Solomon Technologies v. The International Trade Commission (ITC) (CAFC 07-1391)

Claim 7 was the only asserted claim.

The '932 patent covers a combination motor and transmission device having two power inputs. The patent describes the invention as "an ideal infinite speed device" that can deliver peak power output "at any desired rotational speed."

Solomon's complaint alleged that four of Toyota's hybrid vehicles have transaxles that infringe claim 7: the Toyota Prius, Toyota Highlander HV, Toyota Camry HV, and Lexus RX 400h. The Toyota Prius uses a transaxle that connects two electric motor-generators with a planetary gear set in which the planetary gear carrier is driven by an internal combustion engine. The Toyota Highlander HV, Toyota Camry HV, and Lexus RX 400h use a similar system that has an additional planetary gear set. After a hearing, the administrative law judge construed the claim terms "continuously variable," "integral combination," and "within an envelope." Based on his construction of each of those terms, the administrative law judge found that Toyota's devices do not infringe claim 7. Additionally, he found that Toyota's transaxles lack a "power conversion means" that is identical or equivalent to the structure disclosed in the specification of the '932 patent. Finally, under his construction of the term "continuously variable," the administrative law judge ruled that claim 7 of the '932 patent was not enabled and that Solomon did not satisfy the technical prong of the statutory "domestic industry" requirement.

Solomon's appeal distilled to claim construction over "integral combination," "within an envelope," "power conversion," and "continuously variable."

"integral combination"

Claim 7 covers devices that have an "integral combination of a respective electric motor element and an element of said transmission unit." The administrative law judge construed that limitation as follows:

[A]n electric motor element and a transmission unit element rigidly and directly attached without the presence of shafts, bearings or other components between the electric motor element and the transmission unit element, supportable by a single bearing.

Solomon concedes that the Toyota transaxles do not satisfy that limitation as construed because they contain rotor shafts between the motor-generators and the transmission unit, and because the rotor shafts are not supported by a single bearing. Solomon argues that the patentee did not disclaim devices having shafts, bearings, or other components between the motor and transmission elements, and that the patentee did not disclaim devices using more than a single bearing to support the integral combination of the motor and transmission elements. We reject Solomon's contention with respect to the disclaimer of devices having shafts.

The prosecution history could not be clearer in showing a disclaimer of devices that use shafts to connect the motor and transmission elements. [T]he patentee emphasized the absence of a shaft between the motor and transmission elements.

[D]evices such as the Toyota transaxles were disclaimed because of their use of rotor shafts between the motor-generators and the transmission unit.

The CAFC continues its tradition of being unable to count, though to no effect in the ruling.

The administrative law judge further found that the Toyota transaxles are not "supportable by a single bearing" because they are supported by two bearings. We do not believe that conclusion necessarily follows. A device could be "supportable" by one bearing even though it is actually supported by more than one bearing.

"within an envelope"

The administrative law judge construed the "within an envelope" limitation to mean that "one of the integral combination elements is contained entirely or nearly entirely within the imaginary space defined by the rotation of the other integral combination element so that power is taken off from inside the armature itself."

Solomon argues that the administrative law judge's construction is too narrow. Solomon's main contention on this issue is that the administrative law judge's construction would exclude the preferred embodiment displayed in Figure 6.

The CAFC found the ITC construction consistent with Figure 6.

Even if the patentee intended to refer to Figure 6 in his explanation of the "within an envelope" limitation, we do not believe that a proper construction of that limitation necessarily excludes the embodiment in Figure 6.

"power conversion"

The administrative law judge found a substantial difference in structure between the Toyota devices and the devices described in the specification of the '932 patent. The administrative law judge focused in particular on the Toyota transaxles' use of rotor shafts instead of disks to connect the motor elements to the transmission elements. Relying on Odetics, Inc. v. Storage Technology Corp., 185 F.3d 1259 (Fed. Cir. 1999), Solomon argues that the administrative law judge performed an impermissible component-by-component analysis in comparing the accused devices with the structure described in the specification. As the administrative law judge observed, however, our case law allows for greater weight to be given to individual components that play a central role in the identified structure. See Toro Co. v. Deere & Co., 355 F.3d 1313, 1324 (Fed. Cir. 2004).

During prosecution, the patentee had argued the power conversion aspect critical.

The prosecution history shows that the patentee relied on that advantage of a disk over a shaft in order to overcome the prior art. We therefore see no error in the administrative law judge's finding that, based on the use of rotor shafts rather than disks, the Toyota transaxles are not structurally equivalent to the structure disclosed in the specification of the '932 patent.

"continuously variable"

In a peculiar sloth, the CAFC intentionally neglected construing the "continuously variable" limitation, liking neither Toyota's (too narrow), nor Solomon's (too broad) construction of "continuously variable." The ITC administrative judge had adopted Toyota's construction. As the other claim constructions were dispositive, the CAFC could spare itself construing this term. That left enablement hanging.

Because we do not agree with either party's proposed construction of the "continuously variable" limitation, we do not address the administrative law judge's ruling that claim 7 is not enabled. Nonetheless, the Commission's final determination may be affirmed on the basis of noninfringement without the need to address the issue of invalidity. In district court cases in which invalidity is asserted as a counterclaim, the Supreme Court has held that the question of validity does not become moot when there has been a determination of noninfringement. For that reason, it is ordinarily necessary for the district court, and this court on appeal, to address the counterclaim even if noninfringement has been found. Cardinal Chem. Co. v. Morton Int'l, Inc., 508 U.S. 83, 96 (1993). Where invalidity is raised as an affirmative defense, however, it is not necessary for the reviewing court to address the validity issue. Id. at 93-94; Lacks Indus., Inc. v. McKechnie Vehicle Components USA, Inc., 322 F.3d 1335, 1346 (Fed. Cir. 2003); Hill-Rom Co. v. Kinetic Concepts, Inc., 209 F.3d 1337, 1344 (Fed. Cir. 2000).

Before the International Trade Commission, invalidity is not a separate claim, as it is when raised as a declaratory judgment claim in district court litigation. Instead, invalidity is simply one ground for determining that the importation and sale of allegedly infringing articles do not "infringe a valid and enforceable United States patent." 19 U.S.C. § 1337(a)(1)(B). The final determination that we review on an appeal in a section 337 proceeding before the International Trade Commission is a determination that section 337 has, or has not, been violated. If we uphold the Commission's order, as we do in this case, we are not required to address every possible ground on which the Commission's order might be sustained. See Sinorgchem Co., Shandong v. Int'l Trade Comm'n, 511 F.3d 1132, 1141 (Fed. Cir. 2007). For that reason, we may affirm the Commission's final determination on the basis of noninfringement without addressing the invalidity of claim 7. Accordingly, we decline to decide the enablement issue or remand the case to the Commission to determine whether claim 7 is enabled under a proper construction of the term "continuously variable." We likewise decline to address the Commission's determination with respect to the technical prong of the domestic industry requirement, because that determination was also based on the "continuously variable" limitation.

Affirmed.