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 Trademark Office, Patent Trial and Appeal Board in Nos. 

IPR2015-01828, IPR2015-01829, IPR2015-01831.

______________________ 

Decided: September 13, 2018

______________________ 

WILLIAM MEUNIER, Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C., Boston, MA, argued for appellant. 

Also represented by SANDRA BADIN, MICHAEL NEWMAN,

MICHAEL TIMOTHY RENAUD. 

 EAMONN GARDNER, Cooley LLP, San Diego, CA, argued for cross-appellants. Also represented by ORION 

ARMON, Broomfield, CO; MATTHEW J. BRIGHAM, DENA 

CHEN, Palo Alto, CA. 

 ______________________ 
2 PARKERVISION, INC. v. QUALCOMM INC. 

Before O’MALLEY, REYNA, and TARANTO, Circuit Judges.

O’MALLEY, 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”) unpatentable 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 Qualcomm failed to prove by a preponderance of the evidence

that certain other claims of the ’940 patent are unpatentable. We affirm.

I. BACKGROUND

A. The ’940 Patent

ParkerVision owns the ’940 patent, titled “Method 

and System for Frequency Up-Conversion.” The inventions of the ’940 patent generally relate to telecommunications devices, such as cellular phones, in which lowfrequency 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 infor-

 

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 changes 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 therefore low energy, making them difficult to transmit wirelessly through the air. Up-converting these frequencies to 

higher-frequency 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 transmitter 

systems used up-conversion components that are costly, 

both in terms of power consumption and purchase price. 

The invention disclosed in the ’940 patent purports to 

“provide[] a more efficient means for producing a modulated carrier for transmission [that] 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 “oscillating signal.” See, e.g., id.

col. 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 “amplitude modulation,” 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 subse-

 

2 The specification further explains that, “[i]n other 

words, if a periodic waveform has a fundamental frequency 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.
4 PARKERVISION, INC. v. QUALCOMM INC. 

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. Claim 21, which is representative of the 

apparatus claims, recites:

21. An apparatus for frequency up-conversion, 

comprising:

a pulse shaping module to receive an oscillating signal and to output a shaped 

string of pulses that is a function of said 

oscillating signal;

a switch module to receive said shaped 

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 signal, 

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. 69, 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 of 
PARKERVISION, 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 being a desired harmonic; 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 Nozawa, The Merigo Method: SSB Generator/Producing a

Demodultor, HAM Journal Special Edition: The Handmade SSB Challenge, 15–26 (July/August 1993) (“Nozawa”); (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 asserted primarily that other apparatus claims would have been obvious in view of Maas 

and two additional references: (1) Herbert L. Krauss and 

Charles 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 independent claim 25 and dependent claims 26, 363–66, 368, 

369, and 373.
6 PARKERVISION, INC. v. QUALCOMM INC. 

(“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 failed to 

identify any passage in either Nozawa or Philips that 

expressly discloses a periodic signal containing “integer 

multiples” of any frequency, as required by the claims’ 

“harmonics” limitation. Second, it argued 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 failed to prove that 

Ariie’s field effect transistor (“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) although 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 FET 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 additional 

references, but the adequacy of the Board’s determinations vis-à-vis these dependent claims is not at issue on 

appeal.
PARKERVISION, INC. v. QUALCOMM INC. 7

submissions that these arguments exceeded the proper 

scope of reply under applicable Board regulations.

On March 7, 2017, the Board issued three final written decisions. See Qualcomm Inc. v. ParkerVision, Inc., 

No. IPR2015-01828, 2017 WL 946735 (P.T.A.B. Mar. 7, 

2017) (“1828 Decision”); 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 on 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 Qualcomm asserted in its petition “that Nozawa taught a 

plurality of harmonics,” it failed to provide any argument 

or evidence as to why a person of ordinary skill would 

have selected operating conditions that would cause 

Nozawa to generate a plurality of integer-multiple harmonics. 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, in 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 the 
8 PARKERVISION, INC. v. QUALCOMM INC. 

disputed limitations of the claims.” 1829 Decision, 2017 

WL 946737 at *6.

ParkerVision timely appealed and Qualcomm timely 

cross-appealed. We have jurisdiction under 28 U.S.C. 

§ 1295(a)(4).

II. DISCUSSION

A. Standard of Review

Obviousness is a question of law with underlying issues 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 determinations for substantial evidence. Dynamic Drinkware, LLC v. Nat’l 

Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). A 

finding is supported by substantial evidence if a reasonable mind might accept the evidence as adequate to support the finding. In re Jolley, 308 F.3d 1317, 1320 (Fed. 

Cir. 2002). The Board, in 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

ParkerVision argues on appeal that the Board erred 

in holding the apparatus claims challenged in the Nozawa 

IPRs unpatentable, while Qualcomm contends in its crossappeal that the Board erred in upholding the patentability of the challenged method claims. We 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 harmonics” that Qualcomm did

not present in its petitions. Second, it contends that the 
PARKERVISION, INC. v. QUALCOMM INC. 9

Board’s unpatentability determination as to the apparatus claims relies on an untimely and erroneous construction.

We are not persuaded by either argument. First, we 

disagree with ParkerVision that Qualcomm failed to 

present its arguments and evidence regarding the “plurality 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 recognizes that its use of switches to gate the incoming signals 

creates harmonics through “switching,” and highlighted

the reference’s language that this use of switching “in 

principle includes many harmonics.” J.A. 824. Qualcomm 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 frequency under some, albeit not all, conditions, Qualcomm 

was neither required to identify the conditions under 

which Nozawa’s device will output a plurality of integermultiple harmonics nor obligated to explain why a person 

of skill in the art would have selected such operating 

conditions.

We explained long ago that “[a]pparatus claims cover 

what a device is, not what a device does.” HewlettPackard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468 
10 PARKERVISION, INC. v. QUALCOMM INC. 

(Fed. Cir. 1990). As a result, “[a]n invention need not 

operate differently than the prior art to be patentable, but 

need only be different”—or, rather, “unobviously different.” 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 anticipated by or 

obvious in view of a prior art apparatus that can likewise 

perform these functions. See Finjan, Inc. v. Secure Computing Corp., 626 F.3d 1197, 1204 (Fed. Cir. 2010) (explaining “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, “depending 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 operation.’” Id. (citations omitted). Similarly, a prior art 

reference 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 in all modes of operation.

ParkerVision acknowledges Bausch & Lomb, but 

seeks to distinguish it on grounds that the apparatus 

claims here require an oscillating signal that is “configured to” generate a plurality of harmonics, which Nozawa 

does not disclose. Although ParkerVision correctly recognizes that our cases distinguish between claims with 

language that recites capability, and those that recite 

configuration, the claims here fall squarely on the “capable of” side of the line; the 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 Aerosol 
PARKERVISION, INC. v. QUALCOMM INC. 11

& Specialty Container, Inc. v. Limited Brands, Inc., 555 

F.3d 984 (Fed. Cir. 2009), the claims recited a configuration in which protrusions needed to be “resting upon” a 

cover. We concluded that this structural limitation “specifie[d] that infringement occurs only if the accused product 

is configured with the cover being used as a base underneath a candle holder with feet.” 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 infringe 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 for 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 the 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 1216–17 (quoting 

Finjan, 626 F.3d at 1204–05). We determined that the 

claims in Finjan “describe[d] capabilities without requiring that any software components be ‘active’ or ‘enabled’”—i.e., they “only needed to have components that 
12 PARKERVISION, INC. v. QUALCOMM INC. 

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 component that [wa]s reasonably capable of ‘arranging information 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. The ’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 of which comprise “a switch module to receive” an 

oscillating signal and a bias signal, wherein the oscillating 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 

information for transmission . . . which identifies a type 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 discloses a different structure 

from performing the claimed function.

Because it is undisputed that Nozawa’s circuit is capable of producing a “plurality of harmonics,” substantial 

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 

supports the grounds for the challenge to each [appa-
PARKERVISION, INC. v. QUALCOMM INC. 13

ratus] claim,’” Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016) (quoting 35 U.S.C. § 312(a)(3)), we reject ParkerVision’s 

contention that the Board relied on an untimely claim 

construction. We therefore affirm the Board’s determination 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 present a different story, however. 

While Qualcomm was only required to identify a prior art 

reference that discloses an apparatus “capable of” performing 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 harmonics” 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 obviousness grounds must “demonstrate . . . 

‘that a skilled artisan would have been motivated to 

combine the teachings of the prior art references to 

achieve the claimed invention, and that the skilled artisan 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” operate Nozawa with inputs that would produce the required 

“plurality of harmonics.” 1828 Decision, 2017 WL 946735 

at *7. Substantial evidence supports this finding. Qualcomm 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 that 
14 PARKERVISION, INC. v. QUALCOMM INC. 

would yield a periodic signal with a plurality of integermultiple harmonics, rather than an input signal that does 

not produce integer-multiples of the fundamental frequency. Instead, Qualcomm’s petitions and accompanying expert testimony solely concerned whether the 

fundamental frequency itself is included in the meaning 

of “harmonics.” 

The fact that Nozawa’s device will output a plurality 

of integer-multiple harmonics only under certain conditions is critical to the patentability of the method claims. 

It is true that, “[j]ust as ‘an accused product that sometimes, but not always, embodies a claimed method nonetheless 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 relevant claim limitation in its default setting, and we rejected 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 id. 

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 periodic 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 broach 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 untimely unpatentability theories in the Ariie IPR, 

arguing that, in its petition, Qualcomm neither asserted 
PARKERVISION, INC. v. QUALCOMM INC. 15

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 driving 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 module” that “gates” if driven with the proper inputs, the 

claims challenged in the Ariie-based petition are unpatentable. 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 proposed combination contemplated 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. 2994. In particular, Qualcomm’s 

petition noted that both references disclose a “first oscillating signal,” but then relied on Figure 8-25 of Krauss to 

explain how Krauss’s rectangular oscillating signal can 

“gat[e]” an audio signal. J.A. 2994–95. Moreover, although Figure 1 of Ariie discloses a first oscillating signal 

SC, 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 Krauss’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 mixers with Ariie’s mixer to achieve the benefits of Ariie’s 

“low-voltage operation, low or zero power consumption, 
16 PARKERVISION, INC. v. QUALCOMM INC. 

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 

combination, even after considering ParkerVision’s countervailing evidence. 1829 Decision, 2017 WL 946737 at 

*5–6. As we explained in Outdry Technologies v. Geox 

S.p.A., 859 F.3d 1364 (Fed. Cir. 2017), “[a]ny motivation 

to combine references, whether articulated in the references 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. CONCLUSION

For the foregoing reasons, we affirm the Board’s patentability determinations in each of the 1828, 1829, and 

1831 Decisions. 

AFFIRMED

COSTS

No costs.