Mems Technology Berhard v. International Trade Commission

NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
__________________________
MEMS TECHNOLOGY BERHAD,
Appellant,
v.
INTERNATIONAL TRADE COMMISSION,
Appellee,
and
KNOWLES ELECTRONICS LLC,
Intervenor.
__________________________
2010-1018
__________________________
On appeal from the United States International Trade
Commission in Investigation No. 337-TA-629.
__________________________
Decided: June 3, 2011
__________________________
THOMAS J. FISHER, Oblon, Spivak, McClelland, Maier
& Neustadt, L.L.P., of Alexandria, Virginia, argued for
appellant. With him on the brief were RICHARD D. KELLY,
BARRY J. HERMAN, ERIC W. SCHWEIBENZ and ROBERT C.
NISSEN.
MEMS TECH v. ITC 2
MICHAEL LIBERMAN, Attorney, Office of the General
Counsel, United States International Trade Commission,
of Washington, DC, argued for appellee. With him on the
brief were JAMES M. LYONS, General Counsel, and
ANDREA C. CASSON, Assistant General Counsel.
ALLAN J. STENSTEIN, Dykema Gossett, PLLC, of Chi-
cago, Illinois, argued for intervenor. With him on the
brief were TIMOTHY K. SENDEK; and DAVID L. PATTERSON,
and WILLIAM D. CRAMER, of Dallas, Texas.
__________________________
Before LOURIE, MAYER, and GAJARSA, Circuit Judges.
LOURIE, Circuit Judge.
MEMS Technology Berhad (“MemsTech”) appeals
from a final determination by the United States Interna-
tional Trade Commission that the importation and sale of
certain silicon microphone packages violated § 337 of the
Tariff Act of 1930 as amended, 19 U.S.C § 1337. The
Commission determined that MemsTech’s accused prod-
ucts infringe the asserted claims of U.S. Patents
7,242,089 and 6,781,231 (the “’089” and “’231” patents)
and that the asserted claims are not invalid under 35
U.S.C. § 102 or § 103 for anticipation or obviousness. We
affirm.
BACKGROUND
Knowles Electronics LLC (“Knowles”) owns the ’089
and ’231 patents, which pertain to microelectromechani-
cal system (“MEMS”) packages comprising a substrate, a
cover, and a microphone (also termed a transducer). ’089
patent col.1 ll.49-50; ’231 patent col.1 ll.40-41. MEMS
microphone packages are used in a variety of consumer
electronic devices, including mobile phones.
3 MEMS TECH v. ITC
The ’089 patent discloses MEMS packages that allow
acoustic energy to contact a transducer while protecting
the transducer from light, electromagnetic radiation, and
physical damage. ’089 patent col.1 ll.44-49. The MEMS
packages of the ’089 patent include a volume defined by
the transducer and either the cover or the substrate.
Asserted on appeal are claims 1, 2, 9, 15, 17, 20, 28, and
29. 1 Claim 1, the independent claim from which the other
asserted claims depend, recites:
1. A surface mountable package for containing a
transducer, the transducer being responsive to
sound pressure levels of an acoustic signal to pro-
vide an electrical output representative of the
acoustic signals, the surface mountable package
comprising:
at least a first member and a second member and
a chamber being defined by the first member and
the second member, the transducer being attached
to a surface formed on one of the first member or
the second member and the transducer residing
within the chamber;
the surface being formed with at least one pat-
terned conductive layer, the patterned conductive
layer being electrically coupled to the transducer;
an outside surface of the surface mountable pack-
age comprising a plurality of terminal pads elec-
trically coupled to the patterned conductive layer;
1 Claim 10 of the ’089 patent was asserted in the
investigation. The ALJ determined that this claim was
invalid for failing to meet the written description re-
quirement of 35 U.S.C. § 112. J.A. 206-07. The Commis-
sion determined not to review the ALJ’s finding, and
Knowles does not appeal the invalidity of claim 10.
MEMS TECH v. ITC 4
a volume being defined by the transducer and one
of the first member or the second member, the
volume being acoustically coupled to the trans-
ducer; and
one of the first member or the second member be-
ing formed to include an aperture, the aperture
configured to permit the passage of an acoustic
signal to the transducer.
’089 patent col.11 ll.20-44 (emphases added). A cross-
sectional view of a preferred embodiment is shown in
Figure 1, infra, which comprises a cover 20, a substrate
14, a transducer 12, and a back volume or air cavity 18.
Id. col.3 ll.36-43. The MEMS package depicted in Figure
1 also comprises an aperture 24 in the cover 20, which
allows external sound waves to reach the transducer in
the package. Id. col.3 l.66–col.4 l.4.
The ’231 patent discloses MEMS packages that shield
the microphone from an interference signal or an envi-
ronmental condition. ’231 patent col.1 ll.38-39. Claims 1
and 2 are asserted. Claim 1 recites:
1. A microelectromechanical system package com-
prising:
5 MEMS TECH v. ITC
a microelectromechanical system microphone;
a substrate comprising a surface for supporting
the microelectromechanical microphone;
a cover comprising a conductive layer having a
center portion bounded by a peripheral edge por-
tion; and
a housing formed by connecting the peripheral
edge portion of the cover to the substrate, the cen-
ter portion of the cover spaced from the surface of
the substrate to accommodate the microelectro-
mechanical system microphone, the housing in-
cluding an acoustic port for allowing an acoustic
signal to reach the microelectromechanical system
microphone wherein the housing provides protec-
tion from an interference signal.
Id. col.5 ll.12-25 (emphasis added). Claim 2 recites:
2. A microelectromechanical system package for
providing a shield from an interference signal, the
microelectromechanical package comprising:
a silicon-based microphone;
a substrate including a surface at least partially
covered by a first layer of a conductive material,
the silicon-based microphone is electrically cou-
pled to the layer of a conductive material;
a cover comprising a second layer of a conductive
material, the cover electrically connected to the
first layer of a conductive material and providing
a chamber in which the silicon-based microphone
is located, the chamber providing an acoustic front
volume for the silicon-based microphone.
Id. col.5 ll.26-38 (emphases added). Figure 1, infra,
depicts a cross-sectional view of a preferred embodiment,
MEMS TECH v. ITC 6
which comprises a cover 20, a substrate 14, and surface-
mountable components 12 (one of which is a transducer).
Id. col.3 ll.17-24.
MemsTech imports MEMS microphone packages into
the United States. On December 6, 2007, Knowles filed a
complaint at the Commission alleging a violation of § 337
in the importation and sale of certain MEMS microphone
packages (the “accused products”) by reason of infringe-
ment of the asserted claims of the ’089 and ’231 patents.
Knowles named MemsTech as the only respondent.
On January 3, 2008, the Commission instituted a
§ 337 investigation based on Knowles’ complaint. 73 Fed.
Reg. 2,277, 2,278 (Jan. 14, 2008). In response to Knowles’
allegations, MemsTech asserted noninfringement and
invalidity of the asserted claims. On January 12, 2009,
the Administrative Law Judge (“ALJ”) issued his “Initial
Determination on Violation of Section 337 and Recom-
mended Determination on Remedy and Bond.” In re
Certain Silicone [sic] Microphone Packages & Prods.
Containing Same, Inv. No. 337-TA-629, 2009 WL 389263(USITC Jan. 12, 2009) (hereinafter, “Initial Determina-
tion”).
7 MEMS TECH v. ITC
With respect to the ’089 patent, the ALJ construed the
term “electrically coupled” in claim 1 to mean “arranged
so that electrical signals may be passed either directly, or
indirectly via intervening circuitry, from one component
to another.” J.A. 70. The ALJ construed “volume” in
claims 1, 15, and 28 to mean “a space defined by the
transducer and one of the first member or the second
member.” J.A. 86. The ALJ determined that MemsTech’s
accused products infringe claims 1, 2, 9, 15, 17, 20, 28,
and 29 of the ’089 patent. 2 Regarding validity, the ALJ
determined that U.S. Patent 6,522,762 (“Mullenborn”)
does not anticipate claims 1, 2, 9, 15, 17, 28, and 29. The
ALJ also determined that U.S. Patent 4,533,795 (“Baum-
hauer”), alone or in view of Kress, 3 does not render obvi-
ous claims 1, 2, 9, 15, 17, 20, 28, and 29. Finally, the ALJ
determined claim 1 was not obvious over U.S. Patent
5,459,368 (“Onishi”).
With respect to the ’231 patent, the ALJ construed the
term “electrically coupled” in claim 2 to have the same
meaning as in claim 1 of the ’089 patent. The ALJ also
determined that the term “microelectromechanical system
package” in the preambles of claims 1 and 2 is a claim
limitation. The ALJ determined that MemsTech’s ac-
cused products infringe claims 1 and 2 of the ’231 patent.
Regarding validity, the ALJ found that Baumhauer does
not anticipate claims 1 and 2. The ALJ also found that
Onishi does not render obvious claim 1 or 2.
The ALJ further considered whether, under § 337, “an
industry in the United States, relating to the articles
2 The ALJ found that only certain types of Mem-
sTech’s accused products infringe claims 9 and 28 of the
’089 patent.
3 H.-J. Kress et al., Integrated Silicon Pressure Sen-
sor for Automotive Applications with Electronic Trim-
ming, SAE Document 950533 (1955). J.A. 1380-87.
MEMS TECH v. ITC 8
protected by the patent, . . . exists or is in the process of
being established.” 19 U.S.C. § 1337(a)(2) (2006). The
ALJ first noted that the Commission decided not to re-
view his initial determination that Knowles satisfied the
domestic industry requirement for the ’231 patent. The
ALJ then determined that Knowles satisfied the domestic
industry requirement for the ’089 patent because its
“SiSonic” silicon microphone packages practice claim 1.
Based on the findings in his Initial Determination,
the ALJ concluded that the importation or sale of the
accused MemsTech products violated § 337. The ALJ
recommended that the Commission issue a limited exclu-
sion order as to those MemsTech products found to in-
fringe the ’231 or ’089 patents. 4
The Commission determined to review portions of the
ALJ’s Initial Determination and issued a notice specifying
the issues under review. 74 Fed. Reg. 11,748 (Mar. 19,
2009). The unreviewed portions of the Initial Determina-
tion became the decision of the Commission. J.A. 258; see
also Ajinomoto Co. v. Int’l Trade Comm’n, 597 F.3d 1267,
1272 (Fed. Cir. 2010). On June 11, 2009, the Commission
issued a notice of its final determination of violation of
§ 337, and on June 12, 2009, the Commission issued an
opinion setting forth the reasons for its determination.
The Commission issued a revised opinion on August 18,
2009, and a corrected revised opinion on August 21, 2009.
The Commission affirmed the ALJ’s determinations
under review, with certain modifications. Regarding the
’231 patent, the Commission, inter alia, affirmed the
determination that MemsTech’s accused products infringe
claims 1 and 2; affirmed the determination that Baum-
hauer did not anticipate claims 1 and 2; and affirmed the
4 A disputed issue involving MemsTech’s “chamber
chip” products is addressed infra.
9 MEMS TECH v. ITC
determination that Onishi did not render obvious claims 1
and 2.
Regarding the ’089 patent, the Commission, inter alia,
affirmed the construction of the claim term “electrically
coupled”; affirmed the construction of the claim term
“volume”; affirmed the determination that the accused
products infringe the asserted claims of the ’089 patent;
affirmed the determinations that Mullenborn does not
anticipate claims 1, 2, 9, 15, 17, 20, 28, and 29; affirmed
the determinations that Baumhauer alone, Baumhauer in
combination with Kress, and Onishi 5 did not render
obvious claims 1, 2, 9, 15, 17, 20, 28, and 29; and affirmed
the determinations that Knowles’ SiSonic products prac-
tice the ’089 patent and that a domestic industry exists
for this patent.
Accordingly, the Commission found a violation of
§ 337. The Commission’s determination became final
following the sixty-day Presidential review period under
19 U.S.C. § 1337(j)(4). MemsTech appealed. We have
jurisdiction under 28 U.S.C. § 1295(a)(6).
DISCUSSION
We review the Commission’s final determinations un-
der the standards of the Administrative Procedure Act
(“APA” or “Act”). See 19 U.S.C. § 1337(c) (stating that
“[a]ny person adversely affected by a final determination
of the Commission” may appeal to this court “for review in
accordance with chapter 7 of Title 5”). Under the Act,
rulings of law are reviewed de novo, and findings of fact
are reviewed for substantial evidence. Ajinomoto, 597
5 The ALJ found that independent claim 1 of the
’089 patent was not obvious over Onishi. The Commission
supplemented this finding with further findings that
dependent claims 2, 9, 15, 17, 20, 28, and 29 were also not
obvious over Onishi. J.A. 385.
MEMS TECH v. ITC 10
F.3d at 1272; OSRAM GmbH v. Int’l Trade Comm’n, 505
F.3d 1351, 1355 (Fed. Cir. 2007). Substantial evidence is
“‘such relevant evidence as a reasonable mind might
accept as adequate to support a conclusion.’” Id. (quoting
Consol. Edison Co. v. NLRB, 305 U.S. 197, 217 (1938)).
I. Claim Construction
Claim construction is a matter of law subject to de
novo review. Cybor Corp. v. FAS Techs., Inc., 138 F.3d
1448, 1454-55 (Fed. Cir. 1998) (en banc). To ascertain the
scope and meaning of the claims, we consider the claim
language, the specification, the prosecution history, and
relevant extrinsic evidence. Phillips v. AWH Corp., 415
F.3d 1303, 1314-17 (Fed. Cir. 2005) (en banc). “[A]bsent
contravening evidence from the specification or prosecu-
tion history, plain and unambiguous claim language
controls the construction analysis.” DSW, Inc. v. Shoe
Pavilion, Inc., 537 F.3d 1342, 1347 (Fed. Cir. 2008).
Extrinsic evidence “may be used only to help the court
come to the proper understanding of the claims; it may
not be used to vary or contradict the claim language.”
Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1584
(Fed. Cir. 1996).
The doctrine of claim differentiation assists in deter-
mining whether a limitation in a dependent claim should
be read into an independent claim. Liebel-Flarsheim Co.
v. Medrad, Inc., 358 F.3d 898, 910 (Fed. Cir. 2004)
(“[W]here 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.”).
Moreover, an applicant’s statements during prosecution
history may result in a disclaimer of claim scope; but any
such remark must constitute “a sufficiently clear and
deliberate statement to meet the high standard for find-
ing a disclaimer of claim scope.” Honeywell Int’l, Inc. v.
11 MEMS TECH v. ITC
Universal Avionics Sys. Corp., 493 F.3d 1358, 1365 (Fed.
Cir. 2007).
“[A] preamble is a claim limitation if it recites essen-
tial structure or steps, or if it is necessary to give life,
meaning, and vitality to the claim.” Poly-Am., L.P. v.
GSE Lining Tech., Inc., 383 F.3d 1303, 1309 (Fed. Cir.
2004) (internal quotation marks omitted). There is “[n]o
litmus test” for determining whether a preamble limits
claim scope; however, “when reciting additional structure
or steps underscored as important by the specification,
the preamble may operate as a claim limitation.” Cata-
lina Marketing Int’l, Inc. v. Coolsavings.com, Inc., 289
F.3d 801, 808 (Fed. Cir. 2002). “The effect preamble
language should be given can be resolved only on review
of the entirety of the patent to gain an understanding of
what the inventors actually invented and intended to
encompass by the claim.” Corning Glass Works v. Sumi-
tomo Elec. U.S.A., Inc., 868 F.2d 1251, 1257 (Fed. Cir.
1989).
A. The ’089 Patent
1. “Volume”
Regarding the ’089 patent, MemsTech appeals the
Commission’s determination that “volume” in claim 1 of
the ’089 patent means “a space defined by the transducer
and one of the first member or the second member.” J.A.
86. Relying on C.R. Bard, Inc. v. U.S. Surgical Corp., 388
F.3d 858 (Fed. Cir. 2004), MemsTech argues that the
Commission’s claim construction of the term “volume” is
erroneous, because the abstract and summary sections of
the specification require that the “volume” is formed from
a recess or hole in the substrate over which the trans-
ducer is mounted. MemsTech further contends that the
Commission’s reliance on the doctrine of claim differentia-
tion in its construction of the term “volume” was mis-
MEMS TECH v. ITC 12
placed, because the language in dependent claim 3, which
adds a limitation that the volume includes a recess
formed in the surface, is narrower than the “volume” of
independent claim 1, which encompasses a recess, hole, or
cavity in the substrate. MemsTech asserts that the
proper construction of “volume” is “a space that resides at
least partly within (for example in a recess or hole in) the
substrate (second member) or the cover (first member)
and is at least partly bounded by the transducer.” Non-
confidential Br. Appellant MEMS Technology Berhad 24,
2010 WL 1807466 (Mar. 25, 2010) (hereinafter, “Appel-
lant’s Br.”).
In response, the Commission and Knowles argue that
the Commission correctly construed the term “volume.”
They assert that MemsTech’s proposed construction
would add a limitation not present in claim 1 and would
exclude certain embodiments described in the specifica-
tion. They contend that C.R. Bard does not compel Mem-
sTech’s proposed claim construction because, unlike in
C.R. Bard, the embodiments disclosed in the ’089 patent
do not universally contain the additional limitation pro-
posed by MemsTech. The Commission and Knowles also
point out that the doctrine of claim differentiation sup-
ports the Commission’s construction, because dependent
claims 3 and 4 further limit claim 1 by specifying particu-
lar methods of forming the volume.
We agree with the Commission and Knowles that the
Commission correctly construed the term “volume.” As
the Commission noted, the specification discloses some
embodiments in which the “volume” is not formed from a
recess or hole in the substrate. For example, in describing
Figure 23, the specification states that “[t]he transducer
back volume 18 is formed by the back hole (mounted
down) of the silicon microphone only.” ’089 patent col.6
ll.59-60. Further, Figure 28 shows a transducer 58
13 MEMS TECH v. ITC
mounted on a substrate 46 using epoxy 86 and a retaining
ring 84; the transducer is shaped such that it creates a
volume between it and the substrate to which it is at-
tached, notwithstanding that substrate does not contain
any recess or hole. Id. col.7 ll.29-51, Fig. 28. In other
words, in both of these embodiments, a volume is created
by the shape of the transducer, not by any recess or hole
in the substrate. We have cautioned that “a construction
that excludes a preferred embodiment ‘is rarely, if ever,
correct.’” C.R. Bard, 388 F.3d at 865 (quoting Vitronics,
90 F.3d at 1583). MemsTech does not dispute that its
proposed construction would exclude particular embodi-
ments from the specification, nor does it offer any justifi-
cation for this exclusion. The Commission’s construction
of the term “volume” comports with both the claim lan-
guage and the breadth of the specification, neither of
which supports the additional limitations that MemsTech
urges.
The Commission’s construction of “volume” is further
supported by the doctrine of claim differentiation. See
Phillips, 415 F.3d at 1315. Claim 3, which depends from
claim 1, adds the limitation “the volume includine [sic] a
recess formed in the surface.” Claim 4, which also de-
pends from claim 1, adds the limitation “the volume
including a hole through one of the first member or the
second member containing the surface.” Under Mem-
sTech’s proposed claim construction, which would effec-
tively limit the “volume” of claim 1 to embodiments
including a recess or hole in the substrate, dependent
claims 3 and 4 are essentially redundant. Such a con-
struction is disfavored, Liebel-Flarsheim, 358 F.3d at 910,
particularly where, as here, the construction would with-
out justification exclude embodiments in the specification.
We therefore decline to adopt MemsTech’s proposed claim
construction of the term “volume.”
MEMS TECH v. ITC 14
MemsTech misreads C.R. Bard in arguing that claim
1 must be limited to a scope commensurate with the
abstract or summary sections of the specification. In that
case, we addressed the question whether the claimed
“plug” should be construed as having a “pleated surface.”
In answering in the affirmative, we noted that both the
abstract and summary sections of the specification de-
scribed the plug as having a pleated surface. C.R. Bard,
388 F.3d at 860-61. MemsTech seizes on that aspect of
the case and argues that the abstract and summary
sections of the ’089 patent are dispositive as to the mean-
ing of “volume.” Yet MemsTech overlooks the fact that, in
C.R. Bard, we noted that “statements [in the specifica-
tion] describing preferred embodiments of the surface of
the plug universally describe a ‘pleated conical plug.’” Id.
at 866 (emphasis added). Here, in contrast, the general
language in the abstract and summary sections does not
represent the full scope of the embodiments in the specifi-
cation.
2. “Electrically Coupled”
MemsTech also appeals the Commission’s determina-
tion that “electrically coupled” in claim 1 of the ’089
patent means “arranged so that electrical signals may be
passed either directly, or indirectly via intervening cir-
cuitry, from one component to another.” MemsTech
argues that none of the parties proposed the Commis-
sion’s construction and that the Commission legally erred
by adopting its construction from a district court opinion
that construed a similar claim term in an unrelated
patent. MemsTech also contends that, during prosecu-
tion, the applicant distinguished prior art U.S. Patent
5,101,543 (“Cote”) on the basis that the invention claimed
in the application leading to the ’089 patent requires a
direct electrical connection, and that the patent exam-
iner’s reasons for allowance and the testimony of Mem-
15 MEMS TECH v. ITC
sTech’s expert further support this limitation. MemsTech
further asserts that the specification of the ’089 patent
discloses only a direct electrical connection between the
transducer and the substrate. Thus, MemsTech argues,
the Commission erred by ignoring the intrinsic evidence
and construing “electrically coupled” to include the indi-
rect passage of electrical signals via intervening circuitry.
The correct construction of “electrically coupled,” Mem-
sTech contends, is “the transducer is directly connected to
the patterned conductive layer on the substrate.” Appel-
lant’s Br. 30.
The Commission and Knowles disagree. They argue
that, given the lack of a special meaning for “electrically
coupled” in the claim language or specification, the Com-
mission correctly construed this term in accordance with
its plain and ordinary meaning. They contend that it was
not improper for the Commission to adopt a construction
that the parties did not propose. They further contend
that the prosecution history does not contradict the con-
struction by limiting the term to a direct electrical connec-
tion.
We agree with the Commission and Knowles, and we
affirm the Commission’s construction of the term “electri-
cally coupled” in claim 1 of the ’089 patent. Expert testi-
mony indicates that the ordinary meaning of this term “is
quite broad and includes indirect modes [of electrical
connection].” J.A. 3461. MemsTech has failed to rebut
the “heavy presumption” in favor of this ordinary mean-
ing as understood by one of ordinary skill in the art. Bell
Atl. Network Servs., Inc. v. Covad Commc’ns Grp., Inc.,
262 F.3d 1258, 1268 (Fed. Cir. 2001). Nowhere in the
specification is the claimed electrical coupling described
as “direct,” and nothing in the claim language or specifi-
cation suggests that “electrically coupled” should have
MEMS TECH v. ITC 16
any interpretation other than its plain meaning. See
DSW, 537 F.3d at 1347.
MemsTech relies on the testimony of its expert, who
stated that “flip chip bump bonding, the preferred method
of electrical coupling” disclosed in the ’089 patent, would
result in a “direct connection” between the transducer and
the substrate. J.A. 2061; see also ’089 patent col.3, ll.61-
63. Yet MemsTech offers no rationale why one of ordinary
skill would understand “electrically coupled” as limited to
this preferred method. MemsTech has not demonstrated
that one of ordinary skill would understand the specifica-
tion to “reveal an intentional disclaimer, or disavowal, of
claim scope” or to provide a “special definition” for this
term. Phillips, 415 F.3d at 1316. It is not dispositive that
the specification may describe or depict one or more
preferred embodiments; as we noted in Phillips, “although
the specification often describes very specific embodi-
ments of the invention, we have repeatedly warned
against confining the claims to those embodiments.” Id.
at 1323.
Regarding the prosecution history of the ’089 patent,
the Commission did not err by concluding that the appli-
cant’s arguments do not limit the “electrically coupled”
claim term to a direct electrical connection. MemsTech
refers to the portion of the prosecution history in which
the applicant distinguished the claimed invention from
Cote:
The electret transducer taught by Cote is not
mounted or attached to a surface formed on one of
[the] first and second members. Instead, Cote
teaches an electret microphone that mounts to an
upper rim portion of a base (col. 3, line 30) and an
annular shoulder of a cap (col. 3, line 58). Thus,
Cote does not teach the claimed structure wherein
17 MEMS TECH v. ITC
the microphone transducer is attached to a sur-
face of one of the first and second members.
Cote does not teach or suggest that the
transducer is mounted to a surface. As such, Cote
cannot teach the further claimed electrical con-
nection between the transducer and the at least
one patterned conductive layer formed on the sur-
face to which it is attached. In fact, Cote fails to
teach or suggest the formation of a patterned con-
ductive layer associated with any part of the de-
scribed electret microphone.
J.A. 1705-06. MemsTech characterizes the applicant’s
argument as an attempt to distinguish Cote as lacking a
direct electrical connection. As the above passage demon-
strates, however, the applicant distinguished Cote based
on the fact that Cote’s transducer is not attached to a
surface of one of the first member or the second member,
as claim 1 requires. As the Commission correctly deter-
mined, the sentence in the applicant’s remarks referring
to the “electrical connection” merely states that Cote
cannot teach the electrical connection between the trans-
ducer and the patterned conductive layer formed on the
surface to which it is attached, because Cote does not
teach that the transducer is mounted to a surface. In
sum, the disputed prosecution history does not contain a
“clear and deliberate statement” that meets the high
standard for a disclaimer of claim scope. Honeywell, 493
F.3d at 1365. In addition, we are not persuaded by Mem-
sTech’s arguments regarding the patent examiner’s stated
reasons for allowance, J.A. 1865, and the testimony of its
expert, J.A. 2129, which simply reiterate MemsTech’s
mischaracterization of the prosecution history.
Having determined that the plain and ordinary mean-
ing of the “electrically coupled” claim term should apply,
MEMS TECH v. ITC 18
the Commission considered relevant extrinsic evidence—
in the form of two district court opinions—to aid in con-
struction of this term. MemsTech contends this was
error. We disagree. Related judicial holdings can be an
appropriate form of non-binding extrinsic evidence in a
claim construction analysis. V-Formation, Inc. v. Benet-
ton Group SpA, 401 F.3d 1307, 1312 (Fed. Cir. 2005)
(“The district court properly referred to a related, non-
binding judicial opinion to support its independent con-
clusion in this case.”). Importantly, the Commission
turned to the extrinsic evidence only after concluding that
the intrinsic evidence did not provide any special meaning
for the disputed claim term. And the Commission there-
after in construing the term adhered to the rule that
extrinsic evidence may not be used to vary or contradict
the claim language. Vitronics, 90 F.3d at 1584. The two
judicial opinions the ALJ reviewed construed the term
“electrically coupled” according to its plain and ordinary
meaning; the constructions applied in those cases did not
rely upon the intrinsic evidence, and MemsTech does not
argue otherwise. See Silicon Graphics, Inc. v. n Vidia
Corp., 58 F. Supp. 2d 331, 345-46 (D. Del. 1999) (applying
the “ordinary and accustomed meaning” of the term
“coupled” as used in an electronics context, because
“[n]either the claim nor the specification defines the
term”); GSK Techs. Inc. v. Eaton Elec. Inc., Nos.
606CV358, 606CV360, 606CV361, 2008 WL 906713, at *5
(E.D. Tex. Apr. 1, 2008) (“As the intrinsic evidence does
not provide a special meaning for ‘electrically coupled,’ its
plain and ordinary meaning applies.”).
Finally, the fact that neither party advanced the
claim construction adopted by the Commission is not legal
error, as MemsTech contends. As we stated in Exxon
Chemical Patents, Inc. v. Lubrizol Corp., “the trial judge
has an independent obligation to determine the meaning
19 MEMS TECH v. ITC
of the claims, notwithstanding the views asserted by the
adversary parties.” 64 F.3d 1553, 1555 (Fed. Cir. 1995).
We therefore conclude that the Commission’s construction
of the claim term “electrically coupled,” as used in claim 1
of the ’089 patent, is correct.
B. The ’231 Patent
1. Claim Preambles
Regarding the ’231 patent, MemsTech appeals the
Commission’s determination on the limiting effect of the
preambles of claims 1 and 2. MemsTech argues that
“microelectromechanical system package” is not necessary
to give meaning to claims 1 and 2 of the ’231 patent,
because it adds nothing beyond the elements already
present in the claims. MemsTech thus contends that,
contrary to the Commission’s determination, the pream-
bles should not be construed as claim limitations.
In response, the Commission and Knowles argue that
the Commission correctly found that the preambles in
question are limitations. They contend that the Commis-
sion properly considered the intrinsic and extrinsic evi-
dence and correctly concluded that the “package” term
adds a limitation not otherwise present in the claim body.
We conclude that the Commission correctly deter-
mined that the disputed preambles are claim limitations.
“[W]hen the preamble is essential to understand limita-
tions or terms in the claim body, the preamble limits
claim scope.” Catalina Marketing, 289 F.3d at 808. The
body of claim 1 lists a microphone, a substrate, a cover,
and a housing formed by connecting the cover and the
substrate. The body of claim 2 lists a microphone, a
substrate, and a cover. As the Commission correctly
concluded, J.A. 49, the specification describes mounting
the MEMS “packages” of the invention on end-users’
MEMS TECH v. ITC 20
printed circuit boards (“PCBs”), ’231 patent col.3 ll.3-16.
Indeed, the essence of the invention claimed in the ’231
patent is the containment of the components in a “pack-
age.” See, e.g., ’231 patent title (“Microelectromechanical
System Package with Environmental and Interference
Shield” (emphasis added)); col.1 ll.8-12, 36-41; col.3 ll.3-4;
col.4 ll.40-43; col.5 ll.2-5. The requirement that the
components listed in the claim body come together to form
a mountable package is thus an “important characteristic
of the claimed invention.” Poly-Am., 383 F.3d at 1310.
Yet, standing alone, the bodies of claims 1 and 2 do not
require that the listed components come together in this
way to constitute a package. For this reason, the Com-
mission determined that the preamble term “microelec-
tromechanical system package” adds a limitation that is
not otherwise present in the claim and is necessary to
give meaning to the claim. See Catalina Marketing, 289
F.3d at 808. The Commission did not legally err in its
determination.
2. “Electrically Coupled”
The Commission construed the term “electrically cou-
pled” in claim 2 of the ’231 patent to have the same mean-
ing as in claim 1 of the ’089 patent, described supra. In
opposing Commerce’s construction, MemsTech repeats
arguments it made for the ’089 patent. MemsTech ar-
gues, in particular, that the specification of the ’231
patent, like that of the ’089 patent, discloses only direct
electrical connections, and therefore the construction of
“electrically coupled” should be so limited.
The Commission and Knowles argue, as they did for
the ’089 patent, that the specification does not provide
any special meaning for “electrically coupled,” and there-
fore its plain and ordinary meaning should apply.
Knowles also argues (and MemsTech does not attempt to
21 MEMS TECH v. ITC
rebut) that the two asserted patents do not share a prose-
cution history, and thus that MemsTech’s arguments
regarding the prosecution history of the ’089 patent do not
apply to the ’231 patent.
We agree with the Commission and Knowles. We dis-
cussed above in connection with the ’089 patent why the
Commission did not err in its construction of the term
“electrically coupled.” Nowhere in the specification of the
’231 patent is the claimed electrical coupling described as
“direct,” and nothing in the claim language or specifica-
tion suggests that “electrically coupled” should have any
interpretation other than its plain meaning. See DSW,
537 F.3d at 1347. MemsTech advances no additional
arguments for the ’231 patent beyond those it presented
for the ’089 patent. Moreover, its position here is even
weaker because it does not argue that the prosecution
history of the ’089 patent is relevant to the construction of
this claim term in the ’231 patent. We perceive no mate-
rial difference between the specifications or claims of
these two patents that would warrant different treatment
of the same “electrically coupled” claim term. We there-
fore conclude that the Commission did not err in constru-
ing “electrically coupled” in claim 2 of the ’231 patent.
II. Infringement
On appeal, MemsTech does not dispute that under the
Commission’s constructions of the disputed claim terms
its accused products infringe the asserted claims. Be-
cause we affirm the Commission’s claim constructions, we
likewise affirm the determination that MemsTech’s
accused products infringe the asserted claims of the ’089
and ’231 patents. 6
6 We address MemsTech’s “chamber chip” products
below.
MEMS TECH v. ITC 22
III. Validity
A United States patent is presumed valid under 35
U.S.C. § 282, and a party asserting invalidity as a defense
to infringement must present clear and convincing evi-
dence that the patent is invalid. Metabolite Labs., Inc. v.
Lab. Corp. of Am. Holdings, 370 F.3d 1354, 1365 (Fed.
Cir. 2004). A claim is invalid under § 102 if a prior art
document discloses every element of the claimed inven-
tion, either expressly or inherently. Adv. Display Sys.,
Inc. v. Kent State Univ., 212 F.3d 1272, 1282 (Fed. Cir.
2000). Anticipation under 35 U.S.C. § 102 is a question of
fact, which we review for substantial evidence. Vizio, Inc.
v. Int’l Trade Comm’n, 605 F.3d 1330, 1342 (Fed. Cir.
2010).
A claim is invalid for obviousness if, to one of ordinary
skill in the pertinent art, “the differences between the
subject matter sought to be patented and the prior art are
such that the subject matter as a whole would have been
obvious at the time the invention was made.” 35 U.S.C.
§ 103(a) (2006); see also KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 406-07 (2007). “Obviousness is a question of law
based on underlying factual inquiries, and thus we review
the Commission’s ultimate determination de novo and
factual determinations for substantial evidence.” Vizio,
605 F.3d at 1342. Underlying factual inquiries in the
obviousness analysis include: (1) the scope and content of
the prior art; (2) the level of ordinary skill in the art; (3)
the differences between the prior art and the claimed
invention; and (4) the extent of any objective indicia of
nonobviousness. Crocs, Inc. v. Int’l Trade Comm’n, 598
F.3d 1294, 1308 (Fed. Cir. 2010).
23 MEMS TECH v. ITC
A. The ’089 Patent
1. Anticipation
MemsTech appeals the Commission’s determination
that claims 1, 2, 9, 15, 17, 28, and 29 of the ’089 patent
are not invalid under § 102 for anticipation by Mullen-
born. MemsTech argues that Figure 4 of Mullenborn
discloses every limitation in claim 1 of the ’089 patent.
MemsTech contends that the Commission erred by disre-
garding the testimony of Knowles’ expert and finding that
Mullenborn does not disclose a “chamber” as claimed in
claim 1. Regarding claim 2, MemsTech asserts that the
Commission erred by concluding that Mullenborn does
not disclose a cover coupled to the substrate. Regarding
claims 9, 15, 17, 28, and 29, MemsTech argues that the
parties agreed that Mullenborn discloses each additional
limitation of these dependent claims.
The Commission and Knowles respond that the Com-
mission correctly determined that Mullenborn does not
anticipate claim 1, and that its conclusion is supported by
substantial evidence—both intrinsic (the language of
claim 1) and extrinsic (the dictionary definition of the
term “chamber”). They contend that MemsTech mischar-
acterizes the testimony of Knowles’ expert. They argue
that the Commission’s construction of claim 2 is similarly
supported by intrinsic and extrinsic evidence. Regarding
claims 9, 15, 17, 28, and 29, the Commission and Knowles
argue that, because Mullenborn does not anticipate claim
1, Mullenborn cannot as a matter of law anticipate claims
that depend from claim 1.
We agree with the Commission and Knowles that
substantial evidence supports the Commission’s finding
that Mullenborn does not anticipate claim 1 or asserted
dependent claims 2, 9, 15, 17, 28, or 29. Regarding claim
1, the Commission considered the limitation that the
MEMS TECH v. ITC 24
package comprises “a chamber being defined by the first
member and the second member.” Neither party argued
that “chamber” carried any special meaning in the context
of the ’089 patent, and the Commission did not err by
applying the term’s ordinary meaning, “a room or a natu-
ral or artificial enclosed space or cavity.” J.A. 113 (quot-
ing Webster’s New Collegiate Dictionary 183 (1979)); see
also Phillips, 415 F.3d at 1314 (“In some cases, the ordi-
nary meaning of claim language as understood by a
person of skill in the art may be readily apparent even to
lay judges, and claim construction in such cases involves
little more than the application of the widely accepted
meaning of commonly understood words. In such circum-
stances, general purpose dictionaries may be helpful.”
(citation omitted)).
The Commission further found that Figure 4 of
Mullenborn (depicted infra) contains, inter alia, a lid 5, a
transducer 1, a substrate 2, and an EMI shield 16. The
Commission determined that, contrary to MemsTech’s
arguments, substrate 2 and lid 5 do not form a “chamber.”
Figure 4
25 MEMS TECH v. ITC
The Commission’s finding is supported by substantial
evidence, including the disclosure in Mullenborn, the
language of claim 1, and the ordinary meaning of the term
“chamber.” As the Commission correctly found, and as
Knowles’ expert explained, J.A. 1180-81, lid 5 and sub-
strate 2 do not by themselves define a chamber; rather, in
order to form an enclosed chamber, a third element (e.g.,
the EMI shield 16) would be required to enclose the sides
of such chamber. Substantial evidence thus supports the
finding that Mullenborn does not teach the limitation of
claim 1 requiring a chamber that is defined by the two
specified members.
The Commission did not erroneously disregard certain
testimony of Knowles’ expert, as MemsTech contends.
MemsTech unfairly characterizes that testimony as
stating that all MEMS microphone packages would have
a chamber. In fact, the focus of that testimony was the
meaning of the claim term “volume.” J.A. 2227. At no
point did Knowles’ expert state that all MEMS micro-
phone packages would have a chamber defined by the
first and second members, as claim 1 requires. The
testimony thus does not contradict the Commission’s
finding that Mullenborn does not disclose the “chamber”
as claimed in claim 1 of the ’089 patent.
Regarding claim 2, substantial evidence supports the
Commission’s finding that Mullenborn does not disclose “a
cover coupled to the substrate to define the chamber.”
Neither party argued that “coupled” has a special mean-
ing in the context of the ’089 patent, and the Commission
properly applied this term’s plain and ordinary meaning,
“fastened together.” J.A. 115 (quoting Webster’s New
Collegiate Dictionary 258 (1979)); see also Phillips, 415
F.3d at 1314. As the Commission correctly found, the lid
5 and substrate 2 are at opposite ends of the structure
MEMS TECH v. ITC 26
depicted in Figure 4 of Mullenborn; they are not coupled
or fastened together to form a chamber.
Regarding the remaining asserted claims of the ’089
patent, all of which depend from independent claim 1,
MemsTech argues only that, because claim 1 is unpat-
entable, so too are the asserted dependent claims. How-
ever, because substantial evidence supports the finding
that Mullenborn does not anticipate claim 1, this refer-
ence also cannot anticipate asserted dependent claims 2,
9, 15, 17, 28, or 29, which depend from claim 1 and con-
tain all the limitations of claim 1. See Hartness Int’l, Inc.
v. Simplimatic Eng’g Co., 819 F.2d 1100, 1108 (Fed. Cir.
1987).
2. Obviousness
MemsTech challenges the Commission’s determina-
tions that the asserted claims of the ’089 patent were not
obvious over either (1) Baumhauer alone or in view of
Kress; or (2) Onishi alone. MemsTech alleges error in
specific aspects of the Commission’s obviousness determi-
nations, which we address in turn below.
a. Baumhauer Alone or In View of Kress
Regarding Baumhauer, MemsTech argues that, even
if the preamble of claim 1 is limiting, Baumhauer’s Figure
6 teaches that surface mounting is an option, and Kress
shows that surface mounting would have been an obvious
modification to one of ordinary skill. MemsTech further
contends that dependent claims 2, 9, 15, 17, 20, 28, and 29
were also obvious over Baumhauer (with or without
Kress), because these claims add no nonobvious limita-
tions to claim 1.
The Commission and Knowles argue in response that
the Commission correctly found that Baumhauer does not
teach a mountable package, as the preamble of claim 1
27 MEMS TECH v. ITC
requires. Moreover, they contend, Kress teaches packag-
ing only in the context of automotive silicon pressure
sensors, not as applied to surface mountable packages for
microphones. They argue that MemsTech failed to pro-
vide clear and convincing evidence of a reason why one of
ordinary skill would combine Baumhauer with Kress to
create the invention claimed in the ’089 patent. They
further contend that because claim 1 was nonobvious,
claims 2, 9, 15, 17, 20, and 28, which depend from claim 1,
were also nonobvious.
We agree with the Commission and Knowles. Baum-
hauer does not teach a “surface mountable package.” As
the Commission found, Baumhauer Figure 6 discloses a
microphone attached directly to a circuit board, not a unit
with components that come together to form a mountable
package. J.A. 382-83. The testimony of Knowles’ expert
provides substantial supporting evidence. J.A. 1129
(“Baumhauer Figure 6 is an example of attaching the
microphone device to an end-user board and then attach-
ing a protective cover onto that portion of the PC board
where the microphone resides. Therefore, Baumhauer
discloses a device, not a package.”).
Kress does not cure the deficiencies of Baumhauer.
Titled “Integrated Silicon Pressure Sensor for Automotive
Application with Electronic Trimming,” Kress mentions
packaging only briefly, and does so in the context of
pressure sensors for automobiles—not surface mountable
packages for microphones. J.A. 1386-87. The Commis-
sion correctly found that Kress lacked detail sufficient to
permit one of ordinary skill to adapt it to an acoustic
MEMS package. J.A. 167-68. The expert testimony
indicated that “packaging design is device and application
specific.” J.A. 1126. The Commission did not err in
determining that MemsTech failed to present clear and
convincing evidence that Baumhauer, alone or in view of
MEMS TECH v. ITC 28
Kress, rendered claim 1 obvious. Because independent
claim 1 was not obvious over Baumhauer alone or in view
of Kress, the Commission correctly determined that
dependent claims 2, 9, 15, 17, 20, 28, and 29 were also not
obvious. See Hartness, 819 F.2d at 1108.
b. Onishi
Regarding Onishi, MemsTech argues that, although
Onishi does not disclose an aperture as claim 1 requires,
the addition of an aperture to the device depicted in
Onishi’s Figure 1 would have been an obvious modifica-
tion. MemsTech also argues that the Commission erred
because Onishi does not teach away from including an
aperture and does not teach a transducer mounted on a
substrate. MemsTech contends that the Commission
failed to recognize the ability of a person of ordinary skill
to modify Onishi to arrive at the invention claimed in the
’089 patent. Finally, MemsTech contends that dependent
claims 2, 9, 15, 17, 20, 28, and 29 add no limitations that
render these claims patentable over Onishi.
The Commission and Knowles argue that substantial
evidence supports the Commission’s findings regarding
the differences between the device taught in Onishi and
the invention claimed in the ’089 patent. They also argue
that substantial evidence supports the Commission’s
finding that Onishi teaches away from the claimed inven-
tion. They further contend that expert testimony indi-
cates that one of ordinary skill would not have modified
Onishi to make the invention claimed in the ’089 patent.
Again, we agree with the Commission and Knowles.
As its title indicates, Onishi discloses a “Surface Acoustic
Wave Device” (“SAW device”), not a MEMS microphone
package. Knowles’ expert testified that a SAW device is
designed to detect surface vibrations, not sound waves.
J.A. 1147-48. Onishi does not contain a “transducer being
29 MEMS TECH v. ITC
responsive to sound pressure levels of an acoustic signal,”
as claim 1 requires, and the expert testimony indicates
that modifying the Onishi device to incorporate such a
microphone would cause “serious problems.” J.A. 2476.
Expert testimony also supports the finding that SAW
devices do not contain acoustic ports because external
sound waves are unwanted “‘noise’ that must be filtered
out.” J.A. 1148. Consistent with this testimony, Onishi
expressly teaches away from creating an aperture, as the
Commission correctly found. See In re Gurley, 27 F.3d
551, 553 (Fed. Cir. 1994) (“A reference may be said to
teach away when a person of ordinary skill, upon reading
the reference, would be discouraged from following the
path set out in the reference, or would be led in a direc-
tion divergent from the path that was taken by the appli-
cant.”). Throughout the specification Onishi describes its
SAW device as “sealed in an airtight condition,” thus
teaching away from incorporating an aperture.
MemsTech failed to provide clear and convincing evi-
dence that one of ordinary skill would have modified
Onishi to arrive at the invention in claim 1 of the ’089
patent. Moreover, because claim 1 was nonobvious over
Onishi, so too were claims 2, 9, 15, 17, 20, 28, and 29,
which depend from claim 1. See Hartness, 819 F.2d at
1108. Thus, the Commission did not err in determining
that these claims were nonobvious over Onishi.
B. The ’231 Patent
1. Anticipation
MemsTech argues that Baumhauer anticipates claims
1 and 2 of the ’231 patent. MemsTech asserts that, for
invalidity purposes, the Commission applied a narrow
definition of “microelectromechanical system package” by
requiring that a package be capable of two levels of elec-
MEMS TECH v. ITC 30
trical connection—one from the device to the package, and
one from the package to an external circuit or other
system. In contrast, according to MemsTech, the Com-
mission applied a broader definition of this claim term for
infringement purposes.
The Commission and Knowles argue in response that
the Commission consistently applied its construction of
“microelectromechanical system package,” which requires
two levels of electrical connection. They argue that this
definition is supported by substantial evidence and that
the Commission did not err in its application.
We agree with the Commission and Knowles. In con-
cluding that the term “microelectromechanical system
package” in the preamble of claims 1 and 2 of the ’231
patent was a limitation, the Commission found, based on
substantial evidence in the form of testimony from
Knowles’ expert, that “one of ordinary skill in the art
would know that a ‘package’ is a self-contained unit that
has two levels of connection, to the device and to a circuit
(or other system). If there is only one connection level,
then there is no package.” J.A. 49; see also J.A. 3420.
The Commission applied this finding in its infringement
determination, which referenced the testimony of
Knowles’ expert. J.A. 212, 217; see also J.A. 3426, 3420.
The Commission also applied this finding in its de-
termination that Baumhauer did not anticipate claims 1
or 2, because it does not disclose a MEMS “package.” The
Commission cited the testimony of Knowles’ expert, who
agreed that Baumhauer cannot anticipate the claims of
the ’231 patent because it does not disclose first and
second levels of electrical connection. J.A. 377-78 (citing
J.A. 2470); see also J.A. 1129, 3420. We therefore reject
MemsTech’s argument and conclude that the Commission
consistently applied its definition of “microelectrome-
31 MEMS TECH v. ITC
chanical system package” in concluding that Baumhauer
did not anticipate claims 1 or 2 of the ’231 patent.
2. Obviousness
MemsTech argues that Onishi rendered obvious
claims 1 and 2 of the ’231 patent. Specifically, MemsTech
contends that it would have been obvious to modify the
SAW device in Onishi Figure 1 to include an acoustic port
in the cover. In addition, MemsTech faults the Commis-
sion for finding that Onishi teaches away from adding an
acoustic port to Onishi. Finally, MemsTech cites three
additional prior art references (Kress, discussed supra;
Peterson, J.A. 1390-95, and Sjursen, J.A. 1340-72), as
allegedly supporting its contention that it would have
been obvious to modify Onishi.
In response, the Commission and Knowles contend
that substantial evidence, including the testimony of
Knowles’ expert, supports the Commission’s factual
finding that Onishi taught away from the inclusion of an
acoustic port. Knowles also argues that Onishi taught a
SAW device, not a MEMS microphone as required by the
preamble of claims 1 and 2. The Commission argues that
MemsTech waived arguments regarding the three addi-
tional references, and Knowles asserts that such refer-
ences do not amount to clear and convincing proof of
obviousness.
We reject MemsTech’s arguments and hold that
claims 1 and 2 were not obvious over Onishi. First, we
note that claims 1 and 2 require a MEMS microphone,
whereas Onishi discloses a SAW device. According to the
expert testimony, these two types of devices have “dia-
metrically opposed” packaging requirements, J.A. 1147-
48, thus lending substantial evidentiary support to the
Commission’s findings regarding the differences between
these devices. J.A. 139.
MEMS TECH v. ITC 32
In addition, the Onishi SAW device lacks an acoustic
port. Claim 1 requires an “acoustic port,” which the
parties agree is the same as the “aperture” in claim 1 of
the ’089 patent. Although claim 2 does not explicitly
require an acoustic port, the Commission correctly noted
that this claim requires a “chamber providing an acoustic
front volume for the silicon-based microphone,” meaning
that an acoustic signal must be able to reach the claimed
silicon microphone by way of an acoustic port. J.A. 140.
As discussed above in connection with the ’089 patent,
MemsTech did not present clear and convincing evidence
that one of ordinary skill would have modified the SAW
devices taught by Onishi, which were intended to remain
sealed in an airtight chamber, to include an acoustic port.
See Gurley, 27 F.3d at 553. The Commission correctly
concluded that Onishi did not render obvious claims 1 and
2 of the ’231 patent.
Even if MemsTech’s argument regarding the three
additional references was not waived, 7 we conclude that
MemsTech has failed to present clear and convincing
evidence indicating that one of ordinary skill would have
7 The Commission contends that MemsTech’s ar-
gument regarding the three additional references was
waived, because it failed to raise the argument before the
ALJ and again failed to raise it in its petition for review of
the ALJ’s final Initial Determination. See Nonconfiden-
tial Br. of Appellee Int’l Trade Comm’n 51-52, 2010 WL
2968757 (July 6, 2010). MemsTech does not dispute these
contentions, but instead points out that the Commission
chose to review the issue on its own initiative, pursuant to
19 C.F.R. § 210.43(b)(2). Reply Br. of Appellant Mems
Technology Berhad 21, 2010 WL 3389902 (Aug. 6, 2010).
Although MemsTech is correct that the Commission
indicated its intent to review this issue, J.A. 302 at (1)(c),
MemsTech fails to acknowledge that the Commission
never in fact reviewed the three additional references,
J.A. 374 at (1)(c).
33 MEMS TECH v. ITC
modified Onishi to add an acoustic port to a SAWS device.
None of the three additional references relates to a MEMS
microphone device. Moreover, regarding the ’231 patent,
MemsTech’s expert provided only brief, conclusory testi-
mony regarding each of these additional references indi-
vidually, not in combination with one another or with
Onishi. We decline MemsTech’s invitation to reconstruct
the claimed invention with hindsight using these dispa-
rate prior art documents. See Grain Processing Corp. v.
Am. Maize-Prods. Co., 840 F.2d 902, 907 (Fed. Cir. 1988)
(“Care must be taken to avoid hindsight reconstruction by
using the patent in suit as a guide through the maze of
prior art references, combining the right references in the
right way so as to achieve the result of the claims in suit.”
(internal quotation marks omitted)).
C. MemsTech’s Additional Arguments for Obviousness
In a separate portion of its brief, MemsTech makes
additional obviousness arguments relating to both the
’089 and ’231 patents. In a section marked as confiden-
tial, MemsTech argues for obviousness with reference to
the way in which the inventor arrived at the inventions.
We reject MemsTech’s argument. Under 35 U.S.C.
§ 103(a), “[p]atentability shall not be negatived by the
manner in which the invention was made.”
MemsTech also asserts that the ’089 and ’231 patents
were obvious under KSR, 550 U.S. 398. Yet MemsTech
appears to misapprehend its burden for proving obvious-
ness. For instance, MemsTech contends: “The combina-
tions claimed in claims 1 and 2 of the ’231 patent include
only well known prior art elements, and there is no evi-
dence that the claimed combinations yield anything other
than a predictable result.” Appellant’s Br. at 59; see also
id. at 61 (making the same arguments regarding the ’089
patent). Yet MemsTech, as the accused infringer, bears
MEMS TECH v. ITC 34
the burden of producing evidence demonstrating obvious-
ness. Union Carbide Chems. & Plastics Tech. Corp. v.
Shell Oil Co., 308 F.3d 1167, 1187 (Fed. Cir. 2002) (“[A]
party seeking a judgment that a patent is obvious bears
the burden of demonstrating by clear and convincing
evidence that the teachings of the prior art would have
suggested the claimed subject matter to one of ordinary
skill in the art.”). MemsTech has not met that burden
here. In sum, the Commission correctly followed the
framework for applying the statutory language of § 103,
KSR, 550 U.S. 406-07, and did not err by concluding that
the asserted claims were nonobvious over the cited prior
art references.
IV. The Domestic Industry Requirement for the ’089
Patent
A requirement for a patent-based action under 19
U.S.C. § 1337 is that a domestic industry “relating to the
articles protected by the patent . . . exists or is in the
process of being established.” 19 U.S.C. § 1337(a)(2); see
also Alloc, Inc. v. Int’l Trade Comm’n, 342 F.3d 1361, 1375
(Fed. Cir. 2003). The determination whether an industry
relates to a protected product is referred to as the “techni-
cal prong” of the domestic industry requirement. Id. To
meet the technical prong, the domestic product must be
covered by the asserted claims; “the test ‘is essentially the
same as that for infringement, i.e., a comparison of do-
mestic products to the asserted claims.’” OSRAM, 505
F.3d at 1359 (quoting Alloc, 342 F.3d at 1375)).
MemsTech argues that Knowles fails to satisfy the
technical prong of the domestic industry requirement for
the ’089 patent. As the Commission and Knowles cor-
rectly point out, however, MemsTech’s argument is based
solely on its contention that the Commission legally erred
in its construction of the claim terms “electrically coupled”
35 MEMS TECH v. ITC
and “volume.” As we explained above, the Commission
did not legally err in its construction of these terms. We
therefore reject MemsTech’s argument on this issue.
V. The Commission’s Determination Regarding the
“Chamber Chip” Products
MemsTech raises an additional issue regarding a
modified configuration of its products, referred to as the
“chamber chip” products. In his Initial Determination,
the ALJ concluded that MemsTech’s chamber-chip prod-
ucts were “not properly before me,” and thus “are not part
of this investigation.” J.A. 42 n.2, J.A. 252 n.33. How-
ever, the Commission, in its opinion dated June 12, 2009,
stated that the chamber-chip products “should not be
covered by the Commission exclusion order.” J.A. 327.
Pursuant to 19 C.F.R. § 210.47, Knowles requested recon-
sideration of the chamber-chip issue in the Commission’s
order, and MemsTech opposed. The Commission granted
the request for reconsideration, and, in its revised opinion
dated August 19, 2009, wrote:
With respect to MemsTech’s “chamber chip” prod-
ucts, pursuant to Commission practice we are not
making a finding as to whether particular prod-
ucts not considered by the ALJ are or are not
within the scope of the order, but note that the or-
der generally covers products that infringe the
relevant patent claims.
J.A. 357. On appeal, MemsTech contends that the Com-
mission violated its duty under the APA by granting
Knowles’ petition for reconsideration under Rule 210.47.
The Commission and Knowles disagree. 8
8 At oral argument, counsel for Knowles contended
that the proper mechanism for determining whether
MemsTech’s chamber-chip products are within the scope
MEMS TECH v. ITC 36
Under the APA, “[t]he reviewing court shall . . . hold
unlawful and set aside agency action, findings, and con-
clusions found to be arbitrary, capricious, an abuse of
discretion, or otherwise not in accordance with law.” 5
U.S.C. § 706(2)(A) (2006). The scope of our review under
an arbitrary and capricious standard is narrow; we may
not substitute our judgment for that of the agency. Bu-
randt v. Dudas, 528 F.3d 1329, 1332 (Fed. Cir. 2008). In
reviewing an agency decision, we “‘must consider whether
the decision was based on a consideration of the relevant
factors and whether there has been a clear error of judg-
ment.’” Id. (quoting Bowman Transp., Inc. v. Ark.-Best
Freight Sys., Inc., 419 U.S. 281, 285 (1974)). “An abuse of
discretion occurs where the decision is based on an erro-
neous interpretation of the law, on factual findings that
are not supported by substantial evidence, or represents
an unreasonable judgment in weighing relevant factors.”
Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281
(Fed. Cir. 2005).
We conclude that the Commission did not violate the
APA by granting Knowles’ petition for reconsideration.
Rule 210.47 requires that a petition for reconsideration be
confined to new questions raised by the determination or
action at issue upon which the petitioner had no opportu-
nity to submit arguments. The Commission’s opinion
dated June 12, 2009, determined for the first time that
the chamber-chip products “should not be covered by the
Commission exclusion order.” Thus, it presented a new
question upon which Knowles had no previous opportu-
nity to submit arguments. Accordingly, the Commission’s
of the Commission’s limited exclusion order is to seek an
advisory opinion under 19 C.F.R. § 210.79 or a modifica-
tion of the order under 19 C.F.R. § 210.76. Oral arg. at
30:00-31:15, available at http://oralarguments.cafc.uscour
ts.gov/Audiomp3/2010-1018.mp3.
37 MEMS TECH v. ITC
decision to grant the petition under Rule 210.47 was not
arbitrary, capricious, an abuse of discretion, or otherwise
not in accordance with the law. See 5 U.S.C. § 706(2)(A).
We reject MemsTech’s argument that the Commission
violated the APA by granting Knowles’ petition.
CONCLUSION
For the foregoing reasons, we affirm the Commission’s
final determination of a violation of § 337.
AFFIRMED.