Trials@uspto.gov
`571-272-7822
`
`
`
` Paper 15
`
`Entered: February 12, 2013
`
`
`
`
`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 (JL)
`Patent 8,140,358
`____________
`
`
`
`Before JAMESON LEE, JONI Y. CHANG, and MICHAEL R. ZECHER,
`Administrative Patent Judges.
`
`
`LEE, Administrative Patent Judge
`
`
`
`DECISION
`Institution of Covered Business Method Review
`37 C.F.R. § 42.208
`
`
`
`
`
`
`571-272-7822
`
`
`
` Paper 15
`
`Entered: February 12, 2013
`
`
`
`
`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 (JL)
`Patent 8,140,358
`____________
`
`
`
`Before JAMESON LEE, JONI Y. CHANG, and MICHAEL R. ZECHER,
`Administrative Patent Judges.
`
`
`LEE, Administrative Patent Judge
`
`
`
`DECISION
`Institution of Covered Business Method Review
`37 C.F.R. § 42.208
`
`
`
`
`
`
`
`Case CBM2012-00003
`U.S. Patent No. 8,140,358
`
`BACKGROUND
`
`On September 16, 2012, Liberty Mutual Insurance Company
`
`(“Liberty”) filed a petition requesting a review under the transitional
`
`program for covered business method patents of U.S. Patent 8,140,358 (“the
`
`’358 patent”)(Ex. 1001). The patent owner, Progressive Casualty Insurance
`
`Company (“Progressive”), filed a preliminary response (“Prelim. Resp.”) on
`
`December 24, 2012. (Paper No. 13.) We have jurisdiction under 35 U.S.C.
`
`§ 324. See section 18(a) of the Leahy-Smith America Invents Act, Pub. L.
`
`112-29, 125 Stat. 284, 329 (2011) (“AIA”).
`
`The standard for instituting a covered business method review is set
`
`forth in 35 U.S.C. § 324(a), which provides as follows:
`
`THRESHOLD --The Director may not authorize a post-grant
`review to be instituted unless the Director determines that the
`information presented in the petition filed under section 321, if
`such information is not rebutted, would demonstrate that it is
`more likely than not that at least 1 of the claims challenged in
`the petition is unpatentable.
`
`Some of the grounds of unpatentability alleged by Liberty were
`
`denied by the Board on October 25, 2012. (Paper 8). Additional grounds
`
`alleged by Liberty were denied by the Board on November 26, 2012. (Paper
`
`12). The remaining grounds for consideration rely on the following
`
`references:
`
`U.S. Pub. App. 2002/0128882
`
`(Nakagawa)
`
`UK Patent App. GB 2286369
`
`(Herrod)
`
`
`
`
`
`Sept. 12, 2002
`
`Exhibit 1005
`
`Aug. 16, 1995
`
`Exhibit 1004
`
`2
`
`
`
`Case CBM2012-00003
`U.S. Patent No. 8,140,358
`
`US Patent 5,243,530 (Stanifer)
`
`Sep. 7, 1993
`
`Exhibit 1007
`
`US Patent 5,446,757 (Chang)
`
`
`
`Aug. 29, 1995
`
`Exhibit 1008
`
`
`
`
`
`
`
`
`
`
`
`May 11, 1993
`
`Exhibit 1009
`
`June 5, 2007
`
`Exhibit 1011
`
`Nov. 7, 1995
`
`Exhibit 1014
`
`June 30, 1992
`
`Exhibit 1003
`
`US Patent 5,210,854
`
`(Beaverton)
`
`US Patent 7,228,211 B1
`
`(Lowrey)
`
`US Patent 5,465,079
`
`(Bouchard)
`
`Japanese Pub. App. H4-182868
`
`(Kosaka)
`
`“Communications And Positioning Systems In The Motor Carrier Industry,”
`by Dimitris A. Scapinakis and William L. Garrison, January 1, 1992
`
`(Scapinakis)
`
`
`
`
`
`Exhibit 1006
`
`“Application of GSM in High Speed Trains: Measurements and
`Simulations” by Manfred Goller, May 16, 1995
`
`(Goller)
`
`
`
`
`
`
`“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)
`
`
`
`Exhibit 1019
`
`
`
`
`Exhibit 1017
`
`Specifically, the grounds for consideration are:
`
`1.
`
`2.
`
`3.
`
`4.
`
`Claims 1, 19, and 20 as anticipated by Nakagawa.
`
`Claim 1 as obvious over Herrod.
`
`Claim 2 as obvious over Nakagawa and Chang.
`
`Claim 2 as obvious over Herrod and Chang.
`
`3
`
`
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`Case CBM2012-00003
`U.S. Patent No. 8,140,358
`
`5.
`
`
`6.
`
`7.
`
`8.
`
`9.
`
`
`Claims 3, 6, and 7 as obvious over Nakagawa and
`Stanifer.
`
`Claims 3, 6, and 7 as obvious over Herrod and Stanifer.
`
`Claim 4 as obvious over Nakagawa and Beaverton.
`
`Claim 4 as obvious over Herrod and Beaverton.
`
`Claims 5 and 8 as obvious over Nakagawa and
`Scapinakis.
`
`10. Claim 5 as obvious over Herrod, Scapinakis, and Goller.
`
`11. Claim 8 as obvious over Herrod and Scapinakis.
`
`12. Claim 9 as obvious over Nakagawa and Hunt.
`
`13. Claim 9 as obvious over Herrod and Hunt.
`
`14. Claims 10, 11, and 13-15 as obvious over Nakagawa and
`
`Lowrey.
`
`15. Claims 10, 11, and 13-15 as obvious over Herrod and
`
`Lowrey.
`
`16. Claim 12 as obvious over Nakagawa, Lowrey, and
`
`Qualcomm MSM6500.
`
`17. Claim 12 as obvious over Herrod, Lowrey, and
`
`Qualcomm MSM6500.
`
`18. Claims 16-18 as obvious over Nakagawa and Bouchard.
`
`19. Claims 16-18 as obvious over Herrod and Bouchard.
`
`20. Claims 19 and 20 as obvious over Nakagawa and
`
`Kosaka.
`
`21. Claims 19 and 20 as obvious over Herrod and Kosaka.
`
`
`
`The above-stated grounds can be divided into two groups: (1) those
`
`relying at least in part on Nakagawa, and (2) those relying in part on Herrod.
`
`4
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`Case CBM2012-00003
`U.S. Patent No. 8,140,358
`
`Taking into account Progressive’s preliminary response, we determine that
`
`the information presented in the petition demonstrates that:
`
`(1) It is more likely than not that the challenged claims
`based at least in part on Nakagawa are unpatentable as alleged
`by Liberty.
`
`(2) It is not more likely than not that the challenged
`claims based at least in part on Herrod are unpatentable.
`
`
`
`Liberty certifies that the ’358 patent was asserted against it 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. (Pet. 7.)
`
`Progressive does not dispute that certification.
`
`Pursuant to 35 U.S.C. §§ 324 and 18(a) of the AIA, we authorize a
`
`covered business method review of claims 1-20 of the ’358 patent. For
`
`reasons discussed below, we reject Progressive’s argument that the ’358
`
`patent is not a covered business method patent, but is directed to a
`
`technological invention for which covered business method review is
`
`unavailable.
`
`DISCUSSION
`
`
`
`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). Also, that broadest
`
`reasonable construction is as it would be understood by one of ordinary skill
`
`5
`
`
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`Case CBM2012-00003
`U.S. Patent No. 8,140,358
`
`in the art. Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005) (en
`
`banc). In some cases, the ordinary meaning of claim language as understood
`
`by a person of skill in the art may be readily apparent even to lay judges, and
`
`claim construction in such cases involves little more than the application of
`
`the widely accepted meaning of commonly understood words. Phillips,
`
`415 F.3d at 1314.
`
`In this case, Liberty sets forth no claim construction that is
`
`purportedly different between that from the perspective of one with ordinary
`
`skill in the art on the one hand and that of lay persons on the other. We have
`
`no basis to conclude otherwise. So for purposes of this decision we proceed
`
`on the basis that the plain and ordinary meaning of words in their common
`
`usage applies, albeit taken in the context of the disclosure of the ’358 patent.
`
`We regard as prudent at this point of the proceeding to make known
`
`our construction of the term “rating factor.” The petitioner states that under
`
`the rule of broadest reasonable interpretation in light of the specification,
`
`“rating factor” should mean “a calculated insurance risk value such as a
`
`safety score or a usage discount.” (Pet. 15:11-14). In support of that
`
`assertion, Petitioner cites to portions of the specification of the ’358 patent.
`
`(Pet. 15:14-20). Progressive presents no opposition to that interpretation.
`
`The interpretation offered by petitioner has solid basis in the specification.
`
`On this record, we agree with that interpretation, but add 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.
`
`6
`
`
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`Case CBM2012-00003
`U.S. Patent No. 8,140,358
`
`
`
`B.
`
`Covered Business Method Patent
`
`Under § 18(a)(1)(E) of the AIA, the Board may institute a transitional
`
`proceeding only for a patent that is a covered business method patent.
`
`Section 18(d)(1) of the AIA defines the term “covered business method
`
`patent” to mean:
`
`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.
`
`The legislative history explains that the definition of covered business
`
`method patent was drafted to encompass patents “claiming activities that are
`
`financial or complementary to financial activity.” 157 Cong. Rec. S5432
`
`(daily ed. Sept. 8, 2011) (statement of Sen. Schumer).
`
`Section 18(d)(2) of the AIA provides that “the Director shall issue
`
`regulations for determining whether a patent is for a technological
`
`invention.” The legislative history points out that the regulation for this
`
`determination should only exclude “those patents whose novelty turns on a
`
`technological innovation over the prior art and are concerned with a
`
`technical problem which is solved with a technical solution and which
`
`requires the claims to state the technical features which the inventor desires
`
`to protect.” 157 CONG. REC. S1364 (daily ed. Mar. 8, 2011) (statement of
`
`Sen. Schumer).
`
`Pursuant to that statutory mandate, the Office promulgated 37 C.F.R.
`
`§ 42.301(b) to define the term “technological invention” for the purposes of
`
`7
`
`
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`Case CBM2012-00003
`U.S. Patent No. 8,140,358
`
`the Transitional Program for Covered Business Method Patents. Therefore,
`
`for determining whether a patent is for a technological invention in the
`
`context of the Transitional Program for Covered Business Method Patents,
`
`37 C.F.R. § 42.301(b) identifies the following for consideration:
`
`whether the claimed subject matter as a whole recites a
`technological feature that is novel and unobvious over the prior
`art; and solves a technical problem using a technical solution.
`
`The determination of whether a patent is eligible for covered business
`
`method review is based on what the patent claims. A patent having even just
`
`one claim directed to a covered business method is eligible for review even
`
`if the patent includes additional claims.1
`
`Claim 1 of the ’358 patent begins with this preamble: “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.” Claim 1 ends with the
`
`recitation: “where the server is further configured to generate a rating
`
`factor based on the selected vehicle data stored in the database.” As we
`
`have determined above, in the context of the specification of the ’358 patent,
`
`a “rating factor” is a calculated insurance risk value such as a safety score or
`
`a usage discount, which reflects a level of insurance risk and a
`
`corresponding insurance premium. The full text of claim 1 is reproduced
`
`below:
`
`
`
`1 Transitional Program for Covered Business Method Patents – Definitions
`of Covered Business Method Patent and Technological Invention; Final
`Rule, 77 Fed. Reg. 48734, 48736 (Aug. 14, 2012) (Response to Comment 8).
`8
`
`
`
`Case CBM2012-00003
`U.S. Patent No. 8,140,358
`
`A system that monitors and facilitates a review of
`1.
`data collected from a vehicle that is used to determine a level of
`safety 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;
`
`a memory that stores selected vehicle data related to a
`level of safety or an insurance 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. (Emphasis added.)
`
`
`
`It cannot be reasonably disputed that Progressive claims “an apparatus for
`
`performing data processing or other operations used in the practice,
`
`administration, or management of a financial product or service.” Claim 1
`
`itself states that the system is used to determine a level of safety or cost of
`
`insurance and requires an operation on data which reflects how certain
`
`collected data affect a premium of an insurance policy, safety, or level of
`
`9
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`Case CBM2012-00003
`U.S. Patent No. 8,140,358
`
`risk. The claim also states that the server is configured “to generate a rating
`
`factor,” and we have determined that “rating factor” means a calculated
`
`insurance risk value that reflects a corresponding insurance premium. The
`
`question at issue here centers on the “technological invention” exception to a
`
`covered business method patent.
`
`
`
`To qualify under the “technological invention” exception to covered
`
`business method review, it is not enough that the invention makes use of
`
`technological systems, features, or components. Use of technology is
`
`ubiquitous and underlies virtually every invention. The exception is not that
`
`the claimed invention makes use of technology. We agree with Liberty that
`
`the subject matter of claim 1 does not satisfy the “technological invention”
`
`exception to covered business method review.
`
`
`
`To qualify under the “technological invention” exception, the claimed
`
`subject matter as a whole must satisfy both of the following prongs:
`
`recites a technological feature that is novel and
`1.
`unobvious over the prior art, and
`
`2.
`
`With respect to the first prong, all of the following arguments set forth
`
`solves a technical problem using a technical solution.
`
`by Progressive are misplaced because simply using technology, even novel
`
`technology, is not sufficient to qualify for the “technological invention”
`
`exception: (a) that the combination of elements set forth in claim 1 recites a
`
`novel configuration of technological features which operate in a unique
`
`manner; (b) that the novel configuration of the technological features, along
`
`with other innovations, enable Progressive to create an entirely new product
`
`10
`
`
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`Case CBM2012-00003
`U.S. Patent No. 8,140,358
`
`line known as “usage-based insurance”; (c) Progressive’s novel technology
`
`provides a dramatic improvement over the prior art for use in determining
`
`vehicle insurance costs and ratings; (d) that the claims of the ’358 patent
`
`recite technological features that are used to determine rating factors by
`
`directly monitoring actual vehicle operational characteristics; (e) that the
`
`claimed invention involves the use of electronics and sensors connected to a
`
`vehicle, which enable collecting and processing data concerning vehicle
`
`performance to occur; (f) that the claimed invention makes use of a network
`
`of hardware and sensors, wireless communication technology, and a server;
`
`(g) that the use of technological features permit the development of a rating
`
`factor that is specific to the operator or vehicle; (h) that the components
`
`shown in Figure 3 of the ’358 patent are technological features configured to
`
`operate in a unique manner and ultimately used to determine insurance costs
`
`or operating factors; and (i) that the claims of the ’358 patent recite
`
`significant technological features such as vehicle bus, communication
`
`technology, and server, all of which have a significant, i.e., non-
`
`conventional, role in the novelty of the claimed invention.
`
`Furthermore, and in any event, Progressive does not contend that any
`
`of the claimed structural components by itself constitutes a new
`
`technological feature, only that the combination of claim elements forms a
`
`novel configuration. And even the latter is unpersuasive in light of the
`
`prosecution history of the ’358 patent and with respect to the subject matter
`
`of claim 1. In the Notice of Allowance and Issue Fee(s) Due of the
`
`’358 patent, the Examiner stated the following about U.S. Patent 5,835,008
`
`11
`
`
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`Case CBM2012-00003
`U.S. Patent No. 8,140,358
`
`(“Colemere”) which was issued on November 10, 1998, almost ten years
`
`prior to the actual filing date of the ’358 patent and 18 months prior to the
`
`earliest priority date thus far alleged by Progressive (Ex. 1002: 000026):
`
`The prior art of record (US 5835008, Colemere) teaches:
`
` a
`
` processor that collects vehicle data from a vehicle bus that
`represents aspects of operating the vehicle;
`
` 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.
`
`The above fully accounts for all the technical features of claim 1.
`
`
`
`According to the Examiner, what are still missing from Colemere with
`
`respect to the claimed invention relate to the requirements that the server
`
`processes the vehicle data with other data that reflects how the vehicle data
`
`affects the premium of an insurance policy, safety or level of risk, and that
`
`the server generates a rating factor. (Ex. 1002 00026:16 to 00027:2). We
`
`have determined that “rating factor” means a calculated insurance risk value
`
`and reflects a corresponding insurance premium. As such, the difference
`
`between the invention of claim 1 and the prior art does not lie in any
`
`12
`
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`Case CBM2012-00003
`U.S. Patent No. 8,140,358
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`technological feature, but on the nature of the data being processed and the
`
`meaning of the output data.
`
`
`
`We reject Progressive’s argument (Prelim. Resp. 16:1-7) that a
`
`difference in the nature of the data processed and the meaning of the output
`
`data represents a technological feature. Claim 1 of the ’358 patent was
`
`allowed over the prior art not because of any novel and unobvious
`
`technological feature, but on the basis of the different data that are processed
`
`for determining a rating factor reflecting an insurance risk and a
`
`corresponding insurance premium.
`
`
`
`Progressive’s argument is without merit that its claimed invention is
`
`like the examples given in the Office Patent Trial Practice Guide, 77 Fed.
`
`Reg. 48764 (Aug. 14, 2012), for technological inventions not subject to
`
`covered business method review, i.e., (a) a patent that claims a “novel and
`
`non-obvious” hedging machine for hedging risk in the field of commodities
`
`trading, and (b) a patent that claims a “novel and non-obvious” credit card
`
`reader for verifying the validity of a credit card transaction. Progressive’s
`
`argument is also without merit that the claimed invention of the ’358 patent
`
`is even more of a technological invention than those examples in the practice
`
`guide.
`
`
`
`As we discussed above, based on the Examiner’s explanation in the
`
`Notice of Allowance and Issue Fee(s) Due (Ex. 1002:00026-00027), the
`
`combination of technological elements of claim 1 is neither novel nor
`
`unobvious. Also, on this record, none of the claim elements, such as
`
`sensors, vehicle bus, wireless transmitter, database, computer, memory, and
`
`13
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`Case CBM2012-00003
`U.S. Patent No. 8,140,358
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`server, is novel and unobvious when considered “without” the insurance
`
`nature of the data processed. In that regard, the Office Patent Trial Practice
`
`Guide, 77 Fed. Reg. 48764 (Aug. 14, 2012), states the following:
`
`The following claim drafting techniques would not typically
`render a patent a technological invention:
`
` (a) Mere recitation of known technologies, such as computer
`hardware, communication or computer networks, software,
`memory, computer-readable storage medium, scanners, display
`devices or databases, or specialized machines, such as an ATM
`or point of sale device.
`
`Also, as is pointed out by Liberty, U.S. Patent 6,064,970, an ancestral
`
`
`
`patent of the ’358 patent, filed almost ten years prior to the filing of the
`
`’358 patent and 18 months prior to the earliest effective filing date sought by
`
`Progressive in its preliminary response, discloses that current motor vehicle
`
`control and operating systems comprise electronic systems that are readily
`
`adaptable for modification to obtain the desired types of information
`
`relevant to the determination of the cost of insurance. (Ex. 1021 3:25-28).
`
`For all of the foregoing reasons, the subject matter of claim 1 is not like the
`
`examples of technological inventions in the Office Trial Practice Guide no
`
`matter how many structural component parts are recited, and certainly not
`
`more of a technological invention as asserted by Progressive.
`
`Finally, with regard to the second prong of the “technological
`
`invention” analysis, that the claimed subject matter solves a technical
`
`problem using a technical solution, we agree with Liberty that the problem
`
`14
`
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`Case CBM2012-00003
`U.S. Patent No. 8,140,358
`
`noted in the specification about the prior art is not a technical problem.
`
`Specifically, in column 1, lines 24-29, the ’358 patent states:
`
`Some data used to classify risk is not verified and has
`
`little relevance to measuring risk. Systems may accumulate and
`analyze significant amounts of data and yet discover that the
`data does not accurately predict losses. The data may not be
`validated, may be outdated, and may not support new or
`dynamic risk assessments.
`
`The issue discussed concerns the potency and effectiveness of the data
`
`being analyzed for purposes of determining risk and predicting insurance
`
`losses. That is not a technical problem.
`
`Progressive notes that a publication dated January 1, 1994 (“Black
`
`Magic”) (Ex. 1015), referred to the general subject of “usage-based”
`
`insurance as “science fiction.” The suggestion is that the invention of the
`
`’358 patent provides a technical solution to a technical problem. The
`
`argument is unpersuasive. The ’358 patent was filed on June 3, 2008, and in
`
`its preliminary response Progressive claims priority for claim 1 to an earlier
`
`effective filing date no earlier than May 15, 2000. Even under the best of
`
`circumstances for Progressive in considering that the very first application in
`
`the ancestral chain of continuation and continuation-in-part applications
`
`leading back from the’358 patent, Progressive’s earliest possible effective
`
`filing date would be January 29, 1996, still two years subsequent to the date
`
`of publication of Black Magic. In any event, as is reflected throughout the
`
`discussion above, on this record, “usage-based” insurance cost determination
`
`is not science fiction at the time of filing of the ’358 patent.
`
`15
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`U.S. Patent No. 8,140,358
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` Therefore, the second prong for qualifying as a “technological
`
`invention” is also not satisfied.
`
`For the foregoing reasons, the subject matter of claim 1 is not a
`
`“technological invention” under 37 C.F.R. § 42.301(b). Accordingly, the
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`’358 patent is eligible for a covered business method review.
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`
`
`C. Grounds based in whole or in part on Nakagawa
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`Claim 1 is the sole independent claim. Claims 2-20 depend directly or
`
`indirectly from claim 1. We have reviewed all of Liberty’s assertions of
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`unpatentability based at least in part on Nakagawa. Liberty asserts that
`
`claims 1, 19, and 20 are anticipated by Nakagawa under 35 U.S.C. § 102,
`
`and that claims 2-20 would have been obvious over Nakagawa and one or
`
`more other prior art references under 35 U.S.C. § 103. The accompanying
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`analysis, excluding Liberty’s assertion that the claims of the ’358 patent are
`
`not entitled to a priority date earlier than the actual filing date of the ’358
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`patent, appear to have merit. We do not reach Liberty’s assertion that the
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`claims of the ’358 patent are not entitled to an effective filing date earlier
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`than the actual filing date of the ’358 patent, because entitlement to a
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`priority date for any claim is a matter for which Progressive bears the burden
`
`of proof. We reject Progressive’s arguments in that regard.
`
`Progressive does not argue against the substantive merit of the alleged
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`anticipation by Nakagawa and the alleged obviousness based on Nakagawa
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`and one or more other references. Rather, Progressive asserts that
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`Nakagawa is not an applicable prior art reference because the date of
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`16
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`U.S. Patent No. 8,140,358
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`Nakagawa as a prior art reference is September 12, 2002, while
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`Progressive’s claim 1 is entitled to a priority date under 35 U.S.C. § 120 at
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`least as early as the filing date of Application 09/571,650 (“the
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`’650 application”), now Patent 6,868,386, filed on May 15, 2000.
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`(PR 22:7-12).
`
`Progressive provides a claim chart purportedly showing where
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`adequate written description under 35 U.S.C. § 112, first paragraph, for
`
`claim 1 can be found in the disclosure of the ‘650 application. (PR 23:12 to
`
`31:16). On that basis, Progressive asserts that claim 1 of the ‘358 patent is
`
`entitled to a priority date of May 1, 2000, earlier than the September 12,
`
`2002 publication date of Nakagawa. For three reasons, the argument is
`
`misplaced.
`
`First, even assuming that the subject matter of claim 1 is described in
`
`the disclosure of the ’650 application, filed on May 1, 2000, prior to the
`
`publication date of Nakagawa, Progressive has not established entitlement to
`
`the priority date of May 1, 2000. That is because if any application in the
`
`priority chain fails to make the requisite disclosure of the claimed subject
`
`matter under 35 U.S.C. § 112, first paragraph, the later-filed application is
`
`not entitled to the benefit of the filing date of the application preceding the
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`break in the priority chain. Hollmer v. Harari, 681 F.3d 1351, 1355 (Fed.
`
`Cir. 2012). To gain the benefit of the filing date of an earlier filed
`
`application under 35 U.S.C. § 120, each application in the chain leading
`
`back to the earlier application must comply with the written description
`
`requirement of 35 U.S.C. § 112, first paragraph. Zenon Envtl., Inc. v. U.S.
`
`17
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`Case CBM2012-00003
`U.S. Patent No. 8,140,358
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`Filter Corp., 506 F.3d 1370, 1378 (Fed. Cir. 2007); Lockwood v. Am.
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`Airlines, Inc., 107 F.3d 1565, 1571 (Fed. Cir. 1997); In re Hogan, 559 F.2d
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`595, 609 (CCPA 1977); In re Schneider, 481 F.2d 1350, 1356 (CCPA 1973).
`
`The ’358 patent was never copending with the ’650 application. The
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`’650 application issued as Patent 6,868,386, on March 15, 2005, and the
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`’358 patent was issued from Application 12/132,487, filed on June 3, 2008.
`
`There is a gap or discontinuity of more than 3 years. There is an intervening
`
`application that is not accounted for or addressed by Progressive. The ’358
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`patent issued from Application 12/132,487, which is a continuation-in-part
`
`of Application 10/764,076, filed January 23, 2004, which is a continuation-
`
`in-part of the ’650 application. Without Application 10/764,076 bridging
`
`the gap between the ’358 patent and the ’650 application, there is no
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`continuity of the chain leading from the ’358 patent back to the ’650
`
`application. Thus, it is fatal to Progressive’s priority claim for claim 1 that
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`Progressive does not discuss or identify written description for the claimed
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`subject matter in the disclosure of Application 10/764,076. Note that
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`substantial portions of the text of the ’650 application identified in
`
`Progressive’s priority claim chart are not found in Application 10/764,076.
`
`Secondly, Progressive makes no attempt to establish entitlement to a
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`priority date with respect to the subject matter of claims 2-8, and 10-18.
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`Thus, even if the lack of continuity in the priority chain back to the
`
`’650 application is ignored and even assuming that the disclosure of the
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`’650 application provides written description for the subject matter of
`
`18
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`U.S. Patent No. 8,140,358
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`claims 1, 9, 19 and 20, that does not help Progressive’s position with respect
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`to claims 2-8, and 10-18.
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`Finally, for reasons discussed below, even as to the subject matter of
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`claim 1, Progressive’s priority claim chart does not persuade us that the
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`disclosure of the ’650 application provides written description for the
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`claimed invention under 35 U.S.C. § 112, first paragraph. There are two
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`deficiencies: (1) one relating to wirelessly transmitting selected vehicle data
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`retained within the on-board memory to a distributed network and a server;
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`and (2) another relating to various operations of the server.
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`Within the chart section provided by Progressive on page 28, lines 7-
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`12 of the preliminary response, Progressive only explains that the vehicle is
`
`linked to an operation control center 416 by a communication link 418.
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`Even if vehicle data is transmitted from the vehicle to the operations control
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`center via that communication link, it does not establish that the wireless
`
`transmitter is “to transfer the selected vehicle data retained within the
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`memory to a distributed network and a server” as is recited in claim 1. It is
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`that particular data retained in the memory which must be transferred.
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`For the claim features of a server configured (1) to process selected
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`vehicle data that represents one or more aspects of operating the vehicle with
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`data that reflects how the selected vehicle data affects a premium of an
`
`insurance policy, safety or level of risk, and (2) to generate a rating factor,
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`Progressive refers only to overall activities that are performed and a general
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`rating system. In that regard, note the chart section provided by Progressive
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`in the preliminary response from page 29, line 13, to page 31, line 16. No
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`19
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`Case CBM2012-00003
`U.S. Patent No. 8,140,358
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`server in the disclosure of the ’650 application has been identified. Nor has
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`the assumed presence of such a server been explained. Claim 1 further
`
`requires the database to be operatively linked to the server. Without having
`
`identified the server, Progressive also has not accounted for that limitation.
`
`The above-noted deficiencies also undermine Progressive’s assertion
`
`of priority claim with respect to claims 9, 19, and 20, each of which depends
`
`on claim 1. In addition, there are other deficiencies with regard to the
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`limitations further set forth in claims 9, 19, and 20.
`
`Claim 9 further requires that the processor, the memory, and the
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`wireless transmitter are all within a portable device. Progressive refers to
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`FIG. 3 of the ’650 application and identifies element 300 in Figure 3 as the
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`portable device. However, element 300 in Figure 3 merely designates the
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`on-board computer. Progressive does not identify a description of
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`element 300 either as a portable device or as including the wireless
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`transmitter. Figure 3 even illustrates transmitting antenna 312 outside of
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`element 300.
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`Claim 19 adds the limitation that the server is configured to calculate
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`an insured’s premium based on the rating factor, or a surcharge or
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`discount to the premium based on the rating factor. The portions of the
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`’650 application cited by Progressive refer only generally to generation of an
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`insurance cost based on all of the data and do not support a two-step
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`procedure where a rating factor is first generated and then a premium or
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`surcharge or discount to the premium is calculated based on that rating
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`factor.
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`20
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`U.S. Patent No. 8,140,358
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`Claim 20 adds the limitation that the server is configured to process
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`se
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