The U.S. Court of Appeals for the Federal Circuit affirmed the final determination of non-infringement by the U.S. International Trade Commission (ITC) of a patent directed to a hybrid vehicle transmission, but declined to review the ITC's rulings on validity because "we are not required to address every possible ground on which the Commission's Order might be sustained." Solomon Technologies, Inc. v. International Trade Commission, Case No. 07-1391 (Fed. Cir., May 7, 2008) (Bryson, J.).
Solomon filed a complaint with the ITC under section 337 of the Tariff Act of 1930, alleging that Toyota imported and sold hybrid vehicles that infringed certain claims of Solomon's patent. Following an investigation, the presiding administrative law judge (ALJ) found no violation. The ALJ based that ruling on his determination on the findings that the accused devices did not infringe the patent, the patent was invalid for lack of enablement and the complainant did not establish the requisite domestic industry. The Commission reviewed in part the ALJ's determination and took no position on the ALJ's findings concerning the economic prong of the statutory domestic industry requirement. In all other respects, the Commission declined to review the ALJ's determination which thereupon became the final determination of the Commission. Solomon appealed.
On review, the Federal Circuit agreed with the ALJ's construction of the identified claim terms in all respects with the exception of the construction of the term "continuously variable," which the Court declined to address. Because the Court could not agree with either party's proposed construction of the term "continuously variable" limitation, the Court declined to address the ALJ's ruling that claim 7 is not enabled.
The Court went on to note that it could affirm the Commission's final determination on the basis of non-infringement without the need to address the Commission's finding on validity. In so doing, the Federal Circuit reminded us that when a case is before the ITC, invalidity is not a separate claim, as it is when raised as a declaratory judgment claim in district court litigation. Instead, in the context of §337 invalidity is simply one ground for determining whether the importation and sale of allegedly infringing articles "infringe a valid and enforceable United States patent."
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