Resolving Disparate Claim Constructions by Two District Courts
March 21, 2011
Last Month at the Federal Circuit - April 2011
Judges: Bryson, Gajarsa, Linn (author)
[Appealed from: E.D. Va., Judge Smith; N.D. Cal., Judge Hamilton]
In American Piledriving Equipment, Inc. v. Geoquip, Inc., No. 10-1283 (Fed. Cir. Mar. 21, 2011), the Federal Circuit affirmed the U.S. District Court for the Eastern District of Virginia’s (“the Virginia district court”) grant of SJ of noninfringement. And, in the consolidated appeal of American Piledriving Equipment, Inc. v. Bay Machinery Corp., No. 10-1314 (Fed. Cir. Mar. 21, 2011), the Federal Circuit affirmed in part, reversed in part, and remanded the U.S. District Court for the Northern District of California’s (“the California district court”) grant of SJ of noninfringement.
American Piledriving Equipment, Inc. (“American Piledriving”) owns U.S. Patent No. 5,355,964 (“the ’964 patent”), which relates to counterweights for so-called “vibratory” pile drivers. The counterweights consist of an “eccentric weight portion” either “integral” to (claim 1) or “connected” to (claim 16) a cylindrical gear portion. Each “eccentric weight portion” contains at least one “insert-receiving area.”
American Piledriving brought two similar infringement suits—one against Geoquip, Inc. in the Virginia district court and one against Bay Machinery Corporation in the California district court. American Piledriving alleged that both defendants infringed the ’964 patent by selling Model 250 and Model 500 vibratory pile drivers. Additionally, in the California district court proceeding, American Piledriving also accused an earlier, different version of the Model 500, known as the Early Model 500.
In both actions, the parties disputed the meaning of the claim terms “eccentric weight portion,” “integral,” “insert-receiving area,” and “connected to.” The district courts adopted the same construction for “integral” and “connected to,” but different constructions for “eccentric weight portion” and
“insert-receiving area.” In each action, the parties moved for SJ regarding infringement. Each district court granted the respective defendant’s SJ motion of noninfringement, holding that the accused pile drivers did not meet the “integral” and “insert-receiving area” claim limitations. American Piledriving appealed both decisions, and the appeals were consolidated before the Federal Circuit.
Given the unusual circumstance of consolidated appeals from two district courts construing the same claim terms, the Federal Circuit commented: “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.” Slip op. at 10.
The Federal Circuit first addressed the construction of the term “eccentric weight portion.” The Court rejected American Piledriving’s argument that the term should be construed functionally rather than structurally. In particular, the Federal Circuit agreed with the Virginia district court’s construction, noting that (1) the claim language, “an eccentric weight portion connected to said cylindrical gear portion,” suggested that the term should not be construed as broadly as American Piledriving proposes because that construction would include the gear itself, thus incorrectly resulting in a requirement that the structure connect to itself; (2) the specification’s consistent reference to the “eccentric weight portion” as structure extending from the face of the gear made it apparent that it relates to the invention as a whole and not just the preferred embodiment as contended by American Piledriving, and the use of the words “thereto” and “therewith” to describe the relationship between the gear portion and weight portion suggested a structural rather than a functional construction; and (3) the prosecution history was consistent with the term referring to a structure extending from the gear portion. Additionally, the Court rejected the California district court’s overly narrow construction, finding that nothing in the specification compelled reading additional limitations into the construction.
The Federal Circuit then addressed the meaning of the term “integral,” agreeing with the district courts that it means “formed or cast as one piece.” Focusing on the claims and prosecution history, the Court noted that claim 16 recited an eccentric weight portion connected to the gear portion, whereas claim 19 (which depends from claim 16) recited an eccentric weight portion integral with the gear portion. While the parties disputed the meaning of the term “integral,” they did not dispute that “connected to” means “joined together, united, or linked.” The Federal Circuit rejected American Piledriving’s argument that “integral” should not be limited to one piece because (1) “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[,]” id. at 17, and since claim 16 encompasses one-piece counterweights as well as two-piece counterweights that are joined together, there is nothing inherently incorrect in interpreting “integral” in claim 19 to mean one piece; and (2) during reexamination, American Piledriving attempted to distinguish a prior art reference by arguing that “integral” meant one piece, and that argument was sufficient to disavow any potentially broader claim scope.
Finally, with respect to claim construction, the Federal Circuit adopted the Virginia district court’s construction of “insert-receiving area.” The Court agreed with American Piledriving that the California district court improperly imported a limitation from the preferred embodiment into the claims because the intrinsic record did not suggest or indicate that the additional limitation must always be present in the claimed invention.
The Federal Circuit next examined the district courts’ findings of noninfringement, concluding that the Model 250 and Model 500 lack “an eccentric weight portion integral with said cylindrical gear portion,” as required by the claims, and also lack the “insert-receiving area” recited in several of the claims. The Court, however, found that the Early Model 500 satisfies all of the limitations of claim 16, which merely requires that the components be “connected to” one another, as well as claims 17 and 18, and thus infringes those claims.
Accordingly, the Federal Circuit agreed with the claim constructions of the Virginia district court, modified the claim constructions of the California district court to match the Virginia district court’s constructions, affirmed the noninfringement judgment of the Virginia district court, and affirmed in part, reversed in part, and remanded the noninfringement judgment of the California district court.
Summary authored by Mindy L. Ehrenfried, Esq.