United States Court of Appeals 

for the Federal Circuit 

__________________________ 

SPANSION, INC. AND SPANSION, LLC, 

Appellants, 

AND

FREESCALE SEMICONDUCTOR, INC., 

Appellant, 

AND

ATI TECHNOLOGIES, ULC, 

Appellant, 

AND

STMICROELECTRONICS N.V., 

Appellant, 

AND

QUALCOMM INCORPORATED, 

Appellant, 

v. 

INTERNATIONAL TRADE COMMISSION, 

Appellee, 

AND

TESSERA, INC., 

Intervenor. 

__________________________ 

2009-1460, -1461, -1462, -1465 

__________________________ 
SPANSION INC v. ITC 2

On appeal from the United States International Trade 

Commission in Investigation No. 337-TA-605. 

__________________________ 

Decided: December 21, 2010 

__________________________ 

CARTER G. PHILLIPS, Sidley Austin LLP of Washington, DC, argued for all appellants. With him on the brief 

for STMicroelectronics N.V. were ERIC A. SHUMSKY, ERIC 

M. SOLOVY of Washington, DC; and EDWARD V. ANDERSON 

and RUSSELL L. JOHNSON of San Francisco, California. Of 

counsel was RUTHANNE M. DEUTSCH of Washington, DC. 

On the brief for Spansion, Inc., et al. were PAUL D.

CLEMENT, GILBERT KAPLAN, DARYL JOSEFFER and DAWNMARIE BEY King & Spalding Austin LLP of Washington, 

DC; and ETHAN HORWITZ of New York, New York. Of 

counsel was CHARLES ADAMS PANNELL, III of Atlanta, 

Georgia. 

KENNETH R. ADAMO, Jones Day, of Cleveland, Ohio, 

for appellant Freescale Semiconductor, Inc. With him on 

the brief were SUSAN M. GERBER; and BLANEY HARPER and 

LAWRENCE D. ROSENBERG of Washington, DC. Also on the 

brief for appellant ATI Technologies, ULC, were MICHAEL 

J. BETTINGER, STEPHEN M. EVERETT and ELAINE Y. CHOW, 

K&L Gates LLP, of San Francisco, California. 

STEPHEN B. KINNAIRD, Paul, Hastings, Janofsky & 

Walker LLP of Washington, DC, for Qualcomm Incorporated. With him on the brief were IGOR V. TIMOFEYEV; 

AMY E. SIMPSON of San Diego, California; TERRENCE P.

MCMAHON, DAVID H. DOLKAS, and DAVID L. LARSON of 

Menlo Park, California. Of counsel on the brief were 
3 SPANSION INC v. ITC

DANIEL R. FOSTER, McDermott Will & Emery LLP of 

Irvine, California; MATTHEW J. GRYZLO of Chicago, Illinois; MARGARET D. MACDONALD, and JULIANA M.

COFRANCESCO, Howrey LLP,of Washington, DC. 

MEGAN M. VALENTINE, Attorney, Office of the General 

Counsel, United States International Trade Commission 

of Washington, DC, argued for appellee. With her on the 

brief were JAMES M. LYONS, General Counsel, and 

ANDREA C. CASSON, Assistant General Counsel for Litigation. 

BENJAMIN W. HATTENBACH, Irell & Manella LLP of 

Los Angeles, California, argued for Intervenor. With him 

on the brief were MORGAN CHU, JONATHAN H. STEINBERG, 

KENNETH J. WEATHERWAX and MARK A. KRESSEL. Of 

counsel on the brief were MIGUEL A. ESTRADA and WAYNE 

BARSKY, Gibson, Dunn & Crutcher LLP of Washington, 

DC and Los Angeles, California, respectively; and 

AMANDA TESSAR of Denver, Colorado. 

__________________________ 

Before LOURIE, FRIEDMAN, and LINN, Circuit Judges. 

LINN, Circuit Judge. 

Tessera, Inc. (“Tessera”) filed a complaint with the 

United States International Trade Commission (“the 

Commission” or “ITC”) on April 17, 2007 under section 

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

alleging that seven respondents infringed U.S. Patents 

No. 5,852,326 (the “’326 patent”) and No. 6,433,419 (the 

“’419 patent”) through the importation or sale of certain 

semiconductor chips or products containing such chips. 

See In re Certain Semiconductor Chips with Minimized 

Chip Package Size and Products Containing Same, 72 

Fed. Reg. 28521 (Int’l Trade Comm’n May 21, 2007). 
SPANSION INC v. ITC 4

Tessera named as respondents Spansion, Inc. and Spansion, LLC (collectively, “Spansion”); Freescale Semiconductor, Inc. (“Freescale”); ATI Technologies, ULC (“ATI”); 

STMicroelectronics N.V. (“STMicro”); QUALCOMM, Inc. 

(“Qualcomm”); and Motorola, Inc. (“Motorola”) (collectively, “Respondents”). Motorola subsequently settled its 

dispute with Tessera and was dismissed from the case. 

All other Respondents (collectively “Appellants”) now 

appeal the Commission’s final determination, ruling that 

Appellants directly infringe the asserted claims of the 

’326 patent and contributorily infringe the asserted claims 

of the ’419 patent. In re Certain Semiconductor Chips 

With Minimized Chip Package Size and Products Containing Same, No. 337-TA-605, slip op. at 79 (Int’l Trade 

Comm’n May 20, 2009) (Public Version) (“Final Determination”). Because the Commission’s decision is supported 

by substantial evidence and is not contrary to law, this 

court affirms. 

I. BACKGROUND

A. Technology 

The ’326 and ’419 patents, share a common specification and describe semiconductor chip packages. A semiconductor chip is a widely used miniaturized electronic 

circuit that has been manufactured in the surface of 

semiconductor material. A semiconductor chip package 

includes both the casing, which protects the chip, and the 

electrical connections (sometimes called “terminals” or 

“contact pads”), which allow the chip to be attached to a 

printed circuit board (“PCB”). The printed circuit board, 

in turn, can be connected to other components of an 

electrical device. 

The present investigation relates to semiconductor 

packages containing face-up semiconductor chips in ball 

grid array assemblies. These are packages designed such 
5 SPANSION INC v. ITC

that the side of the chip containing the electrical contacts 

(the “face” of the chip) faces away from a backing element 

(also referred to as a substrate, package substrate, or 

interposer) on which the chip is mounted via “die attach,” 

which is the material used to mount the chip on the 

backing element.1 The electrical contacts on the top of 

the chip are connected to the top side of the backing 

element by fine wires called “leads.” The bottom side of 

the backing element has terminals that are laid out in a 

grid pattern. These terminals are intended to be electrically attached to the contact pads on the printed circuit 

board using solder balls. An encapsulant encases the 

package to provide insulation and protection of the package components. Figure 2 depicts a sectional view of a 

face-up ball grid array chip package electrically attached 

to a PCB. 

 1 The word substrate generally refers to an underlying layer and may be used to refer to different things 

depending on context. Throughout the record, the word 

substrate is used in different places to refer to different 

components. Substrate is sometimes used to refer to the 

layer within the semiconductor package on which the chip 

is attached using die attach (see label “Package Substrate” in the figure below). This component is referred to 

in the patents as the “backing element.” Substrate is also 

used to refer to the printed circuit board (external to the 

semiconductor package) on which the package is attached 

using solder balls (see “PCB” in the figure below). In the 

patents, the word substrate refers to the printed circuit 

board. For purposes of clarity, this opinion will use the 

words backing element and printed circuit board instead 

of substrate when referring to the respective structures. 
SPANSION INC v. ITC 6

As shown in Figure 2, chip 28 with electrical contacts 

40 is mounted on a substrate (PCB) 20 with an interposer/package substrate 42 between the chip and the 

PCB. ’326 patent col.10 ll.23-67. The solder balls 52 bond 

each terminal 48 to the associated contact pad 24. Id. 

Each terminal 48 is also connected to one of the contacts 

40 on chip 28 by a flexible lead 50. Id. Electrical devices 

generate heat during operation and subsequently cool 

when operation ceases. The electrical interconnections 

within the package (between the semiconductor chip and 

the backing element) and between the package and the 

printed circuit board are subjected to substantial strain 

resulting from expansion and contraction caused by these 

changes in temperature. Since the components are ordinarily formed by different materials having different 

coefficients of thermal expansion, the chip, the backing 

element, and the printed circuit board expand and contract by different amounts with each power cycle. This 

difference, called the differential thermal expansion, 

causes the electrical contacts on one component to move 

relative to the contacts of another component to which it 

is attached as the temperatures of the different components change. For instance, a semiconductor chip has a 

much lower coefficient of thermal expansion than either 
7 SPANSION INC v. ITC

the backing element or the printed circuit board. During 

heating, the backing element beneath the chip tends to be 

constrained by the chip and expands much less than the 

board on which it is mounted, causing relative movement 

there between. This relative movement causes mechanical stress on the solder balls because the bottoms of the 

solder balls get pulled outward relative to the tops causing distortion. Repeated cycles of heating and cooling can 

ultimately lead to permanent damage to the solder balls 

and breakage of the electrical interconnections. 

The patents at issue describe a semiconductor package with the ability to accommodate this relative movement between components by inserting a layer of 

compliant material that is “flexible, compressible, and/or 

elastic” between the chip and its backing element. ’326 

patent col.3 ll.61-64 (“Most preferably, a compliant layer 

is disposed between said terminals and said chip so that 

said compliant layer will be compressed upon movement 

of said terminals toward said chip.”); see also In the Matter of Semiconductor Chips With Minimized Chip Package 

Size and Products Containing Same, Inv. No. 337-TA-605, 

slip op. at 42 (Int’l Trade Comm’n Dec. 1, 2008) (Public 

Version) (“Initial Determination”). This compliant layer 

permits the terminals on the backing element to move 

relative to the chip inside the package offsetting some of 

the stress on the solder balls due to differential thermal 

expansion. The reduction of stress on the solder balls in 

turn decreases the occurrence of package failure and 

improves the reliability of the electrical devices containing such packages. 

Tessera asserted claims 1, 2, 6, 12, 16-19, 21, 24-26, 

and 29 of the ’326 patent and claims 1-11, 14, 15, 19, and 

22-24 of the ’419 patent against Respondents. Claim 1 of 

the ’326 patent and claim 1 of the ’419 patent are representative of the asserted claims and are set forth below 
SPANSION INC v. ITC 8

with emphasis added to show limitations disputed in this 

appeal: 

’326 patent: 

1. A semiconductor assembly comprising: 

a semiconductor chip having oppositely 

facing front and rear surfaces and edges 

extending between said front and rear surfaces, said chip further having contacts on 

a peripheral region of said front surface; 

a backing element having electrically conductive terminals and lead portions 

thereon, wherein said lead portions are 

connected to said terminals, said backing 

element overlying said rear surface of said 

semiconductor chip such that at least 

some of said terminals overlie said rear 

surface of said chip: 

bonding wires connected to said contacts 

on said front surface of said chip, said 

bonding wires extending downwardly 

alongside said edges of said chip and being 

connected to the lead portions on the backing element; 

wherein said terminals are movable with 

respect to said chip. 

’326 patent col.34 ll.18-36 (emphases added). 

’419 patent: 

1. A semiconductor assembly comprising: 

a) a semiconductor chip having a front 

surface, a rear surface and contacts on 
9 SPANSION INC v. ITC

said front surface, said semiconductor chip 

having a coefficient of thermal expansion; 

b) a substrate [PCB] adapted to physically support the chip and electrically interconnect the chip with other elements of 

a circuit, said substrate having a set of 

contact pads thereon, said substrate having a coefficient of thermal expansion, said 

semiconductor chip overlying said substrate so that said chip overlies at least 

some of said contact pads of said set and 

so that said rear surface of said chip faces 

toward said substrate and said contact 

pads: 

c) a backing element having electrically 

conductive terminals and electrically conductive lead portions electrically connected to said terminals and to said 

contacts on said chip, said backing element having a central region aligned with 

said chip and disposed between said rear 

surface of said chip and said substrate, 

said terminals of said backing element being bonded to said contact pads on said 

substrate, at least some of said terminals 

of said backing element being disposed in 

said central region of said backing element 

and being movable with respect to the chip 

to compensate for differential thermal expansion of the chip and substrate. 

’419 patent col.34 ll.18-43 (emphasis added). 

Prior to the invention described in the ’326 and ’419 

patents, the differential thermal expansion problem was 

known. Several design strategies to address the problem 
SPANSION INC v. ITC 10

also were known. One strategy, called “CTE matching,” 

selects materials for package components that have 

similar coefficients of thermal expansion. Another strategy uses solder balls made of deformable material to 

absorb some of the strain. Both of these strategies were 

disclosed in prior art U.S. Patent No. 5,216,278 (the “Lin 

patent”). During prosecution of the ’419 patent, the 

patent examiner rejected the pending claims as anticipated by the Lin patent. To overcome this rejection, 

Tessera distinguished solder ball deformation and CTE 

matching from the “claimed movement.” Id. at 48. Much 

of the ITC investigation and the arguments in this appeal 

revolve around the definition of “claimed movement” and 

how to determine whether it exists in the accused devices. 

The claims of the ’326 and ’419 patents recite that the 

terminals on the bottom of the backing element are moveable with respect to the semiconductor chip. ’326 patent 

col.34 ll.35-36 (“terminals are movable with respect to 

said chip”); ’419 patent col.34 ll.41-44 (“terminals . . . 

movable with respect to the chip to compensate for differential thermal expansion of the chip and substrate”); id.

col.35 ll.32-35 (“movement of said terminals . . . with 

respect to the chip to compensate for differential thermal 

expansion of the chip and substrate”). Consistent with 

Tessera’s statements during prosecution, the Commission 

construed all of these limitations to “require that ‘in the 

operation of the assembly, the terminals are capable of 

being displaced relative to the chip by external loads

applied to the terminals, to the extent that the displacement appreciably relieves mechanical stresses, such as 

those caused by [differential thermal expansion] which 

would be present in the electrical connections absent such 

displacement.’” Final Determination at 14 (quoting 

Initial Determination at 57-58). By using the term “external loads,” the ALJ differentiated between the move-
11 SPANSION INC v. ITC

ment of a package’s components caused by internal loads 

versus those caused by external loads. Internal loads 

result from the inherent expansion and contraction of 

components inside the package as temperature changes, 

and are generated whether the package is connected to a 

printed circuit board (“on-board”) or not (“off-board”). 

Movement resulting from internal loads (i.e. “CTE matching”) was disclaimed by Tessera as present in the prior 

art. External loads are forces that a printed circuit board 

exerts on a package because of differential thermal expansion and, because they involve a printed circuit board, 

can only occur when the package is on-board. The 

claimed movement is only that movement resulting from 

external loads (i.e. the use of a compliant layer between 

the chip and backing element) that allows the backing 

element to move with the printed circuit board. Thus, 

under the ALJ’s construction, to prove that an accused 

package infringes the asserted claims, Tessera must show 

that: “(1) the terminals are capable of being displaced 

with respect to the chip by external loads and (2) the 

displacement caused by the external loads appreciably 

relieves mechanical stresses.” Initial Determination at 

58. Tessera does not dispute this construction. 

To show that the accused products practiced the 

claimed movement and that movement appreciably relieved mechanical stress, Tessera’s expert, Dr. Qu, analyzed a subset of the accused products from each 

Respondent. Much of this appeal concerns Respondents’ 

contention that Dr. Qu’s test results do not support the 

ITC’s finding of infringement. Specifically, Dr. Qu selected seven packages from ATI, eight from Freescale, 

nine from Qualcomm, nine from Spansion, and nineteen 

from STMicro, for a total of 52 representative products. 

Id. at 56. Dr. Qu performed several tests on each of the 

representative products to determine whether they prac-
SPANSION INC v. ITC 12

ticed the claimed movement. The first two tests consisted 

of a type of computer simulation known as finite element 

analysis modeling. To perform such an analysis on a chip 

package, a computer representation is created by inputting numeric values representing the chip package’s 

materials, including geometric dimensions and physical 

properties, into modeling software. This computer representation of a package is then subjected to simulated 

physical conditions, such as thermal cycling, to generate 

an approximation of how the package will operate in the 

physical world. This modeling is well accepted and used 

throughout the electronic industry for predicting and 

confirming reliability of semiconductor packages, but it is 

not generally concerned with which specific components 

may be responsible for the improvement. Id. at 58 n.16. 

For both of his modeling tests, Dr. Qu created computer representations of the 52 representative accused 

products. In addition, for each of the 52 representative 

products, Dr. Qu created a corresponding hypothetical 

“baseline” package. The baseline packages were to be 

identical in every way to the actual packages except that 

they were designed not to have any movement due to 

external loads. To this end, the compliant layer was 

virtually removed in the baseline packages. This was 

accomplished by replacing the numeric values representing the compliant layers between the chip and the backing element with stiffer materials. 

Dr. Qu’s first modeling test (“Test 1”), also called the 

“thermal cycling test,” simulated thermal cycling of each 

of the accused packages and each of the baselines with the 

packages on-board. Dr. Qu then compared the movement 

of the actual package with the movement of the corresponding baseline package. According to Dr. Qu, since 

the baseline package would show only movement due to 

internal forces, any movement in the actual package 
13 SPANSION INC v. ITC

above the movement in the baseline would be due solely 

to external forces. Dr. Qu also calculated the resulting 

“plastic work,” a measure of stress on the solder balls, for 

each of the accused and corresponding baseline packages. 

Dr. Qu’s second modeling test (“Test 2”), also called 

the “direct loading” test, compared the off-board and onboard behavior of the representative accused packages 

during thermal cycling. According to Dr. Qu, modeling 

the representative accused packages off-board isolated 

movement due to solely internal loads because external 

loads, by definition, only occur when the packages are onboard. On the other hand, modeling representative 

accused packages on-board resulted in movement due to 

both internal and external loads. Accordingly, to find the 

movement due only to external loads, Dr. Qu subtracted 

the displacement shown by the off-board configuration 

from that shown by the on-board configuration. Dr. Qu 

acknowledged that one problem with Test 2 was the 

requirement of a “linearity assumption.” In reality, 

movement in the system is non-linear─movement in the 

on-board configuration (when both internal and external 

loads are applied) is not exactly the sum of the movements due to internal and external loads alone when they 

are separately applied. Instead, there is some interaction 

between the internal loads and external loads. When a 

package is on-board, the movement caused by external 

loads may cause more or less movement to occur due to 

internal loads. However, since Dr. Qu could not quantify 

the nonlinearity in the system, he had to make the “linearity assumption,” that movement due to internal and 

external loads on-board is the sum of movement due to 

internal and external loads applied separately. After 

approximating the amount of displacement due to external loads by subtracting the off-board displacement from 

the on-board displacement, Dr. Qu then applied this 
SPANSION INC v. ITC 14

external load to the bottom of the solder balls on off-board 

models of both the actual and baseline packages. Applying this calculated external load to a package approximated the stress caused by external loads during thermal 

cycling. Dr. Qu then assessed the effect of this stress by 

measuring the amount of damage to the solder balls in 

both packages. He found that there was improved reliability in the modeled actual packages as compared to the 

baseline packages. 

Dr. Qu performed one last test, the “Moirè test,” designed to validate the modeling tests. Moirè testing is an 

experimental technique (not a computer simulation) in 

which a physical chip package is cut in half and then a 

grating with very fine lines is epoxied to the cross-section. 

Lasers are used to make optical measurements of that 

sample at different temperatures in order to determine 

the displacements at various points on the package. Dr. 

Qu performed Moirè testing on only four of the 52 representative models and used a narrower temperature range, 

between +25oC and +75oC, than used for the thermal 

cycling modeling analysis, which ranged between -25oC 

and +125oC. 

B. Procedural History 

The ITC instituted this investigation on May 21, 

2007. On December 1, 2008, the presiding administrative 

law judge (“ALJ”) issued the Initial Determination, finding that Tessera had not met its burden to show that the 

accused products infringed the asserted claims of either 

the ’326 patent or the ’419 patent. Initial Determination

at 121. The ALJ also found that the asserted claims of 

both patents were not invalid (1) under 35 U.S.C. § 112 ¶ 

1 for failing to satisfy the enablement or written description requirements; (2) under 35 U.S.C. § 112 ¶ 2 for 
15 SPANSION INC v. ITC

indefiniteness; (3) under 35 U.S.C. § 102 for anticipation; 

or (4) under 35 U.S.C. § 103 for obviousness. Id. at 119. 

On February 22, 2008, based on an ex parte reexamination requested by a non-party and granted by the 

United States Patent and Trademark Office (“PTO”) 

before Tessera filed its complaint in the ITC, Respondents 

filed a joint motion to stay the ITC proceedings pending 

the reexamination. The ALJ granted the motion. The 

Commission reversed the ALJ’s order and denied Respondents’ stay motion. In the Matter of Certain Semiconductor Chips with Minimized Chip Package Size and 

Products Containing Same, Inv. No. 337-TA-605, 2008 

WL 2223426 (Int’l Trade Comm’n May 27, 2008). Respondents then sought a writ of mandamus from this 

court to vacate the Commission’s denial. This court 

denied the petition because petitioners had not shown 

that their right to the writ was clear and indisputable and 

because the Commission’s explanation, “that reexamination proceedings were at an early stage, that the reexamination proceedings might not reach completion before 

patents’ expiration, and that the Commission investigation was at an advanced stage,” was a sufficient basis for 

denial of a stay. In re Freescale Semiconductor, Inc., 290 

Fed. App’x 326, 326 (Fed. Cir. 2008). 

On January 30, 2009, the Commission stated that it 

would review portions of the Initial Determination. 

Specifically, the Commission noted that it would review 

the ALJ’s findings that (1) the accused devices did not 

infringe; (2) Tessera waived indirect infringement of the 

’419 patent; and (3) Motorola’s invention of the 1989 

68HC11 OMPAC chip did not anticipate the asserted 

patents. In the Matter of Certain Semiconductor Chips 

With Minimized Chip Package Size and Products Containing Same; Notice of Commission Decision To Review in 

Part a Final Determination Finding No Violation of 
SPANSION INC v. ITC 16

Section 337, 74 Fed. Reg. 6175-76 (Feb. 5, 2009). After 

briefing by the parties, the Commission, on May 20, 2009, 

issued the Final Determination overturning, in part, the 

ALJ’s holdings. The Commission found both direct and 

contributory infringement and issued both limited exclusion and cease-and-desist orders. 

Spansion and Freescale sought from this court a stay, 

pending appeal, of the Commission’s orders. This court 

denied that motion, concluding that Spansion and Freescale had neither met their burden of showing a strong 

likelihood of success on the merits nor shown that the 

harm factors militated in movants’ favor. Spansion, Inc. 

v. Int’l Trade Comm’n, Nos. 2009-1460, -1461, -1462, -

1465, 2009 WL 2876448 (Fed. Cir. Sept. 8, 2009). 

On appeal, Appellants challenge two aspects of the 

Commission’s determination of the meaning of the claims. 

First, Appellants assert that all the asserted claims are 

indefinite because the moveable limitation is insolubly 

ambiguous. Second, Appellants object to the Commission’s construction of the claim limitation “downwardly 

alongside.” Appellants also appeal the Commission’s 

finding of both direct and contributory infringement, 

asserting that Tessera failed to meet its burden to show 

that the accused products practice the claimed movement. 

Finally, Appellants contend that the asserted claims of 

both the ’326 and ’419 patents are invalid and appeal the 

Commission’s finding that they are not anticipated. 

Spansion, on its own, also argues that the Commission’s 

award of prospective injunctive relief was erroneous 

because it did not properly take into consideration the 

public interest. This court has jurisdiction under 28 

U.S.C. § 1295(a)(6). 
17 SPANSION INC v. ITC

II. DISCUSSION

A. Standard of Review 

This court reviews the Commission’s legal determinations de novo and the Commission’s factual findings for 

substantial evidence. Alloc, Inc. v. Int’l Trade Comm’n, 

342 F.3d 1361, 1368 (Fed. Cir. 2003). Under the substantial evidence standard, “[a] reviewing court must consider 

the record as a whole, including that which fairly detracts 

from its weight, to determine whether there exists such 

relevant evidence as a reasonable mind might accept as 

adequate to support a conclusion.” Nippon Steel Corp. v. 

U.S., 458 F.3d 1345, 1351 (Fed. Cir. 2006) (internal 

quotation marks omitted). This court “must affirm a 

Commission determination if it is reasonable and supported by the record as a whole, even if some evidence 

detracts from the Commission’s conclusion.” Id. at 1352 

(internal quotation marks omitted). 

B. Claim Construction 

1. Indefiniteness 

The ALJ found that the claims were not invalid for 

indefiniteness. Initial Determination at 105-06. The 

Commission adopted the conclusions of the ALJ on this 

issue. Final Determination at 76. “Indefiniteness requires a determination whether those skilled in the art 

would understand what is claimed.” Enzo Biochem, Inc. 

v. Applera Corp., 599 F.3d 1325, 1332 (Fed. Cir. 2010) 

(internal quotation marks omitted). To make that determination, general principles of claim construction apply. 

Id. at 1331 (internal quotation marks omitted). While 

claim construction primarily relies on intrinsic evidence, 

extrinsic evidence, such as expert testimony, may also be 

used when given the appropriate weight by the trial court. 

Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 
SPANSION INC v. ITC 18

1348 (Fed. Cir. 2005). “Because a patent is presumed to 

be valid, the evidentiary burden to show facts supporting 

a conclusion of invalidity is one of clear and convincing 

evidence.” Id. at 1345. This court reviews the Commission’s determination on indefiniteness de novo. Exxon 

Research & Eng’g Co. v. United States, 265 F.3d 1371, 

1376 (Fed. Cir. 2001). 

On appeal, Appellants argue that the ALJ incorrectly 

determined that the “moveable” limitation found in each 

of the asserted claims is not indefinite. As described 

above, the ALJ interpreted the movable limitation to 

require that “in the operation of the assembly, the terminals are capable of being displaced relative to the chip by 

external loads applied to the terminals, to the extent that 

the displacement appreciably relieves mechanical 

stresses, such as those caused by differential thermal 

expansion which would be present in the electrical connections absent such displacement.” Initial Determination at 57-58. Appellants contend that a person of 

ordinary skill would not understand whether movement 

of the terminals “appreciably relieve[d] mechanical 

stresses” as required by the Commission’s construction 

and thus would not be able to determine how much 

movement constitutes infringement. Appellants argue 

that because the patents do not define any standard for 

measuring stress relief, there is no anchor for determining when stress relief is “appreciable.” Moreover, Appellants contend that the asserted patents fail to distinguish 

between the claimed movement and other unclaimed 

movement that is present in chip packages. Tessera 

responds that the Commission correctly determined that 

the “moveable” language is definite, arguing that both the 

specification and expert testimony support the Commission’s conclusion that a person of ordinary skill would 

understand the boundaries of the claims. This court 
19 SPANSION INC v. ITC

agrees with the Commission that the claims are not 

indefinite. 

First, this court is not persuaded by Appellants’ argument that the claims do not provide a way to determine 

how much movement constitutes infringement. The ALJ 

found that “the evidence shows that one skilled in the art 

would readily be able to understand the scope of the 

asserted claims of the ’326 and ’419 patents when read in 

light of the specifications.” Id. at 105. Both the intrinsic 

and extrinsic evidence support this finding. 

The intrinsic evidence provides guidance both on the 

mechanical stresses that cause the problem and the kind 

of movement that will relieve those stresses. The specification indentifies the cause of the mechanical stress 

resulting from thermal cycling as the “relative movement 

[which] deforms the electrical interconnections between 

the chip and substrate.” ’326 patent col.2 ll.17-19. It then 

goes on to identify a solution to the problem in providing 

“a compliant layer [] disposed between said terminals and 

said chip so that said complaint layer will be compressed 

upon movement of said terminals toward said chip.” Id.

col.3 ll.61-64. This disclosed and described movement is 

what “provides compensation for differential thermal 

expansion of the chip and substrate,” Id. col.4 ll.9-11, and 

enables “the assembly [to be] substantially resistant to 

thermal cycling.” Id. col.20 l.40. 

The extrinsic evidence also supports the ALJ’s finding. Experts for both Tessera and Appellants testified 

that one of ordinary skill in the art would have been able 

to determine the boundaries of the claims. For example, 

Appellants’ expert, Dr. Sitaraman stated that he was 

“able to conduct a noninfringement analysis based on the 

Tessera description” and that he was “able to find out the 

movement due to external forces alone.” Trial Ex. RX-
SPANSION INC v. ITC 20

3179C (witness statement of Dr. Sitaraman, Feb. 14, 

2008) at ¶ 85, J.A. 78130; Hr’g Tr. 971:6-11 (July 17, 

2008), J.A. 12003; see Initial Determination at 105 (“[T]he 

evidence shows that two of [Appellants’] own experts were 

able to discern the metes and boundaries of the asserted 

claims. In particular, Dr. Sitaraman was able to discern a 

dividing line between what an appreciable relief of stress 

is and what is not. Additionally, Dr. Madenci testified in 

this Investigation that he was able to determine what 

would literally be within the scope of the asserted claims.” 

(internal citations omitted)). In addition, Tessera’s expert, Dr. Ivey, stated that “a person of ordinary skill in 

the art would have understood that the claimed movement required terminals that could move relative to the 

chip to provide substantial compensation for differential 

thermal expansion and thus significantly improve reliability at the connections.” Trial Ex. CX-3205C ¶ 377, 

J.A. 51424 (witness statement of Dr. Ivey, Feb. 16, 2008). 

The ALJ had the right to credit that testimony. See

Datamize, 417 F.3d at 1348; Orthokinetics, Inc. v. Safety 

Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986). 

This court does not find persuasive Appellants’ arguments 

that the ALJ misinterpreted the expert testimony. 

Moreover, the claims were intended to cover the use of 

the invention with semiconductor packages made of a 

number of materials, each having different coefficients of 

thermal expansion and differing thermal expansion rates. 

Interpreting the claimed term “movable” in terms of 

appreciable relief of mechanical stress is as precise as 

need be and “reasonably apprise[s] those skilled in the art 

both of the utilization and scope of the invention.” Shatterproof Glass Corp. v. Libbey-Owens Ford Co., 758 F.2d 

613, 624 (Fed. Cir. 1985) (internal quotations omitted). 

Second, this court disagrees with Appellants’ argument that the asserted claims are indefinite because the 
21 SPANSION INC v. ITC

patents provide no method for distinguishing claimed 

movement from unclaimed movement. Whether a patent 

clearly differentiates itself from specific prior art “is an 

important consideration in the definiteness inquiry.” 

Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d 

1244, 1252 (Fed. Cir. 2008). Here, the prosecution history 

clearly differentiates claimed from unclaimed movement. 

During prosecution of the ’419 patent, the patent examiner rejected the pending claims as anticipated by the Lin 

patent. In response, Tessera distinguished the Lin patent 

by differentiating solder ball deformation and “CTE 

matching” from the claimed movement. Initial Determination at 48 (“Indeed, Lin’s teaching that one should rely 

upon deformable solder balls and CTE matching of the 

‘carrier substrate 12’ and the printed circuit board as a 

full and adequate solution to the problem of solder joint 

fatigue leads away from any suggestion that one should 

provide terminals movable relative to the chip to deal 

with this problem.”) (quoting Trial Ex. JX-0003 prosecution history of the ’419 patent, amendment dated Aug. 20, 

2001 at 4-5). Thus, the prosecution history makes clear 

that claimed movement is limited to movement caused by 

external loads as opposed to movement caused by internal 

loads. 

Although determining whether claimed movement 

was present in the accused packages required an expert 

using detailed computer simulations, this alone does not 

indicate that the claims are indefinite. The difficulty or 

complexity of the infringement analysis does not necessarily speak to whether a claim is definite or not. See

Datamize, 417 F.3d at 1354 (stating that “indefiniteness 

does not depend on the difficulty experienced by a particular person in comparing the claims with the prior art or 

the claims with allegedly infringing products or acts”); 

SmithKline Beecham Corp. v. Apotex Corp., 403 F.3d 
SPANSION INC v. ITC 22

1331, 1340-41 (Fed. Cir. 2005) (“The test for indefiniteness does not depend on a potential infringer’s ability to 

ascertain the nature of its own accused product to determine infringement, but instead on whether the claim 

delineates to a skilled artisan the bounds of the invention.”). Appellants did not carry their burden of persuading the Commission, nor have they persuaded this court, 

that the asserted claims of the ’326 and ’419 patents are 

invalid for indefiniteness. 

2. “Downwardly Alongside” 

Appellants appeal the Commission’s construction of 

the claim limitation “bonding wires extending downwardly alongside said edges of said chip” included in 

claim 1 of the ’326 patent. The Commission construed the 

limitation to mean “along the side of the semiconductor 

chip, with the caveat that one of ordinary skill in the art 

would understand that through the wire bonding process, 

the bonding wires may extend up, outward and then 

downward toward the backing element.” Initial Determination at 39-40. The Commission based this finding on 

the specification’s description of the bonding wires as 

conventional and the understanding of one of skill in the 

art that the conventional wire bonding process may cause 

bonding wires to extend up, out, and then down. Id. at 

38-39. 

Appellants argue that this construction impermissibly 

broadens the claim limitation and renders the term 

“alongside” superfluous because it does not specify how 

far from the semiconductor chip edge the bonding wires 

are allowed to fan out. Appellants’ position is that the 

specification and prosecution history require that the 

limitation define “alongside” as being “in close proximity” 

to the edges of the semiconductor chip. Specifically, 

Appellants cite Figure 26 in the ’326 patent and its de-
23 SPANSION INC v. ITC

scription stating “alongside the chip, in close proximity to 

the edges of the chip” as defining “alongside” to include 

the limitation “in close proximity.” ’326 patent col.31 

ll.14-15. In addition, Appellants assert that the specification does not support the Commission’s finding that the 

invention discloses using conventional wire bonding 

because Figure 29 distinguishes between a subassembly 

embodying the claimed invention and another chip that 

uses conventional bonding wires. Finally, Appellants 

contend that the prosecution history confirms that “alongside” means “in close proximity” because during the 

prosecution of U.S. Patent No. 5,347,159 (the “’159 patent”), the parent of the ’326 patent, the inventors expressly distinguished their invention from the prior art 

Kishida patent for not disclosing conductive leads “alongside” the edges of a chip. Instead, the inventors stated 

that the prior art conductive leads “extend outwardly 

from the various chips rather than upwardly alongside of 

the chips.” This court is not persuaded by any of these 

arguments. 

This court agrees with the ALJ that the proper construction of “downwardly alongside” includes conventional 

bonding wires. The specification discloses only conventional wires that are connected between elements using a 

conventional wire bonding process. ’326 patent col.29 

ll.26-46. Figure 14 demonstrates conventional bonding 

wires extending up, out, and then down. Id. col.18 ll.58-

60. Appellants do not disagree that conventional wire 

bonds attaching elements on one side of the chip to elements on the other extend up, out, and then down. In 

fact, Appellants concede that all the accused products use 

conventional wire bonding, with wires that extend “up 

from the chip contacts, and out and away from the chip” 

before extending down to attach to contacts on the rear 

side of the chip. Freescale’s Principal Br. at 59-60. And 
SPANSION INC v. ITC 24

Appellants do not point to any language in the specification that discloses wires bonded in a different manner.

Figure 26 discloses the use of trace leads, labeled 948, 

in addition to bonding wires, labeled 928. Appellants’ 

reliance on this figure and its description including the 

phrase “in close proximity” is misplaced because that 

description refers only to the leads, and not to the bonding 

wires. ’326 patent col.29 ll.19-20. The only bonding wires 

illustrated in Figure 26 do in fact extend upward, outward 

and then downward from contacts but then terminate at 

the point where they connect to trace leads above the face 

of the chip. Appellant’s reliance on Figure 29 is similarly misplaced. Figure 29 does not illustrate the use of 

bonding wires to attach contacts on one side of the chip to 

terminals on the other side of the chip. Instead, Figure 29 

shows a semiconductor package using leads and flaps for 

this purpose. 

Finally, this court is not persuaded that the inventors 

disclaimed bonding wires not in close proximity to the 

semiconductor chip in the prosecution of the ’159 patent. 

Appellants argue that the inventors’ statement “these 

wiring films extend outwardly from the various chips 

rather than upwardly alongside of the chips” distinguishes the prior art Kishida wiring films (shown below) 

from connections that extend downwardly alongside the 

semiconductor chip. J.A. 62395. This court does not 

agree. 
25 SPANSION INC v. ITC

First, the ’159 patent claims disclose leads and flaps 

rather than bonding wires for electrically connecting one 

side of the semiconductor chip to the other. Therefore, 

any disclaimers specifically relating to the type of connection do not apply to the ’326 patent. See Saunders Group, 

Inc. v. Comfortrac, Inc., 492 F.3d 1326, 1333 (Fed. Cir. 

2007) (“When the purported disclaimers are directed to 

specific claim terms that have been omitted or materially 

altered in subsequent applications (rather than to the 

invention itself), those disclaimers do not apply.”); see also

Ventana Med. Sys. v. Biogenex Labs., 473 F.3d 1173, 1182 

(Fed. Cir. 2006) (“[T]he doctrine of prosecution disclaimer 

generally does not apply when the claim term in the 

descendant patent uses different language.”); Invitrogen 

Corp. v. Clontech Labs., Inc., 429 F.3d 1052, 1078 (Fed. 

Cir. 2005) (“[T]he prosecution of one claim term in a 

parent application will generally not limit different claim 

language in a continuation application.”). 

Second, even if the inventors’ statement was related 

not to the type of connection, but to the mutual claim 

term “alongside,” it is still unclear that it was a disclaimer of connections not in close proximity to the chip 

edge. Instead of distinguishing the invention from Kashida because of the distance of the wiring films from the 
SPANSION INC v. ITC 26

chip edge, it is at least as likely that the inventors were 

distinguishing the invention from the prior art wiring 

films because the films never extend along the sides of the 

chips─the prior art wiring films extend up and out, but 

never down. Thus, the inventors’ statement was not 

sufficiently clear to establish that a disclaimer occurred. 

See Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314, 

1325 (Fed. Cir. 2003) (“To balance the importance of 

public notice and the right of patentees to seek broad 

patent coverage, we have thus consistently rejected prosecution statements too vague or ambiguous to qualify as a 

disavowal of claim scope.”). 

For the foregoing reasons, this court affirms the 

Commission’s construction of the downwardly alongside 

limitation. Therefore, this court need not address Appellants’ argument that the accused packages do not infringe 

under their preferred construction. 

C. Infringement 

On the issue of infringement, the ALJ, in the Initial 

Determination, and the Commission, in the Final Determination, came to contradictory conclusions on several 

factual issues and the ultimate conclusion. Each party in 

this appeal, not surprisingly, argues that the opinion 

supporting its position is correct. However, “we do not 

‘review’ the correctness of the ALJ’s initial decision or the 

correctness of the Commission’s ‘reversal.’” Fischer & 

Porter Co., Inc. v. Int’l Trade Comm’n, 831 F.2d 1574, 

1577 (Fed. Cir. 1987). Instead, “19 U.S.C. § 1337(c), 

directs that on appeal to this court, this court must review 

the ‘final determination of the Commission . . . in accordance with chapter 7 of title 5 [i.e., the Administrative 

Procedure Act (APA)].’” Id. While the ALJ’s opinion may 

be probative, “this court may not substitute its judgment 

for the Commission’s final determination on the ground 
27 SPANSION INC v. ITC

that the court believes the ALJ’s . . . view is ‘more reasonable.’” Id. Under the APA, this court reviews the Commission’s factual findings, such as its finding of 

infringement, for substantial evidence. See 5 U.S.C. § 

706(2)(E); Finnigan Corp. v. Int’l Trade Comm’n, 180 F.3d 

1354, 1361-62 (Fed. Cir. 1999). 

1. Direct Infringement 

To prove direct infringement, Tessera must establish 

by a preponderance of the evidence that “one or more 

claims of the patent read on the accused device literally or 

under the doctrine of equivalents.” Cross Med. Prods., 

Inc. v. Medtronic Sofamore Danek, Inc., 424 F.3d 1293, 

1310 (Fed. Cir. 2005); Enercon GmbH v. Int’l Trade 

Comm’n, 151 F.3d 1376 (Fed. Cir. 1998). The arguments 

on this issue are extremely complex and highly technical. 

However, the dispute narrows to a single question of fact: 

whether the accused products meet the moveable limitation found in all the asserted claims of both the ’326 and 

’419 patents. Appellants assert that Tessera failed to 

show, through its presentation of Dr. Qu’s tests, that the 

accused products either practiced the claimed movement 

or that such movement caused appreciable stress relief. 

Tessera and the ITC respond that Dr. Qu’s tests properly 

established substantial evidence of infringement. 

Appellants cite with approval the ALJ’s Initial Determination in which the ALJ found several problems with 

Dr. Qu’s methodology and concluded that Tessera had 

failed to prove by a preponderance of the evidence that 

the accused products practice the claimed movement. 

First, the ALJ found that because Dr. Qu could not quantify the changes in internal behavior of the baseline 

package due to his substitutions of materials and their 

corresponding properties, such as coefficient of thermal 

expansion, Dr. Qu’s Test 1 was ineffective at demonstrat-
SPANSION INC v. ITC 28

ing that accused products practiced the claimed movement. Initial Determination at 61. Second, the ALJ found 

that Test 2 did not properly demonstrate what movement 

was due to external loads (i.e., claimed movement) because: (1) Dr. Qu did not quantify the margin or error 

inherent in his assumption of linearity; (2) Dr. Qu did not 

measure displacement at the terminals located on the 

bottom of the package (and at the top of the solder balls), 

but instead measured the displacement at the bottom of 

the solder balls; and (3) Test 2 did not show how much of 

the total displacement was due to “CTE matching” as 

opposed to external forces and therefore could not show 

appreciable stress relief. Id. at 63-66. Finally, the ALJ 

found that Dr. Qu did not appropriately validate his 

testing models, because his Moirè analysis was improperly performed over a narrower temperature range than 

the model it sought to validate. Id. at 67. In addition, 

since the Moirè testing could not distinguish claimed 

movement from other movement, the ALJ found that it 

could not provide any independent evidence of the presence of claimed movement. Id. 

Tessera and the ITC, on the other hand, advocate the 

reasoning and conclusion found in the Commission’s Final 

Determination. The Commission agreed with the ALJ 

that Test 1 was defective because of Dr. Qu’s inability to 

determine how much movement was due to “CTE matching” and how much, if any, was due to external loads. 

Final Determination at 20. However, the Commission 

found that since the methodology in creating baseline 

packages was correct, the unquantified coefficient of 

thermal expansion behavior of the baseline package only 

affected the usefulness of Test 1. In particular, the Commission pointed out that during Test 2, thermal cycling 

was only applied to the accused packages in order to 

determine the difference between the on-board and off-
29 SPANSION INC v. ITC

board displacement vectors. Since the resulting displacement was applied directly to the baseline packages 

without any further thermal cycling, the Commission 

stated that “any consideration of the differences in the 

[coefficient of thermal expansion] behavior of the accused 

and baseline packages [was] completely irrelevant.” Id. at 

46. The Commission found the ALJ’s criticism of Test 2 

misplaced because Appellants’ expert, Dr. Sitaraman, 

“acknowledged the appropriateness of using the linearity 

assumption to determine displacement due to only external loads in his own modeling.” Id. at 39. In fact, the 

Commission observed that “there is no evidentiary support for the [ALJ’s] conclusion that the linearity assumption is inherently flawed.” Id. at 40. Thus, unlike the 

ALJ, the Commission concluded that Dr. Qu’s Test 2 

adequately showed that the accused products infringed 

the asserted claims of the ’326 and ’419 patents. Id. at 15. 

Finally, the Commission decided that it was unnecessary 

to validate the modeling tests with the Moirè test, but 

agreed with Dr. Qu that the Moirè results provided additional evidence that the inputs used for Test 2, and therefore the methodology of Test 2, were accurate. Id. at 21-

29. 

Appellants’ numerous arguments on this issue can be 

summarized as follows: (1) the 52 representative models 

chosen by Dr. Qu were not sufficient to show that all 

accused products infringed; (2) Dr. Qu’s Test 2 was technically flawed and the Commission improperly went 

beyond the expert testimony to find that Test 2 was 

sufficient evidence of infringement; and (3) the Moirè test 

did not supply the required validation of Test 2. This 

court is not persuaded by any of these arguments. Because this court agrees with the Commission that Dr. Qu’s 

Test 2 provided substantial evidence of infringement, this 
SPANSION INC v. ITC 30

court need not address Tessera’s further argument that 

the Commission erred in rejecting Dr. Qu’s Test 1. 

First, Appellants argue that Tessera did not properly 

show by a preponderance of the evidence that Dr. Qu’s 52 

chosen models were representative of all the accused 

products. The ALJ found otherwise, stating “the ALJ 

finds Dr. Qu’s approach in selecting representative accused products reasonable and well thought out. By 

selecting representative products that span the range of 

values for those parameters that most directly affect the 

claimed movement, Dr. Qu has offered specific and substantial evidence as to why those accused products not 

selected by Dr. Qu can reasonably be expected to behave 

like the representative accused products.” Initial Determination at 57. In fact, the ALJ found that “[e]ven Respondents’ expert Dr. Sitaraman acknowledged that the 

accused devices were similar in structure” and thus a 

representative analysis of the accused products was 

appropriate. Id. at 55. The Commission did not review 

the ALJ’s findings on this issue and adopted the ALJ’s 

conclusions as its own. This court agrees that substantial 

evidence supports the ALJ’s finding that the modeled and 

non-modeled products operate similarly with respect to 

the claimed limitation. See TiVo, Inc. v. Echostar Comm. 

Corp., 516 F.3d 1290, 1308 (Fed. Cir. 2008) rehearing en 

banc granted, 376 Fed. App’x 21 (Fed. Cir. May 14, 2010). 

Dr. Qu provided detailed evidence describing his selection 

process, which was based on criteria that would most 

directly affect relative terminal displacement. See, e.g., 

JA55172 ¶ 454 (Supp. Witness Statement of Dr. Jianmin 

Qu CsX-3669C) (stating that he “selected products to 

model based on parameters [he] felt were particularly 

important to the analysis, which included the type of 

package – single or multi-chip – as well as die size, ball 

pitch, and the modulus of the die attach materials”). And 
31 SPANSION INC v. ITC

Dr. Qu stated that “by select[ing] packages that have 

values of those parameters that are at or near the extremes among the pool of accused products” the chosen 

representative packages were “fairly representative of the 

entire pool of accused products.” Id. ¶ 455. Appellants 

contend that the ALJ improperly shifted the burden to 

Appellants to establish that the non-modeled accused 

packages would behave differently than those that were 

modeled. Rather than improper burden shifting, the ALJ 

properly found that Appellants simply failed to rebut the 

substantial evidence set forth by Tessera. Initial Determination at 56-57. 

Second, Appellants assert that Test 2 was technically 

flawed. Appellants reiterate each of the arguments made 

both to the ALJ and the Commission on this issue. Appellants argue that Test 2 cannot be relied upon because, 

among other things: (1) loads were applied to the bottom 

of the solder balls instead of at the top; (2) the Commission improperly assumed that all observed stress relief 

was attributed to claimed movement; (3) the linearity 

assumption was a fatal defect in Test 2; and (4) Test 2 

was inherently unreliable because it was used only by Dr. 

Qu for the purpose of legal proceedings. This court is not 

persuaded by these arguments. The Commission explicitly acknowledged that in Test 2 the load was applied to 

the bottom of the solder balls, and that displacement at 

the bottom of the solder balls was not equivalent to displacement at the top of the solder balls due to solder 

deformation. However, the Commission found that this 

was not fatal to the effectiveness of Test 2 because “it is in 

fact, the displacement differential between the package 

and the PCB that causes the ‘mechanical stress.’” Final 

Determination at 42. Thus, since it was “undisputed that 

the PCB applies all of its force to the bottom of the solder 

ball,” the Commission found that “Dr. Qu properly simu-
SPANSION INC v. ITC 32

lated the external load being applied to the packages by 

determining displacement at the bottom of the solder 

balls, at least some of which is transferred to the terminals.” Id. This conclusion, based on witness testimony, 

was not unreasonable. 

Furthermore, the Commission reasonably determined, 

based on expert evidence, that Test 2 showed claimed 

movement, which resulted in the relief of stresses that 

would not have been present in the absence of the claimed 

movement. Because the claim construction did not require quantifying the amount of external load, Qu’s 

linearity approximation was sufficient to show infringement, and the Commission properly relied on expert 

testimony supporting this conclusion. Finally, the Commission thoroughly analyzed the expert evidence and 

found that Test 2, based on industry-accepted modeling, 

was reliable evidence of infringement. This conclusion is 

not invalidated simply because the model was specifically 

tailored to the unique claim construction at issue. This 

court has considered and found unpersuasive Appellants’ 

remaining arguments that Test 2 was technically flawed. 

Citing Centricut, LLC v. The ESAB Group, Inc., 390 

F.3d 1361 (Fed. Cir. 2004), Appellants also assert that the 

Commission improperly went beyond the expert testimony, instead adding its own interpretation to the raw 

data from Dr. Qu’s tests. Centricut is inapplicable here. 

This court held in Centricut that “in a case involving 

complex technology, where the accused infringer offers 

expert testimony negating infringement, the patentee 

cannot satisfy its burden of proof by relying only on 

testimony from those who are admittedly not expert in 

the field.” 390 F.3d at 1370. In this case, however, both 

sides presented relevant expert testimony on the technical 

aspects of Dr. Qu’s tests. The Commission was entitled to 

resolve the conflicting evidence in favor of a finding of 
33 SPANSION INC v. ITC

infringement. See Bio Tech. Gen. Corp. v. Genentech, Inc., 

267 F.3d 1325, 1330-31 (Fed. Cir. 2001) (“When scientific 

certainty is not available, and the scientific theories and 

evidence are within a reasonable range of difference of 

scientific opinion, resolution of such difference based on 

weight and credibility of evidence is the province of the 

trier of fact.”). 

In addition, Appellants contend that it was improper 

for the Commission to rely on Test 2 as independent 

evidence of infringement because Dr. Qu himself testified 

that he merely used the results of Test 2 to confirm the 

results of Test 1. However, the Commission specifically 

noted that “Dr. Qu clearly states that he believes the 

results of his second testing method show that the accused packages meet the claimed ‘movement’ limitation, 

and thus show infringement.” Final Determination at 50 

n.8. Given Dr. Qu’s testimony, it was not incorrect for the 

Commission to rely on Test 2 as independent evidence of 

infringement. 

Third, Appellants argue that Dr. Qu’s modeling required physical validation by Moirè testing. According to 

Appellants, the Commission’s infringement findings 

should be rejected because Moirè testing was done only on 

a subset of temperatures and thus Test 2 was not properly 

validated over the entire range of temperatures. However, Tessera’s burden to show infringement by a preponderance of the evidence does not require physical 

validation of all indirect evidence. See Alza Corp. v. 

Mylan Labs., Inc., 464 F.3d 1286, 1296 (Fed. Cir. 2006) 

(“The critical deficiency in the evidence presented by Alza 

was not that it was ‘indirect’ rather than ‘direct’ . . . .”). 

The Commission concluded that, based on the evidence, 

validation of Test 2 was not necessary. However, even if 

it were necessary, the Commission found that the Moirè 

testing did validate Test 2 over the entire temperature 
SPANSION INC v. ITC 34

range. Final Determination at 29. The Commission 

properly based this finding on evidence in the record, 

pointing out that Appellants’ own expert, Dr. Sitaraman, 

testified that the model is generally correct when the 

inputs to the model are correct and that Moirè testing on 

a limited sample can validate the overall modeling methodology. Final Determination at 23, 25-26. The Commission and ALJ also agreed that while some discrepancies 

were apparent in the results, the Moirè analysis generally 

correlated with the results of Test 2. Initial Determination at 67; Final Determination at 22-23. This court 

agrees that there was substantial evidence for the Commission’s finding that Dr. Qu’s Moirè testing properly 

validated the results of Test 2. 

2. Contributory Infringement 

Tessera admits that Appellants’ accused standalone 

packages cannot directly infringe the ’419 patent because 

the standalone packages are not mounted on printed 

circuit boards, as required by the claims. Thus, those 

accused packages can only infringe indirectly. In his 

Initial Determination, the ALJ found that Tessera waived 

any argument that the accused products indirectly infringe the asserted patents. Initial Determination at 69. 

On review, the Commission reversed the finding of waiver 

because the commission investigative attorney preserved 

the issue in his post-hearing brief. Final Determination

at 52. On the merits, the Commission found that Appellants contributed to direct infringement of the asserted 

claims of the ’419 patent under 35 U.S.C. § 271(c) by 

selling a component of the directly infringing devices. Id. 

“Under 35 U.S.C. § 271(c), a party who sells a component with knowledge that the component is especially 

designed for use in a patented invention, and is not a 

staple article of commerce suitable for substantial nonin-
35 SPANSION INC v. ITC

fringing use, is liable as a contributory infringer.” Wordtech Sys., Inc. v. Integrated Networks Solutions, Inc., 609 

F.3d 1308, 1316 (Fed. Cir. 2010). Thus, to prevail on 

contributory infringement in a Section 337 case, the 

complainant must show: (1) there is an act of direct 

infringement in violation of Section 337; (2) the accused 

device has no substantial non-infringing uses; and (3) the 

accused infringer imported, sold for importation, or sold 

after importation within the United States, the accused 

components that contributed to another’s direct infringement. See 19 U.S.C. § 1337(a)(1)(B); DSU Med. Corp. v. 

JMS Co., 471 F.3d 1293, 1303 (Fed. Cir. 2006). The 

nature of the accused device at issue may be important to 

the analysis of whether a substantial non-infringing use 

exists. See Ricoh Co., Ltd. v. Quanta Computer Inc., 550 

F.3d 1325, 1337 (Fed. Cir. 2008) (stating that an accused 

infringer “should not be permitted to escape liability as a 

contributory infringer merely by embedding [the infringing product] in a larger product with some additional, 

separable feature”). 

The Commission found that Tessera had shown all 

three elements necessary for a finding of contributory 

infringement. First, the Commission found that “the 

evidence shows that Motorola incorporates the accused 

devices into its products” and thus directly infringes the 

’419 patent. Final Determination at 53. Second, the 

Commission stated that “[t]here is no dispute that the 

accused products have been imported, sold for importation, or sold after importation in the United States by or 

on behalf [of] all of the Respondents.” Id. at 54-55. Third, 

the Commission found that Tessera successfully made a 

prima facie showing that the accused packages did not 

have any substantial non-infringing uses with evidence 

that Respondents instruct their customers to connect the 

accused packages to PCBs using solder. Id. at 55 (citing 
SPANSION INC v. ITC 36

Golden Blount, Inc. v. Robert H. Peterson Co., 438 F.3d 

1354, 1363 (Fed. Cir. 2006)). The Commission further 

found that Appellants did not successfully rebut this 

showing. Id. at 57-58. The Commission acknowledged 

Appellants’ arguments that the accused packages have 

substantial non-infringing uses because they can be 

mounted using underfill or sockets to restrict or prevent 

the claimed movement. Id. However, the Commission 

found that Appellants presented only a small amount of 

evidence showing that Appellants’ customers have actually used underfill or sockets for mounting accused packages and this was not enough to overcome Tessera’s prima 

facie case. Id. at 58. 

Appellants argue that each of these findings by the 

Commission is erroneous. First, Appellants argue that 

because Motorola subsequently signed a license agreement specifically authorizing use of the accused packages, 

this court must vacate all of the Commissions findings 

concerning the ’419 patent and the resulting orders as 

moot and remand to the ITC. This court does not agree. 

While the Commission’s decision specifically mentioned 

only Motorola by name, the Commission specifically 

considered evidence of direct infringement by additional 

customers. See, e.g., Final Determination at 55-58 (referring repeatedly to more than one customer when describing the evidence supporting the finding of contributory 

infringement). Additionally, as the ITC points out, to the 

extent Appellants believe the remedial orders should be 

modified to reflect changed circumstances, they can seek 

modification of the Commission order from the ITC. This 

court has also considered, but does not find persuasive, 

Appellants’ arguments that there was not substantial 

evidence on the record to show that Motorola directly 

infringed. 
37 SPANSION INC v. ITC

Second, Appellants argue that the evidence showed 

the accused products can be mounted onto a printed 

circuit board with either underfill or sockets, that such 

mounting is “common,” and that such uses are noninfringing. In particular, Qualcomm argues that the 

Commission disregarded its evidence of substantial noninfringing use based on a misreading of Ricoh. Qualcomm’s Principal Br. at 53. While the Commission did 

cite to Ricoh, it did so in the context of merely defining 

the scope of the accused device in order to determine 

whether substantial non-infringing uses exist. Final 

Determination at 56 (“The question here, therefore, is just 

what is the accused device in question and whether it 

alone, has any substantially non-infringing uses.”) The 

Commission then properly concluded that “with respect to 

the ’419 patent, the accused device must be the combination of a PCB and a face-up BGA package with at least 

one solder ball for mounting upon the PCB, where the 

BGA package is capable of exhibiting the claimed ‘movement.’” Id. at 57. Moreover, the Commission acknowledged Appellants’ evidence on this issue, but found that 

most of that evidence was in the form of general assertions that underfill and sockets were commonly used in 

the 1990s. Id. at 57-58. Noting that “[o]nly Qualcomm . . 

. has produced any evidence that its customers have 

actually used underfill in mounting Qualcomm’s accused 

chip packages,” the Commission found that “this evidence 

[wa]s not enough to overcome Tessera’s showing that the 

accused device, which consists of an accused BGA package, a PCB, and solder balls connecting the accused BGA 

package to the PCB, has no substantial non-infringing use 

in and of itself.” Id. at 58. This court agrees with the 

Commission that Tessera made a prima facie showing as 

to the absence of any substantial non-infringing uses and 

that Appellants’ evidence was insufficient to overcome 

that showing. See Golden Blount, 438 F.3d at 1363-64 
SPANSION INC v. ITC 38

(stating “it matters not that the assembled device can be 

manipulated into a non-infringing configuration, because 

the instructions packaged with each device teach the 

infringing configuration” and thus “[t]he burden of production then shifted to [the accused infringer] to introduce 

some evidence that end-users actually assembled the 

[accused devices] in a non-infringing way”). 

Third, STMicro argues that there is no evidence that 

any of its alleged acts of contributory infringement had 

the requisite connection with the United States because 

only 47 of the accused packages were sold or offered for 

sale in the United States by STMicro and those packages 

were purchased under a license from Tessera to STMicroelectronics, Inc. (“ST-Inc.”), STMicro’s domestic subsidiary. Final Determination at 55 n.11. However, both the 

Commission and the ALJ found that STMicro did not 

prove that any of its other accused products were covered 

by the Tessera license, that STMicro “admit[ted] that 14 

accused products, which were not sold through ST-Inc., 

have been imported into the United States in downstream 

products,” and that “Tessera has proven by a preponderance of the evidence that those products are incorporated 

into finished downstream products that are imported, sold 

for importation, or sold after importation into the United 

States.” Id.; Initial Determination at 109-10. This court 

agrees with the Commission that the record contained 

substantial evidence showing that STMicro sold for importation into the United States accused packages that 

contributed to direct infringement of the ’419 patent. 

Finally, Appellants assert that the Commission erred 

in finding contributory infringement without properly 

finding the requisite knowledge. The Commission addressed intent in the context of induced infringement 

under 35 U.S.C. § 271(b) and found that Tessera did not 

meet its burden to show that Appellants “had the neces-
39 SPANSION INC v. ITC

sary intent to support a finding of infringement by inducement.” Final Determination at 54. However, because 

license negotiations indicated that Appellants were aware 

of the ’419 patent, and Tessera successfully showed that 

the accused devices did not have any substantial noninfringing uses, the Commission presumed the requisite 

knowledge for contributory infringement. Id. This conclusion was not erroneous. See Metro-Goldwyn-Mayer 

Studios, Inc. v. Grokster, Ltd., 545 U.S. 913, 932 (2005) 

(“One who makes and sells articles which are only 

adapted to be used in a patented combination will be 

presumed to intend the natural consequences of his acts; 

he will be presumed to intend that they shall be used in 

the combination of the patent.” (internal quotation marks 

omitted)); Ricoh, 550 F.3d at 1343 (“Grokster recognized 

that providing instruction on how to engage in an infringing use ‘show[s] an affirmative intent that the product be 

used to infringe.’” (quoting Grokster, 545 U.S. at 936)); 

DSU, 471 F.3d at 1303 (“even beyond the minimal intent 

requirement for contributory infringement, ITL acted 

with the knowledge of the [asserted] patent . . .”). 

D. Anticipation 

Several Appellants appeal the Commission’s finding 

that two prior patents, U.S. Patent No. 5,241,133 (the 

“Mullen patent”) and the Lin patent, did not anticipate 

Tessera’s asserted claims. A patent may be found invalid 

as anticipated under 35 U.S.C. § 102(e) if “the invention 

was described in . . . a patent granted on an application 

for patent by another filed in the United States before the 

invention thereof by the applicant for patent.” A claim is 

anticipated when “the four corners of a single, prior art 

document describe every element of the claimed invention, either expressly or inherently, such that a person of 

ordinary skill in the art could practice the invention 

without undue experimentation.” Advanced Display Sys., 
SPANSION INC v. ITC 40

Inc. v. Kent State Univ., 212 F.3d 1272, 1282 (Fed. Cir. 

2000). A reference patent anticipates an invention under 

§ 102(e) only if the reference patent’s effective filing date 

is before the date of the invention. See In re Matthews, 

408 F.2d 1393 (CCPA 1969). 

Appellants argue that the Commission erroneously 

found that the inventions of the ’326 and ’419 patents 

were conceived in June 1990, several months before the 

Lin and Mullen patents were filed. “Conception is the 

formation in the mind of the inventor of a definite and 

permanent idea of the complete and operative invention, 

as it is therefore to be applied in practice.” Singh v. 

Brake, 317 F.3d 1334, 1340 (Fed. Cir. 2003) (internal 

quotation marks omitted). An idea is sufficiently definite 

for conception “when the inventor has a specific, settled 

idea, a particular solution to the problem at hand, not just 

a general goal or research plan he hopes to pursue.” 

Burroughs Wellcome Co. v. Barr Labs., Inc., 40 F.3d 1223, 

1228 (Fed. Cir. 1994). However, a finding of conception 

does not require perfection: conception is complete when 

“the idea is so clearly defined in the inventor’s mind that 

only ordinary skill would be necessary to reduce the 

invention to practice, without extensive research or 

experimentation.” Id. Because it is a mental act, an 

inventor’s oral testimony regarding conception must be 

corroborated by “evidence which shows that the inventor 

disclosed to others his completed thought expressed in 

such clear terms as to enable those skilled in the art to 

make the invention.” Coleman v. Dines, 754 F.2d 353, 359 

(Fed. Cir. 1985) (internal quotation marks omitted). 

Conception may be corroborated even if no single piece of 

evidence shows complete conception. Price v. Symsek, 988 

F.2d 1187, 1196 (Fed. Cir. 1993). Instead, all of the 

evidence of record must be collectively evaluated in determining when the invention was conceived. Id. The 
41 SPANSION INC v. ITC

issue of conception is a question of law based on underlying factual findings. Singh, 317 F.3d at 1340. Accordingly, this court reviews de novo the Commission’s legal 

conclusions with respect to conception, and reviews the 

underlying factual findings by the Commission for substantial evidence. Id. 

The ALJ found that neither the Mullen nor the Lin 

patent anticipated Tessera’s patents because they were 

not prior art under 35 U.S.C. § 102(e). The effective filing 

date of the Mullen patent was December 21, 1990 and 

that of the Lin patent was December 4, 1990. The ALJ 

determined that the date of invention accorded the asserted claims of the ’326 and ’419 patents was June 10, 

1990, several months prior to the filing dates of the 

Mullen and Lin patents. Initial Determination at 88-89. 

The ALJ based this determination partly on testimony by 

Dr. DiStefano, one of the inventors of the ’326 and ’419 

patents, stating that he and another inventor, Dr. Khandros, conceived the ideas included in the asserted claims 

in early June 1990. Id. at 73-74. The ALJ found that Dr. 

Bottoms, a non-inventor involved in the work of DiStefano 

and Khandros, corroborated DiStefano’s testimony. Id. at 

74. The ALJ also found that engineering notebook entries 

corroborated the testimony of Bottoms and DiStefano. 

Based on these factual findings, the ALJ concluded that 

“as of June 1990 inventors DiStefano and Khandros had 

conceived of the inventions embodied in the asserted 

claims of the ’326 and ’419 patents such that only ordinary skill would be necessary to reduce the invention to 

practice.” Id. at 77. The ALJ further found that DiStefano and Khandros acted with due diligence in reducing 

their conceived invention to practice from conception to 

the filing of the ’265 patent application, from which the 

’326 and ’419 patents claim priority. Id. at 78. 
SPANSION INC v. ITC 42

Appellants argue that the Commission erred in finding a June 1990 conception date for the asserted claims. 

Specifically, Appellants argue that the ALJ misinterpreted the testimony of DiStefano and Bottoms and the 

engineering notebooks. Appellants assert that conception 

of the asserted claims occurred no earlier than January 

1991─after the effective filing dates of the Mullen and Lin 

patents. First, Appellants argue that the testimony noted 

by the ALJ showed that the inventors had only a general 

goal or research plan that they hoped to pursue, not a 

specific settled idea. In addition, Appellants assert that 

several key aspects of the asserted claims were missing 

from the invention on June 1990. Next, Appellants argue 

that there was no evidence corroborating the testimony of 

DiStefano and Bottoms and that the ALJ erroneously 

focused on a single June 10, 1990, notebook entry that 

was simply an anomalous entry unrelated to conception of 

the asserted claims. Instead, Appellants assert that the 

notebooks demonstrate a “steady evolution of ideas concerning face-down chips from May 1990 until January 

1991.” STMicro’s Principal Br. at 59. 

This court is not persuaded by Appellants’ arguments 

that the Commission misconstrued the testimony and 

documentary evidence before it. The Initial Determination thoroughly describes the testimony of DiStefano and 

Bottoms and analyzes several entries of the engineering 

notebooks beginning in May 1990 and ending June 10, 

1990, detailing how they record the development of all 

aspects of the invention, including the face-up configuration of the chip. Id. at 75-76. The Commission credited 

inventor DiStefano’s trial testimony that the initial 

concept of a face-up chip assembly having the claimed 

elements was conceived in early June 1990. After a 

review of the record evidence in light of the proper legal 

standards, this court concludes that the Commission did 
43 SPANSION INC v. ITC

not err in finding a June 1990 conception date. Thus, this 

court affirms the Commission’s determination that the 

’326 and ’419 patents are not anticipated by the Mullen or 

Lin patents. 

E. Injunctive Relief 

Spansion argues that even if Appellants were liable 

for infringement, the Commission’s award of prospective 

injunctive relief should be vacated because the Commission failed to give meaningful consideration to the public 

interest consequences of the injunction. In particular, 

Spansion argues that the public interest inquiry in this 

context is similar to the traditional test for injunctive 

relief that district courts apply under eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388 (2006). According to 

Spansion, the Commission, in keeping with eBay, should 

have considered the following equitable factors: (1) the 

PTO rejected some of the asserted claims as unpatentable 

in the reexamination; and (2) Tessera could be made 

whole by damages because Tessera is simply a licensor 

and does not actually practice the invention. The ITC 

responds that the Commission properly considered the 

public interest factors prior to issuing the exclusion order 

and that eBay does not apply to Commission remedy 

determinations. 

This court reviews the Commission’s action in awarding injunctive relief as to whether it is arbitrary, capricious, an abuse of discretion, or otherwise not in 

accordance with law. See, e.g., Epistar Corp. v. Int’l Trade 

Comm’n, 566 F.3d 1321, 1333 (Fed. Cir. 2009). In this 

case, the Commission issued its limited exclusion order 

after finding that “there are no public health and safety 

concerns since Tessera has chosen not to seek exclusion of 

two-way radios imported for use by first responders.” 

Final Determination at 74. The Commission discussed 
SPANSION INC v. ITC 44

the statutorily mandated public interest factors of “competitive conditions in the United States economy, the 

production of like or directly competitive articles in the 

United States, and United States consumers” by stating 

that “there are multiple, licensed sources for semiconductor chips with minimized chip package size” and “there is 

no evidence that Tessera’s licensees would be unable to 

adequately supply the United States market if Respondents’ products were excluded.” Id. The Commission 

added that “the office action reflecting the rejection is not 

final. Such adverse office actions in the reexamination 

process are fairly routine and are not an indication that 

the patent claims are necessarily going to be finally 

rejected. Although a final rejection has been issued 

against the asserted claims of the ’419 patent and prosecution has been closed in that reexamination proceeding, 

it would be premature to give undue weight to the reexamination proceedings until or unless Tessera has exhausted its appeals.” Id. at 76. 

By statute, the Commission is required to issue an exclusion order upon the finding of a Section 337 violation 

absent a finding that the effects of one of the statutorilyenumerated public interest factors counsel otherwise. 19 

U.S.C. § 1337(d)(1) (“If the Commission determines, as a 

result of an investigation under this section, that there is 

a violation of this section, it shall direct that the articles 

concerned, imported by any person violating the provision 

of this section, be excluded from entry into the United 

States, unless, after considering the effect of such exclusion upon the public health and welfare, competitive 

conditions in the United States economy, the production 

of like or directly competitive articles in the United 

States, and United States consumers, it finds that such 

articles should not be excluded from entry.”) (emphases 

added). The enumerated public interest factors include: 
45 SPANSION INC v. ITC

(1) the public health and welfare; (2) competitive conditions in the United States economy; (3) the production of 

like or directly competitive articles in the United States; 

and (4) United States consumers. Id. 

The legislative history of the amendments to Section 

337 indicates that Congress intended injunctive relief to 

be the normal remedy for a Section 337 violation and that 

a showing of irreparable harm is not required to receive 

such injunctive relief. This is shown by two distinct 

actions of Congress. First, in passing the Tariff Act of 

1930, Pub. L. No. 71-361, 46 Stat. 590, Congress eliminated the monetary remedy for intellectual property 

import violations, representing a legislative determination that an injunction is the only available remedy for 

violations of Section 337. Second, in 1988, Congress 

amended Section 337 by passing the Omnibus Trade and 

Competitiveness Act of 1988, Pub. L. No. 100-418, 102 

Stat. 1107, explicitly removing the requirement of proof of 

injury to the domestic industry and making it unnecessary to show irreparable harm to the patentee in the case 

of infringement by importation. See H.R. Rep. No. 100-

576, at 633 (1988) (Conf. Rep.) (stating that the bill “removes the requirement to prove injury . . . with regard to 

certain intellectual property rights cases involving patents”); S. Rep. No. 100-71, at 128 (1987) (“The fundamental purpose of the amendments made by section 401 is to 

strengthen the effectiveness of section 337 in addressing 

the growing problems being faced by U.S. companies from 

the importation of articles which infringe U.S. intellectual 

property rights.”); id. at 129 (“The Committee does not 

intend that the ITC, in considering the public health and 

welfare, or the President, in reviewing the ITC’s determination on policy grounds, will reintroduce these requirements.”); accord H.R. Rep. 100-40 at 156 (1987). 
SPANSION INC v. ITC 46

As contrasted with the remedial scheme established 

by Congress for proceedings before the Commission, the 

statutory remedies available in proceedings before the 

district courts are quite different. In addition to the 

remedy of damages under 35 U.S.C. § 284, Congress gave 

district courts the discretion to grant injunctive relief and 

in doing so made explicit that such discretion is to be 

exercised “in accordance with the principles of equity . . . 

on such terms as the court deems reasonable.” 35 U.S.C. 

§ 283. In eBay, the Supreme Court explained that Section 

283 did not endorse or establish a categorical grant of 

injunctive relief following a determination of infringement. Rather, the decision whether to grant or deny 

injunctive relief under Section 283 depends on traditional 

principles of equity, applying the four-part test for permanent injunctive relief in patent disputes no less than in 

other cases governed by such standards. See eBay, 547 

U.S. at 391 (discussing the four-factor test for injunctive 

relief). 

Given the different statutory underpinnings for relief 

before the Commission in Section 337 actions and before 

the district courts in suits for patent infringement, this 

court holds that eBay does not apply to Commission 

remedy determinations under Section 337. The Commission is not required to apply the traditional four-factor 

test for injunctive relief used by district courts when 

deciding whether to issue the equitable remedy of a 

permanent injunction. Unlike the equitable concerns at 

issue in eBay, the Commission’s issuance of an exclusion 

order is based on the statutory criteria set forth in Section 

337. Spansion’s argument that the term “public welfare” 

is so “broad and inclusive” that Congress must have 

intended it to include the traditional equitable principles 

reflected in the eBay standard is unpersuasive when 

viewed in the context of Section 337. The scope of the 
47 SPANSION INC v. ITC

public interest factors recited in Section 337 is a matter of 

statutory interpretation not necessarily informed by the 

same principles of equity relevant to the grant of permanent injunctive relief under 35 U.S.C. § 283.

The difference between exclusion orders granted under Section 337 and injunctions granted under the Patent 

Act, 35 U.S.C. § 283, follows “the long-standing principle 

that importation is treated differently than domestic 

activity.” In the Matter of Certain Baseband Processor 

Chips and Chipsets, Transmitter and Receiver (Radio) 

Chips, Power Control Chips, and Products Containing 

Same, Including Cellular Telephone Handsets, Inv. No. 

337-TA-543, 2007 ITC Lexis 621, *102 n.230 (U.S.I.T.C. 

June 19, 2007) (citing United States v. 12 200-ft. Reels of 

Film, 413 U.S. 123, 125 (1973)). This is reflected in the 

fact that the Commission has found public interest considerations to outweigh the need for injunctive relief in 

protecting intellectual property rights found to have been 

violated under Section 337 in only three investigations, 

all of which were decided prior to the 1988 legislative 

amendment discussed above, which removed the requirement that a patentee show irreparable harm. See id., 

2007 ITC Lexis 621 at *220. Moreover, in those three 

cases, the exclusion order was denied because inadequate 

supply within the United States─by both the patentee 

and domestic licensees─meant that an exclusion order 

would deprive the public of products necessary for some 

important health or welfare need: energy efficient automobiles, basic scientific research, or hospital equipment. 

See In the Matter of Certain Fluidized Supporting Apparatus and Components, Inv. No. 337-TA-182/188, USITC 

Pub. 1667 (Oct. 1984); In the Matter of Inclined Field 

Acceleration Tubes and Components, Inv. Nos. 337-TA-60, 

USITC Pub. 1119 (Dec. 1980); In the Matter of Certain 
SPANSION INC v. ITC 48

Automatic Crankpin Grinders, Inv. No. 337-TA-60, 

USITC Pub. 1022 (Dec. 1979).

With respect to the ongoing PTO reexamination, such 

proceeding is not explicitly listed as a public interest 

factor in Section 337. The Commission nevertheless 

discussed the ongoing reexamination of the patents at 

issue in its Final Determination and again in response to 

Appellants motion for a stay. The Commission found that 

it would be premature to give dispositive weight to the 

PTO reexamination proceedings until all appeals had 

been exhausted. In re Certain Semiconductor Chips with 

Minimized Chip Package Size and Products Containing 

Same, No. 337-TA-605, slip op. at 11-12 (Int’l Trade 

Comm’n May 27, 2008). Thus, while it is not accurate to 

say that “the Commission gave the reexaminations no 

weight at all,” Spansion’s Reply Br. at 23, it was not 

erroneous for the Commission to omit any discussion of 

such issues from its analysis of the public interest factors 

when fashioning a remedy to Appellants’ violation of 

Section 337. 

Based on the foregoing, this court finds that the 

Commission provided a sufficient basis for issuance of the 

limited exclusion order and that its actions were not 

arbitrary, capricious, an abuse of discretion, or otherwise 

not in accordance with law. 

CONCLUSION

Because the Commission’s decision was supported by 

substantial evidence and contained no errors of law, this 

court affirms the Final Determination in all respects. 

AFFIRMED