American Piledriving Equipment, Inc. v. Geoquip, Inc., No. 2:2008cv00547 - Document 41 (E.D. Va. 2009)
Court Description: 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)
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FILED UNITED STATES DISTRICT COURT EASTERN DISTRICT OF VIRGINIA DEC 1 1 :;;: Norfolk Division AMERICAN PILEDRIVIN6 EQUIPMENT, CLERK. U.S. DISTRICT COURT INC. NORFOLK. VA Plaintiff, v. CIVIL ACTION NO. GEOQUIP, 2:08cv547 INC., Defendant. MEMORANDUM OPINION This Patent case involves No. 5,355,964 plaintiff American defendant Geoquip, pursuant (1996), terms to to and portion," "connected written issues pulling "pile pile came driving" driving before this of dispute: "eccentric and in (3) the relevant used equipment). device that parties' legal 517 the U.S. four area," oral 370 claim weight and (4) arguments, authority, the court detailed below. BACKGROUND is used to drive buildings is (1) "insert-receiving considering the Inc., and court, constructions currently 2009, ("APE") proposed claim construction ruling as equipment Inc. 7, their After support October Instruments. Pile driving equipment to Equipment, ("Geoquip") I. earth On Westview materials, its Piledriving "integral," to." Patent"). v. phrases (2) ("%964 Inc. Markman argue the alleged infringement of United States or to other remove The %964 functions structures, those Patent by large piles piles whereas pile (collectively, involves imparting into the a vibratory large vibratory forces the to the pile, which allows for increased driving speed over formerly-used hammer devices. contains The vibratory apparatus two eccentrically weighted counterweights, have an uneven weight distribution around their in opposite directions in a or gears face, synchronized manner.1 that The rotation cancels out the lateral forces that are created, uneven that weight can generates distribution be transferred significant counterweights also temperatures within The prior art generates to the driving substantial pile. forces, generates large rapid stress opposite while the this force process rotation loads that rotate vertical Although the itself of and the high the apparatus. includes a vibratory assembly in which a solid eccentric weight was bolted to a portion of This design lacked durability, however, a cylindrical gear. as the bolts had a tendency to break under the large stress loads generated by the rotation of the counterweights. To avoid prior art device utilized cast, one-piece counterweights efficiently. Thus, in counterweights, a lead into bores formed in the problem of breakage, one-piece counterweights, but those lacked sufficient order to third prior art increase device mass the 1 In fact, the to drive mass the eccentric weight portions device could of piles cast involved pouring molten counterweights and allowing the lead to solidify. counterweights. another contain any of those This design was even number of also unsuccessful in that one rotation of the counterweights moved the vibratory apparatus design also suffered less from than one uneven inch vertically, the distribution within weight while the counterweights. The X964 October 18, equipment Patent, 1994, that receiving which a housing with at adapted counterweight. issued to John White The to metal rotatably least one counterweight receive counterweight has at one cylindrical a least gear portion with an integral eccentric weight portion and at insert-receiving from that area. of the The area. A solid counterweight insert metal, has embodiment, on covers a vibratory assembly used in pile driving includes area was specific a fits which made within a the different metal insert-receiving tungsten in gravity greater than melting point the preferred that so that operation. At least one motor rapidly rotates the counterweight to substantial will vibratory not liquify and than the Centigrade metal greater of metal the a is of counterweight generate and insert least one shift 328° during forces. The'964 Patent recites twenty-seven claims, which describe the pile driving vibratory assembly itself, construction. infringed, of the In particular, and continues to *964 Patent by APE infringe, using, as well as a method for its alleges claims offering to that 1-3, sell or Geoquip 5-14, rent, has and 16-18 selling, and/or renting certain vibratory pile driving devices in the United States. The disputed terms (2) parties "integral," and now seek phrases: (3) construction (1) "eccentric "insert-receiving area," of the following weight portion," and (4) "connected to." II. A. Legal Claim court. court Markman. only necessary to Am. & Sci. of the of law decided by the In performing this function, the terms controversy. 200 patent infringement. matter disputed Inc.. the a at 372. construe resolve of is 517 U.S. Ena'g. Construction issues Standard construction need DISCUSSION F.3d terms and be only to the extent See Vivid Techs.. 795, may to 803 (Fed. resolve Inc. Cir. some or v. 1999). all of the Id. The process of claim construction begins with the words of the claims themselves. Old Corp.. 448 F.3d 1309, to given be its meaning that the art at F.3d 1315 Canoe (Fed. "ordinary and Cir. 1313 (Fed. the Cir. Co. v. 2006). customary the term would have the time of 1303, Town Confluence Holdings Each disputed term is meaning," which is to a person of ordinary skill invention. 2005). Phillips v. In some ordinary meaning may be readily apparent, AWH Corp.. instances, in which case a the in 415 term's the court need only apply the widely accepted meaning of commonly understood words. apparent, Id. at 1314. however, When the term's meaning is not readily courts must consult M(those sources available to the public that understood show what a person of skill disputed Innova/Pure Water. F.3d 1111, 1116 evidence, v. as the 2004)). 2008). As extrinsic as treatises, v. Lear intrinsic inquiry. Id. (quoting Inc.. 381 Those sources include intrinsic the specification, and Corp., is and evidence, expert 516 evidence reliable than extrinsic evidence, the court's mean.'" well as Inc. to claims, dictionaries, Chamberlain Group, language the art would have Safari Water Filtration Svs.. Cir. history, technical Cir. Inc. (Fed. such prosecution claim in F.3d the such as testimony. 1331, considered 1335 to (Fed. be more the former should be the focus of Id. In terms of intrinsic evidence, patent claims generally "'must be read in view of Phillips. the specification, 415 F.3d at 1315 of which they are a part.'" (quoting Markman. 52 F.3d at 979) . The specification "'is always highly relevant to the claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed term.'" Id. v. 1582 Conceotronic. specification Inc.. may 90 F.3d 1576, limit the scope of (quoting Vitronics Corp. (Fed. the Cir. invention intentional disclaimer or disavowal. Id. the definition specification differs governs. from Id. its reveals ordinary The a special meaning, redefinition of the a 1996)). for patentee's explicit or implicit within the specification. term through an Similarly, at 1316. claim The if a term that lexicography may be either Invitroaen Corp. v. Biocrest Mfcr., applicant may specification L.P., 327 also to act as 1364, his implicitly or terms."); Bell Inc.. F.3d 1258, 262 F.3d Atl. own (Fed. Cir. lexicographer 2003) ("The and use the explicitly supply new meanings Network Servs.. 1268 1367 (Fed. Inc. Cir. v. Covad Commc'ns 2001)("[A] for Group. claim term may be clearly redefined without an explicit statement of redefinition.") . Nevertheless, reading it is important limitations "persons of from ordinary terms embodiments." Phillips. however, to the court specification in the art "avoid the danger of into the rarely would confine as their the exact representations depicted in the 415 F.3d at 1323. the invention requires of every embodiment." A limitation is proper, 1370 (Fed. Alloc. Cir. Inc. v. the limitation be a part Int'l Trade Com'n, consider the 342 F.3d 2003). In addition to the claims and the specification, also claim," when "the specification read as a whole suggests that the very character of 1361, the skill definitions of that prosecution history, which the court may "consists of the complete record of the proceedings before the PTO and includes the prior art cited during the examination of 415 the F.3d at scope disavowal 1317. of As claim during in the patent." the specification, terms by prosecution, making which a Phillips, a patentee may limit clear prevents and the unmistakable patentee from recapturing through claim construction specific meanings disclaimed during prosecution. Computer Docking Station Corp. v. Dell. Inc., 519 F.3d 1366, 1374 (Fed. Cir. 2008). prosecution history represents PTO and the applicant, negotiation, it thus useful 415 is less F.3d at As often for "the than the claim the final clarity of the product of the that specification and construction purposes." Phillips. 1317. far as extrinsic evidence, considering any particular in any specific sequence, contradict intrinsic because an ongoing negotiation between rather lacks Nevertheless, claim evidence." discretion, may sources as meaning at is is not "barred from those sources are not used to unambiguous 1324. extrinsic court or required to analyze sources long as that Id. admit the evidence light of the district The in court, in its to help educate 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 Id. 1319. In Federal the interest Circuit constructions terms. 1323, See, 1329 has of uniformity, encouraged other e.g., (Fed. of 2008). courts '964 Patent Inc. v. at Equip. have issue Corp. construed in this of Am.. v. to of Appeals consider involving the DirecTV Group. for the same Inc.. the claim patent 523 F.3d As APE has filed infringement actions in multiple jurisdictions across district courts jurisdictions Finisar Corp. Cir. the Court the country, the case. No. four See at least three other terms Am. 2:08cv895, and phrases Piledrivina of the Equip.. 2009 WL 3401726 (W.D. Pa. Oct. 20, 2009) Piledriving Equip.. (adopting Inc. 537RSM, 2009 WL 3297311 Equip. , Inc. 2009). v. Bay Mach. v. Sprooit Techs.. Cal. 2006). Wash. Corp. . Inc.. Recommendation); Power Oct. 632 however, Therefore, and Hydraulic (W.D. Stare decisis, Corp. v. Report 14, F. Svs.. 2009); Supp. an independent Am. 2d No. 445 F. while Supp. 956 this 2d 1104, court has construction of the C08- Piledriving (N.D. does not literally apply, considered the reasoning of these prior decisions, perform Inc.. Am. Cal. visto 1107-08 (N.D. reviewed and this court will disputed terms and phrases. B. Claim Construction As noted above, terms and phrases: (3) will (1) "eccentric weight portion," "insert-receiving area," address The claims phrase 1, and 3, 27. and (4) 6, Eccentric Weight "eccentric 11, APE and seeks 16, to weight as "integral," The court in turn. Portion portion" well define (2) "connected to."2 each disputed term or phrase (1) 26, the parties seek construction of four disputed as the is found in unasserted claims phrase asserted 19, functionally, 21, 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 structure with the cylindrical gear portion, to define the eccentric phrase weight structurally, portion cylindrical gear portion. to be to share common whereas Geoquip seeks which would physically require distinct from the the Specifically, APE proposes the following definition: Eccentric weight portion - is that portion of the counterweight that creates moment of the counterweight. the 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, eccentric one or more Chart.) Geoquip proposes the 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 looking representative of to its the construction claims themselves. the asserted claims, having a cylindrical "eccentric Claim 1, describes a weight which is "counterweight gear portion and an eccentric weight portion integral with said cylindrical gear portion, portion having at of said eccentric weight least one insert-receiving area formed therein." '964 Patent, portion" the is claims turns to col. used 9, in do not 11. a 39-43. consistent define seen portion in 41 in the the 3A and 3B, 94, a teeth 98 face Thus, the counterweight and has front remaining claims, the court guidance. substantially cylindrical a weight the following description: FIGS. of "eccentric explicitly. for additional The specification provides best manner the phrase the specification As Although 96, and a 40 is rear plurality around its perimeter. gear The face of gear eccentric weight portion 43 of the counterweight 40, which is formed integral with the gear portion 41, extends the gear portion. forward from the The front face 96 gear portion 41 of has a weight distribution with less weight provided by a by top portion 102 a bottom eccentric portion weight thereto. In eccentric the one-half a 43 result being portion portion the area 104 of the has a portion 100, constitutes over gear integral portion the connected 43 the counterweight of material the bottom of embodiment, semi-cylindrical bottom of as preferred weight Accordingly, mass from 104 portion the substantially and and more weight provided portion 40 has 41. a large 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 passage that precedes the phrase "in the preferred embodiment," patentee describes being the the that portion of front face of eccentric the the weight counterweight gear portion. portion that While structurally, extends the the as forward from court does not presume that the phrase "in the preferred embodiment" automatically 10 transforms the limitations, preceding language followed. embodiment namely Indeed, throughout that of from embodiment itself. 11. 51, APE, in the paragraph the preceding description the the repeated more 65; more specific See, col. in response, e.g., 7, refer general col. 55; 35, at col of at col. claim 3, 11. 9-12 from the one some purpose, descriptions of 11. 3, 8, the 11. the preferred ("The present the preferred col. the figures embodiment alone, '964 Patent. invention will be See more clearly understood from the following detailed description of preferred embodiment drawings."). boilerplate Eaux Mass. Although language Poseidon. 2001) taken Inc. as v. (assigning the in conjunction court decisive, KWI. see, Inc.. with declines e.g.. 135 "little weight" F. the to Les Supp. 5, 32-33. that all discussions of to of 61-62; relying on a boilerplate disclaimer found in the id. into the preferred serve descriptions id. 11. argues specification invocation specification must distinguishing invention 27-28, this the court does assume that the phrase was inserted to distinguish in some manner that in attached accept Traitments 2d 126, the 135 this Des (D. to boilerplate language in specification indicating general description of invention was "non- restrictive" ), the court is also wary of improperly limitations from the specification into the claims. 415 F.3d at 1323. whole to Thus, the court looks determine whether a person 11 of reading See Phillips, to the specification as a ordinary skill in the art would conclude distinct the eccentric portion to be structurally from the cylindrical gear portion in every embodiment of the claimed invention. In weight addition to See Alloc, the 342 passage F.3d at cited 1370. above, the court illustrative several other portions of the X964 Patent. abstract of the invention indicates that the finds First, the "counterweight has a cylindrical gear portion and an eccentric weight portion integrally formed therewith." abstract does integrally portion, (964 not formed Patent, say that "therein" Abstract the with (emphasis eccentric respect weight to the any APE's portion moment, may assertion of the be portion. that portion cylindrical is gear of addition, "eccentric suggests, weight that the the This description "eccentric weight portion," gear contained Instead, physically distinct the cylindrical wholly characterization In The but rather that it is integrally formed "therewith," which connotes a physical distinction between the two.3 belies added). portion within to the description "eccentric create eccentric cylindrical supports weight being portion" gear Geoquip's as being from the gear portion. the specification portion" portion of the was gives no intended gear portion indication to include, that the as APE 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 eccentric weight there is no portion that designed found in the bottom portion of mention of that offsetting "eccentric weight portion," as X964 col. Patent. are See id. at 5, 11. portion," a person of indication to Indeed, process that the ordinary skill is being of the the 53-60. If part the patentee the "eccentric weight in the art might expect some effect. specification's description further refutes APE's position that portion" the used throughout is intended the offsetting weight to be part of increase the gear portion, weight that phrase to of the the balancing "eccentric weight functionally defined: 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 may be portion [sic] does not hang properly, removed from to achieve metal the eccentric weight a properly balanced counterweight. Id. at col. 9, 11. to be capable must be conceived portion" phrase 11-17.4 of In order hanging of in a at for the "its physical, "eccentric lowest weight point," structural that 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 within the functional specification is one, the as APE suggests. understanding Thus, that the implicit eccentric weight portion is defined structurally and is physically distinct from the cylindrical While portion" the in gear portion. patentee another could manner if have he defined had chosen "eccentric to do so, weight the court finds that a person of ordinary skill in the art at the time of invention would have understood the eccentric the portion be physically embodiment of the claimed invention. See Alloc. cylindrical Nevertheless, gear although the to court agrees the weight portion and with distinct in every 342 F.3d at 1370. Geoquip that the eccentric weight portion extends outward from the cylindrical gear portion, must the court does not agree that the eccentric weight portion extend The court, construes the phrase "eccentric weight portion" therefore, forward, to mean "that portion of as opposed the counterweight to that rearward.5 extends either forward or rearward from the front or back face of the gear portion such that it shifts the rotational center of gravity radially outward from the gear's 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. col. 5, 11. 20-23. As the court does See not believe '964 that Patent, 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) The as term well as Integral "integral" unasserted appears claims in asserted claims 19, 21, and 27. 1, APE 6, and 11, proposes the following construction: Integral - or pieces The means that eccentric cylindrical function as (Joint Disputed "integral" The court begins claims, describes portion and term is reason gear portion act counterweight. Terms an 1, a its Chart.) analysis which eccentric and vis-a-vis another. the together Geoquip to that the X964 looking having portion Patent, throughout term is See Innova, by the proposes to of a the the 9, 11. claims, the The said 39-41. The is no claim ("Unless otherwise when different claims of a patent use the same language, looks term gear with and there we give that language the same effect in each claim."). court asserted used differently in one 381 F.3d at 1119 claims cylindrical integral col. that Id. representative weight gear portion." to believe is "counterweight used consistently compelled, portion "formed or cast of one-piece." Claim cylindrical weight parts, the whole. the Claim means themselves. composed of portions, together constitute to the claims as a whole to determine Thus, the the meaning of "integral." relationship between claims 16 evidence as to the meaning of "integral." contain the term "integral," and 19 provides Claim 16, strong which does not describes a counterweight having 15 "an eccentric weight portion." %964 Patent, 19, connected col. 11, 11. of integral with cast 11. claim steel, 30-33 term said and said 19 Phillips. 415 a gear portion, is a the phrase eccentric the term F.3d at weight said that 1315 is first metal is tungsten." claim weight "integral" claim portion "connected to" the 16 is not ("[T]he presence Claim "The counterweight [sic] between gear (emphasis added). Because dependent than manner cylindrical eccentric portion, gear in added). said describes: said second metal rather relationship cylindrical wherein cylindrical (emphasis "integral" claim 16 to 13-14 which is dependent on claim 16, assembly the portion uses the and presumably a at to describe portion so of 19 Id. the limits limited. See dependent claim 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, united the court or construes linked." counterweight "connected to" will be discussed further in that phrase Thus, which claim the 16 to mean contemplates cylindrical gear eccentric weight portion are joined together. construction, phrase portion the term "integral" "connected and constitute the the to" by whole gear that portion counterweight. 16 a two-piece portion and the Under APE's proposed in claim 19 would then limit the requiring cylindrical "joined together, The the eccentric function court weight together fails to to see, however, limits how this definition of the definition Claim 16 describes joined together; together or the claims turns to the of the "integral" "connected to" two portions of presumably, the two as the invention was States (PL's Patent 5, 6, also must Reexamination," at as the court obviousness (the The the examiner and 16-19 on the grounds for 3,224,514 2.)6 function Nevertheless, '964 Patent, 8-14, unpatentable No. 16. further guidance. Opening Claim Construction Br. Parte claim themselves do not define the term explicitly, initially rejected claims 1-3, United in counterweight as being invention would be ineffectual. the prosecution history for the found portions During the 2006 reexamination of the that in any way meaningfully Ex. in "Hornstein L, light of patent"). "Office Action in Ex 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 Claim Construction Br. Ex. Reexamination," at In order (PL's Opening Action in Hornstein patent that Hornstein "integral" inteqral-i.e.. 6 of from the present did with 5.) the not disclose gear insertion of metal invention, an portion: M, "Reply to Office distinguish the the patentee argued eccentric "This to rods. weight requirement portion of the one-piece-nature of the eccentric weight portion is Pagination is that of the original the exhibit. 17 document rather than unquestionably Hornstein removed) not disclosed by teaches a system Hornstein. in which As weights explained may be above, added in order to balance or unbalance the rotating rotor. Hence Hornstein's (emphasis eccentric added). is Therefore, not in integrally order to formed." distinguish (or . Id. prior . . at 6 art, the patentee argued that the term "integral," within the context of the '964 Patent, meant that the cylindrical gear portion and eccentric weight portion were formed or cast of one piece. The court the finds patentee this to be limiting counterweights. See, a clear the e.g., and unmistakable term Computer "integral" Docking, See id. disavowal to 519 the by one-piece F.3d at 1374 (noting a patentee may limit a claim term by clearly characterizing the invention prior in art).7 piece," certain Therefore, language of the construes a the way to after overcome taking rejections into account '964 Patent and its prosecution history, term "integral" to mean "formed or based both on the this court cast of one as Geoquip proposes. (3) Insert-Receiving Area The phrase "insert-receiving area" appears in asserted claims 1, 3, 6, 7 11, and As the 16, as well patentee as unasserted claims never recanted in any 4, 15, way 20, from 21, 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, 24, the and 27.8 eccentric insert." define APE seeks weight (Joint portion Disputed the phrase as to define the phrase as that is Claim Terms "a bore capable Chart.) extending into to the claims asserted gear cylindrical least col. one 9, themselves. claims, portion an a the 39-43. the [sic] area In other words, is located, Moreover, "vibratory formed a looks first the cylindrical integral therein." with '964 at the very least, at least in part, said Patent, the "insert- within the "eccentric claim 3, which is dependent on claim 1, assembly of claim 1 wherein said at least insert-receiving area is a bore in said eccentric weight portion and said solid insert 11. the 56-59. 8 Id.9 having portion to weight which is representative of weight an said eccentric weight portion having at insert-receiving 11. seeks eccentric the court "counterweight eccentric gear portion, weight portion." one Claim 1, describes and receiving area" recites "insert-receiving area," receiving Geoquip portion and shaped to receive the solid insert." In construing of "a region of Although member court is a tungsten believes the rod." phrase Id. at "insert- 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, court area" to be used consistently the claims do not define turns next to in the remainder the Thus, the phrase explicitly. of the the specification. The specification provides the following description: The bottom portion 104 of the counterweight 40 is cast having insert receiving areas or bores 112 substantially parallel 106 and extending portion 41 and weight portion embodiment, formed in fully at col. 5, 11. "insert-receiving the center bore through through 43. In within the counterweight preferred 40, although the can be varied. 61-68. area" the gear eccentric the Although as fully this passage extending portion and the eccentric weight portion, evidence the the two insert receiving bores 112 are number of bores Id. to fully specification to describes through both the the gear the court finds no other suggest that the insert- receiving area must extend completely through both portions. After considering court finds are, is the claims and specification as a whole, the that the essential attributes of the "insert-receiving area" first, that it is shaped to receive an insert; located, at least partially, portion; and third, that portion, as is case the within it may extend in the preferred party's proposed construction, however, three attributes.10 As such, into the the second, that it eccentric weight the cylindrical embodiment. gear Neither succeeds in capturing these 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 together, united or linked" the court Geoquip, phrase that finds this however, art 'connected to' to examine '964 other resolve whether disavowal of be the ordinary meaning the definition also excludes bolting bolted the counterweights the phrase. to indicate l964 are and that patent not the teaches sufficiently patent does not provide any other methods of than casting in from one-piece." the dispute between the as of 11, "joined (Joint Disputed Claim Terms Chart), having bolted durable and the order wishes "specifically prior to 6, patentee has the parties, made counterweights. a See clear Id. the and Phillips, Thus, court must unmistakable 415 F.3d at 1316. The court themselves. begins its analysis by looking to the claims Claim 1 describes the counterweight and then indicates that there is "at least one driving means operatively connected to 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 its rotational axis." claims 6 and 11 '964 describe Patent, a 16, manner, portion however, uses connected at col. 19, in 11, which cylindrical to than in axis 13-15. of gear as 51-53. being 10, 11. to" Similarly, "operatively 28-31, in a 64-66. different portion portion, claim 16 "connected in the "connected specification for Geoquip of to" the pieces a position gear portion." is integral contemplates are joined a argues two-piece together however, the in some of excluding There is also no indication that something Patent. different Because explicitly, that the the gear portion, the the in claim claims do court examines patentee eccentric based upon disclaimed weight bolting portion the patentee's 16 not 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 to as a the criticism of the prior art: The with further guidance. connecting cylindrical means '964 to" at As opposed to the description in claim weight which portion said cylindrical eccentric gear elsewhere method 11. "connected There is no mention in the claims, phrase define means cylindrical bolting as a means of connection. the 9, Id. at col. the phrase said the 11. the counterweight manner. said counterweight about describing the counterweight as having "an eccentric weight radially outward of Id. col. driving connected to" the counterweight. Claim rotate 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. disclaimer problems in APE responds that this statement was not bolting, but the prior art. the patentee one-piece, of 39-45. goes cast ("These solid, on to rather Indeed, discuss a general in the rest problems counterweights as discussion that well. of cast counterweights, however, the the paragraph, arose See of id. from at certain 11. 45-51 do not have sufficient mass to generate large enough vibratory forces to efficiently drive or pull piles."). takes 11. As the form of a one-piece, 51-53, that embodiment Thus, prior portion. court finds that not provide a the eccentric F.3d 1173, dispensing 1180 (Fed. methods when dispensing method of those reason methods to court united or disavowal portion Inc. 2006) v. to disavowed). that linked," as from phrase the that of Bioaenex Labs.. prior Because art in the the definition of to mean parties suggested by Geoquip. 23 simply agree, in 5, the means cylindrical (finding no disavowal discussion exclude bolting Patent at col. bolting of the the preferred embodiment allegedly construes clear Svs.. Cir. id. the discussion of weight See Ventana Med. '964 is obviously not being disavowed. does art the cast counterweight, the connecting the the preferred embodiment of gear Inc.. of 473 certain included addition court without the to the finds "connected "joined of no to," together, the caveat III. For the foregoing disputed terms (1) reasons, and phrases "Eccentric as weight counterweight CONCLUSION the court the parties' follows: portion" that construes extends means "that either portion forward or of the 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) "Integral" (3) "Insert-receiving area" in part, means axis." within "formed or cast of one piece." the means "a bore eccentric located, weight at portion least that is shaped to hold securely a solid insert member." (4) The "Connected to" means "joined together, united or linked." Clerk is Opinion to counsel IT IS SO DIRECTED for to forward a copy of this Memorandum the parties. ORDERED. /§/ Rebecca Beach Smith United States District JudgeREBECCA UNITED Norfolk, Virginia December \\ , 2009 24 BEACH STATES SMITH DISTRICT JUDGE
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