American Piledriving Equipment v. Geoquip (CAFC 2010-1283) precedential

The '964 Patent relates to counterweights for so-called "vibratory" pile drivers. As the name suggests, vibratory pile drivers rely on vibration to drive piles (support columns usually made of timber, steel, or concrete) into the ground. \

This court reviews the grant of summary judgment de novo, applying the same legal standards as the district court. Young v. Lumenis, Inc., 492 F.3d 1336, 1345 (Fed. Cir. 2007). Summary judgment is appropriate where there is no genuine issue of material fact and the moving party is entitled to judgment as a matter of law. Fed. R. Civ. P. 56(c).

American Piledriving argues on appeal that the district courts misconstrued the "eccentric weight portion," "integral," and "insert-receiving area" terms and that each grant of summary judgment of noninfringement should be reversed. It also contends that even if this court upholds the claim constructions adopted by the district courts, summary judgment was still improperly granted.

Claim Construction

American Piledriving objected to additional limitations encrusted on "eccentric weight portion,"

Two courts giving "disparate treatment" of claims, one "inappropriately added several limitations," yet both are "competent and capable district courts."

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 to obviate factual questions of infringement and validity but rather to give meaning to the limitations actually contained in the claims, informed by the written description, the prosecution history if in evidence, and any relevant extrinsic evidence. See Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005) (en banc). In the course of construing the claims in this case, the Virginia district court carefully avoided redefining the claims and reading limitations into the claims from the written description. The California district court, however, inappropriately added several limitations not contained in the inventor's claimed definition of the scope of his invention. This disparate treatment of the same issues before two competent and capable district courts is thus instructive.

This court agrees with American Piledriving that the California court improperly imported limitations from the specification into its construction of "eccentric weight portion," but concludes that the Virginia court correctly construed the term. This court reviews claim construction de novo. Cybor Corp. v. FAS Techs., 138 F.3d 1448, 1451 (Fed. Cir. 1998) (en banc). Claim terms are generally given their "ordinary and customary meaning," namely "the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention." Phillips, 415 F.3d at 1313. To determine the ordinary and customary meaning of a claim term, courts turn to "those sources available to the public that show what a person of skill in the art would have understood disputed claim language to mean." Id. at 1314 (quoting Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1116 (Fed. Cir. 2004)). Those sources include "the words of the claims themselves, the remainder of the specification, the prosecution history, and extrinsic evidence concerning relevant scientific principles, the meaning of technical terms, and the state of the art." Id. (quoting Innova, 381 F.3d at 1116). Because neither party provided cogent extrinsic evidence, this court looks only to the intrinsic evidence--the claims, specification, and prosecution history.

American Piledriving didn't think through what a reasonable construction should be.

1. "Eccentric Weight Portion"

i. Claims

We begin our analysis with the language of the claims, as it provides "substantial guidance as to the meaning of particular claim terms." Id. (citing Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)). The claims do not explicitly define the term "eccentric weight portion," but the language does suggest that the term should not be construed as broadly as proposed by American Piledriving. For example, claim 16 recites "an eccentric weight portion connected to said cylindrical gear portion." '964 Patent col.11 ll.13-14 (emphasis added). If, as suggested by American Piledriving, the term "eccentric weight portion" encompasses any portion of the counterweight that contributes to the uneven weight distribution around the body of the gear, the term would include the gear itself, as the gear is partly responsible for the uneven weight distribution of the counterweight. See id. col.5 ll.51-60 (explaining that the holes in the gear "effectively reduce the amount of metal in the top portion [of the gear], thereby moving the center of gravity of the counterweight lower or radially away from the rotational axis") (reference numbers omitted). This interpretation cannot be correct as it would essentially require that the structure recited in claim 16 connect to itself.

Both district courts recognized--and American Piledriving does not dispute--that the term "eccentric weight portion" is used consistently throughout the claims of the '964 Patent. Nothing suggests that the term has different meanings in different claims. Where a claim term is used consistently throughout the claims, "the usage of [the] term in one claim can often illuminate the meaning of the same term in other claims." Phillips, 415 F.3d at 1314 (citation omitted). Thus, the meaning of the term "eccentric weight portion" apparent from claim 16 is equally applicable to independent claims 1, 6, and 11 as well.

ii. Specification

We turn next to the specification as it "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." Id. at 1315 (citation omitted).

Both district courts relied heavily on a passage in the specification to reach their respective structural constructions of "eccentric weight portion."

[C]onsistent reference throughout the specification to the "eccentric weight portion" as structure extending from the face of the gear makes it apparent that it relates to the invention as a whole, not just the preferred embodiment as contended by American Piledriving.

This court has indicated that a statement in a specification that describes the invention as a whole can support a limiting construction of a claim term. Cf. C.R. Bard, Inc. v. U.S. Surgical Corp., 388 F.3d 858, 864 (Fed. Cir. 2004). That is especially true where, as here, other statements and illustrations in the patent are consistent with the limiting description. The specification repeatedly uses the words "thereto" or "therewith" to describe the relationship between the "cylindrical gear portion" and the "eccentric weight portion." See '964 Patent Abstract; col.5 ll.25-27. These words suggest a structural construction of "eccentric weight portion," as they describe the "eccentric weight portion" according to its location relative to other components, not the function it performs. The specification also describes balancing the "eccentric weight portion" such that it hangs at its lowest point. Id. col.9 ll.11-17. This description of the "eccentric weight portion" further suggests a structural rather than a functional construction.

There was further spec support, as well as corroboration from the Figures.

This court agrees with American Piledriving that nothing in the specification compels the reading of these additional limitations into the construction of "eccentric weight portion."

Based on the foregoing, this court agrees with the construction of the term "eccentric weight portion" made by the District Court for the Eastern District of Virginia: "that portion of the counterweight that extends either forward or rearward from the front or back face of the gear portion such that it shifts the center of gravity radially outward from the gear's rotational axis.

2. "Integral"

American Piledriving argued plain meaning and against prosecution disclaimer.

The Defendants contend that rather than presenting a supposed "irreconcilable conflict," claims 16 and 19 provide strong evidence in support of the construction reached by the district courts. Moreover, they contend that American Piledriving limited the term to "formed or cast as one-piece" during reexamination.

This court agrees with the Defendants. We focus our analysis on the evidence relied upon by the parties: the claims and the prosecution history.

i. Claims

As noted by both district courts, independent claim 16 recites in relevant part "an eccentric weight portion connected to said cylindrical gear portion." '964 Patent col.11 ll.13-16 (emphasis added). By contrast, claim 19, which depends directly from claim 16, recites "said eccentric weight portion is integral with said cylindrical gear portion." Id. col.11 ll.30-32 (emphasis added). Each court construed the term "connected to" in claim 16 to mean "joined together, united, or linked" and neither party disputes this construction on appeal. Relying on the doctrine of claim differentiation, each court reasoned that the term "integral" must be narrower than "connected to" and must therefore refer to a single-piece counterweight.

American Piledriving stupidly wanted a distinction that had no difference.

Indeed, where, as here, the claims describe the same relationship using different terms, the assumption is that the term in the dependent claim has a narrower scope. See 35 U.S.C. § 112, ¶ 4 ("Subject to the following paragraph, a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed."); Comark Comm'ns, Inc. v. Harris Corp., 156 F.3d 1182, 1187 (Fed. Cir. 1998) ("There is presumed to be a difference in meaning and scope when different words or phrases are used in separate claims. To the extent that the absence of such difference in meaning and scope would make a claim superfluous, the doctrine of claim differentiation states the presumption that the difference between claims is significant."). American Piledriving has not pointed to anything in the record that suggests this presumption is not applicable here. Given the undisputed construction of "connected to," this court agrees with both district courts that claims 16 and 19 inform that "integral" as used in independent claims 1, 6, and 11 means "formed or cast of one piece." See Phillips, 415 F.3d at 1314 ("[T]he usage of [the] term in one claim can often illuminate the meaning of the same term in other claims.").

The prosecution history removes all doubt that one of ordinary skill in the art would have understood the term "integral" to mean "formed or cast of one piece." During reexamination, American Piledriving attempted to distinguish a prior art reference by arguing this very point.

"[W]e have made clear . . . [that] an applicant's argument that a prior art reference is distinguishable on a particular ground can serve as a disclaimer of claim scope even if the applicant distinguishes the reference on other grounds as well." Andersen Corp. v. Fiber Composites, LLC, 474 F.3d 1361, 1374 (Fed. Cir. 2007). Moreover, regardless of whether the examiner agreed with American Piledriving's arguments concerning "integral," its statements still inform the proper construction of the term. See Seachange Int'l, Inc. v. C-Cor Inc., 413 F.3d 1361, 1374 (Fed. Cir. 2005) ("An applicant's argument made during prosecution may lead to a disavowal of claim scope even if the Examiner did not rely on the argument."); Microsoft Corp. v. Multi-Tech Sys., 357 F.3d 1340, 1350 (Fed. Cir. 2004) ("We have stated on numerous occasions that a patentee's statements during prosecution, whether relied on by the examiner or not, are relevant to claim interpretation."). American Piledriving unambiguously argued that "integral" meant "one-piece" during reexamination and cannot attempt to distance itself from the disavowal of broader claim scope.

Neither court erred here.

3. "Insert-Receiving Area"

This court agrees with the observation of the Virginia court that the claims and the specification read together inform that the "insert-receiving area" has three key components: (1) it is shaped to receive an insert; (2) it is at least partially located in the "eccentric weight portion"; and (3) it may extend into the cylindrical gear. Accordingly, this court adopts the construction of "insert-receiving area" reached by the Virginia court: "A bore located, at least in part, within the eccentric weight portion that is shaped to hold securely a solid insert member."

***

In summary, this court affirms the claim construction of the Virginia court in its entirety, and reverses the construction of the California court to the extent that it differs from the Virginia court's construction.

Infringement

American Piledriving couldn't hit the mark.

The Defendants contend that what American Piledriving calls ridges are nothing more than the faces of the gear, which have peripheral recesses cut from their front and back surfaces. Because the ridges do not extend from a face of the gear but are themselves faces of the gear, the Defendants argue that they cannot be considered "eccentric weight portions" as recited in the claims.

American Piledriving's contentions are the result of a distorted reading of the language of both the specification and the claims and do not withstand critical scrutiny. Because the outermost flat surfaces of the gear are its "faces," what American Piledriving calls a protrusion cannot be the claimed "eccentric weight portion," as it does not extend from a face of the gear. Since the only possible "eccentric weight portion" of the accused devices is the structure that is bolted to the gear, the devices lack "an eccentric weight portion integral with said cylindrical gear portion" as required by the claims.

Two pile drivers swerved from infringement, but the Early Model 500 banged.

Because neither the Model 250 nor the Model 500 pile drivers infringe the asserted claims as construed by this court, we affirm the grant of summary judgment of noninfringement by the District Court for the Eastern District of Virginia. This court likewise affirms the grant of summary judgment by the District Court for the Northern District of California as to noninfringement of the asserted claims by the Model 250 and Model 500 pile drivers but reverses the grant of summary judgment and denial of American Piledriving's motion for summary judgment of infringement as to claims 16-18 by the Early Model 500 pile driver. The California action is therefore affirmed in part, reversed in part, and remanded.