Am. Piledriving Equip. Inc. v. Geoquip Inc.

• Decision Date: 21 March 2011
• Docket Number: 2010–1314.,Nos. 2010–1283,s. 2010–1283
• Citation: 637 F.3d 1324
• Parties: AMERICAN PILEDRIVING EQUIPMENT, INC., Plaintiff–Appellant,v.GEOQUIP, INC., Defendant–Appellee.American Piledriving Equipment, Inc., Plaintiff–Appellant,v.Bay Machinery Corporation, Defendant–Appellee.
• Court: U.S. Court of Appeals — Federal Circuit

637 F.3d 1324

98 U.S.P.Q.2d 1001

AMERICAN PILEDRIVING EQUIPMENT, INC., Plaintiff–Appellant,

v.GEOQUIP, INC., Defendant–Appellee.American Piledriving Equipment, Inc., Plaintiff–Appellant,

v.Bay Machinery Corporation, Defendant–Appellee.

Nos. 2010–1283

2010–1314.

United States Court of Appeals, Federal Circuit.

March 21, 2011.

Craig J. Madson, Madson IP, P.C., of Farmington, UT, argued for plaintiff-appellant. Of counsel on the brief was Stephen E. Noona, Kaufman & Canoles, P.C., of Norfolk, VA.Peter C. Knops, Shook, Hardy & Bacon, L.L.P., of Kansas City, MO, 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, TX. Of counsel on the brief was Richard H. Ottinger, Vandeventer Black, L.L.P., of Norfolk, VA.Before BRYSON, GAJARSA, and LINN, Circuit Judges.LINN, Circuit Judge.

This consolidated appeal concerns claim construction and infringement issues common to seven separate lawsuits 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 construction 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. 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 noninfringement 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 WL 702290, 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 judgment 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 columns 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.Image 1 (2.9" X 3.4") Available for Offline Print

Image 2 (2.91" X 3.86") Available for Offline Print

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,” meaning 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 directions, 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 drivers consisted of a weight bolted to a portion of a cylindrical gear. Because the bolts connecting the weight to the gear sometimes broke when the counterweight was rotated, 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 produced 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, exemplary 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 counterweight 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.Image 3 (3.65" X 3.28") Available for Offline Print

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 Machinery 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: American 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 independent 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. 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 receiving means;

a counterweight rotatably carried in said receiving means for rotation about a rotational axis, said counterweight having a 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, 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 having 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 connected to said cylindrical gear portion.” See id. col.9 ll.37–44, col.11 ll.13–18 (emphasis added).

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 “connected to” but reached different constructions of the “eccentric weight portion” and “insert-receiving area” terms.

In both suits, the Defendants each moved for summary 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, concluding 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 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. This court considers each argument in turn.

A. Claim Construction

It is well settled that the role of a district...