  United States Court of Appeals
      for the Federal Circuit
                ______________________

             X2Y ATTENUATORS, LLC,
                    Appellant,

                           v.

     INTERNATIONAL TRADE COMMISSION,
                 Appellee,

                         AND

 INTEL CORPORATION, INTEL AMERICAS, INC.,
  COMPONENTES INTEL DE COSTA RICA S.A.,
    INTEL TECHNOLOGY SDN. BHD, INTEL
 PRODUCTS (CHENGDU) LTD., APPLE INC., AND
       HEWLETT-PACKARD COMPANY,
                  Intervenors.
            ______________________

                      2013-1340
                ______________________

   Appeal from the United States International Trade
Commission in Investigation No. 337-TA-781.
                ______________________

                 Decided: July 7, 2014
                ______________________

   JOHN D. HAYNES, Alston & Bird LLP, of Atlanta,
Georgia, argued for appellant. With him on the brief was
PATRICK J. FLINN.
2                               X2Y ATTENUATORS, LLC   v. ITC



    SIDNEY A. ROSENZWEIG, Attorney, Office of General
Counsel, United States International Trade Commission,
of Washington, DC, argued for appellee. With him on the
brief were DOMINIC L. BIANCHI, General Counsel, and
WAYNE W. HERRINGTON, Assistant General Counsel.

    WILLIAM F. LEE, Wilmer Cutler Pickering Hale and
Dorr LLP, of Boston, Massachusetts, argued for interve-
nors.    With him on the brief were MICHAEL J.
SUMMERSGILL, JOSEPH J. MUELLER, MARK C. FLEMING and
LAUREN B. FLETCHER; JAMES L. QUARLES, III, and NINA S.
TALLON, of Washington, DC; and MARK D. SELWYN, of
Palo Alto, California. Of counsel on the brief for interve-
nor Apple Inc. were MARCIA H. SUNDEEN, Kenyon &
Kenyon LLP, of Washington, DC, and MEGAN WHYMAN
OLESEK, of Palo Alto, California.
                  ______________________

    Before MOORE, REYNA, and WALLACH, Circuit Judges.
    Opinion for the court filed by Circuit Judge MOORE.
     Concurring opinion filed by Circuit Judge REYNA.
MOORE, Circuit Judge.
     X2Y Attenuators, LLC (X2Y) appeals from the final
determination of the International Trade Commission
(ITC) that Intel Corporation and other intervenors (Intel)
did not violate 19 U.S.C. § 1337 because Intel’s products
were not covered by X2Y’s asserted patents. Because the
ITC correctly construed the relevant claim terms, we
affirm.
                      BACKGROUND
    The asserted patents, U.S. Patent Nos. 7,609,500 (’500
patent), 7,916,444 (’444 patent), and 8,023,241 (’241
patent) are familially related. The technology disclosed in
the asserted patents relates to structures for reducing
electromagnetic interference in electrical circuits. The
X2Y ATTENUATORS, LLC   v. ITC                                3



patented inventions use shielding electrodes to reduce the
undesirable buildup of charge, known as “parasitic capaci-
tance,” between electrodes used for conduction. ’444
patent Abstract, col. 2 ll. 36–40, col. 4 ll. 60–65, col. 9 ll.
5–40. In particular, the patents disclose alternating
arrangements of shielded and shielding electrodes. ’500
patent Figs. 1A, 1B; see Intervenor’s Br. 19 (annotated by
Intel and reproduced below); Appellant’s Br. 5 (annotated
by X2Y and reproduced below).
4                                X2Y ATTENUATORS, LLC   v. ITC



    Although it is not asserted, the parties treat claim 26
of the ’444 patent as illustrative:
    An arrangement for energy conditioning, compris-
    ing: . . .
    a first electrode including a first shielding elec-
    trode portion, a third electrode including a third
    shielding electrode portion, and a fifth electrode
    including a fifth shielding electrode portion,
    wherein said first electrode, said third electrode
    and said fifth electrode are conductively coupled
    to one another;
    a second electrode including a second shielded
    electrode portion; a fourth electrode including a
    fourth shielded electrode portion; wherein said
    second electrode and said fourth electrode are
    conductively isolated from each other; . . .
        wherein said second shielded electrode
        portion and said fourth shielded electrode
        portion are in a first superposed align-
        ment with each other; . . . and wherein
        said second shielded electrode portion is
        physically shielded from said fourth
        shielded electrode portion by said third
        shielding electrode portion.
’444 patent claim 26 (emphases added). At the ITC, the
parties treated the ’444 patent claim term “third elec-
trode,” ’241 patent claim term “center electrode” (see, e.g.,
’241 patent claim 14), ’500 patent claim term “first ground
plane,” (see, e.g., ’500 patent claim 1), and several other
claim terms collectively as “electrode terms” or “center
ground plane terms.” See J.A. 131–32 (“[E]ach of the
asserted claims contains a term from a group that X2Y
characterizes as the ‘electrode’ terms, and respondents
characterize as ‘central ground plane’ terms.”).
X2Y ATTENUATORS, LLC   v. ITC                              5



     X2Y filed a complaint in the ITC accusing Intel of un-
lawful importation of certain microprocessor products.
The parties disputed whether the electrode terms were
limited to the so-called “sandwich” configuration—an
arrangement of three electrodes in which a center conduc-
tor is flanked by paired differential, or oppositely charged,
conductors. See ’500 patent col. 10 ll. 20–22 (describing
“electrostatic suppression or minimization of parasitics
originating from the sandwiched differential conductors”);
’444 patent col. 11 ll. 64–65 (describing “sandwiching
pairs of electrically opposing complementary pathways”);
see also ’500 patent col. 14 ll. 4–11 (“The various attach-
ment schemes described herein will normally allow a ‘0’
voltage reference to develop with respect to each pair or
plurality of paired differential conductors located on
opposite sides of the shared central and common conduc-
tive pathway, and be equal yet opposite for each unit of a
separated paired energy pathway or structure, between
the centrally positioned interposing, common conductive
shield pathway used.”). While Intel argued that the
claims should be limited to the sandwich configuration,
X2Y contended that the electrode terms require no con-
struction and should be given their plain and ordinary
meanings. See J.A. 139–44.
    The ITC resolved the dispute in favor of Intel. It
adopted the Administrative Law Judge’s construction of
the electrode terms as requiring “a common conductive
pathway electrode positioned between paired electromag-
netically opposite conductors.” J.A. 36; see J.A. 131–34.
This construction was based on specification disavowal—
for example, the statement in the ’500 patent that the
sandwich configuration is “an essential element among all
embodiments or connotations of the invention,” ’500
patent col. 19 ll. 22–23, and a statement incorporated by
reference into the ’444 patent that this configuration is a
6                               X2Y ATTENUATORS, LLC   v. ITC



“feature[] universal to all the embodiments,” U.S. Patent
No. 5,909,350 (’350 patent) col. 20 l. 16. 1 Because X2Y
conceded noninfringement on the basis of this construc-
tion, the ITC found no violation. X2Y appeals. We have
jurisdiction under 28 U.S.C. § 1295(a)(6).
                       DISCUSSION
    We review de novo the ITC’s legal determinations, in-
cluding those relating to claim interpretation. Gemstar-
TV Guide Int’l, Inc. v. Int’l Trade Comm’n, 383 F.3d 1352,
1360 (Fed. Cir. 2004) (citation omitted).
    X2Y argues that the ITC erred in its construction of
the electrode terms. X2Y contends that the ITC improp-
erly read several functional and structural limitations
into the meaning of the term “electrode.” It contends that
the plain meaning of “electrode” denotes a single conduc-
tor rather than three conductors, let alone a three-
conductor sandwich structure having paired electromag-
netically opposite conductors flanking the central conduc-
tor. X2Y argues that claim 26 of the ’444 patent recites
the physical role of each of the electrodes “separate and
apart from any electrical characteristics . . . created when
the arrangement is connected in a circuit.” Appellant’s
Br. 27–28.
    X2Y also argues that the specifications of the asserted
patents contradict the constructions. X2Y contends that,
for example, the ’444 patent discloses that the electrodes


    1    The asserted ’444 patent is a continuation-in-part
of the ’350 patent, and it incorporates the ’350 patent by
reference. The ’444 patent also incorporates by reference
U.S. Patent No. 6,738,249, which contains a passage
referring to “an essential element among all embodiments
or connotations of the invention” that is identical to that
in the ’500 patent. ’249 patent, col. 19 ll. 20–22; cf. ’500
patent col. 19 ll. 22–23.
X2Y ATTENUATORS, LLC   v. ITC                              7



on either side of a center conductor may be “electrically
null, electrically complementary, . . . or electrically oppo-
site,” which, it argues, suggests that the claims should not
be limited to “electrically opposite” conductors. ’444
patent col. 5 ll. 7–11. X2Y further contends that the ITC
improperly relied on the alleged disclaimers in some of
the priority patents because the asserted patents are only
related to those patents as continuations-in-part.
    Finally, X2Y argues that the statements relied upon
by the ITC do not constitute disavowal of claim scope.
X2Y argues that the ’500 patent’s reference to the “com-
mon conductive pathway electrode” as the “essential
element among all embodiments” does not limit the
claims because it says nothing about the electromagnetic
state of the conductors surrounding it when the circuit is
energized. It contends that a priority patent’s description
of the sandwich configuration as “universal to all the
embodiments” is also not a disclaimer because the pas-
sage that the ITC relied upon otherwise uses permissive
rather than mandatory language. ’350 patent col 20 ll.
14–17, 36–41.
    We conclude that the ITC correctly construed the elec-
trode terms. The patents’ statements that the presence of
a common conductive pathway electrode positioned be-
tween paired electromagnetically opposite conductors is
“universal to all the embodiments” and is “an essential
element among all embodiments or connotations of the
invention” constitute clear and unmistakable disavowal of
claim scope. See GE Lighting Solutions, LLC v. AgiLight,
Inc., 750 F.3d 1304, 2014 WL 1704518, at *2–3 (Fed. Cir.
2014). The standard for finding disavowal, while exact-
ing, was met in this case. Id. at 2.
    Specifically, we have held that labeling an embodi-
ment or an element as “essential” may rise to the level of
disavowal. Id. at 3. Here, not only does the specification
state that the “center common conductive pathway elec-
8                                  X2Y ATTENUATORS, LLC    v. ITC



trode” flanked by two differential conductors is “essen-
tial,” but it also spells out that it was an “essential ele-
ment among all embodiments or connotations of the
invention.” ’500 patent col. 19 ll. 22–23 (emphasis added);
see id. Fig. 2; id. col. 18 l. 13, ll. 60–61; id. col. 19 ll. 24–
25.
     The ’350 patent’s statement that the sandwich config-
uration is a “feature[] universal to all the embodiments”
reinforces this conclusion. ’350 patent col 20 l. 16. Like
the “essential element” label, this phrase demonstrates a
clear intention to limit the claim scope “using words or
expressions of manifest exclusion or restriction.” Teleflex,
Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1324 (Fed. Cir.
2002). The relevant passage does include the permissive
language that “the material having predetermined elec-
trical properties may be one of a number in any of the
embodiments.” ’350 patent col. 20 ll. 17–19. But the
specification further explains that “[n]o matter which
material is used, the combination of common ground
conductive plates and electrode conductive plates creates
a plurality of capacitors to form a line-to-line differential
coupling capacitor between and two line-to-ground decou-
pling capacitors from a pair of electrical conductors.” Id.
col. 20 ll. 22–27 (emphasis added). Thus, although the
passage states that the material may vary, it also ex-
plains that the general sandwich configuration remains
the same because it is a “feature[] universal” to the inven-
tion. This is a clear and unmistakable disavowal of claim
scope.
    X2Y’s argument that some of the disclaimers are in-
applicable because they appear only in priority patents to
which the asserted patents are only related as continua-
tions-in-part is without merit on the facts of this case.
First, the “essential element” disavowal explicitly appears
in one of the asserted patents, the ’500 patent. Second,
the asserted ’500 and ’444 patents incorporate by refer-
ence the priority ’350 patent (which includes the “features
X2Y ATTENUATORS, LLC   v. ITC                                9



universal” disavowal), and the ’444 patent also incorpo-
rates by reference the ’249 patent (which includes the
“essential element” disavowal). The incorporated patents
are “effectively part of the host [patents] as if [they] were
explicitly contained therein.” 2 Telemac Cellular Corp. v.
Topp Telecom, Inc., 247 F.3d 1316, 1329 (Fed. Cir. 2001)
(citations omitted); see Ultradent Prods., Inc. v. Life-Like
Cosmetics, Inc., 127 F.3d 1065, 1069 (Fed. Cir. 1997)
(citing Manual of Patent Examining Procedure
§ 608.01(p) (6th ed. 1996)) (explaining that, unless indi-
cated otherwise, incorporation by reference of a patent
renders “the entire contents” of that patent’s disclosure a
part of the host patent)); see also Harari v. Lee, 656 F.3d
1331, 1335–36 (Fed. Cir. 2011). As a result, the disclaim-
ers of the incorporated patents are a part of the asserted
patents.
     Of course, “incorporation by reference does not con-
vert the invention of the incorporated patent into the
invention of the host patent.” Modine Mfg. Co. v. U.S.
Int’l Trade Comm’n, 75 F.3d 1545, 1553 (Fed. Cir. 1996).
And it is certainly possible that a clear and unmistakable
disavowal in an incorporated patent is no longer so when
placed in the context of the disclosure of the host patent.
This, however, is not that case. Although the ’444 patent
mentions that, “[a]s used generally therein,” a conductive
pathway could include electrode pairings that are “electri-
cally null, electrically complementary, electrically differ-
ential, or electrically opposite,” ’444 patent col. 4 l. 66 –
col. 5 l. 11, this teaching is not sufficient to blur the clear
disavowals. The possibility that conductive pathways
may include these structures is not inconsistent with the



    2   The parties chose to treat the electrode terms
across the three asserted patents as rising and falling
together. See J.A. 131–32. Therefore, we do not separate-
ly address the ’241 patent.
10                              X2Y ATTENUATORS, LLC   v. ITC



patents’ statements that, of all the conceivable configura-
tions, the sandwich configuration is a “feature[] universal”
and “an “essential element” of the inventions of the as-
serted patents. These disavowals therefore limit the
scope of the claims of the ’444 and ’500 patents. We agree
with the ITC that, in light of the clear disavowals, the
claims at issue are limited to “a common conductive
pathway electrode positioned between paired electromag-
netically opposite conductors.” Because X2Y conceded
noninfringement based on this construction, we need not
reach any other issues.
                       CONCLUSION
   We affirm the ITC’s determination of no violation of
19 U.S.C. § 1337.
                       AFFIRMED
  United States Court of Appeals
      for the Federal Circuit
                  ______________________

              X2Y ATTENUATORS, LLC,
                     Appellant,

                             v.

      INTERNATIONAL TRADE COMMISSION,
                  Appellee,

                            AND

 INTEL CORPORATION, INTEL AMERICAS, INC.,
  COMPONENTES INTEL DE COSTA RICA S.A.,
    INTEL TECHNOLOGY SDN. BHD, INTEL
 PRODUCTS (CHENGDU) LTD., APPLE INC., AND
       HEWLETT-PACKARD COMPANY,
                  Intervenors.
            ______________________

                        2013-1340
                  ______________________

   Appeal from the United States International Trade
Commission in Investigation No. 337-TA-781.
                ______________________

REYNA, Circuit Judge, concurring.
    I join the court’s opinion in its entirety. I write sepa-
rately to address an error in the claim construction ap-
proach adopted by the ALJ and the Commission. The
error, while significant, did not affect the result affirmed
by this court.
2                               X2Y ATTENUATORS, LLC   v. ITC



    Specifically, the ALJ and the Commission assumed a
specific priority date that X2Y asserted as a defense to an
invalidity challenge. The ALJ and the Commission then
determined that the scope of the asserted claims was
limited by “the invention” disclosed in earlier patents in
the priority chain. This was error because the asserted
claims derive from multiple continuation-in-part applica-
tions, and because the ALJ and the Commission failed to
objectively construe the asserted claims before deciding
whether the claims were entitled to priority.
                       BACKGROUND
    The asserted patents belong to an extensive family
claiming priority to the ’350 patent. The priority chain for
each asserted patent contains multiple continuation-in-
part applications, including the ’249 patent:




    The asserted patents incorporate by reference the dis-
closures of the ’350 and ’249 patents (“the earlier pa-
tents”) to varying degrees. The ’500 patent incorporates
by reference the ’350 patent and shares a specification
with the ’249 patent. The ’444 patent incorporates by
reference the earlier patents but has a different specifica-
tion. The ’241 patent also has a different specification,
and does not incorporate by reference either of the earlier
patents.
X2Y ATTENUATORS, LLC   v. ITC                             3



    Respondents argued below that X2Y’s claims should
be limited by the disclosures in the earlier patents. The
ALJ agreed with Respondents:
   Respondents’ position has merit. It is well-settled
   that, for a claim to receive priority to an earlier
   application, the claimed invention must be dis-
   closed in the earlier application. The claim is
   therefore limited to the invention disclosed in the
   earlier application. Accordingly, the terms of the
   claims asserted in this investigation will be con-
   strued with reference to the disclosures of the ’350
   and ’249 patents. 1
The ALJ therefore construed the “electrode” terms in view
of certain disclaimers of scope in the earlier patents.
    The Commission agreed with the ALJ’s claim con-
struction approach, explaining that statements of disa-
vowal in the earlier patents should apply to the asserted
claims because X2Y took the position that the claims
“trace their priority through many generations of applica-
tions (including the ’249 patent) all the way to the ’350
patent.” 2 The Commission apparently faulted X2Y for
taking alternative positions as to priority:
   X2Y chose to claim priority to its earlier patents,
   not only at the Patent and Trademark Office, but
   also in this investigation. As X2Y presented a
   case based upon priority to these earlier patents,



   1    Certain Microprocessors, Components Thereof, and
Prods. Containing Same, USITC Inv. No. 337-TA-781,
Initial Determination at 44 (Jan. 16, 2013) (emphasis
added) (internal citations omitted).
    2   Certain Microprocessors, Components Thereof, and
Prods. Containing Same, USITC Inv. No. 337-TA-781,
Comm’n Op. at 11 (Mar. 4, 2014).
4                                X2Y ATTENUATORS, LLC   v. ITC



    it is not now at liberty to recast its patents in a
    different way. 3
On this basis, the Commission affirmed the ALJ’s claim
construction of the “electrode” terms.
                        DISCUSSION
    The claim construction approach affirmed by the
Commission is erroneous for three reasons. First, it is
well settled that a written description analysis depends
on a proper claim construction because, among other
reasons, a claim is entitled to the priority date of an
earlier application only if the earlier specification pro-
vides sufficient written support for the full scope of the
claim. 4 Where the claims have not been properly con-
strued, the full scope of the claim is unknown, thereby
rendering baseless any determination of written support
in an earlier patent. 5 It follows that entitlement to priori-
ty cannot be decided without first construing the asserted
claims. Similarly, it is improper to construe claims with
the goal of arriving at a particular priority date, a meas-
ure that would violate a tribunal’s “independent obliga-
tion to determine the meaning of the claims,
notwithstanding the views asserted by the adversary
parties.” 6
    Second, it is improper to “hold” the patentee to a pri-
ority date that it asserted as a defense to an invalidity
challenge without first construing the claims and resolv-


    3   Id. at 12.
    4   Anascape, Ltd. v. Nintendo of Am. Inc., 601 F.3d
1333, 1335 (Fed. Cir. 2010).
    5   See, e.g., Intirtool, Ltd. v. Texar Corp., 369 F.3d
1289, 1296 (Fed. Cir. 2004); C.R. Bard, Inc. v. M3 Sys.,
Inc., 157 F.3d 1340, 1360 (Fed. Cir. 1998).
    6   Exxon Chem. Patents, Inc. v. Lubrizol Corp., 64
F.3d 1553, 1555 (Fed. Cir. 1995).
X2Y ATTENUATORS, LLC   v. ITC                             5



ing invalidity issues. To be clear, invalidity considera-
tions may inform claim construction in limited circum-
stances, but they cannot dictate the process. In this case,
all the invalidity defenses raised by Respondents (antici-
pation, obviousness, indefiniteness, lack of written de-
scription and improper inventorship) required that the
claims be construed first. X2Y did not bear an initial
burden of proving non-invalidity—including that the
patent antedates alleged prior art—because all patents
are presumed valid. 7 Instead, Respondents had the
burden to show invalidity by clear and convincing evi-
dence. Only after Respondents established a prima facie
case of invalidity would the burden have shifted to X2Y to
prove priority over the invalidating prior art. 8 Therefore,
it was error for the ALJ and the Commission to assume a
priority date before construing the claims and addressing
the invalidity issues.
    And third, it was erroneous to treat X2Y’s attempt to
overcome allegedly invalidating prior art through a priori-
ty claim as an attempt by X2Y to “recast” its patents. 9
X2Y had a right to advocate for a broad claim construction
that might ultimately find no support in the earlier
patents to which it claimed priority. Had the ALJ and the
Commission first construed the asserted claims and then
determined that they were not entitled to claim priority to
the ’350 or ’249 patents, the asserted patents would have
been entitled to either the priority date of other applica-
tions in their respective priority chains (as X2Y in fact
argued) or the filing date of their respective applications.




   7   35 U.S.C. § 282.
   8   See PowerOasis, Inc. v. T-Mobile USA, Inc., 522
F.3d 1299, 1305 (Fed. Cir. 2008).
    9  Comm’n Op. at 12.
6                                X2Y ATTENUATORS, LLC   v. ITC



Indeed, it is well established that “a patentee may argue
in the alternative for different priority dates at trial.” 10
     Due to the foregoing errors, the ALJ and the Commis-
sion gave improper weight to statements regarding the
scope of “the invention” contained in the earlier patents’
specifications. While the scope of claims may be limited
by statements in the specification of the patent, it does
not follow that claims in a continuation-in-part patent are
necessarily limited by the specification of a patent to
which the continuation-in-part claims priority.        The
disclosures of related patents may inform the construction
of claim terms common across patents, but it is erroneous
to assume that the scope of the invention is the same such
that disclaimers of scope necessarily apply across patents,
particularly when continuation-in-part applications are
involved. A continuation-in-part application is the vehicle
by which a patent applicant is allowed to add “new mat-
ter” to another pending application:
    A continuation-in-part application is just what its
    name implies. It partly continues subject matter
    disclosed in a prior application, but adds new sub-
    ject matter not disclosed in the prior application.
    Thus, some subject matter of a CIP application is
    necessarily different from the original subject
    matter. 11
In other words, the invention claimed in a continuation-
in-part application does not have to be limited to the
invention disclosed in a priority patent. To the extent
that a continuation-in-part application claims new mat-
ter, entitlement to priority is decided on a claim-by-claim



    10 Ajinomoto Co. v. Int’l Trade Comm’n, 597 F.3d
1267, 1277 (Fed. Cir. 2010).
    11 Univ. of W. Va., Bd. of Trs. v. VanVoorhies, 278
F.3d 1288, 1297 (Fed. Cir. 2002).
X2Y ATTENUATORS, LLC   v. ITC                          7



basis, and various claims may be entitled to different
priority dates. 12
    Although the path followed by the ALJ and the Com-
mission was error, the construction they reached was
correct because the disclaimer statements that informed
the ALJ and the Commission’s construction were incorpo-
rated explicitly or by reference in some of the asserted
patents, and X2Y agreed to treat all “electrode” terms
consistently across the asserted patents. Under the
proper claim construction analysis, as outlined by this
court’s opinion, the relevant intrinsic record contains
sufficient clear and unmistakable disavowal of claim
scope to support the construction adopted by the ALJ and
the Commission.




   12  See, e.g., Santarus, Inc. v. Par Pharm., Inc., 694
F.3d 1344, 1352, 1354 (Fed. Cir. 2012).
