Case: 19-1732 Document: 64 Page: 1 Filed: 09/08/2020
NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
SIEMENS MOBILITY, INC.,
Appellant
v.
ANDREI IANCU, UNDER SECRETARY OF
COMMERCE FOR INTELLECTUAL PROPERTY
AND DIRECTOR OF THE UNITED STATES
PATENT AND TRADEMARK OFFICE,
Intervenor
______________________
2019-1732, 2019-1752
______________________
Appeals from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in Nos. IPR2017-
01669, IPR2017-02044.
______________________
Decided: September 8, 2020
______________________
JEFFREY D. SANOK, Crowell & Moring, LLP, Washing-
ton, DC, for appellant. Also represented by MARK MICHAEL
SUPKO; SCOTT BITTMAN, New York, NY.
PETER JOHN SAWERT, Office of the Solicitor, United
States Patent and Trademark Office, Alexandria, VA, for
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2 SIEMENS MOBILITY, INC. v. IANCU
intervenor. Also represented by THOMAS W. KRAUSE,
JOSEPH MATAL, FARHEENA YASMEEN RASHEED.
______________________
Before LOURIE, MOORE, and O’MALLEY, Circuit Judges.
LOURIE, Circuit Judge.
Siemens Mobility, Inc. (“Siemens”) appeals from two fi-
nal written decisions of the United States Patent and
Trademark Office’s (“the PTO’s”) Patent Trial and Appeal
Board (“the Board”), holding claims 1–9 and 11–19 of U.S.
Patent 6,609,049 (“the ’049 patent”) and claims 1–9 and
11–19 of U.S. Patent 6,824,110 (“the ’110 patent”) un-
patentable. Westinghouse Air Brake Techs. Corp. v. Sie-
mens Mobility, Inc., No. IPR2017-01669 (P.T.A.B. Jan. 29,
2019) (“’110 Decision”); Westinghouse Air Brake Techs.
Corp. v. Siemens Mobility, Inc., No. IPR2017-02044
(P.T.A.B. Feb. 4, 2019). 1 Because we discern no error in
the Board’s claim construction, factual findings, and eval-
uation of secondary considerations, we affirm.
BACKGROUND
Siemens owns the ’110 and ’049 patents, which share a
specification and are directed to methods and systems for
automatically activating a train warning device, including
a horn, at various locations. The system includes a control
unit, GPS receiver, database of locations of grade crossings,
and electrically activated horn. Figure 2 offers the specifi-
cation’s only description of the horn-sounding process:
1 Because the claims of the ’110 and ’049 patents and
the Board decisions are substantially identical, all citations
are to the ’110 Decision.
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SIEMENS MOBILITY, INC. v. IANCU 3
’049 patent, Figure 2.
As indicated in Figure 2, the system relies on GPS in-
formation from the connected receiver to determine the
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4 SIEMENS MOBILITY, INC. v. IANCU
next grade crossing. If that crossing is subject to state reg-
ulations, the horn is activated in accordance with those reg-
ulations. If the crossing is not subject to state regulations,
the system treats the grade crossing as subject to a Federal
Railroad Administration regulation, 49 C.F.R. § 222.21,
and sounds the train horn when the train is 24 seconds or
fewer away from the crossing.
The ’110 patent has two independent claims, claim 1
and claim 11. Claim 1 is a method claim:
1. A computerized method for activating a warning
device on a train at a location comprising the steps
of:
maintaining a database of locations at
which the warning device must be acti-
vated and corresponding regulations con-
cerning activation of the warning device;
obtaining a position of the train from a po-
sitioning system;
selecting a next upcoming location from
among the locations in the database based
at least in part on the position;
determining a point at which to activate
the warning device in compliance with a
regulation corresponding to the next up-
coming location; and
activating the warning device at the point.
’110 patent col. 3 ll. 43–56 (emphasis added).
Claim 11 is a system claim that recites a “control unit”
configured to perform the selecting and determining steps
recited in claim 1.
Id. col. 4 ll. 17–19. As relevant here,
dependent claims 8 and 18 depend from claims 1 and 11,
respectively, and further require that the database receive
wireless updates. The claims of the ’049 patent are nearly
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SIEMENS MOBILITY, INC. v. IANCU 5
identical to those of the ’110 patent, but the claimed posi-
tioning system additionally provides the speed of the train.
In this appeal, the parties focus on independent claims
1 and 11 of both patents, and the fate of dependent claims
2–7, 9, 11–17, and 19 rises and falls with that of claims 1
and 11. The parties also raise separate arguments regard-
ing dependent claims 8 and 18.
Westinghouse Air Brake Technologies Corporation
(“Westinghouse”) petitioned for inter partes review, chal-
lenging claims of both patents under 35 U.S.C. § 103. As
relevant here, Westinghouse challenged claims 1–7, 9, 11–
17, and 19 of both patents as obvious in view of U.S. Patent
7,095,861 (“Byers”), which teaches digital sound processing
techniques to adjust train-horn sound based on location,
and challenged claims 8 and 18 of both patents as obvious
over Byers and U.S. Patent 5,620,155 (“Michalek”), which
discloses a system that enables trains to wirelessly signal
their approach to upcoming rail crossings. In both proceed-
ings, the Board concluded that all challenged claims would
have been obvious over Byers or Byers and Michalek.
Three aspects of the Board’s decisions are at issue in
this appeal: (1) the Board’s construction of “corresponding
regulations,” (2) the Board’s evaluation of Siemens’s evi-
dence of secondary considerations, and (3) the Board’s fact
findings that a person of skill in the art would have com-
bined Byers and Michalek.
First, Siemens argued that “corresponding regula-
tions” should be construed to mean “governing regulations
applicable for each location at which a warning device must
be activated, such as federal or state rules.” J.A. 312. The
Board disagreed. In the Board’s view, Siemens’s construc-
tion required multiple governing regulations per location
because Siemens repeatedly argued that, at least for some
locations, the control unit selected between state and fed-
eral regulations. The Board, however, declined to import
from the specification a limitation that would require
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6 SIEMENS MOBILITY, INC. v. IANCU
multiple regulations for individual locations. Ultimately,
the Board rejected Siemens’s proposed construction, ex-
plaining that the “plain language” of claims 1 and 11 is “a
database of locations (i.e., plural) at which the warning de-
vice must be activated and corresponding regulations (i.e.,
plural) concerning activation of the warning device, and a
regulation (i.e., one or more regulations), corresponding to
the next upcoming location.” ’110 Decision, slip op. at 18.
Based on this construction, the Board found that Byers dis-
closes, teaches, or suggests each of the limitations in claims
1 and 11.
For claims 1 and 11, Siemens also cited licenses to the
Board as objective evidence supporting nonobviousness,
which the Board rejected because Siemens failed to provide
adequate evidence regarding the “circumstances surround-
ing the license[s].”
Id. at 37. Evaluating the record, the
Board also found that the licenses were either provided for
a nominal fee or lacked royalty rate information, so it was
unclear whether the licenses resulted from recognition and
acceptance of the validity of the patents or from another
reason unrelated to the merits of the patents. The Board
similarly rejected evidence regarding a licensing request
and testimony from fact witnesses regarding the strength
and merit of the patented technology for lack of nexus.
The Board then considered claims 8 and 18 of both pa-
tents. Claims 8 and 18 rely on wireless communication to
update the claimed database, and Westinghouse argued
that Byers in combination with Michalek teach this added
limitation. The Board found that a skilled artisan would
have recognized that the problem identified in Michalek,
outdated data in an onboard database, would be present in
Byers and would have looked to Michalek’s wireless updat-
ing solution. Based on this combination, the Board held
the remaining claims unpatentable.
Siemens appealed, and we have jurisdiction under 28
U.S.C. § 1295(a)(4)(A) and 35 U.S.C. § 141(c).
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SIEMENS MOBILITY, INC. v. IANCU 7
Westinghouse chose not to defend its successes in the IPRs,
and the Director intervened in the appeal under 35
U.S.C. § 143.
DISCUSSION
We review the Board’s legal determinations de novo, In
re Elsner,
381 F.3d 1125, 1127 (Fed. Cir. 2004) (citing In re
Kollar,
286 F.3d 1326, 1329 (Fed. Cir. 2002), and its fact
findings for substantial evidence, In re Gartside,
203 F.3d
1305, 1316 (Fed. Cir. 2000). A finding is supported by sub-
stantial evidence if a reasonable mind might accept the ev-
idence as sufficient to support the finding. Consol. Edison
Co. v. NLRB,
305 U.S. 197, 229 (1938).
We review the Board’s ultimate claim constructions de
novo and its underlying factual determinations involving
extrinsic evidence for substantial evidence. Skky, Inc. v.
MindGeek, s.a.r.l.,
859 F.3d 1014, 1019 (Fed. Cir.
2017), cert. denied,
138 S. Ct. 1693 (2018) (citing Microsoft
Corp. v. Proxyconn, Inc.,
789 F.3d 1292, 1297 (Fed. Cir.
2015)). In this case, the Board gave the claims their broad-
est reasonable interpretation. ’110 Decision, slip op. at 8;
see Skky,
Inc., 859 F.3d at 1019 (citing Cuozzo Speed
Techs., LLC v. Lee,
136 S. Ct. 2131, 2142–46 (2016)).
Obviousness is a question of law, supported by under-
lying fact questions. In re Baxter Int’l, Inc.
678 F.3d 1357,
1361 (Fed. Cir. 2012). In evaluating obviousness, we con-
sider the scope and content of the prior art, differences be-
tween the prior art and the claims at issue, the level of
ordinary skill in the pertinent art, and any relevant sec-
ondary considerations. Graham v. John Deere Co.,
383
U.S. 1, 17–18 (1966).
Siemens argues that the Board erred in three respects:
(1) in its construction of “corresponding regulations” and
resulting analysis for obviousness; (2) in its evaluation of
secondary considerations; and (3) in its factual
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8 SIEMENS MOBILITY, INC. v. IANCU
determination that a person of skill would have combined
Byers with Michalek. We address each issue in turn.
I. “Corresponding Regulations”
In this appeal, Siemens again maintains that “corre-
sponding regulations” means “governing regulations appli-
cable for each location at which a warning device must be
activated, such as federal or state rules.” Siemens Br. 26
(emphasis added). This construction, which is repeated
throughout Siemens’s briefing, appears to require plural
governing regulations for each location in the database. In
Siemens’s view, the invention necessarily requires the abil-
ity to choose between two or more potentially conflicting
regulations if present in the database. Reply Br. 5. Despite
this assertion and the phrasing of its proposed construc-
tion, Siemens also repeatedly argues that its construction
does not require multiple regulations to be stored per loca-
tion. See, e.g., Siemens Br. 21.
The Director responds that there is nothing in the
claim language restricting the form or nature of corre-
spondence between regulations and locations. According to
the Director, there is no description of conflicts between
federal, state, or other regulations or any particular meth-
odology or database structure prescribed in the specifica-
tion and no basis to import a conflicts-resolution process
into the claims.
We agree with the Director and with the Board that the
broadest reasonable interpretation of “corresponding regu-
lations” is “a database of locations (i.e., plural) at which the
warning device must be activated and corresponding regu-
lations (i.e., plural) concerning activation of the warning
device, and a regulation (i.e., one or more regulations) cor-
responding to the next upcoming location.”
We begin our analysis with the claim language. The
term “corresponding regulations” appears in the claims in
connection with a database of locations at which the train
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SIEMENS MOBILITY, INC. v. IANCU 9
horn will be activated. The database includes both “loca-
tions” and “corresponding regulations concerning activa-
tion of the warning device.” ’110 patent col. 3 ll. 44–47.
Nothing in the language of the claims, however, defines the
relationship between the number of locations and number
of regulations. At best, the plain language of the claims
suggests that the database generally contains multiple lo-
cations and multiple regulations. But the claims do not re-
quire that multiple regulations be stored for any single
location.
This interpretation is reinforced by the language of the
“determining” step, which requires “determining a point at
which to activate the warning device in compliance with a
regulation corresponding to the next upcoming location.”
Id. col. 3. ll. 53–55 (emphasis added). By using the phrase
“a regulation,” the claim indicates that one or more regula-
tions could correspond to any individual location. See
Elkay Mfg. Co. v. Ebco Mfg. Co.,
192 F.3d 973, 977 (Fed.
Cir. 1999). Construing the claim to require multiple regu-
lations per location would be eliminate the option of one
regulation encompassed by the use of the article “a.” See
N. Am. Vaccine, Inc. v. Am. Cyanamid Co.,
7 F.3d 1571,
1576 (Fed. Cir. 1993) (explaining that “a” has a “normal
singular meaning” but can mean one or more).
The specification also supports this reading. There is
only one exemplary embodiment in the patent, Figure 2.
Figure 2 provides that a location can be subject to a state
rule, but, in the absence of a state rule, the invention
sounds the warning device in accordance with a specific
federal regulation, 49 C.F.R. § 222.21. Figure 2 offers no
description, however, of a conflict between regulations or
any indication of how the invention would resolve such a
conflict. Even if it were proper to import a new limitation
about resolving conflicts between regulations into the
claims from the specification, Figure 2 provides no basis to
do so.
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10 SIEMENS MOBILITY, INC. v. IANCU
Siemens argues that “[t]here would be no point to [Fig-
ure 2’s] steps if the system was only able to store and apply
one regulation.” Siemens Br. 34. But Figure 2 clearly con-
templates locations for which only one regulation is stored
and applied. The process outlined in Figure 2 begins by
determining the next grade crossing and determining
whether it is subject to a state rule. If it is not, the horn is
activated in accordance with a specific federal regulation,
49 C.F.R. § 222.21. Thus, following the process in Figure
2, a location with no state rule only has one “corresponding
regulation,” § 222.21. Contrary to Siemens’s assertions,
Figure 2 is not at odds with the Board’s construction.
Having considered Siemens’s remaining arguments,
we are persuaded that the Board’s construction is correct.
Siemens makes additional arguments concerning the
Board’s reading of Byers, but these arguments hinge on our
acceptance of Siemens’s claim construction position, so we
need not reach them here.
II. Secondary Considerations
Next, Siemens argues that the Board misinterpreted
the law regarding secondary considerations. Siemens pre-
sented two license agreements to the ’049 and ’110 patents
that it submits were entitled to a presumption of nexus to
the claimed subject matter. Siemens also presented evi-
dence regarding Westinghouse’s request to license and tes-
timony from Westinghouse employees regarding the
strength of the patents. In Siemens’s view, the Board im-
properly discounted this evidence for lack of nexus.
In evaluating obviousness, we consider secondary con-
siderations to “give light to the circumstances surrounding
the origin of the subject matter sought to be patented.”
Graham, 383 U.S. at 17–18. “A nexus is required between
the merits of the claimed invention and the evidence of-
fered, if that evidence is to be given substantial weight en-
route to conclusion on the obviousness issue.” Stratoflex,
Inc. v. Aeroquip Corp.,
713 F.2d 1530, 1539 (Fed. Cir. 1983)
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SIEMENS MOBILITY, INC. v. IANCU 11
(citing Solder Removal Co. v. Int’l Trade Comm’n,
582 F.2d
628, 637 (CCPA 1978)). The patentee bears the burden of
establishing a nexus between claimed features of the in-
vention and the objective evidence offered to show non-ob-
viousness. WMS Gaming, Inc. v. Int’l Game Tech.,
184 F.3d
1339, 1359 (Fed. Cir. 1999) (citing Cable Elec. Prods, Inc.
v. Genmark, Inc.,
770 F.2d 1015, 1027 (Fed. Cir. 1985),
overruled on other grounds by Midwest Indus., Inc. v. Kar-
avan Trailers, Inc.,
175 F.3d 1356 (Fed. Cir. 1999)).
Successful licensing is not an “infallible guide to pa-
tentability.” EWP Corp. v. Reliance Universal Inc.,
755
F.2d 898, 907 (Fed. Cir. 1985). Parties may enter into li-
censes because of business judgments, to avoid litigation,
and for other reasons unrelated to obviousness, so the evi-
dentiary value of licenses must be “carefully appraised.”
Id. at 908. Here, however, we need not resolve whether
Siemens was entitled to a presumption of nexus for its li-
censing evidence because the licenses are of little eviden-
tiary value in the obviousness analysis. See DyStar
Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick
Co.,
464 F.3d 1356, 1371 (Fed. Cir. 2006) (holding based on
the record that “[t]he presence of certain secondary consid-
erations of nonobviousness are insufficient as a matter of
law to overcome our conclusion that the evidence only sup-
ports a legal conclusion that claim 1 would have been obvi-
ous”); see also Agrizap, Inc. v. Woodstream Corp.,
520 F.3d
1337, 1344 (Fed. Cir. 2008).
First, we note that the Board’s factual critiques of the
licensing evidence are supported by substantial evidence.
As the Board correctly found, the license agreement with
Norfolk Southern expressly indicates that the company
sought the license to “promote interoperability across mul-
tiple suppliers.” ’110 Decision, slip op. at 39; see also J.A.
850. The Norfolk Southern license was presented to the
Board with royalty information redacted, see J.A. 853–54,
and another license was provided only for a “nominal fee.”
’110 Decision, slip op. at 39. The Board considered a license
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12 SIEMENS MOBILITY, INC. v. IANCU
request from Westinghouse but concluded that the license
may have been sought for other reasons, including to avoid
the cost of an already-pending patent infringement suit.
Id. at 40. And with respect to employee testimony concern-
ing the strength of Siemens’s patents, the Board was not
persuaded that the testimony was related to the ’110 and
’049 patents just because it referred to a “horn sequencing
patent” or addressed “automatic horn activation,” without
any connection to the language of the claims.
Id. at 41–42.
Based on the contextual information the Board reviewed,
its determination that the licensing evidence “provide[d] a
scant basis for assessing the value of the ’110 patent” is
supported by substantial evidence.
Id. at 39.
Siemens’s “scant” evidence of licensing is afforded little
weight. As the Board correctly found, Byers discloses a da-
tabase that stores locations of grade crossings on a rail line
and related “trigger positions,” site-specific parameters at
which the train horn is activated in compliance with gov-
erning regulations.
Id. at 20–21. Byers thus clearly
teaches “maintaining a database of locations at which the
warning device must be activated and corresponding regu-
lations concerning the activation of the warning device,” as
required by the first step of claim 1. As to step 2, Byers
further discloses a position sensor, which “obtain[s] a posi-
tion of the train from a positioning system.” Claim 1’s next
steps require “selecting a next upcoming location from
among the locations in the database at least in part on the
position,” “determining a point at which to activate the
warning device in compliance with a regulation corre-
sponding to the next upcoming location,” which Byers
teaches in its disclosure comparing the train’s current po-
sition with the trigger positions in the database to deter-
mine whether the train horn should be activated. The last
step of claim 1, “activating the warning device at the point”
is also taught by Byers’s disclosure of activation of a train
whistle based on inputs from a proximity sensor or GPS
receiver. Siemens has not contested that Byers teaches
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SIEMENS MOBILITY, INC. v. IANCU 13
every limitation of claim 1 under the Board’s and our con-
struction of corresponding regulations, and Siemens’s evi-
dence of licensing is not persuasive in this obviousness
analysis, even if a nexus connecting the licenses to the pa-
tents is presumed.
Siemens urges us to adopt its view of the facts, but on
this record, the Board’s findings are clearly supported by
substantial evidence. Thus, we are persuaded that the
Board’s decision that claims 1 and 11 would have been ob-
vious in view of Byers is supported by substantial evidence.
Because Siemens’s challenge to the Board’s determination
that dependent claims 2–7, 9, 12–17, and 19 would have
been obvious depends on our acceptance of its arguments
regarding claims 1 and 11, we likewise conclude that the
Board’s decision that the dependent claims would have
been obvious in view of Byers is supported by substantial
evidence.
III. Claims 8 and 18
Siemens separately challenges the Board’s obviousness
determination for claims 8 and 18, arguing that a skilled
artisan would not have modified Byers with Michalek. Ac-
cording to Siemens, the problem of outdated data is not a
reason to combine these references because Byers does not
store the type of information that Michalek obtains wire-
lessly.
We disagree with Siemens. Substantial evidence sup-
ports the Board’s finding that a skilled artisan would have
recognized that the problem of outdated data in Michalek
would have been present in Byers and would have looked
to Michalek’s wireless updating as a potential solution.
Siemens argues that the references deal with different
types of data and would not have been combined; but
claims 8 and 18 do not require updating any specific type
of data within the database. And even if Siemens could
provide a reason to believe that the distinction between
data types matters, we cannot conclude that the Board’s
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14 SIEMENS MOBILITY, INC. v. IANCU
decision otherwise lacked substantial evidence. Siemens
may disagree with the Board’s evaluation of the record, but
the Board’s findings and ultimate conclusion that claims 8
and 18 would have been obvious over the references meet
the substantial evidence standard. Consol.
Edison, 305
U.S. at 229.
CONCLUSION
We have considered Siemens’s remaining arguments
but find them unpersuasive. Accordingly, the Board’s de-
cisions holding claims 1–9 and 11–19 of the ’049 and ’110
patents unpatentable is affirmed.
AFFIRMED
