Hybrid vehicle patent not infringed; invalidity issues need not be reached on appeal from ITCMay 12, 2008

In an appeal from the International Trade Commission, the Federal Circuit affirmed the Commission's determination of noninfringement of a patent. The court, however, did not consider the ITC's finding of nonenablement on appeal. While in the context of a district court case a counterclaim for invalidity is not mooted by a finding of noninfringement, the court held that because invalidity can only be raised at the ITC as an affirmative defense, the court was not required to consider the issue of indefiniteness on appeal once it had affirmed the finding of noninfringement. Accordingly, the court sidestepped the issue of enablement with regard to the asserted patent, instead affirming on the grounds of noninfringement alone.More concerning Solomon Techs., Inc. v. Int'l Trade Comm'n after the jump.Solomon Technologies owns a patent directed to technology used in hybrid vehicles. The patent describes the invention as "an ideal infinite speed device" that can deliver peak power output "at any desired rotational speed." The relevant claim is claim 7, which reads (emphases added):

A combination motor and transmission device, comprising: first power input means for receiving a first input of electrical power, second power input means for receiving a second input of electrical power, and power conversion means for converting said electrical power of said first and second inputs for output, said power conversion means including a mechanical power transmission unit, said transmission unit having two inputs for respectively receiving mechanical power corresponding to said first and second power inputs provided to said first and second power input means and an output for outputting the converted power as rotational mechanical power,

wherein the rotational speed of said output is continuously variable, sand [sic] said power conversion means includes, for each of said first and second power inputs, a respective integral combination of a respective electric motor element and an element of said transmission unit, each said integral combination involving one of said two respective elements thereof being at least to a large extend t [sic] within an envelope containing the other, whereby a compact structure is provided for each said integral combination, and said two integral combinations are located closely adjacent each other[.]

Toyota and its affiliates produce and import hybrid vehicles. Solomon filed a complaint with the ITC, seeking an order preventing importation of allegedly infringing vehicles. 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 ALJ determined there was no infringement, that claim 7 was invalid as not enabled, and that the "domestic industry" requirement for ITC actions under § 1337 was not met. Specifically, the ALJ construed the highlighted terms above, and found no infringement under its construction of those terms. The ALJ also found the claim was not enabled based on its construction of the "power conversion means" limitation, and that Solomon did not meet the "domestic industry" requirement for relief under § 1337. Solomon appealed.On appeal, Solomon conceded that, under the ALJ's constructions of the three claim terms "continuously variable," "integral combination," and "within an envelope," the Toyota transaxles did not infringe claim 7. With regard to the "power conversion means" limitation, Solomon argued that the administrative judge applied an impermissible element-by-element analysis to determine whether the Toyota transaxles used a power conversion means that was equivalent to the structure disclosed in the patent.With regard to the "integral combination" element, the court held that the prosecution history demonstrated a clear disclaimer of devices using shafts to connect the motor and transmission elements by virtue of its arguments made to overcome an anticipation rejection. More specifically, Solomon's amendment to issued claim 7 sought to distinguish prior art structures having free-standing motors connected to transmission elements located outside the motor. In light of this amendment, the court found prosecution disclaimer applied, and affirmed the ALJ's finding that devices such as the Toyota transaxles were disclaimed because of their use of rotor shafts between the motor-generators and the transmission unit.The ALJ also found that the Toyota devices did not satisfy the "within an envelope" limitation, apart from the presence of shafts between the motor and transmission elements. Solomon argued on appeal that the ALJ's construction was too narrow, and in fact would have excluded the patentee's preferred embodiment displayed in Figure 6 of the patent. The court disagreed, noting that a proper construction of the limitation did not necessarily exclude the embodiment in Figure 6. Regardless, the court held this aspect of construction did not affect its conclusion as to non-infringement because Toyota showed that its devices have transmission gears outside the imaginary space defined by the motors' magnet assemblies.Solomon next challenged the ALJ's finding that the accused devices did not satisfy the "power conversion means" limitation. The ALJ found a substantial difference in structure between the Toyota devices and the devices of the '932 patent, and specifically focused 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 argued that the ALJ performed an impermissible component-by-component analysis in comparing the accused devices with the structure described in the specification. The court disagreed, noting that every embodiment of the invention disclosed in the patent showed the disk connecting the armature to a gear element and that, during prosecution, the patentee relied on the advantage of that structure to overcome the prior art. Thus, the court found no error in the ALJ's finding that, based on the use of rotor shafts rather than disks, the Toyota transaxles were not structurally equivalent to the structure disclosed in the specification of the patent.Finally, Solomon disputed the ALJ's finding that Toyota's transaxles did not provide rotational output speed that was "continuously variable." Solomon argued that this term merely referred to a transmission that could achieve a continuous range of output speeds as opposed to a transmission that only provided a discrete set of output speeds. The court held that the ALJ correctly rejected this proposed construction, stating it would be physically impossible for a vehicle with a manual transmission to jump from one "discrete" speed to a second "discrete" speed without operating at any rotational speeds in between. While the court also rejected Toyota's overly narrow construction of the term, the court upheld the finding of noninfringement based upon the construction of the other limitations addressed in the appeal.Because the court did not agree with either party's proposed construction of the "continuously variable" limitation, the court did not address the ALJ's ruling that claim 7 was not enabled. The court noted that the ITC's final determination could be affirmed on the basis of noninfringement without the need to address the issue of invalidity, although the court noted that the issue of validity does not become moot when there has been a determination of noninfringement. Thus, while it is ordinarily necessary for a district court to address an invalidity counterclaim even if noninfringement has been found, such is not the case before the International Trade Commission whereby invalidity is not a separ

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