Attorney Docket No.:
`
` LMIC-021-801
`Customer No. 28120
`
`Petitioner: Liberty Mutual
`
` Insurance Company
`
`§
`§
`§
`§
`§
`§
`§
`
`Covered Business Method Patent Review
`United States Patent No. 8,140,358
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`Inventor: Ling et al.
`
`United States Patent No.: 8,140,358
`Formerly Application No.: 12/132,487
`Issue Date: March 20, 2012
`
`Filing Date: June 3, 2008
`
`Former Group Art Unit: 3695
`Former Examiner: Robert R. Niquette
`
`For: Vehicle Monitoring System
`
`MAIL STOP PATENT BOARD
`Patent Trial and AppealBoard
`United States Patent and Trademark Office
`Post Office Box 1450
`Alexandria, Virginia 22313-1450
`
`PETITION FOR COVERED BUSINESS METHOD PATENT REVIEW OF
`UNITED STATES PATENT NO. 8,140,358 PURSUANT TO 35 U.S.C. § 321,
`37 C.F.R. § 42.304
`
`
`
`Pursuant to 35 U.S.C. § 321 and 37 C.F.R. § 42.304, the undersigned, on behalf
`
`of and acting in a representative capacity for petitioner, Liberty Mutual Insurance
`
`Company (“Petitioner” and real party in interest), hereby petitions for review under
`
`the transitional program for covered business method patents of claims 1-20 (all
`
`claims) of U.S. Patent No. 8,140,358 (“the ‘358 Patent”), issued to Progressive
`
`Casualty Insurance Company (“Progressive”) on March 20, 2012, with Raymond Scott
`
`Ling, Richard Ashton Hutchinson, Wilbert John Steigerwald, III, William Andrew
`
`Say, Patrick Lawrence O’Malley, Dane Allen Shrallow, William Curtis Everett, and
`
`Robert John McMillan as the named inventors. Petitioner hereby asserts that it is
`
`more likely than not that at least one of the challenged claims is unpatentable and
`
`
`
`

`

`Covered Business Method Patent Review
`United States Patent No. 8,140,358
`
`respectfully requests institution of a covered business method review of the ‘358
`
`Patent for judgment against Claims 1-20 (all claims) as unpatentable under §§ 102 and
`
`103, with prior art rejections based on the references cited herein.
`
`
`
`ii
`
`

`

`TABLE OF CONTENTS
`
`Covered Business Method Patent Review
`United States Patent No. 8,140,358
`
`
`I. 
`II. 
`
`INTRODUCTION ....................................................................................................... 1 
`PETITIONER HAS STANDING ............................................................................ 5 
`A. 
`The ‘358 Patent Is a Covered Business Method Patent ............................... 5 
`B. 
`Petitioner Is a Real Party In Interest Sued for and Charged With
`Infringement ....................................................................................................... 7 
`III.  OVERVIEW OF SPECIFIC GROUNDS FOR WHICH IT IS MORE
`LIKELY THAN NOT THAT THE CHALLENGED CLAIMS (1-20) OF
`THE ‘358 PATENT ARE UNPATENTABLE ...................................................... 7 
`IV.  Background Information For the ‘358 Patent .......................................................... 8 
`A. 
`The ‘358 Patent .................................................................................................. 8 
`B. 
`The ‘358 Patent Prosecution History .............................................................. 9 
`C. 
`The Earliest Possible Priority Date for Claims 1, 16-17, 19-20 of the ‘358
`Patent Is January 23, 2004 and the Earliest Possible Priority Date for
`Claims 2-15, 18 of the ‘358 Patent is June 3, 2008 ..................................... 11 
`V.  DETAILED EXPLANATION OF REASONS FOR RELIEF
`REQUESTED, SHOWING IT IS MORE LIKELY THAN NOT THAT AT
`LEAST ONE OF THE CHALLENGED CLAIMS IS UNPATENTABLE . 14 
`A. 
`Claim Construction .......................................................................................... 14 
`B. 
`The Challenged Claims Are Invalid Under §§ 102 and/or 103 ................ 16 
`1. 
`Independent Claim 1 ........................................................................... 22 
`(a) 
`Claim 1 is Anticipated Under § 102 by Nakagawa ........... 22 
`(b) 
`Claim 1 is Rendered Obvious Under § 103 by
`Kosaka ..................................................................................... 27 
`Claim 1 is Rendered Obvious Under § 103 by
`Herrod ..................................................................................... 32 
`Claim 1 is Rendered Obvious Under § 103 by Each
`of Combinations 1:(4)-1:(5) ................................................. 35 
`Claim 1 is Rendered Obvious Under § 103 by Each
`of Combinations 1:(6)-1:(9) ................................................. 37 
`Claim 1 is Rendered Obvious Under § 103 by Each
`of Combinations 1:(10)-1:(13) ............................................. 39 
`Claim 1 is Rendered Obvious Under § 103 by Each
`of Combinations 1:(14)-1:(17) ............................................. 42 
`
`(c) 
`
`(d) 
`
`(e) 
`
`(f) 
`
`(g) 
`
`iii
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`

`

`Covered Business Method Patent Review
`United States Patent No. 8,140,358
`
`
`2. 
`
`3. 
`
`Dependent Claim 2 is Rendered Obvious Under § 103 by
`Each of Combinations 2:(1)-2:(17) .................................................... 44 
`Dependent Claim 3 is Rendered Obvious Under § 103 by
`Each of Combinations 3:(1)-3:(17) .................................................... 46 
`Dependent Claim 4 is Rendered Obvious Under § 103 by
`Each of Combinations 4:(1)-4:(17) .................................................... 48 
`Dependent Claim 5 is Rendered Obvious Under § 103 by
`Each of Combinations 5:(1)-5:(17) .................................................... 51 
`Dependent Claim 6 is Rendered Obvious Under § 103 by
`Each of Combinations 6:(1)-6:(17) .................................................... 52 
`Dependent Claim 7 is Rendered Obvious Under § 103 by
`Each of Combinations 7:(1)-7:(17) .................................................... 54 
`Dependent Claim 8 is Rendered Obvious Under § 103 by
`Each of Combinations 8:(1)-8:(17) .................................................... 55 
`Dependent Claim 9 is Rendered Obvious Under § 103 by
`Each of Combinations 9:(1)-9:(17) .................................................... 57 
`10.  Dependent Claim 10 is Rendered Obvious Under § 103 by
`Each of Combinations 10:(1)-10:(17)................................................ 59 
`11.  Dependent Claim 11 is Rendered Obvious Under § 103 by
`Each of Combinations 11:(1)-11:(17)................................................ 60 
`12.  Dependent Claim 12 is Rendered Obvious Under § 103 by
`Each of Combinations 12:(1)-12:(17)................................................ 61 
`13.  Dependent Claim 13 is Rendered Obvious Under § 103 by
`Each of Combinations 13:(1)-13:(17)................................................ 62 
`14.  Dependent Claim 14 is Rendered Obvious Under § 103 by
`Each of Combinations 14:(1)-14:(17)................................................ 63 
`15.  Dependent Claim 15 is Rendered Obvious Under § 103 by
`Each of Combinations 15:(1)-15:(17)................................................ 64 
`16.  Dependent Claim 16 is Rendered Obvious Under § 103 by
`Each of Combinations 16:(1)-16:(9) .................................................. 65 
`17.  Dependent Claim 17 ............................................................................ 66 
`(a) 
`Dependent Claim 17 is Rendered Obvious Under §
`103 by Each of Combinations 17:(1)-17:(9) ...................... 66 
`Dependent Claim 17 is Rendered Obvious Under §
`103 by Each of Combinations 17:(10)-17:(18) .................. 67 
`
`(b) 
`
`4. 
`
`5. 
`
`6. 
`
`7. 
`
`8. 
`
`9. 
`
`iv
`
`

`

`Covered Business Method Patent Review
`United States Patent No. 8,140,358
`
`
`(c) 
`
`(c) 
`
`(d) 
`
`(b) 
`
`Dependent Claim 17 is Rendered Obvious Under §
`103 by Each of Combinations 17:(19)-17:(27) .................. 68 
`18.  Dependent Claim 18 is Rendered Obvious Under § 103 by
`Each of Combinations 18:(1)-18:(27)................................................ 70 
`19.  Dependent Claim 19 ............................................................................ 70 
`(a) 
`Dependent Claim 19 is Anticipated Under § 102 by
`Nakagawa ................................................................................ 70 
`Dependent Claim 19 is Rendered Obvious Under §
`103 by Each of Combinations 19:(1)-19:(17) .................... 71 
`Dependent Claim 19 is Rendered Obvious Under §
`103 by Each of Combinations 19:(18)-19:(34) .................. 73 
`Dependent Claim 19 is Rendered Obvious Under §
`103 by Each of Combinations 19:(35)-19:(51) .................. 74 
`20.  Dependent Claim 20 ............................................................................ 76 
`(a) 
`Dependent Claim 20 is Anticipated Under § 102 by
`Nakagawa ................................................................................ 76 
`Dependent Claim 20 is Rendered Obvious Under §
`103 by Each of Combinations 20:(1)-20:(17) .................... 77 
`Dependent Claim 20 is Rendered Obvious Under §
`103 by Each of Combinations 20:(18)-20:(34) .................. 77 
`Dependent Claim 20 is Rendered Obvious Under §
`103 by Each of Combinations 20:(35)-20:(51) .................. 78 
`VI.  CONCLUSION........................................................................................................... 79 
`
`
`(b) 
`
`(c) 
`
`(d) 
`
`v
`
`

`

` EXHIBIT LIST
`
`Exhibit 1001
`Exhibit 1002
`
`Exhibit 1003
`
`Exhibit 1004
`
`Exhibit 1005
`
`Exhibit 1006
`
`Exhibit 1007
`
`Exhibit 1008
`
`Exhibit 1009
`
`Exhibit 1010
`
`Exhibit 1011
`
`Exhibit 1012
`
`Exhibit 1013
`
`Covered Business Method Patent Review
`United States Patent No. 8,140,358
`
`
`United States Patent No. 8,140,358
`United States Patent No. 8,140,358 File
`History
`Japan Patent Application H4-182868, filed
`on November 19, 1990, and published on
`June 30, 1992 (“Kosaka”)
`UK Patent Application GB 2286369, filed
`on November 2, 1994, published on August
`16, 1995 (“Herrod”)
`United States Patent Application
`Publication No. 2002/0128882, filed
`February 27, 2002, published on September
`12, 2002 (“Nakagawa”)
`United States Patent No. 5,459,304, filed on
`September 13, 1994, and issued on October
`17, 1995 (“Eisenmann”)
`United States Patent No. 5,243,530, filed on
`July 26, 1991, and issued on September 7,
`1993 (“Stanifer”)
`United States Patent No. 5,446,757, filed on
`June 14, 1993, and issued on August 29,
`1995 (“Chang”)
`United States Patent No. 5,210,854, filed on
`June 14, 1989, and issued on May 11, 1993
`(“Beaverton”)
`United States Patent No. 6,957,133, filed on
`May 8, 2003, and issued on October 18,
`2005 (“Hunt”)
`United States Patent No. 7,228,211, filed on
`March 26, 2004, and issued on June 5, 2007
`(“Lowrey”)
`United States Patent No. 4,651,157, filed on
`May 7, 1985, and issued on March 17, 1987
`(“Gray”)
`PCT Patent Pub. No. WO 90/02388,
`published on March 8, 1990 (“Pettersen”)
`
`vi
`
`

`

`Exhibit 1014
`
`Exhibit 1015
`
`Exhibit 1016
`
`Exhibit 1017
`
`Exhibit 1018
`
`Exhibit 1019
`
`Exhibit 1020
`Exhibit 1021
`Exhibit 1022
`Exhibit 1023
`Exhibit 1024
`
`Exhibit 1025
`
`Exhibit 1026
`
`Covered Business Method Patent Review
`United States Patent No. 8,140,358
`
`United States Patent No. 5,465,079, filed on
`August 13, 1993, and issued on November
`7, 1995 (“Bouchard”)
`“An Interest in Black Magic – Motor
`Technology,” Insurance Age, published on
`January 1, 1994 (“Black Magic”)
`“Communications And Positioning Systems
`In The Motor Carrier Industry” by Dimitris
`A. Scapinakis and William L. Garrison,
`published January 1, 1992 (“Scapinakis”)
`“Application of GSM in High Speed Trains:
`Measurements and Simulations” by
`Manfred Goller, published on May 16, 1995
`(“Goller”)
`“AX.25 Amateur Packet-Radio Link-Layer
`Protocol, Version 2.0”, Terry L. Fox,
`published in October, 1984 (“AX.25
`Specifications”)
`“QUALCOMM's MSM6500 Multimedia
`Single-Chip Solution Enables High-
`Performance Multimode Handsets
`Supporting CDMA2000 1X, 1xEV-DO and
`GSM/GPRS,” PR Newswire, published
`November 12, 2002 (“MSM6500 Press
`Release”)
`United States Patent No. 8,090,598
`United States Patent No. 6,064,970
`United States Patent No. 6,868,386
`United States Patent No. 5,797,134
`United States Patent No. 5,438,312, filed on
`April 19, 1994 and issued on August 1, 1995
`(“Lewis”)
`Declaration of Scott Andrews, dated
`September 15, 2012
`
`Curriculum vitae of Scott Andrews and List
`of Matters
`
`vii
`
`

`

`Exhibit 1027
`
`Exhibit 1028
`
`Exhibit 1029
`
`Exhibit 1030
`
`Exhibit 1031
`
`Covered Business Method Patent Review
`United States Patent No. 8,140,358
`
`
`OBD-II Background—Where’d It Come
`From?,
`http://www.OBDii.com/background.html
`(follow “Where’d it come from?” hyperlink)
`
`Excerpt from Shuji Mizutani, Car
`Electronics, page 250 (Nippondenso Co.
`Ltd. 1992)
`
`Excerpt from David S. Boehner,
`Automotive Microcontrollers, in
`Automotive Electronics Handbook, pages
`11.24-11.29 (Ronald K. Jurgen ed., 1995)
`
`Declaration of Amanda F. Wieker
`
`Declaration of Georginne Blundell
`
`viii
`
`

`

`Covered Business Method Patent Review
`United States Patent No. 8,140,358
`
`I.
`
`INTRODUCTION
`
`The ‘358 Patent is merely an attempt to claim an old idea long known in the
`
`art—comparing monitored vehicle data with prescribed levels of risk to generate an
`
`insurance-related factor. Sole independent claim 1 generally requires: (1) vehicle
`
`monitoring components (including a processor, memory, and wireless transmitter)
`
`that collect, store, and wirelessly transmit monitored data; (2) a database linked to a
`
`server that stores the vehicle data transmitted from the device; and (3) a server that
`
`processes the vehicle data (based on its effects on an insurance premium, safety, or
`
`level of risk) and generates a “rating factor.” Dependent claims 2-20 simply tack on
`
`an array of conventional implementation choices (relating, e.g., to the wireless
`
`transmitter, alerting a third-party to a driving incident, calculating an insurance
`
`premium based upon the “rating factor,” or processing insurance-related vehicle data).
`
`These were not, of course, invented by the Applicants – as the ‘358 Patent’s
`
`parents concede. For example, U.S. Pat. Nos. 8,090,598 (“‘598 Pat.”) (Exhibit 1020)
`
`and 6,064,970 (“‘970 Pat.”) (Exhibit 1021) acknowledged as commonplace:
`
` “[V]ehicle operating data recording systems” that “disclose a variety of
`
`conventional techniques for recording vehicle operation data elements in a
`
`variety of data recording systems” (Ex. 1020 at 3:18-26; Ex. 1021 at 2:54-61);
`
` Vehicle tracking systems that use “communication links with navigation
`
`systems for providing information describing a vehicle’s location based upon
`
`navigation signals. When such positioning information is combined with
`
`
`
`

`

`Covered Business Method Patent Review
`United States Patent No. 8,140,358
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`roadmaps in an expert system, vehicle location is ascertainable” (Ex. 1020 at
`
`3:50-59; Ex. 1021 at 3:28-34);
`
` Radio communication links and cellular phones for “immediate communication
`
`of certain types of data elements or . . . a more immediate response in cases of
`
`theft, accident, break-down or emergency” (Ex. 1021 at 1:61-66);
`
` “[I]nsurance rating systems [that] provide discounts and surcharges for some
`
`types of use of the vehicle, equipment on the vehicle and type of driver”
`
`including “[b]usiness use,” “[s]afety equipment on the vehicle,” “antilock
`
`brakes,” and “safe driver” (Ex. 1020 at 2:47-64); and
`
` Detection and recording of vehicle usage data, e.g., seatbelt usage, to assess
`
`vehicle insurance costs (Ex. 1021 at 1:66-2:2).
`
`The ‘598 and ‘970 Patents also concede that “[c]urrent motor vehicle control and
`
`operating systems comprise electronic systems readily adaptable for modification to
`
`obtain the desired types of information relevant to determination of the cost of
`
`insurance.” Ex. 1020 at 3:50-53; Ex. 1021 at 3:25-28. And finally, the ‘358 Patent
`
`acknowledges it was known that data “may be used to classify applicants into actuarial
`
`classes that may be associated with insurance rates.” Ex. 1001, at 1:17-18.
`
`Tellingly, the only supposedly inventive feature prompting the Examiner to
`
`allow the ‘358 Patent claims – generating a “rating factor” – was also already well
`
`known in the art. The Examiner believed that “the prior art of record fails to teach:
`
`2
`
`

`

`Covered Business Method Patent Review
`United States Patent No. 8,140,358
`
`where the server is configured to process the 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.” Ex. 1002, at 000026-27. But in fact the prior art
`
`was full of such teachings, and every primary reference Petitioner cites here—each
`
`dealing with risk evaluation of monitored vehicle data—teaches this element (properly
`
`construed for purposes of this Review, see § 42.300(b) 1):
`
` Herrod discloses a “remote computer” that “read[s] the recorded acceleration
`patterns,” “update[s] the algorithms used for analysing the acceleration patterns
`and the accident statistics,” and “determine[s] to which of several behavioural
`groups the driver belongs,” where “[e]ach group is associated with a
`significantly different level of accident risk.” (Ex. 1004 at 1-3);
`
` Kosaka discloses a “risk evaluation device” that “evaluates risk” based on
`“states that contributes to risk” and “empirical knowledge” to determine “risk
`evaluation values.” (Ex. 1003 at 3-4); and
`
` Nakagawa discloses an “insurance premium calculation” unit “on the server
`side” that “reads the ‘user data’” received from a vehicle’s “on-board
`apparatus,” “calculates insurance premiums by discounting or increasing them
`using a prescribed value as a standard,” and determines “user operating levels”
`
`
`1 All sections cited herein are from either 35 U.S.C. or 37 C.F.R., as the context
`indicates, unless stated otherwise. All emphasis is added by Petitioner unless
`otherwise noted.
`
`3
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`

`

`Covered Business Method Patent Review
`United States Patent No. 8,140,358
`
`that show “the level of safe driving as points which are then evaluated as
`numbers.” (Ex. 1005 at ¶¶ [0070], [0072], [0076]).
`
`Moreover, while Petitioner presents prior art (like Kosaka) predating any
`
`claimed priority date for the ‘358 Patent, the claims of the ‘358 Patent are not entitled
`
`to claim priority to the applications issuing as the parent ‘134, ‘970, ‘386, or ‘598
`
`patents. Independent claim 1’s recitation of a “server . . . configured to generate a
`
`rating factor based on the selected vehicle data stored in the database” is an entirely
`
`new concept distinct from what those patents’ written descriptions disclosed.
`
`Similarly, the elements recited in claims 2-15 and 18 do not find any support in any of
`
`the ‘358 Patent’s parents because none of their respective disclosures demonstrate
`
`that Applicants were in possession of the inventions recited in those claims.
`
`Indeed, even if Patent Owner Progressive were to argue that the bare-bones
`
`disclosures in the ‘358 Patent’s parent applications actually provided the necessary
`
`support for these limitations, and thus tried to claim priority back to 2000 or even
`
`1996, Petitioner’s references discussed here would certainly still invalidate the ‘358
`
`Patent because they provide far more disclosure than any supposed “support” in
`
`Progressive’s applications. For example, if Progressive were to try to stretch the
`
`scope of the claimed “rating factor” to argue purported support in its earlier filings,
`
`this will simply underscore the far deeper and earlier disclosures of Petitioner’s cited
`
`art, including the 1992 Kosaka reference, which “determines comprehensive risk
`
`based on reasoning utilizing vague empirical knowledge through the input of the
`
`4
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`

`

`Covered Business Method Patent Review
`United States Patent No. 8,140,358
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`internal measured data and the external measured data” and “performs temporal
`
`integration and computation of risk evaluation values, and thereby calculates
`
`insurance premiums.” Ex. 1003 at 4. Simply put, the ‘358 Patent disclosed nothing
`
`that was not already exceedingly well known, and its claims are, accordingly, invalid.
`
`II.
`
`PETITIONER HAS STANDING
`A.
`The ‘358 Patent is a “covered business method patent” under § 18(d)(1) of the
`
`The ‘358 Patent Is a Covered Business Method Patent
`
`Leahy-Smith America Invents Act, Pub. L. 112-29 (“AIA”) and § 42.301. As
`
`discussed above, the ‘358 Patent is directed to analyzing and processing data for
`
`financial products and services—specifically, insurance. The claimed invention
`
`concerns the administration and management of an insurance policy to adjust
`
`insurance premiums based on monitored vehicle data. See AIA § 18(d)(1); 37 C.F.R.
`
`§ 42.301(a). See also 77 Fed. Reg. 48,734, 48,735 (Aug. 14, 2012) (“[T]he definition of
`
`covered business method patent was drafted to encompass patents ‘claiming activities
`
`that are financial in nature, incidental to a financial activity or complementary to a
`
`financial activity.’”) (citation omitted). Although certain conventional components are
`
`recited in the claims, 2 the ‘358 Patent is clearly not a “technological invention”
`
`
`2 See, e.g., 77 Fed. Reg. 48,756 48,764 (Aug. 14, 2012) (“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,” or
`“[r]eciting the use of known prior art technology to accomplish a process or method,
`
`5
`
`

`

`Covered Business Method Patent Review
`United States Patent No. 8,140,358
`
`because it does not claim “subject matter as a whole [that] recites a technological
`
`feature that is novel and unobvious over the prior art[] and solves a technical problem
`
`using a technical solution.” § 42.301(b). There is no “technological feature” of the
`
`‘358 Patent that is novel and unobvious. The claimed invention simply uses data
`
`obtained from conventional vehicle monitoring systems to generate insurance-related
`
`“rating factors.” And, as noted above, the reason the Examiner gave for allowing the
`
`claims in the first place was his belief that the prior art before him failed to disclose a
`
`server 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 “generate a rating
`
`factor based on the selected vehicle data stored in the database.” Ex. 1002, 000026-
`
`27. The subject matter as a whole also does not solve a “technical problem.” Instead,
`
`the only problem allegedly present in the prior art was that “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
`
`
`even if that process or method is novel and non-obvious” would “not typically render
`a patent a technological invention.”).
`
`6
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`

`

`Covered Business Method Patent Review
`United States Patent No. 8,140,358
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`not support new or dynamic risk assessments.” Ex. 1001 at 1:24-29. The ‘358 Patent
`
`– as filed, argued, and issued – concerns non-technical issues of insurance rating.3
`
`B.
`
`Petitioner Is a Real Party In Interest Sued for and Charged With
`Infringement
`
`As discussed in the Mandatory Notices, Progressive has moved to amend its
`
`complaint 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, to add an
`
`assertion of the ‘358 Patent against Petitioner.
`
`III. OVERVIEW OF SPECIFIC GROUNDS FOR WHICH IT IS MORE
`LIKELY THAN NOT THAT THE CHALLENGED CLAIMS (1-20)
`OF THE ‘358 PATENT ARE UNPATENTABLE
`
`Pursuant to § 42.208 (and § 42.300), Petitioner asserts that at least one—and,
`
`indeed, every one—of the challenged claims of the ‘358 Patent is unpatentable as
`
`invalid under the requirements of §§ 102 and 103. The accompanying Exhibit List
`
`lists all prior art references relied upon in the present Petition for the asserted grounds
`
`of invalidity under §§ 102 and 103—including references not previously cited to or
`
`considered by the PTO. Section V.B lists each ground upon which it is more likely
`
`than not that the challenged claims are unpatentable as anticipated under § 102
`
`and/or obvious under § 103, and renders a detailed explanation therefor.
`
`
`3 The Original Class (i.e., primary classification) of the ‘358 Patent is U.S. Class 705/4,
`“Insurance (e.g., computer implemented system or method for writing insurance
`policy, processing insurance claim, etc.).” Ex. 1001 at (52).
`
`7
`
`

`

`Covered Business Method Patent Review
`United States Patent No. 8,140,358
`
`IV. BACKGROUND INFORMATION FOR THE ‘358 PATENT
`A.
`The ‘358 Patent – issued to Progressive on March 20, 2012 – states it is related
`
`The ‘358 Patent
`
`to “data acquisitions, and particularly to a system that acquires data related to
`
`evaluating risk.” Ex. 1001 at 1:17-18. As explained in Section I, the majority of the
`
`‘358 Patent’s written description relates to well-known insurance schemes and vehicle
`
`monitoring methods. Figure 3, for example, catalogs an array of well-known
`
`components, such as an on-board computer (300), vehicle data bus (304), driver input
`
`device (308), car battery (310), location receiver (312), and communication link (314):
`
`
`
`These were not inventions of the Applicants. And their claims similarly contain
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`nothing inventive, reciting vehicle monitoring components that collect, store, and
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`wirelessly transmit in-vehicle monitored data, a remote database that stores the vehicle
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`data transmitted from the device, and a server that processes the vehicle data and
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`generates a “rating factor” – all known in the art.
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`United States Patent No. 8,140,358
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`B. The ‘358 Patent Prosecution History
`The application resulting in the ‘358 Patent (No. 12/132,487) was filed on June
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`3, 2008, as a continuation-in-part of U.S. App. No. 10/764,076, which in turn was
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`filed on January 23, 2004, and issued as the ‘598 Patent. The ‘598 patent is a
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`continuation-in-part of U.S. App. No. 09/571,650, filed May 15, 2000, which issued
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`as U.S. Patent No. 6,868,386 (“the ‘386 patent”), which in turn is a continuation-in-
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`part of U.S. App. No. 09/135,034, filed August 17, 1998, which issued as the ‘970
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`patent. The ‘970 patent is a continuation of U.S. Application No. 08/592,958, filed
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`January 29, 1996, which issued as U.S. Patent No. 5,797,134 (“the ‘134 patent”). Ex.
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`1001, at 1. A copy of the ‘358 Patent prosecution history is attached as Exhibit 1002,
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`excluding the prior art of record.
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`Applicants initially filed the application for the ‘358 Patent with 130 claims.
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`Ex. 1002 at 002008-31. On April 13, 2004, the Examiner issued a restriction
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`requirement, identifying thirteen claim groups. Ex. 1002 at 000297-311. The
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`Applicants elected the Examiner’s Group III,4 comprising amended claims 40-57 as
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`4 Group III was directed to “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 when a wireless network indicates a capacity to
`receive the selected vehicle data; and a monitor to display the 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, classified in class 705, subclass 4.” Ex. 1002 at 299-30.
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`United States Patent No. 8,140,358
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`well as newly added claims 131-132. Ex. 1002 at 000287. Independent claim 40
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`generally recited three elements: (1) vehicle monitoring components, comprising a
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`processor, memory, and wireless transmitter, that collect, store, and wirelessly
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`transmit in-vehicle monitored data; (2) a database linked to a server that stores the
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`vehicle data transmitted from the device; and (3) a server that processes the vehicle
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`data based on their effects on an insurance premium, safety, or level of risk, and
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`generates a “rating factor.” Id. at 268. Dependent claims 41-57 generally concerned
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`further limitations on the “wireless transmitter,” and claims 131-132 further
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`limitations on the “server.” Id. at 268-271, 285-86.
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`On June 29, 2011, the Examiner rejected all pending claims as anticipated by
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`U.S. Patent No. 5,835,008 (“Colemere”), which was filed on November 27, 1996 and
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`issued November 10, 1998, and is generally directed to an information system that
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`monitors the position and motions of a driver’s feet to provide information that can
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`be put into usable form for drivers, vehicle systems, and traffic authorities. Ex. 1002
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`at 000217-25. In response, Applicants argued priority over Colemere based on related
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`U.S. Pat. App. No. 08/592,958, filed January 29, 1996, but did not identify any
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`disclosure in that application to support their claim of priority. Ex. 1002 at 000147.
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`On January 12, 2012, the Examiner issued a Notice of Allowance but refused
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`to accept Applicants’ priority arguments. Ex. 1002 at 000026. The Examiner
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`maintained Colemere was prior art, with “a processor that collects vehicle data from a
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`United States Patent No. 8,140,358
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`vehicle bus that represents aspects of operating the vehicle; a memory that stores
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`selected vehicle data related to a level of safety or an insurable risk in operating a
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`vehicle; a wireless transmitter configured to transfer the selected vehicle data retained
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`within the memory to a distributed network and a server; a database operatively linked
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`to the server to store the selected vehicle data transmitted by the wireless transmitter,
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`the database comprising a storage system remote from the wireless transmitter and
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`the memory comprising records with operations for searching the records and other
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`functions.” Id. The Examiner stated these reasons for allowance (id. at 26-27):
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`Even though, the prior art of record teaches the above-mentioned
`features, the prior art fails to teach:
`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.
`For this reason claim 40 is deemed to be allowable over the prior art of
`record and claims 41-57, 131 and 132 are allowed by dependency …
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`C. The Earliest Possible Priority Date for Claims 1, 16-17, 19-20 of the
`‘358 Patent Is January 23, 2004 and the Earliest Possible Priority
`Date for Claims 2-15, 18 of the ‘358 Patent is June 3, 2008
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`The continuation-in-part application that issued as the ‘358 Patent was filed on
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`June 3, 2008, claiming priority to four parent applications (discussed above), the
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`earliest filed on January 29, 1996.5 To claim a pre-2008 priority date, however, the
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`claims at issue must be directed to subject matter disclosed in the prior application(s)
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`in the manner provided by § 112 ¶ 1, and must contain a written description of the
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`invention. See, e.g., Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1562-63 (Fed. Cir. 1991).
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`While reserving for another forum whether the claims actually have any
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`support in any of the listed priority applications, Petitioner respectfully submits that
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`Progressive is not entitle