U.S. International Trade Commission

Publication 4159 September 2010

Washington, DC 20436

In the Matter of

Investigation No. 337-TA-629

Certain Silicon Microphone Packages 

and Products Containing 

the 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 4159 September 2010

In the Matter of

Investigation No. 337-TA-629

Certain Silicon Microphone Packages 

and Products Containing 

the Same


REVISED 

337 ofthe Tariff Act of 1930 (19 U.S.C. § 1337) in the importation into the United States, the 

sale for importation, and the sale within the United States after importation of certain silicon 

microphone packages or products containing same by reason of infringement of one or more of 

claims 1 and 2 of U.S. Patent No. 6,781,231 ("the '231 patent"), and claims 1,2,9, 10, 15, 17, 

20, 28, and 29 of U.S. Patent No. 7,242,089 ("the '089 patent"). The only named respondent is 

MemsTech. 

The evidentiary hearing in this investigation was held on September 22-25, 2008. On 

January 12,2009, the presiding administrative law judge ("ALJ") issued an Initial Determination 

on Violation of Section 337 and Recommended Determination on Remedy and Bond, finding a 

violation of section 337. All parties to this investigation, including the Commission investigative 

attorney, filed timely petitions for review of various portions of the final ID, as well as timely 

responses to the petitions. 

The Commission determined to review various portions of the final ID and issued a 

Notice to that effect dated March 13, 2009. 74 Fed Reg. 11748 (Mar. 19,2009). In the Notice, 

the Commission also set a schedule for the filing of written submissions on the issues under 

review, including certain questions posed by the Commission, and on remedy, the public interest, 

and bonding. The parties have briefed, with initial and reply submissions, the issues under 

review and the issues of remedy, the public interest, and bonding. 

On review, the Commission has determined as follows. 

(1) With respect to the '231 patent: 

(a) to affirm with modifications the ALJ's finding that MemsTech's 

accused products infringe claims 1 and 2 of the '231 patent; 

(b) to affirm with modifications the ALJ's determination that claims 1 and 

2 of the '231 patent are not invalid due to anticipation or obviousness; 

(2) With respect to the '089 patent: 

(a) to affirm the ALJ's construction of the term "electrically coupled"; 

(b) to affirm with modifications the ALJ's construction of the term 

"volume; " 

(c) to affirm with modifications the ALJ's finding that MemsTech accused 

products infringe the asserted claims of the '089 patent; 

(d) to affirm the ALJ's determination that Knowles SiSonic products 

practice claim 1 ofthe '089 patent; 

(e) to affirm with modifications the ALJ's determination that the asserted 

claims of the '089 patent are not invalid due to anticipation or obviousness; 

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REVISED 

(f) to affirm the ALl's determination that evidence shows that the 

commercial success of the SiSonic products is attributable to the '089 patent. 

(3) to affirm the ALJ on any other findings under review except insofar as they are 

inconsistent with the opinion of the Commission. 

The Commission determined that the appropriate form of relief in this investigation is a 

limited exclusion order prohibiting the unlicensed entry of silicon microphone packages that 

infringe claims 1 and 2 of U.S. Patent No. 6,781,231 and claims 1,2,9, 15, 17,20,28, and 29 of 

U.S. Patent No. 7,242,089, and that are manufactured abroad by or on behalf of, or imported by 

or on behalf of, MemsTech. 

The Commission further determined that the public interest factors enumerated in section 

337(d)(1) (19 U.S.C. § 1337(d)(I)) do not preclude issuance of the limited exclusion order. 

Finally, the Commission determined that there should be no bond during the period of 

Presidential review. The Commission's original order was delivered to the President and the 

United States Trade Representative on the day of its issuance. 

The Commission has therefore terminated this investigation. The authority for the 

Commission's determination is contained in section 337 of the Tariff Act of 1930, as amended 

(19 U.S.C. § 1337), and sections 210.41-.42, 210.50 of the Commission's Rules of Practice and 

Procedure (19 CFR § 210.41-.42, 210.50). 

By order of the Commission. 

lt~~ Marilyn . bbott 

Secretary to the Commission 

Issued: August 18, 2009 

3 
REVISED 

UNITED STATES INTERNATIONAL TRADE COMMISSION 

Washington, D.C. 

In the Matter of 

CERTAIN SILICON MICROPHONE 

PACKAGES AND PRODUCTS 

CONTAINING THE SAME 

LIMITED EXCLUSION ORDER 

Inv. No. 337-TA-629 

The Commission has determined that there is a violation of section 337 of the Tariff Act 

of 1930 (19 U.S.C. § 1337) in the unlawful importation, sale for importation, and sale after 

importation by MEMS Technology Berhad's ("MemsTech") silicon microphone packages that 

infringe claims 1 and 2 of U.S. Patent No. 6,781,231, and claims 1,2,9, 15, 17,20,28, and 29 of 

u.s. Patent No. 7,242,089. 

Having reviewed the record in this investigation, including the written submissions of the 

parties, the Commission has made its determination on the issues of remedy, the public interest, 

and bonding. The Commission has determined that the appropriate form of relief is a limited 

exclusion order prohibiting the unlicensed entry of infringing silicon microphone packages 

manufactured abroad by or on behalf of, or imported by or on behalf of MemsTech. 

The Commission has further determined that the public interest factors enumerated in 19 

U.S.C. § 1337(d) do not preclude issuance ofthe limited exclusion order and that respondent 

may import without posting bond during the period of Presidential review. 

Accordingly, the Commission hereby ORDERS that: 

1. Silicon microphone packages that are covered by claims 1 and 2 of U.S. Patent 
REVISED 

No. 6,781,231 and claims 1,2,9, 15, 17,20,28, and 29 of U.S. Patent No. 7,242,089, and that 

are manufactured abroad by or on behalf of, or imported by or on behalf of, MemsTech or any of 

their affiliated companies, parents, subsidiaries, or other related business entities, or their 

successors or assigns, shall be excluded from entry for consumption into the United States, entry 

for consumption from a foreign-trade zone, or withdrawal from a warehouse for consumption, for 

the remaining term of the patents except under license of the patent owner as provided by law. 

2. At the discretion of U.S. Customs and Border Protection ("CBP") and pursuant to 

procedures it establishes, persons seeking to import silicon microphone packages that are 

potentially subject to this Order may be required to certify that they are familiar with the terms of 

this Order, that they have made appropriate inquiry, and thereupon state that, to the best of their 

knowledge and belief, the products being imported are not excluded from entry under paragraph 

1 of this Order. At its discretion, CBP may require persons who have provided the certification 

described in this paragraph to furnish such records or analyses as are necessary to substantiate the 

certification. 

3. In accordance with 19 U.S.C. § 1337(1), the provisions of this Order shall not 

apply to silicon microphone packages that are imported by and for the use of the United States, or 

imported for, and to be used for, the United States with the authorization or consent of the 

Government. 

4. The Commission may modify this Order in accordance with the procedures 

described in Rule 210.76 of the Commission's Rules of Practice and Procedure, 19 C.F.R. 

§ 210.76. 
REVISED 

5. The Secretary shall serve copies of this Order upon each party of record in this 

investigation and upon the Department of Health and Human Services, the Department of 

Justice, the Federal Trade Commission, and CBP. 

6. Notice of this Order shall be published in the Federal Register. 

By Order of the Commission. 

Maril 

Secretary to the Commission 

Issued: August 18,2009 
Page 1 - Certificate of Service 

CERTAIN SILICON MICROPHONE PACKAGES AND 

PRODUCTS CONTAINING THE SAME 

337-TA-629 

PUBLIC CERTIFICATE OF SERVICE 

I, Marilyn R. Abbott, hereby certify that the attached REVISED NOTICE OF 

COMMISSION FINAL DETERMINATION OF VIOLATION OF SECTION 337; 

ISSUANCE OF A LIMITED EXCLUSION ORDER; TERMINATION OF 

INVESTIGATION has been served by hand upon the Commission Investigative 

Attorney" Mareesa Frederick, Esq., and the following parties as indicated, on 

AUG 1 ~ 2009 . 

FOR KNOWLES ELECTRONICS LLC: 

Lyle B. Vander Schaaf, Esq. 

BRYAN CAVE LLP 

1155 F Street, NW 

Washington, DC 20004 

FOR MEMS TECHNOLOGY BERHAD: 

Richard D. Kelly, Esq. 

OBLON SPV AK MCCLELLAND 

MAIER & NEUSTADT 

1 940 Duke Street 

Al ex andria, VA 22314 

Heather Hall 

LEX IS-NEXIS 

9443 Springboro Pike 

Dayton, OH 45342 

Kenneth Clair 

West Group 

901 Fifteenth Street, NW 

Suite 230 

bbott, Secretary 

U.S. International Trade Commission 

500 E Street, SW 

Washington, DC 20436 

( ) Via Hand Delivery 

(v)'Via Overnight Mail 

( J Via First Class Mail 

( ) Other: ___ _ 

( ) Via Hand Delivery 

(..I) Via Overnight Mail 

( ) Via First Class Mail 

( ) Other: ___ _ 

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(,,"Via Overnight Mail 

( ) Via First Class Mail 

( ) Other: ___ _ 

( }:Via Hand Delivery 

("') Via Overnight Mail 

( ) Via First Class Mail 

( ) Other: ___ _ 
Page 2 - Certificate of Service 

Washington, DC 2000S 

GOVERNMENT AGENCIES: 

Edward T. Hand, Chief 

Foreign Commerce Section 

Antitrust Division 

U.S. Department of Justice 

4S0 Sth Street NW- Room 11000 

Washington, DC 20S30 

P-202-S14-2464 

U.S. Bureau of Customs and Border Protection 

Intellectual Property Rights Branch 

Mint Annex Building 

799 9th Street, NW -i h floor 

Washington, DC 20229-11 77 

202-32S-0 1 00 

Elizabeth Kraus, Deputy Director 

International Antitrust, Office of 

International Affairs 

Federal Trade Commission 

600 Pennsylvania A venue, Room 498 

Washington, DC 20S80 

P-202-326-2649 

Richard Lambert, Esq. 

Officr of Technology Development Services 

Dept. of Health & Human Services 

National Institutes of Health 

6610 Rockledge Drive - Room 2800 

MSC 6606 

Bethesda, MD 20892 

P-301-496-2644 

( ) Via Hand Delivery 

(""Via Overnight Mail 

( ) Via First Class Mail 

( ) Other: ___ _ 

( ) Via Hand Delivery (1 Via Overnight Mail 

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( ) Other: ___ _ 

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eJ Via Overnight Mail 

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( ) Other: ___ _ 

REVISED 

PUBLIC VERSION 

complainant named MEMS Technology Berhad of Malaysia ("MemsTech") as the only 

respondent. Id. The complaint sought, inter alia, a limited exclusion order covering infringing 

silicon microphone packages and products containing the same. 

The technology at issue in this investigation generally relates to packaging for MEMS 

devices.l To be protected from the outside environment, including light and electromagnetic 

interference, MEMS devices must be encapsulated, i. e., in a package. '231 patent, 1: 15-26. A 

package also allows a MEMS device to be connected to a printed circuit board (or printed wiring 

board), which carries all the electrical components for a given system. CX-392C, Gilleo Witness 

Statement, page 4; RX-035, MEMS231961. 

Both patents involved in the subject investigation cover silicon microphone packages. 

More specifically, the '231 patent claims a packaging for a MEMS microphone that "provides a 

shield for a MEMS microphone from an interference signal and/or environmental condition." 

'231 patent, 1 :38-40. The package includes a cover, substrate, and microphone. The package is 

formed by connecting the cover to the substrate, and the microphone is found in the housing 

created by the connection of the cover to the substrate. '231 patent, 1 :44-47. 

The invention of the '089 patent is directed to a silicon condenser microphone package 

l"MEMS" stands for a microelectromechanical system. MEMS devices are small devices 

that "move or cause motion in a controlled manner using an electrical signal and/or electrical 

energy." CX-392C, Gilleo Witness Statement, page 3. MEMS devices can be made of a number 

of materials, including silicon. RX-363, Mallon Witness Statement, page 14. The most common 

type of MEMS devices are sensors, such as accelerometers, pressure sensors, and transducers. 

The MEMS devices that are at issue in the present investigation are MEMS transducers, 

specifically, microphones. 

2 
REVISED 

PUBLIC VERSION 

that allows acoustic energy to contact a transducer which provides the necessary pressure 

reference while at the same time protects the transducer from light, electromagnetic interference, 

and physical damage. '089 patent, 1 :44-49. The package is formed by connecting the cover to 

the substrate, and the microphone is located in the chamber created by the connection of the 

cover to the substrate. '089 patent, 1 :54-56. 

On January 12,2009, the presiding administrative law judge ("ALJ") issued his "Initial 

Determination on Violation of Section 337 and Recommended Determination on Remedy and 

Bond." The ALJ found a violation of section 337 and recommended that the Commission issue a 

limited exclusion order directed to MemsTech, and require no bond during the period of 

Presidential review. 

On March 13,2009, the Commission determined to review the final ID in part, and issued 

a notice ("the Commission Notice") in which the Commission specified the issues under review 

and the questions pertaining to such issues. 74 Fed Reg. 11748 (March 19,2009). In particular, 

the Commission determined to review: 

(1) With respect to the '231 patent: 

(a) the ALl's determination that MemsTech' s accused products infringe the '231 

patent; 

(b) the ALl's determination that u.s. Patent No. 4,533,795 to Baumhauer, Jr. et 

al. ("Baumhauer") does not anticipate claims 1 and 2 of the '231 patent; 

(c) the ALJ's determination that claims 1 and 2 of the '231 patent are not rendered 

obvious in view of U.S. Patent No. 5,459,368 to Onishi et al. ("Onishi"); 

(d) the ALl's determination that u.s. Patent No. 6,522,762 to Mullenborn et al. 

("Mullenborn") taken in combination with Baumhauer does not render claim 1 

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REVISED 

PUBLIC VERSION 

obvious; 

(e) the ALl's determination that the master's thesis by David Patrick Arnold 

entitled "A MEMS-Based Directional Acoustic Array for Aeroacoustic 

Measurements" ("Arnold") taken in combination with Baumhauer does not render 

claims 1 and 2 obvious. 

(2) With respect to the '089 patent: 

(a) the ALl's construction of the limitation "electrically coupled" in the asserted 

claims of the '089 patent; 

(b) the ALl's construction of the limitation "volume" in the asserted claims of the 

'089 patent; 

(c) the ALl's determination that the MemsTech's accused products infringe the 

'089 patent; 

(d) the ALJ's determination that Knowles SiSonic products practice claim 1 of the 

'089 patent; 

(e) the ALl's determination that Mullenborn does not anticipate claims 1,2,9, 15, 

17,20,28, and 29 of the '089 patent; 

(f) the ALl's determination that claims 1,2,9, 15, 17,20,28, and 29 of the '089 

patent are not invalid as obvious in view of: (i) Baumhauer alone; (ii) Baumhauer 

in combination with an article by Kress et al. entitled "Integrated Silicon Pressure 

Sensor for Automotive Applications with Electronic Trimming," SAE Document 

950533 (1995) ("Kress"); (iii) Baumhauer in combination with u.S. Patent No. 

4,277,814 to Giachino et al. ("Giachino"); and (iv) Onishi; 

(g) the ALJ's determination that evidence shows that the commercial success of 

the SiSonic products is attributable to the '089 patent. 

The Commission determined not to review the remainder ofthe final ID. Id. at 11749. 

On review, the Commission requested briefing on the issues under review based on the 

evidentiary record, and responses by the parties to certain questions pertaining to the issues under 

4 
REVISED 

PUBLIC VERSION 

reVIew. See id. at 11750. The Commission also requested briefing on the issues of remedy, the 

public interest, and bonding from the parties as well as from interested non-parties. 

In accordance with the Commission notice, all parties to this investigation, including the 

Commission investigative attorney (IA), filed timely written submissions regarding the issues 

under review, and filed timely reply submissions. No submissions were received from interested 

non-parties. 

II. SUMMARY OF COMMISSION DETERMINATIONS 

The Commission has determined as follows with respect to the issues under Commission 

review and the issues of remedy, the public interest, and bonding. 

A. Issues Under Review 

(1) With respect to the '231 patent: 

(a) The Commission affirms the ALl's determination that MemsTech's accused products 

infringe the '231 patent with certain modifications as detailed below. 

(b) The Commission affirms the ALl's determination that Baumhauer does not anticipate 

claims 1 and 2 ofthe '231 patent with certain modifications as detailed below. 

(c) The Commission affirms the ALJ's determination that claims 1 and 2 of the '231 

patent are not rendered obvious in view of Onishi. 

(d) The Commission affirms the ALJ's determination that Mullenborn, taken in 

combination with Baumhauer, does not render claim 1 obvious with certain modifications as 

detailed below. 

(e) The Commission affirms the ALJ's determination that Arnold, taken in combination 

with Baumhauer, does not render claims 1 and 2 obvious with certain modifications as detailed 

below. 

(2) With respect to the '089 patent: 

5 
REVISED 

PUBLIC VERSION 

(a) The Commission affirms the ALl's construction of the term "electrically coupled." 

(b) The Commission affirms the ALl's construction of the term "volume" with certain 

modifications as detailed below. 

(c) The Commission affirms the ALl's determination that MemsTech's accused products 

infringe the '089 patent with certain modifications as detailed below. 

(d) The Commission affirms the ALl's determination that Knowles SiSonic products 

practice the '089 patent and, accordingly, that a domestic industry exists for this patent. 

(e) The Commission affirms the ALl's determination that Mullenbom does not anticipate 

claims 1,2,9, 15, 17,20,28, and 29 of the '089 patent. 

(f) The Commission affirms the ALl's determination that claims 1,2,9, 15, 17,20,28, 

and 29 of the '089 patent are not invalid as obvious in view of: (i) Baumhauer alone; (ii) 

Baumhauer in combination with Kress; (iii) Baumhauer in combination with Giachino; or (iv) 

Onishi, with certain modifications as detailed below. 

(g) The Commission affirms the ALl's determination that the commercial success of 

Knowles' SiSonic products is attributable to the '089 patent. 

B. Remedy, the Public Interest and Bonding 

The Commission has determined that: (i) the appropriate remedy is a limited exclusion 

order directed to MemsTech's products that infringe the asserted claims of the '231 or '089 

patent; (ii) the public interest will not be adversely affected by entry of the limited exclusion 

order; and (iii) there should be no bond during the period of Presidential Review. 

III. STANDARD ON REVIEW 

Commission review of an initial determination is limited to the issues set forth in the 

notice of review and all subsidiary issues therein. Certain Bar Clamps, Bar Clamp Pads, and 

6 
REVISED 

PUBLIC VERSION 

Related Packaging Display and Other Materials, Inv. No. 337-TA-429, Comm'n. Op. at 3 

(January 1,2001). Once the Commission determines to review an initial determination, its 

review is conducted under a de novo standard. Certain Polyethylene Terephthalate Yarn and 

Products Containing Same, Inv. No. 337-TA-457, Comm'n. Op. at 9 (June 18,2002). Upon 

review the "Commission has 'all the powers which it would have in making the initial 

determination,' except where the issues are limited on notice or by rule." Certain Flash Memory 

Circuits and Products Containing Same, Inv. No. 337-TA-382, Comm'n. Op. on the Issues 

Under Review and on Remedy, the Public Interest, and Bonding at 9-10 (June 2, 1997), USITC 

Pub. 3046 (July 1997) (quoting Certain Acid-Washed Denim Garments and Accessories, Inv. No. 

337-TA-324, Comm'n. Op. at 5 (Nov. 1992)). 

On review, "the Commission may affirm, reverse, modify, set aside or remand for further 

proceedings, in whole or in part, the initial determination of the administrative law judge. The 

Commission may also make any findings or conclusions that in its judgment are proper based on 

the record in the proceeding." 19 C.F.R. § 21O.45(c). 

IV. DISCUSSION 

A. The '231 Patent 

(1) The ALJ's determination that MemsTech' s accused products infringe the '231 patent. 

We affirm the ALl's determination that the MemsTech's accused products infringe the 

'231 patent, with certain modifications. Specifically, while we agree with the ALJ's finding that 

the accused products infringe the '231 patent, we believe it is necessary to modify the ID by 

7 
REVISED 

PUBLIC VERSION 

striking out the ALJ's references to exhibits that were not properly admitted into evidence, i. e., 

CX-231C and CX-228, and substituting other record evidence to support his findings. 

Knowles and the IA assert that the ALJ's reliance on exhibit CX-231, see ID at 197, 

appears to be a typographical error. They support this assertion by noting that, when citing to 

CX-231, the ALl refers to Bates numbers MEMS061075-92, which are included in exhibit CX49C, which was admitted into evidence. We agree with Knowles and the IA and, accordingly, 

strike the ALJ's citation to un-admitted exhibit CX-231 and rely instead on exhibit CX-49C to 

support the ALJ's infringement determination. 

We note that the ALl also relies in part on un-admitted exhibit CX-228 for his finding 

that "[t]he accused products contain a substrate including a surface at least partially covered by a 

first layer of a conductive material." ID at 184. We also agree with the IA and Knowles that Dr. 

Gilleo's testimony at CX-392C at 17-18, to which the ALl also cited, provides adequate support 

for this finding. See IResponse at 3. See also KResponse at 5. Therefore, we strike the 

reference to exhibit CX-228 on page 184 of the ID. 

(2) The ALl's determination that Baurnhauer does not anticipate claims 1 and 2 of the 

'231 patent. 

We affirm the ALJ's determination that Baurnhauer does not anticipate claims 1 and 2 of 

the '231 patent with certain modifications. We agree with the ALl that Baurnhauer fails to 

anticipate claims 1 and 2 of the '231 patent because it does not disclose a 

"microelectromechanical package." ID at 65. The ALJ's finding is based inter alia, on the 

testimony of Dr. Gilleo that Baurnhauer does not disclose a "package" because it does not 

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REVISED 

PUBLIC VERSION 

disclose the ability to connect the microphone to another circuit. (Gilleo Tr., p. 727, lines 4-8; p. 

729, lines 16-22).2 

However, we do not rely on the ALl's finding that "[t]he substrate in Baumhauer is not 

exclusive to the transducer, and it extends beyond [the] cover." ID at 65. That finding cannot 

now be used to support his conclusion that "Baumhauer does not disclose a 

'microelectromechanical system package. ", Claims 1 and 2 of the '231 patent do not require that 

the substrate be exclusive to the transducer or not extend beyond the cover. In this regard, we 

observe that the ALl did not require Knowles to prove that MemsTech's products have a 

substrate that is exclusive to the transducer or that the substrate did not extend beyond the cover 

to find that the micro electromechanical system package claim limitation was met and claims 1 

and 2 were infringed.3 We therefore strike the corresponding portion of the ALl's discussion on 

page 65 of his ID. 

2 Dr. Gilleo specifically testified as follows with respect to Baumhauer: 

Baumhauer Figure 6 is an example of attaching the microphone 

device to an end-user board and then attaching a protective cover 

onto that portion of the PC board where the microphone resides. 

Therefore, Baumhauer discloses a device, not a package. 

CX 411C at Q. 19. 

3 The ALl found that the term "micro electromechanical system package" in the preambles 

of claims 1 and 2 of the' 231 patent is a claim limitation. ID at 13, 15. The ALl stated that 

"[b]ecause there is no dispute as to the meaning of this term, I find it unnecessary to construe it." 

ID at 16. The Commission did not review the ALl's finding. 

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REVISED 

PUBLIC VERSION 

(3) The ALl's determination that Mullenbom, taken in combination with Baumhauer, 

does not render claim 1 obvious. 

We affirm the ALl's determination that Mullenbom, taken in combination with 

Baumhauer, does not render claim 1 obvious, with certain modifications. We agree with the ALl 

that the record evidence does not clearly and convincingly show that it would have been obvious 

to one of ordinary skill in the art to modify Mullenbom in view of Baumhauer to arrive at the 

invention recited in claim 1 of the '231 patent. Mullenbom and Baumhauer fail to teach or 

suggest a number of limitations recited in claims 1 and 2, and the record evidence has not shown 

how or why one skilled in the art would have modified these references to include these missing 

limitations. For example, the ALl correctly found that Mullenbom fails to disclose the "housing 

formed by connecting the peripheral edge portion of the cover to the substrate." ID at 102. 

MemsTech's arguments with respect to the MullenbornlBaumhauer combination are based on the 

assumption that Mullenbom teaches every single limitation recited in claim 1 with the exception 

of a cover comprising multiple layers, when in fact the ALl also found that Mullenbom failed to 

teach a "housing" limitation. MemsTech did not address this missing limitation. Moreover, 

there is no record evidence to explain why one skilled in the art would have modified 

Mullenbom in view of Baumhauer to meet claims 1 and 2 of the '231 patent and modify the final 

ID to incorporate this finding. See ID at 102. 

(4) The ALl's determination that Arnold, taken in combination with Baumhauer, does not 

render claims 1 and 2 of the '231 patent obvious. 

We affirm, with one modification, the ALl's determination that Arnold, taken in 

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REVISED 

PUBLIC VERSION 

combination with Baumhauer, does not render claims 1 and 2 obvious. The ALl did not make a 

finding as to whether there is any evidence in the record to suggest to one of ordinary skill in the 

art that Baumhauer and Arnold could be combined to make the '231 invention. We find that 

there is no such evidence on the record, and modify the final ID to incorporate this finding. 

B. The '089 Patent 

(1) The ALl's construction of the limitation "volume" in the asserted claims of the '089 

patent. 

We affirm the ALl's construction of the claim term "volume" with the following 

modifications. We determine not to rely on the ALl's statement on page 55 of the ID: "Another 

embodiment recites, '[t]he back volume 18 is formed by a combination of the back hole of the 

transducer 58 (mounted down) and the bottom portion 50.' (CX-2 at 7:5-7.)" We find that this 

sentence is not needed to support the ALl's construction and strike it from the ID. 

MemsTech and the IA proposed an alternative construction of "volume" that required a 

recess in the substrate. We note, however, that the doctrine of claim differentiation provides 

additional support for the Commission's construction of the term "volume." Claim 3 of the '089 

patent, which depends from claim 1, expressly added a limitation to claim 1 that a volume 

"includes a recess in the substrate." See '089 patent, 11 :49-50. There is, therefore, a 

presumption that claim 1 should not require the same limitation. See Phillips v. AWH Corp., 415 

F.3d 1303, 1315 (Fed. Cir. 2005) (en bane) ("[T]he presence ofa dependent claim that adds a 

particular limitation gives rise to a presumption that the limitation in question is not present in 

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PUBLIC VERSION 

the independent claim."). MemsTech and the IA did not overcome this presumption in the 

present case. See Finisar Corp. v. DIRECTV Group, Inc., 523 F.3d 1323, 1331 (Fed. Cir. 2008) 

("In this instance, the doctrine of claim differentiation also bolsters this court's interpretation.") 

(2) The ALl's determination that MemsTech's accused products infringe the '089 patent. 

We affirm the ALl's determination that the MemsTech's accused products infringe the 

'089 patent, with certain modifications. While we agree with the ALl's finding that the accused 

products infringe the '089 patent, we believe it is necessary to modify the ID by striking out the 

ALl's reference to an exhibit that was not properly admitted into evidence, i.e., CX-466C, and 

substituting other record evidence to support his finding. 

We note that in reaching his infringement determination, the ALJ relied, inter alia, on 

exhibit CX-466C, which was not admitted into evidence. See MResponse at 36-38. Specifically, 

the ALJ improperly relied on CX-466C for his finding that the volume is acoustically coupled to 

the transducer. ID at 201 citing CX-466C. We agree with the IA and Knowles, however, that 

Dr. Gilleo's witness statement provides alternative support for this proposition. CX-392C. See 

IReplyat 2-3; KResponse at 8-9. Accordingly, we strike the reference to CX-466C on page 201 

ofthe final ID, and substitute a reference to CX-392C for the above stricken reference. 

(3) The ALl's determination that claims 1, 2, 9, 15, 17,20,28, and 29 of the '089 patent 

are not invalid as obvious in view of: (i) Baumhauer alone: (ii) Baumhauer in combination with 

Kress: (iii) Baumhauer in combination with Giachino: and (iv) Onishi. 

We affirm the ALJ's determination that claims 1,2,9, 15, 17,20,28, and 29 of the '089 

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PUBLIC VERSION 

patent are not invalid as obvious in view of: (i) Baumhauer alone; (ii) Baumhauer in combination 

with Kress; (iii) Baumhauer in combination with Giachino; and (iv) Onishi, with certain 

modifications. 

Baumhauer 

We affirm the ALJ's finding that Baumhauer does not render the '089 patent obvious, but 

we do not adopt the ALJ's statement that "Baumhauer fails to teach or suggest a package because 

it does not disclose first or second level connections and it fails to disclose a package substrate. 

(CX-411C at Q. 39.)" ID at 132. We find that the ALJ used one claim construction for "surface 

mountable package," when he did his infringement analysis, and another when he did his 

invalidity analysis. In performing the infringement analysis, the ALJ concluded that the term 

"surface mountable package" needed no construction, and found that MemsTech's products were 

surface mountable packages. ID at 132. However, the ALJ concluded in his invalidity analysis 

that Baumhauer does not disclose a "surface mountable package" since it "does not disclose first 

or second level connections and it fails to disclose a package substrate." Id. Thus, it appears that 

the ALJ applied additional requirements to assess validity. 

There is, however, record evidence that sufficiently supports the ALJ's finding that 

Baumhauer does not render the '089 patent obvious, even if the Commission does not require 

that Baumhauer disclose first or second level connections and a package substrate to support an 

invalidity conclusion. Specifically, the ALJ found, inter alia, that "[t]he entire fabric of 

Baumhauer is directed to the design of the microphone to be mounted on a substrate, not to a 

package/or mounting." ID at 132 (emphasis in the original). According to Dr. Gilleo, 

13 
REVISED 

PUBLIC VERSION 

Baumhauer discloses a device that is mounted on an end-user's board, and Figure 6 of 

Baumhauer depicts the Baumhauer device mounted to a circuit board that is subsequently 

provided to an end-user. CX-411 at 39. MemsTech fails to rebut this evidence. We adopt the 

ALl's finding that the term "package" makes clear that all of the components listed in the claim 

body must come together and form a "package," i.e., the elements cannot simply be found on 

printed circuit board, but must be provided as a single, self-contained unit. See ID at 15. 

Therefore, we find that Baumhauer does not disclose a package because it does not teach or 

suggest a package composed of the elements in the manner recited in the claims. 

Baumhauer in combination with Kress 

The ALl correctly determined that Baumhauer in combination with Kress does not render 

the '089 patent obvious. The ALl specifically found: 

As discussed, supra, Baumhauer does not teach or suggest 'a 

surface-mountable package.' The further proposal to modify 

Baumhauer with Kress does not cure this deficiency. I see no 

rational basis to combine the teachings of Baumhauer with the 

teachings of Kress. 

ID at 133. The ALl found that even though Kress mentions packaging for a transducer, it does 

so in the context of automotive silicon pressure sensors, as opposed to surface mountable 

packages for microphones. Moreover, the ALl found that Kress lacks the detail necessary to 

cause one of ordinary skill in the art to adapt it to an acoustic MEMS package. ID at 133 citing 

RX-45 at MEMS 155376. The ALl concluded that MemsTech failed to provide clear and 

convincing evidence of a reason why a person having ordinary skill in the art would be moved to 

use Baumhauer in combination with Kress to create the MEMS package for a microphone taught 

14 
by the '089 patent. ID at 134. 

REVISED 

PUBLIC VERSION 

We affirm the ALJ's finding that Baumhauer in combination with Kress does not render 

claim 1 of the '089 patent obvious. We note, however, that in reaching his finding of nonobviousness, the ALJ stated that "Baumhauer fails to teach or suggest a package because it does 

not disclose first or second level connections and it fails to disclose a package substrate." ID at 

133. For the same reason that we modified his finding of non-obviousness based on Baumhauer 

alone, we modify the final ID to clarify that the Commission does not rely on the ALJ's such 

finding. 

Baumhauer in combination with Giachino 

We affirm the ALJ's determination that Baumhauer in combination with Giachino does 

not render the '089 patent obvious, but similarly modify it to clarify that the Commission does 

not rely on the ALJ's finding that "Baumhauer fails to teach or suggest a package because it does 

not disclose first or second level connections and it fails to disclose a package substrate." ID at 

132 (citations omitted). 

Onishi 

While the ALJ correctly determined that Onishi does not render claim 1 of the '089 patent 

obvious, he did not make findings with respect to dependent claims 2,9, 15, 17,20,28, and 29, 

even though MemsTech argued that those claims are also obvious in view of Onishi. A 

determination regarding obviousness with respect to dependent claims depends on the 

obviousness finding with respect to the independent claim. See, e.g., Hartness Int'l, Inc. v. 

Simplimatic Engineering Co., 819 F.2d 1100, 1108 (Fed. Cir. 1987) ("For the reasons stated 

15 
REVISED 

PUBLIC VERSION 

below, the district court was correct in holding that independent claim 1 was nonobvious. A 

fortiori, dependent claim 3 was nonobvious (and novel) because it contained all the limitations of 

claim 1 plus a further limitation.") Therefore, determining that Onishi does not render claim 1 of 

the '089 patent obvious leads to the determination that dependent claims 2,9, 15, 17,20,28, and 

29 are also not invalid as obvious in view of Onishi. Accordingly, we supplement the ALl's 

finding regarding claim 1 with further findings that Onishi does not render claims 2, 9, 15, 17, 

20,28, and 29 ofthe '089 patent obvious for the same reasons that it does not render claim 1 

obvious. 

B. Remedy, the Public Interest, and Bonding 

We determine that: (i) the appropriate remedy is a limited exclusion order ("LEO") 

directed to MemsTech's products found to infringe the asserted claims of the '231 patent; (ii) the 

public interest will not be adversely affected by entry ofthis exclusion order; and (iii) no bond 

should be required during the period of Presidential review. 

The ALJ recommended that the Commission issue a limited exclusion order that applies 

to MemsTech and all of its affiliated companies, parents, subsidiaries, or other related business 

entities, or its successors or assigns and that is limited to those of MemsTech's silicon 

microphones that have been found to infringe the '231 or '089 patents. IDIRD at 218. The ALJ 

stated that it would be inappropriate to limit the exclusion order by listing specific product names 

or model numbers. He specifically noted that MemsTech's "chamber chip" products were not 

part of this investigation, and therefore, recommended that any remedy should not apply to those 

products. IDIRD at 218 n.33. 

16 
REVISED 

PUBLIC VERSION 

The ALJ recommended no bond during the period of Presidential review because 

Knowles did not present any evidence regarding bonding. The ALJ based his recommendation 

on Commission precedent finding that no bond should be required where there is "no evidence in 

the record to support any bond to offset any competitive advantage resulting from the unfair acts 

of [respondents] from their importations." IDI RD at 220-21 citing Certain Rubber 

Antidegradants, Components Thereof, and Products Containing Same, Inv. No. 337-TA-533, 

Comm'n Op., 2006 ITC LEXIS 591 (July 21,2006), at *59. He found that Knowles provided no 

legitimate reason for its failure to offer pricing differential or royalty rate evidence, noting that 

Knowles did not assert that MemsTech failed to produce pricing information, or move to compel 

such information during discovery. IDI RD at 222. The ALJ observed that the complainant has 

the burden of supporting any proposition it advances, including the amount of the bond. IDIRD 

at 221 (citations omitted). 

The IA objected only to the ALJ's recommendation that silicon microphones instead of 

silicon packages be excluded because "certain silicon microphone packages or products 

containing same," rather than silicon microphones, are at issue in this investigation. 73 Fed Reg. 

2277 (Jan. 14,2008).4 In the lA's view, the entry ofthe limited exclusion order would not be 

contrary to the public interest. See 19 U.S.C. § 133 7( d). 

Knowles agrees that the Commission should issue a limited exclusion order if it finds a 

4 See also ID at 223 ("Based on the foregoing, and the record as a whole, it is my Final 

Initial Determination that there is a violation of 19 U.S.C. § 1337(a)(1) in the importation into 

the United States, sale for importation, and the sale within the United States after importation of 

certain silicon microphone packages and products containing the same.") (emphasis added). 

17 
REVISED 

PUBLIC VERSION 

violation in this investigation but contends, contrary to the ALl's recommendation, that the 

Commission's limited exclusion order should cover all accused MemsTech products, even those 

that have a so-called chamber chip. Knowles does not dispute the ALl's recommendation that no 

bond be required for imports during the period of Presidential review. Finally, Knowles submits 

that the entry of relief in the form of a limited exclusion order would not raise any public interest 

concerns under 19 U.S.C. §1337(d). 

MemsTech states that the only disputed remedy issue is the scope of any limited 

exclusion order and, more particularly, whether such exclusion order should cover all 

MemsTech's silicon microphones including those containing its "chamber chip" configuration. 

MemsTech points out that the Commission rejected Knowles' petition on this issue since the 

Commission's Notice of Review does not identify it as an issue to be reviewed. MReplyat 58 

citing Commission Notice at 3. 

Remedy 

We note that in a Section 337 proceeding, the Commission has "broad discretion in 

selecting the form, scope, and extent ofthe remedy." Visco/an, S.A. v. United States Int'[ Trade 

Comm 'n, 787 F.2d 544,548 (Fed. Cir. 1986). We determine that the appropriate remedy in this 

investigation is a limited exclusion order covering MemsTech accused products that infringe the 

asserted claims of the '231 or '089 patent. With respect to MemsTech's "chamber chip" 

products, pursuant to Commission practice we are not making a finding as to whether particular 

products not considered by the ALJ are or are not within the scope ofthe order, but note that the 

order generally covers products that infringe the relevant patent claims. 

18 
REVISED 

PUBLIC VERSION 

We agree with the ALJ's recommendation that any limited exclusion order be directed to 

"MemsTech and all of its affiliated companies, parents, subsidiaries, or other related business 

entities, or its successors or assigns," ID/RD at 281, however our limited exclusion order covers 

silicon microphone packages rather than silicon microphones, as recommended by the ALJ, 

because silicon microphone packages are at issue in this investigation, see 73 Fed. Reg. 2277 

(Jan. 14,2008). 

The Public Interest 

Before issuing a remedy for a violation of Section 337, the Commission must consider the 

effect of the remedy on certain public interest considerations: (1) the public health and welfare, 

(2) competitive conditions in the U.S. economy, (3) the U.S. production of articles that are like or 

directly competitive with those which are the subject of the investigation, and (4) U.S. consumers. 

19 U.S.C. § 1337(d); Certain Ink Jet Print Cartridges and Components Thereof Inv. No. 337-

TA-446, Comm'n. Op. at 14 (October 2002). 

We find that the issuance of the proposed LEO would not be contrary to the public interest. 

There is no evidence in the record that the U.S. demand for silicon microphone packages cannot be 

met by other entities, including Knowles. Moreover, silicon microphone packages are not the sort 

of product that has been shown to be necessary to safegard the public interest. 

Bonding 

When the Commission issues an exclusion order, infringing products are entitled to entry 

under bond during the period of Presidential review. 19 U.S.c. § 13370). The Commission must 

set the amount of the bond at a level that would be sufficient to protect complainant from injury. 

19 
REVISED 

PUBLIC VERSION 

19 C.F.R. § 210.50(a)(3). As noted, the ALJ recommended that no bonding be required based on 

the record in this investigation and Commission precedent. IDIRD at 220. Because Knowles 

failed to provide any evidence to support a bond, we adopt the ALJ's recommendation that no 

bond should be set during the period of Presidential review. 

v. CONCLUSION 

The Commission has determined that there has been a violation of section 337, and has 

further determined that the appropriate form of relief in this investigation is a limited exclusion 

order prohibiting the unlicensed entry of silicon microphone packages and products containing 

same that infringe claims 1 and 2 of the '231 patent and claims 1,2,9, 15, 17,20,28, and 29 of 

the '089 patent, and that are manufactured abroad by or on behalf of, or imported by or on behalf 

of, MemsTech. The Commission further has determined that the public interest factors 

enumerated in section 337(d)(I) (19 U.S.C. § 1337(d)(1)) do not preclude issuance of the limited 

exclusion order. Finally, the Commission has determined that there should be no bond during the 

period of Presidential review. 

By order of the Commission. • C;;; 

ldc~ Mari . Abbott 

Secretary to the Commission 

Issued: August 18, 2009 

20 
Page 1 - Certificate of Service 

CERTAIN SILICON MICROPHONE PACKAGES AND 

PRODUCTS CONTAINING THE SAME 

337-TA-629 

PUBLIC CERTIFICATE OF SERVICE 

I, Marilyn R. Abbott, hereby certify that the attached REVISED COMMISSION 

OPINION has been served by hand upon the Commission Investigative Attorney, 

Mareesa Frederick, Esq., and the following parties as indicated, on 

AUG 1 9 2009 

FOR KNOWLES ELECTRONICS LLC: 

Lyle B. Vander Schaaf, Esq. 

BRY AN CAVE LLP 

1155 F Street, NW 

Washington, DC 20004 

FOR MEMS TECHNOLOGY BERHAD: 

Richard D. Kelly, Esq. 

OBLON SPY AK MCCLELLAND 

MAIER & NEUSTADT 

1940 Duke Street 

Alexandria, VA 22314 

ADDITIONAL SERVICE: 

Heather Hall 

LEXIS-NEXIS 

9443 Springboro Pike 

Dayton, OH 45342 

Kenneth Clair 

West Group 

901 Fifteenth Street, NW 

Suite 230 

Washington, DC 20005 

bbott, Secretary 

U.S. International Trade Commission 

500 E Street, S W 

Washington, DC 20436 

( ) Via Hand Delivery 

(\{Via Overnight Mail 

( ) Via First Class Mail 

( ) Other: ___ _ 

( ) Via Hand Delivery 

(v1'Via Overnight Mail 

( ) Via First Class Mail 

( ) Other: ___ _ 

( ) Via Hand Delivery 

0Via Overnight Mail 

( ) Via First Class Mail 

( ) Other: ___ _ 

( ) Via Hand Delivery 

(0" Via Overnight Mail 

( ) Via First Class Mail 

( ) Other: ___ _ 


PUBLIC VERSION 

TABLE OF CONTENTS 

I . BACKGROUND ....................................................................................................... 1 

A . Procedural History ................................................................................................ 1 

B . The Parties ............................................................................................................. 3 

Knowles Electronics, LLC .................................................................................. 3 

MEMS Technology Berhad ................................................................................ 3 

1 . 

2 . C . 

D . 

A . 

B . 

C . 

A . 

B . 

I1 . 

I11 . 

Overview Of The Technology & Patents At Issue ............................................. 3 

Products At Issue .................................................................................................. 5 

JURISDICTION ................................................................................................... 8 

Subject Matter Jurisdiction ................................................................................. 8 

Personal Jurisdiction ............................................................................................ 9 

In Rem Jurisdiction .............................................................................................. 9 

CLAIM CONSTRUCTION ................................................................................. 9 

Applicable Law ...................................................................................................... 9 

‘231 Patent ........................................................................................................... 12 

1 . Claim Preambles ............................................................................................. 12 

2 . “layer” .............................................................................................................. 16 

3 . “electrically coupled” ...................................................................................... 21 

C . ‘OS9 Patent ........................................................................................................... 24 

1 . Claim 1 Preamble ............................................................................................ 24 

2 . “transducer” .................................................................................................... 29 

3 . “electrically coupled” ...................................................................................... 30 

4 . “volume” .......................................................................................................... 40 

IV . INVALIDITY ...................................................................................................... 56 

A . Knowles’ Failure To Address Invalidity In Its Initial Post-Hearing Brief .... 56 

B . Anticipation ......................................................................................................... 58 

Applicable Law ................................................................................................ 58 

‘231 Patent ....................................................................................................... 59 

a . Mullenborn .................................................................................................. 59 

b . Baumhauer .................................................................................................. 62 

c . Giachino ....................................................................................................... 65 

d . Arnold .......................................................................................................... 68 

‘OS9 Patent ....................................................................................................... 72 

a . Claim 1 ......................................................................................................... 72 

b . Claim 2 ......................................................................................................... 80 

c . Claim 9 ......................................................................................................... 81 

d . Claim 15 ....................................................................................................... 83 

e . Claim 17 ....................................................................................................... 85 

f . Claim 28 ....................................................................................................... 86 

g . Claim 29 ....................................................................................................... 87 

C . Obviousness ......................................................................................................... 89 

Applicable Law ................................................................................................ 89 

Level of Ordinary Skill in the Art ................................................................. 91 

‘231 Patent ....................................................................................................... 94 

‘OS9 Patent ..................................................................................................... 111 

1 . 

2 . 

3 . 

1 . 

2 . 

3 . 

4 . 

.. 

11 
PUBLIC VERSION 

a . 

b . 

d . 

e . 

f . 

g* 

h . 

C . 

1 . 

Claim 1 ....................................................................................................... 113 

Claim 2 ....................................................................................................... 140 

Claim 9 ....................................................................................................... 142 

Claim 10 ..................................................................................................... 143 

Claim 15 ..................................................................................................... 151 

Claim 17 ..................................................................................................... 153 

Claim 20 ..................................................................................................... 154 

Claim 28 ..................................................................................................... 156 

Claim 29 ..................................................................................................... 157 

5 . Objective Indicia of Non-Obviousness ........................................................ 158 

The Written Description Requirement ........................................................... 168 

V . INFRINGEMENT ................................................................................................. 173 

Applicable Law .................................................................................................. 173 

'231 Patent ......................................................................................................... 174 

Claim 1 ........................................................................................................... 174 

Claim 2 ........................................................................................................... 178 

'089 Patent ......................................................................................................... 184 

Claim 1 ........................................................................................................... 184 

Claim 2 ........................................................................................................... 201 

Claim 9 ........................................................................................................... 202 

Claim 10 ......................................................................................................... 204 

Claim 15 ......................................................................................................... 205 

Claim 17 ......................................................................................................... 207 

Claim 20 ......................................................................................................... 208 

Claim 28 .......................................................................................................... 209 

Claim 29 ......................................................................................................... 210 

D . 

A . 

B . 

1 . 

2 . 

1 . 

2 . 

3 . 

4 . 

5 . 

6 . 

7 . 

8 . 

9 . 

C . 

VI . 

A . 

B . 

C . VI1 . 

A . 

B . VI11 . IX . 

XI . 

DOMESTIC INDUSTRY ................................................................................. 212 

Applicable Law .................................................................................................. 212 

Economic Prong ................................................................................................ 213 

Technical Prong ................................................................................................ 213 

REMEDY & BONDING .................................................................................. 217 

Limited Exclusion Order .................................................................................. 217 

Bonding During Presidential Review Period .................................................. 218 

MATTERS NOT DISCUSSED .................................................................... 222 

CONCLUSIONS OF LAW .............................................................................. 222 

ORDER .............................................................................................................. 223 

... 

111 
PUBLIC VERSION 

Pursuant to the Notice of Investigation and Rule 2 10.42 of the Rules of Practice 

and Procedure of the United States International Trade Commission, this is the 

Administrative Law Judge’s Final Initial Determination in the matter of Certain Silicon 

Microphone Packages and Products Containing the Same, Investigation No. 337-TA-629. 

The Administrative Law Judge hereby determines that a violation of Section 337 

of the Tariff Act of 1930, as amended, has been found in the importation into the United 

States, the sale for importation, or the sale within the United States after importation of 

certain silicon microphone packages and products containing the same, in connection 

with U.S. Patent No. 6,78 1,23 1. Furthermore, the Administrative Law Judge hereby 

determines that a domestic industry in the United States exists that practices U.S. Patent 

No. 6,78 1,23 1. 

The Administrative Law Judge hereby determines that a violation of Section 337 

of the Tariff Act of 1930, as amended, has been found in the importation into the United 

States, the sale for importation, or the sale within the United States after importation of 

certain silicon microphone packages and products containing the same, in connection 

with U.S. Patent No. 7,242,089. Furthermore, the Administrative Law Judge hereby 

determines that a domestic industry in the United States exists that practices U.S. Patent 

No. 7,242,089. 

iv 
PUBLIC VERSION 

CDX Complainant’s demonstrative exhibit 

CFF Complainant’s proposed findings of fact 

CIB Comdainant’s initial Dost-hearing brief 

The following abbreviations may be used in this Initial Determination: 

CORFF 

COSFF 

Complainant’s objections to Respondent’s proposed findings of fact 

Comdainant’s obiections to Staffs nronosed findings of fact 

~ CPX Complainant’s physical exhibit 

CRB Complainant’s reply post-hearing brief 

cx Comdainant’s exhibit 

Dep. 

JSRCC 

Deposition 

Joint Statement Regarding Claim Construction 

L 

SUF 

X 

Joint Statement of Undisputed Facts 

Joint Exhibit 

DX 

FF 

IB 

.OCFF 

.OSFF 

PX 

Respondent’s demonstrative exhibit 

Respondent’s proposed findings of fact 

Respondent’s initial post-hearing brief 

Respondent’s objections to Complainant’s proposed findings of fact 

Respondent’s objections to Staffs proposed findings of fact 

ResDondent’s Dhvsical exhibit 

RB 

Rx 

Respondent’s reply post-hearing brief 

ResDondent’s rebuttal exhibit 

Rx 

SFF 

SIB 

V 

Respondent’s exhibit 

Staffs proposed findings of fact 

Staffs initial post-hearing brief 

SOCFF 

SORFF 

Staffs objections to Complainants’ proposed findings of fact 

Stafl’s obiections to Res~ondents’ DroDosed findings of fact 

SRB 

Tr. 

Staffs reply post-hearing brief 

TranscriDt 
PUBLIC VERSION 

I. BACKGROUND 

A. Procedural History 

On January 4,2008, the Commission issued a notice of investigation, which was 

published in the Federal Register on January 14,2008. The notice states that, pursuant to 

subsection (b) of section 337 of the Tariff Act of 1930, as amended, the Commission instituted 

this investigation to determine: 

[Wlhether there is a violation of subsection (a)(l)(B) of section 

337 in the importation into the United States, the sale for 

importation, or the sale within the United States after importation 

of certain silicon microphone packages or products containing 

same by reason of infringement of one or more of claims 1 and 2 

of U.S. Patent No. 6,781,231 and claims 1, 2, 9, 10, 15, 17, 20,28, 

and 29 of U.S. Patent No. 7,242,089, and whether an industry in 

the United States exists as required by subsection (a)(2) of section 

337[.] 

73 Fed. Reg. 2277-2278 (2008). 

The complainant is Knowles Electronics, LLC of Itasca, Illinois (“Knowles”). The 

respondent is MEMS Technology Berhad of Malaysia (“MemsTech”). The Commission 

Investigative Staff (“Staff’) of the Office of Unfair Import Investigations is also a party in this 

investigation. 

The complaint accuses MemsTech’s products of infringing various claims of U.S. Patent 

No. 6,781,23 1 (“the ‘23 1 patent”) and U.S. Patent No. 7,242,089 (“the ‘089 patent”). The 

complaint further alleges that there exists a domestic industry with respect to the ‘23 1 patent and 

‘089 patent. Knowles seeks a limited exclusion order of the infringing silicon microphone 

packages and products containing the same. 

The investigation was originally assigned to Administrative Law Judge Charneski. On 

July 1 1 , 2008, Chief Administrative Law Judge Luckern permanently reassigned the 

1 
PUBLIC VERSION 

investigation to me. 

On August 20,2008, Knowles filed a motion for summary determination that it has 

satisfied the importation requirement of 19 U.S.C. 5 1337(a)(l)(B). On September 4,2008, I 

issued Order No. 22, an initial determination granting the motion in part. I found that Knowles 

had satisfied the importation requirement with respect to the following MemsTech products: 

MSM1, MSMlC, MSM2, MSM2C, MSM3, MSM3C, and MSM4. On September 23,2008, the 

Commission issued a notice of decision not to review the initial determination. 

On August 20,2008, Knowles filed a motion for summary determination that it did not 

commit patent misuse. On September 8,2008, I issued Order No. 25, an initial determination 

granting the motion. On September 26,2008, the Commission issued a notice of decision not to 

review the initial determination. 

On August 20,2008, Knowles filed a motion for summary determination that it has 

satisfied the domestic industry requirement. On September 8,2008, I issued Order No. 26, an 

initial determination granting the motion in part. I found that Knowles had fully satisfied the 

economic prong of the domestic industry requirement and the technical prong of the domestic 

industry requirement with respect to the ‘23 1 patent. On September 26,2008, the Commission 

issued a notice of decision not to review the initial determination. 

I denied all other motions for summary determination filed by the parties. 

An evidentiary hearing was conducted before me from September 22-25,2008. 

Knowles, MemsTech and Staff participated in the hearing. In support of their case-in-chief and 

rebuttal case, Knowles called the following witnesses: 

0 Dr. Peter V. Loeppert (Vice President of Research & Development for Knowles 

Acoustics); 

2 
PUBLIC VERSION 

0 

0 

Jeffrey S. Niew (President of Knowles); 

Dr. Kenneth Burton Gilleo (expert witness for Knowles). 

In support of their case-in-chief and rebuttal case, MemsTech called the following 

witnesses: 

0 

0 

0 

Mr. Kathirgamasundram Sooriakumar (CEO & CTO of MemsTech); 

Mr. Joseph R. Mallon, Jr. (expert witness for MemsTech); 

Mr. Joseph M. Giachino (expert witness for MemsTech). 

In addition, various deposition transcripts were received into evidence in lieu of direct 

witness statements or live testimony. 

After the hearing, post-hearing briefs and reply briefs, together with proposed findings of 

fact, conclusions of law and rebuttals to the same, were filed on October 15,2008 and October 

29,2008, respectively. 

B. Theparties 

1. Knowles Electronics, LLC 

Knowles is a Limited Liability Company organized under the laws of the State of 

Delaware and having its principal place of business in Itasca, Illinois. (Complaint at 1 13 .) 

2. MEMS Technology Berhad 

MemsTech is a Malaysian company with its principal place of business in Petaling Jaya 

Malaysia. (Complaint at 7 4; Resp. to Complaint at 7 4.) 

C. Overview Of The Technology & Patents At Issue 

At issue in this investigation are two patents relating to silicon microphone packages and 

products containing same. The ‘23 1 patent is entitled “Microelectromechanical System Package 

With Environmental and Interface Shield” and was issued on August 24,2004, based on 

3 
PUBLIC VERSION 

Application No. 10/238,256 filed on September 10,2002. (CX-1.) The named inventor of the 

‘23 1 patent is Anthony D. Minervini and the patent was assigned to Knowles. (Id) The ‘23 1 

patent has a total of 22 claims. (Id.) The claims of the ‘23 1 patent asserted against MemsTech 

in this investigation ‘xe claims 1 and 2. 

The ‘23 1 patent relates to packaging for a microelectromechanical system (“MEMS”) 

microphone. As stated in the specification, the package “provides a shield for a MEMS 

microphone from an interference signal andor environmental condition.” (CX- 1 at 1 :38-40.) 

The package includes a cover, substrate, and microphone. The package is formed by connecting 

the cover to the substrate, and the microphone is found in the housing created by the connection 

of the cover to the substrate. Figure 1 of the ‘23 1 patent depicts a preferred embodiment of the 

invention: 

Fig. 4 

2 

(CX-1 at Fig. 1 .) In Figure 1, element 20 is the cover and element 14 is the substrate. (Id. at 

3:25-27.) The cover and substrate form a housing (labeled 22) wherein surface mountable 

components (labeled 12) may be mounted. (Id.) 

The ‘089 patent is entitled “Miniature Silicon Condenser Microphone” and was issued on 

July 10,2007, based on Application No. 11/112,043 filed on April 22,2005. (CX-2.) The 

named inventor of the ‘089 patent is Anthony D. Minervini and the patent was assigned to 

Knowles. (Id.) The ‘089 patent has a total of 29 claims. (Id.) The claims of the ‘089 patent 

4 
PUBLIC VERSION 

asserted against MemsTech in this investigation are: 1,2,9, 10, 15, 17,20,28, and 29. 

The ‘089 patent relates to a surface mountable package for a silicon. condenser 

microphone. As stated in the Summary of the Invention, the package “allows acoustic energy to 

contact a transducer” and “protects the transducer from light, electromagnetic interference, and 

physical damage.” (CX-2 at 1 :44-49.) The package includes a cover, substrate, and microphone. 

The package further includes a volume defined by the transducer and one of the cover or the 

substrate. The package is formed by connecting the cover to the substrate, and the microphone is 

located in the chamber created by the connection of the cover to the substrate. Figure 1 of the 

‘089 patent depicts a preferred embodiment of the invention: 

FIG. 1 

20 

I 

14 

t 

(CX-2 at Fig. 1.) In Figure 1, element 20 is the cover and element 14 is the substrate. (Id. at 

3:36-48.) Element 12 is a transducer, while element 16 is an amplifier. This embodiment 

includes a back volume 18 formed by drilling a recess in the substrate. (Id. at 3:46-52.) 

D. Products At Issue 

Knowles accuses the MemsTech MSM family of silicon microphone packages of 

infringement. Mr. Sooriakumar testified that MemsTech has made or is in the process of making 

the following general categories of microphones: MSM1, MSM2, MSM2-RM, MSM3, MSM3- 

RM, MSM4, MSM4-RM, MSM5. (RX-18 at Q. 194.) MemsTech does not dispute that it 

imports the accused MSM devices. 

Knowles states the MemsTech products listed on CX-40, CX-4 1, and CX-43 are the 

5 
PUBLIC VERSION 

I Top Mount Products 

MEMS Silicon Microphone products currently imported by MemsTech and offered for sale in 

the United States. This is supported by the testimony of Mr. Srini Naidu, executive director of 

MemsTech. (CX-28C at 83:16-88:4, 102:18-103:3.) That list of products is as follows: 

Reverse Mount Products I Differential Products 

MSM 1 C-S3035 

MSMlC-S3540 

MSM 1 C-S4045 

MSM2C-RM-S3035 MSM2C-DP-S3035 

MSM2C-RM-S3540 MSM2C-DP-S3540 

MSM2C-RM-S4045 MSM2C-DP-S4045 

MSM2C-S3 03 5 

MSM2C-S3540 

MSM2C-RM6-S303 5 

MSM2C-RM6-S3 540 

MSM2C-S4045 

MSM3C-S3035 

Dr. Gilleo’s infringement analysis covers the products found in CX-40, CX-41, and CX43, which are all listed above. (CX-392C at Qs. 30,73.) Knowles asserts that there are three 

basic configurations for the accused products. The first is a “top mount” configuration,’ where 

the acoustic port is in the cap of the package: 

MSM2C-RM6-S4045 

MSM3 C-RM-S303 5 

MSMI ,MSM2,MSM3,MSM4- Std Models 

MSM3C-S4045 

Microphone 

Acousti Port on Cap Diaphragm /- 

MSM3 C-RM-S3 540 

MSM3C-RM-S4045 

MSM3C-FW5-S3035 

MSM3C-RM5-S3540 

MSM3C-RM5-S4045 

(CX-36C.) 

The second is a “reverse mount” configuration (noted by an “RM” in the product name) 

I note that the top mount configuration includes a model labeled MSM4 standard model, which will be considered 

as part of the accused MemsTech family of products, because for purposes of this investigation it is identical to 

MSM1, MSM2 and MSM3 standard models. (CX 36C) 

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with the acoustic port in the substrate and next to the transducer: 

MSM213 RM ( Std Zero Heiuht) Model 

Acoustic Seal Acoustic Pod on PCB 

The third is a “reverse mount” configuration with the acoustic port in the substrate and 

under the transducer: 

____. ___ - 

MSMZRMG - Reverse Mount (RM) 

lMEMS Tech Uniaue) Model 

Acoustic Port on 

PCB 

(Id.) Mr. Sooriakumar confirmed this in his testimony. (See RX-18 at Qs. 196-206.) 

Mr. Sooriakumar testified that the other difference between the products relates to 

footprint (i.e. size) of the product. (RX-18 at Q. 195.) There are other designations added to the 

MSM product names, but those designations relate to variables (such as the type of preamplifier 

used) that are not relevant to this investigation. (See CX-30C at 247-250.) Thus, the accused 

MemsTech products can be generally defined as the MSM1, MSM2, MSM3, MSM4, MSM2- 

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RM, MSM2-DP, and MSM3-RM, including all configurations of those products. 

Knowles claims that its SiSonic microphone products meet the domestic industry 

requirement. (CIB at 4,32,41.) The standard SiSonic packages have an acoustic port in the top 

cover. (CX-233C.) The “Zero Height” SiSonic packages have the acoustic port in the bottom 

substrate. (CX-29C; CX-233C.) The following figure from Knowles’ SiSonic Design Guide 

depicts the top view and bottom view of the different SiSonic packages: 

{ 

(CX-233C at KE0000322.) 

11. JURISDICTION 

A. Subject Matter Jurisdiction 

The complaint alleges that MemsTech has violated Subsection 337(a)( 1)(B) by the 

* There is an additional configuration of the MSM products that is relevant to this investigation, the so-called 

“chamber chip” configuration. Mr. Sooriakumar testified that MemsTech’s current products include a chamber 

chip, underneath the glass pedestal, which creates more back volume under the transducer. (Tr. at 224:18-2255.) 

Knowles asked, and Staff agreed, that I rule that the chamber chip configuration not be included in this 

investigation. MemsTech did not oppose. (Tr. at 654:19-656: 17,658:3-11,657: 16-18, 659512.) The chamber 

chip configuration is, therefore, not a part of this decision as it is not properly before me. 

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importation and sale of products that infringe the asserted patents. I have found that MemsTech 

has imported accused MSM products. (See Order No. 22.) Thus, I find that the Commission has 

subject matter jurisdiction over this investigation under Section 337 of the Tariff Act of 1930. 

See Amgen, Inc. v. US. Int’l Trade Comm ’n, 902 F.2d 1532, 1536 (Fed. Cir. 1990). 

B. Personal Jurisdiction 

MemsTech responded to the complaint and notice of investigation, participated in the 

investigation, made an appearance at the hearing, and submitted post-hearing briefs. Thus, I find 

that MemsTech submitted to the personal jurisdiction of the Commission. See Certain Miniature 

Hacksaws, Inv. No. 337-TA-237, Initial Determination, 1986 WL 379287 (October 15, 1986). 

C. In Rem Jurisdiction 

The Commission has in rem jurisdiction over the products at issue by virtue of the 

finding that accused products have been imported into the United States. See Sealed Air Corp. v. 

United States Int’l Trade Comm ’n, 645 F.2d 976,985 (C.C.P.A. 1981). 

111. CLAIM CONSTRUCTION 

A. Applicable Law 

“An infringement analysis entails two steps. The first step is determining the meaning 

and scope of the patent claims asserted to be infringed. The second step is comparing the 

properly construed claims to the device accused of infringing.” Markman v. Westview 

Instruments, Inc., 52 F.3d 967, 976 (Fed. Cir. ‘1995) (en banc), aff’d, 517 U.S. 370 (1996) 

(citation omitted). Claim construction “is a matter of law exclusively for the court.” Id. at 970- 

71. “The construction of claims is simply a way of elaborating the normally terse claim 

language in order to understand and explain, but not to change, the scope of the claims.” 

Embrex, Inc. v. Serv. Eng ’g Corp., 216 F.3d 1343, 1347 (Fed. Cir. 2000). “[O]nly those [claim] 

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terms need be construed that are in controversy, and only to the extent necessary to resolve the 

controversy.” Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795,803 (Fed. Cir. 1999). 

Claim construction focuses on the intrinsic evidence, which consists of the claims 

themselves, the specification, and the prosecution history. See generally Phillips v. A WH Corp., 

415 F.3d 1303 (Fed. Cir. 2005) (en banc). The Federal Circuit in Phillips explained that in 

construing terms, courts must analyze each of these components to determine the “ordinary and 

customary meaning of a claim term,” which is “the meaning that the term would have to a person 

of ordinary skill in the art in question at the time of the invention.” Id. at 13 13. 

“It is a ‘bedrock principle’ of patent law that ‘the claims of a patent define the invention 

to which the patentee is entitled the right to exclude.”’ Id. at 1312 (citations omitted). “Quite 

apart from the written description and the prosecution history, the claims themselves provide 

substantial guidance as to the meaning of particular claim terms.” Id. at 13 14. For example, “the 

context in which a term is used in the asserted claim can be highly instructive,” and “[olther 

claims of the patent in question, both asserted and unasserted, can also be valuable sources of 

enlightenment as to the meaning of a claim term.” Id. 

“[Tlhe specification ‘is always highly relevant to the claim construction analysis. 

Usually, it is dispositive; it is the single best guide to the meaning of a disputed term.”’ Id. 

(citation omitted). “The longstanding difficulty is the contrasting nature of the axioms that (a) a 

claim must be read in view of the specification and (b) a court may not read a limitation into a 

claim from the specification.” InnovdPure Water, Inc. v. Safari Water Filtration Sys., Inc., 3 8 1 

F.3d 1 1 1 1, 1 117 (Fed. Cir. 2004). The Federal Circuit has explained that there are certain 

instances when the specification may limit the meaning of the claim language: 

[Olur cases recognize that the specification may reveal a special definition given 

to a claim term by the patentee that differs from the meaning it would otherwise 

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possess. In such cases, the inventor’s lexicography governs. In other cases, the 

specification may reveal an intentional disclaimer, or disavowal, of claim scope 

by the inventor. In that instance as well, the inventor has dictated the correct 

claim scope, and the inventor’s intention, as expressed in the specification, is 

regarded as dispositive. 

Phillips, 4 15 F.3d at 13 16. 

In addition to the claims and the specification, the prosecution history should be 

examined if in evidence. “The prosecution histo ry... consists of the complete record of the 

proceedings before the PTO and includes the prior art cited during the examination of the patent. 

Like the specification, the prosecution history provides evidence of how the PTO and the 

inventor understood the patent.” Id. at 13 17 (citation omitted). “[Tlhe prosecution history can 

often inform the meaning of the claim language by demonstrating how the 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.” Id. 

If the intrinsic evidence does not establish the meaning of a claim, then extrinsic evidence 

may be considered. Extrinsic evidence consists of all evidence external to the patent and the 

prosecution history, including dictionaries, inventor testimony, expert testimony and learned 

treatises. Id. at 13 17. Extrinsic evidence is generally viewed “as less reliable than the patent and 

its prosecution history in determining how to read claim terms[ .]” Id. at 13 18. “The court may 

receive extrinsic evidence to educate itself about the invention and the relevant technology, but 

the court may not use extrinsic evidence to arrive at a claim construction that is clearly at odds 

with the construction mandated by the intrinsic evidence.” Elkay Mfg. Co. v. Ebco Mfg. Co., 192 

F.3d 973,977 (Fed. Cir. 1999). 

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B. ‘231 Patent 

1. Claim Preambles 

The preamble of claim 1 is “[a] microelectromechanical system package comprising” 

while the preamble of claim 2 is “[a] microelectromechanical system package for providing a 

shield from an interference signal, the microelectromechanical package comprising.” While the 

parties do not dispute the meaning of claim terms in the preambles, they dispute whether or not 

the preambles are claim limitations. 

Knowles’ Position: Knowles argues that the claim preambles are limitations and that 

“microelectromechanical system package” should be construed to mean “the overall device that 

contains the elements recited in the claims.” (CIB at 20.) 

Knowles claims that the invention of the ‘23 1 patent is a microelectromechanical 

package, as evidenced by the patent title, field of invention, summary of the invention, and 

detailed description. (CRB at 7.) Knowles states that “[t]hroughout, the invention is termed and 

described as a microelectromechanical package, and a microelectromechanical package as 

recited in the preamble is a claim limitation.” (Id. (citing Corning Glass Works v. Sumitomo 

Elec. USA., Inc., 868 F.2d 125 1, 1257 (Fed. Cir. 1989) and Eaton Corp. v. Rockwell Int ’I Corp., 

323 F.3d 1332 (Fed. Cir. 2003)).) 

MemsTech’s Position: MemsTech argues that the preambles of claims 1 and 2 are not 

limitations. According to MemsTefch, “[tlhe preambles in claims 1 and 2.. .do not ‘breathe life’ 

into the remainder of the claims and are at best statements of intended use.” (RIB at 8.) 

MemsTech claims that there is nothing in the claims that refer back to the preambles, thus 

there is not an antecedent basis issue. (Id. at 9.) MemsTech further claims that 

“microelectromechanical system package” is a “descriptive name” that adds nothing to the claim, 

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PUBLIC VERSION 

as evidenced by the construction of the term offered by Knowles and Staff. (Id) 

MemsTech takes issue with Knowles’ alleged failure to raise its position regarding the 

preambles in its pre-hearing statement. MemsTech points to Ground Rule 4(d), arguing that 

Knowles has waived the right to claim that the preambles are limitations. (RIB at 9; RRB at 8.) 

MemsTech claims that it has been prejudiced by Knowles’ change in position at such a late stage 

of the investigation. (RIB at 7-8; RRB at 7-8.) 

Commission Investigative Staffs Position: Staff argues that the claim preambles are 

limitations and that “microelectromechanical system package” should be construed to mean “the 

overall device that contains the elements recited in the claims.” (CIB at 26.) 

Staff argues that in view of the specification, “microelectromechanical system package” 

should be considered a limitation. (Id at 27.) Staff points out that the specification makes clear 

that the invention is “focused on creating a package that provide[s] protection and [can] be made 

cheaply and easily.” (Id) Staff asserts that the preamble does not merely state a purpose or 

intended use for the claimed structure, but gives life and meaning to the claim and provides a 

“further positive limitation” to the claimed invention. (Id.) 

Staff argues that MemsTech’s position is misplaced, because a preamble can be a claim 

limitation without serving as an antecedent basis. (SRB at 3 (citing Rowe v. Dror, 112 F.3d 473, 

478 (Fed. Cir. 1997); Applied Materials, Inc. v. Advanced Semiconductor Materials Am., Inc., 98 

F.3d 1563, 1572-1573 (Fed. Cir. 1996)).) Staff also argues that the “microelectromechanical 

system package” limitation adds something to the claim that is not already present because “the 

preamble provides the framework for the limitations recited in the body of the claims.” (Id. at 4.) 

Discussion and Conclusion: I find that the term “microelectromechanical system 

package” in the preambles of claims 1 and 2 is a claim limitation. 

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PUBLIC VERSION 

Whether to treat a claim preamble as a limitation is a determination made after a review 

of the entire patent. Catalina mg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801,808 (Fed. 

Cir. 2002). In Catalina, the Federal Circuit stated: 

In general, a preamble limits the invention if it recites essential structure or steps, 

or if it is “necessary to give life, meaning, and vitality” to the claim. Conversely, 

a preamble is not limiting “where a patentee defines a structurally complete 

invention in the claim body and uses the preamble only to state a purpose or 

intended use for the invention.” 

Id. (citations omitted). The court went on to explain that “a preamble generally is not limiting 

when the claim body describes a structurally complete invention such that deletion of the 

preamble phrase does not affect the structure or steps of the claimed invention.” Id. at 809. 

The invention at issue in Catalina was a system for distributing coupons to consumers 

through kiosks. The court had to determine whether the phrase “located at predesignated sites 

such as consumer stores” was a limitation when it appeared in the preamble. Id. at 807-808. The 

court found that the phrase was not a claim limitation. The court examined the specification and 

found that the location of the kiosks was not an essential feature of the invention. Id. at 810. 

The applicants did not rely on the preamble to distinguish the invention from the prior art during 

prosecution. Id. Importantly, the court found that the claim was complete without the preamble: 

Moreover, deletion of the disputed phrase from the preamble of Claim 1 does not 

affect the structural definition or operation of the terminal itself. The claim body 

defines a structurally complete invention. The location of the terminals in stores 

merely gives an intended use for the claimed terminals. 

Id. 

In Corning Glass, cited by Knowles, the claim preamble was “[aln optical waveguide 

comprising.” 868 F.2d at 1256. The court found that the preamble served as a limitation 

because the specification was clear that the invention was limited to fibers working as 

waveguides. As the court explained: “[tlhe invention is restricted to those fibers that work as 

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PUBLIC VERSION 

waveguides as defined in the specification, which is not true with respect to fibers constructed 

with the limitations of paragraphs (a) and (b) only.” Id. at 1257. 

I find that the situation before me is closer to Corning Glass than Catalina. Here, the 

term “microelectromechanical system package” is necessary to give meaning to the claims. The 

term makes clear that all of the components listed in the claim body must come together and 

form a “package.” This term adds a limitation that is not otherwise present in the claim body. 

This is supported by the specification, which discusses mounting the package on an end-user’s 

PCB. (CX-1 at 3:3-16.) 

Looking at claim 1, the components found in the body of the claim are, broadly stated, a 

microphone, substrate, cover, and housing formed by the connection of the substrate and cover. 

Such a combination of elements could be found on a printed circuit board containing other 

elements that are not fully enclosed by the cover. Such a device would not be a “package” 

because it would not be a single, self-contained housing for a MEMS microphone. 

Dr. Gilleo testified 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. (CX-392C at Q. 13.) 

This is distinguished from what Dr. Gilleo called “chip-on-board,” where the microphone is 

mounted directly on the printed circuit board. (CX-392C at Q. 14.) This is further supported by 

Dr. Gilleo’s textbook on packages, where he states that “[tlhe package provides the first-level 

(device to package) interconnect structure and must enable second-level (package to circuit 

board) electrical connections.” (CX-396 at 8.) 

Therefore, I find that the term ‘‘microelectromechanical system package” in the preamble 

I have not considered the ‘23 1 patent prosecution history for resolution of this issue or any other issue in this 

investigation because no party entered it into evidence during the hearing. I denied Staffs motion to re-open the 

evidentiary record after the hearing to admit the ‘23 1 patent prosecution history. (Order No. 28.) 

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PUBLIC VERSION 

is a limitation. Because there is no dispute as to the meaning of this term, I find it unnecessary to 

construe it. 

Regarding MemsTech’s concern that this issue was not properly raised prior to the 

hearing, I find otherwise. In its pre-hearing statement, Staff included an argument regarding why 

the preambles should be claim limitations. Thus, the issue is properly before me, and MemsTech 

was on notice that such an issue would be raised. 

2. “layer” 

The term “layer” appears in asserted claims 1 and 2. 

Knowles’ Position: Knowles contends that “layer” should be construed to mean “a 

single thickness of material.” (CIB at 20.) Knowles states that both claims 1 and 2 use the term 

“layer” in the singular form, thus signifying the term only requires a “single thickness.” (Id.) 

Knowles argues that there is nothing in the specification requiring “layer” to mean multiple 

layers. (Id.) Knowles asserts that the specification expressly contemplates the use of a single 

layer cover. (Id. (citing CX-1 at 2: 18-20).) Construing “layer” to require multiple layers would, 

according to Knowles, improperly exclude this embodiment. (Id. at 21 (citing Verizon Sews. 

Corp. v. Vonage Holdings Corp., 503 F.3d 1295, 1305 (Fed. Cir. 2007)).) Knowles claims that 

Mr. Giachino acknowledged that the specification of the ‘23 1 patent disclosed a single layer 

structure. (CRB at 8 (citing Tr. at 354:6-10).)4 

Knowles asserts that claim 5 is identical to claim 1, except that claim 5 requires a cover 

with multiple layers. Under the doctrine of claim differentiation, Knowles argues that it would 

be improper to construe “layer” to require multiple layers because such a construction would 

In their briefs the parties ii-equently cite their own proposed Findings of Fact by number. For clarity and easier 

reference to actual evidence, I will instead refer throughout this Initial Determination to the underlying evidence, if 

any, they cite in their proposed Findings of Fact. 

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PUBLIC VERSION 

render claim 5 redundant. (CIB at 21; CRB at 8-9.) 

MemsTech’s Position: MemsTech contends that “layer” should be construed to mean 

“one thickness, course, or fold laid or lying over or under another.” (RIB at 10.) MemsTech 

fiuther states that the term “should not be construed to cover a solid metal cover formed as a 

single piece.” (Id. (emphasis in original).) 

MemsTech points to the specification for support, arguing that the specification describes 

a multi-layer cover which includes an inner cup formed of a conductive layer and an outer cup 

formed of a conductive layer. According to MemsTech, “[tlhe specification only describes 

layers in the context of the cover as a muti-layered structure.. .and it is this special layered cover 

that the ‘23 1 patent identifies as protecting the surface mounted components from EM1 and 

environmental elements.” (Id. at 11 (citing CX-1 at 4~5-5:6).)~ 

MemsTech claims that Dr. Gilleo admitted that the term layer, as used in the ‘23 1 patent 

specification, only refers to multiple layer structures. (Id. (citing Tr. at 162:8-12).) MemsTech 

claims that Dr. Gilleo admitted that his proposed construction of “layer” is wholly divorced from 

the ‘231 patent. (Id. (citing Tr. at 163:7-13, 164:23-1655, 167:16-20).) 

MemsTech claims that the doctrine of claim differentiation does not apply because claim 

5 includes an “environmental barrier layer” limitation that is not found in claim 1. (Id. at 11-12.) 

MemsTech asserts that this added limitation would not render claim 5 redundant if MemsTech’s 

construction of “layer” is adopted. (Id. at 12; RRB at 10- 1 1 (citing Mantech Envtl. Corp. v. 

Hudson Envtl. Sews., 152 F.3d 1368, 1376 (Fed. Cir. 1998)).) 

MemsTech argues that the fact that the term “layer” is singular does not support 

Knowles’ construction. (RRB at 8-9.) MemsTech agrees that the layer can be singular, as 

MemsTech actually cites to RX-133. Both CX-I and RX-133 are copies of the ‘231 patent. For the sake of 

consistency, I will cite to CX-1 when referring to the ‘23 1 patent. 

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PUBLIC VERSION 

allegedly evidenced by its proposed construction of “one thickness, course, or fold laid or lying 

over or under another.” (Id. at 9 (emphasis in original).) MemsTech states that Knowles’ 

construction is incorrect, as “[tlhe point is that the layer needs to be laid or lying over something 

and thus, it follows that a solid metal cap does not have a layer on it as required by the claims.” 

(Id. (emphasis in original).) 

Commission Investigative Staffs Position: Staff states that “layer” should be 

construed to mean “single thickness.” (SIB at 18.) Staff argues that the claim language from 

claims 1 and 2 support such a construction, as the term “layer” is singular. (Id.) Further, Staff 

claims that the use of “a conductive layer” in the claims supports the construction because “the 

Federal Circuit typically construes ‘a’ to mean ‘at least one.”’ (Id. (citing Abtox, 1nc.v. Exitron 

Corp., 122 F.3d 1019, 1023 (Fed. Cir. 1997)).) 

Staff claims that the specification includes multiple embodiments for the claimed 

“cover,” with at least one of them calling for a cover comprising a single layer. (Id. at 19-20; 

SRB at 6.) Staff argues that MemsTech’s construction is based on a single embodiment 

depicted in Figure 1, and thus improperly imports limitations from the specification into the 

claims. (Id. at 20 (citing Decisioning.com, Inc. v. Federated Dept. Stores, Inc., 527 F.3d 1300, 

1309 (Fed. Cir. 2008)).) 

Staff echoes Knowles’ argument that the doctrine of claim differentiation supports its 

construction of “layer” because claim 5 is very similar to claim 1, but claim 5 requires the cover 

to be made of two cups in a mating relationship @.e. a multi-layer cover). (Id. at 21 .) 

Construction to be applied: “a single thickness of material” 

In claim 1, the term “layer” appears in the following phrase: “a cover comprising a 

conductive layer having a center portion bounded by a peripheral edge portion.” In claim 2, 

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PUBLIC VERSION 

“layer” appears in two claim elements: “a substrate including a surface at least partially covered 

by a first layer of a conductive material.. .” and “a cover comprising a second layer of a 

conductive material, the cover electrically connected to the first layer of a conductive 

material. . .” 

The claims use the term “layer” in the singular form as describing a component of the 

package cover and substrate. When describing the cover and substrate, the claims use the 

transitional terms “comprising” and “including,” indicating that the cover and substrate may 

include additional, unclaimed components beyond the claimed layer. Georgia-Pacific Corp. v. 

United States Gypsum Co., 195 F.3d 1322, 1327 (Fed. Cir. 1999) (“The transitional term 

‘comprising’. . .is inclusive or open-ended and does not exclude additional, unrecited elements or 

method steps.”); SanDisk Corp. v. Memorex Prods., Inc., 415 F.3d 1278, 1284 (Fed. Cir. 2005) 

(“As a patent law term of art, ‘includes’ means ‘comprising.’. . .Neither includes, nor comprising, 

forecloses additional elements that need not satisfy the stated claim limitations.”). 

The specification describes multiple types of covers that may be used in the package. For 

example, in the Summary of the Invention, a cover consisting of a formed metal cup is disclosed: 

“[tlhe cover includes a formed metal cup electrically connected to the first layer of a conductive 

material.” (CX-1 at 2: 18-20.) The Summary goes on to disclose another embodiment in which 

the cover consists of two metal cups with an environmental barrier layer between the two cups: 

“[tlhe cover has a central portion bounded by a peripheral edge, and comprises a first formed 

metal cup and a second metal cup fit within the first metal cup in mating relationship. The cover 

further comprises an environmental barrier layer disposed between the first and second metal 

cups.” (Id. at 2:28-3 1 .) The preferred embodiment in the specification only discloses use of the 

two cups in a mating relationship. (Id. at 4:5-18.) 

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Both the single-cup cover and double-cup cover are explicitly claimed in claims 4 and 5, 

respectively. Claims 1 and 2 are silent on the use of cups, instead requiring that the cover 

include a conductive layer. 

I find that the intrinsic evidence does not limit “layer” to require a cover with multiple 

layers, as argued by MemsTech. MemsTech argues that the only description of a cover in the 

specification is of a multi-layered structure. (RIB at 10- 1 1 .) This is incorrect, as the 

specification discloses a cover made up of a single metal cup. (CX-1 at 2:18-20.) 

Even if MemsTech was correct in its assertion that the specification only discloses a 

multi-layer structure, that is not necessarily a sufficient justification to limit the claims to that 

structure. As the Federal Circuit stated, “we have expressly rejected the contention that if a 

patent describes only a single embodiment, the claims of the patent must be construed as being 

limited to that embodiment.” Phillips, 415 F.3d at 1323. Because the claim language makes 

clear that the cover may be made up of a single layer, the term has a meaning that is broader than 

the two-cup structure described in the preferred embodiment. 

After examining the claim language and the specification, it is clear to me that “layer” is 

not limited to multiple layers, and should be given its plain and ordinary meaning, which I find 

to be “a single thickness of material.” I find that examination of the extrinsic evidence (such as 

expert testimony) offered by the parties is unnecessary because the intrinsic evidence is 

sufficient to understand the meaning of “layer.” Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 

1576, 1583 (Fed. Cir. 1996) (“In most situations, an analysis of the intrinsic evidence alone will 

resolve any ambiguity in a disputed claim term. In such circumstances, it is improper to rely on 

extrinsic evidence.”) 

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3. “electrically coupled’’ 

The term “electrically coupled” appears in asserted claim 2. 

Knowles’ Position: Knowles asserts that “electrically coupled” should be construed to 

mean “a connection between two nodes through which electrons may flow fiom one node to 

another.” (CIB at 21 .) Knowles claims that this is a simple and straightforward definition that 

“best comports with the language of the claims and even the most basic understanding of 

electricity.” (Id.) 

Knowles argues that MemsTech’s proposed construction, requiring a direct connection, is 

incorrect. (Id. at 22.) Knowles claims that MemsTech’s definition improperly imports the direct 

connection limitation from the embodiments described in the specification. (Id. (citing SciMed 

Lye Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1340 (Fed. Cir. 2001) and 

Phillips, 415 F.3d at 1323).) Knowles further asserts that MemsTech’s proposed construction is 

at odds with statements made by MemsTech’s expert witnesses. (Id. at 22-23; CRB at 9.) 

Knowles states that the district court case upon which MemsTech relies for support is 

distinguishable based on the claim language of the patent at issue in that case. (CRB at 9-10.) 

MemsTech’s Position: MemsTech asserts that “electrically coupled” should be 

construed to mean “that the microphone is directly connected to the layer of conductive material 

on the substrate.” (RIB at 12.) MemsTech argues that “[tlhe specification consistently and only 

refers to surface mounting the components onto the substrate, which is a direct connection.” (Id. ; 

see also RFU3 at 12.) Further, MemsTech claims that there is no description in the ‘23 1 patent of 

any indirect electrical connections. (RFU3 at 13 .) MemsTech cites PCTEL, Inc. v. Agere Sys., 

Inc., a district court case where an allegedly similar claim term was construed to require a direct 

connection. (RIB at 13 .) MemsTech offers the testimony of its expert Mr. Mallon as support for 

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PUBLIC VERSION 

its construction. (Id.) 

Commission Investigative Staffs Position: Staff asserts that “electrically coupled 

should be construed to mean “the microphone is directly or indirectly connected to the 

substrate.” (SIB at 22.) 

Staff argues that because claim 2 refers to “electrically connected” as well as “electrically 

coupled,” the two phrases must have different meanings. (Id. at 23-24.) Staff claims that the 

specification makes clear that “electrically connected” requires a direct connection, and that 

“electrically coupled” must therefore have a different meaning than a direct connection. (Id. 

(citing ACTK Inc. v. Walt Disney Co. , 346 F.3d 1082, 1099 (Fed. Cir. 2003); Applied Med. Res. 

Corp. v. US. Surgical Corp., 448 F.3d 1324, 1333 n. 3 (Fed. Cir. 2006); CAE Screenplates Inc. 

v. Heinrich Fiedler GrnbH, 224 F.3d 1308, 1317 (Fed. Cir. 2000)).) 

Staff argues that the ordinary meaning of “electrically coupled” allows for direct or 

indirect connections, and MemsTech is improperly limiting the term based on the specification. 

(SIB at 25.) Staff cites numerous district court cases where “coupled” was allegedly construed 

as allowing for a direct or indirect connection. (Id. at 25-26.) 

Construction to be applied: “arranged so that electrical signals may be passed either 

directly, or indirectly via intervening circuitry, from one component to another.” 

The term “electrically coupled” appears in asserted claim 2 in the following phrase: “the 

silicon-based microphone is electrically coupled to the layer of a conductive material[.]” The 

same phrase appears in the Summary of the Invention. (CX-1 at 1 :58-60.) Otherwise, there is no 

further description of the term “electrically coupled” in the specification. The description of the 

preferred embodiment depicts the microphone as a surface-mountable component with a direct 

physical connection between the microphone and the substrate. (See, e.g., id. at 3:17-65, Fig. 1.) 

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I find that the ordinary meaning of “electrically coupled” does not require a direct 

physical connection. Silicon Graphics, Inc. v. n Vidia Corp., 58 F. Supp. 2d 331, 346 (D. Del. 

1999) (“The court notes that the ordinary and accustomed meaning of the term ‘couple,’ even 

when used in an electronics context does not solely mean ‘directly coupled.’”). In GSK Techs. 

Inc. v. Euton Elec. Inc., 2008 WL 90671 3 (E.D. Tex. Apr. 1,2008), the court construed 

“electrically coupled.” In construing the term, the court noted that “[als the intrinsic evidence 

does not provide a special meaning for ‘electrically coupled,’ its plain and ordinary meaning 

applies.” Id. at “5. The court found that the plain and ordinary meaning of the term did not 

require a direct physical connection. Id. It construed “electrically coupled” to mean “arranged 

so that electrical signals may be passed either directly, or indirectly via intervening circuitry, 

from one component to another.” Id. 

Here, I find that the intrinsic evidence does not provide any special meaning for 

“electrically coupled,” and the plain and ordinary meaning should apply. Therefore, I concur 

with the sound reasoning of the courts in Silicon Graphics and GSK and adopt a construction of 

“electrically coupled” that allows for an indirect connection. I have adopted the construction set 

forth by the court in GSK, as I find that it most clearly describes the plain and ordinary meaning 

of “electrically coupled.” 

MemsTech asserts that “electrically coupled” should be limited to direct physical 

connections because the specification only describes and depicts a direct physical connection. 

(RIB at 12-13; RRB at 12-13.) As explained supra, the claims should not be limited to the 

preferred embodiment simply because it is the only embodiment disclosed in the specification. 

Phillips, 415 F.3d at 1323. The specification will limit the claims when the inventor acts as his 

own lexicographer or when there is a clear disavowal of claim scope. Id. at 13 16. I do not find 

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that either of these circumstances exist in the ‘23 1 patent specification. Therefore, it would be 

improper to limit “electrically coupled” based on the preferred embodiment. 

MemsTech also relies on PCTEL, Inc. v. Agere Sys., Inc., 2006 WL 734385 (N.D. Cal. 

Mar. 20,2006) to support its position that “electrically coupled” requires a direct physical 

connection. (RIB at 13.) In PCTEL, the court construed the phrase “a device coupled to the 

local bus” to mean “a device directly connected to the local bus.” Id. at *6. PCTEL is 

distinguishable from the present case and thus does not support MemsTech’s argument. In 

PCTEL, the intrinsic evidence dictated the construction of “coupled.” Specifically, the court 

found that additional claim language, the specification, and the prosecution history all required 

an interpretation of “coupled” that was limited to a direct physical connection. Id. at *5-6. Here, 

there is no intrinsic evidence requiring such a limitation. Therefore, it would be improper to 

adopt a construction of “electrically coupled” that varied from the term’s ordinary meaning. 

C. ‘089 Patent 

1. Claim 1 Preamble 

The preamble of claim 1 is “[a] surface mountable package for containing a transducer, 

the transducer being responsive to sound pressure levels of an acoustic signal to provide an 

electrical output representative of the acoustic signals, the surface mountable package 

comprising:” While the parties do not dispute the meaning of claim terms in the preamble, they 

dispute whether or not the preamble amounts to a claim limitation. 

Knowles’ Position: Knowles argues that the term “surface mountable package” makes 

clear that the invention is directed toward the package that is the overall device that contains the 

elements recited in the claims. (CIB at 23 .) 

Knowles argues that the term “surface mountable package” appearing in the preamble is 

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a limitation in the claim. Knowles cites Eaton Corp. v. Rockwell Int’l Corp., 323 F.3d 1332, 

1339 (Fed. Cir. 2003) to support the position that “[wlhen limitations in the body of the claim 

rely upon and derice antecedent basis from the preamble, then the preamble may act as a 

necessary component of the claimed invention” such that the preamble is an express limitation. 

(CRB at 10-1 1 .) 

MemsTech’s Position: MemsTech argued in its post-hearing brief that the preamble of 

claim 1 should not be construed as limiting. Nevertheless, they agreed with Knowles and Staff 

that the definition of “a surface mountable package” should be the overall device, capable of 

being mounted to the surface of a printed circuit board, that contains the elements recited in the 

claims. (RIB at 14-15.) 

Commission Investigative Staffs Position: Staff argues that, although the claim 

preamble is not usually construed as a claim limitation, the preamble is regarded as limiting if it 

recites essential structure that is important to the invention or necessary to give meaning to the 

claim. (SIB at 54 (citing NTP, Inc. v. Research in Motion, Ltd, 418 F.3d 1282, 1305 (Fed. Cir. 

2005)).) Staff submits that the term “surface mountable package” in the preamble means “the 

overall device, capable of being mounted to the surface of a printed circuit board, that contains 

the elements recited in the claims.” 

Staff argues that the preamble, in light of the specification, makes clear that “surface 

mountable package” is a limitation in the claim. (SIB at 55 (citing citing Corning Glass Works 

v. Sumitomo Elec. U.S.A., Inc., 868 F.2d 1251, 1257 (Fed. Cir. 1989)).) Staff recites the ‘089 

specification which states that the invention claimed therein is directed to “a silicon condenser 

microphone package which allows acoustic energy to contact a transducer which provides the 

necessary pressure reference while at the same time protects the transducer from light, 

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electromagnetic interference, and physical damage.” (Id. (quoting CX-2 at 1 :44-49).) They also 

note that the specification states “[tlhe present invention is directed to microphone packages.” 

(Id. (quoting CX-2 at 3: 1 l).) 

Staff asserts that the specification makes clear that the inventor was working on the 

problem of finding a better package - one that overcame the problems associated with having 

unexposed microphone elements built directly on the surface of a silicon die and having 

packages that were too expensive or difficult to manufacture. (SIB at 55 (citing CX-2 at 1:21- 

40).) Staff says that the ‘089 invention is not directed to devices where the microphone is built 

directly on a silicon die, nor is it directed to metal can, DIP or SOIC packages. (Id.) Rather, the 

inventor was focused on creating packages that provided protection and could be made cheaply 

and easily. (Id. at 55-56.) Staff asserts that the preamble does not merely state a purpose or 

intended use for the claimed structure, but gives life and meaning to the claim and provides a 

“further positive limitation” to the claimed invention. (Id. at 56.) 

Staff argues that, because the body of claim 1 refers back to the preamble, the preamble 

should be construed as a limitation. (SRB at 17 (citing CutuZinu khktg. Int ’I, Inc. v. 

CooZsuvings.com, Inc., 289 F.3d 801,808 (Fed. Cir. 2002)).) Staff points out that the preamble 

recites, among other things, a surface mountable package, and that the body of claim 1 includes a 

reference to “the surface mountable package.” (Id. (citing CX-2 at claim l).) 

Staff points to MemsTech’s argument that Staffs proposed construction “is not limiting 

in any meaningful way.” (SRB at 17.) Staff asserts that its proposed construction does in fact 

limit the ‘089 invention, because it explains how the limitations recited in the body of the claims 

relate to one another. (Id.) Hence, it provides the structural framework for the elements in the 

claims and requires the substrate, cover, and transducer to hction as a “package,” which is 

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consistent with the teachings of the ‘089 specification. (Id.) 

Discussion and Conclusion: I find that the term “surface mountable package” in the 

preamble of claim 1 is a claim limitation. 

Whether to treat a claim preamble as a limitation is a determination made after a review 

of the entire patent. Cutulinu, 289 F.3d at 808. In Cutulinu, the Federal Circuit stated: 

In general, a preamble limits the invention if it recites essential structure or steps, 

or if it is “necessary to give life, meaning, and vitality” to the claim. Conversely, 

a preamble is not limiting “where a patentee defines a structurally complete 

invention in the claim body and uses the preamble only to state a purpose or 

intended use for the invention.” 

Id. (citations omitted). The court went on to explain that “a preamble generally is not limiting 

when the claim body describes a structurally complete invention such that deletion of the 

preamble phrase does not affect the structure or steps of the claimed invention.” Id. at 809. 

The invention at issue in Cutulinu was a system for distributing coupons to consumers 

through kiosks. The court had to determine whether the phrase “located at predesignated sites 

such as consumer stores” was a limitation when it appeared in the preamble. Id. at 807-808. The 

court found that the phrase was not a claim limitation. The court examined the specification and 

found that the location of the kiosks was not an essential feature of the invention. Id. at 8 10. 

The applicants did not rely on the preamble to distinguish the invention from the prior art during 

prosecution. Id. Importantly, the court found that the claim was complete without the preamble: 

Moreover, deletion of the disputed phrase from the preamble of Claim 1 does not 

affect the structural definition or operation of the terminal itself. The claim body 

defines a structurally complete invention. The location of the terminals in stores 

merely gives an intended use for the claimed terminals. 

Id. 

In Corning Glass, the claim preamble was “[aln optical waveguide comprising.” 868 

F.2d at 1256. The court found that the preamble served as a limitation because the specification 

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was clear that the invention was limited to fibers working as waveguides. As the court 

explained: “[tlhe invention is restricted to those fibers that work as waveguides as defined in the 

specification, which is not true with respect to fibers constructed with the limitations of 

paragraphs (a) and (b) only.” Id. at 1257. 

I find that the situation before me is closer to Corning Glass than Catalina. Here, the 

term “surface mountable package” is necessary to give meaning to the claims. The term makes 

clear that all of the components listed in the claim body must come together and form a 

“package.” This term adds a limitation that is not otherwise present in the claim body. 

Additionally, the term “the surface mountable package” is found in the body of claim 1, 

and thus the preamble provides an antecedent basis. This further supports the conclusion that the 

preamble acts as a limitation. Bicon, Inc. v. Straumann, Co., 441 F.3d 945, 952-953 (Fed. Cir. 

2006) (finding that a claim preamble was a limitation because, inter alia, it provided antecedent 

basis for the claim body); NTP, Inc., 418 F.3d at 1306 (stating that “[blecause [the claim] 

limitations derive their antecedent basis fi-om the claim 1 preamble and are necessary to provide 

context for the claim limitations, the use of these limitations in the preamble limits the claim.”) 

Looking at claim 1, the components found in the body of the claim are, broadly stated, a 

transducer, first member, second member, chamber formed by connection of first and second 

members, volume, and aperture. Such a combination of elements could be found on a printed 

circuit board containing other elements that are not filly enclosed by the cover. Such a device 

would not be a “package” because it would not be a single, self-contained housing for a MEMS 

microp hone. 

Dr. Gilleo testified 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 

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system). If there is only one connection level, then there is no package. (CX-392C at Q. 13.) 

This is distinguished from what Dr. Gilleo called “chip-on-board,” where the microphone is 

mounted directly on the printed circuit board. (CX-392C at Q. 14.) This is further supported by 

Dr. Gilleo’s textbook on packages, where he states that “[tlhe package provides the first-level 

(device to package) interconnect structure and must enable second-level (package to circuit 

board) electrical connections.” (CX-396 at 8.) 

Therefore, I find that the term “surface mountable package” in the preamble is a 

limitation. Because there is no dispute regarding the meaning of this term, I find it unnecessary 

to construe it. 

2. “transducer” 

The term “transducer” appears in asserted claims 1,9, 10, 15 and 29. 

Knowles’ position: Knowles contends that the term should be defined as “a condenser 

microphone which converts acoustic signals to electrical signals.” (JSRCC.) 

Knowles argues that the preamble limits the transducer to one that is “responsive to 

sound pressure levels of an acoustic signal to provide an electrical output representative of the 

acoustic signals.” Knowles argues that this equates to a “microphone.” (CIB at 23-24.) 

Knowles points to the testimony of MemsTech’s expert who, they assert, “conceded at hearing, 

general pressure sensors are not responsive to the tiny complex acoustic signals that one needs to 

pick up with a microphone.” (CIB at 24 (citing Tr. at 334-335).) 

MemsTech’s position: MemsTech contended prior to the hearing that this term needs 

no construction. (JSRCC.) MemsTech did not address this term further in either its initial or 

reply post-hearing briefs. 

Commission Investigative Staffs Position: Staff contended prior to the hearing that the 

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term should be construed as “the transducer being responsive to sound pressure levels of an 

acoustic signal to provide an electrical output representative of the acoustic signals”. (JSRCC.) 

Staff did not address this term further in either its initial or reply post-hearing briefs. 

Construction to be applied: “a microphone.” 

In relevant part, the preamble of claim 1 requires “[a] surface mountable package for 

containing a transducer, the transducer being responsive to sound pressure levels of an acoustic 

signal to provide an electrical output representative of the acoustic signals . . .” The foregoing 

passage describes, in its ordinary meaning, a “microphone.” 

Support for this construction is provided by the dictionary definition of the term 

“microphone” as: “an instrument whereby sound waves are caused to generate or modulate an 

electric current usu. for the purpose of transmitting or recording sound (as speech or music).” 

WEBSTER’S NEW COLLEGIATE DICTIONARY (1 979 ed.) p. 72 1. 

3. “electricallv coupled” 

The term “electrically coupled” appears in asserted claim 1. 

Knowles’ position: Knowles contends that this term should be construed as “a 

connection between two nodes through which electrons may flow from one node to the other.” 

(JSRCC.) 

Knowles refers to its argument regarding this term in its discussion of the ‘23 1 patent. 

Knowles argues that the term should be given its meaning commonly understood when an 

electrical connection between electronic components is described, which is a connection between 

two nodes through which electrons may flow fiom one node to another. Knowles says this 

definition is simple and straightforward and best comports with the language of the claims and 

the most basic understanding of electricity. (CIB at 2 1) Knowles points out that both Mr. 

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Mallon and Mr. Giachino - using identical language - state in. their expert reports that they 

“interpret the word ‘coupled’ to mean that two coupled items may be directly or indirectly 

attached, as by a linking member.” (CIB at 22-23 (citing Tr. at 360, 535-536).) 

Knowles argues that there is no “direct” limitation in the claims or anywhere else in the 

‘089 patent. Knowles asserts there is no clear limitation in the specification, and points out that 

the patent expressly states that no limitations are to be construed. (CIB at 24 (citing CX-1 

at2:636; CX-2 at 11:14-18; Rexnord Corp. v. Laitram Corp., 274 F.3d 1336 (Fed. Cir. 2001)).) 

Knowles argues that preferred embodiments, even an only embodiment, do not limit the 

scope of claims. (CIB at 24-25 (citing Phillips, 415 F.3d at 1323).) Knowles adds that a 

preferred embodiment incorporating a direct connection to the substrate is not an instance in 

which a direct connection is “described as the advantage and distinction of the invention” as 

required in the analysis of On Demand Machine Corp., 442 F.3d at 1340, upon which 

MemsTech relies in its argument. (Id) 

Knowles asserts that MemsTech has not offered any evidence suggesting an intent in the 

‘089 patent to incorporate such a limitation into the claims. Knowles concedes that Southwall 

Techs., Inc. v. Cardinal IG Co., 54 F.3d 1570 (Fed. Cir. 1995) found that arguments made during 

the prosecution regarding the meaning of a claim term are relevant to the interpretation of that 

term. Knowles adds, however, that Knowles did not make any arguments during prosecution of 

the ‘089 patent regarding the meaning of the term “electrically coupled.” (CIB at 25.) 

Knowles asserts that nowhere in the application for the ‘089 patent is an argument recited 

about a “direct” connection. Knowles avers that MemsTech’s argument that a November 9, 

2006 office action added those limitations is in error when it asserts Knowles distinguished the 

While the issue here is only construction of a claim in the ‘089 patent, Knowles cited language in the ‘231 patent 

along with language in the ‘089 patent. I will consider the language from the ‘089 patent (i.e. CX-2) in this 

construction. 

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invention of the ‘089 patent from Cote by arguing that Cote does not disclose a direct connection 

to the substrate. Knowles says that the distinction made between Cote and the invention of the 

‘089 patent that was argued was that Cote did not have a transducer mounted to a surface at all, 

and as such, could not teach any electrical connection - not that it could not teach simply a direct 

connection. (CIB at 25 (citing RX-255 at 207).) 

Knowles concludes that the remarks in the November 9,2006 response do not constitute 

and cannot be construed as “words or expressions of manifest exclusion or restriction, 

representing a clear disavowal of claim scope.” (CIB at 26 (citing Teleflex, Inc., 299 F.3d at 

1327).) 

MemsTech’s position: MemsTech contends that the term should be given the meaning 

“the transducer is directly connected, (such as through a wire bond or a flip-chip bond) to the 

patterned conductive layer on the substrate. Citing ‘089 patent, col. 3:47-48, col. 3:61-63, col. 

6:56-59, col. 6:64-65, col. 7:2-5, col. 7: 18-20, Figs. 1,6.” (JSRCC.) 

MemsTech argues that the term should be construed to mean that the transducer is 

directly connected to the patterned conductive layer on the substrate. MemsTech asserts that this 

construction is consistent with the specification, prosecution history, and with how one of 

ordinary skill in the art would construe “electrically coupled” in the context of the ‘089 patent. 

(RIB at 15.) 

MemsTech says that all of the intrinsic evidence supports its position. (RIB at 15- 16 

(citing RX-363 at Q. 134; CX-27 at 3:62-63,6:64-65; RX-368C at Q. 75).) MemsTech points to 

the testimony of its expert, Mr. Mallon, on the issue: 

The specification makes clear that electrical coupling means a direct electrical 

connection. No other mode of connection is described or contemplated. Flip chip 

MemsTech actually cites to RX-132. Both RX-132 and CX-2 are copies ofthe ‘089 patent. For the sake of 

consistency, I will cite to CX-2 when referring to the ‘089 patent. 

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bump bonding, the preferred method of electrical coupling and the only method 

shown only allows a direct connection to the substrate for die[s] that are substrate 

mounted. 

(RX-363 at Q. 134.) 

MemsTech also asserts that Mallon testified that the prosecution history of the ‘089 

patent supported its proposed construction for “electrically coupled,” particularly where the 

applicant distinguished its invention over the prior art Cote reference: 

During prosecution of the ‘089 patent, the applicant argued that a prior art 

reference did not disclose the transducer being attached to the surface of the 

substrate. [RX-255, November 9,2006 Amendment in Response to Non-Final 

Office Action, at 91. The applicant then argued that since the transducer is not 

attached to the surface, there cannot be “the further claimed electrical connection 

between the transducer and the at least one patterned conductive layer formed on 

the surface to which it is attached.” [Id. at 101. In order to avoid the prior art, the 

applicant distinguished the invention on the ground that the transducer is surface 

mounted, i. e. directly connected to the patterned conductive layer formed on the 

substrate. 

(RX-368C at Q. 76.) 

MemsTech argues that Knowles’ assertion of infringement requires that the term 

“electrically coupled” include a transducer that is first wired to another device, which in turn is 

wired to the substrate. MemsTech argues that is not consistent with the meaning of “electrically 

coupled” as the intrinsic evidence shows. MemsTech argues that Knowles’ proposed 

construction is not supported by the specification or the prosecution history, does not comport 

with the understanding of those of skill in the art, and is contrary to the “holding in Phillips that 

the specification is the single best guide to determine a claim term’s meaning. 41 5 F.3d at 13 16- 

17.” (RIB at 16.) MemsTech also cites an unpublished district court case - PCTEL, Inc. v. 

Agere Sys, Inc., 2006 U.S. Dist. LEXIS 25943, *12-19 (N.D. Cal. March 20,2006) - saying 

“[tlhe prosecution history can often inform the meaning of the claim language by demonstrating 

how the inventor understood the invention and whether the inventor limited the invention in the 

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course of prosecution, making the claim scope narrower than it would otherwise be.” (RIB at 

16.) 

In its reply brief, MemsTech argues that the Knowles’ position regarding the meaning of 

the disputed portion of the prosecution history is contrary to the file history and Mr. Mallon’s 

unchallenged testimony. (RRE3 at 15.) MemsTech asserts that the applicant told the USPTO that 

“Cote cannot teach the further claimed electrical connection between the transducer and the at 

least one patterned conductive layer formed on the surface to which it is attached.” (Rx-255 at 

207.) They say this “electrical connection” is how the transducer is “electrically coupled” to the 

substrate. (RRB at 15.) 

MemsTech also supports the Staffs argument on this construction. (FUZE3 at 15.) 

Commission Investigative Staffs Position: Staff contends that the term should be 

defined as “the transducer is directly connected, (such as through a wire bond or a flip-chip 

bond) to the patterned conductive layer on the substrate.” (JSRCC.) 

Staff agrees with MemsTech’s proposed construction. Staff argues that, unlike the same 

term used in the ‘23 1 patent, Knowles limited “electrically coupled” to require a direct 

connection, based on statements made during the prosecution of the application leading to the 

‘089 patent. (SIB at 52.) 

Staff cites to Phillips, 415 F.3d at 13 17 and states that “the prosecution history, which 

consists of the complete record of the proceedings before the PTO, can provide some of the best 

evidence of what the patent was meant to cover.” Staff includes the following quote from 

Phillips: “[tlhe prosecution history can often inform the meaning of the claim language by 

demonstrating how the 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 

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be.” Id. (citing Vitronics, 90 F.3d at 1582-83). Staff argues that Knowles made clear and 

express representations during prosecution regarding the meaning of the term “electrically 

coupled” and thus limited the scope of this claim term. 

Staff asserts that Knowles submitted an argument distinguishing its claims from the Cote 

prior art reference, to wit: 

Cote does not teach or suggest that the transducer is mounted to a surface. As 

such, Cote cannot teach the further claimed electrical connection between the 

transducer and the at least one patterned conductive layer formed on the surface to 

which it is attached. In fact, Cote fails to teach or suggest the formation of the 

patterned conductive layer associated with any part of the described electret 

microphone. 

(RX-255 .) 

Staff avers that the Examiner issued the claims based on this representation by Knowles. 

(SIB at 53.) Staff says that the foregoing excerpt from the prosecution history shows that 

Knowles understood its invention to cover a transducer mounted (i.e. directly attached) to the 

substrate by both physical and electrical means. (Id. (citing Ekchian v. Home Depot, Inc., 104 

F.3d 1299, 1304 (Fed. Cir. 1997) (“[Slince by distinguishing the claimed invention over the prior 

art, the applicant is indicating what the claims do not cover, he is by implication surrendering 

such protection.”)) .) 

In its reply brief, Staff argues that Knowles is attempting to read out “mounted to a 

surface” in the Office Action Response. (SRB at 18.) They assert that the use of the phrase is 

important, because it shows that Knowles, at the time it was seeking patent protection, 

understood the invention of claim 1 to require the transducer to be “mounted to a surface.” (Id.) 

They continue that the use of the term “as such” shows that, because Cote did not teach a 

transducer mounted to a surface; this reference could not further teach an electrical connection 

between the surface and the transducer. (Id.) Staff argues that Knowles characterized its 

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invention as requiring the transducer to be mounted to the surface in order to have an electrical 

connection between the two, and Knowles’ characterization of the prosecution history should be 

rejected. (Id.) 

Construction to be applied: “arranged so that electrical signals may be passed either 

directly, or indirectly via intervening circuitry, from one component to another.” 

Element 1 of claim 1 provides, in part, “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.” (CX-2 at 11 :28-3 1 .) 

The term “electrically coupled” appears in the element 2 of asserted claim 1, which reads 

“the surface being formed with at least one patterned conductive layer, the patterned conductive 

layer being electrically coupled to the transducer; an outside surface of the surface mountable 

package comprising a plurality of terminal pads electrically coupled to the patterned conductive 

layer.” (Id. at 11:32-36.) 

The ordinary meaning of “electrically coupled” does not require a direct physical 

connection. Silicon Graphics, Inc. v. n Vidia Corp., 58 F. Supp. 2d 33 1,346 (D. Del. 1999) 

(“The court notes that the ordinary and accustomed meaning of the term ‘couple,’ even when 

used in an electronics context does not solely mean ‘directly coupled.”’). In GSK Techs. Inc. v. 

Eaton Elec. Inc., 2008 WL 90671 3 (E.D. Tex. Apr. 1,2008), the court construed “electrically 

coupled.” In construing the term, the court noted that “[als the intrinsic evidence does not 

provide a special meaning for ‘electrically coupled,’ its plain and ordinary meaning applies.” Id. 

at *5. The court found that the plain and ordinary meaning of the term did not require a direct 

physical connection. Id. It construed “electrically coupled” to mean “arranged so that electrical 

signals may be passed either directly, or indirectly via intervening circuitry, from one component 

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to another.” Id. 

Here, I find that the intrinsic evidence does not provide any special meaning for 

“electrically coupled” and the plain and ordinary meaning should apply. Therefore, I concur 

with the sound reasoning of the courts in Silicon Graphics and GSK and adopt a construction of 

“electrically coupled” that allows for an indirect connection. I have adopted the construction set 

forth by the court in GSK, as I find that it most clearly describes the plain and ordinary meaning 

of “electrically coupled.” 

MemsTech bases its argument in part on the testimony of its expert Mallon, and in part 

on the prosecution history in which Knowles distinguished Cote on the basis that it did not teach 

a transducer mounted to the surface of the substrate. MemsTech’s expert Mallon said in his 

direct statement that the term should be construed as requiring a direct connection: 

The specification makes clear that electrical coupling means a direct electrical 

connection. No other mode of connection is described or contemplated. Flip chip 

bump bonding, the preferred method of electrical coupling and the only method 

shown only allows a direct connection to the substrate for die that are substrate 

mounted. 

(RX-363 at Q. 134.) 

I do not concur with Mr. Mallon’s approach to construction. I have already observed that 

the claim itself does not provide any special meaning for the term “electrically coupled” and the 

plain meaning should normally apply. Mr. Mallon’s testimony cited, supra, by MemsTech (RX363 at Q. 134) relies generally on the specification rather than the language of the claim. As 

discussed in Phillips, supra, it is well settled that the claims of a patent define the invention to 

which the patentee is entitled the right to exclude. While the specification is always highly 

relevant to the claim construction analysis, it cannot be used to import limitations into claims, 

absent exceptions to the rule not relevant here. That error is precisely what Mr. Mallon commits 

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in his approach to claim construction. Mr. Mallon also makes a leap in logic that is not in 

evidence when he attempts to limit the invention of the ‘089 patent to one that includes “flip chip 

bump bonding,” asserting that it is the “only method shown” in the specification, and saying that 

it “only allows a direct connection to the substrate for die that are substrate mounted.” 

Mr. Mallon testified regarding the prosecution history, characterizing it as: 

During prosecution of the ‘089 patent, the applicant argued that a prior art 

reference did not disclose the transducer being attached to the surface of the 

substrate. [RX-255, November 9,2006 Amendment in Response to Non-Final 

Office Action, at 91. The applicant then argued that since the transducer is not 

attached to the surface, there cannot be “the further claimed electrical connection 

between the transducer and the at least one patterned conductive layer formed on 

the surface to which it is attached.” [Id. at lo]. In order to avoid the prior art, the 

applicant distinguished the invention on the ground that the transducer is surface 

mounted, i. e. directly connected to the patterned conductive layer formed on the 

substrate. The patent was obtained in part based on that argument. The 

configuration shown was patentable specifically because prior art references did 

not show a direct electrical connection, and the attorney argued that the transducer 

must be mounted on the substrate to obtain such a connection. That is not true for 

anything except a flip chip type of mounting. In fact, a transducer connected 

through a wire or even a transducer connected through a wire bond could not be 

mounted separate from the substrate and that connection could still be made. 

Clearly the argument is being made here for a direct connection that would not be 

covered by an electrical coupling to an ASIC. 

(RX-368C at Q. 76.) 

Staff supports MemsTech’s position, asserting in addition that the Examiner issued the 

claims based on this representation by Knowles, and that Knowles is attempting to read out 

“mounted to a surface” in the Office Action Response. 

I find that the prosecution history does not amount to an attempt by Knowles to “read 

out” the term “mounted to a surface,” nor does it attempt to avoid the prior art by distinguishing 

the invention on the ground that the transducer is directly connected to the patterned conductive 

layer formed on the substrate, as Mr. Mallon posits. There is no showing that the types of 

connections described by Mr. Mallon in his testimony could not be accomplished with a 

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PUBLIC VERSION 

transducer mounted on the same surface as that containing a patterned conductive layer. 

The prosecution history contains one reference relevant to this issue, to wit: 

The package set forth by claims 22-60 is unique and particularly adapted for use 

with a MEMS type silicon microphone, although other transducer types may 

benefit from the inventive package. 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 the microphone transducer is 

attached to a surface 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 connection between the 

transducer and the at least one patterned conductive layer formed on the 

surface to which it is attached. In fact, Cote fails to teach or suggest the 

formation of a patterned conductive layer associated with any part of the 

described electret microphone.” 

(RX-255 at 206-207) (emphasis added.) 

The claim indicates that the transducer is attached to a surface on one of the first or 

second member. That surface is formed with at least one patterned conductive layer that is 

electrically coupled to the transducer. The prosecution history reveals that Knowles argued that 

Cote cannot teach the electrical connection between the transducer and the at least one 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. Knowles said in addition that Cote fails to teach or 

suggest the formation of a patterned conductive layer associated with any part of the described 

electret microphone. Nothing in the prosecution history argues to limit the term “electrically 

coupled” to a direct connection. 

In addition, the USPTO’s stated reason for granting the patent does not contradict this 

construction. Contrary to Mr. Mallon’s testimony, the invention was not patentable “specifically 

because prior art references did not show a direct electrical connection, and the attorney argued 

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PUBLIC VERSION 

that the transducer must be mounted on the substrate to obtain such a connection.” (RX-368 at 

Q. 76) (emphasis added.) The USPTO’s rationale for issuing the patent merely states as one 

reason for granting the patent that “the prior art of record does not teach or suggest the 

combination of the surface being formed with at least one patterned conductive layer, the 

patterned conductive layer being electrically coupled to the transducer.” (RX-255 at 366.) 

4. “volume” 

The term “volume” appears in asserted claims 1, 15 and 28. 

Knowles’ position: Knowles originally contended that the term should be construed as 

“an interior open space defined by a transducer and one of a first member or a second member.” 

(JSRCC.) 

Knowles argues that the spatial limitations described in the claim are “straightforward: 

One boundary of the defined space is provided by the transducer. Another boundary is provided 

by at least one of the first member or second member.” (CIB at 26) (emphasis added.) 

Knowles says that MemsTech attempts to include three additional limitations into the 

construction of this term: (1) that the “volume” must be within a recess in the substrate; (2) that 

the “volume” must be a “back volume;” and (3) that the boundary of the defined space cannot 

include the first member and the second member. Knowles takes exception to these limitations, 

arguing that they add limits not found in the claim language, add limits contrary to language in 

the claims and the doctrine of claim differentiation, and add limits that are inconsistent with 

exemplary embodiments shown in the specification. Id 

Knowles posits that there is nothing stated in the claim adding a limitation that the 

volume must be formed by a recess in the substrate, and argues that such a limitation should not 

be written into the claim. (Id. (citing PrimaTeck I4 L. L. C. v. PoZypap S.A. R. L., 3 18 F.3d 1 143 

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PUBLIC VERSION 

(Fed. Cir. 2003) and Murkmun v. Westview Instruments, Inc., 52 F.3d 967 (Fed. Cir. 1995) (en 

banc), ufd, 5 17 U.S. 370 (1 996)).) Knowles argues that the doctrine of claim differentiation 

prevents reading this limit into the claim, because claim 3, which depends from claim 1, adds the 

limitation that the volume “includes a recess formed in the surface.” (Id. at 26-27 (citing Phillips, 

4 15 F.3d at 13 1 S).) Knowles also asserts that there is nothing in the specification or the file 

history that would limit the claimed “volume” to a particular volume in the substrate. Knowles 

points to Figures 15 and 23 to show that the specification contains examples of the volume 

formed without use of a recess or hole in the substrate. (CIB at 27.) Knowles contrasts Figures 

15 and 23 with Figures 16 and 24, which show a recess in the substrate. (Id.) 

Regarding the description of the volume as a “back volume,” Knowles says that there is 

no limitation in the specification that the term must refer to a particular type of volume (i.e. a 

back volume). To the contrary, Knowles argues, the specification expressly disavows any 

limitation to the embodiments shown (CIB at 29 (citing CX-1 at 2:63,5:7-1 18; CX-2 at 4:4, 

11:14-18; Rexnord Corp. v. Luitrum Corp., 274 F.3d 1336 (Fed. Cir. 2001)).) Knowles asserts 

that MemsTech’s argument on this point is only pertinent to MemsTech’s defenses related to its 

“reverse mount” unit where the transducer is directly over the acoustic port. (Id) That 

configuration, Knowles states, is specifically shown and described in the ‘089 patent in Figure 26 

and related text and is expressly claimed in dependent claims 7 and 26. (Id.) 

Regarding the alleged limit that the boundary of the defined space cannot include the first 

member and the second member, Knowles argues that there is no language limiting the volume 

to one defined by “only” one of the first member or second member, as opposed to “at least” one 

of the first member or the second member. (CIB at 29.) Knowles argues that MemsTech’s 

Knowles actually cites its proposed findings of fact 3 11-3 14. Findings of Fact 3 11 and 3 12 refer to the ‘23 1 patent 

and not to the ‘089 patent, and appear irrelevant to the construction of “volume” as used in the ‘089 patent. 

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PUBLIC VERSION 

position leads to inconsistent or untenable results. First, they say, under claim 28, the volume 

includes a portion of the chamber. In this situation, the volume has to be the portion of the 

package above the transducer and under the cover, as shown in Figure 26. They assert the 

volume would also thus be defined by both the first member (e.g. cover) and the second member 

(e.g. substrate). Knowles argues that this position leads to an unworkable and unintelligible 

claim 28. (CIB at 29.) 

In addition, Knowles argues that claim 7, which depends from claim 1, expressly claims a 

configuration whereby the transducer is attached to the surface completely covering the acoustic 

port, as shown in Figure 26. Knowles asserts that if the volume is limited to a “back” volume as 

asserted by MemsTech, then that volume must be the area above the transducer and below the 

cover of the unit, similar to the configuration shown in Figure 14. This would, they say, comport 

with claim 28, which claims that the “volume7’ includes a portion of the chamber. Since claim 

28 depends from claim 1, and since claim 1 is the only independent claim and covers the 

embodiment of Figure 26, the volume would be defined by both the first member or the second 

member. They characterize this as two interpretations that are inherently inconsistent and cannot 

co-exist. (CIB at 30.) 

Knowles argues that under its proposed construction, whereby volume is not limited and 

can be a front volume or a back volume, and whereby the volume is defined by “at least” one of 

the recited first member or second member, all of the claims are consistent and cover all of the 

embodiments shown in the specification. (CIB at 30.) 

In its reply brief, Knowles addresses the argument that under its construction claim 1 of 

the ‘089 patent would be identical to claims 1 and 2 of the ‘23 1 patent, thereby raising a double 

patent issue. (CRB at 14.) First, Knowles points to MemsTech’s pre-hearing statement at 137, 

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PUBLIC VERSION 

in which it is acknowledged that the ‘089 patent claims include pads for surface mounting while 

the ‘23 1 patent claims do not. (Id.) Knowles also asserts that claim 1 of the ‘23 1 patent 

expressly requires a package for providing a shield from an interference signal and claim 2 

requires a package for providing a shield from an interference signal. (Id. (citing CX-l).) 

Knowles argues that there is no such limit or requirement in claim 1 of the ‘089 patent. (Id. 

(citing CX-2).) Conversely, Knowles avers, claim 1 of the ‘089 patent requires and is limited to 

a package that is surface mountable, and no such limit or requirement exists in claim 1 or claim 2 

of the ‘23 1 patent. (Id. (citing CX-1; CX-2).) 

Knowles argues that when the claims are not identical, double patenting cannot exist. 

(Id. (citing Perricone v. Medicis Pharm. Corp., 432 F.3d 1368, 1373 (Fed. Cir. 2005).) Knowles 

also asserts that there is no evidence of obviousness-type double patenting. Assuming arguendo 

that such evidence did exist, Knowles argues that double patenting can be overcome, at any time 

and without limiting the claims, by a terminal disclaimer. (Id. (citing Bott v. Four Star Corp., 

675 F. Supp. 1069 (E.D. Mich. 1987); Buyer AG v. Barr Lab, 798 F. Supp. 196 (S.D.N.Y. 

1992)).) 

MemsTech’s position: MemsTech contends that the term should be defined as “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. Citing the 

‘089 patent, 3:41-43,3:49-64,4:8-11,7:5-7, Figs. 1-6 (element lS), 24 (element 18); RX-257, 

‘089 provisional application no. 60/253,543; RX-255, ‘089 Pros. Hist. (Original claim 1 filed 

with application on Apr. 22,2005).” (JSRCC.) 

MemsTech points to the testimony of Mr. Mallon in which, they assert, he said the term 

means “the transducer back volume formed by the transducer and the substrate which include a 

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PUBLIC VERSION 

recess that forms the back volume.” (RIB at 17 (citing RX-363 at Qs. 136, 137).) MemsTech 

says that Mr. Mallon based this definition on the specification, in which “the word volume in the 

specification is only used with the word back always forming the phrase back volume.” (Id.) 

MemsTech asserts that Dr. Gilleo admitted that every instance of the word “volume” in the ‘089 

patent referred to the back volume, and that every figure in the ‘089 patent that includes back 

volume figure element 18 shows it as a recess or hole in the substrate. (Id. (citing Tr. at 172:23- 

173:13).) 

MemsTech asserts that Dr. Gilleo testified that the volume is defined, in part, by the first 

member (substrate), defined, in part, by the second member (cover), defined, in part, by the 

transducer, and defined, in part, by the amplifier. (RIB at 17 (citing Tr. at 170:21-172:14).) 

MemsTech avers that Gilleo admitted that, according to his construction, the volume is not 

defined by the transducer and one of the first member or the second member, which is what the 

claim language recites. (Id. (citing Tr. at 172:15-18).) MemsTech says that Gilleo admitted that, 

under his proposed construction, all MEMS microphone packages would have a chamber, a 

volume, and an aperture. (Id. (citing Tr. at 172:19-22; RX-370 at Fig. l).) 

MemsTech attacks Gilleo’s construction, saying it cannot be squared with the claim 

requirement that the volume be defined by the transducer and one of the first member or the 

second member. (RIB at 18.) Gilleo’s construction, MemsTech argues, “to the extent it can be 

understood” would result in the volume being defined by (in addition to other elements) both the 

first member and the second member. (Id.) MemsTech argues that its proffered construction is 

consistent with the claim language in that the back volume 18 is defined by the transducer and 

the first member only. (Id.) 

In its reply brief, MemsTech asserts that Knowles’ reference to Figures 15 and 23 to 

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PUBLIC VERSION 

support its argument is misplaced. (RRB at 18.) MemsTech states that Figure 15 does not show 

any volume whatsoever, or a microphone. (Id.) Instead, MemsTech says, it is providing an 

alternative description of layer 50 in the printed circuit board. (Id.) MemsTech argues that the 

specification states that the back volume 18 in Figure 23 is formed by the back hole of the silicon 

microphone only, a different embodiment from that of the asserted claims. (Id. (citing CX-2 at 

659-60).) MemsTech argues that Figure 23 does not relate to claim 1 of the ‘089 patent, which 

requires that the volume is formed by the transducer and one of the first or second member. (Id.) 

MemsTech counters Knowles’ argument that since claim 28 requires that the volume 

includes a portion of the chamber, the volume must be the portion of the package above the 

transducer. (RRB at 18.) MemsTech argues that according to Knowles’ claim construction, 

claim 1 already requires that the volume is the portion of the package above the transducer. (Id.) 

This means that claim 28, which depends from claim 1, is superfluous and an improper 

dependent claim under 35 U.S.C. 0 112,y 4, which requires claims to specify a fbrther limitation. 

(Id. (citing PJizer Inc. v. Ranbaxy Labs. Ltd., 457 F.3d 1284, 1291-1292 (Fed. Cir. 2006) (finding 

a dependent claim invalid because it did not add a limitation to the independent claim from 

which it depended)).) MemsTech indicates that, using its consti-uction, the volume limitation of 

claim 1 is directed to a recess in the substrate under the transducer. (Id.) MemsTech argues that 

this construction comports with the claim language, and under this construction claim 28 covers 

the configuration where the volume is further enlarged to include the back hole of the transducer, 

which would result in the volume reaching up to include a portion of the chamber. (Id. at 18-19.) 

Commission Investigative Staffs Position: Staff takes the position that the term should 

be construed as “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 

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PUBLIC VERSION 

transducer.” (JSRCC.) 

Staff supports MemsTech’s proposed construction, saying that the claim explicitly 

requires the volume to be defined by the transducer and either the first member or the second 

member. (SIB at 47.) Staff points to the ‘089 patent, stating that the specification lacks any 

embodiment that describes the volume as defined by the transducer, the first member, and the 

second member. (Zd. (citing CX-2).) In fact, Staff argues, the term “volume” appears nowhere 

in the ‘089 specification, and Staff asserts that every instance of the word “volume” in the ‘089 

patent is part of the phrase “back volume.” (Zd.) Thus, Staff avers, the term “volume” as used in 

claim 1 is synonymous with the term “back volume” used in the specification. (Id) 

Staff focuses on the specification, saying that it makes explicitly clear that the “back 

volume” is the air cavity created by the transducer and the substrate and not the transducer, 

substrate and cover. (SIB at 47.) Staff refers to the following parts of the ‘089 patent to support 

its argument: (1) the abstract, which refers to “a back volume of the transducer unit is formed 

between the transducer unit and the substrate” (CX-2); (2) Figure 1-3 embodiments, which 

include “. . . a back volume or air cavity 18 . . .” (RX-2 1 69 at 2:38-43); (3) Figure 1-3 

embodiments, “. . . the combination of the substrate and the user’s board 28 creates the back 

volume 18. The back volume 18 is covered by the transducer 12” (RX-216lo at 3:59-64); (4) 

Figure 5 embodiment “. . . a method of enlarging the back volume 18 by including a chamber 32 

within the end user’s circuit board 28.” (RX-216 at 49-1 1); and (5) Figure 16-17 embodiments 

“. . . illustrate embodiments of the bottom portion 50 with enlarged back volume 18.” (RX-2 16 at 

Staffs reference is to the deposition testimony of Knowles’ expert Dr. Gilleo; but the reference does not appear in 

the transcript. Alternatively, considering the ‘089 patent (CX-2), this reference does not reveal the language quoted 

in Staffs brief. 

lo This cited reference is to the deposition testimony of Knowles’ expert Dr. Gilleo; but the reference does not 

appear in the deposition transcript. This reference and the two following references actually coincide with columns 

and lines in exhibit CX-2, the ‘089 patent. 

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PUBLIC VERSION 

6:18-19). (SIB at 47-48.) 

Staff argues that the prosecution history of the ‘089 patent supports their construction. 

They assert that both the provisional application and the application leading to the ‘089 patent 

only refer to “back volume.” (SIB at 48-49.) Staff points to the abstract of the provisional 

application which described the “back volume” as being formed “between the transducer unit 

and the substrate.” (Id. at 49 (citing RX-257 at Abstract).) Staff asserts that all the figures depict 

embodiments where the “back volume” is formed between the substrate and the transducer. (Id. 

(citing RX-257 at Figs. 1,2,3,4,5 and 6).) Staff quotes the Summary of Invention of the 

provisional application to include: 

A silicon microphone condenser package comprises a transducer, a substrate, and 

a cover. The substrate has an upper surface with a recess formed therein. The 

transducer is attached to the upper surface of the substrate and ovelaps at least a 

portion of the recess so that a back volume of the transducer is formed between 

the transducer and the substrate. 

(RX-2 5 7 .) 

In its reply brief, Staff reiterates the quote from the Summary of Invention, supra, and 

attributes it to the ‘089 patent, CX-2 at 1 :49-54. (SRB at 20-2 1 .) Staff argues that the Federal 

Circuit has held that statements in the “summary of the invention’’ section of a specification that 

tend to describe the invention overall are more likely to have a limiting impact than statements in 

the section describing preferred embodiments. (Id. (citing C.R. Bard, Inc. v. US. Surgical Corp., 

388 F.3d 858, 864 (Fed. Cir. 2004)).) 

Staff argues that the excerpt from the provisional application is identical to the language 

used to describe the claimed subject matter in the ‘089 patent. (SIB at 49 (citing CX-2 at 150- 

59.) Thus, they argue, the provisional application describes the area between the substrate and 

the transducer as the “back volume.” (Id.) 

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PUBLIC VERSION 

Staff says that the original claim 1 filed with the ‘089 patent application renamed the area 

between the transducer and the substrate as “volume.” (Id. (citing RX-255).) They say that, 

although the name changed, the structure remained the same (i.e. the volume is still the area 

formed by the substrate and the transducer). (Id.) 

Staff alleges that the Knowles expressly and unambiguously characterized the invention 

as having a back volume during the prosecution of the application for the ‘089 patent. They 

point to a Restriction Requirement issued by the Examiner that required Knowles to elect 

specific claims to prosecute on the merits. They say the examiner argued that the pending claims 

were directed to the following two categories of patently distinct species: 

“Species of surface mountable package: 

A1 . A surface mountable packaging having a volume with a recess. 

A2. A surface mountable package having a volume with a through hole. 

Species of the location of an aperture: 

B 1. An aperture in the first member. 

B2. An aperture in the second member. 

B3. An aperture in the first and second member.” 

(RX-255 at 260.) 

Staff asserts that the Examiner then required Knowles to elect a species from each group 

to prosecute. In response, Knowles disagreed with the Restriction Requirement, and they quote: 

The claims of the stated five groups of species are concerned with and recite 

related subjected [sic] matter; specifically, each relate to the methods of 

packaging a microphone transducer component and providing an acoustic inlet 

and a back volume. 

(RX-255 at 274.) 

Staff argues that the quoted excerpt shows that Knowles equated “volume” with “back 

volume.” (SIB at 50.) Specifically, Knowles characterized all of the then pending claims (which 

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issued as claims 1-29) as having a “back volume.” (Id.) 

Staff argues that the doctrine of claim differentiation (cited by Knowles) cannot override 

the clear and express language in the claims, and in this case, the prosecution history. (SIB at 5 1 

(citing ATD Corp. v. Lydall, Inc., 159 F.3d 534, 541 (Fed. Cir. 1998) (“The doctrine of claim 

differentiation cannot broaden claims beyond the scope that is supported by the 

specification.”)).) Staff says that in ATD the court refused to use the doctrine of claim 

differentiation to interpret an independent claim more broadly than a dependent claim. (SIB at 

5 1 .) Staff cites several cases for the proposition that claim differentiation will not be used to 

require an interpretation of a patent claim broader than that supported by the specification, and 

contrary to the prosecution history, arguing that similarity with another claim “will have to be 

tolerated” when the claim will bear only one interpretation. (Id. (citing Tandon Corp. v. United 

States Int’l Trade Comm’n, 583 F.2d 1017 (Fed. Cir. 1987); Laitram Corp. v. Rexnord, Inc., 939 

F.2d 1533, 1538 (Fed. Cir. 1991) and quoting Autogiro Co. ofAm. v. Unitedstates, 181 Ct. C1. 

55,384 F.2d 391,404 (1967)).) 

Staff argues that claim 1 only reasonably covers one interpretation - that the “volume” 

limitation is limited to “a space that resides at least partly within the substrate or the cover and is 

at least partly bound by the transducer.” (SIB at 5 1 .) In addition, Staff argues that Knowles’ 

construction would result in claim 1 of the ‘089 patent being identical to claims 1 and 2 of the 

‘23 1 patent. Staff argues that an inventor cannot obtain two different patents for the same 

invention. Id. at 51-52 (citing 35 U.S.C. 5 101 (a party “may obtain a patent”); In Re Goodman, 

1 1 F.3d 1046, 1052 (Fed. Cir. 1993) (“If the claimed inventions are identical in scope, the proper 

rejection is under 35 U.S.C. 5 101, because an inventor is entitled to a single patent for a single 

invention.”)). 

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PUBLIC VERSION 

Staff discusses Knowles’ arguments related to claims 7 and 28, which refer to Figure 14, 

and avers that there is no “Figure 14” in the ‘089 patent. (SRB at 22, h 4.) 

Staff argues that the specification describes three ways in which the “back volume” 18 

can be formed: (1) “controlled depth drilling of an upper surface 19 of the substrate 14 to form a 

recess over which the silicon condenser microphone is mounted;” (2) “drilling and routing of 

several individual sheets of FR-4 and laminating the individual sheets to form a back volume 

18;” and (3) “drilling completely through the substrate 14 and providing a sealing ring 22 on the 

bottom of the device that will seal the back volume 18 during surface mounting to a user’s board 

28.” (SRB at 23 (citing CX-2 at 3:49-61)) Staff argues that claim 7 is specifically directed at 

the first method - controlled depth drilling of an upper surface 19 of the substrate 14 to form a 

recess. (Id) Staff argues that its proposed construction does not lead to a superfluous claim 7, 

because claim 7 narrows the scope of claim 1 by restricting the “volume” to a recess formed only 

by the method of controlled drilling. (Id) 

Staff notes that claim 28 requires the “volume to include a portion of the ~hamber.’~ Staff 

points to Knowles’ argument regarding claim 28 that the volume must be the portion of the 

package above the transducer and under the cover as shown in Figure 26 in order for that claim 

to be consistent with claim 1. (Zd.) Staff disagrees and submits that its construction does not 

lead to an inconsistent result. Staff asserts that claim 28 appears to read on Figure 24 of the ‘089 

patent. (Id) Figure 24 depicts a transducer 58 that includes a back hole that forms part of the 

back volume 18 defined by the transducer and package member 50. Staff claims that, in 

describing Figure 24, the specification states “[tlhe back volume 18 is formed by a combination 

of the back hole of the transducer 58 (mounted down) and the bottom portion 50.” (Zd. (citing 

CX-2 at 8:4-7).) Staff states that the portion of the back hole is part of transducer 58 and is 

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PUBLIC VERSION 

located above the substrate in the chamber. (Zd. at 23-24.) Staff avers that claim 28 further 

limits claim 1 by further defining “volume.” (Id. at 24.) Therefore, Staff argues, its construction 

does no violate the principles of claim differentiation. (Zd.) 

Staff asserts that Knowles’ construction “seeks to rewrite” claim 1 to read “a volume 

being defined by the transducer and at least one of the first member or the second member.” 

(SRB at 24.) Staff argues that the underlined language reflects Knowles’ suggested 

interpretation of claim 1 which allows the “volume” to be defined by all three components -the 

transducer, the first member and the second member. (Zd.) This construction, they argue, is not 

supported by the intrinsic record. Rather, claim 1 expressly states that the “volume” is defined 

by the transducer and “one ofthe first member or the second member.” (Id.) (emphasis in 

original .) 

Staff argues that Knowles could have used the term “at least” if it intended that meaning 

in defining “volume” and points out that the term “at least” was used by Knowles in requiring 

the “surface mountable package” to have “at least a first member and a second member.” (SFU3 

at 24 (citing CX-1 at claim I).) This omission, they argue, means that the Knowles did not 

intend to require the “volume” to be formed from the transducer, the first member and the second 

member. (Zd.) 

Staff argues that in ChefAm. Znc. v. Lamb Weston, Inc., 358 F.3d 1371, 1374 (Fed. Cir. 

2004) the Federal Circuit made clear that a patent must be interpreted as written, not as the 

patentees wish they had written it. (SRB at 25.) They argue that a party cannot be awarded a 

patent based on a certain set of claims and then seek to rewrite those claims when the patent 

becomes involved in litigation. (Zd.) Staff submits that “volume” should be construed to mean 

“a space that resides at least partly within (for example in a recess or hole) the substrate (second 

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PUBLIC VERSION 

member) or the cover (first member) and is at least partly bounded by the transducer.” (Id.) 

Construction to be applied: “a space defined by the transducer and one of the first 

member or the second member” 

All of the parties agree that the “volume” is defined on one side by the transducer. The 

difference of opinion among the parties is how the “volume” is defined by the “member.” 

The construction applied is consistent with the construction originally suggested by 

Knowles. (JSRCC.) In its subsequent argument, however, Knowles changed its position to 

argue that the construction should say, “[olne boundary of the defined space is provided by the 

transducer. Another boundary is provided by at least one of the first member or second 

member.” (CIB at 26) (emphasis added.) 

In arriving at the construction to be applied, I have rejected Knowles argument that one 

boundary be provided by at least one of the first member or second member, because Knowles’ 

construction would allow for the boundary to include both the first and second member. 

Inasmuch as claim 1 clearly speaks in the disjunctive, saying “one of the first member or the 

second member,” it is clear that the claim does not contemplate the boundary to include both of 

them. Phillips, 415 F.3d at 1314 (“Quite apart from the written description and the prosecution 

history, the claims themselves provide substantial guidance as to the meaning of particular claim 

terms.”) 

In addition, claim 1 provides in element 1, “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 described “chamber” is the space within which the transducer 

resides in the package and is defined by the first and the second member. To use the definition 

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PUBLIC VERSION 

championed by Knowles would require that the construction allow for the “chamber” and the 

“volume” to be synonymous. In the absence of any evidence to the contrary, I must presume that 

the use of these different terms in the claims connotes different meanings. CAE Screenplates, 

Inc. v. Heinrich Fiedler GmbH & Co. KG, 224 F.3d 1308, 1317 (Fed. Cir. 2000) (citing Tandon 

Corp., 83 1 F.2d at 1023.) 

Here the evidence supports a finding that the terms “chamber” and “volume” are not 

synonymous. First, in the ‘089 patent Abstract, Summary of the Invention, and the detailed 

descriptions of preferred embodiments, the term “volume” is mentioned 17 times, and each time 

it is mentioned it is described as a “back volume.” The term “volume” does not appear by itself. 

Second, the preferred embodiment describes the back volume as providing “a pressure reference 

for the transducer.” (CX-2 at 3:41-43.) Third, the preferred embodiment describes an “inner 

chamber 56 which is adapted for housing a transducer unit.. .” (Id. at 4:23-24.) Fourth, the 

preferred embodiment describes the chamber as having an “inner lining,” the purpose of which is 

to protect the transducer against electromagnetic interference, “much like a faraday cage” (Id. at 

4:30-36) and as having an environmental barrier layer that protects the transducer unit from 

environmental elements such as sunlight, moisture, oil, dirt and/or dust. (Id. at 4:37-47.) 

Finally, the prosecution history reveals that Knowles opposed the USPTO’s proposed 

restriction to be applied to all claims” by asserting: 

The claims of the stated five groups of specie are concerned with and recite 

related subject matter; specifically each relate to methods of packaging a 

microphone transducer component and providing an acoustic inlet and a back 

volume. The subject matter recited in all of the pending claims is sufficiently 

similar such that a complete search directed to the specie B 1 would include a 

The proposed restriction lists claims 22,23,26,27,35-45,47-51, 54, 59 and 60, and omits to mention claims 24, 

25,28-34,46, 52-53, and 55-58. All of the claims that are subject to the proposed restriction related to the term 

“volume” relate directly or indirectly back to claims 22 or 5 1. Those two claims became claim lof the ‘089 patent 

by an amendment of the examiner upon issuing the patent. Thus, Knowles’ response addresses the issue of 

“volume” as described in claim 1. 

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search directed to the non-elected species. 

(RX-255 at 260,274) (emphasis added.) The proposed restriction was withdrawn by the 

examiner after receipt of Knowles’ response. (RX-255 at 365.) 

Based on the foregoing, I find that the term “volume” in claim 1 is defined by the 

transducer and one of the first member the second member. 

My construction of this term is consistent with the doctrine of claim differentiation, when 

viewed in light of claim 28, which teaches “The surface mountable package of claim 1, wherein 

the volume includes a portion of the chamber.” Dependent claims are presumed to be of 

narrower scope than the independent claims from which they depend. AK Steel Corp. v. Solluc, 

344 F.3d 1234, 1242 (Fed. Cir. 2003). In this case, claim 1 provides for a “volume” that is 

defined by the transducer and one of the first member or the second member. Claim 28 adds to 

claim 1 the limitation that the volume must include a portion of the chamber, further narrowing 

the scope of the claim. 

While the construction applied herein appears to exclude one of the many preferred 

embodiments in the ‘089 patent, I believe this is the rare case in which that result must obtain, 

because of the logical inconsistency among claim 1, claim 1 1 and the embodiment at CX 2,7:8- 

14. Claim 1 recites the “volume” at issue here. Unasserted claim 11, which depends from claim 

1, teaches the “surface mountable package of claim 1, the aperture is formed in each of the first 

member and the second member.” One of the numerous embodiments in the ‘089 specification 

refers to Fig. 25 and relates to unasserted claim 1 1. That embodiment describes: 

In Fig. 25, connection to the end user’s board is also made through the bottom 

portion 50. Again, the package mounting orientation is bottom portion 50 

connection from the transducer 58 to the plated through holes are made by wire 

bonding. With acoustic ports 54 on both sides of the package, there is no buck 

volume, [sic] This method is suitable to a directional microphone. 

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PUBLIC VERSION 

(CX-2,753-14) (emphasis added.) Inasmuch as, claim 11 includes the “surface mountable 

package” of claim 1, which includes the volume construed here, and claim 1 1 does not provide 

an exception to allow for no volume, given its two apertures, it necessarily excludes the 

foregoing embodiment to the extent that the embodiment does not contain a back volume. The 

alternative, however, would be to import the limit of “no back volume” into claim 11 from the 

embodiment, which would clearly be an error. 

MemsTech and Staff both argue that the construction should be limited to one or the 

other of the first or second member, as I have already done; but they would add the requirement 

that the space must reside at least partly within (for example in a recess or hole in) one or the 

other of the first or second member. Claim 1 does not provide this additional limit. 

Even when characterized as a “back volume” it does not necessarily follow that the space 

between the transducer and the surface upon which it is mounted would require that the space 

reside at least partly within that surface (e.g. in a recess or hole in the surface). This is illustrated 

in one of the embodiments which provides, “[tlhe transducer back volume 18 is formed by the 

back hole (mounted down) of the silicon microphone only.” (CX-2 at 6:55,59-60 (referring to 

Fig. 23.) Another embodiment recites, “[tlhe back volume 18 is formed by a combination of the 

back hole of the transducer 58 (mounted down) and the bottom portion 50.” (CX-2 at 7:5-7.) 

Finally, Figures 28 and 29 both show a silicon microphone (58) mounted on a surface using 

epoxy (86) and a retaining ring (84). There is no recess in the surface, and the shape of the 

microphone is such that it is open toward the surface upon which it is attached, thereby creating a 

space (i.e. back volume) between the microphone and the surface. (CX-2 at 7:29-51, Figs. 28- 

29.) 

All of the foregoing embodiments fit within the construction of “volume” applied here; 

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PUBLIC VERSION 

but they would not be covered if the term were defined to include a requirement that the space 

reside at least in part within one or the other of the first or second member. Such a construction 

would exclude several iterations of the preferred embodiment from the scope of the claim, which 

the Federal Circuit has described as being rarely correct. Verizon Sews., Corp. v. Vonage 

Holdings Corp., 503 F.3d 1295, 1305 (Fed. Cir. 2007); MBO Labs., Inc. v. Becton, Dickinson & 

Co., 474 F.3d 1323, 1333 (Fed. Cir. 2007). 

Based upon the foregoing, I construe the term “volume” as used in the ‘089 patent to 

mean “a space defined by the transducer and one of the first member or the second member.” 

IV. INVALIDITY 

It is Respondents’ burden to prove invalidity, and the burden of proof never shifts to the 

patentee to prove validity. Scanner Techs. Corp. v. ICOS Vision Sys. Corp. N. V., 528 F.3d 1365, 

1380 (Fed. Cir. 2008). “Under the patent statutes, a patent enjoys a presumption of validity, see 

35 U.S.C. fj 282, which can be overcome only through facts supported by clear and convincing 

evidence[.]” SRAMCorp. v. AD-IIEng’g, Inc., 465 F.3d 1351, 1357 (Fed. Cir. 2006). 

The clear and convincing evidence standard placed on the party asserting the invalidity 

defense requires a level of proof beyond the preponderance of the evidence. Although not 

susceptible to precise definition, “clear and convincing” evidence has been described as evidence 

which produces in the mind of the trier of fact “an abiding conviction that the truth of a factual 

contention is ‘highly probable.”’ Price v. Symsek, 988 F.2d 1187, 1191 (Fed. Cir. 1993) (citing 

Buildex, Inc. v. Kason Indus., Inc., 849 F.2d 1461, 1463 (Fed.Cir.l988).) 

A. Knowles’ Failure To Address Invalidity In Its Initial Post-Hearing Brief 

In its reply brief, MemsTech takes issue with the way Knowles addressed invalidity. 

(RRB at 30-32.) Knowles waited until its reply brief to delve into the substance of the invalidity 

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issues. MemsTech argues that this was an improper tactic that deprived MemsTech and Staff of 

the opportunity to respond to Knowles’ arguments. MemsTech seeks a finding that Knowles 

waived its opportunity to put forward any argument or evidence on the issue of invalidity. (Id.) 

MemsTech states that “Complainant’s refusal to address this overwhelming evidence [of 

invalidity] in its post-hearing brief is directly contrary to ITC precedent.” (Id. at 3 1 (citing 

Certain Optical Disk Controller Chips and Chipsets and Products Containing Same, Including 

DVD Players and PC Optical Storage Devices, Inv. No. 337-TA-506,2005 ITC LEXIS 881 , at 

“64-65 (Sept. 28,2005) (“Optical Disk Controller Chips”); Certain Integrated Circuits, 

Processes for Making Same, and Products Containing Same, Inv. No. 337-TA-450, Commission 

Opinion at 32,44-45,54-55 (July 24,2003)).) 

MemsTech further argues that Knowles violated Ground Rule 10, which relates to the 

proposed findings of fact submitted by the parties. Ground Rule 10 states that “[flollowing the 

close of the hearing, each party will submit proposed findings of fact with its post-hearing brief 

and a final revised exhibit list.” The rule goes on to state that “[tlhe findings should reflect all 

section 337 elements, all issues outlined in the notice of investigation, and any other issues that 

arose during the course of the investigation.” Knowles did not include invalidity findings of fact 

with the findings of fact submitted with its initial post-hearing brief. Instead, Knowles’ 

invalidity findings of fact are found in its response to MemsTech’s findings of fact. 

‘ 

Staff raises the same issue in its reply brief, stating that Knowles’ approach is “highly 

improper.” (SRB at 30.) Staff cites to Ground Rule 10, and claims that Knowles violated the 

Ground Rule by not submitting invalidity findings of fact with its initial findings of fact. Staff 

also cites to Optical Disk Controller Chips for the proposition that the Commission looks with 

disapproval upon parties who save new issues for reply briefs. (Id. at 3 1 .) 

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I find that Knowles violated Ground Rule 10 by not including its invalidity findings of 

fact in its initial post-hearing submission. This deprived MemsTech of the opportunity to 

respond to Knowles’ findings. While I have found that Knowles violated the Ground Rules, I do 

not find that Knowles has completely waived the opportunity to rebut MemsTech’s invalidity 

argument. I will only consider argument and evidence submitted by Knowles in its reply brief 

that is directly responsive to an issue raised by MemsTech or Staff in their initial briefs. Any 

new arguments regarding invalidity raised by Knowles in its reply brief will not been taken into 

consideration in my decision. See Certain Above-Ground Swimming Pools, Inv. No. 337-TA-25, 

1977 ITC LEXIS 8, at * 13-14 (Feb. 10, 1977) (holding that “any new issues raised for the first 

time in reply briefs which were not direct responses to discussions of the same issue or issues in 

the brief to which the reply was addressed” will not be considered). 

B. Anticipation 

1. Applicable Law 

“A patent is invalid for anticipation if a single prior art reference discloses each and every 

limitation of the claimed invention. Moreover, a prior art reference may anticipate without 

disclosing a feature of the claimed invention if that missing characteristic is necessarily present, 

or inherent, in the single anticipating reference.” Schering Corp. v. Geneva Pharm., Inc., 339 

F.3d 1373, 1377 (Fed. Cir. 2003). “When no prior art other than that which was considered by 

the PTO examiner is relied on by the attacker, he has the added burden of overcoming the 

deference that is due to a qualified government agency presumed to have properly done its 

job[.]” Am. Hoist & Derrick Co. v. Sowa & Sons, Inc., 725 F.2d 1350, 1359 (Fed. Cir. 1984). 

Therefore, the challenger’s “burden is especially difficult when the prior art was before the PTO 

examiner during prosecution of the application.” Hewlett-Packard Co. v. Bausch & Lomb Inc., 

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909 F.2d 1464, 1467 (Fed.Cir.1990). 

2. ‘231 Patent 

a. Mullenborn 

MemsTech asserts that U.S. Patent No. 6,522,762 to Mullenborn et al. (“Mullenborn”) 

anticipates claim 1 of the ‘23 1 patent pursuant to 35 U.S.C. 102. (RIB at 30.) 

MemsTech’s Position: MemsTech states that Mullenborn discloses a 

“microelectromechanical system package” when it explains that “FIG. 2 shows a package.. .” 

(RIB at 30 (citing RX-363; Tr. at 735:22-24; RX-31 at 5:31).) MemsTech states that Mullenborn 

discloses a “microelectromechanical system microphone” when it states that the invention relates 

to “condenser microphone systems adapted for surface mounting on, e.g., printed circuit boards 

(PCB’s).” (Id. at 3 1 (citing RX-3 1 at 1 : 12-14).) MemsTech points to element 2 of Figure 4 in 

Mullenborn as the substrate that supports the microphone. (Id. (citing RX-363; Tr. at 735:25- 

736:24; RX-31 at Fig. 4).) 

MemsTech asserts that element 5 of Figure 4 is the cover of claim 1, as Mullenborn states 

that the cover (referred to as the “lid”) can be made “from metal or polymer.” (Id. (citing RX-3 1 

at 5:40-41).) MemsTech states that “[a]s shown in figure 4 of Mullenborn, the lid is spaced fi-om 

the surface of the substrate to form a housing that accommodates the microphone.” (Id. (citing 

RX-3 1 at Fig. 4).) MemsTech claims that the opening shown as element 4 of Figure 4 is the 

acoustic port required by the claim. (Id. (citing Rx-31 at 5:59-60).) MemsTech claims that the 

package of Mullenborn can be encapsulated by an EM1 shield as shown as element 16 of Figure 

4. (Id. (citing RX-363; Tr. at 739:lS-20; RX-31 at 5:51-53).) 

MemsTech offers the expert opinion of Mr. Mallon that Mullenborn anticipates claim 1. 

(Id. at 33 (citing RX-346 - RX-353).) MemsTech asserts that Knowles’ arguments relating to 

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Mullenborn are baseless because they are based on the incorrect premise that the preamble to 

claim 1 serves as a limitation. (Id. at 32-33; see also RFU3 at 41 .) 

In its reply brief, MemsTech argues that Knowles is incorrect in asserting that in order to 

challenge a patent’s validity based on prior art that before the examiner during prosecution, a 

respondent must prove that the patent examiner was wrong in deciding to grant the patents. 

(RRE3 at 33.) MemsTech cites case law indicating that the question of patent validity is one for 

the courts, without deference to the rulings of the patent examiner. (Id. (citing Quad Envtl. 

Techs. Corp. v. Union Sanitary Dist., 946 F.2d 870, 876 (Fed. Cir. 1991).) 

MemsTech also takes issue with the argument put forward by Knowles regarding 

MemsTech’s expert’s lack of understanding of the clear and convincing legal standard. (RRE3 at 

34-35.) MemsTech argues that its experts are experts in MEMS packaging technology, and they 

are not legal experts. MemsTech asserts that it is the job of the administrative law judge, and not 

the experts, to apply the legal standard to the evidence presented. (Id. at 35 (citing Certain 

Digital Satellite (DSS) Receivers and Components ThereoJ; Inv. No. 337-TA-392, Order No. 79 

(Oct. 20, 1997); E2 Dock, Inc. v. Schafer Sys., Inc., 2003 U.S. Dist. LEXIS 3634, at “18-21 (D. 

Minn. Mar. 8,2003).) 

Knowles’ Position: Knowles argues that Mullenborn does not anticipate claim 1 because 

it does not disclose a “package.” Knowles states that “[ilt is uncontrovertyed that a PHOSITA 

would know that a ‘package’ for a MEMS device must provide physical protection from the 

environment.” (CRB at 26 (citing CX-392C; CX-411C; Tr. at 348:7-13,461:18-21,484:4-13, 

7063-16; CX-418).) Knowles claims that “[wlhile the top of the enclosure disclosed in 

Mullenborn ‘762 provides some physical protection to its MEMS microphone, it does not 

provide any physical protection for the sides and bottom of its MEMS microphone.” (Id. at 27 

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(citing RX-31 at 3:l-7,4:5-11, 5:35-37, Fig. 4; CX-41 lC).) 

Knowles also argues that if MemsTech’s demonstrative exhibit RX-353 is to be believed, 

then the “housing” of Mullenborn cannot be formed by connecting the cover and the substrate, as 

required by the claims. Instead, the housing would be the same thing as the cover, and the 

substrate is something that is within the housing’s interior. (Id. at 29 (citing CX-411C; CDX-8).) 

Commission Investigative Staff‘s Position: Staff argues that Mullenborn does not 

anticipate claim 1. Staff argues that Mullenborn fails to disclose a cover having a “center portion 

bounded by a peripheral edge portion.” (SIB at 34 (citing CX-41 l).) According to Staff, 

because Mullenborn is missing this limitation, it does not meet additional limitations of claim 1 

that rely on this limitation. (Id.) 

Discussion and Conclusion: Based upon the evidence before me, I find that MemsTech 

has failed to show by clear and convincing evidence that Mullenborn anticipates claim 1 of the 

‘231 patent. 

MemsTech focuses on Figure 4 of Mullenborn when analyzing claim 1. Figure 4 is 

depicted below: 

3 

$ 

22 18 2 

Figure 4 

The specification provides the following description of Figure 4: 

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In FIGS. 3 and 4 a system for microphone applications is shown. In these 

embodiments the transducer element 1 is a microphone and a back chamber 11 

has been etched into the silicon substrate 2. The back chamber is etched into the 

silicon carrier by wet etching processes using reactants as KOH, TMAH or EDP 

or by dry etching processes such as reactive ion etching. The cavity 11 can be 

etched in the same step as the feed-through hole 20. 

The difference between FIGS. 3 and 4 is that the system, in FIG. 4, has been 

encapsulated with a filter 5 for providing EMI-shielding. The EMI-shield 16 is a 

conductive polymer layer, such as silver epoxy or a metal layer, such as 

electroplated or evaporated Cu or Au. Furthermore, the integrated circuit chip 3 

and the filter 5 in FIG. 4 have been connected and fixed with additional means 

such as underfill or glue 21. 

The function of the microphone is as follows. The opening 4 functions as a sound 

inlet, and ambient sound pressure enters through the filter 5 covering the opening 

4 to the cavity 10 functioning as a front chamber for the microphone. The sound 

pressure deflects the diaphragm 12, which causes the air between the diaphragm 

12 and the back plate 13 to escape through the perforations 19. 

(RX-3 1 at 5:42-65.) 

I find that Mullenborn fails to disclose the “housing formed by connecting the peripheral 

edge portion of the cover to the substrate.” When describing Figure 4, Mullenborn makes clear 

that the substrate and microphone are “encapsulated” by the combination of the filter 5 and EM1 

shield 16. Thus the housing is not formed by connecting the cover to the substrate, as the 

substrate is entirely within the “housing” of Mullenborn. Instead, the housing is formed by the 

connection of the filter 5 to the EM1 shield 16. Dr. Gilleo’s testimony supports such a finding, as 

he stated that “the housing is the same thing as the cover, and the substrate is something that is 

within the interior of the housing.” (CX-411 at Q. 85.) 

b. Baumhauer 

MemsTech argues that U.S. Patent No. 4,533,795 to Baumhauer, Jr. et al. (“Baumhauer”) 

anticipates claims 1 and 2 of the ‘231 patent pursuant to 35 U.S.C. 5 102. (RIB at 35.) 

MemsTech’s Position: With respect to claim 1, MemsTech claims that Baumhauer 

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discloses a “microelectromechanical system package.” (RIB at 35 (citing RX-363; Tr. at 493:23- 

494:24; RX-21 at 4:22-25).) MemsTech states that Baumhauer discloses a 

“microelectromechanical system microphone” when it describes “[aln electrostatic transducer, 

primarily in the form of a capacitive microphone.” (RIB at 35 (citing RX-363; Tr. at 720:4-7; 

RX-2 1 at Abstract).) MemsTech points to element 3 1 of Figure 6 in Baumhauer as the substrate 

that supports the microphone. (Id. (citing RX-21 at 951-52, Fig. 6; RX-363; Tr. at 694:lS695:7, 720:s-lo).) While this element is labeled a “carrier substrate,” Mr. Mallon testified that 

the term implies that the device is a package. (Id. (citing RX-363).) 

MemsTech asserts that element 36 of Figure 6 is the cover of claim 1, as Baumhauer 

states that the cover “can be made of conductive or conductively plated plastic or metal.” (Id. at 

36 (citing RX-21 at 954-59; RX-363; Tr. at 72O:ll-13).) MemsTech claims that the cover in 

Baumhauer is electrically connected to a conductive layer on the substrate and provides EM1 

shielding. The cover and substrate in Baumhauer are allegedly spaced to provide a housing for a 

microphone. (Id. (citing RX-21 at 951-64; RX-363; Tr. at 723:l-14,725:16-22; CX-l).) 

MemsTech claims that Baumhauer discloses the claimed acoustic port as element 32 of Figure 6. 

(Id. (citing RX-363; Tr. at 723:16; RX-21 at 9:49-51, 10:9-ll).) 

With respect to claim 2, MemsTech claims that Baumhauer discloses a substrate 

including a surface at least partially covered by a layer of conductive material. MemsTech 

states: 

Figure element 37 of figure 6 of Baumhauer show conductive pads on the 

substrate to which the cover is electrically connected. Further, figure elements 34 

and 35 of figure 6 of Baumhauer are wires that electrically couple the transducer 

to a conductive layer on the substrate. Figure element 13 of Baumhauer figure 6 

provides a front volume for the silicon microphone. 

(Id. at 38 (citing RX-363; RX-21 at 9:45-64).) For the other elements of claim 2, MemsTech 

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relies on its claim 1 analysis. (Id at 37.) MemsTech offers the expert opinion of Mr. Mallon 

that Baumhauer anticipates claims 1 and 2. (Id. at 37-39 (citing RX-302 - RX-3 18)) 

MemsTech asserts that Knowles’ arguments relating to Baumhauer are baseless because 

they are based on the incorrect premise that the preambles to the claims serve as limitations. (Id. 

at 39-40 (citing Tr. at 698:25-700:7, 702:15-19,727:4-8,729:16-22; JSRCC); see also RRB at 

40.) Further, MemsTech asserts that Dr. Gilleo’s opinion adds limitations to the claims that are 

not even present in Knowles’ proposed construction of “package.” (Id) 

Knowles’ Position: Knowles argues that Baumhauer does not anticipate claims 1 and 2 

of the ‘23 1 patent because it does not disclose a “package” in the sense that the term is used in 

the claims. (CRB at 30.) 

Knowles states that “[ilt is uncontroverted that a PHOSITA would know that a ‘package’ 

for a MEMS device must provide two levels of electrical interconnect.” (Id. (citing CX-392C; 

CX-411C; Tr. at 699:l-6; CX-396; CX-418).) Knowles then states that “[ilt is uncontroverted 

that the enclosure of Baumhauer does not provide two levels of electrical interconnect.” (Id. at 

31 (citing RX-21 at 9:45-48; CX-411C; CDX-5; Tr. at 495:ll-14,729:16-730:6).) Knowles 

argues that other claim elements “lose any meaning outside of the scope of the package required” 

by claims 1 and 2. (Id. at 32-33 (citing CX-411C; CDX-5; CX-1; CDX-7).) 

Commission Investigative Staffs Position: Staff argues that Baumhauer does not 

anticipate either claim 1 or claim 2 because it fails to teach or suggest a “microelectromechanical 

package.” (SIB at 33; SRB at 13.) Staff states that Baumhauer fails to disclose a second-level 

connection between the package and the circuit board. (Id. (citing CX-41 l).) 

Discussion and Conclusion: Based upon the evidence before me, I find that MemsTech 

has failed to show by clear and convincing evidence that Baumhauer anticipates claims 1 or 2 of 

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the ‘23 1 patent. Specifically, I find that Baumhauer does not does not disclose a 

“microelectromechanical system package.”’* 

Baumhauer discloses a transducer mounted on a substrate. Nowhere in Baumhauer is the 

word “package” used. The substrate in Baumhauer is not exclusive to the transducer, and it 

extends beyond cover (described in Baumhauer as the “enclosure member”). Figure 6 of 

Baumhauer makes this clear: 

NG. 6 

Figure 6 of Baumhauer 

The jagged lines at the ends of carrier substrate 3 1 clearly indicate that the substrate 

extends beyond the enclosure member 36. Thus, this is not a “microelectromechanical system 

package,” as described in the claim construction section supra; it is merely an enclosed 

transducer mounted on a substrate which includes other elements. This is supported by the 

opinion offered by Dr. Gilleo. (See CX-4 1 1 at Qs. 16- 19.) 

c. Giachino 

MemsTech asserts that U.S. Patent No. 4,277,814 to Giachino et al. (“Giachino”) 

anticipates claims 1 and 2 of the ‘231 patent pursuant to 35 U.S.C. 0 102. (RIB at 42.) 

l2 I note that Baumhauer was cited during the prosecution of the ‘23 1 patent. (CX-1.) 

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MemsTech’s Position: With respect to claim 1, MemsTech states that Giachino 

discloses a package for a microelectromechanical transducer. (RIB at 42 (citing RX-363).) 

MemsTech states that Giachino discloses a “variable capacitance pressure transducer,” which 

MemsTech equates to a microelectromechanical system microphone. (Id. at 43 (citing RX-19 at 

1: 19-20; RX-18; Tr. at 223:7-13).) MemsTech points to element 12 of Figure 2 in Giachino as 

the substrate that supports the transducer. (Id. (citing RX-19 at 2:17; CX-362; Tr. at 732:9-1 l).) 

MemsTech asserts that element 16 of Figure 2 is the cover of claim 1, and MemsTech 

states that “[olne skilled in the art of packaging MEMS transducers would recognize that the 

cover of Giachino is conductive.. .” (Id. (citing RX-19 at 3:34-37).) MemsTech claims that 

Giachino includes the remaining elements of claim1 : 

Figure element 18 of figure 2 of Giachino is an aperture (i. e., acoustic port) 

through which the pressure can enter the package and reach the MEMS 

transducer. The cover 16 of Giachino is connected to the substrate to form a 

housing. The cover of Giachino is spaced to accommodate the MEMS transducer. 

The conductive cover 16 will provide protection from EMI. 

(Id. at 44 (citing RX-362; RX-19 at 2:18-26,3:21-22; Tr. at 734:17-24,7359-13).) 

With respect to claim 2, MemsTech claims that Giachino discloses all of the claimed 

elements: 

Figure elements 40 and 44 of figure 1 of Giachino show conductive strips on the 

substrate. The conductive strips 40 and 44 of figure 1 of Giachino are electrically 

coupled to the transducer via solder bumps 34 and 36 of figure 2 of Giachino. 

The space above the transducer and under the cover of figure 2 of Giachino 

provides a front volume, which allows the transducer to move in response to 

changes in pressure. The cover 16 of Giachino is electrically connected to the 

substrate 12 by solder bumps to form a chamber in which the transducer is 

located. 

(Id. at 45 (citing RX-362; RX-19 at 2:21-26,2:61-3:2,3:42).) For the other elements of claim 2, 

MemsTech relies on its claim 1 analysis. (Id. at 44-45.) MemsTech offers the expert opinion of 

Mr. Giachino that Giachino anticipates claims 1 and 2. (Id. at 44-46 (citing RX-363; RX-39 at 

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31,33; RX-292; CX-1; CX-411C; Tr. at 694:18-21,695:4-7).) 

MemsTech asserts that Knowles’ arguments relating to Giachino are baseless because 

they are based on the incorrect premise that a MEMS pressure sensor is not a MEMS 

microphone. (Id. at 46 (citing CX-392C).) In its reply brief, MemsTech reiterates that Giachino 

discloses a capacitive pressure transducer, and a microphone is a capacitive pressure transducer. 

(RRE3 at 42.) 

Knowles’ Position: Knowles argues that Giachino does not anticipate claims 1 and 2 of 

the ‘23 1 patent because it does not disclose a microphone. (CRI3 at 33.) Knowles states that “it 

is readily apparent that Giachino discloses a pressure sensor for measuring fluids and not a 

microphone.” (Id. (citing RX-19 at Abstract, 1:19-26, 1:41-44,2:22-27,250-55, 3:25-34,351- 

53,4:50-56).) Knowles goes on to explain that “[wlhile a microphone is a type of pressure 

sensor, not all pressure sensors are microphones.” (Id.) Knowles offered expert testimony 

regarding the differences between the fluid pressure sensor disclosed in Giachino and a 

microphone for use in the claimed invention. (Id. at 34 (citing CX-411C; CDX-4).) 

Beyond the lack of a microphone, Knowles claims that Giachino fails to disclose the 

electrical connection between the cover and substrate. (Id. at 36 (citing Tr. at 379:9-381:1).) 

Knowles claims that the cover in Giachino is not conductive and does not provide an EM1 

protection. (Id. (citing CX-4 1 1 C).) Knowles claims that the substrate on which the transducer 

sits is not the same substrate that is part of the housing. (Id. at 37 (citing RX-19 at 2: 17; RX362; Tr. at 732:9-11 RX-31 at Summary of the Invention; RX-362; CX-411C; CDX-9).) 

Commission Investigative Staffs Position: Staff argues that Giachino does not 

anticipate claim 1 because it fails to disclose a microphone. (SIB at 36; SRB at 14.) Staff states 

that Giachino fails to anticipate claim 2 because it is missing the following limitations: (1) “a 

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silicon-based microphone;” (2) “cover electrically connected to the first layer of conductive 

material;” and (3) “acoustic front volume.” (SIB at 36 (citing CX-411; RX-19 at 3:34-37; Tr. at 

379116-24,382:3-6).) 

Discussion and Conclusion: Based upon the evidence before me, I find that MemsTech 

has failed to show by clear and convincing evidence that Giachino anticipates claims 1 or 2 of 

the ‘231 patent. 

Claim 1 requires a “microelectromechanical system microphone,” and claim 2 requires “a 

silicon-based microphone.” Thus both claims explicitly require a microphone. Giachino does 

not disclose a package including a microphone. Instead, Giachino discloses the use of a 

“capacitive pressure transducer device.” (RX-19 at 1 :39.) 

Mr. Giachino, the inventor of the Giachino patent and one of MemsTech’s experts, 

admitted that microphones are a subset of pressure transducers, and that while all microphones 

are pressure transducers, not all pressure transducers are microphones. (Tr. at 334: 15-3355.) 

Thus, by disclosing a “capacitive pressure transducer device,” Giachino does not necessarily 

disclose a microphone. The “capacitive pressure transducer device” described in the 

specification of Giachino is used to measure fluid pressure. (RX-19 at 1 : 19-26,2: 16-26.) Dr. 

Gilleo makes clear the differences between a microphone and a pressure transducer used to sense 

fluid pressure. (CX-411 at Q. 1 1 .) Dr. Gilleo opines that Giachino does not disclose a 

microphone. (Id. at Qs. 39, 54.) I concur with Dr. Gilleo and find that Giachino does not 

disclose the “microelectromechanical system microphone” of claim 1 or the “silicon-based 

microphone” of claim 2. 

d. Arnold 

MemsTech asserts that the master’s thesis by David Patrick Arnold entitled “A MEMS68 
PUBLIC VERSION 

Based Directional Acoustic Array for Aeroacoustic Measurements,” (“Arnold”) anticipates 

claims 1 and 2 of the ‘23 1 patent pursuant to 35 U.S.C. 5 102. (RIB at 48.) 

MemsTech’s Position: With respect to claim 1, MemsTech states that Arnold discloses 

a package for a MEMS microphone. (RIB at 48 (citing RX-363).) MemsTech states that Arnold 

discloses a MEMS microphone. (Id. (citing RX-363; RX-39 at 30).) MemsTech claims that the 

silicon substrate and the TO-5 style header base together form the substrate for supporting the 

MEMS microphone. (Id. (citing RX-363).) 

MemsTech asserts that the metal lid in Figure 3-3 of Arnold is the “cover comprising a 

conductive layer.. .” (Id. (citing RX-363).) MemsTech claims that Arnold includes the 

remaining elements of claim1 : 

The Arnold cover is connected at its periphery to the package body to form 

housing that accommodates the MEMS microphone. The slots and the central 

hole of the Arnold cover are acoustic ports that allow the signal to reach the 

MEMS microphone. Arnold states that the package “body and lid are connected 

to the circuit ground to provide additional shielding against electromagnetic 

interference.” 

(Id. at 49 (citing RX-363; RX-39 at 3 l).) 

With respect to claim 2, MemsTech claims that Arnold discloses all of the claimed 

elements: 

Figures 3-4 and 3-5 of Arnold shows the patterned conductive layer that partially 

covers the surface of the silicon substrate. Figures 3-4 and 3-5 show that the 

silicon-based MEMS microphone is electrically coupled directly to this 

conductive layer. The substrate and the cover together form an acoustic chamber 

that provides an acoustic front volume for the microphone. Arnold states that its 

“can body and lid are connected to the circuit ground [;.e. they are electrically 

connected together] to provide additional shielding against electromagnetic 

interference.” 

(Id. at 50 (citing RX-363; RX-39 at 3 1,33,39).) For the other elements of claim 2, MemsTech 

relies on its claim 1 analysis. (Id. at 49-50.) MemsTech offers the expert opinion of Mr. Mallon 

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that Arnold anticipates claims 1 and 2. (Id. at 50-51 (citing RX-301).) 

MemsTech asserts that Knowles’ arguments relating to Arnold are baseless. MemsTech 

claims that the fact that the substrate and the package are separate components does not 

disqualify Arnold as anticipatory prior art. (Id. at 5 1 (citing RX-363; JSRCC).) MemsTech 

claims that Dr. Gilleo is wrong in stating that there is no electrical connection between the lid 

and the conductive layer of the substrate. (Id. at 52 (citing CX-411C; RX-363; RX-39 at 31).) 

Knowles’ Position: Knowles argues that Amold does not anticipate claims 1 or 2. 

Knowles acknowledges that Arnold discloses a package and a MEMS microphone. (CRB at 38.) 

Knowles states that the package in Arnold is formed by connecting the package lid and the 

package base, and not by attaching the package lid to the substrate as required by claim 1. (Id. at 

39 (citing RX-39 at Fig. 3-3; CX-411C; COX-lo).) Along the same lines, Knowles states that 

there is no evidence that Arnold’s lid is electrically connected to the substrate as required by 

claim 2. (Id. at 39-40 (citing CX-1 at 5:35-37; RX-363; RX-39).) 

Commission Investigative Staffs Position: Staff argues that Arnold does not anticipate 

claim 1 or claim 2. Staff asserts that Arnold does not disclose the “housing formed by 

connecting the peripheral edge portion of the cover to the substrate” as required by claim 1 

because the substrate of Arnold is encapsulated by the package. (SIB at 35 (citing CX-41 l).) 

Staff asserts that Arnold does not anticipate claim 2 because the package in Arnold is formed by 

connecting the lid to the package body, and not the substrate. Thus, Arnold does not disclose a 

“cover electrically connected to the first layer of a conductive material [on the substrate.]” (Id. 

(citing CX-41 l).) 

Discussion and Conclusion: Based upon the evidence before me, I find that MemsTech 

has failed to show by clear and convincing evidence that Arnold anticipates claims 1 or 2 of the 

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‘231 patent. 

Arnold does not disclose the “housing formed by connecting the peripheral edge portion 

of the cover to the substrate” limitation found in claim 1. In Arnold, the housing is formed by 

connecting the “lid” to the “package body.” The substrate sits inside of the housing. (CX-411 at 

Q. 48.) This is made clear by Figure 3-3 in Arnold: 

MEUS397583 

Figure 3-3 of Arnold 

MemsTech claims that the substrate and base of Arnold, taken together, form the 

“substrate” of claim 1. It offers testimony from Mr. Mallon, who opines that “[tlhe silicon 

substrate and the TO-5 style header base taken together form the substrate.” (RX-363 at Q. 69.) 

This opinion is nonsensical in that it takes two elements labeled “silicon substrate” and “package 

body” and deems them the “substrate” of claim 1 without any rational explanation for doing so. 

Arnold already labeled an element of his package a “substrate,” and it is unnecessary and 

improper to combine the “silicon substrate” and “package body” of Arnold and call them a 

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“~ubstrate.”’~ 

With respect to claim 2, MemsTech has not proven that Arnold discloses a “cover 

electrically connected to the first layer of a conductive material [on the substrate.]” In asserting 

that Arnold meets this element, MemsTech asserts: “Arnold states that its ‘can body and lid are 

connected to the circuit ground [Le. they are electrically connected together] to provide 

additional shielding against electromagnetic interference.”’ (RIB at 50.) Mr. Mallon makes the 

same assertion. (RX-363 at Q. 69.) As I have already explained supra, the can body in Arnold 

is not part of the substrate. Thus, this passage from Arnold does not describe any electrical 

connection between the cover and the substrate. 

3. ‘089 Patent 

a. Claim 1 

MemsTech asserts that Mullenborn anticipates claim 1 of the ‘089 patent pursuant to 35 

U.S.C. 0 102. (RIB at 52.) 

MemsTech’s Position: MemsTech argues that each of the limitations in claim 1 of the 

‘089 patent is specifically included in Mullenborn (Rx-3 1). MemsTech argues that Mullenborn 

discloses a surface mountable MEMS microphone package that includes a substrate and a cover, 

that together define a chamber in which the transducer resides. (RIB at 52.) MemsTech argues 

that the Mullenborn transducer is electrically coupled to a patterned conductive layer on the 

substrate, and it includes a volume that is created by etching out a portion of the substrate 

underneath the transducer. (Id.) MemsTech asserts that the cover of the Mullenborn package 

includes an aperture to allow sound to enter the package and interact with the microphone. (Id.) 

MemsTech says that Mullenborn discloses the same features set forth in claim 1 of the 

l3 The parties agreed-upon construction of substrate is “the base material upon which at least one electronic device 

can be mounted.” (JSRCC.) Even under this construction, the package body of Arnold is not a substrate, as there is 

no evidence that an electronic device can be mounted on the package body. 

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‘089 patent, and refers to Figure 4 of Mullenborn as an illustration: 

4 3 

Figwre 4 

MemsTech avers that, at the evidentiary hearing, Knowles’ expert confirmed that each of 

the limitations of claim 1 of the ‘089 patent is present in Mullenborn. Gilleo’s testimony at the 

hearing, MemsTech says, was consistent with his deposition, and confirmed the testimony of Mr. 

Mallon in which he demonstrated that Mullenborn anticipates claim 1 of the ‘089 patent. (RIB at 

52-53 .) 

More specifically, MemsTech asserts that: 

1. Mullenborn discloses a package. The Mullenborn package is surface mountable. 

(RIB at 53 (citing RX-363; RX-31 at 1:12-14; Tr. at 740:16-18).) Element 1 ofFigure 4 of 

Mullenborn is a transducer. (Id. (citing RX-363; RX-31 at 5:7; Tr. at 735:22-24).) The 

Mullenborn transducer is responsive to sound pressure levels of an acoustic signal to provide an 

electrical output representative of the acoustic signals. (RX-363; RX-3 1 at 6:8-11; Tr. 735:25- 

736:24) (RIB 53) 

2. Element 2 of Figure 4 of Mullenborn is a substrate (i.e. first member). (RIB at 53 

(citing Rx-363; RX-3 1 at 5:3; Tr. at 735:25-736:24).) Element 5 of Figure 4 of Mullenborn is a 

cover (i.e. second member). (Id. (citing RX-363; Tr. at 738:13-22).) Mullenborn refers to the 

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cover as a “lid” that can be made, e.g. “from metal or polymer.” (Id. at 54 (citing RX-3 1 at 5:40- 

41).) As shown in Figure 4 of Mullenborn, the lid is spaced from the surface of the substrate to 

define a chamber, in which the transducer resides. (Id. (citing RX-363; RX-3 1 at Fig. 4).) 

3. The substrate in Mullenborn has a patterned conductive layer on it to which the 

transducer is electrically coupled. (Id. (citing RX-363; RX-31 at 5:16-20; Tr. at 742: 13-16).) 

4. Elements 22 of Figure 4 of Mullenborn are solder bumps, which are on the 

outside surface of the package and are electrically coupled to the patterned conductive layer on 

the substrate through the feed lines 23 and 24. (Id. (citing RX-363; RX-31 at 5:29-30, 6:15-19; 

Tr. at 743:lO-18).) 

5. Element 11 of Figure 4 of Mullenborn is a back volume formed by etching a 

recess in the substrate. (Id. (citing RX-363; RX-31 at 5:45-46; Tr. at 743:19-21)) This back 

volume is acoustically coupled to the transducer. (Id. (citing RX-363; Tr. at 743:22-24).) 

6. Element 4 of Figure 4 of Mullenborn is an opening (i.e. aperture) that “functions 

as a sound inlet.” (Id. (citing RX-363; RX-3 1 at 559-60).) The package in Mullenborn can be 

encapsulated by an EM1 shield, shown as element 16 of Figure 4, which provides shielding from 

an interference signal. (Id. at 55 (citing RX-363; RX-3 1 at 551-53).) The EM1 shield of 

Mullenborn can be a conductive polymer or a metal layer. (Id. (citing RX-31 at 553-55).) 

MemsTech argues that, at the evidentiary hearing, Dr. Gilleo testified that under his claim 

construction for the ‘089 patent, every MEMS microphone package would necessarily have a 

“chamber,” a “volume,” and an “aperture,” as set forth in claim 1 of the ‘089 patent. (RIB at 55 

(citing Tr. at 172: 15-22).) 

MemsTech states that during discovery, Knowles admitted in its responses to 

MemsTech’s requests for admissions (“WAS”) that many of the features recited in the ‘089 

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patent were disclosed in Mullenborn. (Id (citing Rx-l31).) MemsTech says that that Knowles 

admitted (RX- 13 1 at 1 1) that Mullenborn discloses the claimed “volume being defined by the 

transducer and one of the first member or the second member,” which is the focus of the ‘089 

patent. (RIB at 55 (citing RX-3 1 at Summary of Invention).) MemsTech alleges that, in its 

responses to MemsTech’s WAS, Knowles admitted that all of the emphasized language of claim 

1 shown below was disclosed in Mullenborn: 

1. A surface mountable package for containing a transducer, the 

transducer being responsive to sound pressure levels of an acoustic signal to 

provide an electrical output representative of the acoustic signals, the surface 

mountable package comprising: 

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; 

patterned conductive layer being electrically coupled to the transducer; an 

outside surface of the surface mountable package comprising a plurality of 

terminal pads electrically coupled to the patterned conductive layer; 

the second member, the volume being acoustically coupled to the transducer; 

and 

one of the first member or the second member being formed to include an 

aperture, the aperture configured to permit the passage of an acoustic signal to the 

transducer. 

at least a first member and a second member and a chamber being defined 

the surface being formed with at least one patterned conductive layer, the 

a volume being defined by the transducer and one of thefirst member or 

(RIB at 55-56 (citing Rx-131 at 9-1 l).) 

MemsTech asserts that Gilleo argues, “[als he did with respect to the ‘23 1 patent,” that 

Mullenborn does not anticipate claim 1 of the ‘089 patent because it does not disclose a 

“package” under his claim construction. (RIB at 56.) MemsTech posits that Gilleo’s arguments 

fail to rebut MemsTech’s showing that Mullenborn anticipates claim 1 of the ‘089 patent. (Id) 

MemsTech says that Gilleo tries to buttress his argument by intimating that there are 

Mher significant differences between Mullenborn and claim 1 of the ‘089 patent by presenting 

an argument premised on his construction that Mullenborn is not a “package.” (Id. (citing CX75 
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41 1 C).) This argument fails, MemsTech argues, because Mullenbom does disclose a package, 

and does so not only under the construction adopted by Knowles in this investigation, but under 

any reasonable claim construction. (Id.) 

Khowles’ Position: Knowles argues that claim 1 of the ‘089 patent, which is the only 

independent claim in the patent, requires a “surface mountable package,” and as was the case 

when comparing Mullenborn to claims 1 and 2 of the ‘23 1 patent, Mullenborn cannot anticipate 

claim 1 of the ‘089 patent because Mullenborn fails to disclose a package. (CRB at 40-4 1 .) 

Knowles avers that Mullenborn was considered by the examiner during the prosecution of the 

application that became the ‘089 patent. (Id. at 41 (citing CX-2; RX-256 at 250).) Knowles 

argues that this makes MemsTech’s burden to prove invalidity especially difficult since there is 

“a presumption that the Examiner did his duty and knew what claims he was allowing.” (Id. 

(quotingAl-Site Corp. v. VSIInt’l, Inc., 174 F.3d 1308, 1323 (Fed. Cir. 1999)).) 

Knowles asserts that it is “uncontroverted” that a person of ordinary skill in the art would 

know that a “package” for a MEMS device must provide physical protection from the 

environment. (CRB at 41 (citing CX-392C; CX-411C; Tr. at 348:7-13,461:18-21,484:4-13, 

706:8-16; CX-418 at 47).) 

Knowles avers that Dr. Gilleo noted the fragility of MEMS devices in his testimony, and 

another reference book identified by Dr. Gilleo also supports this assertion. (Id. (citing CX-1 at 

1 :2 1-23; CX-392C; CX-411 C; CX-426 at 19).) Knowles asserts that it is uncontroverted that the 

microphone transducer disclosed in Mullenborn is no more or less fragile than any other MEMS 

microphone transducer. (Id. (citing RX-3 1 at 5:66-6:7; RX-363; CX-41 l).) Knowles alleges that 

while the top of the enclosure disclosed in Mullenborn provides some physical protection to its 

MEMS microphone, it does not provide any physical protection for the sides and bottom of its 

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MEMS microphone. (Id. (citing RX 31,3:1-7,4:5-11,5:35-37, Fig. 4; CX-411).) Therefore, 

Knowles argues, because the enclosure disclosed in Mullenborn does not provide physical 

protection for the electronics within, it cannot be a package. (Id. (citing CX-411C; CDX 6).) 

Knowles argues that the lack of a package in Mullenborn leads to the conclusion that 

Mullenborn inherently cannot disclose the components of the package. For example, they argue, 

while Mullenborn has a lid and a substrate “of sorts”, these cannot be the “first member” of the 

package or “second member” of the package because there is no package. (CRB at 42.) 

Knowles argues that without a first member and a second member, Mullenborn can have no 

“surface,” “volume,” “chamber,” or “aperture,” because each of these is defined in terms of the 

first member and/or a second member. (Id. (citing CX-4 1 1 C; CDX 12).) Knowles continues 

that without a “surface,” Mullenborn can have no “patterned conductive layer” or “terminal pads 

electrically coupled to the patterned conductive layer,” because these are defined as being 

located on the surface. (Id.) 

Knowles says that during the hearing, MemsTech “attempted to turn the non-package, 

device disclosed by Mullenborn ‘762 into a package by asserting that a thin EM1 shield, shown 

in Fig. 6 of Mullenborn ‘762, could somehow provide physical protection to the silicon 

components.” Knowles asserts that Dr. Gilleo thoroughly refuted that suggestion (citing RX-3 1 

at 553-55; Tr. 746: 14-747:24; Tr. 747: 16-748:20: 748:22-749:7), and that this position would 

further erode MemsTech’s position on identification of a first and second member within the 

enclosure of Mullenborn. In particular, Knowles reasons, if this EM1 shield was actually a part 

of the package, that is, either a first member or second member, then there would be no first or 

second member upon which the microphone is attached, as required by claim 1 of the ‘089 

patent. (CRB at 42-43 (citing CX-411C; COX-12).) 

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Commission Investigative Staffs Position: Staff argues that the evidence has shown 

that Mullenborn fails to teach or disclose the “surface mountable package” of claim 1. (SIB at 

64 (citing CX-41 l).) Staff asserts that claim 1 requires a “first member” and a “second member” 

that together form a chamber. (Id. (citing CX-2).) Staff posits that the first and second members 

of Mullenborn are the lid 5 and EM1 shield and not the lid 5 and the substrate 2. (Id) Thus, 

Staff asserts, the substrate 2, where the transducer is mounted, is not a part of the package. (Id.) 

Staff argues that Mullenborn does not disclose a “package.” Staff also states that Mullenborn 

does not teach or suggest the “surface,” “patterned conductive layer,” or “terminal pads 

electrically coupled to the patterned conductive layer” limitations. (Id) 

Discussion and Conclusion: Based upon the evidence before me, I find that MemsTech 

has failed to show by clear and convincing evidence that Mullenborn anticipates claim 1 of the 

‘089 patent. 

Claim 1 of the ‘089 patent teaches, inter alia, as follows: 

A 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 patterned conductive layer, the 

patterned conductive layer being electrically coupled to the transducer . . . 

(CX-2 at 11:21-34.) 

Figure 4 of Mullenborn, (RX-3 1 at Fig. 4), which is the focus of MemsTech’s argument 

on this issue, discloses what can arguably be described as a package. It does not, however, meet 

the other limits of claim 1 quoted above. Figure 4 of Mullenborn contains, among other things, a 

“lid” (element 5 of Figure 4), a “transducer” (element 1 of Figure 4), a “substrate” (element 2 of 

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PUBLIC VERSION 

Figure 4), and an “EM1 shield” (element 16 of Figure 4). MemsTech argues that the “substrate” 

of Figure 4 of Mullenborn corresponds to the “first member” contemplated by claim 1 of the 

‘089 patent, and the “lid” (i.e. “cover”) of Figure 4 of Mullenborn corresponds to the “second 

member” taught by claim 1 of the ‘089 patent. 

Claim 1 of the ‘089 patent requires the existence of a “chamber being defined by the first 

member and the second member.” A chamber is defined as “a room or a natural or artificial 

enclosed space or cavity.” WEBSTER’S NEW COLLEGIATE DICTIONARY, (1 979 Ed.), at p. 183. 

Using the substrate and lid of Mullenborn, as the “first member” and the “second member,” 

respectively, a chamber is not formed, because there are no sides formed by those members 

enclosing the space within which the transducer may reside. In order to form a chamber, using 

Mullenborn, a third element must be included, which is represented by the “EM1 shield” 

(element 16 of Figure 4). l4 Therefore, Mullenborn does not meet the limit of claim 1 of the ‘089 

patent that teaches “a chamber being defined by the first member and the second member.” 

On the other hand, if one were to use the Staffs approach and substitute the “EM1 shield” 

for the “substrate” as the “first member,” a chamber might be formed by the lid and the EM1 

shield; but the transducer would then not be attached to a surface formed on the first member. In 

that case, the transducer might be considered to be “attached” to a surface formed on the second 

member (i.e. the “lid” of Mullenborn), because Figure 4 shows glue (element 21 of Figure 4) 

connecting the lid to the transducer. In that case, the limits of claim 1 of the ‘089 patent would 

still not be met, because the surface to which the transducer would be attached on the lid is not 

formed with at least one patterned conductive layer. 

Based on the foregoing, I find that Mullenborn does not anticipate claim 1 of the ‘089 

patent, and claim 1 is not rendered invalid as anticipated by Mullenborn. 

l4 MemsTech recognized the need for this third element in its initial brief at pages 54-55. 

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b. Claim2 

MemsTech asserts that Mullenborn anticipates claim 2 of the ‘089 patent pursuant to 35 

U.S.C. 5 102. (RIB at 57.) 

MemsTech’s Position: MemsTech asserts that claim 2 of the ‘089 patent depends from 

claim 1 , and further requires that “the first member comprises a substrate and the second member 

comprises a cover coupled to the substrate to define the chamber.” (CX-2.) MemsTech argues 

that Mullenborn’s silicon carrier substrate (element 2 of Figure 4 of Mullenborn) is a substrate, 

and the lid (element 5 of Figure 4) is a cover. (RIB at 57.) MemsTech says that the silicon 

carrier substrate and lid are coupled, at least by the EMI-shield (element 16 of Figure 4) or 

electronic device (element 3 of Figure 4). (Id. (citing RX-363).) They say Knowles presented 

no evidence that claim 2 adds anything to claim 1 of the ‘089 patent that is not disclosed in 

Mullenborn. (Id.) 

Knowles’ Position: Knowles argues that MemsTech’s assertion that claim 2 of the ‘089 

patent, dependent on claim 1 , is anticipated by Mullenborn, fails because Mullenborn does not 

disclose all of the elements of claim 1. (CRB at 43-44.) Therefore, they argue, it cannot disclose 

the dependent claims which incorporate the elements of claim 1 of the ‘089 patent. (Id.) 

Commission Investigative Staff’s Position: Staff argues that for the same reasons as set 

forth in its argument regarding anticipation of claim 1 , Mullenborn fails to teach the limitations 

disclosed in dependent claim 2. (SIB at 64.) 

Discussion and Conclusion: A patent is presumed to be valid, and each claim of a 

patent shall be presumed valid even though dependent on an invalid claim. 35 U.S.C. 5 282. If I 

determined claim 1 to be anticipated and invalid, I could still find that claim 2, which depends 

from claim 1, is valid. Since, however, I have found claim 1 to be not anticipated, claim 2 is 

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necessarily not anticipated, because it depends from claim 1 and necessarily contains all of the 

elements of claim 1. See In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992); In re Royka, 490 

F.2d 981,983-985 (C.C.P.A. 1974); see also In re Sernaker, 702 F.2d 989,991 (Fed. Cir. 1983) 

(when argued together, dependent claims stand or fall with the independent claims from which 

they depend). 

In addition to the foregoing, claim 2 recites that “. . . the first member comprises a 

substrate and the second member comprises a cover coupled to the substrate to define the 

chamber.” MemsTech says that Mullenborn’s silicon carrier substrate (element 2 of Figure 4 of 

Mullenborn) represents the substrate and its lid (element 5 of Figure 4) represents the cover. 

MemsTech then argues that the two are “coupled at least” by the EM1 shield (element 16 of 

Figure 4). I do not concur. The term “coupled” in this context means “fastened together.” 

WEBSTER’SNEW COLLEGIATE DICTIONARY, (1979 Ed.), at p. 258. The substrate and lid of 

Mullenborn are not in any way “coupled” or “fastened” when viewed in Figure 4 of Mullenborn. 

They are at opposite ends of the structure and do not form a chamber as required by claims 1 and 

2 of the ‘089 patent. (RX-31 at Fig. 4.) 

The EMI-shield is described in Mullenborn as “a conductive polymer layer, such as silver 

epoxy or a metal layer, such as electroplated or evaporated Cu or Au.” The EMI-shield is 

described as encapsulating the system. (RX-3 1 at 5:51-55, Fig. 4.) The EMI-shield does not 

serve as a structure that in any way ‘‘couples” the substrate and the lid of Mullenborn. 

Based on the foregoing, I find that Mullenborn does not anticipate claim 2 of the ‘089 

patent, and claim 2 is not rendered invalid as anticipated by Mullenborn. 

c. Claim 9 

MemsTech asserts that Mullenborn anticipates claim 9 of the ‘089 patent pursuant to 35 

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U.S.C. 9 102. (RIB at 58.) 

MemsTech’s Position: MemsTech asserts that claim 9 of the ‘089 patent depends from 

claim 1, and further requires that “the aperture being formed in the respective one of the first 

member and the second member, the surface being formed on the respective other one of the first 

member and the second member and the aperture is acoustically coupled by the chamber to the 

transducer.” (CX-2.) MemsTech alleges that, in Mullenborn, the aperture (element 4 of Figure 4 

of Mullenborn) is formed in the lid (element 5 of Figure 4), which is one of the two package 

members. (RIB at 58.) They state the transducer (element 1 of Figure 4) is mounted on the 

silicon carrier substrate (element 2 of Figure 4). (Id) This is, MemsTech alleges, the “other 

package member.” (Id) MemsTech asserts that sound enters the opening and passes through the 

front chamber (element 10, the part of the chamber defined by the substrate and lid) to the 

transducer diaphragm. (Id.) MemsTech argues that Knowles presented no evidence that claim 9 

adds anything to claim 1 of the ‘089 patent that is not disclosed in Mullenborn. (Id. (citing RX363).) 

Knowles’ Position: Knowles argues that MemsTech’s assertion that claim 9 of the ‘089 

patent, dependent on claim 1, is anticipated by Mullenborn fails because Mullenborn fails to 

disclose all of the elements of claim 1. (CRB at 43-44.) Therefore, they argue, it cannot disclose 

the dependent claims which incorporate the elements of claim 1. (Id.) 

Knowles argues, too, that dependent claim 9 requires “the aperture being formed in the 

respective one of the first member and the second member, the surface being formed on the 

respective other one of the first member and the second member and the aperture is acoustically 

coupled by the chamber to the transducer.” Knowles asserts that this claim requires an aperture, 

a first member, a second member, a surface, and a chamber, all of which are lacking from claim 

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1. (CRB at 44 (citing CX-411C; CDX 12).) Thus, they say, whatever Mullenborn may disclose 

regarding claim 9 is irrelevant. (Id.) 

Commission Investigative Staffs Position: Staff argues that for the same reasons as set 

forth in its argument regarding anticipation of claim 1, Mullenborn fails to teach the limitations 

disclosed in dependent claim 9. (SIB at 64.) 

Discussion and Conclusion: A patent is presumed to be valid, and each claim of a 

patent shall be presumed valid even though dependent on an invalid claim. 35 U.S.C. 5 282. If I 

determined claim 1 to be anticipated and invalid, I could still find that claim 2, which depends 

from claim 1, is valid. Since, however, I have found claim 1 to be not anticipated, claim 2 is 

necessarily not anticipated, because it depends from claim 1 and necessarily contains all of the 

elements of claim 1. See In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992); In re Royka, 490 

F.2d 981,983-985 (C.C.P.A. 1974); see also In re Sernaker, 702 F.2d 989,991 (Fed. Cir. 1983) 

(when argued together, dependent claims stand or fall with the independent claims from which 

they depend). 

Based on the foregoing, I find that Mullenborn does not anticipate claim 9 of the ‘089 

patent, and claim 9 is not rendered invalid as anticipated by Mullenborn. 

d. Claim 15 

MemsTech asserts that Mullenborn anticipates claim 15 of the ‘089 patent pursuant to 35 

U.S.C. 0 102. (RIB at 58.) 

MemsTech’s Position: MemsTech asserts that claim 15 of the ‘089 patent depends from 

claim 1, and further requires that “the patterned conductive layer comprising a plurality of 

terminal pads, the terminal pads providing an electrical connection between the transducer within 

the volume and an exterior of the surface mountable package.” (CX-2.) MemsTech alleges that 

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in Mullenborn, the silicon carrier substrate (element 2 of Figure 4 of Mullenborn) has solder 

bumps (elements 8,22 of Figure 4) on a first surface and a second surface, respectively. RIB at 

58-59.) The solder bumps (element 8 of Figure 4) meet the terminal pads. (Id. (citing RX-363; 

RX-3 1 at 5:2-5).) MemsTech argues “The electrical signal is carried from the first surface to the 

second surface via feedthrough lines 23.” (Id. (citing RX-363; RX-31 at 5:5-6).) They aver that 

the feed through lines (element 23 of Figure 4) connect to the solder bumps (element 8 of Figure 

4). (Id.) MemsTech says the path (element 23 of Figure 4) carries the electrical signal from the 

transducer (element 1 of Figure 4) or the electronic circuit (figure element 3 of Figure 4) to the 

base of the carrier. (Id. (citing RX-363; RX-31 at 5:25-28).) MemsTech argues that Knowles 

presented no evidence that claim 15 adds anything to claim 1 of the ‘089 patent that is not 

disclosed in Mullenborn. (Id.) 

Knowles’ Position: Knowles argues that MemsTech’s assertion that claim 15 of the 

‘089 patent, dependent on claim 1 , is anticipated by Mullenborn, fails because Mullenborn fails 

to disclose all of the elements of claim 1. (CRI3 at 43-44.) Therefore, they argue, it cannot 

disclose the dependent claims which incorporate the elements of claim 1. (Id.) 

Commission Investigative Staffs Position: Staff argues that for the same reasons as set 

forth in its argument regarding anticipation of claim 1, Mullenborn fails to teach the limitations 

disclosed in dependent claim 15. (SIB at 64.) 

Discussion and Conclusion: A patent is presumed to be valid, and each claim of a 

patent shall be presumed valid even though dependent on an invalid claim. 35 U.S.C. 8 282. If I 

determined claim 1 to be anticipated and invalid, I could still find that claim 2, which depends 

from claim 1 , is valid. Since, however, I have found claim 1 to be not anticipated, claim 2 is 

necessarily not anticipated, because it depends from claim 1 and necessarily contains all of the 

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elements of claim 1. See In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992); In re Royka, 490 

F.2d 981,983-985 (C.C.P.A. 1974); see also In re Sernaker, 702 F.2d 989,991 (Fed. Cir. 1983) 

(when argued together, dependent claims stand or fall with the independent claims from which 

they depend). 

Based on the foregoing, I find that Mullenborn does not anticipate claim 15 of the ‘089 

patent, and claim 15 is not rendered invalid as anticipated by Mullenborn. 

e. Claim 17 

MemsTech asserts that Mullenborn anticipates claim 17 of the ‘089 patent pursuant to 35 

U.S.C. 3 102. (RIB at 59.) 

MemsTech’s Position: MemsTech asserts that claim 17 of the ‘089 patent depends from 

claim 1 , and further requires “one or both of the first member and the second member including a 

shield against electromagnetic interference.” (CX-2.) MemsTech alleges that Mullenborn states 

that its lid (element 5 of Figure 4 of Mullenborn) can be metal. (RIB at 59.) Metal lids, they 

say, provide shielding from electromagnetic interference. (Id. (citing RX-363; RX-3 1 at 5:41- 

42).) MemsTech argues that Mullenborn further states that the system is encapsulated with a 

filter (element 5 of Figure 4) for providing EMI-shielding. (I&. (citing RX-363; RX-31 at 551- 

54).) MemsTech argues that Knowles presented no evidence that claim 17 adds anything to 

claim 1 of the ‘089 patent that is not disclosed in Mullenborn. (Id.) 

Knowles’ Position: Knowles argues that MemsTech’s assertion that claim 17 of the 

‘089 patent, dependent on claim 1 , is anticipated by Mullenborn, fails because Mullenborn fails 

to disclose all of the elements of claim 1. (CRB at 43-44.) Therefore, they argue, it cannot 

disclose the dependent claims which incorporate the elements of claim 1. (Id.) 

Commission Investigative Staffs Position: Staff argues that for the same reasons as set 

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forth in its argument regarding anticipation of claim 1 , Mullenborn fails to teach the limitations 

disclosed in dependent claim 17. (SIB at 64.) 

Discussion and Conclusion: A patent is presumed to be valid, and each claim of a 

patent shall be presumed valid even though dependent on an invalid claim. 35 U.S.C. 0 282. If I 

determined claim 1 to be anticipated and invalid, I could still find that claim 2, which depends 

from claim 1 , is valid. Since, however, I have found claim 1 to be not anticipated, claim 2 is 

necessarily not anticipated, because it depends from claim 1 and necessarily contains all of the 

elements of claim 1. See In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992); In re Royka, 490 

F.2d 981,983-985 (C.C.P.A. 1974); see also In re Sernaker, 702 F.2d 989,991 (Fed. Cir. 1983) 

(when argued together, dependent claims stand or fall with the independent claims from which 

they depend). 

Based on the foregoing, I find that Mullenborn does not anticipate claim 17 of the ‘089 

patent, and claim 17 is not rendered invalid as anticipated by Mullenborn. 

f. Claim 28 

MemsTech asserts that Mullenborn anticipates claim 28 of the ‘089 patent pursuant to 35 

U.S.C. 9 102. (RIB at 59.) 

MemsTech’s Position: MemsTech takes the position that claim 28 of the ‘089 patent 

depends from claim 1 , and further requires that “the volume [defined by the transducer and one 

of the first member or the second member] includes a portion of the chamber [defined by the first 

member and the second member] .” (CX-2.) MemsTech asserts that in Mullenborn, the back 

volume (element 11 of Figure 4 of Mullenborn) extends up into the chamber formed by the 

substrate (element 2 of Figure 4) and the lid (element 5 of Figure 4). (RIB at 59-60 (citing RX363; RX-3 1 at Fig. 4).) MemsTech argues that Knowles presented no evidence that claim 28 

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adds anything to claim 1 of the ‘089 patent that is not disclosed in Mullenborn. (Id.) 

Knowles’ Position: Knowles argues that MemsTech’s assertion that claim 28 of the 

‘089 patent, dependent on claim 1 , is anticipated by Mullenborn, fails because Mullenborn fails 

to disclose all of the elements of claim 1. (CRB at 43-44.) Therefore, they argue, it cannot 

disclose the dependent claims which incorporate the elements of claim 1. (Id.) 

Commission Investigative Staffs Position: Staff argues that for the same reasons as set 

forth in its argument regarding anticipation of claim 1, Mullenborn fails to teach the limitations 

disclosed in dependent claim 28. (SIB at 64.) 

Discussion and Conclusion: A patent is presumed to be valid, and each claim of a 

patent shall be presumed valid even though dependent on an invalid claim. 35 U.S.C. $282. If I 

determined claim 1 to be anticipated and invalid, I could still find that claim 2, which depends 

from claim 1, is valid. Since, however, I have found claim 1 to be not anticipated, claim 2 is 

necessarily not anticipated, because it depends from claim 1 and necessarily contains all of the 

elements of claim 1. See In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992); In re Royka, 490 

F.2d 981,983-985 (C.C.P.A. 1974); see also In re Sernaker, 702 F.2d 989,991 (Fed. Cir. 1983) 

(when argued together, dependent claims stand or fall with the independent claims from which 

they depend). 

Based on the foregoing, I find that Mullenborn does not anticipate claim 28 of the ‘089 

patent, and claim 28 is not rendered invalid as anticipated by Mullenborn. 

g. Claim 29 

MemsTech asserts that Mullenborn anticipates claim 29 of the ‘089 patent pursuant to 35 

U.S.C. $ 102. (RIB at 60.) 

MemsTech’s Position: MemsTech asserts that claim 29 of the ‘089 patent depends from 

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claim 1, and further requires that “the acoustic signal is coupled to the transducer via the 

chamber.” (CX-2.) MemsTech alleges that in Mullenborn, sound enters the openings (element 4 

of Figure 4 of Mullenborn) in the lid (element 5 of Figure 4), travels through the chamber 

(element 10 of Figure 4) defined by the substrate (element 2 of Figure 4) and lid (element 5 of 

Figure 4), and reaches the transducer (element 1 of Figure 4). (RIB at 60 (citing RX-363; RX-3 1 

at Fig. 4,559-63).) MemsTech argues that Knowles presented no evidence that claim 29 adds 

anything to claim 1 of the ‘089 patent that is not disclosed in Mullenborn. (Id.) 

Knowles’ Position: Knowles argues that MemsTech’s assertion that claim 29 of the 

‘089 patent, dependent on claim 1, is anticipated by Mullenborn, fails because Mullenborn fails 

to disclose all of the elements of claim 1. (CRB at 43-44.) Therefore, they argue, it cannot 

disclose the dependent claims which incorporate the elements of claim 1. (Id.) 

Commission Investigative Staff’s Position: Staff argues that for the same reasons as set 

forth in its argument regarding anticipation of claim 1 , Mullenborn fails to teach the limitations 

disclosed in dependent claim 29. (SIB at 64.) 

Discussion and Conclusion: A patent is presumed to be valid, and each claim of a 

patent shall be presumed valid even though dependent on an invalid claim. 35 U.S.C. 3 282. If I 

determined claim 1 to be anticipated and invalid, I could still find that claim 2, which depends 

from claim 1, is valid. Since, however, I have found claim 1 to be not anticipated, claim 2 is 

necessarily not anticipated, because it depends from claim 1 and necessarily contains all of the 

elements of claim 1. See In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992); In re Royka, 490 

F.2d 981,983-985 (C.C.P.A. 1974); see also In re Sernaker, 702 F.2d 989,991 (Fed. Cir. 1983) 

(when argued together, dependent claims stand or fall with the independent claims from which 

they depend). 

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Based on the foregoing, I find that Mullenborn does not anticipate claim 29 of the ‘089 

patent, and claim 29 is not rendered invalid as anticipated by Mullenborn. 

C. Obviousness 

1. Applicable Law 

Section 103 of the Patent Act states: 

A patent may not be obtained though the invention is not identically disclosed or 

described as set forth in section 102 of this title, if 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 to 

a person having ordinary skill in the art to which said subject matter pertains. 

Patentability shall not be negatived by the manner in which the invention was 

made. 

35 U.S.C. 3 103(a) (2008). 

“Obviousness is a question of law based on underlying questions of fact.” Scanner 

Techs. Corp. v. ICOS Vision Sys. Corp. N. K, 528 F.3d 1365, 1379 (Fed. Cir. 2008). The 

underlying factual determinations include: “( 1) the scope and content of the prior art, (2) the 

level of ordinary skill in the art, (3) the differences between the claimed invention and the prior 

art, and (4) objective indicia of non-obviousness.” Id. (citing Graham v. John Deere Co., 383 

U.S. 1, 17 (1 966)). These factual determinations are often referred to as the “Graham factors.” 

“When no prior art other than that which was considered by the PTO examiner is relied 

on by the attacker, he has the added burden of overcoming the deference that is due to a qualified 

government agency presumed to have properly done its job[.]” Am. Hoist & Derrick Co., 725 

F.2d at 1359. Therefore, the challenger’s “burden is especially difficult when the prior art was 

before the PTO examiner during prosecution of the application.” Hewlett-Packard Co., 909 F.2d 

at 1467. 

The critical inquiry in determining the differences between the claimed invention and the 

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prior art is whether there is a reason to combine the prior art references. KSR Int ’1 Co. v. TelejZex 

Inc., 550 U.S. 398, 127 S.Ct. 1727, 1740-41 (2007). In KSR, the Supreme Court rejected the 

Federal Circuit’s rigid application of the teaching-suggestion-motivation test. The Court stated 

that “it can be important to identie a reason that would have prompted a person of ordinary skill 

in the relevant field to combine the elements in the way the claimed new invention does.” Id. at 

1741. The Court described a more flexible analysis: 

Often, it will be necessary for a court to look to interrelated teachings of multiple 

patents; the effects of demands known to the design community or present in the 

marketplace; and the background knowledge possessed by a person having 

ordinary skill in the art, all in order to determine whether there was an apparent 

reason to combine the known elements in the fashion claimed by the patent at 

issue.. .As our precedents make clear, however, the analysis need not seek out 

precise teachings directed to the specific subject matter of the challenged claim, 

for a court can take account of the inferences and creative steps that a person of 

ordinary skill in the art would employ. 

KSR, 127 S.Ct. at 1740-41. 

Since KSR was decided, the Federal Circuit has announced that, where a patent 

challenger contends that a patent is invalid for obviousness based on a combination of prior art 

references, “the burden falls on the patent challenger to show by clear and convincing evidence 

that a person of ordinary skill in the art would have had reason to attempt to make the 

composition or device, . . . and would have had a reasonable expectation of success in doing so.” 

PharmaStem Therapeutics, Inc. v. Viacell, Inc., 491 F.3d 1342, 1360 (Fed. Cir. 2007). 

The analogous art test requires the judge to determine that “a reference is either in the 

field of the applicant’s endeavor or is reasonably pertinent to the problem with which the 

inventor was concerned in order to rely on that reference for a basis for [invalidity due to 

obviousness.]” In re Kahn, 441 F.3d 977,986-87 (Fed. Cir. 2006); In re ICON Health & 

Fitness, Inc., 496 F.3d 1374, 1379-1380 (Fed. Cir. 2007); Bausch & Lomb, Inc. v. Barnes90 
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HindHydrocurve, Inc., 796 F.2d 443,447 (Fed. Cir. 1986). 

2. Level of Ordinary Skill in the Art 

MemsTech’s Position: MemsTech takes the position that the private parties have 

proposed definitions regarding the level of ordinary skill in the art that do not differ in any 

meaningful way. 

MemsTech states that its definition of a person having ordinary skill in the art is one who 

has at least a bachelor’s degree in engineering or science (e.g. electrical, mechanical or chemical 

engineering, physics or chemistry, or equivalent experience) plus three to five years experience 

in MEMS, semiconductor packaging, semiconductor devices or processing, micromachining, or 

sensors such as pressure sensors, microphones, MEMS accelerometers, etc. (RX-363 at Q. 71 .) 

MemsTech says that Dr. Gilleo testified that a person of ordinary skill in the art would 

have a degree in engineering or one of the physical sciences and a minimum of one to two years 

of full-time experience in device packaging. (CX-392C at Q. 21.) 

Knowles’ Position: Knowles asserts that a person having ordinary skill in the art (a 

“PHOSITA”) needs a general knowledge of electronic packaging that would include some 

understanding of package designs, constructions, functions, attributes, and processes used to 

produce them and to incorporate the devices into the package. (CRB at 15.) The PHOSITA 

would typically need a degree in engineering or one of the physical sciences and a minimum of 

one to two years experience in packaging of devices. (Id.) 

Knowles adds that a two-year degree, such as a technical associate’s degree, and one to 

two years of full-time experience in device packaging could suffice, however, mere experience 

in the assembly of completed packages already containing electronic devices to PCBs would not 

necessarily qualify one to be a PHOSITA. (Id.) In addition to the basic requirements, because 

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the patents deal with a specialized field of packaging, MEMS microphones, a PHOSITA would 

have some understanding of the requirements for packaging MEMS devices, and specific 

knowledge of the special requirements for MEMS microphone packaging. (Id. (citing CX-3 92C 

at Qs. 21-22).) 

Commission Investigative Staffs Position: Staff says the parties generally agree as to 

the level of skill in the art. (SIB at 38.) Staff asserts that MemsTech’s expert has opined that one 

of ordinary skill in the art “would have had at least a bachelor’s degree in engineering or science, 

for example, electrical, mechanical, or chemical engineering, physics or chemistry, or equivalent 

experience, plus three to five years of experience and/or educational training in one or more of 

the following fields: microelectromechanical systems (MEMS), semiconductor packaging, 

semiconductor devices or processing, micromachining, or sensors such as pressure sensors, 

microphones, MEMS accelerometers, gyroscopes, strain gauges, load cells or the like.” (Id. at 

38-39 (citing Mallon Initial Expert Report at 14).) 

Staff states that Dr. Gilleo contends that one of ordinary skill in the art to which the 

patents-in-suit pertain would have “a general knowledge of electronic packaging including some 

understanding of package designs, constructions, functions, attributes and processes used to 

produce them and to incorporate devices into a package. [This person] would typically have a 

degree in engineering, or one of the physical sciences, and a minimum of 1-2 years experience in 

packaging of devices.” (Id. at 39 (citing Gilleo Expert Report on Validity at 4).) Thus, says 

Stdf, both experts agree that one of ordinary skill in the art must have (1) educational experience 

in engineering or science and (2) some practical experience in packaging. (Id.) 

Discussion and Conclusion: I find that a person of ordinary skill in the art related to 

both the ‘23 1 patent and ‘089 patent would have: (1) a degree in engineering or one of the 

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physical sciences; (2) a minimum of one to two years of full-time experience in device 

packaging; and (3) general knowledge of electronic packaging that would include some 

understanding of package designs, constructions, fimctions, attributes, and processes used to 

produce them and to incorporate the devices into the package. 

Section 103 of the Patent Act states that the relevant time period for determining the level 

of ordinary skill in the art is “the time the invention was made.” Because neither party has 

alleged an earlier invention date for either patent, the earliest patent application priority dates 

serve as the relevant dates of in~ention.’~ 

The application that lead to the ‘23 1 patent was filed on September 10,2002. It does not 

claim priority to any earlier-filed application. 

The ‘089 patent is a division of U.S. Application Ser. No. 09/886,854, filed June 21 , 

2001, now U.S. Pat. No. 7,166,910 (the ‘910 patent), which claims the benefit of Provisional 

Patent Application Ser. No. 60/253,543 filed November 28,2000. Hence, the relevant date for 

defining a person of ordinary skill in the art is November 28,2000. Transco Prods., Inc. v. 

Performance Contracting, Inc., 38 F.3d 551,555-556 (Fed. Cir. 1994); 35 U.S.C. $8 119(e), 

120; 37 CFR $9 1.78(a)(4)-(a)(6), 1.78(a)(l)-(a)(3); MPEP $$ 201.06,201.11. 

The definition adopted herein is based in part on the testimony of Knowles’ expert Dr. 

Gilleo. (CX-392C at Qs. 21-22.) In addition, the record reflects that, at the relevant time periods 

for the ‘23 1 and ‘089 patents, the inventor, Mr. Minervini, had at least one year of experience in 

device packaging and general knowledge of electronic packaging as required by the adopted 

definition. (Tr. at 135:l-16, 138:ll-140:3.) 

The testimony of MemsTech’s expert Mr. Mallon indicates his opinion that a person of 

l5 While there was testimony that Mr. Minervini developed the concept for a microphone package in September 

2000, there was no allegation that the relevant lab notebooks offered into evidence disclosed all of the elements 

found in the claimed inventions. (See Tr. at 136:12-140:3.) 

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ordinary skill in the art would have three to five years of experience in one or more of the 

following fields: MEMS, semiconductor packaging, semiconductor devices or processing, 

micromachining, or sensors such as pressure sensors, microphones, MEMS accelerometers, 

gyroscopes, strain gauges, load cells or the like. (RX-363 at Q. 71.) I am not convinced that 

such a high or specialized level of skill was required for a person of ordinary skill in the art in the 

year 2000 or the year 2002. There is, for example, no evidence that the inventor had such 

experience in either 2000 or 2002. To require a higher level of experience, or more specialized 

experience, than the inventor would disqualify him as a person of ordinary skill in the art. 

3. ‘231 Patent 

MemsTech argues that Mullenborn, either taken alone or in combination with 

Baumhauer, renders claim 1 obvious. MemsTech argues that Arnold, either taken alone or in 

combination with Baumhauer, renders claims 1 and 2 obvious. MemsTech argues that claims 1 

and 2 are rendered obvious in view of U.S. Patent No. 5,459,368 to Onishi et al. (“Onishi”). 

(RIB at 65.) MemsTech argues that claims 1 and 2 are rendered obvious in view of an article by 

Kress et al. entitled “Integrated Silicon Pressure Sensor for Automotive Applications with 

Electronic Trimming,” SAE Document 950533 (1995) (“Kress”). 

MemsTech’s Position: MemsTech has offered a claim construction that requires the 

cover of the package to include at least two layers. MemsTech states that “[ulnder such a 

construction, the devices such as those described in Mullenborn and Arnold may not be found to 

anticipate claims 1 and 2 of the ‘23 1 patent since they include a monolithic cover, as is used in 

MemsTech’s products. If the ALJ construes the claims as urged by MemsTech, claims 1 and 2 

of the ‘23 1 patent would still be invalid as obvious in view of the prior art.” (RIB at 64.) 

MemsTech argues that it would have been “simple, routine engineering” to replace the 

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covers in Arnold or Mullenborn with a cover laminated from two materials. (Id. (citing RX-363; 

Tr. at 756: 1 1-1 7).) MemsTech points to Baumhauer, which allegedly describes “a cover 

laminated from conductive and non-conductive layers.” (Id. at 65 (citing RX-2 1 at 956-59).) 

Thus, MemsTech states that it would have been obvious to one of ordinary skill in the art in 2000 

to adapt the single-layer covers of Mullenborn and Arnold to create multi-layer structures. (Id. 

(citing (RX-363).) 

MemsTech claims that Onishi discloses each of the limitations of claims 1 and 2 of the 

‘23 1 patent except the aperture in the housing: 

Onishi discloses a package. As shown in figure 1 of Onishi, the package provides 

head room for the transducer to operate. Figure element 8 of figure 1 of Onishi is 

a multilayer substrate. Figure element 13 of figure 1 of Onishi is a metallic lid. 

Figure element 1 of figure 1 of Onishi is a transducer. The lid of the Onishi 

package is electrically connected to a layer on the substrate to provide EM1 

shielding. The transducer inside the package is surface mounted to a patterned 

conductive layer on the substrate. 

(Id. at 66 (citing Tr. at 749:15-750:3,750:10-17; RX-26 at Fig. 1; RX-363; RX-26 at 4:38,4:45- 

47,4151-54; ).) 

MemsTech claims that the use of an aperture in MEMS packaging for allowing sound to 

enter the package was well known prior to the filing of the ‘23 1 patent. (Id. (citing RX-363).) 

MemsTech states that while Onishi discloses a SAW device, those skilled in the art would know 

to use the package of Onishi with a MEMS microphone. (Id. (citing RX-363; Tr. at 752:9-11, 

753: 1 - 10,753 14-1 6).) 

MemsTech states that “Kress describes packaging a MEMS pressure transducer either in 

a TO-8 package, similar to that used in Arnold, or in a surface mountable package, depending on 

the application.” (RIB at 67 (citing RX-45).) MemsTech focuses on Figures 6 and 9 from Kress, 

stating that the figures and accompanying descriptions disclose the same features as found in 

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claims 1 and 2 of the ’23 1 patent. (Id.) Specifically, MemsTech states that Kress discloses the 

following: 

Kress discloses a package. The Kress packages provide head room to allow the 

transducer to operate. The Kress packages include an aperture to allow the 

pressure signal to reach the transducer. The Kress packages enclose both the 

sensor and the electronics. The sensor is soldered onto the substrate. 

(Id. at 68 (citing RX-363; RX-45; Tr. at 754:6-17,754:23-25).) 

MemsTech argues that Kress demonstrates that it was well known as of 1995 that one 

could change the sensor inside of the package to fit the necessary application. (Id. (citing Tr. at 

755:24-756:s; RX-45 at MEMS155376).) MemsTech also argues that Kress demonstrates that it 

was well known in 1995 that one could change the design and properties of the packaging to fit a 

specific application. (Id. (citing RX-45).) MemsTech therefore argues that it would have been 

obvious to one of ordinary skill in the art to adapt the package disclosed in Kress for use as a 

microphone package as disclosed in claims 1 and 2. (Id. at 68-69.) 

In its reply brief, MemsTech claims that Staff applies an unnecessarily rigorous test when 

analyzing the obviousness references. (RRB at 36.) MemsTech argues that Staffs analysis was 

performed based on case law that has been altered by the Supreme Court’s KSR decision. (Id. at 

36-37.) MemsTech claims that all of the elements of claims 1 and 2 of the ‘23 1 patent were 

known in the art, and that common sense dictates that it would have been obvious for one of 

ordinary skill in the art to arrive at the claimed combinations. (Id. at 37-38.) MemsTech 

highlights the Federal Circuit’s decision in Leapfiog Enterprises, Inc. v. Fisher-Price, Inc., 485 

F.3d 1 157 (Fed. Cir. 2007) as a case where the court applied the teachings of KSR in a similar 

factual context. MemsTech states that “[i]n this investigation, as with the patentee in Leapfiog, 

Complainant presents no evidence that the inclusion of the claimed features was uniquely 

challenging or difficult for one of ordinary skill in the MEMS packaging art, nor does 

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Complainant present any evidence that the inclusion of the claimed features represents an 

unobvious step over the prior art.” (RRB at 38.) 

Knowles’ Position: Knowles first attempts to rebut the assertion by MemsTech that the 

invention in the ‘23 1 patent is a matter of “routine engineering.’’ Knowles cites to numerous 

exhibits where people in the field of packaging, including both of MemsTech’s experts, 

expressed the difficulty that goes along with creating MEMS packaging. (CRB at 46 (citing CX147 at 1,s; CX-424C at 8O:ll-16; CX-411C; CX-397 at 38; CX-411C; CX-428 at KE0467624; 

CX-427 at 1077-78; CX-425 at 1; CX-396 at xii; CX-426).) 

Knowles addresses the assertion made by MemsTech that, because it only took Mr. 

Minervini six days to invent the subject matter found in the ‘23 1 patent, the claims are obvious. 

(CRB at 47-48.) Knowles states that the manner in which the invention made has no effect on 

the patentability. (Id. (citing 35 U.S.C. 9 103(a)).) Knowles further states that the testimony 

shows that Mi. Minervini succeeded where others, including Dr. Loeppert, failed. (Id. at 48 

(citing Tr. at 143:l-7; CX-389C).) 

Knowles avers that every MEMS application has features that are unique to the specific 

application. (Id. (citing CX-411C; Tr. at 332:4-12,334:15-335:5,428:10-16,713:13-714:l; CX392C).) Knowles also argues that, contrary to MemsTech’s assertion, ‘‘a person of ordinary skill 

in the art of MEMS microphone packaging would have no reason to look at non-MEMS 

microphone packages in order to solve a problem with MEMS microphone packaging.” (Id. 

(citing CX-4 1 1 C).) 

Knowles argues that claims 1 and 2 are not rendered obvious by Mullenborn or Arnold, 

whether taken alone or in combination with Baumhauer. (CRB at 49.) Knowles argues that a 

multi-layer cover is not required in claims 1 and 2. (Id. (CX-1 at 2:13-24, Fig. 1; Rx-368C; Tr. 

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at 353:20-354:10, 528:ll-531:21).) Knowles states that adding a multi-layer cover to either of 

Mullenborn or Arnold still does not resolve the deficiencies in these references that Knowles 

highlighted with regard to anticipation. (Id. (citing CX-411C; CDX-6; CX-1 at 1 :27-33; CX411C; Tr. at 464:15-465:13,507:5-14).) 

Knowles argues that claims 1 and 2 are not rendered obvious by Onishi. Knowles avers 

that MemsTech never asserted this position during the course of the investigation, and as such, 

any attempt to introduce this defense now, after the hearing, is in violation of the Ground Rules 

of this investigation. (CRB at 50.) Knowles states that MemsTech only made a “passing 

reference” to Onishi in its pre-hearing statement in the context of obviousness for the ‘23 1 

patent. (Id) Knowles argues that nothing in MemsTech’s pre-hearing statement could be 

construed as setting forth “with particularity a party’s contentions on each of the proposed issues, 

including citations to legal authorities in support thereof.” (Id (citing Order 2, Ground Rule 

4(d))-) 

Knowles asserts that none of the evidence cited by MemsTech was uncovered for the first 

time at hearing, and that MemsTech cannot claim that it could not have become aware of this 

position at the time of the filing of its prehearing statement. (CRB at 50 (citing Order 2, Ground 

Rule 4(d)).) Knowles further states that Staff, in their pre-hearing statement, argued that Onishi 

did not render claim 1 obvious. (Id) 

Knowles avers that during the hearing, Staff attempted to elicit testimony from 

MemsTech’s expert Mr. Mallon regarding an obviousness defense using Onishi as a prior art 

reference against claims 1 and 2 of the ‘231 patent. (CRB at 50 (citing Tr. at 564:6-9).) 

Knowles states that Knowles objected to this untimely line of questioning, and after a short 

recess, counsel for Staff agreed that MemsTech had not raised an obviousness defense using 

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Onishi or Kress as a prior art reference. (Id. at 50-5 1 (citing Tr. at 567:6-1 l).) Knowles states 

that I then struck the entire line of questioning. (Id. at 5 1 (citing Tr. at 567: 12-25).) 

Knowles says that MemsTech now asserts that Onishi renders all asserted claims of the 

‘23 1 patent obvious, which violates the Ground Rules of this investigation and is contrary to the 

“unambiguous ruling of this Court during the hearing.” (CRI3 at 5 1 .) Knowles argues that I 

should disregard any attempt by MemsTech to assert an obviousness defense using Onishi as a 

prior art reference. (Id) 

As to the substantive issues, Knowles argues that Onishi discloses a surface acoustic 

wave (“SAW’) device, and there is no evidence that this is a microelectromechanical system 

device. (Id. at 51 (citing RX-26).) Knowles claims that one of ordinary skill in the art would not 

look to Onishi because Onishi does not disclose a package for a MEMS device. (Id.) Knowles 

fi.u-ther asserts that Onishi teaches away from creating an aperture in the housing as required by 

the ‘23 1 patent because a SAW device seeks to avoid external sound waves. (Id. at 5 1-52 (citing 

CX-411C; RX-26 at Abstract, 35-8; 354-57,751-57,8:36-39, 1O:lO-13).) Knowles points to 

the testimony of Dr. Gilleo, who stated that putting a MEMS microphone in the package 

disclosed in Onishi would cause “serious problems.” (Id. at 52 (citing Tr. at 752:20-25).) 

Knowles argues that claims 1 and 2 are not rendered obvious by Kress. Knowles avers 

that MemsTech never asserted this position during the course of the investigation, and as such, 

any attempt to introduce this defense now, after the hearing, is in violation of the Ground Rules 

of this investigation. (CRI3 at 53.) Knowles states that in its pre-hearing statement, MemsTech 

only stated that it “would have been obvious for a person packaging a microhone to look to prior 

pressure transducer packages” and did not actually reference Kress. (Id. at 52.) Knowles argues 

that nothing in MemsTech’s pre-hearing statement could be construed as setting forth “with 

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particularity a party’s contentions on each of the proposed issues, including citations to legal 

authorities in support thereof.” (Id. at 52-53 (citing Order 2, Ground Rule 4(d)).) 

Knowles asserts that none of the evidence cited by MemsTech was uncovered for the first 

time at hearing, and that MemsTech cannot claim that it could not have become aware of this 

position at the time of the filing of its prehearing statement. (Id. at 53 (citing Order 2, Ground 

Rule 4(d)).) 

Knowles avers that during the hearing, Staff attempted to elicit testimony from 

MemsTech’s expert Mr. Mallon regarding an obviousness defense using Kress as a prior art 

reference against claims 1 and 2 of the ‘231 patent. (CRB at 53 (citing Tr. at 564:6-9).) 

Knowles states that Knowles objected to this untimely line of questioning, and after a short 

recess, counsel for Staff agreed that MemsTech had not raised an obviousness defense using 

Onishi or Kress as a prior art reference. (Id. at 53 (citing Tr. at 567:6-1 l).) Knowles states that I 

then struck the entire line of questioning. (Id. (citing Tr. at 567: 12-25).) 

Knowles says that MemsTech now asserts that Kress renders all asserted claims of the 

‘23 1 patent obvious, which violates the Ground Rules of this investigation and is contrary to the 

“unambiguous ruling of this Court during the hearing.” (CRB at 53.) Knowles argues that I 

should disregard any attempt by MemsTech to assert an obviousness defense using Onishi as a 

prior art reference. (Id.) 

Knowles argues that Kress discloses a package for an automotive field pressure sensor, 

and not a MEMS microphone package. (Id. at 53-54 (citing RX-45 at MEMS155372; CX41 IC).) Knowles claims that only the TO-style package in Kress discloses a conductive cover 

and soldering the sensor to the substrate. (Id. at 54 (citing CX-1 at 1:27-33; CX-411C; Tr. at 

464:15-465:13,507:5-14).) Knowles claims that the ‘231 patent expressly seeks to avoid TO100 
PUBLIC VERSION 

style packages. (Id.) Knowles asserts that while Kress generally discusses modifying the 

package and sensor to fit the application, there is no detailed discussion of how to modi@ a 

package to accommodate a MEMS microphone. (Id. (citing RX-45 at MEMS 155376; CX-9 at 

Commission Investigative Staffs Position: Staff argues that claims 1 or 2 are not 

obvious in view of Mullenborn or Arnold, whether alone or in combination with Baumhauer. 

(SIB at 43.) Staff states that “[tlhe evidence has not shown how or why one skilled in the art 

would have modified these references to include these missing limitations.” (Id. (citing CX41 I).) 

Staff argues that Onishi renders claims 1 and 2 obvious.16 Staff asserts that Onishi 

includes all of the limitations from claims 1 and 2 with the exception of a microphone and an 

aperture: 

In particular, Onishi discloses a package. Gilleo Tr. 749:15-17. Figure 1 of 

Onishi discloses a substrate having multiple layers. Gilleo Tr. 749: 17-1 9. Onishi 

also discloses a metallic lid that is electrically connected to the substrate. Gilleo 

Tr. 749:21-23; 75O:lO-13. The Onishi package also provides both physical and 

EM1 protection for the transducer. Gilleo Tr. 753:l-10. The transducer inside the 

package is also electrically coupled to a patterned conductive layer on the 

substrate. Gilleo Tr. 750:14-17. Thus, Onishi fails to teach only a microphone or 

silicon microphone and an aperture. 

(SIB at 44.) 

Staff asserts that the evidence shows that it would have been obvious to one of ordinary 

skill in the art to incorporate the missing claim elements into Onishi. Staff claims that one of 

ordinary skill in the art would look to various types of MEMS packaging for packaging MEMS 

devices. (Id. (citing Rx-363; RX-45; RX-46).) Staff claims that use of acoustic ports was well 

known at the time of the ‘231 patent invention. (Id. (citing RX-363; RX-33; RX-49.) 

l6 Staff notes that in its pre-hearing brief, it took the position that Onishi did not render claims 1 and 2 obvious. 

(SIB at 43-44.) Staff states that testimony at the hearing caused it to change its position. (Id.) 

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Therefore, according to Staff, it would have been obvious to one of ordinary skill in the art to 

incorporate a MEMS microphone and an aperture in the package disclosed in Onishi to create the 

packages claimed in claims 1 and 2. (Id.) 

Discussion and Conclusion: Based upon the evidence before me, I find that MemsTech 

has failed to show by clear and convincing evidence that claims 1 or 2 are obvious in view of the 

asserted prior art. 

I find that MemsTech has not put forward clear and convincing evidence that claim 1 is 

obvious in view of Mullenborn taken alone, or Mullenborn in combination with Baumhauer. 

MemsTech argues that if I adopt a construction of “layer” requiring multiple layers, Mullenborn 

discloses all of the elements of claim 1 except for a multilayer cover. MemsTech states that it 

would have been obvious to add a multilayer cover to Mullenborn, and MemsTech points to 

Baumhauer as disclosing a multilayer cover. 

I did not construe claim 1 to require a multilayer cover. Furthermore, I have found, 

supra, that Mullenborn does not anticipate claim 1 because it fails to disclose the “housing 

formed by connecting the peripheral edge portion of the cover to the substrate” element. 

MemsTech offers no argument or evidence to explain how this element is met by Mullenborn in 

combination with Baumhauer, or how it would have been obvious to modify Mullenborn to meet 

this limitation. Thus, I find that MemsTech has not met its burden to demonstrate that claim1 is 

obvious in view of Mullenborn, alone or in combination with Baumhauer. 

MemsTech argues that Arnold, taken alone or in combination with Baumhauer, renders 

claims 1 and 2 obvious. MemsTech makes the same argument here as made with respect to 

Mullenborn: it would have been obvious to add a multilayer cover to Arnold. 

I found, supra, that MemsTech failed to demonstrate that Arnold discloses the “housing 

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formed by connecting the peripheral edge portion of the cover to the substrate” element of claim 

1 and the “cover electrically connected to the first layer of a conductive material” element of 

claim 2. MemsTech offers no argument or evidence to explain how these elements are met by 

Arnold in combination with Baumhauer, or how it would have been obvious to modi@ Arnold to 

meet these limitations. Thus, I find that MemsTech has not met its burden to demonstrate by 

clear and convincing evidence that claims 1 or 2 are obvious in view of Arnold, alone or in 

combination with Baumhauer. 

MemsTech argues that claims 1 and 2 are rendered obvious by Onishi. First, I find that 

MemsTech’s arguments regarding Onishi have not been waived, as Knowles argues. Onishi was 

listed by MemsTech in its Initial Notice of Prior Art filed on May 28,2008. In its pre-hearing 

statement, MemsTech identified Onishi as a reference that renders the asserted ‘23 1 patent 

claims obvious. (See MemsTech’s Pre-Hearing Statement at 92-93, 95 .) MemsTech’s prehearing statement stated that Onishi was similar to MemsTech’s devices, but lacked an aperture. 

While MemsTech’s discussion of Onishi is brief, it was enough to put Knowles on notice that 

Onishi could be asserted as an obviousness reference in this investigation. Thus, I find that 

MemsTech did not waive its obviousness argument regarding Onishi. 

To the extent that MemsTech’s argument on this point is limited to the issue set forth 

above, it does not violate Ground Rule 4(d) promulgated by Order 2 in this case. Knowles is 

correct that better practice would have been for MemsTech to provide claim charts lining up the 

elements of the asserted claims against Onishi and/or to include a narrative describing which 

elements of the asserted claims compared to which features of Onishi. 

Knowles’ reference to the testimony of Mr. Mallon when questioned by Staff incorrectly 

characterizes events.in light of the context at trial. Staff attempted on cross-examination to elicit 

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testimony fiom Mr. Mallon regarding an obviousness defense using Onishi and Kress in 

combination as prior art references against claims 1 and 2 of the ‘23 1 patent. (Tr. at 564:6- 

565:6.) Knowles objected to this line of questioning, asserting that the opinions sought in the 

questioning involved multiple prior art references that had not been presented in the expert report 

or direct testimony. After a short recess, counsel for Staff stated that she could not find those 

combined references in Mr. Mallon’s direct testimony or his expert reports. Inasmuch as the line 

of questioning was beyond the scope of the direct, I sustained the objection and the testimony 

was stricken. There was no agreement that “MemsTech had not raised an obviousness defense 

using Onishi or Kress as a prior art reference.” (Tr. at 565:17-567:25.) In fact, Ms. Frederick 

stated correctly at trial that Mr. Mallon had discussed the references individually, and indicated 

she was trying to question him about them in combination. (Tr. at 565:17-20; RX-363 at Q. 

202.) The attempt to cross-examine Mr. Mallon using the prior art references in combination 

was what put the line of questioning outside of the bounds of direct and was the basis for 

sustaining the objection. 

Onishi discloses a surface acoustic wave (SAW) device package. (Rx-26.) MemsTech 

claims that Figure 1 of Onishi discloses each of the elements of claim 1 except for the 

microelectromechanical system microphone and the acoustic port in the housing. MemsTech 

claims that it would have been obvious to change the package of Onishi to include a microphone 

and acoustic port. Figure 1 of Onishi is depicted below: 

3 0113 

ri t)t rb 

Figure 1 of Onishi 

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I find that Onishi fails to disclose more than just the microphone and acoustic port. In 

Figure 1, the inter-digital transducer (IDT) is depicted as element 4. (Rx-26 at 4:35-43.) It is 

formed on a piezoelectric substrate shown as element 1. (Id) This is different from the 

multilayer substrate depicted as element 8. (Id at 4:43-46.) Therefore, Figure 1 of Onishi does 

not disclose both “a substrate comprising a surface for supporting the microelectromech&cal 

microphone” and “a housing formed by connecting the peripheral edge portion of the cover to 

the substrate” because the substrate that the IDT is formed on is not the same substrate that forms 

the housing. MemsTech provides no argument about whether one of ordinary skill in the art 

would know how to modify Onishi so that the microphone would be mounted on the same 

substrate that connects with the cover to form the housing. Thus, MemsTech has failed to 

present clear and convincing evidence that Onishi renders claim 1 obvious. 

Additionally, I find that Onishi teaches away from the inclusion of an acoustic port in the 

housing. “To teach away, the reference must ‘criticize, discredit, or otherwise discourage the 

solution’ reached by the proposed invention.” Depuy Spine, Inc. v. Medtronic Sofamor Danek, 

Inc., 526 F. Supp. 2d 162, 170 (D. Mass. 2007) (quoting In re Fulton, 391 F.3d 1195, 1201 (Fed. 

Cir. 2004)). 

Onishi makes multiple references to the fact that the metallic lid attaches to the substrate 

to form an airtight chamber: 

A metallic lid is attached to the electrode pattern by a solder or a conductive resin 

so that the surface acoustic wave element is sealed in an airtight condition. 

(RX-26 at Abstract.) 

A metallic lid is attached to the electrode pattern by a solder or a conductive resin 

so that the surface acoustic wave element is sealed in an airtight condition by the 

metallic lid. 

(Id. at 35-8.) 

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A metallic lid is attached to the electrode pattern by a solder or a conductive resin 

to seal the surface acoustic wave element in an airtight condition. 

(Id. at 3:54-57.) 

Although only a surface acoustic wave element 1 is sealed by a metallic lid 13 in 

Example 6, an entire module is sealed in an airtight condition by metallic lid 13 in 

this example. Since elements, which are individually sealed by a lid in a 

conventional surface acoustic wave device mounted module, are sealed by a lid in 

one body, packaging costs are reduced. 

(Id. at 7:51-57.) 

Dr. Gilleo provides an explanation regarding why the SAW device of Onishi needs an 

airtight chamber: 

A SAW device (an electronic filter) creates and detects surface vibrations, not 

sound waves, and as such, its package requirements are diametrically opposed to 

those for a microphone - there is not acoustic port because from the SAW 

device’s perspective, external sound waves are “noise” that must be filtered out. 

(CX-411C at Q. 69.) The fact that Onishi teaches away from the inclusion of an acoustic port 

supports a finding of nonobviousness with respect to claim 1. KSR, 127 S.Ct. at 1740 (“[Wlhen 

the prior art teaches away from combining certain known elements, discovery of a successful 

means of combining them is more likely to be nonobvious.”); Ormco Corp. v. Align Tech., Inc., 

463 F.3d 1299, 1308 (Fed. Cir. 2006) (“[A] reference that ‘teaches away’ from a given 

combination may negate a motivation to modify the prior art to meet the claimed invention.”) 

Claim 2 does not explicitly require an acoustic port, but it does require a “chamber 

providing an acoustic front volume for the silicon-based microphone.” I find that by including 

the “acoustic fiont volume” limitation, the claim requires that an acoustic signal must be able to 

reach the claimed silicon-based microphone. l7 As explained supra, Onishi teaches away from 

l7 I did not construe the term ‘‘acoustic fiont volume.” Knowles offered the following construction: “a portion of 

the chamber which allows an acoustic signal to reach the microphone.” (JSRCC.) Neither MemsTech nor Staff 

offered a construction for the term, claiming that it needed no construction. (Zd) 

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this by its emphasis on sealing the IDT in an airtight chamber. Thus, I find that it would not 

have been obvious to modify Onishi to meet all of the claim limitations in claim 2. KSR, 127 

S.Ct. at 1740. 

MemsTech argues that claims 1 and 2 are rendered obvious by Kress. First, I find that 

MemsTech’s arguments regarding Kress have not been waived, as Knowles argues. Kress was 

listed by MemsTech in its Initial Notice of Prior Art filed on May 28,2008. In its pre-hearing 

statement, MemsTech identified Kress as a reference that renders the asserted ‘23 1 patent claims 

obvious. (See MemsTech’s Pre-Hearing Statement at 92-93,96-97.) MemsTech’s pre-hearing 

statement stated ‘‘[olne need only to use a MEMS pressure sensor with adequately high 

sensitivity and use a metal cover as suggested by Figure 6 of Kress instead of a plastic cover to 

have the structure claimed in the ‘23 1 patent.” (Id. at 97.) While MemsTech’s discussion of 

Kress is brief, it was enough to put Knowles on notice that Kress could be asserted as an 

obviousness reference in this investigation. Thus, I find that MemsTech did not waive its 

obviousness argument regarding Kress. 

To the extent that MemsTech’s argument on this point is limited to the issue set forth 

above, it does not violate Ground Rule 4(d) promulgated by Order 2 in this case. Knowles is 

correct that better practice would have been for MemsTech to provide claim charts lining up the 

elements of the asserted claims against Kress andor to include a narrative describing which 

elements of the asserted claims compared to which features of Kress. 

Knowles’ reference to the testimony of Mr. Mallon when questioned by Staff incorrectly 

characterizes events in light of the context at trial. Staff attempted on cross-examination to elicit 

testimony from Mr. Mallon regarding an obviousness defense using Onishi and Kress in 

combination as prior art references against claims 1 and 2 of the ‘23 1 patent. (Tr. at 564:6- 

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565:6.) Knowles objected to this line of questioning, asserting that the opinions sought in the 

questioning involved multiple prior art references that had not been presented in the expert report 

or direct testimony. After a short recess, counsel for Staff stated that she could not find those 

combined references in Mr. Mallon’s direct testimony or his expert reports. Inasmuch as the line 

of questioning was beyond the scope of the direct, I sustained the objection and the testimony 

was stricken. There was no agreement that “MemsTech had not raised an obviousness defense 

using Onishi or Kress as a prior art reference.” (Tr. at 565:17-567:25.) In fact, Ms. Frederick 

stated correctly at trial that Mr. Mallon had discussed the references individually, and indicated 

she was trying to question him about them in combination. (Tr. at 565:17-20; RX-363 at Q. 

202.) The attempt to cross-examine Mr. Mallon using the prior art references in combination 

was what put the line of questioning outside of the bounds of direct and was the basis for 

sustaining the objection. 

As to the substance of Kress, I find that Kress fails to include enough detail to render 

either claims 1 or 2 obvious. Kress discloses two types of packages - a metal can and a surfacemountable package. (RX-45 at MEMS 155375-76.) 

Looking first at the metal can, the description from Kress is as follows: 

The pressure sensor chip is soldered onto a T08-type header. The cap is welded 

under vacuum in order to enclose the reference vacuum above the chip for 

absolute measurements. 

(Id. at MEMS155375.) In addition, Figure 6 depicts a “complete pressure sensor.” (Id.) 

The description of the metal can package clearly fails to disclose the following elements 

from claim 1 : “a microelectromechanical system microphone” and “an acoustic port for 

allowing an acoustic signal to reach the microelectromechanical system microphone.” The 

object to which the sensor is soldered is unclear, as is the object to which the cap is welded. 

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Therefore, it is unclear that this package meets both the “substrate comprising a surface for 

supporting the microelectromechanical microphone” limitation and the “housing formed by 

connecting the peripheral edge portion of the cover to the substrate” limitation. 

The description of the metal can package clearly fails to disclose the following elements 

from claim 2: “a silicon-based microphone,” “a cover comprising a second layer of a conductive 

material, the cover electrically connected to the first layer of a conductive material,” and “the 

chamber providing an acoustic front volume for the silicon-based microphone.” The object to 

which the sensor is soldered is unclear, as is the object to which the cap is welded. Therefore, it 

is unclear that this package meets the “cover comprising a second layer of a conductive material, 

the cover electrically connected to the first layer of a conductive material” limitation. 

Looking next at the surface-mountable package, the description from Kress is as follows: 

In Fig. 9 a barometric pressure sensor for PCB-application is shown. The chip is 

mounted onto a ceramic substrate and protected by a plastic cap. The 

requirements for environmental media resistance for the barometric measurement 

are not as stringent as for MAP sensor. The package has the contacts on the 

bottom side of the ceramic base; this device is suitable for SMD-processing. 

(RX-45 at MEMS155376.) In addition, Figure 9 depicts a “[slingle chip integrated barometric 

pressure sensor for SMD-mounting.” (Id.) 

The description of the surface-mountable package clearly fails to disclose the following 

elements from claim 1 : “a microelectromechanical system microphone,” “an acoustic port for 

allowing an acoustic signal to reach the microelectromechanical system microphone,” and “a 

cover comprising a conductive layer having a center portion bounded by a peripheral edge 

portion.” Because there is no description of how the cap connects to form the package, it is 

unclear that this package meets the “housing formed by connecting the peripheral edge portion of 

the cover to the substrate” limitation. 

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The description of the surface-mountable package clearly fails to disclose the following 

elements from claim 2: “a silicon-based microphone,” “a cover comprising a second layer of a 

conductive material, the cover electrically connected to the first layer of a conductive material,” 

and “the chamber providing an acoustic front volume for the silicon-based microphone.” It is 

unclear whether or not there is a layer of conductive material on the substrate, and whether or not 

the sensor is electrically coupled to this layer. Therefore, it is unclear that this package meets the 

“a substrate including a surface at least partially covered by a first layer of a conductive material, 

the silicon-based microphone is electrically coupled to the layer of a conductive material” 

limitation. 

Thus, MemsTech provides no explanation as to how all of the elements in claims 1 and 2 

are met. MemsTech also provides little explanation as to why one of skill in the art would know 

to modify the metal can package and/or surface-mountable package Kress to obtain a package as 

claimed in claims 1 or 2. MemsTech relies on the following statement from Kress for support 

that one of ordinary skill in the art would know to modify Kress: 

The integrated sensor chip can be modified for various pressure ranges. The 

packaging scheme can be changed depending on the application. 

(RX-45 at MEMS 155376.) 

I find that the first sentence only relates to modifying the sensor to detect different 

pressure ranges, and provides no reason to modify Kress to include a microphone. The second 

sentence is too generalized to provide any reason to modify Kress to make the claimed MEMS 

microphone package. Mr. Mallon’s testimony relating to Kress is very brief, with no detailed 

explanation of how Kress discloses the elements of the claims or how it would have been 

obvious for one of ordinary skill in the art to modify Kress. (RX-363 at Qs. 86-88.) Under the 

standard articulated in KSR, this evidence falls short in demonstrating a sufficient reason to 

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modify Kress. KSR, 127 S.Ct. at 1740-41 (describing the analysis that a court should undertake 

“to determine whether there was an apparent reason to combine the known elements in the 

fashion claimed by the patent at issue.”) Thus, I find that MemsTech has failed to produce clear 

and convincing evidence that claims 1 or 2 of the ‘23 1 patent are rendered obvious by Kress. 

Based upon the foregoing, I find that MemsTech has failed to show by clear and 

convincing evidence that claims 1 or 2 of the ‘23 1 patent are obvious in view of the asserted 

prior art. 

4. ‘089 Patent 

MemsTech argues generally that claims 1,2,9, 10, 15, 17,20,28, and 29 of the ‘089 

patent include only known elements used for their established functions and yield no unexpected 

result, and are therefore obvious under KSR. (RIB at 62.) 

More specifically, MemsTech asserts that the claimed structure of the MEMS packages 

to include a substrate, and a cover including an aperture, was not only known, but necessary for 

any “pressure sensor” since “common sense dictates that if one wants to house a pressure sensor 

to protect it, one must provide an aperture so that the sensor can interact with the medium to be 

measured.” MemsTech points to Mallon’s testimony and says he testified that all of the claim 

limitations of claims 1,2,9, 10, 15, 17,20,28, and 29 of the ‘089 patent were known before 

October 2000. (RIB at 69-70 (citing RX-363).) 

MemsTech asserts that providing protection for a MEMS transducer by placing it in a 

package was well known in 2000, and surface mountable packages were well known in 2000. 

(RIB at 71 .) MemsTech alleges that providing an aperture so that an acoustic signal can reach 

the transducer was well known in 2000. (Id.) MemsTech avers that mounting a transducer on a 

substrate was well known in 2000, as was electrically connecting a transducer to a substrate, (id. 

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(citing RX-3 1 ; RX-2 1 ; RX-19; RX-39; RX-26; RX-45; RX-363)) and creating an enlarged back 

volume for a transducer by etching out a portion of the substrate under the transducer. (Id. 

(citing RX-3 1 ; Rx-21).) 

MemsTech claims that the asserted claims of the ‘089 patent are directed to various 

configurations of a surface mountable package for protecting a MEMS microphone that includes 

a conductive cover having an aperture and an enlarged back volume created by forming a recess 

in the substrate underneath the transducer. (RIB at 70 (citing RX-32).) MemsTech alleges that, 

in 2000, prior to the filing of the ‘089 patent, one could have designed a package with an 

enlarged back volume if desired as a matter of routine engineering. (RIB at 70-71 (citng RX363; RX-362).) The reason for doing so, they say, would have been to create a package with 

increased performance of the microphone. (Id. (citing RX-363).) MemsTech asserts that those 

working in the MEMS field would have looked to inter alia existing microphone packages (both 

MEMS and non-MEMS) as well as the pressure sensor art and semiconductor art. (Id. (citing 

RX-363; RX-362).) 

MemsTech argues that claims 1,2,9, 10, 15, 17,20,28, and 29 of the ‘089 patent employ 

techniques that were well known in 2000 in the same way that they were used in the prior art to 

achieve their well established functions. (RIB at 71 (citing RX-363).) MemsTech asserts that 

Knowles’ combination of known elements used to achieve their established functions is not 

innovation, but is merely the application of ordinary skill and common sense, and are thus 

invalid under KSR. There is, they allege, no evidence to rebut the evidence MemsTech put forth 

at the evidentiary hearing that the combinations claimed in claims 1,2,9, 10, 15, 17,20,28, and 

29 of the ‘089 patent include anything other than prior art elements, and there is no evidence that 

the claimed combinations yield anything other than a predictable result. (Id) 

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Knowles argues generally that MemsTech’s argument regarding claims 1,2,9, 10,15, 

17,20,28, and 29 of the ‘089 restates the reasoning first stated regarding patent ‘231, including 

the time it took for Mr. Minervini to produce his invention and the assertion that Mr. Minervini’s 

work was “routine engineering.” (CRB at 55.) 

a. Claim 1 

MemsTech asserts that claim 1 of the ‘089 patent is invalid as obvious in view of 

Baumhauer either alone or in combination with Kress, or, alternatively, in view of Giachino. 

(RIB at 72.) In a separate argument, MemsTech asserts that claim 1 of the ‘089 patent is invalid 

as obvious in view of Onishi. (Id. at 84.) In a final separate argument, MemsTech asserts that 

claim 1 of the ‘089 patent is invalid as obvious in view of Kress. (Id at 86.) 

MemsTech’s Position: MemsTech argues that the “chamber,” “volume,” and “aperture” 

limitations of claim 1 of the ‘089 patent cannot be considered points of novelty because under 

Knowles’s expert Gilleo’s claim construction for the ‘089 patent, all MEMS microphone 

packages include such features. (Id. (citing Tr. at 172: 19-22).) MemsTech argues that under “a 

proper claim construction” in the context of the ‘089 patent intrinsic evidence, the “volume” 

claim limitation should be construed to mean a back volume formed by creating a recess in the 

substrate underneath the transducer. Under either construction, though, MemsTech posits that 

the concept was not novel in 2000, as demonstrated, for example, by Mullenborn and 

Baumhauer. (Id) 

MemsTech asserts that claim 1 of the ‘089 patent is directed to a “surface mountable 

package for containing a transducer, the transducer being responsive to sound pressure levels of 

an acoustic signal to provide an electrical output representative of the acoustic signals.” (CX-2 at 

claim 1 .) MemsTech alleges that Baumhauer’s assembly contains and protects an 

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“electroacoustic transducer, primarily in the form of a capacitive microphone.” (RIB at 72 

(citing RX-363; RX-21 at Abstract).) In Baumhauer’s device, MemsTech states, sound is 

incident on the transducer, and “an electrical equivalent to the acoustic signal is produced.” (Id. 

(citing RX-363; RX-21 at 4:27-36).) MemsTech argues that, if the preamble is construed to be a 

limitation, Baumhauer shows all of the elements of the preamble except that the package is for 

surface mounting, which would be an obvious modification to one of ordinary skill in the MEMS 

packaging art in view of references such as Kress. (Id. (citing RX-363; RX-45).) MemsTech 

argues that Kress discloses changing the packaging, for example from a TO-8 type package to a 

surface mountable package to meet the desired application. (Id. (citing RX-45 at 

MEMS155376).) MemsTech asserts that, while Baumhauer is silent on the external electrical 

connections of the carrier substrate, it would have been known that surface mounting is an 

option. (Id. (citing RX-363; RX-45).) 

MemsTech avers that Giachino discloses a surface mountable upper substrate containing 

a pressure transducer. (RIB at 72 (citing RX-362; RX-19).) MemsTech states that Giachino 

shows all of the elements of the preamble. (Id.) 

MemsTech says that claim 1 of the ‘089 patent further requires “at least a first member 

and a second member and a chamber being defined by the first member and the second 

member.” (CX-2.) MemsTech posits that Baumhauer shows a carrier substrate, and an 

enclosure member, which define a chamber. (RIB at 72 (citing RX-363; RX-21 at Figs. 5-6).) 

MemsTech states that Dr. Gilleo testified that under his construction of the ‘089 patent claims, 

all MEMS microphone packages have a chamber, a volume, and an aperture as required by claim 

1 of the ‘089 patent. (Id. (citing Tr. at 172:19-22).) 

MemsTech asserts that Figure 6 of Baumhauer shows an embodiment with sound 

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entering through the substrate, whereas figure 5 of Baumhauer shows an arrangement where 

sound enters the microphone from the top, but does not show a cover on this embodiment. (RIB 

at 73 (citing RX-363).) According to MemsTech, one of ordinary skill in the art could easily 

have added a cover similar to that shown in figure 6 of Baumhauer to the embodiment shown in 

figure 5, and would have been motivated to do so to protect the microphone, or to provide 

shielding as is also taught by Baumhauer. (Id. (citing RX-363; RX-21 at 9:56-64).) MemsTech 

argues that Baumhauer describes a cover similar to the enclosure shown in figure 6, but having 

an aperture. (Id. (citing RX-363; RX-21 at 10:8-12).) 

MemsTech states that Figure 2 of Giachino shows a lower substrate as a first member and 

a cover as a second member that define a chamber or front volume for the pressure transducer. 

MemsTech asserts that together, the substrate and the cover define a chamber or front volume for 

the pressure transducer. (RIB at 73 (citing RX-362, Giachino Dir. Stmt. Q. 88; RX-19, Figure 

2).) MemsTech reiterates that Gilleo testified that under his construction of the ‘089 patent 

claims, all MEMS microphone packages have a chamber, a volume, and an aperture as required 

by claim 1 of the ‘089 patent. (Id. (citing Tr. at 172: 19-22).) 

MemsTech continues, claim 1 of the ‘089 patent further requires “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.” (CX-2.) According to MemsTech, Figure 5 of Baumhauer shows 

the microphone transducer mounted on the surface of carrier substrate, which resides in the 

chamber defined by carrier substrate and enclosure member, (RIB at 73 (citing RX-363)) and 

Figure 2 of Giachino shows the transducer attached to a surface formed on the first member 

substrate and the transducer resides within the chamber formed by the substrate and the cover. 

(Id. (citing RX-362).) 

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MemsTech points out that claim 1 of the ‘089 patent also requires “the surface being 

formed with at least one patterned conductive layer.” (CX-2.) They say that Baumhauer’s 

carrier substrate “can be a printed wiring board.” (RIB at 73-74.) MemsTech asserts that printed 

wiring boards typically have traces and pads patterned on the surface for connecting components. 

(Id. at 74.) MemsTech alleges that Baumhauer also shows a grounded pad on the substrate for 

connecting the enclosure member. (Id.) They say the grounded pad is conductive and is a layer 

on the surface of carrier substrate. (Id) MemsTech avers that Baumhauer’s microphone 

transducer is connected to the substrate using wire bonds connected to the top surface of the 

carrier substrate. (Id.) They argue that the surface of the substrate must necessarily have 

conductive areas to receive these wire bonds. (Id. (citing RX-363; RX-21 at 9:45-48,62).) 

MemsTech asserts that Figure 1 of Giachino shows conductive leads connected to solder bumps. 

(Id. (citing RX-362).) 

MemsTech says that claim 1 of the ‘089 patent also requires “the patterned conductive 

layer being electrically coupled to the transducer.” (CX-2.) MemsTech alleges that 

Baumhauer’s wire bonds electrically connect the transducer to the patterned conductive layer on 

carrier substrate. (RIB at 74 (citing RX-363; RX-21 at 9:45-48).) They assert that Figure 1 of 

Giachino shows that the conductive leads are connected to the solder bumps. (Id (citing RX362).) 

MemsTech says that claim 1 of the ‘089 patent also requires “an outside surface of the 

surface mountable package comprising a plurality of terminal pads electrically coupled to the 

patterned conductive layer.” (CX-2.) MemsTech states that while Baumhauer does not expressly 

show surface mounting, this was a well known option to one of ordinary skill in the art. (RIB at 

74.) They say an external connection, such as surface mounting, would have been necessary for 

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the device of Baumhauer to be operational. (Id. (citing RX-363).) MemsTech alleges that 

Figure 1 of Giachino shows that the substrate has terminal pads and the substrate could be made 

surface mountable. (Id. (citing RX-362).) 

MemsTech states that claim 1 of the ‘089 patent also requires ‘‘a volume being defined by 

the transducer and one of the first member or the second member.” (CX-2.) According to 

MemsTech, Baumhauer’s front cavity resides at least partly in a recess in the substrate and is at 

least partly bounded by the transducer. (RIB at 74-75 (citing RX-363).) They say this is exactly 

the arrangement shown in Figure 24 of the ‘089 patent defining the back volume 18. (Id) Under 

Gilleo’s claim construction, all MEMS microphone packages have a volume. (Id. (citing Tr. at 

172: 19-22).) MemsTech avers that Giachino discloses such a volume since the pressure 

transducer and the cover define a volume. (Id. at 75 (citing RX-362).) 

MemsTech points out that claim 1 of the ‘089 patent also requires “the volume being 

acoustically coupled to the transducer.” (CX-2.) MemsTech asserts that Baumhauer’s Eront 

cavity is acoustically coupled to the transducer, because it permits transmission of an acoustic 

signal to the transducer. (RIB at 75 (citing RX-363).) MemsTech argues that Giachino shows 

that air would enter the volume (under Knowles’s claim construction) from the outside and 

contact the transducer. (Id (citing RX-362).) 

MemsTech recites that Claim 1 of the ‘089 patent also requires “one of the first member 

or the second member being formed to include an aperture.” (CX-2.) MemsTech alleges that 

Baumhauer’s carrier substrate is formed with an acoustic port. (RIB at 75.) MemsTech avers 

that the cover shown in figure 6 of Baumhauer could be used with the sensor shown in figure 5, 

with an aperture provided in the top of enclosure member. (Id. (citing RX-363; RX-21 at 10:8- 

12).) MemsTech reiterates that under Gilleo’s claim construction, all MEMS microphone 

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packages have an aperture. (Id. (citing Tr. at 172: 19-22).) MemsTech says that Giachino 

includes a tubular extension of the cover, which includes an aperture. (Id. (citing RX-362).) 

MemsTech states that claim 1 of the ‘089 patent also requires “the aperture configured to 

permit the passage of an acoustic signal to the transducer.” (CX-2.) MemsTech posits that 

Figure 6 of Baumhauer shows sound entering the acoustic port on its way to the transducer. 

MemsTech argues, if the cover described at Baumhauer 10:8-12 is used with the microphone of 

figure 5 of Baumhauer, the aperture in the top of the cover would also permit passage of an 

acoustic signal to the transducer. (Id. (citing RX-363; RX-21 at 10: 11-22).) MemsTech says 

that the tubular extension in Giachino allows pressure and pressure variations, i. e. an acoustic 

signal, to enter and reach the transducer. (Id. (citing RX-362).) 

According to MemsTech, the only limitations of claim 1 of the ‘089 patent that are not 

expressly set forth in Baumhauer are surface mounting of the package, and that the package have 

a plurality of terminal pads (for surface mounting) coupled to the patterned conductive layer. 

RIB at 75-76.) MemsTech says these limitations are both directed to surface mounting, which 

would be an obvious option for the Baumhauer device to one of ordinary skill in the art. (Id. at 

76 (citing RX-363).) 

MemsTech asserts that Figure 9 of Kress teaches these surface mounting features. (RIB at 

76.) MemsTech alleges that Kress describes a MEMS pressure transducer in a surface 

mountable package. (Id.) They say the package has a plurality of terminal pads on its outside 

surface, and the terminal pads are necessarily electrically connected to a patterned conductive 

layer on the surface to which the pressure sensor is mounted (inside the package enclosure). (Id.) 

MemsTech avers that Mallon testified, at the time of the ‘089 patent, one of ordinary skill in the 

MEMS packaging art would have been familiar with such pressure sensors, and would have 

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considered prior pressure sensor packages in developing a package for a silicon microphone or 

other transducers. (Id.) MemsTech argues that one would be motivated to adopt such a surface 

mount package in order to obtain a self-contained component compatible with surface mounting 

equipment, particularly if the ultimate application used surface mount technology -- as is the case 

with cellular telephones. (Id. (citing RX-363; RX-45 at MEMS155376).) 

Referring to Onishi, MemsTech argues that it discloses a package. (RIB at 84 (citing 

RX-363; Tr. at 749:15-17).) MemsTech alleges that figure 1 of Onishi shows that the package 

provides head room for the transducer to operate. (Id. (citing RX-26 at Fig. l).) MemsTech 

posits that element 8 of figure 1 of Onishi is a multilayer substrate. MemsTech asserts that 

element 13 of figure 1 of Onishi is a metallic lid. (Id. (citing RX-363; RX-26 at 451; Tr. at 

749: 18-20,2 1 -23).) MemsTech claims that element 1 of figure 1 of Onishi is a transducer. (Id. 

(citing RX-363; RX-26 at 4:38; Tr. at 749:24-750:3).) They continue, saying lid of the Onishi 

package is electrically connected to a layer on the substrate to provide EM1 shielding. (Id. 

(citing RX-363; RX-26 at 4:52-54; Tr. at 75O:lO-13).) MemsTech avers that the transducer 

inside the package is surface mounted to a patterned conductive layer on the substrate. (Id. 

(citing RX-26 at 4:45-47; Tr. at 750:14-17).) MemsTech asserts that element 10 of figure I of 

Onishi is a terminal pad on the outside surface of the package. (Id. (citing RX-26 at 4:49; Tr. at 

750:7-9).) MemsTech alleges that the Onishi package is surface mountable. (Id. (citing Tr. at 

750:4-6).) MemsTech argues that under Dr. Gilleo’s claim construction, the Onishi package 

includes both a “chamber” and a ‘‘volu~lle.’’ (Id. (citing Tr. 172: 19-22).) 

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2, - ,5 

15 

14- 8 

.8 

8 

-1 5 

-9 

lb 

\ 

11 

Figure 1 of Onishi Figure 1 of the ‘089 Patent 

(RX-26; CX-2.) 

MemsTech argues that Figure 1 of Onishi and Figure 1 of the ‘089 patent (shown above) 

demonstrate that Onishi discloses all of the structure set forth in claim 1 of the ‘089 patent with 

the exception that claim 1 requires an acoustic port so that the signal can interact with the 

transducer. (Id. (citing RX-26).) MemsTech alleges that the use of apertures for the established 

purpose of allowing a signal to enter the package was well known prior to the filing of the 

application for the ‘089 patent, and “it would be common sense to add an aperture if the Onishi 

package were to be used for a microphone.” (Id. at 84-85 (citing RX-363).) 

MemsTech admits that the transducer in Onishi is a SAW device, but argues that those 

skilled in the art knew to use packages from different types of MEMS sensors for packaging 

microphones. (RIB at 85 (citing RX-363).) MemsTech asserts that the Onishi package could be 

used to package a MEMS microphone transducer. (Id. (citing Tr. at 752:9-1 l).) MemsTech 

argues that the Onishi package would provide physical protection and protection from EM1 for a 

MEMS microphone. (Id. (citing Tr. at 753: 1-1 O).) MemsTech says that adding an aperture to 

the Onishi package would allow an acoustic signal to enter the package and interact with the 

transducer, which is the established function of an aperture. (Id. (citing Tr. at 753:14-16).) 

MemsTech reiterates that Gilleo testified that, under his proposed construction, all MEMS 

microphone packages would have a chamber, a volume, and an aperture. (Id. (citing Tr. at 

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172: 19-22).) So, they argue, it follows that it would have been obvious to adapt the Onishi 

package for use as a microphone package which would result in it having a chamber, a volume, 

and an aperture, all as required by the claims of the ‘089 patent. (Id. at 85.) 

Regarding dependent claims 2,9, 10, 15, 17,20,28, and 29, MemsTech argues only that 

they add no limitations to claim 1 that would be anything other than a mere design choice to one 

of ordinary skill in the MEMS packaging art - and there is no evidence to the contrary. (RIB at 

85-86.) MemsTech asserts, therefore, that claims 1,2,9, 10, 15, 17,20,28, and 29 of the ‘089 

patent require nothing more than an arrangement of old elements with each performing the same 

function that it had been known to perform and yield no more than one would expect fiom such 

an arrangement. (Zd. at 86 (citing KSR, 127 S.Ct. at 1740).) 

In its added argument, MemsTech asserts that the packages shown in figures 6 and 9 of 

Kress, together with their descriptions, disclose the same features set forth in the asserted claims 

of the ‘089 patent. (RIB at 86.) They say figure 6 shows a package including a conductive 

cover, whereas figure 9 shows the device packaged with a plastic cap in a surface mountable 

package. (Id. (citing RX-49.) MemsTech asserts that each of the described covers includes an 

aperture for allowing the pressure signal to reach the transducer. (Id.) 

MemsTech alleges that Kress discloses a package, (RIB at 86 (citing RX-363; RX-45 at 

MEMS155375-6; Tr. at 754:6-8)) and the Kress packages provide head room to allow the 

transducer to operate. (Id. (citing Tr. at 754:9-lo).) MemsTech asserts that the Kress packages 

include an aperture to allow the pressure signal to reach the transducer. (Zd. (citing Tr. at 754: 1 1- 

17).) MemsTech says the Kress package encloses both the sensor and the electronics. (Zd. 

(citing RX-45; Tr. at 754:23-25).) MemsTech states that the sensor is soldered onto the 

substrate. (Zd. (citing RX-45 at MEMS155375).) MemsTech argues, again, that under 

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Knowles’s expert Gilleo’s claim construction for the ‘089 patent, the Kress packages include a 

“chamber,” a “volume,” and an “aperture.” (Id (citing Tr. at 172: 19-22).) 

MemsTech argues that Kress demonstrates that it was known at least as early as 1995 that 

the packaging and the sensor could be changed to fit the application. (RIB at 86 (citing Tr. at 

755:24-756:8),) MemsTech presents as an example that, Kress states that “[tlhe integrated 

sensor chip can be modified for various pressure ranges.” (Id) MemsTech continues with 

respect to the packaging, Kress states that “[tlhe packaging scheme can be changed depending on 

the application.” (Id) MemsTech avers that in the surface mountable package shown in figure 9 

of Kress, the transducer is mounted to a ceramic substrate and protected by a plastic cap. (Id.) 

MemsTech alleges that the package includes contacts on the bottom side such that it can be 

mounted to a printed circuit board. (Id. at 86-87 (citing RX-45 at MEMS155376).) MemsTech 

argues that these statements establish that “it was known in 1995 that modifications to the 

transducer (e.g., adapting a pressure transducer so that it will react to acoustic signals) and the 

packaging (e.g., repackaging a device from a TO-8 type package such as that shown in figure 6 

of Kress into a surface mountable package such as that shown in figure 9 of Kress) were well 

known design choices that were employed by those working in the MEMS packaging field.” (Id. 

at 87 (citing RX-43.) MemsTech posits that the reason for making such packaging choices is to 

adapt the package for the particular application for which the device is intended to be used. (Id) 

Regarding dependent claims 2,9, 10, 15, 17,20,28, and 29 MemsTech argues only that 

they add no limitations to claim 1 that would be anything other than a mere design choice to one 

of ordinary skill in the MEMS packaging art. (RIB at 87.) MemsTech concludes, therefore, that 

claims 1,2, 9, 10, 15, 17,20,28, and 29 of the ‘089 patent require nothing more than an 

arrangement of old elements with each performing the same hction that it had been known to 

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perform and yield no more than one would expect from such an arrangement. (Id. (citing KSR, 

127 S.Ct. at 1740).) 

Knowles’s Position: Knowles states that MemsTech’s argument that claim 1 of the ‘089 

patent is rendered obvious by adding surface mounting to Baumhauer is irrelevant. Knowles 

asserts that, because Baumhauer is not a package, it cannot disclose other components that are 

defined in terms of the package, including the “first member” and “second member,” the 

“surface,” “volume,” “chamber,” and “aperture,” which are all defined in terms of the “first 

member” and/or “second member,” and the “patterned conductive layer” and “terminal pads 

electrically coupled to the patterned conductive layer,” which are defined in terms of the surface. 

(CRB at 55-56 (citing CX-41 lC).) Knowles asserts that Baumhauer was considered by the 

examiner during the prosecution of the application that became the ‘089 patent. (Id. at 56 (citing 

CX-2; Rx-256 at 249).) Knowles argues that this makes MemsTech’s burden to prove invalidity 

more difficult since there is “a presumption that the Examiner did his duty and knew what claims 

he was allowing.” (Id. (citing AZ-Site, 174 F.3d at 1323).) 

Knowles argues that claim 1 is not rendered obvious in view of Giachino, because 

Giachino discloses a pressure sensor for measuring fluid pressure. (CRB at 56 (citing RX-19 at 

Abstract, 1:19-26, 1 :41-44,2:22-27,2:50-55,3:25-34,3:51-53,4:50-56).) Knowles asserts that 

Giachino does not disclose a MEMS microphone and it does not disclose a package for a MEMS 

microphone. (Id. (citing CX-411C; CDX-4).) Knowles argues that it is readily apparent from the 

preamble of claim 1 that the “transducer” that converts acoustic signals to electric signals is in 

fact a microphone, while the specification refers repeatedly to silicon condenser microphones 

and never refers to any other type of transducer. (Id. (citing CX-2 at Title, Abstract, Fig. 14b, 

Fig. 14d, Fig. 23, Fig. 24, Fig. 25, Fig. 26, Technical Field, Background of the Invention, 

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Summary of the Invention, Brief Description of Drawings, Detailed Description of Preferred 

Embodiments; CX-41 IC).) Knowles reasons that there is no rational basis to modify a package 

for a non-microphone device in order to create a package for a MEMS microphone. (Id. (citing 

CX-41 lC).) Knowles states that Giachino’s failure to disclose a MEMS microphone is fatal to 

MemsTech’s obviousness argument. (Id) 

Knowles alleges that, contrary to MemsTech’s assertion, while Dr. Gilleo did testify that 

“all MEMS microphone packages” would have a chamber, volume, and an aperture, he never 

testified, nor did anyone else testify, that “all MEMS microphone packages” would have the 

same configuration of chamber, volume, and an aperture as required by claim 1. (CRB at 56-57.) 

Knowles asserts that, because the components required by claim 1 are defined according to their 

relationship to the MEMS microphone, and since Giachino does not disclose a package for a 

MEMS microphone, Giachino’s “transducer,” “substrate,” “cover,” and “aperture” cannot be the 

“transducer,” “first member,” “second member” and “aperture” required by the ‘089 patent. (Id. 

at 57 (citing RX-362)) 

Knowles concludes that, because Baumhauer and Giachino are both significantly 

different than the MEMS microphone package claimed by claim 1, they cannot render claim 1 

obvious. (CRB at 57.) 

Knowles argues two reasons why claim 1 is not invalid as obvious in view of Onishi. 

The first of these is procedural: Knowles avers that MemsTech never asserted this position 

during the course of the investigation, and as such, any attempt to introduce this defense now, 

after the hearing, is in violation of the Ground Rules of this investigation. (CRB at 62.) 

Knowles states that, in its section addressing alleged invalidity of the asserted claims of the ‘089 

patent, MemsTech’s Pre-Hearing Statement “contains an unsubstantiated statement that ‘One of 

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ordinary skill in the art looking for a package for a microphone could readily have adapted the 

Onishi package for such a purpose.”’ (Id. (citing MemsTech Pre-Hearing Statement at 127).) 

Knowles alleges that MemsTech included no claim charts lining up the elements of the asserted 

claims against Onishi, and included no narrative describing which elements of the asserted 

claims compared to which features of Onishi. (Id.) Knowles asserts that the short reference to 

Onishi in the Pre-Hearing Statement does not mention any of the asserted claims of the ‘089 

patent. Knowles continues that nothing in its Pre-Hearing Statement could be construed as 

setting forth “with particularity a party’s contentions on each of the proposed issues, including 

citations to legal authorities in support thereof.” (Id. (citing Order 2, Ground Rule 4(d)).) 

Knowles asserts that none of the evidence cited by MemsTech was uncovered for the first 

time at hearing, and that MemsTech cannot claim that it could not have become aware of this 

position at the time of the filing of its prehearing statement. (CRB at 62-63 (citing Order 2, 

Ground Rule 4(d)).) Knowles argues that by failing to raise this issue in their Pre-Hearing 

Briefs, MemsTech abandoned any right to assert an obviousness defense using Onishi as a prior 

art reference. (Id. at 63.) 

Knowles avers that during the hearing, Staff attempted to elicit testimony from 

MemsTech’s expert Mr. Mallon regarding an obviousness defense using Onishi as a prior art 

reference against claims 1 and 2 of the ‘231 patent. (CRB at 63 (citing Tr. at 564:6-9).) 

Knowles states that Knowles objected to this untimely line of questioning, and after a short 

recess, counsel for Staff agreed that MemsTech had not raised an obviousness defense using 

Onishi or Kress as a prior art reference. (Id. (citing Tr. at 567:6-1 l).) Knowles states that I then 

struck the entire line of questioning. (Id (citing Tr. at 567: 12-25).) 

Knowles says that MemsTech now asserts that Onishi renders all asserted claims of the 

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‘089 patent obvious, which violates the Ground Rules of this investigation and is contrary to the 

“unambiguous ruling of this Court during the hearing.” (CRB at 63.) Knowles argues that I 

should disregard any attempt by MemsTech to assert an obviousness defense using Onishi as a 

prior art reference. (Id.) 

The second argument raised by Knowles that this assertion must fail is that the facts do 

not support the assertion that Onishi renders claim 1 of the ‘089 patent (or any of its dependent 

claims) obvious. (CRB at 63.) Knowles asserts that Onishi discloses a surface acoustic wave 

(“SAW”) device, and there is no evidence that a SAW device is even a microelectromechanical 

system device. (Id.) Thus, Knowles says, even if it was true that as MemsTech asserts, “those 

skilled in the art knew to use packages from different types of MEMS sensors for packaging 

microphones,” (RX-363) there is no evidence that this applies to non-MEMS devices. (Id. 

at 63-64.) Knowles provides an example that the assertion of MemsTech that “those skilled in 

the art knew to use packages fiom different types of MEMS sensors’’ is irrelevant, since Onishi 

does not disclose a package for a MEMS sensor. (Id. at 64.) Knowles continues that a SAW 

device, like that disclosed by Onishi, seeks to avoid external sound waves because the sound 

waives are “noise” signals that must be filtered out. (Id. (CX-4 1 1 C).) Accordingly, they say, 

Onishi expressly teaches away from creating an aperture in its enclosure because its interior must 

remain sealed. (Id. (citing RX-26 at Abstract, 35-8, 354-57,751-57, 8:36-39, 1O:lO-13).) 

Knowles also avers that when asked if the SAW device in Onishi could be replaced with 

a MEMS microphone, Dr. Gilleo gave his estimate of the likelihood of success as follows: “[i]t 

will fit in there. The particular package probably is going to cause serious problems if you do put 

a MEMS microphone in here.” (Id. (citing Tr. at 752:20-25)) (emphasis in original.) Knowles 

asserts that Dr. Gilleo’s testimony was the only testimony presented on the topic of whether or 

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not a person of ordinary skill in the art would have a reasonable expectation of success, and “he 

clearly indicated that success was unlikely.” (Id.) 

Knowles concludes its argument saying that Onishi was expressly considered by the 

examiner during the prosecution of the application that became the ‘089 patent. (Id. (citing RX255 at 87,207, 358,363-367).) Knowles asserts that it is clear that the examiner was well aware 

of the features of Onishi, because he cited many of those features (including a multi-layer 

substrate with a conductive layer, a cover with a conductive layer, terminal pads) in making a 

non-final rejection. (Id. at 64-65.) Knowles states that the applicant successfdly traversed the 

examiner’s rejections by pointing out that the device in Onishi was not a microphone and 

therefore did not need an aperture or a volume. (Id. at 65.) Knowles posits that the examiner 

subsequently allowed the pending claims that had previously been rejected for obviousness over 

Onishi. (Id.) Knowles argues that this makes MemsTech’s burden to prove invalidity especially 

difficult since there is “a presumption that the Examiner did his duty and knew what claims he 

was allowing.” (Id. (citing Al-Site, 174 F.3d at 1323).) 

Referring to MemsTech’s final added argument, that Kress renders claims 1,2,9, 10, 15, 

17,20,28, and 29 of the ‘089 patent obvious Knowles argues that this argument fails for both 

procedural and factual reasons. (CRB at 65.) 

Knowles asserts that, in its section on the alleged invalidity of the ‘089 patent, the only 

references to Kress were as a source for surface mount technology when combined with 

Baumhauer. (CRB at 65 (citing MemsTech Pre-Hearing Statement at 110-17).) Knowles alleges 

that MemsTech never argued that Kress, by itself, could be the source of an obviousness defense. 

(Id.) Knowles avers that MemsTech provided no claim charts lining up the elements of the 

asserted claims against Kress, and included no narrative describing which elements of the 

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asserted claims compared to which features of Kress. (Id.) Knowles argues that nothing in 

MemsTech’s Pre-Hearing Statement could be construed as setting forth “with particularity a 

party’s contentions on each of the proposed issues, including citations to legal authorities in 

support thereof.” (Id. at 65-66 (citing Order 2, Ground Rule 4(d)).) Knowles says that none of 

the evidence cited by MemsTech in its Post-Hearing brief was uncovered for the first time at 

hearing, and as such, MemsTech cannot claim that it could not have become aware of this 

position at the time of the filing of its prehearing statement. (Id. at 66.) Knowles argues that by 

failing to raise this issue in their Pre-Hearing Briefs, MemsTech abandoned any right to assert an 

obviousness defense using Kress as a stand-alone prior art reference against the ‘089 patent. 

(Id. ) 

Knowles avers that, during the hearing, Staff attempted to elicit testimony from 

MemsTech’s expert Mr. Mallon regarding an obviousness defense using Kress as a prior art 

reference against the ‘23 1 patent. (CRB at 66 (citing Tr. at 564:6-9).) Knowles says that 

Knowles objected to this line of questioning, and after a short recess, Staff agreed that 

MemsTech had not raised an obviousness defense using Kress as a prior art reference. (Id. (citing 

Tr. at 567:6-1 l).) Knowles says that I then struck the entire line of questioning. (Id. (citing Tr. 

at 567: 12-25).) 

Knowles says that MemsTech now asserts that Kress renders claims 1,2,9, 10, 15, 17, 

20,28, and 29 of the ‘089 patent obvious, which violates the Ground Rules of this investigation 

and is contrary to the “unambiguous ruling of this Court during the hearing.” (CRJ3 at 66.) 

Knowles argues that I should disregard any attempt by MemsTech to assert an obviousness 

defense using Kress as a prior art reference. (Id.) 

Knowles also argues that MemsTech’s attempt to assert Kress as an obviousness defense 

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should fail, because the facts do not support this position. Specifically, Knowles asserts that 

Kress discloses a package for an automotive field pressure sensor for “applications like manifold 

intake pressure, fuel tank, ABS hydraulic pressure, fuel rail measurement,” not a microphone. 

(CRB at 67 (citing CX-411C; RX-45 at MEMS155372).) Knowles states this is evident on the 

face of Kress, and that MemsTech “agrees, noting in its Pre-Hearing Statement that ‘The Kress 

device is a pressure transducer and not a microphone.”’ (Id. (citing MemsTech’s Pre-Hearing 

Statement at 96)) (emphasis in original.) Knowles says there is no evidence regarding the 

amount of head room comparing the amount of head room required to make a barometric 

pressure sensor operative versus the amount of head room required to make a MEMS 

microphone operative. (Id.) Knowles asserts there is no evidence that the barometric pressure 

sensor in Kress would have the same configuration of chamber, volume, and aperture as required 

by Minervini ‘089. (Id.) Knowles alleges that, although Kress discloses two packages, one 

which is a TO-style package and the other which is a surface mountable package, only the TOstyle package discloses soldering the sensor to the substrate, Knowles says that the ‘089 patent 

expressly seeks to avoid TO-style packages. (Id. (citing CX-2 at 1 :34-40).) Knowles posits that 

while Kress alludes generally to modifying the package and sensor to fit the application, it 

provides no specific direction on how to change a given packaging scheme or sensor to meet a 

given application. (Id. (citing RX-45 at MEMS155376).) Knowles asserts that “it is 

uncontroverted that MEMS packaging is application and device specific.” (Id.) Knowles alleges 

that microphones are a type of pressure sensor, but not all pressure sensors are microphones. (Id. 

at 68 (citing CX-411C; Tr. at 332:4-12, 334:15-335:5,428:10-16).) Knowles says that Dr. 

Gilleo and Mr. Giachino share this opinion. (Id.) 

Knowles concludes by arguing that a person of ordinary skill in the art of MEMS 

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microphone packaging would have no reason to look at non-microphone package in order to 

come up with a design for a MEMS microphone package. (CRB at 54 (citing CX-41 lC).) 

Commission Investigative Staffs Position: Staff argues that claim 1 is not invalid as 

obvious in view of Baumhauer and Kress either alone or in combination with Giachino, and/or 

National Semiconductor. (SIB at 55-56.) Staff asserts that the evidence has shown that 

Baumhauer fails to disclose a package, as discussed supra. In particular, Staff asserts, 

Baumhauer fails to teach or suggest a package because it does not disclose first or second level 

connections and it fails to disclose a package substrate. (Id (citing CX-41 lC).) Accordingly, 

they reason, Baumhauer does not teach or suggest “a surface-mountable package.” (Id) Staff 

argues that the further proposal to modify Baumhauer with Kress (or the other secondary 

references) does not cure this deficiency. (Id.) Staff takes the position that no rational basis 

would have existed to combine the teachings of Baumhauer with the teachings of the secondary 

references. (Id.) 

Staff submits that the evidence has shown that Giachino does not teach a package having 

“a transducer being responsive to sound pressure of levels of an acoustic signal to provide an 

electrical output representative of the acoustic signals.” (SIB at 67 (citing CX-41 l).) Staff 

asserts that Giachino does not disclose “a surface mountable package.” (Id.) Staff avers that the 

evidence showed that the pressure transducer 14 is mounted on substrate 28. (Id. (citing Rx362).) Because substrate 28 is not the first or second member, Staffasserts, it cannot form part 

of the package. (Id. (citing CX-41 l).) Staff posits that, because Giachino does not teach or 

suggest “a transducer being responsive to sound pressure levels of an acoustic signal” it also fails 

to teach or suggest “an aperture configured to permit the passage of an acoustic signal.” (Id) 

Discussion and Conclusion: Based upon the evidence before me, I find that MemsTech 

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has failed to show by clear and convincing evidence that claim 1 of the ‘089 patent is rendered 

obvious to a person having ordinary skill in the art by: (a) Baumhauer alone; or (b) in 

combination with Kress; or (c) in combination with Giachino; or (d) Onishi alone; or (e) Kress 

alone. 

MemsTech has failed to provide evidence that Baumhauer teaches or suggests a MEMS 

package of any description, nor have they provided clear and convincing evidence of the reason 

why a person having ordinary skill in the art would be moved to modify Baumhauer to create the 

MEMS package taught by the ‘089 patent. 

Moreover Baumhauer, Giachino and Onishi were considered by the examiner during the 

prosecution of the application that became the ‘089 patent. (CX-2; RX-255 at 87,207,358,362- 

368; RX-256 at 249-250.) That fact makes MemsTech’s burden to prove invalidity more 

difficult since there is “a presumption that the Examiner did his duty and knew what claims he 

was allowing.’’ Al-Site, 174 F.3d at 1323. 

Baumhauer 

MemsTech has argued that all of the elements of claim 1 of the ‘089 patent are present in 

or, as in the case of the surface mounting of a package and a plurality of terminal pads coupled to 

the patterned conductive layer, they are either suggested by Baumhauer or were well known to 

one of ordinary skill in the art. 

While Baumhauer may contain some characteristics that are similar to the elements of 

claim 1 of the ‘089 patent, none of the similarities cited by MemsTech provides clear and 

convincing evidence that the ‘089 patent is rendered obvious by Baumhauer. 

Baumhauer is directed to various iterations of design of a microphone to be mounted 

directly on a user’s substrate. It does not teach a package. As described supra, element 10 of 

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Figure 1 of Baumhauer clearly shows a jagged line at each end indicating that the substrate 

shown is part of a larger structure and not the discrete substrate contemplated in a package. The 

detailed description of Baumhauer makes clear that Figure 1 shows “only a small portion of a 

semiconductor substrate which in this example includes a great many other identical, integrated, 

electronic transducer devices which are separated along saw lines.. .” (RX-21 at 3:39-44.) 

Baumhauer’s description also teaches that “[tlhe electronics for driving the device may be 

fabricated in the adjacent area of the semiconductor substrate.. .” (Id. at 4: 16-1 8.) 

The entire fabric of Baumhauer is directed to the design of the microphone to be 

mounted on a substrate, not to a package for mounting. Each of the independent claims of 

Baumhauer is directed to an “electroacoustic transducer” (i.e. microphone). (RX-2 1 at 10:41-42, 

11:32-33, 12:22-23.) Finally, Baumhauer fails to teach or suggest a package because it does not 

disclose first or second level connections and it fails to disclose a package substrate. (CX-411C 

at Q. 39.) 

MemsTech’s reliance on Figures 5 and 6 of RX-21 is misplaced. Figure 5 does not show 

a package and does not include a chamber. Figure 6, while arguably depicting a “chamber,” uses 

an “enclosure member” (element 36) surrounding the microphone, which is attached directly to 

the user’s semiconductor substrate (element 3 l), and does not teach a package. I note that Dr. 

Gilleo testified that all MEMS packages have a chamber, a volume and an aperture. Contrary to 

the inference desired by MemsTech, however, Dr. Gilleo did not testify to the obverse -that is to 

say that all devices having a chamber, a volume and an aperture are MEMS packages. (Tr. at 

17 1 : 12- 173 :2 1 .) MemsTech has failed to provide evidence that Baumhauer teaches or suggests a 

MEMS package of any description, nor have they provided clear and convincing evidence of the 

reason why a person having ordinary skill in the art would be moved to modify Baumhauer to 

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create a MEMS package. 

Based upon the foregoing, I find that Baumhauer alone does not render claim 1 of the 

‘089 patent obvious, because it would not have been obvious to one having ordinary skill in the 

art to modify Baumhauer to create the package taught by the ‘089 patent. 

Baumhauer in combination with Kress 

MemsTech has said that Baumhauer shows all of the elements of the preamble except 

that the package is for surface mounting, which would be an obvious modification to one of 

ordinary skill in the MEMS packaging art in view of references such as Kress. (Rx-363 at Q. 

181; RX-45.) MemsTech argues that Kress discloses changing the packaging, for example from 

a TO-8 type package to a surface mountable package to meet the desired application. (RX-45 at 

MEMS155376.) MemsTech says that Kress describes a MEMS pressure transducer in a surface 

mountable package having a plurality of terminal pads on its outside surface, and the terminal 

pads are necessarily electrically connected to a patterned conductive layer on the surface to 

which the pressure sensor is mounted (inside the package enclosure). 

I find Staffs argument persuasive that Baumhauer fails to teach or suggest a package 

because it does not disclose first or second level connections and it fails to disclose a package 

substrate. As discussed, supra, Baumhauer does not teach or suggest “a surface-mountable 

package.” The further proposal to modify Baumhauer with Kress does not cure this deficiency. 

I see no rational basis to combine the teachings of Baumhauer with the teachings of Kress. 

Kress, while it does mention packaging for a transducer, arises in the context of 

automotive silicon pressure sensors. The problem addressed in the ‘089 patent is surface 

mountable packages for microphones. Kress lacks the detail necessary to cause one of ordinary 

skill in the art to adapt it to an acoustic MEMS package. Examining RX-45 at MEMS 155376, I 

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note only two references to changing the packaging scheme. First, it says, “[tlhe packaging 

scheme can be changed depending on the application.” and second, figure 9 on that page 

indicates, “[slingle chip integrated barometric pressure sensor for SMD-mounting.” No further 

enlightenment on changing from a TO-8 type package to a “surface mountable package” is 

afforded by a review of Kress. MemsTech has failed to provide clear and convincing evidence 

of the reason why a person having ordinary skill in the art would be moved to use Baumhauer in 

combination with Kress to create the MEMS package for a microphone taught by the ‘089 

patent. 

Based upon the foregoing, I find that Baumhauer in combination with Kress does not 

render claim 1 of the ‘089 patent obvious. 

Baumhauer in view of Giachino 

MemsTech avers that Giachino discloses all of the elements of the preamble to claim 1. 

They say that Figure 5 of Baumhauer shows the microphone transducer mounted on the surface 

of carrier substrate, which resides in the chamber defined by carrier substrate and enclosure 

member, and Figure 2 of Giachino shows the transducer attached to a surface formed on the first 

member substrate and the transducer resides within the chamber formed by the substrate and the 

cover. MemsTech’s argument ignores the fact that Baumhauer does not disclose a package, as I 

have already found. Giachino, which arguably discloses a package, does not relate to a 

microphone (i.e. a transducer being responsive to sound pressure levels of an acoustic signal to 

provide an electrical output representative of the acoustic signals). 

MemsTech asserts that Figure 1 of Giachino shows conductive leads connected to solder 

bumps and shows that the substrate has terminal pads, and argues “the substrate could be made 

surface mountable.” MemsTech avers that Figure 2 of Giachino discloses the volume required 

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by Gilleo’s definition of a MEMS package, since the pressure transducer and the cover define a 

volume. MemsTech argues that Giachino shows that air would enter the volume (under 

Knowles’s claim construction) from the outside and contact the transducer. MemsTech says that 

Giachino includes a tubular extension of the cover, which includes an aperture, and that the 

tubular extension in Giachino “allows pressure and pressure variations, i. e. an acoustic signal,” 

to enter and reach the transducer. 

Knowles argues, more persuasively, that claim 1 is not rendered obvious in view of 

Giachino, because Giachino discloses a pressure sensor for measuringfluidpressure. 

Giachino does not teach a package having “a transducer being responsive to sound 

pressure of levels of an acoustic signal to provide an electrical output representative of the 

acoustic signals.” Giachino does not disclose “a surface mountable package.” The pressure 

transducer (element 14 of Figure 2) is mounted to a glass or insulating material, (element 28 of 

Figure 2) .which is in turn mounted on a dielectric substrate (element 12 of Figure 2). Because 

substrate 28 is not the first or second member, it cannot form part of the package. Giachino does 

not teach or suggest “a transducer being responsive to sound pressure levels of an acoustic 

signal” and it also fails to teach or suggest “an aperture configured to permit the passage of an 

acoustic signal.” It is, in fact, a fluid pressure sensor device. 

I have already found that Baumhauer does not teach or suggest “a surface-mountable 

package.” The further proposal to modify Baumhauer with Giachino does not cure this 

deficiency, because Giachino does not teach or suggest a surface mountable package. 

The record lacks clear and convincing evidence to support finding a reason for a person 

having ordinary skill in the art to be moved to modify Baumhauer in combination with Giachino 

to create the MEMS package for a microphone taught by the ‘089 patent. 

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Based on the foregoing, I find that Baumhauer in view of Giachino does not render claim 

1 of the ‘089 patent obvious. 

Onishi 

MemsTech argues that Figure 1 of Onishi and Figure 1 of the ‘089 patent show that 

Onishi discloses all of the structure set forth in claim 1 of the ‘089 patent with the exception that 

claim 1 requires an acoustic port so that the signal can interact with the transducer. MemsTech 

says that the use of apertures for the established purpose of allowing a signal to enter the package 

was well known prior to the filing of the application for the ‘089 patent, and “it would be 

common sense to add an aperture if the Onishi package were to be used for a microphone.” 

MemsTech argues that Onishi discloses a package and details the various features of 

Onishi, comparing Figure 1 of Onishi and Figure 1 of the ‘089 patent. 

-9 

Figure 1 of Onishi Figure 1 of the ‘089 Patent, CX-2 

(Rx-026; CX-2.) 

MemsTech admits that the transducer in Onishi is a SAW device; but argues that those 

skilled in the art knew to use packages from different types of MEMS sensors for packaging 

microphones. 

Knowles says that this argument is presented here for the first time in this investigation 

by MemsTech. MemsTech’s prehearing statement at page 127 mentions Onishi in the context of 

an item of prior art that renders the ‘089 patent obvious. It states, “The Onishi transducer is a 

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SAW device that does not need an aperture. One of ordinary skill in the art looking for a 

package for a microphone could readily have adapted the Onishi package for such a purpose.” 

(Referring to RX-363 at page 91, which is essentially the same language that appears in 

MemsTech’s prehearing statement). Onishi was listed by MemsTech in its Initial Notice of Prior 

Art filed on May 28,2008. While not a model of clarity, MemsTech’s mention of Onishi alleges 

that it includes all of the limits of the ‘089 patent except for the inclusion of an aperture. To the 

extent that MemsTech’s argument on this point is limited to the issue set forth above, it does not 

violate Ground Rule 4(d) promulgated by Order 2 in this case. Knowles is correct that better 

practice would have been for MemsTech to provide claim charts lining up the elements of the 

asserted claims against Onishi and/or to include a narrative describing which elements of the 

asserted claims compared to which features of Onishi. MemsTech will be limited to arguing 

what it disclosed in its prehearing statement. 

Knowles’s reference to the testimony of MemsTech’s expert, Mr. Mallon, when 

questioned by Staff incorrectly characterizes events in light of the context at trial. Staff 

attempted on cross-examination to elicit testimony from Mr. Mallon regarding an obviousness 

defense using Onishi and Kress in combination as prior art references against claims 1 and 2 of 

the ‘231 patent. (Tr. at 564:6-565:6.) Knowles objected to this line of questioning, asserting that 

the opinions sought in the questioning involved multiple prior art references that had not been 

presented in the expert report or direct testimony. After a short recess, counsel for Staff stated 

that she could not find those combined references in Mr. Mallon’s direct testimony or his expert 

reports. Inasmuch as the line of questioning was beyond the scope of the direct, I sustained the 

objection and the testimony was stricken. There was no agreement that “MemsTech had not 

raised an obviousness defense using Onishi or Kress as a prior art reference.” (Tr. at 565:17- 

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567:25.) In fact, Ms. Frederick stated correctly at trial that Mr. Mallon had discussed the 

references individually, and indicated she was trying to question him about them in 

combination. (Tr. at 565:17-20; RX-363 at Q. 202.) The attempt to cross-examine Mr. Mallon 

using the prior art references in combination was what put the line of questioning outside of the 

bounds of direct and was the basis for sustaining the objection. 

Considering Onishi on the merits, Onishi discloses a surface acoustic wave (“SAW) 

device, and not a microelectromechanical system device. Onishi expressly teaches away from 

creating an aperture in its enclosure because its interior must remain sealed. According to the 

testimony of Dr. Gilleo, a SAW device, like that disclosed by Onishi, is an electronic filter that 

creates and detects surface vibrations, not sound waves, and as such its package requirements are 

diametrically opposed to those for a microphone. There is no acoustic port, because from the 

SAW device’s perspective, external sound waves are “noise” that must be filtered out. (CX41 lC, Gilleo Rbtl. Stmt. Q. 69) 

Comparing Figure 1 of Onishi to Figure 1 of the ‘089 patent, I find that Onishi does not 

render the ‘089 patent obvious. Onishi teaches an inter-digital transducer (IDT) (figure element 

4 of Figure 1) mounted to a substrate (figure element 1 of Figure 1); but the substrate to which 

the IDT is mounted is located within the package and cannot be either the first member or the 

second member described in claim 1 of the ‘089 patent. In Onishi, the “first member” would 

necessarily be the multilayer substrate (element 8 of Figure l), and the “second member” would 

be the metallic lid (element 13 of Figure l), which together would define a chamber within 

which the transducer (i.e. the IDT) would reside, as described in the first element of claim 1 of 

the ‘089 patent. Inasmuch as the IDT is mounted on figure element 1, it is not mounted on either 

the first member or the second member of the device shown in Onishi, Figure 1. 

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In addition, the device shown in Figure 1 of Onishi, as MemsTech admits, does not 

contain the aperture included in one of the first member or the second member as required by 

element 4 of claim 1 of the ‘089 patent. 

At trial Dr. Gilleo gave his estimate of the likelihood of success in adding a microphone 

to the Onishi device, saying that it would fit in the device; but that the package would cause 

serious problems if one put a MEMS microphone in it. (Tr. at 752:20-25.) 

Onishi was expressly considered by the examiner during the prosecution of the 

application that became the ‘089 patent, and the examiner cited specific features, including a 

multi-layer substrate with a conductive layer, a cover with a conductive layer, terminal pads, in 

making a non-final rejection. After the applicant successfully traversed the examiner’s rejections 

the examiner allowed the pending claims that had previously been rejected for obviousness over 

Onishi. (RX 255, pp. 53,207,260,365 and 366) 

Based upon the evidence before me, I find that MemsTech has failed to show by clear 

and convincing evidence that Onishi renders claim 1 of the ‘089 patent obvious, because it would 

not have been obvious to one having ordinary skill in the art to modify Onishi to create the 

package taught by the ‘089 patent. 

Kress 

In its added argument, MemsTech asserts that the packages shown in figures 6 and 9 of 

Kress, together with their descriptions, disclose the same features set forth in the asserted claims 

of the ‘089 patent. 

Knowles says that this argument is presented here for the first time in this investigation 

by MemsTech in violation of Ground Rule 4(d) promulgated by Order 2 in this case. I concur. 

The only reference to Kress in MemsTech’s prehearing statement is in combination with 

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Baumhauer, as set forth, supra of this Discussion and Conclusion. I found neither separate 

reference to Kress alone nor arguments regarding Kress in the detail set forth in MemsTech’s 

added argument. There is no indication that the evidence and arguments cited by MemsTech in 

this context were first discovered at the hearing. Thus, I find that MemsTech’s presentation of 

that argument here violates Ground Rule 4(d) and should not be considered on its merits. 

Nevertheless, even if I were to consider Kress alone on its merits, I have previously 

found that Kress (in combination with Baumhauer), while it does mention packaging for a 

transducer, arises in the context of automotive silicon fluid pressure sensors and is not relevant to 

the field of endeavor of the ‘089 patent. Examining RX-45 at MEMS 155376, I noted only two 

references to changing the packaging scheme. First, “[tlhe packaging scheme can be changed 

depending on the application” and second, Figure 9 on that page indicates, “[slingle chip 

integrated barometric pressure sensor for SMD-mounting.” No further enlightenment on 

changing from a TO-8 type package to a “surface mountable package” is afforded by a review of 

Kress. 

Based upon the evidence before me, I find that MemsTech has improperly added a set of 

issues not set forth in its prehearing statement as required by Ground Rule 4(d). In addition, 

MemsTech has failed to show by clear and convincing evidence that Kress, standing alone, 

renders the ‘089 patent obvious, because it would not have been obvious to one having ordinary 

skill in the art to modify Kress to create the package taught by the ‘089 patent. 

b. Claim 2 

MemsTech asserts that claim 2 of the ‘089 patent is invalid as obvious in view of 

Baumhauer either alone or in combination with Kress, or, alternatively, in view of Giachino. 

(RIB at 77.) 

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MemsTech’s Position: MemsTech recites that claim 2 of the ‘089 patent depends from 

claim 1, and further requires that “the first member comprises a substrate and the second member 

comprises a cover coupled to the substrate to define the chamber.” (CX-2.) MemsTech asserts 

that Figure 6 of Baumhauer shows that the carrier substrate is a substrate and is a first member, 

and the enclosure member is a cover and is a second member. (RIB at 77 (citing RX-363).) 

MemsTech alleges that Figure 2 of Giachino shows that the pressure transducer package has a 

lower substrate and a cover coupled to the substrate that defines a chamber. (Id. (citing RX3 62) .) 

Knowles’ Position: Knowles argues that since Baumhauer, alone or in combination with 

Kress does not render claim 1 obvious and since since claim 2 depends on claim 1, it too cannot 

be rendered obvious by Baumhauer, either alone or in combination with Kress. (CRB at 57.) 

Similarly, Knowles argues that since Giachino does not render claim 1 obvious, and since 

claim 2 depends on claim 1, it too cannot be rendered obvious by Giachino. (CRB at 57-58.) 

Commission Investigative Staff’s Position: Staffs argument that claim 1 was not 

rendered obvious included the same points as to claim 2. Therefore the argument will not be 

repeated here. 

Discussion and Conclusion: A patent is presumed to be valid, and each claim of a 

patent shall be presumed valid even though dependent on an invalid claim. 35 U.S.C. 0 282. If I 

determined claim 1 to be obvious to a person having ordinary skill in the art and invalid, I could 

still find that claim 2 is valid. Since, however, I have found claim 1 to be valid and not obvious 

to a person having ordinary skill in the art, claim 2 is necessarily valid, because it depends from 

claim 1 and necessarily contains all of the elements of claim 1. See In re Fritch, 972 F.2d 1260, 

1266 (Fed. Cir. 1992). 

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Based upon the evidence before me, I find that MemsTech has failed to show by clear 

and convincing evidence that claim 2 of the ‘089 patent is rendered obvious to a person having 

ordinary skill in the art by Baurnhauer either alone or in combination with Kress, or, 

alternatively, in view of Giachino. 

c. Claim 9 

MemsTech asserts that claim 9 of the ‘089 patent is invalid as obvious in view of 

Baumhauer either alone or in combination with Kress or Giachino, or, alternatively, in view of 

Giachino. (RIB at 77.) 

MemsTech’s Position: MemsTech recites that claim 9 of the ‘089 patent depends from 

claim 1, and further requires that “the aperture being formed in the respective one of the first 

member and the second member, the surface being formed on the respective other one of the first 

member and the second member and the aperture is acoustically coupled by the chamber to the 

transducer.” (CX-2.) MemsTech asserts that claim 9 of the ‘089 patent requires that the 

transducer is attached to one package member, and the aperture is in the other member, and that 

sound enters the aperture and passes through the chamber on its way to the transducer. 

MemsTech alleges that Baumhauer describes in the specification adding an acoustic port to 

enclosure member. (RIB at 77-78.) MemsTech posits that at least Kress and Giachino show 

pressure sensors having this configuration. (Id. (citing RX-363; RX-2 1 at 10:7-12).) MemsTech 

lists Figure 2 of Giachino to show a pressure sensor in the configuration recited in claim 9. (Id. 

at 78 (citing RX-362).) 

Knowles’ Position: Knowles argues that Baumhauer, alone or in combination with 

Kress does not render claim 9 obvious, because Baumhauer does not render claim 1 obvious. 

(CRB at 58.) Knowles asserts that, since claim 9 depends on claim 1 , it too cannot be rendered 

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obvious by Baumhauer, either alone or in combination with Kress or Giachino. (Id.) 

Knowles continues that Giachino does not render claim 1 obvious, and since claim 9 

depends on claim 1, it too cannot be rendered obvious by Giachino. (CRB at 58.) 

Commission Investigative Staffs Position: Staffs argument that claim 1 was not 

rendered obvious included the same points as to claim 9. Therefore the argument will not be 

repeated here. 

Discussion and Conclusion: A patent is presumed to be valid, and each claim of a 

patent shall be presumed valid even though dependent on an invalid claim. 35 U.S.C. 0 282. If I 

determined claim 1 to be obvious to a person having ordinary skill in the art and invalid, I could 

still find that claim 9 is valid. Since, however, I have found claim 1 to be valid and not obvious 

to a person having ordinary skill in the art, claim 9 is necessarily valid, because it depends from 

claim 1 and necessarily contains all of the elements of claim 1. See In re Fritch, 972 F.2d 1260, 

1266 (Fed. Cir. 1992). 

Based upon the evidence before me, I find that MemsTech has failed to show by clear 

and convincing evidence that claim 9 of the ‘089 patent is rendered obvious to a person having 

ordinary skill in the art by Baumhauer either alone or in combination with Kress, or, 

alternatively, in view of Giachino. 

d. Claim 10 

MemsTech asserts that claim 10 of the ‘089 patent is invalid as obvious in view of 

Mullenborn and the 1977 National Semiconductor Pressure Transducer Handbook, (RX-52 at 

MEMS 1998 19) or, alternatively, in view of Baumhauer either alone or in combination with 

Kress and The 1977 National Semiconductor Pressure Transducer Handbook. (RIB at 78.) 

MemsTech’s Position: MemsTech asserts that Mr. Mallon testified that, to the extent 

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claim 10 of the ‘089 patent can be understood, it is obvious in view of Mullenborn and the 1977 

National Semiconductor Pressure Transducer Handbook. (RIB at 78-79.) MemsTech alleges 

that the arrangement of the transducer and the aperture recited in claim 10 is not described or 

shown in the specification or drawings of the ‘089 patent. (Id. (citing RX-363).) MemsTech 

recites that claim 10 of the ‘089 patent depends from claim 1, and fwther requires that “the 

aperture is formed in the respective one of the first member and the second member, the surface 

is formed on the respective one of the first member and the second member and the transducer is 

attached to the surface leaving the aperture uncovered by the transducer, wherein the aperture is 

coupled to the transducer via the chamber.” (CX-2.) MemsTech reasons that as best understood, 

claim 10 would require an arrangement as set forth in the figure below: 

Ir II 

Mallon’s Interpretation of Claim 10 of the ‘089 Patent 

(Id. (citing RX-363).) 

MemsTech asserts that this exact arrangement of a pressure transducer in a package is 

shown in the 1977 National Semiconductor Pressure Transducer Handbook. 

COMfORMAL 

PARILEM f DOAlIHG 

OIfFUSED 

C€RIUIIC COYER 

AITIRIATE W(tf1 

OPEW FOR BdoE OR (CLOSfO f OR 

The 1977 National Semiconductor Pressure Transducer Handbook 

1 44 
PUBLIC VERSION 

(Id. at 79 (citing RX-363; RX-52 at MEMS199819).) 

According to MemsTech, the figure above, from the 1977 National Semiconductor 

Pressure Transducer Handbook, shows a generalized transducer with two ports, but explains that 

for absolute pressure applications the port covered by the transducer (the port on the left) is 

closed, leaving just the port uncovered by the transducer (the port on the right) available. (RIB 

at 79 (citing RX-363; RX-52 at MEMS 1998 19, 199826).) MemsTech reasons that one of 

ordinary skill in the art would have been motivated to combine the package disclosed in 

Mullenborn with the configuration shown the 1977 National Semiconductor Pressure Transducer 

Handbook, for instance in order to gain flexibility in the positioning of the resulting package into 

a product. (Id. (citing RX-363).) 

MemsTech argues that in In re Sovish, 769 F.2d 738 (Fed. Cir. 1985), the Federal Circuit 

affirmed the PTO’s obviousness rejection of a claim, because the differences between what was 

taught by the prior art and the claim was simply a “matter of design choice.” (RIB at 80 (citing 

Sovish, 769, F.2d at 741; In re Kuhle, 526 F.2d 553,555 (CCPA 1975) (affirming that since the 

placement of a contact provided no novel or unexpected result, such placement was “an obvious 

matter of design choice within the skill of the art”)).) 

MemsTech asserts that alternatively, one of skill in the art would have been motivated to 

make the combination of Baumhauer (either alone or in combination with Kress) with the 1977 

National Semiconductor Pressure Transducer Handbook in order to gain flexibility in the 

positioning of the components within the package. (RIB at 80 (citing RX-363).) 

Knowles’ Position: Knowles argues that claim 10 is not rendered obvious by combining 

Mullenborn with a particular aperture configuration disclosed by the 1977 National 

Semiconductor Pressure Transducer Handbook, because the enclosure disclosed in Mullenborn 

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does not provide physical protection for the electronics within, and therefore it cannot be the 

package required by claim 1. (CRB at 58-59 (citing CX-411C; CDX-6).) Knowles asserts that 

“simply providing a particular aperture configuration cannot remove this infirmity,” and since 

claim 10 depends on claim 1, claim 10 cannot be rendered obvious by Mullenborn in 

combination with the 1977 National Semiconductor Pressure Transducer Handbook. (Id.) 

Knowles argues that claim 10 is not rendered obvious in light of Baumhauer by itself or 

in combination with Kress and the 1977 National Semiconductor Pressure Transducer 

Handbook, because Baumhauer does not disclose a package. (CRB at 59 (citing CX-411C; 

CDX-5; CX-2; RX 256 at 249).) Knowles reiterates that “simply providing a particular aperture 

configuration cannot remove this infirmity.” (Id.) Knowles asserts that since claim 10 depends 

on claim 1, claim 10 cannot be rendered obvious by Baumhauer by itself or in combination with 

Kress and the 1977 National Semiconductor Pressure Transducer Handbook. (Id) 

Commission Investigative Staffs Position: Staff argues that Mullenborn fails to teach 

or suggest a package according to claim 1, and the further proposal to modify this reference with 

National Semiconductor does not cure the underlying deficiencies of Mullenborn. (SIB at 65 

(citing CX-41 lC).) Staff adds that there is no rational basis for a person skilled in the art to 

combine the MEMs microphone package with the fluid pressure sensors disclosed in the 

secondary references. (Id) Accordingly, staff asserts, the evidence has not shown that these 

references render claim 10 obvious. (Id.) 

In addition, Staffs argument that claim 1 was not rendered obvious included the same 

points as to claim 10. Therefore that argument will not be repeated here. 

Discussion and Conclusion: A patent is presumed to be valid, and each claim of a 

patent shall be presumed valid even though dependent on an invalid claim. 35 U.S.C. 5 282. If I 

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determined claim 1 to be obvious to a person having ordinary skill in the art and invalid, I could 

still find that claim 10 is valid. If, however, I find claim 1 to be valid in view of the asserted 

prior art and not obvious to a person having ordinary skill in the art, claim 10 is necessarily 

valid, because it depends from claim 1 and necessarily contains all of the elements of claim 1. 

See In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992). Therefore, although this issue arises in 

connection with claim 10, I must begin by considering claim 1. 

Mullenborn and the 1977 National Semiconductor Pressure Transducer Handbook 

While MemsTech’s argument regarding claim 10 does not focus on claim 1, MemsTech 

previously argued that Mullenborn anticipates claim 1 .18 In discussing anticipation, I compared 

Mullenborn to the ‘089 patent and found that the record lacks clear and convincing evidence of 

such anticipation. 

Claim 1 of the ‘089 patent teaches, inter alia, as follows: 

A 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 patterned conductive layer, the 

patterned conductive layer being electrically coupled to the transducer . . . 

(CX-2 at 1 1 :2 1-34.) 

Figure 4 of Mullenborn, (RX-3 1) which was the focus of MemsTech’s argument on the 

anticipation issue, discloses what can arguably be described as a package. It does not, however, 

meet the other limits of claim 1 quoted above. Figure 4 of Mullenborn contains, among other 

things, a “lid” (element 5 of Figure 4), a “transducer” (element 1 of Figure 4), a “substrate” 

(element 2 of Figure 4), and an “EM1 shield” (element 16 of Figure 4). MemsTech argues that 

l8 See Section IV B 3 (a) of this Decision, supra. 

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the “substrate” of Figure 4 of Mullenborn corresponds to the “first member” contemplated by 

claim 1 of the ‘089 patent, and the “lid” (i.e. “cover”) of Figure 4 of Mullenborn corresponds to 

the “second member” taught by claim 1 of the ‘089 patent. 

Claim 1 of the ‘089 patent requires the existence of a “chamber being defined by the first 

member and the second member.” A chamber is defined as “a room or a natural or artificial 

enclosed space or cavity.” WEBSTER’S NEW COLLEGIATE DICTIONARY, (1 979 Ed.), at p. 183. 

Using the substrate and lid of Mullenborn, as the “first member” and the “second member,” 

respectively, a chamber is not formed, because there are no sides formed by those members 

enclosing the space within which the transducer may reside. In order to form a chamber, using 

Mullenborn, a third element must be included, which is represented by the “EM1 shield” 

(element 16 of Figure 4).19 Therefore, Mullenborn does not meet the limit of claim 1 of the ‘089 

patent that teaches “a chamber being defined by the first member and the second member.” 

On the other hand, if one were to substitute the “EM1 shield” for the “substrate” as the 

“first member,” a chamber might be formed by the lid and the EM1 shield; but the transducer 

would then not be attached to a surface formed on the first member. In that case, the transducer 

might be considered to be “attached” to a surface formed on the second member (i.e. the “lid” of 

Mullenborn), because Figure 4 shows glue (figure element 21 of Figure 4) connecting the lid to 

the transducer. In that case, the limits of claim 1 of the ‘089 patent would still not be met, 

because the surface to which the transducer would be attached on the lid is not formed with at 

least one patterned conductive layer. 

MemsTech’s expert, Mr. Mallon, testified that he had reviewed Mullenborn and the 1977 

National Semiconductor Pressure Transducer Handbook (hereinafter “National Semiconductor”). 

l9 MemsTech recognized the need for this third element in its initial brief at pages 54-55. 

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Using his definition of one having ordinary skill in the art,2o Mr. Mallon testified that combining 

Mullenborn with National Semiconductor would render claim 10 obvious, because the person of 

ordinary skill in the art would be motivated to make the combination of Mullenborn and National 

Semiconductor in order to gain the flexibility in the positioning of the resulting package in a 

product. (RX-363 at Qs. 62,63,71,92, 179, 180.) 

Mr. Mallon’s opinion regarding the combination of Mullenborn and National 

Semiconductor to render claim 10 obvious did not touch on the details of how, if at all, that 

combination would have rendered obvious claim 1, from which claim 10 depends. I am left with 

the unconvincing testimony of Mr. Mallon on the issue of anticipation of claim 1 by Mullenborn, 

discussed, supra, at section IV B 3 (a) of this decision. 

The record lacks clear and convincing evidence to support finding a reason for a person 

having ordinary skill in the art to be moved to modifl Mullenborn in combination with National 

Semiconductor to create the claimed MEMS package for a microphone. Based on the foregoing, 

I find that MemsTech has failed to provide clear and convincing evidence that Mullenborn in 

combination with National Semiconductor renders claim 1 of the ‘089 patent obvious 

Notwithstanding the foregoing, even if claim 1 had been rendered obvious by the asserted 

references, I see nothing in National Semiconductor to induce one having ordinary skill in the art 

to amend the device of claim 1 of the ‘089 patent to arrive at the invention taught in claim 10. 

First, the package described in National Semiconductor is not surface mountable, as Mr. Mallon 

admitted when he testified that modifications would need to be made to the National 

Semiconductor device to make it surface mountable. (RX-363 at Q. 179.) 

Second, the National Semiconductor device is not used for a microphone, it is a pressure 

*’ The definition of “one having ordinary skill in the art” adopted previously herein requires less experience in 

MEMS packaging than required by Mr. Mallon’s definition. 

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transducer and is connected directly into a pressure-flow system. Its diaphragm responds to 

direct stress from applied pressure, sometimes in a fluid environment. Even the version of the 

transducer for “acoustic applications’’ has a diaphragm that has a natural frequency outside the 

audio range (-50 kHz), and it does not generate audio-range harmonics from input sound waves. 

In short, the device does not employ a transducer that is a “microphone” as construed in this 

decision. (RX-52 at MEMS 199819 and 199824.) 

I see no clear and convincing evidence in the record that would support a finding that a 

person of ordinary skill in the art would combine Mullenborn and National Semiconductor to 

arrive at the invention of claim 10 of the ‘089 patent. 

Based on the foregoing, I find that claim 10 is not rendered obvious by Mullenborn in 

combination with the 1977 National Semiconductor Pressure Transducer Handbook. 

Baumhauer 

A patent is presumed to be valid, and each claim of a patent shall be presumed valid even 

though dependent on an invalid claim. 35 U.S.C. tj 282. If I determined claim 1 to be obvious to 

a person having ordinary skill in the art and invalid, I could still find that claim 10 is valid. 

Since, however, I have found claim 1 to be valid in view of Baumhauer and nut obvious to a 

person having ordinary skill in the art, claim 10 is necessarily valid, because it depends from 

claim 1 and necessarily contains all of the elements of claim 1. See In re Fritch, 972 F.2d 1260, 

1266 (Fed. Cir. 1992). 

Based upon the evidence before me, I find that MemsTech has failed to show by clear 

and convincing evidence that claim 10 of the ‘089 patent is rendered obvious to a person having 

ordinary skill in the art by Baumhauer. 

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Baumhauer in combination with Kress and The 1977 National Semiconductor 

Pressure Transducer Handbook 

A patent is presumed to be valid, and each claim of a patent shall be presumed valid even 

though dependent on an invalid claim. 35 U.S.C. 3 282. If I determined claim 1 to be obvious to 

a person having ordinary skill in the art and invalid, I could still find that claim 10 is valid. 

Since, however, I have found claim 1 to be valid in view of Baumhauer in combination with 

Kress and not obvious to a person having ordinary skill in the art, claim 10 is necessarily valid, 

because it depends from claim 1 and necessarily contains all of the elements of claim 1. See In 

re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992). 

In addition to the foregoing, based upon the same evidence discussed supra, treating 

Mullenborn in Combination with the 1 977 National Semiconductor Pressure Transducer 

Handbook, I see no clear and convincing evidence that would render claim 10 obvious to a 

person having ordinary skill in the art in light of Baumhauer in combination with Kress and the 

1977 National Semiconductor Pressure Transducer Handbook. 

The record lacks clear and convincing evidence to support finding a reason for a person 

having ordinary skill in the art to be moved to modify Baumhauer in combination with Kress and 

National Semiconductor to create a MEMS package for a microphone. 

Based on the foregoing, I find that claim 10 is not rendered obvious by Baumhauer in 

combination with Kress and the 1977 National Semiconductor Pressure Transducer Handbook. 

e. Claim 15 

MemsTech asserts that claim 15 of the ‘089 patent is invalid as obvious in view of 

Baumhauer either alone or in combination with Kress, or, alternatively, in view of Giachino. 

(RIB at SO.) 

MemsTech’s Position: MemsTech recites that claim 15 of the ‘OS9 patent depends from 

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claim 1, and further requires “the patterned conductive layer comprising a plurality of terminal 

pads, the terminal pads providing an electrical connection between the transducer within the 

volume and an exterior of the surface mountable package.” (CX-2.) MemsTech asserts that 

Figure 6 of Baumhauer shows a plurality of terminal pads to which wire bonds are connected. 

(RIB at 80-8 1 .) They say these terminal pads are on the surface of the carrier substrate, which 

may be a printed wiring board. (Id.) MemsTech posits that the pads must necessarily conductive 

if the device is to have any utility. In addition, they argue, at least Kress teaches this feature. 

(Id. (citing RX-363; RX-45 at Fig. 9).) 

MemsTech alleges that Figure 1 of Giachino shows exterior terminal pads, which are 

described in the specification as conductive leads. (RIB at 8 1 .) MemsTech asserts that the 

Giachino transducer is electrically connected to the substrate and the substrate has electrical 

traces that take the signal outside the chamber. (Id. (citing RX-362; Rx-19 at 2:61-3:2).) 

Knowles’ Position: Knowles argues that, because Baumhauer, alone or in combination 

with Kress does not render claim 1 obvious, and since claim 15 depends on claim 1, it too cannot 

be rendered obvious by Baumhauer, either alone or in combination with Kress. (CRB at 59.) 

Knowles reasons that, because Giachino does not render claim 1 obvious and since claim 

15 depends on claim 1, it too cannot be rendered obvious by Giachino. (CRB at 59-60.) 

Commission Investigative Staffs Position: Staffs argument that claim 1 was not 

rendered obvious included the same points as to claim 15. Therefore that argument will not be 

repeated here. 

Discussion and Conclusion: A patent is presumed to be valid, and each claim of a 

patent shall be presumed valid even though dependent on an invalid claim. 35 U.S.C. fj 282. If I 

determined claim 1 to be obvious to a person having ordinary skill in the art and invalid, I could 

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still find that claim 15 is valid. Since, however, I have found claim 1 to be valid and nut obvious 

to a person having ordinary skill in the art, claim 15 is necessarily valid, because it depends from 

claim 1 and necessarily contains all of the elements of claim 1. See In re Fritch, 972 F.2d 1260, 

1266 (Fed. Cir. 1992). 

Based on the foregoing, I find that claim 15 is not rendered obvious by Baumhauer in 

combination with Kress, or, alternatively in view of Giachino. 

f. Claim 17 

MemsTech asserts that Claim 17 of the ‘089 patent is invalid as obvious in view of 

Baumhauer either alone or in combination with Kress, or, alternatively, in view of Giachino. 

(RIB at 81 .) 

MemsTech’s Position: MemsTech recites that claim 17 of the ‘089 patent depends from 

claim 1, and further requires “one or both of the first member and the second member including a 

shield against electromagnetic interference.’’ (CX-2.) MemsTech alleges that Baumhauer states 

that the package provides EM1 shielding. (RIB at 81 (citing RX-363; RX-21 at 956-64).) 

MemsTech asserts that Giachino includes a metal cover in order to provide a shield against 

electromagnetic interference. (Id. (citing RX-362).) 

Knowles’ Position: Knowles argues that, because Baumhauer, alone or in combination 

with Kress does not render claim 1 obvious, and since claim 17 depends on claim 1, it too cannot 

be rendered obvious by Baumhauer, either alone or in combination with Kress. (CRB at 60.) 

Knowles argues that, because Giachino does not render claim 1 obvious, and since claim 

17 depends on claim 1, it too cannot be rendered obvious by Giachino. (Id.) 

Commission Investigative Staffs Position: Staffs argument that claim 1 was not 

rendered obvious included the same points as to claim 17. Therefore that argument will not be 

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repeated here. 

Discussion and Conclusion: A patent is presumed to be valid, and each claim of a 

patent shall be presumed valid even though dependent on an invalid claim. 35 U.S.C. 9 282. If I 

determined claim 1 to be obvious to a person having ordinary skill in the art and invalid, I could 

still find that claim 17 is valid. Since, however, I have found claim 1 to be valid and nut obvious 

to a person having ordinary skill in the art, claim 17 is necessarily valid, because it depends from 

claim 1 and necessarily contains all of the elements of claim 1. See In re Fritch, 972 F.2d 1260, 

1266 (Fed. Cir. 1992). 

Based upon the evidence before me, I find that MemsTech has failed to show by clear 

and convincing evidence that claim 17 of the ‘089 patent is rendered obvious to a person having 

ordinary skill in the art by Baumhauer either alone or in combination with Kress, or, 

alternatively, in view of Giachino. 

g. Claim 20 

MemsTech asserts that Claim 20 of the ‘089 patent is invalid as obvious in view of 

Baumhauer either alone or in combination with Kress, or, alternatively, in view of Giachino. 

(RIB at 82.) 

MemsTech’s Position: MemsTech recites that claim 20 of the ‘089 patent depends from 

claim 1 , and further requires that “the first member comprising a printed circuit board.” (CX-2.) 

MemsTech asserts that Baumhauer states that the carrier substrate, which is a first package 

member, can be a printed wiring board. (RIB at 82.) MemsTech reasons that one of ordinary 

skill in the art would recognize that printed circuit board and printed wiring board are 

synonymous terms. (Id. (citing RX-363; RX-21 at 9:9).) 

MemsTech says that Giachino describes using alumina, but other electrical insulating 

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materials, such as PCB, could be used. (Id.) MemsTech asserts that in 198 1 , PCB was a 

recognized material, and was extensively used in automotive applications other than under the 

hood. (Id. (citing RX-362).) 

Knowles’ Position: Knowles argues that, because Baumhauer, alone or in combination 

with Kress does not render claim 1 obvious, and since claim 20 depends on claim 1, it too cannot 

be rendered obvious by Baumhauer, either alone or in combination with Kress. (CRB at 60.) 

Knowles also asserts that, because Giachino does not render claim 1 obvious, and since 

claim 20 depends on claim 1, it too cannot be rendered obvious by Giachino. (CRB at 60-61 .) 

Commission Investigative Staffs Position: Staffs argument that claim 1 was not 

rendered obvious included the same points as to claim 20. Therefore that argument will not be 

repeated here. 

Discussion and Conclusion: A patent is presumed to be valid, and each claim of a 

patent shall be presumed valid even though dependent on an invalid claim. 35 U.S.C. 9 282. If I 

determined claim 1 to be obvious to a person having ordinary skill in the art and invalid, I could 

still find that claim 20 is valid. Since, however, I have found claim 1 to be valid and not obvious 

to a person having ordinary skill in the art, claim 20 is necessarily valid, because it depends from 

claim 1 and necessarily contains all of the elements of claim 1. See In re Fritch, 972 F.2d 1260, 

1266 (Fed. Cir. 1992). 

Based upon the evidence before me, I find that MemsTech has failed to show by clear 

and convincing evidence that claim 20 of the ‘089 patent is rendered obvious to a person having 

ordinary skill in the art by Baumhauer either alone or in combination with Kress, or, 

alternatively, in view of Giachino. 

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h. Claim28 

MemsTech asserts that claim 28 of the ‘089 patent is invalid as obvious in view of 

Baumhauer either alone or in combination with Kress, or, alternatively, in view of Giachino. 

(RIB at 82.) 

MemsTech’s Position: MemsTech recites that claim 28 of the ‘089 patent depends from 

claim 1 , and further requires that “the volume [defined by the transducer and one of the first 

member or the second member] includes a portion of the chamber [defined by the first member 

and the second member].” (CX-2.) MemsTech argues that “to the extent that this claim 

language can be understood,” Figure 6 of Baumhauer shows a volume that is part of the 

chamber. (RIB at 82-83 (citing RX-363).) 

MemsTech states that Figure 2 of Giachino patent shows the volume (under Knowles’ 

claim construction) in the chamber. (Id. at 83 (citing RX-362).) 

Knowles’ Position: Knowles argues that, because Baumhauer, alone or in combination 

with Kress does not render claim 1 obvious, and since claim 28 depends on claim 1, it too cannot 

be rendered obvious by Baumhauer, either alone or in combination with Kress. (CRB at 61 .) 

Knowles also reasons that, because Giachino does not render claim 1 obvious, and since 

claim 28 depends on claim 1 , it too cannot be rendered obvious by Giachino. (Id.) 

Commission Investigative Staffs Position: Staffs argument that claim 1 was not 

rendered obvious included the same points as to claim 28. Therefore that argument will not be 

repeated here. 

Discussion and Conclusion: A patent is presumed to be valid, and each claim of a 

patent shall be presumed valid even though dependent on an invalid claim. 35 U.S.C. 5 282. If I 

determined claim 1 to be obvious to a person having ordinary skill in the art and invalid, I could 

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still find that claim 28 is valid. Since, however, I have found claim 1 to be valid and not obvious 

to a person having ordinary skill in the art, claim 28 is necessarily valid, because it depends from 

claim 1 and necessarily contains all of the elements of claim 1. See In re Fritch, 972 F.2d 1260, 

1266 (Fed. Cir. 1992). 

Based upon the evidence before me, I find that MemsTech has failed to show by clear 

and convincing evidence that claim 28 of the ‘089 patent is rendered obvious to a person having 

ordinary skill in the art by Baumhauer either alone or in combination with Kress, or, 

alternatively, in view of Giachino. 

i. Claim29 

MemsTech asserts that claim 29 of the ‘089 patent is invalid as obvious in view of 

Baumhauer either alone or in combination with Kress and/or Giachino. (RIB at 83 .) 

MemsTech’s Position: MemsTech recites that claim 29 of the ‘089 patent depends fiom 

claim 1, and further requires that “the acoustic signal is coupled to the transducer via the 

chamber.” (CX-2.) MemsTech asserts that this claim language is unclear and not explained in 

the ‘089 patent specification. (RIB at 83.) MemsTech alleges that Baumhauer describes an 

embodiment with a configuration similar to that shown in figure 6, but with an aperture in the 

enclosure member. MemsTech argues that in such a configuration, sound would enter through 

the aperture and pass through the chamber on its way to the transducer. (Id.) They also allege 

that both Kress and Giachino disclose sensor packages in which the pressure signal enters a top 

cover, passes through the chamber, and reaches the transducer. (Id. (citing RX-363; RX-21 at 

10:s-12)) Giachino shows a sensor package where the signal enters through the tubular 

extension of the cover and reaches the transducer. (Id. (citing RX-362).) 

Knowles’ Position: Knowles argues that, because Baumhauer, alone or in combination 

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with Kress does not render claim 1 obvious, and since claim 29 depends on claim 1, it too cannot 

be rendered obvious by Baumhauer, either alone or in combination with Kress. (CRB at 61 .) 

Knowles continues that, because Giachino does not render claim 1 obvious, and since 

claim 29 depends on claim 1, it too cannot be rendered obvious by Giachino. (Id. at 61-62.) 

Commission Investigative Staffs Position: Staffs argument that claim 1 was not 

rendered obvious included the same points as to claim 29. Therefore that argument will not be 

repeated here. 

Discussion and Conclusion: A patent is presumed to be valid, and each claim of a 

patent shall be presumed valid even though dependent on an invalid claim. 35 U.S.C. 9 282. If I 

determined claim 1 to be obvious to a person having ordinary skill in the art and invalid, I could 

still find that claim 29 is valid. Since, however, I have found claim 1 to be valid and not obvious 

to a person having ordinary skill in the art, claim 29 is necessarily valid, because it depends from 

claim 1 and necessarily contains all of the elements of claim 1. See In re Fritch, 972 F.2d 1260, 

1266 (Fed. Cir. 1992). 

Based upon the evidence before me, I find that MemsTech has failed to show by clear 

and convincing evidence that claim 29 of the ‘089 patent is rendered obvious to a person having 

ordinary skill in the art by Baumhauer either alone or in combination with Kress andor 

Giachino. 

5. Obiective Indicia of Non-Obviousness 

Knowles’ Position: Knowles asserts that MemsTech has not established a prima facie 

case based on clear and convincing evidence that the ‘23 1 and ‘089 patents are invalid as 

obvious, and so there is no burden on Knowles to come forward with rebuttal evidence. As such, 

they argue, any discussion of secondary considerations is “premature.” (CRB at 68-69 (citing 

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Canon Computer Sys., Inc. v. Nu-Kote Int’Z, Inc., 134 F.3d 1085, 1088 (Fed. Cir. 1998); Oxford 

Gene Tech. Ltd. v. Mergen Ltd., 345 F. Supp. 2d 444,456 (D. Del. 2004)).) Nevertheless, 

assuming arguendo that MemsTech had established aprima facie case for invalidity based on 

obviousness, they argue that “certain factors weigh against any such finding.” (Id.) 

Knowles asserts that the commercial success of its SiSonic products supports a finding of 

non-obviousness. Knowles asserts that Dr. Loeppert testified that “[tlhe new designs involved 

an innovative batch fabrication method for low cost packaging using FR-4 printed circuit board 

material that at the same time provided the needed protection for the MEMS die and necessary 

acoustic access to the environment.” (CRB at 70.) Knowles alleges that Mr. Minervini’s 

patented packaging designs made it possible to use these low-cost methods as is expressly 

detailed in the patents-in-suit. (Id. (citing CX-389C; CX-1 at 3:3-16, 3:36-38; CX-2 at 3:ll-35, 

3:43-46, claim 1 preamble).) 

Knowles states that Dr. Loeppert testified that one cannot separate the packaging solution 

from the products and that Mr. Minervini’s packaging solution was key to the successful 

commercialization of Knowles Acoustics’ SiSonic microphone products. (CRB at 7 1 (citing CX389C).) 

Knowles says its President, Jeffrey S. Niew, established that one of the key advantages of 

Minervini’ s patented designs over traditional electret condenser microphones was the fact that 

SiSonic was a self-contained surface mountable package and much easier and cheaper to use. 

(CRB at 71 (citing CX-41OC; CX-2 at 3:ll-35,3:43-46).) Again, these advantages and benefits 

are touted in the patents-in-suit. (Id.) Knowles asserts that while recognizing that there are other 

reasons for the success of the SiSonic microphone, Mr. Niew testified that the package was a 

critical part of the success. (Id. (citing CX-41OC).) 

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Knowles argues that the evidence shows that the Knowles SiSonic microphone has been 

very successful because of the advantages the packaging design provides over traditional electret 

condenser microphones previously used in consumer applications. (CRB at 7 1 (citing CX-4 1 OC; 

CX-4 12C; CX-4 14C; CX-4 1 5C; CX-4 16; CX-4 17).) Knowles asserts that it sold no SiSonic 

microphones in 2003, but after incorporation of Mr. Minervini’s patented packaging designs, it 

has now sold over 700 million units as of September 2008. (Id.) 

Knowles alleges that many experts in the field have identified packaging as the key to 

successful commercialization of MEMS devices. (CRB at 71-72 (citing CX-411C; CX-396 at 

Preface p. xiim0467073, p. 20KE0467351; CX-425 at 1; CX-426 at xxiiVKE0467325; CX427 at 1077-1078; CX-428 at KE0467624; Rx-363).) Knowles asserts that Dr. Petersen states 

in the introduction to Dr. Hsu’s book that “[plackage development and implementation will 

make or break a MEMS product.” (Id.) Knowles says that Dr. Hsu agrees, “MEMS and 

microsystem packaging, which includes assembly and testing, has been identified as being the 

single most serious stumbling block in commercialization [sic] .” (Id.) 

Knowles says that Mr. Mallon stated in his 2005 editorial “The MEMS Packaging 

Problem; the MEMS Packaging Opportunity” that, “for a MEMS device such as a sensor, most 

of the cost, value added and many of the customer requirements center on the package. The 

fundament[al] enabling technology is the MEMS die, it can provide significant user benefit and 

product differentiation, but only if packaged in a way that meets customer needs.” (CRB at 72 

(citing CX-397 at 38).) 

Knowles asserts that praise in the industry supports a finding of non-obviousness. 

Knowles argues that the evidence shows that the awards given for Knowles Acoustics’ SiSonic 

products by EDN magazine, Nanotech Briefs and Small Times magazine microphone are 

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directly related to the technical and manufacturing advantages and benefits provided by Mr. 

Minervini’s packaging designs embodied in the ‘23 1 and ‘089 patents. (CRB at 72 (citing CX389C; CX-199; CX-200; CX-205; CX-206; CX-207; CX-208; CX-209; CX-210; CX-214; CX-1 

at 3:3-16,3:36-38; CX-2 at 3:ll-35,3:43-46).) Knowles says that the EDN award notice for 

EDN’s 15* Annual Innovator/Innovation campaign for 2004 states that the SiSonic microphone 

“incorporates an innovative packaging technique to provide advantages over common electret 

microphones.” (Id. (citing CX-389C; CX-1 at 3:3-16,3:36-38; CX-2 at 3:ll-35,3:43-46, claim 

1 preamble; CX-9 at KE000488; CX-234 at KE07037081).) 

Knowles asserts that the Nanotech Briefs 2005 First Annual Nan0 50TM Award (“best of 

the best” award) for Knowles Acoustics’ SiSonic “Zero-Height” MEMS-Based SMD 

Microphone was based on a submission directly linking the advantages of the microphone to Mr. 

Minervini’s patented designs. (CRB at 73 (citing CX-389C; CX-199; CX-214C at KE0534411; 

CX-9 at KE000488; CX-1 at 3:3-16,3:36-38; CX-2 at 3:ll-35,3:43-46, claim 1 preamble; CX234 at KE0703081).) Knowles claims that the award submission states that the SiSonic “ZeroHeight” microphone was the World’s first surface mount microphone based on MEMS 

technology. (Id.) Knowles avers that the Small Times magazine “2003 Small Times Magazine 

Best of Small Tech Product Award” naming Knowles Acoustics’ SiSonic microphone as runnerup was based on a submission directly linking the advantages of the microphone to Mr. 

Minervini’s patented designs. (Id. (citing CX-389C).) 

Knowles asserts that long-felt need and failure of others supports a finding of nonobviousness. Knowles says that Dr. Loeppert testified that, in 1996, he himself had attempted to 

develop a package for a MEMS microphone but his package failed because it was “difficult to 

assemble through automation processes and had very expensive components leading to a 

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relatively high per unit cost compared to conventional, consumer-based electret condenser 

microphones or ECMs.” (CRB at 76 (citing CX-389C).) 

Knowles alleges that, even after Mr. Minervini’s inventions, others continued to seek 

viable MEMS microphone packages. (CRB at 76-78 (citing CX-425 at 1 , 1077-1078; CX41 1 C).) Knowles asserts that “[tlhis long felt need applies not only to MEMS microphone 

packages in particular, but also to MEMS device packaging generally.” (Id. (citing CX-411 C; 

CX-428 at KE0467624; CX-147 at 1, 8; CX-424C at 8O:ll-16; CX-397; CX-396 at xii; CX-426 

at 20; RX-363).) Knowles argues that, given Dr. Loeppert’s failures in designing a viable 

MEMS microphone package, and given the lengthy list of references explaining the need for 

viable MEMS packaging solutions, Knowles has “clearly established the secondary 

considerations of long-felt need and failure of others.” (Id.) 

MemsTech’s Position: MemsTech argues that Knowles bears the burden of coming 

forward with evidence of secondary considerations, and that Knowles failed to do so at the 

hearing. (RIB at 88 (citing Iron Grip Barbell Co. v. USA Sports, Inc., 392 F.3d 1317, 1324 (Fed. 

Cir. 2004)).) 

MemsTech argues that there can be no finding of long-felt need or failure of others when 

people with “reasonable skill in the packaging art,” such as Mr. Minervini and Mr. Sooriakumar, 

where able to quickly come up with a microphone package design based on their experience. 

(RIB at 88 (citing Ecolochem v. Southern California Edison Co., 227 F.3d 1361, 1377 (Fed. Cir. 

2000).) MemsTech points to Dr. Loeppert’s testimony regarding the fact that Mr. Minervini 

developed the microphone package only six days after joining Knowles. (Id. at 89 (citing Tr. at 

138:ll-23, 139:13-140:1, 143:7-13).) Specifically, Dr. Loeppert testified that Mr. Minervini 

used the same approach that he had been using in his past job to come up with a suitable 

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microphone package. (Id.) MemsTech likewise points to Mr. Sooriakumar’s testimony that he 

did not see anything inventive in the package he developed for MemsTech. (Id. (citing Tr. at 

223 7- 1 4) .) 

MemsTech argues that Knowles failed to demonstrate the required nexus between the 

claimed inventions and the commercial success of the SiSonic products. MemsTech states that 

Knowles relies solely on the testimony of Mr. Niew, who admitted that he had not read the 

patents and could not attribute commercial success to what is described in the patents in any 

definitive manner. (RIB at 90 (citing Tr. at 604:21-605:8).) Further, MemsTech points to Mr. 

Niew’s testimony that there were “a hundred different things” that made the SiSonic products 

successful. (Id. (citing Tr. at 606: 16-23).) 

MemsTech claims that any success was due not to the claimed inventions, but to the fact 

that the silicon microphones used in the SiSonic products are capable of being surface mounted. 

MemsTech claims that the older electret condenser microphones (“ECM) could not withstand 

the heat necessary for surface mounting, and thus they had to be hand-inserted. (RIB at 91 

(citing Tr. at 600:20-24, 601:12-602:4; Rx-362).) Cell phone companies wanted the ability to 

surface mount the microphones to lower costs. (Id. (citing RX-369C; CX-148).) MemsTech 

therefore states that “it cannot reasonably be disputed that a significant reason (if not the primary 

reason) for the success of the SiSonic products was that the use of a silicon microphone die (i.e., 

the device inside the package and not the package itself) allowed it to be surface-mounted.” (Id.) 

MemsTech states that because any commercial success is at best only partially due to the 

claimed features of the ‘23 1 and ‘089 patents, commercial success is irrelevant. (Id. (citing 

Ormco, 463 F.3d at 13 1 1 - 13 12).) 

With regard to the awards that Knowles received for the SiSonic products, MemsTech 

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states that Dr. Loeppert admitted that the awards do not relate in any meaningfid way to the 

packaging described in the ‘231 and ‘089 patents. (RIB at 92 (citing Tr. at 117:16-122:3).) Thus 

MemsTech claims that Knowles cannot establish a nexus between the patents and the awards. 

(Id. (citing In re Paulsen, 30 F.3d 1475, 1482 (Fed. Cir. 1994).) 

Commission Investigative Staffs Position: Staff argues that evidence of industry 

praise does not support a finding of non-ovbiousness. (SIB at 42.) Staff claims that “[tlhe 

evidence shows that [the awards given to Knowles] for the SiSonic products are due, in part, to 

other features not embodied by the asserted claims.” (Id. (citing Tr. at 117:16-124:3).) 

Staff also claims that Knowles’ evidence of failure of others is lacking. Staff points to 

Dr. Loeppert’s testimony that Knowles’ prior microphone designs failed because they were 

expensive to manufacture. Staff claims that Dr. Loeppert testified that the inventions claimed in 

the ‘23 1 and ‘089 patents were inexpensive because Knowles used an “innovative batch 

fabrication method for low cost packaging using FR-4 printed circuit board.” (Id. (quoting CX389C).) Staff notes that this feature is not claimed in the patents-in-suit, and thus the prior 

failures are not relevant to the claimed inventions. (Id. at 42-43 (citing Ormco, 462 F.3d at 

1313).) 

Discussion and Conclusion: I have already found that MemsTech has failed to present 

clear and convincing evidence that the asserted claims of the ‘23 1 and ‘089 patents are obvious. 

Thus it is unnecessary to consider secondary considerations. Nevertheless, I will address the 

alleged evidence of secondary considerations raised by Knowles so that my analysis of the 

Graham factors is complete. 

I find that Knowles has waived the ability to raise secondary considerations by failing to 

include the issue in its initial post-hearing brief and findings of fact, as discussed supra. 

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Knowles made a brief reference to secondary considerations in its pre-hearing statement. (See 

Ex. A to Knowles’ Pre-Hearing Statement at 42-43.) Knowles then included a much more 

detailed discussion of secondary considerations in its reply brief, citing evidence introduced at 

the hearing as support. This prevented MemsTech from having the opportunity to properly 

respond to the secondary considerations arguments and evidence put forward by Knowles. 

Allowing Knowles to assert evidence of secondary considerations without providing MemsTech 

the opportunity to respond to and rebut such evidence is improper and unfair. Even though I 

now hold that Knowles has waived its secondary considerations arguments, I will consider the 

evidence in the event that the Commission finds otherwise. 

Reviewing the evidence of secondary considerations is an important step in the 

obviousness analysis. As explained by the Federal Circuit: 

It is jurisprudentially inappropriate to disregard any relevant evidence on any 

issue in any case, patent cases included. Thus evidence rising out of the so-called 

“secondary considerations” must always when present be considered en route to a 

determination of obviousness. Indeed, evidence of secondary considerations may 

often be the most probative and cogent evidence in the record. It may often 

establish that an invention appearing to have been obvious in light of the prior art 

was not. It is to be considered as part of all the evidence, not just when the 

decisionmaker remains in doubt after reviewing the art. 

Stratoyex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1538-39 (Fed. Cir. 1983) (citations omitted). 

I find Knowles has submitted evidence that shows that the commercial success of the 

SiSonic products that is attributable to the ‘23 1 and ‘089 patents. “Evidence of commercial 

success, or other secondary considerations, is only significant if there is a nexus between the 

claimed invention and the commercial success.” Ormco, 463 F.3d at 13 1 1-1 3 12. “When a 

patentee can demonstrate commercial success, usually shown by significant sales in a relevant 

market, and that the successful product is the invention disclosed and claimed in the patent, it is 

presumed that the commercial success is due to the patented invention.” J. T. Eaton & Co. v. 

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Atlantic Paste & Glue Co., 106 F.3d 1563, 1571 (Fed. Cir. 1997). If the patentee makes such a 

showing, the burden shifts to the challenger to prove that the commercial success is due to 

something other than the patented invention, such as advertising. Id. 

Knowles has shown significant sales of the SiSonic products in the market from 2003 to 

the present. (CX-4 1 OC at Qs. 1 8-2 1,24-26; CX-4 14C; CX-4 1 5C; CX-4 16; CX-4 17.) Since 

2003, Knowles has sold over 700 million SiSonic units. (CX-410C at Q. 20.) Knowles also 

offers a 2006 article from EE Times titled “Knowles set to dominate acoustic MEMS,” which 

states that “Knowles Acoustics is the leading provider of MEMS acoustic components with more 

than a 95 percent market share.” (CX-416.) As discussed infra in connection with the domestic 

industry requirement, I find that the SiSonic practice the ‘23 1 and ‘089 patents. Knowles is 

therefore entitled to a presumption that the commercial success is due to the patented inventions. 

In an attempt to rebut the showing by Knowles, MemsTech points to the testimony of 

Knowles’ President, Mr. Niew. Specifically, MemsTech argues that the fact that Mr. Niew 

stated that the patents were only a small part of the success of the SiSonic microphone undercuts 

any nexus between the patents and the commercial success. I find otherwise. At the hearing, 

Mr. Niew testified: 

What I basically stated was, was that the practicing the patents and the things that 

were in the patents were a small part of the success, and the reason I said they 

were a small part was because I always look at this as a chain of a hundred 

different things that got to happen in order to make this product successful. And 

without the patents and without the package itself, the product wouldn’t have 

been a success, so although it’s a small portion, it’s a critical portion to the 

success of the product. 

(Tr. at 606: 16-607:3 .) 

I find that Mr. Niew’s testimony does not rebut the presumption of commercial success. 

Mr. Niew’s testimony is the result of his big picture analysis in stating that many things need to 

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go right for a product to be successful. Mr. Niew still recognizes that the patents are a “critical 

portion” of the success of the products. Mr. Niew’s testimony on this issue provides no other 

specific reason other than the claimed inventions as to why the products were a commercial 

success. 

MemsTech also argues that the reason for the commercial success of the SiSonic 

products is that the silicon microphone die is able to withstand the heat of the surface mounting 

process, thus making SiSonic products more desirable than ECMs. MemsTech emphasizes that 

it is the microphone die itself - and not the package - that was susecptable to overheating 

problems when surface mounting. Mr. Niew’s testimony on cross examination does not support 

that, as he testified that “[tlhe whole microphone has to be able to withstand the heat, which 

includes everything.” (Tr. at 603:s-604:7.) MemsTech fails to cite any evidence to contradict 

Mr. Niew’s testimony. Thus, I do not find MemsTech’s argument persuasive. 

I find that Knowles’ alleged evidence of industry praise does not support the finding of 

non-obviousness. “When a patentee offers objective evidence of nonobviousness, there must be 

a sufficient relationship between that evidence and the patented invention.” Paulsen, 30 F.3d at 

1482. As MemsTech and Staff note, the awards that Knowles won for its SiSonic product are 

not sufficiently tied to the features of the claimed inventions. (See, e.g., Tr. at 117:16-124:3; 

CX-203C at KE0534353; CX-207C at KE0534384; CX-208C at KE0534394; CX-211C; CX214C at KE0534411.) 

I find that Knowles’ alleged evidence of failure of others does not support the finding of 

non-obviousness. Knowles argues that Dr. Loeppert tried and failed to create a MEMS 

microphone package before Mr. Minervini invented the devices claimed in the ‘23 1 and ‘089 

patents. In describing the package that he created in about 1996, Dr. Loeppert stated that the 

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package “was difficult to assemble.. .and had very expensive components[.]” (CX-389C at Q. 

46.) Dr. Loeppert testified that while he was able to create a hctional device, “it could not be 

successfully commercialized” due to the difficulty in assembly and high costs. (Id.) 

This testimony does not support a finding that others besides Mr. Minervini failed at 

creating the patented packages. The testimony supports a finding that Dr. Loeppert failed to 

create a package that was commercially viable. This finding is further supported by Dr. 

Loeppert’s answer when asked about why Mr. Minervini’s package design worked: 

The new designs involved an innovative batch fabrication method for low cost 

packaging using FR-4 printed circuit board material that at the same time 

provided the needed protection for the MEMS die and necessary acoustic access 

to the environment. 

(Id. at Q. 75) (emphasis added.) Further, the “innovative batch fabrication method” described 

above is not claimed in the ‘23 1 or ‘089 patents. 

I find that Knowles’ alleged evidence of long-felt but unresolved need does not support 

the finding of non-obviousness. The references generally relate to the importance of packaging 

in MEMS devices and the technical difficulty associated with packaging. (See CX-411C at Q. 

185; CX-428 at KE0467624; CX-147 at 1, 8; CX-424C at 8O:ll-16; CX-397; CX-427 at 1077- 

78; CX-425 at 1; CX-396 at xii; CX-426C at 20.) None of these references demonstrate that 

prior to Mr. Minervini’s inventions, there was a long-felt need but unresolved need in the 

industry for the claimed microphone packages. 

D. The Written Description Requirement 

The first paragraph of 35 U.S.C. 0 112 requires: 

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 skilled in the art . . . to make and use the same . . . 

(emphasis added.) 

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The Federal Circuit has interpreted 35 U.S.C. 0 112,l 1, to require the patent 

specification to “describe the claimed invention so that one skilled in the art can recognize what 

is claimed.” Enzo Biochem, Inc. v. Gen-Probe Inc., 323 F.3d 956,968 (Fed.Cir.2002). In 

evaluating whether a patentee has fulfilled this requirement, the standard is that the patent’s 

“disclosure must allow one skilled in the art ‘to visualize or recognize the identity of the subject 

matter purportedly described.” Id. (quoting Regents of Univ. of Cal. v. Eli Lilly & Co., 119 F.3d 

1559, 1573 (Fed.Cir.1997)); see also Cordis Corp. v. Medtronic Ave, Inc., 339 F.3d 1352, 1364 

(Fed.&. 2003). 

Terms need not be used in haec verba. Eiselstein v. Frank, 52 F.3d 1035, 1038 

(Fed.Cir. 1995). The written description requirement can be satisfied by “words, structures, 

figures, diagrams, formulas, etc.” Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 

(Fed.Cir. 1997) (emphasis added). 

MemsTech’s Position: MemsTech argues that written description issues often arise 

when a patentee seeks to add or amend claims after the application is filed which are not 

encompassed by the disclosure of the invention in the original application. (RIB at 93.) 

MemsTech asserts that the purpose of the written description requirement is to guard against an 

“inventor’s overreaching by insisting that he recount his invention in such detail that his future 

claims can be determined to be encompassed within his original disclosure.” (Id. (quoting VasCath, Inc. v. Mahurkar, 935 F.2d 1555, 1561 (Fed. Cir. 1991)).) 

MemsTech argues that in all cases, the purpose of the written description requirement is 

to ensure that the inventor had possession, as of the filing date of the application relied on, of the 

specific subject matter later claimed by him. (RIB at 93 (citing Hyatt v. Boone, 146 F.3d 1348, 

1354 (1998); Lockwood, 107 F.3d at1572 (“a prior application itself must describe an invention, 

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and do so in sufficient detail that one skilled in the art can clearly conclude that the inventor 

invented the claimed invention as of the filing date sought”)).) 

MemsTech states that claim 10 of the ‘089 patent adds to claim 1 “the aperture is formed 

in the respective one of the first member and the second member, the surface is formed on the 

respective one of the first member and the second member and the transducer is attached to the 

surface leaving the aperture uncovered by the transducer, wherein the aperture is coupled to the 

transducer via the chamber.” (CX-2.) MemsTech alleges that claim 10 is difficult to construe, 

and to the extent it can be construed, it finds no support in the specification, and thus should be 

held invalid for failure to satisfy the written description requirement. (RIB at 93-94 (citing RX363).) 

MemsTech asserts that the arrangement of claim 10 is not shown or discussed anywhere 

in the ‘089 Patent. (RIB at 94 (citing RX-363).) MemsTech argues that “[i]t is evident that the 

applicant did not have possession of the subject matter of claim 10 at the time the application for 

the ‘089 patent was filed. Therefore, they say, claim 10 is invalid under 35 U.S.C. $ 112.” (Id.) 

Knowles’ Position: Knowles asserts that the configuration of MEMS microphone and 

aperture taught in claim 10 of the ‘089 patent is shown in Fig. 28 and 29 of the patent. (CRB at 

78 (citing CX-41 lC).) Knowles argues that this is sufficient to meet the written description 

requirement of 35 U.S.C. $1 12. (Id.) 

Commission Investigative Staffs Position: Staff asserts that, while the exact language 

at issue does not have to be in the original application, the original disclosure must convey to one 

of ordinary skill in the art that the inventor was in possession of the inventions claimed in the 

patent in order to satisfy the written description requirement. (SIB at 62-63 (citing Turbocare 

Div. of Demag Delaval Turbomachinery Corp. v. General Elec., 264 F.3d 1 1 1 1,1119 (Fed. Cir. 

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2001); Vas-Cath, Inc., 935 F.2d at 1563-64).) Staff argues that, “one of ordinary skill in the art, 

reading the original disclosure, must immediately discern the limitation at issue in the claims.” 

(Id. at 63 (quoting Purdue-Pharma, L.P. v. Fading, Inc., 230 F.3d 1320, 1323 (Fed. Cir. 2000).) 

Staff reasons that, where a claim is amended or added during prosecution, the claim so amended 

or added must also find support in the original application. (Id. (citing Gentry Gallery, Inc. v. 

Berkline Corp., 134 F.3d 1473, 1479 (Fed. Cir. 1998)) 

Staff takes the view that the key issue to be resolved is whether Figures 28 and 29 

disclose the configuration recited in claim 10. (SIB at 63.) Staff argues that Figures 28 and 29 

have nothing to do with the various configurations of the transducer. (Id.) Rather, they assert, 

these figures relate to a preferred embodiment where the claimed invention includes a retaining 

ring 84. (Id. (citing CX-2 at 7:29-30).) Staff avers that the purpose of the retaining ring is to 

“prevent[] wicking of an epoxy 86 into the transducer 58 and from flowing into the acoustic port 

86 or aperture 54.” (Id. (quoting CX-2 at 7:3 1-33).) Staff says Figure 28 shows the retaining 

ring placed in such a manner to avoid contact with the transducer. (Id. at 63-64 (citing CX-2 at 

7:7:45-48).) Staff states that in contrast, Figure 29 places the retaining ring in contact with the 

transducer. (Id. (citing CX-2 at 7:50-5 l).) Staff asserts that the figures themselves show that 

Knowles’ position is contrary to the explicit disclosure in the ‘089 patent. (Id.) 

Staff states that, if the aperture were on the same member as the transducer, as Knowles 

argues, the retaining ring would not prevent the flow of the epoxy into the aperture. (SIB at 64.) 

In fact, Staff argues, the epoxy would flow directly into the aperture, which is in direct 

contravention of the teachings of the ‘089 patent. (Id.) 

Staff says that nothing in the description discussing these two figures expressly (or even 

implicitly) discloses that the aperture is located on the same member as the transducer. (SIB at 

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64.) Staff says that Knowles has based its argument on ambiguous figures. (Id.) 

Finally, referring to an alleged continuation-in-part (“CIP”) directed to an invention 

where the aperture is uncovered and located on the same member as the transducer, Staff asserts 

that claim 1 of said CIP recites “the transducer unit attached to the surface of the substrate 

adjacent the aperture.” (SIB at 64 (citing MemsTech’s Pre-Hearing Statement at 136).)21 Staff 

argues that Knowles cannot seek to obtain patent protection for the same invention twice. (Id.) 

Staff submits that the specification of the ‘089 patent does not adequately describe claim 10, and 

the claim is thus invalid. (Id.) 

Discussion and Conclusion: Based upon the evidence before me, I must conclude that 

the ‘089 patent does not contain the written description of claim 10 that is required by 35 U.S.C. 

fj 1 12, T[ 1. A detailed review of exhibit CX-2 did not produce any language that teaches an 

“aperture . . . formed in the respective one of the first member and the second member, the 

surface . . . formed on the respective one of the first member and the second member and the 

transducer . . . attached to the surface leaving the aperture uncovered by the transducer . . .” as 

required by claim 10 of the ‘089 patent. 

The written description discusses and describes Figures 28 and 29 of the ‘089 patent, but 

never mentions the position of the transducer, the aperture or their relationship to one another. 

(CX-2 at 7:29-37,7:45-5 1 .) Likewise, Figures 28 and 29 do not show an aperture or its 

positional relation to the transducer. A person of ordinary skill in the art could not ascertain 

from the figures themselves where the aperture is to be placed and what relationship it would 

have to the transducer?2 

Based upon the foregoing, I find that claim 10 of the ‘089 patent is invalid for failure to 

21 While not clear in Staffs brief, this appears to be a reference to page 136 of the Respondent’s Pre-Hearing Brief. 

This is contrasted to Figure 27, which shows an aperture that is completely covered by the transducer. 

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contain the written description required by 35 U.S.C. 0 112,l 1. 

V. INFRINGEMENT 

A. Applicable Law 

Complainants must prove either literal infringement or infringement under the doctrine of 

equivalents. Infringement must be proven by a preponderance of the evidence. SmithKline 

Diagnostics, Inc. v. Helena Labs. Corp., 859 F.2d 878, 889 (Fed. Cir. 1988). 

Literal infringement is a question of fact. Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 

1323, 1332 (Fed. Cir. 2008). Literal infi-ingement requires the patentee to prove that the accused 

device contains each and every limitation of the asserted claim(s). Frank’s Casing Crew & 

Rental Tools, Inc. v. WeatherfordInt’l, Inc., 389 F.3d 1370, 1378 (Fed. Cir. 2004). 

As for the doctrine of equivalents: 

Infringement under the doctrine of equivalents may be found when the accused 

device contains an “insubstantial” change from the claimed invention. Whether 

equivalency exists may be determined based on the “insubstantial differences” 

test or based on the “triple identity” test, namely, whether the element of the 

accused device “performs substantially the same function in substantially the 

same way to obtain the same result.” The essential inquiry is whether “the 

accused product or process contain elements identical or equivalent to each 

claimed element of the patented invention[.]” 

TIP Sys., LLC v. Phillips & BrookdGladwin, Inc., 529 F.3d 1364, 1376-77 (Fed. Cir. 2008) 

(citations omitted). 

Thus, if an element is missing or not satisfied, infringement cannot be found under the 

doctrine of equivalents as a matter of law. London v. Carson Pirie Scott & Co., 946 F.2d 1534, 

1538-39 (Fed. Cir. 1991). Determining infringement under the doctrine of equivalents “requires 

an intensely factual inquiry.” Vehicular Techs. Corp. v. Titan Wheel Int’l, Inc., 212 F.3d 1377, 

138 1 (Fed. Cir. 2000). 

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B. ‘231 Patent 

1. Claim 1 

Claim 1 recites: 

1. A microelectromechanical system package comprising: 

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 portion; and 

a housing formed by connecting the peripheral edge portion of the cover to the 

substrate, the center portion of the cover spaced from the surface of the substrate 

to accommodate the microelectromechanical system microphone, the housing 

including an acoustic port for allowing an acoustic signal to reach the 

microelectromechanical system microphone wherein the housing provides 

protection from an interference signal. 

Knowles’ Position: Knowles argues that the accused products literally infringe claim 1. 

(CIB at 33.) Knowles claims that the accused products are all microelectromechanical system 

packages. (Id. (citing CX-218; CX-45C; CX-37C).) For the first claim element, Knowles claims 

that “[t] he microphone inside of the accused packages is a silicon condenser microphone, which 

is a particular type of MEMS microphone.” (Id. (citing CX-392C at Q. 33).) For the second 

element, Knowles states that “the accused packages consistently indicate the inclusion of a 

package substrate.” (Id. at 34 (citing CX-217; CX-220; CX-23 1; CX-232; CX-37C).) Knowles 

cites to Dr. Gilleo’s testimony stating that he found that the MEMS microphone in the accused 

products was attached to the package substrate. (Id. (citing CX-392C at Q. 34).) 

For the “cover comprising a conductive layer.. .,, element, Knowles states that 

“MemsTech’s documents showing the structure of the accused packages consistently indicate the 

inclusion of such a cover.” (Id. (citing CX-392C at Q. 35; CX-221C; CX-37C; CX-231).) 

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Knowles claims that the cap on the accused products is made of metal, and is therefore 

conductive. (Id. at 34-35 (citing CX-221C; CX-33C; CX-392C at Q. 36; CX-3OC; CX-32C).) 

Knowles states that “[tlhe drawings found at CX-37-C (MEMS054915-38 clearly show a ‘cap’ 

with a center portion bounded by a peripheral edge portion[.]” (Id.) 

The fourth element includes multiple requirements, and Knowles asserts that the accused 

products contain all of those requirements. Knowles claims that the accused products include a 

housing formed by the connection of the peripheral edge portion of the cover to the substrate, 

such that the housing provides room for the MEMS microphone. (Id. at 35 (citing CX-23 1 ; CX37C; CX-224; CX-392C at Q. 36)) 

The next part of the element requires an acoustic port in the housing to allow an acoustic 

signal to reach the MEMS microphone. Knowles states that “[d]ocuments referencing the 

accused packages consistently show the presence of an acoustic port that would allow the 

acoustic signal to reach the MEMS microphone.” (Id. at 36 (citing CX-219; CX-232; CX-221; 

CX-224; CX-37C).) Knowles also relies on testimony from its expert and MemsTech’s 

corporate representative that demonstrates that the accused products include the claimed acoustic 

port. (Id. (citing CX-29C; CX-392C at Q. 37).) 

The last requirement of the “housing” element states that “the housing provides 

protection from an interference signal.” Knowles claims that the metallic cover in the accused 

products “provides shielding from electromagnetic interference (EMI).” (Id. at 36-37 (citing 

CX-231; CX-392C at Q. 38; CX-224).) Knowles further cites to testimony from MemsTech 

employees for support. (Id. at 37 (citing CX-3OC; Tr. at 253:8-16,255:25-256:8; CX-44C; CX28C; CX-33C).) 

MemsTech’s Position: MemsTech argues that its products do not infringe claim 1. 

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MemsTech argues that under a proper construction of “layer,” the “integral, one-piece all-metal 

cover” of the accused products does not meet this claim limitation. (RIB at 22.) MemsTech 

claims that its monolithic cover cannot meet the “layer” limitation because claim 1 requires 

multiple layers. (Id. at 22-23.) 

MemsTech claims that even under Knowles’ proposed construction of “layer,” there is 

insufficient evidence to find infringement. (Id at 23; RRE3 at 20.) Dr. Gilleo stated that the 

accused products have a “cover,” “cap,” “microphone cap,” and “metal cap,” but he allegedly 

never stated that the MemsTech cover is a “layer” as required by the claim. (RIB at 23 (citing 

CX-392C at Qs. 35,65).) MemsTech argues that this demonstrates that Knowles has failed to 

present enough evidence to find that the accused products include a “layer” as found in claim 1. 

(Id.; RRB at 20.) 

Commission Investigative Staffs Position: Staff argues that under its proposed 

constructions, the accused MemsTech products literally infringe claim 1. Staff claims that the 

evidence shows that the accused products each contain a microphone mounted on the surface of 

a substrate. (SIB at 29 (citing CX-392C; CX-217; CX-231; CX-37C).) Staff claims that the 

evidence shows that the accused products contained the claimed cover. (Id. (citing CX-221; CX37C; CX-392C; Tr. at 252:3-7).) Staff asserts that the accused products include the claimed 

housing which provides protection from an interference signal and the claimed acoustic port in 

the housing. (Id at 29-30 (citing CX-392C; CX-37C; CX-224; CX-232; CX-221; CX-224; Tr. at 

25 7 13- 1 5).) 

Discussion and Conclusion: Based upon the evidence before me, I find that the accused 

products literally infkinge claim 1 of the ‘23 1 patent. 

The only claim element that MemsTech contends is missing from its accused products is 

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“a cover comprising a conductive layer having a center portion bounded by a peripheral edge 

portion.” MemsTech’s non-infringement argument is primarily based on its proposed 

construction of “layer,” which would read out the monolithic metal cap found in the accused 

products. As discussed supra, I have rejected that proposed construction and adopted a broader 

construction: “a single thickness of material.” 

Applying this claim construction, I find that the accused MemsTech products include “a 

cover comprising a conductive layer having a center portion bounded by a peripheral edge 

portion.” Each of the accused products includes a cap attached to the substrate with a center 

portion bound by a peripheral edge portion. (See CX-37C; CX-221.) Each cap is made out of 

cold rolled steel. (Tr. at 252:3-7.) It is not disputed by MemsTech that cold rolled steel is a 

conductive material. (See Tr. at 254:16-257:15.) This is consistent with Dr. Gilleo’s opinion 

that the accused products include “a cover comprising a conductive layer having a center portion 

bounded by a peripheral edge portion.” (CX-392C at Q. 35.) Thus, the metal cap in the 

MemsTech products constitutes the “cover comprising a conductive layer.. .” 

MemsTech also argues that Knowles failed to put forward sufficient evidence to prove 

the cover limitation. I find otherwise. Knowles put forward expert testimony from Dr. Gilleo in 

which he opined that the accused products meet the “cover comprising a conductive layer.. .” 

limitation. (CX-392C at Q. 35.) Knowles offered exhibits depicting the cover in the MemsTech 

products. (See, e.g., CX-221; CX-37C.) Knowles cross-examined Mr. Sooriakumar, who 

testified that the covers in the accused products are made from cold rolled steel, which is a 

conductive material. (See Tr. at 252-257.) MemsTech is incorrect in its assertion that there is no 

evidence to support a finding that the accused products meet the “cover comprising a conductive 

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layer.. . ” limitation. (M )23 

I find that Knowles put forward sufficient evidence to prove that the accused products 

meet the limitations of the remaining elements of claim 1. The accused products are 

microelectromechanical system packages. (CX-392C at Q. 32; CX-218; CX-45C; CX-37C.) 

The accused products include a microelectromechanical system microphone. (CX-392C at Q. 

33; CX-218; CX-45C; CX-37C.) The accused products contain a substrate comprising a surface 

for supporting the microelectromechanical microphone. (CX-392C at Q. 34; CX-217; CX-220; 

CX-23 1 ; CX-232; CX-37C.) The accused products include the housing formed by connecting 

the peripheral edge portion of the cover to the substrate, the center portion of the cover spaced 

from the surface of the substrate to accommodate the microelectromechanical system 

microphone. (CX-392C at Q. 36; CX-23 1; CX-37C; CX-224.) The accused products include an 

acoustic port in the housing. (CX-392C at Q. 37; CX-219; CX-232; CX-221; CX-224; CX-37C.) 

The housing in the accused products provides protection from an interference signal. (CX-392C 

at Q. 38; CX-231; CX-224.) 

Based upon the foregoing, I find that the accused products literally infringe claim 1 of the 

‘231 patent. 

2. Claim 2 

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 coupled to the 

23 While MemsTech disputes that the nickel plating on the caps constitutes the “conductive layer,” I find it 

unnecessary to decide that issue, as I have already found that the cold rolled steel cap constitutes the conductive 

layer. 

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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. 

Knowles’ Position: Knowles argues that the accused MemsTech products literally 

infringe claim 2. Knowles claims that the accused products are all microelectromechanical 

system packages. (CIB at 37.) The first element of claim 2 requires “a silicon-based 

microphone.” Knowles states that it is “clear that the microphone inside of the accused packages 

is a silicon condenser microphone.” (Id. (citing CX-218; CX-45C; CX-227; SF 202).) 

The second element requires a substrate at least partially covered by a layer of conductive 

material, and the microphone electrically coupled to the layer. Knowles claims that the 

MemsTech products have “a package substrate with a conductive circuit pattern[.]” (Id. at 37-38 

(citing CX-392C; CX-1 at 5:30-33; CX-369C; CX-227C; CX-3OC; CX-73C; CX-74C; CX-75C; 

CX-122C; CX-217C; CX-358C; CX-361C; CX-363C; CX-45OC; CX-454C; CX-456C; CX458C; CX-463C; CX-228; CX-229).) Knowles also points to the testimony of a MemsTech 

engineer to support its assertion that the substrate in the accused products is partially covered 

with conductive material. (Id. at 38 (citing CX-124C; CX-33C).) 

Knowles asserts that the MEMS microphone in the MemsTech products is electrically 

coupled to the substrate either through a direct c0nnection,2~ or through an indirect connection 

via an amplifier. (Id. at 38-39 (citing CX-392C; Tr. at 262:3-263:24,548,550; CX-122C; RX1 S).) Knowles cites the testimony of a MemsTech engineer, who testified that power is drawn 

from the substrate, through the preamplifier, to the microphone. (Id. at 39 (citing CX-122C; CX33C).) Knowles claims that the electrical connection of the microphone and the substrate 

24 MemsTech disputes that any accused products include a microphone with a direct electrical connection to the 

substrate. (RRE3 at 22-23 .) 

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through the amplifier constitutes an electrical coupling as required by the claim. (Id. at 38-39.) 

Knowles argues that even if MemsTech’s construction of “electrically coupled” is adopted, there 

is still infringement under the doctrine of equivalents because the indirect wiring scheme of the 

MemsTech products is insubstantially different than a direct connection between the substrate 

and the microphone. (Id. at 39 (citing CX-32C).) 

The third element requires 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 must provide an 

acoustic front volume for the microphone. Knowles argues that the metallic cover of the accused 

products contains a layer of conductive material and is electrically connected to the conductive 

layer on the substrate. (Id. at 39-40 (citing CX-392C).) Knowles argues that the connection of 

the cover and substrate form a chamber where the microphone resides. (Id. (citing CX-392C).) 

Knowles states that “[l]ogically, the ‘acoustic front volume’ is within the chamber irrespective of 

the orientation of the MEMS dies.. .and whether or not the aperture is located in the cover or in 

the package substrate.” (Id. at 40.) Knowles states, in sum, that “[ilf Knowles’ claim 

constructions are accepted, then all of MemsTech’ s products undoubtedly infringes [sic]. If 

MemsTech’s constructions are used, MemsTech still infringes Minervini ‘23 1 Claim 2 but under 

the doctrine of equivalents.” (CRB at 17.) 

MemsTech’s Position: MemsTech argues that its accused products do not infringe claim 

2. MemsTech states that its accused products do not meet the “cover comprising a second layer 

of a conductive material” for the same reasons as argued, supra. (RIB at 23 (citing RX-368C; 

cx-3 92c).) 

MemsTech also argues that its accused products do not meet the limitation requiring that 

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the “microphone is electrically coupled to the layer of a conductive material.” (Id. at 24 (citing 

CX-l).) MemsTech claims that in the accuied products, the microphone is wired only to the 

preamplifier, and not to a conductive layer on the substrate as required by claim 2. (Id. (citing 

RX-368C).) Thus, according to MemsTech, the accused products “include no electrical 

connection from the transducer to a conductive layer on the substrate.” (Id. (citing RX-368C).) 

Because the microphone is only wired to the preamplifier, MemsTech argues that it cannot meet 

the “electrically coupled” claim limitation. (Id) MemsTech argues that Dr. Gilleo’s 

infringement analysis should be disregarded because it is based on an incorrect construction of 

“electrically coupled.” (Id. (citing CX-392C; RX-368C).) 

MemsTech argues that Knowles waived its doctrine of equivalents argument by not 

raising it earlier in the investigation. (RRE! at 23-25.) Even assuming that Knowles’ doctrine of 

equivalents argument is considered, MemsTech claims that Knowles presented insufficient 

evidence to find infringement under the doctrine of equivalents. (Id. at 25-26.) 

Commission Investigative Staff’s Position: Staff argues that the accused products 

literally infringe claim 2. According to Staff, the accused products include the “silicon-based 

microphone” of claim 2. (SIB at 30 (citing CX-392C; CX-218C; CX-45C).) 

As for the second element, Staff states that “[tlhe evidence showed that the accused 

products contain a silicon microphone and other components electrically coupled to the 

conductive layer of the substrate.. .In particular, the microphone is electrically coupled to the 

substrate through the amplifier.” (Id. at 31 (citing CX-392C; CX-363; Tr. at 263:19-24).) Staff 

further asserts that the accused products include the final “cover” element of claim 2. (Id. (citing 

cx-3 92c).) 

Staff agrees with MemsTech that Knowles’ doctrine of equivalents argument has been 

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waived because Knowles never mentioned the doctrine of equivalents in its complaint, 

interrogatory responses, expert reports, and witness statements. (SRB at 9-1 0 (citing RX-l26C).) 

Staff fiu-ther argues that the “scant evidence” submitted by Knowles does not meet the threshold 

for proving infringement under the doctrine of equivalents. (Id. at 10-1 1 .) 

Discussion and Conclusion: Based on the evidence before me, I find that the accused 

products literally infringe claim 2 of the ‘23 1 patent. 

MemsTech offers two non-infringement arguments. The first argument relates to the 

claim limitation requiring “a cover comprising a second layer of a conductive material.. .” 

MemsTech argues that its monolithic metal cap cannot meet this limitation. This argument is 

based on MemsTech’s proposed construction of “layer,” which would read out the monolithic 

metal cap found in the accused products. As discussed supra, I have rejected that proposed 

construction and adopted a broader construction: “a single thickness of material.” 

Applying this claim construction, I find that the accused MemsTech products include “a 

cover comprising a second layer of a conductive material.” Each of the accused products 

includes a cap. (See CX-37C; CX-221.) Each cap is made out of cold rolled steel. (Tr. at 252:3- 

7.) It is not disputed by MemsTech that cold rolled steel is a conductive material. (See Tr. at 

254:16-257:15.) This is consistent with Dr. Gilleo’s opinion. (CX-392C at Qs. 35,56.) Thus, 

the metal cap in the MemsTech products constitutes the “cover comprising a second layer of a 

conductive material . . .” While the claim requires “a cover comprising a second layer of 

conductive material.. .” this does not require a multi-layer cover, as the first layer of conductive 

material is found on the surface of the substrate. (See CX-1 at claim 2.) 

MemsTech’s second non-infringement argument centers on the “electrically coupled” 

limitation. I have construed this term to mean “arranged so that electrical signals may be passed 

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either directly, or indirectly via intervening circuitry, from one component to another.” 

Therefore, MemsTech cannot avoid infringement based on the fact that there is an indirect 

electrical connection between the microphone and substrate. 

I find that the evidence shows that the accused products include a microphone electrically 

coupled to the layer of conductive material on the substrate. The microphone is wired to a 

preamplifier, and the preamplifier is electrically connected to the substrate. This allows 

electrical signals to flow from the substrate to the microphone. This finding is supported by 

MemsTech schematics and Dr. Gilleo’s expert testimony. (See CX-392C at Q. 55; CX-122C; 

CX-363; RX-101 C.) Mr. Sooriakumar’s direct testimony also describes the connection between 

the microphone, amplifier, and substrate and supports my finding. (RX-18 at Qs. 150-170; RX10; RX-11; RX-12.) This was confirmed during the cross examination of Mr. Sooriakumar, as 

he testified that power goes from the substrate to the transducer via the preamplifier. (Tr. at 

262:13-263:24.) This is further confirmed by Mr. Mallon’s testimony: 

Question No. 4 

microphones that are the subject of this investigation. 

Please describe for us the structure of MemsTech’s silicon 

A. 

MEMS microphone transducer die and an ASIC amplifier die. The microphone 

die is electrically connected by wire bonding directly to the ASIC. The ASIC is 

bonded to a conductor layer on the substrate. A housing is formed by a cover that 

is bonded to the substrate. The cover has a port or aperture the purpose of which 

is to admit sound. Some devices have alternate constructions that have a rear 

aperture. 

These devices have a printed circuit board substrate on which is mounted a 

(RX-368C at Q. 4; see also Tr. at 546:s-548:24.) 

As to the other elements of claim 2, I find that Knowles put forward sufficient evidence 

to prove that the accused products meet the limitations. The accused products are 

microelectromechanical system packages. (CX-392C at Qs. 32,53; CX-218; CX-4%; CX37C.) The accused products include a silicon-based microphone. (CX-392C at Q. 54; CX-218; 

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CX-45C; CX-227.) The accused products contain a substrate including a surface at least 

partially covered by a first layer of a conductive material. (CX-392C at Q. 55; CX-228; CX363 .) The accused products include the 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. (CX-392C at Qs. 35, 56; CX22 1 ;CX-37C; CX-23 1 .) The chamber of the accused products provides an acoustic front volume 

for the silicon-based microphone. (Id.) 

Based upon the foregoing, I find that the accused products literally infringe claim 2 of the 

'23 1 patent.25 

C. '089 Patent 

1. Claim 1 

Claim 1 recites: 

A surface mountable package for containing a transducer, the transducer 

being responsive to sound pressure levels of an acoustic signal to provide 

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 patterned conductive layer, the 

patterned conductive layer being electrically coupled to the transducer; an 

outside surface of the surface mountable package comprising a plurality of 

terminal pads electrically coupled to the patterned conductive layer; 

a volume being defined by the transducer and one of the first member or 

the second member, the volume being acoustically coupled to the 

transducer; and 

25 As I have found literal infringement of claim 2, it is unnecessary to address the issue of doctrine of equivalents. 

Furthermore, I concur with MemsTech and Staff that Knowles waived any doctrine of equivalents argument by 

raising it in an untimely manner. 

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one of the first member or the second member being formed to include an 

aperture, the aperture configured to permit the passage of an acoustic 

signal to the transducer. 

Knowles’ Position: Knowles recites that claim 1 of the ‘089 patent comprises five 

elements along with a preamble. The preamble states “[a] surface mountable package for 

containing a transducer, the transducer being responsive to sound pressure levels of an acoustic 

signal to provide an electrical output representative of the acoustic signals, the surface mountable 

package comprising:” Knowles asserts that MemsTech’s documents referencing the accused 

packages consistently indicate that the accused packages use surface mount technologies. (CIB 

at 42.) They say the document found at CX-230 (MEMS136624-47, particularly MEMS136626) 

indicates that the accused packages can be assembled using surface mount technologies and the 

datasheet found at CX-46C (MEMS030168-77) indicates that the accused packages are “surface 

mountable.” (Id.) Knowles alleges that MemsTech’s documents and witnesses also consistently 

indicate that the accused packages include a transducer for converting acoustic signals to an 

electrical output that is representative of the acoustic signals. (Id) Knowles cites as an example, 

the document found at CX-23 1 (MEMS061068-92, particularly MEMS061075) stating that it . 

indicates that the microphone in the accused packages includes a microphone die which 

“converts the mechanical/acoustical energy caused by the vibration of the diaphragm into 

electrical signals,” (in other words, a “transducer”) and various drawings such as those found in 

CX-37-C (MEMS054915-38) show the transducer residing within the package. (Id.) 

Knowles recites that the first element of claim 1 requires “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.” Knowles asserts that documents referencing 

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the accused packages show a chamber defined by the package substrate and the metal cap (which 

correspond to the first and second members). (CIB at 43.) Knowles points to drawings found at 

CX-37C (MEMS054915-38) to show a chamber formed by mating the package substrate and 

cap, and Knowles says the assembly process described in the document found at CX-23 1 

(MEMS061068-92, e.g. MEMS061070) indicates that the cap is attached to the package 

substrate to form the chamber, and the document found at CX-224 (MEMS15413 1-35, e.g. 

MEMS154133) shows a chamber enclosing a MEMS microphone. (Id.) Knowles asserts that 

MemsTech’s documents and witnesses’ testimony also show the transducer mounted to the 

package substrate, which is either the first or second member. (Id.) For example, Knowles says, 

the assembly process described in the document found at CX-23 1 (MEMS061068-92, e.g. 

MEMS061070) indicates that the transducer is attached, or bonded to the package substrate 

surface. (Id.) Knowles continues that Dr. Gilleo also physically examined the interior of one of 

the accused packages and observed that the transducer resides on top of the package substrate. 

(Id. (citing CX-392C; CX-2 at 1 1 :20-23; CX-230; CX-46C; CX-29C at 200: 16-201 : 10; CX-49C; 

CX-37C; CX-227C; CX-73C; CX-74C; CX-75C; CX-122C; CX-217C; CX-358C; CX-361C; 

CX-363C; CX-45OC; CX-454C; CX-456C; CX-458C; CX-463C).) 

Knowles recites that the second element of claim 1 requires “the surface being formed 

with at least one patterned conductive layer, the patterned conductive layer being electrically 

coupled to the transducer.” Knowles asserts that MemsTech’s documents and witnesses 

consistently establish that the transducer is electrically coupled to the patterned conductive layer 

of the package substrate. (CIB at 43-44.) Knowles provides as an example, the assembly 

process described in the document found at CX-23 1 (MEMS061068-92, especially at 

MEMS061070) stating that it “indicates that the transducer is electrically connected to the 

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package substrate surface using wire bonding.” (Id (citing CX-392C; CX-2 at 1 1 :25-30; CX37c; cx-49c; cx-224C; cx-227c; cx73c; cx-74c; cx-75c; cx-122c; cx-2 17c; cx358C; CX-361C; CX-363C; CX-45OC; CX-454C; CX-456C; CX-458C; CX-463C).) Knowles 

avers that Mr. Kumaraswamy, project engineer for MemsTech, testified that in MemsTech’s 

products, power is drawn from the substrate, through the preamplifier, to the microphone. (Id. 

(citing CX-122C at MEMS003927 and 52:l-53:lO; CX-33C at 42:12-45:12).) Knowles also 

says MemsTech explicitly confirms this pathway constitutes an electrical connection in CX-94C, 

“showing that the substrate bond pads are electrically connected to the microphone.” (Id. (citing 

CX-94C at MEMS005089).) 

Knowles argues that even if MemsTech’s claim interpretation of a “direct” connection 

was accepted, the MemsTech design would still infringe under the doctrine of equivalents. (CIB 

at 44.) Knowles asserts that Mr. Sooriakumar confirmed “the difference between MemsTech’s 

design in which the microphone is directly connected to the substrate and the design in which the 

electrical pathway is formed out of the CMOS sensor is insubstantial.” (Id) Knowles states that 

Mr. Sooriakumar testified that design could just as easily incorporate the alternative wiring 

scheme as a substitute. (Id (citing CX-32C at 50: 10-5 1 :9).) 

Knowles recites that the third element of claim 1 requires “an outside surface of the 

surface mountable package comprising a plurality of terminal pads electrically coupled to the 

patterned conductive layer.” Knowles asserts that documents referencing the accused packages 

show the bottom of the accused packages having terminal pads connected to the patterned 

connective layer. (CIB at 44-45.) As an example, Knowles points to the drawings found at CX2 19 (MEMS005088-91, e.g. MEMS005089) stating that “they show that the accused packages 

have terminal pads, and the figure legend indicates ‘Electrical contact to microphone,’ the 

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drawings in a product line presentation found at CX-45-C (MEMSOOS 107-23, e.g. 

MEMSOO5 1 10) show the presence of terminal pads on the bottom of the accused packages, 

drawings in product data sheets such as that found at CX-46-C (MEMS030168-77, e.g. 

MEMS030171) show the terminal pads and their connection assignments.” (Id. (citing CX392C; CX-2 at 11:31-33; CX-49C; CX-30C at 276:15-22; CX-227C; CX-73C; CX-74C; CX75C; CX-122C; CX-217C; CX-358C; CX-361C; CX-363C; CX-45OC; CX-454C; CX-456C; 

CX-458C; CX-463C).) Knowles says that MemsTech has admitted that the accused packages 

are surface mountable through the terminal pads on the bottoms of the packages. (Id. (citing CX29C at 200:16-201:3).) 

Knowles recites the fourth element of claim 1 requires “a volume being defined by the 

transducer and one of the first member or the second member, the volume being acoustically 

coupled to the transducer.” Knowles asserts that MemsTech’s documents showing construction 

of the accused packages show a volume positioned between the transducer and either the first or 

second member. (CIB at 45.) Knowles cites as an example, the drawings found at CX-37C 

(MEMSO54915-38) which, they say, “show volumes defined by the package cap (which is either 

the first or second member) and the transducer, as do the conceptual drawings found at CX-232 

(MEMS055 164-72).” (Id. (citing CX-392C; CX-2 at 11 :33-37; CX-219C; CX-45C; CX-46C; 

CX-30C at 4265-427: 17; CX-227C; CX-73C; CX-74C; CX-75C; CX-122C; CX-217C; CX358C; CX-361C; CX-363C; CX-45OC; CX-454C; CX-456C; CX-458C; CX-463C).) 

Knowles recites that the fifth element of claim 1 requires “one of the first member or the 

second member being formed to include an aperture, the aperture configured to permit the 

passage of an acoustic signal to the transducer.” Knowles asserts that MemsTech’s documents 

showing construction of the accused packages show an aperture through which the acoustic 

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signal will pass on its way to the transducer. (CIB at 45.) Knowles provides as an example, the 

drawings found at CX-37C (MEMS054915-38) which they say show “apertures formed in the 

package substrate andor the cap (that is, the first and/or second member of the package), as do 

the conceptual drawings found at CX-232 (MEMS055 164-72).” (Id. (citing CX-392C; CX-2 at 

11:38-40; CX-37C; CX-232C; CX-219C; CX-45C; CX-46C; CX-30C at 426:5-427:17; CX227C; CX-73C; CX-74C; CX-75C; CX-122C; CX-217C; CX-358C; CX-361C; CX-363C; CX450C; CX-454C; CX-456C; CX-458C; CX-463C).) Knowles alleges that MemsTech’s 

corporate representative, Mr. Sooriakumar, testified that “the acoustic signal can pass to the 

microphone from a hole in the cap or a hole in the package substrate.” (Id. (citing CX-29C at 

157: 15-1 5816, 159: 13-160: 17).) 

In their reply brief, Knowles asserts that MemsTech and Staff erroneously imply that all 

of the accused products contain a glass pedestal. (CRB at 3-4.) Knowles asserts that Mr. 

Sooriakumar testified that only some products include a pedestal. (Id. (citing CX-32C at 158:21- 

23).) Additionally, they state, the glass pedestal is not shown in any of the Build Sheets, and is 

not in any of the MemsTech product samples. (Id.) Knowles alleges, that, to the extent there is a 

glass pedestal, it is part of the microphone die (i.e. the “transducer”). (Id) Knowles asserts that 

this is expressly shown in a diagram (CX-36C at MEMS 055166 below) labeled by MemsTech’s 

Engineering Manager, Mr. Kumaraswamy, where he included the glass component in and part 

of, and not below, the circled Microphone Die. (Id. (citing CX-33C at 64:13-65:25; CX-464C at 

MEMS 055 166; CX-36C; CX-l23C).) Knowles avers that Mr. Sooriakumar similarly testified 

that the glass pedestal is part of the “transducer.” (Id. (citing Tr. at 224: 18-225: l).) 

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lllsMl .HSWMS M3.MSM4- Std Moddk 

Exhibit CX-464C at MEMS 055166 

Knowles argues that, because it is the entire “transducer” that is addressed in the ‘089 

patent’s claims, without reference to all materials of the transducer, or whether it is made of all 

silicon or partly of silicon and partly of glass, the existence of a glass component is irrelevant. 

(CRB at 4.) Knowles states that in either configuration, whether the transducer is all silicon or 

part silicon and part glass, it is the transducer (made of any material) that is positioned on the 

substrate, and it is the transducer (made of any material) that defines, in part, a volume such as 

shown and labeled in the drawing above. (Id) 

Knowles alleges that in both “Reverse Mount” configurations, the acoustic port is in the 

substrate; but in the MSM3C-RM5 and MSM2C-RM units, the transducer is located to the side 

of the acoustic port, and in the MSM3-RM unit the transducer is located over the acoustic port. 

(CRB at 4-5 (citing CX-458C; CX-45OC; CX-73C).) 

Knowles adds that, contrary to MemsTech’s Post-Hearing Brief, at p. 2, the MemsTech 

accused products do not use an “integral, one-piece” all-metal cover. Knowles asserts that the 

covers used by MemsTech contain a cold-rolled steel layer in the middle with a layer of nickel 

plating formed on either side of the cold-rolled steel center. (CRB at 5 (citing CX-30C at 274:l190 
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275:lO; CX-75C; CX-33C at 66:21-695, 103:s-11; CX-122C; CX-126C; CX-32C at 67% 

68 : 20).) 

MemsTech’s Position: MemsTech argues that its accused products do not infiinge claim 

1 of the ‘089 patent for two reasons: (1) they do not include a “volume being defined by the 

transducer and one of the first member or the second member;” and (2) they do not include a 

transducer “electrically coupled” to a patterned conductive layer on the surface on which the 

transducer is attached. (RIB at 25,27.) 

MemsTech alleges that none of their accused products include a recess or hole in the 

substrate underneath the transducer to create a back volume, and therefore, none of their products 

include a “volume being defined by the transducer and one of the first member or the second 

member” as required by claim .1 of the ‘089 patent. (RIB at 25.) MemsTech asserts that in their 

products, the transducer is mounted on a glass pedestal which is attached directly to the substrate 

and there is no recess in the substrate under the place where the transducer is mounted. (Id. 

(citing RX-368C).) 

MemsTech asserts that Knowles failed to offer any proof that the MemsTech products 

infringe the “volume” limitation of claim 1 of the ‘089 patent. (RIB at 25.) MemsTech says that 

Dr. Gilleo never compared the actual structure of the MemsTech products with the claim. 

MemsTech argues that Dr. Gilleo “completely ignored that alZ of the MemsTech products have a 

transducer mounted on a glass pedestal in order to create a back volume.” (Id.) The reason 

Gilleo ignored this, they say, is that “using a glass pedestal to create a back volume is completely 

different than etching out a recess in the substrate to create a back volume, as required by claim 1 

of the ‘089 patent.” (Id.) 

MemsTech states that at the evidentiary hearing, Dr. Gilleo testified that he examined six 

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MemsTech devices under a microscope (Tr. at 663: 13-1 6) and reviewed microphone run sheets 

(Tr. at 669: 10-1 3), but did not recall seeing a glass pedestal in anything he reviewed. (RIB at 26 

(citing Tr. at 676:22-677:22,679:12-17).) MemsTech alleges that Dr. Gilleo admitted that the 

microphone run sheets (RX-386C and RX-387C) demonstrate that the MemsTech products 

include a glass pedestal. (Id. (citing Tr. at 676:9-12).) MemsTech asserts that Dr. Gilleo 

testified he also considered the June 12,2008 Sooriakumar deposition transcript (CX-29C) in 

rendering his infringement analysis. (Id.) MemsTech alleges that in that deposition, 

Sooriakumar testified that the glass pedestal was added to provide the back volume. (Id.) 

MemsTech posits that Gilleo admitted that this demonstrated that the microphone is mounted on 

a glass pedestal. (Id. (citing Tr. at 680:24-3).) 

MemsTech states that Dr. Gilleo also testified that the Kumaraswamy deposition 

transcript indicated that the microphone in the MemsTech products is mounted on a glass 

pedestal; and that documents, including RX-3 89C, show that MemsTech’s microphone is 

mounted on a glass pedestal. (Id. (citing Tr. at 684:2-687:9).) In fact, they say, the same 

drawing relied upon by Knowles’ counsel in his opening statement at the evidentiary hearing to 

demonstrate the structure of the accused MemsTech products “shows definitively that the back 

volume is created by mounting the microphone on a glass pedestal, and not by creating a recess 

in the substrate as described in the ‘089 patent.” (Id. (citing Tr. at 685:9-12).) 

MemsTech also asserts that the “chamber chip” configuration in the MemsTech products 

includes the combination of a glass pedestal and a chamber chip in order to create a back 

volume. (RIB at 26-27 (citing RX-17C; RX-388C).) MemsTech says that Dr. Gilleo “admitted 

that this configuration also does not involve the removal of material from the substrate in order 

to create a back volume.” (Id. (citing Tr. 688:4-22).) MemsTech argues that “despite the 

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overwhelming evidence available to Gilleo that, in all of the MemsTech products, the 

microphone is mounted on a glass pedestal in order to create a back volume he testified that his 

infringement opinion did not address the glass pedestal.” (Id. at 27 (citing Tr. at 687:7-9).) 

MemsTech argues that claim 1 of the ‘089 patent requires a volume created by etching 

out a recess in the substrate underneath the microphone. (RIB at 27.) MemsTech says they 

mount their microphone on a glass pedestal in order to create a back volume, and do not etch out 

a recess in the substrate. (Id.) Accordingly, they argue that, “because none of MemsTech’s 

products include a ‘volume being defined by the transducer and one of the first member or the 

second member’ as recited in claim 1 of the ‘089 patent, MemsTech’s products cannot infringe 

claim 1 of the ‘089 patent.” (Id. (citing Struttec Sec. Corp., 126 F.3d at 1418).) 

MemsTech argues that in their products the microphone is not electrically coupled to a 

layer of a conductive material on the substrate. (RIB at 27-28.) Instead, they say, the transducer 

is “wired only to the preamplifier.” (Id.) MemsTech asserts there is no electrical connection 

fiom the microphone to a patterned conductive layer on the substrate as required by claim 1 of 

the ‘089 patent. (Id.) MemsTech argues the limitation “patterned conductive layer being 

electrically coupled to the transducer” cannot be met by “a microphone (transducer) that is wired 

only to the preamplifier, and which is not electrically coupled to a patterned conductive layer on 

the substrate.” (Id. (citing RX-368C).) 

MemsTech asserts, too, that there is a complete lack of proof fiom Knowles as to how 

MemsTech‘s products can infi-inge the “electrically coupled” limitation of claim 1 of the ‘089 

patent. (RIB at 28.) MemsTech says that Dr. Gilleo only cites to two documents in his analysis 

of this claim limitation, neither of which is representative of an actual MemsTech product. (Id. 

(citing RX-392C).) MemsTech points to CX-229C which is a MemsTech drawing showing an 

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“experimental design that was not used in any actual MemsTech product,” and asserts that Dr. 

Gilleo “was aware that this drawing was not representative of any MemsTech product prior to 

giving his infringement testimony.” (Id. (citing RX-368C).) The other document MemsTech 

says was relied on by Gilleo (CX-49C at MEMS061070) is a flow chart that they assert generally 

describes the assembly process and “does not, in any way, demonstrate that the transducer is 

electrically connected to the substrate” or “that the transducer is wired to the preamplifier, since 

this document merely reflects the steps taken to assemble the devices.” (Id. (citing RX-368C).) 

Commission Investigative Staffs Position: Staff argues that the accused products do 

not include a “volume being defined by the transducer and one of the first member or the second 

member.” Staff defines this limitation to mean “a space that resides at least partly within the 

substrate or the cover and is at least partly bound by the transducer.” (SIB at 56.) Staff asserts 

that the evidence shows that none of the MemsTech products have a hole or space in the 

substrate underneath the transducer to create a back volume, as required by claim 1. (Id. at 56-57 

(citing Rx-18C at p. 48-5 l).) 

Staff states that MemsTech generally makes two types of products: “top mount” and 

“reverse mount” microphone packages. (SIB at 57.) Staff says the “top mount” models have no 

hole or space in the substrate underneath the transducer to create a back volume and thus do not 

meet the “volume” limitation. (Id. (citing Rx-1 8C at pp. 52-53; RX-372).) Staff alleges that, 

while the “reverse mount” packages do have a hole underneath the transducer, this hole is an 

acoustic port and not a “back volume,” as required by the asserted claims. (Id. (citing Rx-18C at 

p. 53).) Accordingly, Staff submits that the evidence has shown that the “volume being defined 

by the transducer and one of the first member or the second member” is not present in the 

accused products. (Id.) 

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Regarding claim 1 of the ‘089 patent, Staff has construed the term “electrically coupled” 

to mean “the microphone is directly connected, such as through wire bond or a flip-chip bond, to 

the substrate.” (SIB at 57.) Staff asserts that the accused products do not have a microphone that 

is wired directly to the layer of conductive material on the substrate. (Id. (citing Rx-18C at pp. 

49-50; RX-368C at p. 29; RX-371; Rx-1 l).) Staff alleges that the microphone is electrically 

connected to the preamplifier, which is in turn, wired to the conductive material on the substrate. 

(Id.) Thus, Staff argues, the microphone is only indirectly connected to the substrate. (Id.) For 

this reason, Staff submits that the accused products do not satisfy the “electrically coupled” 

limitation. (Id.) 

In their reply brief, Staff asserts that Knowles’ reliance on CX-229C is improper. (SRB 

at 26.) Staff avers that CX-229C is a MemsTech drawing showing an experimental design and is 

not the configuration used in any MemsTech product. (Id) Staff asserts that this document is 

not a proper representative drawing of the accused products. (Id) Staff alleges that the 

microphone in the accused products is electrically coupled to the substrate through the 

preamplifier. (Id) 

In their reply brief, Staff addresses Knowles’ argument regarding MemsTech’s accused 

products infringing under the doctrine of equivalents. Staff opposes what it describes as a new 

argument, referring back to its argument on the same subject regarding the ‘23 1 patent. (SRB at 

26.) 

Additionally, Staff submits that Knowles is barred from asserting infringement under the 

doctrine of equivalents based on the doctrine of prosecution history estoppel. In particular, Staff 

asserts, “[p]rosecution history estoppel limits the broad application of the doctrine of equivalents 

by barring . . . equivalents . . . relinquished . . . during prosecution.” (SlU3 at 26-27 (quoting 

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Conoco, Inc. v. Energy & Envtl. Int 7,460 F.3d 1349, 1363 (Fed. Cir. 2006) and citing Festo 

Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722,733-34 (2002)).) Staff argues 

that prosecution history estoppel arises in two ways: (1) by making a narrowing amendment to 

the claim (“amendment-based estoppel”) or (2) surrendering claim scope through argument to 

the patent examiner (“argument-based estoppel”). (Id. at 27 (citing Deering Precision 

Instruments v. Vector Distrib. S’s. , 347 F.3d 13 14, 1324-25 (Fed. Cir. 2003)).) Staff says that 

amendment-based estoppel arises when a patentee makes “a narrowing amendment to satisfy any 

requirement of the Patent Act . . . .” (Id. (quoting Festo, 535 U.S. at 736).) 

Staff argues that Amendment-based estoppel limits the equivalents available to the claim 

elements at issue, unless the “patentee show[s] that at the time of the amendment one skilled in 

the art [would] not reasonably be expected to have drafted a claim that would have literally 

encompassed the alleged equivalent.” (Id. at 27 (quoting Deering, 347 F.3d at 1325).) The 

patentee can prove this by demonstrating one of the following: “( 1) the equivalent may have 

been unforeseeable at the time of the amendment; (2) the rationale underlying the amendment 

may bear no more than a tangential relation to the equivalent in question; or (3) there may be 

some other reason suggesting that the patentee could not reasonably be expected to have 

described the insubstantial substitute in question.” (Id.) If the patentee does not carry one of 

these burdens, amendment-based estoppel bars the elements at issue from encompassing the 

disavowed equivalents. (Id. (citing Festo, 535 U.S. at 741).) 

Staff argues that Argument-based estoppel arises when a patentee differentiates his 

invention from the prior art. (SRB at 27 (citing Deering, 347 F.3d at 1326-27).) A patentee 

invokes argument-based estoppel when the prosecution history “evince[s] a ‘clear and 

unmistakable surrender of subject matter.” (Id. (quoting Pharmacia & Upjohn Co. v. Mylan 

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Pharms., Inc., 170 F.3d 1373, 1376-77 (Fed. Cir. 1999)).) The court applies an objective test to 

determine when subject matter has been “clearly” and “unmistakably” surrendered: would “a 

competitor . . . reasonably believe that the applicant had surrendered the relevant subject matter.” 

(Id. at 28 (quoting AquaTex Indus. v. Techniche Solutions, 419 F.3d 1374, 1382 (Fed. Cir. 

2005)).) If the court determines that the patentee “clearly” and “unmistakably” surrendered 

equivalents, argument-based estoppel bars the elements at issue from encompassing the 

disavowed equivalents. (Id. (citing Deering, 347 F.3d at 1326-27).) 

In this case, Staff avers, Knowles both amended its claims during the prosecution of the 

’089 patent and argued over the Cote reference by characterizing the ‘089 invention as requiring 

the transducer to have a direct electrical connection to the substrate. (SRB at 28.) Knowles has 

not shown that amendment-based or argument-based estoppel does not apply here, which it has 

the burden to do. (Id.) Accordingly, Staff claims that the doctrine of equivalents is simply not 

applicable here. (Id.) 

Discussion and Conclusion: Based upon the evidence before me, I find that the accused 

products infringe claim 1 of the ‘089 patent. 

The evidence demonstrates that the accused products are surface mountable packages as 

required by the preamble to claim 1. The document at CX-230 (MEMS 136626) indicates that 

the accused packages can be assembled using surface mount technologies and the datasheet at 

CX-46C (MEMS030 168-77) indicates that the accused packages are “surface mountable.” The 

accused packages include a transducer for converting acoustic signals to an electrical output that 

is representative of the acoustic signals. CX-23 1 (at MEMS061075) states that the accused 

packages include a microphone die which “converts the mechanical/acoustical energy caused by 

the vibration of the diaphragm into electrical signals” and CX-37C (at MEMS054915-38) shows 

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the transducer residing within the package. Thus, the accused products contain all of the factors 

required to infringe the preamble of claim 1 of the ‘089 patent. 

The documents illustrating the accused packages show a chamber defined by the package 

substrate and the metal cap (which correspond to the first and second members). CX-37C (at 

MEMS054915-38) shows a chamber formed by mating the package substrate and cap, and the 

assembly process described at CX-23 1 (at MEMS061068-92, e.g. MEMS061070) indicates that 

the cap is attached to the package substrate to form the chamber. In addition CX-224 (at 

MEMS154131-35, e.g. MEMS154133) shows a chamber enclosing a MEMS microphone. CX23 1 (at MEMS06 1068-92, e.g. MEMS061070) indicates that the transducer is attached, or 

bonded to the package substrate surface. Dr. Gilleo testified that he physically examined the 

interior of one of the accused packages and observed that the transducer resides on top of the 

package substrate. (CX-392C at Q. 74.) CX-36C (at MEMS 055166-055171) shows the 

transducer to be located within the chamber. Therefore, all of the factors are present to show that 

the accused products infringe the first element of claim 1 of the ‘089 patent. 

The assembly process described in CX-23 1 (at MEMS061068-92, especially at 

MEMS061070) indicates that the transducer is electrically connected to the package substrate 

surface using wire bonding. The surface of the substrate has a patterned conductive layer. (CX392C at Q. 75; CX-29C at 160:4-161: 15.) Mr. Kumaraswamy, project engineer for MemsTech, 

testified that in MemsTech’s products, power is drawn from the substrate, through the 

preamplifier, to the microphone. (CX-122C at MEMS003927 and 52:l-53:lO; CX-33C at 42:12- 

45:12.) Also, CX-94C (at MEMS005089), shows that the substrate bond pads are electrically 

connected to the microphone. While MemsTech and Staff argue that the accused products do not 

infringe this element because the transducer is not “directly” connected to the package substrate, 

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I have previously established that the term “electrically coupled” as used herein does not require 

a direct connection. The term is construed to mean “arranged so that electrical signals may be 

passed either directly, or indirectly via intervening circuitry, from one component to another.” 

That requirement is met in the accused products. 

CX-219 (at MEMS005088-91, e.g. MEMS005089) shows that the accused packages have 

terminal pads, and the figure legend indicates “Electrical contact to microphone.” CX-45C (at 

MEMSOO5 107-23, e.g. MEMSOO5 1 10) shows the presence of terminal pads on the bottom of the 

accused packages, and CX-46C (at MEMS030168-77, e.g. MEMS030171) shows the terminal 

pads and their connection assignments. (CX-392C at Q. 76.) In addition, MemsTech has 

admitted that the accused packages are surface mountable through the terminal pads on the 

bottoms of the packages. (CX-29C at 200: 16-201 :3 .) I find that the evidence shows that the 

accused products infringe the second element of claim 1 of the ‘089 patent.26 

MemsTech’s documents showing construction of the accused packages show a volume 

positioned between the transducer and either the first or second member. For example, CX-37C 

(at MEMS054915-38) and CX-232 (at MEMS055164-72) both show volumes defined by the 

package cap (which is either the first or second member) and the transducer. (CX-392C at Q. 

77.) MemsTech and Staff argue, however, that none of the accused products include a recess or 

hole in the substrate underneath the transducer to create a “back volume,” and therefore, none of 

the accused products include a “volume being defined by the transducer and one of the first 

member or the second member” as required by claim 1 of the ‘089 patent. MemsTech asserts 

that in their products, the transducer is mounted on a glass pedestal which is attached directly to 

the substrate and there is no recess in the substrate under the place where the transducer is 

26 Although Knowles has treated the second element as two elements (i.e. the second and third elements), I will treat 

this as one element, because that is the way it is structured in the actual claim language of the ‘089 patent. 

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mounted. (Rx-368C at Q. 73.) As I have already established, the construction applied to the 

term “volume” in this matter does not require a recess in the substrate. The term is construed as, 

“a space defined by the transducer and one of the first member or the second member.” 

Dr. Gilleo testified that he examined six MemsTech devices under a microscope (Tr. at 

663: 13- 16) and reviewed microphone run sheets (Tr. at 669: 10- 13), but did not recall seeing a 

glass pedestal in anything he reviewed. (Tr. at 676:22-677:22,679:12-17.) The differing 

positions are explained by evidence adduced during Dr. Gilleo’s testimony. When questioned, 

he testified that he examined six actual MemsTech packages (and drawings and build sheets for 

them) and did not see a glass pedestal in any of them. (Tr. at 641 : 16-642:2.) On crossexamination, however, he testified that the glass pedestal to which reference is made was a part 

of the microphone and not part of the package. Hence, it would not be revealed in the package 

drawings or build sheets or be seen on examination of the actual accused product, because it was 

a part of the microphone itself. (Tr. at 673: 10-674:25.) I am persuaded that the accused products 

contain a “volume being defined by the transducer and one of the first member or the second 

member.” In this case, the volume is created by the construction of the transducer mounted on 

the surface of the substrate, as shown in CX-36C (at MEMS 055166-055171) and as 

demonstrated by by MemsTech’s Engineering Manager, Mr. Kumaraswamy, during his 

deposition, where he included the glass component in and part of, and not below, the circled 

microphone die. (CX-33C at 64: 13-65:25; CX-464C; CX-36C; CX-123C.) Mr. Sooriakumar 

similarly testified that the glass pedestal is part of the “transducer.” (Tr. at 224: 18-225: 1 .) The 

fact that the microphone is constructed partially of glass does not add a separate element between 

the transducer and the substrate. In their post-hearing brief, MemsTech admits that the glass 

pedestal in their microphone creates a “back volume” without the need to “etch out a recess in 

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the substrate.” (RIB at 27.) The volume is acoustically coupled to the transducer. (CX-466C at 

21,T 82.) Hence, the accused products infringe the third element of claim 1 of the ‘089 patent. 

MemsTech’s documents depicting the accused packages show an aperture through which 

the acoustic signal will pass on its way to the transducer. For example, CX-37C (at 

MEMS054915-38) and CX-232 (at MEMS055 164-72) illustrate apertures formed in the 

package substrate and/or the cap (that is, the first and/or second member of the package). (CX392C at Q. 78.) MemsTech’s corporate representative, Mr. Sooriakumar, testified that “the 

acoustic signal can pass to the microphone from a hole in the cap or a hole in the package 

substrate.” (CX-29C at 157:15-158:6, 159:13-160:17.) Therefore, the accused products contain 

the structure necessary to infringe the fourth element of claim 1 of the ‘089 patent. 

Based upon the foregoing, I find that the accused products literally infringe claim 1 of the 

‘089 patent.27 

2. Claim2 

Claim 2 recites: 

The surface mountable package of claim 1 , wherein the first member 

comprises a substrate and the second member comprises a cover 

coupled to the substrate to define the chamber. 

Knowles’ Position: Knowles asserts that claim 2 adds the limitation that “the first 

member comprises a substrate and the second member comprises a cover coupled to the substrate 

to define the chamber.” Knowles avers that this claim identifies which member is the package 

substrate and which member is the cover. Knowles alleges that MemsTech products incorporate 

the requirements of Claim 2. (CIB at 46 (citing CDX-2; CX-392C; CX-233C; CX-266; CX- 

*’ As I have found literal inmgement of claim 1, it is unnecessary to address the issue of doctrine of equivalents. 

Furthermore, I concur with MemsTech and Staff that Knowles waived any doctrine of equivalents argument by 

raising it in an untimely manner. 

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235).) Knowles states that numerous documents and instances of MemsTech testimony identify 

the two member elements as “substrate” and “cap,” particularly MemsTech’s engineering 

documents. (Id. (citing CX-124C at MEMS 081439; CX-33C at 53:ll-58:24,66:21-695; CX122C; CX-124C; CX-l26C).) 

MemsTech’s Position: MemsTech makes no substantive argument regarding claim 2 

except to argue that, since it depends from claim 1, MemsTech’s products do not infkinge that 

claim, because they do not infringe claim 1 of the ‘089 patent. (RIB at 28 (citing Whapeton 

Canvas Co. v. Frontier, Inc., 870 F.2d 1546, 1553 (Fed. Cir. 1989)).) 

Commission Investigative Staffs Position: Staff takes the position that, because claim 

2 depends from claim 1, MemsTech’s products do not infringe that claim for the same reasons set 

forth for claim 1 of the ‘089 patent. (SIB at 58 (citing RX-368C).) 

Discussion and Conclusion: The evidence is uncontroverted that the accused 

MemsTech products identifl the two member elements as the “substrate” and the ‘‘cap.’’ (See 

e.g. CX-124C at MEMS 081439; CX-33C at 53:ll-58:24,66:21-695; CX-122C; CX-124C; CX126C) Therefore, I find that the accused MemsTech products literally infiinge claim 2 of the 

‘089 patent. 

3. Claim 9 

Claim 9 recites: 

The surface mountable package of claim 1, the aperture being formed 

in the respective one of the first member and the second member, the 

surface being formed on the respective other one of the first member 

and the second member and the aperture is acoustically coupled by the 

chamber to the transducer. 

Knowles’ Position: Knowles recites that claim 9 adds the limitation that “the aperture 

being formed in the respective one of the first member and the second member, the surface being 

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formed on the respective other one of the first member and the second member and the aperture 

is acoustically coupled by the chamber to the transducer.” Knowles asserts that the aperture is 

located on one member of the package and the surface where the transducer is mounted is on the 

other member of the package. (CIB at 46 (citing CX-392C; CX-2 at 12:7-12; CX-37C; CX227C; CX-73C; CX-74C; CX-75C; CX-122C; CX-217C; CX-361C; CX-454C; CX-456C; CX463C).) Knowles says that this configuration corresponds to MSMlC, MSM2C, and MSM3C, 

as shown for example in the drawings found at CX-37C (MEMS054915-38). (Id.) 

MemsTech’s Position: MemsTech makes no substantive argument regarding claim 9 

except to argue that, since it depends from claim 1, MemsTech’s products do not infringe that 

claim, because they do not infiinge claim 1 of the ‘089 patent. (RIB at 28 (citing Whapeton 

Canvas Co. v. Frontier, Inc., 870 F.2d 1546, 1553 (Fed. Cir. 1989)).) 

Commission Investigative Staff’s Position: Staff takes the position that, because claim 

9 depends from claim 1, MemsTech‘s products do not infringe that claim for the same reasons set 

forth for claim 1 of the ‘089 patent. (SIB at 58 (citing RX-368C).) 

Discussion and Conclusion: The evidence before me (CX-36C at MEMS 055166) 

demonstrates that accused products MSM1, MSM2, MSM3 and MSM4 (standard models) and 

the MSM2X (cap 180 degree rotated) have an aperture that is located on one member of the 

package and the surface where the transducer is mounted is on the other member of the package. 

Therefore, those accused products have an “aperture being formed in the respective one of the 

first member and the second member, the surface being formed on the respective other one of the 

first member and the second member and the aperture is acoustically coupled by the chamber to 

the transducer.’’28 

** In the discussion of claim 1, I have already found that the accused products have the aperture acoustically coupled 

by the chamber to the transducer. 

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Base upon the foregoing, I find that accused products MSM1, MSM2, MSM3 and MSM4 

(standard models) and the MSM2X (cap 180 degree rotated) literally infringe claim 9 of the ‘089 

patent. 

4. Claim 10 

Claim 10 recites: 

The surface mountable package of claim 1, the aperture is formed in 

the respective one of the first member and the second member, the 

surface is formed on the respective one of the first member and the 

second member and the transducer is attached to the surface leaving 

the aperture uncovered by the transducer, wherein the aperture is 

coupled to the transducer via the chamber. 

Knowles’ Position: Knowles recites that claim 10 adds the limitation that the “aperture 

is formed in the respective one of the first member and the second member, the surface is formed 

on the respective one of the first member and the second member and the transducer is attached 

to the surface leaving the aperture uncovered by the transducer, wherein the aperture is coupled 

to the transducer via the chamber.” Knowles asserts that the aperture and transducer are located 

on the same member, but the transducer is not positioned over the aperture. This configuration, 

Knowles alleges, corresponds to MSM2-RM, as shown for example in the drawings found at 

CX-37-C (MEMS054915-38). (CIB at 46 (citing CX-392C; CX-2 at 12:13-19; CX-37C; CX358C).) Knowles argues that, “at least the MSM2RM product infringes Claim lo.” (Id.) 

MemsTech’s Position: MemsTech makes no substantive argument regarding claim 10 

except to argue that, since it depends from claim 1, MemsTech’s products do not infkinge that 

claim, because they do not infringe claim 1 of the ‘089 patent. (RIB at 28 (citing Whapeton 

Canvas Co. v. Frontier, Inc., 870 F.2d 1546, 1553 (Fed. Cir. 1989)).) 

Commission Investigative Staffs Position: Staff takes the position that, because claim 

10 depends from claim 1, MemsTech‘s products do not infringe that claim for the same reasons 

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set forth for claim 1 of the ‘089 patent. (SIB at 58 (citing RX-368C).) 

Discussion and Conclusion: I have previously found that claim 10 of the ‘089 patent is 

invalid for failure to contain the written description required by 35 U.S.C. 6 112,y 1. In light of 

that finding, I cannot find that any of the accused products infringe claim 10 of the ‘089 patent.29 

5. Claim 15 

Claim 15 recites: 

The surface mountable package of claim 1, the patterned conductive 

layer comprising a plurality of terminal pads, the terminal pads 

providing an electrical connection between the transducer within the 

volume and an exterior of the surface mountable package. 

Knowles’ Position: Knowles recites that claim 15 adds the limitation of “the patterned 

conductive layer comprising a plurality of terminal pads, the terminal pads providing an 

electrical connection between the transducer within the volume and an exterior of the surface 

mountable package.” Knowles alleges that MemsTech’s documents showing the construction of 

the accused packages show “the use of a printed circuit board for the package substrate with 

device connection terminals on the interior surface (the side covered by their cap) and exterior 

bonding pads for solder assembly to the end-user’s printed circuit board, with,a plurality of 

terminal pads on the interior surface providing a connection between the transducer and the 

exterior bonding pads.” (CIB at 47.) Knowles provides as an example, the engineering drawing 

found at CX-229C (MEMS 134842) which they say shows “the top view of a PCB substrate with 

bonding terminals on the upper or interior surface, with connections to the transducer and 

supporting devices, the drawings found at CX-219 (MEMS005088-91, especially at 

MEMS005089) show the package’s exterior terminal pads (while not shown in this diagram, the 

29 If, however, claim 10 was found to be valid, the evidence before me would support a finding that the MSM2-RM 

and MSM3-RM models of the accused product literally infringe claim 10 of the ‘089 patent. (CX-36C at MEMS 

055168.) 

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bottom terminals are connected to the patterned conductive layer since the drawing legend 

indicates ‘Electrical contact to microphone’ and the transducer is connected to the interior 

package terminals or bond pads with wire bonds which are not shown).” (Id.) Knowles also 

points to the engineering drawing at CX-236-C (MEMS006976) to show that “vias going 

through the package substrate connect the top and bottom layers.” (Id. (citing CX-392C; CX-2 

at 12:42-46; CX-219C; CX-236C; CX-30C at 277: 17-279:21; CX-227C; CX-73C; CX-74C; CX75C; CX-122C; CX-217C; CX-358C; CX-361C; CX-363C; CX-45OC; CX-454C; CX-456C; 

CX-458C; CX-463C; CX-233C; CX-226; CX-235).) 

MemsTech’s Position: MemsTech makes no substantive argument regarding claim 15 

except to argue that, since it depends from claim 1, MemsTech‘s products do not infringe that 

claim, because they do not infringe claim 1 of the ‘089 patent. (RIB at 28 (citing Whapeton 

Canvas Co. v. Frontier, Inc., 870 F.2d 1546, 1553 (Fed. Cir. 1989)).) 

Commission Investigative Staffs Position: Staff takes the position that, because claim 

15 depends from claim 1, MemsTech‘s products do not infi-inge that claim for the same reasons 

set forth for claim 1 of the ‘089 patent. (SIB at 58 (citing RX-368C).) 

Discussion and Conclusion: Based upon the evidence before me:’ I find that the 

accused products contain “the patterned conductive layer comprising a plurality of terminal pads, 

the terminal pads providing an electrical connection between the transducer within the volume 

and an exterior of the surface mountable package” described in claim 15 of the ‘089 patent. 

(See, e.g., CX-392C; CX-2 at 12:42-46; CX-219C; CX-236C; CX-30C at 277:17-279:21; CX227C; CX-73C; CX-74C; CX-75C; CX-122C; CX-217C; CX-358C; CX-361C; CX-363C; CX450C; CX-454C; CX-456C; CX-458C; CX-463C; CX-233C; CX-226; CX-235.) Therefore the 

30 I have not considered exhibit CX-229C in this Final Initial Determination, because it relates to a product not at 

issue herein. 

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accused products literally infringe claim 15 of the ‘089 patent. 

6. Claim 17 

Claim 17 recites: 

The surface mountable package of claim 1, one or both of the first 

member and the second member including a shield against 

electromagnetic interference. 

Knowles’ Position: Knowles recites that claim 17 adds the limitation that the “one or 

both of the first member and the second member including a shield against electromagnetic 

interference.’’ Knowles alleges that MemsTech’ s documents showing the construction of 

accused packages show the use of a conductive cover that provides shielding from 

electromagnetic interference (EMI). (CIB at 47-48.) Knowles provides as an example, the 

engineering drawing at CX-221 (MEMS006980) which Knowles says describes the package cap 

as “made of metal (which is electrically conductive and therefore serves as an EM1 shield) and 

the document found at CX-23 1 (MEMS061068-92, especially at MEMS061080) indicates that 

the package cap acts as a shield against radio wave interference (a form of EMI).” (Id. (citing 

CX-392C; CX-221 C; CX-49C; CX-30C at 427:24-428%; CX-227C; CX-73C; CX-74C; CX75C; CX-122C; CX-217C; CX-358C; CX-361C; CX-363C; CX-45OC; CX-454C; CX-456C; 

CX-458C; CX-463C; CX-233C; CX-226; CX-235).) Knowles asserts, too, that MemsTech, 

through its corporate representative Mr. Sooriakumar, admitted that the metal cap provides 

shielding fi-om EMI. (Id. (citing CX-30C at 427:22-428:8).) 

MemsTech’s Position: MemsTech makes no substantive argument regarding claim 17 

except to argue that, since it depends from claim 1, MemsTech’s products do not infringe that 

claim, because they do not infringe claim 1 of the ‘089 patent. (RIB at 28 (citing FVzapeton 

Canvas Co. v. Frontier, Inc., 870 F.2d 1546, 1553 (Fed. Cir. 1989)).) 

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Commission Investigative Staffs Position: Staff takes the position that, because claim 

17 depends from claim 1, MemsTech‘s products do not infringe that claim for the same reasons 

set forth for claim 1 of the ‘089 patent. (SIB at 58 (citing RX-368C).) 

Discussion and Conclusion: Based upon the uncontroverted evidence before me, 

including, inter alia, the admission of Mr. Sooriakumar, (CX-30C at 427:22-428:8) I find that 

the accused products meet the requirement that “one or both of the first member and the second 

member include[e] a shield against electromagnetic interference.” Therefore, the accused 

products literally infringe claim 17 of the ‘089 patent. 

7. Claim20 

Claim 20 recites: 

The surface mountable package of claim 1, the first member 

comprising a printed circuit board. 

Knowles’ Position: Knowles recites that claim 20 adds the limitation “the first member 

comprising a printed circuit board.” Knowles asserts that MemsTech’s documents showing 

construction of the accused packages show the use of printed circuit board (PCB) material as the 

package substrate. (CIB at 48.) Knowles provides as examples, (1) the MemsTech document 

found at CX-23 1-C (MEMS061068-92) which they say describes how the microphone 

components are attached to the “substrate PCB,” (2) the document found at CX-224 

(MEMS 154 13 1-35, especially at MEMSO 154 133) which they assert describes the use of “PCB 

substrate” as the package substrate, and (3) the engineering drawing at CX-229 (MEMS 134842) 

which they allege indicates that the package substrate can be made with FR5 or BT, both 

commonly available printed circuit board materials. (Id. (citing CX-392C).) Knowles also states 

that MemsTech, through its corporate representative Mr. Sooriakumar, has admitted that the 

accused packages use a PCB substrate as a package substrate. (Id. (citing CX-30C at 386:7- 

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3 8 7 : 7).) 

MemsTech’s Position: MemsTech makes no substantive argument regarding claim 20 

except to argue that, since it depends from claim 1, MemsTech‘s products do not infringe that 

claim, because they do not infringe claim 1 of the ‘089 patent. (RIB at 28 (citing Whapeton 

Canvas Co. v. Frontier, Inc., 870 F.2d 1546, 1553 (Fed. Cir. 1989)).) 

Commission Investigative Staffs Position: Staff takes the position that, because claim 

20 depends from claim 1, MemsTech‘s products do not infringe that claim for the same reasons 

set forth for claim 1 of the ‘089 patent. (SIB at 58 (citing RX-368C).) 

Discussion and Conclusion: Based upon the uncontroverted evidence before me, 

including, inter alia, the admission of Mr. Sooriakumar, (CX-30C at 386:7-387:7) I find that the 

accused products use a printed circuit board as the substrate. Therefore, the accused products 

literally infringe claim 20 of the ‘089 patent. 

8. Claim28 

Claim 28 recites: 

The surface mountable package of claim 1, wherein the volume 

includes a portion of the chamber. 

Knowles’ Position: Knowles recites that claim 28 adds the limitation “the volume 

includes a portion of the chamber.” Knowles asserts that documents referencing the accused 

packages show that the volume in the accused packages is found within the chamber. (CIB at 

48.) Knowles provides as an example, MemsTech’s drawings found at CX-219C 

(MEMS005088-91) which they say show the “back volume” within the chamber. (Id. (citing 

CX-392C; CX-2 at 14:s-9; CX-219C; CX-30C at 397:3-11; CX-233C; CX-226; CX-235).) 

Knowles also alleges that MemsTech, through its corporate representative Mr. Sooriakumar, has 

admitted that the accused packages include a back volume. (Id. (citing CX-30C at 41 8:24- 

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4 1 9: 1 O).) 

MemsTech’s Position: MemsTech makes no substantive argument regarding claim 28 

except to argue that, since it depends from claim 1, MemsTech’s products do not infringe that 

claim, because they do not infringe claim 1 of the ‘089 patent. (RIB at 28 (citing Whapeton 

Canvas Co. v. Frontier, Inc., 870 F.2d 1546, 1553 (Fed. Cir. 1989)).) 

Commission Investigative Staffs Position: Staff takes the position that, because claim 

28 depends fiom claim 1, MemsTech’s products do not infi-inge that claim for the same reasons 

set forth for claim 1 of the ‘089 patent. (SIB at 58 (citing RX-368C).) 

Discussion and Conclusion: The evidence before me supports a finding that the accused 

products include a volume that includes a portion of the chamber. In construing the term 

volume, I discussed the difference between that term and the term “chamber.” I concluded that 

the chamber is the entire area formed by the first member and the second member, and that the 

volume is formed by the transducer and one of thefirst member the second member. In CX219C at MEMS 005089, the volume is depicted as a “fixed back volume” in the MemsTech 

product description. That same configuration appears at CX-36C (MEMS0055 166 and 

MEMS0055171). Therefore, I find that accused products MSM1, MSM2, MSM3 and MSM4 

(standard models) and MSM2X (cap 180 degree rotated), literally infi-inge claim 28 of the ‘089 

patent. 

9. Claim29 

Claim 29 recites: 

The surface mountable package of claim 1, wherein the acoustic signal 

is coupled to the transducer via the chamber. 

Knowles’ Position: Knowles recites that claim 29 adds the limitation “the acoustic 

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signal is coupled to the transducer via the chamber.” Knowles alleges that for each of the 

accused packages, the transducer resides in the chamber, and that the acoustic signal passes 

through portions of the chamber on its way to the transducer. (CIB at 49 (citing CX-392C; CX-2 

at 14: 10- 12; CX-37C; CX-49C; CX-224C; CX-227C; CX-73C; CX-74C; CX-75C; CX- 122C; 

CX-217C; CX-358C; CX-361C; CX-363C; CX-45OC; CX-454C; CX-456C; CX-458C; CX463C; CX-232C).) 

MemsTech’s Position: MemsTech makes no substantive argument regarding claim 29 

except to argue that, since it depends from claim 1, MemsTech’s products do not infringe that 

claim, because they do not infringe claim 1 of the ‘089 patent. (RIB at 28 (citing Whapeton 

Canvas Co. v. Frontier, Inc., 870 F.2d 1546, 1553 (Fed. Cir. 1989)).) 

Commission Investigative Staffs Position: Staff takes the position that, because claim 

29 depends from claim 1, MemsTech‘s products do not infringe that claim for the same reasons 

set forth for claim 1 of the ‘089 patent. (SIB at 58 (citing RX-368C).) 

Discussion and Conclusion: The uncontroverted evidence before me supports a finding 

that the accused MemsTech products are structured so that “the acoustic signal is coupled to the 

transducer via the chamber.” In each case the transducer resides within the chamber, and the 

acoustic signal passes through portions of the chamber to reach the transducer. (See, e.g., CX392C; CX-2 at 14: 10-12; CX-37C; CX-49C; CX-224C; CX-227C; CX-73C; CX-74C; CX-75C; 

CX-122C; CX-217C; CX-358C; CX-361C; CX-363C; CX-45OC; CX-454C; CX-456C; CX458C; CX-463C; CX-232C.) Therefore, the accused MemsTech products literally infringe claim 

29 of the ‘089 patent. 

21 1 
PUBLIC VERSION 

VI. DOMESTIC INDUSTRY 

A. Applicable Law 

In patent-based proceedings under section 3 3 7, a complainant must establish that an 

industry “relating to the articles protected by the patent ... exists or is in the process of being 

established” in the United States. 19 U.S.C. 1337(a)(2) (2008). Under Commission precedent, 

the domestic industry requirement of Section 337 consists of an “economic prong” and a 

“technical prong.” 

The “economic prong” of the domestic industry requirement is satisfied when it is 

determined that the economic activities set forth in subsections (A), (B), and/or (C) of subsection 

337(a)(3) have taken place or are taking place with respect to articles protected under the 

asserted patent. Certain Data Storage Systems and Components ThereoJ; Inv. No. 337-TA-471, 

Initial Determination Granting EMC’s Motion No. 471-8 Relating to the Domestic Industry 

Requirement’s Economic Prong (unreviewed) at 3 (Public Version, October 25,2002). With 

respect to the “economic prong,” 19 U.S.C. 6 1337(a)(2) and (3) provide, in full: 

(2) Subparagraphs (B), (C), (D), and (E) of paragraph (1) apply 

only if an industry in the United States, relating to the articles 

protected by the patent, copyright, trademark, mask work, or design 

concerned, exists or is in the process of being established. 

(3) For purposes of paragraph (2), 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, 

mask work, or design 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. 

Given that these criteria are listed in the disjunctive, satisfaction of any one of them will 

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PUBLIC VERSION 

be sufficient to meet the domestic industry requirement. Certain Integrated Circuit Chipsets and 

Products Containing Same, Inv. No. 337-TA-428, Order No 10, Initial Determination 

(Unreviewed) (May 4,2000), citing Certain Variable Speed Wind Turbines and Components 

ThereoJ; Inv. No. 337-TA-376, Commission Op. at 15, USITC Pub. 3003 (Nov. 1996). 

To meet the technical prong, the complainant must establish that it practices at least one 

claim of the asserted patent. Certain Point of Sale Terminals and Components ThereoJ; Inv. No. 

337-TA-524, Order No. 40 (April 11,2005). “The test for satisfying the ‘technical prong’ of the 

industry requirement is essentially same as that for infringement, i.e., a comparison of domestic 

products to the asserted claims.” Alloc v. Int’l Trade Comm ’n, 342 F.3d 1361, 1375 (Fed. Cir. 

2003). The technical prong of the domestic industry can be satisfied either literally or under the 

doctrine of equivalents. Certain Excimer Laser Systems for Vision Correction Surgery and 

Components Thereof and Methods for Performing Such Surgery, Inv. No. 337-TA-4 19, Order 

No. 43 (July 30, 1999). 

B. Economic Prong 

On September 8,2008, I issued Order No. 26, an initial determination finding that 

Knowles satisfied the economic prong of the domestic industry requirement. On September 26, 

2008, the Commission issued a notice of decision not to review the initial determination. 

Therefore, it is unnecessary to further discuss the economic prong. 

C. Technical Prong 

On September 8,2008, I issued Order No. 26, an initial determination finding that 

Knowles satisfied the technical prong of the domestic industry requirement with respect to the 

‘23 1 patent. On September 26,2008, the Commission issued a notice of decision not to review 

the initial determination. Therefore, it is unnecessary to further discuss the technical prong with 

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PUBLIC VERSION 

respect to the ‘23 1 patent. 

The parties dispute whether Knowles has satisfied the technical prong with respect to the 

‘089 patent. 

Knowles’ Position: Knowles argues that its SiSonic line of silicon microphone packages 

meet all of the limitations of claim 1 of the ‘089 patent. (CIB at 41 .) Knowles offers CX-25, 

which is a claim chart showing how the SiSonic products allegedly incorporate each element of 

claim 1. Dr. Loeppert testified that CX-25 accurately describes the features of the SiSonic 

products. (Id. (citing CX-389-C at Qs. 96-99).) Knowles points to Dr. Gilleo’s testimony for 

support. (CRB at 79 (citing CX-392C; CX-233C; CX-226; CX-235; CX-25; CX-237C).) 

Knowles claims that MemsTech disputes whether the transducer is “electrically coupled” 

to the patterned conductive layer as required in claim 1. (Id. at 40-41 .) Knowles states that 

under a correct construction of “electrically coupled,” it is undisputed that the SiSonic products 

practice claim 1. (Id) Knowles claims that even under MemsTech’s proposed construction of 

“electrically coupled,” the SiSonic products practice claim 1 under the doctrine of equivalents. 

(CRB at 79.) Knowles states that under a correct construction of “volume,” the SiSonic products 

meet the “volume being defined by the transducer and one of the first member or the second 

member” limitation. (CRB at 80.) 

MemsTech’s Position: MemsTech argues that the SiSonic products do not practice 

claim 1 of the ‘089 patent. MemsTech first argues that “the microphone is not electrically 

coupled to the layer of conductive material on the substrate.” (RIB at 95 (citing RX-368C).) 

Instead, MemsTech states { 

}. (Id.) MemsTech claims that the “electrically coupled” limitation 

“cannot be met by a microphone which is { 1 

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PUBLIC VERSION 

1 

MemsTech next argues that Knowles failed to show that the SiSonic products include a 

“volume being defined by the transducer and one of the first member or the second member.” 

MemsTech argues that Dr. Gilleo identified an area defined by the transducer and both the first 

and second members as the volume. (Id. at 96-97 (citing Rx-370).) MemsTech argues that the 

claim requires the volume to be defined by one of the first or the second member, not both of the 

first and second members. (Id.; see also RRB at 46-48.) 

Commission Investigative Staffs Position: Staff argues that the SiSonic products do 

not practice claim 1 of the ‘089 patent because the microphone is not “electrically coupled” to 

the substrate. (SIB at 65.) This argument is predicated on Staffs proposed construction of 

“electrically coupled,” which requires a direct connection between the microphone and the 

substrate. (Id.) Staff states that the evidence shows that { 

} (Id. (citing CX-233).) Staff further argues that 

Knowles’ doctrine of equivalents argument is untimely and thus has been waived pursuant to 

Ground Rule 4(d). (SRB at 28-29.) 

Discussion and Conclusion: I find that Knowles has demonstrated that its SiSonic 

products practice claim 1 of the ‘089 patent. 

MemsTech and Staff only dispute two limitations from claim 1. I find that the 

microphone in the SiSonic products is electrically coupled to the substrate. I have found that 

“electrically coupled” means “arranged so that electrical signals may be passed either directly, or 

indirectly via intervening circuitry, from one component to another.” In the SiSonic products, it 

is undisputed that the microphone is { 

} (CIB at 41; RIB at 95; SIB at 65.) This configuration meets my adopted claim 

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PUBLIC VERSION 

construction of “electrically connected” because { 

} MemsTech and Staff base their 

argument on an incorrect construction of “electrically coupled” that requires a direct connection. 

As for the “volume being defined by the transducer and one of the first member or the 

second member” element, I find that the SiSonic products meet this limitation. Below is a figure 

from the SiSonic Design Guide that depicts “[tlhe basic components of a SiSonic microphone:” 

{ 

(CX-233C at KE0000321.) The figure shows that a “back volume” is defined by the MEMS 

transducer and the substrate. This is consistent with Knowles’ argument in CX-25, where it 

points to the back volume in a similar diagram as the “volume being defined by the transducer 

and one of the first member or the second member.” (CX-25; see also CX-392C at Qs. 82-85.) I 

concur with this analysis, and find that the “back volume” of the SiSonic product, which is 

defined by the transducer and the substrate, meets the “volume being defined.. .” limitation in 

claim 1 of the ‘089 patent. 

Because the “electrically coupled” and “volume” limitations were the only limitations 

contested by MemsTech or Staff, I find that Knowles has met its burden in demonstrating that 

the SiSonic products practice claim 1 of the ‘089 patent. (See CX-25; CX-233; CX-392C at Qs. 

2-1 6 
PUBLIC VERSION 

80-85 .)31 

VII. REMEDY & BONDING 

The Commission’s Rules provide that subsequent to an initial determination on the 

question of violation of section 337 of the Tariff Act of 1930, as amended, 19 U.S.C. 9 1337, the 

administrative law judge shall issue a recommended determination containing findings of fact 

and recommendations concerning: (1) the appropriate remedy in the event that the Commission 

finds a violation of section 337; and (2) the amount of bond to be posted by respondents during 

Presidential review of Commission action under section 337(j). See 19 C.F.R. 3 210.42(a)(l)(ii). 

A. Limited Exclusion Order 

A limited exclusion order directed to MemsTech‘s infringing products is among the 

remedies that the Commission may impose. 19 U.S.C. 8 1337(d)(l). Knowles seeks a 

permanent limited exclusion order excluding entry into and sale or offer for sale within the 

United States of all infringing MemsTech silicon microphone packages. (CIB at 5 1-52; CRB at 

82-83.) Knowles states that the Commission has rejected the idea of listing the products subject 

to the exclusion order by name or model number. (Id. at 52 (citing Certain Integrated Repeaters, 

Switches, Transceivers, and Products Containing Same, Inv. No. 337-TA-435, Comm’n Op. at 

23, USITC Pub. 3547 (Oct. 2002)).) 

MemsTech argues that any limited exclusion order should be narrow in scope. 

Specifically, MemsTech argues that the exclusion order should be limited in duration to the 

terms of the ‘23 1 and ‘089 patents,32 should be limited to those specific components found to 

31 As I have found that the SiSonic products literally practice claim 1 of the ‘089 patent, it is unnecessary to address 

the issue of doctrine of equivalents. Furthermore, I concur with Staff that Knowles waived any doctrine of 

equivalents argument by raising it in an untimely manner. 

32 Any exclusion order issued by the Commission cannot extend in duration past the expiration dates of the patents. 

Texas Instruments Inc. v. United States Int ’I Trade Comm ’n, 85 1 F.2d 342,344 (Fed. Cir. 1988) (“The ITC can issue 

only an exclusion order barringfuture importation or a cease and desist order barringfuture conduct. If the violation 

of section 337 involves patent inhgement, neither of the above remedies is applicable once the patent expires.”) 

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PUBLIC VERSION 

infringe, and should identify the precise MemsTech silicon microphone products that are found 

to be infringing. (RIB at 98.) 

Staff argues that a limited exclusion order is appropriate if a violation of section 337 is 

found. (SRB at 32.) Staff states that “[i]n the event a limited exclusion order issues, the order 

should not be limited by name or model number in order to prevent future violations of section 

337 with respect to the products involved in the investigation.” (Id. at 32-33.) 

I recommend that the Commission issue a limited exclusion order. The limited exclusion 

order should apply to MemsTech and all of its affiliated companies, parents, subsidiaries, or 

other related business entities, or its successors or assigns and should be limited to those of 

MemsTech’s silicon microphones that have been found to infringe the ‘23 1 or ‘089 patents.33 I 

concur with Knowles and Staff that it would be inappropriate to limit the exclusion order by 

listing specific product names or model numbers. 

B. Bonding During Presidential Review Period 

The administrative law judge and the Commission must determine the amount of bond to 

be required of a respondent, pursuant to section 337(j)(3), during the 60-day Presidential review 

period following the issuance of permanent relief, in the event that the Commission determines 

to order a remedy. The purpose of the bond is to protect the complainant from any injury. 

19 C.F.R. $8 210.42(a)(l)(ii), 210.50(a)(3). 

When reliable price information is available, the Commission has often set the bond by 

eliminating the differential between the domestic product and the imported, infringing product. 

See Certain Microsphere Adhesives, Processes for Making Same, and Products Containing 

Same, Including Self-stick Repositionable Notes, Inv. No. 337-TA-366, Comm’n Op. a 24 

33 As I noted supra, the MemsTech “chamber chip” products are not part of this investigation, and thus, my 

recommended remedy does not apply to such products. 

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PUBLIC VERSION 

(1 995). In other cases, the Commission has turned to alternative approaches, especially when the 

level of a reasonable royalty rate could be ascertained. See, e.g., Certain Integrated Circuit 

Telecommunication Chips and Products Containing Same, Including Dialing Apparatus, Inv. 

No. 337-TA-337, Comm’n Op. at 41 (1995). 

Knowles’ Position: In its initial post-hearing brief, Knowles requests that “a bond be 

imposed on any imports of MemsTech silicon microphone packages during the Presidential 

Review period in an amount that equals the percentage by which MemsTech profits from such 

sales.” (CIB at 53.) 

In its reply brief, Knowles states that “[blecause no royalty rate information could be 

submitted for the record due to confidentiality issues.. .and because insufficient pricing 

information was produced during discovery, the bond should be set at 100% of the entered value 

of the allegedly infringing products during the Presidential Review Period.” (CRB at 83 .) 

Knowles further states that because MemsTech has alleged that its importation has been 

minimal, the imposition of a 100% bond will not create any hardship for MemsTech. (Id. at 83- 

84.) 

MemsTech’s Position: MemsTech argues that Knowles failed to offer any evidence 

regarding price differential or royalty rates. (RIB at 99-100 (citing Knowles’ December 17,2007 

Supplement to the Complaint; RFF 62 1 ; FWF 622).) MemsTech claims that Knowles cannot 

show how, if at all, it is injured by MemsTech’s importation of the accused products. (Id. at 100 

(citing RFF 623).) MemsTech therefore argues that there is no reason to require a bond pending 

the Commission’s final determination. (Id.) 

In its reply brief, MemsTech responds to Staffs argument that I should recommend a 

100% bond. MemsTech claims that this is improper because it is Knowles’ burden to present 

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PUBLIC VERSION 

evidence relevant to bonding during the hearing, and Knowles failed to meet its burden. (RRB at 

50.) MemsTech argues that without such evidence from Knowles, it is improper to institute any 

bond. (Id. (citing Certain Rubber Antidegradants, Components Thereox and Products 

Containing Same, Inv. No. 337-TA-533, Comm’n Op., 2006 ITC LEXIS 591 (Jul. 21,2006)).) 

Commission Investigative Staff Position: Staff states that “because there was no 

reasonable royalty rate information presented at the hearing and there was insuficient pricing 

information provided, the bond should be set at 100% of the entered value of the allegedly 

infringing products imported during the Presidential Review Period.” (SIB at 67-68.) 

Discussion and Conclusion: My recommendation is that no bond be required during the 

Presidential Review Period. 

The parties are in agreement that there is no evidence in the record regarding price 

differential or royalty rates. Thus, Knowles and Staff argue that a 100% bond is appropriate, 

while MemsTech argues that no bond is appropriate. 

Neither Knowles nor MemsTech go into any detail regarding the lack of relevant 

evidence in the record relating to bonding. Knowles cites to Order No. 17 for the reason behind 

the lack of royalty rate information. In Order No. 17, I granted a protective order that prevented 

Knowles from having to produce documents from a prior trade secret litigation. I granted the 

motion to prevent Knowles from having to willingly violate a protective order issued by the 

United States District Court for the Northern District of Illinois. Knowles offers no specific 

reason or explanation as to why Order No. 17 prevented it from presenting any evidence 

regarding bonding. 

In Certain Rubber Antidegradants, the Commission did not require a bond. The 

presiding administrative law judge had set no bond, finding, “no evidence in the record to 

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PUBLIC VERSION 

support any bond to offset any competitive advantage resulting from the unfair acts of 

[respondents] from their importations.” Certain Rubber Antidegradants, 2006 ITC LEXIS 59 1, 

at *59. 

The respondent argued that the lack of pricing information was due to the complainant’s 

failure to provide such evidence during the hearing. (Id. at *60.) The respondent argued that the 

complainant should not be able to benefit from its failure to provide evidence. (Id.) In response, 

the complainant argued that it had no burden of proof with respect to bonding, and that the 

existence of a violation is sufficient to support a 100% bond. (Id.) In deciding the issue, the 

Commission stated: 

We find the ALJ’s recommendation appropriate in the circumstances here and 

have determined not to require that a bond be posted for temporary importation. 

In our view, the complainant has the burden of supporting any proposition it 

advances, including the amount of the bond. [The complainant] did not meet that 

burden. 

(Id- 1 

In contrast, the Commission has set a bond of 100% when the evidence supported a 

finding that it would be difficult or impossible to calculate a bond based on price differentials. 

Certain Variable Speed Wind Turbines and Components ThereoJ Inv. No. 337-TA-376, 

Comm’n Op., 1996 WL 1056209 (Sept. 23, 1996) (finding that a bond of 100% was appropriate 

“because of the difficulty in quantifling the cost advantages of respondents’ imported Enercon 

E-40 wind turbines and because of price fluctuations due to exchange rates and market 

conditions.”); Certain Systems For Detecting and Removing Viruses or Worms, Components 

There05 and Products Containing Same, Inv. No. 337-TA-5 10, Comm’n Op., 2007 WL 

4473083 (Aug. 2007) (imposing a bond of 100% based on a finding that the parties had 

numerous models and products lines, and that a price comparison would be difficult because 

respondent’s products were a combination of hardware and software while the complainant’s 

22 1 
PUBLIC VERSION 

products were software only); Certain Flash Memory Circuits and Products Containing Same, 

Inv. No. 337-TA-382, USITC Pub. No. 3046, Comm’n Op. at 26-27 (July 1997) (a 100% bond 

imposed when price comparison was not practical because the parties sold products at different 

levels of commerce, and the proposed royalty rate appeared to be de minimis and without 

adequate support in the record). 

Here, I find that Knowles failed to meet its burden in supporting its argument that a 100% 

bond is appropriate. Knowles provided no legitimate reason for its failure to offer pricing 

differential or royalty rate evidence. Furthermore, Knowles does not assert that MemsTech 

failed to produce pricing information, and Knowles never moved to compel such information 

during discovery. Unlike the cases cited, supra, where a bond of 100% was set, there was no 

evidence submitted by Knowles demonstrating that it would be difficult or impossible to 

calculate a bond based on price differentials or royalty rates. With no evidence in the record 

supporting a bond of any amount, I recommend that the Commission set no bond during the 

Presidential Review Period. 

VIII. MATTERS NOT DISCUSSED 

This Initial Determination’s failure to discuss any matter raised by the parties, or any 

portion of the record, does not indicate that it has not been considered. Rather, any such 

matter(s) or portion(s) of the record hashave been determined to be irrelevant, immaterial or 

meritless. Arguments made on brief which were otherwise unsupported by record evidence or 

legal precedent have been accorded no weight. 

IX. CONCLUSIONS OF LAW 

1. The Commission has subject matter jurisdiction, in rem jurisdiction, and 

in personam jurisdiction. 

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PUBLIC VERSION 

2. There has been an importation of the accused silicon microphone packages and 

products containing the same which are the subject of the alleged unfair trade allegations. 

3. An industry does exist in the United States that exploits U.S. Pat. No. 6,781,23 1, 

as required by 19 U.S.C. 8 1337(a)(2). 

4. An industry does exist in the United States that exploits U.S. Pat. No. 7,242,089, 

as required by 19 U.S.C. 8 1337(a)(2). 

5. 

6. 

U.S. Pat. No. 6,78 1,23 1 is valid and enforceable. 

Claim 10 of U.S. Pat. No. 7,242,089 is invalid for failure to comply with the 

written description requirement of 35 U.S.C. 0 112,l 1. 

7. 

8. 

US. Pat. No. 7,242,089 is otherwise valid and enforceable. 

All accused MemsTech products literally infringe claims 1 and 2 of U.S. Pat. No. 

6,781,23 1. 

9. All accused MemsTech products literally infringe claims 1,2, 15, 17,20, and 29 

of U.S. Pat. No. 7,242,089. 

10. The following accused MemsTech products literally infringe claims 9 and 28: 

MSM1, MSM2, MSM3 and MSM4 (standard models) and MSM2X (cap 180 degree rotated). 

10. 

XI. ORDER 

There is a violation of 19 U.S.C. 3 1337(a)(l). 

Based on the foregoing, and the record as a whole, it is my Final Initial Determination 

that there is a violation of 19 U.S.C. 0 1337(a)(l) in the importation into the United States, sale 

for importation, and the sale within the United States after importation of certain silicon 

microphone packages and products containing the same. 

If the Commission determines that there is a violation, I recommend that a limited 

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PUBLIC VERSION 

exclusion order should issue and that no bond be imposed during the Presidential review period. 

I hereby CERTIFY to the Commission my 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 pre-hearing conference 

and the hearing, as well as other exhibits, are not certified, since they are already in the 

Commission’s possession in accordance with Commission rules. 

It is further ORDERED that: 

In accordance with Commission Rule 2 10.39, all material heretofore marked in 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. 

The initial determination portion of the Final Initial and Recommended Determination, 

issued pursuant to Commission Rule 210.42(a)(l)(i), shall become the determination of the 

Commission sixty (60) days after the service thereof, unless the Commission, within that period, 

shall have ordered its review of 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). 

Within fourteen days of the date of this document, each party shall submit to the office of 

the Administrative Law Judge a statement as to whether or not it seeks to have any portion of 

this document deleted from the public version. The parties’ submissions must be made by hard 

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PUBLIC VERSION 

copy by the aforementioned date and must include a copy of this document with red brackets 

indicating any portion asserted to contain confidential business information to be deleted from 

the public version. The parties’ submission concerning the public version of this document need 

not be filed with the Commission Secretary. 

SO ORDERED. 

DA 

225 
CERTAIN SILICON MICROPHONE PACKAGE 

AND PRODUCTS CONTAINING THE SAME 

Inv. No. 337-TA-629 

CERTIFICATE OF SERVICE 

I, Marilyn R. Abbott, hereby certifj that the attached ORDER was served upon Mareesa A. 

Frederick, Esq., Commission Investigative Attorney, and the following parties via first class mail 

and airmail where necessary on February 10 2009. 

U.S. International Trade Commission 

500 E Street, SW, Room 112A 

Washington, D.C. 20436 

FOR COMPLAINANT KNOWLES ELECTRONICS LLC.: 

Allan J. Sternstein, Esq. 

DYKEMA GOSSETT PLLC 

Ten South Wacker Drive 

Suite 2300 

Chicago, IL 60606 7453 

( ) Via Hand Delivery 

(i/fVia Overnight Mail 

( ) Via First Class Mail 

( )Other: 

FOR COMPLAINANT KNOWLES ELECTRONICS LLC.: 

Lyle B. Vander Schaaf, Esq. 

Jay H. Reiziss, Esq. 

Joseph Heckendorn, Esq. 

BRYAN CAVE 

700 Thirteenth St., N.W. 

Washington, D.C. 20005 

( ) Via Hand Delivery 

(4Via Overnight Mail 

( ) Via First Class Mail 

( ) Other: 

FOR RESPONDENT MEMS TECHNOLOGY BERHAD (“MEMSTECH”): 

Richard D. Kelly, Esq. 

Thomas J. Fisher, Esq. 

Barry J. Herman, Esq. 

OBLON, SPIVAK, McCLELLAND, 

1940 Duke Street 

Alexandria, VA 223 14 

MAIER & NEUSTADT, P.C. 

( )Jm Hand Delivery 

( Via Overnight Mail 

( ) Via First Class Mail 

( )Other: 
CERTAIN SILICON MICROPHONE PACKAGE 

AND PRODUCTS CONTAINING THE SAME 

Sherry Robinson 

8891 Gander Creek Drive 

Miamisburg, OH 45342 

LEXIS - NEXIS 

CERTIFICATE OF SERVICE - PAGE 2 

Kenneth Clair 

THOMAS WEST 

1100 Thirteen Street, NW, Suite 200 

Washington, D.C. 20005 

Inv. No. 337-TA-629 

( ) Via Hand Delivery 

(<Via overnight Mail 

( ) Via First Class Mail 

( )Other: 

( ) Via Hand Delivery 

( 4Via Overnight Mail 

( ) Via First Class Mail 

( )Other: