United States Court of Appeals for the Federal Circuit 

2007-1391 

SOLOMON TECHNOLOGIES, INC., 

Appellant, 

v. 

INTERNATIONAL TRADE COMMISSION, 

Appellee, 

and 

TOYOTA MOTOR CORPORATION, TOYOTA MOTOR SALES, U.S.A., INC., TOYOTA 

MOTOR ENGINEERING AND MANUFACTURING NORTH AMERICA, INC., and 

TOYOTA MOTOR MANUFACTURING KENTUCKY, INC., 

 Intervenors. 

Kenneth L. Stein, Jenner & Block LLP, of New York, New York, argued for appellant. 

With him on the brief were Joseph Diamante and Richard H. An. 

Clint A. Gerdine, Attorney, Office of the General Counsel, United States International 

Trade Commission, of Washington, DC, argued for appellee. With him on the brief were 

James M. Lyons, General Counsel, and Andrea C. Casson, Assistant General Counsel. 

Donald R. Dunner, Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P., of 

Washington, DC, argued for intervenors. With him on the brief were Thomas W. Winland, 

Christine Lehman, James R. Barney, and Hayley S. Weimer. 

Appealed from: United States International Trade Commission 
United States Court of Appeals for the Federal Circuit

2007-1391

SOLOMON TECHNOLOGIES, INC., 

Appellant, 

v. 

INTERNATIONAL TRADE COMMISSION, 

Appellee, 

and 

TOYOTA MOTOR CORPORATION, TOYOTA MOTOR SALES, U.S.A., INC., TOYOTA 

MOTOR ENGINEERING AND MANUFACTURING NORTH AMERICA, INC., and 

TOYOTA MOTOR MANUFACTURING KENTUCKY, INC., 

 Intervenors. 

On appeal from the United States International Trade Commission 

in Investigation No. 337-TA-561 

___________________________ 

DECIDED: May 7, 2008 

___________________________ 

Before LOURIE, RADER, and BRYSON, Circuit Judges. 

BRYSON, Circuit Judge. 

Solomon Technologies, Inc., filed a complaint with the International Trade 

Commission under section 337 of the Tariff Act of 1930, 19 U.S.C. § 1337(a)(1)(B), 

alleging that Toyota Motor Corporation and its affiliates imported and sold hybrid 

vehicles that infringed U.S. Patent No. 5,067,932 (the ’932 patent). Following an 
2007-1391 2 

investigation, the presiding administrative law judge found no violation of section 337. 

The administrative law judge based that ruling on his determinations that (1) the 

accused devices do not infringe the ’932 patent, (2) the ’932 patent is invalid for lack of 

enablement, and (3) the domestic industry requirement was not established. The 

Commission reviewed in part the administrative law judge’s initial determination and 

took no position on the administrative law judge’s findings concerning the economic 

prong of the statutory domestic industry requirement. In all other respects, the 

Commission declined to review the administrative law judge’s initial determination. The 

administrative law judge’s initial determination therefore became the final determination 

of the Commission with respect to the administrative law judge’s rulings on 

infringement, invalidity, and the technical prong of the domestic industry requirement. 

Accordingly, the Commission terminated the investigation with a finding of no violation 

of section 337 and refused to enter an order excluding Toyota’s products. On 

Solomon’s appeal, we affirm the Commission’s final determination on the basis of 

noninfringement. 

I 

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.” ’932 patent, Abstract. 

The only claim at issue in this appeal is claim 7, which recites: 

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 
2007-1391 3 

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[.] 

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 motorgenerators 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. 
2007-1391 4 

II 

With respect to the Commission’s determination of noninfringement, Solomon 

challenges the administrative law judge’s constructions of the three claim terms on 

which the administrative judge based his noninfringement ruling: “continuously variable,” 

“integral combination,” and “within an envelope.” Solomon concedes that, under the 

administrative law judge’s construction of each of those terms, the Toyota transaxles do 

not infringe claim 7. 

As to the “power conversion means” limitation, Solomon argues that the 

administrative law judge applied an impermissible element-by-element analysis to 

determine whether the Toyota transaxles use a power conversion means that is 

equivalent to the structure disclosed in the ’932 patent. We affirm the administrative law 

judge’s determination of noninfringement with respect to each of the designated 

limitations, except for the “continuously variable” limitation, which we do not address. 

A 

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 
2007-1391 5 

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. To overcome an 

anticipation rejection over U.S. Patent No. 3,161,083 to Roe, the patentee stated the 

following: 

Secondly and more importantly, this prior art does not at all teach or in any 

way suggest the feature of the present invention as recited in claims 1 and 

2 [issued claim 7], or in claim 3/2, of the “integral” combination of each 

armature and respective gear element. Namely, in this prior art there are 

shafts and bearings and other elements such as one of the electric motors 

itself, between each respective pair of these two elements. 

Solomon’s central argument against a finding of prosecution disclaimer is that the 

patentee amended the claims in two ways to capture the “integral combination” feature 

of the invention. In claim 1, the patentee explicitly added a requirement that no shafts 

or bearings lie between the motor and transmission elements. In issued claim 7 

(application claim 2), however, the patentee added a requirement that the motor and 

transmission elements be “at least to a large [extent] within an envelope containing the 

other.” Solomon argues that the amendment to issued claim 7 sought to distinguish 

over the prior art in a different way from the amendment to claim 1. That is, the 

amendment to issued claim 7 sought to distinguish prior art structures having freestanding motors connected to transmission elements located outside the motor. Based 

on that characterization of the prosecution history, Solomon asserts that the “no shafts” 
2007-1391 6 

 

requirement of claim 1 should not be read into the “integral combination” limitation of 

claim 7. 

We find Solomon’s characterization of the effect of the amendment unconvincing 

because, in his description of the “within an envelope” requirement, the patentee 

emphasized the absence of a shaft between the motor and transmission elements: 

One aspect, now recited in claim 3, is that the respective gear element of 

each respective “integral combination” is approximately within envelope 

[sic] of the respective electrical motor element, as is seen for each 

illustrated embodiment. Again, there is no shaft running through the 

armature—just one support bearing for each integral combination of an 

electric motor element and a mechanical gear element. The power is 

taken off from inside the armature itself. In all the cited prior art devices, 

the power is taken out by a driven shaft from a free-standing electric 

motor.1

Solomon further asserts that a construction incorporating the patentee’s 

disclaimer of the use of shafts would exclude the preferred embodiment shown in Figure 

5 of the ’932 patent. Figure 5 shows a sun gear extension element connected to a 

rotating disk that is driven by the invention’s motor element. Solomon argues that the 

sun gear extension is a shaft that connects the rotating disk carrying the armature 

elements (the motor elements) to the planetary gear set (the transmission unit). 

We agree with the administrative law judge that the better view is that, in light of 

the patentee’s statements to overcome the Roe patent, the patentee understood the 

sun gear extension to be an element of the transmission unit. We therefore affirm the 

administrative law judge’s finding that devices such as the Toyota transaxles were 

1

 Application claim 3 became issued claim 8, which depends from claim 7. 

Claim 8 further specifies that the “envelope” is formed by the rotation of the motor 

element. Presumably claim 7 would also cover devices in which the transmission 

element rotates and forms an “envelope.” 
2007-1391 7 

disclaimed because of their use of rotor shafts between the motor-generators and the 

transmission unit. 

The administrative law judge also found that the patentee disclaimed coverage of 

devices having “other components” between the motor and transmission elements. The 

accused devices have spline connections between the rotors and the transmission 

elements, which the administrative law judge considered to be “other components.” We 

do not agree that the phrase “other components” provides a sufficiently clear basis for a 

finding of prosecution disclaimer. 

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. In fact, when 

the patentee sought to limit the number of bearings used to support the integral 

combination, the patentee specified that “each said integral combination is supported by 

a single respective bearing.” ’932 patent, claim 20, col. 13, ll. 42-48. We therefore do 

not agree that the patentee disclaimed multiple bearings by describing the invention as 

being “supportable” by a single bearing. Nevertheless, we conclude that the presence 

of the rotor shaft supports the administrative law judge’s determination that the accused 

devices do not have an “integral combination” of a motor element and transmission unit. 

B 

The administrative law judge 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. 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.” 

Figure 3 of the patent, reproduced below, shows how the disclosed invention would 

satisfy that requirement. In operation, a series of field elements (21) repels a series of 

armature elements (22) arranged along the perimeter of a rotating disk (23). As the disk 

rotates, the armature elements form an imaginary cylinder in which the transmission 

gear (24) would lie to a large extent. 

Solomon argues that the administrative law judge’s construction is too narrow. 

Instead, Solomon suggests that the construction should merely require the armature 

elements and the transmission gears to have a “close geometrical overlap.” Solomon’s 

main contention on this issue is that the administrative law judge’s construction would 

exclude the preferred embodiment displayed in Figure 6, reproduced below. 

2007-1391 8 
Figure 6 shows the combination motor and transmission device with heavy 

cylindrical peripheral masses (28 and 38) acting as flywheels. The transmission 

elements in Figure 6 are the ring gear (36) and the planetary gear hub (26). Neither of 

those elements would lie within the sweep of the armature elements (22) because 

Figure 6 shows the armature elements fixed to the side of the rotating disk rather than 

on the outer perimeter. The parties dispute, however, whether the patentee was 

referring to Figure 6 when he stated during prosecution that “the respective gear 

element of each respective ‘integral combination’ is approximately within envelope [sic] 

of the respective electrical motor element, as is seen for each illustrated embodiment.” 

Toyota argues that the patentee had generally treated Figure 6 separately from the 

other preferred embodiments. That is seen in the specification, Toyota asserts, 

because the written description makes reference to the “integral combination” limitation 

only in the descriptions of Figures 3 through 5. Solomon asserts, however, that the 

2007-1391 9 
2007-1391 10 

patentee clearly intended Figure 6 to fall within the scope of claim 7 because claim 13 

covers devices using flywheels, and because that claim depends from claim 7. 

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. Rather, it seems that the flywheel 

masses (28 and 38) can be considered to be the motor elements that define the 

envelope, so that the transmission elements (26 and 36) lie to a large extent within 

imaginary space defined by the rotation of each flywheel mass. Indeed, the 

specification’s description of Figure 6 characterizes the flywheel masses as components 

of the two inputs, along with the other motor elements: 

The input 2 includes the field assembly units 21 distributed about the 

inside of the half 15 of the housing, and the armature units 22 located on 

the top side of the disk 23 (shown edgewise) which has a heavy cylindrical 

28 for increasing the moment of rotational inertia. Input 3 has similar 

components. 

’932 patent, col. 9, ll. 35-43. 

To be sure, in the embodiment depicted in Figure 6, power is taken off the 

flywheel rather than off “from inside the armature itself,” as was required by the 

administrative law judge’s construction of the “within the envelope” limitation. The 

administrative law judge’s construction may be unduly restrictive in that respect, as it is 

based on language from the prosecution history that appears to describe the operation 

of a device modeled on Figures 3 through 5. The pertinent claim language, however, 

does not require that power be taken off from inside the armature in all cases. Rather, 

as claim 13 illustrates, it permits power to be stored (and supplied when needed) by the 

flywheel. While the administrative law judge should have omitted the words “so that the 

power is taken off from inside the armature itself” from the construction of the “within an 
2007-1391 11 

envelope” limitation, that aspect of the construction does not affect our conclusion as to 

noninfringement because Toyota has shown that its devices have transmission gears 

outside the imaginary space defined by the motors’ magnet assemblies. We thus do 

not find that the administrative law judge erred in his construction in any respect that 

affects the issue of infringement. 

Solomon’s competing construction—that the “envelope” requires a “close 

geometrical overlap” among the components—provides little meaningful guidance for 

determining the boundaries of the claimed “envelope.” The administrative law judge 

therefore did not err in rejecting Solomon’s construction. 

C 

Solomon next challenges the administrative law judge’s finding that the accused 

devices do not satisfy the power conversion means. 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). Solomon argues that the disk does not play a central role in the power 
2007-1391 12 

conversion means, but we disagree. To overcome the examiner’s rejection over the 

Roe patent, the patentee described the importance of the disk’s role in reference to the 

“integral combination” limitation: 

The power transfer is directly from the back side or inside of the armature 

to the gear element, not along any shaft connecting the two, and the 

output is direct to the driving wheel or hub, again with no substantial 

shafting in comparison to that of the prior art. 

Every embodiment of the invention disclosed by the patent shows the disk 

connecting the armature to a gear element. That configuration allows a direct power 

transfer from the armature to the gear element in order to generate the rotational 

mechanical power output of the power conversion means. 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. 

D 

Finally, the administrative law judge found that Toyota’s transaxles do not 

provide rotational output speed that is “continuously variable.” To understand the 

parties’ disagreement on this issue, it is important to understand that there are two ways 

that a motor and transmission, working together, can vary the rotational speed of a 

wheel being driven. First, the rotational speed of a wheel may be increased simply by 

increasing the operating speed of the motor. Increasing rotational speed in that manner 

does not require a transmission or gear reduction of any kind; the rotational output 

speed of the wheel being driven simply matches the rotational speed of the motor. The 
2007-1391 13 

second way that a motor and transmission can vary the output speed of a wheel being 

driven is by changing gears. When the motor is driven at a constant speed, the 

transmission can increase or decrease the output speed by engaging either a high gear 

or a low gear. 

Most transmissions provide a limited number of gears. Those transmissions 

therefore provide a limited number of gear ratios to vary the output speed and torque at 

any given speed at which the motor is operating. ’932 patent, col. 1, ll. 35-42. Infinite 

speed devices, also known as continuously variable devices, provide an advantage over 

conventional transmissions, in that they provide an infinite number of gear ratios. That 

means that at any given motor speed a continuously variable transmission allows a 

wheel to be driven at a continuous range of different rotational speeds. 

The ’932 patent describes the advantage of an infinite speed device as permitting 

a wheel to be driven over a large range of speeds while the motor is driven at “peak 

power.” The written description of the patent explains that above a certain speed the 

power output of a motor will plateau. ’932 patent, col. 7, line 53 to col. 8, line 3. That 

plateau is the peak power output of the motor. When the motor runs at the minimum 

speed necessary to reach that plateau, the power output of the motor will no longer 

increase. Above that maximum speed of the peak power plateau, the power output will 

begin to decrease. The range of speeds at which a motor operates in its peak power 

plateau is generally narrower than the range of desirable output speeds. A continuously 

variable transmission allows the motor to operate in its narrow peak power range while 

driving a wheel at a larger, continuous range of rotational speeds. 
2007-1391 14 

The language of claim 7 does not quite capture that feature of a continuously 

variable transmission. It states that the “power conversion means” provides “an output 

for outputting the converted power as rotational mechanical power” and that “the 

rotational speed of said output is continuously variable.” Solomon argues that 

“continuously variable” in claim 7 merely means that a device can drive a wheel at “a 

continuous variation in speed from a negative maximum value to a positive maximum 

value.” In other words, Solomon argues that “continuously variable” merely refers to a 

transmission that can achieve a continuous range of output speeds as opposed to a 

transmission that only provides a discrete set of output speeds. Solomon’s construction 

is problematical because even vehicles with manual transmissions can operate at a 

continuous range of output speeds by varying the speed of the motor. Although a 

manual transmission provides a discrete set of gear ratios, 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. 

The administrative law judge was therefore correct to reject that proposed construction 

of the term “continuously variable.” 

Toyota’s construction, on the other hand, is overly narrow. Toyota argues that 

the “continuously variable” limitation covers only those devices that can attain “any 

desired rotational speed, from a negative maximum value to a positive maximum 

rotational value . . . at peak power.” The administrative law judge adopted that view and 

found that Toyota’s devices do not infringe because the two motor-generators used in 

Toyota’s transaxles do not operate at peak power when both are operating as motors. 

Claim 7, however, does not require the first power input means and the second power 
2007-1391 15 

 

input means to provide peak power. The claim merely requires the power input means 

to provide electrical power to the power conversion means, which in turn converts the 

electrical power to mechanical power. At whatever level of power the motor operates, a 

continuous range of speeds should be attainable. The claim does not, however, specify 

a level of power that must be provided. 

Because we disagree with the administrative law judge’s construction of the 

“continuously variable” limitation, we do not uphold the finding of noninfringement on 

that basis. Nonetheless, we affirm the administrative law judge’s finding of 

noninfringement based on each of the other limitations addressed in this appeal. We 

therefore affirm the final determination without resolving the dispute over the 

“continuously variable” limitation.2

IV 

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 

2

 The administrative law judge also found that the patentee disclaimed devices 

having an “intervening gear reduction” and construed “continuously variable” to reflect 

that disclaimer. That finding of disclaimer was based on the patentee’s statement that 

“the present invention teaches providing a truly infinite speed transmission . . . with no 

intervening gear reduction to the surface.” The Highlander HV transaxles have a 

reduction gear between one of the motor-generators and the transmission unit. The 

administrative law judge therefore ruled that those transaxles do not meet the 

“continuously variable” limitation. Because including a “no intervening gear reduction” 

requirement would exclude the preferred embodiment in Figure 6, that construction is 

questionable, and we decline to affirm the final determination on that ground. 
2007-1391 16 

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 
2007-1391 17 

domestic industry requirement, because that determination was also based on the 

“continuously variable” limitation. 

AFFIRMED.