the final Office Action dated June 14, 2011, in the above-identified ex parte reexamination. The new
`
`deadline for response would be September 14, 2011. This is the first request for an extension.
`
`The request for ex parte reexamination of the above identified U.S. Patent No. 6,064,970
`
`(“the ‘970 patent”) was filed on September 22, 2010. The request was granted on November 24,
`
`2010. On March 7, 2011, a non-final Office Action issued and a Response was filed on April 6,
`
`2011. A final Office Action was mailed on June 14, 2011 (more than two months after the Patent
`
`Owner’s Response), but was not available until June 15, 2011. The final Office Action sets a
`
`response date of one month from mailing, z'.e., July 14, 2011.
`
`Because the Patent Owner has one last opportunity to present arguments and evidence as a
`
`matter of right to the examiner during this reexamination proceeding, such a short period of time is
`
`inadequate to prepare a full and complete response, particularly in a case where the patent is the
`
`subject of complex litigation. Further, as discussed below, the reply to the pending final Office
`
`Action is due two weeks before the Patent Owner’s arguments and/or amendments (e. g., through the
`
`Patent Owner Statement) are due for a second reexamination filed by the same Third Party
`
`Requestor. The Patent Owner submits that due to these reasons, and those explained below,
`
`sufficient cause exists for extending the time for responding to the Office Action by two months.‘
`
`Patent Owner’s prosecution counsel has been diligently reviewing the final Office Action and
`
`the references cited therein. Specifically, prosecution counsel, with the assistance of representatives
`
`of the Patent Owner, has been actively analyzing the final Office Action and working on a response
`
`during this one-month shortened statutory period. This work has included additional review of the
`
`1 If granted, a two month extension of time would provide the Patent Owner with an amount of time that is normally
`given to Patent Owners not subject to a stayed litigation but granted a one month extension.
`If a two month
`extension is not granted, in the alternative, the Patent Owner requests a one month extension. Since August 14"‘
`falls on a Sunday, the Patent Owner requests that the period for filing (if extended for one month) run to and include
`August 15,2011.
`
`Reexamination Control No. 90/011,252
`U.S. Patent 6,064,970
`
`Atty. Dkt. No. 12741-32
`Page 2 of 5
`
`Page 000249
`
`

`
`prior art applied in the rejections of the claims and the examiner’s response to the Patent Owner’s
`
`arguments. Conversations between the undersigned and other representatives of the Patent Owner
`
`responsible for assisting prosecution counsel have occurred from the time of receipt of the final
`
`Office Action through today. Also, prosecution counsel is conducting research for documents in
`
`support of positions expressed in the Patent Owner’s April 6, 2010 Response and the new extrinsic
`
`evidence partially cited in the final Office Action (i. e., Barron ’s Dictionary of Finance and
`
`Investment Terms; Barron ’s Dictionary of Legal Terms, etc.). Only a portion of the documents
`
`found have been reviewed to date and the new extrinsic evidence has not been found. The final
`
`Office Action is over 200 pages long and introduces new explanations and rationale in rejecting the
`
`claims besides referencing the prior 220 page non-final Office Action for additional support through
`
`multiple incorporations by reference, see e.g., pgs. S2 and 191 (enlarging the final Office Action to
`
`over 400 pages). Analyzing the Office Action in preparation for a response has already taken a
`
`significant amount of time and will continue to take a large amount of time and resources.
`
`Furthermore, since the final Office Action addresses declarations submitted by two different
`
`experts under 37 C.F.R. § 1.132, the Patent Owner will submit responsive declarations if necessary.
`
`After prosecution counsel completes an initial analysis, additional time will be needed to confer with
`
`these experts in connection with any potential responsive declarations. For example, prosecution
`
`counsel’s initial analysis found 58 rejections under 35 U.S.C. § 112, second paragraph, that the
`
`experts may need to review. Conversations between the experts of record and prosecution counsel
`
`have already occurred, however, their availability is very limited in this shortened period, in part, due
`
`to prior business commitments and the July 4"‘ holiday. Ms. Vecchioli is unavailable from June 29 —
`
`July 4, and Mr. McMillan is unavailable July 4, 6-8, and 11.
`
`In view of the Office Action’s length
`
`(collectively over 400 pages), the number of rejections, and due to the limited availability of the
`
`Reexamination Control No. 90/011,252
`U.S. Patent 6,064,970
`
`Atty. Dkt. No. 12741-32
`Page 3 of 5
`
`Page 000250
`
`

`
`experts of record, the current deadline does not provide a fair opportunity for the experts to review
`
`the rejections, confer with counsel, and assist in the preparation of a response.
`
`Moreover, the ’970 patent is currently involved in two separate actions.
`
`0
`
`Progressive Casualty Ins. Co. v. Safeco Ins. Co. of IL No. 1:10-cv-01370 (N.D.
`
`Ohio); and
`
`0
`
`Progressive Casualty Ins. Co. v. Allstate Ins. Co. No. 1:11-cv-00082 (N .D. Ohio).
`
`Prosecution counsel also needs to review the public records in these proceedings to ensure the
`
`analysis of the final Office Action and the Patent Owner’s response is consistent with the Patent
`
`Owner’s briefings.
`
`Finally, prosecution counsel must analyze the Reexamination Request (filed by the same
`
`Third Party Requestor) involving another patent assigned to the Patent Owner.
`
`In particular, two
`
`Orders for reexamination were granted in Reexamination Control No. 90/011,612 (involving U.S.
`
`Patent No. 7,124,088). The Request for Reexamination and references it relies on are over 680 pages
`
`long. The Patent Owner’s arguments and/or amendments (e.g., through the Patent Owner Statement)
`
`are due about two weeks (July 31, 2011) after a reply is due for this Office Action. Unless an
`
`extension is granted, the co—pendency of the multiple replies, with the complex issues each raise, will
`
`unfairly limit the time available for the Patent Owner to formulate a response.
`
`By granting this extension, the Patent Owner will be provided with a fair opportunity to
`
`defend a patent awarded by the United States Patent Office and which resulted in a substantial
`
`investment in a new program now offered in 35 states that evaluates insurance parameters on when,
`
`where, and how much a vehicle is driven. Besides investing in the ’97O patent’s prosecution and
`
`now its defense, the Patent Owner is a practicing entity that has made a substantial investment in its
`
`commercial embodiments since introducing the program and its devices in Texas in 1998. A two
`
`Reexamination Control No. 90/011,252
`U.S. Patent 6,064,970
`
`Atty. Dkt. No. 12741-32
`Page 4 of 5
`
`Page 000251
`
`

`
`month extension will allow the Patent Owner a fair opportunity to present arguments and evidence in
`
`this reexamination proceeding and allow the Patent Owner to defend its investment, while still
`
`preserving the special dispatch requirement that is required for reexaminations.
`
`Based on the foregoing, the Patent Owner respectfully submits that the current circumstances
`
`represent "sufficient cause" under 37 C.F.R. § 1.550(c). The Patent Owner therefore respectfully
`
`requests that this Petition be granted and that the time period for response be extended by two
`
`months. A copy of this submission is being served on the Third Party Requester pursuant to 37
`
`C.F.R. § 1.5 50(f) as indicated on the attached certificate of service. The petition fee under 37 C.F.R.
`
`§ 1.17(g) is being submitted herewith. The Commissioner is hereby authorized to charge any fee
`deficiencies, or credit any overpayments, to Deposit Account No. 23-1925 under Request 12741-32.
`
`Date: June 21, 2011
`
`Respectfully submitted,
`
`/James A. Collins/
`James A. Collins
`
`Registration No. 43,557
`Attorney ofRecord
`Brinks Hofer Gilson & Lione
`
`455 N. Cityfront Plaza Drive, Suite 3600
`Chicago, IL 60601
`(312) 321 -4200 (telephone)
`(312) 321-4299 (facsimile)
`
`Reexamination Control No. 90/011,252
`U.S. Patent 6,064,970
`
`Atty. Dkt. No. 12741-32
`Page 5 of 5
`
`Page 000252
`
`

`
` BRINKS
`
`Date:
`
`,:_gne 21 2911
`
`CERTIFICATE OF EFS FILING UNDER 37 CFR §1.8
`I hereby certify that this correspondence is being electronically transmitted to the United States Patent and Trademark
`Office, Commissioner for Patents, via the EFS pursuant to 37 CFR §1.8 on the below date:
`
`Name: Jamesa cgrns
`
`H 0 F E R
`._?___
`G l L S 0 N
`Signature: ;_;_ ST.-
`8. L l 0 N E
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Ex parte Reexamination of U.S. Patent 6,064,970
`
`Robert J. McMillan, et al.
`
`Patent Filing Date: August 17, 1998
`
`E"a'“"‘e" Kim” M" ReI°“'e
`
`Reexamination Filing Date: September 22, 2010
`
`Group A“ Unit 3992
`
`Control No.: 90/011,252
`
`For:
`
`MOTOR VEHICLE MONITORING SYSTEM FOR
`DETERMINING A COST OF INSURANCE
`
`
`
`0°” ”°'‘ 4116
`
`Attorney Docket No.: 12741/32
`
`CERTIFICATE OF SERVICE
`
`Mail Stop Ex Parte Reexam
`Commissioner for Patents
`PO Box 1450
`
`Alexandria, VA 22313-1450
`
`Dear Sir:
`
`I hereby certify that a true copy of the foregoing PATENT OWNER'S PETITION FOR
`EXTENSION OF TIME FOR RESPONSE PURSUANT TO 37 C.F.R. § 1.550(c), was served this
`June 21, 2011 by First Class United States Mail, postage prepaid, on:
`
`J. Steven Baughman
`Ropes & Gray LLP
`One International Place
`
`Boston, MA 02110
`
`June 21, 2011
`Date
`
`Respectfully submitted,
`
`/James A. Collinsl
`
`James A. Collins (Reg. No. 43,557)
`
`BRINKS
`HOFER
`GILSON
`&LIONE
`
`BRINKS HOFER GILSON & LlONE
`NBC Tower— Suite 3600, 455 N. Cityfront Plaza Drive, Chicago, IL 60611-5599
`
`Page 000253
`
`

`
`Electronic Patent Application Fee Transmittal
`
`Application Number:
`
`Filing Date:
`
`90011252
`
`22-Sep-2010
`
`Title oflnventlon:
`
`MOTOR VEHICLE MONITORING SYSTEM FOR DETERMINING A COST OF
`INSURANCE
`
`First Named Inventor/Applicant Name:
`
`6,064,970
`
`Attorney Docket Number:
`
`12741 -32
`
`Filed as Large Entity
`
`ex parte reexam Filing Fees
`
`Basic Filing:
`
`Pages:
`
`Claims:
`
`Miscellaneous-Filing:
`
`Patent-Appeals-and-Interference:
`
`Post-AlIowance-and-Post-Issuance:
`
`Extension-of-Time:
`
`Petition fee- 37 CFR 1.17(g) (Group II)
`
`Page 000254
`
`

`
`Miscellaneous: M 5"3'5333)'
`
`Total in USD ($)
`
`200
`
`Page 000255
`
`

`
`Electronic Acknowledgement Receipt
`
`Application Number:
`
`90011252
`
`International Application Number:
`
`Confirmation Number:
`
`4116
`
`Title of Invention:
`
`MOTOR VEHICLE MONITORING SYSTEM FOR DETERMINING A COST OF
`INSURANCE
`
`Customer Number:
`
`10999
`
`Filer:
`
`James A. Collins/Nkosi Harvey
`
`Receipt Date:
`
`Filing Date:
`
`21 -JUN-201 1
`
`22—SEP—201 0
`
`Payment information:
`
`Payment Type
`
`Deposit Account
`
`Payment was successfully received in RAM
`RAM confirmation Number
`
`Deposit Account
`
`Authorized User
`
`$200
`5662
`
`231925
`
`Charge any Additional Fees required under 37 C.F.R. Section 1.17 (Patent application and reexamination processing fees)
`
`The Director of the USPTO is hereby authorized to charge indicated fees and credit any overpayment as follows:
`Charge any Additional Fees required under 37 C.F.R. Section 1.16 (National application filing, search, and examination fees)
`
`Page 000256
`
`

`
`Charge any Additional Fees required under 37 C.F.R. Section 1.19 (Document supply fees)
`
`Charge any Additional Fees required under 37 C.F.R. Section 1.20 (Post Issuance fees)
`
`Charge any Additional Fees required under 37 C.F.R. Section 1.21 (Miscellaneous fees and charges)
`
`File Listing:
`Document
`Number
`
`Document Description
`
`File Name
`
`Reexam Miscellaneous Incoming Letter
`
`transforpetofextoftime.PDF
`
`Information:
`
`Warnings:
`Information:
`
`Warnings:
`
`Reexam Certificate of Service
`
`certofservforextoftime.PDF
`
`Fee Worksheet (SB06)
`
`fee-info.pdf
`
`Part /.zip (if appl.)
`
`Flle Slzemytesll
`Message Digest
`44639
`
`05163b192080f3da0bdl)c8cf56e222a6I E0
`a17b1
`
`214635
`
`305fb76l1Z09b(2c1a8e24ad7ab4ef(e1ac8
`44a(
`
`30894
`
`e3355794553be0eb1fdbbe807a1c5ba74f6
`6eaS7
`
`30320
`
`a08c39a4f329c1e131452278ada459966a6
`50(e5
`
`This Acknowledgement Receipt evidences receipt on the noted date by the USPTO of the indicated documents,
`characterized by the applicant, and including page counts, where applicable. It serves as evidence of receipt similar to a
`Post Card, as described in MPEP 503.
`
`New Applications Under 35 U.S.C. 111
`Ifa new application is being filed and the application includes the necessary components for a filing date (see 37 CFR
`1.53(b)-(d) and MPEP 506), a Filing Receipt (37 CFR 1.54) will be issued in due course and the date shown on this
`Acknowledgement Receipt will establish the filing date of the application.
`
`National Stage of an International Application under 35 U.S.C. 371
`Ifa timely submission to enter the national stage of an international application is compliant with the conditions of 35
`U.S.C. 371 and other applicable requirements a Form PCT/DO/E0/903 indicating acceptance of the application as a
`national stage submission under 35 U.S.C. 371 will be issued in addition to the Filing Receipt, in due course.
`
`New International Application Filed with the USPTO as a Receiving Office
`Ifa new international application is being filed and the international application includes the necessary components for
`an international filing date (see PCT Article 11 and MPEP 1810), a Notification of the International Application Number
`and ofthe International Filing Date (Form PCT/R0/105) will be issued in due course, subject to prescriptions concerning
`national security, and the date shown on this Acknowledgement Receipt will establish the international filing date of
`the application.
`
`Page 000257
`
`

`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT QI-‘ COMMERCE -
`United Slates Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box I450
`.
`Alcxuidria, Virginia 273 l3- I450
`www.uspm.gov
`
`APPLICATION NO.
`
`FILING DATE
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION NO.
`
`90/011,252
`
`09/22/2010
`
`6,064,970
`
`12741-32
`
`4116
`
`°~W2°"
`.m°
`W 0
`Progressive Casualtiy/BHGL
`P.O. Box 10395
`Chicago, IL 60610
`
`’
`
`
`
`4-.
`
`Please find below and/or attached an Offlce communication concerning this application or proceeding.
`
`PTO-90C (Rev. 10/03)
`
`Page 000258
`
`

`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Commlsslonar for Palanls
`United Slates Patent and Trademark Oflice
`Po. Box 1450
`Alexandria, VA 22313-1450
`uawwsptogov
`
`DO NOT USE IN PALM PRINTER
`
`
`
`(THIRD PARTYREQUESTER'SCORRESPONDENCEADDRESS)
`........-;.OPES & GRAY LLP
`PATENT DOCKETING 39/41
`
`A
`
`JUN 1 4 2011
`GENTRAL REEXAMINATION UNn'
`
`ONE INTERNATIONAL PLACE
`
`BOSTON. MA 02110-2624
`
`EX PARTE REEXAMINATION COMMUNICATION TRANSMITTAL FORM
`
`REEXAMINATION CONTROL NO. 90/011 252.
`
`PATENT NO. 6 064 970.
`
`' ART UNIT 3992.
`
`Enclosed is a copy of the latest communication from the United States Patent and Trademark
`Office in the above identified ex parte reexamination proceeding (37 CFR 1.550(f)).
`
`Where this copy is supplied after the reply by requester, 37 CFR 1.535, or the time for filing a
`reply has passed, no submission on behalf of the ex parte reexamination requester will be
`acknowledged or considered (37 CFR 1.550(9)).
`
`PTO L-465 (Rev.07-04)
`
`Page 000259
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`

`
`
`
`
`
`Office Action in Ex Parte Reexamination
`
`Control No.
`90/01 1 .252
`
`Examiner
`KARIN REICHLE
`
`Patent Under Reexamination
`6.064.970
`
`Art Unit
`3992
`
`
`
`- The MAILING DATE of this communication appears on the cover sheet with the correspondence address --
`
`
`
`bIZ This action is made FINAL.
`aX Responsive to the communication(s) filed on 06 Agni 2011 .
`c|:I A statement under 37 CFR 1.530 has not been received from the patent owner.
`
`
`
`A shortened statutory period for response to this action is set to expire 1 month(s) from the mailing date of this letter.
`Failure to respond within the period for response will result in termination of the proceeding and issuance of an ex parte reexamination
`certificate in accordance with this action. 37 CFR 1.550(d). EXTENSIONS OF TIME ARE GOVERNED BY 37 CFR 1.550(c).
`If the period for response specified above is less than thirty (30) days. a response within the statutory minimum of thirty (30) days
`will be considered timely.
`
`
`
` Part I
`THE FOLLOWING ATTACHMENT(S) ARE PART OF THIS ACTION:
`
`
`1.
`
`2. E Information Disclosure Statement,PTOiSB/08.
`
`
`g
`
`4. E]
`
`.
`
`IX] Notice of References Cited by Examiner, PTO-892.
`
`3. D Interview Summary, PTO-474.
`
`SUMMARY OF ACTION
`Part II
`
`1a.
`
`Claims 1-80 are subject to reexamination.
`
`
`
`
`a)l:] All b)l:] Some‘ c)|:] None
`
`of the certified copies have
`
`1[:] been received.
`
`2D not been received.
`
`3D been'filed in Application No. __
`
`4[:] been filed in reexamination Control No. __
`
`5D been received by the lntemational Bureau in PCT application No. __
`" See the attached detailed Office action for a list of the certified copies not received.
`
`9. D Since the proceeding appears to be in condition for issuance of an ex parte reexamination certificate except for formal
`matters. prosecution as to the merits is closed in accordance with the practice under Ex parte Quayle. 1935 C.D.
`11, 453 O.G. 213.
`
`10. C] Other:
`
`
`
`U.S. i'atent and Trademark Oflicel
`PTOL-465 (Rev. 08-06)
`
`Office Action In Ex Parte Reexamination
`
`Part of Paper No. 20110516
`
`Page 000260
`
`1b.
`
`Claims __ are not subject to reexamination.
`
`Claims __ have been canceled in the present reexamination proceeding.
`Claims __ are patentable and/or confirmed.
`A
`Claims 1-_8_O are rejected.
`
`Claims __ are objected to.
`
`EIEIIZEIEIEIIZI The drawings, filed on _ are acceptable.
`
`°°"E3’.°':“.‘*’."’
`
`. U The proposed drawing correction, filed on __ has been (7a)[:] approved (7b)D disapproved.
`
`. D Acknowledgment is made of the priority claim under 35 U.S.C. § 119(a)-(d) or (f).
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`

`
`Application/Control Number: 90/O1 1,252
`Art Unit: 3992
`
`1
`
`Page 2
`
`DETAILED ACTION
`
`Summary
`
`1. This Office Action is responsive to Patent Owner's amendment filed April 6, 201 1 in
`
`the reexamination ofclaims 1-15 ofU.S. 6,064,970 issued to McMillan et al. Claims 1-15 as
`
`well as newly added claims 16-80 stand rejected.
`
`2. Declarations
`
`Response to Arguments & Declarations
`
`The declarations of Robert J. McMillan and Beth Vecchioli filed April 6, 201 1, and the
`
`accompanying Attachments 3 and 4 also filed April 6, 2011 have been considered. The content
`
`of such declarations and attachments are discussed in detail in the Arguments section infra.
`
`3. Arguments
`
`Background:
`
`On pages 22-23 of the 4-6-11 Response, Patent Owner discusses the alleged state of the
`
`art at the time of the invention represented by the claims relying on the Black Magic and
`
`Bouchard references for support.
`
`It is noted however that the ‘970 Patent was filed 1/29/98
`
`while Black Magic was published 4 years prior thereto, i.e. 1-1-94, and Bouchard was filed 5
`
`years prior thereto, i.e. between 8-14-92 and 8-13-93, and thereby, not “at the time of the
`
`7
`S
`invention”. Furthermore Patent Owner’s conclusions based on such references i.e. the
`
`Page 000261
`
`

`
`Application/Control Number: 90/01 1,252
`Art Unit: 3992
`
`Page 3
`
`technology of insurance assessment based on actual driving characteristics being speculative and
`
`impractical, are not supported by the totality of the teachings of such references. For example,
`
`Black Magic as a whole sets forth that while black box data recording as of 1-1-94 “might seem
`
`like science fiction”, it “will soon become the norm” and that “satellite technology” “is far more
`
`of an unknown quantity” “but only time will tell”. (Emphasis added.) For another example,
`
`Bouchard as a whole sets forth that prior black boxes as of 1992 and 1993 had obstacles but such
`
`were overcome by the Bouchard black box. Lastly it is noted that the Kosaka reference
`
`published in 1992 was not discussed.
`
`Prior Art Rejections:
`
`Claim 4
`
`Patent Owner on’ pages 26-29 of the 4-6-1] response, relying on the declaration of Robert
`J. McMillan, herein after referred to as RJM, see, e.g., paragraphs 17-20 thereof, and the
`2
`
`declaration of Beth Vecchioli, hereinafter referred to as BV, see, e.g., paragraphs 11-15 thereof,
`
`first argues that “. ..Kosaka fails to generate an initial ‘operator profile”. Specifically, “[t]he
`
`specification of the '970 patent explicitly observes that the operator profiles are connected with
`
`the insurance actuarial classes and are based upon the actual driving characteristics of vehicle
`
`and drivers. (See col. 5, lines 29-32). In light of this language of the specification, a person of
`
`ordinary skill in the art who reviewed the '970 patent would not likely conclude that the term
`
`‘operator profile’ (1) is synonymous with the term ‘insured profiles’; (2) encompasses arbitrary
`
`prepayment amounts initially designated for paying insurance premiums; and (3) was intended to
`
`encompass insurance agreements”, “The accompanying declarations. . .explain that an operator
`
`Page 000262
`
`

`
`Application/Control Number: 90/01 1,252
`Art Unit: 3992
`
`Page 4
`
`profile is a collection of actual driving data associated with a driver that distinguishes that driver
`
`from other drivers and is related to insurance” (See also the ‘970 PATENT GLOSSARY OF
`
`TERMS filed 4-6-1 1 as Attachment 3, hereinafter referred to as the Glossary), “In contrast, the
`
`monetary amount file in Kosaka does not reflect a base cost of insurance; it is not related to any
`
`actuarial classes; and it is not based on any distinctive usage information.” and “The citation to
`
`‘the insurance agreement (emphasis added)’ also does not disclose generating an operator
`
`profile.”
`
`The Examiner does not agree for several reasons. As set forth in MPEP 2258, I., G,
`
`“During reexamination, claims are given the broadest reasonable interpretation consistent with .
`
`the specification and limitations in the specification are not read into the claims (In re
`
`Yarnarnoto, 740 F.2d 1569, 222 USPQ 934 (Fed. Cir. 1984)), emphasis added.
`
`It is also noted
`
`that, as stated by the Federal Circuit, claims must be constructed in light of the intrinsic evidence
`
`which includes the claim, the written description and the prosecution history. The sequence of
`
`the approach for construing the claims is as follows: (i) first, look to the words of the claims
`
`themselves. The words in the claim are generally given their ordinary and customary meaning.
`
`However, a patentee may choose to be his own lexicographer and use terms in a manner other
`
`than their ordinary meaning, so long as that definition is clearly set forth in the patent
`specification or the file history; (ii) then, the specification is reviewed to determine whether the
`
`patentee used terms in the claim in a manner inconsistent with their ordinary meaning. In that
`
`case, the specification acts as a dictionary when it expressly defines the term used in the claim;
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`and (iii) then the prosecution history may also be considered. Vitronics Corp. v. Conceptronic,
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`I Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996).
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`Page 000263
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`

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`Application/Control Number: 90/01 1,252
`Art Unit: 3992
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`Page 5
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`First, the words’ of the claim themselves expressly require an “initial operator profile” not
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`just an “operator profile” (emphasis added). It is noted that the claim language does not set forth _
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`the terminology “initial” requires generation prior to all periods of monitoring, e.g., just has to be
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`initial to the monitoring during “a” or “the” “selected period”, i.e. the monitoring step of line 4.
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`Second, as also pointed out infra and in the non—final Office action, the specification of
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`the ‘970 Patent never utilizes, i.e. does not clearly set forth, the term "initial operator profile."
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`Contrary to the Patent Owner’s arguments, such non-final Office action did not set forth an
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`“operator profile” is “synonymous” with an “insured profile” (It is however noted that “an
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`operator” and “an insured” could be one and the same). Nor did the Patent Owner address the
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`analysis of the claim terminology “initial operator profile” which was set forth. Attention is
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`invited to the full paragraph bridging pages 6-7 of such action. Neither the Patent Owner nor the
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`declarations, i.e. extrinsic evidence, address the actual claim terminology “initial operator
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`profile” as contrasted to the specification terminology “operator profile”. There is no
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`collaborating evidence/argument provided to support a conclusion that an “initial operator
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`profile” is necessarily the same as an “operator profile” but initial to the monitoring during “a” or
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`“the” “selected period”.
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`It is further noted that the terms “class”, i.e. as used in “actuarial class”,
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`and “characteristic” discussed in such declarations/extrinsic evidence, see paragraphs 19 and 12,
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`respectively thereof, with reference to other dictionaries (see Attachment 4 filed 4-6-11), are
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`‘ already set forth in the intrinsic record, ‘970 at col. 1., lines 28 et seq. (Note extrinsic evidence,
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`such as expert and inventor testimony, may not be used to vary, contradict, expand, or limit the
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`claim language from how it is defined, even by implication in the specification of file history.
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`See also,Phillips v. AWH Corp., 415 F.3d 1303, 1330-1331 (Fed. Cir. 2005) (en banc), i.e. “We
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`Page 000264
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`

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`Application/Control Number: 90/01 1,252
`Art Unit: 3992 V
`
`i
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`Page 6
`'
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`have also held that extrinsic evidence in the form of expert testimony can be useful to a court for
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`a variety of purposes, such as to provide background on the technology at issue, to explain how
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`an invention works, to ensure that the court's understanding of the technical aspects of the patent
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`is consistent with that of a person of skill in the art, or to establish that a particular term in the
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`patent or the prior art has a particular meaning in the pertinent field.
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`However, conclusogy,
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`unsupported assertions by experts as to the definition of a claim term are not useful to a court.
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`Similarly, a court should discount any expert testimony ‘that is clearly at odds with the claim
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`construction mandated by the claims themselves, the written description, and the
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`prosecution histog, in other words, with the written record of the patent”, emphasis added,
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`.
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`and “We have viewed extrinsic evidence in general as less reliable than the patent and its
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`prosecution histog in determining how to read claim terms, for several reasons. First, extrinsic
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`evidence by definition is not part of the patent and does not have the specification's virtue of
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`being created at the time of patent prosecution for the purpose of explaining the patent's scope
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`and meaning. Second, while claims are construed as they would be understood by a hypothetical
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`person of skill in the art, extrinsic publications may not be written by or for skilled artisans and
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`therefore may not reflect the understanding of a skilled artisan in the field of the patent. Third,
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`extrinsic evidence consisting of expert reports and testimony is generated at the time of and for
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`the purpose of litigation and thus can suffer from bias thatis notvpresent in intrinsic evidence.
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`The effect of that bias can be exacerbated if the expert is not one of skill in the relevant
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`or if
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`the expert's opinion is offered in a form that is not subject to cross-examination. See Senmed, Inc.
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`v. Richard-Allan Med. Indus., Inc., 888 F.2d 815, 819 n.8 (Fed. Cir. 1989). Fourth, there is a
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`virtually unbounded universe of potential extrinsic evidence of some marginal relevance that
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`Page 000265
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`

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`Application/Control Number: 90/011,252
`Art Unit: 3992
`
`Page 7
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`could be brought to bear on any claim construction question. In the course of litigation, each
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`party will naturally choose the pieces of extrinsic evidence most favorable to'its cause, leaving
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`the court with the considerable task of filtering the useful extrinsic evidence from the fluff. See
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`Daubert v. Merrell Dow Pharms., Inc., 509 U.S. 579, 595 (1993) (‘Expert evidence can be both
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`powerful and quite misleading because of the difficulty in evaluating it.’). Finally, undue reliance
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`on extrinsic evidence poses the risk that it will be used to change the meaning of claims in
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`derogation of the ‘indisputable public records consisting of the claims, the specification and the V
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`prosecution history,’ thereby undermining the public notice function of patents. ...In sum,
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`extrinsic evidence may be useful to the court, but it is unlikely to result a reliable interpretation
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`of patent claim scope unless considered in the context of the intrinsic evidence”) (Emphasis
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`added.)
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`Therefore, neither the Patent Owner’s arguments nor the declarations, see BV at
`paragraphs 14-15 thereof, are persuasive with regard to the teachings of ‘868 since, e.g., they do
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`not analyze the actual words of the claim “initial operator profile” with regard thereto.
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`Furthermore, it is noted that ‘868, e.g., claim 9 as referenced in the non-final Office action in the
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`paragraph bridging pages 6-7, not only sets forth “an insurance premium gtggg determination
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`means” (emphasis added) rather than premium determination means, i.e. changing a premium
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`necessarily implies that there is a premium in existence to change or a premium is payed and _
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`then changed, but also that such premium is continually being adjusted over time based on the
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`collection of actual driving data over such time, see ‘868 at, e.g., page 8, col. 2—col. 9, col. 2,
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`such that actual driving data associated with a specific driver/individual is collected/generated at
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`alone time prior to another/later time and such is related to insurance, i.e. used to determine
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`Page 000266
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`

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`Application/Control Number: 90/01 1,252
`Art Unit: 3992
`
`Page 8
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`insurance premium Me. Therefore, even assuming arguendo that the actual claim
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`terminology “initial operator profile” is construed the same as the terminology “operator profile”
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`as argued, but “initial” to/prior to the selected period of the step of monitoring, ‘868 also teaches
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`such, i.e. the file of premium or changed/adjusted premium amount, e.g. monetary amount file, is
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`based on distinctive usage information.
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`Continuing with regard to specific arguments regarding the term “operator profile”, i.e.
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`not likely term “(2) encompasses arbitrary prepayment amounts initially designated for paying
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`insurance premiums; and (3) was intended to encompass insurance agreements.” and the
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`teachings of ‘868, i.e. “the monetary amount file in Kosaka does not reflect a base cost of
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`insurance; it is not related to any actuarial classes; and it is not based on any distinctive usage
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`information.” and “The citation to ‘the insurance agreement (emphasis added)’ also does not
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`disclose generating an operator profile.”, see again the discussion of ‘868 with regard to the
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`terminology “premium change, and “premium”. Attention isialso invited to the definition of
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`“INSURANCE RATE” set forth in Attachment 4, Barron’s Dictionary of Insurance Terms, i.e.
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`“amount charged to an insured that reflects expectation of loss for a covered risk; and insurance
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`company expenses and profit. See also PREMIUM; PURE PREMIUM RATING
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`METHOD.” and “fiigg” also set forth in Attachment 4, Couch on Insurance, i.e. “the process
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`of assessing the risk involved in any given insurance situation, for purposes of setting the
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`premium (rate1...” as well as the term “PREMIUM” also set forth in Barron’s Dictionary of
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`Insurance Terms, i.e.:
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`PREMIUM rate that an insured is charged, reflecting his or her expectation of
`loss or risk. The insurance company will assume the risks of the insured (length of
`life, state of health, property damage or destruction, or liability exposure) in
`exchange for a premium payment. Premiums are calculated by combining
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`Page 000267
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`

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`Application/Control Number: 90/01 l,252
`Art Unit: 3992
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`‘
`
`Page 9
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`expectation of loss and expense and profit loadings. Usually, the periodic cost of
`insurance is computed by multiplying the premium rate per unit of insurance by
`the number of units purchased. The rate class in which the insured is placed
`includes large numbers of individuals with like characteristics who pose the same
`risk. Every individual in a given class will not incur the same loss; rather each has
`approximately the same expectation of loss (known as the Principle of Equity).
`See also EQUITY; GROSS PREMIUM; PURE PREMIUM RATING METHOD.
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`“PURE PREMIUM RATING METHOD” also set forth in Barron’s Dictionary of Insurance
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`Terms, i.e.:
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`PURE PREMIUM RATING METHOD approach that reflects losses expected.
`It is a calculation of the pure cost of property or liability insurance protection
`without loadings for the insurance company's expenses, premium taxes,
`contingencies, and profit margins. The pure premium is calculated according to
`the rel