`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Attorney Docket No.:
` LMIC-018-801
`Customer No. 28120
`
`Requester: Liberty Mutual
` Insurance Company
`
`§
`§
`§
`§
`§
`§
`§
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`
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`Inventor: Robert John McMillan et al.
`
`United States Patent No.: 6,064,970
`Formerly Application No.: 09/135,034
`Issue Date: May 16, 2000
`
`Filing Date: Aug. 17, 1998
`
`Former Group Art Unit: 2761
`
`Former Examiner: Edward R. Cosimano
`
`For: Motor Vehicle Monitoring System for Determining a Cost of Insurance
`
`MAIL STOP PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`Post Office Box 1450
`Alexandria, Virginia 22313-1450
`
`
`
`MANDATORY NOTICES PURSUANT TO 37 C.F.R. § 42.8
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`
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`Pursuant to 37 C.F.R. § 42.8, the undersigned, on behalf of and acting in a
`
`representative capacity
`
`for petitioner, Liberty Mutual
`
`Insurance Company
`
`(“Petitioner” and real party in interest), hereby submits the following mandatory
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`notices in connection with the concurrently filed Petition for Covered Business
`
`Method Patent Review of United States Patent No. 6,064,970 Pursuant to 35 U.S.C.
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`§ 321, 37 C.F.R. § 42,304 (“Petition”).
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`REAL PARTY-IN-INTEREST
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`The real party in interest is Liberty Mutual Insurance Company.
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`RELATED MATTERS
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`Concurrently with this Petition, Petitioner is filing one additional Petition
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`
`
`1
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`
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`Covered Business Method Patent Review, United States Patent No. 6,064,970
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`seeking review of U.S. Patent No. 6,064,970. These multiple Petitions are necessary
`
`in view of the scope and subject matter at issue, and the 80-page limit for petitions for
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`covered business method patent review.
`
`Petitioner further identifies the following judicial or administrative matters,
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`including applications and patents claiming, or which may claim, the benefit of the
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`priority date of U.S. Patent No. 6,064,970, and reexaminations:
`
` Progressive Cas. Ins. Co. v. Allstate Ins. Co. et al., No. 1:11cv82 (N.D. Ohio)
`
` Progressive Cas. Ins. Co. v. State Farm Mut. Auto. Ins. Co., No. 1:12cv1068 (N.D. Ohio)
`
` Progressive Cas. Ins. Co. v. Hartford Fire Ins. Co. et al., No. 1:12cv1070 (N.D. Ohio)
`
` Progressive Cas. Ins. Co. v. Safeco Ins. Co. et al., No. 1:10cv1370 (N.D. Ohio).
`
` U.S. Patent No. 5,797,134, filed Jan. 29, 1996, entitled “MOTOR VEHICLE
`MONITORING SYSTEM FOR DETERMINING A COST OF INSURANCE”
`
` U.S. Patent No. 6,868,386, filed May 15, 2000, entitled “MONITORING
`SYSTEM FOR DETERMINING AND COMMUNICATING A COST OF
`INSURANCE”
`
` U.S. Patent No. 8,090,598, filed Jan. 23, 2004, entitled “MONITORING
`SYSTEM FOR DETERMINING AND COMMUNICATING A COST OF
`INSURANCE”
`
` U.S. Patent No. 8,140,358, filed June 3, 2008, entitled “VEHICLE
`MONITORING SYSTEM”
`
` Pending U.S. Patent Application No. 13/399,386, filed Feb. 17, 2012, entitled
`“VEHICLE MONITORING SYSTEM”
`
` Pending U.S. Patent Application No. 13/338,959, filed Dec. 28, 2011, entitled
`“MONITORING SYSTEM FOR DETERMINING AND
`COMMUNICATING A COST OF INSURANCE”
`
` Ex Parte Reexamination of U.S. Patent No. 6,064,970, Control No. 90/011,252,
`2
`
`
`
`
`
`Covered Business Method Patent Review, United States Patent No. 6,064,970
`
`request filed Sept. 22, 2010.
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`LEAD AND BACK-UP COUNSEL AND
`SERVICE INFORMATION FOR PETITIONER
`
`Lead counsel is J. Steven Baughman (Reg. No. 47,414).
`
`Back-up counsel is Nicole M. Jantzi (Reg. No. 50,364).
`
`Service information for Petitioner is:
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`E-mail:
`
`steven.baughman@ropesgray.com
`nicole.jantzi@ropesgray.com
`
`
`Mailing and delivery address:
`Ropes & Gray LLP
`Prudential Tower
`800 Boylston Street
`Patent Docketing – Floor 43
`Boston, Massachusetts 02199-3600
`
`
`Telephone: (202) 508-4606
`
`Fax: (617) 235-9492
`
`
`
`
`
`3
`
`
`
`Covered Business Method Patent Review, United States Patent No. 6,064,970
`
`
`
`
`
`
`
`
`
`
`
`September 16, 2012
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`Respectfully submitted,
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`ROPES & GRAY LLP
`
`
`By _/J. Steven Baughman/_
`J. Steven Baughman
`Registration No. 47,414
`ROPES & GRAY LLP
`Prudential Tower
`800 Boylston Street
`Patent Docketing – Floor 43
`Boston, Massachusetts 02199-3600
`(202) 508-4606
`(617) 235-9492 (Fax)
`Attorneys/Agents For Petitioner
`
`
`
`
`
`4
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`
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