N OTE : This disposition is nonprecedential. 

# United States Court of Appeals **for the Federal Circuit**

__________________________
MEMS TECHNOLOGY BERHAD, Appellant,

v.
INTERNATIONAL TRADE COMMISSION, Appellee,

and

KNOWLES ELECTRONICS LLC,

Intervenor.

__________________________

2010-1018

__________________________
On appeal from the United States International Trade Commission in Investigation No. 337-TA-629.

__________________________

Decided: June 3, 2011

__________________________

T HOMAS J. F ISHER , Oblon, Spivak, McClelland, Maier & Neustadt, L.L.P., of Alexandria, Virginia, argued for appellant. With him on the brief were R ICHARD D. K ELLY

, B ARRY J. H ERMAN , E RIC W. S CHWEIBENZ and R OBERT C.

N ISSEN

.MEMS TECH v. ITC 2

M ICHAEL L IBERMAN , Attorney, Office of the General Counsel, United States International Trade Commission, of Washington, DC, argued for appellee. With him on the
brief were J AMES M. L YONS , General Counsel, and

A NDREA C. C ASSON , Assistant General Counsel.

A LLAN J. S TENSTEIN , Dykema Gossett, PLLC, of Chicago, Illinois, argued for intervenor. With him on the
brief were T IMOTHY K. S ENDEK ; and D AVID L. P ATTERSON

, and W ILLIAM D. C RAMER , of Dallas, Texas.

__________________________

Before L OURIE , M AYER , and G AJARSA

, Circuit Judges

.
L OURIE

, Circuit Judge

. MEMS Technology Berhad (“MemsTech”) appealsfrom a final determination by the United States International Trade Commission that the importation and sale of certain silicon microphone packages violated § 337 of the Tariff Act of 1930 as amended, 19 U.S.C § 1337. TheCommission determined that MemsTech’s accused products infringe the asserted claims of U.S. Patents 7,242,089 and 6,781,231 (the “’089” and “’231” patents)

and that the asserted claims are not invalid under 35 U.S.C. § 102 or § 103 for anticipa tion or obviousness. We
affirm.

B ACKGROUND

Knowles Electronics LLC (“Knowles”) owns the ’089and ’231 patents, which pertain to microelectromechanical system (“MEMS”) packages comprising a substrate, a cover, and a microphone (also termed a transducer). ’089 patent col.1 ll.49-50; ’231 patent col.1 ll.40-41. MEMS microphone packages are used in a variety of consumer electronic devices, including mobile phones.MEMS TECH v. ITC 3

The ’089 patent discloses MEMS packages that allow acoustic energy to contact a transducer while protecting the transducer from light, el ectromagnetic radiation, and physical damage. ’089 patent col.1 ll.44-49. The MEMS packages of the ’089 patent include a volume defined by
the transducer and either the cover or the substrate. Asserted on appeal are claims 1, 2, 9, 15, 17, 20, 28, and

29. 1 Claim 1, the independent claim from which the other asserted claims depend, recites:

1. A surface mountable package for containing a transducer, the transducer being responsive tosound 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 th e 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;

1 Claim 10 of the ’089 patent was asserted in the investigation. The ALJ determined that this claim wasinvalid for failing to meet the written description requirement of 35 U.S.C. § 112. J.A. 206-07. The Commission determined not to review the ALJ’s finding, and Knowles does not appeal the invalidity of claim 10.MEMS TECH v. ITC 4

a volume being defined by the transducer and one of the first member or the second member, thevolume 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.

’089 patent col.11 ll.20-44 (emphases added). A crosssectional view of a preferred embodiment is shown in Figure 1, infra , which comprises a cover 20, a substrate 14, a transducer 12, and a back volume or air cavity 18.
Id. col.3 ll.36-43. The MEMS package depicted in Figure 1 also comprises an aperture 24 in the cover 20, which
allows external sound waves to reach the transducer in the package. Id. col.3 l.66–col.4 l.4.

The ’231 patent discloses MEMS packages that shield the microphone from an interference signal or an environmental condition. ’231 patent col.1 ll.38-39. Claims 1
and 2 are asserted. Claim 1 recites:

1. A microelectromechanical system package comprising:MEMS TECH v. ITC 5

a microelectromechanical system microphone;

a substrate comprising a surface for supporting the microelectromechanical microphone;

a cover comprising a conductive layer having acenter portion bounded by a peripheral edge portion; and

a housing formed by connecting the peripheraledge 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 systemmicrophone wherein the housing provides protection from an interference signal.

Id. col.5 ll.12-25 (emphasis added). Claim 2 recites:

2. A microelectromechanical system package for providing a shield from an interference signal, the microelectromechanical package comprising:

a silicon-based microphone;

a substrate including a surface at least partially covered by a first layer of a conductive material, the silicon-based microphone is electrically coupled to the layer of a conductive material;

a cover comprising a second layer of a conductive material, the cover electrically connected to the first layer of a conductive material and providing a chamber in which the silicon-based microphone is located, the chamber providing an acoustic front volume for the silicon-based microphone.

Id. col.5 ll.26-38 (emphases added). Figure 1, infra

, depicts a cross-sectional view of a preferred embodiment,MEMS TECH v. ITC 6

which comprises a cover 20, a substrate 14, and surfacemountable components 12 (one of which is a transducer).
Id. col.3 ll.17-24.

MemsTech imports MEMS microphone packages into the United States. On December 6, 2007, Knowles filed a complaint at the Commission alleging a violation of § 337 in the importation and sale of certain MEMS microphonepackages (the “accused products”) by reason of infringement of the asserted claims of the ’089 and ’231 patents. Knowles named MemsTech as the only respondent.

On January 3, 2008, the Commission instituted a § 337 investigation based on Knowles’ complaint. 73 Fed. Reg. 2,277, 2,278 (Jan. 14, 2008). In response to Knowles’ allegations, MemsTech asserted noninfringement and invalidity of the asserted cl aims. On January 12, 2009, the Administrative Law Judge (“ALJ”) issued his “Initial
Determination on Violation of Section 337 and Recommended Determination on Remedy and Bond.” In re Certain Silicone [sic] Microphone Packages & Prods. Containing Same , Inv. No. 337-TA-629, 2009 WL 389263(USITC Jan. 12, 2009) (hereinafter, “Initial Determination”).MEMS TECH v. ITC 7

With respect to the ’089 patent, the ALJ construed the term “electrically coupled” in claim 1 to mean “arranged so that electrical signals may be passed either directly, or indirectly via intervening circuitry, from one component
to another.” J.A. 70. The ALJ construed “volume” in claims 1, 15, and 28 to mean “a space defined by the
transducer and one of the fi rst member or the second
member.” J.A. 86. The ALJ determined that MemsTech’s accused products infringe claims 1, 2, 9, 15, 17, 20, 28, and 29 of the ’089 patent. 2 Regarding validity, the ALJ determined that U.S. Patent 6,522,762 (“Mullenborn”) does not anticipate claims 1, 2, 9, 15, 17, 28, and 29. TheALJ also determined that U.S. Patent 4,533,795 (“Baumhauer”), alone or in view of Kress, 3 does not render obvious claims 1, 2, 9, 15, 17, 20, 28, and 29. Finally, the ALJ
determined claim 1 was not obvious over U.S. Patent 5,459,368 (“Onishi”).

With respect to the ’231 patent, the ALJ construed the term “electrically coupled” in claim 2 to have the same meaning as in claim 1 of the ’089 patent. The ALJ also determined that the term “microelectromechanical system package” in the preambles of claims 1 and 2 is a claim
limitation. The ALJ determined that MemsTech’s accused products infringe claims 1 and 2 of the ’231 patent. Regarding validity, the ALJ found that Baumhauer does not anticipate claims 1 and 2. The ALJ also found that
Onishi does not render obvious claim 1 or 2.

The ALJ further considered whether, under § 337, “an industry in the United States, relating to the articles

2 The ALJ found that only certain types of MemsTech’s accused products infr inge claims 9 and 28 of the ’089 patent.

3 H.-J. Kress et al., Integrated Silicon Pressure Sensor for Automotive Applications with Electronic Trimming , SAE Document 950533 (1955). J.A. 1380-87.MEMS TECH v. ITC 8

protected by the patent, . . . exists or is in the process of being established.” 19 U.S. C. § 1337(a)(2) (2006). The
ALJ first noted that the Commission decided not to review his initial determination that Knowles satisfied the domestic industry requirement for the ’231 patent. The
ALJ then determined that Kn owles satisfied the domestic industry requirement for the ’089 patent because its “SiSonic” silicon microphone packages practice claim 1.

Based on the findings in his Initial Determination, the ALJ concluded that the importation or sale of the accused MemsTech products violated § 337. The ALJ
recommended that the Commission issue a limited exclusion order as to those Mems Tech products found to infringe the ’231 or ’089 patents. 4

The Commission determined to review portions of the ALJ’s Initial Determination and issued a notice specifying the issues under review. 74 Fed. Reg. 11,748 (Mar. 19,2009). The unreviewed portions of the Initial Determination became the decision of the Commission. J.A. 258; see also Ajinomoto Co. v. Int’l Trade Comm’n , 597 F.3d 1267, 1272 (Fed. Cir. 2010). On June 11, 2009, the Commission
issued a notice of its final determination of violation of § 337, and on June 12, 2009, the Commission issued an opinion setting forth the reasons for its determination. The Commission issued a revised opinion on August 18, 2009, and a corrected revised opinion on August 21, 2009.

The Commission affirmed the ALJ’s determinations under review, with certain modifications. Regarding the ’231 patent, the Commission, inter alia , affirmed the determination that MemsTech’s accused products infringeclaims 1 and 2; affirmed the determination that Baumhauer did not anticipate claims 1 and 2; and affirmed the

4 A disputed issue involving MemsTech’s “chamber chip” products is addressed infra

.MEMS TECH v. ITC 9

determination that Onishi did not render obvious claims 1
and 2.

Regarding the ’089 patent, the Commission, inter alia

, affirmed the construction of the claim term “electrically coupled”; affirmed the constr uction of the claim term “volume”; affirmed the determination that the accused products infringe the asserted claims of the ’089 patent;
affirmed the determinations that Mullenborn does not anticipate claims 1, 2, 9, 15, 17, 20, 28, and 29; affirmed the determinations that Baumhauer alone, Baumhauer in combination with Kress, and Onishi 5 did not render obvious claims 1, 2, 9, 15, 17, 20, 28, and 29; and affirmedthe determinations that Knowles’ SiSonic products practice the ’089 patent and that a domestic industry exists for this patent.

Accordingly, the Commission found a violation of § 337. The Commission’s determination became final following the sixty-day Presidential review period under 19 U.S.C. § 1337(j)(4). MemsTech appealed. We have jurisdiction under 28 U.S.C. § 1295(a)(6).

D ISCUSSION

We review the Commission’s final determinations under the standards of the Administrative Procedure Act (“APA” or “Act”). See 19 U.S.C. § 1337(c) (stating that “[a]ny person adversely affected by a final determination of the Commission” may appeal to this court “for review in accordance with chapter 7 of Title 5”). Under the Act, rulings of law are reviewed de novo , and findings of fact
are reviewed for substantial evidence. Ajinomoto , 597

5 The ALJ found that independent claim 1 of the ’089 patent was not obvious over Onishi. The Commission supplemented this finding with further findings that dependent claims 2, 9, 15, 17, 20, 28, and 29 were also not obvious over Onishi. J.A. 385.MEMS TECH v. ITC 10

F.3d at 1272; OSRAM GmbH v. Int’l Trade Comm’n , 505 F.3d 1351, 1355 (Fed. Cir. 2007). Substantial evidence is “‘such relevant evidence as a reasonable mind might accept as adequate to su pport a conclusion.’” Id. (quoting
Consol. Edison Co. v. NLRB , 305 U.S. 197, 217 (1938)).

I. Claim Construction

Claim construction is a matter of law subject to de

novo review. Cybor Corp. v. FAS Techs., Inc. , 138 F.3d 1448, 1454-55 (Fed. Cir. 1998) (e n banc). To ascertain the scope and meaning of the claims, we consider the claim language, the specification, the prosecution history, and
relevant extrinsic evidence. Phillips v. AWH Corp. , 415 F.3d 1303, 1314-17 (Fed. Cir. 2005) (en banc). “[A]bsentcontravening evidence from the specification or prosecution history, plain and unambiguous claim language controls the construction analysis.” DSW, Inc. v. Shoe Pavilion, Inc. , 537 F.3d 1342, 1347 (Fed. Cir. 2008). Extrinsic evidence “may be used only to help the court come to the proper understan ding of the claims; it may not be used to vary or contradict the claim language.” Vitronics Corp. v. Conceptronic, Inc. , 90 F.3d 1576, 1584 (Fed. Cir. 1996).

The doctrine of claim differentiation assists in determining whether a limitation in a dependent claim should be read into an independent claim. Liebel-Flarsheim Co. v. Medrad, Inc. , 358 F.3d 898, 910 (Fed. Cir. 2004) (“[W]here the limitation that is sought to be ‘read into’ an independent claim already appears in a dependent claim,
the doctrine of claim differenti ation is at its strongest.”). Moreover, an applicant’s statements during prosecution history may result in a disclaimer of claim scope; but any such remark must constitute “a sufficiently clear anddeliberate statement to meet the high standard for finding a disclaimer of claim scope.” Honeywell Int’l, Inc. v.MEMS TECH v. ITC 11

Universal Avionics Sys. Corp. , 493 F.3d 1358, 1365 (Fed. Cir. 2007).

“[A] preamble is a claim limitation if it recites essential structure or steps, or if it is necessary to give life, meaning, and vitality to the claim.” Poly-Am., L.P. v. GSE Lining Tech., Inc. , 383 F.3d 1303, 1309 (Fed. Cir. 2004) (internal quotation marks omitted). There is “[n]o litmus test” for determining whether a preamble limits claim scope; however, “when reciting additional structure or steps underscored as important by the specification, the preamble may operate as a claim limitation.” Catalina Marketing Int’l, Inc. v. Coolsavings.com, Inc. , 289 F.3d 801, 808 (Fed. Cir. 2002). “The effect preamble language should be given can be resolved only on review of the entirety of the patent to gain an understanding of what the inventors actually invented and intended to encompass by the claim.” Corning Glass Works v. Sumitomo Elec. U.S.A., Inc. , 868 F.2d 1251, 1257 (Fed. Cir. 1989).

A. The ’089 Patent

1. “Volume”

Regarding the ’089 patent, MemsTech appeals the
Commission’s determination that “volume” in claim 1 of the ’089 patent means “a space defined by the transducer
and one of the first member or the second member.” J.A. 86. Relying on C.R. Bard, Inc. v. U.S. Surgical Corp. , 388 F.3d 858 (Fed. Cir. 2004), Me msTech argues that the
Commission’s claim construction of the term “volume” is erroneous, because the abstract and summary sections of the specification require that the “volume” is formed from

a recess or hole in the su bstrate over which the transducer is mounted. MemsTech further contends that the
Commission’s reliance on the doctrine of claim differentiation in its construction of the term “volume” was mis-MEMS TECH v. ITC 12

placed, because the language in dependent claim 3, which
adds a limitation that the volume includes a recess formed in the surface, is narrower than the “volume” of independent claim 1, which encompasses a recess, hole, or cavity in the substrate. MemsTech asserts that the proper construction of “volume” is “a space that resides at least partly within (for example in a recess or hole in) the substrate (second member) or the cover (first member)and is at least partly bounded by the transducer.” Nonconfidential Br. Appellant MEMS Technology Berhad 24,2010 WL 1807466 (Mar. 25, 2010) (hereinafter, “Appellant’s Br.”).

In response, the Commission and Knowles argue that the Commission correctly construed the term “volume.” They assert that MemsTech’s proposed construction would add a limitation not present in claim 1 and wouldexclude certain embodiments described in the specification. They contend that C.R. Bard does not compel MemsTech’s proposed claim construction because, unlike in
C.R. Bard , the embodiments disclosed in the ’089 patentdo not universally contain the additional limitation proposed by MemsTech. The Commission and Knowles alsopoint out that the doctrine of claim differentiation supports the Commission’s construction, because dependentclaims 3 and 4 further limit claim 1 by specifying particular methods of forming the volume.

We agree with the Commission and Knowles that the Commission correctly construed the term “volume.” As the Commission noted, the specification discloses some
embodiments in which the “volume” is not formed from a recess or hole in the substrate. For example, in describing Figure 23, the specification states that “[t]he transducer back volume 18 is formed by the back hole (mounted down) of the silicon microphon e only.” ’089 patent col.6 ll.59-60. Further, Figure 28 shows a transducer 58MEMS TECH v. ITC 13

mounted on a substrate 46 using epoxy 86 and a retaining ring 84; the transducer is sh aped such that it creates a
volume between it and the substrate to which it is attached, notwithstanding that substrate does not contain any recess or hole. Id. col.7 ll.29-51, Fi g. 28. In other words, in both of these embodiments, a volume is created by the shape of the transducer, not by any recess or hole
in the substrate. We have cautioned that “a construction that excludes a preferred embo diment ‘is rarely, if ever,
correct.’” C.R. Bard , 388 F.3d at 865 (quoting Vitronics

, 90 F.3d at 1583). MemsTech does not dispute that itsproposed construction would exclude particular embodiments from the specification, nor does it offer any justification for this exclusion. The Commission’s constructionof the term “volume” comports with both the claim language and the breadth of the specification, neither of which supports the additional limitations that MemsTech

urges.

The Commission’s construction of “volume” is further supported by the doctrine of claim differentiation. See Phillips , 415 F.3d at 1315. Claim 3, which depends from claim 1, adds the limitation “the volume includine [sic] arecess formed in the surface.” Claim 4, which also depends from claim 1, adds the limitation “the volume including a hole through one of the first member or thesecond member containing the surface.” Under MemsTech’s proposed claim construction, which would effectively limit the “volume” of claim 1 to embodiments including a recess or hole in the substrate, dependentclaims 3 and 4 are essentially redundant. Such a construction is disfavored, Liebel-Flarsheim , 358 F.3d at 910,particularly where, as here, the construction would without justification exclude embodiments in the specification.
We therefore decline to ado pt MemsTech’s proposed claim
construction of the term “volume.”MEMS TECH v. ITC 14

MemsTech misreads C.R. Bard in arguing that claim 1 must be limited to a scope commensurate with the abstract or summary sections of the specification. In that case, we addressed the question whether the claimed “plug” should be construed as having a “pleated surface.” In answering in the affirmative, we noted that both theabstract and summary sections of the specification described the plug as having a pleated surface. C.R. Bard

, 388 F.3d at 860-61. MemsTech seizes on that aspect of the case and argues that the abstract and summarysections of the ’089 patent are dispositive as to the meaning of “volume.” Yet MemsTech overlooks the fact that, in
C.R. Bard , we noted that “statements [in the specification] describing preferred embodiments of the surface of the plug universally describe a ‘pleated conical plug.’” Id. at 866 (emphasis added). Here , in contrast, the general language in the abstract and summary sections does notrepresent the full scope of the embodiments in the specification.

2. “Electrically Coupled”

MemsTech also appeals the Commission’s determination that “electrically coupled” in claim 1 of the ’089 patent means “arranged so that electrical signals may bepassed either directly, or indirectly via intervening circuitry, from one component to another.” MemsTechargues that none of the parties proposed the Commission’s construction and that the Commission legally erred by adopting its construction from a district court opinion
that construed a similar claim term in an unrelatedpatent. MemsTech also contends that, during prosecution, the applicant distinguished prior art U.S. Patent 5,101,543 (“Cote”) on the basis that the invention claimed in the application leading to the ’089 patent requires a
direct electrical connection, and that the patent examiner’s reasons for allowance and the testimony of Mem-MEMS TECH v. ITC 15

sTech’s expert further support this limitation. MemsTech further asserts that the specification of the ’089 patent discloses only a direct electrical connection between the transducer and the substrate. Thus, MemsTech argues, the Commission erred by ignoring the intrinsic evidence and construing “electrically coupled” to include the indirect passage of electrical signals via intervening circuitry.The correct construction of “electrically coupled,” MemsTech contends, is “the transducer is directly connected tothe patterned conductive layer on the substrate.” Appellant’s Br. 30.

The Commission and Knowles disagree. They argue that, given the lack of a special meaning for “electricallycoupled” in the claim language or specification, the Commission correctly construed this term in accordance with its plain and ordinary meaning. They contend that it was not improper for the Commission to adopt a construction that the parties did not propose. They further contendthat the prosecution history does not contradict the construction by limiting the term to a direct electrical connection.

We agree with the Commissi on and Knowles, and we
affirm the Commission’s construction of the term “electrically coupled” in claim 1 of the ’089 patent. Expert testimony indicates that the ordinary meaning of this term “is quite broad and includes indirect modes [of electrical connection].” J.A. 3461. MemsTech has failed to rebutthe “heavy presumption” in favor of this ordinary meaning as understood by one of ordinary skill in the art. Bell Atl. Network Servs., Inc. v. Covad Commc’ns Grp., Inc.

, 262 F.3d 1258, 1268 (Fed. Cir. 2001). Nowhere in the specification is the claimed electrical coupling describedas “direct,” and nothing in the claim language or specification suggests that “electrically coupled” should haveMEMS TECH v. ITC 16

any interpretation other than its plain meaning. See
DSW , 537 F.3d at 1347.

MemsTech relies on the testimony of its expert, who stated that “flip chip bump bonding, the preferred method of electrical coupling” disclosed in the ’089 patent, would
result in a “direct connection” between the transducer and the substrate. J.A. 2061; see also ’089 patent col.3, ll.61- 63. Yet MemsTech offers no rationale why one of ordinary skill would understand “electrically coupled” as limited to this preferred method. MemsTech has not demonstrated that one of ordinary skill wo uld understand the specification to “reveal an intentional disclaimer, or disavowal, of claim scope” or to provide a “special definition” for this

term. Phillips , 415 F.3d at 1316. It is not dispositive that the specification may describe or depict one or more preferred embodiments; as we noted in Phillips , “althoughthe specification often describes very specific embodiments of the invention, we have repeatedly warned against confining the claims to those embodiments.” Id.

at 1323.

Regarding the prosecution history of the ’089 patent,the Commission did not err by concluding that the applicant’s arguments do not limit the “electrically coupled”

claim term to a direct electrical connection. MemsTech refers to the portion of the prosecution history in which the applicant distinguished the claimed invention from
Cote:

The electret transducer taught by Cote is not
mounted or attached to a surface formed on one of [the] first and second members. Instead, Cote teaches an electret microphone that mounts to an upper rim portion of a base (col. 3, line 30) and an annular shoulder of a cap (col. 3, line 58). Thus,
Cote does not teach the claimed structure whereinMEMS TECH v. ITC 17

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 leastone patterned conductive layer formed on the surface to which it is attached. In fact, Cote fails toteach or suggest the formation of a patterned conductive layer associated with any part of the described electret microphone.

J.A. 1705-06. MemsTech characterizes the applicant’s argument as an attempt to distinguish Cote as lacking adirect electrical connection. As the above passage demonstrates, however, the applicant distinguished Cote based
on the fact that Cote’s transducer is not attached to a surface of one of the first member or the second member,as claim 1 requires. As the Commission correctly determined, the sentence in the applicant’s remarks referring to the “electrical connection” merely states that Cote

cannot teach the electrical connection between the transducer and the patterned conductive layer formed on the surface to which it is attached , because Cote does not
teach that the transducer is mounted to a surface. In sum, the disputed prosecution history does not contain a “clear and deliberate statement” that meets the high standard for a disclaimer of claim scope. Honeywell , 493F.3d at 1365. In addition, we are not persuaded by MemsTech’s arguments regarding the patent examiner’s stated reasons for allowance, J.A. 1865, and the testimony of its expert, J.A. 2129, which simply reiterate MemsTech’s mischaracterization of the prosecution history.

Having determined that the plain and ordinary meaning of the “electrically coupled” claim term should apply,MEMS TECH v. ITC 18

the Commission considered relevant extrinsic evidence—in the form of two district court opinions—to aid in construction of this term. MemsTech contends this was error. We disagree. Related judicial holdings can be an appropriate form of non-bind ing extrinsic evidence in a claim construction analysis. V-Formation, Inc. v. Benetton Group SpA , 401 F.3d 1307, 1312 (Fed. Cir. 2005)(“The district court properly referred to a related, nonbinding judicial opinion to support its independent conclusion in this case.”). Importantly, the Commission turned to the extrinsic evidence only after concluding that the intrinsic evidence did not provide any special meaningfor the disputed claim term. And the Commission thereafter in construing the term adhered to the rule that extrinsic evidence may not be used to vary or contradict the claim language. Vitronics , 90 F.3d at 1584. The two judicial opinions the ALJ reviewed construed the term “electrically coupled” according to its plain and ordinary meaning; the constructions applied in those cases did not rely upon the intrinsic evidence, and MemsTech does not argue otherwise. See Silicon Graphics, Inc. v. n Vidia Corp. , 58 F. Supp. 2d 331, 345-46 (D. Del. 1999) (applying the “ordinary and accustomed meaning” of the term “coupled” as used in an el ectronics context, because “[n]either the claim nor the specification defines the term”); GSK Techs. Inc. v. Eaton Elec. Inc. , Nos. 606CV358, 606CV360, 606CV361 , 2008 WL 906713, at *5 (E.D. Tex. Apr. 1, 2008) (“As the intrinsic evidence does not provide a special meaning for ‘electrically coupled,’ its plain and ordinary meaning applies.”).

Finally, the fact that neither party advanced the claim construction adopted by the Commission is not legal error, as MemsTech contends. As we stated in Exxon Chemical Patents, Inc. v. Lubrizol Corp. , “the trial judge has an independent obligation to determine the meaningMEMS TECH v. ITC 19

of the claims, notwithstandin g the views asserted by the adversary parties.” 64 F.3d 1553, 1555 (Fed. Cir. 1995).
We therefore conclude that the Commission’s construction of the claim term “electrically coupled,” as used in claim 1 of the ’089 patent, is correct.

B. The ’231 Patent

1. Claim Preambles

Regarding the ’231 patent, MemsTech appeals the Commission’s determination on the limiting effect of the preambles of claims 1 and 2. MemsTech argues that “microelectromechanical system package” is not necessary to give meaning to claims 1 and 2 of the ’231 patent, because it adds nothing beyond the elements already present in the claims. MemsTech thus contends that,contrary to the Commission’s determination, the preambles should not be construed as claim limitations.

In response, the Commission and Knowles argue that the Commission correctly found that the preambles inquestion are limitations. They contend that the Commission properly considered the intrinsic and extrinsic evidence and correctly conclude d that the “package” term

adds a limitation not otherwis e present in the claim body.

We conclude that the Commission correctly determined that the disputed preambles are claim limitations.“[W]hen the preamble is essential to understand limitations or terms in the claim body, the preamble limits claim scope.” Catalina Marketing , 289 F.3d at 808. The body of claim 1 lists a microph one, a substrate, a cover, and a housing formed by connecting the cover and the substrate. The body of claim 2 lists a microphone, a substrate, and a cover. As the Commission correctly concluded, J.A. 49, the specification describes mounting the MEMS “packages” of the invention on end-users’MEMS TECH v. ITC 20

printed circuit boards (“PCBs”), ’231 patent col.3 ll.3-16. Indeed, the essence of the invention claimed in the ’231patent is the containment of the components in a “package.” See, e.g. , ’231 patent title (“Microelectromechanical System Package with Environmental and Interference Shield” (emphasis added)); col. 1 ll.8-12, 36-41; col.3 ll.3-4; col.4 ll.40-43; col.5 ll.2-5. The requirement that the components listed in the claim bo dy come together to form a mountable package is thus an “important characteristic
of the claimed invention.” Poly-Am. , 383 F.3d at 1310. Yet, standing alone, the bodies of claims 1 and 2 do not require that the listed components come together in thisway to constitute a package. For this reason, the Commission determined that the preamble term “microelectromechanical system package” adds a limitation that is not otherwise present in the claim and is necessary to give meaning to the claim. See Catalina Marketing , 289 F.3d at 808. The Commission did not legally err in its
determination.

2. “Electrically Coupled”

The Commission construed the term “electrically coupled” in claim 2 of the ’231 patent to have the same meaning as in claim 1 of the ’089 patent, described supra . In opposing Commerce’s construction, MemsTech repeatsarguments it made for the ’089 patent. MemsTech argues, in particular, that th e specification of the ’231 patent, like that of the ’089 patent, discloses only direct electrical connections, and therefore the construction of “electrically coupled” shou ld be so limited.

The Commission and Knowles argue, as they did for the ’089 patent, that the specification does not provideany special meaning for “electrically coupled,” and therefore its plain and ordinary meaning should apply. Knowles also argues (and MemsTech does not attempt toMEMS TECH v. ITC 21

rebut) that the two asserted patents do not share a prosecution history, and thus that MemsTech’s arguments regarding the prosecution history of the ’089 patent do not apply to the ’231 patent.

We agree with the Commission and Knowles. We discussed above in connection with the ’089 patent why the
Commission did not err in its construction of the term “electrically coupled.” Nowhere in the specification of the ’231 patent is the claimed electrical coupling described as“direct,” and nothing in the claim language or specification suggests that “electrically coupled” should have any interpretation other than its plain meaning. See DSW

, 537 F.3d at 1347. MemsTech advances no additional arguments for the ’231 patent beyond those it presented for the ’089 patent. Moreover , its position here is even weaker because it does not argue that the prosecution history of the ’089 patent is relevant to the construction ofthis claim term in the ’231 patent. We perceive no material difference between the specifications or claims of these two patents that would warrant different treatmentof the same “electrically coupled” claim term. We therefore conclude that the Commission did not err in construing “electrically coupled” in claim 2 of the ’231 patent.

II. Infringement

On appeal, MemsTech does not dispute that under the Commission’s constructions of the disputed claim termsits accused products infringe the asserted claims. Because we affirm the Commission’s claim constructions, we
likewise affirm the determination that MemsTech’s accused products infringe the asserted claims of the ’089 and ’231 patents. 6

6 We address MemsTech’s “chamber chip” products below.MEMS TECH v. ITC 22

III. Validity

A United States patent is presumed valid under 35 U.S.C. § 282, and a party asse rting invalidity as a defenseto infringement must present clear and convincing evidence that the patent is invalid. Metabolite Labs., Inc. v. Lab. Corp. of Am. Holdings , 370 F.3d 1354, 1365 (Fed. Cir. 2004). A claim is invalid under § 102 if a prior artdocument discloses every element of the claimed invention, either expressly or inherently. Adv. Display Sys.,
Inc. v. Kent State Univ. , 212 F.3d 1272, 1282 (Fed. Cir. 2000). Anticipation under 35 U.S. C. § 102 is a question of fact, which we review fo r substantial evidence. Vizio, Inc.
v. Int’l Trade Comm’n , 605 F.3d 1330, 1342 (Fed. Cir. 2010).

A claim is invalid for obviousn ess if, to one of ordinary skill in the pertinent art, “the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been
obvious at the time the invention was made.” 35 U.S.C. § 103(a) (2006); see also KSR Int’l Co. v. Teleflex Inc. , 550 U.S. 398, 406-07 (2007). “Obviousness is a question of law based on underlying factual inquiries, and thus we review
the Commission’s ultimate determination de novo and
factual determinations for substantial evidence.” Vizio

, 605 F.3d at 1342. Underlying factual inquiries in the obviousness analysis include: (1) the scope and content of the prior art; (2) the level of ordinary skill in the art; (3) the differences between the prior art and the claimed invention; and (4) the extent of any objective indicia of

nonobviousness. Crocs, Inc. v. Int’l Trade Comm’n , 598 F.3d 1294, 1308 (Fed. Cir. 2010).MEMS TECH v. ITC 23

A. The ’089 Patent

1. Anticipation

MemsTech appeals the Commission’s determination that claims 1, 2, 9, 15, 17, 28, and 29 of the ’089 patentare not invalid under § 102 for anticipation by Mullenborn. MemsTech argues that Figure 4 of Mullenborn discloses every limitation in claim 1 of the ’089 patent.MemsTech contends that the Commission erred by disregarding the testimony of Knowles’ expert and finding that
Mullenborn does not disclose a “chamber” as claimed in claim 1. Regarding claim 2, MemsTech asserts that the Commission erred by concluding that Mullenborn does not disclose a cover coupled to the substrate. Regarding claims 9, 15, 17, 28, and 29, MemsTech argues that the parties agreed that Mullenborn discloses each additional limitation of these dependent claims.

The Commission and Knowles respond that the Commission correctly determined that Mullenborn does not anticipate claim 1, and that its conclusion is supported by substantial evidence—both intrinsic (the language of claim 1) and extrinsic (the dictionary definition of theterm “chamber”). They contend that MemsTech mischaracterizes the testimony of Knowles’ expert. They argue that the Commission’s construction of claim 2 is similarly supported by intrinsic and extrinsic evidence. Regarding claims 9, 15, 17, 28, and 29, the Commission and Knowles argue that, because Mullenborn does not anticipate claim 1, Mullenborn cannot as a matter of law anticipate claims that depend from claim 1.

We agree with the Commission and Knowles that substantial evidence support s the Commission’s finding that Mullenborn does not anticipate claim 1 or asserted dependent claims 2, 9, 15, 17, 28, or 29. Regarding claim 1, the Commission considered the limitation that theMEMS TECH v. ITC 24

package comprises “a chamber being defined by the first member and the second member.” Neither party argued that “chamber” carried any special meaning in the context of the ’089 patent, and the Commission did not err by applying the term’s ordinary meaning, “a room or a natural or artificial enclosed space or cavity.” J.A. 113 (quoting Webster’s New Collegiate Dictionary 183 (1979)); see also Phillips , 415 F.3d at 1314 (“In some cases, the ordinary meaning of claim language as understood by a person of skill in the art may be readily apparent even to lay judges, and claim constructi on in such cases involves little more than the application of the widely acceptedmeaning of commonly understood words. In such circumstances, general purpose dictionaries may be helpful.” (citation omitted)).

The Commission further found that Figure 4 of Mullenborn (depicted infra ) contains, inter alia , a lid 5, a transducer 1, a substrate 2, and an EMI shield 16. The Commission determined that, contrary to MemsTech’s arguments, substrate 2 and lid 5 do not form a “chamber.”

Figure 4MEMS TECH v. ITC 25

The Commission’s finding is supported by substantial evidence, including the disclosure in Mullenborn, the language of claim 1, and the ordinary meaning of the term “chamber.” As the Commission correctly found, and as Knowles’ expert explained, J.A. 1180-81, lid 5 and substrate 2 do not by themselves define a chamber; rather, in order to form an enclosed chamber, a third element ( e.g. , the EMI shield 16) would be required to enclose the sides of such chamber. Substantial evidence thus supports the finding that Mullenborn does not teach the limitation of claim 1 requiring a chamber that is defined by the two specified members.

The Commission did not erroneously disregard certain testimony of Knowles’ expert , as MemsTech contends. MemsTech unfairly characterizes that testimony as stating that all MEMS microphone packages would have a chamber. In fact, the focus of that testimony was the meaning of the claim term “volume.” J.A. 2227. At no point did Knowles’ expert state that all MEMS microphone packages would have a chamber defined by the first and second members, as claim 1 requires. The testimony thus does not contradict the Commission’s finding that Mullenborn does not disclose the “chamber” as claimed in claim 1 of the ’089 patent.

Regarding claim 2, substantial evidence supports the Commission’s finding that Mullenborn does not disclose “a cover coupled to the substrate to define the chamber.”Neither party argued that “coupled” has a special meaning in the context of the ’089 patent, and the Commission properly applied this term’s plain and ordinary meaning, “fastened together.” J.A. 115 (quoting Webster’s New Collegiate Dictionary 258 (1979)); see also Phillips , 415 F.3d at 1314. As the Commission correctly found, the lid 5 and substrate 2 are at opposite ends of the structureMEMS TECH v. ITC 26

depicted in Figure 4 of Mullenborn; they are not coupled or fastened together to form a chamber.

Regarding the remaining asserted claims of the ’089 patent, all of which depend from independent claim 1,MemsTech argues only that, because claim 1 is unpatentable, so too are the asserted dependent claims. However, because substantial evidence supports the findingthat Mullenborn does not anticipate claim 1, this reference also cannot anticipate asserted dependent claims 2, 9, 15, 17, 28, or 29, which depend from claim 1 and contain all the limitations of claim 1. See Hartness Int’l, Inc. v. Simplimatic Eng’g Co. , 819 F.2d 1100, 1108 (Fed. Cir. 1987).

2. Obviousness

MemsTech challenges the Commission’s determinations that the asserted claims of the ’089 patent were not obvious over either (1) Baumhauer alone or in view of Kress; or (2) Onishi alone. MemsTech alleges error inspecific aspects of the Commission’s obviousness determinations, which we address in turn below.

a. Baumhauer Alone or In View of Kress

Regarding Baumhauer, MemsTech argues that, even if the preamble of claim 1 is limiting, Baumhauer’s Figure 6 teaches that surface mounting is an option, and Kress shows that surface mounting would have been an obvious modification to one of ordinary skill. MemsTech further contends that dependent claims 2, 9, 15, 17, 20, 28, and 29 were also obvious over Baumhauer (with or withoutKress), because these claims add no nonobvious limitations to claim 1.

The Commission and Knowles argue in response that the Commission correctly found that Baumhauer does not teach a mountable package, as the preamble of claim 1MEMS TECH v. ITC 27

requires. Moreover, they co ntend, Kress teaches packaging only in the context of automotive silicon pressure sensors, not as applied to surface mountable packages formicrophones. They argue that MemsTech failed to provide clear and convincing evidence of a reason why one of ordinary skill would combine Baumhauer with Kress to create the invention claimed in the ’089 patent. They further contend that because claim 1 was nonobvious, claims 2, 9, 15, 17, 20, and 28, which depend from claim 1,
were also nonobvious.

We agree with the Commission and Knowles. Baumhauer does not teach a “surface mountable package.” As the Commission found, Baumhauer Figure 6 discloses a microphone attached directly to a circuit board, not a unit with components that come together to form a mountable package. J.A. 382-83. The te stimony of Knowles’ expert provides substantial supporting evidence. J.A. 1129 (“Baumhauer Figure 6 is an example of attaching themicrophone 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.”).

Kress does not cure the defi ciencies of Baumhauer. Titled “Integrated Silicon Pressure Sensor for Automotive Application with Electronic Trimming,” Kress mentions packaging only briefly, and does so in the context of pressure sensors for automobiles—not surface mountablepackages for microphones. J.A. 1386-87. The Commission correctly found that Kress lacked detail sufficient to permit one of ordinary skill to adapt it to an acoustic MEMS package. J.A. 167-68. The expert testimony indicated that “packaging design is device and application specific.” J.A. 1126. The Commission did not err in determining that MemsTech failed to present clear and convincing evidence that Baumhauer, alone or in view ofMEMS TECH v. ITC 28

Kress, rendered claim 1 obvious. Because independent
claim 1 was not obvious over Baumhauer alone or in view of Kress, the Commission correctly determined that dependent claims 2, 9, 15, 17, 20, 28, and 29 were also not
obvious. See Hartness , 819 F.2d at 1108.

b. Onishi

Regarding Onishi, MemsTech argues that, although Onishi does not disclose an aperture as claim 1 requires, the addition of an aperture to the device depicted inOnishi’s Figure 1 would have been an obvious modification. MemsTech also argues that the Commission erred because Onishi does not teach away from including an aperture and does not teach a transducer mounted on a
substrate. MemsTech contends that the Commission failed to recognize the ability of a person of ordinary skill to modify Onishi to arrive at the invention claimed in the ’089 patent. Finally, MemsTech contends that dependent claims 2, 9, 15, 17, 20, 28, and 29 add no limitations that render these claims patentable over Onishi.

The Commission and Knowles argue that substantial evidence supports the Commission’s findings regarding the differences between the device taught in Onishi and the invention claimed in the ’089 patent. They also argue that substantial evidence supports the Commission’sfinding that Onishi teaches away from the claimed invention. They further contend that expert testimony indicates that one of ordinary skill would not have modified Onishi to make the invention claimed in the ’089 patent.

Again, we agree with the Commission and Knowles. As its title indicates, Onishi discloses a “Surface Acoustic Wave Device” (“SAW device”), not a MEMS microphone package. Knowles’ expert testified that a SAW device is designed to detect surface vibrations, not sound waves. J.A. 1147-48. Onishi does not contain a “transducer beingMEMS TECH v. ITC 29

responsive to sound pressure le vels of an acoustic signal,” as claim 1 requires, and the expert testimony indicates that modifying the Onishi device to incorporate such a microphone would cause “serious problems.” J.A. 2476.

Expert testimony also supports the finding that SAW devices do not contain acoustic ports because external
sound waves are unwanted “‘noise’ that must be filtered
out.” J.A. 1148. Consistent with this testimony, Onishi expressly teaches away from cr eating an aperture, as the Commission correctly found. See In re Gurley , 27 F.3d 551, 553 (Fed. Cir. 1994) (“A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following thepath set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.”). Throughout the specification Onishi describes its SAW device as “sealed in an airtight condition,” thus teaching away from incorporating an aperture.

MemsTech failed to provide clear and convincing evidence that one of ordinary skill would have modified
Onishi to arrive at the invention in claim 1 of the ’089 patent. Moreover, because claim 1 was nonobvious over Onishi, so too were claims 2, 9, 15, 17, 20, 28, and 29, which depend from claim 1. See Hartness , 819 F.2d at 1108. Thus, the Commission did not err in determining
that these claims were no nobvious over Onishi.

B. The ’231 Patent

1. Anticipation

MemsTech argues that Baumhauer anticipates claims 1 and 2 of the ’231 patent. MemsTech asserts that, for invalidity purposes, the Commission applied a narrow definition of “microelectromechanical system package” by requiring that a package be capable of two levels of elec-MEMS TECH v. ITC 30

trical connection—one from the device to the package, and one from the package to an external circuit or othersystem. In contrast, according to MemsTech, the Commission applied a broader definition of this claim term for infringement purposes.

The Commission and Knowles argue in response that the Commission consistently applied its construction of “microelectromechanical system package,” which requires
two levels of electrical connect ion. They argue that this definition is supported by substantial evidence and that the Commission did not err in its application.

We agree with the Commission and Knowles. In concluding that the term “microelectromechanical system package” in the preamble of claims 1 and 2 of the ’231 patent was a limitation, the Commission found, based on substantial evidence in the form of testimony from Knowles’ expert, that “one of ordinary skill in the art would know that a ‘package’ is a self-contained unit that has two levels of connection, to the device and to a circuit (or other system). If there is only one connection level, then there is no package.” J.A. 49; see also J.A. 3420. The Commission applied this finding in its infringement determination, which referenced the testimony of Knowles’ expert. J.A. 212, 217; see also J.A. 3426, 3420.

The Commission also applied this finding in its determination that Baumhauer did not anticipate claims 1 or 2, because it does not di sclose a MEMS “package.” The Commission cited the testimony of Knowles’ expert, who agreed that Baumhauer cannot anticipate the claims of the ’231 patent because it does not disclose first and
second levels of electrical connection. J.A. 377-78 (citing J.A. 2470); see also J.A. 1129, 3420. We therefore reject MemsTech’s argument and conclude that the Commission consistently applied its definition of “microelectrome-MEMS TECH v. ITC 31

chanical system package” in concluding that Baumhauer did not anticipate claims 1 or 2 of the ’231 patent.

2. Obviousness

MemsTech argues that Onishi rendered obvious claims 1 and 2 of the ’231 patent. Specifically, MemsTech contends that it would have been obvious to modify the SAW device in Onishi Figure 1 to include an acoustic portin the cover. In addition, MemsTech faults the Commission for finding that Onishi teaches away from adding an acoustic port to Onishi. Finally, MemsTech cites three additional prior art references (Kress, discussed supra ; Peterson, J.A. 1390-95, and Sj ursen, J.A. 1340-72), as allegedly supporting its contention that it would have been obvious to modify Onishi.

In response, the Commission and Knowles contend that substantial evidence, including the testimony of Knowles’ expert, supports the Commission’s factual finding that Onishi taught away from the inclusion of an acoustic port. Knowles also argues that Onishi taught a SAW device, not a MEMS microphone as required by the preamble of claims 1 and 2. The Commission argues thatMemsTech waived arguments regarding the three additional references, and Knowles asserts that such references do not amount to clear and convincing proof of

obviousness.

We reject MemsTech’s arguments and hold that claims 1 and 2 were not obvious over Onishi. First, we note that claims 1 and 2 require a MEMS microphone, whereas Onishi discloses a SAW device. According to theexpert testimony, these two types of devices have “diametrically opposed” packaging requirements, J.A. 1147- 48, thus lending substantial evidentiary support to the Commission’s findings regarding the differences between
these devices. J.A. 139.MEMS TECH v. ITC 32

In addition, the Onishi SAW device lacks an acoustic port. Claim 1 requires an “acoustic port,” which the parties agree is the same as the “aperture” in claim 1 of the ’089 patent. Although claim 2 does not explicitly require an acoustic port, the Commission correctly noted that this claim requires a “chamber providing an acoustic front volume for the silicon-based microphone,” meaning that an acoustic signal must be able to reach the claimed silicon microphone by way of an acoustic port. J.A. 140. As discussed above in connection with the ’089 patent, MemsTech did not present clear and convincing evidence that one of ordinary skill wo uld have modified the SAW devices taught by Onishi, which were intended to remain sealed in an airtight chamber, to include an acoustic port.
See Gurley , 27 F.3d at 553. The Commission correctly
concluded that Onishi did not render obvious claims 1 and 2 of the ’231 patent.

Even if MemsTech’s argument regarding the three additional references was not waived, 7 we conclude that MemsTech has failed to present clear and convincing evidence indicating that one of ordinary skill would have

7 The Commission contends that MemsTech’s argument regarding the three additional references was waived, because it failed to raise the argument before the ALJ and again failed to raise it in its petition for review of the ALJ’s final Initial Determination. See Nonconfidential Br. of Appellee Int’l Trade Comm’n 51-52, 2010 WL 2968757 (July 6, 2010). MemsTe ch does not dispute these contentions, but instead points out that the Commission chose to review the issue on it s own initiative, pursuant to 19 C.F.R. § 210.43(b)(2). Re ply Br. of Appellant Mems Technology Berhad 21, 2010 WL 3389902 (Aug. 6, 2010). Although MemsTech is correct that the Commission indicated its intent to review this issue, J.A. 302 at (1)(c), MemsTech fails to acknowledge that the Commission never in fact reviewed the three additional references, J.A. 374 at (1)(c).MEMS TECH v. ITC 33

modified Onishi to add an acoustic port to a SAWS device.
None of the three additional references relates to a MEMS microphone device. Moreover, regarding the ’231 patent,MemsTech’s expert provided only brief, conclusory testimony regarding each of these additional references individually, not in combination with one another or with
Onishi. We decline MemsTech’s invitation to reconstructthe claimed invention with hindsight using these disparate prior art documents. See Grain Processing Corp. v.
Am. Maize-Prods. Co. , 840 F.2d 902, 907 (Fed. Cir. 1988) (“Care must be taken to avoid hindsight reconstruction by using the patent in suit as a guide through the maze of prior art references, combining the right references in the right way so as to achieve the result of the claims in suit.” (internal quotation marks omitted)).

C. MemsTech’s Additional Arguments for Obviousness

In a separate portion of its brief, MemsTech makes additional obviousness arguments relating to both the’089 and ’231 patents. In a section marked as confidential, MemsTech argues for obviousness with reference to the way in which the inventor arrived at the inventions. We reject MemsTech’s argument. Under 35 U.S.C. § 103(a), “[p]atentability sha ll not be negatived by the
manner in which the invention was made.”

MemsTech also asserts that the ’089 and ’231 patents
were obvious under KSR , 550 U.S. 398. Yet MemsTechappears to misapprehend its burden for proving obviousness. For instance, MemsTech contends: “The combinations claimed in claims 1 and 2 of the ’231 patent include only well known prior art elements, and there is no evidence that the claimed combinations yield anything other than a predictable result.” Appellant’s Br. at 59; see also
id. at 61 (making the same arguments regarding the ’089 patent). Yet MemsTech, as the accused infringer, bearsMEMS TECH v. ITC 34

the burden of producing evidence demonstrating obviousness. Union Carbide Chems. & Plastics Tech. Corp. v.
Shell Oil Co. , 308 F.3d 1167, 1187 (Fed. Cir. 2002) (“[A] party seeking a judgment that a patent is obvious bears the burden of demonstrating by clear and convincing evidence that the teachings of the prior art would have suggested the claimed subject matter to one of ordinary skill in the art.”). MemsTech has not met that burden here. In sum, the Commission correctly followed the framework for applying the statutory language of § 103,
KSR , 550 U.S. 406-07, and did no t err by concluding that
the asserted claims were nono bvious over the cited prior
art references.

IV. The Domestic Industry Requirement for the ’089

Patent

A requirement for a patent-based action under 19 U.S.C. § 1337 is that a domestic industry “relating to the articles protected by the patent . . . exists or is in the process of being establishe d.” 19 U.S.C. § 1337(a)(2); see also Alloc, Inc. v. Int’l Trade Comm’n , 342 F.3d 1361, 1375 (Fed. Cir. 2003). The determination whether an industryrelates to a protected product is referred to as the “technical prong” of the domestic industry requirement. Id. To meet the technical prong, the domestic product must be covered by the asserted claims ; “the test ‘is essentially thesame as that for infringement, i.e., a comparison of domestic products to the asserted claims.’” OSRAM , 505 F.3d at 1359 (quoting Alloc , 342 F.3d at 1375)).

MemsTech argues that Knowles fails to satisfy the technical prong of the domestic industry requirement forthe ’089 patent. As the Commission and Knowles correctly point out, however, MemsTech’s argument is based solely on its contention that the Commission legally erred in its construction of the claim terms “electrically coupled”MEMS TECH v. ITC 35

and “volume.” As we explained above, the Commission did not legally err in its construction of these terms. We therefore reject MemsTech’s argument on this issue.

V. The Commission’s Determination Regarding the “Chamber Chip” Products

MemsTech raises an additional issue regarding a modified configuration of its products, referred to as the “chamber chip” products. In his Initial Determination,the ALJ concluded that MemsTech’s chamber-chip products were “not properly before me,” and thus “are not partof this investigation.” J.A. 42 n.2, J.A. 252 n.33. However, the Commission, in its opinion dated June 12, 2009, stated that the chamber-chip products “should not be covered by the Commission exclusion order.” J.A. 327. Pursuant to 19 C.F.R. § 210. 47, Knowles requested reconsideration of the chamber-chip issue in the Commission’s order, and MemsTech opposed. The Commission granted the request for reconsideration, and, in its revised opinion dated August 19, 2009, wrote:

With respect to MemsTech’s “chamber chip” products, pursuant to Commission practice we are notmaking a finding as to whether particular products not considered by the ALJ are or are notwithin the scope of the order, but note that the order generally covers products that infringe the relevant patent claims.

J.A. 357. On appeal, MemsTech contends that the Commission violated its duty under the APA by granting Knowles’ petition for reconsideration under Rule 210.47. The Commission and Knowles disagree. 8

8 At oral argument, counsel for Knowles contended that the proper mechanism for determining whether MemsTech’s chamber-chip products are within the scopeMEMS TECH v. ITC 36

Under the APA, “[t]he reviewing court shall . . . holdunlawful and set aside agency action, findings, and conclusions found to be arbitrary, capricious, an abuse of discretion, or otherwise not in accordance with law.” 5 U.S.C. § 706(2)(A) (2006). The scope of our review under an arbitrary and capricious standard is narrow; we may not substitute our judgment for that of the agency. Burandt v. Dudas , 528 F.3d 1329, 1332 (Fed. Cir. 2008). In reviewing an agency decision, we “‘must consider whether
the decision was based on a consideration of the relevantfactors and whether there has been a clear error of judgment.’” Id. (quoting Bowman Transp., Inc. v. Ark.-Best Freight Sys., Inc. , 419 U.S. 281, 285 (1974)). “An abuse of

discretion occurs where the decision is based on an erroneous interpretation of the law, on factual findings that are not supported by substantial evidence, or represents an unreasonable judgment in weighing relevant factors.”
Star Fruits S.N.C. v. United States , 393 F.3d 1277, 1281 (Fed. Cir. 2005).

We conclude that the Commission did not violate the APA by granting Knowles’ peti tion for reconsideration. Rule 210.47 requires that a petition for reconsideration be confined to new questions raised by the determination oraction at issue upon which the petitioner had no opportunity to submit arguments. The Commission’s opinion dated June 12, 2009, determined for the first time that the chamber-chip products “should not be covered by the Commission exclusion order.” Thus, it presented a newquestion upon which Knowles had no previous opportunity to submit arguments. Accordingly, the Commission’s

of the Commission’s limited exclusion order is to seek anadvisory opinion under 19 C.F.R. § 210.79 or a modification of the order under 19 C.F.R. § 210.76. Oral arg. at 30:00-31:15, available at http://oralarguments.cafc.uscour ts.gov/Audiomp3/2010-1018.mp3.MEMS TECH v. ITC 37

decision to grant the petition under Rule 210.47 was not arbitrary, capricious, an abuse of discretion, or otherwise
not in accordance with the law. See 5 U.S.C. § 706(2)(A). We reject MemsTech’s argument that the Commission violated the APA by granting Knowles’ petition.

C ONCLUSION

For the foregoing reasons, we affirm the Commission’s final determination of a violation of § 337.

AFFIRMED.