Covered Business Method Patent Review
`United States Patent No. 6,064,970
`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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`§
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`Inventor: Robert John McMillan et al.
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`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
`
`PETITION FOR COVERED BUSINESS METHOD PATENT REVIEW OF
`UNITED STATES PATENT NO. 6,064,970 PURSUANT TO 35 U.S.C. § 321,
`37 C.F.R. § 42.304
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`
`
`Pursuant to 35 U.S.C. § 321 and 37 C.F.R. § 42.304, the undersigned, on behalf
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`of and acting in a representative capacity for petitioner, Liberty Mutual Insurance
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`Company (“Petitioner” and real party in interest), hereby petitions for review under
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`the transitional program for covered business method patents of claims 1 and 3-18 (all
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`claims) of U.S. Pat. No. 6,064,970 (“the ‘970 Patent”), issued to Progressive Casualty
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`Insurance Company (“Progressive”). A reexamination certificate (6,064,970 C1)
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`issued on January 10, 2012. Petitioner hereby asserts that it is more likely than not
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`that at least one of the challenged claims is unpatentable and respectfully requests
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`institution of a covered business method review of the ‘970 Patent for judgment
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`against Claims 1 and 3-18 (all claims) as unpatentable under §§ 102 and 103, with
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`Covered Business Method Patent Review
`United States Patent No. 6,064,970
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`prior art rejections based on the Kosaka, Herrod, New York Guide, Florida Guide
`
`and Black Magic references cited herein.1
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`
`
`
`1 As discussed in Section III, infra, Petitioner has simultaneously filed a Petition
`seeking a covered business method review of the ‘970 Patent requesting judgment
`against these claims based on different prior art references. Petitioner notes that the
`Director, pursuant to Rule 325(c), may determine at the proper time that merger of
`these proceedings may be appropriate.
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`
`
`ii
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`Covered Business Method Patent Review
`United States Patent No. 6,064,970
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`
`TABLE OF CONTENTS
`
`
`I. 
`II. 
`
`INTRODUCTION ....................................................................................................... 1 
`PETITIONER HAS STANDING ............................................................................ 3 
`A. 
`The ‘970 Patent Is a Covered Business Method Patent ............................... 3 
`B. 
`Petitioner Is a Real Party In Interest Sued for Infringement ...................... 5 
`III.  OVERVIEW OF SPECIFIC GROUNDS FOR WHICH IT IS MORE
`LIKELY THAN NOT THAT THE CHALLENGED CLAIMS (1 AND 3-
`18) ‘970 PATENT ARE UNPATENTABLE .......................................................... 5 
`IV.  Background Information For the ‘970 Patent .......................................................... 6 
`A.  Overview of the ‘970 Patent ............................................................................ 6 
`B. 
`The ‘970 Patent Prosecution History .............................................................. 7 
`C. 
`The ‘970 Patent Reexamination File History ............................................... 10 
`V.  DETAILED EXPLANATION OF REASONS FOR RELIEF REQUESTED
`SHOWING IT IS MORE LIKELY THAN NOT THAT AT LEAST ONE
`OF THE CHALLENGED CLAIMS IS UNPATENTABLE ............................ 18 
`A. 
`The Challenged Claims Are Invalid Under §§ 102 and/or 103 ................ 19 
`1. 
`Claim Construction .............................................................................. 20 
`2. 
`The Challenged Claims (1 and 3-18) Are Anticipated /
`Obvious Under § 102/103 in Light of the Kosaka, Herrod,
`New York Guide, Florida Guide and/or Black Magic
`References ............................................................................................. 23 
`(a) 
`Overview of Kosaka ............................................................. 23 
`(b) 
`Overview of Florida Guide .................................................. 27 
`(c) 
`Motivation to Combine Kosaka with Florida
`Guide ....................................................................................... 28 
`Overview of New York Guide ............................................ 28 
`Motivation to Combine Kosaka with New York
`Guide ....................................................................................... 30 
`Overview of Herrod .............................................................. 31 
`Motivation to Combine Kosaka with Herrod ................... 31 
`Overview of Black Magic ..................................................... 32 
`Motivation to Combine Kosaka with Black Magic
`and Herrod ............................................................................. 33 
`
`(d) 
`(e) 
`
`(f) 
`(g) 
`(h) 
`(i) 
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`Covered Business Method Patent Review
`United States Patent No. 6,064,970
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`(j) 
`
`(b) 
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`Motivation to Combine Kosaka with Black Magic
`and New York Guide ............................................................ 34 
`Independent Claim 1 ........................................................................... 35 
`(a) 
`Claim 1 Is Rendered Obvious Under § 103 by
`Kosaka in View of Black Magic and Herrod .................... 35 
`Claim 1 Is Rendered Obvious Under § 103 by
`Kosaka in View of Black Magic and New York
`Guide ....................................................................................... 39 
`Dependent Claim 3 is rendered obvious by: (1) Kosaka,
`Black Magic and Herrod; or (2) Kosaka, Black Magic and
`New York Guide. ................................................................................. 40 
`Independent Claim 4 ........................................................................... 41 
`(a) 
`Claim 4 Is Anticipated Under § 102 by Kosaka ............... 41 
`(b) 
`Claim 4 Is Rendered Obvious Under § 103 by
`Kosaka in View of Florida Guide ....................................... 44 
`Claim 4 Is Rendered Obvious Under § 103 by
`Kosaka in View of New York Guide ................................. 45 
`Independent Claim 5 ........................................................................... 46 
`(a) 
`Claim 5 Is Anticipated Under § 102 by Kosaka ............... 46 
`(b) 
`Claim 5 Is Rendered Obvious Under § 103 by
`Kosaka in View of Florida Guide ....................................... 51 
`Claim 5 Is Obvious Under § 103 by Kosaka in
`View of New York Guide .................................................... 51 
`Independent Claim 6 ........................................................................... 52 
`(a) 
`Claim 6 Is Rendered Obvious Under § 103 by
`Kosaka in View of Herrod ................................................... 52 
`Claim 6 Is Rendered Obvious Under § 103 by
`Kosaka in View of New York Guide ................................. 56 
`Dependent Claim 7 is Rendered Obvious by: (1) Kosaka
`and Herrod; or (2) Kosaka and New York Guide .......................... 56 
`Dependent Claim 8 is Rendered Obvious by: (1) Kosaka
`and Herrod; or (2) Kosaka and New York Guide .......................... 57 
`10.  Dependent Claim 9 is Rendered Obvious by: (1) Kosaka
`and Herrod; or (2) Kosaka and New York Guide .......................... 59 
`
`3. 
`
`4. 
`
`5. 
`
`6. 
`
`7. 
`
`8. 
`
`9. 
`
`(c) 
`
`(c) 
`
`(b) 
`
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`Covered Business Method Patent Review
`United States Patent No. 6,064,970
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`11.  Dependent Claim 10 is Rendered Obvious by: (1) Kosaka
`and Herrod; or (2) Kosaka and New York Guide .......................... 59 
`12.  Dependent Claim 11 is Rendered Obvious by: (1) Kosaka,
`Black Magic, and Herrod; or (2) Kosaka, Black Magic, and
`New York Guide .................................................................................. 60 
`13.  Dependent Claim 12 is Rendered Obvious by: (1) Kosaka,
`Black Magic and Herrod; or (2) Kosaka, Black Magic and
`New York Guide .................................................................................. 61 
`14.  Dependent Claim 13 is Rendered Obvious by: (1) Kosaka
`and Herrod; or (2) Kosaka and New York Guide .......................... 62 
`15.  Dependent Claim 14 is Rendered Obvious by: (1) Kosaka,
`Black Magic and Herrod; or (2) Kosaka, Black Magic and
`New York Guide .................................................................................. 63 
`16.  Dependent Claim 15 is Rendered Obvious by: (1) Kosaka,
`Black Magic and Herrod; or (2) Kosaka, Black Magic and
`New York Guide .................................................................................. 64 
`17.  Dependent Claim 16 is Rendered Obvious by: (1) Kosaka
`and Herrod; or (2) Kosaka and New York Guide .......................... 65 
`18.  Dependent Claim 17 is (1) anticipated by Kosaka or
`rendered obvious by: (2) Kosaka and Florida Guide; or (3)
`Kosaka and New York Guide ............................................................ 66 
`Independent Claim 18 ......................................................................... 66 
`(a) 
`Claim 18 Is Rendered Obvious Under § 103 by
`Kosaka in View of Herrod ................................................... 66 
`Claim 18 Is Rendered Obvious Under § 103 by
`Kosaka in View of New York Guide ................................. 71 
`VI.  CONCLUSION........................................................................................................... 72 
`
`
`19. 
`
`(b) 
`
`
`
`v
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` EXHIBIT LIST
`
`Exhibit 1001
`
`Exhibit 1002
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`Exhibit 1003
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`Exhibit 1004
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`Exhibit 1005
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`Exhibit 1006
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`Exhibit 1007
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`Exhibit 1008
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`Exhibit 1009
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`Exhibit 1010
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`Exhibit 1011
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`Exhibit 1012
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`Exhibit 1013
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`Exhibit 1014
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`Exhibit 1015
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`
`
`Covered Business Method Patent Review
`United States Patent No. 6,064,970
`
`
`United States Patent No. 6,064,970 with
`Jan. 10, 2012 Ex Parte Reexamination
`Certificate
`United States Patent No. 6,064,970 File
`History
`United States Patent No. 6,064,970
`Reexamination File History
`Kosaka, filed on November 19, 1990, and
`published on June 30, 1992 (“Kosaka”)
`1988 Automobile Insurance Shoppers’
`Guide, published in 1988 (“Florida Guide”)
`1995 Consumers Guide on Automobile
`Insurance (Downstate), published in 1988
`(“New York Guide”)
`Herrod, published on August 16, 1995
`(“Herrod”)
`“An Interest in Black Magic – Motor
`Technology,” published on January 1, 1994
`(“Black Magic”)
`Declaration of Mary L. O’Neil (“O’Neil
`Dec.”)
`Curriculum vitae of Mary L. O’Neil and
`List of Matters
`“Disparate Impact and Unfairly
`Discriminatory Insurance Rates,” Michael J.
`Miller, Casualty Actuarial Society E-Forum,
`Winter 2009.
`Declaration of Scott Andrews (“Andrews
`Dec.”)
`Curriculum vitae of Scott Andrews and List
`of Matters
`OBD-II Background—Where’d It Come
`From?,
`http://www.OBDii.com/background.html
`(follow “Where’d it come from?”
`hyperlink)
`Excerpt from Shuji Mizutani, Car
`Electronics, page 250 (Nippondenso Co.
`
`vi
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`
`Exhibit 1016
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`Exhibit 1017
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`Exhibit 1018
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`Covered Business Method Patent Review
`United States Patent No. 6,064,970
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`Ltd. 1992)
`
`Excerpt from David S. Boehner,
`Automotive Microcontrollers, in
`Automotive Electronics Handbook, pages
`11.24-11.29 (Ronald K. Jurgen ed., 1995)
`
`Declaration of Amanda F. Wieker
`
`Declaration of Georginne Blundell
`
`
`
`vii
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`I.
`
`INTRODUCTION
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`Covered Business Method Patent Review
`United States Patent No. 6,064,970
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`The ‘970 Patent is merely an attempt to claim ideas long known in the art—
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`monitoring and recording vehicle data for insurance rating. Independent claims 1, 4-
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`6, and 18 have four main elements: (1) “monitoring” or “extracting” data representing
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`vehicle or driver behavior during a selected time period; (2) “recording” the data in,
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`e.g., a database; (3) “generating” either an actuarial class or insured profile with limits
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`and deductibles; and (4) “determining” a retrospective insurance cost. Dependent
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`claims 3 and 7-17 simply recite additional details.2
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`These claimed principles were not invented by Applicants, as confirmed by,
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`inter alia, the ‘970 Patent’s Background and Applicants’ statements during prosecution
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`and ex parte reexamination. Indeed, Applicants admitted it was well known to monitor,
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`record and use data collected from a vehicle to assess insurance costs. First,
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`Applicants acknowledged as commonplace:
`
`
`
`Systems that “disclose a variety of conventional techniques for recording
`vehicle operation data elements in a variety of data recording systems”
`(Ex. 1001 at 2:54-61);
`
`
`Vehicle tracking systems “with navigation systems for providing
`
`2 These claims add one or more of the following: (1) raw, derived, and calculated data
`(claim 3); (2) determining a trigger event and storing/transmitting a related signal
`(claims 7-8); (3) using an output data value for computing an insurance rating for a
`future data collection period (claim 9); (4) comparing data elements to preset values to
`create an adjusted insurance cost output (claims 10-11); (5) using adjusted cost for a
`prospective or retrospective basis (claim 12); (6) generating an adjusted underwriting
`cost (claims 13-14), including for a prospective or retrospective basis (claim 15); (7)
`applying a discount or surcharge to the base cost of vehicle insurance (claims 16-17).
`1
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`Covered Business Method Patent Review
`United States Patent No. 6,064,970
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`information describing a vehicle’s location . . . . When such positioning
`information is combined with roadmaps in an expert system, vehicle
`location is ascertainable” (id. at 3:28-34);
`Radio communication
`links and cellular phones for “immediate
`communication of certain types of data elements or . . . a more
`immediate response
`in cases of theft, accident, break-down or
`emergency” (id. at 1:61-66); and
`Detection and recording of vehicle usage data, e.g., seatbelt usage, to
`assess vehicle insurance costs (id. at 1:66-2:2).
`
`
`
`
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`Second, the ‘970 Patent concedes that “[c]urrent motor vehicle control and operating
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`systems comprise electronic systems readily adaptable for modification to obtain the
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`desired types of information relevant to determination of the cost of insurance.” Id.
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`at 3:25-28. And, third, the ‘970 Patent makes plain that actuarial classes were already
`
`used to rate insureds in “conventional insurance.” Id. at 1:16-2:37. Indeed, during
`
`prosecution Applicants stated that the prior art was “useful for teaching the
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`collection of operational data about a vehicle . . . . [that] can be acquired by
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`automobile insurance companies for ‘appropriately allocating higher costs only
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`among the highest risk drivers’ . . . [or for] evaluat[ing] the driving habits of
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`vehicle operators.’” Ex. 1002 at 128, 7/19/99 Amend. at 5.
`
`During reexamination, the Examiner found all original claims anticipated or
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`obvious by the prior art (including references cited in this Petition). The Owner
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`obtained allowance with amended claims only by telling the Examiner after final
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`
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`2
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`

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`Covered Business Method Patent Review
`United States Patent No. 6,064,970
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`rejection that the addition of either (i) actuarial classes of insurance or (ii) an insured
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`profile including limits and deductibles distinguishes the claims over the art. As the
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`prosecution history makes clear, this was the sole reason the Examiner was persuaded to allow
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`the claims. (See infra § IV.C.) In fact, as demonstrated in this Petition, this was false:
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`both concepts were standard in all vehicle insurance policies and necessary to comply
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`with state insurance regulations, as exemplified by the explicit statements in the New
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`York and Florida consumer insurance guides cited in proposed grounds for rejection
`
`in this Petition. (See infra § V.) Accordingly, the amended claims are all similarly
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`invalid, and judgment should be entered against each of them.
`
`II.
`
`PETITIONER HAS STANDING
`A.
`The ‘970 Patent is a “covered business method patent” under § 18(d)(1) of the
`
`The ‘970 Patent Is a Covered Business Method Patent
`
`Leahy-Smith America Invents Act, Pub. L. 112-29 (“AIA”) and § 42.301.3 As
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`discussed above, the ‘970 Patent involves methods for analyzing and processing data
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`for financial products and services—specifically, insurance. See Ex. 1009, O’Neil Dec.
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`¶ 19. The claimed methods concern the administration and management of an
`
`insurance policy to adjust insurance premiums based on monitored vehicle data. See
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`AIA § 18(d)(1); § 42.301(a). See also 77 Fed. Reg. 48,734, 48,735 (Aug. 14, 2012)
`
`(“[T]he definition of covered business method patent was drafted to encompass
`
`
`3 All sections cited in this Petition are from either 35 U.S.C. or 37 C.F.R. unless stated
`otherwise. All emphasis is added by Petitioner unless otherwise noted.
`3
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`United States Patent No. 6,064,970
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`patents ‘claiming activities that are financial in nature, incidental to a financial activity
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`or complementary to a financial activity.’”) (citation omitted). The ‘970 Patent also is
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`not a “technological invention” because it does not claim “subject matter as a whole
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`[that] recites a technological feature that is novel and unobvious over the prior art[]
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`and solves a technical problem using a technical solution.” § 42.301(b). Indeed, the
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`PTO clearly concluded during reexamination that there was no “technological
`
`feature” that was novel and unobvious. To the contrary, the claims were (incorrectly)
`
`considered patentable only because they had been amended to recite the abstract
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`manipulation of information—“generating”/“determining” either an actuarial class or
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`an insured profile—which is not a “technological feature.” Indeed, the claimed
`
`methods merely implement a way of “bas[ing] insurance charges with regard to
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`current material data . . . to provide a classification rating of the operator and the
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`vehicle in an actuarial class.” Ex. 1001 at 3:45-49. The subject matter as a whole also
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`does not solve a “technical problem.” Id. at 3:25-28 (“Current motor vehicle control
`
`and operating systems comprise electronic systems readily adaptable for modification
`
`to obtain the types of information relevant to determination of the cost of
`
`insurance.”). Instead, it supposedly “overcomes the problem of determining [a] cost
`
`of vehicle insurance based upon data which does not take into consideration how a
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`specific vehicle is operated.” Id. at 3:42-45, 5:44-46 (“Other benefits and advantages
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`of the subject new vehicle insurance cost determination process will become apparent
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`
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`4
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`United States Patent No. 6,064,970
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`to those skilled in the art”). The ‘970 Patent – as filed, argued and issued – clearly
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`concerns nothing more than non-technical issues of insurance costs. See Ex. 1001 at
`
`[52] (‘970 Patent classified in U.S. Class 705/4, “Insurance (e.g., computer
`
`implemented system or method for writing insurance policy, processing insurance
`
`claim, etc.).”)
`
`Petitioner Is a Real Party In Interest Sued for Infringement
`
`B.
`As discussed in the Mandatory Notices, the ‘970 Patent was asserted against
`
`Petitioner in Case No. 1:10-cv-01370, Progressive Cas. Ins. Co. v. Safeco Ins. Co. of Ill. et al.,
`
`pending in the U.S. District Court for the Northern District of Ohio.
`
`III. OVERVIEW OF SPECIFIC GROUNDS FOR WHICH IT IS MORE
`LIKELY THAN NOT THAT THE CHALLENGED CLAIMS (1 AND
`3-18) ‘970 PATENT ARE UNPATENTABLE
`
`Pursuant to § 42.208 (and § 42.300), Petitioner asserts that at least one—and,
`
`indeed, every one—of the challenged claims of the ‘970 Patent is unpatentable as
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`invalid under the requirements of §§ 102 and 103. The accompanying Exhibit List
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`lists all prior art references relied upon in the present Petition for the asserted grounds
`
`of invalidity under §§ 102 and 103—including references not previously cited to or
`
`considered by the PTO. Section V.A lists each ground upon which it is more likely
`
`than not that the challenged claims are unpatentable as anticipated under § 102
`
`and/or obvious under § 103, and renders a detailed explanation therefor. This
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`Petition relies on certain prior art applied by the PTO during reexamination (including
`
`the primary “Kosaka” reference) to reject the original claims of the ‘970 Patent,
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`5
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`Covered Business Method Patent Review
`United States Patent No. 6,064,970
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`together with additional references confirming that the “actuarial class” and “insured
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`profile” limitations the Patent Owner added to obtain allowance did not, in fact, draw
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`any distinction from the prior art. As noted above, Petitioner has simultaneously filed
`
`an additional Petition seeking covered business method review and judgment against
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`the same claims of the ‘970 Patent based on different prior art – in particular, based
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`on additional references (including the primary “Bouchard” reference) that the PTO
`
`applied in reexamination to reject the original claims. (Again, Petitioner notes that the
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`Director, pursuant to Rule 325(c), may determine at the proper time that merger of
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`these proceedings may be appropriate.)4
`
`IV. BACKGROUND INFORMATION FOR THE ‘970 PATENT
`A. Overview of the ‘970 Patent
`The ‘970 Patent – issued to Progressive on May 16, 2000, with Robert J.
`
`McMillan, Alexander D. Craig, and John P. Heinen as the named inventors – states it
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`is directed to “a method and system of determining a cost of automobile insurance
`
`based on monitoring, recording and communicating data representative of operator
`
`and vehicle driving characteristics.” Ex. 1001, ‘970 Pat. at Abstract. As explained in
`
`Section I, most of the written description of the ‘970 Patent relates to well-known
`
`insurance schemes and vehicle monitoring technologies, many acknowledged by the
`
`
`4 Petitioner acknowledges with appreciation the procedural guidance provided by the
`Chief Judge and others at the Patent Trial and Appeal Board regarding the
`appropriateness of such a division of grounds under the transitional program for
`covered business method patents.
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`6
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`patent itself as prior art. The ‘970 Patent thus recognizes that “current motor vehicle
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`control and operating systems comprise electronic systems readily adaptable for
`
`modification to obtain the desired types of information relevant to determination of
`
`the cost of insurance.” Id. at Col. 3: 25-28. Indeed, Figure 3 discloses a motor vehicle
`
`with well-known components for “implementing the subject invention” (id. at Col.
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`5:44-46) – e.g., on-board computer (300), vehicle data bus (304), vehicle sensors (306),
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`driver input device (308), car battery (310), GPS antenna (312), and comm. link (314).
`
`
`
`The claims of the ‘970 Patent – reciting monitoring and recording vehicle data and
`
`determining a cost of insurance for the monitored period – are thus mere
`
`combinations of known elements. See § I, supra.
`
`B. The ‘970 Patent Prosecution History
`The application resulting in the ‘970 Patent (No. 09/135,034) was filed on
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`August 17, 1998, and claims priority to U.S. App. No. 08/592,958, filed on January
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`7
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`1996. Originally-filed claims 1-20 were canceled and claims 28-47 were added by
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`preliminary amendments.
`
`In the First Office Action the Examiner rejected all pending claims (21-40).5
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`Claims 21-24, 28, 29, 33 and 34 were rejected under § 102(b) as being “clearly
`
`anticipated by Camhi et al (5,430,432) or Ousbourbe [sic] (5,499,182).” Ex. 1002 at
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`137, OA 1 at 5. Rather than disputing the Examiner’s conclusions, Applicants
`
`admitted that both teach (1) collecting vehicle driver data and (2) providing that data
`
`to insurers for assessing insurance rates. Instead, they tried to distinguish their
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`“invention” from Camhi and Ousborne on one ground, asserting that these
`
`references merely teach rating for a future period based on past driving activity. Ex.
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`1002 at 128, 7/19/99 Amend. at 5 (“[A] more sophisticated scheme of collecting
`
`historical
`
`information
`
`in a conventional
`
`insurance scheme by generating a
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`prospective rate based upon then known operating results and parameters of the
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`vehicle operator.”). According to Applicants, the “important and consequential
`
`advantage” of their invention, by contrast, is “determining insurance costs for a
`
`certain period based upon how the vehicle is operated during that very same time
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`period.” Id. at 5-6 (“[T]he subject invention determines the cost of insurance
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`for a certain time period based upon the data elements collected during that
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`
`5 The Examiner re-numbered pending claims 28-47 as prosecution claims 21-40. The
`Examiner also raised various other objections, including impermissible new matter,
`nonstatutory double patenting, indefiniteness, and failure to provide a written
`description requirement. Ex. 1002 at 135-36, 3/18/99 OA (“OA 1”) at 3-4.
`8
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`same time period”); (“[T]he important and consequential advantage of the subject
`
`invention, of determining insurance costs for a certain period based upon how
`
`the vehicle is operated during that very same period, is defined in the claims and
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`thus patentably distinguishes the invention from the teachings of the references.”6).
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`Thus, in arguing to obtain allowance Applicants clearly limited their “invention” to
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`merely determining insurance cost adjustments, premium adjustments, and ratings for
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`application to the monitored time period and affirmatively disclaimed determining
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`prospective cost adjustments, premium adjustments and ratings for application to a
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`future time period.
`
`The Examiner was not persuaded – finding that Applicants’ arguments were
`
`premised, in part, on reasons for allowance in the parent application for claims that
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`were narrower than the claims of the instant application – and maintained his
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`rejections, citing Camhi and Ousborne as references that “record data which is to be
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`used by an insurance company for the purpose of determining the cost of insurance
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`based on driver habits.” Ex. 1002 at 122, 8/13/99 OA at 3. Applicants attempted
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`again in an interview to argue their claims were novel because they taught adjusting
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`insurance premiums for the current monitored period and not a future period. See id.
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`at 110, 11/12/99 Int. Sum. (“[T]he instant invention . . . adjusts the insurance
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`6 As noted during reexamination, Applicants, represented by the same attorney, made
`the same argument when seeking allowance of the ‘970 Patent’s parent application.
`See Ex. 1003 at 2722, 9/22/2010 Request at 12 n.5.
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`premium for the current insurance premium period and not a future insurance
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`premium period as in the applied prior art.”).
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`As a result, the Examiner agreed to allow claims 21, 24, and 26, and agreed to
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`allow claims 22 and 28 if amended to reflect the “current insurance premium period”
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`limitations.7 Id. Applicants thereafter amended claim 22 to require that the database
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`then “be[] used to determine an insurance charge for the vehicle operation for
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`said selected time period,” and claim 28 to require that “the output data value is
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`used to compute an insurance rating for the vehicle FOR the data collection
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`period” (emphasis in original), and Applicants argued these addressed the Examiner’s
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`concern that “he failed to see . . . a correlation between the data collection mentioned
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`in these claims and the particular period of insurance charges for which the data is
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`used are the same periods.” Id. at 112, 11/15/99 Amend. at 2.
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`The Examiner then allowed claims 21-23, 26, 28-34, 37, 38 and 41 (Ex. 1002 at
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`108, Notice of Allowability) – all now including at least one limitation requiring
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`monitoring the vehicle for a time period and determining the insurance cost for that
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`same period.8
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`C. The ‘970 Patent Reexamination File History
`On November 24, 2010, Petitioner successfully requested reexamination of the
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`‘970 Patent (Control No. 90/011,252). See Ex. 1003, Order Granting Request at 1.
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`7 Filed claims 21, 22, 24, 26 and 28 issued as claims 1, 2, 4, 5 and 6, respectively.
`8 For a more fulsome discussion of the file history for the ‘970 Patent, see § II.B.1(b)
`of the Request for Ex Parte Reexamination. See Ex. 1003 at 2719-25, Request at 9-15.
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`On January 10, 2012, an Ex Parte Reexamination Certificate for the ‘970 Patent
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`issued. Independent claims 1 and 4-6 were amended; independent claim 2 was
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`cancelled; dependent claim 3 was amended; and dependent claims 16-17 and
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`independent claim 18 were newly added. See generally Ex. 1001, Reexam. Cert.
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`Progressive amended original independent claims 1 and 6, and newly-added
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`independent claim 18 during reexamination to include, inter alia, new steps concerning
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`actuarial classes of insurance based on monitored data (new text italicized, deleted text
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`in brackets):
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`1. A method of generating a database comprising data elements
`representative of operator or vehicle driving characteristics, the method
`comprising:
`generating acturial [sic] classes of insurance, which group operators or
`vehicles having a similar risk characteristic, from actual monitored driving
`characteristics during a selected time period as represented by recorded data elements
`representative of an operating state of the vehicles or an action of the operators; and
`monitoring a plurality of the data elements . . . .
`
`6. A method of monitoring a human operator controlled power source
`driven vehicle, the method comprising: . . .
`correlating the group data values to preset values in a second memory
`and generating an output data value based on the correlation wherein the
`output data value is used to compute an insurance rating for the vehicle
`[FOR the data collection period] for the data collection period that is based on
`an actuarial class of insurance which groups other human operator controlled
`power source driven vehicles having a similar operator or vehicle risk characteristic and
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`which also represents the actual driving characteristics of the vehicle monitored and
`recorded from the at least one sensor.
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`18. A method of monitoring a human operator controlled power source driven vehicle,
`the method comprising:
`extracting one or more data elements by an on-board computer from at least one sensor
`wherein the one or more elements are actual driving characteristics of at least one
`operating state of the vehicle and at least one human operator’s actions during a data
`collection period;
`analyzing, grouping, and storing the one or more data elements as group data values
`in a first memory related to a predetermined group of elements;
`correlating the group data values to preset values related to safety standards in a
`second memory and generating an output data value based on the correlation; and
`computing an insurance rating based upon the output data value for the vehicle for the
`data collection period, in which the insurance rating is also based on an actuarial
`class of insurance wherein said actuarial class of insurance groups other human
`operator controlled power source driven vehicles having a similar operator or vehicle
`risk characteristic as well as represents the actual driving characteristics of the vehicle
`monitored and recorded from the at least one sensor, and setting prospective insurance
`premiums based on the actuarial class of insurance.
`Id. at 1:27-36, 2:26-48, and 2:57-4:5.
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`Progressive amended independent claims 4 and 5 to include, inter alia, new
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`steps concerning an “insured profile” that includes limits and deductibles (new text
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`italicized