Litigation

Siemens Mobility, Inc. v. Metrom Rail, LLC

not instituted (procedural)

IPR2023-00452

Filed
2023-01-10
Terminated
2023-07-27

Patents at issue (1)

Defendants (1)

Summary

PTAB inter partes review petition by Siemens Mobility, Inc. et al. against Metrom Rail, LLC's '363 patent. Metrom filed a preliminary response and statutory disclaimer, and the Board did not institute the proceeding; petitioner refund was approved on July 27, 2023.

Case overview & background

Plain-language overview of the case: parties, accused product, patents at issue, and why the suit matters.

I'll research this case thoroughly using web searches.

Let me dig deeper into the specific IPR and the parallel district court litigation.

Let me verify the IPR termination specifics and the district court case's procedural posture.

Case Overview & Background

A note on the caption first. The metadata caption for IPR2023-00452 ("Siemens Mobility, Inc. v. Metrom Rail, LLC") is the PTAB proceeding, where the petitioner is named first. The underlying infringement litigation runs the other way: Metrom Rail, LLC v. Siemens Mobility, Inc., No. 1:22-cv-00049-RGA (D. Del., filed Jan. 13, 2022), in which Metrom is the patent-owner plaintiff and Siemens and co-defendants are the accused infringers. The IPR is best understood as one front in a multi-front campaign, not as a standalone suit.

Parties

Metrom Rail, LLC is a small operating company headquartered in Lakemoor/Crystal Lake, Illinois that since ~2010 has developed and sold ultra-wideband (UWB)-based rail safety, train-control, and signaling products (its commercial product is the AURA CAS collision-avoidance system). It is a practicing entity / patent owner, not a classic NPE/PAE — its 2022 press release emphasizes it "has been developing and selling UWB-based safety systems to the railroad industry since 2010" and holds a portfolio of eight issued U.S. patents (Metrom press release, Jan. 18, 2022). Siemens Mobility, Inc. is the U.S. rail arm of Siemens AG; co-defendants/petitioners are Humatics Corp. (UWB radio supplier), Piper Networks, Inc. (systems integrator), and Thales Transport & Security / Thales USA, now Ground Transportation Systems USA, Inc. and later acquired into Hitachi Rail GTS USA Inc. (Fed. Cir. caption, No. 24-2223). Patent-owner counsel is McAndrews, Held & Malloy (Gregory C. Schodde, Ronald Spuhler, Alejandro Menchaca); petitioner counsel is Crowell & Moring (Vincent Galluzzo) and Wolf, Greenfield & Sacks (Gregory S. Nieberg), per the IPR papers and the Federal Circuit opinion.

Accused Technology and Asserted Patents

The accused products are UWB-based train-control/signaling and positive-train-control systems that Siemens and Thales (each paired with Humatics and Piper, respectively) sold to MTA New York City Transit under the agency's "Pilot" demonstration project (RFP No. W-81199, awarded July 2021; contract nos. W-81199-1/-2), and which Metrom alleges will be used in future large-scale signaling replacements. Metrom also charges contributory and induced infringement based on interoperability between the Siemens/Humatics and Thales/Piper systems (Amended/2d Am. Complaint allegations; D. Del. Memorandum Order, D.I. 51). The asserted patents, per the press release and docket, are:

  • U.S. 10,778,363 ('363) – "Methods and Systems for Decentralized Rail Signaling and Positive Train Control": wayside units + train-mounted units communicating via UWB signals to generate train-control information (priority date 2017-08-03; the patent at issue in IPR2023-00452).
  • U.S. 8,812,227 ('227) – rail collision-avoidance system using UWB units and time-of-flight separation ranging.
  • U.S. 9,043,131 ('131) – related collision-avoidance system (common specification with '227).
  • U.S. 10,737,709 ('709) – "Worker Protection System" (train-mounted + wayside UWB units alerting track workers).
  • U.S. 10,179,595 ('595) – techniques for determining train motion characteristics.
  • (Later-added) U.S. 9,731,738 ('738) – "Rail Vehicle Signal Enforcement and Separation Control," asserted in the 2023 D. Del. case and the subject of IPR2024-00947.

Procedural Posture and Why It Matters

The case sits in D. Del. before Judge Richard G. Andrews — a long-standing center of patent litigation chosen by Metrom (Delaware, home to both Siemens Mobility's U.S. operations and many defendants), with a jury demand and a 35 U.S.C. § 271 cause of action. The PTAB parallel track is dense: in January 2023 Siemens, Ground Transportation Systems USA, Humatics, and Piper filed a coordinated set of IPRs against the '363, '227, '131, '595, and '595-family patents (IPR2023-00439, -00452, -00460, -00468, -00470), and later against the '738 (IPR2024-00947). In IPR2023-00452 specifically, Metrom filed a statutory disclaimer under 35 U.S.C. § 253 of challenged claims 1–16 of the '363 patent (Patent Owner Exhibit 2001, Apr. 19, 2023) alongside its preliminary response (Paper 9). Because 37 C.F.R. § 42.107(e) bars institution "based on disclaimed claims," the Board denied institution (Paper 10, July 14, 2023); petitioners requested a $22,500 post-institution fee refund (Paper 11, July 26, 2023), which the Board approved (Paper 12, July 27, 2023) — the "terminated" date in your metadata (Patexia IPR2023-00452 docket; IPVerse/GreyB case page).

The case is notable for several reasons. It is a David-vs.-Goliath assertion by a small UWB-rail innovator against the incumbent signaling vendors over a contested MTA New York City Transit modernization contract — Metrom won the MTA "Genius Challenge" for signaling in 2018, but the 2019 UWB solicitation went to Siemens/Humatics and Thales/Piper, and Metrom's complaint adds tortious-interference and civil-conspiracy counts, alleging Siemens obtained Metrom's bid and lobbied the MTA through undisclosed consultants (the tortious-interference claim survived preemption only as to Siemens). Metrom also alleges Siemens filed derivative patent applications (WO 2019/030018 and U.S. App. Nos. 16/516,456; 16/778,529; 16/778,595) claiming Metrom's UWB inventions. The IPR linkage is unusually outcome-determinative: the Board invalidated all claims of the '227 and '131 (claims 1–16) as obvious over Grisham (U.S. 6,759,948) and Nixon (WO 03/009254), and on May 11, 2026 the Federal Circuit affirmed in part and reversed in part in Metrom Rail, LLC v. Siemens Mobility, Inc., No. 24-2223, holding the Board erred in construing "data representing the separation distance" and finding '131 claims 17–20 obvious too (Judge Taranto dissented on the cross-appeal; Metrom has sought rehearing/en banc). The statutory-disclaimer strategy in the '363 IPR is itself a case-study in how a patent owner can moot a PTAB challenge (and the petitioner's estoppel exposure) by disclaiming the challenged claims before institution. Finally, the dispute has expanded geographically and temporally: a severed S.D.N.Y. action (23-cv-5097, with a Jan. 29, 2024 opinion at ECF 90) and a D. Mass. action against the MBTA and Piper (25-cv-11446-ADB, Dec. 8, 2025, transferring the Piper claims to S.D.N.Y. and staying the MBTA claims), plus a 2023 D. Del. case (1:23-cv-00314) against Ground Transportation Systems USA and Piper.

Sourcing caveats: The IPR2023-00452 docket entries (Papers 9–12, Exhibit 2001) and the July 14/27, 2023 dates are well corroborated by Patexia, IPVerse/GreyB, and the Federal Circuit materials. I could not independently verify from PACER the current live status of every related D. Del. docket (22-49-RGA, 23-3057, 23-2920, 23-314), and the exact claim charts/accused-product mapping in the operative complaints should be treated as pleadings rather than adjudicated facts. Metrom's characterization as a non-NPE is based on its self-described operating status and product sales; I found no source labeling it a PAE.

Key legal developments & outcome

Major rulings, motions, claim construction, settlements, and the present posture or final disposition.

I'll research this case. Note upfront: the metadata identifies IPR2023-00452, a PTAB proceeding, but the request asks about a district court litigation. Let me determine whether a parallel district court case exists and gather the record on both tracks.

Good — there's a substantial district court track alongside the IPR. Let me dig into the Delaware and SDNY dockets and the IPR record.

Now let me pin down the IPR numbers, the Delaware transfer, and the PTAB outcomes.

Important framing note

The docket you've given me — IPR2023-00452 — is not a district court infringement action. It is a PTAB inter partes review filed by Siemens Mobility and co-petitioners against Metrom Rail's U.S. Patent No. 10,778,363. The infringement litigation you're asking about is the parallel district court case: Metrom Rail, LLC v. Siemens Mobility, Inc., et al., No. 1:22-cv-00049-RGA (D. Del.), later transferred to and severed in the S.D.N.Y. as Nos. 23-cv-02920-DLC and 23-cv-03057-MKV. Below I trace the litigation chronologically and weave in the IPR track, including IPR2023-00452.

A caveat on sourcing: I was able to verify the key events from PTAB records, the Federal Circuit opinion, a Delaware memorandum order, and an S.D.N.Y. stay opinion. A few dates (noted) I could not pin to a primary docket entry.


1. Filing and initial pleadings

  • 2022-01-13 — Metrom Rail, LLC files No. 1:22-cv-00049-RGA (D. Del.) against Siemens Mobility, Inc.; Thales Transport & Security, Inc.; Thales USA, Inc.; Humatics Corp.; and Piper Networks, Inc. Assigned to Judge Richard G. Andrews. Jury demand. The complaint asserts five patents: U.S. 10,778,363; 8,812,227; 9,043,131; 10,737,709; and 10,179,595 (D.I. 1; Report to Commissioner, D.I. 3). Metrom's press release (2022-01-18) confirms the five patents plus claims for tortious interference with prospective economic advantage and conspiracy.
  • 2022-04-26 — First Amended Complaint (D.I. 32): five counts of patent infringement against two defendant groups, plus a count of tortious interference with prospective economic advantage and a count of civil conspiracy against all defendants. The theory: the MTA's "Pilot" UWB-based collision-avoidance project, awarded to Siemens/Humatics and Thales/Piper in July 2021, infringed Metrom's rail-safety patents and was procured through interference.
  • Service on all defendants was effected 2022-01-14 (answers due 2022-02-04).
  • Counsel: Farnan LLP (Brian E. Farnan, Michael J. Farnan) and McAndrews, Held & Malloy (Gregory C. Schodde) for Metrom; Morris, Nichols, Arsht & Tunnell (Karen Jacobs, Cameron P. Clark) for the Siemens/Thales side, with Crowell & Moring; Wolf Greenfield & Sacks (Gregory S. Nieberg) for the petitioner group in the IPRs. (I did not verify the full appearance list for every defendant.)

2. Pre-trial motions of substance (Delaware)

  • Motions to dismiss (D.I. 37 and D.I. 39) — filed by each defendant group, seeking dismissal of all counts; motion to sever (D.I. 41); fully briefed (D.I. 38, 40, 42, 45–49).
  • Memorandum Order (D.I. 51, Judge Andrews) — the substantive ruling on those motions. Held:
    • Direct infringement pleaded plausibly against Siemens and Thales, but not against Humatics and Piper (they were subcontractors; Metrom's "reasonable opportunity for discovery" pleading was insufficient for them). [Note: I could not verify the exact issuance date of D.I. 51 from the sources retrieved; the briefing and subsequent transfer indicate late 2022 / early 2023.]
    • Indirect (induced and contributory) infringement and willfulness sufficiently pleaded, with knowledge dating to Metrom's 2019-06-24 letter identifying three of the five patents, and to the 2022-01-13 complaint for the other two.
    • Tortious interference preempted by federal patent law as to Humatics, Piper, and Thales, but not preempted as to Siemens, because the Siemens-specific allegations (obtaining Metrom's bid amount, undisclosed consultant lobbying of the MTA) go beyond patent infringement. Source: Memorandum Order, Metrom Rail, LLC v. Siemens Mobility, Inc., No. 22-49-RGA, D.I. 51.
  • Transfer and severance — The Delaware action was transferred to the S.D.N.Y. and severed into two cases (D. Del. transfer per PTAB FWD in IPR2023-00470, noting Metrom's report; the resulting S.D.N.Y. dockets carry an April 2023 date):
    • Metrom Rail, LLC v. Siemens Mobility, Inc. & Humatics Corp., No. 23-cv-03057-MKV (S.D.N.Y.) — Judge Mary Kay Vyskocil.
    • Metrom Rail, LLC v. Ground Transportation Systems USA, Inc. & Piper Networks, Inc., No. 23-cv-02920-DLC (S.D.N.Y.) — Judge Denise Cote.
    • I should flag an unresolved ambiguity: whether this was a §1404(a) transfer or a voluntary dismissal and refiling. The PTAB decision describes it as a transfer and severance, but the S.D.N.Y. dockets show an April 2023 filing date rather than the preserved 2022-01-13 date.

3. Claim construction (Markman)

  • No Markman/claim construction ruling in the district court litigation appears in the record I could locate. The case was stayed in the S.D.N.Y. in January 2024 (below) before any construction order, and the Delaware stage ended with the transfer.
  • The only substantive claim-construction dispute on Metrom's rail patents was decided in the IPR appeal: the Federal Circuit construed "data representing the separation distance" in claim 17 of the '131 patent (see §7).
  • Notably, the Federal Circuit's construction of that term drew on Metrom's own district court infringement contentions, where Metrom had argued "data representing the separation distance" is "data used to determine the time of flight" — the opposite of the position it took before the Board. That estoppel-flavored point was decisive on cross-appeal.

4. Discovery milestones

  • No significant discovery milestones are documented in the sources retrieved — the S.D.N.Y. case was stayed before Markman and essentially before merits discovery, and the case was pending in Delaware only ~15 months.
  • The one discovery-adjacent dispute visible in the pleadings is third-party/public-records friction: Metrom alleged in its amended complaint that defendants "frustrat[ed] Metrom's FOIL requests" to the MTA for the Pilot RFP responses and continued to withhold them after suit. That allegation underpinned the willfulness and tortious-interference theories.

5. Stay pending IPR (S.D.N.Y.)

  • 2024-01-29 — Judge Vyskocil stayed the entire S.D.N.Y. action (including the non-patent tortious-interference count) pending the PTAB IPRs: Metrom Rail, LLC v. Siemens Mobility, Inc., No. 23-CV-3057, 2024 WL 323374 (S.D.N.Y. Jan. 29, 2024).
    • Reasoning: three of the four counts (and all counts against Humatics) were patent claims — patent infringement was "the main thrust of this litigation"; the tortious-interference count was "inextricably intertwined" with the patent claims; the PTAB's validity determination could at minimum "narrow the issues" on that count. The court applied the traditional stay factors and found the stage-of-proceeding factor favored a complete stay.
    • This stay ruling has since been cited as persuasive authority by other courts (e.g., an E.D.N.Y. court in 2024 applied its four sub-factors on undue prejudice).

6. Parallel PTAB proceedings

The petitioners — Siemens Mobility, Inc.; Ground Transportation Systems USA, Inc.; Humatics Corp.; and Piper Networks, Inc., with Thales USA, Inc. named as a real party in interest — filed a wave of IPRs (real parties listed in the petitions):

Proceeding Patent Status
IPR2023-00439 not confirmed Instituted/terminated — details not verified
IPR2023-00452 10,778,363 Institution denied; terminated 2023-07-27
IPR2023-00460 not confirmed Details not verified
IPR2023-00468 9,043,131 FWD 2024-06 — mixed outcome
IPR2023-00470 8,812,227 FWD 2024-06 — all claims unpatentable
IPR2024-00947 9,731,738 Discretionary denial under §325(d) — upheld 2025-04-04

IPR2023-00452 — the proceeding in your metadata ('363 patent):

  • Petition filed 2023-01-10 (notice of filing date accorded 2023-01-19).
  • 2023-04-19 — Metrom filed its Patent Owner Preliminary Response together with a statutory disclaimer of the challenged claims (Ex. 2001).
  • 2023-07-14 — Board decision declining institution (Paper 10; Ex. 3001 entered same day). Because statutorily disclaimed claims are treated as if they never existed, the disclaimer mooted the challenge — the classic procedural, non-merits disposition.
  • 2023-07-27 — Proceeding terminated and petitioner's refund request approved (Paper 12). This matches your metadata's termination date and "(procedural)" status. The practical litigation effect: the '363 patent was narrowed or removed from the district court case by Metrom's own disclaimer, which is a notable self-help outcome for the patent owner.

IPR2023-00468 ('131) and IPR2023-00470 ('227):

  • Hearing held 2024-03-28; final written decisions entered June 2024 (the '470 FWD is dated 2024-06-18; Bloomberg Law reported the PTAB result on 2024-06-24).
  • Grounds: obviousness over U.S. 6,759,948 (Grisham) as the primary reference (UWB rail collision avoidance), with WO 03/009254 (Nixon) for GPS and U.S. 8,874,359 (Douglas) for location tracking.
  • Holdings: all claims of the '227 patent unpatentable; claims 1–16 of the '131 patent unpatentable; claims 17–20 of the '131 patent survived because the Board found Grisham did not disclose limitation 17C.
  • Metrom's secondary-considerations case (AURA CAS commercial success, long-felt need, industry skepticism) was rejected for lack of nexus.

IPR2024-00947 ('738 patent): Petition filed 2024-05-22. The Board denied institution; on 2025-04-04 the Delegated Review Panel declined to disturb the discretionary denial under 35 U.S.C. §325(d), while clarifying that "a reference appearing only on a search report is not enough" to qualify as previously presented art. (Source: MLex, 2025-04-04.)

7. Federal Circuit appeal — the pivotal ruling

  • Metrom Rail, LLC v. Siemens Mobility, Inc., No. 24-2223 (Fed. Cir., nonprecedential, opinion 2026-05-11); oral argument audio posted 2026-04-13.
  • Affirmed in part: substantial evidence supported the Board's obviousness findings on the '227 patent and '131 claims 1–16, and the Board correctly denied a presumption of nexus because the AURA CAS product had important unclaimed features (machine-function monitoring, remote data reporting). Fox Factory, Inc. v. SRAM, LLC, 944 F.3d 1366 (Fed. Cir. 2019).
  • Reversed in part (on petitioners' cross-appeal): the Board misconstrued "data representing the separation distance." The court held the term covers the data used in the time-of-flight calculation, not only the computed distance — and expressly noted that Metrom's own district court complaint had taken that same position. Because claims 17–20 of the '131 patent therefore fall on undisputed evidence, the court held them unpatentable as obvious.
  • Result: every claim of both the '131 and '227 patents held unpatentable. A dissent (joined in Metrom's post-decision briefing) argued the majority resolved an issue — a claim-construction theory — that Siemens never properly raised before the Board or in its cross-appeal brief. Metrom filed a combined petition for panel rehearing and rehearing en banc in June 2026; I could not confirm its disposition as of 2026-09-19.

8. Later-filed litigation

  • 2025-12-08 — Judge Burroughs (D. Mass.) in Metrom Rail, LLC v. Massachusetts Bay Transportation Authority & Piper Networks, Inc., No. 25-cv-11446-ADB: found venue improper as to Piper in Massachusetts; transferred the claims against Piper to the S.D.N.Y.; and severed and stayed the claims against the MBTA (which had invoked the customer-suit exception). Source: Massachusetts Lawyers Weekly summary of the 17-page decision.
  • 2026-05-21 (reported date) — Law360 reports that Piper Networks was denied dismissal of a New York federal infringement suit brought by Metrom over its train-safety patents, the court finding the complaint gave Piper adequate notice. [I could not confirm the docket number from the snippet; this most likely corresponds to the 23-cv-02920-DLC action or the newly transferred Piper claims.]

9. Final disposition / current posture

  • No trial, verdict, JMOL, new-trial, or fee motion in the district court litigation is documented. The infringement case never reached the merits — it was stayed pending IPR in January 2024 and has not resumed on the record I could find.
  • The patent side has largely been decided in the PTAB and the Federal Circuit, not the district court. As of 2026-09-19, the '227 and '131 patents stand entirely invalidated by the Federal Circuit's 2026-05-11 opinion (subject to Metrom's pending en banc petition), the '363 patent's challenged claims were disclaimed (mooting IPR2023-00452), and Siemens's challenge to the '738 patent was discretionarily denied.
  • Practical effect on the litigation: the stay is likely to ripen into dispositive motion practice or dismissal as to the '227/'131-patented counts once the appeal is final, while the '738 patent (which survived the IPR stage) and the Siemens-only tortious-interference count remain the live disputes. Metrom's asserted portfolio has thus been reduced from five patents to a much narrower set.

Things I could not verify (flagged rather than asserted)

  • The exact date and full text of D.I. 51 in D. Del. 22-cv-49-RGA.
  • The patents targeted by IPR2023-00439 and IPR2023-00460 (the '709 and '595 patents are the most likely candidates, but I did not confirm this).
  • Whether the Delaware → S.D.N.Y. movement was a §1404(a) transfer or a dismissal and refiling.
  • The current docket status of Nos. 23-cv-02920-DLC and 23-cv-03057-MKV after the Federal Circuit's 2026 decision, and the outcome of Metrom's rehearing petition.
  • Whether the 2026-05-21 Law360 report corresponds to a specific docket number.

Plaintiff representatives

Counsel of record for the plaintiff(s): attorneys, firms, and roles (lead counsel, of counsel, local counsel).

I'll research this case across PTAB records, firm announcements, and related district court litigation.

Let me get the petitioner-side filings specific to IPR2023-00452 and verify firm affiliations.

Let me pin down the IPR2023-00452 petitioner-side counsel specifically and verify the Wolf Greenfield attorney.

Threshold point: who is the "plaintiff" here

IPR2023‑00452 is not a patent‑infringement action — it is an inter partes review petition, so there is no "plaintiff." In this proceeding the party aligned with the "plaintiff" side of the caption is the petitioner, Siemens Mobility, Inc., joined by three co‑petitioners: Ground Transportation Systems USA, Inc. (now Hitachi Rail GTS USA Inc.), Humatics Corp., and **Piper Networks, Inc.**¹ Metrom Rail, LLC is the patent owner/respondent.

The district‑court infringement suit runs the other direction: Metrom Rail, LLC v. Siemens Mobility, Inc. et al., No. 1:22‑cv‑00049‑RGA (D. Del., filed Jan. 13, 2022) (and a later SDNY action, No. 1:23‑cv‑02920‑MKV), where Metrom is plaintiff and Siemens is defendant.² I cover both below so the record is complete.


A. Petitioner‑side counsel (IPR2023‑00452)

Because the petition was not instituted — the Board denied review (Paper 10, July 14, 2023) after Metrom statutorily disclaimed the challenged claims, and approved petitioner's refund (Paper 11, July 26, 2023; Paper 12, July 27, 2023)³ — the fullest counsel list is the one in Metrom's Mandatory Notice (served Jan. 31, 2023), which lists the counsel designated by each petitioner and to whom service was directed.⁴ Grouped by petitioner:

Attorney Role Firm / office Note
Vincent J. Galluzzo (Reg. No. 67,830) Lead counsel for Siemens Mobility, Inc. in the companion IPRs Crowell & Moring LLP — Washington, DC (1001 Pennsylvania Ave. NW) Crowell's designated PTAB lead for Siemens in the parallel Siemens/Metrom IPRs (e.g., IPR2023‑00470).⁵
Mark M. Supko (pro hac vice) Backup counsel, Siemens Mobility Crowell & Moring LLP — Washington, DC Longtime Siemens PTAB/EDIS counsel; also appeared for Siemens in the D. Del. case.⁶
Kassidy L. Schmitz (Reg. No. 77,449) Backup counsel, Siemens Mobility Crowell & Moring LLP — Washington, DC Registered practitioner on the Siemens PTAB team.⁵
Joshua H. James (Reg. No. 72,568) Backup counsel, Siemens Mobility Crowell & Moring LLP — Chicago (455 N. Cityfront Plaza Dr.) Registered practitioner; signed petitioners' updated mandatory notice.⁵
Gregory S. Nieberg (Reg. No. 57,063) Counsel for petitioner Humatics Corp. Wolf Greenfield & Sacks, P.C. — Boston (600 Atlantic Ave.) Wolf Greenfield PTAB practitioner; listed on the -452 service list.⁴ IPVerse identifies "Nieberg, Greg et al." as petitioner counsel of record for IPR2023‑00452.⁷
Nathan R. Speed (pro hac vice) Backup counsel, Humatics Wolf Greenfield & Sacks — Boston Appeared for Humatics here and in the Fed. Cir. appeal.⁴ ⁸
"rgionta"‑ptab@wolfgreenfield.com Counsel (Wolf Greenfield) Wolf Greenfield — Boston Only an email alias appears in the service list; I could not verify the attorney's full name. I found no Wolf Greenfield practitioner named "Gionta," so I am not attributing a name.⁴
Thatcher A. Rahmeier (Reg. No. 65,734) Counsel for Ground Transportation Systems USA, Inc. (Hitachi Rail GTS) Faegre Drinker Biddle & Reath LLP — Wilmington, DE (222 Delaware Ave.) Local/regional counsel for GTS in the PTAB and in D. Del.⁵ ⁶
Zachary D. Kachmer (Reg. No. 75,414) Backup counsel, GTS USA Faegre Drinker — Denver (1144 15th St.) Registered practitioner on the GTS/Faegre team.⁵
Howard N. Wisnia (Reg. No. 37,502) Counsel for petitioner Piper Networks; designated lead counsel for the collective petitioners in a sibling IPR Wisnia P.C. — San Diego (12636 High Bluff Dr.) In IPR2023‑00470 the petitioners collectively named Wisnia lead counsel, succeeding Galluzzo.⁵ Whether the same substitution occurred in -452 is not confirmed by any filing I located.
Nicole S. Cunningham (pro hac vice) Counsel for Piper Networks Dority & Manning, P.A. — San Diego (2869 Historic Decatur Rd.) Appeared for Piper in the IPR family and the Fed. Cir. appeal.⁴ ⁸
Steven A. Moore, Ph.D. (Reg. No. 55,462) Counsel for Piper Networks Dority & Manning — San Diego Registered practitioner; Piper's IPR counsel.⁴ ⁸

Unverified/absent: I found no in‑house counsel named in the -452 filings, and no separate "local counsel" filing (PTAB practice does not require one). The "rgionta" Wolf Greenfield entry is the only name I could not resolve — treat it as an open item rather than invent an attorney.


B. Counsel for the district‑court plaintiff (Metrom Rail, LLC) — for completeness

If what you actually need is the traditional "plaintiff's counsel" in the underlying infringement suit, that is Metrom's side (D. Del. 1:22‑cv‑00049‑RGA):²

  • Brian E. Farnan — Farnan LLP, Wilmington, DE — lead/local counsel (Delaware).
  • Michael J. Farnan — Farnan LLP, Wilmington, DE — Delaware counsel.
  • Gregory C. Schodde (Reg. No. 36,668) — McAndrews, Held & Malloy, Ltd., Chicago — lead PTAB counsel for Metrom; also pro hac vice in D. Del. and on the Fed. Cir. appeal (No. 24‑2223).
  • Ronald H. Spuhler — McAndrews, Held & Malloy, Chicago — pro hac vice; Metrom's patent‑owner backup counsel in the IPRs.
  • Additional Metrom/Fed. Cir. counsel: Rajendra A. Chiplunkar, Philipp Ruben, Christian Havel Hallerud, Alejandro Menchaca (McAndrews) and Lora A. Brzezynski (Faegre Drinker) appear on the appellate entries.⁸

McAndrews publicized one win in this family: the Board's Nov. 20, 2024 refusal to institute an IPR against Metrom's '738 patent (Judges Powell, White, Dougal).⁹


C. Defense‑side counsel in the D. Del. action (Siemens et al. as defendants)

Because roles reverse in the district court, the Siemens entity's counsel there were:⁶

  • Karen Jacobs (Louden) and Cameron P. Clark — Morris, Nichols, Arsht & Tunnell LLP, Wilmington, DE — Delaware lead/local counsel for Siemens Mobility.
  • Ali Hossein Khan Tehrani, Mark M. Supko, Vincent J. Galluzzo — Crowell & Moring — pro hac vice for Siemens Mobility.
  • Francis DiGiovanni, Lora A. Brzezynski, Thatcher A. Rahmeier — Faegre Drinker — for Ground Transportation Systems USA.
  • Wolf Greenfield (Michael N. Rader, Nathan R. Speed) for Humatics; Michael J. Flynn / Philip A. Rovner (Morris Nichols / Potter Anderson) for Piper Networks.

Caveats on sourcing

  • The authoritative counsel list for IPR2023‑00452 is Metrom's Patent Owner Mandatory Notice (Jan. 31, 2023), which sets out the petitioners' service list; the individual petitioners' Powers of Attorney (Papers 1–4, filed Jan. 10, 2023) are in the record but I could not open them directly to confirm each petitioner's designated lead/backup roles for -452.⁴
  • The lead‑counsel designation within the petitioner group is clearest in sibling IPR2023‑00470 (Galluzzo at filing; Wisnia by the Mar. 8, 2024 updated notice) — I have not verified that -452 followed the identical sequence.⁵
  • Because institution was denied and the case terminated quickly (July 27, 2023), counsel appearances were minimal; no motion practice, depositions, or local‑counsel designations exist.
  • The "rgionta@wolfgreenfield.com" entry remains unidentified; I decline to name an attorney without a source.

Sources

  1. Petitioners' caption, Patent Owner Mandatory Notice, IPR2023‑00452 — ptacts.uspto.gov (artifact loaBxA5jGAahqhpY4gdQwqLcHRtRi6Y3Y9suI5kIz8lIEbKDfwzkIvw).
  2. D. Del. docket, Metrom Rail, LLC v. Siemens Mobility, Inc., No. 1:22‑cv‑00049‑RGA (submitted as Siemens Ex. 1015).
  3. Patexia case page for IPR2023‑00452 (documents table: Paper 9, 10, 11, 12; Ex. 2001 disclaimer); IPVerse PTAB page for IPR2023‑00452 (institution denied July 14, 2023).
  4. Patent Owner Mandatory Notice, IPR2023‑00452 (service list with Wolf Greenfield / Crowell / Faegre Drinker / Dority & Manning / Wisnia emails).
  5. Petitioners' Updated Mandatory Notice, IPR2023‑00470 (Mar. 8, 2024) — ptacts.uspto.gov (artifact lCoazZJxp…); Humatics Power of Attorney, IPR2023‑00470 (artifact BSEZCJP7fSa7OHrxhSL5iVtYpYLV3UV1E4I941eD-pNmMDzteyiJ_WE).
  6. D. Del. docket, attorney list (Crowell, Morris Nichols, Faegre Drinker, Wolf Greenfield, Potter Anderson).
  7. IPVerse/GreyB, IPR2023‑00452 case details ("Petitioner Counsel | Nieberg, Greg et al.").
  8. CourtListener, Metrom Rail, LLC v. Siemens Mobility, Inc., No. 24‑2223 (Fed. Cir.) — parties and entries (Docket Nos. 41, 42).
  9. McAndrews, Held & Malloy, "McAndrews Secures Victory for Client Metrom Rail, LLC" (Nov. 21, 2024).

Defendant representatives

Counsel of record for the defendant(s): attorneys, firms, and roles (lead counsel, of counsel, local counsel).

I'll research the counsel of record for both sides in this matter, starting from the IPR itself and then the underlying district court litigation.

Let me verify the attorney rosters and gather bios for the key counsel on both sides.

Counsel of Record — IPR2023-00452 and the Underlying Infringement Action

Framing note before the rosters. The metadata caption for this case (Siemens Mobility, Inc. v. Metrom Rail, LLC, IPR2023-00452) is the PTAB proceeding, where Petitioners are named first. In that proceeding the party in the respondent/defensive posture is Metrom Rail, LLC (Patent Owner) — and that is the party the metadata lists as "Defendant." I therefore lead with Metrom's PTAB counsel and then give, separately, the Petitioners' PTAB counsel — because those same petitioner-side firms are the defense counsel for the accused infringers in the underlying Metrom Rail, LLC v. Siemens Mobility, Inc. infringement action (D. Del. No. 1:22-cv-00049-RGA and related). One caveat up front: because the Board denied institution (Paper 10, July 14, 2023), the IPR record never developed beyond mandatory notices, powers of attorney, the preliminary response, and the refund papers — so "counsel of record" here is drawn from 37 C.F.R. § 42.8 notices/POAs rather than from litigated appearances.


A. Respondent / "Defendant" side in IPR2023-00452 — Metrom Rail, LLC (Patent Owner)

All from Patent Owner Mandatory Notice Information, IPR2023-00452 (filed Jan. 31, 2023) (Paper 7 series) and its service/power-of-attorney papers (PTAB filing, '363 patent).

Attorney Role Firm / Office Note
Gregory C. Schodde (Reg. No. 36,668) Lead counsel (PTAB) McAndrews, Held & Malloy, Ltd. — 500 W. Madison St., 34th Fl., Chicago, IL 60661 Metrom's lead across the whole campaign: lead PTAB counsel in the coordinated IPRs and lead trial counsel in the D. Del. cases; argued Metrom's Federal Circuit appeal (No. 24-2223). Long-time McAndrews IPR practitioner (e.g., Netlist, Intellectual Ventures, Novoluto/KaVo PTAB matters).
Alejandro Menchaca (Reg. No. 34,389) Backup counsel McAndrews, Chicago Senior McAndrews patent litigator; on the '363 preliminary-response team.
Ronald H. ("Hank") Spuhler (Reg. No. 52,245) Backup counsel McAndrews, Chicago Co-lead on the D. Del. infringement suits (pro hac vice in 22-cv-49 and the S.D.N.Y. actions).
Rajendra A. Chiplunkar (PHV application forthcoming) Backup counsel McAndrews, Chicago On Metrom's Federal Circuit brief (Dec. 4, 2024 amended entry of appearance) and pro hac vice in the D. Mass./S.D.N.Y. actions.
Ashley M. Ratycz (PHV application forthcoming) Backup counsel McAndrews, Chicago Listed on the '363 mandatory notice.

(Also active for Metrom across the parallel cases but not on the IPR2023-00452 face: Christian Havel Hallerud and Philipp Ruben, McAndrews, Chicago — both appeared for Metrom on the Federal Circuit appeal; Schodde, Hallerud, and Chiplunkar were admitted pro hac vice in the MBTA/Piper action.)


B. Petitioner side in IPR2023-00452 — Siemens Mobility, Ground Transportation Systems USA, Humatics, and Piper

These are the firms whose lead counsel designation differs by IPR — worth flagging, since it is a common source of error. For IPR2023-00452 specifically, the Petitioners collectively designated Wolf Greenfield's Gregory S. Nieberg as lead counsel, whereas in the companion '227 IPR (IPR2023-00470) the collective lead was Crowell's Vincent J. Galluzzo (Petitioners' Updated Mandatory Notice, IPR2023-00470; '363 petitioner filing).

Attorney Role Firm / Office Client Note
Gregory S. Nieberg (Reg. No. 57,063) Lead counsel (collective lead for IPR2023-00452) Wolf, Greenfield & Sacks, P.C. — 600 Atlantic Ave., Boston, MA 02210 Humatics Corp. Member of Wolf Greenfield's Post-Grant Proceedings group; ex-Covington & Burling. Deep IPR/Fed. Cir. record (Huawei in Maxell/Huawei and Optis v. Huawei; ITC 337-TA-800/868/1010; Linex v. HP — SJ of non-infringement/invalidity). D. Del. and E.D. Tex. experience.
Nathan R. Speed (PHV) Backup counsel Wolf Greenfield, Boston Humatics Corp. On the Federal Circuit cross-appeal (24-2223) appearance list.
Richard F. Giunta (Reg. No. 39,176) Backup counsel Wolf Greenfield, Boston Humatics Corp. Appears on the IPR2023-00452 service list (rgionta-ptab@wolfgreenfield.com); Wolf Greenfield PTAB group.
Vincent J. Galluzzo (Reg. No. 67,830) Backup counsel (IPR2023-00452); was lead in companion IPRs incl. the '227 Crowell & Moring LLP — 1001 Pennsylvania Ave. NW, Washington, DC 20004 Siemens Mobility Firm-change alert: Galluzzo left Crowell for K&L Gates (Charlotte, NC) in March 2024 and is now a K&L Gates partner (K&L Gates press release, Mar. 4, 2024). He is the Siemens trial/IPR lead — IAM Patent 1000 "litigation wizard"; argued the Paice IPR hearing (IPR2020-01299). Long-time Crowell co-chair of the Trade Secrets working group.
Mark M. Supko (PHV) Backup counsel Crowell & Moring, Washington, DC Siemens Mobility Also D. Del. pro hac vice for Siemens.
Joshua H. James (Reg. No. 72,568) Backup counsel Crowell & Moring — 455 N. Cityfront Plaza Dr., Ste. 3600, Chicago, IL 60611 Siemens Mobility Chicago-based Crowell IP litigator.
Kassidy L. Schmitz (Reg. No. 77,449) Backup counsel Crowell & Moring, Washington, DC Siemens Mobility
Thatcher A. Rahmeier (Reg. No. 65,734) Backup counsel Faegre Drinker Biddle & Reath LLP — 222 Delaware Ave., Ste. 1410, Wilmington, DE 19801 Ground Transportation Systems USA (Thales successor; now Hitachi Rail GTS USA) Delaware IP litigator; also Delaware counsel in the district court action.
Zachary D. Kachmer (Reg. No. 75,414) Backup counsel Faegre Drinker — 1144 15th St., Ste. 3400, Denver, CO 80202 Ground Transportation Systems USA
Nicole S. Cunningham (PHV) Backup counsel Dority & Manning, P.A. — 2869 Historic Decatur Rd., San Diego, CA 92106 Piper Networks Previously Moore IP Law (San Diego).
Steven A. Moore, Ph.D. (Reg. No. 55,462) Backup counsel Dority & Manning, San Diego Piper Networks Ex-Moore IP Law; on the Federal Circuit cross-appeal roster.
Howard N. Wisnia (Reg. No. 37,502) Backup counsel Wisnia P.C. — 12636 High Bluff Dr., Ste. 400, San Diego, CA 92130 Piper Networks Solo boutique; also appeared for a defendant in the D. Del. action.

C. Defense counsel in the underlying infringement action — Metrom Rail, LLC v. Siemens Mobility, Inc., No. 1:22-cv-00049-RGA (D. Del., Judge Andrews)

Per the Siemens Exhibit 1015 docket snapshot (D. Del. 1:22-cv-00049-RGA, as of Jan. 9, 2023) filed as an IPR exhibit, the defense roster was:

  • Siemens Mobility, Inc. — Karen Jacobs (Louden), Morris, Nichols, Arsht & Tunnell LLP, 1201 N. Market St., Wilmington, DE 19899 (Delaware lead; veteran Delaware patent litigator and Morris Nichols IP partner); Cameron Paul Clark, Morris Nichols, Wilmington; plus Ali Hossein Khan Tehrani, Mark M. Supko, and Vincent J. Galluzzo, all Crowell & Moring, pro hac vice.
  • Piper Networks, Inc. — Michael J. Flynn, Morris Nichols, Wilmington (Delaware lead; also appears for Siemens interests); Michael N. Rader and Nathan R. Speed, Wolf Greenfield, Boston (pro hac vice).
  • Humatics Corp. — Francis DiGiovanni and Thatcher A. Rahmeier, Faegre Drinker Biddle & Reath LLP, 222 Delaware Ave., Wilmington, DE.
  • Thales Transport & Security, Inc. / Thales USA, Inc. (later Ground Transportation Systems USA / Hitachi Rail GTS) — Philip A. Rovner, Potter Anderson & Corroon LLP, 1313 N. Market St., Wilmington, DE (Delaware counsel); Howard N. Wisnia (Wisnia P.C.), Nicole S. Cunningham, and Steven A. Moore (Dority & Manning), pro hac vice; Jesse Salen and Martin R. Bader, Sheppard Mullin (now terminated on the docket).

Plaintiff-side Delaware counsel (for completeness — not defense counsel): Brian E. Farnan and Michael J. Farnan, Farnan LLP, 919 N. Market St., 12th Fl., Wilmington, DE 19801, with McAndrews (Schodde, Spuhler) pro hac vice.


Caveats and sourcing notes

  • No institution = thin record. Counsel identifications for IPR2023-00452 come from the § 42.8 mandatory notices, powers of attorney, and the Patent Owner Preliminary Response/service papers, not from any Board institution decision. No attorney "appeared" in the conventional litigation sense before the proceeding terminated.
  • Defendant-by-defendant mapping in D. Del. is partly inferred. The D. Del. roster above is reconstructed from an OCR'd docket snapshot (Siemens Ex. 1015) plus the IPR designation tables. Siemens, Humatics, Piper, and Thales/GTS are the named defendants; I could not re-verify the current live appearance list from PACER for 1:22-cv-49 or the related 1:23-cv-00314, 23-cv-3057 / S.D.N.Y. 23-cv-5097, and D. Mass. 1:25-cv-11446 actions. Treat the firm-to-defendant pairings as high-confidence but not PACER-confirmed.
  • Firm-change caution. Vincent J. Galluzzo, Siemens's lead, has been at K&L Gates (Charlotte) since March 2024, not Crowell & Moring; any current Siemens appearance would reflect the new firm. Other Crowell personnel (Supko, James, Schmitz) and Wolf Greenfield (Nieberg, Speed, Giunta) appear unchanged on the Federal Circuit docket in No. 24-2223.
  • No in-house counsel surfaced in any of the public filings; I found none and will not infer one.
  • One contradiction with the existing summary worth flagging: the prior section states Nieberg as a petitioner-side name generally, whereas the record shows the collective lead designation is IPR-specific — Nieberg for the '363 (IPR2023-00452) and Galluzzo for the '227 (IPR2023-00470). Both are correct as to their respective proceedings.