“Imaginary slice” does not provide a valid basis for infringement

Neville v Foundation Constructors


Steve Neville et al. (“Neville”) are the assignees of US Patent Nos 7914236 and 9284708 directed to foundation piles.  The claimed foundation piles include an “end plate having a substantially flat surface disposed perpendicular to the centerline of the tubular pile,” or, “an end plate closing the second end of the tapered portion and at least one protrusion extending outwardly from the end plate.”  The end plate is said to function to minimize disturbance to the soil surround the pile such that the surrounding soil is packed more tightly, providing a more solid support for the pile.  This function, in turn, is said to allow the pile to support greater loads.

Neville et al. sued Foundation Constructors et al. (“Foundation”) for infringement of certain claims of the ‘236 and ‘708 patents.  The District Court granted Foundation’s summary judgment motion for noninfringement, and Neville et al appealed.

FIG. 1 of the ‘236 patent is shown below, wherein reference numeral 19 is the recited end plate, and reference numeral 17 refers to the “at least one protrusion.”  The allegedly infringing product is shown alongside, as marked by Neville et al’s expert to show the portions alleged to meet the end plate and protrusion recitations.

“End plate having a substantially flat surface”

The Federal Circuit agreed with the district court that the substantially flat surface as recited in Neville et als claims did not encompass an interior facing surface.  While I would have focused on the word “surface” as necessitating the conclusion that the substantially flat surface is necessarily external, the Federal Circuit instead relied on the word “end”:

As suggested by the word “end,” the relevant surface of the end plate is the external one at the second end of the pile tip.

The Court noted that this interpretation was supported by the benefit of the pile taught by the specification – that by virtue of the “substantially flat” end plate contacting the soil, soil disruption is minimized.  And, the Court stated, Neville et al failed to point to any portion of the specification that taught or suggested that any interior portion of the end plate serves any purpose.

The Court was unimpressed with Neville’s argument that the specification taught that the foundation pile “could be cast as a single unit:”

…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 [Neville et als] infringement theory would permit [them] to point to an imaginary slice of a solid cast pile tip as the claimed “end plate having a substantially flat surface.

The prosecution history was also not in Neville’s favor as it showed that the end plate limitation had been added to differentiate from prior art disclosing a “substantially conically shaped pile tip.”

“At least one protrusion extending outwardly from the end plate”

Nor did Neville et al prevail with respect to claims reciting at least one protrusion extending from the end plate:

We agree with the district court that the plain meaning of the claim, which requires that the “protrusion is “extending outwardly” from the end plate, does not extend to a structure in which the alleged end plate is an indistinguishable part of the alleged “protrusion”; an object cannot protrude from itself.

Citing this little gem – Becton Dickinson & Co. v. Tyco Healthcare Grp., LP, 616 F.3d 1249, 1255 (Fed. Cir. 2010) for the proposition that “A claim construction that renders asserted claims facially nonsensical cannot be correct.”