NOTE: This disposition is nonprecedential. 

United States Court of Appeals 

for the Federal Circuit 

__________________________ 

MEMS TECHNOLOGY BERHAD, 

Appellant, 

v. 

INTERNATIONAL TRADE COMMISSION, 

Appellee, 

and 

KNOWLES ELECTRONICS LLC, 

Intervenor. 

__________________________ 

2010-1018 

__________________________ 

On appeal from the United States International Trade 

Commission in Investigation No. 337-TA-629. 

__________________________ 

Decided: June 3, 2011 

__________________________ 

THOMAS J. FISHER, Oblon, Spivak, McClelland, Maier 

& Neustadt, L.L.P., of Alexandria, Virginia, argued for 

appellant. With him on the brief were RICHARD D. KELLY, 

BARRY J. HERMAN, ERIC W. SCHWEIBENZ and ROBERT C.

NISSEN. 
MEMS TECH v. ITC 2

MICHAEL LIBERMAN, Attorney, Office of the General 

Counsel, United States International Trade Commission, 

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

brief were JAMES M. LYONS, General Counsel, and 

ANDREA C. CASSON, Assistant General Counsel. 

ALLAN J. STENSTEIN, Dykema Gossett, PLLC, of Chicago, Illinois, argued for intervenor. With him on the 

brief were TIMOTHY K. SENDEK; and DAVID L. PATTERSON, 

and WILLIAM D. CRAMER, of Dallas, Texas. 

__________________________ 

Before LOURIE, MAYER, and GAJARSA, Circuit Judges. 

LOURIE, Circuit Judge. 

MEMS Technology Berhad (“MemsTech”) appeals 

from a final determination by the United States 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. The 

Commission 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 anticipation or obviousness. We 

affirm. 

BACKGROUND

Knowles Electronics LLC (“Knowles”) owns the ’089 

and ’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. 
3 MEMS TECH v. ITC

The ’089 patent discloses MEMS packages that allow 

acoustic energy to contact a transducer while protecting 

the transducer from light, electromagnetic radiation, and 

physical damage. ’089 patent col.1 ll.44-49. The MEMS 

packages of the ’089 patent include a volume defined by 

the transducer and either the cover or the substrate. 

Asserted on appeal are claims 1, 2, 9, 15, 17, 20, 28, and 

29.1 Claim 1, the independent claim from which the other 

asserted claims depend, recites: 

1. A surface mountable package for containing a 

transducer, the transducer being responsive to 

sound pressure levels of an acoustic signal to provide an electrical output representative of the 

acoustic signals, the surface mountable package 

comprising: 

at least a first member and a second member and 

a chamber being defined by the first member and 

the second member, the transducer being attached 

to a surface formed on one of the first member or 

the second member and the transducer residing 

within the chamber; 

the surface being formed with at least one patterned conductive layer, the patterned conductive 

layer being electrically coupled to the transducer; 

an outside surface of the surface mountable package comprising a plurality of terminal pads electrically coupled to the patterned conductive layer; 

 1 Claim 10 of the ’089 patent was asserted in the 

investigation. The ALJ determined that this claim was 

invalid for failing to meet the written description 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, the 

volume being acoustically coupled to the transducer; and 

one of the first member or the second member being formed to include an aperture, the aperture 

configured to permit the passage of an acoustic 

signal to the transducer. 

’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: 
5 MEMS TECH v. ITC

a microelectromechanical system microphone; 

a substrate comprising a surface for supporting 

the microelectromechanical microphone; 

a cover comprising a conductive layer having a 

center portion bounded by a peripheral edge portion; and 

a housing formed by connecting the peripheral 

edge portion of the cover to the substrate, the center portion of the cover spaced from the surface of 

the substrate to accommodate the microelectromechanical system microphone, the housing including an acoustic port for allowing an acoustic 

signal to reach the microelectromechanical system 

microphone wherein the housing provides protection from an interference signal. 

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 microphone 

packages (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 claims. 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”). 
7 MEMS TECH v. ITC

With respect to the ’089 patent, the ALJ construed the 

term “electrically coupled” in claim 1 to mean “arranged 

so that electrical signals may be passed either directly, or 

indirectly via intervening circuitry, from one component 

to another.” J.A. 70. The ALJ construed “volume” in 

claims 1, 15, and 28 to mean “a space defined by the 

transducer and one of the first member or the second 

member.” J.A. 86. The ALJ determined that MemsTech’s 

accused products infringe claims 1, 2, 9, 15, 17, 20, 28, 

and 29 of the ’089 patent.2 Regarding validity, the ALJ 

determined that U.S. Patent 6,522,762 (“Mullenborn”) 

does not anticipate claims 1, 2, 9, 15, 17, 28, and 29. The 

ALJ also determined that U.S. Patent 4,533,795 (“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 infringe 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 Knowles satisfied the domestic 

industry requirement for the ’089 patent because its 

“SiSonic” silicon microphone packages practice claim 1. 

Based on the findings in his Initial Determination, 

the ALJ concluded that the importation or sale of the 

accused MemsTech products violated § 337. The ALJ 

recommended that the Commission issue a limited exclusion order as to those MemsTech 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 infringe 

claims 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. 
9 MEMS TECH v. ITC

determination that Onishi did not render obvious claims 1 

and 2. 

Regarding the ’089 patent, the Commission, inter alia, 

affirmed the construction of the claim term “electrically 

coupled”; affirmed the construction of the claim term 

“volume”; affirmed the determination that the accused 

products infringe the asserted claims of the ’089 patent; 

affirmed the determinations that Mullenborn does not 

anticipate claims 1, 2, 9, 15, 17, 20, 28, and 29; affirmed 

the determinations that Baumhauer alone, Baumhauer in 

combination with Kress, and Onishi5 did not render 

obvious claims 1, 2, 9, 15, 17, 20, 28, and 29; and affirmed 

the 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). 

DISCUSSION

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 support a conclusion.’” Id. (quoting 

Consol. Edison Co. v. NLRB, 305 U.S. 197, 217 (1938)). 

I. Claim Construction 

Claim construction is a matter of law subject to de

novo review. Cybor Corp. v. FAS Techs., Inc., 138 F.3d 

1448, 1454-55 (Fed. Cir. 1998) (en banc). To ascertain the 

scope and meaning of the claims, we consider the claim 

language, the specification, the prosecution history, and 

relevant extrinsic evidence. Phillips v. AWH Corp., 415 

F.3d 1303, 1314-17 (Fed. Cir. 2005) (en banc). “[A]bsent 

contravening evidence from the specification or 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 understanding of the claims; it may 

not be used to vary or contradict the claim language.” 

Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1584 

(Fed. Cir. 1996). 

The doctrine of claim differentiation assists in 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 differentiation is at its strongest.”). 

Moreover, an applicant’s statements during prosecution 

history may result in a disclaimer of claim scope; but any 

such remark must constitute “a sufficiently clear and 

deliberate statement to meet the high standard for finding a disclaimer of claim scope.” Honeywell Int’l, Inc. v. 
11 MEMS TECH v. ITC

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

Cir. 2007). 

“[A] preamble is a claim limitation if it recites 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), MemsTech argues that the 

Commission’s claim construction of the term “volume” is 

erroneous, because the abstract and summary sections of 

the specification require that the “volume” is formed from 

a recess or hole in the substrate over which the 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 would 

exclude 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 patent 

do not universally contain the additional limitation proposed by MemsTech. The Commission and Knowles also 

point out that the doctrine of claim differentiation supports the Commission’s construction, because dependent 

claims 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 microphone only.” ’089 patent col.6 

ll.59-60. Further, Figure 28 shows a transducer 58 
13 MEMS TECH v. ITC

mounted on a substrate 46 using epoxy 86 and a retaining 

ring 84; the transducer is shaped such that it creates a 

volume between it and the substrate to which it is attached, notwithstanding that substrate does not contain 

any recess or hole. Id. col.7 ll.29-51, Fig. 28. In other 

words, in both of these embodiments, a volume is created 

by the shape of the transducer, not by any recess or hole 

in the substrate. We have cautioned that “a construction 

that excludes a preferred embodiment ‘is rarely, if ever, 

correct.’” C.R. Bard, 388 F.3d at 865 (quoting Vitronics, 

90 F.3d at 1583). MemsTech does not dispute that its 

proposed construction would exclude particular embodiments from the specification, nor does it offer any justification for this exclusion. The Commission’s construction 

of 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] a 

recess 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 the 

second 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, dependent 

claims 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 adopt MemsTech’s proposed claim 

construction of the term “volume.” 
MEMS TECH v. ITC 14

MemsTech misreads C.R. Bard in arguing that claim 

1 must be limited to a scope commensurate with the 

abstract or summary sections of the specification. In that 

case, we addressed the question whether the claimed 

“plug” should be construed as having a “pleated surface.” 

In answering in the affirmative, we noted that both the 

abstract and summary sections of the specification 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 summary 

sections 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 not 

represent 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 be 

passed either directly, or indirectly via intervening circuitry, from one component to another.” MemsTech 

argues 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 unrelated 

patent. 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-
15 MEMS TECH v. ITC

sTech’s expert further support this limitation. MemsTech 

further asserts that the specification of the ’089 patent 

discloses only a direct electrical connection between the 

transducer and the substrate. Thus, MemsTech argues, 

the Commission erred by ignoring the intrinsic evidence 

and construing “electrically coupled” to include the indirect passage of electrical signals via intervening circuitry. 

The correct construction of “electrically coupled,” MemsTech contends, is “the transducer is directly connected to 

the 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 “electrically 

coupled” 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 contend 

that the prosecution history does not contradict the construction by limiting the term to a direct electrical connection. 

We agree with the Commission 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 rebut 

the “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 described 

as “direct,” and nothing in the claim language or specification suggests that “electrically coupled” should have 
MEMS TECH v. ITC 16

any interpretation other than its plain meaning. See

DSW, 537 F.3d at 1347. 

MemsTech relies on the testimony of its expert, who 

stated that “flip chip bump bonding, the preferred method 

of electrical coupling” disclosed in the ’089 patent, would 

result in a “direct connection” between the transducer and 

the substrate. J.A. 2061; see also ’089 patent col.3, ll.61-

63. Yet MemsTech offers no rationale why one of ordinary 

skill would understand “electrically coupled” as limited to 

this preferred method. MemsTech has not demonstrated 

that one of ordinary skill would understand the 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, “although 

the 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 wherein 
17 MEMS TECH v. ITC

the microphone transducer is attached to a surface of one of the first and second members. 

Cote does not teach or suggest that the 

transducer is mounted to a surface. As such, Cote 

cannot teach the further claimed electrical connection between the transducer and the at least 

one patterned conductive layer formed on the surface to which it is attached. In fact, Cote fails to 

teach or suggest the formation of a patterned conductive layer associated with any part of the described electret microphone. 

J.A. 1705-06. MemsTech characterizes the applicant’s 

argument as an attempt to distinguish Cote as lacking a 

direct electrical connection. As the above passage 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, 493 

F.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-binding 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 meaning 

for 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 electronics context, because 

“[n]either the claim nor the specification defines the 

term”); GSK Techs. Inc. v. Eaton Elec. Inc., Nos. 

606CV358, 606CV360, 606CV361, 2008 WL 906713, at *5 

(E.D. Tex. Apr. 1, 2008) (“As the intrinsic evidence does 

not provide a special meaning for ‘electrically coupled,’ its 

plain and ordinary meaning applies.”). 

Finally, the fact that neither party advanced the 

claim construction adopted by the Commission is not legal 

error, as MemsTech contends. As we stated in Exxon 

Chemical Patents, Inc. v. Lubrizol Corp., “the trial judge 

has an independent obligation to determine the meaning 
19 MEMS TECH v. ITC

of the claims, notwithstanding the views asserted by the 

adversary parties.” 64 F.3d 1553, 1555 (Fed. Cir. 1995). 

We therefore conclude that the Commission’s construction 

of the claim term “electrically coupled,” as used in claim 1 

of the ’089 patent, is correct. 

B. The ’231 Patent 

1. Claim Preambles 

Regarding the ’231 patent, MemsTech appeals the 

Commission’s determination on the limiting effect of the 

preambles of claims 1 and 2. MemsTech argues that 

“microelectromechanical system package” is not necessary 

to give meaning to claims 1 and 2 of the ’231 patent, 

because it adds nothing beyond the elements already 

present in the claims. MemsTech thus contends that, 

contrary to the Commission’s determination, the preambles should not be construed as claim limitations. 

In response, the Commission and Knowles argue that 

the Commission correctly found that the preambles in 

question are limitations. They contend that the Commission properly considered the intrinsic and extrinsic evidence and correctly concluded that the “package” term 

adds a limitation not otherwise 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 microphone, a substrate, a cover, 

and a housing formed by connecting the cover and the 

substrate. The body of claim 2 lists a microphone, a 

substrate, and a cover. As the Commission correctly 

concluded, J.A. 49, the specification describes mounting 

the MEMS “packages” of the invention on end-users’ 
MEMS TECH v. ITC 20

printed circuit boards (“PCBs”), ’231 patent col.3 ll.3-16. 

Indeed, the essence of the invention claimed in the ’231 

patent is the containment of the components in a “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 body come together to form 

a mountable package is thus an “important characteristic 

of the claimed invention.” Poly-Am., 383 F.3d at 1310. 

Yet, standing alone, the bodies of claims 1 and 2 do not 

require that the listed components come together in this 

way to constitute a package. For this reason, the 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 repeats 

arguments it made for the ’089 patent. MemsTech argues, in particular, that the specification of the ’231 

patent, like that of the ’089 patent, discloses only direct 

electrical connections, and therefore the construction of 

“electrically coupled” should be so limited. 

The Commission and Knowles argue, as they did for 

the ’089 patent, that the specification does not provide 

any special meaning for “electrically coupled,” and therefore its plain and ordinary meaning should apply. 

Knowles also argues (and MemsTech does not attempt to 
21 MEMS TECH v. ITC

rebut) that the two asserted patents do not share a 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 of 

this claim term in the ’231 patent. We perceive no material difference between the specifications or claims of 

these two patents that would warrant different treatment 

of 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 terms 

its 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 asserting invalidity as a defense 

to 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 art 

document 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 for substantial evidence. Vizio, Inc. 

v. Int’l Trade Comm’n, 605 F.3d 1330, 1342 (Fed. Cir. 

2010). 

A claim is invalid for obviousness if, to one of ordinary 

skill in the pertinent art, “the differences between the 

subject matter sought to be patented and the prior art are 

such that the subject matter as a whole would have been 

obvious at the time the invention was made.” 35 U.S.C. 

§ 103(a) (2006); see also KSR Int’l Co. v. Teleflex Inc., 550 

U.S. 398, 406-07 (2007). “Obviousness is a question of law 

based on underlying factual inquiries, and thus we review 

the Commission’s ultimate determination de novo and 

factual determinations for substantial evidence.” Vizio, 

605 F.3d at 1342. Underlying factual inquiries in the 

obviousness analysis include: (1) the scope and content of 

the prior art; (2) the level of ordinary skill in the art; (3) 

the differences between the prior art and the claimed 

invention; and (4) the extent of any objective indicia of 

nonobviousness. Crocs, Inc. v. Int’l Trade Comm’n, 598 

F.3d 1294, 1308 (Fed. Cir. 2010). 
23 MEMS TECH v. ITC

A. The ’089 Patent 

1. Anticipation 

MemsTech appeals the Commission’s determination 

that claims 1, 2, 9, 15, 17, 28, and 29 of the ’089 patent 

are not invalid under § 102 for anticipation by 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 the 

term “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 supports the Commission’s finding 

that Mullenborn does not anticipate claim 1 or asserted 

dependent claims 2, 9, 15, 17, 28, or 29. Regarding claim 

1, the Commission considered the limitation that the 
MEMS TECH v. ITC 24

package comprises “a chamber being defined by the first 

member and the second member.” Neither party argued 

that “chamber” carried any special meaning in the context 

of the ’089 patent, and the Commission did not err by 

applying the term’s ordinary meaning, “a room or a 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 construction in such cases involves 

little more than the application of the widely accepted 

meaning 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 4 
25 MEMS TECH v. ITC

The Commission’s finding is supported by substantial 

evidence, including the disclosure in Mullenborn, the 

language of claim 1, and the ordinary meaning of the term 

“chamber.” As the Commission correctly found, and as 

Knowles’ expert explained, J.A. 1180-81, lid 5 and 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 structure 
MEMS TECH v. ITC 26

depicted in Figure 4 of Mullenborn; they are not coupled 

or fastened together to form a chamber. 

Regarding the remaining asserted claims of the ’089 

patent, all of which depend from independent claim 1, 

MemsTech argues only that, because claim 1 is unpatentable, so too are the asserted dependent claims. However, because substantial evidence supports the finding 

that 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 in 

specific 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 without 

Kress), 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 1 
27 MEMS TECH v. ITC

requires. Moreover, they contend, Kress teaches packaging only in the context of automotive silicon pressure 

sensors, not as applied to surface mountable packages for 

microphones. 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 testimony of Knowles’ expert 

provides substantial supporting evidence. J.A. 1129 

(“Baumhauer Figure 6 is an example of attaching the 

microphone device to an end-user board and then 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 deficiencies of Baumhauer. 

Titled “Integrated Silicon Pressure Sensor for Automotive 

Application with Electronic Trimming,” Kress mentions 

packaging only briefly, and does so in the context of 

pressure sensors for automobiles—not surface mountable 

packages for microphones. J.A. 1386-87. The 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 of 
MEMS TECH v. ITC 28

Kress, rendered claim 1 obvious. Because independent 

claim 1 was not obvious over Baumhauer alone or in view 

of Kress, the Commission correctly determined that 

dependent claims 2, 9, 15, 17, 20, 28, and 29 were also not 

obvious. See Hartness, 819 F.2d at 1108. 

b. Onishi 

Regarding Onishi, MemsTech argues that, although 

Onishi does not disclose an aperture as claim 1 requires, 

the addition of an aperture to the device depicted in 

Onishi’s Figure 1 would have been an obvious 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’s 

finding 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 being 
29 MEMS TECH v. ITC

responsive to sound pressure levels of an acoustic signal,” 

as claim 1 requires, and the expert testimony indicates 

that modifying the Onishi device to incorporate such a 

microphone would cause “serious problems.” J.A. 2476. 

Expert testimony also supports the finding that SAW 

devices do not contain acoustic ports because external 

sound waves are unwanted “‘noise’ that must be filtered 

out.” J.A. 1148. Consistent with this testimony, Onishi 

expressly teaches away from creating an aperture, as the 

Commission correctly found. See In re Gurley, 27 F.3d 

551, 553 (Fed. Cir. 1994) (“A reference may be said to 

teach away when a person of ordinary skill, upon reading 

the reference, would be discouraged from following the 

path set out in the reference, or would be led in a 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 nonobvious over Onishi. 

B. The ’231 Patent 

1. Anticipation 

MemsTech argues that Baumhauer anticipates claims 

1 and 2 of the ’231 patent. MemsTech asserts that, for 

invalidity purposes, the Commission applied a narrow 

definition of “microelectromechanical system package” by 

requiring that a package be capable of two levels of elec-
MEMS TECH v. ITC 30

trical connection—one from the device to the package, and 

one from the package to an external circuit or other 

system. In contrast, according to MemsTech, the 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 connection. They argue that this 

definition is supported by substantial evidence and that 

the Commission did not err in its application. 

We agree with the Commission and Knowles. In 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 disclose a MEMS “package.” The 

Commission cited the testimony of Knowles’ expert, who 

agreed that Baumhauer cannot anticipate the claims of 

the ’231 patent because it does not disclose first and 

second levels of electrical connection. J.A. 377-78 (citing 

J.A. 2470); see also J.A. 1129, 3420. We therefore reject 

MemsTech’s argument and conclude that the Commission 

consistently applied its definition of “microelectrome-
31 MEMS TECH v. ITC

chanical system package” in concluding that Baumhauer 

did not anticipate claims 1 or 2 of the ’231 patent. 

2. Obviousness 

MemsTech argues that Onishi rendered obvious 

claims 1 and 2 of the ’231 patent. Specifically, MemsTech 

contends that it would have been obvious to modify the 

SAW device in Onishi Figure 1 to include an acoustic port 

in the cover. In addition, MemsTech faults the 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 Sjursen, J.A. 1340-72), as 

allegedly supporting its contention that it would have 

been obvious to modify Onishi. 

In response, the Commission and Knowles contend 

that substantial evidence, including the testimony of 

Knowles’ expert, supports the Commission’s factual 

finding that Onishi taught away from the inclusion of an 

acoustic port. Knowles also argues that Onishi taught a 

SAW device, not a MEMS microphone as required by the 

preamble of claims 1 and 2. The Commission argues that 

MemsTech waived arguments regarding the three 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 the 

expert 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 would have modified the SAW 

devices taught by Onishi, which were intended to remain 

sealed in an airtight chamber, to include an acoustic port. 

See Gurley, 27 F.3d at 553. The Commission correctly 

concluded that Onishi did not render obvious claims 1 and 

2 of the ’231 patent. 

Even if MemsTech’s argument regarding the three 

additional references was not waived,7 we conclude that 

MemsTech has failed to present clear and convincing 

evidence indicating that one of ordinary skill would have 

 7 The Commission contends that MemsTech’s 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). MemsTech does not dispute these 

contentions, but instead points out that the Commission 

chose to review the issue on its own initiative, pursuant to 

19 C.F.R. § 210.43(b)(2). Reply Br. of Appellant Mems 

Technology Berhad 21, 2010 WL 3389902 (Aug. 6, 2010). 

Although MemsTech is correct that the Commission 

indicated its intent to review this issue, J.A. 302 at (1)(c), 

MemsTech fails to acknowledge that the Commission 

never in fact reviewed the three additional references, 

J.A. 374 at (1)(c). 
33 MEMS TECH v. ITC

modified Onishi to add an acoustic port to a SAWS device. 

None of the three additional references relates to a MEMS 

microphone device. Moreover, regarding the ’231 patent, 

MemsTech’s expert provided only brief, conclusory testimony regarding each of these additional references individually, not in combination with one another or with 

Onishi. We decline MemsTech’s invitation to reconstruct 

the 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 shall not be negatived by the 

manner in which the invention was made.” 

MemsTech also asserts that the ’089 and ’231 patents 

were obvious under KSR, 550 U.S. 398. Yet MemsTech 

appears to misapprehend its burden for proving 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, bears 
MEMS 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 not err by concluding that 

the asserted claims were nonobvious over the cited prior 

art references. 

IV. The Domestic Industry Requirement for the ’089 

Patent 

A requirement for a patent-based action under 19 

U.S.C. § 1337 is that a domestic industry “relating to the 

articles protected by the patent . . . exists or is in the 

process of being established.” 19 U.S.C. § 1337(a)(2); see 

also Alloc, Inc. v. Int’l Trade Comm’n, 342 F.3d 1361, 1375 

(Fed. Cir. 2003). The determination whether an industry 

relates to a protected product is referred to as the “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 the 

same 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 for 

the ’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” 
35 MEMS TECH v. ITC

and “volume.” As we explained above, the Commission 

did not legally err in its construction of these terms. We 

therefore reject MemsTech’s argument on this issue. 

V. The Commission’s Determination Regarding the 

“Chamber Chip” Products 

MemsTech raises an additional issue regarding a 

modified configuration of its products, referred to as the 

“chamber chip” products. In his Initial Determination, 

the ALJ concluded that MemsTech’s chamber-chip products were “not properly before me,” and thus “are not part 

of 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 not 

making a finding as to whether particular products not considered by the ALJ are or are not 

within 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 scope 
MEMS TECH v. ITC 36

Under the APA, “[t]he reviewing court shall . . . hold 

unlawful 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 relevant 

factors 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’ petition for reconsideration. 

Rule 210.47 requires that a petition for reconsideration be 

confined to new questions raised by the determination or 

action at issue upon which the petitioner had no 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 new 

question upon which Knowles had no previous opportunity to submit arguments. Accordingly, the Commission’s 

 

of the Commission’s limited exclusion order is to seek an 

advisory opinion under 19 C.F.R. § 210.79 or a 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. 
37 MEMS TECH v. ITC

decision to grant the petition under Rule 210.47 was not 

arbitrary, capricious, an abuse of discretion, or otherwise 

not in accordance with the law. See 5 U.S.C. § 706(2)(A). 

We reject MemsTech’s argument that the Commission 

violated the APA by granting Knowles’ petition. 

CONCLUSION

For the foregoing reasons, we affirm the Commission’s 

final determination of a violation of § 337. 

AFFIRMED.