United States Court of Appeals
for the Federal Circuit
__________________________
AMERICAN PILEDRIVING EQUIPMENT, INC.,
Plaintiff-Appellant,
v.
GEOQUIP, INC.,
Defendant-Appellee.
__________________________
2010-1283
__________________________
Appeal from the United States District Court for the
Eastern District of Virginia in case No. 08-CV-0547,
Judge Rebecca Beach Smith.
__________________________
AMERICAN PILEDRIVING EQUIPMENT, INC.,
Plaintiff-Appellant,
v.
BAY MACHINERY CORPORATION,
Defendant-Appellee.
__________________________
2010-1314
__________________________
2 AMERICAN PILEDRIVING v. GEOQUIP
Appeal from the United States District Court for the
Northern District of California in case No. 08-CV-1934,
Judge Phyllis J. Hamilton.
__________________________
Decided: March 21, 2011
__________________________
CRAIG J. MADSON, Madson IP, P.C., of Farmington,
Utah, argued for plaintiff-appellant. Of counsel on the
brief was STEPHEN E. NOONA, Kaufman & Canoles, P.C.,
of Norfolk, Virginia.
PETER C. KNOPS, Shook, Hardy & Bacon, L.L.P., of
Kansas City, Missouri, argued for defendants-appellees
Geoquip, Inc. and Bay Machinery Corporation. With him
on the brief were KENNETH P. KULA; and ROBERT H.
RECKERS, of Houston, Texas. Of counsel on the brief was
RICHARD H. OTTINGER, Vandeventer Black, L.L.P., of
Norfolk, Virginia.
__________________________
Before BRYSON, GAJARSA, and LINN, Circuit Judges.
LINN, Circuit Judge.
This consolidated appeal concerns claim construction
and infringement issues common to seven separate law-
suits filed by American Piledriving Equipment, Inc.
(“American Piledriving”) in different district courts across
the United States. In each suit, American Piledriving
claims that the defendants—a manufacturer of construc-
tion equipment and its distributors—have either made or
sold certain pile driving devices that infringe United
States Patent No. 5,355,964 (“the ’964 Patent”). Whether
the accused devices infringe the ’964 Patent largely turns
in each action on the construction of three claim terms.
AMERICAN PILEDRIVING v. GEOQUIP 3
Of the district courts that have considered those terms, no
two have construed all three terms the same way. 1
In the two suits at issue here, the district courts for
the Eastern District of Virginia and the Northern District
of California each granted summary judgment of nonin-
fringement in favor of their respective defendants, despite
adopting different constructions of two key claim terms.
Am. Piledriving Equip., Inc. v. Geoquip, Inc., 696 F. Supp.
2d 582 (E.D. Va. 2010); Am. Piledriving Equip., Inc. v.
Bay Mach. Corp., No. 08-1934, 2010 U.S. Dist. LEXIS
22949 (N.D. Cal. Feb. 25, 2010). American Piledriving
appeals both of these decisions. For the reasons discussed
below, this court affirms the judgment of the District
Court for the Eastern District of Virginia. This court
affirms in part, reverses in part, and remands the judg-
ment of the District Court for the Northern District of
California for further proceedings consistent with this
opinion.
I. BACKGROUND
A. The ’964 Patent
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 col-
1 See Am. Piledriving Equip., Inc. v. Con-
maco/Rector, L.P., No. 08-3826 (E.D. La. Dec. 23, 2009)
(order staying proceedings); Am. Piledriving Equip., Inc.
v. Pile Equip., Inc., No. 08-00659 (M.D. Fla. Mar. 12,
2010) (same); Am. Piledriving Equip., Inc. v. Hydraulic
Power Sys., Inc., No. 08-00537 (W.D. Wash. Mar. 12,
2010) (same); Am. Piledriving Equip., Inc. v. J & G Sales,
Inc., No. 08-01253 (S.D. Tex. Mar. 15, 2010) (same); Am.
Piledriving Equip., Inc. v. Equip. Corp. of Am., No. 08-
00895 (W.D. Pa. Apr. 12, 2010) (same).
4 AMERICAN PILEDRIVING v. GEOQUIP
umns usually made of timber, steel, or concrete) into the
ground. As shown in Figures 1 and 2, an exemplary
vibratory pile driver 10 includes a vibratory assembly 34
that is connected to a pile 22.
Figure 1
AMERICAN PILEDRIVING v. GEOQUIP 5
Figure 2
The vibratory assembly 34 houses matching pairs of
large, cylindrical counterweights 40 placed side by side
with their rotational axes in the same horizontal plane.
Each counterweight 40 is “eccentrically weighted,” mean-
ing that its weight is unevenly distributed around its body
such that the center of gravity of the counterweight 40 is
moved radially outward from its rotational axis. By
rapidly rotating the counterweights 40 in opposite direc-
tions, the pile driver 10 generates vertical vibratory forces
that are transmitted through the assembly 34 to the pile
22, forcing the pile 22 into the earth 24. The alignment of
the counterweights 40 cancels any horizontal vibratory
forces created by their rotation.
The counterweights used in early vibratory pile driv-
ers consisted of a weight bolted to a portion of a cylindri-
cal gear. Because the bolts connecting the weight to the
gear sometimes broke when the counterweight was ro-
6 AMERICAN PILEDRIVING v. GEOQUIP
tated, these two-piece counterweights were often replaced
by “cast, one-piece, solid” counterweights. These one-
piece counterweights, however, had a serious drawback—
they lacked sufficient mass to generate the necessary
vibration. To increase the mass of the counterweights,
holes were bored into the eccentric weight portion and
filled with molten lead, which was allowed to solidify. But
these lead-filled counterweights still suffered from three
significant disadvantages: (1) the counterweights pro-
duced insufficient vibration; (2) the lead inserts melted
from the heat generated by friction during operation,
unbalancing the counterweight; and (3) the lead inserts
created hazardous waste.
The ’964 Patent discloses a vibratory assembly that
houses counterweights designed to address the failings of
prior art counterweights. As shown in Figure 3, exem-
plary counterweights 40 consist of an eccentric weight
portion 43 “integral” to a cylindrical gear portion 41.
Each eccentric weight portion 43 contains an “insert-
receiving area” formed to securely receive a solid insert
member 45. The solid insert member 45 and the coun-
terweight 40 are formed from different metals, the metal
for the insert member 45 having a specific gravity greater
than the metal for the counterweight 40 and having a
melting point higher than 328°C, the melting point of
lead. In the preferred embodiment, the counterweight 40
is made of steel and the insert 45 is made of tungsten.
AMERICAN PILEDRIVING v. GEOQUIP 7
Figure 3
B. District Court Proceedings
The lawsuits filed by American Piledriving in the
Eastern District of Virginia and the Northern District of
California are largely the same. American Piledriving
alleged in each suit that the defendant distributor—
respectively, Geoquip, Inc. (“Geoquip”) and Bay Machin-
ery Corporation (“Bay Machinery”) (collectively “the
Defendants”)—had infringed certain claims of the ’964
Patent by selling Model 250 and Model 500 vibratory pile
drivers manufactured by Hydraulic Power Systems, Inc.
The lawsuits differed, however, in one key respect: Ameri-
can Piledriving alleged in the California action that Bay
Machinery had also sold an earlier, different version of
the Model 500 pile driver known as the Early Model 500.
The asserted claims in both cases include four independ-
ent claims: 1, 6, 11, and 16. Also asserted in each action
are claims 2, 3, and 5 dependent from claim 1; claims 7-10
dependent from claim 6; claims 12-14 dependent from
claim 11; and claims 17 and 18 dependent from claim 16.
8 AMERICAN PILEDRIVING v. GEOQUIP
Claims 1, 6, and 11 differ inconsequentially for purposes
of this appeal and claim 1 is representative. Claim 1
reads as follows (disputed terms emphasized):
1. A vibratory assembly for imparting a vibratory
force to a pile, comprising:
a housing having at least one counterweight re-
ceiving means;
a counterweight rotatably carried in said receiv-
ing means for rotation about a rotational axis,
said counterweight having a cylindrical gear por-
tion and an eccentric weight portion integral with
said cylindrical gear portion, said eccentric weight
portion having at least one insert-receiving area
formed therein, said counterweight being made of
a first metal;
a solid insert member securely positioned in one of
said at least one insert-receiving areas said solid
insert member being made of a second metal hav-
ing a specific gravity greater than the specific
gravity of said first metal, and a melting point
temperature of 328°C. or greater; and
at least one driving means operatively connected
to said counterweight and adapted to rotate said
counterweight about its rotational axis.
’964 Patent col.9 ll.33-53 (emphasis added).
Claim 16 is similar to claim 1, but instead of claiming
“an eccentric weight portion integral with said cylindrical
gear portion” it recites “an eccentric weight portion con-
nected to said cylindrical gear portion.” See id. col.9 ll.37-
44, col.11 ll.13-18 (emphasis added).
AMERICAN PILEDRIVING v. GEOQUIP 9
In both actions, the parties disputed the meaning of
the terms “eccentric weight portion,” “integral,” “insert-
receiving area,” and “connected to.” Although the parties
in the California action also contested the construction of
the term “cylindrical gear portion,” the parties in the
Virginia suit stipulated to a construction of the term. The
district courts adopted the same constructions of the
terms “cylindrical gear portion,” “integral,” and “con-
nected to” but reached different constructions of the
“eccentric weight portion” and “insert-receiving area”
terms.
In both suits, the Defendants each moved for sum-
mary judgment of noninfringement and invalidity, and
American Piledriving moved for summary judgment of
infringement. Based on their claim constructions, each
district court denied American Piledriving’s motion and
granted summary judgment of noninfringement, conclud-
ing that the accused devices could not meet the “integral”
and “insert-receiving area” limitations. The invalidity
contentions were then dismissed as moot in the Virginia
action and dismissed without prejudice in the California
action. A final judgment was entered in each case.
American Piledriving timely appealed both decisions, and
this court has jurisdiction under 28 U.S.C. § 1295(a)(1).
II. DISCUSSION
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 dis-
trict courts misconstrued the “eccentric weight portion,”
10 AMERICAN PILEDRIVING v. GEOQUIP
“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. This
court considers each argument in turn.
A. Claim Construction
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 ques-
tions of infringement and validity but rather to give
meaning to the limitations actually contained in the
claims, informed by the written description, the prosecu-
tion 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 defini-
tion of the scope of his invention. This disparate treat-
ment of the same issues before two competent and capable
district courts is thus instructive.
1. “Eccentric Weight Portion”
The term “eccentric weight portion” appears in inde-
pendent claims 1, 6, 11, and 16. The district courts con-
strued the term as follows:
Virginia California
“That portion of the “The bottom portion of the
counterweight that counterweight, which extends
AMERICAN PILEDRIVING v. GEOQUIP 11
extends either forward or forward from the front face of
rearward from the front the gear portion, containing
or back face of the gear more weight than the top
portion such that it shifts portion due to its larger mass,
the center of gravity including at least one insert-
radially outward from the receiving area formed therein
gear’s rotational axis.” to receive at least one solid
tungsten rod.”
American Piledriving argues that both district courts
erred by importing structural limitations from a preferred
embodiment of the invention into their respective con-
structions. It contends that, although not explicitly
recited in their constructions, each court erroneously
required that the “eccentric weight portion” be separate
and distinct from the “cylindrical gear portion.” American
Piledriving asserts that one of skill in the art would have
understood that the term should be defined functionally
and not be structurally limited, as the specification makes
repeated reference to the purpose of the “eccentric weight
portion”: creating an uneven weight distribution around
the body of the gear. American Piledriving argues that,
when properly interpreted, the term includes any un-
evenly distributed weight within the counterweight.
The Defendants contend that neither court improperly
read limitations from the preferred embodiment into their
respective construction of “eccentric weight portion.”
They assert that both courts recognized that the “eccen-
tric weight portion” and the “cylindrical gear portion” are
distinct parts of a counterweight.
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
12 AMERICAN PILEDRIVING v. GEOQUIP
(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 remain-
der of the specification, the prosecution history, and
extrinsic evidence concerning relevant scientific princi-
ples, 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.
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 Piledriv-
ing, 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
AMERICAN PILEDRIVING v. GEOQUIP 13
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 omit-
ted). 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 Pile-
driving 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 “eccen-
tric 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. Usu-
ally, it is dispositive; it is the single best guide to the
meaning of a disputed term.” Id. at 1315 (citation omit-
ted). Both district courts relied heavily on the following
passage in the specification to reach their respective
structural constructions of “eccentric weight portion”:
The eccentric weight portion of the counterweight,
which is formed integral with the gear portion, ex-
tends forward from the front face of the gear por-
tion. The gear portion has a weight distribution
with less weight provided by a top portion and
14 AMERICAN PILEDRIVING v. GEOQUIP
more weight provided by a bottom portion as a re-
sult of the eccentric weight portion being con-
nected thereto.
’964 Patent col.5 ll.20-31 (emphasis added and internal
reference numbers omitted). American Piledriving argues
that this portion of the specification describes merely a
preferred embodiment of the invention and that the
structural descriptions of the gear portion and the eccen-
tric weight portion are nothing more than exemplary of
the structures capable of providing the needed weight
imbalance. But the consistent 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 Piledriv-
ing.
This court has indicated that a statement in a specifi-
cation 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 repeat-
edly uses the words “thereto” or “therewith” to describe
the relationship between the “cylindrical gear portion”
and the “eccentric weight portion.” See ’964 Patent Ab-
stract; 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. Moreover, as noted above, the
specification explains that apertures in the top of the gear
AMERICAN PILEDRIVING v. GEOQUIP 15
contribute to the uneven weight distribution in the bot-
tom of the counterweight, yet the specification makes no
mention of this weight being part of the “eccentric weight
portion.” Finally, the relevant figures each show the
“eccentric weight portion” extending from the face of the
gear. Id. Figures 2, 3A, 3B, and 4.
iii. Prosecution History
American Piledriving contends that the prosecution
history supports defining “eccentric weight portion” in an
entirely functional manner. American Piledriving argues
that during reexamination it consistently treated the
“eccentric weight portion” generally as the uneven distri-
bution of weight that moves the center of gravity away
from the rotational axis. But it also stated that “an
‘eccentric weight portion’ is a weighted portion or section
that is situated to one side with reference to a center [of
the counterweight].” Reply to Office Action of May 12,
2006, at 4 (June 6, 2006). Describing the “eccentric
weight portion” according to its placement in relation to
the center of the counterweight is entirely consistent with
the construction of the district courts as structure extend-
ing from the gear portion.
***
While both district courts indicated that the term
should be defined as extending from the face of the gear,
the California court also required that the “eccentric
weight portion” extend from a particular portion of the
gear, extend in a specific direction, and include a receiv-
ing area formed to receive a tungsten rod. 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.”
16 AMERICAN PILEDRIVING v. GEOQUIP
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”
The term “integral” appears in independent claims 1,
6, and 11 but not in independent claim 16. Each district
court construed “integral” to mean “formed or cast of one
piece.” American Piledriving argues that this construc-
tion improperly deviates from the plain and ordinary
meaning of “integral.” It contends that to the extent this
construction is based on a supposed prosecution dis-
claimer, nothing in the prosecution history demonstrates
the necessary clear and unmistakable disavowal of claim
scope. Moreover, American Piledriving asserts that the
construction creates an irreconcilable conflict between
claims 16 and 19.
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.
AMERICAN PILEDRIVING v. GEOQUIP 17
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 eccen-
tric 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 disagrees. It contends that be-
cause claim 16 encompasses a two-piece counterweight,
claim 19 must also encompass a two-piece counterweight.
In light of this, American Piledriving argues that “inte-
gral” cannot mean “formed or cast of one piece” as con-
strued by the district courts because that would require
the counterweight described in claim 19 to be both “two
piece” and “one piece” at the same time.
This argument is without merit. Claim 16 encom-
passes “united,” one-piece counterweights as well as
counterweights consisting of two pieces that are “joined
together.” It does not follow that because claim 16 en-
compasses two-piece counterweights its dependent claims
must also be broad enough to encompass such counter-
weights. 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.”);
18 AMERICAN PILEDRIVING v. GEOQUIP
Comark Comm’ns, Inc. v. Harris Corp., 156 F.3d 1182,
1187 (Fed. Cir. 1998) (“There is presumed to be a differ-
ence 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 “inte-
gral” 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.”).
ii. Prosecution History
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 distin-
guish a prior art reference by arguing this very point:
Claim 1, 6, and 11 are further distinguished
. . . because such claims further recite that the ec-
centric weight portion be “integral with said cy-
lindrical gear portion” . . . . In other words, the
claims recite that the counterweight has a “cylin-
drical gear portion and an eccentric weight por-
tion” and that these two components are
“integral”—i.e., they are simply components of the
“one-piece” counterweight.
AMERICAN PILEDRIVING v. GEOQUIP 19
Reply to Office Action of May 12, 2006, at 6 (June 6, 2006)
(emphasis added). American Piledriving nevertheless
argues that it did not clearly and unmistakably disavow
the construction of “integral” it urges on appeal. It points
out that it did not amend its claims and made multiple
arguments to overcome the asserted prior art reference.
American Piledriving contends that the statement was
unnecessary to overcome the reference and that the
examiner explicitly disagreed with it.
“[W]e have made clear . . . [that] an applicant’s argu-
ment 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 state-
ments 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 reexami-
nation and cannot attempt to distance itself from the
disavowal of broader claim scope.
***
Because the claims and the prosecution history estab-
lish that one of ordinary skill in the art at the time of the
invention would have understood the term “integral” to
20 AMERICAN PILEDRIVING v. GEOQUIP
mean “formed or cast of one piece,” this court concludes
that neither district court erred in its construction of this
term.
3. “Insert-Receiving Area”
The term “insert-receiving area” is found in independ-
ent claims 1, 6, 11, and 16. Each court construed this
term as follows:
Virginia California
“A bore located, at “A bore formed in the eccentric
least in part, within weight portion of the counter-
the eccentric weight weight, which extends fully
portion that is through the gear portion and fully
shaped to hold through the eccentric weight
securely a solid portion of the counterweight,
insert member.” capable of receiving a solid tung-
sten rod.”
American Piledriving does not dispute the construction of
“insert-receiving area” adopted by the Virginia court. It
does, however, argue that the California court erred by
requiring that the bore extend “fully through” both the
“eccentric weight portion” and the “gear portion.” It again
contends that the court improperly imported a limitation
from the preferred embodiment into the claims. This
court agrees.
The claims recite that “said eccentric weight portion”
has “at least one insert-receiving area formed therein.”
See, e.g., ’964 Patent col.9 ll.39-43. Nothing in the inde-
pendent claims requires or specifies that the insert-
receiving area extend fully through either the eccentric
weight or the gear portion. Although the specification
states that “[t]he bottom portion of the counterweight is
cast having insert receiving areas or bores substantially
AMERICAN PILEDRIVING v. GEOQUIP 21
parallel to the center bore and extending fully through the
gear portion and fully through the eccentric weight por-
tion,” see id. col.5 ll.61-68, the intrinsic record is devoid of
anything to suggest or indicate that the bore must always
extend fully through either portion. This court agrees
with the observation of the Virginia court that the claims
and the specification read together inform that the “in-
sert-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. For conven-
ience, the constructions that we adopt are set out in the
following table:
Term Construction
“That portion of the counterweight that
extends either forward or rearward from
“Eccentric
the front or back face of the gear portion
Weight
such that it shifts the center of gravity
Portion”
radially outward from the gear's rotational
axis.”
“Integral” “Formed or cast of one piece.”
“Insert- “A bore located, at least in part, within the
Receiving eccentric weight portion that is shaped to
22 AMERICAN PILEDRIVING v. GEOQUIP
Area” hold securely a solid insert member.”
B. Infringement
1. Model 250 and Model 500 Pile Drivers
The Model 250 and Model 500 vibratory pile drivers
each contain at least one set of “male” and “female” coun-
terweights. As shown in Figure 4, the counterweights
consist of a 360 pound “eccentric” bolted to either a male
or female “gear,” respectively.
Figure 4
Both the male and female gears include a “blind
hole”—a hole that does not extend completely through the
component—that holds a tungsten insert, and the eccen-
trics contain multiple blind holes that are filled with
molten lead. Although the male and female gears have
AMERICAN PILEDRIVING v. GEOQUIP 23
the same thickness, the female gears include what Ameri-
can Piledriving characterizes as a protrusion or “ridge” in
the form of the major flat surfaces that “extend axially”
0.031 inch from the front and back surfaces of a periph-
eral portion of the gear.
American Piledriving contends that the female gear
alone infringes the asserted claims, even under the con-
struction of the disputed claim terms this court adopted
above. American Piledriving asserts that each female
gear satisfies the “eccentric weight portion,” “integral,”
and “insert-receiving area” limitations because: (1) each
ridge is an eccentric weight portion that extends from a
face of the gear; (2) each gear has an insert-receiving area
in the form of a blind hole; and (3) the ridge and the gear
are part of the same one-piece structure—that is, they are
integral. American Piledriving illustrates this infringe-
ment theory as shown in Figure 5:
Figure 5
24 AMERICAN PILEDRIVING v. GEOQUIP
The Defendants contend that what American Piledriv-
ing 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 “eccen-
tric 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.
The accused devices also cannot be said to contain the
“insert-receiving area” recited in claims 1 and 16, as the
parties do not dispute that only the tungsten inserts can
be considered a “solid insert member . . . [having] a melt-
ing point temperature of 328ºC” and these inserts are
contained wholly within the gear and not the “eccentric
weight portion” as recited.
For the reasons stated, this court affirms the grant of
summary judgment by both the Virginia and California
district courts of noninfringement of the asserted claims
by the Model 250 and Model 500 vibratory pile drivers.
2. Early Model 500 Pile Driver
The Early Model 500 pile driver was asserted only in
the California action. It differs from both the Model 250
AMERICAN PILEDRIVING v. GEOQUIP 25
and Model 500 pile drivers in that it has tungsten inserts
in both the gear and the eccentric:
Figure 6
Thus, while the Early Model 500, just as the Model
500, fails to satisfy the “integral” limitation recited in
claim 1, there can be no genuine issue of material fact
that it satisfies all of the limitations recited in claim 16.
Instead of requiring the cylindrical gear portion to be
“integral” with the eccentric weight portion as recited in
claim 1, claim 16 merely requires that the components be
“connected to” one another, which encompasses the use of
bolts. The device also satisfies the “insert-receiving area”
limitation, as the “eccentric” unquestionably contains
tungsten inserts. Because there is no dispute that the
materials used to form the gear and the inserts of the
Early Model 500 meet the steel and tungsten limitations
of claims 17 and 18, the Early Model 500 infringes those
claims as well.
26 AMERICAN PILEDRIVING v. GEOQUIP
Defendants point to the ’946 Patent’s discussion of the
shortcomings of “bolted counterweights” to argue that the
patent disclaims devices like the Early Model 500. As
shown in Figure 6, the Early Model 500 joins the eccentric
weight portion and cylindrical gear portion with huck
bolts. However, the specification only critiques “counter-
weights having a solid eccentric weight bolted to a portion
of a cylindrical gear.” ’946 Patent, col.1 ll.39-45 (emphasis
added). Any disclaimer of bolted counterweights in the
’946 Patent does not extend to the Early Model 500,
whose eccentric weight portion includes holes filled with
tungsten inserts.
***
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 nonin-
fringement 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 as-
serted 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.
III. CONCLUSION
For the foregoing reasons, this court agrees with the
claim constructions of the District Court for the Eastern
District of Virginia and modifies the claim constructions
of the District Court for the Northern District of Califor-
nia. This court affirms the judgment of the District Court
for the Eastern District of Virginia and affirms in part,
AMERICAN PILEDRIVING v. GEOQUIP 27
reverses in part, and remands the judgment of the Dis-
trict Court for the Northern District of California.
AFFIRMED IN PART, REVERSED IN PART, AND
REMANDED
COSTS
Each party shall bear its own costs.