Case: 19-1061    Document: 56    Page: 1   Filed: 02/13/2020




   United States Court of Appeals
       for the Federal Circuit
                 ______________________

           ACOUSTIC TECHNOLOGY, INC.,
                    Appellant

                            v.

       ITRON NETWORKED SOLUTIONS, INC.,
                      Appellee
               ______________________

                       2019-1061
                 ______________________

     Appeal from the United States Patent and Trademark
 Office, Patent Trial and Appeal Board in No. IPR2017-
 01024.
                  ______________________

                Decided: February 13, 2020
                 ______________________

    MICHELLE ARMOND, Armond Wilson LLP, Newport
 Beach, CA, argued for appellant. Also represented by
 DOUGLAS R. WILSON, Austin, TX.

    ADAM R. BRAUSA, Durie Tangri LLP, San Francisco,
 CA, argued for appellee. Also represented by MARK A.
 LEMLEY.
                ______________________

   Before MOORE, REYNA, and TARANTO, Circuit Judges.
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 2            ACOUSTIC TECHNOLOGY, INC. v. ITRON NETWORKED
                                                  SOLUTIONS


 REYNA, Circuit Judge.
      On September 8, 2017, the Patent Trial and Appeal
 Board instituted inter partes review based on a petition
 filed by Silver Spring Networks, Inc. Nine days after insti-
 tution, Silver Spring agreed to merge with Itron, Inc., an
 entity undisputedly time-barred under 35 U.S.C. § 315(b).
 Silver Spring and Itron completed the merger during the
 IPR proceeding. The Board later issued a final written de-
 cision and found the challenged claim unpatentable. On
 appeal, Acoustic asks that we vacate the Board’s final writ-
 ten decision on grounds that the inter partes review was
 time-barred due to Silver Spring’s and Itron’s merger-re-
 lated activities. Acoustic also challenges the Board’s un-
 patentability findings. Because we find that Acoustic
 waived its time-bar argument and that substantial evi-
 dence supports the Board’s unpatentability findings, we af-
 firm.
                         BACKGROUND
                         I. ’841 Patent
     Acoustic Technology, Inc. (“Acoustic”) owns U.S. Patent
 No. 6,509,841 (“the ’841 patent”), which relates to commu-
 nications systems for utility providers to remotely monitor
 groups of utility meters, e.g., electricity meters. 1 According
 to Acoustic, the claimed invention was “an improvement
 upon prior art automated meter reading systems that used
 expensive and problematic radio frequency (RF)


     1   The ’841 patent is a continuation of U.S. Patent Ap-
 plication No. 08/949,440, which issued as U.S. Patent
 No. 5,986,574. Acoustic filed a related appeal involving
 U.S. Patent No. 5,986,574 on the same day it filed this ap-
 peal. Acoustic Tech., Inc. v. Itron Networked Solutions,
 Inc., Case No. 2019-1059. We heard oral arguments in this
 case and Case No. 2019-1059 on December 4, 2019. We
 have issued opinions in both cases simultaneously.
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 transmitters, or systems that relied on human meter-read-
 ers using handheld or vehicle-mounted short-range wire-
 less devices to obtain meter readings when they were in a
 customer’s vicinity.” Appellant Br. 7. Central to this ap-
 peal are the “CDMA” and “relay” claim limitations.
      In one embodiment, shown in Figure 1 below, a plural-
 ity of “servicing means 16” (e.g., on-site utility meters) com-
 municate with a “relay means 14,” which in turn
 communicates with a “control means 12” (e.g., a remote
 computer at a utility facility). J.A. 94, Fig. 1; J.A. 98–99
 at 2:43–3:19.




     The relay can be “positioned at any desired location
 within the communication system,” including on a distri-
 bution pole or at a customer’s location. The relay can com-
 municate with the control station via a Code-Division
 Multiple Access (“CDMA”) link. CDMA is a digital multi-
 ple access technique where all users are allowed to trans-
 mit simultaneously utilizing the same available frequency
 band.
     Claim 8 of the ’841 patent, reproduced below, is the
 only claim at issue on appeal:
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 4            ACOUSTIC TECHNOLOGY, INC. v. ITRON NETWORKED
                                                  SOLUTIONS


        8. A system for remote two-way meter reading
     comprising:
         a metering device comprising means for
           measuring usage and for transmitting
           data associated with said measured us-
           age in response to receiving a read com-
           mand;
         a control for transmitting said read com-
           mand to said metering device and for re-
           ceiving said data associated with said
           measured usage transmitted from said
           metering device; and
         a relay for code-division multiple access
           (CDMA) communication between said
           metering device and said control,
           wherein said data associated with said
           measured usage and said read command
           is relayed between said control and me-
           tering device by being passed through
           said relay.
 J.A. 100 at 8:24–39.
                        II. IPR Petition
     In March 2010, Acoustic sued Itron Inc. (“Itron”) for in-
 fringement of the ’841 patent. Acoustic and Itron later
 agreed to settle the suit. As part of the settlement agree-
 ment, Acoustic licensed the ’841 patent to Itron. As a result
 of the lawsuit, Itron was time-barred from seeking inter
 partes review (“IPR”) of the ’841 patent as of March 26,
 2011. See 35 U.S.C. § 315(b).
     Six years after suing Itron, Acoustic sued Silver Spring
 Networks, Inc. (“Silver Spring”) for infringement of the ’841
 patent. In response, on March 3, 2017, Silver Spring filed
 the IPR petition that gave rise to this appeal: IPR2017-
 01024 (“the petition”).
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      Several weeks before Silver Spring filed the petition,
 Silver Spring and Itron began privately discussing “a po-
 tential business combination.” J.A. 6556. The first contact
 occurred on February 12, 2017, when a representative of
 Itron phoned a Silver Spring board member to express
 Itron’s interest in a potential merger. The next day, Itron’s
 CEO continued the discussion with a director of Silver
 Spring. One week later, on February 20, 2017, Itron’s CEO
 requested a meeting with Silver Spring to discuss “a poten-
 tial acquisition.” J.A. 6556.
     Silver Spring and Itron continued to discuss a potential
 merger after Silver Spring filed the petition. Representa-
 tives from each company met on March 10, 2017, one week
 after Silver Spring filed the petition, and again on April 12,
 2017.
     The Board instituted inter partes review on Septem-
 ber 8, 2017. Nine days later, on September 17, 2017, Silver
 Spring and Itron agreed to merge. Itron publicly an-
 nounced the agreement the next day. Silver Spring asserts
 that, up until the day the parties reached an agreement,
 Silver Spring was exploring potential business relation-
 ships with more than a dozen other companies.
     Silver Spring and Itron completed the merger on Jan-
 uary 5, 2018, while the inter partes review proceeding re-
 mained underway. Acoustic learned of the merger three
 days later. On January 17, 2018, Silver Spring filed up-
 dated mandatory notices that listed Itron as a real-party-
 in-interest.
     The Board entered a final written decision on Au-
 gust 21, 2018, nearly a year after Silver Spring and Itron
 agreed to merge, and seven months after they completed
 the merger. The Board’s final written decision found claim
 8 unpatentable on all three asserted grounds: anticipated
 by NetComm; anticipated by Gastouniotis; and obvious in
 view of Nelson and Roach. Acoustic never raised a time-
 bar challenge to the Board.
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                                                  SOLUTIONS


    Acoustic appeals the Board’s final written decision. We
 have jurisdiction under 28 U.S.C. § 1295(a)(4)(A).
                         DISCUSSION
     Acoustic raises two issues on appeal. First, Acoustic
 asserts that the Board’s final written decision should be va-
 cated because the underlying IPR proceeding is time-
 barred under 35 U.S.C. § 315(b). Second, Acoustic chal-
 lenges the Board’s unpatentability factual findings as not
 supported by substantial evidence.
                         I. Time-Bar
     Acoustic argues that we must vacate the Board’s final
 written decision because the inter partes review was time-
 barred under 35 U.S.C. § 315(b). Section 315(b) provides:
     An inter partes review may not be instituted if the
     petition requesting the proceeding is filed more
     than 1 year after the date on which the petitioner,
     real party in interest, or privy of the petitioner is
     served with a complaint alleging infringement of
     the patent.
 35 U.S.C. § 315(b) (emphasis added). Congress included
 the “real parties in interest” provision in § 315(b) to “safe-
 guard patent owners from having to defend their patents
 against belated administrative attacks by related parties.”
 Applications in Internet Time, LLC v. RPX Corp., 897 F.3d
 1336, 1350 (Fed. Cir. 2018), cert. denied, 139 S. Ct. 1366
 (mem.) (2019).
     The Board evaluates § 315(b) at the time it decides
 whether to institute the proceeding. Power Integrations,
 Inc. v. Semiconductor Components Indus., LLC, 926 F.3d
 1306, 1315 (Fed. Cir. 2019). In Power Intergrations, we
 held that the real-party-in-interest determination must
 consider all relationships that arise before the date of in-
 stitution, including relationships that arise after the peti-
 tion filing date. Id. at 1314–1315 (“[Section] 315(b)
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 requires consideration of privity and [real-party-in-inter-
 est] relationships arising after filing but before institu-
 tion.”). We expressly declined to decide whether the Board
 is required to reevaluate § 315(b) in view of a new real-
 party-in-interest that arises after institution. Id. at 1314
 n.8 (“We do not address the impact of a change in
 RPI . . . occurring after institution.”).
     Acoustic argues that the underlying IPR is time-barred
 because Itron was a real-party-in-interest “both before and
 after the IPR was instituted.” Appellant Br. 51. Before
 institution, Acoustic asserts, Itron was a real-party-in-in-
 terest because “the executives met; Itron conducted due dil-
 igence; the details of the merger were discussed; and the
 formal ‘merger agreement’ was prepared and negotiated.”
 Reply Br. 15–16. After institution, Acoustic contends, Itron
 was “unquestionably” a real-party-in-interest because Sil-
 ver Spring became a wholly-owned subsidiary of Itron, and
 Itron “controlled [Silver Spring] and had a significant in-
 terest” in the inter partes review proceeding. Id. at 19–22.
      Acoustic contends that Silver Spring’s post-institution
 status as a real-party-in-interest is important because “in-
 stitution is not a static decision” and the Board has the au-
 thority to reevaluate § 315(b) when a real-party-in-interest
 arises after institution. Reply Br. 17–18. The Board’s abil-
 ity to assess § 315(b) after institution is necessary, Acoustic
 explains, in order to avoid an “end-run around Section
 315(b)” where parties delay their corporate deals until
 shortly after institution and avoid the consequences of the
 time-bar. Id. 21–22.
    Itron advances several arguments in response to
 Acoustic’s time-bar arguments. First, Itron argues that
 Acoustic waived its time-bar challenge of the IPR because
 Acoustic did not raise those arguments before the Board.
 Second, Itron argues that the time bar of § 315(b) does not
 apply to the underlying IPR proceeding because Itron
 merged with Silver Spring after the Board instituted the
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                                                  SOLUTIONS


 proceeding. Third, Itron asserts that the Board is not au-
 thorized to reevaluate § 315(b) after institution and that
 Acoustic’s proposed reading of the statute “offers no logical
 stopping point” for the Board to assess the time bar. Ap-
 pellee Br. 39.
     We hold that Acoustic has waived its time-bar chal-
 lenge to the IPR because it failed to present those argu-
 ments before the Board. We retain case-by-case discretion
 over whether to apply waiver. Monsanto Tech. LLC v. E.I.
 DuPont de Nemours & Co., 878 F.3d 1336, 1342 n.8 (Fed.
 Cir. 2018). We have “frequently declined to hear argu-
 ments that the applicant failed to present to the Board.” In
 re Watts, 354 F.3d 1362, 1367 (Fed. 2004). When a party
 raises arguments on appeal that it did not raise to the
 Board, they “deprive[] the court of the benefit of the
 [Board’s] informed judgment.” In re NuVasive, Inc., 842
 F.3d 1376, 1380 (Fed. Cir. 2016) (explaining the im-
 portance of “a comprehensive record that contains the ar-
 guments and evidence presented by the parties”).
     There is no dispute that Acoustic failed to raise § 315(b)
 time-bar arguments before the Board. Acoustic became
 aware of the merger as of January 8, 2018, more than seven
 months before the Board issued its final written decision.
 J.A. 7026. Yet, Acoustic does not provide any reason for its
 failure to challenge the proceeding as time-barred. Be-
 cause Acoustic failed to present its time-bar arguments to
 the Board and “deprive[d] the court of the benefit of the
 [Board’s] informed judgment,” we exercise our discretion to
 apply waiver. In re NuVasive, 842 F.3d at 1380.
     Acoustic attempts to excuse its waiver by asserting,
 without legal authority, that the time-bar is “jurisdic-
 tional” and thus “may be raised at any time.” Appellant
 Br. 29. We disagree.
     Acoustic is correct that we have previously described
 the time-bar restrictions on the Board’s institution powers
 as “jurisdictional.” Appellant Br. 32–35 (citing Click-to-
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 Call Techs., LP v. Ingenio, Inc., 899 F.3d 1321, 1325
 (Fed. Cir. 2018); Wi-Fi One, LLC v. Broadcom Corp., 878
 F.3d 1364, 1373 (Fed. Cir. 2018)). But our application of
 waiver differs between challenges to an agency’s “jurisdic-
 tion” and challenges to a federal court’s jurisdiction. PGS
 Geophysical AS v. Iancu, 891 F.3d 1354, 1362 (Fed. Cir.
 2018). As we explained in PGS:
    Even if the Board could be said to have acted “ultra
    vires” in refusing to institute reviews of some
    claims and grounds . . . the Board’s error is wai-
    vable, not one we are required to notice and act on
    in the absence of an appropriate request for relief
    on that basis. Several courts of appeals have rec-
    ognized the same for a challenge to an agency’s “ju-
    risdiction,” after the Supreme Court, in City of
    Arlington v. FCC, rejected a distinction between
    agency “jurisdiction” errors and other errors for
    certain deference purposes . . . .”
 Id. (compiling cases) (citations omitted). We hold that
 time-bar challenges under § 315(b) are not immune from
 waiver.
      To permit litigants to raise § 315(b) time-bar chal-
 lenges for the first time on appeal would encourage what
 the Supreme Court has referred to as “sandbagging,” i.e.,
 “suggesting or permitting, for strategic reasons, that the
 [tribunal below] pursue a certain course, and later—if the
 outcome is unfavorable—claiming that the course followed
 was reversible error.” Freytag v. Comm’r of Internal Reve-
 nue, 501 U.S. 868, 895 (1991). But allowing Acoustic to
 raise a time-bar challenge for the first time on appeal
 would afford it a significant and unfair advantage: Acous-
 tic could wait for the Board’s decision on the merits, which
 if favorable would have estoppel effect, and then challenge
 the Board’s jurisdiction on appeal only if the Board finds
 the claims obvious.
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                                                    SOLUTIONS


     Although we do not address the merits of Acoustic’s
 time-bar argument, we note Acoustic’s concerns about the
 concealed involvement of interested, time-barred parties.
 But because Acoustic never raised this issue to the Board,
 we decline to resolve whether Itron’s pre-merger activities
 render it a real-party-in-interest, or whether the Board has
 any authority or obligation to reevaluate § 315(b) post in-
 stitution.
                      II. Unpatentability
     Acoustic argues that we should reverse the Board’s un-
 patentability findings. Acoustic contends that the Board
 erred with respect to each of the three grounds on which it
 found claim 8 unpatentable: (A) anticipation by NetComm;
 (B) anticipation by Gastouniotis; and (C) obviousness in
 view Nelson and Roach. We address each ground in turn.
     We review the Board’s factual determinations for sub-
 stantial evidence and its legal determinations de novo. Li-
 qwd, Inc. v. L’Oreal USA, Inc., 941 F.3d 1133, 1136
 (Fed. Cir. 2019). Anticipation is a question of fact that we
 review for substantial evidence. In re Hodges, 882
 F.3d 1107, 1111 (Fed. Cir. 2018). Whether an invention
 would have been obvious is a legal conclusion based on un-
 derlying factual findings. Graham v. John Deere Co., 383
 U.S. 1, 17–18 (1966). Determinations about the scope and
 content of prior art, and whether an artisan would be mo-
 tivated to modify it with a reasonable expectation of suc-
 cess, are questions of fact. Id.
                 A. Anticipation by NetComm
     Acoustic challenges the Board’s determination that
 NetComm anticipates claim 8 of the ’841 patent. Specifi-
 cally, Acoustic claims the Board erred by finding that Net-
 Comm discloses the claimed CDMA communication
 limitation.
     Acoustic contends that the Board’s CDMA finding is
 not supported by substantial evidence because the Board
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 relied entirely on the testimony of Silver Spring’s expert,
 Dr. Soliman. Appellant Br. 56. Acoustic explains that Dr.
 Soliman’s testimony is not evidence of anticipation because
 Dr. Soliman’s testimony reflects an “incorrect obviousness
 standard” instead of the standard for anticipation. Id.
 Acoustic points to Dr. Soliman’s statement that a skilled
 artisan would “recognize” NetComm as disclosing CDMA.
 Id. Dr. Soliman’s use of the word “recognize,” Acoustic as-
 serts, is akin to testimony about what a prior art reference
 “suggests”—which goes to obviousness, not anticipation.
 Id. We disagree.
      In an anticipation analysis, the dispositive question is
 whether a skilled artisan would “reasonably understand or
 infer” from a prior art reference that every claim limitation
 is disclosed in that single reference. Akamai Techs., Inc. v.
 Cable & Wireless Internet Servs., Inc., 344 F.3d 1186, 1192
 (Fed. Cir. 2003). Expert testimony may shed light on what
 a skilled artisan would reasonably understand or infer
 from a prior art reference. Monsanto Tech. LLC v. E.I.
 DuPont de Nemours & Co., 878 F.3d 1336, 1345 (Fed. Cir.
 2018). Moreover, expert testimony can constitute substan-
 tial evidence of anticipation when the expert explains in
 detail how each claim element is disclosed in the prior art
 reference. Koito Mfg. Co. v. Turn-Key-Tech, LLC, 381 F.3d
 1142, 1152 (Fed. Cir. 2004).
     Here, Dr. Soliman conducted a detailed analysis and
 explained how a skilled artisan would reasonably under-
 stand that NetComm’s disclosure of radio wave communi-
 cation was the same as CDMA. J.A. 893–896 at ¶¶ 165–
 175. For example, Dr. Soliman identified specific passages
 in NetComm that a skilled artisan would recognize as dis-
 closing “spread-spectrum radio communication.” J.A. 894
 at ¶ 169. Dr. Soliman identified other passages that a
 skilled artisan would recognize as disclosing that “multiple
 users share a band and hop between channels in that band
 using a pseudo-random pattern assigned to each device.”
 J.A. 895 at ¶ 171. As a result, Dr. Soliman concluded, a
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 skilled artisan would recognize that NetComm discloses
 the CDMA limitation of claim 8. J.A. 896 at ¶ 176. Acous-
 tic provided no evidence to rebut Dr. Soliman’s testimony.
 J.A. 26.
     We conclude that the Board’s finding that NetComm
 discloses CDMA and anticipates claim 8 is supported by
 substantial evidence. See Koito Mfg., 381 F.3d at 1152.
                B. Anticipation by Gastouniotis
      Acoustic challenges the Board’s determination that
 Gastouniotis anticipates claim 8 of the ’841 patent. Acous-
 tic asserts that the Board’s finding is erroneous because the
 Board relied on “the same structures to satisfy separate
 claim limitations.” Appellant Br. 60. Specifically, Acoustic
 asserts that the Board relied on the same “remote station
 6” in Gastouniotis to satisfy the “control” and “relay” limi-
 tations of claim 8. Id. at 57. We disagree.
     Gastouniotis discloses a two-way utility meter reading
 system that includes a plurality of “remote stations” that
 communicate with a plurality of “instrument links.”
 J.A. 968 at 4:9–46. Gastouniotis discloses that individual
 “remote stations” may have different functions in a given
 embodiment. Id. In finding that Gastouniotis anticipated
 claim 8, the Board relied on separate “remote station”
 structures to meet the “control” and “relay” limitations.
 J.A. 30.
     As to the “control” limitation of claim 8, the Board re-
 lied on Gastouniotis’ disclosure of at least one remote sta-
 tion that engages in two-way communication with the
 metering device: transmitting commands to the metering
 device and receiving usage data from the metering device.
 Id. at 4:15–17. Dr. Soliman provided unrebutted testimony
 that a skilled artisan would understand that these remote
 stations disclosed in Gastouniotis meet the “control” limi-
 tation of claim 8.
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     As to the “relay” limitation of claim 8, the Board relied
 on Gastouniotis’ disclosure of separate remote stations that
 function as a “relay”:
     [T]he remote stations can be configured to com-
     municate with each other as well as with the in-
     strument links. In this way, data obtained by one
     remote station can be communicated to a central
     location using the other remote stations as a relay.
 J.A. 968 at 4:37–42 (emphasis added). Dr. Soliman pro-
 vided unrebutted testimony that a skilled artisan would
 understand that these remote stations disclosed in
 Gastouniotis meet the “relay” limitation of claim 8.
     As a result, we conclude that the Board did not improp-
 erly rely on the same structure in Gastouniotis to meet the
 “control” and “relay” limitations of claim 8. We affirm the
 Board’s factual finding that Gastouniotis anticipates
 claim 8.
        C. Obviousness in View of Nelson and Roach
     Acoustic challenges the Board’s determination that
 claim 8 of the ’841 patent is rendered obvious in view of
 Nelson and Roach. Acoustic asserts two errors in the
 Board’s obviousness analysis: (i) that the Board errone-
 ously mapped Nelson onto the elements of claim 8; and (ii)
 that the Board’s motivation-to-combine finding is not sup-
 ported by substantial evidence. We reject both arguments.
                              1.
     First, Acoustic asserts that the Board erroneously
 mapped “the same structure in Nelson onto multiple claim
 limitations.” Appellant Br. 64. Specifically, Acoustic as-
 serts that the Board relied on the same “electronic meter
 reader (EMR)” in Nelson to satisfy both the “metering de-
 vice” and “relay” limitations of claim 8. Appellant Br. 64–
 65. We disagree.
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     Nelson discloses a two-way meter reading system that
 includes a plurality of “electronic meter readers (EMRs).”
 J.A. 997 at 8:23–27; J.A. 1005 at 22:25; J.A. 1013 at 13:19.
 Nelson discloses that individual EMRs may have different
 functions in a given embodiment. Id. In finding that Nel-
 son anticipated claim 8, the Board relied on separate EMR
 structures to meet the “metering device” and “relay” limi-
 tations.
     To satisfy the “metering device” limitation of claim 8,
 the Board relied on Nelson’s disclosure that the “meter ap-
 paratus 10,” which houses an EMR, “is substantially the
 same as a conventional meter apparatus designed to indi-
 cate the amount of electricity consumed by a consumer’s
 electrical system.” J.A. 997 at 8:23–27; J.A. 1005 at 22:25.
 Dr. Soliman provided unrebutted testimony that a skilled
 artisan would recognize the metering apparatus of Nelson
 as meeting the “metering device” limitation of claim 8.

     To satisfy the “relay” limitation of claim 8, the Board
 relied on Nelson’s disclosure of separate, “intermediate
 EMR devices” that operate as “communication relays” in a
 technique known as “meterstringing.” J.A. 1013 at 24:13–
 19 (emphasis added). Nelson discloses that these “[i]nter-
 mediate EMR devices serve [the] sole purpose of communi-
 cations link between the EMI device and the target EMR
 at the end of the communication link.” Id. Dr. Soliman
 provided unrebutted testimony that a skilled artisan would
 recognize that the intermediate EMR devices of Nelson
 meet the “relay” limitation of claim 8.

      As a result, we conclude that the Board did not improp-
 erly rely on the same electronic meter reader in Nelson to
 satisfy both the “metering device” and “relay” limitations
 of claim 8.
                               2.
     Second, we reject Acoustic’s argument that the Board
 erred in finding that a skilled artisan would be motivated
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 to combine Nelson and Roach. Acoustic argues that the
 Board “erred by not making any factual findings that one
 of ordinary skill would have been motivated to combine the
 prior art.” Appellant Br. 61. Acoustic requests that we re-
 verse the Board’s finding because the Board relied on “at-
 torney argument,” and “generically cited to [Dr. Soliman’s]
 expert testimony.” Id. at 61–62.
     The motivation to combine prior art references can
 come from the knowledge of those skilled in the art, from
 the prior art reference itself, or from the nature of the prob-
 lem to be solved. PGS Geophysical AS v. Iancu, 891
 F.3d 1354, 1365 (Fed. Cir. 2018). Acoustic is correct that
 conclusory expert testimony and attorney argument cannot
 constitute substantial evidence of a motivation to combine.
 E.g., Icon Health & Fitness, Inc. v. Strava, Inc., 849
 F.3d 1034, 1043 (Fed. Cir. 2017). We have found expert
 testimony insufficient where, for example, the testimony
 consisted of conclusory statements that a skilled artisan
 could combine the references, not that they would have
 been motivated to do so. TQ Delta, LLC v. CISCO Sys.,
 Inc., 942 F.3d 1352, 1359–60 (Fed. Cir. 2019).
     The Board’s final written decision provides a detailed
 discussion of Silver Spring’s arguments that a skilled arti-
 san would have been motivated to combine Nelson and
 Roach. J.A. 35–36. The Board expressly found those argu-
 ments “supported by a sufficient rational underpinning”
 and “supported by the testimony of Dr. Soliman.” J.A. 35–
 36, 38. The Board cited specific pages of Dr. Soliman’s tes-
 timony, including his opinion that “one of the goals of Nel-
 son’s system is to increase communication reliability and
 information access integrity,” and that the CDMA commu-
 nication described in Roach was “well known” among
 skilled artisans as a way to achieve those goals. J.A. 34–
 36 (citing J.A. 914–915).
    Dr. Soliman’s testimony was not conclusory or other-
 wise defective, and the Board was within its discretion to
Case: 19-1061      Document: 56    Page: 16   Filed: 02/13/2020




 16             ACOUSTIC TECHNOLOGY, INC. v. ITRON NETWORKED
                                                    SOLUTIONS


 give that testimony dispositive weight. In re Am. Acad. of
 Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004). We
 have previously determined that expert testimony consti-
 tuted substantial evidence of a motivation to combine prior
 art references, e.g., Unwired Planet, LLC v. Google Inc.,
 841 F.3d 995, 1003 (Fed. Cir. 2016), and we reach the same
 conclusion here. We affirm the Board’s conclusion that
 claim 8 is rendered obvious by Nelson and Roach.
                          CONCLUSION
     We have considered Acoustic’s other arguments and
 find them unpersuasive. We affirm.
                         AFFIRMED
                             COSTS
      No costs.
