United States Court of Appeals 

for the Federal Circuit 

__________________________ 

AMERICAN PILEDRIVING EQUIPMENT, INC., 

Plaintiff-Appellant, 

v. 

GEOQUIP, INC., 

Defendant-Appellee. 

__________________________ 

2010-1283 

__________________________ 

Appeal from the United States District Court for the 

Eastern District of Virginia in case No. 08-CV-0547, 

Judge Rebecca Beach Smith. 

__________________________ 

AMERICAN PILEDRIVING EQUIPMENT, INC., 

Plaintiff-Appellant, 

v. 

BAY MACHINERY CORPORATION, 

Defendant-Appellee. 

__________________________ 

2010-1314 

__________________________ 
2 AMERICAN PILEDRIVING v. GEOQUIP

Appeal from the United States District Court for the 

Northern District of California in case No. 08-CV-1934, 

Judge Phyllis J. Hamilton. 

__________________________ 

Decided: March 21, 2011 

__________________________ 

CRAIG J. MADSON, Madson IP, P.C., of Farmington, 

Utah, argued for plaintiff-appellant. Of counsel on the 

brief was STEPHEN E. NOONA, Kaufman & Canoles, P.C., 

of Norfolk, Virginia. 

PETER C. KNOPS, Shook, Hardy & Bacon, L.L.P., of 

Kansas City, Missouri, 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, Texas. Of counsel on the brief was 

RICHARD H. OTTINGER, Vandeventer Black, L.L.P., of 

Norfolk, Virginia. 

__________________________ 

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. 
AMERICAN PILEDRIVING v. GEOQUIP 3

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 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 col-

 

1 See Am. Piledriving Equip., Inc. v. Conmaco/Rector, L.P., No. 08-3826 (E.D. La. Dec. 23, 2009) 

(order staying proceedings); Am. Piledriving Equip., Inc. 

v. Pile Equip., Inc., No. 08-00659 (M.D. Fla. Mar. 12, 

2010) (same); Am. Piledriving Equip., Inc. v. Hydraulic 

Power Sys., Inc., No. 08-00537 (W.D. Wash. Mar. 12, 

2010) (same); Am. Piledriving Equip., Inc. v. J & G Sales, 

Inc., No. 08-01253 (S.D. Tex. Mar. 15, 2010) (same); Am. 

Piledriving Equip., Inc. v. Equip. Corp. of Am., No. 08-

00895 (W.D. Pa. Apr. 12, 2010) (same). 
4 AMERICAN PILEDRIVING v. GEOQUIP

umns 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. 

Figure 1 
AMERICAN PILEDRIVING v. GEOQUIP 5

Figure 2 

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 ro-
6 AMERICAN PILEDRIVING v. GEOQUIP

tated, these two-piece counterweights were often replaced 

by “cast, one-piece, solid” counterweights. These onepiece 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 “insertreceiving 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. 
AMERICAN PILEDRIVING v. GEOQUIP 7

Figure 3 

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. 
8 AMERICAN PILEDRIVING v. GEOQUIP

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). 
AMERICAN PILEDRIVING v. GEOQUIP 9

In both actions, the parties disputed the meaning of 

the terms “eccentric weight portion,” “integral,” “insertreceiving 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,” 
10 AMERICAN PILEDRIVING v. GEOQUIP

“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 court in 

construing claims is not to redefine claim recitations or to 

read limitations into the claims to obviate factual questions of infringement and validity but rather to give 

meaning to the limitations actually contained in the 

claims, informed by the written description, the prosecution history if in evidence, and any relevant extrinsic 

evidence. See Phillips v. AWH Corp., 415 F.3d 1303, 1314 

(Fed. Cir. 2005) (en banc). 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. 

1. “Eccentric Weight Portion” 

The term “eccentric weight portion” appears in independent claims 1, 6, 11, and 16. The district courts construed the term as follows: 

Virginia California 

“That portion of the 

counterweight that 

“The bottom portion of the 

counterweight, which extends 
AMERICAN PILEDRIVING v. GEOQUIP 11

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.” 

forward from the front face of 

the gear portion, containing 

more weight than the top 

portion due to its larger mass, 

including at least one insertreceiving area formed therein 

to receive at least one solid 

tungsten rod.” 

American Piledriving argues that both district courts 

erred by importing structural limitations from a preferred 

embodiment of the invention into their respective constructions. It contends that, although not explicitly 

recited in their constructions, each court erroneously 

required that the “eccentric weight portion” be separate 

and distinct from the “cylindrical gear portion.” American 

Piledriving asserts that one of skill in the art would have 

understood that the term should be defined functionally 

and not be structurally limited, as the specification makes 

repeated reference to the purpose of the “eccentric weight 

portion”: creating an uneven weight distribution around 

the body of the gear. American Piledriving argues that, 

when properly interpreted, the term includes any unevenly distributed weight within the counterweight. 

The Defendants contend that neither court improperly 

read limitations from the preferred embodiment into their 

respective construction of “eccentric weight portion.” 

They assert that both courts recognized that the “eccentric weight portion” and the “cylindrical gear portion” are 

distinct parts of a counterweight. 

This court agrees with American Piledriving that the 

California court improperly imported limitations from the 

specification into its construction of “eccentric weight 

portion,” but concludes that the Virginia court correctly 

construed the term. This court reviews claim construction 

de novo. Cybor Corp. v. FAS Techs., 138 F.3d 1448, 1451 
12 AMERICAN PILEDRIVING v. GEOQUIP

(Fed. Cir. 1998) (en banc). Claim terms are generally 

given their “ordinary and customary meaning,” namely 

“the meaning that the term would have to a person of 

ordinary skill in the art in question at the time of the 

invention.” Phillips, 415 F.3d at 1313. To determine the 

ordinary and customary meaning of a claim term, courts 

turn to “those sources available to the public that show 

what a person of skill in the art would have understood 

disputed claim language to mean.” Id. at 1314 (quoting 

Innova/Pure Water, Inc. v. Safari Water Filtration Sys., 

Inc., 381 F.3d 1111, 1116 (Fed. Cir. 2004)). Those sources 

include “the words of the claims themselves, the remainder of the specification, the prosecution history, and 

extrinsic evidence concerning relevant scientific principles, the meaning of technical terms, and the state of the 

art.” Id. (quoting Innova, 381 F.3d at 1116). Because 

neither party provided cogent extrinsic evidence, this 

court looks only to the intrinsic evidence—the claims, 

specification, and prosecution history. 

i. Claims 

We begin our analysis with the language of the 

claims, as it provides “substantial guidance as to the 

meaning of particular claim terms.” Id. (citing Vitronics 

Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 

1996)). The claims do not explicitly define the term 

“eccentric weight portion,” but the language does suggest 

that the term should not be construed as broadly as 

proposed by American Piledriving. For example, claim 16 

recites “an eccentric weight portion connected to said 

cylindrical gear portion.” ’964 Patent col.11 ll.13-14 

(emphasis added). If, as suggested by American Piledriving, the term “eccentric weight portion” encompasses any 

portion of the counterweight that contributes to the 

uneven weight distribution around the body of the gear, 

the term would include the gear itself, as the gear is 
AMERICAN PILEDRIVING v. GEOQUIP 13

partly responsible for the uneven weight distribution of 

the counterweight. See id. col.5 ll.51-60 (explaining that 

the holes in the gear “effectively reduce the amount of 

metal in the top portion [of the gear], thereby moving the 

center of gravity of the counterweight lower or radially 

away from the rotational axis”) (reference numbers omitted). This interpretation cannot be correct as it would 

essentially require that the structure recited in claim 16 

connect to itself. 

Both district courts recognized—and American Piledriving does not dispute—that the term “eccentric weight 

portion” is used consistently throughout the claims of the 

’964 Patent. Nothing suggests that the term has different 

meanings in different claims. Where a claim term is used 

consistently throughout the claims, “the usage of [the] 

term in one claim can often illuminate the meaning of the 

same term in other claims.” Phillips, 415 F.3d at 1314 

(citation omitted). Thus, the meaning of the term “eccentric weight portion” apparent from claim 16 is equally 

applicable to independent claims 1, 6, and 11 as well. 

ii. Specification 

We turn next to the specification as it “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. at 1315 (citation omitted). Both district courts relied heavily on the following 

passage in the specification to reach their respective 

structural constructions of “eccentric weight portion”: 

The eccentric weight portion of the counterweight, 

which is formed integral with the gear portion, extends forward from the front face of the gear portion. The gear portion has a weight distribution 

with less weight provided by a top portion and 
14 AMERICAN PILEDRIVING v. GEOQUIP

more weight provided by a bottom portion as a result of the eccentric weight portion being connected thereto. 

’964 Patent col.5 ll.20-31 (emphasis added and internal 

reference numbers omitted). American Piledriving argues 

that this portion of the specification describes merely a 

preferred embodiment of the invention and that the 

structural descriptions of the gear portion and the eccentric weight portion are nothing more than exemplary of 

the structures capable of providing the needed weight 

imbalance. But the consistent reference throughout the 

specification to the “eccentric weight portion” as structure 

extending from the face of the gear makes it apparent 

that it relates to the invention as a whole, not just the 

preferred embodiment as contended by American Piledriving. 

This court has indicated that a statement in a specification that describes the invention as a whole can support 

a limiting construction of a claim term. Cf. C.R. Bard, 

Inc. v. U.S. Surgical Corp., 388 F.3d 858, 864 (Fed. Cir. 

2004). That is especially true where, as here, other 

statements and illustrations in the patent are consistent 

with the limiting description. The specification repeatedly uses the words “thereto” or “therewith” to describe 

the relationship between the “cylindrical gear portion” 

and the “eccentric weight portion.” See ’964 Patent Abstract; col.5 ll.25-27. These words suggest a structural 

construction of “eccentric weight portion,” as they describe 

the “eccentric weight portion” according to its location 

relative to other components, not the function it performs. 

The specification also describes balancing the “eccentric 

weight portion” such that it hangs at its lowest point. Id.

col.9 ll.11-17. This description of the “eccentric weight 

portion” further suggests a structural rather than a 

functional construction. Moreover, as noted above, the 

specification explains that apertures in the top of the gear 
AMERICAN PILEDRIVING v. GEOQUIP 15

contribute to the uneven weight distribution in the bottom of the counterweight, yet the specification makes no 

mention of this weight being part of the “eccentric weight 

portion.” Finally, the relevant figures each show the 

“eccentric weight portion” extending from the face of the 

gear. Id. Figures 2, 3A, 3B, and 4. 

iii. Prosecution History 

American Piledriving contends that the prosecution 

history supports defining “eccentric weight portion” in an 

entirely functional manner. American Piledriving argues 

that during reexamination it consistently treated the 

“eccentric weight portion” generally as the uneven distribution of weight that moves the center of gravity away 

from the rotational axis. But it also stated that “an 

‘eccentric weight portion’ is a weighted portion or section 

that is situated to one side with reference to a center [of 

the counterweight].” Reply to Office Action of May 12, 

2006, at 4 (June 6, 2006). Describing the “eccentric 

weight portion” according to its placement in relation to 

the center of the counterweight is entirely consistent with 

the construction of the district courts as structure extending from the gear portion. 

* * * 

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.” 
16 AMERICAN PILEDRIVING v. GEOQUIP

Based on the foregoing, this court agrees with the 

construction of the term “eccentric weight portion” made 

by the District Court for the Eastern District of Virginia: 

“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” 

The term “integral” appears in independent claims 1, 

6, and 11 but not in independent claim 16. Each district 

court construed “integral” to mean “formed or cast of one 

piece.” American Piledriving argues that this construction improperly deviates from the plain and ordinary 

meaning of “integral.” It contends that to the extent this 

construction is based on a supposed prosecution disclaimer, nothing in the prosecution history demonstrates 

the necessary clear and unmistakable disavowal of claim 

scope. Moreover, American Piledriving asserts that the 

construction creates an irreconcilable conflict between 

claims 16 and 19. 

The Defendants contend that rather than presenting 

a supposed “irreconcilable conflict,” claims 16 and 19 

provide strong evidence in support of the construction 

reached by the district courts. Moreover, they contend 

that American Piledriving limited the term to “formed or 

cast as one-piece” during reexamination. 

This court agrees with the Defendants. We focus our 

analysis on the evidence relied upon by the parties: the 

claims and the prosecution history. 
AMERICAN PILEDRIVING v. GEOQUIP 17

i. Claims 

As noted by both district courts, independent claim 16 

recites in relevant part “an eccentric weight portion 

connected to said cylindrical gear portion.” ’964 Patent 

col.11 ll.13-16 (emphasis added). By contrast, claim 19, 

which depends directly from claim 16, recites “said eccentric weight portion is integral with said cylindrical gear 

portion.” Id. col.11 ll.30-32 (emphasis added). Each court 

construed the term “connected to” in claim 16 to mean 

“joined together, united, or linked” and neither party 

disputes this construction on appeal. Relying on the 

doctrine of claim differentiation, each court reasoned that 

the term “integral” must be narrower than “connected to” 

and must therefore refer to a single-piece counterweight. 

American Piledriving disagrees. It contends that because claim 16 encompasses a two-piece counterweight, 

claim 19 must also encompass a two-piece counterweight. 

In light of this, American Piledriving argues that “integral” cannot mean “formed or cast of one piece” as construed by the district courts because that would require 

the counterweight described in claim 19 to be both “two 

piece” and “one piece” at the same time. 

This argument is without merit. Claim 16 encompasses “united,” one-piece counterweights as well as 

counterweights consisting of two pieces that are “joined 

together.” It does not follow that because claim 16 encompasses two-piece counterweights its dependent claims 

must also be broad enough to encompass such counterweights. Indeed, where, as here, the claims describe the 

same relationship using different terms, the assumption 

is that the term in the dependent claim has a narrower 

scope. See 35 U.S.C. § 112, ¶ 4 (“Subject to the following 

paragraph, a claim in dependent form shall contain a 

reference to a claim previously set forth and then specify 

a further limitation of the subject matter claimed.”); 
18 AMERICAN PILEDRIVING v. GEOQUIP

Comark Comm’ns, Inc. v. Harris Corp., 156 F.3d 1182, 

1187 (Fed. Cir. 1998) (“There is presumed to be a difference in meaning and scope when different words or 

phrases are used in separate claims. To the extent that 

the absence of such difference in meaning and scope 

would make a claim superfluous, the doctrine of claim 

differentiation states the presumption that the difference 

between claims is significant.”). American Piledriving has 

not pointed to anything in the record that suggests this 

presumption is not applicable here. Given the undisputed 

construction of “connected to,” this court agrees with both 

district courts that claims 16 and 19 inform that “integral” as used in independent claims 1, 6, and 11 means 

“formed or cast of one piece.” See Phillips, 415 F.3d at 

1314 (“[T]he usage of [the] term in one claim can often 

illuminate the meaning of the same term in other 

claims.”). 

ii. Prosecution History 

The prosecution history removes all doubt that one of 

ordinary skill in the art would have understood the term 

“integral” to mean “formed or cast of one piece.” During 

reexamination, American Piledriving attempted to distinguish a prior art reference by arguing this very point: 

 Claim 1, 6, and 11 are further distinguished 

. . . because such claims further recite that the eccentric weight portion be “integral with said cylindrical gear portion” . . . . In other words, the 

claims recite that the counterweight has a “cylindrical gear portion and an eccentric weight portion” and that these two components are 

“integral”—i.e., they are simply components of the 

“one-piece” counterweight. 
AMERICAN PILEDRIVING v. GEOQUIP 19

Reply to Office Action of May 12, 2006, at 6 (June 6, 2006) 

(emphasis added). American Piledriving nevertheless 

argues that it did not clearly and unmistakably disavow 

the construction of “integral” it urges on appeal. It points 

out that it did not amend its claims and made multiple 

arguments to overcome the asserted prior art reference. 

American Piledriving contends that the statement was 

unnecessary to overcome the reference and that the 

examiner explicitly disagreed with it. 

“[W]e have made clear . . . [that] an applicant’s argument that a prior art reference is distinguishable on a 

particular ground can serve as a disclaimer of claim scope 

even if the applicant distinguishes the reference on other 

grounds as well.” Andersen Corp. v. Fiber Composites, 

LLC, 474 F.3d 1361, 1374 (Fed. Cir. 2007). Moreover, 

regardless of whether the examiner agreed with American 

Piledriving’s arguments concerning “integral,” its statements still inform the proper construction of the term. 

See Seachange Int’l, Inc. v. C-Cor Inc., 413 F.3d 1361, 

1374 (Fed. Cir. 2005) (“An applicant’s argument made 

during prosecution may lead to a disavowal of claim scope 

even if the Examiner did not rely on the argument.”); 

Microsoft Corp. v. Multi-Tech Sys., 357 F.3d 1340, 1350 

(Fed. Cir. 2004) (“We have stated on numerous occasions 

that a patentee’s statements during prosecution, whether 

relied on by the examiner or not, are relevant to claim 

interpretation.”). American Piledriving unambiguously 

argued that “integral” meant “one-piece” during reexamination and cannot attempt to distance itself from the 

disavowal of broader claim scope. 

* * * 

Because the claims and the prosecution history establish that one of ordinary skill in the art at the time of the 

invention would have understood the term “integral” to 
20 AMERICAN PILEDRIVING v. GEOQUIP

mean “formed or cast of one piece,” this court concludes 

that neither district court erred in its construction of this 

term. 

3. “Insert-Receiving Area” 

The term “insert-receiving area” is found in independent claims 1, 6, 11, and 16. Each court construed this 

term as follows: 

Virginia California 

“A bore located, at 

least in part, within 

the eccentric weight 

portion that is 

shaped to hold 

securely a solid 

insert member.” 

“A bore formed in the eccentric 

weight portion of the counterweight, which extends fully 

through the gear portion and fully 

through the eccentric weight 

portion of the counterweight, 

capable of receiving a solid tungsten rod.” 

American Piledriving does not dispute the construction of 

“insert-receiving area” adopted by the Virginia court. It 

does, however, argue that the California court erred by 

requiring that the bore extend “fully through” both the 

“eccentric weight portion” and the “gear portion.” It again 

contends that the court improperly imported a limitation 

from the preferred embodiment into the claims. This 

court agrees. 

The claims recite that “said eccentric weight portion” 

has “at least one insert-receiving area formed therein.” 

See, e.g., ’964 Patent col.9 ll.39-43. Nothing in the independent claims requires or specifies that the insertreceiving area extend fully through either the eccentric 

weight or the gear portion. Although the specification 

states that “[t]he bottom portion of the counterweight is 

cast having insert receiving areas or bores substantially 
AMERICAN PILEDRIVING v. GEOQUIP 21

parallel to the center bore and extending fully through the 

gear portion and fully through the eccentric weight portion,” see id. col.5 ll.61-68, the intrinsic record is devoid of 

anything to suggest or indicate that the bore must always

extend fully through either portion. This court agrees 

with the observation of the Virginia court that the claims 

and the specification read together inform that the “insert-receiving area” has three key components: (1) it is 

shaped to receive an insert; (2) it is at least partially 

located in the “eccentric weight portion”; and (3) it may 

extend into the cylindrical gear. Accordingly, this court 

adopts the construction of “insert-receiving area” reached 

by the Virginia court: “A bore located, at least in part, 

within the eccentric weight portion that is shaped to hold 

securely a solid insert member.” 

* * * 

In summary, this court affirms the claim construction 

of the Virginia court in its entirety, and reverses the 

construction of the California court to the extent that it 

differs from the Virginia court’s construction. For convenience, the constructions that we adopt are set out in the 

following table: 

Term Construction 

“Eccentric 

Weight 

Portion” 

“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.” 

“Integral” “Formed or cast of one piece.” 

“InsertReceiving “A bore located, at least in part, within the 

eccentric weight portion that is shaped to 
22 AMERICAN PILEDRIVING v. GEOQUIP

Area” hold securely a solid insert member.” 

B. Infringement 

1. Model 250 and Model 500 Pile Drivers 

The Model 250 and Model 500 vibratory pile drivers 

each contain at least one set of “male” and “female” counterweights. As shown in Figure 4, the counterweights 

consist of a 360 pound “eccentric” bolted to either a male 

or female “gear,” respectively. 

Figure 4 

Both the male and female gears include a “blind 

hole”—a hole that does not extend completely through the 

component—that holds a tungsten insert, and the eccentrics contain multiple blind holes that are filled with 

molten lead. Although the male and female gears have 
AMERICAN PILEDRIVING v. GEOQUIP 23

the same thickness, the female gears include what American Piledriving characterizes as a protrusion or “ridge” in 

the form of the major flat surfaces that “extend axially” 

0.031 inch from the front and back surfaces of a peripheral portion of the gear. 

American Piledriving contends that the female gear 

alone infringes the asserted claims, even under the construction of the disputed claim terms this court adopted 

above. American Piledriving asserts that each female 

gear satisfies the “eccentric weight portion,” “integral,” 

and “insert-receiving area” limitations because: (1) each 

ridge is an eccentric weight portion that extends from a 

face of the gear; (2) each gear has an insert-receiving area 

in the form of a blind hole; and (3) the ridge and the gear 

are part of the same one-piece structure—that is, they are 

integral. American Piledriving illustrates this infringement theory as shown in Figure 5: 

Figure 5 
24 AMERICAN PILEDRIVING v. GEOQUIP

The Defendants contend that what American Piledriving calls ridges are nothing more than the faces of the 

gear, which have peripheral recesses cut from their front 

and back surfaces. Because the ridges do not extend from 

a face of the gear but are themselves faces of the gear, the 

Defendants argue that they cannot be considered “eccentric weight portions” as recited in the claims. 

American Piledriving’s contentions are the result of a 

distorted reading of the language of both the specification 

and the claims and do not withstand critical scrutiny. 

Because the outermost flat surfaces of the gear are its 

“faces,” what American Piledriving calls a protrusion 

cannot be the claimed “eccentric weight portion,” as it 

does not extend from a face of the gear. Since the only 

possible “eccentric weight portion” of the accused devices 

is the structure that is bolted to the gear, the devices lack 

“an eccentric weight portion integral with said cylindrical 

gear portion” as required by the claims. 

The accused devices also cannot be said to contain the 

“insert-receiving area” recited in claims 1 and 16, as the 

parties do not dispute that only the tungsten inserts can 

be considered a “solid insert member . . . [having] a melting point temperature of 328oC” and these inserts are 

contained wholly within the gear and not the “eccentric 

weight portion” as recited. 

For the reasons stated, this court affirms the grant of 

summary judgment by both the Virginia and California 

district courts of noninfringement of the asserted claims 

by the Model 250 and Model 500 vibratory pile drivers. 

2. Early Model 500 Pile Driver 

The Early Model 500 pile driver was asserted only in 

the California action. It differs from both the Model 250 
AMERICAN PILEDRIVING v. GEOQUIP 25

and Model 500 pile drivers in that it has tungsten inserts 

in both the gear and the eccentric: 

Figure 6 

Thus, while the Early Model 500, just as the Model 

500, fails to satisfy the “integral” limitation recited in 

claim 1, there can be no genuine issue of material fact 

that it satisfies all of the limitations recited in claim 16. 

Instead of requiring the cylindrical gear portion to be 

“integral” with the eccentric weight portion as recited in 

claim 1, claim 16 merely requires that the components be 

“connected to” one another, which encompasses the use of 

bolts. The device also satisfies the “insert-receiving area” 

limitation, as the “eccentric” unquestionably contains 

tungsten inserts. Because there is no dispute that the 

materials used to form the gear and the inserts of the 

Early Model 500 meet the steel and tungsten limitations 

of claims 17 and 18, the Early Model 500 infringes those 

claims as well. 
26 AMERICAN PILEDRIVING v. GEOQUIP

Defendants point to the ’946 Patent’s discussion of the 

shortcomings of “bolted counterweights” to argue that the 

patent disclaims devices like the Early Model 500. As 

shown in Figure 6, the Early Model 500 joins the eccentric 

weight portion and cylindrical gear portion with huck 

bolts. However, the specification only critiques “counterweights having a solid eccentric weight bolted to a portion 

of a cylindrical gear.” ’946 Patent, col.1 ll.39-45 (emphasis 

added). Any disclaimer of bolted counterweights in the 

’946 Patent does not extend to the Early Model 500, 

whose eccentric weight portion includes holes filled with 

tungsten inserts. 

* * * 

Because neither the Model 250 nor the Model 500 pile 

drivers infringe the asserted claims as construed by this 

court, we affirm the grant of summary judgment of noninfringement by the District Court for the Eastern District 

of Virginia. This court likewise affirms the grant of 

summary judgment by the District Court for the Northern 

District of California as to noninfringement of the asserted claims by the Model 250 and Model 500 pile drivers 

but reverses the grant of summary judgment and denial 

of American Piledriving’s motion for summary judgment 

of infringement as to claims 16-18 by the Early Model 500 

pile driver. The California action is therefore affirmed in 

part, reversed in part, and remanded. 

III. CONCLUSION

For the foregoing reasons, this court agrees with the 

claim constructions of the District Court for the Eastern 

District of Virginia and modifies the claim constructions 

of the District Court for the Northern District of California. This court affirms the judgment of the District Court 

for the Eastern District of Virginia and affirms in part, 
AMERICAN PILEDRIVING v. GEOQUIP 27

reverses in part, and remands the judgment of the District Court for the Northern District of California. 

AFFIRMED IN PART, REVERSED IN PART, AND

REMANDED 

COSTS 

 Each party shall bear its own costs.