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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`LIBERTY MUTUAL INSURANCE CO.
`Petitioner
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` Before Honorable JAMESON LEE, JONI Y. CHANG, and MICHAEL R.
`ZECHER, Administrative Patent Judges.
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`PETITIONER’S REQUEST FOR REHEARING SEEKING CONDITIONAL
`RELIEF PURSUANT TO 37 C.F.R. § 42.71
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`v.
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`PROGRESSIVE CASUALTY INSURANCE CO.
`Patent Owner
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`—————————————
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`Case CBM2012–00003
`Patent 8,140,358
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`Pursuant to 37 C.F.R. § 42.71(d), Petitioner Liberty Mutual Insurance Company
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`Case CBM2012–00003
`Patent 8,140,358
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`(“Petitioner”) makes the following Request for Rehearing Seeking Conditional Relief
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`(“Request”) in connection with the Final Written Decisions entered February 11, 2014,
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`(Case CBM2012–00003, Paper 78; CBM2013-00009, Paper 68) by the Patent Trial and
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`Appeal Board (“Board”) in Cases CBM2012-00003 and CBM2013-00009.
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`On March 12, 2014, Progressive Casualty Insurance Co. (“Progressive”) filed
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`Patent Owner’s Request for Rehearing Pursuant to 37 C.F.R. § 42.71 in Case
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`CBM2013-00009. (Case CBM2013-00009, Paper 71.)
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`In the event that this Board denies Progressive’s rehearing request in Case
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`CBM2013-00009, Petitioner respectfully requests that the Board deny Petitioner’s
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`rehearing requests concurrently for both CBM2012-00003 and CBM2013-00009. In
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`the event that the Board grants rehearing in Case CBM2013-00009, Petitioner
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`requests that the Board issue a single combined final decision for both CBM2012-
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`00003 and CBM2013-00009, effective February 11, 2014.
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`This Request seeks to address the potential de-linking of the two concurrent
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`proceedings, for purposes of appellate review, created by Progressive’s Request for
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`Rehearing in only CBM2013-00009. If the Board denies Progressive’s request for
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`rehearing in CBM2013-00009 and also denies Petitioner’s requests for rehearing for
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`both CBM2012-00003 and CBM2013-00009 (all effective at the same time), then the
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`Board’s original intent that the CBMs proceed concurrently will be preserved. Thus,
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`appeals from the two CBM proceedings to the United States Court of Appeals for the
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`Case CBM2012–00003
`Patent 8,140,358
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`Federal Circuit will automatically proceed on the same timeline.
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`The Board has clearly stated that both proceedings related to the ‘358 patent—
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`this case and Case CBM2013–00009—were resolved by Final Written Decisions
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`issued “concurrently.” (Case CBM2012–00003, Paper 78 at 3; Case CBM2013–00009,
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`Paper 68 at 2.) As a consequence, neither decision was rendered before the other
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`(and, inter alia, neither should be argued to have any preclusive effect on the other). In
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`issuing these Final Written Decisions, the Board understandably misapprehended that
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`Progressive, following the December 2, 2013 telephone conference with the Board
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`and the Board’s December 4 Order (Case CBM2012–00003, Paper 75; Case
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`CBM2013–00009, Paper 64), would take the position that the time of day each paper
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`was uploaded to the Board’s electronic Patent Review Processing System (“PRPS”)
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`could affect the Board’s stated “concurrent[]” resolution of these matters.
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`Nonetheless, in the CBM2013–00009 proceeding, Progressive claimed that because
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`the Final Written Decision in CBM2012–00003 appeared to have been posted to
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`PRPS slightly before the Final Written Decision in CBM2013–00009, the decisions
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`were not entered concurrently. (Case CBM2013-00009, Paper 71 at 4-5.) As a
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`consequence, Progressive claimed, the earlier decision in CBM2012–00003 mooted
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`the issues decided in CBM2013-00009 and rendered that decision an advisory opinion
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`unauthorized by statute as to claims 2-18. (Id. at 14–15.) Further, by filing the request
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`for rehearing in only one of the two proceedings, Progressive appears to have
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`Case CBM2012–00003
`Patent 8,140,358
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`undertaken to frustrate the Board’s clear intent that the matters be resolved together,
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`with the apparent hope that the two cases would be de-linked for purposes of appeal
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`to the United States Court of Appeals for the Federal Circuit.
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`Petitioner makes this request solely to preserve the current status, intended by
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`the Board, that both proceedings be resolved at the same time. (Case CBM2012–
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`00003, Paper 78 at 3, Paper 79 at 2; Case CBM2013-00009, Paper 68 at 2, Paper 69 at
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`2.) If the Board considers a request for rehearing in one case, it should
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`simultaneously consider rehearing in the other, so that any new decisions can again be
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`entered in both concurrently, in keeping with the Board’s stated intent and
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`maintaining the synchronization of the case schedules.
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`In the alternative, Petitioner respectfully requests—again, only if the Board
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`considers a request for rehearing in one case—that the Board reconsider the form in
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`which it has rendered its Final Written Decisions in these two trials and, upon
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`reconsideration, that the Board issue one combined final decision so as to maintain
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`the status quo established in the Board’s already-rendered Final Written Decisions, in
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`which neither decision was entered nor intended to be entered before the other. If
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`Progressive’s anticipated request for reconsideration were to succeed in de-linking the
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`two proceedings, then the Board’s stated intent could be frustrated. If the technical
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`impossibility of simultaneous upload to PRPS were somehow found to make
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`4
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`concurrent entry of the final decisions legally impossible, Petitioner would ask that the
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`Case CBM2012–00003
`Patent 8,140,358
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`Board reconsider the form in which it rendered its Final Written Decisions and, upon
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`reconsideration, consolidate the two actions and/or enter a combined single Final
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`Written Decision, and thereby preserve its stated intent to resolve both at once.
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`Petitioner intends to appeal substantive issues related to priority and the failure
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`to cancel claims 1, 19, and 20 of the ‘358 patent to the U.S. Court of Appeals for the
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`Federal Circuit for CBM2012-00003. By filing this Request, Petitioner does not waive
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`and instead asserts and preserves its full appeal rights on these issues.
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`CONCLUSION
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`Petitioner requests: (1) that the Board consider and resolve the requests for
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`rehearing concurrently for both CBM2012-00003 and CBM2013-00009, and/or (2) in
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`the alternative, that if the Board rehears CBM2013-00009 that the Board also rehear
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`CBM2012-00003 and issue one combined Final Written Decision for both CBM2012-
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`00003 and CBM2013-00009.
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`Respectfully submitted,
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`ROPES & GRAY LLP
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`Case CBM2012–00003
`Patent 8,140,358
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`By /J. Steven Baughman/
`J. Steven Baughman, Lead Counsel
`James R. Myers (pro hac vice)
`Nicole M. Jantzi
`ROPES & GRAY LLP
`700 12th St. NW, Suite 900
`Washington, DC 20005
`Steven.baughman@ropesgray.com
`James.myers@ropesgray.com
`Nicole.jantzi@ropesgray.com
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`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
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`6
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`March 13, 2014
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`CERTIFICATE OF SERVICE
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`Case CBM2012–00003
`Patent 8,140,358
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`It
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`is certified
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`that a copy of PETITIONER’S REQUEST FOR
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`REHEARING SEEKING CONDITIONAL RELIEF PURSUANT TO 37
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`C.F.R. § 42.71 has been served in its entirety on the Patent Owner as provided in 37
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`CFR § 42.6.
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`The copy has been served on March 13, 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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` /s/ Jordan M. Rossen
`Jordan M. Rossen
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`ROPES & GRAY LLP