By Jason Rantanen
American Piledriving Equipment, Inc. v. Geoquip, Inc. and American Piledriving Equipment, Inc. v. Bay Machinery Corporation (Fed. Cir. 2011) Download 10-1283
Panel: Bryson, Gajarsa, and Linn (author)
One of the Federal Circuit's primary purposes is to ensure consistent claim construction results. American Piledriving v. Geoquip highlights this role.
American Piledriving holds Patent No. 5,355,964, which relates to counterweights for "vibratory pile drivers." By rapidly rotating these unevenly weighted counterweights in opposite directions, vibratory forces are generated that force the pile into the ground. Early counterweights possessed several drawbacks that the invention of the '964 purport to solve.
The district court proceedings on appeal involved two suits brought by American Piledriving, one in the Eastern District of Virginia and the other in the Northern District of California, against distributors of vibratory pile drivers manufactured by Hydraulic Power Systems, Inc. (These two suits were part of a set of seven brought by American Piledriving, all in different districts). The crucial portion of representative claim 1 reads:
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;
At issue were the district courts' constructions of three claim terms, two of which the courts construed differently: "eccentric weight portion" and "insert receiving area." (The courts reached the same contruction for "integral," a construction the appellate court affirmed). Based on their constructions of these terms, the two district courts granted summary judgment of noninfringement.
On appeal, the CAFC agreed fully with the Virgina court, affirming its constructions and grant of summary judgment. The Calfornia court fared slightly less well: the panel disagreed with the additional limitations the trial court added but nonetheless affirmed summary judgment of noninfringement for the two products that were also involving in the Virginia litigation, reversing and remanding for further proceedings on a third product at issue only in the California litigation.
Although much of American Piledriving comes across as a typical claim construction opinion concluding that well-established principles of claim construction supported the district courts' interpretations, the portions of American Piledriving addressing the two courts' different interpretations of "eccentric weight portion" and "insert receiving area" are somewhat noteworthy. All three courts determined that some structure provided by the specification was required; however, the CAFC concluded that the California court's constructions went beyond what the rules permitted:
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 receiving 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.”
Unfortunately, the CAFC's discussion of the differences between these two courts' analyses of the use of the structure in the specification to limit the functional claim elements is limited to this brief passage and a similar passage in its section on "insert receiving area." This is disappointing given the court's build-up at the beginning of the opinion, which held promise for a thorough dissection of where the cutoff might be in terms of how much structure from the specification should be part of the claim constuction. See Slip Op. at 10 ("In the course of construing the claims in this case, the Virginia district court carefully avoided redefining the claims and reading limitations into the claims from the written description. The California district court, however, inappropriately added several limitations not contained in the inventor’s claimed definition of the scope of his invention. This disparate treatment of the same issues before two competent and capable district courts is thus instructive."
On page 6 of the Decision, CJ Linn tells us that the ‘964 patent identifies as the invention:
“…melting point higher than 328°, the melting point of lead”
On page 8, the representative claim of ‘964 recites:
“a melting point temperature of 328°C or higher”
Are inserts of lead within the scope of this representative claim? If so, was Linn right to say that the invention is “MP higher than lead”?
Oh sorry. Above, I typed 360 but meant 326. But you realised that already didn’t you? 326 old, >326 the claimed invention. >326 includes 327, I suppose. An incremental improvement over the art doesn’t get much finer than this.
ping, I have no idea which are talking about.
Answer to Question #4. Nobody. So?
We cannot go back in time. When looking back in time, as we inevitably must, to figure out what would have been obvious at the relevant date, the thing to exclude is of course something quite different (by which I mean, ex post facto analysis). EPO-PSA does this. Deciding on the basis of secondary indicators does not.
Answer to Question Ned: Yes. Well spotted.
“Without reading the specification, I can’t tell who’s right.”
And yet, you only too gladly throw out your “answer” above, and malign those who venture thusly on another thread.
Hmmmm…
Is that last comment directed to the fact that in the United States each side bears its own cost of litigation regardless of who wins?
Max, I agree with you that on its face Lourie’s position doesn’t seem to make sense because “bullet deflection” seems to have nothing to do with the loadbearing capabilities of the shell, which is the stated purpose of baffles in the claim. I think his position was developed after reading the specification in which it appeared that the bullet-deflection capability was emphasized throughout.
Without reading the specification, I can’t tell who’s right.
Question #4: Who doesnt understand teh simple concept of HINDSIGHT?
Conventional: inserts of lead (MP 326°)
Known Problem: When the piledriver is working hard, the lead tends to melt
The solution patented here: Use for the inserts a metal with an MP > 360.
Question #1: Whatever kind of PHOSITA is it that, aiming to stop the inserts melting, fails to come to the idea that selecting for those inserts a metal that melts at a higher temperature might alleviate the problem?
Question #2: If the PTO were examining the asserted claims today, would it allow them?
Question #3: Who finds it endlessly fascinating, that owners of manifestly invalid (but duly issued and so presumptively valid) claims nevertheless assert them so boldly, in the various District Courts of the USA?
Construing a term in line with its stated purpose makes good sense. Ned, I gather from you that both Lourie and the majority did this. From your reading of the case, would the PHOSITA have drawn from the specification the message that a baffle that would have failed in the purpose of deflecting bullets ought not to be regarded as a baffle within the meaning of the claim? I ask because the claim extract you quote tells me that the purpose of the baffles was not deflecting at all but, rather, load bearing. Where does Lourie find basis to depart from the plain meaning of the claim? Did not somebody at the CAFC recently caution attorneys “Be careful what you ask for”?
“without being angled”
Last I checked, both zero degrees and ninety degrees were angles…
Just an observation.
Paul, I think Lourie ultimately believes that claims cannot be construed to cover subject matter neither disclosed nor enabled, subject matter not invented by the inventor. Is that your understanding as well?
In contrast, Rader would not limit the claims to the corresponding structure, but would simply hold them invalid if their construed scope was indefinite, not supported or not enabled. Is that your understanding?
Malcolm, I just re-read Phillips. The lower court had construed the claim under Section 112, p.6 because “baffles” was part of a claim element that included the word “means.” Both the panel decision and the subsequent en banc decision overruled the district court on this grounds, holding that the since baffles was the “structure” that increased the load bearing capability of the shell, the claim did not fall under Section 112, p. 6.
The claim term at issue:
“further means disposed inside the shell for increasing its load bearing capacity comprising internal steel baffles extending inwardly from the steel shell wall…”
It was the panel decision that construed “baffles” to include “angles” even though all agreed that baffles itself had a well accepted meaning and could increase the load bearing capacity without being angled. Lourie, however, writing for the panel, construed baffles to include the angle limitation because, in his view, “the,” as opposed to “a,” purpose of the invention was to deflect bullets and that it was the angle of the baffles, not the baffles themselves out of that context, that deflected the bullets.
However, there was no prosecution history where the angle of the baffles was required to distinguish over the prior art. The en banc panel construed the term more broadly because, in their view, baffles had more than one purpose, so that it was improper to limit them to just the one, the bullet deflection purpose.
Malcolm, the issues, though, in Philips were slightly different. There the issue was the term “baffle” that had a somewhat well understood meaning in the art so that resort to the specification was not required to understand its meaning. Yet the District Court did so anyway, and the Feds reversed.
The issues are slightly different here. The two claim terms at issue between the two lower courts were functionally defined claim terms that had no well established meaning. Under these circumstances, we have two broad choices. Construe the claim to cover all structure that “performs” the claimed function, or limit the claim to the corresponding structure. In the latter case, the issue then becomes where to draw the line: how much of the structure that performs the function must be incorporated.
In a recent case, Lourie dissented, IIRC, because the somewhat functional claim term was construed broadly, without reference to the corresponding structure. This is somewhat like construing means plus function claims to cover all structure that performs the recited function. Lourie dissented in that, as construed, the claim literally covered structure that was neither disclosed nor equivalent of the disclosed structure — precisely the problem identified by the Supreme Court in a number of cases involving functional claiming.
To the extent that panels of the Federal Circuit do not recognize the flaw in their construing functional claims broadly, and limit their construction to corresponding structure, the Feds will continue to fun afoul of these Supreme Court cases.
Obviously, at some point, the split in the circuit identified by Paul Morgan has to be dealt with en banc. Philips did not squarely address the issue.
I am no so sure I fully understand the issues before the courts in the UK, but what is clear from the US is that functionally defined terms (means plus function or otherwise) will always(?) result in a construction that limits the claim to the corresponding structure.
As I understand it, the European courts do not even construe “means plus function” claim elements this way. I understand they construe such terms to cover all structure that performs the function. THAT would never fly in the US, and I have tried to explain why citing the relevant US Supreme Court history from O’Reilly v. Morse, to Westinghouse v. Boyden Power Brake, Perkins Glue and Halliburton.
So, if you really want relevant history for the American rule, look to the above Supreme Court cases for why we construe functionally defined terms to be limited to the corresponding structure defined in the specification (and equivalents, per Section 112, p. 6).
Jason: a thorough dissection of where the cutoff might be in terms of how much structure from the specification should be part of the claim constuction
Generally speaking, the answer is very little.
Ned: At least after Phillips, where specification was given preeminent status,
Not true. The language of the claims at issue is preeminent, followed by the language used in other claims of the patent (if any).
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.
I think Phillips and subsequent case law is reasonably clear about the circumstances in which the specification compels reading additional limitations into claim terms. The fact that certain judges (including some on the CAFC) still don’t get it doesn’t mean that the law is unworkable or confusing.
I’ll say it again: the Phillips decision is one of the CAFC’s peak moments of sensibility and clarity.
Re: “This is disappointing given the court’s build-up at the beginning of the opinion, which held promise for a thorough dissection of where the cutoff might be in terms of how much structure from the specification should be part of the claim constuction.”
I’m afraid that will continue to be an disapointment, with such a vast difference of opinion on that issue between different Fed. Cir. judges, with varying panel decisions depending on who is in the majority.
Ned – that’s an good comment, and I’ve revised the post to make it a bit clearer.
Ned I have not yet read the Decision but clearly you have. Is Piledriver a nice case with which to test the efficacy of the test question used by the UK Supreme Court to fix the true meaning of a claim in view, namely: From the viewpoint of the notional PHOSITA reader of the patent as a whole, what was the writer of the patent claim using the chosen language of the claim to mean?
The note seems to suggest that the California court erred by importing limitations from the specification into the claims. But in point of fact, both district courts and the Federal Circuit limited the two claim terms to the corresponding structure recited in the specification. The issue on appeal was what was the corresponding structure and the the extent to which the details of the corresponding structure had to be incorporated. Where was the cutoff point? That was the dispute.
The Federal Circuit determined the function of the claim element by analyzing the use of the claim term in the specification. Using this function, they then identified the essential features of the corresponding structure. The Federal Circuit finally determined whether the function defined by the claim term required the additional structure incorporated by the California court.
I have mentioned this before, but I will say it here again: At least after Phillips, where specification was given preeminent status, there is very little difference, if any, between interpreting the meaning of any claim term and identifying the corresponding structure required by section 112, paragraph 6. Both attempt to identify the corresponding structure. So the real question in both cases is just how much of the corresponding structure needs to be incorporated into the claim – where is the cutoff point? The answer seems to be, in all cases, that structure which is required to carry out either the “recited function” or the “court determined function.”
There is one point though that I wonder about. The specification does seem to define “insert receiving areas.” The definition was adopted by California court. The Federal Circuit overruled, and is important to understand why they did so.
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