# United States **Court of Appeals**  **for the Federal Circuit**

______________________ PARKERVISION, INC., Appellant

v.

QUALCOMM INCORPORATED, QUALCOMM ATHEROS, INC.

Cross

- Appellants

______________________

2017

- 2012, 2017

- 2013, 2017

- 2014, 2017

- 2074

______________________ Appeals from the United States Patent and Trad emark Office, Patent Trial and Appeal Board in No s

. IPR2015

- 01828, IPR2015

- 01829, IPR2015

- 01831.

______________________
Decided: September 13, 2018

______________________

W ILLIAM M EUNIER , Mintz, Levin, Cohn, Ferris, Glo vsky and Popeo, P.C., Boston, MA, argued for appellant. Also represented by S ANDRA B ADIN , M ICHAEL N EWMAN , M ICHAEL T IMOTHY R ENAUD

.

E AMONN G ARD NER , Cooley LLP, San Diego, CA, a rgued for cross

- appellants. Also represented by O RION A RMON , Broomfield, CO; M ATTHEW J. B RIGHAM , D ENA C HEN , Palo Alto, CA.

______________________PARKERVISION , INC

. v. QUALCOMM INC

. 2

Before O’M ALLEY , R EYNA , and T ARANTO , Circuit Judges.

O’M ALLEY , Circuit Judge. ParkerVision, Inc. (“ParkerVision”) appeals from three final written decisions of the U.S. Patent Trial and Appeal Board (“Board”) in related inter partes review proceedings , in which the Board held certain claims of U.S. Patent No. 6,091,940 (“the ’940 patent”) unpatent able as obvious under 35 U.S.C. § 103(a)

. 1 Qualcomm Inc. and Qualcomm Atheros, Inc. (together, “Qualcomm”)

cross

- appeal from the Board’s determination that Qua lcomm failed to prove by a prep onderance of the evidence that certain other claims of the ’940 patent are unpaten table. W e affirm.

I. B ACKGROUND
A. The ’940 Patent ParkerVision owns the ’940 patent, titled “ Method and System for Frequency Up -C onversion.” T he inventions of the ’940 p atent generally relate to telecommunic ations devices

, such as cellular phones , i n which low

frequency electromagnetic signals are “up

- converted” to higher

- frequency signals by various means . ’940 patent, col. 1, ll. 23

– 24; id. col. 1, ll. 46

– 48. “Baseband” signals

— electromagnetic signals that encode the relevant info r-

1 Congress amended § 103 when it passed the Leahy

- Smith America Invents Act (AIA). Pub. L. No. 112

– 29, § 3(c), 125 Stat. 284, 287 (2011). Because the ’940 patent issued on July 18, 2000, and therefore does not contain a claim having an effective filing date on or after March 16, 2013 (the effective date of the statutory chan ges enacted in 2011), or a reference under 35 U.S.C. §§ 120, 121, or 365(c) to any patent or application that ever contained such a claim, the pre

- AIA § 103 applies. Id . § 3(n)(1), 125 Stat. at 293.PARKERVISION , INC

. v. QUALCOMM INC

. 3

mation of sound waves

— have low frequencies, and ther efore low energy, making them difficult to transmit wir elessly through the air. Up

- converting the se freque n cies to higher

- frequenc y signals, such as radio frequency (“RF”) signals, allows the signal

— and, critically, the information contained therein

— to be more efficiently transmitted to a receiver

. Id. col. 13, l. 53

– col. 14, l. 6. The specification explains that prior art transmitt er systems used up -conversion components that are costly, both in terms of power consumption and purchase price

. The invention disclosed in the ’940 patent purport s to “provide[] a more efficient means for producing a mod ulated carrier for transmission [t hat] uses less power, and requires fewer components.” Id. col. 14, ll. 4

– 8. The embodiments at issue in this appeal allegedly accomplish this goal by modulating the amplitude of the baseband signal with the help of an “o scillating signal .” See

, e.g. , id.

c ol. 1, l. 58

– col. 2, l. 5. This signal causes one or more “switches” to “gate” the baseband signal and generate a combined periodic signal that has a modulated amplitude compared to the baseband signal. Id. Although this method is known as “amplitu de mod ulation,” one byproduct is the creation of “harmonics,” which the specification defines in the singular as “a frequency or tone that, when compared to its fundamental or reference frequency or tone, is an integer multiple of it .” Id. col. 8, ll. 22

– 24. 2 Unwanted harmonics are subs e-

2 The specification further explains that, “[i]n other words, if a periodic waveform ha s a fundamental freque ncy of ‘f’ (also called the first harmonic), then its harmonics may be located at frequencies of ‘n•f,’ where ‘n’ is 2, 3, 4, etc. The harmonic corresponding to n=2 is referred to as the second harmonic, the harmonic corresponding to n=3 is referred to as the third harmonic, and so on.” ’940 patent, col. 8, ll. 24

– 30.PARKERVISION , INC

. v. QUALCOMM INC

. 4

quently filtered out, after which the resulting signal is transmitted to other devices

. Id. col. 16, ll. 39

– 48. Both apparatus and method claims are relevant to this appeal. C laim 21 , which is representative of the

appar atus claims, recites: 21. An apparatus for frequency up -conversion, comprising:
a pulse shaping module to receive an osci llating signal and to output a shaped string of pulses that is a function of said oscillating signal;

a switch module to receive said s haped string of pulses and a bias signal, wherein said shaped string of pulses causes said switch module to gate said bias signal and thereby generate a periodic signal having

a plurality of harmonics , said bias signal being a function of an information si gnal, said periodic signal having an amplitude that is a function of said bias signal; and a filter coupled to said switch module to isolate one or more desired harmonics of said plurality of harmonics

. Id. col. 6 9 , ll. 19

– 32 (emphases added). Claim 25, which is representative of the method claims, recites: 25. A method of communicating, comprising the steps of: (1) shaping an oscillating signal to create a string of pulses that is a function of said oscillating signal; (2) gating a reference signal at a rate that is a function of said string of pulses to create a periodic signal having a plurality ofPARKERVISION , INC

. v. QUALCOMM INC

. 5

harmonics , said reference signal being a function of an information signal, and at least one of said plurality of harmonics b eing a desired harmo nic; and (3) outputting said periodic signal, said periodic signal having an amplitude that is a function of said reference signal.

Id. col. 70, ll. 1 –12 (emphases added). 3 B. Procedural History Qualcomm filed three petitions for inter partes review challenging the patentability of claims of the ’940 patent. In two of the petitions, Qualcomm asserted primarily that the challenged apparatus and method claims would have been obvious in view of three references: (1) Yasuo Noz awa, The Merigo Method: SSB Generator/Producing a Demodultor , HAM Journal Special Edition: The Han dmade SSB Challenge, 15

– 26 (July/August 1993) (“Noz awa”); (2) Philips, 74HC/HCT4052 Dual 4

- Channel Analog Multiplexer/Demultiplexer (Dec. 1990) (“Philips 4052”); and (3) Stephen A. Maas, Microwave Mixers (Artech House Publishers, 2d ed. 1993) (“Maas”) . In the third petition, Qualcomm a sserted primarily that other app aratus claims would have been obvious in view of Maas and two additional references: (1) Herbert L. Krauss and Ch arles W. Bostian, Solid State Radio Engineering (1980)

3 The apparatus claims at issue are independent claims 1, 4, 18, 21, and 22, and dependent claims 2, 23, 81

– 84, 86, 88

– 91, 93, 94, 100, 113

– 16, 118, 119, 251

– 54, 256, 258

– 61, 263, 264, 281, 283

– 86, 288, 289, 293, 309

– 12, 314

– 15, and 319 . The method claims at issue are ind ependent claim 25 and dependent claims 26, 363

– 66, 368, 369, and 373.PARKERVISION , INC

. v. QUALCOMM INC

. 6

(“Krauss”); and (2) U.S. Patent No. 5,680,078 (“Ariie”)

. 4 ParkerVision filed preliminary responses, and the Board instituted review in each proceeding

— we refer to these proceedings as the “Nozawa IPRs” and the “Ariie IPR.”

ParkerVision thereafter filed patent owner responses, raising three arguments that it had not raised previously

. First, it argued that the Nozawa

- based petitions fail ed to identify any passage in either Nozawa or Philips that

e xpressly disclose s a periodic signal containing “integer multiples” of any frequency , as required by the claims’ “harmonics” limitation

. Second, it a rgued that, adopting Qualcomm’s expert’s own calculations using the equations taught in Maas, the periodic signal would only have one integer- multiple harmonic, as opposed to a “plurality” of such harmonics , as required by the claims

. Third , it argued that the Ariie

- based petition fail ed to prove that Ariie’s field effect tran sistor (“FET”) is a “switch” and failed to describe how Ariie’s oscillating signal “gates” that switch

, both of which are also required by the claims

. Qualcomm responded by arguing in its reply briefs that : (1) a lthough Maas’s “well

- known equation shows that ‘integer multiple’ harmonics will not practically result for all input frequencies, basic math confirms that for many input frequencies, Nozawa’s mixer will generate the required ‘integer multiple’ harmonics,” J.A. 292 , 5349 ; and (2) persons of ordinary skill in the art would have recognized that Krauss’s rectangular waveform would necessarily have caused Ariie’s F ET to act as a gate or switch. ParkerVision then claimed in supplemental

4 Qualcomm also asserted that certain dependent claims would have been obvious only in view of additi onal references, but the adequacy of the Board’s determin ations vis -à- vis these dependent cla ims is not at issue on appeal.PARKERVISION , INC

. v. QUALCOMM INC

. 7

submissions that these a rguments exceeded the proper scope of reply under applicable Board regulations.
On March 7, 2017, the Board issued three final wri tten decisions

. See Qualcomm Inc. v. ParkerVision, Inc.

, No. IPR2015

- 01828, 2017 WL 946735 (P.T.A.B. Mar. 7, 2017) (“ 1828 Dec ision ”); Qualcomm Inc. v. ParkerVision, Inc. , No. IPR2015

- 01829 , 2017 WL 946737 (P.T.A.B. Mar. 7, 2017) (“ 1829 Decision ”); Qualcomm Inc. v. ParkerVision, Inc. , No. IPR2015

- 01831 , 2017 WL 946736 (P.T.A.B. Mar. 7, 2017) (“ 1831 Decision ”). In the decisions o n the Nozawa IPRs , the Board determined that the challenged apparatus claims would have been obvious because it was undisputed that “ the structure of Nozawa is capable of producing a signal that satisfies the limitations of the claim .” 1828 Decision , 2017 WL 946735 at *7; 1831 Decision , 2017 WL 946736 at *6. At the same time, the Board determined that Qualcomm impermissibly had changed its theory of unpatentability as to the method claims. Specifically, the Board found that, while Qua lcomm assert ed in its petition “that Nozawa taught a plurality of harmonics

, ” it failed to provide any argument or evidence as to why a person o f ordinary skill would have selected operating conditions that would cause Nozawa to generate a plurality of int eger- multiple ha rmonics. See 1828 Decision , 2017 WL 946735 at *8

– 9. And the Board found that it was too late for Qualcomm to argue that a person of ordinary skill would have selected inputs that would have resulted in Nozawa outputting a plurality of integer

- multiple harmonics for the first time in its reply briefs. See id. Finally, i n the decision on the Ariie IPR

, the Board determined that the challenged claims would have been obvious, agreeing with Qualcomm both that, “ in the combination of references as proposed, the rectangular wave of Krauss would drive the Ariie FET

as a switch” and that this “ switch, in turn, would cause the FET to gate the input signals of Krauss, satisfying thePARKERVISION , INC

. v. QUALCOMM INC

. 8

disputed limitations of the claims .” 1829 Decision

, 2017 WL 946737 at *6.

Parker Vision timely appeal ed and Qualcomm timely

cross

- appeal ed . We have jurisdiction under 28 U.S.C. § 1295(a)(4).

II. D ISCUSSION
A. Standard of Review Obviousness is a question of law with underlying i ssues of fact. Randall Mfg. v. Rea , 733 F.3d 1355, 1362 (Fed. Cir. 2013). We review the Board ’ s legal decisions de novo and its underlying factual determinat ions for su bstantial evidence. Dynamic Drinkware, LLC v. Nat’ l Graphics, Inc. , 800 F.3d 1375, 1378 (Fed. Cir. 2015). A finding is supported by substant ial evidence if a reason able mind might accept the evidence as adequate to su pport the finding. In re Jolley , 308 F.3d 1317, 1320 (Fed. Cir. 2002). The Board, i n reaching its decisions, must “make the necessary findings and have an adequate ‘evidentiary basis for its findings.’” In re Nuvasive , 842 F.3d 1376, 1382 (Fed. Cir. 2016) (quoting In re Lee , 277 F.3d 1338, 1344 (Fed. Cir. 2002)).

B . The Nozawa IPRs

Pa rkerVision argues on appeal that the Board erred in holding the apparatus claims challenged in the Nozawa IPRs unpatentable, while Qualcomm contends in its cross

appeal that the Board erred in upholding the patentabi lity of the challenged method claims. W e address these arguments in turn.
1. The Apparatus Claims
ParkerVision raises two arguments as to the Nozawa IPRs. First, it submits that the Board erred by basing its patentability decisions on theories and evidence regarding the phrase “plurality of h armonics” that Qualcomm did not present in its petitions. Second, it contends that thePARKERVISION , INC

. v. QUALCOMM INC

. 9

Board’s unpatentability determination as to the app aratus claims relies on an untime ly and erroneous co nstruction.
We are not persuaded by either argument. First, we d isagree with ParkerVision that Qualcomm failed to present its arguments and evidence regarding the “plura lity of harmonics” limitation recited in the apparatus claims in a timely manner. In its petitions, Qualcomm expressly argued that Nozawa

, in light of Philips 4052 and Maas , teaches the “plurality of harmonics” limitation in the claims

. It explained that Nozawa expressly reco gnizes that its use of switches to gate the incoming signals creates harmonics through “switching ,” and highlight ed the reference ’s language that this use of switching “i n principle includes many harmonics.” J.A. 824. Qua lcomm also explained that Maas teaches how switches such as those disclosed in Philips 4052 generate an output signal with harmonics of the fundamental frequency according to a well

- known formula

. Although Qualcomm did not explain how its proposed combination would result in a plurality of integer

- multiple harmonics, its proposed construction of the term was consistent with the specification’s definition of “harmonic”

as an “integer multiple” of the fundamental frequency. More critically, however, because it is undisputed that Nozawa’s device necessarily will produce a periodic signal that contains integer multiples of the fundamental fr equency under some, albeit not all, conditions, Qualcomm

was neither required to identify the conditions under which Nozawa’s device will output a plurality of integer

multiple harmonics nor obligated to explain why a person of skill in the art would have selected such operat ing conditions.

We explained long ago that “[a]pparatus claims cover what a device is , not what a device does .” Hewlett

Packard Co. v. Bausch & Lomb Inc. , 909 F.2d 1464, 1468PARKERVISION , INC

. v. QUALCOMM INC

. 10

(Fed. Cir. 1990)

. As a result, “[a]n invention need not operate differently tha n the prior art to be patentable, but need only be different”

— or, rather, “ unobviously diffe rent.” Id. at 1464 & n.2 (citations omitted). A corollary of these principles is that an apparatus that is “capable of” performing certain functions may be antici pated by or obvious in view of a prior art apparatus that can likewise perform these functions. See Finjan, Inc. v. Secure Co mputing Corp.

, 626 F.3d 1197, 1204 (Fed. Cir. 2010) (e xplaining “ that, to infringe a claim that recites capability and not actual operation, an accused device ‘ need only be capable of operating ’ in the described mode. ” (quoting Intel Corp. v. U.S. Int’l Trade Comm’n , 946 F. 2d 821, 832 (Fed. Cir. 1991)) ). Indeed, “d epen ding on the claims, ‘ an accused device may be found to infringe if it is reasonably capable of satisfying the claim limitations, even though it may also be capable of noninfringing modes of oper ation. ’” Id. (citations omitted). Similarly, a prior art ref erence may anticipate or render obvious an apparatus claim

— depending on the claim language

— if the reference discloses an apparatus that is reasonably capable of operating so as to meet the claim limitations, even if it does not meet the claim limitations i n all modes of oper ation.
ParkerVision acknowledges Bausch & Lomb , but seeks to distinguish it on grounds that the apparatus claims here require an oscillating signal that is “confi gured to” generate a plurality of harmonics, which Nozawa does not disclose . Although ParkerVision correctly reco gnizes that our cases distinguish between claims with language that recites capability, and those that recite configuration, the claims here fall squarely on the “cap able of” side of the line ; t he Board , thus, did not err in determining that they would have been obvious in view of Nozawa

. The language used in the claims is critical to deciding on which side of this line the claims fall

. In Ball AerosolPARKERVISION , INC

. v. QUALCOMM INC

. 11

& Specialty Container, Inc. v. Limited Brands, Inc. , 555 F.3d 984 (Fed. Cir. 2009) , the claim s recited a configur ation in which protrusions needed to be “resting upon” a

cover . We concluded that this structural limitation “ spec ifie [d] that infringement occurs only if the accused product is configured with the cover bein g used as a base unde rneath a candle holder with fee t.” Id. at 994

– 95. We concluded that an accused candle that “was reasonably capable of being put into the claimed configuration [was] insufficient for a finding of infringement.” Id. at 995. We also noted the patentee’s concession that there was “no proof that the Travel Candle was ever placed in the infringing configuration.” Id. In other words, we found that, where an apparatus needed to be altered in order to be “configured” as claimed and there was no evidence of such alteration , it does not infringe those claims. In contrast, where claim language recites “capability, as opposed to actual operation,” an apparatus that is

“ reasonably capable ” of performing the claimed functions “without significant alterations” can i nfringe those claims

. Ericsson, Inc. v. D

- Link Sys., Inc. , 773 F.3d 1201, 1217 (Fed. Cir. 2014). For example, in Ericsson , we affirmed an infringement finding where the claims recited “a

processor for arranging information f or transmission .

. . which identifies a type of payload information,” even though the accused devices in fact identified the type of information conveyed in the payload only some of the time. Id. at 1216

– 17. In arriving at this conclusion, we compared t he claims at issue to the non

- method claims in Finjan , 626 F.3d 1197, which recited components having specific purposes: i.e., “a logical engine for preventing execution” or “a communications engine for obtaining a Downloadable .” Ericsson , 773 F.3d at 12 16

– 17 (quoting Finjan , 626 F.3d at 1204

– 05 ). We determined that the claims in Finjan “describe[d] capabilities without requi ring that any software components be ‘active’ or ‘en abled’”

— i.e., they “only needed to have components thatPARKERVISION , INC

. v. QUALCOMM INC

. 12

are reasonably capable of ‘preventing execution’ and ‘obtaining a Downloadable’ to infringe.” Id. at 1217 (quoting Finjan , 626 F.3d at 1204

– 05). The claims in Ericsson likewise used language reciting capability, such that “D

- Link’s products only need[ed] to have a comp onent that [wa]s reasonably capable of ‘arranging info rmation for transmission .

. . which identifies a type of payload information.

. . .’” Id.
Here, the apparatus claims are most similar to those in Ericsson and are fundamentally dissimilar to those in Ball Aerosol

. T he ’940 patent’s apparatus claims are drawn to “[a]n apparatus for frequency up

- conversion ” (claim 4) or “[a]n apparatus for communicating ” (claim 22), all o f which comprise “a switch module to receive ” an oscillating signal and a bias signal, wherein the oscilla ting signal “ causes said switch module to gate said bias signal and thereby generate a periodic signal having a plurality of harmonics.” ’940 patent, col. 67, ll. 25

– 33 (emphases added); id. col. 69, ll. 19

– 32 (emphases added). Accordingly, just as D

- Link’s products only required a component that was reasonably capable of “arranging i nformation for transmission .

. . which identifies a ty pe of payload information .

. . ,” Ericsson

, 773 F.3d at 1217, Nozawa’s circuit requires only an oscillating signal that is reasonably capable of gating the bias signal in a manner that generates a periodic signal having a plurality of harmonics. And, unlike in Ball Aerosol , the claims here recite no structural limitations that would preclude a prior art reference that disclos es a different structure from performing the claimed function.

Because it is undisputed that Nozawa’s circuit is c apable of producing a “plurali ty of harmonics ,” s ubstantial evidence supports the Board’s determination that the apparatus claims are unpatentable

. Moreover, because Qualcomm’s petitions “adhere [d] to the requirement that the[y] identify ‘with particularity’ the ‘evidence that support s the grounds for the challenge to each [app a-PARKERVISION , INC

. v. QUALCOMM INC

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ratus] claim

, ’” Intelligent Bio

- Sys., Inc. v. Illumina Ca mbridge Ltd. , 821 F.3d 1359, 1369 (Fed. Cir. 2016) (quo ting 35 U.S.C. § 312(a)(3) ), we reject ParkerVision’s contention that the Board relied on an untime ly claim construction. We therefore affirm the Board’s determin ation that claims 4, 21, 22, 23, 100, 113

– 16, 118, 119, 281, 283

– 86, 288, 289, 293, 309

– 12, 314

– 15, and 319 are unpatentable

. 2. The Method Claims
The method claims prese nt a different story, however. While Qualcomm was only required to identify a prior art reference that disclo ses an apparatus “capable of” p e rforming the recited functions to prove that the apparatus claims would have been obvious, more was required with respect to the method claims. Specifically, Qualcomm needed to present evidence and argument that a person of ordinary skill would have been motivated to operate Nozawa in a manner that satisfied the “plurality of ha rmonics” limitation. See InTouch Techs., Inc. v. VGO Commc’ ns, Inc. , 751 F.3d 1327, 1346

– 47 (Fed. Cir. 2014) (explaining that a party seeking to invalidate method claims on obvious ness grounds must “demonstrate . . .

‘ that a skilled artisan would have been motivated to combine the teachings of the prior art refere nces to achieve the claimed invention, and that the skilled art isan would have had a reasonable expectation of success in doing so ’ ”). Qualcomm failed to do so

. The Board found that Qualcomm’s petitions were deficient because they “d[id] not speak to whether a person of ordinary skill in the art would have any reason to” ope rate Nozawa with inputs that would produce the required “plurality of harmonics.” 18 28 Decision , 2017 WL 946735 at *7. Substantial evi dence supports this finding. Qua lcomm provided no explanation or evidence in its petitions
as to why a person of ordinary skill in the art would have been motivated to select inputs for Nozawa’s circuit thatPARKERVISION , INC

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would yield a periodic signal with a plurality of int eger

multiple harmonics , rather than a n input signal that does not produce integer- multiples of the fundamental fr equenc y . Instead, Qualcomm’s petitions and accompan ying expert testimony solely concerned whether the fundamental frequency itself is included in the meaning of “harmonics .”

T he fact that Nozawa’s device will output a plurality of integer

- multiple harmonics only under certain cond itions is critical to the patentability of the method claims. It is true that, “[j]ust as ‘an accused product that som etimes, but not always, embodies a claimed method non etheless infringes,’ .

. . a prior art product that sometimes, but not always, embodies a claimed method nonetheless teaches that aspect of the invention .” Hewlett

- Packard Co. v. Mustek Sys

. , 340 F.3d 1314, 1326 (Fed. Cir. 2003) (citation omitted). But , in Mustek , the jury received evidence that a prior art scanner would satisfy the rel evant claim limitation in its default setting, and we rejec ted the patentee’s argument against invalidity premised on the fact that the scanner would not practice the claimed method if a default setting were changed

. See i d. Here, Qualcomm failed to put forth any argument or evidence in its petitions as to whether Nozawa’s device

, even if capable of doing so, actually would output a per iodic signal with a plurality of integer

- multiple harmonics

, or why a person of ordinary skill in the art would have been motivated to use the particular inputs that would result in such an output , choosing to broac h that subject for the first time in its reply briefs. We therefore affirm the Board’s determination that claims 25, 26, 363

– 66, 368, 369, and 373 were not proven unpatentable.

C . The Ariie IPR

ParkerVision contends that the Board erred in relying
on unt imely unpatentability theories in the Ariie IPR

, arguing that , in its petition, Qualcomm neither assert edPARKERVISION , INC

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that it would have been obvious to use Krauss’s oscillating signal instead of Ariie’s oscillating signal to drive Ariie’s FET, nor contended that driv ing Ariie’s FET with Krauss’s oscillating signal would cause Ariie’s FET to gate a signal. Appellant Br. 50

. ParkerVision also takes issue with the Board’s alternate theory that, because Ariie’s FET is “capable of” being used as a “switch mo dule” that “gates” if driven with the proper inputs, the claims challenged in the Ariie

- based petition are u npatentable. Appellant Br. 60. Finally, it submits that the Board lacked substantial evidence to support its finding of a motivation to combine the references.
We disagree with ParkerVision that the Board relied on untimely unpatentability theories. Qualcomm ’s pr oposed combination contemplate d using Krauss as the main reference, and Qualcomm argued in its petition that it would have been obvious to “substitute a mixer like that in Ariie Fig. 1 for each double

- balanced mixer in Krauss Fig. 16

- 3(a).” J.A. 299 4

. In particular, Qualcomm’s petition noted that both references disclose a “first osci llating signal,” but then relied on Figure 8

- 25 of Kraus s to explain how Krauss’s rectangular oscillating signal can “gat[e]” an audio signal. J.A. 2994

– 95. Moreover, al though Figure 1 of Ariie discloses a first oscillating signal S C , it depicts this signal as originating from a node, rather than a structure, and does not define that signal with any particularity. Thus, the Board did not err in interpreting the proposed combination as using Kraus s ’s oscillating signal.
We also conclude that substantial evidence supports the Board’s determination that persons of ordinary skill in the art would have been motivated to use Krauss’s oscillating signal instead of Ariie’s. Qualcomm contended in its petition that a person of ordinary skill in the art would have been motivated to replace Krauss’s two mi xers with Ariie ’s mixer to achieve the benefits of Ariie’s “low- voltage operation, low or zero power consumption,PARKERVISION , INC

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and compact size,” and that doing so would have resulted in a transmitter that “gates” Krauss’s oscillating signal in a manner that creates a periodic signal that practices the “plurality of harmonics” limitation. J.A. 2989

– 90. The Board relied on the passages of these references cited in Qualcomm’s petition , and found that a person of ordinary skill would have been motivated to make the suggested combinatio n, even after considering ParkerVision’s cou ntervailing evidence. 1829 Decision , 2017 WL 946737 at *5– 6. As we explained in Outdry Tech nologies v. Geox S.p.A ., 859 F.3d 1364 (Fed. Cir. 2017), “[a]ny motivation to combine references, whether articulated i n the refe rences themselves or supported by evidence of the knowledge of a skilled artisan, is sufficient to combine those references.” Id. at 1370

– 71. We affirm the Board’s determination that claims 1, 2, 18, 81

– 84, 86, 88

– 91, 93, 94, 251

– 54, 256, 258

– 61, 263, and 264 are unpatentable.

III. C ONCLUSION For the foregoing reasons, we affirm the Board’s p atentab ility determinations in each of the 1828
, 1829 , and 1831 Decision s

. AFFIRMED

C OSTS

No costs.