IPR claim construction and obviousness findings affirmed (insufficient evidence of nexus between claims and license agreements)

Siemens Mobility, Inc. v. USPTO
Docket No. 2019-1732, -1752 (IPR2017-01669, -02044
LOURIE, MOORE, O’MALLEY
September 8, 2020
Non-precedential

Brief Summary: Board IPR claim construction and obviousness conclusions affirmed (e.g., insufficient evidence nexus between claims and secondary considerations (license agreements)).

Summary: Siemens appealed two IPR final written decisions (FWDs) holding certain claims of US 6,609,049 and US 6,824,110 directed to methods and systems for automatically activating a train warning device unpatentable for obviousness. The method claims included “maintaining a database of locations…and corresponding regulations”, “obtaining a position of the train” (and speed in ‘049 claims), “select[ing] a next upcoming location”, “determining a point at which to activate the warning device”, “and activating the warning device at the point.” The system claims include a “control unit” that carries out the method steps and “further require that the database receive wireless updates.” Westinghouse challenged the claims as obvious in view of the Byers and Michalek US patents. Siemens argued the Board misconstrued “corresponding regulations”. The FC panel explained that “[t]he Board…declined to import from the specification that would require multiple regulations for individual locations” and relied on the “plain language of the claims” (“nothing in the claim language restricting the form or nature of correspondence between regulations and locations”) which it concluded the Byers patent “discloses, teaches, or suggests”. The FC panel agreed with the Board’s claim construction since, e.g., requiring “multiple regulations per location would eliminate the option of one regulation encompassed by the use of the article ‘a’” (N. Am. Vaccine, FC 1993 (“explaining that ‘a’ has a ‘normal singular meaning’ but can mean one or more”)) and is supported by the specification (e.g., “Figure 2 clearly contemplates locations for which only one regulation is stored and applied.”) Siemens also argued “the Board misinterpreted the law regarding secondary considerations”. The FC panel explained that effective evidence of secondary considerations must show a “nexus…between the merits of the claimed invention and the evidence offered” (Stratoflex, FC 1983) and “[t]he patentee bears the burden of establishing” that nexus (WMS Gaming, FC 1999). Siemens submitted evidence of licensing which the FC panel explained “is not an ‘infallible guide to patentability’” (EWP, FC 1985) and that here “the licenses are of little evidentiary value” (DyStar, FC 2006; Agrizap, FC 2008) (e.g., “employee testimony…related to…a ‘horn sequencing patent’ or addressed ‘automatic horn activation,’ without any connection to the language of the claims”). The FC panel also agreed with the Board’s conclusions of invalidity for obviousness.