evidence of secondary considerations : CAFC Alert


| October 10, 2020

Siemens Mobility, Inc. v. U.S. PTO

September 8, 2020

Lourie (author), Moore, and O’Malley


The Federal Circuit affirmed the PTAB’s final decision that claims of Siemens’s patents are unpatentable as obvious.  The Federal Circuit found that the PTAB’s findings in claim construction of “corresponding regulations,” and evaluation of Siemens’s evidence of secondary considerations are clearly supported by substantial evidence.


Siemens Mobility, Inc. (“Siemens”) appeals from two final decisions of the PTAB, where the PTAB held that claims 1-9 and 11-19 of U.S. Patent No. 6,609,049 (“the ‘049 patent) and claims 1-9 and 11-19 of U.S. Patent No. 6,824,110 (“the ‘110 patent) were unpatentable. 

The ‘049 patent and ‘110 patent

            Siemens’s ‘049 and ‘110 patents are directed to methods and systems for automatically activating a train warning device, including a horn, at various locations.  The systems include a control unit, a GPS receiver, and database of locations of grade crossings, and a horn.  Siemens’s two patent disclose that if that grade crossing is subject to state regulations, the horn is activated based on those state regulations.  If that grade crossing is not subject to state regulations, Siemens’s system considers that crossing as subject to a Federal Railroad Administration regulation and sounds the horn when the train is 24 seconds or fewer away from the crossing.

            Independent claim 1 of ‘110 patent:

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 activated

and corresponding regulations concerning activation of the warning device;

obtaining a position of the train from a positioning 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 upcoming location; and

activating the warning device at the point.

            The claims of the ‘049 and ‘110 patents substantially similar.


            Westinghouse Air Brake Technologies Corporation (“Westinghouse”) petitioned for IPR, challenging claims of both ‘049 and ‘110 patents under §103. 

            The PTAB found that all challenged claims would have been obvious over two references (Byers and Michalek).  In addition, the PTAB did not found Siemens’s evidence of secondary considerations to be persuasive.  Finally, the PTAB found that a skilled artisan would have combined the teachings of both references.

            Siemens appealed.


            Three aspects of the PTAB decisions at issue in the appeal:

  1. The board’s claim construction of “corresponding regulations”;
  2. The board’s evaluation of Siemens’s evidence of secondary considerations; and
  3. The board’s findings of a person of skill in the art would have combined both references.

As for the second issue, Siemens presented two license agreements to both patents.  Also, Siemens provided evidence regarding Westinghouse’s request to license and testimony from Westinghouse employees regarding the strength of two patents. 

Siemens argued that the PTAB improperly discounted this evidence for lack of nexus.

            The CAFC did not find those license agreements to be persuasive.

            The CAFC noted that the license agreement with Norfolk Southern was presented to the PTAB with royalty information redacted and that another license was provided only for a nominal fee.  Also, the CAFC noted that a license request from Westinghouse was for avoiding the cost of a pending patent infringement suit.

Furthermore, the CAFC agreed with the PTAB’s position that testimony from Westinghouse “provided a scant basis for accessing the value of the ‘110 patent” because while the testimony referred to a “horn sequencing patent” or “automatic horn activation,” it did not provide any connection to the language of the claims.

Therefore, the CAFC held that the PTAB’s findings were clearly supported by substantial evidence.


  • In the obviousness analysis, a nexus is required between the merits of the claimed invention and the offered evidence.
  • Licensing agreements and testimonies could be used as evidence of secondary considerations to overcome obviousness only when they provide a “nexus” to the patents at issue.

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