Case CBM2012-00003
`Patent 8,140,358
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`LIBERTY MUTUAL INSURANCE CO.
`Petitioner
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`v.
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`PROGRESSIVE CASUALTY INSURANCE CO.
`Patent Owner
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`Case CBM2012-00003
`Patent 8,140,358
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`PATENT OWNER’S OPPOSITION TO LIBERTY’S
`IMPROPERLY FILED PAPER NO. 81
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`Patent 8,140,358
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`—————————————
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`LIBERTY MUTUAL INSURANCE CO.
`Petitioner
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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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`—————————————
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`PATENT OWNER’S OPPOSITION TO LIBERTY’S
`IMPROPERLY FILED PAPER NO. 81
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`Petitioner flaunted this Board’s rules in filing Paper 81 in this proceeding,
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`Case CBM2012-00003
`Patent 8,140,358
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`calling its paper a “request for rehearing” in order to file it without the Board’s prior
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`approval. Yet Paper 81 does not request the Board to rehear its final decision.
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`Rather, it seeks relief contingent on how the Board will in the future rule on the
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`rehearing request filed by the Patent Owner in CBM2013-00009, Paper 71.
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`If the Board denies Patent Owner’s rehearing request in CBM2013-00009, then
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`it asks the Board to deny its own request as well. (Paper 81 at 2.) If, on the other
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`hand, the Board decides to grant Patent Owner’s rehearing request, then Petitioner
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`asks that the Board “issue a single combined final decision” in CBM2012-00003 and
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`CBM2013-00009. (Id.) That Petitioner is asking the Board to deny its own request
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`demonstrates that Paper 81 is an abuse of the Board’s rules. Moreover, Petitioner has
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`also violated the December 4, 2013 Order (Paper 75, at 3), that “Petitioner is not
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`authorized to file a motion to join this proceeding with CBM2013-00009 [or] to seek
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`that a single joint decision be issued for CBM2012-00003 and CBM2013-00009[.]”
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`As demonstrated herein, Petitioner’s Paper 81 is not a proper rehearing request
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`under 37 C.F.R. § 42.71. The Board should so rule and reject it as an unauthorized
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`filing made in an effort to circumvent the Board’s rules and in violation of the Board’s
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`December 4, 2013 Order.
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`I.
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`BACKGROUND
`On February 11, 2014, the Board entered its final written decision in
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`1
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`CBM2012-00003 (Paper 78) and CBM2013-00009 (Paper 68). Patent Owner filed a
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`Case CBM2012-00003
`Patent 8,140,358
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`timely Request for Rehearing on March 12, 2014 in CBM2013-00009. (Paper 71.)
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`The next day, Petitioner filed its purported “request for rehearing.” (Paper 81.)
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`Petitioner filed the same request in the CBM2013-00009. The Board ordered in Paper
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`83 that Patent Owner could file oppositions to those papers.
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`II. LEGAL ARGUMENT
`A request for rehearing may be filed if the Board has made a “decision” with
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`which a party is dissatisfied. 37 C.F.R. § 42.71(d). By its very nature, such a request is
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`to re-hear a decision already rendered. A party cannot seek “rehearing” of something
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`which has yet to be decided. Yet, that is what Petitioner purports to do. It titled
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`Paper 81 a “request for rehearing” although the relief it seeks depends on how the
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`Board rules in the future on Patent Owner’s Request for Rehearing. Paper 81 does
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`not request rehearing but is an improper motion or opposition directed to Patent
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`Owner’s Request. Petitioner deliberately titled it as a rehearing request so that it could
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`be filed without the Board’s prior approval.
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`Paper 81 is a transparent attempt to oppose Patent Owner’s Request for
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`Rehearing. The Board prohibits filing such an opposition “absent a request from the
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`Board.” (77 Fed. Reg. 48756, 48768 at § II(P)(Aug. 14, 2012).) Petitioner violated
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`that prohibition by unilaterally filing Paper 81 as a rehearing request.
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`2
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`By contrast, Patent Owner has requested rehearing as to the Board’s final
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`Case CBM2012-00003
`Patent 8,140,358
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`written decision in CBM2013-00009 because the Board misapprehended or
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`overlooked the applicable law that prohibited it from entering that decision. (Paper
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`71.) That is a proper request pursuant to Section 42.71, whereas Petitioner’s Paper 81
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`is not a bona fide request. It does not seek to rehear any decision the Board has
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`actually rendered. And, while it claims that the Board “misapprehended” that Patent
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`Owner “would take the position” that the timing of entry of final written decisions
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`could affect their resolution (Paper 81, at 3), Petitioner knows that the Board was not
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`under any such misapprehension, as it plainly stated “nothing unusual should be
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`arranged to avoid a potential issue that hinges on when the Board renders final
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`written decisions in CBM2012-00003 and CBM2013-00009” (Paper 75, at 2).
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`Petitioner “ask[s] that the Board . . . consolidate the two actions and/or enter a
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`combined single Final Written Decision.” (Paper 81 at 5.) However, this is the same
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`relief Petitioner requested in the December 2, 2013 conference call, and which the
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`Board expressly ordered that Petitioner was “not authorized” to seek. (Paper 75.)
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`Petitioner chose not to file a timely request for rehearing of that Order, and cannot do
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`so now. (37 C.F.R. § 42.71(d)(1); 77 Fed. Reg. 48612, 48624 (Aug. 14, 2012).)
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`III. CONCLUSION
`For the above reasons, Paper 81 should be ruled an improper rehearing request
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`and rejected as an unauthorized filing.
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`Case CBM2012-00003
`Patent 8,140,358
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`By:
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`Respectfully submitted,
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`JONES DAY
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`/s/Calvin P. Griffith
`Calvin P. Griffith
`Registration No. 34,831
`JONES DAY
`North Point
`901 Lakeside Avenue
`Cleveland, Ohio 44114-1190
`(216) 586-3939
`(216) 579-0212 (Fax)
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`Attorney For Patent Owner
`Progressive Casualty Insurance Co.
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`March 28, 2014
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`4
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`CERTIFICATE OF SERVICE
`I certify that a copy of the foregoing PATENT OWNER’S OPPOSITION TO
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`LIBERTY’S IMPROPERLY FILED PAPER NO. 81 was served on March 28, 2014
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`by causing it to be sent by email to counsel for Petitioner at the following email
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`addresses:
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`Steven.baughman@ropesgray.com
`Nicole.jantzi@ropesgray.com
`James.myers@ropesgray.com
`LibertyMutualPTABService@ropesgray.com
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`/s/ John V. Biernacki
`John V. Biernacki
`Registration No. 40,511
`JONES DAY
`North Point
`901 Lakeside Avenue
`Cleveland, Ohio 44114-1190
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`Attorney For Patent Owner
`Progressive Casualty Insurance Co.
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`CLI-2199156
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