U.S. International Trade Commission

Publication 4130 March 2010

Washington, DC 20436

In the Matter of

Investigation No. 337-TA-561

Certain Combination Motor and 

Transmission Systems and Devices 

Used Therein, and Products 

Containing Same 
U.S. International Trade Commission

COMMISSIONERS 

Shara L. Aranoff, Chairman 

Daniel R. Pearson, Vice Chairman 

Deanna Tanner Okun 

Charlotte R. Lane 

Irving A. Williamson 

Dean A. Pinkert 

Address all communications to 

Secretary to the Commission 

United States International Trade Commission 

Washington, DC 20436
U.S. International Trade Commission

Washington, DC 20436 

www.usitc.gov

Publication 4130 March 2010

In the Matter of

Investigation No. 337-TA-561

Certain Combination Motor and 

Transmission Systems and Devices 

Used Therein, and Products 

Containing Same 

U);rrED STATES INl'ERNATIO);AL TItADE COMMISSION 

"" .... 1." • ., D.C. 2M]/; 

1 ..... M .... cof 

CEItT AIN CO.\IBllo!ATION MOTOR 

ANO TR,\NliM ISSIO;,; SVSTEMS AND 

DEVICES USEO TIlF.Rf!:fl'(, AND 

PRODUCTS CONTAlNING TIlF. SAM~ 

I.ve."",''''' No. .l37_T A-MI 

NOTICE O rCOM.\IISSION DECISIONTO Rf!:VIEW IN I'ART AND ON Rl:VlEWTO 

MODlI'Y A FI NAL INITIAl. DETJ:RMIN-'TlON FlNDli'<G NO VIOLATION OF 

SECTION l17 

ACTION: Notice. 

SUMMARV, l'>''''''' .. io b .... ,*" si_!hoI tl>c U.s. In\etnOIi.,...1 Tro<Ic eo.nnn .. ;o" .... 

d<taminc<I to re>i .... in pm ,be ...... idin& Idmini<traIj "" low J..tJ<'. r'A!J'1 initio] 

oktenninatioo ("11)"1 1' ... ,[;"11 no ..,_ ofSe<tioo ))7 on ... T.-iff A't of 19lO (19 U.S.C. 

f 1337)..;tb rq;IIId to tl>c obove-«pIionod invdtigation. On rcviow. tl>c ConuniooiOll bas 

delermined to toh no pOOitioll "" tl>c AIJ', findinp".n :: .. iol "'" """, .. ui< P""'i of .... 

cIomooIi< ~ reqyimncnt. AcooId •• the Commis&jOll .... tennimIed tl>c iDwotiptioo 

...;tb. r ...... oflo. riolt_ ofS<eti0fl1l7. 

n)K FURTIIER INFORMATION co:" ACJ: ChriDI A. SI>epponI. Eoq .• om .. oftl>c 

Gen<nI Co\mso~ u.s. Iot<mationol Tndo Comn>isoOt. 500 E S ....... S.W., WoohiJl#OD. D.C. 

204J.6 ... Iep_ (202) ~2)OI. Copi .. of~~_i" -"to ~Ied i. "".""""'" _ thi, mVdtiption ... or"';ll t>o _lob .. for irIopecti"" dwinll ofIi<iol ""'"'- houn (US 

.....,. to S: lS p.m.) in .... 0IfK>< of .... 50;'_1. U.S. lntmwiooal Tro<Ic CtJmmiJsion. SOl) E 

s ....... s.w .• w .... npn D.C. 2O'J.6. , .. 1",,_ (m) 2OS·2000. Gmonolillfonnolioll 

GO""",,,,", tbe CommWion mayolso be obtai ...... by O<C<IU",&;to lntem<I ........... 

hlw lt-.,.",wirr.g9!. Tho p.blk I'tC(ItI\ for thio in~ ~ be -,.;_ "'" til< 

Conmliooion', .!oorronio _ (EOIS) • ~rm-(lfiIM IIliOC gtll'. H"';ng.im~ ;~,_""._ odYioo:llhot _ "" Ihi& -"-'IID be obtainod bycontacli", tbe CommisDou·. TOO 

tonninal on (202) 2OS·lS]O. 

SUPPLEMENT,utY I/'iFORMATION: 

ThiI_iptioll ...... inttilulod on F.bnmy 7, 2006. based 011 • oompbiII1 filod by 

Solomon T .. bmlop,., In<:., ofTupJII ~ Florid.> (""Solomon;' Tho.:ompWnl. .. 

_ .. lop! violalionsofSectionJJ1 ofthoToriffAetofI9lO(19U.s.c. t 11l1) in .... 
importation into the United States, the sale for importation, and the sale within the United States 

after importation of certain combination motor and transmission systems and devices used 

therein, and products containing same by reason of infringement of claims 1-5,7, 8, 10, and 12 

of United States Patent No. 5,067,932 (“the ‘932 patent”). 71 Fed. Reg. 7574. Only claim 7 of 

the ‘932 patent was asserted against the respondents at the hearing. However, Solomon relied 

upon claim 1 of the patent-in-suit to meet the technical prong of the domestic industry 

requirement. The amended complaint named Toyota Motor Corporation of Japan; Toyota Motor 

Engineering & Manufacturing North America, Inc. of Erlanger, Kentucky; Toyota Motor 

Manufacturing Kentucky, Inc. of Georgetown, Kentucky; and Toyota Motor Sales, U.S.A., Inc., 

of Torrance, California as respondents. 

. On February 13,2007, the ALJ issued an ID finding.no violation of Section 337 with 

regard to respondents’ products because he found claim 7 to be invalid and not infringed. 

Moreover, he found no domestic industry involving the asserted patent. Complainants and the 

Office of Unfair Import Investigations (“OUII”) each filed petitions for review on February 26, 

2007. Respondents filed a joint reply on March 5,2007. Also on March 5,2007, OUII filed a 

response to Solomon’s petition for review and Solomon filed a response to OUII’s petition for 

review. 

Having considered the petitions for review, the oppositions thereto, and the relevant 

portions of the record, the Commission has determined to review the ID in part. On review, the 

Commission has determined to take no position on the ALJ’s findings concerning the economic 

prong of the domestic industry requirement. The remainder of the ID has become the 

Commission’s final determination. See 19 C.F.R. 2 10.42(h). 

This action is taken under the authority of section 337 of the Tariff Act of 1930, as 

amended, 19 U.S.C. 5 1337, and sections 210.42(c) and (h) of the Commission’s Rules of 

Practice and Procedure, 19 C.F.R. $3 210.42(c) and (h). 

By order of the Commission. 

Sece to the Commission 

Issued: April 30,2007 

2 
CERTAIN COMBINATION MOTOR AND TRANSMISSION 337-TA-561 

SYSTEMS AND DEVICES USED THEREIN, AND PRODUCTS 

CONTAINING SAME 

CERTIFICATE OF SERVICE 

I Marilyn R. Abbott, hereby certify that the attached NOTICE OF COMMISSION DECISION TO 

REVIEW IN PART AND ON REVIEW TO MODIFY A FINAL INITIAL DETERMINATION 

FINDING NO VIOLATION OF SECTION 337 has been served on upon the Commission 

Investigative attorney, Juan Cockburn, Esq., and all parties via first class mail and air mail where 

necessary on May 15,2006. 

kafilyn R. Abl&t, Secretary w 

U.S. International Trade Commission 

500 E Street, SW 

Washington, DC 20436 

ON BEHALF OF COMPLAINANT 

SOLOMON TECHNOLOGIES, INC.: 

A. Jason Mirabito, Esq. 

Dean G. Bostock, Esq. 

MINTZ, LEVIN, COHN, FERRIS, 

GLOVSKY AND POPEO, P.C. 

One Financial Center 

Boston, MA 02 1 1 1 

P-617-542-6000 

F-617-542-2241 

Louis S. Mastriani, Esq. 

Maureen F. Browne, Esq. 

ADDUCI, MASTRIANI & 

SCHAUMBERG LLP 

1200 Seventeenth Street, NW 

Washington, DC 20036 

P-202-467-6300 

F-202-466-2006 

ON BEHALF OF RESPONDENTS 

TOYOTA MOTOR CORPORATION, 

TOYOTA MOTOR ENGINEERING & 

MANUFACTURING NORTH 

AMERICA, INC. AND TOYOTA 

MOTOR MANUFACTURING 

KENTUCKY, INC., AND TOYOTA 

MOTOR SALES, U.S.A., INC.: 

Paul C. Goulet, Esq. 

James R. Barney, Esq. 

P. Andrew Riley, Esq. 

Hayley S. Weimer, Esq. 

FINNEGAN, HENDERSON, 

FARABOW, GARRETT & DUNNER 

LLP 

901 New York Avenue, NW 

Washington, DC 2000 1-44 13 

P-202-408-4000 

F-202-408-4400 

Thomas W. Winland, Esq. 

Christine E. Lehman, Esq. 

I'UBLlCVERSIOS 

UNIT'EO STATES INTERNATIONAL TllADE CO!MIISSION 

Woohlng1<Jn. D,C, 

, 

, 

CERTAIN COM8INATIO:-I MOTOR ) 

AND TRANSMISSION SYSnMS "NO ) 

DEVICES USED THEREIN. AND ) 

-''''QD''''''=''JOO''!!["'~''''''''''',,",'''L __ , 

1",~ 1'1<>. 337·TA·S61 

Fin" ' nilio! 'od Rtmmrrwh' !l!:tm!linMiw 

juriO<li<tion: that claim 1 in i ..... of U.S. p_ No. ~.oti1.9J2;' ...,. valid: "'" said """'" ;. 

oodanostic industry 11'1",,1";"* ,aid _t. Thu •• II< fig no violation of IecIion 331 of tI>o 

T"';ff Act of 1930 ........ .-. 

boudilll- punuan' 10 Cofnm;.uo. "" .. 210,36(0) ODd 21Il.4Uo)(l)(ii~ Iftl>o Conuni>oi<JoI find! 

.. ",",air oct tI>o odmini.troti~ low judgo ~ 'hI! the Commi&Aon i ...... limited 

.",Iuslo<> Otd<rdirecled '" infri~n, hytrid vdlicles and iniriopi hytrid oy>1ems 0IllJ&ht to be 

imponed by n:oporw;IenI$. He'_ ~ 1M ""y _ be in the """'"'" of $30.00 pa 

infrinpn, hybrid vdlicl .... infriDA h)'brid Oys!<In 0IllJ&ht to be i"'l""'<'<l Wri.C the 

Praidenliol ,.vi .... period. 
U);rrED STATES INl'ERNATIO);AL TItADE COMMISSION 

"" .... 1." • ., D.C. 2M]/; 

1 ..... M .... cof 

CEItT AIN CO.\IBllo!ATION MOTOR 

ANO TR,\NliM ISSIO;,; SVSTEMS AND 

DEVICES USEO TIlF.Rf!:fl'(, AND 

PRODUCTS CONTAlNING TIlF. SAM~ 

I.ve."",''''' No. .l37_T A-MI 

NOTICE O rCOM.\IISSION DECISIONTO Rf!:VIEW IN I'ART AND ON Rl:VlEWTO 

MODlI'Y A FI NAL INITIAl. DETJ:RMIN-'TlON FlNDli'<G NO VIOLATION OF 

SECTION l17 

ACTION: Notice. 

SUMMARV, l'>''''''' .. io b .... ,*" si_!hoI tl>c U.s. In\etnOIi.,...1 Tro<Ic eo.nnn .. ;o" .... 

d<taminc<I to re>i .... in pm ,be ...... idin& Idmini<traIj "" low J..tJ<'. r'A!J'1 initio] 

oktenninatioo ("11)"1 1' ... ,[;"11 no ..,_ ofSe<tioo ))7 on ... T.-iff A't of 19lO (19 U.S.C. 

f 1337)..;tb rq;IIId to tl>c obove-«pIionod invdtigation. On rcviow. tl>c ConuniooiOll bas 

delermined to toh no pOOitioll "" tl>c AIJ', findinp".n :: .. iol "'" """, .. ui< P""'i of .... 

cIomooIi< ~ reqyimncnt. AcooId •• the Commis&jOll .... tennimIed tl>c iDwotiptioo 

...;tb. r ...... oflo. riolt_ ofS<eti0fl1l7. 

n)K FURTIIER INFORMATION co:" ACJ: ChriDI A. SI>epponI. Eoq .• om .. oftl>c 

Gen<nI Co\mso~ u.s. Iot<mationol Tndo Comn>isoOt. 500 E S ....... S.W., WoohiJl#OD. D.C. 

204J.6 ... Iep_ (202) ~2)OI. Copi .. of~~_i" -"to ~Ied i. "".""""'" _ thi, mVdtiption ... or"';ll t>o _lob .. for irIopecti"" dwinll ofIi<iol ""'"'- houn (US 

.....,. to S: lS p.m.) in .... 0IfK>< of .... 50;'_1. U.S. lntmwiooal Tro<Ic CtJmmiJsion. SOl) E 

s ....... s.w .• w .... npn D.C. 2O'J.6. , .. 1",,_ (m) 2OS·2000. Gmonolillfonnolioll 

GO""",,,,", tbe CommWion mayolso be obtai ...... by O<C<IU",&;to lntem<I ........... 

hlw lt-.,.",wirr.g9!. Tho p.blk I'tC(ItI\ for thio in~ ~ be -,.;_ "'" til< 

Conmliooion', .!oorronio _ (EOIS) • ~rm-(lfiIM IIliOC gtll'. H"';ng.im~ ;~,_""._ odYioo:llhot _ "" Ihi& -"-'IID be obtainod bycontacli", tbe CommisDou·. TOO 

tonninal on (202) 2OS·lS]O. 

SUPPLEMENT,utY I/'iFORMATION: 

ThiI_iptioll ...... inttilulod on F.bnmy 7, 2006. based 011 • oompbiII1 filod by 

Solomon T .. bmlop,., In<:., ofTupJII ~ Florid.> (""Solomon;' Tho.:ompWnl. .. 

_ .. lop! violalionsofSectionJJ1 ofthoToriffAetofI9lO(19U.s.c. t 11l1) in .... 
APPEARANCES 

For Complainant Solomon Technologies, Inc.: 

Anthony J. Mirabito, Esq. 

Willaim D. Belanger, Esq. 

Aaron J. Levangie, Esq. 

Mintz, Levin, Cohn, Ferris, 

Glovsky and Popeo, P.C. 

One Financial Center 

Boston, MA 021 11 

Louis S. Mastriani, Esq. 

Maureen F. Browne, Esq. 

Adduci, Mastriani & Schaumberg LLP 

1200 17th Street, NW 

Washington, DC 20036 

For Respondents: Toyota Motor Corporation, Toyota Motor Engineering & Manufacturing 

North America, Inc. and Toyota Motor Manufacturing Kentucky, Inc., and 

Toyota Motor Sales, U.S.A., Inc.: 

Thomas W. Winland, Esq. 

Christine E. Lehman, Esq. 

Paul C. Goulet, Esq. 

Finnegan, Henderson, Farabow, 

Garrett & Dunner, LLP 

901 New York Avenue, NW 

Washington, DC 20001-4413 

ITC Staff 

Juan Cockburn, Esq. 

Office of Unfair Import Investigation 

U.S. International Trade Commission 

500 E Street, SW 

Washington, DC 20436 

i 
TABLE OF CONTENTS 

PAGE 

OPINION 

I. ProceduralHlstory ....................................................... 1 

II. Jurisdiction ............................................................. 3 

ID. Parties ................................................................. 4 

IV. Livewitnesses .......................................................... 4 

V. Person Of Ordinary Skill In The Art ........................................ .4 

VI. The‘932Patent ......................................................... 4 

VII. Claim Interpretation ..................................................... .8 

A. Asserted Claim 7 Of The ‘932 Patent ....................................... 13 

1. “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” ............... 15 

2. 

3. 

4. 

5. 

“wherein the rotational speed of said output is continuously variable” ........ 27 

“and 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 extent within an envelope 

containing the other” ............................................. .42 

“whereby a compact structure is provided for each said integral 

combination” .................................................... 96 

“said two integral combinations are located closely adjacent 

each other [sic]” ................................................ 100 

.. 

11 
VIII . Infringement .......................................................... 103 

A . The Accused Products ............................................ 104 

B . The Accused Products Do Not Infringe Claim 7 Of The ‘932 Patent ........ 105 

IX . Domestic Industry ..................................................... 134 

A . EconomicProng ................................................ 134 

B . Technical Prong ................................................. 157 

X . Validity .............................................................. 164 

A . PriorArt ....................................................... 164 

1 . The Raney Patent (The ‘837 Patent) ........................... 165 

The Goto Reference (The ‘037 Publication) ..................... 169 

3 . The Mohri Patent (The ‘258 Patent) ........................... 172 

2 . 

B . 

C . 

35 U.S.C. 5 112 ‘1[ 1 (Written Description And Enablement) .............. 174 

35 U.S.C. 5 112 12 (Indefiniteness) ................................. 180 

XI . Enforceability ......................................................... 184 

XII . Remedy ............................................................. 189 

A . Exclusion Order ................................................. 189 

B . Cease and Desist Order ........................................... 194 

Xm . Bond ................................................................ 199 

XIV . Additional Findings Of Fact ............................................. 201 

A . Parties ......................................................... 201 

B . Witnesses ...................................................... 204 

C . Person Of Ordinary Skill In The Art ................................. 207 

... 

111 
CONCLUSIONS OFLAW .................................................... 208 

ORDER ................................................................... 209 

iv 
CBr 

CFF 

CORFF 

COSFF 

CRBr 

CRRFF 

cx 

JX 

RBr 

Rx 

RFF 

ROSFF 

ROCFF 

RRCFF 

RRSFF 

RRBr 

SBr 

SRBr 

SFF 

Tr. 

ABBREVIATIONS 

Complainant’s Post-hearing Brief 

Complainant’s Proposed Finding 

Complainant’s Objection To Respondent’s Proposed Finding 

Complainant’s Objection To Staff‘s Proposed Finding 

Complainant’s Post-hearing Reply Brief 

Complainant’s Proposed Rebuttal Finding to RPFF 

Complainant’s Exhibit 

Joint Exhibit 

Respondents’ Post-hearing Brief 

Respondents’ Exhibit 

Respondents’ Proposed Finding 

Respondents’ Objection To Staff‘s Proposed Finding 

Respondents’ Objection To Complainant’s Proposed Finding 

Respondents’ Proposed Rebuttal Finding To CPFF 

Respondents’ Proposed Rebuttal Finding To SFF 

Respondents’ Post-hearing Reply Brief 

Staff‘s Post-hearing Brief 

Staff‘s Post-hearing Reply Brief 

Staff‘s Proposed Finding 

Transcript Of Pre-hearing Conference and Hearing 

V 
I. Procedural History 

By notice, which issued on February 7,2006, the Commission instituted an investigation, 

pursuant to subsection (b) of section 337 of the Tariff Act of 1930, as amended, to determine 

whether there is a violation of subsection (a)( l)(B) of section 337 in the importation into the 

United States, the sale for importation in the United States, or the sale within the United States 

after importation of certain combination motor and transmission systems and devices used 

therein, and products containing same by reason of infringement of claims 1-5,7,8, 10, or 12 of 

U.S. Patent No. 5,067,932, (‘932 patent) and whether an industry in the United States exists or is 

in the process of being established as required by subsection (a)(2) of section 337. 

The complaint was filed with the Commission on January 10,2006, under section 337 of 

the Tariff Act of 1930, on behalf of Solomon Technologies, Inc. (Solomon) of Tarpon Springs, 

Florida. A supplemental letter was filed on January 30,2006. Complainant requested that the 

Commission issue a permanent general exclusion order and a permanent cease and desist order. 

The following were named in the notice of investigation as respondents and were served 

with the complaint: 

Toyota Motor Corporation (TMC) 

1 Toyota-Cho 

Toyota City, Aichi, 471-8571 

Japan 

Toyota Motor Manufacturing North America 

25 Atlantic Avenue 

Erlanger, Kentucky 41018 

Toyota Motor Sales, U.S.A., Inc. 

19001 South Western Avenue 

Torrance, California 90509 
Order No. 3, which issued on March 2,2006, set a target date of April 13,2007, which 

meant that any final initial determination on violation should be filed no later than Tuesday 

January 16,2007. Order No. 19, which issued on January 10,2007, extended the target date to 

May 14,2007 which meant that any final initial determination should be filed no later than 

February 13,2007. 

Order No. 7, which issued on May 26,2006, granted complainant’s Motion No. 561-2 for 

leave to amend the complaint and notice of investigation pursuant to Commission rule 210.14(b) 

to substitute respondent Toyota Motor Manufacturing North America, Inc. with Toyota Motor 

Engineering & Manufacturing North America, Inc. (TEMA) and Toyota Motor Manufacturing 

Kentucky, Inc. (TMMK). By notice dated June 26, the Commission determined not to review 

Order No. 7. 

Order No. 12, which issued on September 13,2006, denied complainant’s Motion No. 

561-8 seeking a partial summary determination that its domestic activities satisfy the economic 

prong of the domestic industry requirement. 

On October 20,2006, respondents (Toyota) moved in limine to preclude Solomon from 

offering evidence or agreement regarding an alleged license or, in the alternative, compelling a 

deposition. (Motion Docket No. 561-15.) Said motion was mooted. (Tr. at 44,48.) 

On October 20,2006, Toyota also moved in limine to preclude Solomon from offering 

evidence or argument on infringement under the doctrine of equivalents for the claim-in-issue, as 

well as evidence or argument regarding infringement of claims 1-5 of the ‘932 patent,’ and 

Complainant has limited the asserted claims of the ‘932 patent on the infringement 

issue to independent claim 7 of the ‘932 patent. 

2 
evidence or argument regarding schematics for non-accused vehicles. (Motion Docket No. 561- 

16.) In a telephone conference on October 26,2006, Toyota represented that the issue regarding 

claims 1-5 was moot and that the only issue remaining related to schematics for nonaccused 

vehicles. (Tr. at 41-42.) At the telephone conference of October 26, a ruling on the modified 

motion was reserved. (Tr. at 53.) At the prehearing conference, a ruling was again reserved 

pending live examination by complainant at the hearing. Moreover, it was stated that if no one 

brings up Motion No. 516-16 again the motion was mooted. (Tr. at 50-51.) Said motion was not 

brought up and hence it was mooted. 

A pre-hearing conference was conducted on October 30,2006, with the hearing also 

commencing on that date and continuing to November 3. All parties participated in the hearing. 

The matter is now ready for a final decision. 

The Final Initial and Recommended Determinations herein are based on the record 

compiled at the hearing and the exhibits admitted into evidence. The administrative law judge 

has also taken into account his observation of the witnesses who appeared before him during the 

hearing. Proposed findings of fact submitted by the parties not herein adopted, in the form 

submitted or in substance, are rejected as either not supported by the evidence or as involving 

immaterial matters and/or as irrelevant. Certain findings of fact included herein have references 

to supporting evidence in the record. Such references are intended to serve as guides to the 

testimony and exhibits supporting the finding of fact. They do not necessarily represent complete 

summaries of the evidence supporting said findings. 

II. Jurisdiction 

The administrative law judge finds that the complaint and notice of investigation state a 

3 
cause of action under section 337 of the Tariff Act of 1930, as amended. Moreover, the 

importation requirement has been satisfied because Toyota admitted that it has imported accused 

products into the United States and sold them in the United States. See Joint Response to the 

Complaint, 9[ 6.2, at 9. See also RPH at 31. Thus, the Commission has in rem jurisdiction over 

the subject matter of this investigation. See Certain Automated Mechanical Transmission 

Systems for Medium-Duty and Heavy-Duty Trucks and ComDonents Thereof, Inv. No 337-TA503, Final Initial and Recommended Determination at 4, Notice of Commission Nonreview 

(February 24,2005) (Transmissions). Also Toyota has appeared in this investigation. Hence, the 

Commission has personam jurisdiction. See Transmissions at 4. 

III. Parties 

- See FF 1-12. 

IV. Live Witnesses 

- See FF 13-36. 

V. Person Of Ordinary S 

- See FF 37-38. 

VI. The ‘932 Patent 

ill 1 The, ht 

The ‘932 patent issued on Nov. 26, 1991 on application Ser. No. 618,934 filed November 

28, 1990 by inventor Jonathan R. Edwards. Original claims 1 and 2 of said application as filed 

read: 

1. A combination motor and transmission device comprising 

first power input means for receiving a first input of 

power, 

4 
second power input means for receiving a second input 

of power, 

output means for providing an output of rotational 

mechanical power, 

power conversion means for effectively converting said 

power of said first and second inputs to that of said output, 

wherein the rotational speed of said output is 

continuously variable, at least one of said first and second 

power inputs is electrical power, and said power conversion means 

includes, for each of said first and second power inputs which is 

an electrical power input, a respective integral combination of a 

respective electric motor and a mechanical transmission unit, 

said transmission unit having two inputs for respectively 

receiving power corresponding to said first and second power 

inputs provided to said first and second power input means. 

2. The combination motor and transmission device of claim 1, 

comprising said first and second power input means and said power 

conversion means being for both of said first and second power 

inputs being of electrical power, said power conversion means 

accordingly comprising a first integral combination of a first electric 

motor and said transmission unit, and a second internal 

combination of a second electric motor and said transmission 

unit. 

(RX-7 at TMCO1-082477-78.) 

The ‘932 patent describes, inter alia, a combination electric motor and transmission 

device that includes two electric motors that are integrally combined with a mechanical 

transmission unit. (CX-1, col. 2, Ins. 52-65.) Independent claim 7 in issue recites a device that 

has an “integral combination of a respective electric motor element and an element of ... [a] 

mechanical transmission unit.” (CX-1, col. 11, Ins. 38-40.) It is undisputed that said claimed 

device include two electric motors. (CBr at 6; RBr at 9; SBr at 3.) In dispute, inter alia, is how 

the claimed electric motor elements and mechanical transmission unit are integrally combined. 

5 
In prosecution of Ser. No. 618,934 in a first Office Action mailed February 28, 1991, the 

Examiner, inter alia, rejected original claims land 2 and other original claims under 35 U.S.C. 8 

102(b) as being anticipated by U.S. Patent No. 3,161,083 (Roe). The Examiner stated that Roe 

shows two electric motors 36,38, each integrally connected to an element of a planetary gearing 

to drive single wheel; that the motors have switchable speeds and the motor generator 24,26 is 

continuously variable to vary the dnve voltage to the motors 36,38, thus allowing continuously 

variable output from carrier 58a (citing col. 2. lines 19-30); and that the “planetary gearing of 

row is of the spur gear type. (RX-7 at TMCO1-082507-512.) 

An amendment was filed on May 29, 1991. (RX-7 at TMC01-082559-607.) As a result 

of said amendment, the Examiner issued a notice of allowability on June 20, 1991. (RX-7 at 

TMCO1-082615.) Amended claim 2 corresponds to asserted claim 7 in issue and amended claim 

1 corresponds to patent claim 1. (RX-7 at TMCO1-082559-61.) Asserted claim 7, as modified by 

a certificate of correction dated August 23,2006, reads: 

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, 

and said power conversion means includes, for each of said first 

6 
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 extent 

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 [sic]. 

(RFF-4.1 (undisputed).) 

Claim 1 of the ‘932 patent, which complainant relies on in connection with the domestic 

industry requirement, reads: 

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 power 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, 

and 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 

mechanical transmission unit, each said integral combination involving 

said two respective elements thereof being directly associated 

mechanically and geometrically with each other without substantial 

spacing or other elements including bearings and shafts therebetween. 

7 
VII. Claim Interpretation 

Claim interpretation is a question of law. Markman v. Westview Instruments, Inc., 52 

F.3d 967,979 (Fed. Cir. 1995) (en banc), aff‘d, 517 U.S. 370 (1996); see Cvbor Corn. v. FAS 

Techs., Inc., 138 F.3d 1448, 1455 (Fed. Cir. 1998). In construing claims, a court should look to 

intrinsic evidence consisting of the language of the claims, the specification and the prosecution 

history as it “is the most significant source of the legally operative meaning of disputed claim 

language.” Vitronics Corn. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996); see Bell 

Atl. Network Servs.. Inc. v. Covad Corn. Group, Inc., 262 F.3d 1258, 1267 (Fed. Cir. 2001). 

The claims themselves “provide substantial guidance as to the meaning of particular 

claim terms.” Phillips v. AWH Corn., 415 F.3d 1303, 1314 (Fed. Cir. 2005), citing Vitronics, 90 

F.3d at 1582. It is essential to consider the claim as a whole when construing each term, because 

the context in which a term is used in a claim “can be highly instructive.” a. This requirement 

is consistent with the Federal Circuit’s guidance that a claim term can only be understood “with a 

full understanding of what the inventors actually invented and intended to envelop with the 

claim.” Phillips, 415 F.3d at 1316, citing Renishaw PLC v. Marposs Societa per Azioni,l58 F.3d 

1243, 1250 (Fed. Cir. 1998). Claim terms “are generally given their ordinary and accustomed 

meaning.” Vitronics, 90 F.3d at 1582. 

In Pause Technolow, Inc. v. TIVD, Inc., 419 F.3d 1326 (Fed. Cir. 2005) the Court stated: 

. . . in clarifying the meaning of claim terms, courts are free to use 

words that do not appear in the claim so long as “the resulting 

claim interpretation . . . accord[s] with the words chosen by the 

patentee to stake out the boundary of the claimed property.” Cf. 

Renishaw PLC v. Mamoss Societi per Azioni, 158 F.3d 1243, 

1248 (Fed. Cir. 1998) (noting that “[wlithout any claim term 

susceptible to clarification . . . there is no legitimate way to narrow 

8 
the property right”). 

- Id. 419 F.3d at 1333. Also, claim terms are presumed to be used consistently throughout the 

patent, such that the usage of the term in one claim can often illuminate the meaning of the same 

term in other claims. Research Plastics. Inc. v. Federal Packaging Corn. 421 F.3d 1290, 1295 

(Fed. Cir. 2005). 

The ordinary meaning of a claim term may be determined by reviewing a variety of 

sources, which may include the claims themselves, dictionaries and treatises, and the written 

description, the drawings and the prosecution history. Ferrmson Beaure~ard/Logic Controls v. 

Mega - Svs., LLC, 350 F.3d 1327,1338 (Fed. Cir. 2003). The use of a dictionary however may 

extend patent protection beyond what should properly be afforded by a patent. Also, there is no 

guarantee that a term is used in the same way in a treatise as it would be by a patentee. Phillips 

415 F.3d at 1322. Moreover, the presumption of ordinary meaning will be “rebutted if the 

inventor has disavowed or disclaimed scope of coverage, by using words or expressions of 

manifest exclusion or restriction, representing a clear disavowal of claim scope.” ACTV, Inc. v. 

Walt Disnev Co., 346 F.3d 1082, 1091 (Fed. Cir. 2003). In Terlap v. Brinkmann Corn. 418F.3d 

1379, 1384 (Fed. Cir. 2005), the Court concluded that the district court “attached appropriate 

weight” to the dictionary definitions in the context of the intrinsic evidence in reaching its 

construction of a claim term “clear.” 

The presence of a specific limitation in a dependent claim raises a presumption that the 

limitation is not present in the independent claim. Phillim, 415 F.3d at 1315. This presumption 

is especially strong when the only difference between the independent and dependant claims is 

the limitation in dispute. SunRace Roots Enter. Co., Ltd v. SRAM Corn., 336 F.3d 1298, 1303 

9 
(Fed. Cir. 2003) (Sun Race). Differences between the claims are helpful in understanding the 

meaning of claim terms. Phillips, 415 F.3d at 1314. “[Wlhere the limitation that is sought to be 

‘read into’ an independent claim already appears in a dependent claim, the doctrine of claim 

differentiation is at its strongest.” Liebel - Flarsheim Co. v. Medrad. Inc., 358 F.3d 898,910 

(Fed. Cir. 2004). An independent claim usually covers a scope “broader than the preferred 

embodiment, especially if the dependent claims recite the precise scope of the preferred 

embodiment.” RF Delaware v. Pacific Keystone Tech., 326 F.3d 1255, 1264 (Fed. Cir. 2003). 

The specification of a patent “acts as a dictionary” both “when it expressly defines terms 

used in the claims” and “when it defines terms by implication.” Vitronics, 90 F.3d at 1582. For 

example, the specification “may define claim terms by implication such that the meaning may be 

found in or ascertained by a reading of the patent documents.” Phillips, 415 F.3d at 1323, 

quoting Iredto Access. Inc. v. Echostar Satellite Corn., 383 F.3d 1295, 1300 (Fed. Cir. 2004). 

Importantly, “the person of ordinary skill in the art is deemed to read the claim term not only in 

context of the particular claim in which the disputed term appears, but in the context of the entire 

patent, including the specification.” Phillips, 415 F.3d at 1314. The Federal Circuit has 

explained that “although the specification often describes very specific embodiments of the 

invention, we have repeatedly warned against confining the claims to those embodiments.” 

Phillips, 415 F.3d at 1323. 

A patentee may deviate from the conventional meaning of a particular claim term by 

making the intended meaning of a particular claim term clear (1) in the specification or (2) during 

the patent’s prosecution history. Lear Sienler, Inc. v. Aeroquip Corn., 733 F.2d 881, 889 (Fed. 

Cir. 1984) (Lear Sienler). If using a definition that is contrary to the definition given by those of 

10 
ordinary skill in the art, however, the patentee’s specification must communicate a deliberate and 

clear preference for the alternate definition. Kumar v. Ovonic Battery Co.. Inc., 351 F.3d 1364, 

1368 (Fed. Cir. 2003) (Kumar), (citing Apple Computers. Inc. v. Articulate SYS., Inc., 234 F.3d 

14,21 n.5 (Fed. Cir. 2000)). In ascribing an alternative definition than the ordinary meaning, the 

intrinsic evidence must “clearly set forth” or “clearly redefine” a claim term so as to put one 

reasonably skilled in the art on notice that the patentee intended to so redefine the claim term. 

Bell Atlantic Network Services. Inc. v. Covad Communications Grou~, Inc., 262 F.3d 1258, 

1268 (Fed. Cir. 2001) (Bell Atlantic). 

The prosecution history, including “the prior art cited,” is “part of the ‘intrinsic 

evidence.”’ Phillips, 415 F3d at 1317. The prosecution history “provides evidence of how the 

inventor and the €TO understood the patent.” u. Thus, the prosecution history can often inform 

the meaning of the claim language by demonstrating how an inventor understood the invention 

and whether the inventor limited the invention in the course of prosecution, making the claim 

scope narrower than it would otherwise be. Vitronics, 90 F.3d at 1582-83; see also Chimi v. 

PPG Indus., Inc., 402 F.3d 1371,1384 (Fed. Cir. 2005) (“The purpose of consulting the 

prosecution history in construing a claim is to exclude any interpretation that was disclaimed 

during prosecution”), quoting ZMI COT. v. Cardiac Resuscitator Cop, 844 F.2d 1576, 1580 

(Fed. Cir. 1988); Southwall Techs., Inc. v. Cardinal IG Co., F.3d 1570, 1576 (Fed. Cir. 1995). 

The prosecution history includes any reexamination of the patent. Intermatic Inc. v. Lamson & 

Sessions Co., 273 F.3d 1355, 1367 (Fed. Cir. 2001). 

In addition to the intrinsic evidence, the administrative law judge may consider extrinsic 

evidence when interpreting the claims. Extrinsic evidence consists of all evidence external to the 

11 
patent and the prosecution history, including inventor testimony and expert testimony. This 

extrinsic evidence may be helpful in explaining scientific principles, the meaning of technical 

terms, and terms of art. See Vitronics Corp., 90 F.3d at 1583; Markman, 52 F.3d at 980. 

However, “[e]xtrinsic evidence is to be used for the court’s understandmg of the patent, not for 

the purpose of varying or contradicting the terms of the claims.” Markman, 52 F.3d at 981. 

Also, the Federal Circuit has viewed extrinsic evidence in general as less reliable than the patent 

and its prosecution history in determining how to read claim terms. Phillips, 415 F.3d at 1318. 

In addition, while extrinsic evidence may be useful, it is unlikely to result in a reliable 

interpretation of patent claim scope unless considered in the context of the intrinsic evidence. 

Phillips, 415 F.3d at 1319. 

In Nystrom v. Trex Company 424 F.3d 1136 (Fed. Cir. 2005), (Nystrom) the Court stated: 

. . . as explained in Phillim, Nystrom is not entitled to a claim 

construction divorced from the context of the written description 

and prosecution history. The written description and prosecution 

history consistently use the term “board” to refer to wood decking 

materials cut from a log. Nystrom argues repeatedly that there is 

no disavowal of scope of the written description or prosecution 

history. Nystrom’s argument is misplaced. Phillips, 415 F.3d at 

1321 (“The problem is that if the district court starts with the broad 

dictionary definition in every case and fails to fully appreciate how 

the specification implicitly limits that definition, the error will 

systematically cause the construction of the claim to be unduly 

expansive.”). What Phillips now counsels is that in the absence of 

something in the written description and/or prosecution history to 

provide explicit or implicit notice to the public- i.e., those of 

ordinary skill in the art- that the inventor intended a disputed term 

to cover more than the ordinary and customary meaning revealed 

by the context of the intrinsic record, it is improper to read the term 

to encompass a broader definition simply because it may be found 

in a dictionary, treatise, or other extrinsic source. Id. 

- Id. 424 F.3d at 1 144, 1145. In Free Motion Fitness Inc. v. Cvbex International, Inc. 423 F.3d 

12 
1343 (Fed. Cir. 2005) (Free Motion), the Court concluded that: 

4 F. 1 at 1 

under Phillips, the rule that ‘a court will give a claim term the full 

range of its ordinary meaning’, Rexnord Corn. v. Laitram Corn., 

274 F.3d 1336, 1342 (Fed.Cir. 2001), does not mean that the term 

will presumptively receive its broadest dictionary definition or the 

aggregate of multiple dictionary definitions. Phillips, 415 F.3d at 

1320- 1322. Rather, in those circumstances, where references to 

dictionaries is appropriate, the task is to scrutinize the intrinsic 

evidence in order to determine the most appropriate definition. 

48,49. In Network Commerce, Inc. v. Microsoft Cop. 422 F.3d 1353 (Fec. Cir. 

2005), the Court concluded: 

As we recently reaffirmed in Phillips, “conclusory, unsupported 

assertions by experts as to the definition of a claim term are not 

useful to a court.” Phillips, 415 F.3d at 1318. Here [expert] 

Coombs does not support his conclusion [the “download 

component” need not contain the boot program] with any 

references to industry publications or other independent sources. 

Moreover, expert testimony at odds with the intrinsic evidence 

must be disregarded. Id. (“[A] court should discount any expert 

testimony that is clearly at odds with the claim construction 

mandated by. . . the written record of the patent.” (internal 

quotations and citation omitted). That is the case here. 

-7 Id at 1361. 

Patent claims should be construed so as to maintain their validity. However, that maxim 

is limited to cases in which a court concludes, after applying all the available tools of claim 

construction, that the claim is still ambiguous. Phillips, 415 F.3d at 1327. If the only reasonable 

interpretation renders the claim invalid, then the claim should be found invalid. See, e.g, Rhine 

v. Casio. Inc., 183 F.3d 1342, 1345 (Fed. Cir. 1999) (Rhine). 

A. Asserted Claim 7 Of The ‘932 Patent 

7. A combination motor and transmission device, comprising 

13 
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, and 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 extent 

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 

[sic], 

The parties do not dispute the following claimed phrases: “first power input means for 

receiving a first input of electric power,” “second power input means for receiving a second input 

of electrical power,” “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,”* and “an output for outputting the converted power as rotational mechanical 

power.” 

The parties dispute the following claimed phrases: “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,” “wherein the rotational speed of 

said output is continuously variable,” “and said power conversion means includes, for each of 

said first and second power inputs, a respective integral combination of a respective electric 

While the parties do not dispute the interpretation of the “power conversion means” 

phrase, the parties dispute whether the respondents’ accused products infringe the “power 

conversion means,” in part, based on the parties’ dispute of the “integral combination’, phrase. 

14 
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 extent 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 [sic] .” 

1. “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” 

In issue is said claimed phrase, which is part of the claimed “power conversion means” 

supra, found in independent claim 7 of the ‘932 patent, the only asserted claim of the ‘932 patent. 

Complainant argued that one of ordinary skill in the art would interpret said claimed phrase to 

mean: 

the components of the power transmission unit that receive 

rotational mechanical power. 

(CBr at 43.) It is argued that complainant’s interpretation is consistent with said claim phrase’s 

ordinary meaning and usage in the ‘932 patent. (CBr at 43; CFF 165-166.) It is further argued 

that based on the claim language, the inputs may be any physical component within the 

transmission unit. (CBr at 45; CFF 174, 178-184.) Complainant also argued that in several of the 

embodiments disclosed in the ‘932 patent, the input of mechanical power is received by a 

transmission component other than the gear itself. (CBr at 45; CFF 174, 178-184.) In addition, it 

is argued that since the parties have agreed that an “output” as recited in claim 7 of the ‘932 

patent is “the component of the power transmission unit that provides rotational mechanical 

power output” complainant’s proposed interpretation of “input” mirrors the parties’ agreed upon 

interpretation of “output” and hence because the term “input” and “output” describes the same 

15 
physical structure, with the only difference being whether the component is receiving or 

providing power, the same “straightforward definition” should be used for both terms. (CBr at 

44.1 

Complainant also argued that respondents seek to add a “somewhat confusing limitation” 

that power must pass through the transmission unit; that while “it is somewhat difficult to 

understand how [respondents are] trylng to rewrite the claim to add this limitation, it seems that 

[respondents seek] to add on an additional clause to the claim that would require that mechanical 

power equal to 100% of the electrical power input to each motor pass through two gears of the 

transmission;” that it is “clear” from the specification that the same physical component can be 

an input and an output; and that respondents’ further limitation finds no support in the intrinsic 

record and should be rejected. (CBr at 46.) It is also argued that it is “unclear” how or why an 

“input” would also be required to perform the function of “transmitting that power into the 

transmission unit” because the “input” is itself part of the transmission unit and therefore power 

flowing into the “input” would flow into the transmission unit. (CRBr at 40.) 

Complainant also argued that the parties have already agreed that “output” is “the 

component of the power transmission unit that provides rotational mechanical power output;” 

and that as noted in the ‘932 patent, the same physical component of the transmission can be an 

output and an input depending upon vehicle conditions; and that thus “[respondents effectively 

admit] that [complainant’s] proposed construction of ‘input’ is correct, as it mirrors the parties’ 

agreed upon construction of ‘output,’ namely, the ‘inputs’ are ‘the components of the power 

transmission unit that receive the rotational mechanical power input.” (CRBr at 41.) 

Respondents argued that one of ordinary skill in the art would understand “said 

16 
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” to 

mean: 

two gears of the mechanical power transmission unit respectively 

receive mechanical power corresponding to the electrical power 

supplied to the first and second power input means for 

transmission through the transmission unit. 

(Rl3r at 62.) It is argued that the claim language requires that the mechanical power transmission 

unit has two inputs for respectively receiving mechanical power. (RBr at 62; RFF-4.199.) It is 

also argued that since both parties have agreed that the claimed mechanical transmission unit is a 

device that transmits a rotational mechanical input to a rotational mechanical output at varying 

speeds using gears, (RBr at 62; RFF-4.200), the “two inputs” limitation requires that two 

rotational mechanical inputs be received and transmitted through the gears of the transmission 

unit, such that their speeds are varied “using gears.” (RBr at 62; RFF-4.201.) It is also argued 

that “to the extent there is a quibble about ‘gears,’ the term ‘elements’ could easily be substituted 

in [respondents’] proposed construction to alleviate any concern.” (RBr at 63.) It is argued that a 

person of ordinary skill in the art would understand said claimed phrase to mean that two gears in 

the transmission unit a the sun gear, including its extension, the hub (carrier), or the ring gear) 

are being driven as inputs, i.e. receiving rotational mechanical power and transmitting that power 

into the transmission unit, and that the gear element itself a sun gear, carrier, or ring gear) is 

the component that is actually sending power into the transmission unit. (RBr at 64; RFF-4.206.) 

It is further argued that complainant’s interpretation is improper because it seeks to read out of 

the claim language the expressly stated requirement “for respectively receiving mechanical 

17 
power corresponding to said first and second power inputs.” (RBr at 62; RFF-4.195.) It is also 

argued that if the gear element itself is actually sending power into the transmission unit it is an 

input while if, instead, power is flowing out of the gear element, then it is an output; and that the 

claim requires two inputs. (RBr at 64.) 

The staff argued that the function of the “power conversion means”3 is: 

to convert the electric power received from the two inputs of each 

of the two motors into mechanicalhotational power and to transmit 

that mechanicalhotational energy through a single output to propel 

a vehicle (or to store the mechanicaVrotationa1 energy in fly 

wheels, and then using the power stored in the fly wheel to propel a 

vehicle when needed). 

(SBr at 12.) It is further argued that the specification discloses that the corresponding structure is 

two electric motors that convert the electrical power to mechanical (rotational) power, which is 

combined for output through the transmission to the dnve wheels(s) of a vehicle. (SBr at 13.) 

Thus, the staff argued, said element is only satisfied when both electric motor/generators are 

simultaneously used as motors to provide rotational power to the wheels that propel the vehicle. 

(SBr at 13.) Moreover, it is argued that, according to the claim language, the combined 

rotational/mechanical output must correspond to the sum of the electrical inputs to each of the 

motors, i.e. be essentially identical, which means that all of the rotational/mechanical output 

must go to a single device. (SBr at 13.) 

The staff further argued that alternate corresponding structures of the mechanical power 

transmission units included in the “power conversion means” are described in the specification in 

The staff interpreted the entire “power conversion means” means-plus-function 

limitation instead of the phrase, “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.” 

18 
Figures 3,4,5 and 6. (SBr at 13.) With respect to each corresponding structure, it is argued that 

the specification teaches that the claimed transmission system must have inputs from two sources 

of mechanical power that the system outputs/transmits to a drive wheel, dnve wheels, or any 

single device. (SBr at 14.) Thus, it is argued, said element is only satisfied when the output of 

both electric motors is transmitted through the combination transmission to a wheel or wheels to 

propel a vehicle in the case of a motor vehicle (or propellers(s) in the case of a marine vessel), or 

to any single device. (SBr at 14.) 

In issue is whether the input of the mechanical power transmission unit is required to be a 

gear or gear element, as respondents argued, or is capable of being any component of the 

transmission unit that receives rotational mechanical power as complainant argued. The 

administrative law judge finds that the language of the claimed phrase at issue does not limit the 

“input” of the mechanical power transmission unit to a “gear” or “gear element” or any other 

particular component of the transmission unit. (See CX-1 at 11:28-32.) The administrative law 

judge further finds that the specification discloses that the combination motor and transmission 

device of the ‘932 patent discloses the use of either a differential transmission unit or a planetary 

gear unit: 

The device employs a novel arrangement of a differential unit or a 

planetary gear unit. 

*** 

Yet another object of the invention is to provide a combination 

motor and transmission device employing a novel arrangement of 

differential transmission unit or a danetarv gear - unit. 

(CX-1 at Abstract, 2:61-65 (emphasis added).) The administrative further finds that the 

19 
specification of the ‘932 patent discloses embodiments that either use a differential transmission 

unit or a planetary gear unit where the gears or gear elements act as the input of the combination 

and motor device: 

HG. 3 shows an embodiment of the combination motor and 

transmission device 1 of the present invention employing a 

differential unit in a novel manner. 

*** 

The two inputs 2,3 to the motor and transmission device 1 are 

located below the corresponding arrows. In this embodiment & 

inputs are in the form of electrical power which is converted 

internally to mechanical power. 

*** 

When the bevelled drive gear 23 on input 2 and the corresponding 

opposing drive gear on input 3 are driven by the electrical inputs to 

rotate at the same speed, then the pinion gears 42 do not rotate on 

the pinion gear shaft 41. In this case, the pinion gear shaft 41 

rotates at this same speed (in a plane perpendicular to the paper), 

and the wheel 10 is also rotated at this rotational speed. When & 

two opposing bevelled gears are driven at different speeds, 

including the case of opposite directions, then the pinion gear shaft 

41 is caused to rotate at a speed intermediate between the rotational 

speeds of the two opposing bevelled drive gears, by virtue of the 

pinion gears 42 rotating on the pinion gear shaft 41. 

*** 

HG. 4 shows an embodiment of the transmission device of the 

present invention employing a planetarv near unit. 

*** 

Inside the ring, gear member 36 are located the sun gear 46 

Jindicated with dotted lines only) and the hub. A portion 26 of the 

hub is shown extending to the left for rigid connection to the disk 

23 of input 2. Both the sun gear 46 and the hub (with its portion 

26) rotate coaxially with the ring, gear 36. The wheel shaft 43 

20 
extends to the right to connect rigidly with the sun gear 46, to 

rotate with it. The spacer 26 typically has at least three planetary 

gears 27 (only one is indicated by the dotted lines in HG. 4) 

attached to it to rotate between the sun gear 46 and ring gear 36. 

HG. 5 shows another embodiment of the transmission device of 

the present invention employing a planetary gear unit. Here the 

disk 23 of the input 2 is rigidlv connected to an extension 46’ of the 

sun gear, so as to turn the sun gear - when the input 2 is activated. 

The sun gear and its extension 46’ are cylindrically hollow along 

the axis of the sun gear, to allow an extension 43‘ (indicated by 

dotted lines) of the wheel shaft 43 to extend to the right along its 

axis to connect rigidly and nonrotatingly with the hub 26’ of the 

planetary gear set. 

*** 

This embodiment &, HG. 61 shows the ring gear 36 and hub 26 

of the planetary unit embodiment of HG. 4, respectively connected 

to the disks 33 and 23. 

(CX-1 at 4:24-26,4:33-37,5:9-22 6:23-25,6:38-58,9:40-43 (emphasis added).) However, the 

administrative law judge finds that this language does not limit the input to “gear” or “gear 

elements” because it is the rotational mechanical power produced by the components connected 

to the electrical inputs that is recited in the claim language, and the cited portions of the 

specification do not include any express language limiting the impact to gears or gear elements. 

In addition, the parties agreed that the phrase “output for outputting the converted power 

as rotational mechanical power,” which also appears in claim 7 of the ‘932 patent, should be 

interpreted as “the component of the power transmission unit that provides the rotational 

mechanical power output.” (See CBr at 40,44; RBr at 25-27.) The administrative law judge 

finds that the specification discloses a differential transmission unit or a planetary gear unit 

where the gears or gear elements act as the output of the combination and motor device and the 

21 
only substantial difference between the “input” and the “output” of the mechanical power 

transmission unit, as dmlosed in the specification of the ‘932 patent, is whether said 

transmission unit receives rotational mechanical power or provides rotational mechanical power: 

Proceeding to the output 4, the pinion gear shaft 41 holds the pair 

of pinion gears - 42 to rotate between the omosing drive gears - of the 

inDuts 2 and 3, namely the drive gear 24 on input 2 and the 

corresponding drive gear on input 3 indicated in FIG. 3. 

*** 

The outermost member of the planetary gear unit is the ring gear, 

the teeth of which are on the inside periphery of the hollow 

cylindrical member 36. The right end of the Cylindrical member 36 

can be closed, but in any case is rigidly -. fixed, in this example. to 

the disk 33 of input 3, to rotate with it. 

*** 

The sun gear and its extension 46’ are cylindrically hollow along 

the axis of the sun gear, to allow an extension 43’ (indicated by 

dotted lines) of the wheel shaft 43 to extend to the right along its 

axis to connect rigidly and nonrotatingly with the hub 26’ of the 

planetary gear set. 

(CX-1 at 5:l-5,6:32-37,653-58 (emphasis added).) However, the parties agreed not to limit the 

“output” of the mechanical power transmission unit to a gear or gear element notwithstanding the 

language of the specification. For the foregoing reasons, the administrative law judge finds that 

“inputs” are not limited to “gears” or “gear elements,” as respondents argued, but are any 

components of the mechanical power transmission unit that receive rotational mechanical power, 

as complainant argued. 

Also in issue is whether one of ordinary skill in the art would understand that the input 

must transfer its received mechanical power through the transmission unit. Complainant argued 

22 
that it is “clear” from the specification that the same physical component can be an input and an 

output; that the “through the transmission unit” limitation, as respondents argued, finds no 

support in the intrinsic record; and that it is “unclear” how or why an “input” would also be 

required to perform the function of “transmitting that power into the transmission unit” because 

the “input” is itself part of the transmission unit and therefore power flowing into the “input” 

would flow into the transmission unit. (CBr at 46; CRBr at 40.) Respondents argued that if the 

gear element itself is actually sending power into the transmission unit it is an input while if, 

instead, power is flowing out of the gear element, then it is an output; and that the claim requires 

two inputs. (RBr at 64.) The staff argued that, with respect to each corresponding structure, the 

specification teaches that the claimed transmission system must have inputs from two sources of 

mechanical power that the system outputs/transmits to a drive wheel, drive wheels, or any single 

device; and that said element is only satisfied when the output of both electric motors is 

transmitted through the combination transmission to a wheel or wheels to propel a vehicle in the 

case of a motor vehicle (or propellers(s) in the case of a marine vessel), or to any single device. 

(SBr at 14.) 

The claimed phrase at issue is part of a larger means-plus-function claim element: 

power conversion means for converting - said electrical Dower of 

said first and second inputs for outDut, 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 

output for outputting the converted Dower as rotational mechanical 

power 

(CX-1 at 11:25-34 (emphasis added).) The administrative law judge finds that the language 

23 
“converting said electrical power of said first and second inputs for output” in said means-plusfunction claim element indicates that the function of said means-plus-function claim element is 

to convert the electrical power of the first and second inputs for output. Furthermore, the 

administrative law judge finds that the language, “an output for outputting the converted power 

as rotational mechanical power” in said means-plus-function claim element requires that the 

mechanical power transmission unit take the converted mechanical power provided to its two 

inputs and then output said converted mechanical power as rotational mechanical power. Thus, 

the administrative law judge finds that the two inputs for receiving mechanical power must 

transfer said mechanical power through the transmission unit to the output. 

Also in issue is whether one of ordinary skill in the art would understand that the phrase 

“corresponding to” in the claimed phrase at issue requires that the mechanical power equal 100 

percent of the electrical power of the electrical motor. Complainant argued that the limitation 

that the mechanical power equal 100 percent of the electrical power of the electric motor finds no 

support in the intrinsic record. (CBr at 46.) Respondent argued that complainant’s interpretation 

is improper because it seeks to read out of the claim language the expressly stated requirement 

“for respectively receiving mechanical power corresponding to said first and second power 

inputs.” (RBr at 62; RFF-4.195.) The staff argued that, according to the claim language, the 

combined rotational/mechanical output must correspond to the sum of the electrical inputs to 

each of the motors, i.e. be essentially identical, which means that all of the rotational/mechanical 

output must go to a single device. (SBr at 13.) 

The administrative law judge finds that the language of claim 7 is silent as to whether the 

mechanical power must equal 100 percent of the electrical power of the electrical motor. (See 

24 
CX-1 at 11:19-46.) The administrative law judge further finds that the use of the phrase 

“corresponding to” in the claimed phrase at issue signifies a relationship between the first power 

input first input of electrical power] and its respective mechanical power and a relationship 

between the second power input second input of electrical power] and its respective 

mechanical power. The administrative law judge further finds that the specification of the ‘932 

patent, in referring to the conversion of the electrical power into mechanical power is silent as to 

whether the resulting mechanical power must equal 100 percent of the electrical power: 

The two inputs 2,3 to the motor and transmission device 1 are 

located below the corresponding arrows. In this embodiment the 

inputs are in the form of electrical power which is converted 

internallv to mechanical Dower. The output 4 for rotating the drive 

wheel 10 is via the wheel shaft 43, which is fixed at its outer end to 

the wheel hub 14 for rotating it. The wheel disc 16 is connected by 

bolts (not shown) to a circularly shaped perimeter portion 49 of the 

hub 14, for rotating the wheel 10. The outer peripheral edge of the 

wheel disk 16 is connected to a rim (not shown) on which the tire 

is mounted. 

*** 

The rotational mechanical output of the transmission drive device 

can be provided at any desired rotational speed, power or torque, 

depending on the load and the controls for the two inputs. Any type 

of electrical motor can be incorporated into each input, for 

converting electrical Dower suDplied to the motor to rotating 

mechanical power of that input. 

(CX-1 at 4:33-44,7:23-29 (emphasis added).) The administrative law judge also finds that said 

portion of the specification, while requiring the conversion of electrical power to mechanical 

power, does not require that the resulting mechanical power equal one hundred percent of the 

electrical power. 

The administrative law judge further finds that the specification of the ‘932 patent uses 

25 
the phrases “corresponding” or “corresponding to” in multiple contexts where the patentee is 

merely signifying a relation between two components and not imposing a strict one-to-one 

relationship. The following are representative examples: 

Known transmission devices typically involve a single rotational 

mechanical input and a single rotational mechanical output. Such 

known transmission devices, whether manual or automatic, may 

typically employ a set of gears. In these transmissions, the ratio of 

the speed of rotation of the input to the speed of rotation of the 

output is one of a set of fixed values corresponding. to the set of 

gears. 

*** 

Proceeding to the output 4, the pinion gear shaft 41 holds the pair 

of pinion gears 42 to rotate between the opposing drive gears of the 

inputs 2 and 3, namely the drive gear 24 on input 2 and the 

corresponding. - drive gear - on input 3 indicated in FIG. 3. 

*** 

When the bevelled drive gear 23 on input 2 and the corresponding 

opDosing drive gear on input 3 are dnven by the electrical inputs to 

rotate at the same speed, then the pinion gears 42 do not rotate on 

the pinion gear shaft 41. 

(CX-1 at 1:35-42,5:1-5,9-13 (emphasis added).) The administrative law judge further finds that 

this finding is consistent with complainant’s expert Davis’s testimony as to how one of ordinary 

skill in the art would understand “corresponding to” in the context of the claimed phrase at issue: 

Q. What do you understand the word corresponding” to mean 

in the context of the claim language of claim 7? 

A. What they’re talking about is that they’re receiving the 

mechanical power that’s related to the electrical power that’s 

provided to the motors. 

*** 

Q. Do you have an opinion as to whether one of ordinary skill 

26 
in the art in 1990 would have believed the word 

“corresponding” in claim 7 to require that the mechanical 

power equal 100 percent of the electric motor? 

A. No. They would not. 

(Davis, Tr. at 883:6-12,884:18-23.) Thus, the administrative law judge finds, based on the plain 

language of claim 7 of the ‘932 patent and the specification of the ‘932 patent, that one of 

ordinary shll in the art would understand the phrase “corresponding to” in the claimed phrase to 

mean that the mechanical power relates to the electrical power of the electrical motor but not 

require that said mechanical power equals 100 percent of said electrical power. 

For the foregoing reasons, the administrative law judge interprets “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” as: 

two components of the mechanical power transmission unit 

respectively receive mechanical power relating to the electrical 

power supplied to the first and second power input means for 

transmission through said transmission unit. 

2. “wherein the rotational speed of said output is continuously variable” 

In issue is said claimed phrase, which is found in independent claim 7 of the ‘932 patent, 

the only asserted claim of the ‘932 patent. Complainant argued that one of ordinary skill in the 

art would understand “wherein the rotational speed of said output is continuously variable” to 

mean: 

subject to a continuous variation in speed from a negative 

maximum value to a positive maximum rotational value. 

(CBr at 49.) It is further argued that complainant’s definition is taken directly from the ‘932 

patent, which states that “[tlhe rotational mechanical power output 4 is at a continuously variable 

27 
speed, such as from a negative maximum value to a positive maximum value in various 

embodiments of the present invention.” (CBr at 49; CFF 191.) It is also argued that this 

definition is consistent with the usage of the phrase throughout the patent, where it is used to 

describe the concept of continuously variable output, also described in the industry as a 

continuously variable transmission function. (CBr at 50.) In addtion it is argued that 

complainant’s interpretation of “continuously variable” is consistent with the purposes and 

advantages of the ‘932 patent. (CBr at 50; CFF 191, 194, 197,211.) 

Respondents argued that one of ordinary skill in the art would understand ”wherein the 

rotational speed of said output is continuously variable” to mean: 

the rotational speed of said output can be varied such that any 

desired rotational speed, from full forward to full reverse, can be 

attained at peak power and with no intervening gear reduction to 

the component being driven. 

(RBr at 52.) Respondents argued that the ‘932 specification and prosecution history define a 

“continuously variable” output consistent with respondents argued definition. (RBr at 52; RFF4.149.) Specifically, respondents argued that, as defined in the ‘932 patent and prosecution 

history, a “continuously variable” output must be variable to any desired speed; that a 

“continuously variable” device must be capable of outputting peak power at any desired speed; 

and that a “continuously variable” output cannot include intervening gear reductions. (RBr at 52- 

61.) 

The staff argued that ”wherein the rotational speed of said output is continuously 

variable” should be interpreted to mean that: 

the output of the transmission device directed to the drive wheels is 

variable from full forward to full reverse and must be capable of 

28 
providing peak power at all rotational speeds. 

(SBr at 15.) It is argued that the specification of the ‘932 patent expressly teaches that the term 

“continuously variable” refers to the capability of going from “full forward speed to full reverse 

speed.” (SBr at 16.) Morever, it is argued that the term “continuously variable” as it appears in 

the ‘932 patent implicitly incorporates the requirement that peak output must be available at all 

speeds. (SBr at 16.) Specifically it is argued that the specification of the ‘932 patent expressly 

defines an “infinite speed transmission device” as being a device that can provide peak power 

over continuously variable speeds of rotation. (SBr at 16.) It is also argued that during 

prosecution, the applicant distinguished prior art on the basis that none of the cited art disclosed a 

“truly continuously variable infinite speed device.” (SBr at 17.) 

The parties agree that “wherein the rotational speed of said output is continuously 

variable” cannot be limited to preset or predetermined speeds. (CBr at 50, RBr at 53.) In issue is 

whether a “continuously variable” output must be capable of any desired speed, regardless of the 

specified range, or whether a “continuously variable” output must be capable of any desired 

speed within a specified range. The administrative law judge finds that the specification of the 

‘932 patent, referring to the “generic features” of the combination motor and transmission device 

of the “present invention” and making reference to Figures 2 and 3, delineates a specified range 

of rotational speeds of the output and that a “continuously variable” output must be capable of 

any desired speed within said sDecified range: 

The rotational mechanical power output 4 is at a continuously 

variable speed, such as from a negative maximum value to a 

positive maximum value in various embodiments of the present 

invention. 

29 
(CX-1 at 4:7-23 and particularly at 4:20-23 (emphasis added).) 

Also, in issue is whether the range of the rotational speed of the output is from a negative 

maximum value to a positive maximum value or whether the range of the rotational speed of the 

output is from full forward to full reverse. The administrative law judge finds that the 

specification of the ‘932 patent uses both of said ranges in describing the output as “continuously 

variable:” 

The generic features of the combination motor and transmission 

device 1 of the present invention are indicated in FIG. 2. ... 

rotational mechanical power output 4 is at a continuouslv variable 

speed. such as from a negative maximum value to a positive 

maximum value in various embodiments of the mesent invention. 

*** 

The wheel 10 is thus driven at its maximum speed, in either the 

forward or reverse direction, when the two inputs 2 and 3 are in the 

same direction, forward or reverse, and at their respective 

maximum speeds. As the speed of one decreases, the wheel 10 

slows down. Thus the speed with which the wheel 10 can be 

rotated is continuouslv variable. from full forward speed to full 

reverse speed. 

(CX-1 at 4:7-23,5:23-30 (emphasis added).) The parties dispute whether these ranges are the 

same and specifically whether “negative maximum value” can equal zero in certain situations or 

whether it must always be the maximum speed of the output in the reverse direction. To the 

extent that the stated ranges are actually different, the administrative law judge finds that one of 

ordinary skill in the art would understand the range to be “negative maximum value to positive 

maximum value” rather than “full forward speed to full reverse speed.” The administrative law 

judge finds that this is so because the portion of the specification of the ‘932 patent that discloses 

the range “negative maximum value to positive maximum value” describes the actual output 

30 
output 4); that said portion of the specification describes the generic features of the invention; 

that said portion of the specification indicates that the range “negative maximum value to 

positive maximum value” is the range for various embodiments of the invention; and that the 

range “negative maximum value to positive maximum value” is more precise than “full reverse 

to full forward.” (CX-1 at 4:20-23.) The administrative law judge also finds that one of ordinary 

skill in the art would understand the range to be “negative maximum value to positive maximum 

value” because the portion of the specification of the ‘932 patent that discloses the range “full 

forward speed to full reverse speed” describes the wheel and not the output. (CX-1 at 5:23-30.) 

Also in issue is whether “continuously variable” output requires peak power. The 

claimed phrase at issue is silent as to whether peak power output is required. However, the 

administrative law judge finds that the Abstract section of the ‘932 patent states that a 

requirement of an “ideal infinite speed device” is peak power output: 

The directions of rotation and the rotational speeds of the two 

inputs can be controlled to urovide the mechanical outDut at any 

desired rotational meed with peak Dower outDut, depending on the 

controls, thus providing an ideal infinite speed device. 

(CX-1 at Abstract (emphasis added).) In addition, the administrative law judge finds that the 

specification of the ‘932 patent has numerous Portions where it links the requirement of peak 

power output to continuously variable rotational speed, the term “continuously variable” being 

synonymous with the term “infinite speed,” as complainant’s expert Davis testified (Tr. at 

1487:4-8), and as the respondents and staff argued. (RBr at 56; RPFF-4.169; SBr at 17.) Thus 

reference is made to the following: 

It has long been a goal in the art to find a combination power 

source (i.e., drive) and transmission device that can deliver the 

31 
peak output of the power source over a large range of the rotational 

speed (mm) output of the transmission device. Further, && 

preferable that this peak power be output from the transmission 

device, or from the drive device incorporating the transmission 

device, at continuously variable speeds of rotation over a large 

range of the speed of rotation of the output. A transmission device 

making possible such properties is known in the art as an infinite 

speed transmission device. 

*** 

The mechanical rotational input for such known transmission 

devices can be the output of a gasoline or electric motor, many of 

which typically have a limited speed (rpm) range for peak power. 

As a result. the transmission device may not have a continuously 

variable outwt rotational speed for the speed of the motor in the 

peak power range. 

*** 

An object of the invention is to provide an infinitespeed 

combination motor and transmission device, namelv which can 

deliver peak power output with a continuously variable speed of 

rotation over a very large range of the rotational speed of the 

output. 

*** 

Thus, when two stepping motors are employed in the two inputs of 

the transmission drive device of the present invention, the sum of 

the peak powers of the two stepping motors is effectively available 

at the output, when each motor is dnven at a rotational speed above 

the minimum speed for providing - the plateau value for its peak 

power output. 

As is easily understood, this total peak power output of the 

transmission device of the present invention is available at any 

output speed. Accordingly, at low output speed, the output torque 

can be very high. 

(CX-1 at 1: 15-23, 1:48-54,252-56,7:65-8:7 (emphasis added).) Thus, the administrative law 

judge finds, as disclosed in the specification of the ‘932 patent, that one of the goals of the 

32 
invention is to provide peak power output over the continuously variable range of the rotational 

speed, and that the specification of the ‘932 patent links the requirement of peak power output 

with a “continuously variable” output. 

The administrative law judge further finds that the specification of the ‘932 patent 

includes further references to “peak power” that stress the importance of “peak power” with 

respect to the claimed invention: 

The effective range over which the peak power output can be 

maintained increases with the number of Pears in the transmission 

device, but onlv in the sense that the range is made up of 

overlaming - subranges, each sub-range being a narrower rpm range 

over which the Deak Dower is output when the known transmission 

device is in a respective one of the nears. However, the larger the 

number of gears, the heavier and more expensive the transmission 

device becomes, and the less efficient due to the number of 

interfaces (mechanical links) across which the power must be 

transferred. 

*** 

Yet another object of the present invention is to provide a flywheel 

unit employing the combination motor and transmission device of 

the present invention in a conventional vehicle, for storing power 

for supdementing Deak Dower when needed, and as well for 

regenerative braking. 

*** 

If the source of electrical power is a battery, then the wheel 10 can 

be driven with full battery Dower at any speed in the range between 

full forward and reverse weeds. As is explained in the following, 

the combination motor and transmission device 1 can provide full 

power to the wheel 10 while rotating it at any speed in this large 

range, thus being an effective and efficient infinite speed 

transmission device. 

If the two inputs 2,3 are driven at nearly equal but opposite speeds, 

then the wheel 10 is rotated at very low speed, but with very high 

33 
available torque, corresponding to the available peak power from 

the battery. For each such output speed below the extreme 

maximum forward speed and the extreme maximum reverse speed, 

there is in fact a continuum of combinations of the speeds of the 

two inputs 2,3. 

*** 

A more complex approach for the embodiment of FIG. 3 would be 

to start with both rotational mechanical inputs 2,3 at the same 

speed but in opposite directions, and to slow one more than the 

other until at top speed of the vehicle the two mechanical inputs 

are rotating together in the same direction. This in effect provides a 

flywheel-twe supplementation of the peak power from the battery 

by taking kinetic energy stored in advance in one of the rotating 

disks 23,33. 

*** 

However, the pumose of this embodiment is to store energy for 

times of peak power need, such as for either foreseen or 

unexpected acceleration events, or for mechanical storage of 

kinetic energy obtained when the vehicle was braked, by speeding 

up the flywheel by the braking process itself to convert the kinetic 

energy of the entire vehicle to kinetic energy of the one or more 

flywheels contained in the combination motor and transmission 

device 1. Various designs can be suited to these various purposes. 

It suffices to describe the embodiment of FIG. 6 as directed to 

supplementation of peak power only. 

(CX-1 at 1:55-65,3:15-20,5:31-46,9:5-13,9:23-34 (emphasis added).) 

The administrative law judge further finds that the applicant, in the prosecution history, 

relied on the “continuously variable” limitation to overcome a prior art rejection, on a patent to 

Roe4 defining “continuously variable” as synonymous with “truly infinite speed transmission”: 

The Examiner rejected original claim 2, which after amendment became claim 7 in 

issue, on Roe. Thereafter in that only substantive amendment, applicant argued patentability of 

asserted claim 7 over Roe. What followed was the issuance of the ‘932 patent with asserted 

claim 7. See Section VI. supra. 

34 
[Roe U.S. Patent No. 3,161,0831 thus only approximates the 

feature of the present invention of providing “continuously 

variable” rotational outwt meeds. that is. of a true continuously 

variable infinite speed device. 

*** 

Unlike this feature of Roe, the present invention teaches providing 

a truly infinite speed transmission ... 

(RX-7, Amendment at 20-21, TMC01-082578-79 (emphasis added).) As found supra (CX-1 at 

Abstract, 1: 15-21, 1:48-54,2:52-56,7:65-8:7), the specification of the ‘932 patent defines 

“infinite speed transmission” as an infinite speed combination motor and transmission device, 

namely which can deliver peak power output with a continuously variable speed of rotation over 

a very large range of the rotational speed of the output. While speed and power are generally two 

distinct components that do not necessarily have a relational connection, the patentee has linked 

the requirement of continuously variable rotational speed of the output with the requirement of 

peak power for each speed in the range of rotational speed, both in the specification and the 

prosecution history. (See CX-1 at Abstract, 1: 15-26, 1:48-54,2:52-56,7:65-8:7; RX-7, 

Amendment at 20-21, TMCO1-082578-79.) For the foregoing reasons, the administrative law 

judge finds that the output must provide peak power for the rotational speed of said output to be 

continuously variable. 

Also in issue is whether “continuously variable” output allows for intervening gear 

reductions. The administrative law judge finds that claim 7 of the ‘932 patent is silent as to the 

presence of intervening gear reductions. (See CX-1 at 11:35-46.) However, the administrative 

law judge further finds that the prosecution history shows that the applicant distinguished the 

invention of the ‘932 patent from Roe by claiming that the claims of the ‘932 patent are directed 

35 
to a continuously variable transmission that achieves its results without the presence of 

intervening reduction gears: 

[Roe] thus only approximates the feature of the present invention 

of providing “continuously variable” rotational output meeds. that 

is, of a true continuouslv variable infinite speed device. 

*** 

Unlike this feature of Roe, the present invention teaches providing 

a trulv infinite speed transmission, wherein the gear ratio varies 

from a very small or very large ratio to a 1: 1 direct drive to the 

surface on which a vehicle incorporating the invention rides, with 

no intervening gear reduction to the surface. By contrast. the prior 

art of Roe teaches a large - number of gears between the mechanism 

cited by the Examiner and the wheel bein? driven, including even a 

right angle along the line of power transmission. It is a maior 

advantage of the present invention that all this is avoided, as 

wasteful of mechanical power and unduly heavy and expensive. 

(Rx-7, Amendment at 20-21, TMCO1-082578-79 (emphasis added).) The administrative law 

judge further finds that the specification of the ‘932 patent is consistent with the patentee’s 

disclaimer of claim scope encompassing a transmission unit with intervening reduction gears 

because said specification explicitly criticizes the presence of multiple gears: 

In these transmissions, the ratio of the speed of rotation of the input 

to the speed of rotation of the output is one of a set of fixed values 

corresponding to the set of gears. These typically involve a large 

number of parts, undesirable weight for manv applications 

particularly in vehicle Dropulsion. and high losses due to multiple 

transfers of the Dower between the many components within the 

transmission device, or within the drive device incornorating the 

transmission device. 

*** 

However, the larger the number of gears, the heavier and more 

expensive the transmission device becomes, and the less efficient 

due to the number of interfaces (mechanical links) across which the 

36 
power must be transferred. 

*** 

Another object of the invention is to provide a combination motor 

and transmission device, for driving a wheel of an electrically 

powered vehicle, which is lightweight and highly efficient, as a 

result of a small number of ~arts, low losses and regenerative 

braking with antilock braking easily adapted 11/28/90. 

(CX-1 at 1:39-47,61-65,3:0-14.) For the foregoing reasons, the ahnistrative law judge finds 

that complainant is estopped from arguing that “continuously variable” allows for intervening 

gear reductions. 

Based on the foregoing, the administrative law judge interprets ”wherein the rotational 

speed of said output is continuously variable” as: 

the rotational speed of the output of the mechanical power 

transmission unit can be varied such that any desired rotational 

speed, from a negative maximum value to a positive maximum 

rotational value, can be attained at peak power and with no 

intervening gear reduction to the component being dnven. 

Complainant argued that the ‘932 patent specification’s use of the term “peak power” 

makes it clear that the ability to attain peak power is preferable, and not a mandatory limitation 

that should be imported into the claim. (CBr at 5 1-52.) Complainant characterized the ability to 

provide over a wider range of output speeds as an advantage of the invention and argued that “it 

is well settled that aspects or benefits of particular embodiments should not be read as claim 

limitations.” (CBr at 52.) However, the administrative law judge finds that the specification 

discloses that providing peak power output is not a “benefit” but a requirement for “continuously 

variable” output. For example: 

An obiect of the invention is to provide an infinitespeed 

37 
combination motor and transmission device, namely which can 

deliver peak Dower output with a continuously variable speed of 

rotation over a very large range of the rotational speed of the 

output. 

*** 

As is easily understood, this total peak Dower outDut of the 

transmission device of the mesent invention is available at any 

outDut speed. Accordingly, at low output speed, the output torque 

can be very high. 

(CX-1 at 2:52-56,7:65-8:7 (emphasis added).) 

Complainant also argued that respondents’ interpretation, namely the “peak power 

requirement,” cannot be correct because the ‘932 patent states that any type of electric motor can 

be used (CBr at 52; CFF 158-160): 

Any type of electrical motor can be incorporated into each input, 

for converting electrical power supplied to the motor to rotating 

mechanical power of that input. 

(CX-1 at 7:26-29.) Complainant further argued that its expert Davis testified that the ‘932 patent 

discloses that different types of motors can be used to accomplish the advantages of the 

invention: 

Q. I would like to direct your attention to column 7, starting at 

line 26 of the patent. Do you see the statement which 

reads: Any type of electric motor can be incorporated into 

each input for converting electrical power supplied to the 

motor to rotating mechanical power of that input? 

*** 

Q. Did you consider that portion of the patent in forming your 

opinion in this case? 

A. Yes. Basically, it’s saying that you don’t have to use exactly 

the motors that are depicted in some of these figures. You 

38 
could use different variations. 

(Davis Tr. at 857-858.) Complainant also argued that, despite this statement in the ‘932 patent, 

respondents’ expert Caulfield admitted that one of ordinary skill in the art would understand that 

conventional electric motors only have a single peak power point, and therefore, Caulfield’s 

“peak power requirement” could only be met by using esoteric engines that did not exist in 1990. 

(CBr at 52; CFF 429.) 

A claim limitation written in a means-plus-function form, reciting a function to be 

performed rather than a definite structure, is subject to the requirements of 35 U.S.C. 9 112, ¶ 6 

(1994). B. Braun Med.. Inc. v. Abbott Lab., 124 F.3d 1419, 1424 (Fed. Cir. 1997). As such, 

the limitation must be construed “to cover the corresponding structure, material, or acts described 

in the specification and equivalents thereof.” 35 U.S.C. 6 112,p 6; B. Braun Med., 124 F.3d 

at 1424. 

The administrative law judge finds that the “first power input means,” and “second power 

input means” are means-plus-function claim limitations whose structure includes the field 

elements of the two electric motors disclosed in Figures 3,4,5 and 6 of the ‘932 patent and their 

equivalents under 35 U.S.C. 8 112, ‘1[ 6. Likewise, the administrative law judge finds that the 

“power conversion means” is also a means-plus function claim limitation whose structure 

includes the field elements and armature elements of the two electric motors disclosed in said 

Figures 3,4,5 and 6, and their equivalents under 35 U.S.C. 0 112, q[ 6. Thus, the administrative 

law judge finds that the structure of an electric motor that is part of the combination motor and 

transmission device of the ‘932 patent must conform to the structural limitations disclosed in the 

specification of the ‘932 patent or be deemed an equivalent to the disclosed structure in the 

39 
specification of the ‘932 patent under 35 U. S. C. 8 112, ‘I[ 6. Hence, the administrative law judge 

finds that not any motor can be used in the combination motor and transmission device, despite 

the cited sentence of the ‘932 patent, because the motor must conform to the structural 

limitations disclosed in the specification of the ‘932 patent and its equivalents under 35 U.S.C. 8 

112, 6. In other words, the administrative law judge finds that the opinion of Davis, who was 

not qualified as an expert in patent law, as to the effect of the general language cited at column 7, 

lines 26 to 29 of the patent ‘932 is irrelevant because said language of the specification of the 

‘932 patent does not allow the use of structures other than the disclosed corresponding structures 

and their equivalents under 35 U.S.C. 0 112,¶6 to satisfy the means-plus-function limitation. 

In addition, the administrative law judge finds that Davis later conceded that said 

language of the specification of the ‘932 does not allow the use of structures other than the 

disclosed corresponding structures and their equivalents under 35 U.S.C. 8 112,¶6: 

Q. And how, if at all -- 

JUDGE LUCKERN: How far can you go when you say different 

variations? 

THE WITNESS: Well, I think you can use different motors. 

But you would have to maintain some of the 

key features which, again. would be to take 

these transmission elements and Rull them 

inside the motor itself so that YOU could 

reduce the axial dimensions. 

(Davis Tr. at 858-859 (emphasis added).) 

Finally, the administrative law judge finds that the single sentence (CX-1 at 7:26-29) 

cannot outweigh the numerous sections of the specification of the ‘932 patent where the patentee 

describes the requirement of peak power output and links it to the terms “continuously variable” 

40 
and “infinite speed” nor does the administrative law judge find said sentence consistent with the 

prosecution history. Thus, the administrative law judge rejects complainant’s argument that 

“peak power” cannot be a requirement of “continuously variable.” 

Complainant further argued that claim 7 does not require that there be no intervening gear 

reduction to the component being driven because this limitation is entirely missing from claim 7, 

and it is expressly captured in other dependent claims. (CBr at 53.) For example, complainant 

argued that claim 6 and claim 14 (which depends from claim 7) both require that the output be 

directly connected to the vehicle wheel. (CBr at 53; CFF 200-203.) Complainant further argued 

that the patent includes examples where there is an intervening gear reduction to the component 

being driven. (CBr at 53.) For example, complainant argued that the Figure 6 embodiment is 

connected to a differential and therefore includes a gear reduction between the transmission unit 

and the wheels. (CBr at 53; CFF 199.) Complainant in addition argued that because the file 

history expressly states that a “direct driving of a wheel” limitation would be an addtional 

limitation to claim 1, it cannot be part of the definition of the “continuously variable” language 

that already appears in claim 1. (CBr at 54.) 

The administrative law judge finds that none of the language of the claims that are not at 

issue in this investigation changes the fact that the applicant argued before the Patent Office that, 

inter alia, claim 7 of the ‘932 patent differentiated from the Roe prior art because “the present 

invention teaches providing a truly infinite meed transmission. ... with no intervening gear 

reduction to the surface.” (RX-7, Amendment at 20-21, TMCOl-082578-79 (emphasis added).) 

Thus, he finds that the applicant disclaimed any scope relating to “continuously variable” that 

includes any intervening gear reduction to the surface. Moreover, the administrative law judge 

41 
finds that claim differentiation is not necessarily controlling, as he has found with the “integral 

combination”1imitation. Section VII.. A. 3 infra. 

It is argued that claim 7 should be construed to uphold its validity and therefore should 

not include the “peak power” requirement. (CRBr at 59.) However, if the only claim 

construction that is consistent with the written description and prosecution history, renders said 

claim invalid, then the claim should be held invalid. See Rhine, supra. 

3. “and 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 extent within an envelope 

containing the other” 

In issue is said claimed phrase (“integral combination” limitation), which is found in 

independent claim 7 of the ‘932 patent, the only asserted claim of the ‘932 patent. In said 

claimed phrase, there are two separate claimed sub-phrases: “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” and “each said integral combination involving one of said two 

respective elements thereof being at least to a large extent within an envelope containing the 

other.” The parties have treated each of said sub-phrases separately. Thus complainant argued 

that one of ordinary skill in the art would understand “integral combination of a respective 

electric motor element and an element of said transmission unit” to mean: 

an electric motor element is formed as a unit with an element of the 

mechanical transmission unit, namely the two components are 

mechanically joined with geometric overlap. 

(CBr at 55 (emphasis added).) It is further argued that the specification of the ‘932 patent states 

that Figures 3,4, and 5 show an essential electric motor element integrally connected with an 

42 
essential transmission unit element and that each of the embodiments shown in Figures 3,4, and 

5 depict electric motor elements mechanically joined and “geometrically overlapping” with 

mechanical transmission unit elements. (CBr at 55-56.) In addition it is argued that the Figure 6 

embodiment also contains an integral combination of motor and transmission elements and that 

Figure 6 shows a connection between ring gear 36 and hub 26 of the planetary unit embodiment 

respectively connected to the disks 33 and 23 within the geometry of the motors. (CBr at 56.) It 

is further argued that prior art stand alone motors had motor elements located between the 

bearings and the connection point to the motor was outside the geometry of the motor. (CBr at 

56.) It is also argued that in contrast to the prior art motors, the integrally combined motor and 

transmission system of the ‘932 patent is more compact where the mechanical connection 

between the motor and transmission is made inside the geometry of the motor. (CBr at 56-57.) 

Complainant further argued that one of ordinary skill in the art would understand the subphrase “two respective elements thereof being at least to a large extent within an envelope 

containing the other” to mean: 

for each integral combination, either the electric motor element or 

the element of the transmission unit is located within a geometric 

enclosure containing the other element of that integral 

combination. 

(CBr at 64; CFF 245.) It is argued that the term “envelope” is a commonly used term in the art of 

automotive engineering and transmission systems to describe a geometric enclosure, for example 

the interior of a transmission housing. (CBr at 64; CFF 245-248.) It is also argued that the 

preferred embodiment of the ‘932 patent shows the integral combinations of an electric motor 

element and an element of the mechanical transmission located with an area defined by “half 15 

43 
of a housing.” (CBr at 64-65; CX-1 at 4:24-32,6:23-31.) Complainant argued that each of the 

embodiments show this feature of the invention, namely an integral combination within each half 

of the housing. (CBr at 65; CFF 250-252.) 

Respondents argued that one of ordinary slull in the art would understand the sub-phrase 

“integral combination of a respective electric motor element and an element of said transmission 

unit” to mean: 

for each of the two electric motors, the armature or field of the 

motor is rigidly fixed together with an element of the transmission 

unit, such that the two elements are combined without shafts, 

bearings and other elements therebetween. 

(RBr at 27.) 

Respondents also argued that complainant’s construction is “a claim construction 

divorced from the context of the written description and prosecution history.” (RBr at 28-29.) 

Respondents argued that this is so because, according to complainant’s construction, virtually 

any mechanical connection of a motor and a transmission device can be considered an “integral 

combination,” even if there are shafts, bearings, and other elements between the motor element 

and the corresponding gear element, and even if the two components are non-fixedly connected, 

e~., via a spline connection, provided the two components are joined “with geometric overlap,” 

an exmession nowhere to be found in the ‘932 Datent. (RBr at 28.) Respondents argued that 

complainant must take this position because all of respondents’ accused transaxles have shafts 

and other elements, including non-fixed spline connections, between the rotating motor elements 

(le, the permanent magnets of MGl and MG2) and the corresponding gear elements in the 

44 
planetary gear transmission. (RBr at 28.)5 

Respondents' reference to the accused transaxles in claim interpretation is appropriate. 

Thus, in Wilson Sporting - Goods Company v. Hillerich & Bradsbv Co., 442 F.3d 1322, 1330-31 

(Fed. Cir. 2000), the Court stated: 

To reiterate, this court has discussed the claim interpretation based 

solely on the claim language and the context of the patent. 

Unfortunatelv this court lacked the full context of this infringement 

action and the claim construction component of infringement 

because the record on appeal contains no description of the accused 

infringing devices. Without that additional context. this court 

cannot fully and confidently review the infringement judgment, 

includinp - its claim construction component. 

This court, of course, repeats its rule that "claims may not be 

construed with reference to the accused device." NeoMagic Corn. 

v. Trident Microsvstems, Inc., 287 F.3d 1062, 1074 

(Fed.Cir.2002); SRI Int'l v. Matsushita Elec. Corn. of Am., 775 

F.2d 1107, 11 18 (Fed.Cir. 1985) (en banc). As noted earlier, that 

rule posits that a court may not use the accused product or process 

as a form of extrinsic evidence to supply limitations for patent 

claim language. Thus, the rule forbids a court from tailoring a 

claim construction to fit the dimensions of the accused product or 

process and to reach a preconceived judgment of infringement or 

noninfringement. In other words, it forbids biasing the claim 

construction process to exclude or include specific features of the 

accused product or process. The rule, however, does not forbid 

awareness of the accused product or process to supplv the 

parameters and scope of the infringement - analysis, including its 

claim construction component. In other words, the "reference" rule 

accepted in Pall Corp., Multiform Desiccants, and Scripps Clinic 

does not forbid any glimpse of the accused product or process 

during or before claim construction. Pall Corp., 181 F.3d at 1308; 

Multiform Dessicants, 133 F.3d at 1478; Scrip~s Clinic, 927 F.2d 

at 1580. In light of these principles, if the litigants cannot 

themselves inform a trial court of the specific issues presented bv 

the infringement inquiry-that is, issues of the breadth of the claim 

construction analysis and the most useful terms to facilitate that 

defining process-then a trial court may refer to the accused product 

or process for that context during the process. For instance in this 

case, this court is puzzled by the relevance of "rigid" in this claim 

construction analysis. Without the full infringement context, 

45 
It is also argued that one goal of the ‘932 patent is to minimize the number of interfaces 

or mechanical links across which power must be transferred. (RBr at 29.) Consistent with that 

goal, it is argued, the specification of the ‘932 patent specifically criticized the use of shafts in 

the prior art as a means of transmitting power between an electric motor and a transmission unit. 

(RBr at 29.) It is further argued that in place of a shaft, the patentee disclosed an “integral 

combination” of an “essential motor element” and an “essential transmission unit element,” 

which he described as a feature of “the present invention.” (RBr at 3 1 ; RFF-4.3 1 .) Thus, 

respondents argued that the specification of the ‘932 patent makes “crystal clear” that the use of 

an “integral combination” of a respective motor and transmission element eliminates the need for 

a shaft between those two elements. (RBr at 31; RFF-4.31.) It is further argued that every 

embodiment in the ‘932 specification shows a motor element rigidly fixed together with a 

transmission element without shafts, bearings, or other elements between them. (RBr at 32; RFF4.34.) It is also argued that during prosecution of the ‘932 patent, the applicant repeatedly touted 

the “integral combination” limitation as an “important” and “key feature” of his invention, and 

argued that it “distinguished his pending claims from the prior art.” (RBr at 33; RFF-4.39.) It is 

including some record evidence about the accused devices, this 

court does not fully understand the necessity for inserting “rigid” 

into claims without that express language. Moreover, this court 

cannot assess the meaning of “rigid” in the context of this 

invention. 

*** 

Accordingly, this court vacates and remands to the district court for 

a detailed analysis of the disputed claim construction, and for any 

further findings or conclusions. 

(emphasis added.) 

46 
further argued that the applicant’s arguments to the Patent Office show that an “integral 

combination” cannot have “shafts and bearings and other elements” between the respective 

motor and transmission elements. (RBr at 35.) 

Respondents argued that the specification of the ‘932 patent describe the armature and the 

field, not the rotor or rotor shaft, to be an essential “electric motor element.” (RBr at 38; RFF4.66-4.68.) It is further argued that the patentee repeatedly asserted throughout the ‘932 

specification and prosecution history that the claimed “integral combination” eliminated the need 

for a shaft between a respective motor element and transmission element. (RBr at 38.) It is 

further argued that many of the applicant’s statements made during prosecution would be 

“rendered nonsensical” if a rotor shaft could be considered an essential “electric motor element.” 

(RBr at 39-40; RFF-4.70, -4.72.) 

Respondents also argued that an “integral” combination for two components is commonly 

understood by mechanical engineers to mean that the two components are rigidly fixed together. 

(RBr at 40; RFF-4.74.) It is further argued that the specification of the ‘932 patent uses 

“integral” consistent with its ordinary meaning in the art, i.e. the specification describes the two 

components as being “rigidly fixed” together, or one component being “mounted fixedly” on the 

other.” (RBr at 41; RFF-4.75, -4.78.) 

Respondents also argued that one of ordinary skill in the art would understand the subphrase “each said integral combination involving one of said two respective elements thereof 

being at least to a large extent within an envelope containing the other” to mean: 

each integral combination is contained entirely or nearly entirely 

within the imaginary space defined by the rotation of either the 

respective electric motor element (le, the armature or field) or the 

47 
respective transmission unit element. 

(RBr at 43.) It is further argued that the claim language “makes clear” that the “envelope” must 

be drectly associated with one of the two elements of the claimed “integral combination” 

because dependent claim 8 narrows claim 7 by further requiring that the “envelope is that of said 

respective motor element.” (RBr at 43; RFF-4.115-4.116.) Thus, respondents argued, in claim 7, 

envelope in question can be either that of the motor element or that of the transmission element 

whereas claim 8 narrows that requirement by requiring that the envelope be “that of said 

respective motor element.” (RBr at 43-44.) 

Respondents also argued that during prosecution, the applicant emphasized that by 

locating the gear element “within the envelope” of the armature, “power its taken off from inside 

the armature itself “rather than being “taken out by a driven shaft from a free-standing electric 

motor;” and that those facts make clear that, in claim 7 of the ‘932 patent, the 

armature/transmission combination must be entirely or nearly entirely inside the volume defined 

by the sweep of the armature (or the sweep of the transmission element.) (RBr at 45; RF-4.113.) 

The staff argued that the sub-phrase “integral combination of a respective electric motor 

element and an element of said transmission unit” should be interpreted to require an element of 

the planetary transmission (e, a planetary gear, ring gear, or sun gear) to be rigidly and directly 

attached to an element of the electric motor (e, the armature or field assembly) without the 

presence of shafts, bearings, or spacers between the motor element and the transmission element. 

(SBr at 18.) Moreover, it is argued that neither component of such an “integral combination” 

should be able to “stand alone” and the integral combination must be supportable by a single 

bearing. (SBr at 19.) The staff further argued that the ‘932 patent specification’s use of the term 

48 
“integral combination” supports an interpretation of said phrase that requires an essential 

member of the motor, such as the armature or field element(s), be rigidly attached to an essential 

element of the transmission device, such as the planetary gear, ring gear or sun gear. (SBr at 19- 

21.) 

The staff also argued that during prosecution, in responding to the Examiner’s rejection 

of application claims as either anticipated or obvious, the applicant’s statements made clear that 

the absence of shafts and bearings is a feature of application claim 2, which issued as asserted 

independent claim 7. (SBr at 21-23.) It is also argued that the applicant’s statements made clear 

that the key feature of the “present invention” is an integral combination of armature and 

respective gear element that cannot be separated and that such combination can be supported by a 

single bearing. (SBr at 23-24.) It is further argued that the applicant made clear that a device 

satisfying the elements of claim 7 must have only one bearing supporting the “integral 

combination” and, thus, cannot have a shaft within the “armature” upon which the transmission 

element is mounted. (SBr at 24-25.) 

The staff argued that treatises during the relevant time frame make clear that one of 

ordinary skill in the art would not consider the term “integral combination” to encompass 

structures joined together using splines. (SBr at 27.) It is also argued that other claims of the 

‘932 patent support the staff‘s proposed interpretation. (SBr at 28.) 

The staff argued that the entire clause6 comprising, inter alia, “each said integral 

The staff interpreted the following phrase as a unit: 

each said integral combination involving one of said two respective 

elements thereof being at least to a large extent within an envelope 

containing the other, whereby a compact structure is provided for 

49 
combination involving one of said two respective elements thereof being at least to a large extent 

within an envelope containing the other” and “whereby a compact structure is provided for each 

said integral combination,” should be interpreted as instructing one of ordinary skill how to 

achieve the claimed “integral combination” of the preceding clause. (SBr at 33.) Thus, the staff 

argued, in order to satisfy the “integral combination” element, the armature and/or the essential 

transmission element must be within an “envelope” containing the other, whereby a compact 

structure is provided for each integral combination, and the two integral combinations are located 

closely adjacent to each other. (SBr at 33.) The staff further argued that the term “envelope” 

while encompasses “housing,” should be limited to “housings” that encompass combination 

motor transmissions that come within the sweep of the essential electric motor element that is 

integrally combined with an essential transmission element. (SBr at 34.) Thus, it is argued, that 

the phrase “each said integral combination involving one of said two respective elements thereof 

being at least to a large extent within an envelope containing the other,” as properly interpreted, 

is satisfied if both combination motor transmissions are placed within a housing when the 

respective gear element of each respective “integral combination” is approximately within 

envelope [sic] of the respective electric motor element, i.e., the gear element is within the sweep 

of the rotating electric motor element. (SBr at 35.) 

The administrative law judge finds that the sub-phrase “each said integral combination 

involving one of said two respective elements thereof being at least to a large extent within an 

each said integral combination, and said two integral combinations 

are located closely adjacent each other, [sic] 

(CX-1 at 11:40-46.) 

50 
envelope containing the other” should be viewed in the context of the sub-phrase “integral 

combination of a respective electric motor element and an element of said transmission unit,” 

because “envelope” requires, inter alia, an “integral combination,” and thus “envelope” can’t be 

defined without first defining “integral combination.” Thus, the administrative law judge is 

interpreting the two sub-phrases together as a collective phrase. 

Intrinsic evidence comprises the claims, the specification including the abstract and 

figures and prosecution history. Referring to asserted claim 7 and other claims of the ‘932 

patent, and with respect to “integral combination,” the administrative law judge finds that the 

plain meaning of the term “integral,” as defined by Random House College Dictionary is “1. of, 

pertaining to or belonging as an essential part of the whole constituent or component. 2. made of 

parts that together constitute a whole. 3. entire; complete.” (SBr at 18.)7 

The administrative law judge further finds that the language in claim 7 of the ‘932 patent, 

namely, “and said power conversion means includes, for each of said first and second Dower 

inputs, a resDective integral combination of a respective electric motor element and an element of 

said transmission unit ... and said two integral combinations are located closely adjacent each 

other [sic]” requires that the combination motor and transmission device has two integral 

combinations. (CX-1 at 11:36-40,45-46 (emphasis added).) The administrative law judge 

further finds that claim 7 of the ‘932 patent states that an integral combination comprises an 

Dictionary definitions are not necessarily controlling in claim interpretation. 

Phillips where the Federal Circuit concluded that the line of cases exemplified by Texas Digital 

Systems. Inc. v. Telegenix Inc., 308 F.3d 1193 (Fed. Cir. 2002) placed “too much reliance on 

extrinsic sources such as dictionaries, treatises, and encyclopedias and too little on intrinsic 

sources, in particular the specification and prosecution history.” 415 F.3d at 1320. also 

Nystrom and Free Motion, supra. 

51 
electric motor element, and a transmission unit element: 

and 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 

(CX-1 at 11:36-40 (emphasis added).) 

As to the other claims of the ‘932 patent and the phrase “integral combination,” 

independent claim 1 of the ‘932 patent includes the following language: 

each said integral combination involving said two respective 

elements thereof being directly associated mechanicallv and 

peometricallv with each other without substantial spacing or other 

elements including bearings and shafts therebetween. 

(CX-1 at 10:13-18 (emphasis added).) The administrative law judge finds that said language 

articulates that two elements of an integral combination are “directly associated mechanically and 

geometrically with each other” and then further defines this association as “without substantial 

spacing or other elements including bearings and shafts therebetween.” (CX-1 at 10: 15-18.) 

While the administrative law judge finds that claim 1 uses the term “geometrically,” he further 

finds that the claim also uses the terms “directly” and “rnechani~ally~~ and goes on to further 

define these terms, emphasizing that there cannot be substantial spacing or other elements 

between the integral combination elements. In addition, the administrative law judge finds that 

the applicant defined the concept “geometrically” in claim 1, which word “geometrically” was 

added to claim 1, in the amendment filed May 29,1991, as the absence of shafts, bearings and 

other elements. Thus it was argued in said amendment: 

Secondary and more importantly, this prior art does not at all teach 

or in any way suggest the feature of the present inventions as 

recited in [amended] independent claims 1 [now patent claim 11 

52 
and 2 [now asserted patent claim 71 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. 

(RX-7 at TMC01-082479 (emphasis added).)’ 

The administrative law judge finds that under complainant’s interpretation of “integral 

combination” (I.e. an electrical motor element is formed as a unit with an element of the 

mechanical transmission unit, namely the two components are mechanically joined within 

geometric overlap), virtually any mechanical connection of a motor and a transmission device 

can be considered an “integral combination,” even if there are shafts, bearings, and other 

elements between the motor element and the corresponding gear element, provided the two 

components are joined “with geometric overlap,” an expression nowhere to be found in the 

lanpuage of the claims. or anywhere in the ‘932 patent. Thus, if complainant’s interpretation was 

applied to claim 1 of the ‘932 patent, “integral combination” could potentially contradict the ty 

express limitation of “without substantial spacing or other elements including bearings and shafts 

therebetween .” 

The term “geometric overlap” is found in the remarks to the amendment. Thus it was 

argued: 

There is no extended transmission transmission [sic] linkage with 

plural support points as in the prior art, because the drive train is 

direct, with the respective elements beign [sic] immediately 

adjacent each other, and having a close geometric overlap, or a 

nearly common volume in space, totally unlike the prior art. 

(RX-7, TMCO1-082580 (emphasis added).) However, as seen supra, the applicant described the 

“integral combination” of the “present invention” as not containing shafts, bearings, and other 

elements between the respective elements. 

53 
Claim 3 of the ‘932 patent, which depends on claims 1 and 2 of the ‘932 patent, includes 

the following language: 

The combination motor and transmission device of claim 2, 

comprising 

a first element of said first electric motor being an armature that is 

connected rigidlv to a resDective ueriuheral uart of a first one of 

said pair of drive gears to rotate with said first drive gear, 

a first element of said second motor being an armature that is 

connected rigidlv to a respective peripheral part of the second one 

of said pair of drive gears to rotate with said second drive gear, 

*** 

wherein each said element of the respective one of said electric 

motors of each said integral combination is said armature thereof. 

(CX-1 at 10:37-46,55-57 (emphasis added).) The administrative law judge finds that said claim 

specifies that in each “said integral combination” the armature is the element of the electric 

motor, k, one element of the integral combination, and that it is “connected rigidly” with the 

drive gear, which the ‘932 patent explains, is an element of the transmission unit, k, the other 

element of the integral combination. Thus, the administrative law judge finds that said claim 

requires a rigid connection in describing the “integral combination.”’ 

Claim 9 of the ‘932 patent, which depends on claims 7 and 8 of the ‘932 patent, includes 

the following language: 

wherein each said intea-a1 combination comurises a resuective on e 

Jsicl of said drive gears a rsicl the respective element of said 

transmission unit, each said drive gear - being mechanically 

The administrative law judge finds that claims 11 and 12 of the ‘932 patent, which 

depend on claims 7,8 and 10 of the ‘932 patent similarly require a rigid connection in 

referencing “integral combination. (CX-1 at 1224-33,44-46,47-56; 13: 1-4.) 

54 
connected with the respective electric motor element 

(CX-1 at 11:66 - 12:2 (emphasis added).) Thus, the administrative law judge finds that said 

claim requires a mechanical connection in describing the “integral c~mbination.”’~ Under 

complainant’s interpretation of “integral combination” & an electrical motor element is formed 

as a unit with an element of the mechanical transmission unit, namely the two components are 

mechanically joined within geometric overlap), virtually any mechanical connection of a motor 

and a transmission device can be considered an “integral combination,” even if the two 

components are non-rigidly connected, provided the two components are joined ”with geometric 

overlap,” an expression nowhere to be found in the language of the claims, or anywhere in the 

‘932 Datent. Thus, again, if complainant’s interpretation was applied to claim 3 of the ‘932 

patent, “integral combination” could potentially contradict the express limitation of “rigidly 

connected.” 

Complainant argued that while the disputed term “integral combination” is recited in 

independent claims 1 and 7, only claim 1 imposes the express limitation that requires an absence 

of spacing, bearing or shafts, and thus, the term “integral combination” does not require two 

elements that are rigidly fixed together “without shafts, bearings, or other elements there 

between,” as these requirement are expressly set forth in claim 1. (CBr at 59; CFF 220.) 

Complainant further argued that respondents’ interpretation impermissibly adds a limitation, 

namely “two elements are combined without shafts, bearings, or other elements between,” which 

is expressly present in claim 1 of the ‘932 patent, to claim 7 of the ‘932 patent, where said 

lo The administrative law judge finds that claim 23 of the ‘932 patent, an independent 

claim, similarly requires a mechanical connection in referencing “integral combination.” 

55 
limitation is not expressly present. (CBr at 59.) 

The admmistrative law judge rejects this argument because, as found infra, the patentee, 

in the specification of the ‘932 patent, repeatedly criticized prior art combinations of 

transmission devices and electric motor devices that included shafts, bearings, and other 

components; describes the electric motor element of the integral combination being held by a 

single bearing; equates “integrally connected” with the absence of components in between the 

electric motor element and the transmission unit element. and describes an “integral 

combination” of the electric motor element and the transmission unit element as the two 

elements being rigidly fixed together, or one component being mounted fixedly on the other. 

Furthermore, as found infra, the applicant, in the prosecution history of the ‘932 patent, describes 

the “integral combination” of the “present invention” as not containing shafts, bearings, and other 

components between the respective elements. 

The doctrine of claim differentiation, which complainant appears to rely on, is ultimately 

based on the common sense notion that different words or phrases used in separate claims are 

presumed to indicate that the claims stated in dependent claims are not to be read into the 

independent claim from which they depend. Karlin Tech, Inc. v. Surgical Dynamics Inc., 177 

F.3d 968, (Fed. Cir. 1999). Thus, there is presumed to be a difference in meaning and scope 

when different words or phrases are used in separate claims. To the extent that the absence of 

such difference in meaning and scope would make a claim superfluous, the doctrine of claim 

differentiation states the presumption that the difference between claims is significant. At the 

same time, practice has long recognized that claims may be multiplied to define the metes and 

bounds of the invention in a variety of different ways. Thus two claims that read differently can 

56 
cover the same subject matter. Tandon Corn. v. United States International Trade Commission., 

831 F.2d 1017, (Fed. Cir. 1987). Claim differentiation moreover only creates a presumption that 

each claim in a patent has a different scope. Thus it is not a hard and fast rule of construction. 

That the patentee chose several words in drafting a particular limitation of one claim, but fewer 

(though similar) words in drafting the corresponding limitation in another, does not mandate 

different interpretations of the two limitations, since defining a state of affairs with multiple 

terms should help, rather than hinder, understanding. Moreover, that the claims are presumed to 

differ in scope does not mean that every limitation must be distinguished from its counterpart in 

another claim, but only that at least one limitation must differ. Kraft Foods Inc. v International 

Trading Co., 203 F.3d 1362 (Fed. Cir. 2000). Significantly the doctrine of claim differentiation 

cannot broaden claims beyond the scope that is supported by the specification and prosecution 

history. The presumption that separate claims have different scope is a guide, not a rigid rule. 

ATD Corn. v. Lvdall Inc., 159 F.3d 534, (Fed. Cir. 1998). Claim differentiation therefore does 

not always control claim construction. If a claim will bear only one interpretation, similarity with 

another claim will have to be tolerated. Laitram Corn. Morehouse Indus. Inc., 143 F.3d 1456 

(Fed. Cir. 1998). Thus, the doctrine of claim differentiation cannot overshadow the express and 

contrary intentions of the patent draftsman. Moreover, in general, claim differentiation applies 

when dealing with an independent claim and a dependent claim, and generally does not apply 

when dealing with two independent claims, as in the case of claims 1 and 7 of the ‘932 patent. 

Finally, claim differentiation, in general, applies when the only difference between the two 

claims is the specific limitation that is being interpreted, and generally does not apply when the 

two claims have other differences besides the specific,limitation that is being interpreted, as in 

57 
the case of claims 1 and 7 of the ‘932 patent.” See Sun Race supra. 

Complainant also argued that its proposed interpretation of “integral” is consistent with 

prior Federal Circuit decisions. (CRBr at 10.) The administrative law judge finds that the term at 

issue in the cases that complainant cited is “integral” not “integral combination of a respective 

electric motor element and an element of said transmission unit.” Furthermore, the 

administrative law judge finds that the interpretation of different terms of different patents in 

different cases does not override the intrinsic evidence of the claim language, the patent 

specification, and the patent prosecution history. 

With respect to “envelope” and the claims of the ‘932 patent, the plain language of the 

phrase in issue, y&. “each said integral combination involving one of said two respective 

elements thereof being at least to a large extent within an envelope containing the other” requires 

that either the electric motor element or the transmission unit element reside, to a large extent, 

within an “envelope” containing the other element. (CX-1 at 11:40-43.) The parties agree that 

the term “envelope” was a commonly used term in the art in 1990 that had the meaning of “space 

l1 Claim 1 of the ‘932 patent, with respect to “integral combination,” includes the 

language “a respective integral combination of a respective electric motor element and an 

element of said mechanical transmission unit, each said integral combination involving said two 

respective elements thereof being directly associated mechanically and geometrically with each 

other without substantial spacing or other elements including bearings and shafts therebetween,” 

where as claim 7 of the ‘932 patent, with respect to “integral combination,” includes the language 

“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 extent within an envelope Containing the other.” (CX-1 at 1O:ll18 and 11:38-43 (emphasis added).) In addition, claim 7 of the ‘932 patent includes two 

limitations that are missing from claim 1 of the ‘932 patent, namely the “compact structure” 

limitation and the “closely adjacent” limitation. (See CX-1 at 9:60-10:18, ll:19-46.) 

58 
or volume.”’2 (Davis, Tr. at 946:5-11; Caulfield, Tr. at 1760:15-1761:22.) At issue is what 

defines the boundaries of the space that constitutes an “envelope.” The administrative law judge 

finds that claim 7 of the ‘932 patent, the asserted claim in issue, uses the term “envelope” but 

does not define the term or identify the term’s boundaries. 

Complainant argued that the ‘932 patent shows the integral combinations of an electric 

motor element and an element of the mechanical transmission located within an area defined by 

“half 15 of a housing.” (CBr at 64-65;) 

It is a fact that the patentee used the term “housing” in several claims of the ‘932 patent 

that are not asserted, for example claim 2 of the ‘932 patent: 

a housing surrounding at least in part said drive gears, pinion gears, 

first shaft and second shaft 

(CX-1 at 10:32-33 (emphasis added).) Thus, the administrative law judge finds that if the 

patentee intended to claim that the integral combination was within “half a housing” the patentee 

knew how to use the term “housing” in the claim language, but instead, chose to use the term 

“envelope.” Hence, the administrative law judge finds that this supports the finding that the term 

“envelope” has a separate, independent meaning from the term “housing.” 

In addition dependent claim 8 of the ‘932 patent, which depends on asserted independent 

claim 7 of the ‘932 patent references the term envelope using the following language: 

The combination motor and transmission deice [sic] of claim 7, 

wherein each said envelope is that of said respective motor element 

of the respective one of said integral combinations, and each said 

l2 Complainant’s expert Davis testified that the space would typically be a design space, 

where one would allocate different envelopes for different designers to carry out their designs 

within that envelope while respondents’ expert Caulfield testified that the space would be an 

imaginary space. (Davis, Tr. at 946:7-11; Caulfield, Tr. at 1760:20-21.) 

59 
envelope has effectively a cvlindncal svmmetrv with a lenpth that 

is substantially shorter than its diameter. 

(CX-1 at 11:47-52.) The administrative law judge finds that claim 8 of the ‘932 patent requires 

the envelope of claim 7 of the ‘932 patent to be the envelope that encompasses only the electric 

motor element. Thus, the administrative law judge finds that this “envelope” limitation in claim 

8 of the ‘932 patent means that each element of the integral combination in claim 7 of the ‘932 

patent is encompassed by a separate “envelope,” which indicates that an envelope could not be 

the size of a housing and hold both elements of the integral combination. Furthermore, the 

administrative law finds that the language for the “envelope” limitation of claim 7 of the ‘932 

patent requires that one element of the “integral combination” Gy the electric motor element or 

the transmission unit element) not only resides within its own “envelope” but also resides, “to a 

large extent”, within the “envelope” of the other element of the “integral combination.” 

Moreover the administrative law judge finds nothing in the claim language, specification, or 

prosecution history, which links the term “envelope” to the term “housing.” 

Complainant argued that its interpretation is consistent with the language of claim 7 of 

the ‘932 patent, because, in the context of claim 7, the envelope is described as “containing” (at 

least “to a large extent”) both the motor element and the transmission unit element of the integral 

combination. (CRBr at 30.) Therefore, complainant argued that respondents’ argument that the 

envelope is defined by the volume of those components, based on its reading of claim 8 of the 

‘932 patent, does not properly limit claim 7 of the ‘932 patent, which is an independent claim. 

(CRBr at 30-31.) However, the administrative law judge finds that it is not just claim 8 of the 

‘932 patent that defines the envelope by the volume of said components, but it is also other 

60 
claims of the ‘932 patent and especially the specification of the ‘932 patent, and the prosecution 

history of the ‘932 patent that defines the envelope by the volume of said components. 

Referring to the specification (including the abstract and the figures) of the ‘932 patent, 

the abstract in the title page of the ‘932 patent recites a combination electric motor and 

transmission unit device which is “lightweight, requires a small number of moving parts . . .” 

(CX-1.) The title page also reproduces Figure 3 of the ‘932 patent, which is an indcation of the 

importance of Figure 3 in illustrating the invention in issue. Following the title page and the 

figures, the specification has a “Background Of The Invention” section, “Summary Of The 

Invention” section, “Brief Description Of The Drawings” section, and “Description Of The 

Preferred Embodiments” section. (CX-1.) 

With respect to “integral combination,” the specification of the ‘932 patent states that 

prior art combinations of transmission devices and electric motor devices did not have integral 

combinations: 

In the prior art, combinations of a transmission device and an 

electric motor dnve device typically involved use of a separate 

electric motor, the shaft of which extends to provide a rotational 

mechanical input to the transmission device. The shaft is typically 

supported by two bearings at two separated parts of the shaft, the 

motor elements being located between the positions of the 

bearings. 

The prior art does not involve combining -. any of the essential 

elements of the electric motor means internally with the essential 

elements of the transmission means, nor the sumorting of the 

element of the electric motor with a single bearing. Thus the prior 

art arrangements for combined motor and transmission means 

involved a large number of parts and an undesirable associated 

weight. 

(CX-1 at 2:34-49 (emphasis added).) Thus, the administrative law judge finds that the 

61 
specification of the ‘932 patent criticized prior art combinations of transmission devices and 

electric motor devices that included shafts, bearings, and other components as “[not] combining 

any of the essential elements of the electric motor means integrally with the essential elements of 

the transmission means.” (CX-1 at 2:42-44 (emphasis added).) The administrative law judge 

further finds that the specification of the ‘932 patent identified prior art combinations that were 

not integrally connected as not involving “the supporting of the element of the electric motor 

with a single bearing.” (CX-1 at 2:45-46 (emphasis added).) The administrative law judge also 

finds that the specification of the ‘932 patent identified prior art combinations that were not 

integrally connected and as involving “a large number of parts and an undesirable associated 

weight.” (CX-1 at 2:46-49.) 

Thereafter in the “Summary Of The Invention” section it is stated that an object of the 

invention is to provide a combination motor and transmission device “which is lightweight and 

highly efficient, as a result of a small number of parts . . .” (CX-1, at 3: 11-12.) In addition as 

found supra, the language in claim 7 of the ‘932 patent recites that the combination motor and 

transmission device has two integral combinations. (CX-1 at 11:36-40,45-46.) The 

administrative law judge finds that the specification of the ‘932 patent contains similar 

language13: 

Another object of the invention is to provide an infinite speed 

combination motor and transmission device having two inputs, 

least one of the inputs being an integral - combination of an electric 

l3 The administrative law judge finds that while the specification of the ‘932 patent uses 

the language “at least one of the inputs being an integral combination” and “at least one which 

involves an integral combination,” asserted claim 7 of the ‘932 patent explicitly requires that the 

combination motor and transmission device have two integral combinations. (See CX-1 at 2:57- 

61, 11:36-40,45-46.) 

62 
motor element and a transmission unit element. 

A further object of the present invention is to provide a 

combination motor and transmission device for each drive wheel of 

an electric powered vehicle, wherein each device has two power 

inputs including at least one which involves an intem-a1 

combination of an electric motor means and a transmission means, 

for effectively propelling; the vehicle. 

(CX-1 at 257-61 (emphasis added).) 

The “Brief Description Of The Drawings” section of the ‘932 patent makes reference to 

Figures 1A and lB, 2,3,4,5 and 6. Figures 1A and 1B are schematics of an electric-powered 

vehicle having a combination motor ’and transmission device “of the present invention.” Figure 2 

of the ‘932 patent is a block diagram showing the general characteristics of the combination 

motor and transmission device “of the present invention.” It indicates the first electrical or 

rotational mechanical input, the second electrical or rotational mechanical input, the transmission 

drive device, and the rotational mechanical output. Figures 3,4,5 and 6 of the ‘932 patent 

illustrate four different embodiments “of the present invention”, namely, the combination motor 

and transmission device. (CX-1 at 3:21-45.) Significantly, the patentee relates each of Figures 

lA, lB, 2,3,4,5, and 6 to the “present invention.” 

Referring to Figure 3 of the ‘932 patent, said figure illustrates an embodiment employing 

a differential unit. (CX-1 at 3:32-34.) Figure 3 of the ‘932 patent is a cross-section view (le, a 

view bisected along the plane of the page) of an differential unit embodiment of the patented 

invention, namely, the combination motor and transmission device. (See CX-1 at 3:32-34.) In 

this embodiment the combination motor and transmission device is connected to the 

undercarriage or supporting frame of an electrically powered vehicle, so that said combination 

63 
motor and transmission device is incorporated within the wheel assembly, effectively within the 

space which the tire rotates, as described in Figure 1A of the ‘932 patent, and shown in Figure 3. 

(CX-1 at 3:57-4:6,4:25-32.) The components shown in Figure 3 of the ‘932 patent, that are 

relevant to “integral combination,” are housing 15, field element 21, armature element 22, 

circular disk 23, drive gear 24, and bearing 25. (See CX-1.) 

Figure 4 of the ‘932 patent is a cross-section view b, a view bisected along the plane of 

the page) of a planetary gear unit embodiment of the patented invention, namely, the combination 

motor and transmission device. (See CX-1 at 3:35-37.) In this embodiment, the combination 

motor and transmission device is connected to wheel axle 43, the wheel axle 43 is supported by 

bearing half 44’, and the wheel axle is connected to output 4, where output 4 is connected to the 

wheel. (CX-1 at 6:26-28.) As the specification of the ‘932 patent states, the parts identical to 

those of the embodiment of Figure 3 of the ‘932 patent are shown with the same reference 

numbers. (CX-1 at 6:24-26.) The components shown in Figure 4 of the ‘932 patent, that are 

relevant to “integral combination,” are housing 15, field element 21, armature element 22, 

circular disk 23, bearing 25, hub 26, circular disk 33, and ring gear 36. (See CX-1.) 

Figure 5 of the ‘932 patent is a cross-section view (le, a view bisected along the plane of 

the page) of another planetary gear unit embodiment of the patented invention, namely, the 

combination motor and transmission device. (See CX-1 at 3:38-40.) In this embodiment, like the 

embodiment depicted in Figure 4 of the ‘932 patent, the combination motor and transmission 

device is connected to wheel axle 43, the wheel axle 43 is supported by bearing half 44’, and the 

wheel axle is connected to output 4, where output 4 is connected to the wheel. (CX-1 at 6:49-51.) 

Also, in this embodiment, disk 23 of input 2 is rigidly connected to an extension 46’ of the sun 

64 
gear, so as to turn the sun gear when the input 2 is activated. (CX-1 at 6:51-53.) Also, in this 

embodiment, the sun gear and its extension 45’ are cylindrically hollow along the axis of the sun 

gear, to allow an extension 43’ to extend to the right along its axis to connect rigidly and 

nonrotatingly with the hub 26’ of the planetary gear set. (CX-1 at 6:53-58.) The components 

shown in Figure 5 of the ‘932 patent, that are relevant to “integral combination,” are housing 15, 

field element 21, armature element 22, circular disk 23, bearing 25, armature element 32, circular 

disk 33, ring gear 36, and sun gear extension 46’. (See CX-1.) 

Figure 6 of the ‘932 patent is a cross-section view &, a view bisected along the plane of 

the page) of a flywheel embodiment of the patented invention, namely, the combination motor 

and transmission device. (See CX-1 at 3:42-44.) This embodiment is used for storing energy and 

supplying energy as needed, and shows a combination motor and transmission device having two 

inputs of electrical energy and an output of rotational mechanical energy, which can be reversed 

in the sense of what constitutes an input or output. (CX-1 at 9: 14-20.) The components shown in 

Figure 6 of the ‘932 patent, that are relevant to “integral combination,’’ are housing 15, field 

element 21, armature element 22, circular disk 23, hub 26, circular disk 33, and ring gear 36. 

(See cx- 1 .) 

As found supra, claim 7 of the ‘932 patent states that an integral combination comprises 

an electric motor element, and a transmission unit element. (CX-1 at 11:36-40.) The 

administrative law judge finds that the specification of the ‘932 patent, referring to Figure 2, 

emphasizes the generic features of the present invention in stating that an integral combination 

comprises an electric motor element, and a transmission unit element: 

The generic features of the combination motor and transmission 

65 
device 1 of the present invention are indicated in FIG. 2. The two 

inputs, 2,3 are for the input of power. At least one of these inputs 

2,3 is an electrical power input, to drive an integrally formed 

combination of an electric motor element and a transmission unit 

element within the device 1. 

(CX-1 at 4:7-13 (emphasis added).) Thus, the administrative law judge finds that Figures 3,4,5 

and 6 of the ‘932 patent disclose two integral combinations, each integral combination 

comprising of an electric motor element and a transmission unit element. 

The administrative law judge further finds that the specification of the ‘932 patent 

generally identifies the electric motor element and transmission unit element of an “integral 

combination” for the embodiments illustrated in Figures 3,4,5 and 6 of the ‘932 patent as 

follows: 

For instance, the electric motor element might be the armature of 

the electric motor, mounted on the rotating riim 

essential element of a differential unit transmission, as discussed 

next for FIG. 3. Alternatively, the essential electric motor element 

could be the field assemblv, and the essential motor element14 

another art of the transmission unit. 

*** 

As shown in FIGS. 3,4 and 5, a feature of the present invention is 

that an essential electric motor element, such as the armature 

element 22, is integrally connected with an essential transmission 

unit element, such as the dnve gear 2315 in FIG. 3, the hub 26 in 

l4 The administrative law judge finds that given the context of this paragraph in the 

specification of the ‘932 patent and the rest of said specification, “essential motor element” 

should read “essential transmission unit element.” 

l5 The specification of the ‘932 patent identifies the component of Figure 3 labeled 23 as 

“circular disc 23” and the component of Figure 3 labeled 24 as “drive gear 24”: 

Turning to the invention, the input 2 includes ... an armature 

element 22 fixed on the outer periphery of a circular disk 23, which 

66 
FIG. 4 or the sun gear 46 (via the extension 46’) in FIG. 5. 

(CX-1 at 4: 13-20; 7:30-35 (emphasis added).) 

The administrative law judge also finds that, in the case of Figure 4, the transmission unit 

element for the right integral combination is a different component than the transmission unit 

element for the left integral combination, based on the following language of the specification of 

the ‘932 patent: 

The outmost member of the planetary gear unit is the ring gear, the 

teeth of which are on the inside periphery of the hollow cylindrical 

member 36. The right end of the cylindrical member 36 can be 

closed, but in any case is rigidly fixed, in this example, the disk 33 

of input 3 to rotate with it. 

(CX-1 at 6:32-37.) The administrative law judge finds that this also applies to Figure 5 because 

Figure 5 employs a planetary gear unit, the same as Figure 4, and is an alternative planetary gear 

element, and the specification states that the distinction is that disk 23 of input 2 is rigidly 

connected to sun gear extension 46’, instead of hub 26 as in Figure. (See CX-1 at 6:49-53.) The 

administrative law judge further finds that, in the case of Figure 6, the transmission unit element 

for the right integral combination is a Qfferent component than the transmission unit element for 

the left integral combination, based on the following language of the specification of the ‘932 

patent: 

is shown edgewise in FIG. 3. 

*** 

Mounted fixedly on the disk 23 is a drive gear 24, a cylindrically 

bevelled front of which is grooved to form gear teeth. 

(CX-1 at 453-66 (emphasis added).) Thus, the administrative law judge finds that “drive gear 

23” should read “drive gear 24.” 

67 
Input 3 has similar components. This embodiment shows the ring 

gear 36 and hub 26 of the planetary unit embodiment of FIG. 4, 

respectively connected to the disks 33 and 23. 

(CX-1 at 9:40-43.) 

Based on the foregoing, the administrative law judge finds that the electric motor element 

consists of either: field element 21 or armature element 22 (and armature element 32, in the case 

of Figure 6). However he finds that the embodiments of the ‘932 patent, illustrated in Figures 3, 

4,5 and 6 of the ‘932 patent only disclose the armature element 22 (and the armature element 32, 

in the case of Figure 6) as the electric motor element of the integral combination. The 

administrative law judge also finds that the transmission unit element consists of either: drive 

gear 24 (as illustrated in Figures 3 and 6); hub 26 (as illustrated in Figure 4); sun gear 46, via the 

extension 46’ (as illustrated in Figure 5); or drive gear 36 (as illustrated in Figures 4,5 and 6). 

The administrative law judge further finds that the specification of the ‘932 patent 

describes a circular disk which is identified as circular disk 23 in Figures 3,4,5 and 6: 

Turning to the invention, the input 2 includes for instance a field 

element 21 fixed on the interior of the housing portion 15, to 

interact with for instance an armature element 22 fixed on the outer 

periphery of a circular disk 23. which is shown edgewise in FIG. 3. 

(CX-1 at 4:53-57 (emphasis added).) The administrative law judge also finds circular disc 23 of 

Figures 3,4, 5 and 6 of the ‘932 patent is neither an electric motor element, nor a transmission 

unit element because the specification of the ‘932 patent expressly states that either an armature 

or armature element is the electric motor element, and that, while the specification of the ‘932 

patent states that the armature element 22 is fixed onto the circular disc 23, the specification 

neither identifies the circular disk as part of the armature, nor identifies circular disc 23 as an 

68 
electric motor element. Although the specification of the ‘932 patent does not identify disk 23 as 

a electric motor element, and although in Figures 3,4,5 and 6 of the ‘932 patent, &sk 23 appears 

to be between the electric motor element, and the transmission unit element, the administrative 

law judge finds that disk 23 is part of the “integral combination” of the electric motor element 

and the transmission unit element, and that the patentee did not consider the disk 23 an 

intervening structure between the electric motor element and the transmission unit element. For 

similar reasons, the administrative law judge finds that corresponding disc 33 of Figures 4,5 and 

6 is neither an electric motor element, nor a transmission unit element.16 

Finally, the administrative law judge finds that the electric motor elements for the left 

integral combination are identical to the electric motor elements for the right integral 

combination for Figures 3,4,5 and 6 of the ‘932 patent based on the fact that the specification of 

the ‘932 patent states that the electric motor element can be “the armature of the electric motor” 

or “the field assembly” and that Figures 3,4,5 and 6 of the ‘932 patent show both field assembly. 

21, and armature element 22 (and armature 32, in the case of Figure 6).17 (See CX-1 at 4:13-20.) 

With respect to Figure 3 of the ‘932 patent, based on the previously cited sections of the 

specification of the ‘932 pa!ent, the administrative law judge finds that the left integral 

combination is the combined structure of armature element 22, circular disk 23, and drive gear 24 

on the left side of the combination motor and transmission device. The administrative law judge 

l6 Thus, when the administrative law judge states that the electric motor element is 

connected to the transmission unit element, it is inherent in that connection that said elements are 

each connected to the circular disk. 

l7 The administrative law judge also finds that circular disk 23 is also shown in Figures 3 

through 6, although, as found supra, circular disk 23 is neither an electric motor element, nor a 

transmission unit element. 

69 
also finds that, while the components on the right side of the combination motor and 

transmission device are not identified in Figure 3 of the ‘932 patent, the specification of the ‘932 

patent dlscloses that the components on the right side of the combination motor and transmission 

device are the same as the components on the left side of the combination motor and 

transmission device in Figure 3 of the ‘932 patent: 

In this embodlment, input 3 has essentially the same components 

as input 2, as is indicated in FIG. 3. 

Proceeding to the output 4, the pinion gear shaft 41 holds the pair 

of pinion gears 42 to rotate between the opposing drive gears of the 

inputs 2 and 3, namelv the drive gear 24 on input 2 and the 

corresponding - drive gear on input 3 indicated in FIG. 3. The pinion 

gear shaft 41 is rigidly (nonrotatingly) connected at a right angle 

and at its center to the wheel shaft 43 for rotating the wheel 10. 

When the bevelled drive gear 23 on input 2 and the corresponding 

opposing drive gear on input 3 are driven by the electrical inputs to 

rotate at the same speed, then the pinion gears 42 do not rotate on 

the pinion gear shaft 41. 

(CX-1 at 5:l-22 (emphasis added).) Thus, the administrative law judge further finds that, in 

Figure 3 of the ‘932 patent, the right integral combination is the combined structure of armature 

element 22, circular disk 23, and drive gear 24 on the right side of the combination motor and 

transmission device.’* The administrative law judge also finds that in the left integral 

combination of Figure 3 of the ‘932 patent, the electric motor element is armature element 22 

(left), and the transmission unit element is dnve gear 24 (left). The administrative law judge, in 

addition, finds that in the right integral combination of Figure 3 of the ‘932 patent, the electric 

l8 Thus, when the administrative law judge refers to armature element 22, circular disk 

23, or drive gear 24 on the right side of the combination motor and transmission device, he is 

referring to the corresponding unmarked components in Figure 3. 

70 
motor element is armature element 22 (right), and the transmission unit element is drive gear 24 

(right). 

With respect to Figure 4 of the ‘932 patent, based on the previously cited sections of the 

specification of the ‘932 patent, the administrative law judge finds that the left integral 

combination, in Figure 4 of the ‘932 patent, is the combined structure of armature element 22, 

circular disk 23, and hub 26 on the left side of the combination motor and transmission device. 

Also, the administrative law judge finds that the right integral combination is the combined 

structure of armature element 22, circular disk 33, and ring gear 36 on the right side of the 

combination motor and transmission device. The administrative law judge further finds that, in 

the left integral combination of Figure 4 of the ‘932 patent, the electric motor element is armature 

element 22 (left), and the transmission unit element is hub 26. The administrative law judge, in 

addition, finds that in the right integral combination of Figure 4 of the ‘932 patent, the electric 

motor element is armature element 2219 (right), and the transmission unit element is ring gear 36. 

With respect to Figure 5 of the ‘932 patent, based on the previously cited sections of the 

specification of the ‘932 patent, the administrative law judge finds that the left integral 

combination, in Figure 5 of the ‘932 patent, is the combined structure of armature element 22, 

circular disk 23, and sun gear extension 46’ on the left side of the combination motor and 

transmission device. Also based on the specification of the ‘932 patent, the administrative law 

judge finds that the right integral combination, is the combined structure of armature element 22, 

l9 While the right armature is not labeled as 22 in Figure 4 of the ‘932 patent, the 

administrative law judge finds that it is an armature element because the specification states that 

in Figure 4, “[plarts identical to those of the embodiment of [Figure 31 are shown with the same 

reference numbers and are not described again,” and that in Figure 3, as found supra, the right 

component was also armature 22, despite not being labeled. 

71 
circular disk 33, and ring gear 36 on the right side of the combination motor and transmission 

device. The administrative law judge further finds that in the left integral combination of Figure 

5 of the ‘932 patent, the electric motor element is armature element 22 (left), and the 

transmission unit element is sun gear extension 46’. The administrative law judge further finds 

that in the right integral combination of Figure 5 of the ‘932 patent, the electric motor element is 

armature element 2220 (right), and the transmission unit element is ring gear 36. 

With respect to Figure 6 of the ‘932 patent, based on the previously cited sections of the 

specification of the ‘932 patent, the administrative law judge finds that the lower integral 

combination, in Figure 6 of the ‘932 patent, is the combined structure of armature element 22, 

circular disk 23, and hub 26. Also based on the specification of the ‘932 patent, the 

administrative law judge finds that the upper integral combination, is the combined structure of 

armature element 32, circular disk 33, and ring gear 36. The administrative law judge further 

finds that in the lower integral combination of Figure 6 of the ‘932 patent, the electric motor 

element is armature element 22, and the transmission unit element is hub 26. The administrative 

law judge in addition finds that in the upper integral combination of Figure 6 of the ‘932 patent, 

the electric motor element is armature element 32, and the transmission unit element is ring gear 

36. 

The administrative law judge further finds that the specification of the ‘932 patent 

describes the circular disk that houses the electric motor element of the integral combination 

2o While the right armature is not labeled as 22 in Figure 5 of the ‘932 patent, the 

administrative law judge finds that it is an armature element because the only structural 

differences between Figure 4 of the ‘932 patent and Figure 5 of the ‘932 patent do not involve the 

armature elements, and that in Figure 4, as found supra, the right component was also armature 

22, despite not being labeled. 

72 
being held by a single bearing: 

The disk 23 is supported by a bearing 25 fixed on the housing 15, 

and is accordingly forced to rotate about an axis collinear with the 

wheel 10. Mounted fixedly on the disk 23 is a dnve gear 24, a 

cylindrically bevelled front of which is grooved to form gear teeth. 

In this embodiment, input 3 has essentially the same components 

as input 2, as is indicated in FIG. 3. 

(CX-1 at 4:62-68 (emphasis added).) 

The administrative law judge further finds that the specification of the ‘932 patent 

describes the integral combination feature of the invention of the ‘932 patent as reducing the 

number of components, size and weight of the motor and transmission device: 

As shown in FIGS. 3,4 and 5, a feature of the present invention is 

that an essential electric motor element, such as the armature 

element 22, is integrally connected with an essential transmission 

unit element, such as the drive gear 23 in F’IG. 3, the hub 26 in 

FIG. 4 or the sun gear 46 (via the extension 46’) in F’IG. 5. This is a 

most effective approach for reducing the number of components, 

size and weight of the motor and transmission device. This 

reduction includes a reduction from the number of bearings 

required in the prior art to support both ends of the motor output 

shaft, namely the shaft which then serves as a rotational 

mechanical input to the transmission device in prior art 

combination. As can be seen from the drawings, there are little 

sideways forces acting on the illustrated essential elements of the 

transmission means, so further bearings are not necessarily needed. 

Thus, a single - bearing can be made, by appropriate design - in each 

specific case, to suffice for the essential transmission part carrying 

the essential electric motor part with which it is combined. 

Namely, most of the loading can effectively be provided in a single 

plane perpendicular to the axis of rotation of the essential 

transmission part. 

(CX-1 at 7:30-52 (emphasis added).) Thus, the administrative law judge finds that the 

specification of the ‘932 patent equates “integrally connected” with the absence of components in 

between the electric motor element and the transmission unit element. Consistent with this 

73 
finding, the administrative law judge further finds that ever?, embodiment in the ‘932 

specification shows a motor element connected to a transmission element without shafts, 

bearings, or other components between them.21 (See CX- 1 .) 

The administrative law judge also finds that the specification of the ‘932 patent describes 

an “integral combination” of the electric motor element and the transmission unit element as the 

components being rigidly fixed together, or one component being mounted fixedly on the other: 

For instance, the electric motor element might be the armature of 

the electric motor, mounted on the rotating ring gear as the 

essential element of a differential unit transmission, as discussed 

next for FIG. 3. 

*** 

Turning to the invention, the input 2 includes for instance a field 

element 21 fixed on the interior of the housing portion 15, to 

interact with for instance an armature element 22 fixed on the outer 

periPherv of a circular disk 23, which is shown edgewise in FIG. 3. 

*** 

Mounted fixedly on the disk 23 is. a drive gear 24, a cylindrically 

bevelled front of which is grooved to form gear teeth. 

*** 

The right end of the cylindrical member 36 can be closed, but in 

any case is rigidly fixed, in this examde, to the disk 33 of input 3 

to rotate with it. 

*** 

A portion 26 of the hub is shown extending to the left for rigid 

connection to the disk 23 of input 2. 

*’ As found supra, circular disk 23 (or 33) is not a component between the motor element 

and the transmission element. 

74 
*** 

Here the disk 23 of the input 2 is rigidly connected to an extension 

46‘ of the sun gear, so as to turn the sun gear when the input 2 is 

activated. 

*** 

As shown in FIGS. 3,4 and 5, a feature of the present invention is 

that an essential electric motor element, such as the armature 

element 22, is integrally connected with an essential transmission 

unit element. such as the drive gear 23 in FIG. 3, the hub 26 in 

FIG. 4 or the sun gear 46 (via the extension 46’) in FIG. 5. 

(CX-1 at 4: 13-17,4:53-57,4:64-66,6:34-37,6:40-41,6:51-53 (emphasis added).) Thus, the 

administrative law judge finds that the specification of the ‘932 patent with the figures discloses 

that the key features of the “integral combination” of a electric motor element and a transmission 

unit element are: (1) the integral combination is supportable by a single bearing; (2) the integral 

combination contains no shafts, bearings, or other components between the electric motor 

element and the transmission unit element; and (3) the electric motor element and the 

transmission unit element are dlrectly and rigidly connected.22 

Regarding the figures of the ‘932 patent, the “Description Of The Preferred 

Embodiments” section starts with the sentence that “[tlhe present invention will be understood 

from the detailed description of the specific embodiments hereinbelow and from the respective 

drawings” (CX-1 at 3:47-50.) In addition, said “Description Of The Preferred Embodiments” 

section contains the following references to “the present invention” in describing the figures of 

the specific embodiments: 

An electrically powered vehicle, having for instance its four wheels 

22 Said connection is by way of a direct and rigid connection to the circular disk. 

75 
10 driven by four respective ones of the combination motor and 

drive transmission devices 1 of the present invention, is shown in 

FIGS. 1A and 1B. 

*** 

The generic features of the combination motor and transmission 

device 1 of the present invention are indicated in FIG. 2. 

*** 

The rotational mechanical power output 4 is at a continuously 

variable speed, such as from a negative maximum value to a 

positive maximum value in various embodiments of the present 

invention. 

FIG. 3 shows an embodiment of the combination motor and 

transmission device 1 of the present invention employing a 

differential unit in a novel manner. 

*** 

Turning; to the invention, the input 2 includes for instance a field 

element 21 fixed on the interior of the housing portion 15, to 

interact with for instance an armature element 22 fixed on the outer 

periphery of a circular disk 23, which is shown edgewise in FIG. 3. 

*** 

The transmission and dnve device of the present invention is small 

and lightweight enough to fit with the rest of the wheel assembly 

within the interior space of the wheel. 

*** 

It is estimated that the transmission and drive device of the present 

invention could weigh as little as 35 or 40 lbs or less, and have 

outside cylindncal dimensions of for instance 14 inches in 

diameter by 8 inches from end to end, or smaller. 

By being small enough to fit with the wheel assembly within the 

wheel, the devices of the present invention allow the steering and 

suspension geometry for the vehicle to be correct. 

76 
*** 

For simplicity, two further embodiments of the transmission and 

drive devices of the Dresent invention are described in the 

following with the wheel shaft 43 connecting directly to the wheel 

10, with the wheel being outboard of the device 1. It is clear that 

these other embodiments could be provided similarly to that of 

FIG. 3 if desired, namely with the device 1 provided within the 

space inside the wheel. 

FIG. 4 shows an embodiment of the transmission device of the 

present invention employing a planetary gear unit. 

*** 

FIG. 5 shows another embodiment of the transmission device of 

the mesent invention employing a planetary gear unit. 

*** 

As shown in FIGS. 3,4 and 5, a feature of the present invention is 

that an essential electric motor element, such as the armature 

element 22, is integrally connected with an essential transmission 

unit element, such as the drive gear 23 in FIG. 3, the hub 26 in 

FIG. 4 or the sun gear 46 (via the extension 46') in FIG. 5. 

*** 

Thus, when two stepping motors are employed in the two inputs of 

the transmission dnve device of the present invention, the sum of 

the peak powers of the two stepping motors is effectively available 

at the output, when each motor is driven at a rotational speed above 

the minimum speed for providing the plateau value for its peak 

power output. 

As is easily understood, this total peak power output of the 

transmission device of the present invention is available at any 

output speed. 

*** 

A stepping motor is particularly advantageous for use in the drive 

devices of the present invention which might be employed in a 

77 
battery powered vehicle. 

*** 

Use of a computer to control the stepping motors in the drive 

device of the present invention would easily allow for cornering, 

such as by driving the two front wheels that are being steered at 

different output speeds depending on the radius of the turn as 

sensed by the computer, such as by the angle to which the steering 

wheel is turned by the driver. 

*** 

An important advantage of the present invention is that the braking 

of the vehicle can be performed by the drive devices of the present 

invention being used as generators, namely by regenerative 

braking. 

*** 

The infinite-speed characteristic of the combination motor and 

transmission device of the Dresent invention is particularly useful 

for this purpose, namely in being able to adjust the device for 

maximum regenerati on. 

*** 

Some considerations for controlling electrical power inputs to the 

combination motor and transmission device of the present 

invention are as follows. A first control strategy for operating the 

device of the Dresent invention for bringing a vehicle to speed from 

standstill is simple. 

*** 

FIG. 6 shows another embodiment of the Dresent invention for use 

as a flywheel for storing energy and supplying same when needed. 

(CX-1 at 3:54-57,4:7-9,4:20-26,4:53-57,5:54-57.5:59-67,6: 13-24,6:49-5 1,7:30-35,7:65-8:6, 

8:8-10,8:27-33, 8:39-42, 8:49-52, 8:64-9: 1,9: 14-16 (emphasis added).) 

Thus, the administrative law judge finds that the features described in the figures of the 

specification of the ‘932 patent apply to the patented invention of the ‘932 patent. The ‘932 

78 
patent does have the following boilerplate language: 

The description and drawings of the embodiments are for 

explanation only, and are not intended in any way to limit the 

invention. 

*** 

The present invention is limited only by the scope of the following 

claims, and not by any specifics of the embodiments disclosed 

above. Numerous modifications and variations of the above 

embodiments will be apparent to a skilled worker in the art in 

possession of the present disclosure, and as well other 

embodiments within the scope of the present invention. 

(CX-1 at 350-53,952-58.) The specification including the abstract and the figures, as well as 

the prosecution history, however, may limit the claimed subject matter. See Phillips supra. 

Moreover the administrative law judge finds that mere boilerplate language and without giving 

some detail as to the “[n]umerous modifications and variations” does not enlarge the inventive 

concept of asserted claim 7, y&.: (1) the integral combination is supportable by a single bearing; 

(2) the integral combination contains no shafts, bearings, or other components between the 

electric motor element and the transmission unit element; and (3) the electric motor element and 

the transmission unit element are directly and rigidly connected, which is clearly defined by the 

intrinsic evidence, as dictated by the specification including the abstract and figures and the 

prosecution history. 

Complainant argued that the specification of the ‘932 patent discloses that the feature of 

the “integral combination” that distinguished the patented invention from prior art combinations 

of a transmission device and an electric motor is that said two components “are mechanically 

joined with geometric overlap. (CBr at 56-57; CRBr at 10-1 1.) In other words, complainant 

79 
argued, in contrast to the prior art stand alone motors where the motor elements were located 

between the bearings, and where the connection point to the motor is outside the geometry of the 

motor, the integrally combined motor and transmission system of the ‘932 patent contains a 

mechanical connection between the motor and transmission which is made inside the geometry 

of the motor. (CBr at 56-57; CRBr at 10-1 1; CFF 224,227,229-233.) Complainant relied on the 

following language of the specification: 

In the prior art, combinations of a transmission device and an 

electric motor drive device typically involved use of a separate 

electric motor, the shaft of which extends to provide a rotational 

mechanical input to the transmission device. The shaft is typically 

supported by two bearings at two separated parts of the shaft, the 

motor elements being located between the positions of the 

bearings. 

The prior art does not involve combining any of the essential 

elements of the electric motor means integrally with the essential 

elements of the transmission means, nor the supporting of the 

element of the electric motor with a single bearing. Thus the prior 

art arrangements for combined motor and transmission means 

involved a large number of parts and an undesirable associated 

weight. 

(CX-1 at 2:33-49.) However, said portion of the ‘932 patent significantly discloses the 

inventor’s disdain for shafts between the integral combination elements which he proposes to 

eliminate in his invention by “combining ... the essential elements of the electric motor means 

integrally with the essential elements of the transmission means” to avoid a large number of parts 

and an undesirable associated weight, and the statement therein “the shaft of which extends to 

provide a rotational mechanical input.” (CX- 1 at 2:33-49.) Furthermore, the administrative law 

judge finds that, the significant number of previously cited sections of the ‘932 specification 

disclose the electric motor element being connected to the transmission unit element without 

80 
shafts, bearings, or other intervening components. Additionally, the administrative law judge 

finds that the concept of “geometric overlap” of the electric motor element and the transmission 

unit element which complainant relies on and was first disclosed in the remarks to the only 

substantive amendment, is not referenced in the specification of the ‘932 patent.23 Rather, the 

‘932 patent, as found supra, discloses in the title page, the “Background Of The Invention” 

section, the “Summary Of The Invention” section, the “Brief Description Of The Drawings” 

section, and the “Description Of The Preferred Embodiments” section, the concept of the electric 

motor element connected with the transmission unit element without shafts, bearings, or other 

components in between. Reference is further made to the repeated recitation of “present 

invention” in the “Description Of The Preferred Embodiments” section as set forth suura. 

Complainant also argued that in the specification of the ‘932 patent, an armature, with 

respect to identifying an electrical motor element, is synonymous with an armature assembly; 

(CFF 132.) Complainant further argued that in Figure 5 of the ‘932 patent, the integral 

combination of an electric motor elements and an essential transmission unit is formed between 

23 Claim 1 of the ‘932 patent does recite the following: 

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 

mechanical transmission unit, each said integral combination 

involving said two respective elements thereof being - directly 

associated mechanically and geometrically with each other without 

substantial spacing or other elements including bearings and shafts 

therebetween. 

(CX-1 at 10:9-18 (emphasis added).) However, as found supra applicant defined the concept 

“geometrically,” in the only substantive amendment filed on May 29, 1991, as the absence of 

shafts, bearings and other elements. See supra. 

81 
the armature assembly 22 and 23, and the sun gear extension, 46’, relying solely on the testimony 

of its expert, Davis. (CFF 137.) However, the administrative law judge finds that the earlier cited 

sections of the specification of the ‘932 patent clearly identified which components are electric 

motor elements, and which are transmission unit elements, and that the specification of the ‘932 

patent clearly identified the armature or armature element 22 as an electric motor element, but 

did not either define the armature as including the circular disk 23, or identify the circular disk 23 

as a separate electric motor element. Additionally, the administrative law judge finds that the 

term “armature assembly” is not used in the specification of the ‘932 patent, and he finds that the 

specification never defined a term similar to “armature assembly” that includes both armature 

element 22 and circular disk 23. 

Complainant argued that the term “rigidly fixed” is described within the ‘932 patent to 

mean non-rotatingly connected and thus, properly understood, the term “rigidly fixed” means that 

the two components are mechanically joined together, which is the way a person of slull in the art 

in 1990 would have understood the term. (CBr at 60; CFF 218-219.) However, the 

administrative law judge finds that the specification of the ‘932 patent only used the “nonrotatingly” connected definition to describe a connection between a pinion gear shaft and a wheel 

shaft, which is not part of an “integral combination:” 

The pinion gear shaft 41 is rigidly (non-rotatingly) connected to a 

right angle and at its center to the wheel shaft 43 for rotating the 

wheel 10.) 

(CX-1 at 5:5-8.) 

Complainant also argued that if the administrative law judge finds that the “motor 

element” is simply the armature elements k, item 22), respondents’ claim interpretation cannot 

82 
be met because in every embodiment there is some element a disk 23 and bearing 25) between 

the electric motor element (armature elements 22) and the transmission unit element (gear 24). 

(CRBr at 17-18.) As found supra, disk 23 of Figures 3,4,5 and 6 of the ‘932 patent, while not 

an electric motor element, is not an intervening component between the electric motor element 

and the transmission unit element, and instead, is part of the “integral combination,” as described 

by the applicant in the prosecution history of the ‘932 patent. Furthermore, the administrative 

law judge finds that bearing 25 in Figures 3,4,5 and 6 of the ‘932 patent is not between the 

electric motor element and the transmission unit element, as Figures 3,4,5 and 6 of the ‘932 

patent show, and instead, bearing 25 is either to the left (in Figures 3,4, and 5) or below (in 

Figure 6) of disk 23, and is not attached to either the electric motor element or the transmission 

unit element. 

Complainant further argued that Figure 5 of the ‘932 patent includes an “extended shaft”, 

which the specification labels a “sun gear extension.” (CRBr at 20-21.) It is also argued that the 

specification clearly refers to this “shaft” as being part of the “integral combination,” and 

therefore, the specification describes an “integral connection” 

combination) being made via a part that respondents’ expert Caulfield referred to as an “extended 

shaft.” (CRBr at 21.) However, as found supra, the sun gear extension 46’ of Figure 5 is a 

transmission unit element and not a component that resides between the electric motor element 

and the transmission unit element. Thus, the administrative law judge rejects complainant’s 

argument. 

the claimed integral 

With respect to “envelope,” as found supra, the parties agree that the term “envelope” 

was a commonly used term in the art in 1990 that had the meaning of “space or volume.” Thus, 

83 
the administrative law judge finds that what is at issue is what defines the boundaries of the 

space that constitutes an “envelope.” (Davis, Tr. at 946:5-11; Caulfield, Tr. at 1760: 15-1761:22.) 

The administrative law judge further finds that the specification of the ‘932 patent does not 

reference the term “envelope” nor does it define boundaries for a space that constitutes an 

“envelope.” Thus, besides the patent drawings in the figures of the ‘932 patent, which disclose 

the placement of the components of the integral combination, but does not disclose any 

boundaries for a space that constitutes an “envelope,” the administrative law judge finds that the 

specification does not aid in determining the boundaries of the space that constitutes an 

“envelope,” as recited in the claimed phrase at issue. 

Complainant argued that the specification supports its interpretation of the “envelope” 

limitation, a., that the preferred embodiment of the ‘932 patent shows the integral combinations 

of an electric motor element and an element of the mechanical transmission located within an 

area defined by “half 15 of a housing,” based on the following language of the specification of 

the ‘932 patent: 

FIG. 3 shows an embodiment of the combination motor and 

transmission device 1 of the present invention employing a 

differential unit in a novel manner. The device 1 includes a half 15 

of a housing which, when the device is employed in an electric 

vehicle as in FIG. lA, may be fixed drectly to the suspension 

member 12, and to the steering member 13 in the case of the wheel 

being rotated for steering, or to some other appropriate member of 

the vehicle. 

*** 

FIG. 4 shows an embodiment of the transmission device of the 

present invention employing a planetary gear unit. Parts identical to 

those of the embodiment of FIG. 3 are shown with the same 

reference numbers, and are not described again. The simplified 

84 
output 4 shows the wheel axle 43 supported by a bearing half 44 ’ 

connected to the housing half 15. The significant differences arise 

in replacing the differential gear unit with the planetary gear unit. 

(CBr at 64-65; CX-1 at 4:24-32; 6:23-31 (emphasis added).) Complainant further argued that an 

integral combination within each half of the housing is shown in Figures 4 and 5 of the ‘932 

patent, where the integral combination of the first armature 22 and disk 23, and the sun gear 46 

and the sun gear extension 46’ are located within the envelope defined by the left half of the 

housing, while the integral combination of the second armature and disk, and the ring gear are 

located within the envelope defined by the right half of the housing; and that said integral 

combination within each half of the housing is shown in Figure 6, where the integral 

combinations of the armature 22, disk 23 and hub are contained within a first half of the housing, 

and the integral combination of the second armature, disk 33 and ring gear are within a second 

half of the housing. (CBr at 65; CX-1.) The administrative law judge rejects complainant’s 

interpretation because the administrative law judge finds that the specification of the ‘932 patent 

does not disclose whether the “half of the housing” is the left half of the housing or the right half 

of the housing in any of the figures of the ‘932 patent. (See CX-1 at 4:24-32; 6:23-31.) Instead, 

the administrative law judge finds that, because the housing is being viewed in cross-section, &, 

bisected along the plane of the page, the term “half of a housing” refers to the entire housing 

structure being shown in the figures, not the left or right half of the “half of the housing” 

disclosed in the figures of the ‘932 patent (which are in fact quarters of the housing). 

Complainant argued that respondents’ and the staff‘s interpretation of the envelope 

portion of the “integral combination” limitation cannot be correct because it does not apply to 

Figure 6 of the patent. (CBr at 66; CFF 413.) Complainant further argued that, during 

85 
prosecution, the applicant stated that the “envelope” limitation “is seen for each illustrated 

embodiment.” (CBr at 66; Rx-7, Amendment at 22, TMC01-082580.) 

As found supra, Figure 6 discloses two integral combinations, &. the left integral 

combination, which is the combined structure of armature element 22, circular disk 23, and hub 

26, and the right integral combination, which is the combined structure of armature element 32, 

circular disk 33, and ring gear 36. Also, found suma, in the left integral combination of Figure 6 

of the ‘932 patent, the electric motor element is armature element 22, and the transmission unit 

element is hub 26, and in the right integral combination of Figure 6 of the ‘932 patent, the 

electric motor element is armature element 32, and the transmission unit element is ring gear 36. 

The administrative law judge further finds that the specification of the ‘932 patent 

discloses the following regarding the embodiment illustrated in Figure 6: 

This embodiment [i.e. Figure 61 shows the ring gear 36 and hub 26 

of the planetary unit embodiment of FIG. 4, respectively connected 

to the disks 33 and 23. 

(CX-1 at 9:40-43.) Thus, the administrative law judge finds that the patentee has linked the 

transmission unit elements of Figure 6 with the transmission unit elements of Figure 4 and that 

Figure 6 of the ‘932 patent discloses the same transmission unit elements as Figure 4 of the ‘932 

patent hub 26 and ring gear 36). The administrative law judge further finds that Figure 6 of 

the ‘932 patent discloses the same electric motor elements as Figure 4 of the ‘932 patent 

armature elements 22 and 32) and discloses the same circular disk that houses the armature 

element (le circular disks 23 and 33), with the exception that Figure 6 includes an additional 

component, heavy cylindrical peripheral mass 28: 

The input 2 includes the field assembly units 21 distributed about 

86 
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 peripheral mass 28 for increasing the moment 

of rotational inertia. Input 3 has similar components. 

(CX-1 at 9:35-40 (emphasis added).) Thus, the administrative law judge finds that, despite the 

difference in sizes between the hub 26 and drive gear 36 in Figures 4 and 6 of the ‘932 patent, 

based on Figures 4 and 6 of the ‘932 patent and the previously cited portions of the specification 

which state that Figure 6 of the ‘932 patent is comprised of electric motor and transmission unit 

elements which elements are identical to the electric motor and transmission unit elements of 

Figure 4 of the ‘932 patent, the administrative law judge finds that the “envelope” limitation of 

the claimed “integral combination” is disclosed in Figure 6 of the ‘932 patent, as it is disclosed in 

Figure 4 of the ‘932 patent. 

Referring to the prosecution history of the ‘932 patent, the Examiner rejected applicant’s 

original claims 1-3,7-9, and 15 under 35 U. S. C. 8 102(b) as being anticipated by Roe; rejected 

the applicant’s original claims 4-6 under 35 U. S. C. 8 103 as being unpatentable over Roe in 

view of Mohri; rejected the applicant’s original claim 14 under 35 U. S. C. 8 103 as being 

unpatentable over Roe in view of Helling; rejected claims 15-19 under 35 U. S. C. 5 112, second 

paragraph as being indefinite; and objected to claims 10-13 and 20 as being dependent upon a 

rejected base claim. & RX-7 at TMCO1-082507-12. Also found supra, the applicant amended 

his claims, and added new claims, and the Examiner allowed the ‘932 patent to issue. & 

Section VI. supra. 

With respect to the claimed “integral combination” limitation, the administrative law 

judge finds that in the prosecution of the ‘932 patent, in response to rejections of several claims, 

87 
the applicant described the “integral combination” of the “present invention” as not containing 

shafts, bearings, and other components between the respective elements. Thus the Examiner 

originally rejected several claims as being anticipated by Roe: 

Claims 1-3,7-9 and 15 are rejected under 35 U.S.C. 6 102(b) as 

being anticipated by Roe ‘083. Roe shows two electric motors 36, 

38, each integrally connected to an element of a ulanetarv gearing 

to dnve a single wheel. 

(RX-7, TMCO1-082580 (emphasis added).) In response, the applicant argued the following, with 

respect to Roe: 

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 independent claims 1 and 2, 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 uair of these two elements. 

The insertions into claim 1 contain one attempt to characterize this 

important “integral” feature, and other claims including 2 and 3/2 

include other attempts. This key feature results in the present 

invention being lightweight and compact, namely neither the 

armature or the respective gear element combined therewith stands 

alone. A single bearing can suuport each combined gear element 

and electric motor element, as disclosed on page 9, lines 20-2, and 

page 12, lines 15-16, and as now recited in claim 22 and 23. 

*** 

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. There 

is no extended transmission transmission [sic1 linkape - with plural 

support points as in the prior art, because the drive train is direct, 

with the respective elements beign [sic] immediately adjacent each 

other [sic], and having a close geometrical overlap, or a nearly 

common volume in space, totally unlike the prior art. 

88 
This “integral” feature of the present invention is surprisingly 

advantageous. It is also rather difficult to describe exactly, in a 

manner to cover every modification or embodiment of the present 

invention. One aspect, now recited in claim 3 is that the respective 

gear element of each respective “integral combination” is 

approximately within envelope of the respective electrical motor 

element, as is seen for each illustrated embodlment. Again, there is 

no shaft running - through the armature-iust one support bearinn for 

each internal 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 bv a driven shaft from a free-standing electric motor. 

(RX-7, Amendment at 21-22, TMC01-082579-80 (emphasis added).) 

The administrative law judge also finds that the applicant, in response to rejections that 

applicant’s claims 4-6 (now claims 2,3 and 9 of the ‘932 patent) were obvious in light of Roe 

and U.S. Patent No. 4,729,258 (Mohri) consistently defined “integral” as the absence of shafts, 

bearings, and other components: 

But this [Mohri] reference also fails to teach or suggest the 

important “internal” feature of the present invention, the same 

arguments above being equally applicable here. Namely, as can be 

seen from many of the drawings of this prior art (e.g. Figs. 1,3, 

4A, 8), shafts, gears and other elements seDarate the respective 

electric motor element from the resDective mechanical gear 

element. namelv those that are “integrally combined” in the present 

invention. 

(RX-7, Amendment at 23, TMCO1-08258 1 (emphasis added).) 

The administrative law judge further finds that the applicant described the integral 

combination as including disk 23 in the prosecution history: 

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 independent claims 1 and 2, or in claim 3/2, of the “integral” 

combination of reach armature and respective gear element. 

89 
*** 

The insertions into claim 1 contain one attempt to characterize this 

important “integral” feature, and other claims including 2 and 3/2 

include other attempts. This key feature results in the present 

invention being lightweight and compact, namely neither the 

armature or the respective gear element combined therewith stands 

alone. A single bearing can support each combined gear element 

and electric motor element, as disclosed on page 9, lines 20-2, and 

page 12, lines 15-16, and as now recited in claims 22 and 23. For 

instance. as seen from Fig. 3, a single bearing at the side of the 

housing 15 or end of the wheel spindle 44 supports the ripht hand 

internal combination 2 of these elements 22/23/24. and a sinple 

other bearing on the ouuosing side of the housing suuuorts the 

other combination. 

(RX-7, Amendment at 21-22, TMCO 1-082579-80 (emphasis added).)24 

Complainant argued that the prosecution history expressly states that “[tlhe insertions 

into claim 1 contain one attempt to characterize this important integral feature, and other claims 

including 2 [patent claim 71 and 3/2 include other attempts.” (CBr at 59.) Thus, complainant 

argued that the file history makes clear that the limitations added to claim 1 are not the same as 

those added to claim 7. (CBr at 59.) It is further argued that the fact that applicant goes on to 

distinguish the prior art by referencing limitations from both claims, does not give respondents 

license to read limitations from one claim into another where those limitations simply do not 

appear. (CBr at 59.) It is also argued that the file history, in commenting on application claim 3 

(patent claim 8) referenced one of a number of aspects of the “integral combination” feature, e. 

the inclusion of motor and transmission elements within a common envelope. (CBr at 59.) It is 

24 While the term “geometric overlap” is found in the prosecution history, it is not found 

in the claims or specification of the ‘932 patent. In addition, in the prosecution history, the 

applicant defined the claimed “integral combination” limitation of the present invention as not 

containing shafts, bearings and other elements. See supra. 

90 
further argued that the file history then references “another” aspect of the integral combination of 

the invention, which is expressly incorporated into independent claim 1 and dependent claim 5, 

namely that there is “no shaft running through the armature -just one support bearing for each 

integral combination.” (CBr at 60.) Thus, it is argued that it is evident that those limitations 

should not be read into claim 7 of the ‘932 patent since “[cllaim 1 [was] narrowed to include two 

of these integral combinations of an electric motor element and a mechanical gear element, 

allowing the committing of claims 2 [7] and 3 [8] to other limitations as mentioned above.” (CBr 

at 60.) 

The administrative law judge finds that the applicant made the following statement, as to 

all claims that were in issue, with respect to Roe and “integral combination”: 

Namely, in [Roe] there are shafts and bearings and other elements 

such as one of the electric motors itself, between each respective 

pair of these two elements. 

(RX-7, Amendment at 21, TMC01-082579 (emphasis added).) The administrative law judge 

finds that the applicant identified the presence of shafts and bearings and other elements between 

the pair of elements in Roe and then distinguished the absence of said shafts, bearings, and other 

elements in the invention of the ‘932 patent. 

Applicant did state: 

This “integral” feature of the present invention is surprisingly 

advantageous. It is also rather difficult to describe exactly, in a 

manner to cover every modification or embodiment of the present 

invention. One aspect, now recited in claim 3 [patent claim 81 , is 

that the respective gear - element of each respective “integral 

combination” is approximatelv within envelope [sic1 of the 

resDective electrical motor element, as is seen for each illustrated 

embodiment. Apain, there is no shaft running through the 

armature-iust one support bearing for each intem-a1 combination of 

91 
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 Dower is taken out by a driven shaft from a 

free-standing electric motor. 

Claim 1 has been narrowed in include two of these integral 

combinations of an electrical motor element and a mechanical gear 

element, allowing the committing of claims 2 and 3 to other 

limitations as mentioned above. 

(RX-7, Amendment at 22-23, TMC01-082580-8 1 (emphasis added).) However, the 

administrative law judge finds that the applicant supra did not identify the dfferent aspects of 

“integral combination” that are within claims 1,2 and 3, and does not indicate that they are not 

present in Roe, and thus that the claims are not anticipated by Roe. Instead, the administrative 

law judge finds that the applicant used the term “present invention” when he stated that Roe did 

not anticipate the invention of the ‘932 patent’s “integrated combination” because said present 

invention did not have shafts, bearings, and other elements between the electric motor element 

and the transmission unit element. Thus, the administrative law judge finds that the applicant 

defined “integrated combination” as the lack of shafts, bearings, and other elements between the 

electric motor element and the transmission unit element, and that all “integral combination” 

limitations required the absence of said shafts, bearings, and other elements to avoid being 

anticipated by Roe. 

Complainant argued that while the disputed term “integral combination” is recited in 

independent claims 1 and 7, only claim 1 imposes the express limitation that requires an absence 

of spacing, bearing or shafts, and thus that the term “integral combination” does not require two 

elements that are rigidly fixed together “without shafts, bearings, or other elements there 

between,” as these requirement are expressly set forth in claim 1. (CBr at 59; CFF 220.) 

92 
Complainant further argued that respondents’ interpretation impermissibly adds a limitation, 

namely “two elements are combined without shafts, bearings, or other elements between,” which 

is expressly present in claim 1 of the ‘932 patent, to claim 7 of the ‘932 patent, where said 

limitation is not expressly present. (CBr at 59.) However the complainant appears to rely on the 

doctrine of claim differentiation which the administrative law judge has rejected supra as it 

applies to the subject matter before him. Moreover, the administrative law judge, supra, is 

relying on the express teachings of the specification. Thus, as indicated suura, the inventor in the 

“Brief Description Of the Drawings” section of the ‘932 patent makes reference to “the present 

invention.” (See CX-1 at 3:48-350.) Also in the “Description of the Preferred Embodiments” 

section, as found supra, contains numerous references to “the present invention” in describing the 

figures of the specific embodments. 

As found, suura, the applicant defined “integral combination” as the lack of shafts, 

bearings, and other elements between the electric motor element and the transmission unit 

element for all claims, in the prosecution history. Also, as found supra, the applicant did not 

distinguish between claims when he defined “integral combination.” The facts of this case are 

similar to those of Seachange Int’l Inc. v. C-COR Inc., 413 F.3d 1361, 1369 (Fed. Cir. 2005), 

where a first independent claim recited a limitation of a “point-to-point” computer network and a 

second independent claim recited simply “a network for data communications.” Despite the 

different wording of those two claims, the applicant grouped the claims together during 

prosecution and made the same argument to overcome prior-art rejections of both claims. 

Specifically, the applicant argued that both claims were distinguishable because the prior art 

failed to disclose a “point-to-point” type of network. Id. at 1370-71. Based on that argument in 

93 
the prosecution history, the Federal Circuit held that both claims were limited to a “point-topoint” network because of the clear disclaimer of other types of networks. Id. at 1373. The 

Federal Circuit specifically rejected the patentee’s argument that any statements made during 

prosecution referring to “point-to-point” networks applied only to the first claim, which 

specifically used the words “point-to-point” network. Id. at 1373. Thus, the administrative law 

judge rejects complainant’s argument that the applicant’s disclaimer only applied to claim 1 and 

not claim 7 of the ‘932 patent because of the express limitation in claim 1 of the ‘932 patent. 

With respect to “envelope,” the administrative law judge finds that the prosecution 

history of the ‘932 patent does reference the term “envelope.” The applicant described the 

“envelope” limitation in arguing that the claims of the ‘932 patent were not anticipated by Roe: 

One aspect, now recited in claim 3 [patent claim 81, is that the 

remective gear element of each respective “integral combination” 

is aDproximatelv within enveloDe 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 

fore each integral combination of an electric motor element and a 

mechanical gear element. The Dower is taken off from inside the 

armature itself. In all the cited Drior art devices, the power is taken 

out bv a driven shaft from a free-standing electric motor. 

(RX-7, Amendment at 22, TMCO1-082580 (emphasis added).) Thus, the administrative law 

judge finds that the applicant argued that claim 7 of the ‘932 patent25 recited the “envelope” 

25 The administrative law judge finds that while the applicant referenced the claim that 

became dependent claim 8 of the ‘932 patent, said claim depends on independent claim 7 of the 

‘932 patent. The administrative law judge further finds that the “envelope” limitation of claim 7 

is broader than the “envelope” limitation of claim 8 of the ‘932 patent as claim 8 of the ‘932 

patent recites further limitations with respect to the “envelope” limitation that are not present in 

claim 7 of the ‘932 patent b, claim 7 allows either the transmission unit element to be 

approximately within the envelope of the electric motor element, or visa-versa, and does not 

impose a volume limitation on the “envelope”; claim 8 requires that the transmission unit 

element be approximately within the envelope of the electric motor element, and requires that the 

94 
limitation, and he further finds that the language “as is seen for each illustrated embodiment” 

shows that the applicant argued that the patent drawings in each figure disclose the configuration 

of the “envelope” limitation. The administrative law judge further finds that in describing the 

“envelope limitation,” the applicant stated that power is not taken out by a driven shaft but is 

taken right from the armature. The admmistrative law judge also finds that the applicant 

disclosed that the power is taken from the armature to the transmission unit and not through any 

kind of shaft. Thus, the administrative law judge finds that the applicant disclosed that the 

integral combination elements are “at least to a large extent within an envelope of each other” 

when the integral combination elements are contained entirely or nearly entirely within the space 

defined by the rotation of either the electric motor element or the transmission unit element so 

that power is taken from the electric motor element to the respective transmission unit element 

without the need of a shaft. 

For the foregoing reasons, the administrative law judge interprets “and 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 extent within an envelope containing the other” (“integral combination” limitation) as: 

an electric motor element and a transmission unit element rigidly 

and dlrectly attached without the presence of shafts, bearings or 

other components between the electric motor element and the 

“envelope” have effectively a cylindrical symmetry with a length that is substantially shorter than 

its diameter.) (CX-1 at 11:40-43, 11:48-52.) For the foregoing reasons, the administrative law 

judge finds that the applicant’s characterization of the “envelope” limitation, with respect to 

claim 8 of the 932 patent, applies equally to the “envelope” limitation of claim 7 of the ‘932 

patent. 

95 
transmission unit element, supportable by a single bearing; where 

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 itselP6. 

4. “whereby a compact structure is provided for each said integral combination” 

Complainant argued that one of ordinary skill in the art would understand “whereby a 

compact structure is provided for each said integral combination” to mean: 

the result of an assembly where each integral combination involves 

one of either the motor or transmission elements being at least to a 

large extent within an envelope containing the other is a structure 

having units closely united or packed together. 

(CBr at 70; CFF 221,270-271.) It is further argued that the term “compact” follows the term 

“whereby,” and that this language has special meaning, and indicates that the language to follow 

states the result of the claimed assembly. (CBr at 70.) It is further argued that the envelope refers 

to an area defined by “half 15 of a housing” and that this arrangement of the integral 

combinations of the electric motor elements and elements of the mechanical transmission within 

a common envelope results in an assembly with axially reduced dimensions and therefore a 

“compact structure.” (CBr at 70-71 .) 

Respondents further argued that one of ordinary skill in the art would understand 

“whereby a compact structure is provided for each said integral combination” to mean: 

in each integral combination, neither the armature nor the 

respective gear element combined therewith stands alone, and a 

single bearing can support each integral combination. 

26 Because the claimed “envelope” is essentially the two elements that comprise an 

integral combination, the administrative law judge finds that the claimed “envelope” cannot have 

shafts, bearings, or other components between said elements, and is supportable by a single 

bearing. 

96 
(RBr at 64.) It is further argued that the ‘932 specification does not use the word “compact,” nor 

does it expressly define what is meant by “compact structure.” (RBr at 64; RFF-4.210.) It is 

further argued that the ‘932 specification does explain that the goal of the claimed invention is to 

create a small, lightweight unit in which (by eliminating the motors’ output shafts) each “integral 

combination can be supported by just a single bearing.” (RBr at 64-65; RFF-4.211.) 

Respondents further argued that in the prosecution history, while attempting to overcome 

prior-art rejections, the applicant explained what is meant by a “compact structure,” namely, 

neither the armature or the respective gear element combined stands alone and a single beating 

can support each combined gear element and electric motor element. (RBr at 65-66; RFF-4.214.) 

The staff in addition to its arguments, supra, relating to “integral combination” supra, 

argued that, based on the prosecution history the term “compact” should be interpreted as “the 

integral combination cannot be separated or stand alone”. (SBr at 36.) 

With respect to “compact structure,” at issue is whether the phrase, “whereby a compact 

structure is provided for each said integral combination,” recites an addtional limitation to claim 

7 of the ‘932 result, or whether said phrase merely recites a result of the previous phrase “each 

said integral combination involving one of said two respective elements thereof being at least to a 

large extent [sic] within an envelope containing the other.” (SeeCX-1 at 11:40-43.) The Federal 

Circuit has held that “a whereby clause that merely states the result of the limitations in the claim 

adds nothing to the substance of the claim.” Lockheed Martin Corp. v. Space Svstems/Loral, 

-9 Inc 324 F.3d 1308, 1319 (Fed. Cir. 2003); Tex. Instruments Inc. v. United States Int’l Trade 

Cornm’n, 988 F.2d 1165, 1172 (Fed. Cir. 1993). 

The administrative law judge finds that Merriam Webster defines “compact” as “2: a: 

97 
having a dense structure or parts or units closely packed or joined.” (Merriam Webster’s 

Collegiate Dictionary, Tenth Edition, 1996.) The administrative law judge further finds that the 

language of claim 7 of the ‘932 patent and the specification of the ‘932 patent are both silent with 

respect to defining a “compact structure” for an integral combination of an electric motor element 

and an transmission unit element. However, the administrative law judge finds that, given his 

interpretation of the phrase “each said integral combination involving one of said two respective 

elements thereof being at least to a large extent within an envelope containing the other,” and 

given his interpretation of “integral combination, ”the claimed phrase at issue, namely, “whereby 

a compact structure is provided for each said integral combination” states a resulting structure 

where 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 dnectly from the electric motor element to the transmission unit element. The 

administrative law judge finds this so because when 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 directly from the electric motor 

element to the transmission unit element, the resulting structure of the integral combination 

elements will also be compact. 

Respondents argued that complainant’s interpretation of “compact structure” is 

“overboard and amorphous to the point of being indefinite [because] what may appear ‘closely 

united’ to one person will not necessarily appear ‘closely united’ to another.” (RBr at 66.) 

However, the administrative law judge finds that the phrase, “whereby a compact structure is 

provided for each said integral combination,” is a result of the “envelope” limitation stated in 

98 
claim 7 of the ‘932 patent, and that one of ordinary skill in the art would determine if the 

“envelope” limitation has been met to determine if the “compact structure” was present. 

With respect to “compact structure,” as found supra, the specification of the ‘932 patent is 

silent with respect to defining a “compact structure” for an integral combination of an electric 

motor element and an transmission unit element; and thus the phrase, “whereby a compact 

structure is provided for each said integral combination” states a resulting structure where 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 

directly from the electric motor element to the transmission unit element. 

With respect to “compact structure,” the administrative law judge finds that the 

prosecution history states the following with respect to “compact”: 

The insertions into claim 1 contain one attempt to characterize this 

important “integral” feature, and other claims including 2 and 3/2 

include other attempts. This key feature results in the present 

invention being lightweight and compact, namely neither the 

armature or the respective gear element combined therewith stands 

alone. A single bearing can support each combined gear element 

and electric motor element, as disclosed on page 9, lines 20-2, and 

pages 12, lines 15-16, and as now recited in claims 22 and 23. 

(RX-7, Amendment at 21 , TMCO1-082579 (emphasis added).) The administrative law judge 

finds that the applicant states that the compact structure of the integral combination is a result of 

one integral combination element being in the “envelope” of the other. Thus, the administrative 

law judge finds that the claimed phrase at issue states a result, and not an additional limitation, of 

the phrase “each said integral combination involving one of said two respective elements thereof 

being at least to a large extent within an envelope containing the other.” 

99 
Respondents argued that its interpretation is supported by the prosecution history, as the 

applicant explained what he meant by a “compact structure” at RX-7, Amendment at 21, 

TMC01-082579, supra. (RBr at 65.) However, the administrative law judge finds that that 

language of the prosecution history states the fact that the present invention is lightweight and 

compact as a result of the key feature. 

The staff, as respondents, argued that its interpretation was correct based on the 

prosecution history. The administrative law judge rejects the staffs argument as he has rejected 

respondents’ argument. 

5. “said two integral combinations are located closely adjacent each other [sic]” 

In issue is said claimed phrase, which is found in claim 7 of the ‘932 patent, the only 

asserted independent claim of the ‘932 patent. 

Complainant argued that one of ordinary skill in the art would understand “said two 

integral combinations are located closely adjacent each other [sic]” to mean: 

the two integral combinations are located close to each other. 

(CBr at 73.) It is further argued that this limitation is a common English phrase, and that the 

term “closely adjacent” is commonly used in mechanical patent claims and is not indefinite. (CBr 

at 73.) It is further argued that the dictionary defines the term “adjacent” as “close to; lying near’, 

or “next to; adjoining,” and defines the adjacent “close,” the root for the adverb “closely,” as 

“being near in relationship” and “having little or no space between elements or parts.” (CBr at 

73-74.) Accordingly, it is argued, a person of ordinary skill in the art would understand that the 

phrase, “said two integral combinations are located closely adjacent each other [sic]” is definite 

and refers to each of the integral combinations being located in close proximity to each other, but 

u. 

100 
not necessarily in contact with each other. (CBr at 74.) 

Respondents argued that one of ordinary skill in the art would understand “said two 

integral combinations are located closely adjacent each other [sic]” to mean: 

the integral combinations are located close enough together that the 

entire motor and transmission device measures no more than 8 

inches from end to end, i.e., small enough to fit within a vehicle 

wheel. 

(RBr at 69.) It is further argued that the specification of the ‘932 patent never uses the terms 

“close,” “clo~ely,’~ or “adjacent.” (RBr at 69; RFF-2.231.) It is further argued that the 

specification of the ‘932 patent clearly identifies as a goal a combination motor and transmission 

device that is small and compact enough to fit within the wheel assembly of a while of an 

electrically powered vehicle. (RBr at 69-70; RFF-4.232.) It is further argued that, based on the 

foregoing, the most reasonable interpretation of the “closely adjacent” limitation is that the 

integral combinations are located close enough together that the entire motor and transmission 

device is small enough to fit within a vehicle wheel, and that respondents’ interpretation, 

irrespective of whether specific dimensions are mentioned, “is most true to the specification of 

the ‘932 patent.” (RBr at 70.) 

The staff argued that the entire clause comprising, inter alia, of “said two integral 

combinations are located closely adjacent each other [sic],” should be interpreted as instructing 

one of ordinary skill how to achieve the claimed “integral combination” of the preceding clause. 

(SBr at 33.) Thus, the staff argued, in order to satisfy the “integral combination” element, the 

armature and/or the essential transmission element must be within an “envelope” containing the 

other, whereby a compact structure is provided for each integral combination, and the two 

101 
integral combinations are located closely adjacent to each other. (SBr at 33.) The staff did not 

give a separate interpretation of the phrase “said two integral combinations are located closely 

adjacent each other [s~c].~’ (See SBr at 33-36.) 

The administrative law judge finds that the language of claim 7 of the ‘932 patent, and the 

specification of the ‘932 patent does define “closely” or “adjacent.” Thus, the administrative law 

judge finds that the patentee did not deviate from the ordinary meaning of either “closely” or 

“adjacent.” Merriam Webster defines “closely” as “1 1: being near in time, space, effect or 

degree”and “adjacent” as “1: not distant, nearby.” (Merriam Webster’s Collegiate Dictionary, 

Tenth Edition, 1996.) Thus, the administrative law judge finds that one of ordinary skill in the 

art would understand the claimed phrase at issue to mean that the two integral combinations are 

located close to each other. 

For the foregoing reasons, the administrative law interprets “said two integral 

combinations are located closely adjacent each other [sic]” as: 

said two integral combinations are located close to each other. 

Respondents argued that the most reasonable construction of the “closely adjacent” 

limitation is that the integral combinations are located close enough together that the entire motor 

and transmission device measures no more than 8 inches from end to end, i.e., small enough to fit 

within a wheel, irrespective of whether specifications are mentioned in the ‘932 patent, because 

the specification clearly identifies as a goal a combination motor and transmission device that is 

small and compact enough to fit within the wheel assembly of a wheel of an electrically powered 

vehicle. (RBr at 69-70.) However, the administrative law judge finds there is no language in the 

claim, specification, or the prosecution history that requires the entire motor and transmission 

102 
device to measure no more than 8 inches from end to end. Furthermore, while the specification 

of the ‘932 patent does state that it is a goal that the combination motor and transmission device 

be small and compact enough to fit within the wheel assembly of a wheel, the administrative law 

judge finds that said goal refers to the entire combination motor and transmission device, and 

does not refer to the distance between two integral combinations; and that there are many factors 

in determining the size of the entire combination motor and transmission device, and that just 

because the entire device does not fit within the wheel assembly of a wheel does not necessarily 

mean that the integral combinations are not located close to each other. 

Vm. Infringement 

Under the provisions of 35 U.S.C. 0 271, liability for infringement arises if “whoever 

without authority makes, uses, offers to sell, or sells any patented invention, within the United 

States or imports into the United States any patented invention during the term of the patent 

therefor.” 35 U.S.C. 0 271(a). This infringement of a patented invention is the usual meaning of 

the expression “direct infringement.” &JOY Techs., Inc. v. Flakt, Inc., 6 F.3d 770,773 (Fed. 

Cir. 1993). 

A determination of infringement requires a two-step analysis. First, the patent claim must 

be properly construed to determine its scope and meaning. Second, the claim as properly 

construed must be compared to the accused device or process. Zelinski v. Brunswick Corn., 185 

F.3d 1311, 1315 (Fed. Cir. 1999), citing Markman v. Westview Instruments, Inc., 52 F.3d 967, 

976 (Fed. Cir. 1995). Whereas claim construction is a matter of law and therefore, the exclusive 

province of the court, “whether a claim encompasses an accused device, either literally or under 

the doctrine of equivalents, is a question of fact.” Zelinski, 185 F.3d at 1315, citing N. Am. 

103 
Vaccine. Inc. v. Am. Cyanamid Co., 7 F.3d 1571, 1574 (Fed. Cir. 1993). 

A. The Accused Products 

The accused devices are hybrid transaxles contained in the Toyota Prius{ 

}Toyota Highlander HV{ } Toyota Camry HV 

{ } and Lexus RX 400h { } (CRRFF 2.51; 

RX-138C at Ex. A.) For purposes of this investigation, the Highlander HV, Toyota Camry HV, 

and Lexus RX 400h can be considered identical in structure and operation. (RFF 2.52 

(undisputed).) Hence, all parties agree that the Highlander hybrid system is representative of the 

hybrid systems used in the Lexus RX 400h and the Camry. (SFF 207 (undisputed).) 

The Prius transaxles utilize a planetary gear system connected to a first stand-alone 

electric motor generator (MGl), a second stand alone electric motor generator (MG2), and an 

internal combustion engine (ICE). (RFF 2.53; Caulfield, Tr. at 1645, 1679-80; RDX-45C; 

RDX-46C; Rx-443C). To create motive force using MG2, an electrical current is sent to the 

stator assembly of MG2. (RFF 2.60 (undisputed).) The electric current creates a magnetic field 

that causes the magnet assembly and the rotor shaft of MG2 to rotate on the two bearings. (RFF 

2.61; Caulfield, Tr. at 1646:8-15, 1891:8-22; Davis Tr. at 1322:7-19; RDX-46C; RX-443C; 

CPX-4C; RX-439C; RX-458C; RX-474 at TMC01-003172, TMCO1-003194). The ring gear is 

connected via a square cog and finger connection to the transmission drive sprocket assembly. 

(RFF 2.63 (undisputed).) 

To start the ICE, the planetary carrier must be made to rotate. (RF'F 2.67 (undisputed).) If 

the ICE is started when the vehicle is stationary, for instance, MG1 will operate as a starter motor 

to drive the sun gear, which, in turn, rotates the carrier to crank the ICE. (RFF 2.68 (undisputed).) 

104 
1 

In the Highlander, in contrast to the Prius, the fixed planetary gear set operates as a 

reduction gear because the carrier portion is fixed, only allowing the individual planet or pinion 

gears to rotate. (RF’F 2.82 (undlsputed).) Moreover, the parties agree that unlike the Prius, the 

Highlander’s transaxle has two planetary gear sets, and the one on the MG2 side, which is not 

included in the Prius, functions to increase the RPM of the MG2 rotor and the second planetary 

gear set functions as a power splitter. (SFF 202 (undisputed).) Similar to the Prius, the 

Highlander typically operates using only the motive force from MG2 during low power demand 

situations. (RFF 2.88 (undisputed).) 

B. The Accused Products Do Not Infringe Claim 7 Of The ‘932 Patent 

Complainant argued that it has established, by preponderance of evidence, that the 

accused hybrid transaxles contain every limitation of claim 7 of the ‘932 patent and hence they 

infringe said claim 7. (CBr at 39-74.) 

Respondents argued that complainant has not established that the accused hybrid 

transaxles infringe claim 7 of the ‘932 patent. (RBr at 70-87.) 

The staff argued that complainant has not demonstrated that any of the accused hybrid 

transaxles infringe claim 7 of the ‘932 patent. (SBr at 39-55.) 

105 
Referring to the claimed phrase “wherein the rotational speed of said output is 

continuously variable,” complainant argued that the planetary gear assembly of the Toyota . 

Hybrid vehicles, working in combination with MG1 and MG2, acts as a continuously variable 

transmission, wherein the rotational speed of the output is continuously variable, as required by 

claim 7 of the ‘932 patent; that the Toyota transaxles provide a continuously variable 

transmission function, in that they decouple the speed of the inputs from the speed of the output; 

and that MG1 and MG2 can be run at high speeds while the output is at a low speed, or one 

motor can be run at high speed while the speed of the other motor is varied, thereby varying the 

speed of the output. (CBr at 54-5.) 

Respondents argued that complainant offers no proof that the output of the Toyota 

transaxles, during the engine-startup transient can be varied “from full forward to full reverse” or 

“from a negative maximum value to a positive maximum rotational value”; that the evidence was 

overwhelming that the internal combustion engine in the Toyota vehicles does not rotate in 

reverse and, therefore, the “continuously variable” limitation is not met; that complainant does 

not address the requirement that rotational output be variable to any desired rotational speed; that 

there was undisputed evidence that the output during the engine-startup transient cannot be 

varied to any “desired” rotational speed; that there is no dispute that the “peak power” 

requirement is not met by any of the accused transaxles during the engine-startup transient; and 

that there is no dispute that the Highlander HV, Lexus RX 400h, and Camry HV do not satisfy 

the “no intervening gear reduction” requirement because they contain a reduction gear between 

MG2 and the transmission unit (the power-split device). (RRBr at 63-4.) 

The staff argued that none of the vehicles at issue satisfy the “continuously variable” 

106 
element; that the evidence shows that neither of the two motors used in the Toyota vehicles at 

issue satisfy the “operate” at “peak power at all speeds” limitation;{ 

The administrative law judge has interpreted, supra, the claimed phrase “wherein the 

rotational speed of said output is continuously variable” as: 

the rotational speed of the output of the mechanical power 

transmission unit can be varied such that any desired rotational 

speed, from a negative maximum value to a positive maximum 

rotational value, can be attained at peak power and with no 

intervening gear reduction to the component being driven. 

With respect to the requirement of “any desired rotational speed, from a negative 

maximum value to a positive maximum rotational value, can be attained at peak power,” the 

administrative law judge finds that in the accused products, peak power cannot be attained at 

“any desired rotational speed.” Thus as for the “peak power” requirement, complainant, in 

response to RFF-5.75 (“None of the accused transaxles satisfies the continuously variable 

107 
limitation of claim 7 of the ‘932 patent because the output is not at peak power (Caulfield, Tr. at 

2057:l-25).”), relying on its expert’s testimony, merely argued in CRRFF-5.75 and 5.75A, that 

“term ‘continuously variable’ does not require peak power,” and that a person of “ordinary skill 

in the art would not construe the term ‘continuously variable’ to include peak power.” However, 

the administrative law judge, in his interpretation of “continuously variable,” found that output 

speed “can be varied such that any desired rotational speed ... can be attained at peak power.” 

Hence, the admmistrative law judge finds that all the accused vehicles do not have output speeds 

which “can be varied such that any desired rotational speed ... can be attained at peak power” as 

required by the “wherein the rotational speed of said output is continuously variable” limitation. 

As to the requirement of “no intervening gear reduction to the component being 

driven,”supra, for the claimed phrase “wherein the rotational speed of said output is continuously 

viewable’’ the administrative law judge finds that the accused Highlander hybrid system products 

do have intervening gear reduction because they contain a reduction gear between MG2 and the 

transmission unit (the power-split device). As complainant’s expert Davis agreed, the 

Highlander HV has two planetary gearsets, including two different sun gears, two different sets 

of planetary gears, and a common or compound ring gear. Thus, Davis testified during the cross 

examination: 

Q. All right. I want to talk about the differences between the 

compound planetary gear set of the Highlander and the 

structures in the - in figures 3 through 6 of the patent. One 

difference that you’ll agree with is that the compound 

planetary gear set in the Highlander has more parts than the 

corresponding structures that are disclosed in figures 3 

through 6 of the ‘932 patent? 

*** 

108 
Q. 

A. 

Q. 

A. 

Q. 

A. 

Q. 

A. 

Q. 

A. 

Q. 

A. 

Well, let’s put it this way: How many sun gears are 

disclosed in, let’s just take care of [Figure] 4. How many 

sun gears are disclosed in figure 4? 

One sun gear. 

How many sun gears are in the Highlander? 

Two. 

How many planetary carriers are disclosed in figure 4 of the 

patent? 

There are two planetary carriers. 

In figure 4? 

Oh, I’m sorry. I thought you were talking about the 

Highlander. No. One planetary carrier. I’m sorry. 

And how many planetary carriers are there in the 

Highlander? 

Two. 

Okay. And then of course the Highlander has this big 

compound ring gear, right? 

Common ring gear. 

(Davis, Tr. at 1340:7-1341:2.) 

Additionally, respondents’ expert Caulfield testified that the first or fixed planetary 

gearset in the Highlander HV acts as a speed reducer for MG2. Thus, Caulfield explained: 

Q. You referred, when you were talking about the Prius, you 

referred to the motor and generator as stand alone motor 

and generator. Do you have any opinion as to whether 

that’s also applicable to the Highlander? 

A. The Highlander has the same features as far as the stand 

alone motor generators, they are both stand alone and 

109 
operate as motors. The only additional feature, main one, is 

for MG2, it Poes throuPh a Pear reducer reverser before it 

goes into the compound ring gear. which goes over to the 

planetarv. 

Q. And what you refer to as the reducer, what components 

make up that reducer? 

A. The reducer is made up with a sun, a set of planets that are 

fixed on a carrier and then a ring. which is a compound ring 

with the next olanetarv unit, which is over on the right side. 

Q. Are any of those components fixed in the reducer? 

A. The carrier is fixed, which will fix the centers of the 

planets. 

(Caulfield, Tr. at 1693-94 (emphasis added); CX-3 1OC; RX-442C.) Hence, the administrative 

law judge finds that the accused Highlander hybrid system does not meet the “no intervening 

gear reduction” requirement of the claimed “wherein the rotational speed of said output is 

continuously variable” limitation. 

With respect to the claimed phrase “and 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 extent within an envelope 

containing the other” (“integral combination” limitation), the administrative law judge has 

interpreted said phrase as: 

an 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; where 

one of the integral combination elements is contained entirely or 

nearly entirely within the imaginary space defined by the rotation 

110 
of the other integral combination element so that power is taken off 

from inside the armature itself.27 

Complainant argued that the accused devices include, for both MG1 and MG2, an “integral 

combination of a respective electric motor element and an element of said mechanical 

transmission unit”; that the MG2 motor assembly of the Prius contains an integral combination of 

a motor element (the armature or rotor assembly) and a transmission unit element (the ring gear 

flange); that the MG2 rotor assembly is formed as a unit with the ring gear flange and ring gear; 

that the rotor assembly, ring gear flange and ring gears are mechanically joined via a spline 

connection within the geometry of the motor; that as with MG2, the armature assemblies (or 

rotor assembly) for MG1 in the accused devices is formed as a unit with the sun gear extension 

and sun gear; and that the MG1 rotor assembly is mechanically connected to the sun gear 

extension using a spline connection within the geometry of the motor. (CBr at 60-1 .) 

Complainant further argued that the mechanical transmission unit of each of the 

Highlander HV, Camry HV and Lexus RX400h also contains two integral combinations of 

electric motor elements and transmission unit elements; that the Highlander HV includes a first 

sun gear connected to the rotor of MG2 with a spline connection and a second sun gear 

connected to the rotor of MG1 via a spline connection; that the two integral combinations in the 

Highlander are represented by the armature or rotor assembly combined with the sun gear, and 

the armature or rotor assembly combined with the second sun gear; that each of these mechanical 

spline connections are made at a location that is inside the geometry of the motor; that these 

27 Because the claimed “envelope” is essentially the two elements that comprise an 

integral combination, it has been found that the claimed “envelope” cannot have shafts, bearings, 

or other components between said elements, and is supportable by a single bearing. 

111 
assemblies therefore constitute first and second integral combinations of an electric motor 

element and a transmission element; and that therefore, the Highlander Hv, Lexus RX 400h 

Hybrid and Camry HV transaxle meet the “integral combination” claim requirement. (CBr at 61- 

2.) 

Respondents argued that under the proper construction of “integral combination,’’ the 

accused Toyota transaxles do not satisfy the “integral combination” limitation because (1) there 

are shafts, bearings, and other elements between each armature and corresponding transmission 

element &, sun gear or ring gear) and (2) there are non-integral spline connections between 

each rotor shaft and correspondmg transmission element; that although complainant’s expert 

Davis initially testified that the “rotor shafts” in the Toyota devices are not actually shafts 

because they are not “long and slender,” he eventually conceded at trial that they can be 

considered shafts; that in addition to shafts, there are other elements, including bearings and in 

the Highlander a planetary gear reducer, between the armature and corresponding transmission 

element in the accused transaxles; and that because the spline connections of Toyota transaxles 

are not fixed together, they cannot satisfy the “integral combination” limitation as properly 

construed. (RRBr at 45,47,49.) 

The staff argued that the intrinsic evidence makes clear that the invention of the ‘932 

patent requires a device without shafts and only one bearing; that the accused motors differ 

markedly from the motors of the invention of the ‘932 patent; that the shaft of each of the 

accused motors is supported by two bearings, and the motors are “stand-alone” motors and thus, 

these accused motors can be removed from their housings and operated individually; that 

therefore, the motor/transmission elements in these accused motors are not “integrally combined” 

112 
as that term is used in the ‘932 patent; and that moreover, the shaft of each motor extends outside 

of its housing. (SRBr at 24-5.) 

Complainant also argued that in the accused Toyota vehicles, each integral combination 

of an electric motor element and an element of the mechanical transmission unit includes “one of 

said two respective elements thereof being to a large extent within an envelope containing the 

other,” as required in claim 7 of the ‘932 patent; that elements of the mechanical transmission 

unit are located within the geometric enclosures created by the MG1 and MG2 assemblies; that in 

the Prius, the envelope containing the rotor of MG2 also includes the ring gear, while the 

envelope containing the rotor of MG1 includes the sun gear; that each of the MG1 and MG2 

assemblies is contained within its own envelope; and that similarly, in the Highlander HV, Lexus 

RX4OOh and Camry HV, the envelope containing the rotor of MG2 includes the first sun gear, 

while the envelope containing the rotor of MG1 includes the second sun gear. (CBr at 67-8.) 

Respondents argued that for the Prius transaxle, the sweep of the permanent magnets &, 

the armature) creates a cylindrical volume and that each corresponding transmission element (sun 

gear and ring gear for MG1 and MG2 respectively) is outside the sweep of the armature; that the 

same is true for the Highlander transaxles; that unlike the apparatus described in the ‘932 patent, 

it cannot be said for the Toyota devices that “[tlhe power is taken off from inside the armature 

itself’ (RX-007, Amendment at 22, TMCOl-082580); that instead, the Toyota devices are like 

the prior art devices the ‘932 applicant distinguished during prosecution, i.e., where “the power is 

taken out by a driven shaft from a free-standing electric motor” (I&; and that Solomon’s 

contention that the accused transaxles satisfy the “envelope” limitation even under Toyota’s 

construction is clearly erroneous because it assumes that the rotor shaft is an “electric motor 

113 
element” within the meaning of claim 7. (RRBr at 49-51.) 

The staff argued that the term “envelope,” when properly construed, means that the gear 

element is within the sweep of the rotating electric motor element; that none of the accused 

vehicles satisfy this element; and that the evidence of record demonstrates that in the Prius, the 

ring gear on MG2 is outside of the envelope created by the MG2 motor element, and that the sun 

gear on MG1 is outside of the envelope created by the MG1. (SBr at 48-9.) 

In the Prius hybrid transaxles, there is a rotor shaft between the rotating magnets and the 

ring gear, as well as a shim, a spline connection, and a ring gear flange between the rotor shaft 

and the ring gear. (RFF 5.9; Caulfield, Tr. at 1663:2-1664:4, 1670:25-1671:20; RDX-043; 

RDX-041; RDX-034C; RX-443C; RPX-026; RPX-028; RPX-024; RPX-027; RPX-025; 

RPX-030; CX-32OC; CX-352C; RX-385C, RFF 5.2,5.27.) In the Highlander Hv transaxles, 

there is a rotor shaft, a spline connection, a sun gear, and a fixed planetary reduction gear 

between the rotating magnets and the compound ring gear. (RFF 5.116; Caulfield, Tr. at 

1692:4-1693:18, 1754:24-1755:23; RDX-113.) There is no real dispute that the Toyota 

transaxles have shafts between each armature and correspondrng transmission element. 

Although complainant’s expert Davis initially testified that the “rotor shafts” in the Toyota 

devices, G, RPX-28, are not actually shafts because they are not “long and slender” (Davis, Tr. 

at 1297), he eventually conceded at trial that they can be considered shafts. (Davis, Tr. at 

1299-1300.)28 Since the Prius and the Highlander HV transaxles have a rotor shaft between the 

28 Davis also agreed with the description in Professor Norton’s textbook, Machine 

Design: An Integrated Approach, that “it is most common for shafts to have a number of steps or 

shoulders where the diameter changes to accommodate attached elements such as bearings, 

sprockets, gears, et cetera.” (Davis, Tr. at 1301-02; RFF 5.1 (undisputed).) 

114 
electric motor element and the transmission unit element, said transaxles do not meet the 

“integral combination” requirement. 

Further, in the assembled Prius transaxles, the end of the MG2 rotor shaft is connected to 

the ring gear flange using a spline connection. (RFF 5.10; Caulfield, Tr. at 1661:9-22, 

1671:21-1672:20; RDX-043; RX-443C; RPX-028; RPX-024; RPX-027; RPX 025; RPX-030.) 

For the Prius transaxles, the MG1 rotor shaft uses a spline to connect to the sun gear. (RFF 5.49; 

Caulfield, Tr. at 1754:7-24; RDX-112; RPX-022; RPX-029; RPX-043.) In the Highlander HV, 

the MG2 rotor shaft is connected to the sun gear of the fixed planetary gearset using a spline 

connection. (RFF 5.37; Caulfield, Tr. at 1695:ll 1696:7; RDX-256; CX-31OC; RX-442C). The 

two planetary gearsets in the Highlander HV share a common or compound ring gear. (RFF 5.38 

(undisputed).) However, the “integral combination” limitation requires that the electric motor 

element and the transmission unit element be rigidly and directly attached without the presence 

of other components between said elements. 

Moreover, for the Prius and the Highlander HV transaxles, each of the MGl and MG2 

has a rotor shaft supported by two bearings, whereas the “integral combination” limitation 

requires a single bearing. (Rm; 5.3; Caulfield, Tr. at 164623-15, 1891:8-22; Davis, Tr. at 

1322:7-19; RDX-046C; RX-443C; CPX-004C; CX-345C; RX-458C; RFF 5.4; Davis Tr. at 

132217-19; RDX-046C; RX-443C; CPX-004C; CX-345C; RX-458C; CX 320C; CX-352C; REF 

5.1 17; Caulfield, Tr. at 1783:5-15, 1789:16-1790:9; RX-442C; RFF 5.1 18; Caulfield, Tr. at 

178315-15, 1789:16-1790:9; RX-442C.) 

In addition, as shown in RDX-l33C, for the Prius transaxle, the sweep of the permanent 

magnets k, the armature) creates a cylindrical volume and that each corresponding 

115 
transmission element (sun gear and ring gear for MGl and MG2 respectively) is outside the 

sweep of the armature. (Caulfield, Tr. at 1771-74.) Also, as shown in RDX-l34C, for the 

Highlander HV, Lexus RX4OOh, and Camry HV transaxles, the ring gear is outside the sweep or 

imaginary volume of the MG2 magnet assembly. (Caulfield, Tr. at 1773:18-1774:21; Davis Tr. at 

1416:23-1417: 15; RDX-134C; RX-442C). Hence, as Caulfield testified, it cannot be said for the 

Toyota devices that “[tlhe power is taken off from inside the armature itself,” as required by the 

properly construed “envelope.” (Caulfield, Tr. at 177 1-74; RX-007, Amendment at 22, 

TMCO1-082580). 

Complainant argued that the accused devices include “integral combination” for both 

MG1 and MG2 transaxles, arguing that said transaxles’ motor element is either the armature or 

the rotor assembly. However, the administrative law judge has found, supra, in the claim 

interpretation section for the claimed “integral combination phrase” that the electric motor 

element consists of either the field element or the armature element, not the rotor assembly b, 

rotor shaft). 

Solomon’s contention that the accused transaxles satisfy the “envelope” limitation even 

under Toyota’s construction assumes that the rotor shaft is an “electric motor element” within the 

meaning of claim 7. (CBr at 69.) However, as indicated suwa, the administrative law judge 

already found, in the claim interpretation section of the claimed limitation “integral combination” 

that the electric motor element consists of either the field element or the armature element, not 

the rotor assembly (le, rotor shaft). 

As for the “compact structure” limitation the administrative law judge has already found 

that the claimed phrase states a result, and not an additional limitation, of the phrase “each said 

116 
integral combination involving one of said two respective elements thereof being at least to a 

large extent within an envelope containing the other.” He has also found that complainant has 

not established that the accused products have the claimed “integral combination” limitation. 

Hence, he finds that complainant has not established that the accused products have the claimed 

“compact structure” limitation. 

Referring to the claimed “power conversion means for converting said electrical power of 

said first and second inputs for output” of asserted claim 7 of the ‘932 patent, complainant 

argued that the parties have agreed to the following interpretation of “power conversion means”: 

A “power conversion means” is a “means-plus-function” limitation 

that should be interpreted in accordance with 35 U.S.C. Section 

112, paragraph 6. The function of the “power conversion means” 

is “converting said electrical power of said first and second inputs 

for output.” 

There are multiple embodiments that disclose corresponding 

structure. In the embodiment of Figure 3, the corresponding 

structure includes portions of the field elements (21), armatures 

(22) of two electric motors, disk (23), drive gears (24), pinion gear 

shaft (41) and pinion gears (42). In the embodiment of Figure 4, 

the corresponding structure includes portions of the field elements 

(21), armatures (22) of two electric motors, disks (23 and 33), hub / 

spacer (26), sun gear (46), ring gear (36), and planetary gears (27). 

In the embodiment of Figure 5, the corresponding structure 

includes portions of the field elements (21), armatures (22) of two 

electric motors, disk (23), sun gear extension (46’), sun gear (46), 

hub (26’), ring gear (36), disk (33), and planetary gears (27). In the 

embodiment of Figure 6, the corresponding structure includes 

portions of the field elements (21), armatures (22 and 32) of two 

electric motors, disks (23 and 33), hub / spacer (26), sun gear (46), 

ring gear (36), and planetary gears (27). This limitation covers the 

above structures and equivalents. 

(CBr at 40.) It is argued that respondents’ accused transaxles include two electric motors and a 

mechanical power transmission unit that perform the identical function of converting electrical 

117 
power of the first and second inputs for output. (CBr at 41.) It is also argued that respondents’ 

accused transaxles contains structure for carrying out the claimed function that is equivalent to 

the structure disclosed in the ‘932 patent. (CBr at 41; CFF 298-299,301-310.) 

Complainant also argued that, rather than look to the individual disk 23 component alone, 

the administrative law judge should look to all of the components within the ‘932 patent that 

perform the claimed function, and then determine whether respondents’ accused transaxles 

contain a collection of components that perform the “power conversion means” function utilizing 

identical or equivalent structure to the embodiment show in the ‘932 patent. (CBr at 41-42.) It is 

further argued that rather than determining whether respondents’ accused transaxles include a 

“dsk” structure, the legally proper inquiry should focus upon whether the accused hybrid 

transaxles include structure that performs the identical “power conversion means” function 

described in claim 7 and whether this structure is identical or equivalent to the corresponding 

structure in the ‘932 patent specification. (CBr at 42.) Thus, it is argued, that “disk 23” is not a 

claim limitation; rather, the overall structure of the “power conversion means” is the relevant 

limitation, and the evidence clearly shows that the accused transaxles contain equivalent structure 

for performing that function. (CIU3r at 33; CFF 303,309-310.) 

Respondents argued that the parties have agreed that every embodiment disclosed in the 

‘932 patent for performing the function of “converting said electrical power of said first and 

second inputs for output” includes a “disk 23” to which a transmission element is rigidly fixed, 

and this “disk” structure is required corresponding structure of the “power conversion means.” 

(RBr at 75; RFF 4.3,4.6,4.35.) It is further argued that this “disk” structure plays an important 

role in performing the claimed function of converting electrical power of the first and second 

118 
inputs for output; namely, disk 23 supports the armature elements and provides a flat surface 

inside the sweep of the armature elements to which the corresponding transmission unit element 

can be rigidly fixed. (RBr at 75-76; RFF 4.6,4.35-37,4.75,4.77.) It is further argued that the 

result of that arrangement is a structure in which “power is taken off from inside the armature 

itself’ rather than being “taken out by a driven shaft” as in the prior art. (RBr at 76; RFF 4.44, 

4.72,4.117.) Respondents also argued that its accused transaxles do not have a “disk” structure 

that corresponds to the “disk 23” disclosed in the ‘932 patent. (RBr at 76; RFF 5.64.) Instead, 

respondents argued, the permanent magnets of MG1 and MG2 are attached to two rotor plates, 

which, in turn, are supported by a rotor flange that is welded to a rotor shaft, which (for MG2) is 

spline connected to a ring gear flange. (RBr at 76; RFF 5.5-5.6,5.9-5.10,5.12,5.102.) It is also 

argued that the combination of rotor plates, rotor flange, and rotor shaft, collectively referred to 

as an “armature assembly” by complainant’s expert, Davis, is clearly not equivalent under 35 

U.S.C. 0 112,¶6, because there are important, non-trivial differences between the way the two 

structures perform the claimed function. (RBr at 76-77; RRBr at 53-56.) 

Respondents further argued that it is not urging a “component-by component” 

equivalence analysis, but, instead it has simply focused on the “disk” structure because that is an 

important aspect of the “power conversion means” structure disclosed in the ‘932 patent, and 

said “disk” structure” is clearly meaning in its accused devices. (RRBr at 54.) It is argued that 

the Federal Circuit has held that focusing on a particular component that plays a central role in 

the claimed function does not constitute a “component-by-component analysis.” (RRBr at 54.) It 

is argued that respondents’ analysis is based on comparing the overall “power conversion means” 

structure in the ‘932 patent to the accused products devices. (RRBr at 54-55.) 

119 
Respondents also argued that in addition, to the foregoing, there is a separate reason why 

complainant’s ‘‘5 112, ¶ 6 equivalence argument should be rejected”; namely, because the ‘932 

patentee expressly disclaimed the use of shafts in the invention, both in the specification and 

during prosecution; thus, complainant is prohibited as a matter of law from arguing that 

respondents’ rotor shafts are equivalent to the “power conversion means” structure disclosed in 

the patent. (RRBr at 56-57.) 

The staff argued that none of the motors in the accused vehicles has a structure identical 

or equivalent to any of the structures described in the specification as “c~rresponding’~ to the 

power conversion means,” &, an electric motor with an hollow core, because the electric 

motors in the accused vehicles have solid cores. (SBr at 40-41 .) Moreover, it is argued, the 

evidence of record demonstrates than an electric motor with a hollow core is not structurally 

equivalent to an electric motor with a solid core. (SBr at 41.) It is also argued that the “integral 

combination” in each of the disclosed embodiments is supported by one bearing; in contrast, the 

gear/rotor/shaft/armature combination of each motor in the accused vehicles is supported by two 

bearings; and that under these circumstances, the motors in the accused vehicles cannot be found 

to be structurally equivalent under 9 112, ¶ 6. (SBr at 41.) 

bb 

The staff further argued that the structure in the accused vehicles that complainant’s 

expert, Davis, testified is equivalent to the disk disclosed in the’932 patent, namely, the 

combination of the rotor shaft and a portion of the magnet assembly, cannot be equivalent to the 

disks disclosed in the ‘932 patent. (SBr at 43.) It is argued that this is so because: the structure 

identified by Davis is supported by two bearings in each of the motors in the accused vehicles; 

and a device having Davis’s equivalent structure cannot take power from the inside of the 

120 
armature itself, but rather, the power is taken from outside of the armature as in the prior art 

distinguished during prosecution on this specific ground. (SBr at 43-44.) 

The staff also argued that the only testimony presented that relates directly to structural 

equivalency is “conclusory [sic] opinion testimony” of Davis, and that said testimony, nor the 

“similarly conclusory [sic] statements set forth in proposed findings” reference by complainant 

support complainant’s assertion of structural equivalency. (SRBr at 23-24.) 

In Odetics, Inc. v. Storage Tech. Corn., 185 F.3d 1259, 1266-1268 (Fed. Cir. 1999), the 

Federal Circuit articulated the standard for structural equivalence under 35 U.S.C. 0 112, g[ 6: 

A claim limitation written in means-plus-function form, reciting a 

function to be performed rather than definite structure, is subject to 

the requirements of 35 U.S.C. 6 112,¶6 (1994). 

Med., Inc. v. Abbott Lab., 124 F.3d 1419, 1424 (Fed. Cir. 1997). 

As such, the limitation must be construed “to cover the 

corresponding structure, material, or acts described in the 

specification and equivalents thereof.” 

B. Braun Med., 124 F.3d at 1424. Literal infringement of a 0 112, 

1 6 limitation requires that the relevant structure in the accused 

device perform the identical function recited in the claim and be 

identical or equivalent to the corresponding structure in the 

specification. See, e.g.. Al-Site Corn. v. VSI Int’l. Inc., 174 F.3d 

1308,1320 (Fed. Cir. 1999); Pennwalt Corn. v. Durand-Wayland, 

-7 Inc 833 F.2d 931,934 (Fed. Cir. 1987) (en banc). Functional 

identity and either structural identity or equivalence are both 

necessary. See Pennwalt, 833 F.2d at 934. 

B. Braun 

35 U.S.C. 0 112, ¶ 6; 

Structural equivalence under 0 112,p 6 is, as noted by the Supreme 

Court, “an application of the doctrine of equivalents . . . in a 

restrictive role.” Warner-Jenkinson Co.. v. Hilton Davis Chem. 

-9 Co 520 U.S. 17,28 (1997). As such, “their tests for equivalence 

are closely related,” Chiuminatta, 145 F.3d at 13 10, involving 

“similar analyses of insubstantiality of differences.” Al-Site, 174 

F.3d at 1321 (quoting Chiuminatta, 145 F.3d at 1310). In the 

doctrine of equivalents context, the following test is often used: if 

the “function, way, or result” of the assertedly substitute structure 

is substantially different from that described by the claim 

121 
limitation, equivalence is not established. See, ex., WarnerJenkinson, 520 U.S. at 39-40. As we have noted, this tripartite test 

developed for the doctrine of equivalents is not wholly transferable 

to the 0 112, ¶ 6 statutory equivalence context. See Alpex 

Computer COT. v. Nintendo Co., 102 F.3d 1214, 1222 (Fed. Cir. 

1996); Valmont, 983 F.2d at 1043; D.M.I., Inc. v. Deere & Co., 

755 F.2d 1570, 1575 (Fed. Cir. 1985). Instead, the statutory 

equivalence analysis, while rooted in similar concepts of 

insubstantial differences as its doctrine of equivalents counterpart, 

is narrower. See Al-Site. 174 F.3d at 1320 n.2. This is because, 

under 0 112, 6 equivalence, functional identity is required; thus 

the equivalence (indeed, identity) of the “function” of the 

assertedly substitute structure, material, or acts must be first 

established in order to reach the statutory equivalence analysis. 

- See 35 U.S.C. 3 112, ¶ 6; Al-Site, 174 F.3d at 1320; Chiuminatta, 

145 F.3d at 1308; Alpex, 102 F.3d at 1222; Pennwalt, 833 F.2d at 

934. The content of the test for insubstantial differences under 0 

112,¶6 thus reduces to “way” and “result.” That is, the statutory 

equivalence analysis requires a determination of whether the “way” 

the assertedly substitute structure performs the claimed function, 

and the “result” of that performance, is substantially different from 

the “way” the claimed function is performed by the “corresponding 

structure, acts, or materials described in the specification,” or its 

“result.” Structural equivalence under 8 112, 6 is met only if the 

differences are insubstantial, see Chiuminatta, 145 F.3d at 1308; 

that is, if the assertedly equivalent structure performs the claimed 

function in substantially the same way to achieve substantially the 

same result as the corresponding structure described in the 

specification. See 35 U.S.C. 3 112, 6 (means-plus function claim 

literally covers “the corresponding structure, material, or acts 

described in the specification and equivalents thereof.” 

The similar analysis of equivalents under 0 112, ¶ 6 and the 

doctrine of equivalents does not, however, lead to the conclusion 

that Pennwalt and Warner-Jenkinson command a component-bycomponent analysis of structural equivalence under 0 112, ¶ 6. It is 

of course axiomatic that “each element contained in a patent claim 

is deemed material to determining the scope of the patented 

invention.” Warner-Jenkinson, 520 U.S. at 29. Thus a claim 

limitation written in 8 112,Y 6 form, like all claim limitations, 

must be met, literally or equivalently, for infringement to lie. See. 

ex.. Pennwalt, 833 F.2d at 935. As we noted above, such a 

limitation is literally met by structure, materials, or acts in the 

122 
accused device that perform the claimed function in substantially 

the same way to achieve substantially the same result. The 

individual components, if any, of an overall structure that 

corresponds to the claimed function are not claim limitations. 

Rather, the claim limitation is the overall structure corresponding 

to the claimed function. This is why structures with different 

numbers of parts may still be equivalent under 0 112, ¶ 6, thereby 

meeting the claim limitation. See, ex., Al-Site, 174 F.3d at 1321- 

22 (upholding jury verdict of 8 112, ¶ 6 equivalence between “a 

mechanically-fastened loop . . including either the rivet fastener or 

the button and hole fastener” and “holes in the arms [of an eyeglass 

hanger tag]”). The appropriate degree of specificity is provided by 

the statute itself; the relevant structure is that which “corresponds” 

to the claimed function. See. e.g., Chiuminatta, 145 F.3d at 1308- 

09 (structure “unrelated to the recited function” disclosed in the 

patent is irrelevant to 0 112, q[ 6); Valmont, 983 F.2d at 1044 

(identifying structure referring to the claimed function). Further 

deconstruction or parsing is incorrect. 

However, the Federal Circuit also has said that focusing on a particular component that plays a 

central role in the claimed function does not necessarily constitute a “component-by-component” 

analysis. The Tor0 Co. v. Deere & Co., 355 F.3d 1313, 1324 (Fed. Cir. 2004). 

At issue is whether the structures of respondents’ accused products, identified by 

complainant’s expert, Davis, namely a first motodgenerator (MGl), a second motor/generator 

(MG2), a planetary gear assembly integrated with said motors, inputs that receive mechanical 

power from MG1 and MG2 (the sun gear extension and ring gear flange in the Prius, the sun 

gears in the Highlander), and the outputs of the planetary gear assembly, including the carrier and 

the ring gear, which output the converted power as rotational mechanical power, are structurally 

identical or equivalent to the “power conversion means” of the ‘932 patent, namely portions of 

the field elements (21), armatures (22) of two electric motors, disk (23), drive gears (24), pinion 

gear shaft (41) and pinion gears (42) in Figure 3 of the ‘932 patent, portions of the field elements 

123 
(21), armatures (22) of two electric motors, disks (23 and 33), hub / spacer (26), sun gear (46), 

ring gear (36), and planetary gears (27) in Figure 4 of the ‘932 patent, portions of the field 

elements (21), armatures (22) of two electric motors, disk (23), sun gear extension (46’), sun gear 

(46), hub (26’)’ ring gear (36), disk (33), and planetary gears (27) in Figure 5 of the ‘932 patent, 

and portions of the field elements (21), armatures (22 and 32) of two electric motors, disks (23 

and 33), hub / spacer (26), sun gear (46), ring gear (36), and planetary gears (27) in Figure 6 of 

the ‘932 patent under 35 U.S.C. 0 112, ¶ 6. 

The administrative law judge finds that complainant has not shown that respondents’ 

accused products contain the identical structure for the “power conversion means” as the “power 

conversion means” structure disclosed in Figures 3,4,5 and 6 of the ‘932 patent because the 

respondents’ accused products do not contain a structure that is identical to disks 23 and 33 of 

Figures 3,4,5 and 6 of the ‘932 patent. The administrative law judge finds that this is so 

because complainant’s expert, Davis, did not testify that he thought that the identified structure in 

respondents’ accused products were identical, but that they were equivalent: 

Q. Do you have an opinion as to whether the structures within 

the Prius and the Highlander for performing that function 

are either the same as or equivalent to the structures 

disclosed in the ‘932 patent? 

A. I think they’re equivalent to. Obviouslv there’s some 

different sizes in motors, the main difference being that 

planetary gear set in the Prius. CPX-4A. is a simple 

planetary gear set. The Dlanetary gear set used in the 

Highlander, CPX-3 here, is a compound planetary gear set. 

Again, they have the same function. It’s iust an equivalent 

structure, equivalent way of doing that. 

*** 

124 
Q. 

A. 

Q. 

A. 

Q. 

A. 

Q. 

Q. 

A. 

All right. In figure 4, and in fact all of the figures, there is 

this item called a disk, which on figure 4 is labeled 23 on 

the left-hand side and 33 on the right-hand side; is that 

correct, sir? 

That is correct. 

And the function of the disk is to support the armature 

elements 22, correct? 

To support the armature elements and also provide a way of 

getting the rotational mechanical into or out of the armature 

elements . 

It provides an attachment point, if you will, in order for the 

power to be able to get from the armature to the 

transmission device, correct? 

Correct. 

All right. And so the question in terms of infringement is 

whether there is anything in the Toyota transaxles that is 

identical to or equivalent to disk 23 and 33; is that correct, 

sir? 

*** 

THE WITmSS: I believe that’s correct. 

BY MR. BARNEY: 

Now let’s go to RX-458C. ... So on the screen I have 

RX-458C. And this was a schematic of the Prius that we 

went through at your deposition. Do you recall that, sir? 

I believe so. 

*** 

Q. Okay. Let’s go back to figure 6 from your deposition. & 

am I correct that now what YOU consider to be equivalent to 

the disk is iust the part that’s hash marked in Dink, 

excluding the ring gear flange; - is that correct? 

125 
A. I think that would be more appropriate. 

*** 

Q. Do you think there are any differences between the 

structure you’ve identified as eauivalent in Exhibit 6 and 

the disk that’s disclosed in the patent? 

A. I think they’re considered the same function in that they’re 

eauivalent. I mean, there’s definitely different shapes. you 

know, things like that. But in terms of the important 

function of getting the power out. providing that location 

point, I would say that they’re equivalent structures. 

(Davis, Tr. at 1009:4:17, 1313:17-25, 1321:21-1322:6 (emphasis added).) 

Additionally, complainant does not argue that the identified structure in the respondents’ 

accused products is identical to the “power conversion means” structure disclosed in the ‘932 

patent, but, instead, argues that said structure is equivalent to the “power conversion means” 

structure disclosed in the ‘932 patent. (CBr at 41; CFF 298-299; 301-310.) In addition, 

respondents expert, Caulfield, specifically testified that the identified structure in respondents’ 

accused products did not contain a disk identical to disk 23 or disk 33 disclosed in Figures 3,4,5 

and 6 of the ‘932 patent, and thus, that said structure was not identical to the “power conversion 

means” structure disclosed in the ‘932 patent: 

Q. Let’s move on to a different limitation. I am on 

RDX-136. This is the power conversion means 

limitation. Dr. Caulfield, I am not going to read the 

whole thing, but can you explain, you know, is it 

your understanding that all of the corresponding 

structures require a disk? 

A. For the power conversion means, which is means 

plus function, the structure is -- all the structures 

that are in all the figures will require a disk. 

126 
Q. 

A. 

Q. 

A. 

Q. 

A. 

Q. 

A. 

Q. 

Okay. Now, what is the function, your 

understanding of the function of the disk 23 in the 

‘932 patent? 

The function of the disk is to take the armature 

elements and certainly allow them to spin. That’s 

one of the functions of the disk. And to attach to 

the mechanical power transmission unit. 

Okay. 

In a rigid fashion. *** 

[Referring to RX-443C7] [clan you identify by name 

the components that perform the function that you 

just identified for the disk, in other words, holding 

the magnets, allowing them to spin, and providing a 

transmission throughput to the, to the transmission 

unit? 

What is holdmg the magnets there, which are the 

permanent magnets, which are those crosshatched 

lines, the shaft is holding the magnets, the 

permanent magnet assembly. And I can do both 

MGl and MG2 at the same time, the bearings. 

They are all holding that shaft to arrange that 

permanent magnet to allow it to rotate. 

Then it is taken out through the splines, through the 

ring gear flange, outside the permanent magnet 

assembly, to the ring gear. 

Okay. And what is vour understanding, sir. as to 

whether those components that YOU iust mentioned 

perform the same function as the disk the same way 

to achieve the same result with respect to the ‘932 

patent? 

They certainly don’t do it in the same way or do 

they get the same result. 

Why do you say that? 

127 
A. They basically -- the function is, they are both 

taking the power out. For the patent, the power is 

taken out from inside the armature, inside the 

armature assembly. It is clear through all the 

documents, figures 3,4, and 5, that the power is 

taken out from within the armature. 

The Toyota transaxles don’t do that. They are taking 

the power out all the way outside that armature, it is 

kind of like the envelope argument all over again, 

but the power is taken outside. 

A disk is not Structurally a shaft, okay? There is a 

whole other side argument that we have the disk, 

they need the disk, okay, in this patent. They need 

the disk because they have a large plate. they are 

coming in with a large - bevel gear, - so they need 

something very large - and very flat to get - to. to make 

the rigid connection. 

So that’s going to have to be a disk. It is not going 

to be a shaft, because they are taking off the ends of 

the shafts. So disk is completelv different from 

shaft. So my opinion is YOU have got a completely 

different structure that’s doinp something in a 

completely different way. And getting a completely 

different result from the result that’s needed in that 

patent. 

Q. Okay. 

A. So they are not even structurally eauivalent. 

Q. How about your opinion, same question, but your 

opinion for the Highlander. - Are there any 

differences? 

A. Exact same oDinion for the Highlander. 

(Caulfield, Tr. at 1774:22-1775: 17, 1775:24-1778: 10 (emphasis added).) 

Finally, the administrative law judge finds that an analysis of respondents’ accused 

128 
products shows that the products do not contain a component that is identical to disk 23 or disk 

33 that is between the armature of the electric motor and the transmission unit. Instead, the 

administrative law judge finds that respondents’ accused products contain a shaft, bearings, 

splines, and a ring gear. (RX-443C; RX-458C.) 

However, the administrative law judge further finds that complainant may still show 

literal infringement of the “power conversion means” limitation of claim 7 of the ‘932 patent if 

complainant shows that the structure of the “power conversion means” for respondents’ accused 

products is structurally equivalent to the “power conversion means” structure disclosed in 

Figures 3,4,5 and 6 of the ‘932 patent under 35 U.S.C. 0 112, ¶ 6 h, that the structure of the 

“power conversion means” for respondents’ accused products performs the identical function of 

the “power conversion means” structure disclosed in Figures 3,4,5 and 6 of the ‘932 patent in a 

substantially similar way, with a substantially similar result). 

Nevertheless, the administrative law judge finds that the structure of the “power 

conversion means” for respondents’ accused products, while performing the identical function of 

the “power conversion means” structure disclosed in the ‘932 patent b, “converting said 

electrical power of said first and second inputs for output”), does not perform the function in a 

substantially similar way. The administrative law judge finds this is so because there are 

substantial differences between disks 23 and 33 of Figures 3,4,5 and 6 of the ‘932 patent and the 

shaft of respondents’ accused products. 

First, the administrative law judge finds that the identified structure in respondent’s 

accused Prius product is supported by two bearings, whereas disks 23 and 33 of the ‘932 patent 

are shown supported by just one bearing. (Caulfield, Tr. at 1646:8-15, 1891:8-22; Davis, Tr. at 

129 
1322:7-19; RDX-046C; RX-443C; RX-458C; CPX4C; CX-345C.) The admmistrative law 

judge finds that this is a substantial difference because the patentee, in the specification of the 

‘932 patent, and the applicant, in the prosecution history of the ‘932 patent, repeatedly touted that 

an advantage of the “integral combination” feature of the invention of the ‘932 patent, is that it 

could be supported by one bearing, not two bearings. (See CX-1 at 2:34-49,4:62-68,7:30-52; 

RX-7, Amendment at 21-22, TMC01-082579-80.) Because respondent’s accused products is 

supported by two bearings, it does not have the advantage of the “integral combination” feature, 

touted by the patentee/applicant, and thus, the administrative law judge finds that respondent’s 

accused product does not perform the function of the “power conversion means” k, 

“converting said electrical power of said first and second inputs for output”) in a substantially 

similar way. Hence, the administrative law judge finds that the doctrine of equivalence is not 

applicable. 

Furthermore, independent of the fact that complainant has failed to rebut that said 

differences between the identified structure in respondents’ accused products and the “power 

conversion means” structure disclosed in the ‘932 patent are substantial, the administrative law 

judge finds that complainant has failed to meet its burden through a preponderance of the 

evidence in showing that the identified structure in respondents’ accused products performs the 

identical function of the “power conversion means” structure disclosed in the ‘932 patent &, 

“converting said electrical power of said first and second inputs for output”) in a substantially 

similar way as the structure disclosed in the ‘932 patent. Thus, complainant’s expert Davis 

merely stated that the identified structures within respondents’ accused products, that 

complainant alleged performs the function of converting electrical power to rotational 

130 
mechanical power, are equivalent to the structures disclosed in the ‘932 patent because they 

perform said function in substantially the same way as the structures disclosed in the ‘932 patent: 

Q. Do you have an opinion as to whether the structures within 

the Prius and the Highlander for performing that function 

are either the same as or equivalent to the structures 

disclosed in the ‘932 patent? 

A. I think they’re equivalent to. Obviously there’s some 

different sizes in motors, the main difference being that 

planetary gear set in the Prius, CPX-4A, is a simple 

planetary gear set. The planetary gear set used in the 

Highlander, CPX-3 here, is a compound planetary gear set. 

Again, they have the same function. It’s iust an equivalent 

structure, equivalent way of doing that. 

*** 

Q. Do you have an opinion, sir, as to whether one of ordinary 

shll in the art in 1990 would have believed that the 

structures contained within the Prius and Highlander 

vehicles are insubstantially different from the structures 

disclosed in the patent for carrying out the function of the 

power conversion means? 

A. Yes, I do. I believe they are not Substantially different. 

Q. And why do YOU think that, sir? 

A. Well. again. they’re carrying out the same function. And 

there’s iust. YOU know, design considerations and different 

types of motors and motors that were disclosed so that the 

shapes may be a little bit different. But their functions are 

the same. And YOU obviously still have a field element, 

armature assembly to convert things over. So their 

structure is equivalent. 

Q. Do they perform that function in the same way? 

A. Yes. 

Q. And they achieve the same result? 

131 
A. Yes, they do. 

(Davis, Tr. at 1009:4-17, 1012:13-1013:lO (emphasis added).) The administrative law judge 

finds that Davis did not provide an analysis of the two structures or any detailed basis why Davis 

concluded that the identified structure of the respondents’ accused products and the disclosed 

structure of the ‘932 patent was equivalent, beyond the fact that the “functions were the same.” 

Furthermore, the administrative law judge finds that complainant’s findings of fact merely repeat 

Davis’s testimony and do not provide any additional analysis to support Davis’s conclusion that 

the identified structure of the respondents’ accused products and the disclosed structures of the 

‘932 patent perform the function of converting electrical power to rotational mechanical power 

in a substantially similar way. (See CFF 303,309,3 10.) 

Furthermore, independent of the fact that complainant has failed to rebut that said 

differences between the identified structure in respondents’ accused products and the “power 

conversion means” structure disclosed in the ‘932 patent are substantial, and independent of the 

fact that complainant failed to meet is burden in showing that the identified structure in 

respondents’ accused products performs the identical function of the “power conversion means” 

structure disclosed in the ‘932 patent (le, “converting said electrical power of said first and 

second inputs for output”) in a substantially similar way as the structure disclosed in the ‘932 

patent, the administrative law judge finds that, based on the prosecution history, complainant is 

estopped from arguing that the identified structure in respondents’ accused products, which 

includes a shaft, is structurally equivalent to the “power conversion means” structure disclosed in 

the ‘932 patent under 35 U.S.C. 0 112, ¶ 6. Thus, because the administrative law judge has 

132 
found that the ‘932 patentee expressly disclaimed the use of shafts in his invention, both in the 

specification and during prosecution, he concludes that Solomon is prohibited as a matter of law 

from arguing that Toyota’s rotor shafts are equivalent to the “power conversion means” structure 

disclosed in the ‘932 patent. As the Federal Circuit has held: 

When a patentee advises the examiner . . . that a particular 

structure is not within his invention, the patentee is not permitted 

to assert in a subsequent infringement action that the same 

structure is equivalent to the structure described in the patentee’s 

specification for purposes of section 112 paragraph 6. 

Ballard Med. Prods. v. Allegiance Healthcare Corn., 268 F. 3d 1352, 1359 (Fed. Cir. 2001). 

Accord Signtech USA, Ltd. v. Vutek, Inc., 174 F. 3d 1352 (Fed. Cir. 1999); AlDex Commter 

Corn. v. Nintendo Co. Ltd., 102 F. 3d 1214 (Fed. Cir. 1996). 

In Ballard, the Court found that the patentee, in an amendment, disavowed certain types 

of control valves, namely, pressure valves, by characterizing them as falling outside the scope of 

his invention. (Id, 268 F.3d at 1359.) Also, the Court rejected the patentee’s argument that the 

statements in the amendment applied to other claims not at issue in the case. Id. at 1360. As a 

result, the Court held that, “by virtue of [the patentee’s] characterization of his valve structure, 

the disclosed structure - a vacuum control valve with a static internal seal - cannot be regarded 

as equivalent to a dynamic pressure valve with a shaft-to-seal interface.” (Id at 1362.) Here the 

administrative law judge finds that, Solomon should not be permitted to argue that a rotor shaft, 

the very structure disclaimed from the scope of claim 7 during prosecution, is nevertheless a 

structural equivalent to the claimed “power conversion means” under 35 U.S.C. 0 112, ¶ 6. 

Hence, the administrative law judge finds that respondents’ accused products lack the “power 

conversion means” limitation of claim 7 of the ‘932 patent, under the doctrine of equivalents. 

133 
Based on the foregoing, the administrative law judge finds that complainant has not 

established, by a preponderance of the evidence, that the accused hybrid transaxles infringe 

asserted claim 7 of the ‘932 patent. 

E. Domestic Industry 

There can be a violation of section 337 “only if an industry in the United States, relating 

to articles protected by the patent . . . exists or is in the process of being established.” 19 U.S.C. 0 

1337(a)(2); see also Certain Methods of Making Carbonated Candy Products, Inv. No. 337-TA292, USITC Pub. 2390, (Mar. 1990). The existence of a domestic industry is measured at the 

time the complaint is filed. 

11 17, 1121-22 (Fed. Cir. 1983). 

BallvMdwav Mfg. - Co. v. U.S. Int’l Trade Comm’n, 714 F.2d 

The Commission has established a two-prong test for determining whether a complainant 

has satisfied the domestic industry requirement. The technical prong considers “whether the 

complainant is exploiting or practicing the patent in controversy,” while the economic prong 

addresses “whether there is significant or substantial commercial exploitation.” Certain 

Microsphere Adhesives. Process for Making Same, and Products Containing Same, Including 

Self-stick Repositionable Notes, Inv. No. 337-TA-366, USITC Pub. 2949 (Jan. 1995). As 

complainant, Solomon bears the burden of proving that it has satisfied both the technical prong 

and the economic prong. 

A. Economic Prong 

Complainant Solomon argued that it has received over{ } in investments in 

2004 and 2005, alone, which has allowed the company to focus on and accelerate advanced stage 

research and development activity aimed exclusively at the exploitation and commercialization 

134 
of the ‘932 patent in a range of ground-based applications and markets; that Solomon has also 

shown that it is entitled to rely not only upon its recent investments, but also its historic 

investments, in the exploitation and commercialization of the ‘932 patent; and that Solomon also 

demonstrated that it is capable of manufacturing and selling, upon demand, the Electric Wheel 

device that practices the patented technology, known as the ST-58. (CBr at 90.) 

It is argued by complainant that testimony at the hearing clarified that it is most 

appropriate to look at Solomon’s operational history as having three business phases, with one 

consistent business focus spanning across all of the timeframes; that first, from August 1995 until 

2000, Solomon was primarily an early stage development company, engaging solely in research 

and development activity and licensing efforts; that second, from 2000 until 2004, Solomon 

struggled with the growing pains of executing on a sales and marketing strategy for its recently 

developed marine product, the ST58, and going public, while trying to continue its efforts to 

bring the Electric Wheel technology to other markets and applications; that third, beginning in 

early 2004, Solomon received a substantial investment from a group of investors who replaced 

the board of directors and management, and reinvigorated Solomon’s business operations and its 

commitment to the long-stated intention of introducing the Electric Wheel, or the ‘932 

technology, to a wider segment of the marine market, and beyond to ground-based applications; 

that Solomon’s consistent and singular business plan over this entire period, however, was to 

develop the Electric Wheel technology across as many applications as possible; that as a result, it 

is plain that a vast majority of the millions of dollars invested in Solomon over the years has been 

committed to provide the labor and infrastructure necessary to exploit and commercialize the 

‘932 patent; and that thus Solomon has established the existence of a domestic industry, within 

135 
the meaning of §1337(a)(3)(A). (CBr at 90-91.) 

As to its licensing activities, complainant argued that under DeVecchis’ management, 

efforts to license the Electric Wheel technology across a range of ground-based applications are 

also a component of Solomon’s advanced stage research and development activity; that when 

DeVecchis first joined Solomon, he got involved in on-going licensing discussions with 

WaveCrest Laboratories in Dulles, Virginia to license the Electric Wheel technology in 

non-marine applications; that the parties exchanged facility visits, but in December of 2005, as 

Solomon was preparing a term sheet, WaveCrest informed DeVecchis that it was ceasing 

operations; that thereafter, DeVecchis undertook a concerted effort to research and identify 

potential licensees in a variety of applications, which culminated in a letter and e-mail campaign 

in November of 2005; that although no licenses resulted, several contacts were made, including a 

recently restarted dialogue with Oshkosh Trucking Company; that Solomon’s Christian has also 

assisted in these licensing efforts, and has participated in discussions with Oshkosh Truclung and 

John Deere; and that in October of 2006, Solomon entered into its first license agreement for the 

Electric Wheel technology with Hobie Cat Company of California, which license resulted from 

negotiations that began in August of 2006. (CBr at 99-100.) 

Respondents argued that the record facts demonstrate that Solomon’s “licensing efforts” 

were commenced only for purposes of this litigation, and are no more than a series of form 

letters, emails, and a few phone calls that have gone unanswered; that the one license that 

Solomon has obtained, which was executed the week before the hearing in this investigation 

began, has no inherent value and adds nothing to Solomon’s licensing activity; that the record 

evidence demonstrate that any alleged R&D effectively ceased in 2000 and that the majority of 

136 
Solomon’s alleged R&D expenditures were related to administrative costs not directed to the 

‘932 patent; and that the record evidence demonstrates that little if any of Solomon’s alleged 

current R&D activities actually relate to the ‘932 patent in issue. (RBr at 90-91 .) 

The staff argued that Solomon’s domestic activities do not relate directly to the ‘932 

patent and to the extent that they do, Solomon’s activities are meager at best; that for example, 

the evidence of record demonstrates that Solomon’s activities in the United States relating to the 

‘932 patent have largely been non-existent from sometime in the early 2000s, having sold only{ } 

Beta ST-58s (the model allegedly covered by the ‘932 patent, the last of which was sold in 2002) 

prior to the institution of this investigation; and that the evidence shows that Solomon sold 

approximately{ 

patent, during this time frame. (SBr at 58.) 

} ST-37s and ST-74s, none of which are alleged to be covered by the ‘932 

The staff also argued, with respect to the research and developmental element and prong 

C of the domestic industry requirement, that Solomon, through its predecessor-in-interest, 

allegedly expended approximately{ 

patent from 1995 through 2000; that however, more than half of the{ 

expended on research and development represents expenditures related to sales and general and 

administrative expenses; that Solomon’s business plan in January of 2000 was to continue to 

pursue production and sales of Solomon’s motors, which do not practice the ‘932 patent; that 

Solomon’s assertions that its employees Christian and Pesiridis have spent significant amount of 

their time on research and development directly relating to the ‘932 patent a the controls 

research) are unavailing; that to the extent that any such research has relevance to the ‘932 patent, 

this research effort is general, and general research expenses cannot be attributed to the patented 

}on research and development relating to the ‘932 

} allegedly 

137 
device for purposes of the domestic industry analysis; and with respect to Solomon’s alleged 

licensing activities, that said licensing activities “do not rise to a level sufficient, i.e., are not 

“substantial” enough, to support a determination that a domestic industry exists based upon 

licensing activities.” (SBr at 59-61, 65.) 

With respect to the economic prong of the domestic industry requirement, a complainant 

may show that a domestic industry exists or is in the process of being established under any of 

the three statutory grounds set forth in Section 337 (a)(3), which provides: 

(3) For purposes of paragraph (2),[29] an industry in the United States shall be 

considered to exist if there is in the United States, with respect to the 

articles protected by the patent, copyright, trademark, or mask work 

concerned - 

(A) significant investment in plant and equipment; 

(B) significant employment of labor or capital; or 

(C) substantial investment in its exploitation, including engineering, 

research and development, or licensing. 

19 U.S.C. 8 1337 (a)(3). Given that these criteria are in the disjunctive, satisfaction of any one of 

them will be sufficient to meet the domestic industry requirement. Certain Intemated Circuit 

ChiDsets and Products Containing Same, Inv. No. 337-TA-428, Order No. 10 at 3, Initial 

Determination (Unreviewed) (May 4,2000), citing Certain Variable Speed Wind Turbines and 

29 Paragraph (2) provides: 

(2) Subparagraphs (B), (C), and (D) of paragraph (1) only if an 

industry in the United States, relating to the articles 

protected by the patent, copyright, trademark, or mask work 

concerned, exists or is in the process of being established. 

19 U.S.C. 0 1337 (a)(2). 

138 
Components Thereof, Inv. No. 337-TA-376, Commission Op. at 15, USITC Pub. 3003 (Nov. 

1996). 

In 1988, by amending section 337 and including for the first time the factor “substantial 

investment in its exploitation, including engineering, research and development, or licensing,” 

Congress intended to expand the definition of domestic industry to include certain nonmanufacturing activities. Certain Dvnamic Seauential Gradient Compression Devices and 

Component Parts Thereof, Inv. No. 337-TA-335, Initial Determination on Temporary Relief at 

59 (May 15,1992) (Compression Devices). The Senate Finance Committee Report on the 

Senate’s version of the Omnibus Trade and Competitiveness Act of 1988 commenting on criteria 

(A) (B) and (C) of subsection (a) (3) of section 337, supra, stated: 

The first two factors [(A) and (B)] in this definition have been 

relied on in prior Commission decisions finding that an industry 

exists in the United States. The third factor r(C)l. however. goes 

beyond the ITC’s recent decisions in this area. This definition does 

not require actual production of the article in the United States if it 

can be demonstrated that substantial investment and activities of 

the type enumerated are taking __ place in the United States. 

Marketing and sales in the United States alone would not, 

however, be sufficient to meet this test. The definition could, 

however. encompass universities and other intellectual property 

owners who engage in extensive licensing: - of their rights - to 

manufacturers . 

(S.Rep. No. 71, 100th Cong., 1st Sess., at 129 (1987) (Senate Report) (emphasis added); see also 

H.R. Rep. No. 40, 100th Cong., 1st Sess., at 157-58 (1987) (House Rep~rt).)~’ 

30 Both the Senate Report and the House Report state that mere ownership of a patent is 

insufficient to meet the domestic industry requirement. Senate Report at 130; House Report at 

154. “The owner of the property right must be actively engaged in steps leading to the 

exploitation of the intellectual property. . .”. Id. The Senate Report and the House Report have 

substantially the same language. 

139 
Further, the term “domestic industry” in Section 337 is not defined by the statute, but the 

Commission has interpreted the intent of Section 337 to be “the protection of domestic 

manufacture of goods.” Certain Dvnamic Random Access Memories, ComDonents Thereof and 

Products Containing Same, Inv. No. 337-TA-242, U.S.I.T.C. Pub. No. 2034 (November 1987), 

Commission Opinion at 61, 1987 WL 450856 (U.S.I.T.C., September 21, 1987) (DRAMS). 

Also, the Commission has consistently held that relief in a patent-based investigation under 

section 337 is dependent upon whether a complainant “is exploiting or practicing the patent in 

controversy.” Certain Plastic Encapsulated Integrated Circuits, Inv. No. 337-TA-3 15, 

Commission Opinion at 16 (1992). Moreover, since Congress required that the domestic 

industry comprise only those activities which exploit a patent, to include activities which are in 

the same field of technology but which do not have the requisite nexus to the patent in issue 

would be contrary to the statute. Hence, the activities set forth in Section 337(a) (3) may 

constitute a domestic industry only if they are sufficiently related to articles protected by the 

patent as to constitute an exploitation thereof. See, Compression Devices at 61-3. 

The Commission has further stated that “[tlhe scope of the domestic industry in patentbased investigations has been determined on a case by case basis in light of the realities of the 

marketplace and encompasses not only the manufacturing operations but may include, in 

addition, distribution, research and development and sales.” DRAMS. at 62 (footnotes omitted). 

Consistent with the Commission’s practice, in Certain Digital Satellite Svstem Receivers And 

Components Thereof, USITC Inv. No. 337-TA-392, Initial And Recommended Determinations 

at 11 (10/20/97), citing e.g. Certain Microsphere Adhesives, Process for Making Same, and 

Products Containing Same, IncludinP Self-stick Repositionable Notes, Inv. No. 337-TA-366, 

140 
Comm’n Op. at 24 (Jan. 16, 1996)’ this administrative law judge found that “[tlhe Commission 

has held that a complainant may satisfy the domestic industry requirement of section 337 by 

showing that the domestic industry exploits the patent in issue, and that a complainant is not 

required to establish that it practices asserted claims.” 

. Complainant has argued that its investment into research and development activity and 

licensing efforts demonstrate the existence of a domestic industry under 9 1337(a)(3)(C) which is 

a continuation of Solomon’s substantial R&D activity during its early stage of development. 

(CBr at 92-105.) It is further argued that complainant has also established the existence of a 

domestic industry based upon its significant investment in plant and equipment under 0 

1337(a)(3)(A) (CBr at 105-07.) 

Regarding any significant investment in plant and equipment the patent application 

resulting in the ‘932 patent was filed on November 28, 1990 and the ‘932 patent issued on 

November 26, 1991. (CX-1.) However, inventor Edwards testified that he “built no prototypes 

of [the patentable device]. . . until after the patent issued” (Tr. at 589.){ 

141 
1 

It is also a fact that respondents Toyota attempted to purchase an ST58 from Solomon’s 

web site during the course of this investigation but was informed that it was out of stock. 

(DeVecchis, Tr. at 239-40.) However, it is admitted by complainant that Toyota was able to 

obtain an ST58 in a “non-commercial sale” through Parker Engineering, Toyota’s expert 

consulting service. (FGF-6.176 (undisputed).) { 

142 
143 
144 
145 
146 
1 

147 
1 

148 
149 
150 
1 

Referring to complainant’s allegation that it has established the existence of a domestic 

industry based upon its investment into research and development activity, it is undisputed that 

Solomon over the years, assembled for sale at least{ 

(undisputed).) However, it is also undisputed that the ST37s and ST74s do not practice the ‘932 

patent. (FWF 6.192 (undisputed).) Complainant however has argued that since August 2004, to 

} ST37s and ST74s. (W-6.141 

151 
the extent that Solomon has conducted any research and development on the electric motor 

employed in Solomon's ST37 product,{ 

Referring to this argument of complainant, the record establishes that{ 1 

development of the six horsepower motor for the ST58 Electric Wheel resulted in a separate 

product, the ST37; that the ST37 consists of a six horsepower motor fixed to the output shaft of 

the device, without the ST58's planetary gear set;{ 

} the ST74 consists 

of two six horsepower motors attached to an output shaft, without the gear set employed in the 

ST58. { 

152 
153 
1 

The record further establishes that Andrew Christian began working as an employee of 

Solomon on “about August 3,2004.” (Christian, Tr. at 327; see CX-168 at 1.) Since joining 

Solomon as a full-time employee, Christian’s annual compensation has been{ 

Tr. at 389-387.) Since 2004, Christian has worked{ 

Engineering for Solomon. (Christian, Tr. at 387.) Also, since August 2004, to the extent that 

Solomon has conducted any research and development on the electric motor employed in 

Solomon’s ST37 product,{ 

} (Christian, 

} hours per week as the Director of 

154 
155 
156 
1 

Based on the foregoing, including the relationship of the ST37 and ST58, the 

administrative law judge finds that complainant has established the required economic prong of 

the domestic industry requirement directed to the ST58 through its investment into research and 

development activity . 

B. Technical Prong 

Complainant argued that at the hearing, complainant’s expert Davis established that 

Solomon’s ST58 Electric Wheel satisfies all the limitations of claim 1 of the asserted ‘932 

patent; that the ST58 is controlled to vary the speed of the output shaft of the device in a 

continuous manner from a negative maximum value to a positive maximum rotational value; that 

Davis reviewed assembly drawings and physically inspected the device in reaching his opinion 

that the ST58 practices claim 1; that Davis tested an ST58 at Solomon’s facility in Tarpon 

Springs; that that testing of the ST58 demonstrated that the device “can provide a continuously 

variable output from some negative maximum value to some positive maximum value”; that 

significantly, Caulfield did not dispute the data that Davis relied upon to establish that the ST58 

is capable of achieving a continuously variable output; and that accordingly, Solomon has 

established that is ST58 Electric Wheel practices claim 1 of the ‘932 Patent. (CBr at 88-9.) 

Complainant further argued that both Toyota and staff argue that the ST58 is incapable of 

achieving a continuously variable output because the device “does not provide an output that can 

be varied such that any desired rotational speed can be attained at peak power”; and that 

157 
however, one of ordinary skill in the art would not consider “peak power” a requirement of the 

“continuously variable output” of asserted claim 1. (CRBr at 65.) 

Respondents argued that the ST58 does not meet Toyota’s construction of the 

continuously variable limitation of claim 1; and that the ST58 does not provide an output that can 

be varied such that any desired rotational speed can be attained at peak power. (RRBr at 73.) 

The staff argued that Solomon’s ST58 device does not satisfy the continuously variable 

element because, at least, it is not capable of supplying full power at all speeds. (SBr at 56.) 

The domestic industry product ST58 Electric Wheel device is a combination motor and 

transmission device designed for marine applications, which Solomon has installed in sailboats. 

(RX-129C at 3.) { 

} The schematic of the ST58 is shown in CX-281C. 

(CFF 712 (undisputed).) { 

158 
1 

The administrative law judge has interpreted, supra, the claimed phrase “wherein the 

rotational speed of said output is continuously variable” of claim 7 of the ‘932 patent as: 

the rotational speed of the output of the mechanical power 

transmission unit can be varied such that any desired rotational 

speed, from a negative maximum value to a positive maximum 

rotational value, can be attained at peak power and with no 

intervening gear reduction to the component being driven. 

The claimed phrase in issue, which is part of the fourth clause of claim 1 of the ‘932 

patent, is identical to the claimed phrase “wherein the rotational speed of said output is 

continuously variable” of claim 7 of the ‘932 patent. Based on all of the reasons set forth in the 

claim interpretation section, supra, the administrative law judge finds that the claimed phrase 

“wherein the rotational speed of said output is continuously variable” of claim 1 of the ‘932 

patent should be given an identical interpretation as that of the identical claimed phrase in claim 

7 of the ‘932 patent. Moreover, none of the parties argued that said identical phrases should be 

interpreted in a different way. 

Complainant’s expert Davis testified regarding the “continuously variable” limitation 

with respect to the domestic industry: 

159 
160 
} Hence, the administrative 

law judge finds that Davis conceded that the ST58 will not allow one to achieve peak power 

output at any speed. 

{ 1 

161 
} However, the administrative law judge, in his interpretation of “continuously 

variable,” required that output speed “can be varied such that any desired rotational speed ... can 

be attained at peak power.” Hence, the administrative law judge finds that the domestic industry 

product ST58 does not have output speeds which “can be varied such that any desired rotational 

speed ... can be attained at peak power” as required by the “wherein the rotational speed of said 

output is continuously variable” limitati~n.~~ 

Based on the foregoing, the administrative law judge finds that complainant has not 

satisfied the technical prong of the domestic industry requirement. Hence he finds that 

complainant has not established that an industry exists in the United States, as required by 

subsection (a)(2) of section 337. The administrative law judge rejects complainant’s argument 

that it need not prove that it satisfies the technical prong of the statute provided it satisfies the 

economic prong of the domestic industry requirement, citing In re Dvnamic Seauential Gradient 

Comr>ression Devices and ComDonents Parts Thereof, ITC Inv. No. 337-TA-335, Initial 

Determination on Motion for Temporary Relief, at 60 (Nov. 1992). (CRBr at 66.) Contrary to 

36 Respondents also argued that Solomon’s ST58 Electric Wheel does not practice claim 

1 of the ‘932 patent because it does not satisfy the “integral combination” limitation as recited in 

claim 1. Said “integral combination” limitation of claim 1 articulates that two elements of the 

integral combination are “directly associated mechanically and geometrically with each of other” 

and then further defines said association as “without substantial spacing or other elements 

including bearings and shafts therebetween.” An examination of the ST58 Electric Wheel 

discloses that the two elements of the integral combination are directly associated mechanically 

and geometrically with each other with no substantial spacing or other elements in between the 

integral combination. Hence the administrative law judge rejects respondents’ argument that the 

ST58 Electric Wheel does not practice said claim 1 because it does not satisfy said “integral 

combination” limitation of claim 1. 

162 
complainant’s argument, pages 60-61 of said initial determination specifically states: 

Congress did not intend, however, that activities of a complainant 

which generally relate to the subject area of the patent fall within 

the statutory definition of a domestic industry. Indeed, the plain 

language of the statute provides that the domestic industry 

comprises only those activities (either manufacturing; or 

non-manufacturing) which exploit the intellectual property rights at 

- issue. Paragraph 3 (C) refers to investment in the patent’s 

“exploitation.” Paragraph 3 also specifically refers to paragraph 2, 

which provides that relief under Section 337 is contingent upon the 

existence of a domestic industry “relating to the articles protected 

by the patent, . . (emphasis added). The Commission has 

therefore consistently held that relief in a patent-based action under 

Section 337 is dependent upon whether the Complainant “is 

exploiting or practicing the patent in controversy”. Certain Plastic 

Encapsulated Integrated Circuits, Inv. No. 337-TA-3 15 (U.S.I.T.C. 

1992), Comm. Opn. at 16; Certain Doxorubicin And Premrations 

Containing - Same, 20 U.S.P.Q.2d 1602 (U.S.I.T.C. 1991), vacated 

as moot, Erbamont, Inc. v. United States International Trade 

Commission (Appeal No. 91-1072, Orders of March 26 and April 

9, 1991) (Fed. Cir. 1991). Therefore, the activities set forth in 

paragraph 3 may constitute a domestic industry only if they are 

sufficiently related to articles protected by the patent as to 

constitute an exploitation thereof. 

Accordingly, a domestic industry exists in this investigation under 

19 U.S.C. 6 1337(a)(3)(C) only if Complainant’s investments in 

engineering and research and development proiects are devoted to 

the exploitation of the ‘087 patent. See, Certain Microcomputer 

Memory Controllers, Components Thereof And Products 

Containing Same Order No. 6 (January 8, 1992) (summary 

judgement granted in part and denied in part; complainant’s 

non-manufacturing activities were found to constitute a 

“substantial investment” for purposes of 19 U.S.C. 0 

1337(a)(3)(C), but a genuine issue of fact remained as to whether 

complainant was practicing the patent). (emphasis added) (footnote 

omitted)] 

For reasons stated supra, while complainant established the economic prong through the 

relationship of ST37 and ST58, complainant has not established that it is practicing claim 1 of 

163 
the ‘932 patent because the ST58 will not allow one to achieve peak power output at any speed. 

Hence complainant has not established the existence of an industry, as required by subsection 

(a)(2) of section 337. 

X. Validity 

A. PriorArt 

A patent issued from the Patent Office bears the presumption of validity. 35 U.S.C. 0 

282. The party challenging a patent’s validity has the burden of overcoming this presumption by 

clear and convincing evidence. Advanced Disolav Svs.. Inc. v. Kent State Univ., 212 F.3d 1272 

(Fed. Cir. 2000). An analysis for anticipation under section 102 is a two-step inquiry. Power 

Mosfet Technologies. L.L.C. v. Siemens AG, 378 F.3d 1396, 1406 (Fed. Cir. 2004). The first 

step requires construing the claim, which is a question of law to be decided by the administrative 

law judge. Oaklev, Inc. v. Sunglass Hut Int’l, 316 F.3d 1331, 1339 (Fed. Cir. 2003); Markman v. 

Westview Instruments. Inc., 52 F.3d 967,970-71 (Fed. Cir. 1995). The second step requires a 

comparison of the properly construed claims to the prior art, which is a question of fact. Power 

Mosfet, 378 F.3d at 1406; Oaklev, 316 F.3d at 1339. 

A patent claim is invalid for anticipation if a prior art reference discloses, either expressly 

or inherently, all of the limitations of a claim. EMI Grour, N. Am., Inc. v. Cypress Semiconductor 

Cop, 268 F.3d 1342, 1350 (Fed. Cir. 2001) (citation omitted). As to any inherent disclosure of 

a prior art reference, the Federal Circuit has stated: 

To serve as an anticipation when the reference is silent about the 

asserted inherent characteristic, such gap in the reference may be 

filled with recourse to extrinsic evidence. Such evidence must 

make clear that the missing descriptive matter is necessarily 

present in the thing described in the reference, and that it would be 

164 
so recognized by persons of ordinary skill. 

Metabolite Labs.. Inc. v. Laboratory Corn. Of America Holdings, 370 F.3d 1354, 1367 (Fed. Cir. 

2004). 

Respondents argued, relying on complainant’s claim constructions that the asserted claim 

7 of the ‘932 patent is anticipated by each of the U.S. Patent No. 2,578,837 (the ‘837 patent; the 

Raney patent; RX-74) issued to inventor W. E. Raney on December 18, 1951, and the Japanese 

Laid Open Patent Application No. 63-23 1037 (the ‘037 publication; the Goto reference; RX-77 

and RX-415 (certified translation)) published on September 27, 1988. (RBr at 120, 128.) 

The staff, relying on complainant’s proposed claim constructions, argued that each of the 

‘837 patent, the ‘037 publication and U.S. Patent No,. 4,729,258 (the Mohri ‘258 patent (RX-7 at 

TMC01-082540-46)37 anticipates claim 7 of the ‘932 patent. (SRBr at 34-5.) 

Complainant argued that respondents failed to establish that any prior art reference 

anticipates the asserted claim 7 of the ‘932 patent. (CBr at 75.) 

1. The Raney Patent (The ‘837 Patent) 

Respondents argued that complainant’s expert Davis has conceded that all of the 

limitations of claim 7 are satisfied under complainant “Solomon’s broad (and incorrect) 

constructions,” except for the “continuously variable” and “compact structure” limitations. (RBr 

at 120.) 

The staff argued that in respondents’ expert Caulfield’s opinion, if the Toyota system 

37 The staff references RX-76 as the ‘258 patent. However, while the ‘258 patent is in 

evidence as CX-3 and also as an attachment as one of the Examiner’s cited references in the first 

Office Action mailed February 28, 1991 (RX-7 at TMCOl-082540 - 46), RX-76 itself is not in 

evidence. 

165 
exhibits continuously variable output speed, according to Solomon’s construction, then the 

Raney ‘837 patent also discloses continuously variable output speeds; and that if the motors in 

the Toyota Prius satisfies the “compact structure” element, then the ‘837 patent also satisfies 

this limitation. (SBr at 73-74.) 

Complainant argued that respondents failed to establish that the Raney ‘837 patent 

discloses each and every element of asserted claim 7 of the ‘932 patent. (CBr at 75-76.) 

The administrative law judge has interpreted, supra, the claimed phrase “continuously 

variable” as “the rotational speed of the output of the mechanical power transmission unit can be 

varied such that any desired rotational speed, from a negative maximum value to a positive 

maximum rotational value, can be attained at peak power and with no intervening gear reduction 

to the component being dnven.” The ‘837 patent states: 

The present invention relates generally as indicated to a variable 

speed drive and more particularly to a simple form of electric drive 

unit in which the drive shaft thereof may be dnving at many more 

different speeds than the electric motors or prime movers thereof. 

(RX-074 at 1:l-6.) Further, it is undisputed that in the ‘837 patent, there are set points for the 

two motors in terms of their speed, and depending on where the set points are placed, a different 

output speed is achieved. (RFF 7.52 (undisputed).) Moreover, when you switch speeds in the 

‘837 patent device, the output speed is going to change from one speed to another. (RFF 7.53 

(undisputed).) 

Specifically, consistent with the administrative law judge’s interpretation of the claimed 

phrase “continuously variable,” the private parties agreed that the claimed phrase “continuously 

variable” cannot be limited to preset or predetermined speeds and a “continuously variable” 

166 
output must be capable of any desired speed. (CBr at 50; RBr at 53.) Thus, respondents argued 

that the intrinsic record of the ‘932 patent makes clear that “a “continuously variable” output 

must be capable of achieving any desired output speed, and it cannot be limited to preset or 

predetermined output speeds.” (RBr at 53.) Likewise, complainant argued that “[tlhe parties are 

in agreement that this claim limitation [“continuously variable”] cannot read on systems that 

merely achieve fixed, discreet output speeds.” (CBr at 50.) 

Further, regarding the prior art ‘837 patent, complainant’s expert Davis testified: 

Q. And what about the Rainev reference [the ‘837 patent1 do 

you believe is different from the term continuouslv variable 

as it’s used in the patent? 

A. Again. in the Rainev reference, I believe they had -- they 

described a series of, like, 24 discrete output speeds. So, 

again, it was controlling for fixed discrete outDut speeds. 

So to change from one speed to another it would be like, 

you know, kind of like flipping a switch, going from one to 

the other. So it would, you know, have more of these step 

changes available in the Rainey. 

(Davis, Tr. at 1027-28 (emphasis added).) Thus, Davis testified that the Raney ‘837 patent has 

an output that goes from zero to some discrete speed and that this is not a “continuously variable” 

output. Hence, the administrative law judge finds that the ‘837 patent achieves only 

predetermined output speeds, rather than any desired output speed as required by the proper 

claim interpretation of the claimed phrase “continuously variable.” 

As for the claimed “integral combination” limitation of asserted claim 7, supra the 

administrative law judge has interpreted it as: 

an 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 

167 
transmission unit element, supportable by a single bearing; where 

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.38 

Figures 1 and 4 of the ‘837 patent show many components between the motor element and the 

transmission element. Thus, Figure 1 of the ‘837 patent shows a motor element (rotor 8) 

rotatably supported on the drive shaft 5 by means of two bearings 10 and a second a motor 

element (rotor 9) rotatably supported on the drive shaft 5 by means of two additional bearings 

10. (RX-74 at 3:47-54.) Similarly, Figure 4 of the ‘837 patent shows a motor element (rotor 39) 

rotatably supported on the drive shaft 33 by means of two bearings 38 and a second a motor 

element (rotor 40) rotatably supported on the drive shaft 33 by means of two additional bearings 

38. (RX-74 at 65-18.) 

With respect to the claimed phrase “whereby a compact structure is provided for each 

said integral combination,” the administrative law judge has found, that said claimed phrase 

states a result of the claimed “integral combination” limitation. Hence, since the ‘837 patent 

does not disclose the “integral combination” limitation (which requires no shafts, bearings or 

other components between the electric motor element and the transmission unit element), the 

‘837 patent also does not disclose the resulting structure, i.e., the claimed “compact structure” 

limitation. 

Based on the foregoing, the administrative law judge finds that respondents have not 

established, by clear and convincing evidence, that the ‘837 patent anticipates asserted claim 7 of 

38 Because the claimed “envelope” is essentially the two elements that comprise an 

integral combination, it has been found that the claimed “envelope” cannot have shafts, bearings, 

or other components between said elements, and is supportable by a single bearing. 

168 
the ‘932 patent. 

2. The Goto Reference (The ‘037 Publication) 

Respondents argued that complainant’s incorrect and overly broad claim constructions 

would render claim 7 of the ‘932 patent anticipated by the ‘037 publication. (RBr at 128.) 

The staff argued that the record evidence demonstrates that the Goto ‘037 publication 

dscloses a device with a “continuously variable output speed” and “integral combination” under 

Solomon’s proposed constructions of those limitations. (SBr at 71.) 

Complainant argued that respondents failed to establish that the Goto ‘037 publication 

discloses each and every element of asserted claim 7 of the ‘932 patent. (CBr at 76.) 

The administrative law judge has interpreted, suura, the claimed phrase “continuously 

variable” as “the rotational speed of the output of the mechanical power transmission unit can be 

varied such that any desired rotational speed, from a negative maximum value to a positive 

maximum rotational value, can be attained at peak power and with no intervening gear reduction 

to the component being driven.” 

The title of the ‘037 publication is “Drive Mechanism for Rotary Body for Auxiliary 

Scanning.” (RX-415 at TMC01-082658.) The ‘037 publication states: “The present invention 

pertains to a drive mechanism for a rotary body for auxiliary scanning in a facsimile [device].” 

(RX-415 at TMC01-082658.) The ‘037 publication further states that “by appropriately setting 

various parameters such as the number of teeth of each constituent element ... in the differential 

gear device” and the steps of each stepping motor, that “it is possible to make the auxiliary 

scanning rotary body rotate at an arbitrary speed.” (RX-415 at TMCO1-082662.) 

Regarding the “continuously variable” limitation and the ‘037 publication, complainant’s 

169 
expert Davis testified: 

Q. And what about the Rainey reference do you believe is 

different from the term continuously variable as it’s used in 

the patent? 

A. Again, in the Rainey reference, I believe they had -- they 

described a series of, like, 24 discrete output speeds. So, 

again, it was controlling for fixed discrete output speeds. 

So to change from one speed to another it would be like, 

you know, kind of like flipping a switch, going from one to 

the other. So it would, you know, have more of these step 

changes available in the Rainey. 

Q. Now, and the same for the Goto fax machine patent [the 

‘037 publicationl? 

A. Yes. In the Goto patent, they talk about achieving different 

fax standards. So there are different fixed speed steps that 

eauate to those standards, those different fax standards. 

(Davis, Tr. at 1027-28 (emphasis added).) Thus, Davis testified that the Goto ‘037 publication 

has an output that goes from zero to some discrete speed and that this is not a “continuously 

variable” output. Hence, the administrative law judge finds that the ‘037 publication achieves 

only predetennined output speeds, rather than any desired output speed as required by the proper 

claim interpretation of the claimed phrase “continuously variable.” 

As for the claimed “integral combination” limitation supra, Figure 1 of the ‘037 

publication shows many components between the motor element and the transmission element. 

Thus, the ‘037 publication states regarding Figures 1 and 2: 

As shown in FIG. 1, a support shaft 2 is fixed in the leftlright 

direction in the center inside a casing 1. In addition, a first 

stepping - motor 3 is disposed at the left side of the support shaft 2 

and a second stepping motor 4 is disoosed at the right - side of the 

support shaft 2. The above-described first stepping motor 3 has a 

stator 3a fixed in the above-described casing 1 and a rotor 3b 

170 
consisting of a permanent magnet inserted with play in the stator 

- 3a. A left bearing 5 and right bearing 6 are fixedly provided at the 

above-described rotor 3b; the above-described rotor 3b rotates 

centered on the support shaft 2 with the bearinm 5 and 6 

intemosed. In addition, a peripheral gear 7 (below, “sun gear”) is 

formed at the right edge periphery of the above-described right 

bearing 6, and this sun gear 7 is formed so that it is connected to 

the stepping motor 3 via the right bearing 6. Meanwhile, the 

second stepping motor 4 has a stator 4a fixed in the abovedescribed casing 1 and a rotor 4b consisting of a permanent magnet 

inserted with play in the stator 4a. A left bearing 8 and right 

bearing 9 are fixedly provided at the above-described rotor 4b; the 

above-described rotor 4b rotates centered on the support shaft 2 

with the bearings - 8 and 9 intemosed. In addition, the left edge of 

the above-described left bearing 8 forms a large-diameter circular 

plate 10 covering the right side of the above-described sun gear 7. 

As shown in FIG. 2, outer-tooth small gears 11, 11, 11 (below, 

“planetary gears 11”) are rotationally disposed at three locations on 

the periphery of the above-described circular plate 10 via support 

pins 12, 12, 12. The planetary gears 11, 11, 11 are formed so that 

they are connected to the second stepping motor 4 via the circular 

plate 10 and left bearing 8. 

In addition, an inner-tooth gear 13 (below, “ring gear 13”) is 

disposed surrounding the above-described sun gear 7. The abovedescribed planetary gears 11, 11, 11 respectively mesh with the 

ring gear 13. Also, the ring gear 13 is integrally formed with a 

boss 14 inserted with play at the left edge of the right bearing 6 

formed with the above-described sun gear 7, and with a circular 

plate 15 that extends radially outward from the right edge of the 

boss 14. The ring gear 13 rotates freely centered on the support 

shaft 2 with the circular plate 15 and boss 14 interposed. The 

above-described three constituent elements - the sun gear 7, 

planetary gears 11. and ring gear 13 - constitute a differential gear 

device 100. 

Meanwhile, a drive gear 16 is formed at the outer periphery of the 

above-described boss 14. A driven gear - 19 fixed on a support shaft 

18 of a paper transport roller 17 meshes with the drive gear 16. 

(RX-415 at 3-4 (emphasis added).) Hence, as shown in Figure 1 of the ‘037 publication, a first 

stepping motor 3 is disposed at the left side of the su~port shaft 2 and a second stepping motor 4 

171 
is disposed at the right side of the su~~ort shaft 2, and each electrical motor element is supported 

by two bearings, &, bearings 5,6 for the first stepping motor 3 and bearings 8 and 9 for the 

second stepping motor 4. 

Based on the foregoing, the administrative law judge finds that it has not been 

established, by clear and convincing evidence, that the ‘037 publication anticipates asserted claim 

7 of the ‘932 patent. 

3. The Mohri Patent (The ‘258 Patent) 

The staff argued that while the Mohri ‘258 patent discloses a “geometric overlay” 

between a motor element and a transmission element, complainant’s expert Davis contends that 

the overlap in Mohri is not an integral combination because the connection is made outside the 

housing (SBr at 74); that in cross-examination testimony of Solomon’s expert Davis, Davis 

essentially admitted that Mohri anticipates claim 7 under Solomon’s proposed construction when 

applied to Mohri; and that Solomon similarly ignored respondents’ expert Caulfield’s extensive 

testimony, both direct and on cross, that Mohri would anticipate if Solomon’s proposed 

constructions were to be applied. (SRBr at 34-5.) 

Complainant, in its post hearing briefs, did not respond to the staff‘s argument relating to 

the Mohri ‘258 patent. 

At the outset, as shown on the face of the ‘932 patent (CX-1), the ‘258 patent was before 

the Examiner at the Patent Office. Moreover, the ‘258 patent states regarding its Figure 1: 

Referring to the drawings, a differential actuator according to the 

present invention is shown in FlG. 1, in which the reference 

numerals 1 and 2 denote first and second unit actuators having first 

and second drive shafts 3 and 4 which are located on the same axis 

11 and opposed to each other with a predetermined space 

172 
therebetween. Numeral 5 denotes a control means for controlling 

the first and second unit actuators to rotate the first and second 

drive shafts 3 and 4 in forward and reverse directions and also at a 

variable rotating speed. 

Numerals 6 and 7 denote first and second bevel gears fixed at ends 

of the first and second drive shafts 3 and 4, respectively, the bevel 

gears 6 and 7 being formed in the same shape and same size. 

(CX-3 at 2:49-62 (emphasis added).) Hence, Figure 1 of the ‘258 patent shows a first drive shaft 

3 between the first actuator 1 &, first motor element) and the first bevel gear 6 (le, a first 

transmission element). (Davis, Tr. 1208-1209.) Figure 1 also shows a second drive shaft 4 

between the second actuator 2 (le, second motor element) and the second bevel gear 7 @, a 

second transmission element). (Id.) 

The administrative law judge finds that in contrast to the requirement of the claimed 

“integral ‘combination” limitation that the electric motor element and the transmission unit 

element be rigidly and directly attached without the presence of shafts, bearings or other 

components between the electric motor element and the transmission unit element, the ‘258 

patent discloses drive shaft 3 between the motor element 1 and the transmission element 6, and 

hve shaft 4 between the motor element 2 and the transmission element 7. 

As for the claimed phrase “whereby a compact structure is provided for each said integral 

combination,” it has been found by the administrative law judge, that said claimed phrase states a 

result of the claimed “integral combination’, limitation. Hence, because the ‘258 patent does not 

disclose the “integral combination” limitation (which requires no shafts, bearings or other 

components between the electric motor element and the transmission unit element), the ‘258 

patent also is found not to disclose the resulting structure, i.e., the claimed “compact structure” 

173 
limitation. 

Based on the foregoing, the administrative law judge finds that the staff has not 

established, by clear and convincing evidence, that the ‘258 patent anticipates asserted claim 7 of 

the ‘932 patent. 

B. 35 U.S.C. 9 112,p 1 (Written Description and Enablement) 

Respondents argued that, as properly construed, the “continuously variable” limitation of 

claim 7 requires that the output be variable, such that any desired rotational speed, from full 

forward to full reverse, can be attained at peak power and with no intervening gear reduction to 

the component being dnven. (RBr at 132; RFF-7.82, RFF-4.135.) It is further argued that “there 

appears to be no dispute” that the ‘932 patent fails to disclose how to operate the claimed 

invention so as to achieve peak power at any desired output speed. (RBr at 132; RFF-7.89-7.90.) 

It is also argued that complainant’s expert admitted during trial that one could “certainly not” 

achieve peak power at any speed using the claimed invention. (Rl3r at 133; RFF -7.90.) Thus, 

respondents argued that if the claims are properly construed to require “peak power’ at any 

desired output speed, it is undisputed that the specification of the ‘932 patent fails to describe or 

enable a motor-and-transmission device that achieves that result. (RBr at 133; RFF-7.88-90.) 

Hence, it was argued that claim 7 of the ‘932 patent is invalid due to a lack of a written 

description under 35 U.S.C. 8 112, ¶ 1. 

Respondents also argued that the ‘932 patent does not disclose a system that can produce 

peak power at any desired speed. (RBr at 134; RFF-7.88.) Like respondents’ argument as to lack 

of written description, it is argued that complainant’s expert has admitted that such a result is 

certainly not possible using the ‘932 claimed invention. (RBr at 134; RFF-7.90.) It is further 

174 
argued that, since something that is impossible clearly cannot be enabled, claim 7 of the ‘932 

patent is also invalid for lack of an enabling disclosure. (RBr at 134.) 

The staff argued that the issue is whether the inventor Edwards, in the specification of the 

‘932 patent, and his patent attorney during prosecution, told the world that the disclosed device 

was capable of providing peak power at all speeds of rotation in a continuously variable manner, 

and not whether one of ordinary skill would believe that the disclosed structures were capable of 

providing peak power at all speeds of rotation. (SBr at 76.) It is further argued that anyone, 

including those of ordinary skill in the art, would know that each claim of the ‘932 patent 

requires that peak power be available over the entire range of speeds of the continuously variable 

transmission device. (SBr at 77.) In support it is argued that the ‘932 patent is titled “Dual-Input 

Infinite-Speed Integral Motor and Transmission Device”; that the specification of the ‘932 patent 

defines an “infinite-speed transmission device” as “[a] transmission device making possible such 

properties is [sic] known in the art as an infinite speed device” citing CX-1, col. 1, Ins. 23-25, 

that numerous passages in the specification refer to the term “infinite speed device;” and that 

during prosecution, the application distinguished cited art by arguing that the patented device was 

a “true continuously variable infinite-speed device” and that the cited art was not. (See SBr at 

77.) It is further argued that complainant admits that the ‘932 patent does not describe a device 

that is a “true continuously variable infinite-speed device” as that term is described in the 

specification of the ‘932 patent. (SBr at 78.) Thus the staff argued that claim 1 and claim 7 of the 

‘932 patent are invalid for failure to satisfy the written description requirement of 35 U.S.C. 0 

175 
112, ¶ 1. (SBr at 78.)39 

The staff also argued that the specification of the ‘932 patent does not disclose any 

structure that could enable an electric motor to operate at peak power over all speeds. (SBr at 78.) 

Thus, the staff argued, the specification does not enable one of ordinary skill in the art to practice 

the invention and hence that claims 1 and 7 of the ‘932 patent are invalid due to lack of 

enablement under 35 U.S.C. 0 112, ¶ 1.40 (SBr at 80.) 

Complainant argued that there is no evidence, let alone clear and convincing evidence, 

that one of ordinary skill in the art could practice the claimed invention without undue 

experimentation; and that, accordingly, any invalidity arguments based on a “failure to provide 

an enabling written description” must fail. (CBr at 78.) It is further argued that there is no 

evidence to suggest that the patent fails to describe the subject matter actually claimed, and thus, 

respondents’ assertions that the ‘932patent lacks an adequate written description and an enabling 

disclosure must also fail. (CBr at 79-80.) Complainant further argued that “peak power is not a 

claim limitation” because said limitation is not recited in the claims of the ‘932 patent, and is 

actually contrary to the teachings therein the ‘932 patent. (CBr at 79.) It is also argued that 

respondents’ argument is entirely circular, as respondents argued that the claims be construed to 

include a “peak power” limitation that is not in the claims, and then argued that the ‘932 patent 

does not disclose a system that can produce peak power at any desired output speed, as required 

39 The alleged unfair act only relates to alleged infringement of claim 7 of the ‘932 

patent. Hence the administrative law judge is only treating claim 7 in this section. 

40 While the staff did not articulate which claims were invalid due to lack of enablement, 

based on the staff‘s arguments with respect to lack of written description (see SBr at 75-78), the 

administrative law judge assumes that the staff‘s position is that claims 1 and 7 of the ‘932 patent 

are invalid due to lack of enablement under 35 U.S.C. 8 112,I 1. 

176 
by claim 7. Complainant also argued that “claims should be construed to uphold the validity of 

the claims” and therefore, should not include the “peak power” requirement. (CRBr at 59.) With 

respect to the enablement requirement, complainant relied on its arguments made with respect to 

the written description requirement. 

35 U.S.C. 6 112, ‘I[ 1, reads: 

The specification shall contain a written description of the 

invention, and of the manner and process of making and using it, in 

such full, clear, concise and exact terms as to enable any person of 

ordinary skill in the art to which it pertains, or with which it is 

most nearly connected, to make and use the same, ... 41 

Compliance with the written description aspect of 35 U.S.C. 0 112, ¶ 1 is a question of 

fact and must be assessed on a case-by-case basis. See Utter v. Hiraga, 845 F.2d 993,998 (Fed. 

Cir. 1988), Vas-Cath, 935 F.2d at 1561. Thus, the fact finder must determine if one skilled in the 

art, reading the specification, would immediately describe the limitation at issue. 

To constitute an enabling disclosure, “the specification of a patent must teach those 

skilled in the art how to make and use the full scope of the claimed invention without ‘undue 

experimentation.”’ In re Wright, 999 F.2d 1557, 1561, (Fed. Cir. 1993). In Harris Coy. v. IXYS 

Coy. 114 F.3d 1149, 1156 (Fed. Cir. 1997) in issue was the patentability of independent claim 1 

of a ‘073 patent which claim recited an IGBT-like structure. The Court found that the 

specification of the ‘073 patent recognized that latching behavior is present in four-layer 

semiconductor devices and that the claimed invention is a four-layer device; that while said 

specification stated that the latching problem can be solved by manipulating “the conductivities 

41 35 U.S.C. 3 112, first paragraph, requires a “written description of the invention” 

which the Federal Circuit stated in Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563 (Fed. Cir. 

1991) (Vas-Cath) is separate and distinct from the enablement of said first paragraph. 

177 
and geometries of the four semiconductor regions. . . so as not to form a. . . thyristor,” neither 

that passage nor anything else in the specification, set forth how the “conductivities and 

geometries of the four semiconductor regions” can be manipulated so that the claimed device will 

not exhibit thyristor action. Thus because the applicants’ disclosure did not teach a person having 

ordinary skill in the art how to make an IGBT that acts as a transistor “at all times,” the Court 

concluded that the most that could be credited to the applicants was having predicted, rather than 

invented, such a device. Hence the Court concluded that the district court erred in granting 

summary judgment in the patentees’ favor on the issue of enablement. 

As found supra, the administrative law judge has interpreted ” wherein the rotational 

speed of said output is continuously variable” as: 

the rotational speed of the output of the mechanical power 

transmission unit can be varied such that any desired rotational 

speed, from a negative maximum value to a positive maximum 

rotational value, can be attained at peak uower and with no 

intervening gear reduction to the component being driven. 

(emphasis added; see Section VII 2, supra.) In other words, the administrative law judge has 

found that a person skilled in the art would conclude that the combination motor and 

transmission device of the ‘932 patent must be capable of providing peak power at any desired 

rotational speed of the output of the mechanical power transmission unit, from a negative 

maximum value to a positive maximum value, with no intervening gear reduction to the 

component being driven. In support he found that the specification of the ‘932 patent has 

numerous portions where it links the requirement of peak power output to continuously variable 

rotational speed. In addition, the administrative law judge found that the prosecution history of 

the ‘932 patent defined “continuously variable” as synonymous with “truly infinite speed 

178 
transmission,” which the specification of the ‘932 patent defined as “an infinite speed 

combination motor and transmission device, namely which can deliver peak power output with a 

continuously variable speed of rotation over a very large range of the rotational speed of the 

output.” Hence, to the extent that the specification contains a written description that discloses 

that peak power in the claimed combination motor and transmission device is required, he finds 

the specification adequate and claim 7 not invalid for lack of a written description. 

However, the administrative law judge finds no portion of the specification that describes 

how the combination motor and transmission device enables peak power at any desired rotational 

speed of the output of the mechanical power transmission unit, from a negative maximum value 

to a positive maximum value, with no intervening gear reduction to the component being driven. 

Thus the administrative law judge finds that it is undisputed that respondents’ expert Caulfield 

testified that the specification of the ‘932 patent did not describe how to achieve peak power at 

any speed; that while the patentee Edwards, stated in the specification of the ‘932 patent that the 

claimed combination motor and transmission device could “achieve peak power at every speed” 

the patentee did not disclose how to “achieve peak power at any speed;” and that Caulfield was 

not sure that the patentee was in possession of how to achieve peak power at every speed. (RFF7.88, -7.89 (undisputed).) Morever, it is undisputed that complainant’s expert Davis testified as 

follows: 

Q. Dr. Davis, isn’t it correct that if one uses a cone-like 

structure for the transmission device, it is possible to 

achieve peak power of whatever power source you are 

using over the full range of continuously variable speed of 

rotation instead of gears? 

THE WITNESS: Again, I think you are talking about a 

179 
particular type of CVT transmission. And, 

again, that transmission would provide -- 

and, again, it depends on more than just the 

transmission. The input source has some 

bearing on this as well. 

But it would provide the flexibility to allow 

the input source to operate at a speed at 

which it could provide a peak power output 

over a large range of speeds of the output, 

but not all speeds, certainly not. 

(RFF-7.90 undisputed (emphasis added).)42 

In view of the teaching of the specification and the prosecution history that the claimed 

combination motor and transmission device must be capable of providing peak power at any 

desired rotational speed and the undisputed testimony of respondents’ expert and complainant’s 

expert, the admmistrative law judge finds that respondents have established, by clear and 

convincing evidence, that claim 7 of the ‘932 patent is invalid for lack of an enabling disclosure. 

- See Harris Coq., supra 

C. 35 U.S.C. 8 112 ‘1[ 2 (Indefiniteness) 

Respondents argued that under Solomon’s vague and overly broad constructions of 

“compact structure” and “closely adjacent,” claim 7 would be indefinite; that the claims of a 

patent must particularly point out and distinctly claim the subject matter that the inventor regards 

as the invention; that this “definiteness” requirement is met if the claims are sufficiently clear to 

put a competitor on notice as to what is covered by the claims; and that if the claims are 

“insolubly ambiguous,” they are indefinite and therefore invalid. (RBr at 134-5.) 

42 As for complainant’s argument that claim 7 of the ‘932 patent should be construed to 

uphold its validity, see. Section VII.A.2, supra. 

180 
Respondents further argued that Solomon has proposed that “compact structure’’ is a 

“structure having units closely united or packed together”; that that proposed definition is 

ambiguous and non-informative as to what inventor Edwards regarded as his invention; that as 

respondents’ expert Caulfield testified, the terms “closely united” and “packed together” do not 

have any particular meaning in the art; that instead, they are purely relative terms that can mean 

different things to different people in different contexts; and that for that reason, Solomon’s 

overly broad construction of “compact structure’’ would render claim 7 indefinite. (RBr at 135.) 

Respondents also argued that Solomon has proposed that “located closely adjacent each 

other” means that “[tlhe integral combinations are located close to each other”; that that proposed 

construction is likewise ambiguous and non-informative as to what inventor Edwards regarded as 

his invention; that as Caulfield testified, the term “closely adjacent” does not have any definite 

meaning in the art, making it a difficult term to interpret; that it is instead a relative term that 

could have different meanings depending on the context; and that accordingly, Solomon’s 

proposed construction of “located closely adjacent each other” would render claim 7 indefinite. 

(Id.) 

Complainant argued that the terms “compact structure’’ and “closely adjacent” are 

definite; that Toyota does not provide any evidence, let alone clear and convincing evidence, that 

a person of ordinary skill in the art would not understand that the claimed “compact structure” 

and “closely adjacent” are achieved by the claimed arrangement; and that thus, Toyota’s assertion 

that claim 7 of the ‘932 patent is indefinite must fail. (CBr at 8 1 .) 

Complainant also argued that Toyota, to support their indefiniteness argument, must 

establish by clear and convincing evidence that these terms are “insolubly ambiguous”; and that 

181 
here, the claims are easily understandable and not indefinite as both experts agree that “a person 

experienced in the field of the invention would understand the scope of the claim when read in 

light of the specification.” (CRBr at 60.) 

Complainant further argued that the term “compact structure” is amenable to 

construction; that complainant’s expert Davis testified that one of ordinary skill in the art in 1990 

would understand the term “compact structure”; that more specifically, such a person would 

understand the “compact structure” to be the result of an assembly where each integral 

combination involves one of either the motor or transmission elements being at least, to a large 

extent, within an envelope containing the other; that in fact, Toyota’s expert Caulfield had no 

problem describing the Accused Transaxle as “compact”; and that Caulfield, on 

cross-examination, acknowledged that the Toyota transaxles contain “compact structures” under 

the ordnary meaning of the term. (CRBr at 60.) 

Complainant further argued that one of ordinary skill in the art in 1990 would understand 

the term “closely adjacent” to mean that the two integral combinations are located close to each 

other; that Davis testified that the term “closely adjacent” was a commonly used term in the art in 

1990; and that Toyota’s expert had no trouble describing the integral combinations found in the 

Prius as “closely adjacent.” (CRBr at 61.) 

The staff argued that respondents contend that the following elements of the asserted 

claims are indefinite: “en~elope,”~~ “compact structure” and “located closely adjacent to each 

other.” (SBr at 79.) The staff, citing to its claim construction section, argued that it does not 

43 The administrative law judge finds nothing in the post-hearing submissions of 

respondents where respondents argued that the claimed phrase “envelope” is indefinite. 

182 
believe that any of the foregoing terms, when properly construed, is indefinite. (Ic& 

Section 112, ¶ 2 provides that “[tlhe specification shall conclude with one or more claims 

particularly pointing out and distinctly claiming the subject matter which the applicant regards as 

his invention.” A patentee’s failure to do so renders the patent indefinite and invalid. See Default 

Proof Credit Card Svs.. Inc. v. Home Depot U.S.A.. Inc., 412 F.3d 1291, 1298 (Fed. Cir. 2005). 

A determination of claim indefiniteness is a legal conclusion that is drawn from the court’s 

performance of its duty as the construer of patent claims. Id.. citing Atmel Corn. v. Information 

Storage - Devices, 198 F.3d 1374,1378 (Fed. Cir. 1999). 

A decision on whether a claim is invalid under 35 U.S.C. 8 112, requires, inter alia a 

determination of “whether a person experienced in the field of the invention would understand 

the scope of the claim when read in light of the specification.” Energizer Holdings, Inc. v. 

International Trade Comm’n, 435 F.3d 1366, 1369 (Fed. Cir. 2006). However, “[cllaim 

definiteness is analyzed ‘not in a vacuum, but always in light of the teachings of the prior art and 

of the particular application disclosure as it would be interpreted by one possessing the ordinary 

level of skill in the pertinent art.”’ Id., quoting In re Moore, 439 F.2d 1232,1235 (C.C.P.A. 

1971). Moreover, because a claim is presumed valid, a claim is indefinite only if the “claim is 

insolubly ambiguous, and no narrowing construction can properly be adopted.” Exxon Research 

& Eng’g Co. v. United States, 265 F.3d 1371, 1375 (Fed. Cir. 2001). 

Referring to the claimed phrase “whereby a compact structure is provided for each said 

integral combination,” the administrative law judge has found, supra, based on the claims, the 

written disclosures of the specification, and the prosecution history, that said claimed phrase 

states a result, and not an additional limitation, of the claimed “integral combination” limitation. 

183 
Hence, the administrative law judge finds that the claimed phrase “whereby a compact structure 

is provided for each said integral combination” in issue is not indefinite. 

Referring to the claimed phrase “said two integral combinations are located closely 

adjacent each other [sic],” the administrative law judge has interpreted, based on the plain 

language of the claim, that said claimed phrase means “the two integral combinations are located 

close to each other;” that the patentee did not deviate from the ordinary meaning of either 

“closely” or “adjacent,” and that one of ordinary skill in the art would understand the claimed 

phrase to mean that the two integral combinations are located close to each other. Hence, the 

administrative law judge finds that the claimed phrase “said two integral combinations are 

located closely adjacent each other [sic]” is not indefinite. 

Based on the foregoing, the administrative law judge finds that respondents have not met 

their burden in establishing, by clear and convincing evidence, that claim 7 of the ‘932 patent is 

indefinite. 

XI. Enforceability 

Respondents argued that th evidence at the hearing demonstrated that the ‘932 patent is 

unenforceable. In support, it is argued that in a May 13, 1992 letter to Ron Grable, at Motor 

Trend Magazine, Jonathan Edwards, the inventor and founder of Town Creek Industries (TCI), 

and Bob Sheridan, the first president of TCI, reminded Grable of an article he had published in 

the January 1989 issue of Motor Trend magazine entitled “Sport Car 2010;” that the letter began: 

We have kept a copy of your article “Sports Car 2010 a” from the 

January 1989 issue of Motor Trend magazine anticipating the day 

we could write this letter. 

(RX-60; FWF-7.98); that the next two sentences of the letter recall a specific passage of that 

184 
1989 article and draw a comparison with Edwards’s ‘932 patent: 

You refer on page 91 to pancake motors in the wheel. We have 

enclosed a copy of our patented system which employs pancake 

type motors working into a planetary gear set for a true infinite 

mechanical advantage and direct dnve simultaneously. 

(RX-60); that a review of page 91 of Ron Grable’s January 1989 “Sports Car 2010” article in 

Motor Trend reveals that it does suggest employing pancake type motors in the vehicle’s wheels: 

Companies like Unique Mobility and General Motors are working 

on modern versions of the “pancake” motor, with extremely high 

power-to-weight ratios. Motors capable of continuous outputs of 

40 hp (and short overloads up to 80 hp) can easily be held in your 

hand and are on the order of 8 inches in diameter. Eighty 

horsepower doesn’t sound like much, but imagine one motor in 

each wheel, and it suddenly becomes much more interesting. 

(RX-149); that the question naturally arises whether inventor Edwards, a life-long auto mechanic, 

had knowledge of Grable’s January 1989 Motor Trend article when Edwards began working on 

his idea in January of 1989, or, indeed, at any time prior to issuance of the ‘932 patent; that when 

asked point-blank at the hearing, he said no; that while no copies of the article were found in the 

document productions from Edwards, Sheridan, or Solomon, or in the files of Johnston, who 

prepared the patent application, a copy of the 1992 letter to Ron Grable Edwards and Sheridan 

referencing the Motor Trend article did turn up in Johnston’s files; that{ 

185 
{ 1 

Respondents argued, as for the materiality of the Motor Trend article, that the 

EdwarddSheridan letter itself acknowledges the idea of putting pancake motors in the wheels of 

automobiles, as discussed in the article, also formed a part of Edwards’s patented system; and 

that Edwards admitted that the article described something that was “very similar” to what 

Edwards was trying to design. 

Complainant argued that Edwards did not commit inequitable conduct during the 

prosecution of the ‘932 patent. (CRBr at 64.) 

The staff argued that the ‘932 patent is enforceable, assuming it meets the other statutory 

requirements. (SBr at 84.) 

An otherwise valid patent will be rendered unenforceable for inequitable conduct if a 

party challenging the patent proves by clear and convincing evidence that the patent applicant, 

with intent to mislead or deceive the Patent Office, fails to disclose material information or 

submits materially false information to the Patent Office during prosecution. Dirrital Control Inc. 

v. Charles Machine Works, 437 F.3d 1309, 1313 (Fed. Cir. 2006); In re Certain Optical Disk 

Controller ChiDs and Chipsets and Products Containing Same. IncludinP DVD Plavers and PC 

ODtical Storage - Devices, ITC Inv. No. 337-TA-506, Order, Final Initial and Recommended 

Determinations (May 16,2005). To prevail with a defense of inequitable conduct, however, the 

alleged infringer “must prove a threshold level of materiality and intent by clear and convincing 

evidence.” Digital Control Inc., 437 F.3d at 1313, citing Molins PLC v. Textron, Inc., 48 F.3d 

1172, 1178 (Fed. Cir. 1995). 

At the time the ‘932 patent was before the Examiner, between 1990-91, information was 

186 
considered material for purposes of an inequitable conduct determination where there was a 

substantial likelihood that an Examiner would consider it important in deciding whether to allow 

the application to issue as a patent. Am. Hoist & Derrick Co. v. Sowa & Sons, Inc., 725 F.2d 

1350, 1362 (Fed. Cir. 1984) (citing 37 C.F.R. 8 1.56(a), third sentence (1983)); In re ODtical 

Disk Controller ChiDs, ITC Inv. No. 337-TA-506; see MPEP $8 2001,2001.05 (5th ed., Rev. 13, 

Nov. 1989).44 Moreover, “[tlo be guilty of inequitable conduct, one must have intended to act 

inequitably.” FMC COT. v. Manitowoc Co.. Inc., 835 F.2d 1411, 1415 (Fed. Cir. 1987). A 

breach of the disclosure duty alone does not suffice to render a patent unenforceable; rather, there 

must be clear and convincing evidence that the patent applicant deliberately withheld a known 

material reference. See Digital - Control Inc., 437 F.3d at 1318, citing Baxter Int’ 1, Inc. v. 

McGaw, Inc., 149 F.3d 1321, 1329 (Fed. Cir. 1998); Inre Optical Disk Controller Chips, ITC 

Inv. No. 337-TA-506. Also, “gross negligence does not alone suffice to establish intent [to 

deceive].” CFMT. Inc. v. Yieldup Int’l Corn., 349 F.3d 1333, 1342 (Fed. Cir. 2003), citing 

Kingsdown Med. Consultants, Ltd. v. Hollister Inc., 863 F.2d 867, 876 (Fed. Cir. 1988); cf. M. 

Eagles Tool Warehouse v. Fisher Tooling Companv, Inc., 439 F.3d 1335, 1341 (Fed. Cir. 2006) 

(failure to disclose prior art, where only evidence of intent is a lack of a good faith explanation 

for nondisclosure, cannot constitute clear and convincing evidence of culpable intent). In 

addition, the Federal Circuit has warned that inequitable conduct not serve as “a magic 

incantation to be asserted against every patentee.” FMC Corn., 835 F.2d at 1415. 

44 Patent Office Rule 56 provides that to be material for patentability, the information 

cannot be “cumulative to information already of record or being made of record in the [patent] 

application ....” 37 C.F.R. 5 1.56(b) (2005). 

187 
There is evidence that the May 13, 1992 letter to Grable (RX-60) indicates that Sheridan 

is the sole author of said letter. { 

Q. 

A. 

Q. 

A. 

Q. 

A. 

} Thus, Edwards testified: 

Okay. Referring now back to the letter to Mr. 

Grable, did you draft this letter? 

No. 

Who drafted it? 

It was Bob Sheridan. 

*** 

Did you review the letter before it was sent? 

No. My signature doesn’t appear anywhere on here. 

I always sign things that I review. 

(Edwards, Tr. at 533-34.) 

In addition, while Toyota claims that Sheridan testified at deposition that “he recalled 

drafting the letter with input from Mr. Edwards” (RBr. at 138.) { 

1 

Assuming arguendo the materiality of the Motor Trend article, Sheridan, who is the 

188 
source of information relating to Edwards’s purported knowledge of the 1989 Motor Trend 

article, dd not appear at the hearing to reiterate and/or expand upon his deposition testimony. In 

contrast, Edwards testified that he did not recall reading the article; and that he does not read 

Motor Trend. Moreover, the letter allegedly sent to Motor Trend does not bear a letterhead. In 

addition, the administrative law judge finds no evidence that Edwards deliberately withheld the 

Motor Trend article from the Patent Office during the prosecution of the ‘932 patent, even 

assuming arguendo Edwards had knowledge of the Motor Trend article during the prosecution of 

the ‘932 patent. Hence, the administrative law judge finds that respondents have not established, 

by clear and convincing evidence, that the ‘932 patent is unenforceable. 

XII. Remedy 

A. Exclusion Order 

Solomon requests that the administrative law judge recommend a limited exclusion order 

preventing the importation of vehicles containing the infringing combination motor and 

transmission systems manufactured by or on behalf of Toyota. It is argued that this limited 

exclusion order should also ban the importation of vehicles manufactured by Toyota’s affiliated 

companies, subsidiaries, contractors, licensees, joint venturers or other related entities{ 

} It is also argued that the accused devices are hybrid 

transaxles contained in the Toyota Prius{ }Toyota Highlander Hv 

{ }Toyota Camry HV{ }and Lexus RX 400h 

{ } citing RX-138C at Ex. A, and thus to provide full relief to 

189 
Solomon’s domestic industry that the scope of any limited exclusion order should necessarily 

extend to all infringing transaxles as well as those Toyota vehicles incorporating said 

transmissions without regard to specific models. (CRBr at 79.) Solomon does not object to 

limiting any exclusion order so that it does not reach third-party customers who have already 

purchased Toyota hybrid vehicles with the accused devices installed. Solomon also does not 

object to exempting from an exclusion order any transaxles, or components thereof, to be used 

for repair or replacement of transaxles installed in vehicles purchased by third-party consumers 

prior to the issuance of any exclusion order. (CRBr at 8 1 .) 

As to downstream products Solomon argued that a downstream product analysis under 

the long-standing EPROMs factors is unnecessary as nearly all of Toyota’s infringing imports to 

date consist of hybrid vehicles, such as the Toyota Prius, not stand-alone combination motor and 

transmission systems. (CBr at 113-14.) However it later argued that “if a downstream products 

analysis is deemed necessary,” the EPROMs factors favor a limited exclusion order extending to 

the vehicles containing the infringing combination motor and transmission systems manufactured 

by or on behalf of Toyota. (RBr at 113-17.) 

Respondents argued that Solomon has only accused the following five Toyota transaxles 

types of infringing the ‘932 patent: { 

generation Prius vehicle; { 

Prius vehicle; { 

{ } which is incorporated into the Highlander HV and the Lexus RX400h vehicles. 

Accordingly it is argued that should the Commission determine that Toyota violates Section 337, 

any limited exclusion order should be appropriately directed to “Toyota’s infringing transaxles” 

} which was incorporated into the first 

} which is incorporated into the current generation 

} which is incorporated into the Camry HV vehicle; and the 

190 
and “Toyota vehicles containing the infringing transaxles.” (RBr at 139; RRBr at 85.) 

} Hence it is argued that any recommendation on remedy specifically make clear that the 

380K transaxle was not found to infringe and that remedy against the 380K transaxles is not 

appropriate. It was also argued that should Solomon present evidence regarding the need or 

appropriate justification for downstream product relief, any such relief should be limited to 

Toyota vehicles containing the infringing transaxles. (RBr at 140-42.) 

The staff argued that if a violation were to be found, an order should issue directed solely 

to the exclusion of hybrid subsystems made by or on behalf of one or more of the respondents 

that may be found to infringe claim 7 of the ‘932 patent. (SBr at 82.) { 

191 
1 

Under Commission rules 210.36(a) and 210.42(a)( l)(ii), the administrative law judge is 

to consider evidence and argument on the issues of remedy and issue a recommended 

determination thereon. Under Section 337(d), 19 U.S.C. 0 1337(d), the Commission may issue a 

limited exclusion order against a respondent that has been determined to be in violation of 

section 337. Such an order directs the Customs and Border Protection service (CBP) to exclude 

from entry into the United States articles that are covered by, and thus infringe, the intellectual 

property rights at issue. Certain Flash Memow Circuits and Products Containing Same, Inv. No. 

337-TA-382, USITC Pub. No. 3046, Comm’n Op. at 26 (June 1997). 

An exclusion order may cover not only articles specifically found to infringe, but also socalled downstream products, i.e., those products that incorporate the infringing articles as 

components, if the Commission decides that exclusion of downstream products is necessary to 

give a complainant complete and effective relief. On the other hand, including downstream 

products has the potential to expand the coverage of the exclusion order, thus increasing the risk 

of interfering with legitimate commerce. Hence, a balancing of factors may be appropriate. 

To assist in any balancing, the Commission, in Certain Erasable Programmable Read-only 

Memories Inv. No. 337-TA-276, Comm’n Op. at 124-26, 136 U.S.I.T.C., Pub. 2196 (May 1989) 

(EPROMs). aff‘d sub nom Hvundai Electronics Industries Col., Ltd. v. U.S, Intern’l Trade 

Comm’n, 899 F.2d 1204 (Fed. Cir. 1990) (Hyundai Electronics), identified certain relevant 

factors for consideration. 

192 
Should the Commission determine that there is a violation of Section 337, exclusion of 

the accused infringing imported transaxles as well as Toyota vehicles containing the infringing 

transaxles, as agreed to by the parties, is recommended. Moreover the administrative law judge 

recommends that any exclusion order apply not only to respondents TMC but also to any of its 

affiliated companies, parents, subsidiaries, licensees, contractors, or other related business 

entities, or successors or assigns of TMC. &, Limited Exclusion Order which issued on 

February 16, 2005, in Certain Audio Digital-To-Analog - Converters And Products Containing 

Same Inv. No. 337-TA-499 (“limited exclusion order applies to any of the affiliated companies, 

parents, subsidiaries, licensees, contractors, or other related business entities, or their successors 

or assigns, or ...[ respondent]”). 

In addition, it is recommended that any limited exclusion order should not reach thirdparty customers who have already purchased Toyota hybrid vehicles with the accused transaxles 

installed and also that the order exempt any transaxles or components thereof to be used for 

repair or replacement of transaxles installed in vehicles purchased by third-party consumers prior 

to the issuance of the exclusion order. 

{ 

193 
1 

B. Cease And Desist Order 

Complainant, as to any cease and desist order, argued that the administrative law judge 

should recommend that the Commission issues a cease and desist order, directed to respondents 

Toyota Motor Sales, U.S.A., Inc. (TMS), Toyota Motor Engineering & Manufacturing North 

America, Inc. (TEMA) and Toyota Motor Manufacturing Kentucky, Inc. (TMMK). 

It is argued that respondent TMS, the distributor for Toyota and Lexus vehicles within the 

continental United States and Alaska, maintains commercially significant inventory in the United 

States of the imported Toyota Prius, Toyota Highlander HV, Toyota Camry HV and Lexus 

RX400h vehicles at issue; that distribution pipeline for the accused Toyota and Lexus vehicles 

begins at one of respondent Toyota Motor Corporation’s manufacturing facilities located in 

194 
Japan and from there, the vehicles begin their journey to the United States via commercial 

shipping lines and TMS takes title to these vehicles while the vehicles are still loaded on a 

vessel, prior to their arrival at a port facility in the United States; that when the vehicles arrive at 

one of the various port facilities in the United States; that when the vehicles arrive at one of the 

various port facilities, TMS processes these vehicles, which takes anywhere from one to four 

days, before the vehicles are ultimately distributed to their final destination, y&. one of 1,200- 

plus independent Toyota or Lexus dealers or two independent distributors, all of which are 

located in the United States; that at any given moment, a snapshot of Toyota’s distribution 

pipeline reveals that TMS maintains a significant inventory of the accused vehicles within the 

United States; that for example, on August 31,2006, respondent TMS had{ 

{ } Camry HV vehicles,{ } Highlander HV vehicles and{ } Lexus RX40Oh vehicles 

“in process,” meaning that the vehicles were under TMS’s control at a port facility or that TMS 

had shipped them from a port facility to a Toyota or Lexus dealer and each of those vehicles was 

in TMS’s custody while located in the United States at some point in its journey from a Toyota 

plant and Japan to an independent Toyota or Lexus dealer, that given the mechanics of TMS’s 

distribution process, the same holds true for the{ 

Lexus RX4OOh vehicles located at Toyota and Lexus dealers on August 3 1,2006 and each of 

those vehicles constituted a part of TMS’s inventory of vehicles located in the United States prior 

to arriving at a dealership; that in addition, TMS maintains significant inventory of the imported, 

stand-alone transaxles at its warehouse facilities; that TEMA and TMMK maintain commercially 

significant inventory of at least the Toyota Camry HY vehicles manufactured at its facility 

located in Georgetown, Kentucky; and that TMS purchase these Camry HV vehicles from 

} Prius vehicles, 

} Prius, Camry HV, Highlander HV and 

195 
TEMA, and, from the Kentucky facility, these vehicles enter the TMS distribution pipeline for 

eventual arrival at independent Toyota dealers. (CBr at 117-19.) 

Respondents argued that any cease and desist order is not justified; and that while a cease 

and desist order is appropriate where the evidence demonstrates that a respondent maintains 

commercially significant inventory in the United States, Toyota does not maintain inventory of 

vehicles containing the accused transaxles. It is argued that the inventory of all of Toyota’s 

vehicles (the Prius, Camry HV, Highlander HV, and Lexus RX4OOh) are maintained by 

independent dealers; that when a vehicle is imported into the United States, it is immediately put 

into a transit pipeline for shipment to an independent dealer; that Toyota’s pipeline system is 

designed such that vehicles do not remain in Toyota’s possession, but get to a dealer for 

immediate sale; that Toyota’s primary concern is getting the vehicle to the third party dealers as 

fast as possible, so that said dealer can sell the vehicle as fast as possible; and that Toyota 

specifically allocate vehicles to dealers as soon as the vehicle is manufactured and thus Toyota’s 

system is the opposite of the sort of significant inventory that the Commission’s cease and desist 

orders were designed to prevent. (RBr at 142-142.) 

The staff argued that the evidence will demonstrate that the domestic respondents 

maintain an inventory of the accused vehicles and hybrid subassemblies in the United States. 

Hence it argued that cease and desist orders “might” be appropriate if Solomon prevails. (SBr at 

82.) 

Under Section 337(f)( l), the Commission may issue a cease and desist order in addition 

to, or instead of, an exclusion order. 19 U.S.C. 8 1337(f)(l). A factor to consider here is 

whether a respondent is maintaining a “commercially significant” inventory of infringing 

196 
products in the United States, the sale of which could undercut the effect of any exclusion order. 

- See Certain Abrasive Products Made Using a Process for Powder Preforms, and Products 

Containing: Same, Inv. No. 337-TA-449, USITC Pub. 3530, Comm’n Op. at 7 (August 2002). 

Complainant bears the burden of proving that a respondent has a commercially significant 

inventory of the accused products in the United States. Certain Intemated Repeaters. Switches, 

Transceivers. and Products Containing: Same, Inv. No. 337-TA-435, USITC Publication No. 

3547, Comm’n Op. at 27 (October 2002). 

It is undisputed that as of May 2,2006, TMS had imported approximately{ } Prius 

vehicles into the United States, as compared to{ 

(undisputed)); that from 2003 to January 2006, TMS imported approximately{ 

HV vehicles into the United States (CF’F 921 (undisputed)); that from 2004 to January 2006, 

TMS imported{ 

that as of May 2,2006, TMS had imported more than{ 

vehicles as compared to{ 

vehicles (CF’F923 (undisputed)); that as of June 1,2006, TMS had imported at least{ 

HV vehicles into the United States as compared to at least{ } Camry HV transaxle assemblies 

for the same time period (CFF 924 (undisputed)); that as of June 1,2006, Toyota projected the 

following approximate production volumes of the Camry HV vehicle at Toyota Motor 

Manufacturing Kentucky, Inc.: { }vehicles in November 2006; 

{ } vehicles in December 2006;{ } vehicles in January 2007;{ } vehicles in February 

2007;{ } vehicles in April 2007 (CFF 925 (undisputed)); 

that CX-404 is a press release entitled “Toyota Reports May Sales,” which includes TMS’s report 

} Prius transaxle assemblies. (CF’F 920 

}Highlander 

} Lexus RX4OOh vehicles into the United States (CFF 922 (undisputed)); 

} Highlander HV and Lexus RX4OOh 

} transaxle assemblies for the Highlander HV and Lexus RX400h 

} Camry 

} vehicles in October 2006;{ 

} vehicles in March 2007; and{ 

197 
of vehicle sales during May 2006 (CFF 926 (undisputed)); and that for the month of May 2006, 

TMS reported sales of 3,032 Camry Hybrid units, 8,103 units of the Prius, 3,755 units of the 

Highlander Hybrid and 2,006 units of the Lexus RX4OOh (CFF 927; (undisputed).){ 

1 

Based on the foregoing, the administrative law judge does not recommend any cease and 

198 
desist order. 

Xm. Bond 

Solomon requested that the administrative law judge recommend a bond of 100 percent 

of the entered value of vehicles containing Toyota's infringing combination motor and 

transmission systems, and that the bond amount also apply to imports of stand-alone combination 

motor and transmission systems. It is argued that Solomon sells its ST58 Electric Wheel power 

drive systems for marine applications, while Toyota sells vehicles incorporating the infringing 

combination electric motor and transmission systems; that using the price differential method to 

calculate the bond amount is impractical considering that Solomon and Toyota utilize the 

patented technology for completely different applications; that Toyota presently enjoys the 

competitive advantage of selling vehicles that incorporate the infringing combination electric 

motor and transmission systems, without paying any license fees or royalties on vehicle sales to 

Solomon; and that given the impracticality of performing a price comparison or applying a 

reasonable royalty rate, a bond set at 100 percent of the entered value for vehicles will 

sufficiently offset the competitive advantage resulting from Toyota's unfair acts. It is further 

argued that the record demonstrates that Toyota imports stand-alone combination motor and 

transmission systems; and that it is impractical to perform a price comparison between Solomon's 

ST58 Electric Wheel power drive system for marine applications and Toyota's replacement 

infringing systems; and that there is no factual basis to support a reasonable royalty calculation. 

(CBr at 120-21.) 

Respondents argued that because Solomon accuses Toyota's transaxles of infringing, a 

bond of 100% of the value of an imported vehicle vastly over compensates Solomon for any 

199 
alleged loss from the importation of a transaxle; and that Solomon has not put any evidence in 

the record showing what competitive advantage Solomon has lost through the importation of 

Toyota’s transaxles but rather attempts to use its evidentiary failures as a springboard to request a 

100% bond. It is argued that the evidence demonstrates that a reasonable royalty rate is $30 per 

accused transaxle or vehicle containing the accused transaxle; { 

} Hence Toyota argued that the appropriate bond is $30 

per accused transaxle or vehicle containing the accused transaxle. (RBr at 144-45.) 

The staff argued that the record contains evidence relating to royalties;45{ 

} Hencethe 

staff proposed that the administrative law judge recommend a bond of $30.00 per infringing 

hybrid vehicle or infringing hybrid system sought to be imported during the Presidential review 

period. (SBr at 8344.) 

Pursuant to 19 U.S.C. 9 1337(e)(l) and (j)(3) if an exclusion order issues, the 

Commission must determine the amount of the bond that respondents must post if they wish to 

continue entry of the accused articles from the date of the Commission7s final order of violation 

of section 337 until expiration of the 60-day Presidential review period. In determining the 

45 The staff noted that it believes that the appropriate bond in this investigation should be 

based on a reasonable royalty basis because complainant does not make, and has not made, any 

products that practice the invention; that to the extent that complainant’s ST58 device practices 

any claim of the ‘932 patent, the evidence does not demonstrate that ST58 could be used in place 

of the accused hybrid systems; and that therefore, price comparisons, even if comparative prices 

were available, would not be appropriate. 

200 
amount of respondents’ bond, the Commission should take into account the amount that would 

offset any competitive advantage resulting from the unfair acts of respondents. 19 C.F.R. 6 

210.50(a)(3); Certain Dynamic Random Access Memories, ComDonents Thereof and Products 

Containing Same, Inv. No. 337-TA-242, Comm’n Op. (Sept. 21, 1987). 

Solomon only makes products for the marine industry and Solomon does not make any 

products for the automotive industry.46 Hence, Solomon does not manufacture any product that 

competes with Toyota’s accused transaxles. { 

} Hence, should a violation be found by the Commission, the administrative law 

judge recommends that the appropriate bond, during the Presidential review period, be $30.00 

per imported accused transaxle or vehicle containing the accused transaxle. 

XIV. Additional Findings Of Fact 

A. Parties 

1. Complainant Solomon Technologies, Inc. (Solomon) of Tarpon Springs, Florida, 

is a Delaware corporation and is the owner, by assignment, of the ‘932 patent at issue. 

(Complaint, 

Tarpon Springs, Florida. (Complaint, ¶ 2.4, pp. 3-4; ¶ 9.4, p. 15.) (SFF 1 (undisputed).) 

2.1,2.2, p. 3; g[q[ 5.1 - 5.4, pp. 6-7.) Solomon has a manufacturing facility in 

2. After the ‘932 patent issued, in early 1992, inventor Jonathan R. Edwards 

46 CX-107, Solomon’s 2005 SEC Form 10KSB at SOL 044883 under the heading “our 

markets;” RX-l29C, Solomon’s Supplemental Response to Interrogatory No. 6. 

20 1 
established a business called Town Creek Industries in order to further develop the technology of 

the ‘932 patent and produce a prototype. (Edwards, Tr. at 524,622.) 

3. In addition to Edwards, an individual named Robert Sheridan was a founder of 

Town Creek Industries. Sheridan served as vice president. (Edwards, Tr. at 524,622.) 

4. Solomon and Town Creek Industries merged. The Merger agreement states, under 

the title “Intellectual Property” that “[tlhe consummation of the transactions contemplated hereby 

do not and shall not result in the loss or impairment of Town Creek’s right to own or use any of 

the Intellectual Property.” (CX-15 at SOLO17901.) 

5. Respondent Toyota Motor Corporation (TMC) of Toyota City, Japan is a 

corporation organized under the laws of Japan. TMC is allegedly engaged in the design, 

manufacture, and exportation of motor vehicles to the United States, including models that 

allegedly contain infringing combination motor and transmission systems. (Complaint, ‘I[ 3.1, p. 

4; Exhibit 3.) 

6. Respondent TMC has sold for importation the accused combination electric motor 

and transmission systems used in the Toyota Hybrid System and Toyota Hybrid System 11 

featuring Hybrid Synergy Drive and vehicles containing the same, { 

} as incorporated into the Toyota Prius, Toyota 

Highlander HV, Lexus RX 400h and Toyota Camry HV vehicles. (CX-95C at 4.) 

7. Respondent Toyota Motor Engineering & Manufacturing North America, Inc. 

(TEMA) and respondent Toyota Motor Manufacturing Kentucky, Inc. (TMMK) are successors in 

interest of the former Toyota Motor Manufacturing North America, Inc. See Order No. 7, which 

issued on May 26,2006. 

202 
8. Toyota Motor Sales, U.S.A., Inc. (TMS) has imported into the United States the 

accused combination electric motor and transmission systems used in the Toyota Hybrid System 

and Toyota Hybrid System 11 featuring Hybrid Synergy Drive and vehicles containing the same, 

{ } as incorporated into the 

Toyota Prius, Toyota Highlander HV, Lexus RX 400h and Toyota Camry HV vehicles. 

(CX-95C at 6.) 

9. TMS has sold within the United States after importation the accused combination 

electric motor and transmission systems used in the Toyota Hybrid System and Toyota Hybrid 

System II featuring Hybrid Synergy Drive and vehicles containing the same, { 

} as incorporated into the Toyota Prius, 

Toyota Highlander HV, Lexus RX 400h and Toyota Camry HV vehicles. (CX-95C at 6.) 

10. TEMA intends to sell within the United States after importation the accused 

combination electric motor and transmission systems used in the Toyota Hybrid System 11 

featuring Hybrid Synergy Drive and vehicles containing the same,{ 

} as incorporated into the Toyota Camry HV vehicle. (CX-95C at 7.) 

11. TMMK has imported into the United States the accused combination electric 

motor and transmission systems used in the Toyota Hybrid System II featuring Hybrid Synergy 

Drive and vehicles containing the same,{ 1 as 

incorporated into the Toyota Camry HV vehicle. (CX-95C at 7.) 

12. TMMK intends to sell within the United States after importation the accused 

combination electric motor and transmission systems used in the Toyota Hybrid System II 

featuring Hybrid Synergy Drive and vehicles containing the same,{ 1 

203 
{ 

B. Witnesses 

} as incorporated into the Toyota Camry Hv vehicle. (CX-95C at 8.) 

13. Peter DeVecchis testified on behalf of Solomon. DeVecchis is currently 

Solomon’s president, having assumed that post in May 2004. (DeVecchis, Tr. at 152,156, 161.) 

He was initially hired by Solomon as a contractor in March 2004. (DeVecchis, Tr. at 154, 160.) 

14. { 

1 

15. { 

1 

16. Andrew Christian testified on behalf of Solomon. Christian has a degree in 

industrial engineering, concentrating in operations engineering. Operations engineering is the 

study of the processes of both of people and manufacturing, research and development and all 

goes into manufacturing and plant operations. (Christian, Tr. at 324-25.) 

17. Christian was initially hired by Solomon as a contractor in July 2004 and later as a 

full-time employee on August 3,2004. (Christian, Tr. at 326-27.) 

18. { 

1 

19. DeGroot is the president and treasurer of Homewood Products Corporation 

(Homewood) of Pittsburgh, Pennsylvania. (CX-124; DeGroot, Tr. at 442.) { 

20. In 1995, DeGroot{ 1 

204 
1 

21. Homewood is a spin off from Westinghouse Electric. Homewood’s primary 

business is the production of replacement parts for vintage equipment. (DeGroot, Tr. at 422.) 

22. Homewood’s supply of replacement parts for vintage Westinghouse equipment 

“range from push buttons and control devices to power circuit breakers to a full range of motors, 

integral horsepower, 1 horsepower to several-thousand horsepower, AC motors and DC motors 

and generators.” (DeGroot, Tr. at 422.) 

23. { 

24. { 

25. { 

1 

26. 

27. 

Inventor Edwards appeared as a witness for Solomon. (Edwards, Tr. at 514.) 

Solomon has retained Edwards as a consultant since April 2005. (Edwards, Tr. at 

640.) Edwards’ work as a consultant has included providing assistance to Solomon’s counsel in 

preparing responses to interrogatories and by providing deposition testimony on behalf of the 

corporation. In addition, Edwards has performed work related to the transaxle project. (Id at 

640-4 1 .) 

28. Edwards is one of the founders of Solomon and its predecessor-in-interest and 

{ 1 

205 
29. It is undisputed that with the exception of its expert witnesses, each of Solomon’s 

witnesses has a financial interest in the outcome of this investigation since each witness owns 

stock in Solomon. (SFF 23 (undlsputed).) 

30. Gregory W. Davis was called as Solomon’s technical expert. Davis is a professor 

of Mechanical Engineering at Kettering University. (CX-260 at 1 .) 

3 1. Davis was qualified as an expert in automotive engineering, including the design 

and operation of transmission systems and hybrid vehicles. (Davis, Tr. at 796.) 

32. C. Douglass Locke was called as Solomon’s technical expert. Locke was 

qualified an expert in software development and analysis for embedded software systems. 

(Locke, Tr. at 1081-82.) 

33. Koichiro Muta of Toyota was called as an adverse witness by Solomon. (SFF27 

(undlsputed).) 

34. Masahiro Kojima of Toyota was called as an adverse witness by Solomon. 

Kojima is the manager of the development group in the number 3 power train development 

division of Toyota Japan. (Kojima, Tr. at 755.) Kojima has personal knowledge of the transaxles 

used in Toyota’s hybrid vehicles. (Id.) 

35. Edward Caulfield was called as Toyota’s technical expert. Caulfield is the 

president and chief technical officer of Packer Engineering. Packer Engineering is in the 

consulting business, providing consulting services to the United States Government and to 

industry, as well as to parties engaged.in litigation. (Caulfield, Tr. at 1577.) 

36. Caulfield was qualified as an expert in mechanical and automotive engineering, 

including transmission systems. (Caulfield, Tr. at 1591-92.) 

206 
C. Person Of Ordinary Skill In The Art 

37. A person of ordinary skill in the art would hold an undergraduate degree, probably 

in mechanical engineering, and have about two to five years of experience with vehicles and 

drive trains of vehicles, or have equivalent practical experience. (Davis, Tr. at 797.) 

38. Caulfield agrees with Davis’s characterization of one of ordinary skill but adds 

such a person would also have some experience in electrical motors. (SFF 33 (undisputed).) 

207 
CONCLUSIONS OF LAW 

1. 

2. 

The Commission has in rem jurisdiction and & personam jurisdiction. 

There has been an importation of certain combination motor and transmission 

systems and devices used therein and products containing same which are the subject of the 

alleged unfair trade allegations. 

3. An industry does not exist in the United States, as required by subsection (a)(2) of 

section 337, that exploits the ‘932 patent in issue because complainant has not satisfied the 

technical prong of the domestic industry requirement. 

4. 

5. 

Respondents’ accused products do not infringe asserted claim 7 of the ‘932 patent. 

The asserted claim 7 of the ‘932 patent is not valid because of a lack of an 

enabling disclosure. 

6. 

7. 

8. 

If the ‘932 patent is found valid, it is enforceable. 

There is no violation of section 337. 

Assuming there is an unfair act, the record supports issuance of a limited 

exclusion order directed to infringing hybrid vehicles or infringing hybrid systems sought to be 

imported by respondents and imposition of a bond in the amount of $30.00 per imported 

infringing hybrid vehicle or infringing hybrid system during the Presidential review period. 

208 
ORDER 

Based on the foregoing, and the record as a whole, it is the administrative law judge's 

Final Initial Determination that there is no violation of section 337 in the importation into the 

United States, sale for importation, and the sale within the United States after importation of 

certain combination motor and transmission systems and devices used therein and products 

containing same. It is also the administrative law judge's recommendation, if the Commission 

finds an unfair act, that a limited exclusion order should issue directed to infringing hybrid 

vehicles or infringing hybrid systems sought to be imported by respondents. The administrative 

law judge further recommends that a bond of $30.00 per infringing hybrid vehicle or infringing 

hybrid system sought to be imported by respondents be imposed during the Presidential review 

period. 

The administrative law judge hereby CERTIFIES to the Commission his Final Initial and 

Recommended Determinations together with the record consisting of the exhibits admitted into 

evidence. The pleadings of the parties filed with the Secretary and the transcript of the prehearing conference, and the hearing, are not certified, since they are already in the Commission's 

possession in accordance with Commission rules. 

Further it is ORDERED that: 

1. In accordance with Commission rule 210.39, all material heretofore marked 

camera because of business, financial and marketing data found by the administrative law judge 

to be cognizable as confidential business information under Commission rule 201.6(a), is to be 

given in camera treatment continuing after the date this investigation is terminated. 

2. Counsel for the parties shall have in the hands of the administrative law judge 

209 
those portions of the final initial and recommended determinations which contain bracketed 

confidential business information to be deleted from any public version of said determinations, 

no later than February 28,2007. Any such bracketed version shall not be served via facsimile on 

the administrative law judge. If no such bracketed version is received from a party, it will mean 

that the party has no objection to removing the confidential status, in its entirety, from these 

initial and recommended determinations. 

3. The initial determination portion of the Final Initial and Recommended 

Determinations, issued pursuant to Commission rule 210.42(h)(2), shall become the 

determination of the Commission forty-five (45) days after the service thereof, unless the 

Commission, withln that period shall have ordered its review or certain issues therein or by order 

has changed the effective date of the initial determination portion. The recommended 

determination portion, issued pursuant to Commission rule 210.42(a)( l)(ii), will be considered 

by the Commission in reaching a determination on remedy and bonding pursuant to Commission 

rule 210.50(a). 

Issued February 13,2007 

210 

Paul J. LUC&~ 

Administrative Law Judge 
CERTAIN COMBINATION MOTOR AND 

TRANSMISSION SYSTEMS AND DEVICES 

USED THEREIN, AND PRODUCTS 

CONTAINING SAME 

Investigation No. 337-TA-561 

CERTIFICATE OF SERVICE 

I, Marilyn R. Abbott, hereby certify that the attached Public Version Final Initial and 

Recommended Determinations was served by hand upon Commission Investigative Attorney 

Juan Cockburn, Esq. and upon the following parties via first class mail, and air mail where 

necessary, on April 10, 2007 

M&ilyn VAbbott, Secretary 

U.S. International Trade Commission 

500 E Street, SW - Room 112 

Washington, DC 20436 

For Complainant Solomon Technologies, Inc.: 

Anthony J. Mirabito, Esq. 

Mintz, Levin, Cohn, Ferris, 

Glovsky and Popeo, P.C. 

One Financial Center 

Boston, MA 021 11 

Louis S. Mastriani, Esq. 

Maureen F. Browne, Esq. 

Adduci, Mastriani & Schaumberg LLP 

1200 17th Street, NW 

Washington, DC 20036 
CERTAIN COMBINATION MOTOR AND 

TRANSMISSION SYSTEMS AND DEVICES 

USED THEREIN, AND PRODUCTS 

CONTAINING SAME 

Investigation No. 337-TA-561 

Certificate of Service page 2 

For Respondents: Toyota Motor Corporation, Toyota Motor Engineering & Manufacturing 

North America, Inc. and Toyota Motor Manufacturing Kentucky, Inc., and 

Toyota Motor Sales, U.S.A., Inc.: 

Thomas W. Winland, Esq. 

Christine E. Lehman, Esq. 

Paul C. Goulet, Esq. 

Finnegan, Henderson, Farabow, 

Garrett & Dunner, LLP 

901 New York Avenue, NW 

Washington, DC 20001-4413 
CERTAIN COMBINATION MOTOR AND 

TRANSMISSION SYSTEMS AND DEVICES 

USED THEREIN, AND PRODUCTS 

CONTAINING SAME 

PUBLIC MAILING LIST 

Sherry Robinson 

LEXIS-NEXIS 

8891 Gander Creek Drive 

Miamisburg, OH 45342 

Ronnita Green 

Thomson West 

1100 13"' Street, NW 

Suite 200 

Washington, DC 20005 

Investigation No. 337-TA-561 

(PARTIES NEED NOT SERVE COPIES ON LEXIS OR WEST PUBLISHING)