Metrom Rail, LLC v. Siemens Mobility, Inc.

Metrom Rail, LLC v. Siemens Mobility, Inc. The court affirmed the Board's obviousness determinations for all claims of the '227 patent and claims 1–16 of the '131 patent. On the cross-appeal, it reversed the Board's finding that claims 17–20 of the '131 patent were not unpatentable, holding that "data representing the separation distance" in limitation 17C covers the data used in the time-of-flight calculation, not only the computed distance. Judge Taranto dissented on claims 17–20. The panel corrected a claim construction the Board had adopted from a patent owner's sur-reply and reversed to unpatentability, while a dissent objected on party-presentation and forfeiture grounds. The case also shows how nexus, untimely sur-reply arguments, and preservation can be decisive in IPR appeals. Affirmed-in-part and reversed-in-part. Secondary considerations: the Board found Metrom's AURA CAS product had important unclaimed features, so no presumption of nexus applied. Metrom's expert also did not identify unique characteristics of the invention that drove demand. Substantial evidence supported these findings, and the evidence did not weigh toward nonobviousness. Claim 1 of each patent: Metrom did not contest obviousness over Grisham in its patent owner responses beyond secondary considerations. The Board did not err in treating the later sur-reply arguments as untimely and forfeited, and the court declined to consider them. Claims 2–4 and 7: the claims require no particular precision for train location, so Douglas's disclosure satisfied the 'track a location' limitation. Substantial evidence supported the Board's motivation to combine Grisham's UWB system with Nixon's GPS. Claims 17–20 of the '131 patent: the Board erred in construing 'data representing the separation distance' in limitation 17C as only the computed distance. Limitations 17B and 17G show it is the data used in the time-of-flight technique, and Metrom's own district court complaint said as much. Metrom conceded at oral argument that Grisham transmits such data over the air, so claims 17–20 are unpatentable. Judge Taranto concurred in part and dissented as to claims 17–20. He would have found a double forfeiture of this claim construction, before the Board and on appeal, and would have affirmed because the Board did not abuse its discretion in refusing late reliance on a new Grisham passage. The majority said the issue was raised before the Board and chose to reach the merits despite weak appellate briefing. § 103 claim construction waiver / forfeiture non-precedential