Csr, Plc v. Skullcandy, Inc.
594 F. App'x 672
Fed. Cir.2014Background
- Skullcandy owns U.S. Patents 7,187,948 (’948) and 7,395,090 (’090); the ’090 is a continuation of the ’948 and both share a specification for a portable apparatus that integrates a personal audio device and a two‑way communication device (e.g., music player + phone) and routes audio to headphones.
- Independent claim 1 of the ’948 requires a coupling device that causes the second (phone) audio signal to interrupt the first (music) audio signal upon reaching a “threshold value.” Claim 4 (added later) and dependent claims 4–6 add portability language requiring the coupling device be “portable with the audio and two‑way communication devices by the same user during use.”
- Independent claim 1 of the ’090 requires a coupling device comprising at least two physically separate devices that enable wireless communication between them; dependent claim 5 requires at least one electrical connector to be physically detached and wirelessly communicate with the coupling device.
- CSR sought inter partes reexaminations of both patents based primarily on the Smith U.K. reference; PTO examiners declined to adopt many proposed rejections and the Patent Trial and Appeal Board (Board) reviewed and issued mixed outcomes: it affirmed non‑rejections for some claims and reversed examiner rejections for others, prompting appeals by CSR and a cross‑appeal by Skullcandy.
- This appeal challenges (1) the Board’s failure to construe “threshold value” in the ’948 claims (CSR), (2) the Board’s written‑description finding as to claims 4–6 of the ’948 (CSR), (3) whether Smith anticipates claim 5 of the ’090 (CSR), and (4) the Board’s anticipation/obviousness rulings invalidating claims 1–4 and 6–74 of the ’090 (Skullcandy cross‑appeal).
Issues
| Issue | CSR’s Argument | Skullcandy’s Argument | Held |
|---|---|---|---|
| Whether Board properly construed "threshold value" in ’948 claim 1 before finding Smith did not disclose it | Board failed to construe term, leaving appellate review impossible; remand required | Board addressed term sufficiently by stating it is more than mere non‑zero signal | Court: Board erred by not construing “threshold value”; vacate and remand to construe and reapply to Smith |
| Whether claims 4–6 of ’948 lack written‑description support for "portable with the audio and two‑way devices by the same user during use" | Spec does not show audio and phone carried with user during wireless operation; no possession shown | Figures and specification disclose mobile phone and portable MP3 communicating wirelessly with coupling device; thus supported | Court: Substantial evidence supports Board; written‑description rejection properly denied |
| Whether Smith anticipates claim 5 of the ’090 (connector physically detached and wirelessly communicates) | Smith discloses a connector detached from the coupling device when properly analyzed; Board considered wrong structure | Smith’s connector 1c is shown connected to the adapter/module (the coupling device), not detached | Court: Substantial evidence supports Board that Smith does not disclose a physically detached connector; claim 5 not anticipated |
| Whether Smith anticipates/obviously invalidates claims 1–4 and 6–74 of the ’090 (Board reversed examiner) | Board improperly combined distinct Smith embodiments and shifted burden to patentee | Smith’s disclosure of a reconfigurable wireless adapter and portable module supports the claim limitations; combining figures is justified | Court: Board’s anticipation/obviousness findings for these claims are supported by substantial evidence; affirm invalidity rulings |
Key Cases Cited
- Gechter v. Davidson, 116 F.3d 1454 (Fed. Cir. 1997) (Board must give explicit claim constructions, at least for disputed terms, to permit appellate review)
- Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336 (Fed. Cir. 2010) (written‑description requirement: specification must show possession of claimed subject matter)
- Whitserv, LLC v. Computer Packages, Inc., 694 F.3d 10 (Fed. Cir. 2012) (anticipation requires every claim limitation be found in a single prior art reference)
- In re Gleave, 560 F.3d 1331 (Fed. Cir. 2009) (anticipation does not require literal word‑for‑word correspondence between claim and reference)
- Consol. Edison Co. v. NLRB, 305 U.S. 197 (U.S. 1938) (substantial evidence standard: evidence must be such that a reasonable mind might accept it to support the finding)