03
Jan
By Eric Schweibenz
Further to our November 22, 2010 post, on December 21, 2010 ALJ Robert K. Rogers, Jr. issued the public version of the Initial Determination (“ID”) in Certain Silicon Microphone Packages and Products Containing the Same (337-TA-695).

By way of background, the Complainant in this investigation is Knowles Electronics, LLC (“Knowles”) and the Respondent is Analog Devices, Inc. (“Analog”).  The two patents at issue relate to silicone microphone packages and products containing same.  U.S. Patent No. 6,781,231 (the ‘231 patent) is directed to packaging for a microelectromechanical system (“MEMS”) microphone that “provides a shield for a MEMS microphone from an interference signal and/or environmental condition.”  U.S. Patent No. 7,242,089 (the ‘089 patent) relates to a surface mountable package for a silicone condenser microphone that “allows acoustic energy to contact a transducer” and “protects the transducer from light, electromagnetic interference, and physical damage.”  Knowles accused six Analog products of infringing the asserted patents.

As discussed in more detail below, ALJ Rogers held that there was no violation of Section 337 in this investigation.  Specifically, ALJ Rogers determined that the accused Analog products infringe claim 1 of the ‘231 patent, but that claim 1 is invalid under 35 U.S.C. §§ 102 and 103.  ALJ Rogers similarly determined that the accused Analog products infringe claims 1, 2, 7, 16, 17, 18, and 20 of the ‘089 patent, but that these claims are invalid under § 103.  ALJ Rogers further determined that an industry does not exist in the United States that exploits the ‘231 patent or the ‘089 patent as required by 19 U.S.C. § 1337(a)(2).

Claim Construction

The first disputed term in claim 1 of the ‘231 patent was “package,” which appears in the preamble of the claim.  Knowles contended that “package” was a claim limitation and relied heavily on extrinsic evidence such as textbooks for its proposed construction.  Analog argued that the term “package” did not recite essential structure or “breathe life into the claim” and therefore was not a claim limitation, and that if the term was deemed a limitation, that Analog’s proposed construction should be adopted because Knowles sought an overly narrow construction to avoid prior art.  The Commission Investigative Staff (“OUII”) agreed with Knowles that “package” was a claim limitation, but argued that several of the limitations imposed by Knowles were improper.  ALJ Rogers determined that the term was indeed a limitation, but that Knowles failed to demonstrate that the numerous limitations it sought to add were necessary to the meaning of “package,” which he construed to be “a single, self-contained unit which fully encloses a device, and which provides: (1) protection for the device from the external environment, (2) an electrical connection between the device and the package, and (3) an electrical connection between the package and another circuit outside of the package.”

The second disputed term in claim 1 of the ‘231 patent was “acoustic port.”  The parties disputed whether the claim language required that the acoustic port allow an acoustic signal to reach the chamber formed by the connection of the substrate to the cover.  ALJ Rogers agreed with Knowles and the OUII that it did not, construing “acoustic port” to mean “an opening that allows the passage of an acoustic signal.”

The first disputed term in the asserted claims of the ‘089 patent was “surface mountable package” which appears in the preamble of claim 1.  Knowles again contended that the term recites a structural limitation to a particular type of package.  Neither Analog nor the OUII argued that “surface mountable package” is not a limitation, but instead contended that Knowles’ restrictive construction of “surface mountable” requiring that it be “suitable for automated assembly” was not supported by the evidence, and that their own respective constructions were more appropriate.  ALJ Rogers agreed that the evidence did not support Knowles’ more narrow definition, and gave “surface mountable package” the same meaning as the term “package” in claim 1 of the ‘231 patent, with the addition of “and which self-contained unit is capable of being physically directly bonded to a separate printed circuit board without the use of through holes.”

The second disputed term in the asserted claims of the ‘089 patent was “attached,” which appears in claims 1 and 7.  The issue was whether this term is broad enough to encompass terms like “touching,” “connected,” or “contacting,” without any force joining the two items together.  Knowles argued for a broader construction, whereas Analog favored a narrower definition, namely, “fastened or affixed.”  The OUII viewed Knowles’ and Analog’s constructions as consistent, but to the extent that they differed, agreed with Analog.  ALJ Rogers agreed with Analog and the OUII, construing “attached” to mean “fastened, affixed or joined.”

The third disputed term in the asserted claims of the ‘089 patent was “surface” or “surface formed on one of the first member or second member,” which appears in claim 1.  Knowles argued for a limited construction: “the principal or predominant uppermost layer portion of the first member or second member, which is not an upper rim or annular shoulder.”  Analog and the OUII contended that “surface” should be given its plain and ordinary meaning.  ALJ Rogers agreed with Analog and the OUII, finding nothing in the ‘089 patent to suggest that the term should be modified to eliminate a rim or shoulder from its construction.  ALJ Rogers construed “surface” to mean “outermost boundary or face.”

The fourth disputed term in the asserted claims of the ‘089 patent was “patterned conductive layer,” which appears in claims 1, 15 and 16.  ALJ Rogers found no material disagreement between the parties’ constructions of this term, which he gave its plain and ordinary meaning, namely, “a single layer of material, the layer being less than the entire surface on which it sits, suitable for carrying electric current.”

The fifth disputed term in the asserted claims of the ‘089 patent was “volume,” which appears in claim 1.  The issue was whether the claimed “volume” was limited to the enclosed “back volume,” as argued by Analog, which referred to the enclosed space within the package that was behind the microphone, meaning opposite the side of the diaphragm facing where sound enters the package.  ALJ Rogers agreed with Knowles and the OUII that this term should be construed as “a space defined by the transducer and one of the first member or the second member.”

Invalidity

Analog argued that claim 1 of the ‘231 patent was anticipated by U.S. Patent No. 6,324,907 (“Halteren”), which meets Analog’s proposed construction of “package.”  In opposition, Knowles contended that Halteren did not anticipate under its proposed construction because the reference fails to disclose (1) that the assembly is intended to be mounted on a printed circuit board or other substrate, (2) a second level interconnection, and (3) mechanical support for the microphone and protection against shock.  The OUII agreed with Analog that Halteren anticipated claim 1.  Based on the record, ALJ Rogers determined that Analog offered clear and convincing evidence that Halteren anticipated claim 1.  ALJ Rogers was not persuaded by Analog’s arguments that all the elements of claim 1 were also disclosed either in an article by Premachandran or in U.S. Patent No. 4,533,795 (“Baumhauer”).

Analog further contended that claim 1 of the ‘231 patent is obvious in view of Halteren in combination with U.S. Patent No. 7,033,127 (“Sjursen”).  Knowles and the OUII again argued in opposition.  ALJ Rogers agreed with Analog, finding that Sjursen disclosed a “package” as that term was construed, and that there is sufficient reason for one of ordinary skill in the art to combine the known elements from Sjursen and Halteren, rendering claim 1 obvious.

Analog also asserted that the combination of Baumhauer and Sjursen renders claim 1 of the ‘231 patent obvious.  Knowles and the OUII again argued in opposition, and ALJ Rogers again agreed with Analog.  Specifically, ALJ Rogers determined that while Baumhauer does not disclose a “package” as that term was construed, it disclosed all of the other limitations of claim 1, and that there is adequate reason for one of ordinary skill in the art to combine the two references, as both expressly address the field of microelectronic microphones in hearing aids.

Knowles argued that evidence of commercial success, licensing activity, praise by others, and copying by others support a finding of non-obviousness of claim 1 of the ‘231 patent.  In opposition, Analog and the OUII asserted that Knowles’ alleged evidence did not overcome the strong showing of obviousness.  Based on the record, ALJ Rogers determined that Knowles had at most introduced evidence of industry praise, but that such evidence was insufficient to overcome Analog’s prima facie showing of obviousness.

Regarding the ‘089 patent, ALJ Rogers rejected Analog’s anticipation arguments with respect to Halteren, Premachandran, U.S. Patent No. 6,594,369 (“Une”) and U.S. Patent No. 7,080,442 (“Kawamura”).  ALJ Rogers also was not persuaded that the asserted claims are obvious in view of (1) Halteren in combination with Sjursen, in particular because the evidence did not clearly and convincingly establish that such a combination renders obvious the requirement that the package be “surface mountable;” or (2) the Ohta reference in combination with Une, Premachandran and/or U.S. Patent No. 6,012,335 (“Bashir”), specifically because the combinations did not disclose or suggest at least one patterned conductive layer on the surface on which the transducer is mounted, and because Analog did not meet its burden of providing clear and convincing evidence that one of ordinary skill in the art would be motivated to combine those references.

Analog further argued that Halteren renders obvious the asserted claims of the ‘089 patent when combined with either Une or Kawamura because there is sufficient motivation for one of ordinary skill in the art to make the combinations, either one of which the parties agree would disclose all the elements of the asserted claims.  In opposition, both Knowles and the OUII contended that there would be no such motivation to make either combination.  Based on the record, ALJ Rogers found that there is in fact clear and convincing evidence that one of ordinary skill in the art would be moved to combine Halteren with either Une or Kawamura, on the grounds that (1) the contact pads on the bottom of Halteren can be anywhere along the flexible member, and the position is just a matter of “individual design;” (2) one of the objectives in both Halteren and Une is to create a microphone package suitable for automated assembly onto a printed circuit board; and (3) while the packages of Halteren and Kawamura differ, the inventions are similar and both are directed to solving similar problems in the same industry.

Regarding secondary considerations, the parties’ made the same arguments with respect to the ‘089 patent as they did in connection with the ‘231 patent.  ALJ Rogers likewise came to the same conclusion, i.e., that Knowles had at most introduced evidence of industry praise, but that such evidence was insufficient to overcome Analog’s prima facie showing of obviousness.

In addition, ALJ Rogers determined that the ‘089 patent meets the written description and enablement requirements of 35 U.S.C. § 112, rejecting the OUII’s arguments that (1) one of ordinary skill in the art would not recognize what is claimed based upon the construction of “volume” that was adopted, and (2) the ‘089 patent does not provide any description or enabling disclosure of a package that would include a “front” volume.  Analog took no position on either question.

Infringement

ALJ Rogers concluded that, if claim 1 of the ‘231 patent were deemed valid, Knowles proved by a preponderance of the evidence that the accused products literally infringe.  In addition to finding all of the claim elements in the accused products, ALJ Rogers rejected Analog’s two non-infringement arguments based on Knowles’ proposed construction of “package” and Analog’s proposed construction of “acoustic port,” neither of which were adopted.

Likewise, ALJ Rogers concluded that, if the asserted claims of the ‘089 patent were deemed valid, Knowles proved by a preponderance of the evidence that the accused products literally infringe.  Specifically, ALJ Rogers found that the accused products comprise a “package” and practice a “volume” as those terms were defined in claim 1.  ALJ Rogers determined that dependent claims 2, 7, 16, 17, 18 and 20 also infringe since the evidence cited by Knowles was unrebutted and established that the accused devices practice each and every element set forth in those claims.

Domestic Industry

ALJ Rogers determined that Knowles’ significant investment in plant and equipment and significant employment of labor and capital related to its SiSonic product satisfied the economic prong of the domestic industry requirement for both the ‘231 and ‘089 patents.  However, ALJ Rogers concluded that Knowles failed to satisfy the technical prong because each of the asserted claims are invalid, as it is a complainant’s burden to prove that its domestic industry practices a valid claim.

Assuming that the asserted claims were deemed valid, ALJ Rogers determined that Knowles would satisfy the technical prong with respect to the asserted claims of both patents because its SiSonic products are “packages” as that term was correctly construed.

Remedy & Bond

In the event that a violation of Section 337 is found by the Commission, ALJ Rogers recommended issuance of a limited exclusion order covering the silicon microphone packages and products containing same found to infringe the asserted patents, and a bond rate of 3%.  ALJ Rogers declined to recommend issuance of a cease and desist order since Knowles failed to demonstrate that Analog maintained a “commercially significant” inventory of accused products.
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