`571-272-7822
`
`
`
`
`
` Paper 19
`Entered: March 1, 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
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`On February 28, 2013, a telephone conference call was held between
`
`respective counsel for the parties and Judges Lee, Chang, and Zecher. The
`subject of discussion was what motions the parties intend to file.
`
`
`
`Case CBM2012-00003
`Patent 8,140,358
`
`The parties indicated a general desire to have a protective order put in
`place to cover disclosure of confidential information. Counsel for the parties
`agreed to work toward that end and to ask the Board for assistance if they
`need authorization to deviate from the default protective order in Appendix
`B to the Board’s Trial Practice Guide. See Office Patent Trial Practice
`Guide, 77 Fed. Reg. 48756, 48769 (Aug. 14, 2012). Counsel offered to
`submit a red-lined copy based on the default protective order prior to
`initiating a conference call to discuss any variation from the default
`protective order. The panel appreciates the offer. The red-lined copy for
`discussion should not be officially filed. It should be sent by electronic mail
`as a courtesy copy for use in the telephone conference call to each party and
`the Board.
`Petitioner proposed to file a motion for pro hac vice admission of a
`number of individuals. The panel referred counsel to an order posted on the
`Board’s website with regard to the filing of such a motion.
`Counsel for the patent owner indicated that the patent owner may seek
`to amend one or more claims. The panel expressed appreciation for patent
`owner’s commitment to not add new matter and not to enlarge the scope of
`existing claims. Note also that all proposed amendments must reasonably
`reflect an effort to obviate or otherwise render moot one or more of
`petitioner’s arguments against an unamended claim.
`Finally, counsel for petitioner proposed joining this covered business
`method patent review with any covered business method patent review to be
`instituted on CBM2013-00009 directed to the same involved patent.
`
`2
`
`
`
`Case CBM2012-00003
`Patent 8,140,358
`
`Counsel for the patent owner indicated that he could not take a meaningful
`position on that request prior to reviewing the decision to institute a covered
`business method patent review in CBM2013-00009. Nevertheless, counsel
`for both parties agreed to work together in a cooperative manner, if and
`when a decision to institute a review is rendered in CBM2013-00009, to see
`what measures can be proposed to improve the efficiencies of the two
`reviews on the same patent.
`It is
`ORDERED that the petitioner is authorized to file a motion for pro
`hac vice admission under 37 C.F.R. § 42.10(c), and that such a motion shall
`be filed in accordance with the “Order -- Authorizing Motion for Pro Hac
`Vice Admission” in Case IPR2013-00010 (MPT), a copy of which is
`available on the Board Web site (at http://www.uspto.gov/PTAB) under
`“Representative Orders, Decisions, and Notices”; the patent owner has one
`week from the time of filing of the motion to oppose the motion; and
`FURTHER ORDERED that the patent owner may file a motion to
`amend one or more of its claims which are subject to at least one ground of
`unpatentability for which this review has been instituted; and
`FURTHER ORDERED that petitioner may initiate a joint
`conference call, if a review is instituted in CBM2013-00009, to discuss
`potential joinder.
`
`
`
`
`
`
`
`3
`
`
`
`Case CBM2012-00003
`Patent 8,140,358
`
`PETITIONER:
`
`J. Steven Baughman
`Nicole M. Jantzi
`Ropes & Gray
`Email: steven.baughman@ropesgray.com
`Email: Nicole.jantzi@ropesgray.com
`
`PATENT OWNER:
`
`Calvin P. Griffith
`James L. Wamsley, III
`John V. Biernacki
`Jones Day
`Email: cpgriffith@jonesday.com
`Email: jlwamsleyiii@jonesday.com
`Email: jvbiernacki@jonesday.com
`
`
`4
`
`
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