AMERICAN PILEDRIVING EQUIPMENT, INC. v. GEOQUIP, INC., Civil Action No. 2:08cv547.

696 F. Supp.2d 582

AMERICAN PILEDRIVING EQUIPMENT, INC., Plaintiff, v. GEOQUIP, INC., Defendant.

Civil Action No. 2:08cv547.

United States District Court, E.D. Virginia, Norfolk Division.

March 10, 2010.

Craig James Madson, Madson IP PC, Farmington, UT, Stephen Edward Noona, Kaufman & Canoles, P.C., Norfolk, VA, for Plaintiff.

Kenneth Paul Kula, Peter Charles Knops, Shook Hardy & Bacon LLP, Kansas City, MO, Richard Hooper Ottinger, Vandeventer Black LLP, Norfolk, VA, for Defendant.

OPINION AND FINAL ORDER

REBECCA BEACH SMITH, District Judge.

This matter comes before the court on the defendant's motion for summary judgment of noninfringement and invalidity of the 5,355,964 Patent (the "'964 Patent") and plaintiff's cross-motion for summary judgment of infringement. For the reasons set forth below, the court GRANTS the defendant's motion, in part, and DENIES the plaintiffs motion. As the court finds a hearing unnecessary, the court DENIES the parties' request for a hearing.

I. Background

The '964 Patent was issued to John White on October 18, 1994, who then assigned it to plaintiff American Piledriving Equipment, Inc. ("APE"). The '964 Patent involves a vibratory assembly designed to drive piles into the earth to support buildings and other structures.¹ In the preferred embodiment, two eccentrically weighted counterweights, which are essentially gears with uneven weight distribution around their face, rotate in opposite directions in a synchronized manner. The opposite rotation cancels out the lateral forces that are created, while the uneven weight distribution of the counterweights generates substantial vertical forces that are used to drive the piles. The '964 Patent, which recites twenty-seven claims, describes the pile driving vibratory assembly itself, as well as a method for its construction.

On November 18, 2008, APE commenced the present action alleging that Geoquip, Inc. ("Geoquip") has infringed, and continues to infringe, claims 1-3, 5-14, and 16-18 of the '964 Patent by using, offering to sell or rent, selling, and/or renting the Model 250 and Model 500 vibratory pile driving devices (the "Accused Devices") made by Hydraulic Power Systems, Inc. ("HPSI") in the United States. On December 11, 2009, after conducting a hearing pursuant to Markman v. Westview Instruments, Inc., 517 U.S. 370, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996), the court issued a Memorandum Opinion construing the patent terms and phrases disputed by the parties ("Claim Construction").²

On January 8, 2010, Geoquip filed a motion for summary judgment of noninfringement and invalidity of the '964 Patent. On January 22, 2010, APE filed its own motion for summary judgment on the issue of infringement only. APE contends that summary judgment on the issue of validity would be improper. Both motions have been fully briefed and are now ripe for review.

II. The Asserted Claims

According to APE, the Accused Devices infringe claims 1-3, 5-14, and 16-18 of the '964 Patent. These asserted claims include four independent claims that are disputed by the parties: claims 1, 6, 11, and 16. Claim 1 recites a vibratory assembly for use in pile driving equipment that contains a housing designed to receive at least one counterweight, which includes the following elements:

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, 11. 38-53. Claim 6, the second independent claim, differs from claim 1 only in that it requires that the housing contain at least two counterweights. See id. at col. 9, 11. 60-68; col. 10, 11. 1-31. Similarly, claim 11, the third independent claim, requires the same basic elements as claim 1, but also requires that the housing contain "an even number of counterweights." Id. at col. 10, 1. 47. Thus, independent claims 1, 6, and 11 require the same essential components, differing only in the number of counterweights involved. Therefore, the court will consider the infringement of independent claims 1, 6, and 11 together.

The structure of the counterweight involved in claim 16, however, differs from that required in the other independent claims. Claim 16 recites a counterweight assembly for use in pile driving equipment, comprising:

A cylindrical gear portion having a plurality of gear teeth around its circumference, said cylindrical gear portion being made of a first metal; an eccentric weight portion connected to said cylindrical gear portion at a position radially outward of the axis of said cylindrical gear portion, said eccentric weight portion having at least one insert-receiving area therein, said eccentric weight portion being made of said first metal; and at least one solid insert member having a predetermined size securely positioned in said at least one insert-receiving area respectively, said at least one 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.

Id. at col. 11, 11. 8-25 (emphasis added). Thus, rather than the eccentric weight portion being "integral with" the cylindrical gear portion, as required by independent claims 1, 6, and 11, the eccentric weight portion recited by claim 16 must be "connected to" the cylindrical gear portion. Accordingly, the infringement analysis for claim 16 will differ from that of the other independent claims, and the court will address claim 16 individually.

III. Claim Construction

On December 11, 2009, the court issued an opinion construing the terms and phrases disputed by the parties as follows:

(1) "Eccentric weight portion" means "that portion of the counterweight that extends either 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."

(2) "Integral" means "formed or cast of one piece."

(3) "Insert-receiving area" means "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" means "joined together, united or linked."

(Claim Construction 24.) In addition, the parties have agreed to the following construction of the phrase "cylindrical gear portion": "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." (Id. at 8 n. 2.)

In reaching the above construction, the court made three findings relevant to the issue of infringement. First, the court specifically rejected APE's argument that the "eccentric weight portion" is functionally defined, being that portion of the counterweight that creates the eccentric moment of the counterweight. (Id. at 9, 12-13) ("The specification gives no indication that the `eccentric weight portion' was intended to include, as APE suggests, that portion of the gear portion containing unbalanced weight."). Instead, the court agreed with Geoquip that "implicit within the specification is the understanding that the eccentric weight portion is defined structurally and is physically distinct from the cylindrical gear portion." (Id. at 14.)

Second, the court found that, during the course of the reexamination of the '964 Patent, the patentee had made a "clear and unmistakable disavowal" limiting the term "integral" to one-piece counterweights. (Id. at 18.) Nevertheless, the court also indicated that claim 16, which uses the phrase "connected to" rather than the term "integral," contemplates a twopiece counterweight. (Id. at 16.) Thus, the disavowal of two-piece counterweights applies only to the term "integral" and does not apply to claim 16.

Last, with respect to the phrase "connected to," the court held that the '964 Patent, in its criticism of prior art, did not make a clear disavowal of bolting as a means of connecting the eccentric weight portion to the cylindrical gear portion. (Id. at 23.) Thus, claim 16, which indicates that the eccentric weight portion is "connected to" the cylindrical gear portion, could potentially cover a two-piece counterweight in which the eccentric weight portion is bolted to the cylindrical gear portion.

The court specifically relies upon these findings, as well as the general reasoning underlying its claim construction, in deciding the issue of infringement.

IV. Standard of Review

In order to grant a motion for summary judgment, the court must conclude that the current pleadings, submissions, and affidavits, when taken in the light most favorable to the nonmoving party, show that there is no genuine issue as to any material fact, entitling the moving party to judgment as a matter of law. Celotex Corp. v. Catrett, 477 U.S. 317, 322, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986). A party is entitled to summary judgment when the evidence is such that no reasonable jury could return a verdict in favor of the non-moving party. See Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986) (holding that only "facts that might affect the outcome of the suit under governing law" are material).

V. Analysis

This matter comes before the court on cross-motions for summary judgment on the issue of infringement, as well as Geoquip's motion for summary judgment of invalidity. The court will address first the issue of...