Federal Circuit Passes on Opportunity to Provide Further Guidance on Claim Construction
American Piledriving v. Geoquip (3/21/11)By: Kuangshin Tai
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What This Means to You
- Be wary of wide variance in predictability of claim construction between different courts.
- Be consistent when making arguments regarding the same term in related claim sets.
- Include as many structural embodiments in written description as possible to increase chance of obtaining a functional claim construction.
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Overview
The US Court of Appeals for the Federal Circuit (Federal Circuit) recently rendered a decision in American Piledriving Equipment, Inc. v. Geoquip, Inc. consolidating the construction of three claim terms. Previously, no two district courts construed all three terms the same way. In comparing substantially different claim constructions provided by district courts in the Eastern District of Virginia and the Northern District of California, the Federal Circuit fully affirmed the constructions of the VA court while holding that the CA court construed two of the terms too narrowly.
Case Background
American Piledriving filed seven separate patent infringement law suits in district courts across the country against manufacturers and distributors of vibratory pile driving equipment. This case concerns the appeal of two of those suits, which granted summary judgment of noninfringement to the defendants.
The vibratory pile drivers described in American Piledriving's patent generally include cylindrical counterweights placed side by side and having an uneven weight distribution. When the counterweights rotate, vertical vibratory forces are created for driving columnar piles into the ground. Whether the accused devices infringed American Piledriving's patent turned on the constructions of three claim terms: "eccentric weight portion"; "integral"; and "insert-receiving area."
Decision Analysis
American Piledriving argued that the "eccentric weight portion" is provided to create an uneven weight distribution around the body of the gear and, accordingly, the term should be given a functional, rather than structural, construction. After looking to the language of the claims, the specification, and the prosecution history, the Federal Circuit found the term to be consistently treated as a structural element and construed it as such, affirming the VA court decision.
Second, American Piledriving argued that the word "integral" should be construed to encompass both one- and two- piece counterweights. However, the Federal Circuit interpreted "integral" to include only a single piece, relying on claim differentiation and the prosecution history, and agreeing with both the VA and CA courts.
Regarding the term "insert-receiving area", the Federal Circuit held that the CA court improperly imported a limitation from the description into the claims, and affirmed the VA court construction.
Takeaways
Claim construction continues to remain an extremely fact-intensive exercise and can result in disparate treatment of the same issues before two competent district courts. In this particular situation, the VA court carefully avoided reading limitations from the written description into the claims, while the CA court inappropriately added several limitations to the claimed invention.
While the Federal Circuit gave some reasoning for why it agreed with one court over the other, the opinion added little guidance regarding where the line is drawn in construing terms functionally or structurally. Accordingly, to increase the chances of obtaining a functional claim construction, include as many structural embodiments as possible in the written description of an application.
In addition, when prosecuting patent applications, be consistent when making arguments regarding the same term in different, yet related, claim sets.
