  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 Trade-
mark Office, Patent Trial and Appeal Board in Nos.
IPR2015-01828, IPR2015-01829, IPR2015-01831.
                ______________________

             Decided: September 13, 2018
               ______________________

    WILLIAM MEUNIER, Mintz, Levin, Cohn, Ferris, Glov-
sky 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, ar-
gued 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”) unpatenta-
ble 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 Qual-
comm failed to prove by a preponderance of the evidence
that certain other claims of the ’940 patent are unpatent-
able. We affirm.
                      I. BACKGROUND
                     A. The ’940 Patent
     ParkerVision owns the ’940 patent, titled “Method
and System for Frequency Up-Conversion.” The inven-
tions of the ’940 patent generally relate to telecommunica-
tions devices, such as cellular phones, in 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 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 chang-
es 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 there-
fore low energy, making them difficult to transmit wire-
lessly 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 modu-
lated 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 modu-
lation,” 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 frequen-
cy 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 oscil-
       lating 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 cre-
       ate 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 be-
        ing 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 Noza-
wa, The Merigo Method: SSB Generator/Producing a
Demodultor, HAM Journal Special Edition: The Hand-
made SSB Challenge, 15–26 (July/August 1993) (“Noza-
wa”); (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 appa-
ratus 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 inde-
pendent 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 determina-
tions 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 writ-
ten 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. ParkerVi-
sion, 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 Qual-
comm 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 har-
monics. 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 is-
sues 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 sub-
stantial 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 reasona-
ble mind might accept the evidence as adequate to sup-
port 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 cross-
appeal that the Board erred in upholding the patentabil-
ity 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 appa-
ratus claims relies on an untimely and erroneous con-
struction.
    We are not persuaded by either argument. First, we
disagree with ParkerVision that Qualcomm failed to
present its arguments and evidence regarding the “plural-
ity 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 recog-
nizes 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. Qual-
comm 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 fre-
quency 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 operating
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, 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 differ-
ent.” 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 Com-
puting Corp., 626 F.3d 1197, 1204 (Fed. Cir. 2010) (ex-
plaining “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 opera-
tion.’” 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 opera-
tion.
    ParkerVision acknowledges Bausch & Lomb, but
seeks to distinguish it on grounds that the apparatus
claims here require an oscillating signal that is “config-
ured to” generate a plurality of harmonics, which Nozawa
does not disclose. Although ParkerVision correctly recog-
nizes that our cases distinguish between claims with
language that recites capability, and those that recite
configuration, the claims here fall squarely on the “capa-
ble 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 configura-
tion in which protrusions needed to be “resting upon” a
cover. We concluded that this structural limitation “speci-
fie[d] that infringement occurs only if the accused product
is configured with the cover being used as a base under-
neath 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 requir-
ing that any software components be ‘active’ or ‘ena-
bled’”—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 compo-
nent that [wa]s reasonably capable of ‘arranging infor-
mation 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 oscillat-
ing 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 ca-
pable 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 Cam-
bridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016) (quot-
ing 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 determina-
tion 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” per-
forming 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 har-
monics” 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 arti-
san would have had a reasonable expectation of success in
doing so’”). Qualcomm failed to do so.
    The Board found that Qualcomm’s petitions were defi-
cient because they “d[id] not speak to whether a person of
ordinary skill in the art would have any reason to” oper-
ate Nozawa with inputs that would produce the required
“plurality of harmonics.” 1828 Decision, 2017 WL 946735
at *7. Substantial evidence supports this finding. Qual-
comm 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 integer-
multiple harmonics, rather than an input signal that does
not produce integer-multiples of the fundamental fre-
quency. Instead, Qualcomm’s petitions and accompany-
ing 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 condi-
tions is critical to the patentability of the method claims.
It is true that, “[j]ust as ‘an accused product that some-
times, but not always, embodies a claimed method none-
theless 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 rele-
vant claim limitation in its default setting, and we reject-
ed 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 peri-
odic 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 mod-
ule” that “gates” if driven with the proper inputs, the
claims challenged in the Ariie-based petition are un-
patentable. 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 pro-
posed 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 oscil-
lating 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, alt-
hough 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 mix-
ers 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 coun-
tervailing 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 refer-
ences 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 pa-
tentability determinations in each of the 1828, 1829, and
1831 Decisions.
                       AFFIRMED
                          COSTS
     No costs.
