  United States Court of Appeals
      for the Federal Circuit
              __________________________

           AMKOR TECHNOLOGY, INC.,
                  Appellant,

                           v.
     INTERNATIONAL TRADE COMMISSION,
                 Appellee,

                         AND

       CARSEM (M) SDN BHD, CARSEM
 SEMICONDUCTOR SDN BHD (also known as Re-
      cams Sdn Bhd), AND CARSEM, INC.,
                 Intervenors.
              __________________________

                      2010-1550
              __________________________

   On appeal from the United States International Trade
Commission in Investigation No. 337-TA-501.
             __________________________

                 Decided: August 22, 2012
              __________________________

    W. BRYAN FARNEY, Dechert, LLP, of Austin, Texas ar-
gued for appellant. With him on the brief were STEVEN R.
DANIELS; and JUSTIN F. BOYCE and DAVID M. SAUNDERS,
of Mountain View, California. Of counsel were THEODORE
W. CHANDLER, Sidley Austin, LLP, of Los Angeles, Cali-
2                                        AMKOR TECH   v. ITC

fornia, RUSSELL L. JOHNSON, of San Francisco, California,
BRIAN B. KOO, of Washington, DC, and PETER H. KANG,
and GEORGIA K. VAN ZANTEN, of Palo Alto, California.

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

    WILLIAM J. BOHLER, Attorney at Law, of Pleasanton,
California, argued for Intervenors. Of counsel on the brief
were LOUIS S. MASTRIANI, ANDREW F. PRATT, WILLIAM C.
SJOBERG and THOMAS R. BURNS, JR., Adduci, Mastriani &
Schaumberg, LLP, of Washington, DC.
               __________________________

     Before NEWMAN, PLAGER, and LINN, Circuit Judges.
LINN, Circuit Judge.

    Complainant-Appellant, Amkor Technology, Inc.
(“Amkor”), appeals the determination of the International
Trade Commission (“Commission”) that Amkor’s U.S.
Patent No. 6,433,277 (“’277 Patent”) is invalid under 35
U.S.C. § 102(g)(2). The respondents in the Commission
investigation below, Carsem (M) Sdn Bhd, Carsem Semi-
conductor Sdn Bhd, and Carsem, Inc. (collectively,
“Carsem”), intervene. Because the Commission applied
an erroneous legal standard, this court reverses the
Commission’s determination on prior invention under
§ 102(g)(2). This court also declines to affirm the Com-
mission’s invalidity determination on the alternative
grounds raised by Carsem.
AMKOR TECH   v. ITC                                       3

                      I. BACKGROUND
    On December 19, 2003, Amkor initiated Commission
Investigation No. 337-TA-501 (“Investigation”), In re
Certain Encapsulated Integrated Circuit Devices and
Products Containing the Same, alleging that Carsem
violated section 337 of the Tariff Act of 1930, as amended
in 19 U.S.C. § 1337 (“section 337”), based on the importa-
tion, sale for importation, and sale within the United
States after importation of certain encapsulated inte-
grated circuit devices that allegedly infringed claims 1-4,
7, 17, 18, and 20-23 of the ’277 Patent, and other claims of
two related patents not on appeal.
                      A. ’277 Patent

     The ’277 Patent, titled “Plastic and Integrated Circuit
Package and Method and Leadframe for Making the
Package,” was filed on July 13, 2000, and issued on Au-
gust 13, 2002. The invention relates to smaller and “more
reliable” integrated circuit packages. ’277 Patent col.2 l.2.
Integrated circuit die—small blocks of semiconducting
material that contain a circuit—are conventionally en-
closed in a plastic package, or “encapsulant.” Id. col.1
ll.19-22. A metal leadframe serves as the central support
structure for the package. Id. col.1 ll.23-31. In the prior
art, part of the leadframe was completely surrounded by
encapsulant, and part of the leadframe extended outside
of the package to connect the package externally. Id. col.1
ll.31-35. The internal structure of the leadframes in the
prior art limited the ability of those in the art to further
reduce the package size. Id. col.1 ll.42-60.
4                                         AMKOR TECH   v. ITC

    The claimed packages are “near chip-scale” packages,
meaning that the finished package is only marginally
larger than the semiconductor chip itself. The smaller
size is achieved by encapsulating only a top portion of the
package. See id. col.2 ll.21-30. Fig.2 from the ’277 Patent
depicts the invention:




The invention involves structurally simple contacts (30),
which extend inwards from the leadframe (20) towards an
adjacent surface on the die pad (24), and are ultimately
severed from the leadframe along the cut lines C—C and
D—D. Id. col.4 ll.20-27, Fig.2. The leadframe includes
disposable connectors (28), or “tie bars,” which are also
severed from the leadframe along the cut lines A—A and
B—B. Id. col.3 ll.65-67, col.4 ll.16-19, Fig.2. After sever-
ing the contacts, the package is placed on a flat surface
with the die pad facing upwards, and viscous encapsulant
is poured onto the top surface, covering the top surface of
the die pad, the contacts, and all other parts of the lead-
AMKOR TECH   v. ITC                                        5
frame around the die pad. Id. col.2 ll.21-30. “[R]eentrant
portions and asperities [present on] the side surfaces of
the die pad and contacts function as encapsulant fasten-
ers or lead locks,” and thus the encapsulant material,
rather than the leadframe, securely connects the die pad
and contacts to the package. Id. col.2 ll.53-59.

   Claims 1 and 2 of the ’277 Patent cover:
   1. A package for an integrated circuit die compris-
   ing:

   a metal die pad and a plurality of metal contacts,
   wherein said die pad has a first surface, and each
   said contact has a first end facing the die pad, a
   second end opposite the first end, a first surface, a
   second surface opposite the first surface, and a lip
   at the first surface of the contact fully around a
   circumference of the contact except at the second
   end[;]

   an integrated circuit die on the die pad;

   a plurality of conductors each electrically con-
   nected between the die and the first surface of a
   respective one of the contacts; and

   a package body formed of an encapsulant mate-
   rial, said encapsulant material covering the die
   and underfilling the lip of the contacts, wherein
   the second surface of each said contact is exposed
   at a horizontal first exterior surface of the pack-
   age body.

   2. The package of claim 1, wherein the die pad in-
   cludes a first surface upon which the die is
   mounted and a lip at the first surface fully around
   a circumference of the die pad.
6                                         AMKOR TECH   v. ITC

’277 Patent col.12 ll.2-22 (emphasis added). Claim 1 is
not at issue in this appeal. The dispute in this appeal
relates to the limitation directed to the lip at the first
surface and the meaning of the expression “fully around a
circumference of the die pad.”

                  B. Procedural History

     On February 11, 2004, the Administrative Law Judge
(“ALJ”) issued a subpoena to third parties ASAT, Inc.,
ASAT Holdings, and ASAT Limited (collectively, “ASAT”),
seeking certain documents related to ASAT’s leadless
plastic chip carrier package invention (“ASAT invention”)
described in U.S. Patent 6,229,200 (“ASAT ’200 Patent”)
that Carsem asserted were critical to its defense. ASAT
failed to comply with the subpoena. On November 18,
2004, prior to receiving the ASAT documents, the ALJ
issued a first Initial Determination finding no violation of
section 337. The ALJ determined: (1) that some or all of
Carsem’s accused micro leadframe package products
infringed claims 1, 7, 17, and 20 of the ’277 Patent; (2)
that claims 1, 7, 17, 18, and 20 of the ’277 Patent were
invalid as anticipated; and (3) that claims 2-4 and 21-23 of
the ’277 Patent, which require a lip that runs “fully
around a circumference of the die pad” (claims 2-4) and
“fully around the die pad” (claims 21-23) were indefinite
because it was unclear whether the lip ran under the
connectors that connect the die pad to the leadframe, or
was actually interrupted by the connectors. Initial De-
termination on Violation of Section 337, Inv. No. 337-TA-
501, at 57, 61, 106, 194 (Nov. 18, 2004) (“First ID”).

    On review, the Commission modified the ALJ’s claim
construction, construing “fully around a circumference of
the die pad” and “fully around the die pad” to mean that
“the lip must run fully around the sides of the die pad, but
not underneath or through the tie bars,” and remanded.
Commission Op., Inv. No. 337-TA-501, at 11, 16 (Apr. 13,
AMKOR TECH   v. ITC                                      7
2005) (“Claim Construction Remand”). On November 9,
2005, the ALJ issued a second Initial Determination
finding, based on the Commission’s claim construction,
that: (1) some or all of Carsem’s micro leadframe package
products infringed claims 2-4 and 21-23 of the ’277 Pat-
ent; (2) that claims 2-4 and 21-23 of the ’277 Patent are
not invalid as anticipated or obvious; and (3) that Carsem
violated section 337. Initial Determination on Violation of
Section 337, Inv. No. 337-TA-501, at 12-24, 50-57, 64-72,
77-81, 114 (Nov. 9 2005) (“Second ID”). The new claim
construction did not change the ALJ’s finding that claims
1, 7, 17, 18, and 20 were invalid as anticipated. Id. at 48-
64.

      On July 1, 2009, after the Commission finally ob-
tained the ASAT documents (following two enforcement
petitions in district court), the Commission remanded the
Investigation to the ALJ to determine whether the ASAT
invention qualified as prior art to the ’277 Patent under
35 U.S.C. § 102(g)(2). On October 30, 2009, the ALJ
issued a first Supplemental Initial Determination finding
that: (1) the co-inventor of the ASAT invention conceived
of the ASAT invention in a foreign country sometime
during April or May; and (2) Amkor’s ’277 Patent technol-
ogy was conceived sometime during May through August,
or on December 10, of that same year. Supplemental
Initial Determination on Violation of Section 337, Inv. No.
337-TA-501, at 16-17 (Oct. 30, 2009) (“First Supp. ID”).
Accordingly, the ALJ concluded that the ASAT invention
is not prior art under § 102(g)(2) because “Carsem [] failed
to prove by clear and convincing evidence that the
April/May [] date of invention [for the ASAT invention]
. . . is prior to the [May through August] date of invention
accorded the asserted claims of the patents-in-suit.” First
Supp. ID at 18. On review, the Commission reversed and
remanded, holding that the ASAT invention is § 102(g)(2)
prior art because, under Oka v. Youssefyeh, 849 F.2d 581,
584 (Fed. Cir. 1998), the earliest possible priority date of
8                                        AMKOR TECH   v. ITC

the ’227 Patent must be the last date in the range of
dates, or December 10, which falls after the April/May
date of invention for the ASAT invention. Commission
Op., Inv. No. 337-TA-501, at 12 (July 27, 2010) (“Commis-
sion Op.”). On remand, the ALJ issued a second Supple-
mental Initial Determination holding all disputed claims
of the ’277 Patent invalid under § 102(g)(2) in view of the
ASAT invention. Supplemental Initial Determination on
Violation of Section 337, Inv. No. 337-TA-501, at 23-31
(Mar. 22, 2010) (“Second Supp. ID”). Amkor appeals the
Commission’s holding that the ASAT invention qualifies
as § 102(g)(2) prior art. As alternative grounds for affir-
mance, Carsem argues that this court should reverse the
Commission’s determination that claims 2-4 and 21-23 of
the ’277 Patent are not invalid as anticipated or obvious,
and asks the court to affirm the Commission’s ultimate
invalidity determination on this basis. This court has
jurisdiction pursuant to 28 U.S.C. § 1295(a)(6).

                     II. DISCUSSION
                 A. Standard of Review
    This court reviews the Commission’s legal determina-
tions de novo and factual determinations for substantial
evidence. Gemstar-TV Guide Int’l, Inc. v. Int’l Trade
Comm’n, 383 F.3d 1352, 1360 (Fed. Cir. 2004). “Priority
of an invention is a question of law to be determined
based upon underlying factual determinations.” Innova-
tive Scuba Concepts, Inc. v. Feder Indus., Inc., 26 F.3d
1112, 1115 (Fed. Cir. 1994) (citing Price v. Symsek, 988
F.2d 1187, 1190 (Fed. Cir. 1993)). Anticipation is a ques-
tion of fact, and obviousness is a question of law based on
underlying factual determinations. In re NTP, Inc., 654
F.3d 1279, 1297 (Fed. Cir. 2011).
AMKOR TECH   v. ITC                                       9

                  B. 35 U.S.C. § 102(g)(2)

           1. Domestic Disclosure Under Scott

    The American Inventors Protection Act of 1999
(“AIPA”) divided § 102(g) into subsections (1) and (2),
eliminating the “made in this country” requirement under
subsection (1) governing interferences, and retaining the
“made in this country” requirement under subsection (2)
governing prior invention generally.       The post-AIPA
version of § 102(g), which governs this appeal, provides in
pertinent part:
   A person shall be entitled to a patent unless:
   ...
   (g)(1) during the course of an interference con-
   ducted under section 135 or section 291, another
   inventor involved therein establishes . . . that be-
   fore such person’s invention thereof the invention
   was made by such other inventor and not aban-
   doned, suppressed, or concealed, or (2) before such
   person’s invention thereof, the invention was
   made in this country by another inventor who had
   not abandoned, suppressed, or concealed it. . . .
35 U.S.C. § 102(g) (2006) (emphasis added).     Prior   to
the passage of the AIPA, § 102(g) did not distinguish
interferences from prior invention generally, and provided
that a person shall be entitled to a patent unless “before
the applicant’s invention thereof the invention was made
in this country by another who had not abandoned, sup-
pressed, or concealed it.” § 102(g) (1994) (emphasis
added).

    Applying the pre-AIPA version of § 102(g) in an inter-
ference case, this court stated in Scott v. Koyama, 281
F.3d 1243 (Fed. Cir. 2001), that “the inventor of an inven-
tion of foreign origin may rely on the date that the inven-
tion was disclosed in the United States[] as a conception
10                                        AMKOR TECH   v. ITC

date for priority purposes.” Id. at 1247 (citing Thomas v.
Reese, 1880 Off. Gaz. Pat. Office 196, 198 (“If [an inven-
tor], having conceived [the invention] and reduced it to
practice in a foreign country . . . communicates it to an
agent in the United States for the purpose of obtaining
letters patent or of introducing it to public use in the
United States, he may, in an interference, carry the date
of his invention back to the day in which it was fully
disclosed to such agent in the United States.”)). Because
nothing in the legislative history indicates that Congress
attempted to abandon this court’s interpretation of the
“made in this country” language of the pre-AIPA version
of § 102(g) when it amended the statute and retained the
language in § 102(g)(2), this court holds that the court’s
interpretation of this language in Scott governs this non-
interference, prior invention case under § 102(g)(2). See
Lorillard v. Pons, 434 U.S. 575, 581 (1978) (“[W]here . . .
Congress adopts a new law incorporating sections of a
prior law, Congress normally can be presumed to have
had knowledge of the interpretation given to the incorpo-
rated law, at least insofar as it affects the new statute.”).
This court’s interpretation of the “made in this country”
language of § 102(g) (1994) in Scott is consistent with how
both parties in this appeal and district courts have inter-
preted the “made in this country” language of § 102(g)(2)
(2006) as it applies to prior invention, outside of the
interference context. See Solvay S.A. v. Honeywell Spe-
cialty Materials LLC, 827 F. Supp. 2d 358, 363-64 (D. Del.
2011) (“[N]o authority indicat[es] that the language of
§ 102(g)(2) should be interpreted differently than that
same language had been interpreted before the 1999
amendment.”), on remand from 622 F.3d 1367 (Fed. Cir.
2010); Therasense, Inc. v. Becton, Dickinson & Co., 560 F.
Supp. 2d 835, 865 n.26 (N.D. Cal. 2008) (“[F]or an inven-
tion conceived outside the United States, the date of
conception for purposes of priority for a United States
patent is the date the invention is first reported to the
AMKOR TECH   v. ITC                                        11
inventor’s agent within the United States.” (citing Scott,
281 F.3d at 1247)).

                2. Sufficiency of Disclosure

    Amkor accepts Scott as binding—and thus does not
contest that domestic disclosure and reduction to practice
may be sufficient to satisfy the “made in this country”
requirement of § 102(g)(2)—but argues that Scott requires
a full disclosure of the invention in writing for a foreign
invention to be deemed “made in this country” under
§ 102(g)(2). According to Amkor, “[t]he Commission’s new
broad and lax standard” permitting “any U.S. disclosure—
oral or otherwise—of a foreign conception to qualify as a
U.S. conception date” “would lead to absurd results and
would effectively eliminate the ‘made in this county’
requirements from § 102(g)(2).” Appellant’s Br. 32-33.

     The Commission counters that Scott does “not in any
way limit the disclosure of the invention to the written
form.” Appellee’s Br. 28. According to the Commission,
the word “communicate” in the domestic disclosure rule,
by definition, includes oral and written conveyances.
Carsem contends, relying on Sandt Tech., Ltd. v. Resco
Metal & Plastics Corp., 264 F.3d 1344, 1350 (Fed. Cir.
2001), that the only difference between written and oral
disclosure is that “[w]hen an inventor, foreign or domes-
tic, orally discloses an invention in the United States,
independent corroboration is required.” Intervenor’s Br.
23 (emphasis in original). Both the Commission and
Carsem argue that to be “made in this country” under
§ 102(g)(2), a foreign invention need only be disclosed in
the United States in a manner sufficient to show concep-
tion, i.e., “the formation in the mind of the inventor of a
definite and permanent idea of the complete and opera-
tive invention, as it is hereafter to be applied in practice,”
Burroughs Wellcome Co. v. Barr Labs. Inc., 40 F.3d 1223,
1228 (Fed. Cir. 1994) (citing Hybritech Inc. v. Monoclonal
12                                         AMKOR TECH   v. ITC

Antibodies, Inc., 802 F.2d 1367, 1376 (Fed. Cir. 1986),
which may occur orally or in writing.

    The domestic disclosure rule cited in Scott, first ar-
ticulated in Thomas, provides that an inventor who
“communicates [his invention] to an agent in the United
States . . . may . . . carry the date of his invention back to
the day in which it was fully disclosed to such agent in the
United States.” 281 F.3d at 1247 (citing Thomas, 1880
Off. Gaz. Pat. Office at 198). Under this rule, domestic
disclosure is satisfied by a “communication” that “fully
disclose[s]” the invention. Id. It is generally understood
that a “communication” may occur orally or in writing.
See, e.g., Oxford English Dictionary (3d ed. 2009) (defining
“communicate” as “[t]o impart (information, knowledge, or
the like) . . . ; to convey, express”); Webster’s Third New
International Dictionary, Unabridged (2002) (defining
“communicate” as to “speak, gesticulate, or write to an-
other to convey information”).

    While this court’s limited precedent on this issue es-
tablishes that writings can satisfy the full domestic
disclosure requirement, the cases do not establish any per
se requirement that such disclosure must be in writing.
See Scott, 281 F.3d at 1246-47 (finding prior conception in
the Unites States where both parties conceded that “a full
description of the process of the count was contained in
written materials disclosed to persons at ICI Americas,”
but articulating the requirement only as “disclos[ure] in
the United States”); Holmwood v. Sugavanam, 948 F.2d
1236, 1238-40 (Fed. Cir. 1991) (finding prior reduction to
practice in the United States based on domestic testing of
a foreign fungicide, proof of which was established
through oral testimony and test results); Mortsell v.
Laurila, 301 F.2d 947, 951 (CCPA 1962) (finding prior
conception in the United States based solely on the oral
testimony of the applicant’s United States patent attorney
and his employee, where the oral testimony established
AMKOR TECH   v. ITC                                       13
that the patent attorney’s secretary made a complete
English language translation of a German patent applica-
tion fully disclosing the invention). These cases require a
domestic disclosure sufficient to establish conception.

    Amkor is incorrect that the failure to import a writing
requirement leads to a “broad and lax standard” where
effectively any domestic disclosure would establish do-
mestic conception. The content of the domestic disclosure
must be specific enough to encompass the “complete and
operative” invention, see Hybritech, 802 F.2d at 1376 (Fed.
Cir. 1986), and an inventor’s oral testimony to this extent
is a question of proof, see Sandt, 264 F.3d at 1350-51 and
Price, 988 F.2d at 1194.

    Amkor argues that Carsem failed to submit sufficient
evidence to corroborate the ASAT inventor’s testimony
that he fully disclosed the invention to his colleague in the
United States prior to the critical date. However, even if
the ASAT inventor’s domestic disclosure was sufficient—
and this court is not persuaded that it was–the Commis-
sion erred in its priority date determination with respect
to Amkor for the reasons explained below.

3. The Commission’s Application of Oka was Legal Error

    In Oka, the junior party in an interference submitted
a range of dates of possible conception in an attempt to
prove prior invention under § 102(g). Oka, 849 F.2d at
584. This court held:
    Because Oka is the senior party, Youssefyeh was
    required to establish reduction to practice before
    Oka’s filing date, or conception before that date
    coupled with reasonable diligence from just before
    that date to Youssefyeh’s filing date. The Board’s
    finding that Youssefyeh initiated preparation of a
    5-inadanyl compound “in the last week of October
    1980” supports the conclusion that Youssefyeh
14                                          AMKOR TECH   v. ITC

     failed to establish conception, much less a reduc-
     tion to practice, of that class of compounds earlier
     than October 31, 1980. In dealing with a reduc-
     tion to practice, the court in Haultain v. DeWindt,
     254 F.2d 141[, 142] (CCPA 1958), stated [that] . . .
     “where testimony merely places the acts within a
     stated time period, the inventor has not estab-
     lished a date for his activities earlier than the last
     day of the period.” That rule is equally appropri-
     ate in establishing a date of conception, nor does
     Youssefyeh dispute Oka’s position that “the last
     week in October” means October 31.

     Thus Youssefyeh’s conception and Oka’s filing
     date are the same, i.e., October 31, 1980. Oka, as
     the senior party, is presumptively entitled to an
     award of priority, and Youssefyeh, as the junior
     party in an interference between pending applica-
     tions, must overcome that presumption with a
     preponderance of the evidence. In the event of a
     tie, therefore, priority must be awarded to the
     senior party. Because Youssefyeh, the junior
     party, failed to show a conception date earlier
     than Oka’s filing date, Oka is entitled to priority.
     We reverse the Board’s award of priority to
     Youssefyeh.
849 F.2d at 584-85 (internal citations omitted).

    Amkor argues that the Oka rule—i.e., according the
last possible conception date to a party who can only
provide a range of dates—applies only to the party with
the burden of persuasion on the issue of prior invention.
Amkor further contends that because Carsem bore the
burden of persuasion, the Oka rule applies only to the
ASAT invention, not Amkor’s invention. Amkor argues
under Oka that the ASAT invention is entitled to the last
possible conception date in its April/May range, or May
AMKOR TECH   v. ITC                                     15
31, which is later than Amkor’s May 1 through August 31
range of conception dates, “or at most a tie.” Appellant’s
Br. 66.

    Carsem counters that “the Oka rule applies to any
party with a burden to prove a date of invention, whether
that party is junior or senior [or] has the ultimate burden
of persuasion.” Intervenor’s Br. 48-49. Similarly, the
Commission argues that “it [] would make no sense to
have two different rules for determining the date of
conception . . . one applicable to a party that has the
burden of persuasion, and another applicable to a party
without such a burden.” Appellee’s Br. 25-26.

    The Oka rule does not apply to patent owners like
ASAT in validity disputes. This is not an interference,
and the standards that apply to interferences do not
necessarily apply to disputes over validity. An issued
patent is entitled to a presumption of validity under 35
U.S.C. § 282, which can be overcome only with clear and
convincing evidence. Microsoft Corp. v. i4i Ltd. P’ship,
131 S. Ct. 2238, 2241 (2011); Sandt, 264 F.3d at 1350.
The presumption of validity and the clear and convincing
burden associated with it did not apply in the interference
in Oka. In Oka, the question of entitlement to priority did
not carry any presumption and was determined based on
preponderant evidence. See Oka, 849 F.2d at 584. In
Oka, even under the preponderant evidence standard, the
junior party could not prove prior invention by presenting
a range of dates that primarily predated but overlapped
by one day with the senior party’s conception date. Id. at
584-85.

    To invalidate Amkor’s ’277 Patent under § 102(g)(2),
Carsem bore the burden of persuasion and was required
to submit not just preponderant evidence but clear and
convincing evidence that the ASAT invention was con-
ceived in the United States before the invention of the
16                                        AMKOR TECH   v. ITC

’277 Patent. Carsem could only show a range of dates of
possible United States disclosure, the first 30 days of
which pre-dated Amkor’s possible conception date, and
the last 31 days of which overlapped with Amkor’s possi-
ble conception dates. Such a showing, at best, establishes
that the ASAT inventor might have conceived of the
invention first. Evidence establishing that there might
have been a prior conception is not sufficient to meet the
clear and convincing burden needed to invalidate a pat-
ent. Accordingly, the ALJ was correct in his First Supp.
ID when he concluded that “Carsem [] failed to prove by
clear and convincing evidence that the April/May [] date
of invention . . . is prior to the [May through August] date
of invention accorded the asserted claims of the patents-
in-suit.” First Supp. ID at 18. The Commission commit-
ted legal error in reversing this determination based on
an erroneous application of the Oka rule to the patent
holder. Because Carsem failed to prove prior invention in
the United States by clear and convincing evidence, this
court reverses the Commission’s determination that the
’277 Patent is invalid under § 102(g)(2).

         C. Alternative Grounds for Affirmance

     Carsem argues that, if this court reverses the Com-
mission’s invalidity determination with respect to
§ 102(g)(2) as we have, this court should nevertheless
affirm the Commission’s determination on the alternative
grounds that the ’277 Patent is invalid as anticipated and
obvious because: (1) the Commission erred in construing
of the term “fully around a circumference of the die pad”
to exclude “tie bars” but not “fused leads” from the cir-
cumference of the die pad; (2) under the proper claim
construction, Japanese Patent Application No. HEI
1[1989]-106456 (“JP-456”) anticipates claims 2-4 and 21-
23 of the ’277 Patent; and (3) under either claim construc-
tion, JP-456 alone, or JP-456 in view of Japanese Patent
Application No. SHO 63[1988]-188964 (“JP-964”), Japa-
AMKOR TECH   v. ITC                                      17
nese Patent Publication No. 96-4284 (“JP-284”), or both
renders claims 2-4 and 21-23 of the ’277 Patent invalid as
obvious. Carsem’s arguments in the alternative should
not and need not be asserted as a cross-appeal. Krupp
Int’l, Inc. v. U.S. Int’l Trade Comm’n, 626 F.2d 844, 846
(Fed. Cir. 1980) (holding that “the risk of reversal” cre-
ated by an appeal is not an “adverse effect” sufficient to
sustain a cross-appeal). “All questions bearing on the
issue of whether there exists a section 337 violation . . .
[are] before the court.” Id.

                      1. “fully around”

     On appeal, Carsem argues for the first time that “fully
around” means “that the lip is present on every exposed
side edge of the die pad where a connector of some type is
not present.” Intervenor’s Br. 53. Before the ALJ,
Carsem argued that the ’277 Patent claim limitations
requiring a lip to run “fully around a circumference of the
die pad” (claims 2-4) and “fully around the die pad”
(claims 21-23) were indefinite under 35 U.S.C. § 112.
First ID at 49. [JA22101] Carsem argued below that “if
these words are read literally, ‘fully around a circumfer-
ence’ . . . incorporates those portions of the die pad where
it is connected to the lead frame by a tie bar, fused lead,
or other structure, which is not physically possible and
therefore renders the claim indefinite.” Id. On review
before the Commission, Carsem argued that that the
claim limitation “fully around” requires that a lip “essen-
tially cut through the tie bar thus leaving the claimed
invention inoperable.” Claim Construction Remand at 16.
Amkor, not Carsem, argued that the limitation “fully
around” should be “satisfied even where features other
than the tie bars (e.g., the fused leads) may interrupt the
lip on the die pad.” Id. Before the ALJ and the Commis-
sion, Carsem argued against Amkor’s proposed construc-
tion, and urged a construction requiring the lip to
“essentially cut through the tie bar thus leaving the
18                                        AMKOR TECH   v. ITC

claimed invention inoperable.” Id.; First ID at 49, 51.
Carsem switches positions on appeal, now arguing in
support of the position it opposed below. Carsem waived
its new claim construction argument by failing to raise it
below. See Conoco Inc. v. Energy & Envtl. Int’l, L.C., 460
F.3d 1349, 1358-59 (Fed. Cir. 2006) (“[A] party may not
introduce new claim construction arguments on appeal or
alter the scope of the claim construction positions it took
below.”).

     Even if Carsem had preserved the argument, the
Commission properly construed the claims, as both par-
ties’ experts agreed that one of skill in the art would read
the claim terms to mean that the lip “goes fully around
the die pad except at those regions where the tie bars
contact.” Commission Op. at 14 (citing the testimony of
Dr. Patrick McCluskey (“McCluskey”), Trial Tr. 1418:22-
24, July 14, 2004 (“[Y]ou can see that [the lip around the
die pad] goes fully around the die pad except at those
regions where the tie bars contact.”), and Dr. Gerald K.
Fehr, Trial Tr. 3656:7-17, July 23, 2004 (“[A] person of
ordinary skill would understand the phrases . . . as used
in the claims to refer to the exposed side edges of the die
pad and not to include the portions of the die pad where
the die pad and tie bars are integrally connected.”)).
“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.” Spansion Inc. v. Int’l Trade Comm’n, 629
F.3d 1331, 1344-45 (Fed. Cir. 2010) (“Experts for both
Tessera and Appellants testified that one of ordinary skill
in the art would have been able to determine the bounda-
ries of the claims. . . . This court does not find persuasive
Appellants’ arguments that the ALJ misinterpreted the
expert testimony.”). The Commission did not err in
concluding that “no features (other than tie bars) may
interrupt the lip on the die pad,” Claim Construction
Remand at 16, because the ’277 Patent only discloses tie
AMKOR TECH   v. ITC                                      19
bar connectors, not fused leads, and no expert testimony
establishes that one of skill in the art would read the ’277
Patent to contemplate the possibility of fused leads.
Accordingly, the court affirms the Commission’s claim
construction as to these terms.

           2. JP-456, Alone or in Combination

    Carsem conceded below that, under the Commission’s
claim construction, JP-456 does not anticipate the as-
serted claims because it discloses a fused lead interrupt-
ing the lip of the die pad, and thus “lacks a lip fully
around the die pad.” Second ID at 53. Because we have
now affirmed the Commission’s claim construction, this
court affirms the Commission’s determination on antici-
pation.

    Carsem also argues that claims 2-4 and 21-23 of the
’277 Patent are obvious in view of JP-456 alone, or JP-456
in view of JP-964, JP-284, or both. Amkor argues that
Carsem waived the right to argue obviousness based on
JP-456 alone and the combination of JP-456 with both JP-
284 and JP-964 because it never made these arguments
before the Commission. Amkor’s waiver argument is not
supported by the record, which reveals that the obvious-
ness issues were raised, albeit briefly. See Second ID at
77-79 (explaining that Carsem’s obviousness argument in
view of JP-456 alone was already addressed in the antici-
pation analysis, and considering Carsem’s obviousness
arguments “in light of JP[-]456 as modified by the JP[-
]964 . . . [and] JP[-]284 . . . references”). We, therefore,
decline to find waiver and turn next to the merits.

     According to Carsem, JP-456 discloses a lip on all
four sides of the die pad, only interrupted by a fused lead.
Carsem asserts that the ALJ’s conclusion that JP-456
discloses a lip on only two sides of the die pad is unsup-
ported by substantial evidence and should be reversed.
20                                          AMKOR TECH   v. ITC

Even if JP-456 discloses a lip on only two sides, Carsem
argues that extending the lip “fully around” the die pad
was an “obvious solution” to the known problem of “de-
lamination between the plastic encapsulant material and
the metal leadframe components.” Intervenor’s Br. 60.
With respect to JP-456 in combination with either JP-964
or JP-284, Carsem argues that these references (1) teach
die pads with lips extending “fully around” the die pad
and (2) do not include fused leads, and thus “clearly
demonstrate[] that, in a top-encapsulated bottom-exposed
type package, a fused lead such as the one shown in the
exemplary figures of JP-456 is optional.” Intervenor’s Br.
65.

     Amkor counters that even if JP-964 and JP-284 dis-
closed a lip running fully around the die pad—which it
does not concede—it would be of no consequence because
“one of ordinary skill had no reason to discard the fused
lead [of JP-456] because of the ‘special purpose’ it served
in ‘smart cards.’” Appellant Reply Br. 29, 31; Second ID
at 80 (“Dr. McKluskey testified that smart cards often use
fused leads to ensure that the cards remain grounded.
Therefore, the evidence suggests that one of ordinary skill
in the art at the time of the ’277 invention would not wish
to discard the fused lead.”).

     We are not persuaded by Carsem’s argument, which
fails to point to any evidence of a motivation or reason to
remove the fused lead from the JP-456 reference. Am-
kor’s expert testimony establishes a purpose for fused
leads in the art:
     [T]he fused leads are often used in order to ground
     to the substrate for devices where the contacts are
     made to the top, in order to make sure the sub-
     strate stays grounded, and this is true in many
     cases for smart cards, they want to ground the
     backside as well, so they . . . often use a fused lead
     there. They also use them . . . in power devices
AMKOR TECH   v. ITC                                      21

   when they want to make contact to the backside of
   the device, so those are reasons why you would
   use fused leads.
Trial Tr. 4615:4-15 (McCluskey testimony). Because the
fused lead attached to the die pad in JP-456 prevents the
lip from extending “fully around the circumference of a die
pad” or “fully around the die pad” as required by the
claims, Carsem was required to present evidence that one
of ordinary skill in the art at the time of the invention
would have been motivated or found reason to remove the
fused lead from the JP-456 reference, or that common
sense would have led one of skill in the art to remove the
fused lead based on a known problem, design need, or
market pressure. KSR Int’l v. Teleflex, 550 U.S. 398, 418-
20 (2007).

     Carsem points the court only to the references them-
selves to support its contention that a fused lead is op-
tional. Carsem argues that both parties’ experts admitted
that JP-456 does not require a fused lead. We disagree.
Amkor’s expert merely admitted that the only time a
fused lead is not present in the JP-456 reference is when
there is no die pad at all. Trial Tr. 4618:8-17 (McCluskey
testimony). Thus, the ALJ properly found that JP-456, on
its face, does not indicate that the fused lead on the die
pad is optional. The court is not persuaded that either
JP-284 or JP-964 provides a motivation or reason to
remove the fused lead from JP-456. In brief, this court
finds no basis to conclude that one of ordinary skill in the
art, upon considering these references, would, in fact, find
any reason to remove the fused lead from the die pad in
the JP-456 reference. Accordingly, this court declines to
affirm the Commission’s invalidity determination on
these alternative grounds.
22                                       AMKOR TECH   v. ITC

                    III. CONCLUSION

    For the foregoing reasons, this court reverses the
Commission’s determination that the ’277 Patent is
invalid under 35 U.S.C. § 102(g)(2), declines to affirm the
Commission’s invalidity determination on the alternative
grounds raised by Carsem, and remands for further
proceedings consistent with this opinion.

            REVERSED AND REMANDED
