UNITED STATES PATENT AND TRADEMARK OFFICE
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________
`
`LIBERTY MUTUAL INSURANCE CO.
`Petitioner
`
`v.
`
`PROGRESSIVE CASUALTY INSURANCE CO.
`Patent Owner
`______________
`
`Case CBM2012-00002
`Patent 6,064,970
`______________
`
`Before the Honorable JAMESON LEE, JONI Y. CHANG, and MICHAEL R.
`ZECHER, Administrative Patent Judges.
`
`PETITIONER LIBERTY MUTUAL INSURANCE CO.’S OPPOSITION TO
`PATENT OWNER’S MOTION TO EXCLUDE EVIDENCE PURSUANT
`TO 37 C.F.R. § 42.64(C)
`
`
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________
`
`LIBERTY MUTUAL INSURANCE CO.
`Petitioner
`
`v.
`
`PROGRESSIVE CASUALTY INSURANCE CO.
`Patent Owner
`______________
`
`Case CBM2012-00002
`Patent 6,064,970
`______________
`
`Before the Honorable JAMESON LEE, JONI Y. CHANG, and MICHAEL R.
`ZECHER, Administrative Patent Judges.
`
`PETITIONER LIBERTY MUTUAL INSURANCE CO.’S OPPOSITION TO
`PATENT OWNER’S MOTION TO EXCLUDE EVIDENCE PURSUANT
`TO 37 C.F.R. § 42.64(C)
`
`
`
`Case CBM2012-00002
`Patent 6,064,970
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`Page
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`Table of Contents
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`I.
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`Ms. O’Neil’s and Mr. Andrews’ Testimony Responding to Progressive’s
`Attacks on Kosaka Is Proper Rebuttal ....................................................................... 3
`II. Ms. O’Neil’s and Mr. Andrews’ Testimony Responding to Progressive’s
`Arguments on “Crisp” Values Is Proper Rebuttal ................................................. 10
`III. Ms. O’Neil’s and Mr. Andrews’ Testimony Responding to Progressive’s
`Arguments on the Use of Fuzzy Logic Is Proper Rebuttal .................................. 12
`IV. Ms. O’Neil’s Testimony Responding to Progressive’s Attack on Herrod Is
`Proper Rebuttal ............................................................................................................ 13
`V. Ms. O’Neil’s Testimony Responding to Mr. Miller Is Proper Rebuttal .............. 14
`VI. Conclusion .................................................................................................................... 15
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`i
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`Case CBM2012-00002
`Patent 6,064,970
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`
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`In response to Patent Owner’s Motion to Exclude (“Mot.”, Paper 51), Peti-
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`tioner1 respectfully submits that the Board, sitting as a non-jury tribunal with adminis-
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`trative expertise, is well-positioned to determine and assign appropriate weight to the
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`evidence presented in this trial, without resorting to formal exclusion that might later
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`be held reversible error. See, e.g., S.E.C. v. Guenthner, 395 F. Supp. 2d 835, 842 n.3 (D.
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`Neb. 2005); Builders Steel Co. v. Comm’r of Internal Revenue, 179 F.2d 377, 379 (8th Cir.
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`1950) (vacating Tax Court decision for exclusion of competent, material evidence);
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`Donnelly Garment Co. v. NLRB, 123 F.2d 215, 224 (8th Cir. 1942) (finding NLRB’s re-
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`fusal to receive testimonial evidence was denial of due process). See also, e.g., Samuel H.
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`Moss, Inc. v. FTC, 148 F.2d 378, 380 (2d Cir.), cert. denied, 326 U.S. 734 (1945) (“Even
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`in criminal trials to a jury it is better, nine times out of ten, to admit, than exclude evi-
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`dence and in such proceedings as these the only conceivable interest that can suffer by
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`admitting any evidence is the time lost, which is seldom as much as that inevitably lost
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`by idle bickering about irrelevancy or incompetence”). Even under the strict applica-
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`tion of the Rules of Evidence and arguments regarding the proper scope of rebuttal
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`that Progressive urges here, however, cf. 77 Fed. Reg. 48,612, 48,616 (Aug. 14, 2012,
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`Rules of Practice) (“42.5(a) and (b) permit administrative patent judges wide latitude
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`in administering the proceedings to balance the ideal of precise rules against the need
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`for flexibility to achieve reasonably fast, inexpensive and fair proceedings”), Petition-
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`1 All emphases are added and abbreviations are as in Petitioner’s Reply (Paper 33).
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`1
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`Case CBM2012-00002
`Patent 6,064,970
`er’s evidence is entirely proper, while Progressive’s objections are baseless.
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`Despite the Board’s institution of trial based on its determination that Petition-
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`er had made a prima facie case of invalidity based on the evidence submitted with the
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`Petition (see Institution Decision (“ID”, Paper 10) at 2), Progressive now argues that
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`Petitioner’s rebuttal experts and documents should be excluded as “new evidence” that
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`should have been submitted with the Petition to make out that same prima facie case.
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`This contradicts both common sense and the Board’s Institution Decision, which
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`found there were no “holes” to “plug,” as Progressive now imagines. (Mot. 1.) De-
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`spite Progressive’s attempt to poke such holes and avoid this trial with a raft of argu-
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`ments in its Preliminary Response, the Board found Petitioner’s submitted evidence
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`addressed each limitation of the challenged claims. Petitioner’s later rebuttal evidence,
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`in contrast, responded to Progressive’s efforts in its Opposition (“Opp.”, Paper 27) to
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`attack Petitioner’s prima facie case. While Petitioner’s Reply continued to urge invalidi-
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`ty on the same grounds instituted by the Board (as any reply will do), this was entirely
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`proper—it certainly did not transform Petitioner’s rebuttal evidence into part of a pri-
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`ma facie case, or otherwise make that rebuttal evidence untimely or improper. Indeed,
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`Progressive’s unsupported arguments to the contrary would make all replies and reply
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`evidence a nullity, and would deprive Petitioner and others using these PTO trial
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`mechanisms of their rights to present a case, confront the Patent Owner’s attacks on
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`that case (see F.R.E. 611), and carry their burden of proof with the protections of basic
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`fairness and due process.
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`2
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`Case CBM2012-00002
`Patent 6,064,970
`I. Ms. O’Neil’s and Mr. Andrews’ Testimony Responding to Progressive’s
`Attacks on Kosaka Is Proper Rebuttal
`
`The September 16, 2012 Petition demonstrated that the disclosures of Kosaka
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`(EX1004)—combined with other references for certain claims—render every claim of
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`the ‘970 Patent invalid. In instituting trial, the Board concluded Petitioner had made
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`out a prima facie case of invalidity for every asserted ground—i.e., that it had “demon-
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`strate[d] that it is more likely than not that the challenged claims are unpatentable.”
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`ID 2. Progressive, relying on “expert” declarations, then attempted to attack this pri-
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`ma facie case, arguing in its Opposition that Kosaka’s fuzzy logic “approach would
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`have been beyond the level of a POSITA” and that Kosaka’s disclosure would not
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`have enabled a POSITA to “understand” or “use” it. See e.g., Opp. 32-33; EX2016 ¶¶
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`28-32.
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`Petitioner’s experts, Mr. Andrews and Ms. O’Neil, properly responded to Pro-
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`gressive’s arguments by explaining that the POSITA defined in Petitioner’s initial
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`submissions (see EX1012 ¶¶ 17-18) would in fact understand Kosaka’s approach and
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`know how to use it.2 See RX1019 ¶¶ 5-8; RX1022 ¶¶ 24, 26, 28, 31. In particular, Pe-
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`titioner’s experts countered Progressive’s Opposition arguments that a POSITA in
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`2 Contrary to Progressive’s suggestion (Mot. 5), there was no need, in defining a
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`POSITA, to catalog particular experience with fuzzy logic, just as there was no need
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`to call out particular experience with memory, software, processors or other known
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`aspects of the field.
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`3
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`Patent 6,064,970
`both the insurance and technical aspects of the ‘970 patent would have been unfamil-
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`iar with fuzzy logic by pointing to seven publications—all of which would have been
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`known to a POSITA, see e.g., Standard Oil Co. v. American Cyanamid Co., 774 F.2d 448,
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`454 (Fed. Cir. 1985)—clearly demonstrating that fuzzy logic was well-understood and
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`known to be used for insurance purposes by 1996. See RX1020-1021, 1024-1028. See
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`also, e.g., CBM2013-00009 (same parties) August 29, 2013 Telephonic Hearing Tr. (Pa-
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`per 37, “CBM2013-00009 Tr.”) 8:11-19 (“If the opposition says…no one knows
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`about anything, then they’re entitled to put in 30 declarations if they want to
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`say…anybody in this field would have known about this…. [T]he reply evidence
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`would have been triggered by the opposition”); CBM2012-00010 (same parties), Au-
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`gust 22, 2013 Telephonic Hearing Tr. (Exhibit 2300, “CBM2012-00010 Tr.”) 19:6-14
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`(“[S]ometimes references come in not as a primary reference, they come in just to
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`show what is the level of the ordinary skill in the art. If you have a declarant that says
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`no one would have known this, it’s perfectly proper for the other party to cite refer-
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`ences that say…that testimony isn’t true because here’s 10 that show exactly what you
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`say didn’t exist”).
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`Hoping to avoid this fact and revive its concocted argument that fuzzy logic
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`somehow renders the proposed prior art combinations (and, indeed, Kosaka standing
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`alone) unfathomable to a person of ordinary skill, Progressive now seeks to exclude
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`these clear rebuttals confirming a POSITA’s knowledge by arguing Petitioner wants
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`the Board to combine these seven references with Kosaka and the experts’ testimony
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`4
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`Patent 6,064,970
`“in an effort to state a prima facie case.” Mot. 5-7. This is ridiculous. As the Board
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`concluded in its Institution Decision, that prima facie case was complete when Liberty
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`Mutual filed its Petition commencing this proceeding. ID 2; CBM2013-00009 Tr. 7:7-
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`18, 8:1-8. In its Reply submissions on these points, including its citation of references
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`confirming the level of a POSITA’s understanding, Petitioner did nothing more than
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`rebut Progressive’s groundless arguments that Kosaka’s disclosure is “deficient” (Mot.
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`5). See e.g., CBM2013-00009 Tr. 8:11-19; CBM2012-00010 Tr. 19:6-14; In re Donohue,
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`766 F.2d 531 (Fed. Cir. 1985) (holding a single publication taught all the elements of
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`the claim; motivation to combine not required, because additional references were
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`submitted simply as evidence of what was in the public’s possession before applicant’s
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`invention); Thomas & Betts Corp. v. Litton Sys. Inc., 720 F.2d 1572, 1581 (Fed. Cir. 1983)
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`(holding that references, though “not technically prior art,” may properly be used as
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`“indicators of the level of ordinary skill in the art”).
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`Progressive’s suggestion that an individual working in this field of art must be
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`able to implement every aspect of Kosaka’s teachings without consulting any refer-
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`ences (Mot. 6-7) is a distortion of well-settled law. The fictional legal construct of a
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`POSITA is a hypothetical person who is presumed to know already all of the relevant
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`art, including the references Progressive now hopes to exclude, see Standard Oil Co.,
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`774 at 454—a level of understanding actual people might well achieve by consulting
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`one or more such documents to “educate[] themselves” (Mot. 7). For example, Ms.
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`O’Neil specifically noted that while she had not personally applied fuzzy logic analysis
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`5
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`Case CBM2012-00002
`Patent 6,064,970
`to her own work, this does not mean a POSITA would not have done so. EX2022
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`52:4-9, 53:3-6, 66:2-7; see e.g., Norgren Inc. v. International Trade Com’n, 699 F.3d 1317,
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`1325, 1327 (Fed. Cir. 2012) (holding that the “correct” obviousness analysis is
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`“whether it would have been obvious to the hypothetical person of ordinary skill in
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`the art, not whether it was obvious to [this expert] personally”); Amazon.com, Inc. v.
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`Barnesandnoble.com, Inc., 239 F.3d 1343, 1364 (Fed. Cir. 20001) (holding that whatever
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`an expert “did or did not personally realize at the time based on his actual knowledge is
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`irrelevant”; the relevant inquiry is “what a hypothetical ordinarily skilled artisan would
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`have gleaned from the cited references”).
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`Progressive further seeks to exclude Mr. Andrews’ rebuttal testimony on the
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`knowledge of a POSITA because he relies on Kosaka’s Figures 10 and 11, which were
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`not specifically called out in the Petition or his previous declaration. Mot. 7-9. This
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`defies common sense: Progressive’s expert, Dr. Ehsani, relied extensively upon these very
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`same figures to attack Kosaka, e.g., EX2016 ¶¶ 23-24, 28, 31-32, and for Mr. Andrews to
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`respond properly to Dr. Ehsani’s assertions, his opinions must necessarily address
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`those same figures. Both experts testified they reviewed Kosaka as a whole—not just
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`selected bits (see EX1012 ¶¶ 13, 26, RX1019 ¶ 4; EX2016 ¶ 12)—and the suggestion
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`that Progressive and its expert should be allowed to attack this reference by pointing
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`to certain excerpts while preventing Petitioner and its expert from discussing those same
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`portions in rebuttal is nonsense. Such a framework would be highly prejudicial to any
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`petitioner, and would render meaningless the notion of replies and rebuttal evidence,
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`6
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`Patent 6,064,970
`both clearly contemplated by the Rules. See, e.g., CBM2013-00009 Tr. 8:11-19;
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`CBM2012-00010 Tr. 23:18-20 (“[I]n a reply the party is permitted to file rebuttal dec-
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`laration testimony”); 77 Fed. Reg. at 48,620 (“replies may rely upon appropriate evidence to
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`support the positions asserted”), 48,638; Rules 42.63(a) (“Exhibits required. Evidence
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`consists of affidavits, transcripts of depositions, documents, and things”), 42.2 (“Affidavit
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`means affidavit or declaration”), 42.24(c) (page limits for “Replies” do “not in-
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`clude…appendix of exhibits”).
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`Progressive’s further allegation that Mr. Andrews’ opinions are “unreliable” be-
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`cause he cited 1997 and 1999 documents to confirm the use of fuzzy logic in 1996
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`(Mot. 9) is similarly baseless: Mr. Andrews clearly explained that the 1997 paper—
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`authored by Progressive’s own “expert” (Ehsani), who opined that a fuzzy logic ap-
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`proach was beyond the understanding of a POSITA in 1996—cites to an existing
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`1994 book on fuzzy logic. RX1020 at 1001-1005. Similarly, the 1999 publication de-
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`scribes the use of fuzzy logic “for two decades” since the “late 1980s.” RX1021 at 3.
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`These references were relied upon not to evidence the use of fuzzy logic in 1997 or
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`1999, but rather by 1994 and as early as the “late 1980s,” all well before the claimed
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`priority date. See e.g., Eli Lilly and Co. v. Barr Laboratories, Inc., 251 F.3d 955, 969-70
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`(Fed. Cir. 2001) (relying on 10-K—although filed with the SEC after the critical date—
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`as evidence “to support the recognition” of a POSITA).
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`And in arguing Mr. Andrews’ opinions on “insurance aspects” of Kosaka are
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`“unreliable,” and that ¶¶ 5 and 8 of Mr. Andrews’ Rebuttal Declaration should be ex-
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`7
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`Case CBM2012-00002
`Patent 6,064,970
`cluded on this basis (Mot. 9), Progressive conveniently ignores that Mr. Andrews de-
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`clined to opine on the insurance underwriting aspects of the reference. The paragraphs
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`of Mr. Andrews’ Rebuttal Declaration that Progressive seeks to exclude, ¶¶ 5 and 8,
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`actually contain no opinions on “insurance aspects” of Kosaka. RX1019 ¶¶ 5 and 8. To the
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`contrary, in paragraph 8 Mr. Andrews notes that neither he nor Progressive’s expert,
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`Dr. Ehsani, are qualified to determine the “question of insurance underwriting,” while
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`confirming this “does not stop a person of ordinary skill in the telematics aspects of the
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`‘970 patent from understanding how fuzzy logic would be applied to this problem and
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`implemented.” Id. ¶ 8.
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`Finally, Progressive’s suggestion that Petitioner was obligated to guess in ad-
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`vance all of Progressive’s manufactured arguments about supposedly “deficient dis-
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`closure” in Kosaka, and then respond to them preemptively in its Petition (Mot. 4-5)
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`is equally specious. See, e.g., CBM2013-00009 Tr. 9:23-10:5 (“If the op[position]
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`brings up something that could be addressed in the reply, then it doesn’t matter that
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`they could have put in that evidence” earlier).3 See also In re Antor Media Corp., 689
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`3 Progressive mischaracterizes the Board’s guidance as requiring a petition to identify
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`“all…supporting evidence” (Mot. 2), when the statement it edits to create this impres-
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`sion actually reads, “Generally, the proceedings begin with the filing of a petition that
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`identifies all of the claims challenged and the grounds and supporting evidence on a claim-
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`by-claim basis.” 77 Fed. Reg. 48,756, 48,757 (Aug. 14, 2012). See also id. at 48,763
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`8
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`F.3d 1282, 1288 (Fed. Cir. 2012) (“[P]rior art…is presumptively enabling barring any
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`showing to the contrary by a patent applicant or patentee.”). Indeed, while Progressive labored
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`mightily in its Preliminary Response to convince the Board to deny this trial, Progres-
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`sive itself apparently did not have these arguments in mind when it made that submis-
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`sion; they first appeared three months later, when Progressive filed its Opposition.
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`Preventing Petitioner from making substantive responses to these evolving attacks
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`from Progressive and its experts would rob Petitioner of any meaningful rebuttal,
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`while Petitioner would still bear the burden of demonstrating invalidity. See, e.g.,
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`CBM2013-00009 Tr. 8:8-9, 18:15-16 (“Petitioner gets the last word.”); CBM2012-00010
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`Tr. 30:7-10 (“You really can’t…tie the other party’s hands by putting in a declaration
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`that said something and then expect the other side not to file something in rebuttal.”),
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`26:6-8 (“Petitioner gets the last word. That’s the rule. They bear the burden.”). The
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`one-sided proceedings wished for by Progressive are not what the Rules provide, and
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`¶¶ 5-9 of Mr. Andrews’ Rebuttal Declaration (RX1019), ¶¶ 24, 26, 28 and 31 of Ms.
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`O’Neil’s Rebuttal Declaration (RX1022), and Exhibits 1020-1021 and 1024-1028—
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`(“the presentation of an overwhelming number of issues tends to detract from the ar-
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`gument being presented, and can cause otherwise meritorious issues to be overlooked
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`or misapprehended. Thus, parties should avoid submitting a repository of all the information
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`that a judge could possibly consider, and instead focus on concise, well-organized, easy-to-
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`follow arguments supported by readily identifiable evidence of record.”).
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`9
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`evidencing the actual knowledge of a POSITA and contradicting Progressive’s at-
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`tempts to portray a POSITA as incapable—are all proper rebuttal. They should cer-
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`tainly not be excluded.
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`II. Ms. O’Neil’s and Mr. Andrews’ Testimony Responding to Progressive’s
`Arguments on “Crisp” Values Is Proper Rebuttal
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`Equally unavailing is Progressive’s argument to exclude Petitioner’s rebuttal ex-
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`pert testimony regarding “defuzzification” and “crisp” values—evidence countering
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`Progressive’s argument that Kosaka could not be used for the very purpose Kosaka itself
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`sets out: analyzing monitored vehicle data and rating a driver’s performance to adjust
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`vehicle insurance premiums (Mot. 10-12). Petitioner did not expressly refer to “‘crisp’
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`values or ‘defuzzification’ as a basis for unpatentability in the Petition” (Mot. 10) be-
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`cause there was no reason to do so: Kosaka clearly discloses producing distinct overall “risk
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`evaluation values” whose “crispness” was only called into question by Progressive to
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`concoct a “deficien[cy]” (Mot. 10) and suggest Kosaka “is so defective that a POSITA
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`would not know how to use [it].” See, e.g., EX2016 ¶¶ 13-17, 20-34. Petitioner’s ex-
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`perts properly responded by explaining that the use of both “fuzzy” interim values
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`and “crisp” results in Kosaka’s disclosure would, to the contrary, have been under-
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`stood by a POSITA, including the conversion of “fuzzy” values to “crisp” values
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`through standard “defuzzification.” See, e.g., RX1019 ¶ 9 (further citing RX1021);
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`10
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`RX1022 ¶¶ 26, 28, 29, 31 (further citing RX1025).4
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`Progressive further alleges Ms. O’Neil’s opinions are “unreliable” because she
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`is “not an expert in fuzzy logic,” and seeks to exclude ¶¶ 26 and 37 of her rebuttal dec-
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`laration on this misplaced basis. Mot. 12. However, while Ms. O’Neil has not per-
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`sonally applied fuzzy logic analysis in her own projects, through her experience in the
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`field of insurance she is familiar with fuzzy logic (e.g., EX2022 66:2-7), and she studied
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`logic (id. 51:19). And while she does not purport to be an expert in the technical de-
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`tails of implementing fuzzy logic in a computer system, Ms. O’Neil is certainly qualified
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`to respond to the opinions of Progressive’s expert, Mr. Miller (who also does not pro-
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`fess to be an “expert in fuzzy logic,” see, e.g., EX2010 (Miller Decl.), EX2015 (Miller
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`CV)) regarding, e.g., the use of Kosaka’s “risk evaluation values,” which may be derived
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`using fuzzy logic, for insurance purposes (i.e., to “adjust the premium”). See RX1022
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`¶¶ 25-26 (responding to EX2010 ¶ 36), 37 (responding to EX2010 ¶ 43).
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`Again, contrary to Progressive’s suggestion, no “new issues” (Mot. 12) are in-
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`troduced in Petitioner’s Reply and no new prima facie case of unpatentability is being
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`advanced: Petitioner’s experts are simply responding to Progressive’s attacks on
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`4 Progressive falsely suggests a contradiction in Ms. O’Neil’s testimony about risk
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`evaluation values where none exists (Mot. 12): her testimony continues (beyond the
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`cited portion) to confirm that “in the end, risk evaluation value has been defuzzified
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`and has been applied to determine a revised premium.” MX1037 at 84:7-23.
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`11
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`Kosaka’s disclosure of “crisp” values. Accordingly, there is no basis to exclude ¶ 9 of
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`Mr. Andrews’ Rebuttal Declaration (RX1019); ¶¶ 26, 28, 29, 31, and 37 of Ms.
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`O’Neil’s Rebuttal Declaration (RX1022); or Exhibits 1021 and 1025 evidencing a
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`POSITA’s knowledge regarding “crisp” values. These are all proper rebuttal material.
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`III. Ms. O’Neil’s and Mr. Andrews’ Testimony Responding to Progressive’s
`Arguments on the Use of Fuzzy Logic Is Proper Rebuttal
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`Further rebutting Progressive’s suggestion that supposedly “deficient disclosure”
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`of fuzzy logic in Kosaka somehow disables a POSITA from applying Kosaka’s teach-
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`ings of analyzing monitored vehicle data to determine insurance premiums (see supra,
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`at 3-7), Petitioner properly noted in Reply that Kosaka, in fact, states fuzzy logic need
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`not be used at all. This confirms, inter alia, that Progressive’s Opposition arguments are
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`irrelevant: Kosaka’s teachings of creating a rating factor for insurance premiums are
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`not bound to a particular fuzzy logic approach (which Progressive falsely portrays in its
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`Opposition as impenetrable, see supra), and Kosaka’s same overall risk evaluation val-
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`ues used to determine premiums result from either scenario (whether fuzzy logic or a
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`non-fuzzy insurance lookup table5). Rep. 5; RX1019 ¶ 10; RX1022 ¶ 28, 29, 37. Pro-
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`gressive’s attack on Ms. O’Neil for noting this clear disclosure in Kosaka (Mot. 13-14)
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`5 While Progressive expresses surprise that Mr. Andrews would not “know what the
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`content of a ‘common insurance table’ would be” (Mot. 13), there is nothing surprising
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`(or relevant) about this: as Progressive is well aware, Mr. Andrews is Petitioner’s ex-
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`pert in technical (not insurance) matters pertinent to the ‘970 patent.
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`12
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`is wholly unfounded: Ms. O’Neil is amply qualified to opine on the use of Kosaka’s
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`“risk evaluation value” for insurance purposes. See supra, at 12-13. That Ms. O’Neil
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`relies upon previously-uncited words in Kosaka to confirm this aspect of the refer-
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`ence (Mot. 13-14) has no bearing on the fact that she is rebutting Progressive’s argu-
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`ments about supposed limits of Kosaka’s disclosure, which is to be considered in its
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`entirety. See supra, 3-7; W.L. Gore & Associates, Inc. v. Garlock, Inc., 721 F.2d 1540, 1551-
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`52 (Fed. Cir. 1983). Yet again, no “new” issues and no “new theory of unpatentability”
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`are raised by Petitioner’s reply evidence (Mot. 13), which simply rebuts Progressive’s
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`Opposition attack on the same challenge and grounds for which Petitioner already
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`made its prima facie case. There is no basis to exclude ¶ 10 of Mr. Andrews’ Rebuttal
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`Declaration (RX1019) or ¶¶ 28, 29, and 37 of Ms. O’Neil’s Rebuttal Declaration
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`(RX1022), all of which are proper rebuttal.
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`IV. Ms. O’Neil’s Testimony Responding to Progressive’s Attack on Herrod
`Is Proper Rebuttal
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`Rebutting Progressive’s baseless assertion that Herrod is too technical and has
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`no “relevance” to insurance premium determination or Progressive’s redefinition of
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`“actuarial classes” (see, e.g., Opp. 24-25; Ex. 2010 ¶ 48), Petitioner properly pointed out
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`in Reply the repeated reference in Herrod to using the system for insurance purposes
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`(Rep. 10 & fn. 11; RX1022 ¶¶ 43, 49). And Ms. O’Neil further responded that even
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`under Progressive’s added requirements for “actuarial classes”—i.e., use of “claims”
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`(Opp. 9-10; EX2010 ¶¶ 16) and “household” (Opp. 29; Ex. 2010 ¶ 49) data, terms en-
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`Case CBM2012-00002
`Patent 6,064,970
`tirely absent from the Petitioner’s or the Board’s construction—a POSITA would
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`have understood Herrod’s disclosure of a usage-based insurance system that classifies
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`drivers based on monitored data to disclose such “actuarial classes.” See RX1022 ¶¶
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`43, 45-47, 49, 51. That Ms. O’Neil relies upon previously-uncited words in Herrod to
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`confirm this aspect of the reference (Mot. 15) has no bearing on the fact that she is
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`rebutting Progressive’s arguments about supposed limits of Herrod’s disclosure,
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`which is to be considered in its entirety (see supra, 3-7, 13; W.L. Gore & Associates, 721
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`F.2d at 1551-52), on the same challenge and grounds for which Petitioner already
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`made its prima facie case. There is simply no basis to exclude ¶¶ 43, 45-47, 49, 51 of
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`Ms. O’Neil’s Rebuttal Declaration (RX1022), all of which are proper rebuttal.
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`V. Ms. O’Neil’s Testimony Responding to Mr. Miller Is Proper Rebuttal
`Finally, Progressive’s attacks on the “reliability” of Ms. O’Neil’s rebuttal of Mr.
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`Miller’s testimony are entirely groundless. Ms. O’Neil’s use of the phrase “actual
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`claims data,” while it may not appear in haec verba in Mr. Miller’s text (Mot. 15), says
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`nothing about her reliability as an expert witness or the accuracy of her testimony. As
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`Ms. O’Neil indicates, Mr. Miller describes the use of actual claims data at length in his
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`declaration, with only a passing suggestion there “may be some other basis for justifi-
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`cation” but not stating “what that might be” (see EX2022 at 39:12-18, omitted from
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`Progressive’s cite at Mot. 15).6 E.g., RX1022 ¶ 8 (citing EX2010 ¶¶ 16-18, 34-35, 41-42
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`6 Further, the section of Miller’s declaration referenced, in the deposition passages cit-
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`Case CBM2012-00002
`Patent 6,064,970
`(“actual claim experience”), 44, 51). Again, there is no basis7 for excluding as “unreli-
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`able” ¶¶ 8, 13, 45, 50 and 56 of Ms. O’Neil’s Rebuttal Declaration (RX1022). See also
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`77 Fed. Reg. 48756 (Aug. 14, 2012, Office Patent Trial Practice Guide), 48767 (“A
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`motion to exclude must explain why the evidence is not admissible (e.g., relevance or
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`hearsay) but may not be used to challenge the sufficiency of the evidence to prove a particular
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`fact”).
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`VI. Conclusion
`For at least these reasons, Progressive’s Motion to Exclude should be denied.
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`ed by Progressive, as mentioning factors other than actual claims data actually “refers to
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`overall rate level” for providing that “an insurer’s rates comply with the statutory rate
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`standards” and not the creation of actuarial “classifications” that Ms. O’Neil was addressing.
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`EX2022, 33:24-34:19.
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`7 To the extent any response is required to Progressive’s improper incorporation by
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`reference of arguments in a motion to exclude in another trial (see Mot. 15, referring
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`to its motion to exclude in CBM2012-00004), Petitioner is addressing the baseless ob-
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`jections raised in that paper from Progressive in Petitioner’s corresponding opposition
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`in that trial.
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`Respectfully submitted,
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`Case CBM2012-00002
`Patent 6,064,970
`
`
`ROPES & GRAY LLP
`
`
`By /J. Steven Baughman/
`J. Steven Baughman, Lead Counsel
`James R. Myers, Backup Counsel (pro hac vice)
`Nicole M. Jantzi, Backup Counsel
`ROPES & GRAY LLP
`700 12th St. NW, Suite 900
`Washington, DC 20005
`Steven.baughman@ropesgray.com
`James.myers@ropesgray.com
`Nicole.jantzi@ropesgray.com
`
`Attorneys for Petitioner Liberty Mutual Insurance Co.
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`Mailing address for all PTAB correspondence:
`ROPES & GRAY LLP
`IPRM – Floor 43
`Prudential Tower
`800 Boylston Street
`Boston, Massachusetts 02199-3600
`
`16
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`October 11, 2013
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`CERTIFICATE OF SERVICE
`
`It is certified that a copy of PETITIONER LIBERTY MUTUAL INSUR-
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`ANCE CO.’S OPPOSITION TO PATENT OWNER’S MOTION TO EX-
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`CLUDE EVIDENCE PURSUANT TO 37 C.F.R. § 42.64(C) has been served in
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`its entirety on the Patent Owner as provided in 37 CFR § 42.6.
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`The copy has been served on October 11, 2013 by causing the aforementioned
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`document to be electronically mailed to:
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`Calvin P. Griffith, at: cpgriffith@jonesday.com
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`James L. Wamsley, III at: jlwamsleyiii@jonesday.com
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`John V. Biernacki at: jvbiernacki@jonesday.com
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`pursuant to the Petitioner and Patent Owner’s agreement.
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`
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`
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`/s/ Jordan M. Rossen
`Jordan M. Rossen
`
`
`ROPES & GRAY LLP
`
`
`
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`
`
`
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