Spansion, Inc. v. International Trade Commission

United States Court of Appeals
for the Federal Circuit
__________________________

SPANSION, INC. AND SPANSION, LLC,
Appellants,
AND

FREESCALE SEMICONDUCTOR, INC.,
Appellant,
AND

ATI TECHNOLOGIES, ULC,
Appellant,
AND

STMICROELECTRONICS N.V.,
Appellant,
AND

QUALCOMM INCORPORATED,
Appellant,
v.
INTERNATIONAL TRADE COMMISSION,
Appellee,
AND

TESSERA, INC.,
Intervenor.
__________________________

2009-1460, -1461, -1462, -1465
__________________________
SPANSION INC v. ITC 2

On appeal from the United States International Trade
Commission in Investigation No. 337-TA-605.
__________________________

Decided: December 21, 2010
__________________________

CARTER G. PHILLIPS, Sidley Austin LLP of Washing-
ton, DC, argued for all appellants. With him on the brief
for STMicroelectronics N.V. were ERIC A. SHUMSKY, ERIC
M. SOLOVY of Washington, DC; and EDWARD V. ANDERSON
and RUSSELL L. JOHNSON of San Francisco, California. Of
counsel was RUTHANNE M. DEUTSCH of Washington, DC.

On the brief for Spansion, Inc., et al. were PAUL D.
CLEMENT, GILBERT KAPLAN, DARYL JOSEFFER and DAWN-
MARIE BEY King & Spalding Austin LLP of Washington,
DC; and ETHAN HORWITZ of New York, New York. Of
counsel was CHARLES ADAMS PANNELL, III of Atlanta,
Georgia.

KENNETH R. ADAMO, Jones Day, of Cleveland, Ohio,
for appellant Freescale Semiconductor, Inc. With him on
the brief were SUSAN M. GERBER; and BLANEY HARPER and
LAWRENCE D. ROSENBERG of Washington, DC. Also on the
brief for appellant ATI Technologies, ULC, were MICHAEL
J. BETTINGER, STEPHEN M. EVERETT and ELAINE Y. CHOW,
K&L Gates LLP, of San Francisco, California.

STEPHEN B. KINNAIRD, Paul, Hastings, Janofsky &
Walker LLP of Washington, DC, for Qualcomm Incorpo-
rated. With him on the brief were IGOR V. TIMOFEYEV;
AMY E. SIMPSON of San Diego, California; TERRENCE P.
MCMAHON, DAVID H. DOLKAS, and DAVID L. LARSON of
Menlo Park, California. Of counsel on the brief were
3 SPANSION INC v. ITC

DANIEL R. FOSTER, McDermott Will & Emery LLP of
Irvine, California; MATTHEW J. GRYZLO of Chicago, Illi-
nois; MARGARET D. MACDONALD, and JULIANA M.
COFRANCESCO, Howrey LLP,of Washington, DC.

MEGAN M. VALENTINE, Attorney, Office of the General
Counsel, United States International Trade Commission
of Washington, DC, argued for appellee. With her on the
brief were JAMES M. LYONS, General Counsel, and
ANDREA C. CASSON, Assistant General Counsel for Litiga-
tion.

BENJAMIN W. HATTENBACH, Irell & Manella LLP of
Los Angeles, California, argued for Intervenor. With him
on the brief were MORGAN CHU, JONATHAN H. STEINBERG,
KENNETH J. WEATHERWAX and MARK A. KRESSEL. Of
counsel on the brief were MIGUEL A. ESTRADA and WAYNE
BARSKY, Gibson, Dunn & Crutcher LLP of Washington,
DC and Los Angeles, California, respectively; and
AMANDA TESSAR of Denver, Colorado.
__________________________

Before LOURIE, FRIEDMAN, and LINN, Circuit Judges.
LINN, Circuit Judge.
Tessera, Inc. (“Tessera”) filed a complaint with the
United States International Trade Commission (“the
Commission” or “ITC”) on April 17, 2007 under section
337 of the Tariff Act of 1930, 19 U.S.C. § 1337(a)(1)(B),
alleging that seven respondents infringed U.S. Patents
No. 5,852,326 (the “’326 patent”) and No. 6,433,419 (the
“’419 patent”) through the importation or sale of certain
semiconductor chips or products containing such chips.
See In re Certain Semiconductor Chips with Minimized
Chip Package Size and Products Containing Same, 72
Fed. Reg. 28521 (Int’l Trade Comm’n May 21, 2007).
SPANSION INC v. ITC 4

Tessera named as respondents Spansion, Inc. and Span-
sion, LLC (collectively, “Spansion”); Freescale Semicon-
ductor, Inc. (“Freescale”); ATI Technologies, ULC (“ATI”);
STMicroelectronics N.V. (“STMicro”); QUALCOMM, Inc.
(“Qualcomm”); and Motorola, Inc. (“Motorola”) (collec-
tively, “Respondents”). Motorola subsequently settled its
dispute with Tessera and was dismissed from the case.
All other Respondents (collectively “Appellants”) now
appeal the Commission’s final determination, ruling that
Appellants directly infringe the asserted claims of the
’326 patent and contributorily infringe the asserted claims
of the ’419 patent. In re Certain Semiconductor Chips
With Minimized Chip Package Size and Products Contain-
ing Same, No. 337-TA-605, slip op. at 79 (Int’l Trade
Comm’n May 20, 2009) (Public Version) (“Final Determi-
nation”). Because the Commission’s decision is supported
by substantial evidence and is not contrary to law, this
court affirms.
I. BACKGROUND
A. Technology
The ’326 and ’419 patents, share a common specifica-
tion and describe semiconductor chip packages. A semi-
conductor chip is a widely used miniaturized electronic
circuit that has been manufactured in the surface of
semiconductor material. A semiconductor chip package
includes both the casing, which protects the chip, and the
electrical connections (sometimes called “terminals” or
“contact pads”), which allow the chip to be attached to a
printed circuit board (“PCB”). The printed circuit board,
in turn, can be connected to other components of an
electrical device.
The present investigation relates to semiconductor
packages containing face-up semiconductor chips in ball
grid array assemblies. These are packages designed such
5 SPANSION INC v. ITC

that the side of the chip containing the electrical contacts
(the “face” of the chip) faces away from a backing element
(also referred to as a substrate, package substrate, or
interposer) on which the chip is mounted via “die attach,”
which is the material used to mount the chip on the
backing element. 1 The electrical contacts on the top of
the chip are connected to the top side of the backing
element by fine wires called “leads.” The bottom side of
the backing element has terminals that are laid out in a
grid pattern. These terminals are intended to be electri-
cally attached to the contact pads on the printed circuit
board using solder balls. An encapsulant encases the
package to provide insulation and protection of the pack-
age components. Figure 2 depicts a sectional view of a
face-up ball grid array chip package electrically attached
to a PCB.

1 The word substrate generally refers to an underly-
ing layer and may be used to refer to different things
depending on context. Throughout the record, the word
substrate is used in different places to refer to different
components. Substrate is sometimes used to refer to the
layer within the semiconductor package on which the chip
is attached using die attach (see label “Package Sub-
strate” in the figure below). This component is referred to
in the patents as the “backing element.” Substrate is also
used to refer to the printed circuit board (external to the
semiconductor package) on which the package is attached
using solder balls (see “PCB” in the figure below). In the
patents, the word substrate refers to the printed circuit
board. For purposes of clarity, this opinion will use the
words backing element and printed circuit board instead
of substrate when referring to the respective structures.
SPANSION INC v. ITC 6

As shown in Figure 2, chip 28 with electrical contacts
40 is mounted on a substrate (PCB) 20 with an inter-
poser/package substrate 42 between the chip and the
PCB. ’326 patent col.10 ll.23-67. The solder balls 52 bond
each terminal 48 to the associated contact pad 24. Id.
Each terminal 48 is also connected to one of the contacts
40 on chip 28 by a flexible lead 50. Id. Electrical devices
generate heat during operation and subsequently cool
when operation ceases. The electrical interconnections
within the package (between the semiconductor chip and
the backing element) and between the package and the
printed circuit board are subjected to substantial strain
resulting from expansion and contraction caused by these
changes in temperature. Since the components are ordi-
narily formed by different materials having different
coefficients of thermal expansion, the chip, the backing
element, and the printed circuit board expand and con-
tract by different amounts with each power cycle. This
difference, called the differential thermal expansion,
causes the electrical contacts on one component to move
relative to the contacts of another component to which it
is attached as the temperatures of the different compo-
nents change. For instance, a semiconductor chip has a
much lower coefficient of thermal expansion than either
7 SPANSION INC v. ITC

the backing element or the printed circuit board. During
heating, the backing element beneath the chip tends to be
constrained by the chip and expands much less than the
board on which it is mounted, causing relative movement
there between. This relative movement causes mechani-
cal stress on the solder balls because the bottoms of the
solder balls get pulled outward relative to the tops caus-
ing distortion. Repeated cycles of heating and cooling can
ultimately lead to permanent damage to the solder balls
and breakage of the electrical interconnections.
The patents at issue describe a semiconductor pack-
age with the ability to accommodate this relative move-
ment between components by inserting a layer of
compliant material that is “flexible, compressible, and/or
elastic” between the chip and its backing element. ’326
patent col.3 ll.61-64 (“Most preferably, a compliant layer
is disposed between said terminals and said chip so that
said compliant layer will be compressed upon movement
of said terminals toward said chip.”); see also In the Mat-
ter of Semiconductor Chips With Minimized Chip Package
Size and Products Containing Same, Inv. No. 337-TA-605,
slip op. at 42 (Int’l Trade Comm’n Dec. 1, 2008) (Public
Version) (“Initial Determination”). This compliant layer
permits the terminals on the backing element to move
relative to the chip inside the package offsetting some of
the stress on the solder balls due to differential thermal
expansion. The reduction of stress on the solder balls in
turn decreases the occurrence of package failure and
improves the reliability of the electrical devices contain-
ing such packages.
Tessera asserted claims 1, 2, 6, 12, 16-19, 21, 24-26,
and 29 of the ’326 patent and claims 1-11, 14, 15, 19, and
22-24 of the ’419 patent against Respondents. Claim 1 of
the ’326 patent and claim 1 of the ’419 patent are repre-
sentative of the asserted claims and are set forth below
SPANSION INC v. ITC 8

with emphasis added to show limitations disputed in this
appeal:
’326 patent:
1. A semiconductor assembly comprising:
a semiconductor chip having oppositely
facing front and rear surfaces and edges
extending between said front and rear sur-
faces, said chip further having contacts on
a peripheral region of said front surface;
a backing element having electrically con-
ductive terminals and lead portions
thereon, wherein said lead portions are
connected to said terminals, said backing
element overlying said rear surface of said
semiconductor chip such that at least
some of said terminals overlie said rear
surface of said chip:
bonding wires connected to said contacts
on said front surface of said chip, said
bonding wires extending downwardly
alongside said edges of said chip and being
connected to the lead portions on the back-
ing element;
wherein said terminals are movable with
respect to said chip.
’326 patent col.34 ll.18-36 (emphases added).
’419 patent:
1. A semiconductor assembly comprising:
a) a semiconductor chip having a front
surface, a rear surface and contacts on
9 SPANSION INC v. ITC

said front surface, said semiconductor chip
having a coefficient of thermal expansion;
b) a substrate [PCB] adapted to physi-
cally support the chip and electrically in-
terconnect the chip with other elements of
a circuit, said substrate having a set of
contact pads thereon, said substrate hav-
ing a coefficient of thermal expansion, said
semiconductor chip overlying said sub-
strate so that said chip overlies at least
some of said contact pads of said set and
so that said rear surface of said chip faces
toward said substrate and said contact
pads:
c) a backing element having electrically
conductive terminals and electrically con-
ductive lead portions electrically con-
nected to said terminals and to said
contacts on said chip, said backing ele-
ment having a central region aligned with
said chip and disposed between said rear
surface of said chip and said substrate,
said terminals of said backing element be-
ing bonded to said contact pads on said
substrate, at least some of said terminals
of said backing element being disposed in
said central region of said backing element
and being movable with respect to the chip
to compensate for differential thermal ex-
pansion of the chip and substrate.
’419 patent col.34 ll.18-43 (emphasis added).
Prior to the invention described in the ’326 and ’419
patents, the differential thermal expansion problem was
known. Several design strategies to address the problem
SPANSION INC v. ITC 10

also were known. One strategy, called “CTE matching,”
selects materials for package components that have
similar coefficients of thermal expansion. Another strat-
egy uses solder balls made of deformable material to
absorb some of the strain. Both of these strategies were
disclosed in prior art U.S. Patent No. 5,216,278 (the “Lin
patent”). During prosecution of the ’419 patent, the
patent examiner rejected the pending claims as antici-
pated by the Lin patent. To overcome this rejection,
Tessera distinguished solder ball deformation and CTE
matching from the “claimed movement.” Id. at 48. Much
of the ITC investigation and the arguments in this appeal
revolve around the definition of “claimed movement” and
how to determine whether it exists in the accused devices.
The claims of the ’326 and ’419 patents recite that the
terminals on the bottom of the backing element are move-
able with respect to the semiconductor chip. ’326 patent
col.34 ll.35-36 (“terminals are movable with respect to
said chip”); ’419 patent col.34 ll.41-44 (“terminals . . .
movable with respect to the chip to compensate for differ-
ential thermal expansion of the chip and substrate”); id.
col.35 ll.32-35 (“movement of said terminals . . . with
respect to the chip to compensate for differential thermal
expansion of the chip and substrate”). Consistent with
Tessera’s statements during prosecution, the Commission
construed all of these limitations to “require that ‘in the
operation of the assembly, the terminals are capable of
being displaced relative to the chip by external loads
applied to the terminals, to the extent that the displace-
ment appreciably relieves mechanical stresses, such as
those caused by [differential thermal expansion] which
would be present in the electrical connections absent such
displacement.’” Final Determination at 14 (quoting
Initial Determination at 57-58). By using the term “ex-
ternal loads,” the ALJ differentiated between the move-
11 SPANSION INC v. ITC

ment of a package’s components caused by internal loads
versus those caused by external loads. Internal loads
result from the inherent expansion and contraction of
components inside the package as temperature changes,
and are generated whether the package is connected to a
printed circuit board (“on-board”) or not (“off-board”).
Movement resulting from internal loads (i.e. “CTE match-
ing”) was disclaimed by Tessera as present in the prior
art. External loads are forces that a printed circuit board
exerts on a package because of differential thermal ex-
pansion and, because they involve a printed circuit board,
can only occur when the package is on-board. The
claimed movement is only that movement resulting from
external loads (i.e. the use of a compliant layer between
the chip and backing element) that allows the backing
element to move with the printed circuit board. Thus,
under the ALJ’s construction, to prove that an accused
package infringes the asserted claims, Tessera must show
that: “(1) the terminals are capable of being displaced
with respect to the chip by external loads and (2) the
displacement caused by the external loads appreciably
relieves mechanical stresses.” Initial Determination at
58. Tessera does not dispute this construction.
To show that the accused products practiced the
claimed movement and that movement appreciably re-
lieved mechanical stress, Tessera’s expert, Dr. Qu, ana-
lyzed a subset of the accused products from each
Respondent. Much of this appeal concerns Respondents’
contention that Dr. Qu’s test results do not support the
ITC’s finding of infringement. Specifically, Dr. Qu se-
lected seven packages from ATI, eight from Freescale,
nine from Qualcomm, nine from Spansion, and nineteen
from STMicro, for a total of 52 representative products.
Id. at 56. Dr. Qu performed several tests on each of the
representative products to determine whether they prac-
SPANSION INC v. ITC 12

ticed the claimed movement. The first two tests consisted
of a type of computer simulation known as finite element
analysis modeling. To perform such an analysis on a chip
package, a computer representation is created by input-
ting numeric values representing the chip package’s
materials, including geometric dimensions and physical
properties, into modeling software. This computer repre-
sentation of a package is then subjected to simulated
physical conditions, such as thermal cycling, to generate
an approximation of how the package will operate in the
physical world. This modeling is well accepted and used
throughout the electronic industry for predicting and
confirming reliability of semiconductor packages, but it is
not generally concerned with which specific components
may be responsible for the improvement. Id. at 58 n.16.
For both of his modeling tests, Dr. Qu created com-
puter representations of the 52 representative accused
products. In addition, for each of the 52 representative
products, Dr. Qu created a corresponding hypothetical
“baseline” package. The baseline packages were to be
identical in every way to the actual packages except that
they were designed not to have any movement due to
external loads. To this end, the compliant layer was
virtually removed in the baseline packages. This was
accomplished by replacing the numeric values represent-
ing the compliant layers between the chip and the back-
ing element with stiffer materials.
Dr. Qu’s first modeling test (“Test 1”), also called the
“thermal cycling test,” simulated thermal cycling of each
of the accused packages and each of the baselines with the
packages on-board. Dr. Qu then compared the movement
of the actual package with the movement of the corre-
sponding baseline package. According to Dr. Qu, since
the baseline package would show only movement due to
internal forces, any movement in the actual package
13 SPANSION INC v. ITC

above the movement in the baseline would be due solely
to external forces. Dr. Qu also calculated the resulting
“plastic work,” a measure of stress on the solder balls, for
each of the accused and corresponding baseline packages.
Dr. Qu’s second modeling test (“Test 2”), also called
the “direct loading” test, compared the off-board and on-
board behavior of the representative accused packages
during thermal cycling. According to Dr. Qu, modeling
the representative accused packages off-board isolated
movement due to solely internal loads because external
loads, by definition, only occur when the packages are on-
board. On the other hand, modeling representative
accused packages on-board resulted in movement due to
both internal and external loads. Accordingly, to find the
movement due only to external loads, Dr. Qu subtracted
the displacement shown by the off-board configuration
from that shown by the on-board configuration. Dr. Qu
acknowledged that one problem with Test 2 was the
requirement of a “linearity assumption.” In reality,
movement in the system is non-linear─movement in the
on-board configuration (when both internal and external
loads are applied) is not exactly the sum of the move-
ments due to internal and external loads alone when they
are separately applied. Instead, there is some interaction
between the internal loads and external loads. When a
package is on-board, the movement caused by external
loads may cause more or less movement to occur due to
internal loads. However, since Dr. Qu could not quantify
the nonlinearity in the system, he had to make the “line-
arity assumption,” that movement due to internal and
external loads on-board is the sum of movement due to
internal and external loads applied separately. After
approximating the amount of displacement due to exter-
nal loads by subtracting the off-board displacement from
the on-board displacement, Dr. Qu then applied this
SPANSION INC v. ITC 14

external load to the bottom of the solder balls on off-board
models of both the actual and baseline packages. Apply-
ing this calculated external load to a package approxi-
mated the stress caused by external loads during thermal
cycling. Dr. Qu then assessed the effect of this stress by
measuring the amount of damage to the solder balls in
both packages. He found that there was improved reli-
ability in the modeled actual packages as compared to the
baseline packages.
Dr. Qu performed one last test, the “Moirè test,” de-
signed to validate the modeling tests. Moirè testing is an
experimental technique (not a computer simulation) in
which a physical chip package is cut in half and then a
grating with very fine lines is epoxied to the cross-section.
Lasers are used to make optical measurements of that
sample at different temperatures in order to determine
the displacements at various points on the package. Dr.
Qu performed Moirè testing on only four of the 52 repre-
sentative models and used a narrower temperature range,
between +25ºC and +75ºC, than used for the thermal
cycling modeling analysis, which ranged between -25ºC
and +125ºC.
B. Procedural History
The ITC instituted this investigation on May 21,
2007. On December 1, 2008, the presiding administrative
law judge (“ALJ”) issued the Initial Determination, find-
ing that Tessera had not met its burden to show that the
accused products infringed the asserted claims of either
the ’326 patent or the ’419 patent. Initial Determination
at 121. The ALJ also found that the asserted claims of
both patents were not invalid (1) under 35 U.S.C. § 112 ¶
1 for failing to satisfy the enablement or written descrip-
tion requirements; (2) under 35 U.S.C. § 112 ¶ 2 for
15 SPANSION INC v. ITC

indefiniteness; (3) under 35 U.S.C. § 102 for anticipation;
or (4) under 35 U.S.C. § 103 for obviousness. Id. at 119.
On February 22, 2008, based on an ex parte reexami-
nation requested by a non-party and granted by the
United States Patent and Trademark Office (“PTO”)
before Tessera filed its complaint in the ITC, Respondents
filed a joint motion to stay the ITC proceedings pending
the reexamination. The ALJ granted the motion. The
Commission reversed the ALJ’s order and denied Respon-
dents’ stay motion. In the Matter of Certain Semiconduc-
tor Chips with Minimized Chip Package Size and
Products Containing Same, Inv. No. 337-TA-605, 2008
WL 2223426 (Int’l Trade Comm’n May 27, 2008). Re-
spondents then sought a writ of mandamus from this
court to vacate the Commission’s denial. This court
denied the petition because petitioners had not shown
that their right to the writ was clear and indisputable and
because the Commission’s explanation, “that reexamina-
tion proceedings were at an early stage, that the reexami-
nation proceedings might not reach completion before
patents’ expiration, and that the Commission investiga-
tion was at an advanced stage,” was a sufficient basis for
denial of a stay. In re Freescale Semiconductor, Inc., 290
Fed. App’x 326, 326 (Fed. Cir. 2008).
On January 30, 2009, the Commission stated that it
would review portions of the Initial Determination.
Specifically, the Commission noted that it would review
the ALJ’s findings that (1) the accused devices did not
infringe; (2) Tessera waived indirect infringement of the
’419 patent; and (3) Motorola’s invention of the 1989
68HC11 OMPAC chip did not anticipate the asserted
patents. In the Matter of Certain Semiconductor Chips
With Minimized Chip Package Size and Products Contain-
ing Same; Notice of Commission Decision To Review in
Part a Final Determination Finding No Violation of
SPANSION INC v. ITC 16

Section 337, 74 Fed. Reg. 6175-76 (Feb. 5, 2009). After
briefing by the parties, the Commission, on May 20, 2009,
issued the Final Determination overturning, in part, the
ALJ’s holdings. The Commission found both direct and
contributory infringement and issued both limited exclu-
sion and cease-and-desist orders.
Spansion and Freescale sought from this court a stay,
pending appeal, of the Commission’s orders. This court
denied that motion, concluding that Spansion and Frees-
cale had neither met their burden of showing a strong
likelihood of success on the merits nor shown that the
harm factors militated in movants’ favor. Spansion, Inc.
v. Int’l Trade Comm’n, Nos. 2009-1460, -1461, -1462, -
1465, 2009 WL 2876448 (Fed. Cir. Sept. 8, 2009).
On appeal, Appellants challenge two aspects of the
Commission’s determination of the meaning of the claims.
First, Appellants assert that all the asserted claims are
indefinite because the moveable limitation is insolubly
ambiguous. Second, Appellants object to the Commis-
sion’s construction of the claim limitation “downwardly
alongside.” Appellants also appeal the Commission’s
finding of both direct and contributory infringement,
asserting that Tessera failed to meet its burden to show
that the accused products practice the claimed movement.
Finally, Appellants contend that the asserted claims of
both the ’326 and ’419 patents are invalid and appeal the
Commission’s finding that they are not anticipated.
Spansion, on its own, also argues that the Commission’s
award of prospective injunctive relief was erroneous
because it did not properly take into consideration the
public interest. This court has jurisdiction under 28
U.S.C. § 1295(a)(6).
17 SPANSION INC v. ITC

II. DISCUSSION
A. Standard of Review
This court reviews the Commission’s legal determina-
tions de novo and the Commission’s factual findings for
substantial evidence. Alloc, Inc. v. Int’l Trade Comm’n,
342 F.3d 1361, 1368 (Fed. Cir. 2003). Under the substan-
tial evidence standard, “[a] reviewing court must consider
the record as a whole, including that which fairly detracts
from its weight, to determine whether there exists such
relevant evidence as a reasonable mind might accept as
adequate to support a conclusion.” Nippon Steel Corp. v.
U.S., 458 F.3d 1345, 1351 (Fed. Cir. 2006) (internal
quotation marks omitted). This court “must affirm a
Commission determination if it is reasonable and sup-
ported by the record as a whole, even if some evidence
detracts from the Commission’s conclusion.” Id. at 1352
(internal quotation marks omitted).
B. Claim Construction
1. Indefiniteness
The ALJ found that the claims were not invalid for
indefiniteness. Initial Determination at 105-06. The
Commission adopted the conclusions of the ALJ on this
issue. Final Determination at 76. “Indefiniteness re-
quires a determination whether those skilled in the art
would understand what is claimed.” Enzo Biochem, Inc.
v. Applera Corp., 599 F.3d 1325, 1332 (Fed. Cir. 2010)
(internal quotation marks omitted). To make that deter-
mination, general principles of claim construction apply.
Id. at 1331 (internal quotation marks omitted). While
claim construction primarily relies on intrinsic evidence,
extrinsic evidence, such as expert testimony, may also be
used when given the appropriate weight by the trial court.
Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342,
SPANSION INC v. ITC 18

1348 (Fed. Cir. 2005). “Because a patent is presumed to
be valid, the evidentiary burden to show facts supporting
a conclusion of invalidity is one of clear and convincing
evidence.” Id. at 1345. This court reviews the Commis-
sion’s determination on indefiniteness de novo. Exxon
Research & Eng’g Co. v. United States, 265 F.3d 1371,
1376 (Fed. Cir. 2001).
On appeal, Appellants argue that the ALJ incorrectly
determined that the “moveable” limitation found in each
of the asserted claims is not indefinite. As described
above, the ALJ interpreted the movable limitation to
require that “in the operation of the assembly, the termi-
nals are capable of being displaced relative to the chip by
external loads applied to the terminals, to the extent that
the displacement appreciably relieves mechanical
stresses, such as those caused by differential thermal
expansion which would be present in the electrical con-
nections absent such displacement.” Initial Determina-
tion at 57-58. Appellants contend that a person of
ordinary skill would not understand whether movement
of the terminals “appreciably relieve[d] mechanical
stresses” as required by the Commission’s construction
and thus would not be able to determine how much
movement constitutes infringement. Appellants argue
that because the patents do not define any standard for
measuring stress relief, there is no anchor for determin-
ing when stress relief is “appreciable.” Moreover, Appel-
lants contend that the asserted patents fail to distinguish
between the claimed movement and other unclaimed
movement that is present in chip packages. Tessera
responds that the Commission correctly determined that
the “moveable” language is definite, arguing that both the
specification and expert testimony support the Commis-
sion’s conclusion that a person of ordinary skill would
understand the boundaries of the claims. This court
19 SPANSION INC v. ITC

agrees with the Commission that the claims are not
indefinite.
First, this court is not persuaded by Appellants’ ar-
gument that the claims do not provide a way to determine
how much movement constitutes infringement. The ALJ
found that “the evidence shows that one skilled in the art
would readily be able to understand the scope of the
asserted claims of the ’326 and ’419 patents when read in
light of the specifications.” Id. at 105. Both the intrinsic
and extrinsic evidence support this finding.
The intrinsic evidence provides guidance both on the
mechanical stresses that cause the problem and the kind
of movement that will relieve those stresses. The specifi-
cation indentifies the cause of the mechanical stress
resulting from thermal cycling as the “relative movement
[which] deforms the electrical interconnections between
the chip and substrate.” ’326 patent col.2 ll.17-19. It then
goes on to identify a solution to the problem in providing
“a compliant layer [] disposed between said terminals and
said chip so that said complaint layer will be compressed
upon movement of said terminals toward said chip.” Id.
col.3 ll.61-64. This disclosed and described movement is
what “provides compensation for differential thermal
expansion of the chip and substrate,” Id. col.4 ll.9-11, and
enables “the assembly [to be] substantially resistant to
thermal cycling.” Id. col.20 l.40.
The extrinsic evidence also supports the ALJ’s find-
ing. Experts for both Tessera and Appellants testified
that one of ordinary skill in the art would have been able
to determine the boundaries of the claims. For example,
Appellants’ expert, Dr. Sitaraman stated that he was
“able to conduct a noninfringement analysis based on the
Tessera description” and that he was “able to find out the
movement due to external forces alone.” Trial Ex. RX-
SPANSION INC v. ITC 20

3179C (witness statement of Dr. Sitaraman, Feb. 14,
2008) at ¶ 85, J.A. 78130; Hr’g Tr. 971:6-11 (July 17,
2008), J.A. 12003; see Initial Determination at 105 (“[T]he
evidence shows that two of [Appellants’] own experts were
able to discern the metes and boundaries of the asserted
claims. In particular, Dr. Sitaraman was able to discern a
dividing line between what an appreciable relief of stress
is and what is not. Additionally, Dr. Madenci testified in
this Investigation that he was able to determine what
would literally be within the scope of the asserted claims.”
(internal citations omitted)). In addition, Tessera’s ex-
pert, Dr. Ivey, stated that “a person of ordinary skill in
the art would have understood that the claimed move-
ment required terminals that could move relative to the
chip to provide substantial compensation for differential
thermal expansion and thus significantly improve reli-
ability at the connections.” Trial Ex. CX-3205C ¶ 377,
J.A. 51424 (witness statement of Dr. Ivey, Feb. 16, 2008).
The ALJ had the right to credit that testimony. See
Datamize, 417 F.3d at 1348; Orthokinetics, Inc. v. Safety
Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986).
This court does not find persuasive Appellants’ arguments
that the ALJ misinterpreted the expert testimony.
Moreover, the claims were intended to cover the use of
the invention with semiconductor packages made of a
number of materials, each having different coefficients of
thermal expansion and differing thermal expansion rates.
Interpreting the claimed term “movable” in terms of
appreciable relief of mechanical stress is as precise as
need be and “reasonably apprise[s] those skilled in the art
both of the utilization and scope of the invention.” Shat-
terproof Glass Corp. v. Libbey-Owens Ford Co., 758 F.2d
613, 624 (Fed. Cir. 1985) (internal quotations omitted).
Second, this court disagrees with Appellants’ argu-
ment that the asserted claims are indefinite because the
21 SPANSION INC v. ITC

patents provide no method for distinguishing claimed
movement from unclaimed movement. Whether a patent
clearly differentiates itself from specific prior art “is an
important consideration in the definiteness inquiry.”
Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d
1244, 1252 (Fed. Cir. 2008). Here, the prosecution history
clearly differentiates claimed from unclaimed movement.
During prosecution of the ’419 patent, the patent exam-
iner rejected the pending claims as anticipated by the Lin
patent. In response, Tessera distinguished the Lin patent
by differentiating solder ball deformation and “CTE
matching” from the claimed movement. Initial Determi-
nation at 48 (“Indeed, Lin’s teaching that one should rely
upon deformable solder balls and CTE matching of the
‘carrier substrate 12’ and the printed circuit board as a
full and adequate solution to the problem of solder joint
fatigue leads away from any suggestion that one should
provide terminals movable relative to the chip to deal
with this problem.”) (quoting Trial Ex. JX-0003 prosecu-
tion history of the ’419 patent, amendment dated Aug. 20,
2001 at 4-5). Thus, the prosecution history makes clear
that claimed movement is limited to movement caused by
external loads as opposed to movement caused by internal
loads.
Although determining whether claimed movement
was present in the accused packages required an expert
using detailed computer simulations, this alone does not
indicate that the claims are indefinite. The difficulty or
complexity of the infringement analysis does not necessar-
ily speak to whether a claim is definite or not. See
Datamize, 417 F.3d at 1354 (stating that “indefiniteness
does not depend on the difficulty experienced by a particu-
lar person in comparing the claims with the prior art or
the claims with allegedly infringing products or acts”);
SmithKline Beecham Corp. v. Apotex Corp., 403 F.3d
SPANSION INC v. ITC 22

1331, 1340-41 (Fed. Cir. 2005) (“The test for indefinite-
ness does not depend on a potential infringer’s ability to
ascertain the nature of its own accused product to deter-
mine infringement, but instead on whether the claim
delineates to a skilled artisan the bounds of the inven-
tion.”). Appellants did not carry their burden of persuad-
ing the Commission, nor have they persuaded this court,
that the asserted claims of the ’326 and ’419 patents are
invalid for indefiniteness.
2. “Downwardly Alongside”
Appellants appeal the Commission’s construction of
the claim limitation “bonding wires extending down-
wardly alongside said edges of said chip” included in
claim 1 of the ’326 patent. The Commission construed the
limitation to mean “along the side of the semiconductor
chip, with the caveat that one of ordinary skill in the art
would understand that through the wire bonding process,
the bonding wires may extend up, outward and then
downward toward the backing element.” Initial Determi-
nation at 39-40. The Commission based this finding on
the specification’s description of the bonding wires as
conventional and the understanding of one of skill in the
art that the conventional wire bonding process may cause
bonding wires to extend up, out, and then down. Id. at
38-39.
Appellants argue that this construction impermissibly
broadens the claim limitation and renders the term
“alongside” superfluous because it does not specify how
far from the semiconductor chip edge the bonding wires
are allowed to fan out. Appellants’ position is that the
specification and prosecution history require that the
limitation define “alongside” as being “in close proximity”
to the edges of the semiconductor chip. Specifically,
Appellants cite Figure 26 in the ’326 patent and its de-
23 SPANSION INC v. ITC

scription stating “alongside the chip, in close proximity to
the edges of the chip” as defining “alongside” to include
the limitation “in close proximity.” ’326 patent col.31
ll.14-15. In addition, Appellants assert that the specifica-
tion does not support the Commission’s finding that the
invention discloses using conventional wire bonding
because Figure 29 distinguishes between a subassembly
embodying the claimed invention and another chip that
uses conventional bonding wires. Finally, Appellants
contend that the prosecution history confirms that “along-
side” means “in close proximity” because during the
prosecution of U.S. Patent No. 5,347,159 (the “’159 pat-
ent”), the parent of the ’326 patent, the inventors ex-
pressly distinguished their invention from the prior art
Kishida patent for not disclosing conductive leads “along-
side” the edges of a chip. Instead, the inventors stated
that the prior art conductive leads “extend outwardly
from the various chips rather than upwardly alongside of
the chips.” This court is not persuaded by any of these
arguments.
This court agrees with the ALJ that the proper con-
struction of “downwardly alongside” includes conventional
bonding wires. The specification discloses only conven-
tional wires that are connected between elements using a
conventional wire bonding process. ’326 patent col.29
ll.26-46. Figure 14 demonstrates conventional bonding
wires extending up, out, and then down. Id. col.18 ll.58-
60. Appellants do not disagree that conventional wire
bonds attaching elements on one side of the chip to ele-
ments on the other extend up, out, and then down. In
fact, Appellants concede that all the accused products use
conventional wire bonding, with wires that extend “up
from the chip contacts, and out and away from the chip”
before extending down to attach to contacts on the rear
side of the chip. Freescale’s Principal Br. at 59-60. And
SPANSION INC v. ITC 24

Appellants do not point to any language in the specifica-
tion that discloses wires bonded in a different manner.
Figure 26 discloses the use of trace leads, labeled 948,
in addition to bonding wires, labeled 928. Appellants’
reliance on this figure and its description including the
phrase “in close proximity” is misplaced because that
description refers only to the leads, and not to the bonding
wires. ’326 patent col.29 ll.19-20. The only bonding wires
illustrated in Figure 26 do in fact extend upward, outward
and then downward from contacts but then terminate at
the point where they connect to trace leads above the face
of the chip. Appellant’s reliance on Figure 29 is simi-
larly misplaced. Figure 29 does not illustrate the use of
bonding wires to attach contacts on one side of the chip to
terminals on the other side of the chip. Instead, Figure 29
shows a semiconductor package using leads and flaps for
this purpose.
Finally, this court is not persuaded that the inventors
disclaimed bonding wires not in close proximity to the
semiconductor chip in the prosecution of the ’159 patent.
Appellants argue that the inventors’ statement “these
wiring films extend outwardly from the various chips
rather than upwardly alongside of the chips” distin-
guishes the prior art Kishida wiring films (shown below)
from connections that extend downwardly alongside the
semiconductor chip. J.A. 62395. This court does not
agree.
25 SPANSION INC v. ITC

First, the ’159 patent claims disclose leads and flaps
rather than bonding wires for electrically connecting one
side of the semiconductor chip to the other. Therefore,
any disclaimers specifically relating to the type of connec-
tion do not apply to the ’326 patent. See Saunders Group,
Inc. v. Comfortrac, Inc., 492 F.3d 1326, 1333 (Fed. Cir.
2007) (“When the purported disclaimers are directed to
specific claim terms that have been omitted or materially
altered in subsequent applications (rather than to the
invention itself), those disclaimers do not apply.”); see also
Ventana Med. Sys. v. Biogenex Labs., 473 F.3d 1173, 1182
(Fed. Cir. 2006) (“[T]he doctrine of prosecution disclaimer
generally does not apply when the claim term in the
descendant patent uses different language.”); Invitrogen
Corp. v. Clontech Labs., Inc., 429 F.3d 1052, 1078 (Fed.
Cir. 2005) (“[T]he prosecution of one claim term in a
parent application will generally not limit different claim
language in a continuation application.”).
Second, even if the inventors’ statement was related
not to the type of connection, but to the mutual claim
term “alongside,” it is still unclear that it was a dis-
claimer of connections not in close proximity to the chip
edge. Instead of distinguishing the invention from Ka-
shida because of the distance of the wiring films from the
SPANSION INC v. ITC 26

chip edge, it is at least as likely that the inventors were
distinguishing the invention from the prior art wiring
films because the films never extend along the sides of the
chips─the prior art wiring films extend up and out, but
never down. Thus, the inventors’ statement was not
sufficiently clear to establish that a disclaimer occurred.
See Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314,
1325 (Fed. Cir. 2003) (“To balance the importance of
public notice and the right of patentees to seek broad
patent coverage, we have thus consistently rejected prose-
cution statements too vague or ambiguous to qualify as a
disavowal of claim scope.”).
For the foregoing reasons, this court affirms the
Commission’s construction of the downwardly alongside
limitation. Therefore, this court need not address Appel-
lants’ argument that the accused packages do not infringe
under their preferred construction.
C. Infringement
On the issue of infringement, the ALJ, in the Initial
Determination, and the Commission, in the Final Deter-
mination, came to contradictory conclusions on several
factual issues and the ultimate conclusion. Each party in
this appeal, not surprisingly, argues that the opinion
supporting its position is correct. However, “we do not
‘review’ the correctness of the ALJ’s initial decision or the
correctness of the Commission’s ‘reversal.’” Fischer &
Porter Co., Inc. v. Int’l Trade Comm’n, 831 F.2d 1574,
1577 (Fed. Cir. 1987). Instead, “19 U.S.C. § 1337(c),
directs that on appeal to this court, this court must review
the ‘final determination of the Commission . . . in accor-
dance with chapter 7 of title 5 [i.e., the Administrative
Procedure Act (APA)].’” Id. While the ALJ’s opinion may
be probative, “this court may not substitute its judgment
for the Commission’s final determination on the ground
27 SPANSION INC v. ITC

that the court believes the ALJ’s . . . view is ‘more reason-
able.’” Id. Under the APA, this court reviews the Com-
mission’s factual findings, such as its finding of
infringement, for substantial evidence. See 5 U.S.C. §
706(2)(E); Finnigan Corp. v. Int’l Trade Comm’n, 180 F.3d
1354, 1361-62 (Fed. Cir. 1999).
1. Direct Infringement
To prove direct infringement, Tessera must establish
by a preponderance of the evidence that “one or more
claims of the patent read on the accused device literally or
under the doctrine of equivalents.” Cross Med. Prods.,
Inc. v. Medtronic Sofamore Danek, Inc., 424 F.3d 1293,
1310 (Fed. Cir. 2005); Enercon GmbH v. Int’l Trade
Comm’n, 151 F.3d 1376 (Fed. Cir. 1998). The arguments
on this issue are extremely complex and highly technical.
However, the dispute narrows to a single question of fact:
whether the accused products meet the moveable limita-
tion found in all the asserted claims of both the ’326 and
’419 patents. Appellants assert that Tessera failed to
show, through its presentation of Dr. Qu’s tests, that the
accused products either practiced the claimed movement
or that such movement caused appreciable stress relief.
Tessera and the ITC respond that Dr. Qu’s tests properly
established substantial evidence of infringement.
Appellants cite with approval the ALJ’s Initial Deter-
mination in which the ALJ found several problems with
Dr. Qu’s methodology and concluded that Tessera had
failed to prove by a preponderance of the evidence that
the accused products practice the claimed movement.
First, the ALJ found that because Dr. Qu could not quan-
tify the changes in internal behavior of the baseline
package due to his substitutions of materials and their
corresponding properties, such as coefficient of thermal
expansion, Dr. Qu’s Test 1 was ineffective at demonstrat-
SPANSION INC v. ITC 28

ing that accused products practiced the claimed move-
ment. Initial Determination at 61. Second, the ALJ found
that Test 2 did not properly demonstrate what movement
was due to external loads (i.e., claimed movement) be-
cause: (1) Dr. Qu did not quantify the margin or error
inherent in his assumption of linearity; (2) Dr. Qu did not
measure displacement at the terminals located on the
bottom of the package (and at the top of the solder balls),
but instead measured the displacement at the bottom of
the solder balls; and (3) Test 2 did not show how much of
the total displacement was due to “CTE matching” as
opposed to external forces and therefore could not show
appreciable stress relief. Id. at 63-66. Finally, the ALJ
found that Dr. Qu did not appropriately validate his
testing models, because his Moirè analysis was improp-
erly performed over a narrower temperature range than
the model it sought to validate. Id. at 67. In addition,
since the Moirè testing could not distinguish claimed
movement from other movement, the ALJ found that it
could not provide any independent evidence of the pres-
ence of claimed movement. Id.
Tessera and the ITC, on the other hand, advocate the
reasoning and conclusion found in the Commission’s Final
Determination. The Commission agreed with the ALJ
that Test 1 was defective because of Dr. Qu’s inability to
determine how much movement was due to “CTE match-
ing” and how much, if any, was due to external loads.
Final Determination at 20. However, the Commission
found that since the methodology in creating baseline
packages was correct, the unquantified coefficient of
thermal expansion behavior of the baseline package only
affected the usefulness of Test 1. In particular, the Com-
mission pointed out that during Test 2, thermal cycling
was only applied to the accused packages in order to
determine the difference between the on-board and off-
29 SPANSION INC v. ITC

board displacement vectors. Since the resulting dis-
placement was applied directly to the baseline packages
without any further thermal cycling, the Commission
stated that “any consideration of the differences in the
[coefficient of thermal expansion] behavior of the accused
and baseline packages [was] completely irrelevant.” Id. at
46. The Commission found the ALJ’s criticism of Test 2
misplaced because Appellants’ expert, Dr. Sitaraman,
“acknowledged the appropriateness of using the linearity
assumption to determine displacement due to only exter-
nal loads in his own modeling.” Id. at 39. In fact, the
Commission observed that “there is no evidentiary sup-
port for the [ALJ’s] conclusion that the linearity assump-
tion is inherently flawed.” Id. at 40. Thus, unlike the
ALJ, the Commission concluded that Dr. Qu’s Test 2
adequately showed that the accused products infringed
the asserted claims of the ’326 and ’419 patents. Id. at 15.
Finally, the Commission decided that it was unnecessary
to validate the modeling tests with the Moirè test, but
agreed with Dr. Qu that the Moirè results provided addi-
tional evidence that the inputs used for Test 2, and there-
fore the methodology of Test 2, were accurate. Id. at 21-
29.
Appellants’ numerous arguments on this issue can be
summarized as follows: (1) the 52 representative models
chosen by Dr. Qu were not sufficient to show that all
accused products infringed; (2) Dr. Qu’s Test 2 was tech-
nically flawed and the Commission improperly went
beyond the expert testimony to find that Test 2 was
sufficient evidence of infringement; and (3) the Moirè test
did not supply the required validation of Test 2. This
court is not persuaded by any of these arguments. Be-
cause this court agrees with the Commission that Dr. Qu’s
Test 2 provided substantial evidence of infringement, this
SPANSION INC v. ITC 30

court need not address Tessera’s further argument that
the Commission erred in rejecting Dr. Qu’s Test 1.
First, Appellants argue that Tessera did not properly
show by a preponderance of the evidence that Dr. Qu’s 52
chosen models were representative of all the accused
products. The ALJ found otherwise, stating “the ALJ
finds Dr. Qu’s approach in selecting representative ac-
cused products reasonable and well thought out. By
selecting representative products that span the range of
values for those parameters that most directly affect the
claimed movement, Dr. Qu has offered specific and sub-
stantial evidence as to why those accused products not
selected by Dr. Qu can reasonably be expected to behave
like the representative accused products.” Initial Deter-
mination at 57. In fact, the ALJ found that “[e]ven Re-
spondents’ expert Dr. Sitaraman acknowledged that the
accused devices were similar in structure” and thus a
representative analysis of the accused products was
appropriate. Id. at 55. The Commission did not review
the ALJ’s findings on this issue and adopted the ALJ’s
conclusions as its own. This court agrees that substantial
evidence supports the ALJ’s finding that the modeled and
non-modeled products operate similarly with respect to
the claimed limitation. See TiVo, Inc. v. Echostar Comm.
Corp., 516 F.3d 1290, 1308 (Fed. Cir. 2008) rehearing en
banc granted, 376 Fed. App’x 21 (Fed. Cir. May 14, 2010).
Dr. Qu provided detailed evidence describing his selection
process, which was based on criteria that would most
directly affect relative terminal displacement. See, e.g.,
JA55172 ¶ 454 (Supp. Witness Statement of Dr. Jianmin
Qu CsX-3669C) (stating that he “selected products to
model based on parameters [he] felt were particularly
important to the analysis, which included the type of
package – single or multi-chip – as well as die size, ball
pitch, and the modulus of the die attach materials”). And
31 SPANSION INC v. ITC

Dr. Qu stated that “by select[ing] packages that have
values of those parameters that are at or near the ex-
tremes among the pool of accused products” the chosen
representative packages were “fairly representative of the
entire pool of accused products.” Id. ¶ 455. Appellants
contend that the ALJ improperly shifted the burden to
Appellants to establish that the non-modeled accused
packages would behave differently than those that were
modeled. Rather than improper burden shifting, the ALJ
properly found that Appellants simply failed to rebut the
substantial evidence set forth by Tessera. Initial Deter-
mination at 56-57.
Second, Appellants assert that Test 2 was technically
flawed. Appellants reiterate each of the arguments made
both to the ALJ and the Commission on this issue. Appel-
lants argue that Test 2 cannot be relied upon because,
among other things: (1) loads were applied to the bottom
of the solder balls instead of at the top; (2) the Commis-
sion improperly assumed that all observed stress relief
was attributed to claimed movement; (3) the linearity
assumption was a fatal defect in Test 2; and (4) Test 2
was inherently unreliable because it was used only by Dr.
Qu for the purpose of legal proceedings. This court is not
persuaded by these arguments. The Commission explic-
itly acknowledged that in Test 2 the load was applied to
the bottom of the solder balls, and that displacement at
the bottom of the solder balls was not equivalent to dis-
placement at the top of the solder balls due to solder
deformation. However, the Commission found that this
was not fatal to the effectiveness of Test 2 because “it is in
fact, the displacement differential between the package
and the PCB that causes the ‘mechanical stress.’” Final
Determination at 42. Thus, since it was “undisputed that
the PCB applies all of its force to the bottom of the solder
ball,” the Commission found that “Dr. Qu properly simu-
SPANSION INC v. ITC 32

lated the external load being applied to the packages by
determining displacement at the bottom of the solder
balls, at least some of which is transferred to the termi-
nals.” Id. This conclusion, based on witness testimony,
was not unreasonable.
Furthermore, the Commission reasonably determined,
based on expert evidence, that Test 2 showed claimed
movement, which resulted in the relief of stresses that
would not have been present in the absence of the claimed
movement. Because the claim construction did not re-
quire quantifying the amount of external load, Qu’s
linearity approximation was sufficient to show infringe-
ment, and the Commission properly relied on expert
testimony supporting this conclusion. Finally, the Com-
mission thoroughly analyzed the expert evidence and
found that Test 2, based on industry-accepted modeling,
was reliable evidence of infringement. This conclusion is
not invalidated simply because the model was specifically
tailored to the unique claim construction at issue. This
court has considered and found unpersuasive Appellants’
remaining arguments that Test 2 was technically flawed.
Citing Centricut, LLC v. The ESAB Group, Inc., 390
F.3d 1361 (Fed. Cir. 2004), Appellants also assert that the
Commission improperly went beyond the expert testi-
mony, instead adding its own interpretation to the raw
data from Dr. Qu’s tests. Centricut is inapplicable here.
This court held in Centricut that “in a case involving
complex technology, where the accused infringer offers
expert testimony negating infringement, the patentee
cannot satisfy its burden of proof by relying only on
testimony from those who are admittedly not expert in
the field.” 390 F.3d at 1370. In this case, however, both
sides presented relevant expert testimony on the technical
aspects of Dr. Qu’s tests. The Commission was entitled to
resolve the conflicting evidence in favor of a finding of
33 SPANSION INC v. ITC

infringement. See Bio Tech. Gen. Corp. v. Genentech, Inc.,
267 F.3d 1325, 1330-31 (Fed. Cir. 2001) (“When scientific
certainty is not available, and the scientific theories and
evidence are within a reasonable range of difference of
scientific opinion, resolution of such difference based on
weight and credibility of evidence is the province of the
trier of fact.”).
In addition, Appellants contend that it was improper
for the Commission to rely on Test 2 as independent
evidence of infringement because Dr. Qu himself testified
that he merely used the results of Test 2 to confirm the
results of Test 1. However, the Commission specifically
noted that “Dr. Qu clearly states that he believes the
results of his second testing method show that the ac-
cused packages meet the claimed ‘movement’ limitation,
and thus show infringement.” Final Determination at 50
n.8. Given Dr. Qu’s testimony, it was not incorrect for the
Commission to rely on Test 2 as independent evidence of
infringement.
Third, Appellants argue that Dr. Qu’s modeling re-
quired physical validation by Moirè testing. According to
Appellants, the Commission’s infringement findings
should be rejected because Moirè testing was done only on
a subset of temperatures and thus Test 2 was not properly
validated over the entire range of temperatures. How-
ever, Tessera’s burden to show infringement by a prepon-
derance of the evidence does not require physical
validation of all indirect evidence. See Alza Corp. v.
Mylan Labs., Inc., 464 F.3d 1286, 1296 (Fed. Cir. 2006)
(“The critical deficiency in the evidence presented by Alza
was not that it was ‘indirect’ rather than ‘direct’ . . . .”).
The Commission concluded that, based on the evidence,
validation of Test 2 was not necessary. However, even if
it were necessary, the Commission found that the Moirè
testing did validate Test 2 over the entire temperature
SPANSION INC v. ITC 34

range. Final Determination at 29. The Commission
properly based this finding on evidence in the record,
pointing out that Appellants’ own expert, Dr. Sitaraman,
testified that the model is generally correct when the
inputs to the model are correct and that Moirè testing on
a limited sample can validate the overall modeling meth-
odology. Final Determination at 23, 25-26. The Commis-
sion and ALJ also agreed that while some discrepancies
were apparent in the results, the Moirè analysis generally
correlated with the results of Test 2. Initial Determina-
tion at 67; Final Determination at 22-23. This court
agrees that there was substantial evidence for the Com-
mission’s finding that Dr. Qu’s Moirè testing properly
validated the results of Test 2.
2. Contributory Infringement
Tessera admits that Appellants’ accused standalone
packages cannot directly infringe the ’419 patent because
the standalone packages are not mounted on printed
circuit boards, as required by the claims. Thus, those
accused packages can only infringe indirectly. In his
Initial Determination, the ALJ found that Tessera waived
any argument that the accused products indirectly in-
fringe the asserted patents. Initial Determination at 69.
On review, the Commission reversed the finding of waiver
because the commission investigative attorney preserved
the issue in his post-hearing brief. Final Determination
at 52. On the merits, the Commission found that Appel-
lants contributed to direct infringement of the asserted
claims of the ’419 patent under 35 U.S.C. § 271(c) by
selling a component of the directly infringing devices. Id.
“Under 35 U.S.C. § 271(c), a party who sells a compo-
nent with knowledge that the component is especially
designed for use in a patented invention, and is not a
staple article of commerce suitable for substantial nonin-
35 SPANSION INC v. ITC

fringing use, is liable as a contributory infringer.” Word-
tech Sys., Inc. v. Integrated Networks Solutions, Inc., 609
F.3d 1308, 1316 (Fed. Cir. 2010). Thus, to prevail on
contributory infringement in a Section 337 case, the
complainant must show: (1) there is an act of direct
infringement in violation of Section 337; (2) the accused
device has no substantial non-infringing uses; and (3) the
accused infringer imported, sold for importation, or sold
after importation within the United States, the accused
components that contributed to another’s direct infringe-
ment. See 19 U.S.C. § 1337(a)(1)(B); DSU Med. Corp. v.
JMS Co., 471 F.3d 1293, 1303 (Fed. Cir. 2006). The
nature of the accused device at issue may be important to
the analysis of whether a substantial non-infringing use
exists. See Ricoh Co., Ltd. v. Quanta Computer Inc., 550
F.3d 1325, 1337 (Fed. Cir. 2008) (stating that an accused
infringer “should not be permitted to escape liability as a
contributory infringer merely by embedding [the infring-
ing product] in a larger product with some additional,
separable feature”).
The Commission found that Tessera had shown all
three elements necessary for a finding of contributory
infringement. First, the Commission found that “the
evidence shows that Motorola incorporates the accused
devices into its products” and thus directly infringes the
’419 patent. Final Determination at 53. Second, the
Commission stated that “[t]here is no dispute that the
accused products have been imported, sold for importa-
tion, or sold after importation in the United States by or
on behalf [of] all of the Respondents.” Id. at 54-55. Third,
the Commission found that Tessera successfully made a
prima facie showing that the accused packages did not
have any substantial non-infringing uses with evidence
that Respondents instruct their customers to connect the
accused packages to PCBs using solder. Id. at 55 (citing
SPANSION INC v. ITC 36

Golden Blount, Inc. v. Robert H. Peterson Co., 438 F.3d
1354, 1363 (Fed. Cir. 2006)). The Commission further
found that Appellants did not successfully rebut this
showing. Id. at 57-58. The Commission acknowledged
Appellants’ arguments that the accused packages have
substantial non-infringing uses because they can be
mounted using underfill or sockets to restrict or prevent
the claimed movement. Id. However, the Commission
found that Appellants presented only a small amount of
evidence showing that Appellants’ customers have actu-
ally used underfill or sockets for mounting accused pack-
ages and this was not enough to overcome Tessera’s prima
facie case. Id. at 58.
Appellants argue that each of these findings by the
Commission is erroneous. First, Appellants argue that
because Motorola subsequently signed a license agree-
ment specifically authorizing use of the accused packages,
this court must vacate all of the Commissions findings
concerning the ’419 patent and the resulting orders as
moot and remand to the ITC. This court does not agree.
While the Commission’s decision specifically mentioned
only Motorola by name, the Commission specifically
considered evidence of direct infringement by additional
customers. See, e.g., Final Determination at 55-58 (refer-
ring repeatedly to more than one customer when describ-
ing the evidence supporting the finding of contributory
infringement). Additionally, as the ITC points out, to the
extent Appellants believe the remedial orders should be
modified to reflect changed circumstances, they can seek
modification of the Commission order from the ITC. This
court has also considered, but does not find persuasive,
Appellants’ arguments that there was not substantial
evidence on the record to show that Motorola directly
infringed.
37 SPANSION INC v. ITC

Second, Appellants argue that the evidence showed
the accused products can be mounted onto a printed
circuit board with either underfill or sockets, that such
mounting is “common,” and that such uses are non-
infringing. In particular, Qualcomm argues that the
Commission disregarded its evidence of substantial non-
infringing use based on a misreading of Ricoh. Qual-
comm’s Principal Br. at 53. While the Commission did
cite to Ricoh, it did so in the context of merely defining
the scope of the accused device in order to determine
whether substantial non-infringing uses exist. Final
Determination at 56 (“The question here, therefore, is just
what is the accused device in question and whether it
alone, has any substantially non-infringing uses.”) The
Commission then properly concluded that “with respect to
the ’419 patent, the accused device must be the combina-
tion of a PCB and a face-up BGA package with at least
one solder ball for mounting upon the PCB, where the
BGA package is capable of exhibiting the claimed ‘move-
ment.’” Id. at 57. Moreover, the Commission acknowl-
edged Appellants’ evidence on this issue, but found that
most of that evidence was in the form of general asser-
tions that underfill and sockets were commonly used in
the 1990s. Id. at 57-58. Noting that “[o]nly Qualcomm . .
. has produced any evidence that its customers have
actually used underfill in mounting Qualcomm’s accused
chip packages,” the Commission found that “this evidence
[wa]s not enough to overcome Tessera’s showing that the
accused device, which consists of an accused BGA pack-
age, a PCB, and solder balls connecting the accused BGA
package to the PCB, has no substantial non-infringing use
in and of itself.” Id. at 58. This court agrees with the
Commission that Tessera made a prima facie showing as
to the absence of any substantial non-infringing uses and
that Appellants’ evidence was insufficient to overcome
that showing. See Golden Blount, 438 F.3d at 1363-64
SPANSION INC v. ITC 38

(stating “it matters not that the assembled device can be
manipulated into a non-infringing configuration, because
the instructions packaged with each device teach the
infringing configuration” and thus “[t]he burden of pro-
duction then shifted to [the accused infringer] to introduce
some evidence that end-users actually assembled the
[accused devices] in a non-infringing way”).
Third, STMicro argues that there is no evidence that
any of its alleged acts of contributory infringement had
the requisite connection with the United States because
only 47 of the accused packages were sold or offered for
sale in the United States by STMicro and those packages
were purchased under a license from Tessera to STMicro-
electronics, Inc. (“ST-Inc.”), STMicro’s domestic subsidi-
ary. Final Determination at 55 n.11. However, both the
Commission and the ALJ found that STMicro did not
prove that any of its other accused products were covered
by the Tessera license, that STMicro “admit[ted] that 14
accused products, which were not sold through ST-Inc.,
have been imported into the United States in downstream
products,” and that “Tessera has proven by a preponder-
ance of the evidence that those products are incorporated
into finished downstream products that are imported, sold
for importation, or sold after importation into the United
States.” Id.; Initial Determination at 109-10. This court
agrees with the Commission that the record contained
substantial evidence showing that STMicro sold for im-
portation into the United States accused packages that
contributed to direct infringement of the ’419 patent.
Finally, Appellants assert that the Commission erred
in finding contributory infringement without properly
finding the requisite knowledge. The Commission ad-
dressed intent in the context of induced infringement
under 35 U.S.C. § 271(b) and found that Tessera did not
meet its burden to show that Appellants “had the neces-
39 SPANSION INC v. ITC

sary intent to support a finding of infringement by in-
ducement.” Final Determination at 54. However, because
license negotiations indicated that Appellants were aware
of the ’419 patent, and Tessera successfully showed that
the accused devices did not have any substantial non-
infringing uses, the Commission presumed the requisite
knowledge for contributory infringement. Id. This con-
clusion was not erroneous. See Metro-Goldwyn-Mayer
Studios, Inc. v. Grokster, Ltd., 545 U.S. 913, 932 (2005)
(“One who makes and sells articles which are only
adapted to be used in a patented combination will be
presumed to intend the natural consequences of his acts;
he will be presumed to intend that they shall be used in
the combination of the patent.” (internal quotation marks
omitted)); Ricoh, 550 F.3d at 1343 (“Grokster recognized
that providing instruction on how to engage in an infring-
ing use ‘show[s] an affirmative intent that the product be
used to infringe.’” (quoting Grokster, 545 U.S. at 936));
DSU, 471 F.3d at 1303 (“even beyond the minimal intent
requirement for contributory infringement, ITL acted
with the knowledge of the [asserted] patent . . .”).
D. Anticipation
Several Appellants appeal the Commission’s finding
that two prior patents, U.S. Patent No. 5,241,133 (the
“Mullen patent”) and the Lin patent, did not anticipate
Tessera’s asserted claims. A patent may be found invalid
as anticipated under 35 U.S.C. § 102(e) if “the invention
was described in . . . a patent granted on an application
for patent by another filed in the United States before the
invention thereof by the applicant for patent.” A claim is
anticipated when “the four corners of a single, prior art
document describe every element of the claimed inven-
tion, either expressly or inherently, such that a person of
ordinary skill in the art could practice the invention
without undue experimentation.” Advanced Display Sys.,
SPANSION INC v. ITC 40

Inc. v. Kent State Univ., 212 F.3d 1272, 1282 (Fed. Cir.
2000). A reference patent anticipates an invention under
§ 102(e) only if the reference patent’s effective filing date
is before the date of the invention. See In re Matthews,
408 F.2d 1393 (CCPA 1969).
Appellants argue that the Commission erroneously
found that the inventions of the ’326 and ’419 patents
were conceived in June 1990, several months before the
Lin and Mullen patents were filed. “Conception is the
formation in the mind of the inventor of a definite and
permanent idea of the complete and operative invention,
as it is therefore to be applied in practice.” Singh v.
Brake, 317 F.3d 1334, 1340 (Fed. Cir. 2003) (internal
quotation marks omitted). An idea is sufficiently definite
for conception “when the inventor has a specific, settled
idea, a particular solution to the problem at hand, not just
a general goal or research plan he hopes to pursue.”
Burroughs Wellcome Co. v. Barr Labs., Inc., 40 F.3d 1223,
1228 (Fed. Cir. 1994). However, a finding of conception
does not require perfection: conception is complete when
“the idea is so clearly defined in the inventor’s mind that
only ordinary skill would be necessary to reduce the
invention to practice, without extensive research or
experimentation.” Id. Because it is a mental act, an
inventor’s oral testimony regarding conception must be
corroborated by “evidence which shows that the inventor
disclosed to others his completed thought expressed in
such clear terms as to enable those skilled in the art to
make the invention.” Coleman v. Dines, 754 F.2d 353, 359
(Fed. Cir. 1985) (internal quotation marks omitted).
Conception may be corroborated even if no single piece of
evidence shows complete conception. Price v. Symsek, 988
F.2d 1187, 1196 (Fed. Cir. 1993). Instead, all of the
evidence of record must be collectively evaluated in de-
termining when the invention was conceived. Id. The
41 SPANSION INC v. ITC

issue of conception is a question of law based on underly-
ing factual findings. Singh, 317 F.3d at 1340. Accord-
ingly, this court reviews de novo the Commission’s legal
conclusions with respect to conception, and reviews the
underlying factual findings by the Commission for sub-
stantial evidence. Id.
The ALJ found that neither the Mullen nor the Lin
patent anticipated Tessera’s patents because they were
not prior art under 35 U.S.C. § 102(e). The effective filing
date of the Mullen patent was December 21, 1990 and
that of the Lin patent was December 4, 1990. The ALJ
determined that the date of invention accorded the as-
serted claims of the ’326 and ’419 patents was June 10,
1990, several months prior to the filing dates of the
Mullen and Lin patents. Initial Determination at 88-89.
The ALJ based this determination partly on testimony by
Dr. DiStefano, one of the inventors of the ’326 and ’419
patents, stating that he and another inventor, Dr. Khan-
dros, conceived the ideas included in the asserted claims
in early June 1990. Id. at 73-74. The ALJ found that Dr.
Bottoms, a non-inventor involved in the work of DiStefano
and Khandros, corroborated DiStefano’s testimony. Id. at
74. The ALJ also found that engineering notebook entries
corroborated the testimony of Bottoms and DiStefano.
Based on these factual findings, the ALJ concluded that
“as of June 1990 inventors DiStefano and Khandros had
conceived of the inventions embodied in the asserted
claims of the ’326 and ’419 patents such that only ordi-
nary skill would be necessary to reduce the invention to
practice.” Id. at 77. The ALJ further found that DiSte-
fano and Khandros acted with due diligence in reducing
their conceived invention to practice from conception to
the filing of the ’265 patent application, from which the
’326 and ’419 patents claim priority. Id. at 78.
SPANSION INC v. ITC 42

Appellants argue that the Commission erred in find-
ing a June 1990 conception date for the asserted claims.
Specifically, Appellants argue that the ALJ misinter-
preted the testimony of DiStefano and Bottoms and the
engineering notebooks. Appellants assert that conception
of the asserted claims occurred no earlier than January
1991─after the effective filing dates of the Mullen and Lin
patents. First, Appellants argue that the testimony noted
by the ALJ showed that the inventors had only a general
goal or research plan that they hoped to pursue, not a
specific settled idea. In addition, Appellants assert that
several key aspects of the asserted claims were missing
from the invention on June 1990. Next, Appellants argue
that there was no evidence corroborating the testimony of
DiStefano and Bottoms and that the ALJ erroneously
focused on a single June 10, 1990, notebook entry that
was simply an anomalous entry unrelated to conception of
the asserted claims. Instead, Appellants assert that the
notebooks demonstrate a “steady evolution of ideas con-
cerning face-down chips from May 1990 until January
1991.” STMicro’s Principal Br. at 59.
This court is not persuaded by Appellants’ arguments
that the Commission misconstrued the testimony and
documentary evidence before it. The Initial Determina-
tion thoroughly describes the testimony of DiStefano and
Bottoms and analyzes several entries of the engineering
notebooks beginning in May 1990 and ending June 10,
1990, detailing how they record the development of all
aspects of the invention, including the face-up configura-
tion of the chip. Id. at 75-76. The Commission credited
inventor DiStefano’s trial testimony that the initial
concept of a face-up chip assembly having the claimed
elements was conceived in early June 1990. After a
review of the record evidence in light of the proper legal
standards, this court concludes that the Commission did
43 SPANSION INC v. ITC

not err in finding a June 1990 conception date. Thus, this
court affirms the Commission’s determination that the
’326 and ’419 patents are not anticipated by the Mullen or
Lin patents.
E. Injunctive Relief
Spansion argues that even if Appellants were liable
for infringement, the Commission’s award of prospective
injunctive relief should be vacated because the Commis-
sion failed to give meaningful consideration to the public
interest consequences of the injunction. In particular,
Spansion argues that the public interest inquiry in this
context is similar to the traditional test for injunctive
relief that district courts apply under eBay Inc. v. Mer-
cExchange, L.L.C., 547 U.S. 388 (2006). According to
Spansion, the Commission, in keeping with eBay, should
have considered the following equitable factors: (1) the
PTO rejected some of the asserted claims as unpatentable
in the reexamination; and (2) Tessera could be made
whole by damages because Tessera is simply a licensor
and does not actually practice the invention. The ITC
responds that the Commission properly considered the
public interest factors prior to issuing the exclusion order
and that eBay does not apply to Commission remedy
determinations.
This court reviews the Commission’s action in award-
ing injunctive relief as to whether it is arbitrary, capri-
cious, an abuse of discretion, or otherwise not in
accordance with law. See, e.g., Epistar Corp. v. Int’l Trade
Comm’n, 566 F.3d 1321, 1333 (Fed. Cir. 2009). In this
case, the Commission issued its limited exclusion order
after finding that “there are no public health and safety
concerns since Tessera has chosen not to seek exclusion of
two-way radios imported for use by first responders.”
Final Determination at 74. The Commission discussed
SPANSION INC v. ITC 44

the statutorily mandated public interest factors of “com-
petitive conditions in the United States economy, the
production of like or directly competitive articles in the
United States, and United States consumers” by stating
that “there are multiple, licensed sources for semiconduc-
tor chips with minimized chip package size” and “there is
no evidence that Tessera’s licensees would be unable to
adequately supply the United States market if Respon-
dents’ products were excluded.” Id. The Commission
added that “the office action reflecting the rejection is not
final. Such adverse office actions in the reexamination
process are fairly routine and are not an indication that
the patent claims are necessarily going to be finally
rejected. Although a final rejection has been issued
against the asserted claims of the ’419 patent and prose-
cution has been closed in that reexamination proceeding,
it would be premature to give undue weight to the reex-
amination proceedings until or unless Tessera has ex-
hausted its appeals.” Id. at 76.
By statute, the Commission is required to issue an ex-
clusion order upon the finding of a Section 337 violation
absent a finding that the effects of one of the statutorily-
enumerated public interest factors counsel otherwise. 19
U.S.C. § 1337(d)(1) (“If the Commission determines, as a
result of an investigation under this section, that there is
a violation of this section, it shall direct that the articles
concerned, imported by any person violating the provision
of this section, be excluded from entry into the United
States, unless, after considering the effect of such exclu-
sion upon the public health and welfare, competitive
conditions in the United States economy, the production
of like or directly competitive articles in the United
States, and United States consumers, it finds that such
articles should not be excluded from entry.”) (emphases
added). The enumerated public interest factors include:
45 SPANSION INC v. ITC

(1) the public health and welfare; (2) competitive condi-
tions in the United States economy; (3) the production of
like or directly competitive articles in the United States;
and (4) United States consumers. Id.
The legislative history of the amendments to Section
337 indicates that Congress intended injunctive relief to
be the normal remedy for a Section 337 violation and that
a showing of irreparable harm is not required to receive
such injunctive relief. This is shown by two distinct
actions of Congress. First, in passing the Tariff Act of
1930, Pub. L. No. 71-361, 46 Stat. 590, Congress elimi-
nated the monetary remedy for intellectual property
import violations, representing a legislative determina-
tion that an injunction is the only available remedy for
violations of Section 337. Second, in 1988, Congress
amended Section 337 by passing the Omnibus Trade and
Competitiveness Act of 1988, Pub. L. No. 100-418, 102
Stat. 1107, explicitly removing the requirement of proof of
injury to the domestic industry and making it unneces-
sary to show irreparable harm to the patentee in the case
of infringement by importation. See H.R. Rep. No. 100-
576, at 633 (1988) (Conf. Rep.) (stating that the bill “re-
moves the requirement to prove injury . . . with regard to
certain intellectual property rights cases involving pat-
ents”); S. Rep. No. 100-71, at 128 (1987) (“The fundamen-
tal purpose of the amendments made by section 401 is to
strengthen the effectiveness of section 337 in addressing
the growing problems being faced by U.S. companies from
the importation of articles which infringe U.S. intellectual
property rights.”); id. at 129 (“The Committee does not
intend that the ITC, in considering the public health and
welfare, or the President, in reviewing the ITC’s determi-
nation on policy grounds, will reintroduce these require-
ments.”); accord H.R. Rep. 100-40 at 156 (1987).
SPANSION INC v. ITC 46

As contrasted with the remedial scheme established
by Congress for proceedings before the Commission, the
statutory remedies available in proceedings before the
district courts are quite different. In addition to the
remedy of damages under 35 U.S.C. § 284, Congress gave
district courts the discretion to grant injunctive relief and
in doing so made explicit that such discretion is to be
exercised “in accordance with the principles of equity . . .
on such terms as the court deems reasonable.” 35 U.S.C.
§ 283. In eBay, the Supreme Court explained that Section
283 did not endorse or establish a categorical grant of
injunctive relief following a determination of infringe-
ment. Rather, the decision whether to grant or deny
injunctive relief under Section 283 depends on traditional
principles of equity, applying the four-part test for per-
manent injunctive relief in patent disputes no less than in
other cases governed by such standards. See eBay, 547
U.S. at 391 (discussing the four-factor test for injunctive
relief).
Given the different statutory underpinnings for relief
before the Commission in Section 337 actions and before
the district courts in suits for patent infringement, this
court holds that eBay does not apply to Commission
remedy determinations under Section 337. The Commis-
sion is not required to apply the traditional four-factor
test for injunctive relief used by district courts when
deciding whether to issue the equitable remedy of a
permanent injunction. Unlike the equitable concerns at
issue in eBay, the Commission’s issuance of an exclusion
order is based on the statutory criteria set forth in Section
337. Spansion’s argument that the term “public welfare”
is so “broad and inclusive” that Congress must have
intended it to include the traditional equitable principles
reflected in the eBay standard is unpersuasive when
viewed in the context of Section 337. The scope of the
47 SPANSION INC v. ITC

public interest factors recited in Section 337 is a matter of
statutory interpretation not necessarily informed by the
same principles of equity relevant to the grant of perma-
nent injunctive relief under 35 U.S.C. § 283.
The difference between exclusion orders granted un-
der Section 337 and injunctions granted under the Patent
Act, 35 U.S.C. § 283, follows “the long-standing principle
that importation is treated differently than domestic
activity.” In the Matter of Certain Baseband Processor
Chips and Chipsets, Transmitter and Receiver (Radio)
Chips, Power Control Chips, and Products Containing
Same, Including Cellular Telephone Handsets, Inv. No.
337-TA-543, 2007 ITC Lexis 621, *102 n.230 (U.S.I.T.C.
June 19, 2007) (citing United States v. 12 200-ft. Reels of
Film, 413 U.S. 123, 125 (1973)). This is reflected in the
fact that the Commission has found public interest con-
siderations to outweigh the need for injunctive relief in
protecting intellectual property rights found to have been
violated under Section 337 in only three investigations,
all of which were decided prior to the 1988 legislative
amendment discussed above, which removed the require-
ment that a patentee show irreparable harm. See id.,
2007 ITC Lexis 621 at *220. Moreover, in those three
cases, the exclusion order was denied because inadequate
supply within the United States─by both the patentee
and domestic licensees─meant that an exclusion order
would deprive the public of products necessary for some
important health or welfare need: energy efficient auto-
mobiles, basic scientific research, or hospital equipment.
See In the Matter of Certain Fluidized Supporting Appa-
ratus and Components, Inv. No. 337-TA-182/188, USITC
Pub. 1667 (Oct. 1984); In the Matter of Inclined Field
Acceleration Tubes and Components, Inv. Nos. 337-TA-60,
USITC Pub. 1119 (Dec. 1980); In the Matter of Certain
SPANSION INC v. ITC 48

Automatic Crankpin Grinders, Inv. No. 337-TA-60,
USITC Pub. 1022 (Dec. 1979).
With respect to the ongoing PTO reexamination, such
proceeding is not explicitly listed as a public interest
factor in Section 337. The Commission nevertheless
discussed the ongoing reexamination of the patents at
issue in its Final Determination and again in response to
Appellants motion for a stay. The Commission found that
it would be premature to give dispositive weight to the
PTO reexamination proceedings until all appeals had
been exhausted. In re Certain Semiconductor Chips with
Minimized Chip Package Size and Products Containing
Same, No. 337-TA-605, slip op. at 11-12 (Int’l Trade
Comm’n May 27, 2008). Thus, while it is not accurate to
say that “the Commission gave the reexaminations no
weight at all,” Spansion’s Reply Br. at 23, it was not
erroneous for the Commission to omit any discussion of
such issues from its analysis of the public interest factors
when fashioning a remedy to Appellants’ violation of
Section 337.
Based on the foregoing, this court finds that the
Commission provided a sufficient basis for issuance of the
limited exclusion order and that its actions were not
arbitrary, capricious, an abuse of discretion, or otherwise
not in accordance with law.
CONCLUSION
Because the Commission’s decision was supported by
substantial evidence and contained no errors of law, this
court affirms the Final Determination in all respects.

AFFIRMED