or how judges think of pile technology, or just to report on what
occurred. Here is the side-by-side, the patented Neville pile tip, and
the Foundation patent pile tip, at issue:
The language at issue was this in the Neville pile tip patent claim
language and patent application history. That claim language
required the pile tip to have an “end plate having a substantially
flat surface disposed perpendicular to the centerline of the tubular
pile.” The arguments centered around what was an “end plate”
and what was a “substantially flat surface” comprising an “end
plate.” Seemed simple enough. Flat is flat, right, not flat is not flat?
In our view, the patent holder Neville avoided the “flat” limitation
and veered to imagining a demarcation in a pile tip as if a “plate,”
even where none exists. Foundation contended, with success to
the trial court and court of appeal, that a conical shape was not a
“plate” and was not “substantially flat” – that an imaginary line “as
if ” a flat end plate would not cut it for an infringement claim. To
my rookie eyes, it was if the courts declared that a pancake is not
a snow cone – but I was a rookie. That in the end, words are not
“make believe” constructs but are rooted in stable meaning. Whew.
The actual court language rich in patent law history points out this
attempted twist by the plaintiff, seeking to imagine an interior “flat
plate” when the patent claim was all about an exterior flat plate:
“The specification reinforces the view that the invention is
directed to the exterior surface of the end plate as being ‘substantially
flat,’ through which the pile tip applies force to the underlying
soil. The specification is silent as to any interior surface of the
end plate…
…that the end plate and the remaining portions of the pile tip
could be cast as an integral unit emphasizes that the only relevant
surface of the end plate is the exterior-facing one. The claimed
surface cannot be an imaginary one, yet Substructure’s infringement
theory would permit Substructure to point to an imaginary
slice of a solid cast pile tip as the claimed ‘end plate having a substantially
flat surface.’ Under Substructure’s logic, that same pile
tip would simultaneously infringe claims reciting an end plate
with a curved surface, simply because one could imagine an interior
curved surface within the solid material of the pile tip.
The prosecution history likewise confirms that the substantially
flat surface of the end plate does not refer to some arbitrary interior
surface. The end plate limitation was added during prosecution
of the ’236 patent to overcome rejections based on U.S. Patent
Publication No. 2004/0076479 (Camilleri) and Japanese Patent
No. 5- 106223 (JP ’223). J.A. 432–34. The patent examiner had
determined that both Camilleri and JP ’223 disclosed ‘a substantially
conically shaped pile tip.’ J.A. 422. As the applicant explained,
the amendment was in response to the examiner’s ‘suggestion
that a limitation including an end plate extending perpendicularly
to the longitudinal axis of the pile would potentially overcome
the prior art of record.’ J.A. at 432. The applicant’s explanation of
the mutual understanding reached with the patent examiner reinforces
that the introduction of the end plate, with its substantially
flat surface, was intended to distinguish the ‘substantially conically
shaped pile tip(s)’ of the prior art. Imagine an interior curved
surface within the solid material of the pile tip.”
What does this mean? I suppose that one cannot imagine
surfaces and argue that exterior, flat plate surfaces can become
“imaginary, interior surfaces” – that “innees” are not “outtees” in
bellybutton speak. I thought arguing that “curved” and “conical”
tip without any flat plate was enough. But I learned that the patent
claim vocabulary demanded more. And, the client – not me,
the client – won, and won for good reason: each of these pile tips
is different.
Lesson learned – patent law is specialized, and the claim term
“substantially flat plate” is not like C.S. Lewis’s Mad Hatter: “Words
mean what I want them to mean, nothing more, nothing less.”
Words matter – they have real meaning. That was my takeaway
from the hard-fought Neville v. Foundation Constructors (8.27.2020,
Fed. Cir.) 2020-1132.
Final notes on Neville v. Foundation
Am I hanging up my patent law boots? I hope not. I learned a lot,
and it was nice to be on the winning side. Most importantly, it is
a reminder – inventions are sometimes old things re-imagined to
new applications, and sometimes, wholly new things with shared
history in a niche field, like deep foundation work. The ingenuity in
this field continues. t
CONSTRUCTION LAW
The patent diagram (left)
and the FCI ED3 Tip (right)
To my rookie eyes, it was
as if the courts declared
that a pancake is not a
snow cone – but I was a
rookie. That in the end,
words are not “make
believe” constructs but are
rooted in stable meaning.
Point
shaft
End
plate
100 | ISSUE 1 2021 www.piledrivers.org
/www.piledrivers.org
