Csr, Plc v. Skullcandy, Inc.

NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
CSR, PLC,
Appellant,
v.
SKULLCANDY, INC.,
Cross-Appellant.
______________________
2014-1108, -1109, -1138
______________________
Appeals from the United States Patent and Trade-
mark Office, Patent Trial and Appeal Board in reexami-
nation Nos. 95/001,305 and 95/001,369.
______________________
Decided: December 16, 2014
______________________
JEFFREY E. OSTROW, Simpson Thacher & Bartlett
LLP, of Palo Alto, California, argued for appellant. With
him on the brief was JEFFREY E. DANLEY; and KERRY L.
KONRAD, of New York, New York.
GREGORY A. CASTANIAS, Jones Day, of Washington,
DC, argued for cross-appellant. With him on the brief
were ISRAEL SASHA MAYERGOYZ, JESSICA K. FENDER, and
MARRON ANN MAHONEY of Chicago, Illinois.
______________________
2 CSR, PLC v. SKULLCANDY, INC.
Before LOURIE, SCHALL, and DYK, Circuit Judges.
LOURIE, Circuit Judge.
CSR, PLC (“CSR”) appeals from the decisions of the
United States Patent and Trademark Office (“PTO”)
Patent Trial and Appeal Board (“Board”) in two inter
partes reexaminations (1) affirming the examiner’s deci-
sion not to reject claims 1–6 of Skullcandy’s U.S. Patent
7,187,948 (the “’948 patent”) as anticipated, obvious, or
lacking adequate written description, and (2) affirming
the examiner’s decision not to reject claim 5 of Skull-
candy’s U.S. Patent 7,395,090 (the “’090 patent”) as
anticipated. * See CSR, PLC v. Skullcandy, Inc., No. 2013-
000114, 2013 WL 706865 (P.T.A.B. Feb. 19, 2013) (“’948
Opinion”), reh’g denied, (P.T.A.B. Aug. 6, 2013); CSR,
PLC v. Skullcandy, Inc., No. 2012-012690, 2013 WL
1127429 (P.T.A.B. Feb. 19, 2013) (“’090 Opinion”), reh’g
denied in part, (P.T.A.B. Aug. 6, 2013). Skullcandy, Inc.
(“Skullcandy”) cross-appeals from the Board’s decision
reversing the examiner’s decision not to reject claims 1–4
and 6–74 of the ’090 patent as anticipated or obvious. See
’090 Opinion. Because the Board erred by failing to
construe “threshold value” in claims 1–6 of the ’948 pa-
tent, but did not otherwise err, we vacate in part, affirm
in part, and remand.
* The Leahy-Smith America Invents Act amended
the inter partes reexamination provisions of the Patent
Act. See Leahy-Smith America Invents Act, Pub. L. No.
112-29, § 6, 125 Stat. 284, 299–305 (2011) (“AIA”). As
those amendments do not apply here because the request
for inter partes reexamination in this case was filed before
the date of enactment, September 16, 2011, id., we ex-
press no opinion on the applicability of the AIA provisions
to the current case.
CSR, PLC v. SKULLCANDY, INC. 3
BACKGROUND
Skullcandy owns the ’948 patent and the ’090 patent,
which is a continuation of the ’948 patent. Both patents
share a common specification. The patents are directed to
an apparatus that allows for the integration of services
provided by a personal music player and a mobile phone.
E.g., ’948 patent col. 1 ll. 13–16. They describe an appa-
ratus that allows a user to listen to music on a portable
device and then, when a telephone call is received, to
substitute the audio signal from the music device with the
audio signal from the phone. Id. col. 2 ll. 41–47.
I. The ’948 Patent
Independent claim 1 of the ’948 patent reads as
follows:
1. A portable and wireless apparatus for wire-
lessly integrating a two-way communication de-
vice and an audio delivery device, wherein the
portable and wireless apparatus is configured in
size and shape to be portably carried in either a
hand of a user or an article of clothing during use
of the portable and wireless apparatus, the porta-
ble and wireless apparatus comprising:
means for wirelessly receiving a first audio signal
from a substantially arbitrarily selectable audio
delivery device;
means for wirelessly receiving a second audio sig-
nal from a substantially arbitrarily selectable two-
way communication device;
a coupling device independent from the audio and
two-way communication devices, wherein the sec-
ond audio signal is characterized by a threshold
value, the second audio signal is accorded priority
relative to the first audio signal, and the second
audio signal interrupts the first audio signal upon
4 CSR, PLC v. SKULLCANDY, INC.
reaching the threshold value, the coupling device
comprising said means for receiving said first and
second audio signals, said coupling means further
comprising:
means for transmitting a third audio signal com-
prising at least one of the first or second audio
signals to an acoustic device adapted to convert
the third acoustic wave to an audio range corre-
sponding to a hearing range of a user.
Id. col. 6 l. 41–col. 7 l. 2 (emphasis added). Independent
claim 4 of the ’948 patent, added during reexamination, is
similar to claim 1 and requires that the audio delivery
device and the two-way communication device be “config-
ured in size and shape to be portably carried in either a
hand of a user or an article of clothing,” and that the
coupling device be “portable with the audio and two-way
communication devices by the same user during use of the
coupling device.” J.A. 981.
In February 2010, CSR filed a request for inter partes
reexamination of the ’948 patent. CSR argued that four
references, including U.K. Patent Publication 2357663A
of Smith (“Smith”), raised substantial new questions of
patentability under 35 U.S.C. §§ 102 and 103. The PTO
granted CSR’s request, but the examiner declined to
adopt the proposed rejections of claims 1–6 as anticipated,
obvious, or lacking adequate written description. CSR
appealed to the Board.
On appeal by CSR, the Board affirmed the examiner’s
decision not to adopt the rejections of claims 1–6. ’948
Opinion at *4. CSR argued that claims 4–6 recite a
coupling device that is “portable with the audio and two-
way communication devices by the same user during use
of the coupling device,” but that such a limitation lacks an
adequate written description. Id. at *2 (emphases in
original). But, citing figures 2 and 8 of the specification,
the Board declined to adopt the written description rejec-
CSR, PLC v. SKULLCANDY, INC. 5
tion of claims 4–6. Id. The Board explained that the
specification “discloses an ‘audio device’ and a ‘two-way
communication device’ in communication with a ‘coupling
device’ that can ‘route the signals . . . to an acoustic de-
vice, such as headphones.’” Id. The Board found that the
audio device and two-way communication device are both
“portable” devices because the specification discloses a
“mobile phone” and “a portable MP3 or CD player,” and
both devices further communicate with the coupling
device using wireless technology. Id. (citing ’948 patent
col. 3. l. 35; id. col. 3 ll. 36–37). The Board reasoned that
“the Specification discloses the undisputed claim features
of a portable audio device and a portable two-way com-
munication device communicating wirelessly with a
coupling device, the audio and two-way communication
device being used by a user during use of the coupling
device.” Id.
In defense of its patent, Skullcandy had also argued
that the Smith prior art fails to disclose that “the second
audio signal interrupts the first audio signal upon reach-
ing the threshold value,” as required by claim 1. Id. at *3.
The Board found that, although Smith discloses stopping
an audio signal in response to receiving a call, Smith fails
to disclose a “threshold value.” Id. at *4. The Board thus
affirmed the examiner’s decision not to adopt the pro-
posed rejections of claims 1–6. Id. CSR filed a request for
rehearing, which the Board denied.
II. The ’090 Patent
Independent claim 1 of the ’090 patent reads as
follows:
1. A portable apparatus for integrating a two-
way communication device and an audio delivery
device, wherein the portable apparatus is config-
ured in size and shape to be portably carried in ei-
ther a hand of a user or an article of clothing
6 CSR, PLC v. SKULLCANDY, INC.
during use of the portable apparatus, the appa-
ratus comprising:
a first electrical connector configured to receive a
first audio signal from a substantially arbitrarily
selectable audio delivery device;
a second electrical connector configured to receive
a second audio signal from a substantially arbi-
trarily selectable two-way communication device;
a coupling device independent from the audio and
two-way communication devices, the coupling de-
vice connected to receive the first and second au-
dio signals, and to transmit a third audio signal
comprising at least one of the first or second audio
signals; and
an acoustic device adapted to convert the third
audio signal to an acoustic wave having an audio
range corresponding to a hearing range of a user;
wherein:
the coupling device comprises at least two physi-
cally separate devices; and
the at least two physically separate devices com-
prise means for enabling wireless communication
between the at least two physically separate de-
vices.
’090 patent col. 6 ll. 25–50 (emphases added). Claim 5,
depending from claim 1, further requires “wherein at
least one of the first or second electrical connectors is
physically detached from the coupling device and wire-
lessly communicates with the coupling device.” Id. col. 6 l.
66–col. 7 l. 2.
In June 2010, CSR filed a request for inter partes
reexamination of the ’090 patent. CSR argued that eleven
references, including Smith, raised substantial new
CSR, PLC v. SKULLCANDY, INC. 7
questions of patentability under §§ 102 and 103. The
PTO granted CSR’s request, but the examiner found that
only Smith raised a substantial new question of patenta-
bility. The examiner, however, ultimately declined to
adopt the proposed rejections of claims 1–74 as anticipat-
ed or obvious. CSR appealed to the Board.
On appeal, the Board affirmed the examiner’s decision
not to adopt the proposed rejection of claim 5, but the
Board reversed the examiner with respect to claims 1–4
and 6–74. ’948 Opinion at *10. With regard to claim 5,
the Board found that Smith fails to disclose that the
“connector 1c” is “physically detached from the coupling
device and wirelessly communicates with the coupling
device” as required by claim 5. Id. at *8. Instead, the
Board found that the “‘connector 1c’ of Smith appears to
be connected to (and not detached from) the adapter or
module.” Id.
The Board also reversed the examiner and adopted
the proposed rejection of independent claim 1. Id. at *4–
6. The Board found that Smith discloses (1) a “portable
apparatus”; (2) a “coupling device independent from the
audio and two-way communication devices”; and (3)
receiving audio signals from “substantially arbitrarily
selectable” devices, as required by claim 1. Id.
First, the Board found that the coupling device in
Smith was “independent” from the audio and two-way
communication devices as required by claim 1. Id. at *5.
According to the Board, one of ordinary skill in the art
would have understood that both the phone and compact-
disc player disclosed in Smith “would be individually fully
operational” irrespective of whether the adapter of Smith
was connected. Id.
Second, the Board found that Smith discloses a “port-
able apparatus” as required by claim 1. Id. The Board
found that Smith discloses a “portable apparatus” because
it discloses a “portable version” of a “wireless communica-
8 CSR, PLC v. SKULLCANDY, INC.
tion adapter or module 2.” Id. In addressing Skullcandy’s
argument that the “hi-fidelity unit” of Smith is not porta-
ble, the Board also found that the ’090 patent did not
provide an explicit definition of “portable,” and one of
ordinary skill in the art “would have understood the term
‘portable’ to indicate that the component was capable of
being transported.” Id. Reasoning that the home hi-
fidelity unit in Smith is a “home” unit, the Board found
that the unit must have been transported into the home
and thus must be “portable.” Id. The Board reasoned,
however, that irrespective of whether the hi-fidelity unit
was portable, Smith still explicitly discloses a portable
adapter/module. Id. at *6.
Finally, the Board found that Smith discloses a “sub-
stantially arbitrarily selectable two-way communication
device” as required by claim 1. Id. at *6. According to the
Board, Smith discloses a “‘connector 1c’ (see, e.g., p. 6, l.
16) that may ‘be changed to that required to interface to
the desired legacy equipment’ (p. 6 ll. 20–21).” Id. As a
result, because the interface in Smith can be modified to
accommodate different devices, the Board found that
Smith discloses “a substantially arbitrarily selectable two-
way communication device.” Id. The Board thus reversed
the examiner with respect to claim 1. Id. at *10. Both
parties moved for a rehearing, and in a subsequent deci-
sion denying the request in part, the Board confirmed its
earlier reasoning as to the rejections relevant to this
appeal.
CSR timely appealed and Skullcandy timely cross-
appealed. We have jurisdiction pursuant to 28 U.S.C.
§ 1295(a)(4)(A).
DISCUSSION
We review the Board’s legal determinations de novo,
In re Elsner, 381 F.3d 1125, 1127 (Fed. Cir. 2004), and the
Board’s factual findings underlying those determinations
for substantial evidence, In re Gartside, 203 F.3d 1305,
CSR, PLC v. SKULLCANDY, INC. 9
1316 (Fed. Cir. 2000). A finding is supported by substan-
tial evidence if a reasonable mind might accept the evi-
dence to support the finding. Consol. Edison Co. v.
NLRB, 305 U.S. 197, 229 (1938). Anticipation is a ques-
tion of fact, In re Suitco Surface, Inc., 603 F.3d 1255, 1259
(Fed. Cir. 2010), as is the issue of sufficient written de-
scription under § 112, ¶ 1, Ariad Pharms., Inc. v. Eli Lilly
& Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc).
I. Anticipation and Obviousness
A. The ’948 Patent
CSR argues that, in finding that claims 1–6 of the
’948 patent were not anticipated and not obvious, the
Board erred by failing to construe the term “threshold
value” in claim 1. CSR contends that the absence of a
clear construction fails to satisfy the requirement that a
Board opinion must contain sufficient reasoning to permit
appellate scrutiny. Skullcandy responds that the Board
addressed the construction of “threshold value” to the
extent necessary to resolve CSR’s patentability challenge.
According to Skullcandy, the Board explicitly determined
that a “threshold value” is not merely any signal of non-
zero value, but that the claimed “threshold value” is some
value that is greater than the value at which the presence
of the received signal can be recognized.
We agree with CSR that the Board failed to construe
“threshold value” in a manner that would permit mean-
ingful appellate review. A Board’s “findings must be
expressed with sufficient particularity to enable [the]
court, without resort to speculation, to understand the
reasoning of the Board, and to determine whether it
applied the law correctly and whether the evidence sup-
ported the underlying fact findings.” Gechter v. Davidson,
116 F.3d 1454, 1457 (Fed. Cir. 1997). The Board’s claim
construction “must . . . be explicit, at least as to any
construction disputed by parties . . . .” Id. at 1460.
10 CSR, PLC v. SKULLCANDY, INC.
In concluding that claim 1 was not anticipated by
Smith, the Board provided only the following limited
analysis:
Smith discloses a user receiving a phone call while
listening to an audio signal (i.e., music) via an
adapter, the adapter stopping the music in re-
sponse to receiving the phone call. While Smith
discloses stopping an audio signal responsive to
receiving a phone call, [CSR] does not demon-
strate that Smith also discloses the signal for the
phone call “reaching the threshold value.” In fact,
Smith does not appear to disclose a “threshold
value” at all.
’948 Opinion at *4. The Board erred by failing to construe
“threshold value” as it is used in claims 1–6 before finding
that Smith failed to disclose a “threshold value.” † With-
out a construction of the term, it is impossible to review
the Board’s findings. We therefore vacate and remand the
Board’s decision with respect to the finding that claims 1–
6 of the ’948 patent were not anticipated and not obvious.
See Gechter, 116 F.3d at 1460 (vacating and remanding
where the Board’s opinion, inter alia, lacked a claim
construction). On remand, the Board should construe
“threshold value” and apply the construction to the Smith
reference.
B. The ’090 Patent
1. CSR’s Appeal
CSR also argues that the Board erred in finding that
claim 5 of the ’090 patent is not anticipated by Smith.
† The Board also based its refusal to reject depend-
ent claims 2–3 and 5–6 on the same reasoning, and Skull-
candy does not argue that the dependent claims would not
have been obvious even if claims 1 and 4 were anticipated.
CSR, PLC v. SKULLCANDY, INC. 11
According to CSR, the Board’s decision lacks substantial
evidence because the Board erred by considering the
wrong structure in Smith. CSR contends that the Board
found that the connector in Smith “appears to be connect-
ed to (and not detached from) the adapter or module.”
Appellant’s Br. 31 (emphasis in original). CSR maintains
that claim 5 requires that the connector in Smith be
detached from the coupling device, not the adapter or
module, and that the Board thus failed to note that the
relevant coupling device disclosed in Smith is the device
formed by the wireless communication adapter for the
headphones and the audio device.
Skullcandy responds that to satisfy claim 5, the first
or second electrical connectors disclosed in Smith would
have to be “physically detached from the coupling device.”
Skullcandy argues that, instead, Smith discloses that “a
user’s legacy headphones are connected to a wireless
communication adapter or module via connector 1c, which
‘is used to directly connect the wireless communication
adapter or module 2 to the connector on the legacy
equipment.’” Cross-Appellant’s Br. 41 (emphasis omit-
ted).
We agree with Skullcandy that substantial evidence
supports the Board’s finding that claim 5 of the ’090
patent is not anticipated by Smith. Claim 5 contains the
limitation “wherein at least one of the first or second
electrical connectors is physically detached from the
coupling device and wirelessly communicates with the
coupling device.” As the Board found, Smith discloses
that the “wireless communication adapter or module 2”
communicates with devices through a “connector 1c.”
Smith at 6; id. at figs. 4–6. Smith discloses that the
connector 1c is physically connected to the adapt-
er/module, e.g., id. at fig. 4, which is the relevant coupling
device, and not “physically detached from the coupling
device,” as required by claim 5. Thus, substantial evi-
12 CSR, PLC v. SKULLCANDY, INC.
dence supports the Board’s finding that Smith does not
anticipate claim 5 of the ’090 patent.
2. Skullcandy’s Cross-Appeal
On cross-appeal, Skullcandy argues that the Board
erred in finding claims 1–4 and 6–74 of the ’090 patent
invalid as anticipated or obvious. Specifically, Skullcandy
contends that the Board improperly placed the burden on
Skullcandy, the patentee, to establish that Smith failed to
disclose various claim limitations and that the Board’s
anticipation rejections of claims 1, 25, 36, and 59–74 were
based on an improper combination of distinct embodi-
ments disclosed in Smith. Skullcandy also contends that
Smith fails to disclose (1) a “portable apparatus”; (2) a
“coupling device independent from the audio and two-way
communication devices”; and (3) receiving audio signals
from “substantially arbitrarily selectable” devices, as
required by claim 1.
In response, CSR argues that the Board made all of
the necessary findings of fact to support its conclusions
and that the Board did not err in finding anticipation
based on the combination of two different examples from
Smith where the two examples are related. CSR also
contends that Smith discloses (1) a “portable apparatus”;
(2) a “coupling device independent from the audio and
two-way communication devices”; and (3) receiving audio
signals from “substantially arbitrarily selectable” devices,
as required by claim 1.
We agree with CSR that the Board did not err in re-
versing the examiner and finding claims 1–4 and 6–74 of
the ’090 patent invalid as anticipated or obvious. As an
initial matter, we note that the Board made findings of
fact to support its anticipation conclusions and did not
place the burden on Skullcandy to establish that Smith
failed to disclose various claim limitations. See In re
Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011) (“[The PTO]
satisfies its initial burden of production by adequately
CSR, PLC v. SKULLCANDY, INC. 13
explain[ing] the shortcomings it perceives so that the
applicant is properly notified and able to respond.”) (in-
ternal quotation marks omitted). The Board supported its
conclusions and then observed that Skullcandy had failed
to provide any evidence to the contrary. See, e.g., ’090
Opinion at *6 (“Patent Owner has not sufficiently demon-
strated that the adapter/module of Smith is also not
portable . . . . In fact, as described above, Smith explicitly
discloses the adapter/module is portable.”).
We also conclude that the Board correctly conducted
the anticipation analysis. A “claim is anticipated if each
and every limitation is found either expressly or inherent-
ly in a single prior art reference.” Whitserv, LLC v. Com-
puter Packages, Inc., 694 F.3d 10, 21 (Fed. Cir. 2012)
(internal quotation marks omitted). While the elements
of a prior art reference “must be arranged or combined in
the same way as in the claim . . . , the reference need not
satisfy an ipsissimis verbis test.” In re Gleave, 560 F.3d
1331, 1334 (Fed. Cir. 2009) (internal quotation marks
omitted).
The Board found, inter alia, that claim 1 was antici-
pated based on a combination of figures 5 and 6 of Smith.
Skullcandy argues that the Board incorrectly combined
the portable wireless adapter disclosed in figure 5 with
the “several connectors” from figure 6. According to
Smith, “[f]igure 5 illustrates how a pair of legacy head-
phones can be connected to a portable version of the
wireless communication adapter or module which can be
carried around by . . . the user.” Smith at 3. Smith
explains that “[f]igure 6 shows another version of the
wireless communication adapter or module which has the
capability to allow the connection of several legacy
equipment units . . . which can then be used to operate
with a legacy amplifier which has a corresponding wire-
less communication adapter . . . .” Id.
14 CSR, PLC v. SKULLCANDY, INC.
The descriptions of figures 5 and 6 must be read in
the context of the rest of the disclosure in Smith, which
provides that “[t]his invention relates to a reconfigurable
wireless communications adapter or module with inter-
changeable and optionally re-programmable interface
circuitry and connector means for use with legacy equip-
ment.” Id. at 1. Thus, beginning with a disclosure that
the interface circuitry and connecting means are inter-
changeable, there is no reason to conclude that the Board
erred in combining figures 5 and 6. Each figure is an
example of the “reconfigurable wireless communications
adapter or module with interchangeable and optionally
re-programmable interface circuitry and connector
means,” not isolated embodiments of the invention. Id.
In other words, Smith discloses a wireless adapter that
can communicate wireless signals with a wide range of
legacy equipment. As a result, the Board’s finding that
figures 5 and 6 may be combined in an anticipatory rejec-
tion is supported by substantial evidence.
With respect to Skullcandy’s final argument, we agree
that the Board did not err in finding that Smith discloses
(1) a “portable apparatus”; (2) a “coupling device inde-
pendent from the audio and two-way communication
devices”; and (3) receiving audio signals from “substan-
tially arbitrarily selectable” devices, as required by claim
1.
We also conclude that the Board’s finding that Smith
discloses a “portable apparatus” is supported by substan-
tial evidence. As the Board found, Smith explicitly dis-
closes a “portable version,” id. at 8, of a “wireless
communication adapter or module 2,” id. at 6. See also id.
at figs. 4–6. Whether the “home hi-fidelity unit” is porta-
ble, as disputed by Skullcandy and discussed by the
Board, is irrelevant if the adapter/module of Smith is
portable as required by the claim. Thus, the Board’s
finding that Smith discloses a “portable apparatus” is
supported by substantial evidence.
CSR, PLC v. SKULLCANDY, INC. 15
The Board’s finding that Smith discloses a “coupling
device independent from the audio and two-way communi-
cation devices” is also supported by substantial evidence.
As the Board found, although the mobile telephone and
compact-disc player of Smith may be connected to the
adapter, the mobile telephone and compact-disc player are
individually fully operational and there is no indication
that either is in any way dependent on the adapter to
operate. Similarly, Smith discloses a wireless adapter
that can operate by connecting to any number of legacy
devices and is capable of transmitting signals regardless
whether it is connected to any particular audio or two-way
communication device and is therefore also independent.
See, e.g., id. at 8. Thus, the Board’s finding that Smith
discloses a “coupling device independent from the audio
and two-way communication devices” is also supported by
substantial evidence.
Finally, the Board’s finding that Smith discloses re-
ceiving audio signals from “substantially arbitrarily
selectable” devices is supported by substantial evidence.
As the Board found, Smith discloses a “connector 1c” that
may “be changed to that required to interface to the
desired legacy equipment.” Id. at 6. Smith therefore
discloses that the adapter/module may receive audio
signals from a selection of legacy equipment. Nowhere
does Smith disclose any limitations on modifications to
the interface. As a result, the Board’s finding that Smith
discloses receiving audio signals from “substantially
arbitrarily selectable” devices is supported by substantial
evidence.
Accordingly, the Board’s findings that claims 1–4 and
6–74 of the ’090 patent are invalid as anticipated or
obvious were thus supported by substantial evidence.
II. Written Description
Under 35 U.S.C. § 112, ¶ 1 (2006), claims must find
sufficient support in the written description of a patent,
16 CSR, PLC v. SKULLCANDY, INC.
such that the disclosure “reasonably conveys to those
skilled in the art that the inventor had possession of the
claimed subject matter as of the filing date.” Ariad
Pharms., 598 F.3d at 1351.
CSR argues that claims 4–6 of the ’948 patent fail the
written description requirement because the specification
fails to provide support for a wireless apparatus with a
coupling device that is “portable with the audio and two-
way communication devices by the same user during use
of the coupling device.” Appellant’s Br. 29. According to
CSR, nothing within the specification suggests that the
audio device and the two-way communication device
should be carried with the user when the apparatus is in
operation in the wireless configuration. Skullcandy
responds that figures 1 and 8 expressly teach the limita-
tion in question by showing a mobile phone and a portable
MP3 player in communication with a portable apparatus
having a “wireless coupling device.”
We agree with Skullcandy that claims 4–6 of the ’948
patent are supported by the specification. The disputed
claim language recites a coupling device that is “portable
with the audio and two-way communication devices by the
same user during use of the coupling device.” As the
Board found, the ’948 patent discloses an audio device and
a two-way communication device in communication with a
“coupling device” that can “route the signals . . . to an
acoustic device, such as headphones.” ’948 patent col 3. ll.
65–67; see figs. 2, 8. The specification discloses that the
two-way communication device can be a “mobile phone”
and the audio device can be a “portable MP3 player or CD
player.” Id. col 3. ll. 35–37. According to the ’948 patent,
both the audio device and the two-way communication
device can communicate with the coupling device using
“wireless technology such as Bluetooth.” Id. col 3. ll. 56–
57. Therefore, as the Board found, the specification
discloses the disputed claim features of a coupling device
communicating wirelessly with a portable audio device
CSR, PLC v. SKULLCANDY, INC. 17
and a portable two-way communication device. Because
both devices are portable, and both are being used by the
same user as the coupling device, the Board correctly
found that the portable devices are also portable with the
user in the wireless configuration, and thus that the
specification discloses the limitations of claims 4–6. The
Board thus did not err in declining to adopt the proposed
rejection of claims 4–6 for lacking an adequate written
description.
CONCLUSION
We have considered CSR’s and Skullcandy’s remain-
ing arguments and find them unpersuasive. Accordingly,
because the Board erred by failing to construe “threshold
value” in the ’948 patent, but did not otherwise err, we
affirm in part, vacate in part, and remand.
AFFIRMED IN PART, VACATED IN PART, AND
REMANDED
No costs.