Mems Technology Berhard v. International Trade Commission
447 F. App'x 142
Fed. Cir.2011Background
- MemsTech appeals a 337 investigation final determination that its MEMS microphone packages infringe Knowles’ asserted claims of the ’089 and ’231 patents and that the claims are not invalid.
- Knowles owns the ’089 and ’231 patents, covering MEMS packages with a transducer, substrate, cover, and shielding/optical features; accused products are MEMS microphone packages imported by MemsTech.
- ALJ applied claim constructions for terms including “electrically coupled” and “volume,” and found infringement and various validity results (no anticipation by Mullenborn; Baumhauer/Onishi not rendering obvious).
- ITC reviewed and issued final determinations largely affirming the ALJ, including infringement findings and domestic industry determinations; Knowles’ SiSonic products practice the ’089 patent and a domestic industry exists for it.
- MemsTech challenged several constructions, asserted chamber-related limitations, and contested the treatment of chamber-chip products under the exclusion order and APA review.
- The Federal Circuit affirmed the ITC’s final determination, upholding the claim constructions, infringement, and nonobviousness findings, and addressing the chamber-chip reconsideration issue under APA standards.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether 'volume' in the ’089 patent is correctly construed | MemsTech argues volume must reside within substrate/cover via recesses/holes. | Commission correctly construes volume as a space defined by transducer and one member, not limited to recess/hole. | Correct construction: volume not limited to substrate recess/holes. |
| Whether 'electrically coupled' in the ’089 patent should be limited to direct connection | MemsTech argues for a direct electrical connection based on intrinsic evidence and prosecution history. | Commission correctly uses ordinary meaning; no disclaimer; extrinsic evidence permissible; broad interpretation includes indirect connections. | Correctly construed as having ordinary meaning including indirect connections. |
| Whether the preambles of the ’231 patent claims limit claim scope | Preables add nothing beyond claim elements, so should not limit. | Preambles limit because they define a MEMS package housing and mounting context essential to the invention. | Preambles are limiting; they add necessary package limitation to the claims. |
| Whether 'microelectromechanical system package' in the ’231 patent preamble is a limit on infringement/anticipation | Baumhauer anticipates or shows enabling aspects of a MEMS package. | Baumhauer lacks two-level electrical connections; Onishi teaches away; no anticipation/obviousness. | Baumhauer does not anticipate; Onishi does not render claims obvious; two-level connection requirement upheld. |
Key Cases Cited
- C.R. Bard, Inc. v. U.S. Surgical Corp., 388 F.3d 858 (Fed. Cir. 2004) (volume/embodiments not limited by abstract as limitation)
- Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576 (Fed. Cir. 1996) (extrinsic evidence may not vary claim language)
- Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (claim construction uses intrinsic evidence with limited extrinsic aid)
- Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898 (Fed. Cir. 2004) (claim differentiation doctrine applied to avoid narrowing claims unnecessarily)
- DSW, Inc. v. Shoe Pavilion, Inc., 537 F.3d 1342 (Fed. Cir. 2008) (plain and ordinary meaning controls when not defined in claim)
- Catalina Marketing Int’l, Inc. v. Cool Savings.com, 289 F.3d 801 (Fed. Cir. 2002) (preambles can limit claim scope where essential to understand limitations)
- Hartness Int’l, Inc. v. Simplimatic Eng’g Co., 819 F.2d 1100 (Fed. Cir. 1987) (precedent on obviousness framework and evidentiary standards)