Trials@uspto.gov
`571-272-7822
`
`
`
` Paper 78
`
`Entered: February 11, 2014
`
`
`
`
`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 CBM2012-00003
`Patent 8,140,358
`____________
`
`
`
`Before JAMESON LEE, JONI Y. CHANG, and MICHAEL R. ZECHER,
`Administrative Patent Judges.
`
`
`LEE, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 328(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`571-272-7822
`
`
`
` Paper 78
`
`Entered: February 11, 2014
`
`
`
`
`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 CBM2012-00003
`Patent 8,140,358
`____________
`
`
`
`Before JAMESON LEE, JONI Y. CHANG, and MICHAEL R. ZECHER,
`Administrative Patent Judges.
`
`
`LEE, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 328(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`
`Case CBM2012-00003
`Patent 8,140,358
`
`I.
`
`INTRODUCTION
`
`
`
`Liberty Mutual Insurance Company (“Liberty”) filed a petition on
`
`September 16, 2012, requesting a covered business method patent review of
`
`claims 1-20 of U.S. Patent No. 8,140,358 (“the ’358 patent”) pursuant to
`
`section 18(a) of the Leahy-Smith America Invents Act (“AIA”).1 Paper 1
`
`(“Pet.”). Because the petition raised a total of 422 grounds of
`
`unpatentability against 20 claims, the Board considered the petition as
`
`containing redundant grounds, and required Liberty to select a subset of
`
`those grounds to pursue in this proceeding. Paper 7. Also, prior to receiving
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`a preliminary response from the patent owner, Progressive Casualty
`
`Insurance Company (“Progressive”), the Board issued a decision declining
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`to institute review on 196 of the 422 grounds of unpatentability. Paper 8.
`
`
`
`On November 1, 2012, Liberty filed a paper indicating its selection of
`
`a subset of grounds of unpatentability to pursue in this proceeding. Paper 9.
`
`On November 26, 2012, the Board issued an order which (1) denied those
`
`non-selected grounds which previously were not denied in Paper 8, (2)
`
`summarized the alleged grounds of unpatentability remaining in this
`
`proceeding, and (3) instructed Progressive to respond only to the remaining
`
`alleged grounds of unpatentability. Paper 12.
`
`
`
`Progressive filed a patent owner preliminary response. Paper 13
`
`(“Prelim. Resp.”). Taking into account Progressive’s preliminary response,
`
`the Board determined that the information presented in Liberty’s petition
`
`
`
`1 Pub. L. No. 112-29, 125 Stat. 284, 329 (2011).
`
`2
`
`
`
`Case CBM2012-00003
`Patent 8,140,358
`
`demonstrates that it is more likely than not that each of claims 1-20 of the
`
`’358 patent is unpatentable. Pursuant to 35 U.S.C. § 324, the Board
`
`instituted this trial on February 12, 2013, as to claims 1-20 of the ’358
`
`patent. Paper 15 (“Dec.”).
`
` During the trial, Progressive filed a patent owner response (Paper 33,
`
`“PO Resp.”), and Liberty filed a reply to the patent owner response
`
`(Paper 39, “Reply”). Oral hearing was held on October 15, 2013.2
`
`The Board has jurisdiction under 35 U.S.C. § 6(c). This decision is
`
`a final written decision under 35 U.S.C. § 328(a) as to the patentability of
`
`claims 1-20 of the ’358 patent. For reasons discussed below, Liberty has
`
`proved, by a preponderance of the evidence, that claims 2-18 of the ’358
`
`patent are unpatentable, but not proved that claims 1, 19, and 20 are
`
`unpatentable. Therefore, claims 2-18 are herein cancelled.
`
`A final written decision in Case CBM2013-00009 is entered
`
`concurrently with this decision.
`
`A. The ’358 Patent
`
` The ’358 patent relates to a vehicle monitoring system. Ex. 1001,
`
`Title. A data logging device is disclosed, which tracks the operation of a
`
`vehicle and/or operator behavior. Ex. 1001, 1:33-34. A processor reads data
`
`from an automotive bus that transfers data from vehicle sensors to other
`
`
`
`2 The oral arguments for the instant trial and for CBM2013-00009 were
`merged and conducted at the same time. A transcript of the oral hearing is
`included in the record as Paper 76.
`
`3
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`
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`Case CBM2012-00003
`Patent 8,140,358
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`components. Id. at 1:40-42. The processor writes data that reflects a level
`
`of safety to a storage device. Id. at 1:42-44. A communication device links
`
`the data logging device to a network of computers. Id. at 1:44-45.
`
`
`
`In the Background of the Invention portion of the disclosure of the
`
`’358 patent, preexisting methods for determining cost of insurance are
`
`acknowledged, and it is indicated that they gather data from “personal
`
`interviews and legacy sources.” Ex. 1001, 1:20-21. It is further indicated
`
`that such data may be used to classify applicants into actuarial classes that
`
`may be associated with insurance rates. Id. at 1:21-23. According to the
`
`’358 patent, some of such data used to classify risk “is not verified and has
`
`little relevance to measuring risk.” Id. at 1:24-25. It is stated in the ’358
`
`patent that the data may not be validated, may be outdated, and may not
`
`support new or dynamic risk assessments. Id. at 1:27-29. “Systems may
`
`accumulate and analyze significant amounts of data and yet discover that the
`
`data does not accurately predict losses.” Id. at 1:25-27.
`
`The claims of the ’358 patent are directed to a system that monitors
`
`and facilitates a review of data collected from a vehicle that is used to
`
`determine a level of safety or cost of insurance. E.g., Ex. 1001, Claim 1.
`
`Claim 1 is the only independent claim. Claims 2-20 each depend,
`
`directly or indirectly, from claim 1, which is reproduced below:
`
`1. A system that monitors and facilitates a review of data
`
`collected from a vehicle that is used to determine a level of
`safety or cost of insurance comprising:
`
`a processor that collects vehicle data from a vehicle bus
`that represents aspects of operating the vehicle;
`
`4
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`Case CBM2012-00003
`Patent 8,140,358
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`a memory that stores selected vehicle data related to a
`level of safety or an insurable risk in operating a vehicle;
`
`a wireless transmitter configured to transfer the selected
`vehicle data retained within the memory to a distributed
`network and a server;
`
`a database operatively linked to the server to store the
`selected vehicle data transmitted by the wireless transmitter, the
`database comprising a storage system remote from the wireless
`transmitter and the memory comprising records with operations
`for searching the records and other functions;
`
`where the server is configured to process selected vehicle
`data that represents one or more aspects of operating the vehicle
`with data that reflects how the selected vehicle data affects a
`premium of an insurance policy, safety or level of risk; and
`
`where the server is further configured to generate a rating
`factor based on the selected vehicle data stored in the database.
`
`B. Related Proceedings
`
`Liberty indicates that the ’358 patent was asserted against it in
`
`Progressive Cas. Ins. Co. v. Safeco Ins. Co. of Ill., Case No. 1:10-cv-01370
`
`(N.D. Ohio). Pet. 7. The ’358 patent also is subject to a covered business
`
`method patent review in CBM2013-00009.
`
`C. Covered Business Method Patent
`
`Upon consideration of Liberty’s contentions in the petition and
`
`Progressive’s arguments in the preliminary response, the Board, in the
`
`Decision on Institution, determined that the ’358 patent is a covered business
`
`method patent as defined in section 18(a)(1)(E) of the AIA and 37 C.F.R.
`
`§ 42.301, because at least one claim of the ’358 patent is directed to a
`
`5
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`Case CBM2012-00003
`Patent 8,140,358
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`covered business method. Dec. 7-16. The Board concluded that the ’358
`
`patent is eligible for a covered business method patent review. Id. at 16.
`
`In its patent owner response, Progressive argues that the Board must
`
`conduct a claim-by-claim analysis and determine that every challenged
`
`claim is directed to a covered business method, before it is authorized, under
`
`section 18(a)(1)(E) of the AIA, to review all of the challenged claims.
`
`PO Resp. 3-4, n.1. Progressive asserts that the Board exceeded its statutory
`
`authority by instituting review of patent claims which the Board has not
`
`determined to be directed to a covered business method. Id.
`
`Progressive’s argument is based on an erroneous statutory
`
`construction that would interpret the word “patent” as “claim” in the
`
`statutory provision on what is subject to review. We decline to adopt such
`
`an interpretation.
`
`As in any statutory construction analysis, we begin with the language
`
`of the statute. Duncan v. Walker, 533 U.S. 167, 172 (2001); Crandon v.
`
`United States, 494 U.S. 152, 158 (1990); In re Swanson, 540 F.3d 1368,
`
`1374-75 (Fed. Cir. 2008). “In the absence of a clearly expressed legislative
`
`intention to the contrary, the language of the statute itself must ordinarily be
`
`regarded as conclusive.” United States v. James, 478 U.S. 597, 606 (1986)
`
`(internal quotation marks and citations omitted). “It is well settled law that
`
`the plain and unambiguous meaning of the words used by Congress prevails
`
`in the absence of a clearly expressed legislative intent to the contrary.”
`
`Hoechst AG v. Quigg, 917 F.2d 522, 526 (Fed. Cir. 1990).
`
`6
`
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`Case CBM2012-00003
`Patent 8,140,358
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`Section 18(d)(1) of the AIA defines the term “covered business
`
`method patent” to mean (emphasis added):
`
`[A] patent that claims a method or corresponding apparatus for
`performing data processing or other operations used in the
`practice, administration, or management of a financial product
`or service, except that the term does not include patents for
`technological inventions.
`
`
`
`If Congress intended to limit the availability of the covered business
`
`method patent review on a claim-by-claim basis, as urged by Progressive, it
`
`could have used the term “claim” rather than “patent.” Notably, when
`
`specifying the subject matter for review, Congress could have used the
`
`language “a claim that is directed to a method or corresponding apparatus”
`
`rather than “a patent that claims a method or corresponding apparatus.”
`
`Section 18(d)(1) of the AIA sets forth a single threshold based on just one
`
`claim—the satisfaction of which qualifies an entire patent as eligible for
`
`review—rather than a test which must be applied on a claim-by-claim basis
`
`to justify review of each claim.3 Therefore, a patent is eligible for a covered
`
`business method patent review if the subject matter of at least one claim is
`
`directed to a covered business method. Nothing in the legislative history, or
`
`other parts of the AIA, requires us to deviate from the plain meaning of the
`
`definition set forth in section 18(d)(1) of the AIA, as proposed by
`
`Progressive. Moreover, Progressive has not identified any statutory
`
`
`
`3 See also Transitional Program for Covered Business Method Patents –
`Definitions of Covered Business Method Patent and Technological
`Invention; Final Rule, 77 Fed. Reg. 48,734, 48,736 (Aug. 14, 2012).
`7
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`Case CBM2012-00003
`Patent 8,140,358
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`provision or legislative history that requires “each” claim for which trial is
`
`instituted to meet the test for a covered business method patent.
`
`With respect to Progressive’s argument concerning the Board’s
`
`determination that at least one claim of the ’358 patent is directed to a
`
`covered business method, Progressive provides no meaningful explanation
`
`as to why the Board’s analysis with regard to claim 1 was incorrect. PO
`
`Resp. 3-4, n.1.
`
`For the foregoing reasons, we disagree with Progressive that the
`
`Board exceeded its statutory authority by instituting a covered business
`
`method patent review as to claims 2-20 of the ’358 patent. We find no error
`
`in the covered business method patent determination set forth in the
`
`Decision on Institution.
`
`D. Prior Art Relied Upon
`
`For the grounds of unpatentability over which the Board instituted
`
`review of the ’358 patent, Liberty relies upon the following prior art:
`
`Nakagawa U.S. Pub. App. 2002/0128882 Sept. 12, 2002
`
`(Ex. 1005)
`
`Stanifer
`
`U.S. Patent No. 5,243,530
`
`Sept. 7, 1993
`
`(Ex. 1007)
`
`Chang
`
`U.S. Patent No. 5,446,757
`
`Aug. 29, 1995
`
`(Ex. 1008)
`
`Beaverton U.S. Patent No. 5,210,854
`
`May 11, 1993
`
`(Ex. 1009)
`
`Hunt
`
`U.S. Patent No. 6,957,133
`
`Oct. 18, 2005
`
`(Ex. 1010)
`
`Lowrey
`
`U.S. Patent No. 7,228,211 B1 June 5, 2007
`
`(Ex. 1011)
`
`Bouchard U.S. Patent No. 5,465,079
`
`Nov. 7, 1995
`
`(Ex. 1014)
`
`Kosaka
`
`
`Jap. Pub. App. H4-182868
`
`June 30, 1992
`
`(Ex. 1003)
`
`8
`
`
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`Case CBM2012-00003
`Patent 8,140,358
`
`Dimitris A. Scapinakis and William L. Garrison, Communications
`
`And Positioning Systems In The Motor Carrier Industry, California Partners
`for Advanced Transit and Highways (PATH), Institute of Transportation
`Studies, UC Berkeley (January 1, 1992).
`(“Scapinakis”)
`
`
`
`
`
`
`
`(Ex. 1016)
`
`
`
`
`
`
`
`QUALCOMM’s MSM6500 Multimedia Single-Chip Solution Enables
`High-Performance Multimode Handsets Supporting CDMA2000 1X, 1xEV-
`DO and GSM/GPRS, PR Newswire (November 12, 2002)
`(“Qualcomm MSM6500”)
`
`
`
`
`
`
`
`(Ex. 1019)
`
`
`
`Nakagawa has a filing date of February 27, 2002. Ex. 1005, Cover.
`
`Progressive asserts that claims 1, 9, 19, and 20 of the ’358 patent are entitled
`
`to the filing date of grandparent application 09/571,650, filed on May 15,
`
`2000, and therefore, Nakagawa is not prior art as to claims 1, 9, 19, and 20.
`
`In Section II.D. below, we determine that Progressive has shown that claims
`
`1, 19, and 20 are entitled to the May 15, 2000, filing date of grandparent
`
`application 09/571,650. Thus, Nakagawa is not prior art as to claims 1, 19,
`
`and 20. But we determine that Nakagawa is prior art as to claims 2-18.
`
`E. Grounds of Unpatentability
`
`The Board instituted this covered business method patent review
`
`based on the following grounds of unpatentability:
`
`
`
`
`
`9
`
`
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`Case CBM2012-00003
`Patent 8,140,358
`
`Claims
`
`Basis
`
`References
`
`1, 19, 20
`
`§ 102 Nakagawa
`
`2
`
`§ 103 Nakagawa and Chang
`
`3, 6, 7
`
`§ 103 Nakagawa and Stanifer
`
`4
`
`5, 8
`
`9
`
`§ 103 Nakagawa and Beaverton
`
`§ 103 Nakagawa and Scapinakis
`
`§ 103 Nakagawa and Hunt
`
`10, 11, 13-15 § 103 Nakagawa and Lowrey
`
`12
`
`§ 103 Nakagawa, Lowrey, and Qualcomm MSM6500
`
`16, 17, 18
`
`§ 103 Nakagawa and Bouchard
`
`19, 20
`
`§ 103 Nakagawa and Kosaka
`
`
`
`II. ANALYSIS
`
`A. Claim Construction
`
`
`
`In a covered business method patent review, claim terms are given
`
`their broadest reasonable construction in light of the specification of the
`
`patent in which they appear. 37 C.F.R. § 42.300(b). Under the broadest
`
`reasonable construction standard, claims terms are given their ordinary and
`
`customary meaning as would be understood by one of ordinary skill in the
`
`art in the context of the entire disclosure. In re Translogic Tech. Inc.,
`
`504 F.3d 1249, 1257 (Fed. Cir. 2007). A particular embodiment appearing
`
`in the written description must not be read into a claim if the claim language
`
`is broader than the embodiment. In re Van Geuns, 988 F.2d 1181, 1184
`
`(Fed. Cir. 1993). If a feature is not necessary to give meaning to what the
`10
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`Case CBM2012-00003
`Patent 8,140,358
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`inventor means by a claim term, it would be “extraneous” and should not be
`
`read into the claim. Renishaw PLC v. Marposs Societa’ per Azioni,
`
`158 F.3d 1243, 1249 (Fed. Cir. 1998); E.I. du Pont de Nemours & Co. v.
`
`Phillips Petroleum Co., 849 F.2d 1430, 1433 (Fed. Cir. 1988).
`
`1. “rating factor”(independent claim 1)
`
`
`
`In its petition, Liberty urged that “rating factor” should be construed
`
`as meaning “a calculated insurance risk value such as a safety score or a
`
`usage discount.” Pet. 15:11-14. In support of that assertion, Liberty cited to
`
`portions of the specification of the ’358 patent. Pet. 15:14-20 (citing Ex.
`
`1001, 22:23-24, 23:41-47, figs. 8 and 10). Progressive, in its patent owner
`
`preliminary response, presented no opposition to that proposed
`
`interpretation. In the Decision on Institution, the Board adopted Liberty’s
`
`proposed interpretation, but added the clarification that “an insurance risk
`
`value would be a value that reflects an associated level of insurance risk and,
`
`therefore, also a corresponding insurance premium.” Dec. 6:21-23.
`
`In its patent owner response, Progressive stated the following with
`
`regard to the Board’s construction of “rating factor”:
`
`A person of ordinary skill in the art would interpret the Board’s
`reference to “insurance risk” to mean expected claims losses,
`and an “associated level of insurance risk” to describe rating
`factors associated with actuarial classes.
`
`PO Resp. 9:15-18 (citing Ex. 2005 ¶ 39).
`
`
`
`Progressive’s argument is misplaced. The Decision on Institution is
`
`not a patent disclosure or a scientific research paper. It is not written from
`
`11
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`Patent 8,140,358
`
`the perspective of one with ordinary skill in the art. Nor is it specifically
`
`written for one with ordinary skill in the art. When responding to an inquiry
`
`from the Board regarding the usefulness of such an argument and the cited
`
`expert testimony from Michael J. Miller (Ex. 2005 ¶ 39), counsel for
`
`Progressive attempted to recast the argument as Mr. Miller’s interpretation
`
`of “rating factor.” The pertinent portion of the exchange between the Board
`
`and counsel for Progressive is reproduced below:
`
`JUDGE LEE: Well, our opinion isn’t a patent document, it
`isn’t a patent specification, so I'm not sure what the value is for
`your expert to be interpreting our decision instituting trial from
`the perspective of one with ordinary skill in the art.
`
`
`MR. GRIFFITH: I understand, and a completely fair point. So,
`this is his interpretation of rating factor.
`
`Paper 76, 77:6-11.
`
`
`
`The cited testimony of Mr. Miller is reproduced below:
`
`39. As mentioned above, an actuarial class inherently
`
`has associated with it a rate factor and a risk factor. These are
`calculated insurance risk values. Accordingly, use of an
`actuarial class within an insurance context necessarily involves
`generating and using a rating factor. Use of rate factors and
`risk factors is necessarily part of any insurance charges or
`premium determination algorithm for an auto
`insurance
`program using actuarial classes.
`
`Ex. 2005 ¶ 39.
`
`
`
`The above-quoted testimony does not reflect an opinion of Mr. Miller
`
`on what the term “rating factor” means to one with ordinary skill in the art.
`
`Mr. Miller is expressing an opinion that if “actuarial classes” are relied on
`
`12
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`for calculating an insurance premium, it necessarily involves use of rate
`
`factors and risk factors.
`
`
`
`Thus, “rating factor” is construed to mean “a calculated insurance risk
`
`value such as a safety score or a usage discount,” with the clarification that
`
`“an insurance risk value would be a value that reflects an associated level of
`
`insurance risk and, therefore, also a corresponding insurance premium.” The
`
`construction is broad, and does not require the use or reliance on “actuarial
`
`classes” to generate a rating factor. Nothing from the disclosure of the ’358
`
`patent requires importing such an extraneous requirement into the claims.
`
`Similarly, “a corresponding insurance premium” refers to a general level of
`
`insurance premium, not necessarily any specific dollar amount of premium.
`
`2. “selected vehicle data” (independent claim 1)
`
`Claim 1 recites a processor that collects vehicle data from a vehicle
`
`bus that represents aspects of operating the vehicle, and a memory that stores
`
`“selected vehicle data” related to a level of safety or an insurable risk in
`
`operating a vehicle. Claim 1 further recites a wireless transmitter configured
`
`to transfer the “selected vehicle data” retained within the memory to a
`
`distributed network and a server. Claim 1 additionally requires a database
`
`operatively linked to the server to store the “selected vehicle data”
`
`transmitted by the wireless transmitter, and recites that the server is
`
`configured to process “selected vehicle data” that represents one or more
`
`aspects of operating the vehicle with data that reflects how the “selected
`
`vehicle data” affects a premium of an insurance policy, safety or level of
`
`13
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`risk. Finally, claim 1 recites that the server is further configured to generate
`
`a rating factor based on the “selected vehicle data” stored in the database.
`
`Liberty, in its petition, did not propose an interpretation for “selected
`
`vehicle data.” Progressive, in its patent owner response, urges that “selected
`
`vehicle data” be interpreted as including “certain vehicle data that relates to
`
`a level of safety or an insurable risk in operating a vehicle.” PO Resp. 10:6-
`
`8. The interpretation proposed by Progressive is not meaningful, as claim 1
`
`itself expressly introduces “selected vehicle data” by the phrase: “a memory
`
`that stores selected vehicle data related to a level of safety or an insurable
`
`risk in operating a vehicle.” Ex. 1001, (emphasis added). Progressive does
`
`not explain any reasoning for according the term “selected vehicle data,”
`
`itself, the meaning provided by the above-emphasized descriptive phrase
`
`that immediately follows the term. We see no appropriate basis for doing so.
`
`
`
`Claim terms are not construed properly in a vacuum. It is appropriate
`
`to consider the surrounding context. Claim 1 begins by reciting: “a
`
`processor that collects vehicle data from a vehicle bus that represents aspects
`
`of operating the vehicle.” There is no mention in that introductory recitation
`
`of the vehicle data being “selected.” That recitation is followed by: “a
`
`memory that stores selected vehicle data related to a level of safety or an
`
`insurable risk in operating a vehicle,” which limits the referenced vehicle
`
`data to those that are related to a level of safety or an insurable risk in
`
`operating a vehicle. From that perspective, the vehicle data has undergone a
`
`selection. That could be the only reason why “vehicle data” is prefaced by
`
`the word “selected” in the recitation of the memory element. Under the rule
`
`14
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`of broadest reasonable interpretation, “selected vehicle data” means nothing
`
`substantively more than “certain vehicle data.” In that regard, note that the
`
`interpretation urged by Progressive also starts with “certain vehicle data,”
`
`prior to repeating what already is specified elsewhere in the claim.
`
`
`
`Our interpretation is consistent with the disclosure of the ’358 patent.
`
`For instance, the disclosure states that vehicle data elements monitored
`
`and/or recorded include raw data elements, calculated data elements, and
`
`derived data elements. Ex. 1001, 7:11-13. It is evident that the term is
`
`meant to be inclusive, not restrictive. Thus, we do not limit “selected
`
`vehicle data” to just raw data sensed by sensors. Instead, it covers processed
`
`or calculated vehicle data. In summary, we reiterate that “selected vehicle
`
`data” means “certain vehicle data,” and note that it covers vehicle data
`
`transformed by processing or calculation. The particular forms of
`
`processing and calculation referenced in the specification merely are
`
`examples, and we do not consider them as limitations on the covered
`
`transformation, under the rule of broadest reasonable interpretation.
`
`3. “database” (independent claim 1)
`
`
`
`Liberty, in its petition, does not offer an interpretation for “database.”
`
`Progressive, in its patent owner response, states that the term “database” is
`
`used in its ordinary sense in the disclosure of the ’358 patent. PO Resp.
`
`10:10-11. Progressive asserts, citing Microsoft Press Computer Dictionary,
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`that “database” means “a file composed of records, each containing fields
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`together with a set of operations for searching, sorting, recombining, and
`
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`other functions.” PO Resp. 10:15-19 (citing Microsoft Press Computer
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`Dictionary 129 (3d ed. 1997) (Ex. 2010) (internal quotation marks omitted)).
`
`The assertion is supported by the declaration testimony of Ivan Zatkovich
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`(Ex. 2007 ¶ 21), and is not specifically disputed by Liberty in its reply.
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`
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`We generally agree with Progressive’s proposed interpretation, except
`
`that under the rule of broadest reasonable interpretation, we determine that a
`
`basic database need not have all of the functions of searching, sorting,
`
`recombining, and additional unspecified “other functions.” Progressive’s
`
`expert witness, Mr. Zatkovich, does not explain where a line would be
`
`drawn, that denotes the bare minimum for a memory to qualify as a
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`database. On the evidence before us, we construe a database as “a memory
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`in which the stored data are searchable by the content of a particular field in
`
`the data entries stored therein.” Other more sophisticated functions, such as
`
`sorting and recombining are not required.
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`4. “record” (independent claim 1)
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`
`
`Liberty, in its petition, does not offer an interpretation for “record.”
`
`Progressive, in its patent owner response, states that the term “record”
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`should be accorded its ordinary meaning when used in the context of a
`
`database record, as is the case in the disclosure of the ’358 patent. PO Resp.
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`11:3-4. Citing Microsoft Press Computer Dictionary, Progressive asserts
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`that “record” means “[a] data structure that is a collection of fields
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`(elements) each with its own name and type.” PO Resp. 11:4-7 (citing
`
`Microsoft Press Computer Dictionary 399 (3d ed. 1997) (internal quotation
`
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`marks omitted)). The assertion is supported, partially, by the declaration
`
`testimony of Ivan Zatkovich, Ex. 2007 ¶ 23. We say partially supported
`
`because Mr. Zatkovich refers to what was generally known, or the standard
`
`format for a database record. Mr. Zatkovich does not explain the bare
`
`minimum for qualifying a data entry as a database record. It is not clear
`
`from Mr. Zatkovich’s testimony (1) how many separate fields must a record
`
`include, and (2) whether each field must have both a “name” and “type”
`
`attribute.
`
`We agree with Progressive’s proposed interpretation, except that
`
`under the rule of broadest reasonable interpretation, we determine that a
`
`record need have only one searchable field, and that the searchable field
`
`need have only one associated attribute, such as “name” or “type.” Thus, a
`
`“record” in the context of the database recited in claim 1 is “a data entry
`
`item, having a structure that includes at least one searchable field with an
`
`associated attribute, such as name or type.”
`
`B. Alleged Anticipation of Claims 1, 19, and 20
`
`
`
`Liberty asserts that claims 1, 19, and 20 are unpatentable, under
`
`35 U.S.C. § 102, as anticipated by Nakagawa. Pet. 22, 70, 76. In support of
`
`that asserted ground of unpatentability, Liberty provides detailed
`
`explanations as to how each claim element, arranged as is recited in these
`
`claims, is disclosed by Nakagawa. Pet. 22-26, 70-71, 76. Liberty’s petition
`
`also relies on the declaration testimony of Mr. Scott Andrews (Ex. 1025).
`
`
`
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`17
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`Upon review of Liberty’s petition, Progressive’s response, and
`
`Liberty’s reply, we determine that Liberty has demonstrated, by a
`
`preponderance of the evidence, that each element of claims 1, 19, and 20,
`
`arranged as it is recited in the claims, is disclosed by Nakagawa. However,
`
`because claims 1, 19, and 20, are entitled to an effective filing date of May
`
`15, 2000, as determined in Section II.D. below, Nakagawa is not prior art to
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`claims 1, 19, and 20. Therefore, we determine that claims 1, 19, and 20 are
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`not unpatentable, under 35 U.S.C. § 102, as anticipated by Nakagawa.
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`
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`Nevertheless, we proceed to discuss how each element of independent
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`claim 1 is disclosed by Nakagawa, because those findings are the basis for
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`the conclusion of obviousness of dependent claims 2-18 over respective
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`prior art combinations, including Nakagawa as disclosing all of the elements
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`of independent claim 1.
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`1. Nakagawa
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`Nakagawa’s disclosed invention relates to a vehicle insurance
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`premium calculation system, onboard apparatus, and server apparatus.
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`Ex. 1005, Title. The system includes a usage status detection means for
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`detecting the usage status of a vehicle, a data input means for inputting data
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`relating to the maintenance or management of a vehicle, and an insurance
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`premium calculation means for calculating vehicle insurance premium based
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`on detection results and inputted data. Ex. 1005, Abst; ¶ 0006.
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`In its description of related art, Nakagawa refers to another insurance
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`premium calculation system, that is based on the monitoring, recording, and
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`communication of data showing the operating characteristics of the operator
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`and vehicle, and that retroactively adjusts the insurance premium by linking
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`operating characteristics to prescribed safety standards, as well as sets the
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`future premium. Id. at ¶ 0004. That other system includes a process that
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`monitors a multiplicity of data elements showing the actions of operators or
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`how the car is being operated. Id. Selected data elements having a
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`prescribed relationship with a prescribed safety standard are recorded, for
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`determining any additional charge or discount that should be applied to the
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`basic premium, when the recorded data are processed in an insurance
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`company profile. Id.
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`
`
`With regard to the related art, Nakagawa states that it has been
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`difficult for insurance companies to prove that a vehicle has been maintained
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`and serviced properly because the premium is calculated based solely on
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`information relating to the vehicle’s operation and history of use of safety
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`equipment. Ex. 1005 ¶ 0005. In that regard, Nakagawa states:
`
`That is, it was not possible to calculate car insurance premiums
`that took into account whether or not components such as tires
`and brake pads, used to run a vehicle safely, have been serviced
`or maintained. This system aims to calculate appropriate
`vehicle insurance premiums by taking into account the
`maintenance and servicing history of the vehicle.
`
`Id. Thus, Nakagawa discloses a system and method for calculating
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`insurance premium based on both (1) detected data indicating the usage
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`status of a vehicle as detected by a detecting means, and also (2) inputted
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`data relating to vehicle servicing or maintenance. Ex. 1005 ¶¶ 0006, 0007.
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`In that regard, Nakagawa describes that the usage status of a vehicle refers to
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`the way in which a vehicle is operated by the driver or to the installation
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`status of equipment for protecting passengers. Ex. 1005 ¶ 0007.
`
`
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`Nakagawa’s Figure 1 is reproduced below:
`
`
`
`
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`Figure 1 illustrates a broad conceptual diagram of Nakagawa’s system
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`and method for calculating vehicle insurance premium. Ex. 1005 ¶¶ 0036,
`
`0048. An onboard apparatus is installed on the vehicle, which collects, via
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`various sensors, information relating to the driver’s operation of the vehicle,
`
`and information relating to the installation status of safety equipment. Ex.
`
`1005 ¶ 0048. That collected information is transmitted from onboard the
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`vehicle to the insurance company via radio communication. Id. Contract
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`repair factory 3 is aware of whether or not the user of the vehicle has
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`serviced the vehicle regularly at the facility. Ex. 1005 ¶ 0049. When
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`vehicle inspection and service is carried out at contract repair factory 3, that
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`information is sent from contract repair factory 3 to the insurance company,
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`via either radio or wired communication. Id. The insurance company
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`calculates the insurance premium, based on the information transmitted from
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`the vehicle and the information transmitted from the contract repair factory,
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`in the form of an increase or decrease of a base premium. Ex. 1005 ¶ 0050.
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`Information relating to any adjustment in premium is transmitted via radio
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`communication from the insurance company to the vehicle, and then
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`displayed for viewing by the user of the vehicle. Id.
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`
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`Figure 2 of Nakagawa is reproduced below:
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`
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`
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`The technical components of one embodiment of Nakagawa’s system
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`for calculating vehicle insurance premiums are illustrated in Figure 2.
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`Ex. 1005 ¶¶ 0037, 0052. They include onboard apparatus 4 in the vehicle,
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`maintenance data management means
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