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        NOTE: This disposition is nonprecedential.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.

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].”

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, 

, 1127 (Fed. Cir. 2004) (citing In re
 Kollar, 

, 1329 (Fed. Cir. 2002), and its fact
 findings for substantial evidence, In re Gartside, 

, 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, 

, 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., 

, 1019 (Fed. Cir.
 2017), cert. denied, 

(2018) (citing Microsoft
 Corp. v. Proxyconn, Inc., 

, 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, 

(citing Cuozzo Speed
 Techs., LLC v. Lee, 

, 2142–46 (2016)).
     Obviousness is a question of law, supported by under-
 lying fact questions. In re Baxter Int’l, Inc. 

,
 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., 

, 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.”

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., 

, 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., 

,
 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.”
 

–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., 

, 1539 (Fed. Cir. 1983)
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 SIEMENS MOBILITY, INC.   v. IANCU                          11



 (citing Solder Removal Co. v. Int’l Trade Comm’n, 

, 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., 

, 1359 (Fed. Cir. 1999) (citing Cable Elec. Prods, Inc.
 v. Genmark, Inc., 

, 1027 (Fed. Cir. 1985),
 overruled on other grounds by Midwest Indus., Inc. v. Kar-
 avan Trailers, Inc., 

(Fed. Cir. 1999)).
     Successful licensing is not an “infallible guide to pa-
 tentability.” EWP Corp. v. Reliance Universal Inc., 

, 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.”

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., 

, 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., 

, 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.

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.

 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.

      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.

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. 

.
                        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