Qualcomm Incorporatedv.ParkerVision, Inc.

Patent Trial and Appeal Board

Mar 8, 2016

09548923 (P.T.A.B. Mar. 8, 2016)

Trials@uspto.gov Paper No. 8
571-272-7822 Entered: March 8, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

QUALCOMM INC., and QUALCOMM ATHEROS, INC.,
Petitioner,

v.

PARKERVISION INC.,
Patent Owner.
____________

Case IPR2015-01819
Patent 7,039,372 B1
____________

Before MICHAEL R. ZECHER, CHRISTOPHER L. CRUMBLEY, and
JASON J. CHUNG, Administrative Patent Judges.

ZECHER, Administrative Patent Judge.

DECISION
Denying Institution of Inter Partes Review
35 U.S.C. § 314(a) and 37 C.F.R. § 42.108

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I. INTRODUCTION
Petitioner, Qualcomm Incorporated and Qualcomm Atheros,
Incorporated (collectively, “Qualcomm”), filed a Petition requesting an inter
partes review of claims 88–92 and 107–110 of U.S. Patent No. 7,039,372
B1 (“the ’372 patent,” Ex. 1001). Paper 2 (“Pet.”). Patent Owner,
ParkerVision Incorporated (“ParkerVision”), timely filed a Preliminary
Response. Paper 7 (“Prelim. Resp.”).
Under 35 U.S.C. § 314(a), an inter partes review may not be instituted
unless the information presented in the Petition shows “there is a reasonable
likelihood that the petitioner would prevail with respect to at least 1 of the
claims challenged in the petition.” Taking into account the arguments
presented in ParkerVision’s Preliminary Response, we conclude that the
information presented in the Petition does not establish that there is a
reasonable likelihood that Qualcomm will prevail in challenging claims 88–
92 and 107–110 of the ’372 patent as unpatentable under 35 U.S.C. § 103(a).
We, therefore, deny the Petition.
A. Related Matters
The ’372 patent is involved in a district court case titled ParkerVision
Inc. v. Qualcomm Inc., No. 6:14-cv-00687-PGB-KRS (M.D. Fla). Pet. 2;
Paper 6, 3. In addition to this Petition, Qualcomm filed other petitions
challenging the patentability of a certain subset of claims in the following
patents owned by ParkerVision: (1) the ’372 patent (Cases IPR2015-01822
and IPR2015-01825); and (2) U.S. Patent No. 6,091,940 (“the ’940 patent”)
(Cases IPR2015-01828, IPR2015-01829, IPR2015-01831, IPR2015-01832,
IPR2015-01833, and IPR2015-01834). Pet. 2; Paper 6, 2.

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B. The ’372 Patent
The ’372 patent, titled “Method and System for Frequency Up-
Conversion with Modulation Embodiments,” issued May 2, 2006, from U.S.
Patent Application No. 09/548,923, filed on April 13, 2000. Ex. 1001, at
[54], [45], [21], [22]. The ’372 patent is a continuation-in-part of U.S.
Patent Application No. 09/379,497, filed on August 23, 1999, which, in turn,
is a continuation of U.S. Patent Application No. 09/176,154, filed on
October 21, 1998—now the ’940 patent. Id. at [63].1
The ’372 patent generally relates to frequency up-conversion of
electromagnetic signals. Ex. 1001, 1:43–44. The ’372 patent discloses that
modern day communication systems employ components, such as
transmitters and receivers, to transmit information from a source to a
destination. Id. at 1:46–48. To accomplish this, the carrier signal is at a
higher frequency than the baseband frequency of the signal information. Id.
at 1:48–50. Information is imparted on the carrier signal through a process
called modulation. Id. at 1:50–52. According to the ’372 patent, there are
three widely used modulation schemes that may be used either individually

1 The parties dispute whether claims 88–92 and 107–110 of the ’372 patent
are entitled to a priority date of October 21, 1998. Pet. 12–13; Prelim. Resp.
4–5. We recognize that essentially the same dispute was resolved in favor of
ParkerVision in Part I.D. of Paper 8 in Cases IPR2015-01822 and IPR2015-
01825, both of which also involve the ’372 patent. We, therefore, adopt the
analysis in Part I.D. of Paper 8 in Cases IPR2015-01822 and IPR2015-
01825. Nevertheless, even if claims 88–92 and 107–110 of the ’372 patent
are not entitled to claim priority to October 21, 1998, we explain below how
each of the grounds of unpatentability asserted by Qualcomm fails to satisfy
the “reasonable likelihood” threshold standard for instituting an inter partes
review.
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or in combination: (1) frequency modulation (“FM”); (2) phase modulation
(“PM”); and (3) amplitude modulation (“AM”). Id. at 1:53–62.
The ’372 patent purportedly improves upon these modulation schemes
by up-converting a signal from a lower frequency to a higher frequency
(“the up-conversion process”). Ex. 1001, 1:65–67. Figure 67 of the ’372
patent, reproduced below, illustrates one embodiment of a circuit for phase
modulating an information signal as part of the up-conversion process. Id. at
5:34–36, 28:65–66.

As shown in Figure 67, information signal 6702 is routed through
optional filter 6704, which results in filtered information signal 6708.
Ex. 1001, 28:66–29:1. Buffer/inverter module 6706 receives filter
information signal 6708 and then outputs buffered information signal 6710
and inverted information signal 6712. Id. at 29:4–7. Buffered information
signal 6710 is routed through inductor 6730 to the first input of switch 6726.
Id. at 29:16–18. Inverted information signal 6712 is routed through inductor
6732 to the first input of switch 6728. Id. 29:18–20. The second inputs of
switches 6726 and 6728 are connected to reference 6746. Id. at 29:20–24.
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Figure 67 further illustrates that local oscillator 6714 generates
oscillation signal 6716, which is routed through 180º phase shifter 6718 to
generate phase shift oscillator signal 6720. Ex. 1001, 29:32–34. Phase shift
oscillator signal 6720 is routed through pulse shaper 6724, which, in turn,
outputs a string of pulses 6750 that connects to the control input of switch
6728. Id. at 29:35–36, 41–44. At the same time, oscillation signal 6716 is
routed through pulse shaper 6722, which, in turn, outputs a string of pulses
6748 that connects to the control input of switch 6726. Id. at 29:34–35,
29:39–41. Summer 6738 combines signal 6734 from the first input of
switch 6726 and signal 6736 from the first input of switch 6728. Id. at
29:45–47. The output of summer 6738 is harmonically rich signal 6740 that
is phase modulated. Id. at 29:47–48. Harmonically rich signal 6740
includes a plurality of harmonies and is routed to filter 6742, which extracts
one or more of the harmonics as desired output signal 6744. Id. at 29:49–51.
C. Illustrative Claim
Of the challenged claims, claims 88 and 107 are independent.
Independent claim 88 is directed to a system for up-converting and
modulating an information signal, whereas independent claim 107 is
directed to a method for performing the same. Claims 89–92 directly or
indirectly depend from independent claim 88; and claims 108–110 directly
or indirectly depend from independent claim 107. Independent claim 88 is
illustrative of the challenged claims and is reproduced below:
88. A system for up-converting and modulating an
information signal, comprising:
an inversion means for inverting the information signal
and outputting an inverted information signal;
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a first control signal having a first control frequency and
a first control phase;
a first reference potential and a second reference
potential;
a second control signal having a second control
frequency and a second control phase, wherein said second
control frequency is substantially equal to said first control
frequency and said second control phase is substantially 180°
out of phase with said first control phase;
a first gating means for gating having a first control
input, a first signal input, and a first reference input, wherein
said first control signal is coupled to said first control input,
said reference signal is coupled to said first reference input, and
said information signal is coupled to said first signal input,
causing said first gating means to gate the information signal to
said first reference potential at a rate that is a function of said
first control frequency, thereby resulting in a gated information
signal;
a second gating means for gating having a second control
input, a second signal input, and a second reference input,
wherein said second control signal is coupled to said second
control input, a second reference potential is coupled to said
second reference input, and said inverted information signal is
coupled to said second signal input, causing said second gating
means to gate said inverted information signal to said second
reference potential at a rate that is a function of said second
control frequency, thereby resulting in a gated inverted
information signal; and
a summer accepting said gated information signal and
said gated inverted information signal, thereby creating a phase-
modulated harmonically rich signal having a plurality of
harmonics, at least one of said plurality of harmonics being a
desired harmonic.

Ex. 1001, 93:16–54.
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D. Prior Art Relied Upon
Qualcomm relies upon the following prior art references:
Nardozza US 5,136,264 Aug. 4, 1992 Ex. 1020
Dobrovolny US 5,280,648 Jan. 18, 1994 Ex. 1002
Thodesen2 US 6,343,211 B1 Jan. 29, 2002 Ex. 1003
(filed Dec. 22, 1998)

HERBERT L. KRAUSS ET AL., SOLID STATE RADIO ENGINEERING
(1980) (Ex. 1005, “Krauss”)

K. Maemura et al., The 200MHz- and 1.5GHz-Band GaAs Monolithic
Quadrature Modulator ICs, PROCEEDINGS OF THE IEEE GaAs IC
SYMPOSIUM 283–86 (1990) (Ex. 1008, “Maemura”).

A. BRUCE CARLSON, COMMUNICATION SYSTEMS: AN
INTRODUCTION TO SIGNALS AND NOISE IN ELECTRICAL
COMMUNICATION (3d ed. 1986) (Ex. 1019, “Carlson”).

STEPHEN A. MAAS, MICROWAVE MIXERS (2nd ed. 1993)
(Ex. 1009, “Maas”).

LEON W. COUCH II, MODERN COMMUNICATION SYSTEMS:
PRINCIPLES AND APPLICATIONS (1995) (Ex. 1004, “Couch”).

BEHZAD RAZAVI, RF MICROELECTRONICS (Ex. 1007, “Razavi”).3

2 Though we decide this Petition on the merits of the grounds asserted by
Qualcomm, we note that Thodesen does not qualify as prior art for at least
the reasons discussed in Part II.D.1 of Paper 8 in Cases IPR2015-01822 and
IPR2015-01825.
3 Razavi does not qualify as prior art for at least the reasons discussed in Part
II.D.2 of Paper 8 in Cases IPR2015-01822 and IPR2015-01825.
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E. Asserted Grounds of Unpatentability
Qualcomm challenges claims 88–92 and 107–110 of the ’372 patent
based on the asserted grounds of unpatentability (“grounds”) set forth in the
table below. Pet. 4, 23–60.
References Basis Challenged Claim(s)
Dobrovolny and Maas § 103(a) 88–91 and 107–110
Dobrovolny, Maas, and Thodesen § 103(a) 88–91 and 107–110
Thodesen, Maemura, and Maas § 103(a) 88, 90, 91, 107, 109, and
110
Thodesen, Maemura, Maas, and
Razavi
§ 103(a) 89 and 108
Dobrovolny, Maas, and Nardozza § 103(a) 92
Dobrovolny, Maas, Thodesen, and
Nardozza
§ 103(a) 92
Thodesen, Maemura, Maas, and
Nardozza
§ 103(a) 92
Dobrovolny, Maas, Thodesen, and
Krauss
§ 103(a) 88–91 and 107–110
Dobrovolny, Maas, Thodesen,
Nardozza, and Krauss
§ 103(a) 92

II. ANALYSIS
A. Claim Construction
In an inter partes review, we construe claims by applying the broadest
reasonable interpretation in light of the specification. 37 C.F.R. § 42.100(b);
In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1278–79 (Fed. Cir. 2015),
cert. granted sub nom. Cuozzo Speed Techs., LLC v. Lee, 84 U.S.LW. 3218
(U.S. Jan. 15, 2016) (No. 15-446). Under the broadest reasonable
interpretation standard, and absent any special definitions, claim terms or
phrases are given their ordinary and customary meaning, as would be
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understood by one of ordinary skill in the art, in the context of the entire
disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
2007).
In its Petition, Qualcomm proposes constructions for the following
claim phrases or terms: (1) “inversion means for inverting the information
signal and outputting an inverted information signal” (claims 88–92); (2)
“gating [a signal]” (claims 107–110); (3) “first gating means for gating” and
“second gating means for gating” (claims 88–92); (4) “harmonically rich
signal” (all challenged claims); (5) “harmonic” (claims 88–92); (6) “ground”
(claims 91 and 110); and (7) “shaping means for shaping said first control
signal so as to have a plurality of pulses” (claim 92). Pet. 13–20. In
response, ParkerVision proposes a construction for each of the claim phrases
or terms identified by Qualcomm, with the exception of “shaping means for
shaping said first control signal so as to have a plurality of pulses.”4 Prelim.
Resp. 14–22. We, however, need not assess the parties’ proposed
constructions because they are not necessary to resolve the dispositive issues
discussed below. See, e.g., Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc.,
200 F.3d 795, 803 (Fed. Cir. 1999) (only those claim terms or phrases that
are in controversy need to be construed, and only to the extent necessary to
resolve the controversy).

4 ParkerVision proposes a construction for the claims phrases “shaping an
oscillating signal”/“pulse shaping module.” Prelim. Resp. 23. We note,
however, that claims 88–92 and 107–110 of the ’372 patent do not recite
“shaping an oscillating signal,” let alone a “pulse shaping module.”
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B. Obviousness Over Dobrovolny and Maas
Qualcomm contends that claims 88–91 and 107–110 of the ’372
patent are unpatentable under § 103(a) over the combination of Dobrovolny
and Maas. See Pet. 23–46, 50–59. Qualcomm explains how this proffered
combination teaches the subject matter of each challenged claim (see id.),
and relies upon the Declaration of Lawrence E. Larson, Ph.D. (Ex. 1025) to
support its positions. We have considered Qualcomm’s explanations and
supporting evidence, but with respect to independent claim 88, we are not
persuaded that Qualcomm has presented a sufficient rationale to combine the
teachings of Dobrovolny and Maas. With respect to independent claim 107,
we are not persuaded that Qualcomm clearly articulates how it combines the
teachings of Dobrovolny and Maas to account for all the features of this
claim.
We begin our analysis with the principles of law that generally apply
to a ground based on obviousness, followed by brief overviews of
Dobrovolny and Maas, and then we address the parties’ contentions with
respect to independent claims 88 and 107 in turn.
1. Principles of Law
A claim is unpatentable under § 103(a) if the differences between the
claimed subject matter and the prior art are such that the subject matter, as a
whole, would have been obvious at the time the invention was made to a
person having ordinary skill in the art to which said subject matter pertains.
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of
obviousness is resolved on the basis of underlying factual determinations,
including: (1) the scope and content of the prior art; (2) any differences
between the claimed subject matter and the prior art; (3) the level of skill in
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the art; and (4) where in evidence, so-called secondary considerations.
Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
An invention “composed of several elements is not proved obvious
merely by demonstrating that each of its elements was, independently,
known in the prior art.” KSR, 550 U.S. at 418. Instead, a determination of
unpatentability on a ground of obviousness must include “‘articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness.’” Id. (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
The obviousness evaluation “should be made explicit,” and it “can be
important to identify a reason that would have prompted a person of
ordinary skill in the relevant field to combine the elements in the way the
claimed new invention does.” Id. We analyze the asserted grounds with the
principles identified above in mind.
2. Dobrovolny Overview
Dobrovolny generally relates to mixers and, in particular, to
commutating type single and double-balanced resistive radio frequency
(“RF”) mixers that are operable with high level RF input signals. Ex. 1002,
1:14–17. Figure 1 of Dobrovolny, reproduced below, illustrates a partial
block, partial schematic diagram of an RF mixer. Id. at 2:31–33.
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As shown in Figure 1, source high level RF signal 10 is coupled to
bifilar balun transformer 11 that includes a pair of windings 12 and 13
wound on a small toroidal ferrite core (not illustrated). Ex. 1002, 2:49–52.
Bifilar balun transformer 11 is coupled to trifilar transformer 14 that
includes input winding 15 and a pair of output windings 16 and 17, each of
which has one terminal connected together at common junction 18. Id. at
2:56–60. The other terminals of windings 16 and 17 are connected to the
drain electrodes of a pair of GaAs metal-semiconductor field-effect
transistor (“MESFET”) devices 22 and 26. Id. at 2:60–63. The source
electrodes of MESFET devices 22 and 26 are connected to a ground, and the
gate electrodes are connected to symmetric local oscillator (“LO”) source 40
through a pair of capacitors 52 and 53. Id. at 2:64–67.
Dobrovolny further discloses that input winding 15 serves as an RF
input and induces like-polarity voltage of equal voltage in serially connected
windings 16 and 17. Ex. 1002, 3:17–20, Fig. 2. MESFET devices 22 and
26 are represented by switches, and alternatively connect the free terminals
of windings 16 and 17 to a ground when the switches are closed under
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control of symmetric LO source 40. Id. at 3:20–25, Fig. 2. The effects of
the commutation action produces three waveforms: (1) waveform A; (2)
waveform B; and (3) waveform C. Id. at 3:31–40, Fig 3. Of particular
importance to this case is waveform C, otherwise known as the resultant
output signal available at the intermediate frequency (“IF”) output terminal
of the mixer. Id. at 3:35–37. According to Dobrovolny, waveform C
includes a multiplicity of harmonics, including the desired IF output
frequency, which may be derived by suitable filtering. Id. at 3:37–40.
3. Maas Overview
Maas generally relates to the history and fundamentals of microwave
mixers. Ex. 1009, 20–24.5 According to Maas, a mixer is fundamentally a
multiplier. Id. at 22. Figure 1.2, reproduced below, illustrates this point by
depicting an ideal analog multiplier with two sinusoids applied thereto. Id.

Figure 1.2 shows that, after an appreciable amount of algebraic and
trigonometric manipulation, the output of the mixer is determined to be a
signal having the original modulation, but shifted to a different frequency.
Ex. 1009, 23. The current includes harmonics of the LO. Id. According to
Maas, it is easy to filter out a desired different frequency. Id.

5 All references to the page numbers in Maas refer to the page numbers
inserted by Qualcomm in the bottom, right-hand corner of each page.
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4. Claims 88–91
Qualcomm relies upon the same rationale to combine the teachings of
Dobrovolny and Maas for each of claims 88–91. See Pet. 40–42 (presenting
Qualcomm’s rationale to combine the teachings of Dobrovolny and Maas in
the context of independent claim 88); see, e.g., id. at 44 (addressing
dependent claim 89 by incorporating its discussion from “Section IX.A.6” of
the Petition, which includes, among other things, Qualcomm’s rationale to
combine the teachings of Dobrovolny and Maas). Our analysis below solely
focuses on Qualcomm’s rationale to combine the teachings of Dobrovolny
and Maas to satisfy the limitations of independent claim 88.
In its Petition, Qualcomm contends that the combination Dobrovolny
and Maas teaches “a summer accepting said gated information signal and
said gated inverted information signal, thereby creating a phase-modulated
harmonically rich signal having a plurality of harmonics, at least one of said
plurality of harmonics being a desired harmonic,” as recited independent
claim 88 (“the ‘summer’ limitation”). Pet. 40–42. To support its position,
Qualcomm argues that, to the extent that Dobrovolny does not disclose that
its waveform C includes a desired harmonic, as required by independent
claim 88, Maas discloses that the choice to transmit a harmonic frequency
instead of a fundamental frequency was a known design alternative or choice
that would have been obvious to one of ordinary skill in the art. Id. at 41–42
(citing Ex. 1009, 23; Ex. 1024 ¶ 174). Qualcomm, therefore, asserts that it
would have been obvious to one of ordinary skill in the art to transmit at a
harmonic frequency instead of at the fundamental frequency. Id. at 42
(citing Ex. 1024 ¶ 174).
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In response, ParkerVision contends that Qualcomm’s proposed
combination of Dobrovolny and Maas is the result of impermissible
hindsight reconstruction. Prelim. Resp. 6; see also id. at 8–9 (arguing the
same). In other words, ParkerVision argues that Qualcomm improperly
collapses its obviousness evaluation based on the combination Dobrovolny
and Maas into a hindsight-guided combination of elements. Id. at 9.
On the present record, we are not persuaded that Qualcomm has
articulated a sufficient rationale to combine the teachings of Dobrovolny and
Maas. We understand Qualcomm to argue that modifying Dobrovolny’s RF
mixer to transmit a harmonic frequency instead of the fundamental
frequency is nothing more than a design choice. See Pet. 41–42. This
argument, by itself, does not explain why modifying Dobrovolny in the
manner proposed by Qualcomm would have been obvious. See Cutsforth,
Inc. v. MotivePower, Inc., No. 2015-1316, 2016 WL 279984, at *3 (Fed. Cir.
Jan. 22, 2016) (non-precedential) (“Merely stating that a particular
placement of an element is a design choice does not make it obvious. [There
must be] a reason for why a person of ordinary skill in the art would have
made the specific design choice.”).
Qualcomm does not offer a sufficient or credible explanation as to
why one of ordinary skill in the art would have made the specific design
choice of transmitting a harmonic frequency instead of the fundamental
frequency to Dobrovolny’s RF mixer in order to account for a desired
harmonic, as required by independent claim 88. Absent such an explanation,
we are not persuaded that Qualcomm adequately explains why independent
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claim 88 would have been obvious over the combined teachings of
Dobrovolny and Maas.
We also are not persuaded by the cited testimony of Dr. Larson that
purportedly supports Qualcomm’s rationale to combine the teachings of
Dobrovolny and Maas because it essentially repeats the arguments advanced
by Qualcomm in its Petition. Compare Pet. 41–42, with Ex. 1025 ¶ 174.
For instance, Dr. Larson testifies that:
[t]o the extent it is unclear whether Dobrovolny discloses that a
desired harmonic is included in the multiplicity of harmonics in
waveform C, Maas discloses that the choice to transmit at a
harmonic frequency instead of the fundamental frequency was a
known design alternative that would have been obvious to one
of ordinary skill in the art, as I discussed in Section V above.

Ex. 1025 ¶ 174. Similar to our analysis above, Dr. Larson does not offer a
sufficient or credible explanation as to why one of ordinary skill in the art
would have made the specific design choice of transmitting a harmonic
frequency instead of a fundamental frequency to Dobrovolny’s RF mixer in
order to account for a desired harmonic, as required by independent claim
88.
Moreover, we note that “Section V” of Dr. Larson’s Declaration,
referred to in the block quote above, spans forty-six (46) pages or sixty-nine
(69) paragraphs. See Ex. 1025 ¶¶ 31–100. In essence, Dr. Larson asks that
we search the sixty-nine paragraphs of testimony in Section V to unearth
support for his conclusory statement in the passage quoted above. This we
will not do. If a party or witness wishes for us to consider one portion of a
document as supporting statements made in another portion, it must provide
citations to those portions with particularity.
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Lastly, Qualcomm contends that, to the extent we were to adopt
ParkerVision’s construction of “harmonics” to include the fundamental
frequency, Dobrovolny alone discloses a desired harmonic, as required by
independent claim 88, without the need to combine its teachings with those
of Maas. Pet. 42 (citing Ex. 1002, 3:31–40, Figs. 1, 3; Ex. 1025 ¶ 175). The
single sentence in the Petition addressing this argument is as follows: “With
respect to both Grounds 1 and 2, to the extent Patent Owner’s construction
of ‘harmonics’ to include the fundamental frequency is adopted, Dobrovolny
by itself discloses this limitation without need to combine with Maas.” Id.
At best, this sentence can be interpreted as asserting that, if we decline to
adopt its preferred construction, Dobrovolny either anticipates or renders
obvious all the features of independent claim 88. Qualcomm’s single
sentence, however, fails to present and develop a ground of unpatentability
based on anticipation by, or obviousness over, Dobrovolny alone. See Pet.
3–4 (identifying asserted grounds of unpatentability based, in part, on
Dobrovolny, but not identifying an asserted ground based only on
Dobrovolny). Put simply, Qualcomm has not put the merits of these
positions squarely before us, and we decline to institute trial on
insufficiently developed grounds not explicitly set forth in the Petition.
5. Claims 107–110
In its asserted ground based on the combination of Dobrovolny and
Maas, Qualcomm appears to rely solely upon Dobrovolny to account for
each of the limitations recited in independent claim 107. Pet. 51 (arguing
that Dobrovolny teaches the preamble of this claim), 52 (arguing that
Dobrovolny’s Figures 1 and 2, particularly bifilar balun transformer 11 in
combination with trifilar transformer 14, teach the “inverting” step), 53
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(arguing that Dobrovolny’s MESFET devices or switches 22 and 26 teach
the first and second “gating” steps), 55–56 (arguing that Dobrovolny’s
Figures 1 and 2, particularly the resulting output signal that is waveform C,
teach the “combining” step). Based on these arguments, it is unclear then
how the teachings of Maas are applied in this asserted ground, if at all.
There are two logical inferences that we draw from the current
situation, both of which weigh in favor of determining that Qualcomm has
not satisfied the “reasonable likelihood” threshold standard for instituting an
inter partes review as to this asserted ground. First, if we assume that
Qualcomm intended to rely solely upon Dobrovolny to either anticipate or
render obvious all the features of independent claim 107, this assumption is
problematic because, similar to our analysis above, Qualcomm has failed to
present and develop a ground of unpatentability based on anticipation by, or
obviousness over, Dobrovolny alone. See Pet. 3–4 (identifying asserted
grounds of unpatentability based, in part, on Dobrovolny, but not identifying
an asserted ground based only on Dobrovolny). As we stated previously,
Qualcomm has not put the merits of these positions squarely before us, and
we decline to institute trial on insufficiently developed grounds not
explicitly set forth in the Petition.
Second, when addressing the “combining” step recited in independent
claim 107, Qualcomm incorporates its discussion from “Section IX.A.6” of
the Petition, which includes both Qualcomm’s citations to Maas in the
context of independent claim 88, and its rationale to combine the teachings
of Dobrovolny and Maas, which, as we explained above, is insufficient. See
Pet. 55–56. Even though Qualcomm does not direct us to explicit
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disclosures in Maas when addressing the “combining” step recited in
independent claim 107, we assume from this incorporation by reference that
Qualcomm intended to apply the teachings of Maas in at least some respect.
This assumption is problematic because it raises new issues. For instance,
Qualcomm does not explain adequately whether the same disclosures in
Maas that apply to its obviousness evaluation of independent claim 88 also
apply to its obviousness evaluation of independent claim 107 or,
alternatively, whether different disclosures in Maas apply to its obviousness
evaluation of independent claim 107. Nor does Qualcomm articulate a
sufficient rationale to combine the teachings of Dobrovolny and Maas in the
context of independent claim 107.
6. Summary
Based on the record before us, Qualcomm has not demonstrated a
reasonable likelihood that it would prevail on its assertion that claims 88–91
and 107–110 would have been obvious over the combination of Dobrovolny
and Maas.
C. Obviousness Over Dobrovolny, Maas, and Thodesen
Qualcomm contends that claims 88–91 and 107–110 of the ’372
patent are unpatentable under § 103(a) over the combination of Dobrovolny,
Maas, and Thodesen. See Pet. 23–46, 50–59. Qualcomm explains how this
proffered combination teaches the subject matter of each challenged claim
(see id.), and relies upon the Declaration of Dr. Larson (Ex. 1025) to support
its positions. We have considered Qualcomm’s explanations and supporting
evidence, but with respect to both independent claims 88 and 107, we are not
persuaded that Qualcomm has presented a sufficient rationale to combine the
teachings of Dobrovolny, Maas, and Thodesen.
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We begin our analysis with a brief overview of Thodesen, and then
we address the parties’ contentions regarding whether Qualcomm has
presented a sufficient rationale to combine the teachings of Dobrovolny,
Maas, and Thodesen.
1. Thodesen Overview
Thodesen generally relates to reducing leakage of an LO in a system
that converts the frequency of a first signal by mixing the first signal with a
second supplied signal to a third signal of a frequency that is different from
the frequency for the first and second signal. Ex. 1003, 1:5–10. One
example of this is found in Figure 6b of Thodesen, reproduced below, which
illustrates a system that uses two mixers in passive mode coupled together in
an image reject coupling. Id. at 4:7–10, 6:8–10.

As shown in Figure 6b, LO-signal 79 is fed to coupler 80 where it is
divided into two equal portions, and led out through terminals 82 and 84 to
mixers 86 and 88. Ex. 1003, 6:10–17. The signal led out through terminal
82 is divided in coupler 89 of mixer 86 into two portions that are phase-
shifted 180º relative to each other, after which the signals are led out through
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terminals 90 and 92. Id. at 6:17–21. The signal that comes from terminal 90
is lead through transistor 95 so that it is voltage regulated and mixed with IF
signals fed through low pass filter 94 and 96. Id. at 6:21–25. The signal that
comes from terminal 92 is led through transistor 99 so that it is voltage
regulated and mixed with IF signals fed through low pass filters 98 and 100.
Id. at 6:25–29. These signals are once again phase-shifted relative to each
other, added again in coupler 102, and then lead through terminal 104. Id. at
6:29–31.
In another embodiment, Thodesen discloses an inversion may be
accomplished using 180º couplers, e.g., couplers 136ʺ and 138ʺ illustrated in
Figure 6d, to invert a signal and output both a copy of the original signal and
an inverted version of that signal. Ex. 1003, 9:16–34, Fig. 6d.
2. Rationale to Combine
Qualcomm relies upon essentially the same rationale to combine the
teachings of Dobrovolny, Maas, and Thodesen for each of independent
claims 88 and 107. See Pet. 42 (presenting Qualcomm’s rationale to
combine the teachings of Dobrovolny, Maas, and Thodesen in the context of
independent claim 88), 56 (addressing the “combining” step recited in
independent claim 107 by incorporating its discussion from “Section
IX.A.6” of the Petition, which includes, among other things, Qualcomm’s
rationale to combine the teachings of Dobrovolny, Maas, and Thodesen).
Our analysis below solely focuses on Qualcomm’s rationale to combine the
teachings of Dobrovolny, Maas, and Thodesen to satisfy the limitations of
independent claim 88, but applies equally to independent claim 107.
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In its Petition, Qualcomm contends that the combination of
Dobrovolny, Maas, and Thodesen teaches the “summer” limitation recited
independent claim 88. Pet. 42. To support its position, Qualcomm argues
that it would have been obvious to one of ordinary skill in the art to combine
Dobrovolny with Thodesen’s summer by simple substitution because both
references teach the same architecture using switches where one input of
each switch is coupled to an alternating current (“AC”) ground, and both
references recognize the need to sum the signals generated by the switches.
Id. at 42 (citing Ex. 1025 ¶ 173).
In response, ParkerVision contends that Qualcomm’s rationale to
combine the teachings of Dobrovolny, Maas, and Thodesen is insufficient
because, according to ParkerVision, Qualcomm engages in impermissible
hindsight reconstruction. Prelim. Resp. 6; see also id. 8–9 (arguing the
same).
On the present record, we are not persuaded that Qualcomm has
articulated a sufficient rationale to combine the teachings of Dobrovolny,
Maas, and Thodesen. With respect to Qualcomm’s assertion that the
teachings of Dobrovolny and Thodesen are capable of being combined
because both of these references teach the same structure and recognize the
same problem, this assertion, at best, indicates that Dobrovolny and
Thodesen are analogous art to each other. Merely asserting that these prior
art references are analogous art to each other, however, does not suffice as
an articulated reason with a rational underpinning to combine their
respective teachings—more is required to support the legal conclusion of
obviousness. See KSR, 550 U.S. at 418.
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We also are not persuaded by the cited testimony of Dr. Larson that
purportedly supports Qualcomm’s rationale to combine the teachings of
Dobrovolny and Thodesen because it essentially repeats the arguments
advanced by Qualcomm in its Petition. Compare Pet. 42, with Ex. 1025
¶ 173. For instance, Dr. Larson testifies that:
[f]or example, it would have been obvious to a person of
ordinary skill in the art to combine Dobrovolny with
Thodesen’s summer because both references teach the same
architecture of a switch where one input of each switch is
coupled to AC ground and [both references] recognize the need
to sum the signals generated by the switch . . . . Thus, a person
of ordinary skill in the art using Dobrovolny’s circuitry would
have been motivated to combine it with any similar device that
would sum the voltages of the inputted signals, including the
summer disclosed in Thodesen.

Ex. 1025 ¶ 173. Similar to our explanation above, simply demonstrating
that Dobrovolny and Thodesen are analogous art to each other does not
suffice as an articulated reason with a rational underpinning to combine their
respective teachings—more is required to support the legal conclusion of
obviousness. See KSR, 550 U.S. at 418.
Lastly, Qualcomm contends that, to the extent we were to adopt
ParkerVision’s construction of “harmonics” to include the fundamental
frequency, Dobrovolny alone discloses a desired harmonic, as required by
independent claim 88, without the need to combine its teachings with those
of Maas. Pet. 42 (citing Ex. 1002, 3:31–40, Figs. 1, 3; Ex. 1025 ¶ 175).
This alternative position, however, does not cure the deficiency discussed
above—namely, that Qualcomm has not articulated a sufficient rationale to
combine the teachings of Dobrovolny and Thodesen.
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3. Summary
Based on the record before us, Qualcomm has not demonstrated a
reasonable likelihood that it would prevail on its assertion that claims 88–91
and 107–110 would have been obvious over the combination of Dobrovolny
Maas, and Thodesen.
D. Remaining Grounds Based, in Part, on Dobrovolny and Maas
Qualcomm also challenges a certain subset of claims 88–92 and 107–
110 of the ’372 patent on other grounds based, in part, on Dobrovolny and
Maas. See Pet. 23–60. For the same reasons explained above, these
remaining grounds suffer from one or both of the following deficiencies: (1)
Qualcomm has not articulated a sufficient rationale to combine the teachings
of Dobrovolny and Maas; and (2) Qualcomm has not articulated a sufficient
rationale to combine the teachings of Dobrovolny and Thodesen.
Based on the record before us, Qualcomm has not demonstrated a
reasonable likelihood that it would prevail on its assertion that: (1) claim 92
would have been obvious over the combination of Dobrovolny, Maas, and
Nardozza; (2) claim 92 would have been obvious over the combination of
Dobrovolny, Maas, Thodesen, and Nardozza; (3) claims 88–91 and 107–110
would have been obvious over the combination of Dobrovolny Maas,
Thodesen, and Krauss; and (4) claim 92 would have been obvious over the
combination of Dobrovolny, Maas, Thodesen, Nardozza, and Krauss.
E. Obviousness Over Thodesen, Maemura, and Maas
Qualcomm contends that claims 88, 90, 91, 107, 109, and 110 of the
’372 patent are unpatentable under § 103(a) over the combination of
Thodesen, Maemura, and Maas. See Pet. 23–46, 50–59. Qualcomm
explains how this proffered combination teaches the subject matter of each
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challenged claim (see id.), and relies upon the Declaration of Dr. Larson
(Ex. 1025) to support its positions. We have considered Qualcomm’s
explanations and supporting evidence, but with respect to both independent
claims 88 and 107, we are not persuaded that Qualcomm clearly articulates
how it combines to the teachings of Thodesen, Maemura, and Maas to
account for all the features of these claim. In addition, with respect to
independent claim 88 only, we are not persuaded that Qualcomm has
presented a sufficient rationale to combine the teachings of Thodesen,
Maemura, and Maas.
We begin our analysis with a brief overview of Maemura, and then we
address the parties’ contentions with respect to independent claims 88 and
107 in turn.
1. Maemura Overview
Maemura generally relates to the development of 200 megahertz
(“MHz”)-band and 1.5 gigahertz (“GHz”)-band quadrature modulator
integrated circuits. Ex. 1008, 1.6 Of particular importance to this case is
that the input buffers of these circuits output control signals in the shape of
square waves. Id. at 2. Figures 3 and 4 of Maemura, reproduced below,
illustrate the function diagram of the 200MHz-band quadrature modulator
and the function diagram of the 1.5GHz-band quadrature modulator,
respectively. Id.

6 All references to the page numbers in Maemura refer to the page numbers
inserted by Qualcomm in the bottom, right-hand corner of each page.
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2. Claims 88, 90, and 91
As an initial matter, Qualcomm does not articulate clearly how it
combines the teachings of Thodesen, Maemura, and Maas to account for all
the features recited in independent claim 88. As one example, when
addressing the “first control signal” and “second control signal,” as recited
in independent claim 88, Qualcomm contends that Thodesen discloses these
limitations. Pet. 30–31 (citing Ex. 1003, 6:10–31, Fig. 6b). Alternatively,
Qualcomm argues that, to the extent that we adopt ParkerVision’s
construction for “gating,” it would have been obvious to combine the
teachings of Thodesen with those of Maemura. Id. at 31. Qualcomm asserts
that, although Thodesen does not disclose explicitly that its’ LO signals are
in the shape of square waves, it would have been obvious to one of ordinary
skill in the art to combine the teachings of Thodesen with those of Maemura
to generate control signals that are square waves. Id. at 32 (citing Ex. 1025
¶ 152). Qualcomm argues that, for example, Krauss provides motivation for
this combination of Thodesen and Maemura by teaching the placement of a
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buffer between the oscillator and the load in order to create a more stable
oscillating signal. Id. (citing Ex. 1005, 12–137; Ex. 1025 ¶ 152).
This approach taken by Qualcomm in inconsistent with our governing
statute and rules, as well as the guidance provided in the Office Patent Trial
Practice Guide (“Practice Guide”). According to our governing statute and
rules, a petitioner should set forth its challenges to each claim “with
particularity” and with a “detailed explanation of the significance of the
evidence.” 35 U.S.C. § 312(a)(3); 37 C.F.R. §§ 42.22(a)(2), 42.104(b)(4),
(5). Likewise, the Practice Guide suggests that the petitioner should “avoid
submitting a repository of all the information that a judge could possibly
consider, and instead focus on concise, well-organized, easy-to-follow
arguments supported by readily identifiable evidence of record.” 77 Fed.
Reg. 48,756, 48,763 (Aug. 14, 2012).
Indeed, it is unclear to us why Qualcomm introduces Krauss into its
obviousness evaluation here, especially considering that Krauss is not
identified as the basis of this asserted ground. Nevertheless, Qualcomm
appears to set forth at least three plausible iterations of Thodesen, Maemura,
and Krauss, each of which purportedly teaches the “first control signal” and
“second control signal,” as recited in independent claim 88. These iterations
are listed as follows: (1) Thodesen; (2) Thodesen and Maemura; and (3)
Thodesen, Maemura, and Krauss. We, therefore, are left to speculate as to
which of these three iterations renders obvious the “first control signal” and
“second control signal,” as recited in independent claim 88. Formulating its

7 All references to the page numbers in Krauss refer to the page numbers
inserted by Qualcomm in the bottom, right-hand corner of each page.
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obviousness evaluation in this manner weighs in favor of determining that
Qualcomm has not satisfied the “reasonable likelihood” threshold standard
for instituting an inter partes review as to this asserted ground.
There are additional considerations that weight in favor of
determining that Qualcomm has not satisfied the “reasonable likelihood”
threshold standard for instituting an inter partes review as to this asserted
ground. For instance, Qualcomm contends that the combination Thodesen
and Maas teach the “summer” limitation, as recited in independent claim 88.
Pet. 42–44. To support its position, Qualcomm argues that, although
Thodesen does not disclose that one of its plurality of harmonics is a desired
harmonic, as required by independent claim 88, Maas discloses that the
choice to transmit a harmonic frequency instead of a fundamental frequency
was a known design choice that would have been obvious to one of ordinary
skill in the art. Id. at 44 (citing Ex. 1009, 23). Qualcomm, therefore, asserts
that it would have been obvious to one of ordinary skill in the art to transmit
at a harmonic frequency instead of at the fundamental frequency. Id. at 44
(citing Ex. 1024 ¶ 178).
In response, ParkerVision contends that Qualcomm’s rationale to
combine the teachings of Thodesen, Maemura, and Maas is improper
because it lacks motivation, and it is based on hindsight using the invention
embodied in the challenged claims as a blueprint. Prelim. Resp. 33.
On the present record, we are not persuaded that Qualcomm has
articulated a sufficient rationale to combine the teachings of Thodesen and
Maas. We understand Qualcomm to argue that modifying Thodesen’s
system to transmit a harmonic frequency instead of the fundamental
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frequency is nothing more than a design choice. See Pet. 43–44. This
argument, by itself, does not explain why modifying Thodesen in the manner
proposed by Qualcomm would have been obvious. See Cutsforth, 2016 WL
279984, at *3. Qualcomm does not offer a sufficient or credible explanation
as to why one of ordinary skill in the art would have made the specific
design choice of transmitting a harmonic frequency instead of the
fundamental frequency to Thodesen’s system in order to account for a
desired harmonic, as required by independent claim 88. Absent such an
explanation, we are not persuaded that Qualcomm adequately explains why
independent claim 88 would have been obvious over the combined teachings
of Thodesen and Maas.
We also are not persuaded by the cited testimony of Dr. Larson that
purportedly supports Qualcomm’s rationale to combine the teachings of
Thodesen and Maas because it essentially repeats the arguments advanced
by Qualcomm in its Petition. Compare Pet. 43–44, with Ex. 1025 ¶ 178.
For instance, Dr. Larson testifies that:
as I discuss in Section V.A.3, Maas discloses that the choice to
transmit at a harmonic frequency instead of a fundamental
frequency was a known design alternative that would have been
obvious to one of ordinary skill in the art. It would therefore be
obvious to a person of ordinary skill in the art to transmit at a
harmonic instead of transmitting at the fundamental.

Ex. 1025 ¶ 178. Similar to our analysis above, Dr. Larson does not offer a
sufficient or credible explanation as to why one of ordinary skill in the art
would have made the specific design choice of transmitting a harmonic
frequency instead of a fundamental frequency to Thodesen’s system in order
to account for a desired harmonic, as required by independent claim 88.
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Moreover, we note that “Section V.A.3” of Dr. Larson’s Declaration,
referred to in the block quote above, spans seventeen (17) pages or twenty-
five (25) paragraphs. See Ex. 1025 ¶¶ 45–70. In essence, Dr. Larson asks
that we search the twenty-five paragraphs of testimony in Section V.A.3 to
unearth support for his conclusory statement in the passage quoted above.
This we will not do. If a party or witness wishes for us to consider one
portion of a document as supporting statements made in another portion, it
must provide citations to those portions with particularity.
Lastly, Qualcomm contends that, to the extent we were to adopt
ParkerVision’s construction of “harmonics” to include the fundamental
frequency, Thodesen alone discloses a desired harmonic, as required by
independent claim 88, without the need to combine its teachings with those
of Maas. Pet. 44 (citing Ex. 1003, 6:10–31; Ex. 1025 ¶ 179). For the same
reasons discussed above with regard to the asserted ground based on
Dobrovolny and Maas, Qualcomm has failed to present and develop a
ground of unpatentability based on obviousness over the combination of
Thodesen and Maemura. See Pet. 3–4 (identifying asserted grounds of
unpatentability based, in part, on the combination of Thodesen and
Maemura, but not identifying an asserted ground based only on the
combination of Thodesen and Maemura). Once again, Qualcomm has not
put the merits of this position squarely before us, and we decline to institute
trial on insufficiently developed grounds not explicitly set forth in the
Petition.
3. Claims 107, 109, and 110
In its asserted ground based on the combination of Thodesen,
Maemura, and Maas, Qualcomm appears to rely solely upon Thodesen to
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account for each of the limitations recited in independent claim 107. Pet. 51
(arguing that Thodesen’s Figure 6b teaches the preamble of this claim), 52
(arguing that Thodesen’s Figure 6d, particularly inverter 136ʺ, teaches the
“inverting” step), 54–55 (arguing that Thodesen’s passive mode transistors
95 and 99 teach the first and second “gating” steps), 56–57 (arguing that
Thodesen’s Figure 6b, particularly coupler 102, teaches the “combining”
step). Based on these arguments, it is unclear then how the teachings of
Maemura and Maas are applied in this asserted ground, if at all.
To further complicate how Qualcomm formulates this asserted
ground, when addressing the “combining” step recited in independent claim
107, Qualcomm asserts that one of ordinary skill in the art, e.g., based on the
Couch and Carlson textbooks, would have known that Thodesen’s IQ
modulator creates phase-and-amplitude-modulated harmonically rich
signals. Pet. 57 (citing Ex. 1003, Fig. 6b; Ex. 1004, 33–36, 44–458;
Ex. 1019, 15–17, Figs. 10.1-1, 10.1-2, 10.1-39; Ex. 1025 ¶ 216). It is unclear
to us why Qualcomm introduces both Couch and Carlson into its
obviousness evaluation here, especially considering these references are not
identified as the basis of this asserted ground. Although we recognize that
Qualcomm may be relying upon the teachings of Couch and Carlson as the
store of public knowledge generally available to one of ordinary skill in the

8 All references to the page numbers in Couch refer to the page numbers
inserted by Qualcomm in the bottom, right-hand corner of each page.
9 All references to the page numbers in Carlson refer to the page numbers
inserted by Qualcomm in the bottom, right-hand corner of each page.
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art,10 neither Qualcomm nor its declarant, Dr. Larson, adequately explains
that it is relying on these references for that purpose. Given the uncertain
evidentiary value of Couch and Carlson, we are left to speculate as to which
references Qualcomm relies upon to render obvious the “combining” step
recited in independent claim 107. Formulating its obviousness evaluation in
this manner weighs in favor of determining that Qualcomm has not satisfied
the “reasonable likelihood” threshold standard for instituting an inter partes
review as to this asserted ground.
4. Summary
Based on the record before us, Qualcomm has not demonstrated a
reasonable likelihood that it would prevail on its assertion that claims 88, 90,
91, 107, 109, and 110 would have been obvious over the combination of
Thodesen, Maemura, and Maas.
F. Remaining Grounds Based, in Part, on Thodesen,
Maemura, and Maas
Qualcomm also challenges a certain subset of claims 88–92 and 107–
110 of the ’372 patent on other grounds based, in part, on Thodesen,
Maemura, and Maas. See Pet. 23–60. For the same reasons explained above
the remaining grounds suffer from one or both of the following deficiencies:
(1) the lack of clarity in its obviousness evaluation leaves us to speculate as
to how Qualcomm combines the teachings of Thodesen, Maemura, and
Maas, as well as other prior art references; and (2) Qualcomm has not

10 See Randall Mfg. v. Rea, 733 F.3d 1355, 1362 (Fed. Cir. 2013)
(recognizing that prior art may be considered as “part of the store of public
knowledge that must be consulted when considering whether a claimed
invention would have been obvious”).
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articulated a sufficient rationale to combine the teachings of Thodesen and
Maas.
Based on the record before us, Qualcomm has not demonstrated a
reasonable likelihood that it would prevail on its assertion that: (1) claims
89 and 108 would have been obvious over the combination of Thodesen,
Maemura, Maas, and Razavi; and (2) claim 92 would have been obvious
over the combination of Thodesen, Maemura, Maas, and Nardozza.

III. CONCLUSION
Taking into account the arguments presented in ParkerVision’s
Preliminary Response, we conclude that the information presented in the
Petition does not establish that there is a reasonable likelihood that
Qualcomm will prevail in challenging claims 88–92 and 107–110 of the
’372 patent as unpatentable under § 103(a).

IV. ORDER
In consideration of the foregoing, it is ORDERED that the Petition is
DENIED and no trial is instituted.
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For PETITIONER:

Timothy S. Teter
Matthew Brigham
Eamonn Gardner
Cooley LLP
zIPR2015-01819@cooley.com

Howard Wizenfeld
Cadwaladar Wickersham & Taft LLP
howard.wizenfeld@cwt.com

For PATENT OWNER:

Thomas F. Presson
ParkerVision, Inc.
tpresson@parkervision.com