IN THE UNITED STATES DISTRICT COURT

FOR THE NORTHERN DISTRICT OF ILLINOIS 

EASTERN DIVISION

PINPOINT INCORPORATED,

Plaintiff,

v.

SEARS, ROEBUCK AND CO.

Defendant.

Case No. 1:12-cv-01195

Honorable Joan H. Lefkow

Magistrate Honorable Geraldine Soat Brown

JURY TRIAL DEMANDED

PINPOINT INCORPORATED’S ANSWER TO

DEFENDANT SEARS, ROEBUCK AND CO.’S COUNTERCLAIM

Plaintiff Pinpoint Incorporated (“Pinpoint”) hereby responds to Defendant Sears, 

Roebuck and Co.’s (“Sears”) Counterclaim, served on June 14, 2012, as follows:

SEARS’ COUNTERCLAIM

1. Sears repeats and incorporates by reference each of the foregoing paragraphs of 

Sears‘s Answer and Affirmative Defenses to the Complaint. 

Response:

Pinpoint objects to Sears’ incorporation by reference of each of the paragraphs of its 

Answer and Affirmative Defenses as improper since a responsive pleading is not necessary for

answers and affirmative defenses. To the extent any response to Sears’ answers and affirmative 

defenses is necessary, they are denied insofar as they are inconsistent with the allegations 

contained in Pinpoint’s Complaint For Patent Infringement, Dkt. No. 1.

2. This counterclaim seeks declaratory judgments of non-infringement, invalidity and 

unenforceability of one or more claims of United States Patent Nos. 5,754,938 (“the ‘938 patent”), 

7,853,600 (“the ‘600 patent”), and 8,056,100 (“the ‘100 patent”) (attached hereto as Exhibits B, C & 

D, respectively), under the Declaratory Judgment Act, 28 U.S.C. §§ 2201–2202 and the patent laws 

of the United States. 

Response:

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Admitted that Sears seeks such declaratory judgments, but denied that it is entitled to any 

relief.

PARTIES

3. Sears, Roebuck And Co. (“Sears”), designated herein as counterclaim plaintiff, is a 

New York corporation with headquarters at 3333 Beverly Road, Hoffman Estates, Illinois, 60179. 

Response:

Admitted.

4. On information and belief, Pinpoint Incorporated (“Pinpoint”), designated herein as 

counterclaim defendant, is a Texas corporation with headquarters at 203 North Wabash Avenue, 

Suite 1610, Chicago, Illinois 60601, and residing in this judicial district for purposes of venue under 

28 U.S.C. § 1391.

Response:

Admitted that Pinpoint is a Texas corporation with former headquarters at 203 North 

Wabash Avenue, Suite 1610, Chicago, Illinois, 60601, which has been moved to 63 East Lake 

Street, Chicago, Illinois, 60601. Further admitted that venue is proper in this judicial district 

under 28 U.S.C. §§ 1391(b)-(d) and 1400(b). Except as answered, the allegations are denied.

JURISDICTION AND VENUE

5. This Court has subject matter jurisdiction over this counterclaim pursuant to 28 

U.S.C. §§ 1331, 1338(a), 2201(a), and 2202. 

Response:

Admitted.

6. Venue is proper in this judicial district pursuant to 28 U.S.C. §§ 1391 and 1400. 

Response:

Admitted.

7. Venue and personal jurisdiction are proper within this judicial district because, inter 

alia, Pinpoint has sought the benefit of this forum for this litigation. 

Response:

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Admitted that venue is proper in this judicial district under 28 U.S.C. §§ 1391(b)-(d) and 

1400(b). Further admitted that this Court has personal jurisdiction over all parties. Except as 

answered, the allegations are denied.

COUNTERCLAIM FOR DECLARATORY JUDGMENT

8. Sears repeats and incorporates by reference each of the foregoing paragraphs of 

Sears‘s Answer and Affirmative Defenses to the Complaint and of this Counterclaim. 

Response:

Pinpoint objects to Sears’ incorporation by reference of each of the paragraphs of its 

Answer and Affirmative Defenses as improper since a responsive pleading is not necessary for

answers and affirmative defenses. To the extent any response to Sears’ answers and affirmative 

defenses is necessary, they are denied insofar as they are inconsistent with the allegations 

contained in Pinpoint’s Complaint For Patent Infringement, Dkt. No. 1. Pinpoint repeats and 

incorporates by references its responses to the foregoing paragraphs of Sears’ Counterclaim.

9. On information and belief, the ‘938, ‘600, and ‘100 patents ostensibly were issued on 

May 19, 1998, December 14, 2010, and November 8, 2011, respectively, and are alleged to be owned 

by Pinpoint. 

Response:

Admitted.

10. Pinpoint filed a complaint (“the Complaint”) in this Court alleging that Sears has 

infringed and continues to infringe at least claim 1 of the ‘938 patent within the meaning of 35 

U.S.C. § 271(a) through activities relating to operation of the website at http://www.sears.com. 

Response:

Admitted.

11. The Complaint alleges that Sears has infringed and continues to infringe at least 

claim 29 of the ‘600 patent within the meaning of 35 U.S.C. § 271(a) through activities relating to 

operation of the website at http://www.sears.com. 

Response:

Admitted.

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12. The Complaint alleges that Sears has infringed and continues to infringe at least 

claim 36 of the ‘100 patent within the meaning of 35 U.S.C. § 271(a) through activities relating to 

operation of the website at http://www.sears.com. 

Response:

Admitted.

13. Sears has not in any way infringed and does not in any way infringe—including, 

without limitation, literally, directly, indirectly, by inducement, contributorily, or under the 

doctrine of equivalents—any valid and enforceable claim of the ‘938, ‘600, or ‘100 patents, by 

any acts alleged by Pinpoint or otherwise.

Response:

Denied.

14. On information and belief, prior to initiating this action, Pinpoint failed to adequately 

investigate Sears‘s alleged infringing acts, including the alleged infringing acts related to its 

operation of the website at http://www.sears.com, that form the basis of Pinpoint‘s accusations of 

infringement of the ‘938, ‘600, and ‘100 patents within Pinpoint‘s Complaint. 

Response:

Denied.

15. The claims of the ‘938, ‘600, and ‘100 patents are invalid and/or unenforceable for 

failing to comply with the requirements set forth in the patent laws of the United States, including, 

without limitation, Title 35 of the United States Code and, more specifically, 35 U.S.C. §§ 101, 102, 

103, and 112. 

Response:

Denied.

16. Based on the foregoing, there is an actual, substantial and continuing justiciable 

controversy between Sears and Pinpoint regarding the validity, enforceability, and infringement of 

the ‘938, ‘600, and ‘100 patents. 

Response:

Admitted that there is an actual and justiciable controversy between Pinpoint and Sears 

regarding validity, enforceability and infringement of the ‘938, ‘600 and ‘100 patents. Except as 

answered, the allegations are denied.

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17. The controversy between Sears and Pinpoint warrants a declaratory judgment by this 

Court that the ‘938, ‘600, and ‘100 patents are invalid and unenforceable and that Sears does not in 

any way infringe the ‘938, ‘600, or ‘100 patents. 

Response:

Denied.

AFFIRMATIVE DEFENSES

Pinpoint asserts the following Affirmative Defenses against Sears’ counterclaim and 

reserves the right to further amend its responses as additional information becomes available:

1. The claims of United States Patents Nos. 5,754,938; 7,853,600 and 8,056,100 are 

valid, enforceable and infringed by Sears.

2. Sears’ counterclaim fails to state a claim upon which relief can be granted, i.e., 

claims for invalidity, unenforceability and non-infringement of the ‘938 patent, the ‘600 patent 

and the ‘100 patent.

3. Pinpoint hereby incorporates by reference as if fully set forth herein the 

allegations of its Complaint and denies Sears’ Answers and Affirmative Defenses to the extent 

they are inconsistent with Pinpoint’s allegations.

4. Pinpoint adopts and incorporates herein all affirmative defenses available 

pursuant to Federal Rule of Civil Procedure 8 (or any applicable statute or regulation), to the 

extent the facts known at this time would make any of said defenses available or facts developed 

in the future would make same available. No affirmative defense is waived.

5. Pinpoint reserves the right to supplement its affirmative defenses.

PRAYER FOR RELIEF

WHEREFORE, Pinpoint requests judgment in its favor on Sears’ counterclaim, judgment 

in its favor and against Sears with respect to Pinpoint’s claims in its Complaint and all relief 

requested in Pinpoint’s Complaint, an award of its costs, fees, and expenses as provided by law, 

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and any other and further relief to which Pinpoint may be entitled to, or the Court or a jury may 

award.

JURY DEMAND

Pinpoint hereby demands a trial by jury on all issues so triable.

Date: July 5, 2012

Respectfully submitted,

/s/ Brian E. Haan

Raymond P. Niro

Paul K. Vickrey

Paul C. Gibbons

Brian E. Haan

Oliver D. Yang

NIRO, HALLER & NIRO

181 W. Madison, Suite 4600

Chicago, IL 60602

(312) 236-0733

Fax: (312) 236-3137

rniro@nshn.com

vickrey@nshn.com

gibbons@nshn.com

bhaan@nshn.com

oyang@nshn.com

Attorneys for Pinpoint Incorporated

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CERTIFICATE OF SERVICE

The undersigned hereby certifies that on July 5, 2012 the foregoing:

PINPOINT INCORPORATED’S ANSWER 

TO DEFENDANT SEARS, ROEBUCK AND CO.’S COUNTERCLAIM

was filed with the Clerk of the Court pursuant to the Court’s CM/ECF procedures, which will 

electronically notify the following counsel of record: 

James J. Lukas, Jr.

lukasj@gtlaw.com

Greenberg Traurig, LLP

77 West Wacker Drive

Suite 3100

Chicago, Illinois 60601

Tel: (312) 456-8400

Attorney for Sears, Roebuck and Co.

Rachael G. Pontikes

rgpontikes@duanemorris.com

Duane Morris LLP

190 South LaSalle Street

Suite 3700

Chicago, IL 60603

Tel: (312) 499-6757

Arthur Dresner

Duane Morris LLP

1540 Broadway

New York, NY 10036

Tel: (212) 692-1014

Matthew C. Mousley

Duane Morris LLP

30 S. 17th Street

Philadelphia, PA 19103-4196

Tel: (215) 979-1804

Attorneys for Sears, Roebuck and Co.

I certify that all parties in this case are represented by counsel who are CM/ECF participants.

/s/ Brian E. Haan

Attorney for Pinpoint Incorporated

NIRO, HALLER & NIRO

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