2d 1026 (Fed. Cir. 1989). First, the court construes the claims of the patent; then, it compares
those claims to the characteristics of the accused product or process. See JVW Enters. v. Interact
Accessories, Inc., 424 F.3d 1324, 1329 (Fed. Cir. 2005). When comparing the patent claims to
the accused device or process, the plaintiff bears the burden of proving by a preponderance of the
evidence that every limitation set forth in a patent claim is present in the accused device or
process either literally or by a substantial equivalent. See Boeing Co. v. United States, 69 Fed.
Cl. 397, 426 (2006) (“‘[E]ach element of a claim is material and essential, and . . . for a court to
find infringement, the plaintiff must show the presence of every element [for literal
infringement] or its substantial equivalent [for infringement under the doctrine of equivalents] in
the accused device.’”) (alteration in original) (quoting Lemelson, 752 F.2d at 1551). The
plaintiff’s failure to meet even one element within a claim, literally or by its substantial
equivalent, negates a finding of infringement. See Laitram Corp. v. Rexnord, Inc., 939 F.2d
1533, 1535 (Fed. Cir. 1991). This standard is commonly referred to as the “all elements” rule.
See TDM Am., LLC v. United States, 92 Fed. Cl. 761, 768 (2010), aff’d, 471 Fed. Appx. 903
(Fed. Cir. 2012); see also Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 29
(1997).
                                       C. Summary Judgment

         A grant of summary judgment is appropriate when the pleadings, affidavits, and
evidentiary materials filed in a case demonstrate that “there is no genuine dispute as to any
material fact and the movant is entitled to judgment as a matter of law.” RCFC 56(a). A fact is
material if it “might affect the outcome of the suit under the governing law.” Anderson v.
Liberty Lobby, Inc., 477 U.S. 242, 248 (1986). A dispute is genuine if it might “return a verdict
for the nonmoving party.” Id. If “the record taken as a whole [cannot] lead a rational trier of
fact to find for the non-moving party, there is no ‘genuine issue for trial,’” and summary

       13
            Section 271 of Title 35 of the United States Code provides in relevant part:

                 (a) . . . whoever without authority makes, uses, offers to sell, or
                 sells any patented invention, within the United States or imports
                 into the United States any patented invention during the term of the
                 patent therefor, infringes the patent.

35 U.S.C. § 271(a) (emphasis added).


                                                  10
judgment is appropriate. Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 587
(1986) (quoting First Nat. Bank of Ariz. v. Cities Serv. Co., 391 U.S. 253, 288 (1968)).

        The burden of demonstrating the absence of any genuine dispute is on the moving party
Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986). Accordingly, “‘the inferences to be drawn
from the underlying facts . . . must be viewed in the light most favorable to the party opposing
the motion.’” Matsushita, 475 U.S. at 587-88 (alteration in original) (quoting United States v.
Diebold, Inc., 369 U.S. 654, 655 (1962)). The non-moving party may defeat summary judgment
by presenting material facts of its own, more than “[m]ere denials or conclusory statements,” that
indicate “an evidentiary conflict created on the record.” Barmag Barmer Maschinenfabrik AG v.
Murata Mach., Ltd., 731 F.2d 831, 836 (Fed. Cir. 1984). To establish “that a fact cannot be or is
genuinely disputed,” a party must “cite[] to particular parts of materials in the record, including
depositions, documents, electronically stored information, affidavits or declarations, stipulations
(including those made for purposes of the motion only), admissions, interrogatory answers, or
other materials.” RCFC 56(c)(1)(A).

                                             ANALYSIS

                                     A. Sortation in a Single Pass

        Defendants first argue that summary judgment of no infringement is appropriate with
regard to both the method and system claims contained in the ’693 patent because the FSS
employs a two-pass method of mail sortation and is incapable of sorting mail in a single pass.
See Defs.’ Mot. at 19.14 According to defendants, mailpieces sorted by the FSS are always
loaded and processed twice and the FSS contains no software that would allow the mailpieces to
be sorted in one pass. See Defs.’ Reply at 1-2.

        Plaintiff does not challenge defendants’ factual depiction of the structure and operation of
the FSS machinery, nor does he dispute that the FSS interacts with every mailpiece twice. See
Pl.’s Opp’n at 7 (“The FS[S] interacts with the mail twice.”). However, he avers that the FSS
machines nonetheless infringe the ’693 patent because the first pass performed by the machine
“is not mail sortation in the traditional sense (the sense in which the patent describes mail
sortation),” id., because it “does not contribute to sorting flats by carrier route sorting
destination,” id. at 2 (emphasis added).15 Instead, plaintiff classifies the initial pass of mail
through the FSS as “a sequencing primer.” Id. at 1. In plaintiff’s view, the purpose of the initial
pass is not to sort but rather to use a “pre-sort sequencing process . . . to cause the individual
mailpieces within each pass two sorting destination to enter the stream of mail for pass two in

       14
         “Where it appears in Claims 1 and 10, ‘single pass’ refers to a process rather than to a
device or apparatus. As applied generally in the ’693 patent, it appears that ‘single pass’ refers
to the number of times that mail is loaded and processed, i.e., once.” Cormack III, 119 Fed. Cl.
at 69.
       15
         Plaintiff avers, “[t]he purpose of mail sorting is to segregate the mail by destination
(such as carrier route), such that all of the mail for a particular destination is collected in one
place.” Pl.’s Opp’n at 4-5 (emphasis added).


                                                  11
delivery point sequence.” Id. at 2; see also Hr’g Tr. 52:14-16 (“Sortation is grouping like with
like; sequencing is ordering within a group. Sortation and sequencing achieve different
results.”).16 Therefore, “the so-called ‘pass two’ of the FSS operation is actually a single-pass
sort operation . . . [that] performs all of the steps of the patented method in a single pass, and
fully achieves sortation by carrier route sorting destination in that single pass.” Pl.’s Opp’n at
2.17

        The parties’ dispute arises from their different interpretations of the term “single pass
sortation” and inconsistent accounts of the capabilities of the FSS machinery. In its claim
construction, the court considered the meaning of “sorting in a single pass” when it construed
separately the pertinent terms, i.e., “a method for sorting mailpieces in a single pass” in Claim 1
and “a system for sorting mailpieces in a single pass” in Claim 10 of the ’693 patent. See
Cormack III, 119 Fed. Cl. at 71. The court interpreted “a method for sorting mailpieces in a
single pass” to mean “a method that achieves sortation in one pass, without reloading and
reprocessing mailpieces.” Id. The court determined “a system for sorting mailpieces in a single
pass” to mean “a system that can perform all of the subsequently recited steps in one pass of mail
through the system.” Id. (emphasis added). While the court observed that the constructions
“conceptually are very similar,” it also cautioned that the terms are “not identical” and “the
context of the two types of claims requires a modicum of differentiation.” Id. at 71-72.
Specifically, while for the method claim, the mail must be sorted in a single pass, for a system
claim, the mail sortation system need only be capable of achieving sortation in a single pass. Id.
The court reasoned as follows:

       While a distinguishing characteristic of the system [described in the ’693 patent]
       is that it is capable of employing a “single pass” process, another central feature is
       the incorporation of a “fewer number of receiving bins than [the] required
       [number of] sort destinations.” ’693 patent, col. 2, lines 2-3. . . . Nothing in
       Claim 10 or the specification bars, or suggests a prohibition on, removing
       mailpieces from a receiving bin and reprocessing them through the sorting
       apparatus. See Pl.’s [Claim Construction] Br. at 6-7. Among other things,
       Claim 10 does not preclude use of a continuous conveyor system, ’693 patent,
       col. 5, lines 3-15, or organization of the mail by criteria other than mailstop,
       or programming the system with different tasks, ’693 patent, col. 4, lines
       48-52. These alternatives to a traditional, pure one-pass system are specifically


       16
         In support of his position, plaintiff compares the sequencing of mail to other tasks that
may be incorporated into automated mail sorting systems that are distinct from sortation,
including “weighing mail, . . . separating incoming from outgoing mail, or verifying sufficient
postage.” Pl.’s Opp’n at 8.
       17
          Plaintiff further suggests the FSS cannot be considered a multi-pass system because
unlike multi-pass systems, which “achieve[] a partly usable sortation in each pass,” Pl.’s Opp’n
at 2, the FSS operates such that “‘[a]fter the completion of pass 1, [the mail is] not in an order
that is even partly usable on the street,’” id. (quoting Defs.’ Mot. Ex. 6, at 756978 (Module 2
Postal Operations Mail Delivery Point Sequence (Nov. 2013)), and the mailpieces “are no closer
to being sorted than they were before [the first pass],” id. at 7.
                                                 12
        contemplated by the patent. . . . The open-ended structure of Claim 10 permits
        the claimed system to be modified to perform prior or subsequent tasks that may
        involve additional mail processing.

Id. at 71.

         Respecting the method claims contained in the ’693 patent, defendants prevail on their
assertion of no infringement because under the court’s interpretation, the FSS does not employ a
method for sorting mailpieces in a single pass. As the government observes, the difference in the
parties’ positions is fundamentally semantic. See Defs.’ Reply at 6; see also Pl.’s Opp’n at 16
(“Defendants’ characterization of their delivery point sequencing process as a two-pass sort is
merely an imprecision in language.”) (emphasis in original); Hr’g Tr. 8:19-24 (“The disputes
between the parties are purely semantic, and I say that not in a pejorative way but to say they
really relate to what is the scope of the claims under the [c]ourt’s claim construction. There’s not
a dispute about what is in the system or how it operates.”). Both parties have acknowledged that
the FSS as currently programmed processes each mailpiece twice. See, e.g., Pl.’s Opp’n at 17
(“Both passes are necessary to achieve both sortation by carrier route and sequencing within each
sorted stack . . . .”).18 During the first pass, the mailpieces are scanned, transported along a
conveyor system, and dropped into the appropriate blue plastic trays, ordered by mailstop for all
the relevant carriers. After the pass is completed, the mailpieces are reloaded in reverse order
into the system, after which they are again scanned, transported along the same conveyor system,
and ejected into blue plastic trays, this time ordered by carrier. Mailpieces are processed by one
criteria—mailstop order—during the first pass and by another category—individual mail
carrier—in the second pass. It is plaintiff’s contention that the first pass should not count as
sortation because “[i]t is not grouping like mailstops together and separating unlike mailstops, as
every other mail sorting machine in history has done” and results in mailpieces being “deposited
into a given receiving bin [that] are not necessarily going to the same destination.” Id. at 16.
However, merely because the FSS differs from traditional mail sorting systems in that it sorts to
delivery point sequence for each mail carrier rather than only by mail carrier does not mean that
it infringes the method depicted in the ’693 patent.19 Unlike the other tasks identified by plaintiff
and contemplated by the court as being distinct from sortation and yet capable of being
incorporated into mail sorting systems, see id. at 8 (“weighing mail, . . . separating incoming
from outgoing mail, or verifying sufficient postage”), the singular goal of the FSS is to sort mail
to delivery point sequence, see Hr’g Tr. 29:2-10. In achieving this form of sortation, the method


         An exception applies to “[u]naddressed saturation mail” which “can be processed on the
        18

FSS by introducing it into the sequenced mail stream on Pass 2, resulting in only one piece-
handling for that mail.” Defs.’ Mot. Ex. 20, at 685214 (FSS System Operating Description (Mar.
22, 2005)).
        19
          Plaintiff observes in support of his position that “sequencing the mail within each sorted
stack is not necessary per se.” Pl.’s Opp’n at 17. However, plaintiff’s observation merely
underscores that the method contained in the ’693 patent and that used by FSS were developed to
achieve different goals: the former, to sort mailpieces to each mail carrier, and the latter to sort to
delivery point sequence for each carrier.


                                                  13
used by the FSS requires mail to pass through the system multiple times. Therefore, the FSS
cannot be said to employ “a method that achieves sortation in one pass, without reloading and
reprocessing mailpieces.” Cormack III, 119 Fed. Cl. at 71.20

         Regarding the system claim in Claim 10 of the ’693 patent, the relevant question
becomes whether the FSS system is capable of sorting mail in a single pass. See Cormack III,
119 Fed. Cl. at 71. Based on the facts presented, defendants also prevail on their assertion of no
infringement of Claim 10 because for the FSS to qualify as “a particular scheme or assemblage
of apparatus and set of algorithms that achieve sortation in one pass,” id. at 69, it would have to
be physically altered or reprogrammed. As currently configured, the FSS acts not unlike the
multi-pass systems described and distinguished in the ’693 patent. See Decl. of Douglas Quine
(July 20, 2014)) (“Quine Decl.”) ¶ 24, ECF No. 65-1;21 Defs.’ Reply Ex. 1 (U.S. Patent No.
5,119,954), col. 2, lines 43-48 (“In a two-pass system, the [system] will use the first pass of mail
to distribute mail pieces in such a manner that when the mail is processed through a second pass,
and each sort stacker (containing mail from the first pass) is processed in sequence, the mail will
be in the proper delivery sequence.”); Defs.’ Reply Ex. 2 (U.S. Patent No. 5,363,971), col. 1,
lines 10-13 & col. 12, lines 12-15 (describing a “machine . . . for sorting mail which is capable of
sequencing an individual’s mail carrier’s mail to each individual route stop” where “[t]he device
. . . uses a three-pass system”). As plaintiff acknowledges, a physical reconfiguration would be

       20
          Plaintiff avers “[i]f pass two were performed alone—without pass one being performed
at all—the exact same sortation by carrier route would be achieved [by the FSS] at the end of
pass two.” Pl.’s Opp’n at 13. However, this is inaccurate because the FSS was specifically
programmed to sort by mail carrier only after the mail has already been organized during pass
one based on each mailpieces’ respective sequential position within every mail carrier’s route
and reloaded into the apparatus in reverse order. See, e.g., Defs.’ Reply Ex. 3, at 78:20 to 79:7
(Dep. of Cathryne Tondreau (Mar. 19, 2015)) (noting that if mailpieces were run through the
FSS solely on the second pass they would be rejected by the system because they would not be in
the sequence list); see also Defs.’ Mot. Exs. 8, at 993373 (“For the single pass Non-DPS mode,
the system must be configurable to output [blue plastic trays] to a spur line accessible to
operators to manually transfer contents of the [blue plastic trays] to [Postal Service] flat mail
trays.”) & 19, at 408810-11 (Software Design Description for FSS (Oct. 31, 2007)) (cataloguing
information stored by system on each pass)); Hr’g Tr. 31:23-24 (“[I]n actual operation, the FSS
will not process a piece of mail during pass two unless it remembers having processed it during
pass one.”); Hr’g Tr. 34:23 to 35:2 (“[I]f a piece of mail comes in [during the second pass] that is
assigned to the same mail carrier but isn’t for the house that’s being sorted at that time, it will
have to be rejected. It won’t be put in the stack.”).
       21
         The court in its claim construction considered portions of Dr. Quine’s declaration to
provide a generic background about mail sorting systems. See Cormack III, 119 Fed. Cl. at 69
n.8 (“[T]he court has accepted the portions of Dr. Quine’s Declaration that provide a historical
background in mail sorting technology, see Quine Decl. ¶¶ 14-48, and the court has considered
that background in its claim construction analysis. Those portions of Dr. Quine’s declaration
provide a review of the state of the art at the time the ’693 patent was filed, engendering no
objection from Mr. Cormack.”) (citing Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1585
(Fed. Cir. 1996))).

                                                14
required for the FSS to shift from sorting by delivery point sequence in multiple passes to sorting
by mail carrier in one pass. See Pl.’s Opp’n at 20 (“Whether the FSS was to be used for (a)
sorting and sequencing or (b) just sorting would affect the architecture of the building housing
the machine, the layout of additional equipment, employee training procedures, and allocation of
resources to mail processing facilities . . . [due to] the fact that sequencing involves reverse tray
ordering, which uses a[n] [additional] subsystem.”) (emphasis in original).

        Moreover, even if physical alterations of the FSS’s mechanical components were not
necessary to achieve single-pass sortation, the Postal Service nonetheless “is not currently
running programming” in which it “perform[s] all of the operations of [C]laim 10 in one pass of
mail through the system.” Pl.’s Opp’n at 20. Indeed, Northrup Grumman Systems and the
Postal Service explicitly agreed to exclude single-pass functionality when drafting the FSS
contract, and programming for that purpose was never developed. See Hr’g Tr. 17:2 to 18:7; see
also Pl.’s Opp’n at 19 (“Ultimately the [Postal Service] dropped the requirement for the sorting-
only mode . . . [which] reflects the fact that the [Postal Service] decided not to include a
standalone sortation mode among the standard operator settings.”).22 “[T]hat a device is capable
of being modified to operate in an infringing manner is not sufficient, by itself, to support a
finding of infringement.” Telemac Cellular Corp. v. Topp Telecom, Inc., 247 F.3d 1316, 1330
(Fed. Cir. 2001) (finding no infringement where an accused product could not directly place
international calls, a claim limitation in the relevant patent, without modification of the system
by employing an outside carrier) (citing High Tech Med. Instrumentation v. New Image Indus.,
Inc., 49 F.3d 1551, 1556 (Fed. Cir. 1995)).

        In Nazomi Commc’ns, Inc. v. Nokia Corp., 739 F.3d 1339 (Fed. Cir. 2014), the Federal
Circuit addressed the relevance of the ability to install new software to achieve a claimed
functionality. In that case, the court held that the accused products did not infringe where a
modification in the form of the installation of new software was required for the allegedly
infringing system to be capable of performing certain claim limitations. Id. at 1345-46 (citing
Silicon Graphics, Inc. v. ATI Technologies, Inc., 607 F.3d 784, 794 (Fed. Cir. 2010)). Here also,
as in Nazomi Communications, the programming that would allow the FSS to complete sortation
in one pass is “not even present” in the system. Id. at 1346; cf. Finjan, Inc. v. Secure Computing
Corp., 626 F.3d 1197, 1204-05 (Fed. Cir. 2010) (finding jury verdict of infringement was based
on legally sufficient evidentiary basis where code for proactive scanning, a feature of the
relevant patent, was “already present” in defendants’ accused products when sold and required
no modification of underlying code); Fantasy Sports Properties, Inc. v. Sportsline.com, Inc., 287
F.3d 1108, 1118 (Fed. Cir. 2002) (addressing a circumstance where a user had to activate the


       22
           Plaintiff avers that “[t]here is no reason an operator could not program the FS[S] to run
in a standalone pass the sort plan that typically runs during pass two.” Pl.’s Opp’n at 19.
Nonetheless, plaintiff has failed to provide any evidentiary support for this proposition or any
explanation as to how an operator would configure the FSS’s extant settings to enable this
function. In addition, plaintiff identifies the predecessor to the FSS, “the AFSM 100 . . . [as] a
sorting machine that does not sequence mail,” and observes that “Postal [S]ervice employees
looked into adding a sequencing functionality to that machine, but decided to leave it as a
standalone sorter.” Id. at 19-20. However, the FSS, not the AFSM 100, is the system at issue in
this case.
                                                 15
functions programmed into a piece of software by selecting certain options). Accordingly, the
FSS does not qualify as “a system for sorting mailpieces in a single pass” under Claim 10 of the
’693 patent. Cormack III, 119 Fed. Cl. at 71.

         Plaintiff also raises an argument of infringement under the doctrine of equivalents. Pl.’s
Opp’n at 14. The doctrine of equivalents provides that “a product or process that does not
literally infringe upon the express terms of a patent claim may nonetheless be found to infringe if
there is ‘equivalence’ between the elements of the accused product or process and the claimed
elements of the patented invention.” Warner-Jenkinson, 520 U.S at 21 (quoting Graver Tank &
Mfg. Co. v. Linde Air Products Co., 339 U.S. 605, 609 (1950)). The doctrine of equivalents can
establish infringement where “the differences between [an element of an accused product and a
claim limitation] are insubstantial, a question that turns on whether the element of the accused
product ‘performs substantially the same function in substantially the same way to obtain the
same result’ as the claim limitation.” Absolute Software, Inc. v. Stealth Signal, Inc., 659 F.3d
1121, 1139-40 (Fed. Cir. 2011) (quoting Graver Tank, 339 U.S. at 608); see also Telemac
Cellular, 247 F.3d at 1331.

         The FSS’s method and system do not infringe Claims 1 and 10 of the ’693 patent under
the doctrine of equivalents because the FSS neither performs substantially the same function nor
obtains substantially the same result as Mr. Cormack’s invention. First, the FSS sorts in multiple
passes, whereas the ’693 patent describes a single-pass method and system and explicitly
disparages systems that require multiple passes. See, e.g., ’693 patent, col. 1, lines 49-58; see
also Honeywell Int’l, Inc. v. ITT Indus., 452 F.3d 1312, 1321 (Fed. Cir. 2006) (finding no
infringement under the doctrine of equivalents where accused devices contained carbon fibers,
which were disavowed from the scope of the a claim limitation); J&M Corp. v. Harley-
Davidson, Inc., 269 F.3d 1360, 1366 (Fed. Cir. 2001) (“[T]he scope of equivalents may be
limited by the prosecution history. . . . [or] by statements in the specification that disclaim
coverage of certain subject matter.”) (citations omitted). Therefore, to reach a finding of
equivalents, the court would have to ignore the single-pass limitations of Claims 1 and 10, an
aspect central to plaintiff’s invention. Moreover, the process employed by the FSS and the
process described in the ’693 patent exist to achieve different results; while the FSS was
designed to sort mail by delivery point sequence, the invention outlined in the ’693 patent
intended to sort mail by mail carrier or destination.

         Defendants therefore have sufficiently demonstrated that there is no infringement of
Claims 1 and 10 of the ’693 patent on the basis that the FSS does not use a single-pass method or
qualify as a single-pass system. As noted earlier, defendants raise an additional ground for this
result, and in the interest of completeness in this complex case, the court will also address that
ground.

                                   B. Inclusion of Receiving Bins

       Defendants aver that they are entitled to summary judgment of no infringement on the
ground that the FSS does not contain any “receiving bins” capable of being emptied “if and when
a mailpiece having a new unassigned mailstop is identified.” Defs.’ Mot. at 19; see also Hr’g Tr.
8:11-14. In defendants’ view, the blue plastic trays into which mailpieces are deposited do not

                                                16
qualify as “receiving bins” under the court’s interpretation outlined in its claim construction
because they are “never emptied if and when a mailpiece having a new unassigned mailstop is
identified” but rather are removed only when they are full or after an entire pass is completed.
Defs. Mot. at 19 (emphasis in original); see also Defs.’ Reply at 2; Defs.’ Mot. Ex. 15, at 4810
(Software Design Description for FSS (Feb. 16, 2011)) (“Once the output bin is full, the [blue
plastic tray] is ejected and sent toward the staging area. The ejected trays remain in the staging
areas until all the mail has been fed for the pass and has dropped into the output bins.”); Hr’g Tr.
24:7-9 (defining “full” as having “all of the mailpieces that [the blue plastic tray is] going to
hold”).

        Plaintiff observes that nothing in the court’s claim construction limits a receiving bin to
any particular shape or requires that it be entirely enclosed. See Pl.’s Opp’n at 23. Accordingly,
plaintiff avers that the combination of blue plastic trays and the rail system, including the place-
and-transfer device upon which the trays rest, qualifies as a receiving bin because the trays can
be emptied, much like a “trash bin that contains a trash bag [where] [t]he trash bin may not
directly touch any of the trash deposited into the bin.” Id.

       The court in its claim construction interpreted the term “receiving bin” to mean “a
container or enclosed place that serves as a collection point for sorted mailpieces.” Cormack III,
119 Fed. Cl. at 73. Additionally, Claims 1 and 10 in the ’693 patent provide further context
regarding the role of receiving bins within the patented system.23 Claim 1 states:

       A method for sorting mailpieces in a single pass . . . wherein if and when all of the
       plurality of receiving bins have been assigned with a mailstop and a new received
       mailpiece is identified with a new mailstop that has not been assigned to a
       receiving bin, the method further compris[es] the steps of i) issuing a command to
       a first receiving bin to empty its contents whereupon the first receiving bin
       empties its contents into a receptacle,24 ii) reassigning the first receiving bin with
       the new mailstop of the new received mailpiece, and iii) conveying the new
       received mailpiece into the first receiving bin.

’693 patent, col. 8, lines 28-53 (emphasis added).




       23
          The ’693 patent’s preamble also offers insight into the role of the receiving bins within
the system. See ’693 patent, col. 2, lines 20-25 (describing an embodiment of the system in
which “[i]f and when a new mailpiece is received and scanned with a new mailstop that is
different from the mailstops already assigned to each of the receiving bins, the control system
then makes a determination as to which of the receiving bins is to be emptied of its existing
contents of mailpieces and be reassigned with the new mailstop.”).
       24
          The court construed separately the term “receptacle” in its claim construction,
concluding that it meant “a receiving container distinct from receiving bins.” Cormack III, 119
Fed. Cl. at 76.


                                                 17
       Correlatively, Claim 10 states:

       A system for sorting mailpieces in a single pass, comprising . . . a control system
       . . . wherein the control system is . . . adapted to transmit a command to a first
       receiving bin to empty its contents if and when the scanning apparatus identifies a
       new mailpiece having a new mailstop after all of the receiving bins have been
       assigned a mailstop different from the new mailstop, [and] to reassign the first
       receiving bin with the new mailstop and to cause the conveyor apparatus to carry
       the new mailpiece to the first receiving bin and deposit the new mailpiece into the
       first receiving bin.

’693 patent col. 9, lines 12-48 (emphasis added).

         Plaintiff’s observations concerning the shape of the blue plastic trays and their
supportive rails do not address defendants’ argument regarding their functionality.25
While plaintiff may be correct that the physical structure of the FSS’s blue plastic trays
and the rails upon which they rest could collectively qualify as an “enclosed place that
serves as a collection point for sorted mailpieces,” Cormack III, 119 Fed. Cl. at 73, the
evidentiary materials submitted by the parties suggest that the trays do not act in the
manner of “receiving bins” as described in Claims 1 and 10 of the patent because they are
never emptied and reassigned to a new mailstop during a pass, but rather are emptied
only when full or after the completion of one of the FSS’s two passes of mail. See, e.g.,
Defs.’ Mot. Exs. 1, at 1807 (“During pass 2, as [blue plastic trays] fill up with sequenced
flats, they are ejected from the FS[S] and transported to tray staging.”) & 17 (Automated
Tray Management Subsystem) (depicting transfer of empty blue plastic trays to output
locations); Defs.’ Reply Ex. 3, at 81:6-8 (Dep. of Cathryne Tondreau) (noting that trays
are ejected from the output “[w]hen they are full or on sweep”); Pl.’s Opp’n Ex. 2, at
80:7-12 (Dep. of Leung Shiu) (“A tray is ejected when it is considered full during the run
and also during the sweep at pass one and pass two . . . .”); id. at 10 (“When the bin is
full, the [system] . . . ejects the contents of the bin . . . .”) (emphasis added); id. at 11
(“[T]he receiving bins of the FSS eject their [blue plastic trays] when the control system
senses that the [blue plastic trays] have reached their filling threshold.”) (emphasis




       25
          Plaintiff also raises the alternative argument that the FSS components satisfy the
receiving bin limitation under the doctrine of equivalents because “[t]he function of both the
claimed receiving bins[] and the bins of the FS[S] is to serve as a collection point for sorted
mailpieces during a sorting pass” and “[t]he way in which both bins perform[] this function is by
providing a physical barrier around the sorted mail that prevents mailpieces from intermingling
with mailpieces from other sorting destinations or from leaving their collection point until an
eject command is received.” Pl.’s Opp’n at 25 (emphasis in original). This argument, like
plaintiff’s other arguments, fails to address the receiving bins’ dynamic role in the sortation
process as outlined in the text of Claims 1 and 10 of the ’693 patent.


                                                 18
added); Hr’g Tr. 74:16-18 (It’s very clear here . . . that . . . the triggering event for
ejecting the blue tray is that the tray is full.”).26

        Accordingly, there is not enough evidence in the record for the court to infer that
any potential reassignments of the receiving bins to new mailstops occur “if and when all
of the plurality of receiving bins have been assigned with a mailstop and a new received
mailpiece is identified with a new mailstop that has not been assigned to a receiving bin,”
’693 patent, col. 8, lines 41-44 (emphasis added), or could occur “if and when the
scanning apparatus identifies a new mailpiece having a new mailstop after all of the
receiving bins have been assigned a mailstop different from the new mailstop,” ’693
patent, col. 9, lines 40-44 (emphasis added). In addition, there is no evidence that the
FSS contains any other structures that are capable of collecting mail and being reassigned
to new mailstops during a pass. The ability of the receiving bins to be reassigned
dynamically during a pass is central to plaintiff’s invention and serves as its primary
distinguishing feature over prior art. See, e.g., Compl. ¶ 5 (“The [’]952 Application [that
culminated in the issuance of the ’693 patent] disclosed pioneering technology, invented
by [Mr.] Cormack, underlying the dynamic assignment of mailstops and receiving bins
for use in automated mail sorting systems.”). The lack of evidence demonstrating the
FSS’s ability to reassign receiving bins to new mailpieces during a pass of mail
ultimately defeats plaintiff’s assertions of infringement with regard to both the system
and method claims contained in Claims 1 and 10 of the ’693 patent.

        In sum, because defendants have met their burden of demonstrating the absence of any
genuine issue of material fact with regard to how the accused FSS machinery operates, summary
judgment is appropriate. See Matsushita, 475 U.S. at 587-88. The court finds that the FSS fails
to sort mail in a single pass and is incapable of sorting mail in a single pass. The court also finds
that plaintiffs have failed to demonstrate that the FSS includes “receiving bins” that act in the
manner depicted in Claims 1 and 10 of the ’693 patent.27




        26
          Plaintiff contends that the deposition of Mr. Leung Shiu, a Postal Service employee,
demonstrates that the receiving bins can be dynamically reassigned to new mailstops. See Pl.’s
Surreply at 3-4; see also Hr’g Tr. 56:21 to 57:20 (citing Pl.’s Opp’n Ex. 2 (Dep. of Leung Shiu),
at 55:8-16 (“Dynamic overflow bin occurs on the second pass. You can imagine, if a [mailpiece]
is going to one of these bins and, for instance, if a bin fills up, they get rejected, they get replaced
by another bin. If you can imagine another piece that’s destined for that same bin, it needs
somewhere to go. So the system is smart enough to assign another bin so that that piece can get
to its destination . . . .”) (emphasis added)). The court’s interpretation of Mr. Shiu’s statement
differs from plaintiff’s. Given that Mr. Shiu specifically referenced a mailpiece “destined for the
same bin” as the one that was ejected because it “fill[ed] up,” there is not enough information in
Mr. Shiu’s statement for the court to infer that the replacement bin could be assigned to a new
mailstop during a pass.

        It is not necessary for the court to consider the dependent claims at issue because “[i]t is
        27

axiomatic that dependent claims cannot be found infringed unless the claims from which they
                                                   19
                                       CONCLUSION

        For the reasons explained, defendants’ motion for summary judgment is GRANTED
because the court concludes that the FSS does not infringe claims of the ’693 patent. The clerk
is directed to enter judgment for defendants.

       No costs.

       It is so ORDERED.

                                            s/ Charles F. Lettow
                                            Charles F. Lettow
                                            Judge




depend have been found to have been infringed.” Wahpeton Canvas Co. v. Frontier, Inc., 870
F.2d 1546, 1553 (Fed. Cir. 1989).
                                               20
