American Piledriving Equipment, Inc. v. Geoquip, Inc.

Filing 41

MEMORANDUM OPINION construing the parties' disputed terms and phrases as outlined (see order for specifics). Signed by District Judge Rebecca Beach Smith and filed on 12/11/2009. (rlam)

FILED
UNITED STATES DISTRICT COURT OF VIRGINIA EASTERN DISTRICT

Norfolk Division
AMERICAN PILEDRIVIN6 EQUIPMENT, INC.

DEC 1 1 :;;:
CLERK. U.S. DISTRICT COURT
NORFOLK. VA

Plaintiff,
v.
GEOQUIP, INC.,

CIVIL ACTION NO.

2:08cv547

Defendant.
MEMORANDUM OPINION

This
Patent

case involves
5,355,964

the alleged infringement of United States
("%964 Patent"). On October 7, 2009,

No.

plaintiff defendant
pursuant (1996), terms

American Geoquip,
to Markman argue

Piledriving Inc.
v.

Equipment, came

Inc. before
Inc., of

("APE") this
517

and

("Geoquip")

court,
370

Westview proposed in

Instruments. constructions dispute: (1)

U.S.

to and

their

the

four

claim weight

phrases

currently

"eccentric

portion," "connected
written
issues

(2) to."

"integral," After
and

(3)

"insert-receiving the parties'

area," oral

and

(4)

considering
the

arguments,
the court

materials,
its

relevant

legal

authority,

claim construction ruling as
I. BACKGROUND

detailed below.

Pile driving equipment
earth to support buildings

is used to drive
or other

large piles

into the
pile

structures,

whereas

pulling

equipment

is

used

to

remove

those

piles

(collectively,

"pile
pile

driving"
driving

equipment).
that

The

%964

Patent

involves

a vibratory
vibratory

device

functions

by

imparting

large

forces
the

to

the pile,

which allows

for increased driving speed over
The vibratory apparatus itself

formerly-used hammer devices.

contains

two eccentrically weighted counterweights,
distribution around their

or gears
that

that

have an uneven weight

face,

rotate

in opposite directions

in a

synchronized manner.1

The

opposite
while the
force

rotation cancels out the lateral forces that are created,
uneven weight distribution generates substantial

vertical

that

can

be

transferred

to

the

pile. the

Although rapid

this

process of the high

generates

significant also

driving

forces, large

rotation loads

counterweights

generates

stress

and

temperatures within

the apparatus.

The prior art

includes a vibratory assembly in which a solid a cylindrical gear.

eccentric weight was bolted to a portion of
This design lacked durability, however,

as the bolts had a tendency

to break under the large stress loads generated by the rotation of
the counterweights. To avoid the problem of breakage, another

prior art device utilized cast, one-piece counterweights
Thus, in

one-piece counterweights, but those sufficient
to increase

lacked
order

mass
the

to

drive
of

piles
cast

efficiently.

mass

counterweights, lead into bores

a

third prior art

device

involved pouring molten of those

formed in

the eccentric weight portions

counterweights and allowing the lead to solidify.

This design was

1

In

fact,

the

device

could

contain

any

even

number

of

counterweights.

also unsuccessful in that one rotation of the counterweights moved the vibratory apparatus
design also suffered

less

than one

inch vertically,

while

the
the

from uneven

weight

distribution within

counterweights.

The October 18,
equipment receiving

X964 1994,

Patent,

which

was

issued

to

John

White

on

covers a vibratory assembly used in pile driving
a housing with at to rotatably least one counterweight at least one gear

that area

includes

adapted The metal

receive has a

counterweight.

counterweight

cylindrical

portion with an integral eccentric weight portion and at least one insert-receiving from that of the area. A solid insert fits made of the a different metal

counterweight

within

insert-receiving

area.

The

insert has a

metal, specific
and a

which

is

tungsten greater
point

in than

the

preferred of the
328°

embodiment,

gravity
melting

that

counterweight

metal

greater

than

Centigrade operation.

so

that

the

metal

will

not

liquify

and

shift

during

At least one motor rapidly rotates the counterweight to
vibratory forces.

generate substantial

The'964 Patent recites twenty-seven claims, which describe the pile driving vibratory assembly itself,
construction. In particular, APE

as well as a method for its
alleges that Geoquip has

infringed, of the

and continues Patent by

to

infringe,

claims to

1-3, or

5-14, rent,

and 16-18 selling,

*964

using,

offering

sell

and/or renting certain vibratory pile driving devices in the United

States.
disputed (2)
to."

The
terms

parties
and (3)

now

seek
(1)

construction
"eccentric area,"

of

the

following
portion," "connected

phrases:

weight and (4)

"integral,"

"insert-receiving

II.

DISCUSSION

A.

Legal

Standard is a matter of law to be decided by the

Claim

construction

court.

Markman.

517 U.S.

at 372.

In performing this function,

the

court

need

only

construe the

disputed

terms

and

only

to

the

extent Inc. v.

necessary Am. Sci.

to &

resolve Ena'g.
of the

controversy. 200 F.3d 795,

See Vivid Techs.. 803 (Fed.
some

Inc..

Cir.
or all

1999).
of the

Construction issues of

patent Id.

terms

may

resolve

infringement.

The process of claim construction begins with the words of the

claims
Corp.. to be

themselves.
448 F.3d 1309, given its

Old
1315

Town
(Fed. and

Canoe
Cir.

Co.

v.

Confluence

Holdings

2006).

Each disputed term is which is the in
415

"ordinary

customary

meaning,"

meaning that
the art at F.3d 1303,

the term would have
the Cir.

to a person of ordinary skill
Phillips v. In some AWH Corp.. a

the time of 1313 (Fed.

invention. 2005).

instances,

term's

ordinary meaning may be readily apparent,

in which case

the court

need only apply the widely accepted meaning of commonly understood
words. apparent, Id. at 1314. When the term's meaning is not readily

however,

courts must consult M(those sources available to

the public
understood

that show what a person of skill
disputed claim
v.

in the art would have
mean.'" Id. (quoting
Inc.. 381

language

to

Innova/Pure Water.

Inc.

Safari Water Filtration Svs..

F.3d 1111, evidence,

1116 such

(Fed. as

Cir. the as

2004)). claims, well as

Those sources include intrinsic the specification, evidence, and such the as

prosecution technical

history,

extrinsic and
516

dictionaries,
Inc. v.

treatises,
Lear Corp.,

expert
F.3d

testimony.
1335 (Fed.

Chamberlain Group,

1331,

Cir.

2008).

As

intrinsic

evidence

is

considered

to

be

more

reliable than extrinsic evidence, the court's inquiry. Id.

the former should be the focus of

In terms of intrinsic evidence, patent claims generally "'must be read in view of the specification, Phillips. 415 F.3d at 1315 of which they are a part.'" 52 F.3d at 979) . The

(quoting Markman.

specification "'is always highly relevant to the claim construction

analysis.

Usually,

it is dispositive;

it is the single best guide
Id. (quoting Vitronics Corp. (Fed. Cir. 1996)).
through

to the meaning of a disputed term.'" v. Conceotronic. Inc.. 90 F.3d 1576,
the scope

1582
of

The
an

specification

may

limit

the

invention

intentional disclaimer or disavowal.
the specification from
Id.

Id.

at 1316.
for

Similarly,
a term

if

reveals ordinary

a

special

definition the
a

that

differs
governs.

its

meaning,
of

patentee's
term

lexicography
be either

The

redefinition

claim

may

explicit or implicit within the specification.

Invitroaen Corp. v.

Biocrest

Mfcr.,

L.P.,

327

F.3d

1364,

1367

(Fed.

Cir.

2003) ("The

applicant

may

also
to

act

as

his

own

lexicographer

and

use

the
for

specification
terms."); Bell

implicitly or explicitly supply new meanings
Network Servs.. Inc. v. Covad Commc'ns

Atl.

Group.

Inc..

262

F.3d 1258,

1268

(Fed.

Cir.

2001)("[A]

claim term may be

clearly redefined without an explicit statement of redefinition.") . Nevertheless,
reading

it

is

important
from the

that

the court

"avoid the danger of
into the claim," as

limitations

specification

"persons

of

ordinary

skill

in

the

art

rarely would confine

their

definitions of
embodiments."
however,

terms

to

the exact representations depicted in the
415 F.3d at 1323. A limitation is proper,

Phillips.

when "the specification read as a whole suggests that the

very character of

the invention requires

the limitation be a part

of every embodiment."
1361, 1370 (Fed. Cir.

Alloc.
2003).

Inc.

v.

Int'l Trade Com'n,

342 F.3d

In addition to the claims and the specification,

the court may

also

consider

the

prosecution

history,

which

"consists

of

the

complete record of the proceedings before the PTO and includes the
prior art cited during the examination of the patent." Phillips,

415 the

F.3d at scope

1317. of

As

in

the specification, by making
which

a patentee may limit and
the

claim

terms

a

clear

unmistakable
patentee from

disavowal

during

prosecution,

prevents

recapturing through claim construction specific meanings disclaimed
during prosecution. Computer Docking Station Corp. v. Dell. Inc.,

519

F.3d 1366,

1374

(Fed.

Cir.

2008).

Nevertheless,

because

"the
the that

prosecution history represents PTO and the applicant, it often rather

an ongoing negotiation between than the final the product of

negotiation, thus
415

lacks

the

clarity of

specification and Phillips.

is

less

useful
1317.

for

claim

construction purposes."

F.3d at

As

far

as

extrinsic

evidence, sources

the

court

is

not

"barred

from

considering any particular
in any specific sequence,

or required to analyze sources
those sources are not used to

as

long as

contradict intrinsic

claim

meaning Id.

that at

is 1324.

unambiguous The

in

light court, educate

of in

the its

evidence." may admit

district to help

discretion,

extrinsic

evidence

itself

about the field of the invention in order to determine how a person

of ordinary skill in the art would understand the claim terms.
at 1319.

Id.

In

the

interest

of

uniformity,

the Court

of

Appeals

for

the

Federal

Circuit
of
e.g.,

has

encouraged

courts

to

consider
the

the
same

claim
patent
F.3d

constructions
terms. See,

other

jurisdictions
v.

involving

Finisar Corp.

DirecTV Group.

Inc..

523

1323,

1329

(Fed. Cir.

2008).

As APE has filed infringement actions
the country, the four at least three other and phrases of the

in multiple jurisdictions across district courts have construed

terms

'964
Inc.

Patent
v.

at

issue
Corp.

in

this

case.
No.

See

Am.

Piledrivina

Equip..
(W.D.

Equip.

of Am..

2:08cv895,

2009 WL 3401726

Pa.

Oct.

20,

2009)

(adopting

Report

and

Recommendation);

Am.

Piledriving Equip..
537RSM,

Inc.

v.

Hydraulic
Oct.

Power
14,

Svs..

Inc..
Am.

No.

C08-

2009 WL 3297311

(W.D. Wash.

2009);

Piledriving

Equip. , 2009).
Corp. Cal. v.

Inc.

v.

Bay Mach.

Corp. .

632

F.

Supp.

2d

956

(N.D.

Cal. visto
(N.D. and

Stare decisis,
Sprooit Techs..

however,
Inc..

does not literally apply,
Supp. 2d 1104, has 1107-08

445 F.

2006).

Therefore,

while

this

court

reviewed

considered the reasoning of these prior decisions,
perform phrases.
B. Claim Construction

this court will
terms and

an

independent

construction

of

the

disputed

As noted above,

the parties seek construction of four disputed

terms and phrases:

(1)

"eccentric weight portion,"

(2)

"integral,"

(3)
will

"insert-receiving area,"
address

and

(4)

"connected to."2
in turn.

The

court

each disputed term or phrase
(1) Eccentric Weight weight

Portion portion" is found in asserted

The

phrase

"eccentric

claims
26, and

1,

3,

6,

11,

and

16,
to

as well
define

as

unasserted claims

19,

21,

27.

APE

seeks

the

phrase

functionally,

which

2 Although the parties previously disputed the meaning of the phrase "cylindrical gear portion" in the case pending before the Northern District of California, the parties have agreed to the
following construction: "The gear portion of the counterweight is a substantially cylindrical portion and has a rear face, a front face and a plurality of gear teeth around its perimeter." (Joint Mot. To Set Markman Hr'g Ex. 1, "Joint Disputed Claim Terms Chart.") 8

would

allow

for

the

eccentric

weight

portion

to

share

common

structure with the cylindrical gear portion,
to define the phrase structurally, to be

whereas Geoquip seeks
would require from the the

which

eccentric

weight

portion

physically

distinct

cylindrical gear portion. definition:

Specifically, APE proposes the following

Eccentric weight portion -

is

that portion of the eccentric

the counterweight that creates moment of the counterweight.

The portion is part of counterweight, but need not be the cylindrical gear portion.

the whole distinct from

The eccentric weight portion has areas for receiving an insert. (Joint Disputed Claim Terms In contrast, Chart.) the

one

or more

Geoquip proposes

following definition:

Eccentric weight portion The mass that extends forward from the front face of the bottom portion of the gear portion of the

counterweight such that the counterweight has more weight at its bottom portion than its top
portion. Id.

The portion"

court by

begins to

its the

construction claims

of

"eccentric Claim 1,
a

weight is

looking

themselves.

which

representative of

the asserted claims,

describes

"counterweight

having a cylindrical

gear portion and an eccentric weight portion said eccentric weight formed therein."

integral with said cylindrical gear portion, portion having at

least one insert-receiving area

'964

Patent,

col.

9,

11.

39-43.

Although

"eccentric

weight

portion"
the

is

used
do not

in

a

consistent

manner

in

the

remaining claims,
Thus, the court

claims

define

the phrase

explicitly.

turns

to

the specification

for additional

guidance.

The specification provides As best seen
41

the following description: 3A and 3B, the
40 of

in
of

FIGS.
the 96,

gear
is

portion 94, a

counterweight

substantially cylindrical
front face and

and has
a

a rear

face
gear

plurality

teeth 98

around its perimeter.

The

eccentric

weight portion 43 of the counterweight 40, which is formed integral with the gear portion 41, the extends forward from the The front face 96 41 has of a gear portion. gear portion

weight distribution with less weight provided by a
by a

top portion 102
bottom portion

and more weight provided
104 as a result of the

eccentric thereto.

weight In the

portion

43

being

connected the

preferred

embodiment,

eccentric
and the

weight

portion
104

43

has

a 100,
over

substantially
bottom

semi-cylindrical
portion

portion portion
40 has a

constitutes

one-half mass from

of

the

area

of

gear

41.
large

Accordingly,

the counterweight

of material the bottom

integral portion

to and projecting 104 of the gear

portion 41, thereby forming a counterweight having a center of gravity located radially outward from the rotational axis of the gear
portion.

Id.

at col.

5,

11.

17-36

(emphasis added).

In the portion of this the as

passage that precedes the phrase "in the preferred embodiment," patentee describes
being

the

eccentric

weight

portion
that

structurally,

that portion of

the

counterweight

extends

forward from

the

front

face

of

the

gear

portion.

While

the

court

does

not

presume that the phrase "in the preferred embodiment" automatically
10

transforms

the

preceding

language

in

this

paragraph

into

claim

limitations,

the court does assume that the phrase was inserted to
the preceding description
repeated invocation of

distinguish in some manner
that followed. Indeed,

from the one
the preferred

the

embodiment namely

throughout of

the

specification must more general

serve

some purpose, of the

that

distinguishing more specific e.g.,
7, 11.

descriptions of 11.
11.

invention embodiment
11. 27-28,

from

descriptions id.
35,

the

preferred col. 5,

itself.
51, 65;

See,
col.

at
55;

col.
col

3,
8,

61-62;
32-33.

APE,
in the

in response,

argues
refer

that all discussions of
to the preferred

the figures
alone,

specification

embodiment

relying on a boilerplate disclaimer found in the id. at col. 3, 11. 9-12 ("The present

'964 Patent. will be

See more

invention

clearly understood from the following detailed description of
preferred embodiment taken in conjunction with the

the

attached

drawings."). boilerplate
Eaux

Although language
Inc.

the

court see,
135

declines e.g..
F.

to Les

accept Traitments

this Des
(D.

as
v.

decisive,
KWI. Inc..

Poseidon.

Supp.

2d

126,

135

Mass.

2001)

(assigning

"little weight"

to boilerplate language in

specification indicating general description of invention was "non-

restrictive" ),

the

court

is

also

wary

of

improperly

reading

limitations from the specification into the claims.
415 F.3d at 1323. whole to Thus, the court looks a person of

See Phillips,

to the specification as a ordinary skill in the art

determine whether

11

would

conclude

the

eccentric

weight

portion

to

be

structurally

distinct

from the cylindrical gear portion in every embodiment of
See Alloc,
the passage

the claimed invention.
In addition to

342

F.3d at 1370.
above, the court finds

cited

illustrative several other portions of the X964 Patent. abstract of the invention indicates that the

First,

the

"counterweight has a

cylindrical gear portion and an eccentric weight portion integrally
formed therewith." (964 Patent, Abstract (emphasis added). The

abstract

does

not

say

that

the

eccentric
to

weight
the

portion

is

integrally
portion,

formed

"therein"

with

respect

cylindrical

gear

but rather that it is integrally formed "therewith," which

connotes a physical distinction between the two.3
belies APE's assertion that the

This description
being

"eccentric weight portion,"

any

portion

of

the

cylindrical

gear

portion

to

create

eccentric

moment, portion.

may

be

wholly

contained the

within

the

cylindrical

gear

Instead,
of the

description
weight

supports
portion"

Geoquip's
as being

characterization

"eccentric

physically distinct In addition, weight that

from the gear portion. specification was gives no indication include, that as the APE

the

"eccentric suggests,

portion" of the

intended

to

portion

gear portion

containing unbalanced

3 within the specification itself, the patentee uses the word "thereto," which like "therewith" suggests physically distinct components. '964 Patent, col. 5., 1. 27. By comparison, the eccentric weight portion has "dense, solid, metal inserts 45 mounted therein." Id. at col. 3, 11. 47-48 (emphasis added).
12

weight.

When the specification refers to the apertures in the top

portion

of

the

gear

portion

that

are

designed

to

increase

the

eccentric weight
there is no

found in the bottom portion of
of that offsetting as weight is

the gear portion,
being part of the the

mention

"eccentric weight portion,"

that phrase

used throughout

X964

Patent.

See

id.

at

col.

5,

11.

53-60.

If

the

patentee

intended the offsetting weight to be part of the "eccentric weight

portion,"
indication

a person of ordinary skill
to that effect.

in the art might expect

some

Indeed, process
portion"

the

specification's

description the

of

the

balancing

further refutes APE's position that
is functionally defined:

"eccentric weight

Each counterweight 40 is balanced again on the balancing device to assure that the eccentric

weight portion 43 hangs at its lowest point of a revolution when the counterweight is at the equilibrium position. If the eccentric weight
portion 41 [sic] does not hang properly, metal

may be portion

removed from to achieve

the eccentric weight a properly balanced

counterweight.

Id.

at

col. to

9, be
be

11.

11-17.4 of

In

order at

for

the

"eccentric

weight that

portion"
phrase

capable

hanging
of in a

"its

lowest

point,"

must

conceived

physical,

structural

manner,

4 This concept of the "eccentric weight portion" hanging at its lowest point is described earlier in the specification as well: "[T]he balancing shaft and counterweight are placed on a balancing rack that allows the counterweight to freely rotate until gravity pulls the eccentric weight portion 43 to the lowest point." '964
Patent, col. 8, 11. 26-30.
13

rather

than in a

functional

one,

as APE suggests.

Thus,

implicit

within

the

specification

is

the

understanding

that

the

eccentric

weight portion is defined structurally and is physically distinct
from the cylindrical gear portion.

While portion" in

the

patentee

could if he

have had

defined chosen to

"eccentric do so, the

weight court

another

manner

finds that a person of ordinary skill in the art at the time of the

invention would have
the cylindrical gear

understood
portion to

the
be

eccentric
physically See Alloc.

weight portion and
distinct in every

embodiment of the claimed invention.

342 F.3d at 1370.

Nevertheless,

although

the

court

agrees

with

Geoquip

that

the

eccentric weight portion extends outward from the cylindrical gear portion, the court does not agree that the eccentric weight portion

must

extend

forward,

as

opposed

to

rearward.5

The

court,
to mean

therefore,

construes the phrase "eccentric weight portion" the counterweight that extends either

"that portion of

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."

5 While the notion that the eccentric weight portion is physically distinct from the cylindrical gear portion is pervasive throughout the '964 Patent, the basis for limiting the eccentric weight portion to extending forward rather than rearward is limited
to an isolated description in the specification. See '964 Patent,

col.

5,

11.

20-23.

As

the court

does

not believe

that

extending

forward rather than rearward is part of the "very character" of the claimed invention, the court refuses to limit the claims in that manner. See Alloc, 342 F.3d at 1370.
14

(2)

Integral

The term "integral"
as well as unasserted

appears
19,

in asserted claims
21, and 27. APE

1,

6,

and 11,
the

claims

proposes

following construction:

Integral

-

means

composed of portions,

parts,

or pieces
The

that

together constitute
weight portion

the whole.
and the to

eccentric
the

cylindrical function as (Joint Disputed

gear portion act counterweight. Terms Chart.)

together

Claim

Geoquip

proposes

that

"integral"
The

means
court

"formed or cast of one-piece."
begins 1, its which analysis is by looking

Id.
to of the the claims

themselves.

Claim

representative

asserted

claims,
portion

describes
and an

a

"counterweight
weight
X964

having
portion
col.

a

cylindrical
with
39-41.

gear
said
The

eccentric

integral
9, 11.

cylindrical

gear portion."

Patent,

term

is

used consistently
to believe that the

throughout
term is

the

claims,

and there

is

no

reason

used differently in one

claim

vis-a-vis another.
compelled,

See Innova,

381 F.3d at 1119

("Unless otherwise

when different claims of a patent use the same language,

we give that language the same effect in each claim."). court
the

Thus,

the

looks

to

the

claims

as

a whole

to determine

the meaning of

term

"integral."

The

relationship

between

claims

16

and

19

provides

strong

evidence as to the meaning of "integral." contain the term "integral,"

Claim 16,

which does not "an

describes a counterweight having
15

eccentric

weight

portion

connected

to

said

cylindrical

gear

portion."

%964 Patent,

col.

11,

11.

13-14

(emphasis added).

Claim

19,

which is dependent on claim 16,
of claim said 16 wherein said

describes:
eccentric

"The counterweight
weight said portion is is at the

assembly integral cast 11. term the

with

cylindrical

gear portion, is a [sic]

first metal Id. uses

steel, 30-33

and

said

second metal

tungsten." claim 19

(emphasis

added). than

Because dependent the phrase

"integral"

rather

"connected to" weight

to describe and the

relationship gear

between portion,

the the

eccentric term

portion

cylindrical

"integral"

presumably

limits

claim

19

in
415

a

manner

that
1315

claim

16

is

not
of

so

limited.

See
claim

Phillips.

F.3d at

("[T]he presence

a dependent

that adds a particular limitation gives rise to a presumption that

the

limitation

in

question

is

not

present

in

the

independent

claim.").

Although the phrase below, the court

"connected to" will be discussed further that phrase to mean "joined together,

construes

united

or

linked."
in

Thus,
the

claim

16

contemplates
gear

a

two-piece
and the

counterweight

which

cylindrical

portion

eccentric weight portion are joined together. construction, the term "integral"

Under APE's proposed

in claim 19 would then limit the

phrase
portion

"connected
and the

to"

by

requiring
gear

that

the

eccentric

weight
to

cylindrical

portion

function

together

constitute

the

whole

counterweight.

The

court

fails

to

see,

16

however, limits

how this definition of definition of

"integral" to"

in any way meaningfully as found in claim 16.

the

"connected

Claim 16 describes
joined together;

the

two portions of
the two

the

counterweight as being
also must function

presumably,

portions

together or the claims turns to

the invention would be ineffectual.

Nevertheless,

as

themselves do not define the term explicitly, further guidance.

the court

the prosecution history for

During the 2006 reexamination of the
initially rejected claims 1-3, 5, 6, 8-14,

'964 Patent,

the examiner

and 16-19 on the grounds

that

the

invention was Patent

unpatentable No. 3,224,514

for

obviousness "Hornstein L,

in

light

of

United

States

(the Ex.

patent").

(PL's Opening Claim Construction Br.

"Office Action in Ex

Parte

Reexamination,"

at

2.)6

The

Hornstein

patent

discloses

a

vibratory pile driver in which the counterweights contain a number

of counterbalancing cylinders so that the counterweights themselves
possess no eccentric weight absent the insertion of metal rods.

(PL's
Action

Opening
in

Claim

Construction
at 5.)

Br.
In

Ex.
order

M,
to

"Reply

to

Office
the

Reexamination,"

distinguish

Hornstein patent that Hornstein
with

from the present did
the

invention, an

the patentee argued weight portion
of the

not

disclose

eccentric
"This

"integral"

gear

portion:

requirement

inteqral-i.e..

one-piece-nature of the eccentric weight portion is

6 of

Pagination

is

that

of

the original

document

rather

than

the exhibit.
17

unquestionably
Hornstein

not

disclosed by
a system in

Hornstein.
which

As

explained
may be

above,
(or

teaches

weights

added

removed)

in order to balance or unbalance the rotating rotor.
eccentric is not
in

.

.
at

.
6

Hence Hornstein's
(emphasis added).

integrally
to

formed."

Id.
prior

Therefore,

order

distinguish

art,

the patentee argued that the term "integral," within the context of

the

'964

Patent,

meant

that

the

cylindrical

gear portion and

the

eccentric weight portion were formed or cast of one piece. The the court finds this to be a clear the and unmistakable "integral"

See id. by

disavowal

patentee

limiting

term

to

one-piece

counterweights.

See,

e.g.,

Computer

Docking,

519

F.3d

at

1374

(noting a patentee may limit a claim term by clearly characterizing the invention in a certain way to overcome rejections based on

prior

art).7

Therefore,

after

taking

into

account

both

the

language of the
construes piece," the

'964 Patent and its prosecution history,
term "integral" to mean "formed or

this court
of one

cast

as Geoquip proposes.
(3) Insert-Receiving Area

The phrase "insert-receiving area" appears in asserted claims
1, 3, 6, 11, and 16, as well as unasserted claims 4, 15, 20, 21,

7

As

the

patentee

never

recanted

in

any

way

from

the

position that "integral" meant "formed or cast of one piece," the court finds the examiner's response to the patentee to be irrelevant. See, e.g.. Springs Window Fashions LP v. Novo Indus., L.P. . 323 F.3d 989, 995 (Fed. Cir. 2003) ("In any event, the examiner's remarks do not negate the effect of the applicant's
disclaimer."). 18

22,
the

24,

and 27.8

APE seeks

to define the phrase as
that is capable of

"a region of
receiving an

eccentric

weight

portion

insert."
define

(Joint

Disputed
as

Claim Terms
extending

Chart.)
into the

Geoquip

seeks

to

the phrase

"a bore

eccentric

weight

portion and shaped to receive the solid insert."
In construing "insert-receiving area,"

Id.9
looks first

the court

to

the claims

themselves.
describes

Claim 1,
a

which is representative of
having a

the

asserted

claims,

"counterweight

cylindrical

gear

portion

and

an

eccentric

weight

portion

integral

with

said

cylindrical

gear portion,

said eccentric weight portion having at

least

one

insert-receiving

area

formed

therein."

'964

Patent,

col.

9,

11.

39-43.

In other words,

at the very least,

the "insert-

receiving area" weight portion."
recites the

is located, Moreover,

at least in part,

within the "eccentric

claim 3, which is dependent on claim 1,
of claim 1 wherein said at least

"vibratory

assembly

one

[sic]

insert-receiving area is a bore in said eccentric weight
insert the member is a tungsten the rod." Id. at

portion and said solid 11. 56-59. Although

court

believes

phrase

"insert-

8

The phrase appears in claims 4 and 15 in its plural form.

9 The dispute over the meaning of "insert-receiving area," i.e., whether or not it may be wholly contained within the cylindrical gear portion, is closely tied to the construction of
"eccentric weight portion," and whether that too may be so

contained. This court has found that the "eccentric weight portion" must be physically distinct from the "cylindrical gear portion," see supra Part II.B. (3), and the court is mindful of that construction in its analysis of "insert-receiving area."
19

receiving claims,

area"

to

be

used

consistently

in

the

remainder

of

the the

the claims do not define

the phrase explicitly.

Thus,

court

turns

next

to

the specification. the following description:

The specification provides

The bottom portion 104 of the counterweight 40 is cast having insert receiving areas or bores 112 substantially parallel to the center bore

106

and

extending 41 and portion 43.

fully

through the the
40,

the

gear

portion weight
formed

fully

through In

eccentric preferred
the

embodiment,
in

two insert receiving bores 112 are
counterweight although

the

number of bores Id. at col. 5, 11. 61-68.

can be varied. Although fully this passage describes the the gear

"insert-receiving

area"

as

extending

through both

portion and the eccentric weight portion, evidence within the specification to

the court finds no other that the insertAfter court

suggest

receiving area must extend completely through both portions. considering the claims and specification as a whole, the

finds that the essential attributes of the "insert-receiving area"

are, is

first, located,

that it is shaped to receive an insert; at least partially, within
into

second,

that it weight
gear

the

eccentric

portion; portion,

and as

third, is the

that case

it may extend in the

the cylindrical embodiment.

preferred

Neither

party's proposed construction, however,

succeeds in capturing these

three

attributes.10

As

such,

the

court

construes

the

phrase

10 As APE's proposed construction describes the "insertreceiving area" as "a region of the eccentric weight portion," APE's definition fails to indicate that the "insert-receiving area"
20

"insert-receiving area"

to mean "a bore located,

at least in part,

within the eccentric weight portion that is shaped to hold securely a solid insert member."
(4) Connected To

The phrase "connected to" appears in asserted claims 1, and 16. The parties agree that the phrase generally means

6,

11,

"joined

together, united or linked" the court finds this to be

(Joint Disputed Claim Terms Chart), the ordinary meaning of

and

the phrase. that the

Geoquip,
phrase that

however,

wishes

the definition also
bolting as the

to indicate
l964 are patent

"specifically art

excludes

teaches

prior

having bolted

counterweights

not

sufficiently of

durable and the

'964 patent does not provide any other methods

'connected to' order to

other

than casting

from one-piece." the parties, a clear

Id. the

Thus,

in

resolve whether

the dispute between the patentee has

court must

examine

made

and

unmistakable

disavowal
1316.

of

bolted

counterweights.

See

Phillips,

415

F.3d

at

The

court

begins

its

analysis

by

looking

to

the

claims

themselves.

Claim 1 describes the counterweight and then indicates "at least one driving means operatively connected to

that there is

may extend outside the eccentric weight portion. Nevertheless, Geoquip's proposed construction describes the "insert-receiving area" as "extending into the eccentric weight portion," which inaccurately suggests that the "insert-receiving area" is located within the cylindrical gear portion and extends into the eccentric weight portion, rather than the other way around. Thus, the court

finds both parties'

proposed constructions
21

to be deficient.

said counterweight and adapted to rotate

said counterweight about

its rotational axis."

'964 Patent,

col.

9,

11.

51-53.

Similarly,

claims

6

and

11

describe

a

driving

means

as 10,

being 11.
to"

"operatively 28-31, 64-66.

connected to" the counterweight.
Claim 16, however, uses

Id. at col.

the phrase

"connected

in a

different

manner, portion

describing the counterweight as having "an eccentric weight connected to said cylindrical gear portion at a position

radially outward of Id. 19, at col. in 11, 11.

the

axis

of

said cylindrical

gear portion."

13-15.

As opposed to the description in claim weight portion is integral with the

which

the

eccentric

cylindrical
counterweight manner.

gear
in

portion,
which the

claim
pieces

16
are

contemplates
joined

a

two-piece
in some

together

There is no mention in the claims,

however,

of excluding

bolting as a means of connection.
the phrase "connected to" means

There is also no indication that
something different in claim 16

than

elsewhere

in

the
to"

'964

Patent.

Because
the

the

claims

do

not
the

define

"connected

explicitly,

court

examines

specification for Geoquip method of

further guidance. that the patentee eccentric disclaimed weight bolting to as a

argues

connecting

the

portion

the

cylindrical

gear portion,

based upon

the patentee's

criticism of

the prior art:
The prior art includes a vibratory assembly

with counterweights having a solid eccentric weight bolted to a portion of a cylindrical gear. These bolted counterweights are not
22

sufficiently durable, because the bolts have a very undesirable tendency to break under the large stress loads generated during rotation [of the] counterweights. Id.
a

at col.

1,

11.
of

39-45.

APE responds that this statement was not
but rather a general discussion of of the

disclaimer in

bolting,

problems

the prior art. goes on to

Indeed,

in the rest that

the paragraph, from certain

the patentee

discuss

problems

arose

one-piece,

cast

counterweights

as

well.

See

id.

at

11.

45-51

("These solid,

cast counterweights, however,

do not have sufficient

mass to generate large enough vibratory forces to efficiently drive
or pull piles."). As the preferred embodiment of the '964 Patent

takes 11.

the form of a one-piece, that embodiment
the
does

cast counterweight,

id.

at col.

5,

51-53,
Thus,

is obviously not being disavowed.
that
a

court
not

finds
provide

the discussion of
clear disavowal of

bolting
that

in

the
of

prior

art

means

connecting portion.
F.3d 1173,

the

eccentric

weight Svs..
2006)

portion Inc. v.

to

the

cylindrical Inc..

gear 473

See Ventana Med.
1180 (Fed. Cir.

Bioaenex Labs..

(finding no disavowal

of certain

dispensing

methods

when

discussion

of

prior

art

included to

the the

dispensing method of

the preferred embodiment

in addition

those
reason
the

methods
to

allegedly

disavowed).
from
phrase the

Because

the

court

finds

no

exclude bolting
construes linked," that as

the definition of
to mean simply

"connected

to,"

court or

"joined

together, caveat

united

parties

agree,

without

the

suggested by Geoquip.
23

III.

CONCLUSION

For

the

foregoing

reasons,
as

the

court

construes

the parties'

disputed terms

and phrases

follows:

(1)

"Eccentric

weight
that

portion"
extends

means
either

"that

portion
or

of

the

counterweight

forward

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 (2)
(3)

axis." "formed or cast of one piece."
means "a bore located, at least

"Integral"

means

"Insert-receiving area"

in

part,

within

the

eccentric

weight

portion

that

is

shaped to hold securely a solid insert member."

(4)

"Connected to" means "joined together, united or linked."

The

Clerk

is

DIRECTED
for

to

forward

a

copy

of

this

Memorandum

Opinion to counsel
IT IS SO

the parties.

ORDERED.

/§/ Rebecca Beach Smith

United States District JudgeREBECCA UNITED BEACH STATES SMITH DISTRICT JUDGE

Norfolk, Virginia December \\ , 2009

24