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
`Patent 8,140,358
`
`—————————————
`
`PATENT OWNER’S OPPOSITION TO LIBERTY’S
`MOTION TO EXCLUDE EVIDENCE
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`CLI-2148517v1
`
`
`
`—————————————
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`—————————————
`
`LIBERTY MUTUAL INSURANCE CO.
`Petitioner
`
`v.
`
`PROGRESSIVE CASUALTY INSURANCE CO.
`Patent Owner
`
`—————————————
`
`Case CBM2012-00003
`Patent 8,140,358
`
`—————————————
`
`PATENT OWNER’S OPPOSITION TO LIBERTY’S
`MOTION TO EXCLUDE EVIDENCE
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`CLI-2148517v1
`
`
`
`Patent Owner Progressive Casualty Ins. Co. (“Progressive”) hereby opposes
`
`Case CBM2012-00003
`Patent 8,140,358
`
`
`
`the motion to exclude filed by Liberty Mutual Insurance Co. (“Liberty”). (Paper
`
`No. 58.)
`
`I.
`
`SUMMARY OF ARGUMENT
`
`Liberty has failed to demonstrate good cause to exclude evidence introduced
`
`by Progressive. Liberty bases its motion on a misunderstanding of the facts and a
`
`misapprehension of the law. The attacks lodged by Liberty in its motion go to the
`
`sufficiency of the Progressive evidence in question, not to its admissibility, and
`
`Liberty’s motion to exclude should therefore be denied.
`
`II. LEGAL STANDARD
`A. Not Proper To Argue Weight Of Evidence In Motion To Exclude
`“A motion to exclude must explain why the evidence is not admissible (e.g.,
`
`relevance or hearsay)[.]” 77 Fed. Reg. 48,756, 48,767 (Aug. 14, 2012). However,
`
`the Office Patent Trial Practice Guide makes clear that such a motion to exclude
`
`“may not be used to challenge the sufficiency of the evidence to prove a particular
`
`fact.” Id. (emphasis added). Indeed, as set forth in the caselaw cited by Liberty,
`
`the “sufficiency of evidence relates not to admissibility but to the weight of the
`
`evidence and is a matter for the trier of fact to resolve.” SEC v. Guenthner, 395 F.
`
`Supp. 2d 835, 842 n.3 (D. Neb. 2005) (emphasis added).
`
`CLI-2148517v1
`
`1
`
`
`
`
`
`Case CBM2012-00003
`Patent 8,140,358
`
`Liberty Argues That Progressive’s Evidence Should Be Admitted
`
`B.
`Notwithstanding that Liberty is moving to exclude evidence, it spends
`
`several pages of its 7-page motion, setting forth caselaw for the proposition that the
`
`Board should not exclude evidence. (Motion at 1-3.) Indeed, Liberty claims that
`
`there is no “need for formal exclusion,” and it is “better for the Board” to admit
`
`evidence “than to exclude particular pieces.” (Motion at 1, 2.) Progressive does
`
`not concede or agree that Liberty’s characterization of the law applies in all
`
`instances, such as where new evidence is improperly submitted with a reply brief
`
`or cross-examination of a witness indicates that his or her prior testimony was
`
`unreliable. Nevertheless, since Liberty has not argued that, in evaluating
`
`Progressive’s evidence, there is any reason to depart from the general principles
`
`favoring the admission of evidence, its motion should be denied under the very
`
`caselaw it cites.
`
`III. ARGUMENT
`A. Liberty Fails To Show Good Cause As To Expert Mr. Zatkovich
`Liberty has failed to satisfy its burden of showing good cause that portions
`
`of Progressive’s expert Mr. Ivan Zatkovich’s declaration (Exhibit 2007) should be
`
`excluded. As demonstrated below, Liberty’s argument is based on a
`
`misapprehension of the law and its erroneous speculation as to Mr. Zatkovich’s
`
`CLI-2148517v1
`
`2
`
`
`
`
`qualifications, which is the result of Liberty’s own decision not to depose Mr.
`
`Case CBM2012-00003
`Patent 8,140,358
`
`Zatkovich.
`
`Liberty claims erroneously that Mr. Zatkovich lacks the necessary
`
`knowledge on “insurance and telematics issues pertinent to the ‘358 patent” and
`
`“has no basis to render the various opinions he provides[,]” but this allegation is
`
`unsupported by the record. (Motion at 5, emphasis in original.) Indeed, Liberty
`
`admits that Mr. Zatkovich opines about a POSITA having “at least one…year[] of
`
`experience with telematics systems for vehicles…including communications and
`
`locations technologies,” but then claims that – in the same declaration – he also
`
`“concedes…he had no such experience[.]” (Id. at 6, emphasis in original.) Mr.
`
`Zatkovitch makes no such concession, and his Declaration and CV demonstrate
`
`otherwise.
`
`Mr. Zatkovich received his Bachelor’s degree in Computer science, with a
`
`minor in Electrical Engineering Digital Circuit Design, from the University of
`
`Pittsburgh in 1980, and he completed a master’s thesis in Computer Networks.
`
`(Ex. 2007 at 3.) He has “over thirty-one years experience in computer science,
`
`network communications, and software development” and “more than 4 years
`
`experience designing and implementing vehicle telematics systems and ha[s]
`
`designed and implemented ecommerce computer systems for the insurance
`
`industry, such as for Geico and Hartford.” (Id. at 2, 4-5, emphasis added; see
`
`CLI-2148517v1
`
`3
`
`
`
`
`generally Ex. 2008.) Liberty’s attempt to read into Mr. Zatkovitch’s Declaration a
`
`Case CBM2012-00003
`Patent 8,140,358
`
`concession that “he has no such experience” concerning telematics and insurance is
`
`not supportable.
`
`The only other basis Liberty cites for its erroneous claim is a statement by its
`
`own witness, Mr. Andrews. (Motion at 5, citing Ex. 1034 at ¶ 44.) Yet,
`
`Andrews’s statement is based on the same CV by Mr. Zatkovich, which
`
`demonstrates the opposite – that Mr. Zatkovich has extensive experience and more
`
`than qualifies as an expert to opine on the ordinary skill in the art. Further,
`
`Andrews’s statement relates to “generat[ing] a cost for the unit of risk,” “use of an
`
`actuarial class within an insurance context,” and “generating and using a rating
`
`factor,” but these are not the same bases that Liberty claims in its motion that Mr.
`
`Zatkovich’s experience is inadequate. Moreover, Andrews has admitted that he is
`
`“not an expert on whether or not Mr. Zatkovich’s testimony is admissible.” (Ex.
`
`2019, Andrews Tr. at 311:20-22 (emphasis added); Ex. 1034 at ¶ 44.)
`
`The reason both Liberty and Andrews are confused as to Mr. Zatkovich’s
`
`background is that Liberty chose not to depose him. Indeed, Liberty noticed his
`
`deposition for July 15, 2013 but then decided to cancel it. (Paper No. 36.) If
`
`Liberty had wanted to understand the full extent of Mr. Zatkovich’s experience in
`
`telematics and insurance, it could have asked him during the deposition. Having
`
`chosen not to cross-examine him, Liberty should not now be heard to argue that
`
`CLI-2148517v1
`
`4
`
`
`
`
`Mr. Zatkovich lacks the requisite experience based on his resume. See 77 Fed.
`
`Case CBM2012-00003
`Patent 8,140,358
`
`Reg. at 48,643 (proper means for party to challenge an expert's qualifications
`
`involves cross-examination).
`
`Not only is Liberty’s argument wrong as a matter of fact, but it is wrong as a
`
`matter of law. Liberty claims that the POSITA’s knowledge is based on what was
`
`known as of the priority date in 1996, and as such, Mr. Zatkovitch must also have
`
`had the requisite experience as of 1996. (See Motion at 5-6.) This misstates the
`
`law, and Liberty cites no case supporting this proposition. To the contrary, a
`
`POSITA is a “hypothetical person,” who possesses the ordinary skill in the art.
`
`Standard Oil Co. v. Am. Cyanamid Co., 774 F.2d 448, 454 (Fed. Cir. 1985)
`
`(emphasis added). To testify as to the understanding of this hypothetical person,
`
`an expert, like Mr. Zatkovitch, must possess at least the same ordinary level of
`
`skill. See Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1363-64
`
`(Fed. Cir. 2008) (explaining that testifying expert must be “qualified as a technical
`
`expert in that art”). But, there is no requirement that the testifying expert possess
`
`that skill as of the priority date at issue, and Liberty has cited no authority to the
`
`contrary.
`
`Liberty’s own actions in not going forward with its deposition, as well as the
`
`erroneous and unsupported claims it makes based on Mr. Zatkovich’s CV,
`
`CLI-2148517v1
`
`5
`
`
`
`
`demonstrate that it has failed to show good cause to exclude any testimony by Mr.
`
`Case CBM2012-00003
`Patent 8,140,358
`
`Zatkovich.
`
`B. Mr. Miller Has Not Relied On Improper Evidence
`Liberty attempts to exclude ¶ 15 of the Declaration of Progressive’s expert
`
`Mr. Michael Miller (Exhibit 2005), claiming that Progressive improperly failed to
`
`submit a copy of the “Statement of Principles” of the American Academy of
`
`Actuaries. (Motion at 6-7.) This argument is a red herring, and, as demonstrated
`
`below, it ignores the fact (i) that Progressive had already filed a copy of the
`
`Statement of Principles as an exhibit in a related CBM Review between the parties,
`
`(ii) that Miller specifically identified this exhibit as setting forth the Statement of
`
`Principles, and (iii) that Liberty’s own witness recognized Mr. Miller was making
`
`the same argument as presented in the related CBM Review in which Progressive
`
`had filed a copy of the Statement of Principles.
`
`In ¶ 15 of his expert Declaration, Mr. Miller opined as to the meaning of
`
`“actuarial classes.” His opinion stands on its own, and Liberty identifies no basis
`
`for excluding that opinion. Mr. Miller further noted in his Declaration that his
`
`description of this “actuarial class” is “consistent with the definition in the Risk
`
`Classification Statement of Principles of the American Academy of Actuaries” and
`
`that a “person of ordinary skill in the art in 2000 would have adhered to this
`
`Statement of Principles.” (Ex. 2005 at ¶ 15, emphasis added.)
`
`CLI-2148517v1
`
`6
`
`
`
`There is no ambiguity as to the particular Statement of Principles to which
`
`Case CBM2012-00003
`Patent 8,140,358
`
`
`
`Mr. Miller referred in ¶ 15. Indeed, Progressive had already filed it as an exhibit in
`
`a co-pending CBM Review between the parties. (See CBM2012-00002, Ex. 2012.)
`
`In fact, when Liberty’s witness, Mary O’Neil, responded to Mr. Miller’s
`
`Declaration, she specifically identified that Mr. Miller was repeating arguments
`
`from that co-pending CBM Review: “Mr. Miller repeats many of the same
`
`arguments related to ‘actuarial classes’ as in CBM2012-00002[.]” (Ex. 1032 at
`
`¶ 16, emphasis added.)
`
`Mr. Miller also submitted a Supplemental Declaration confirming that
`
`“Progressive Exhibit 2012 in related CBM2012-00002 is the same ‘Risk
`
`Classification Statement of Principles’ I referenced in paragraph 15 of my
`
`declaration in this proceeding[.]” (Ex. 2013 at ¶ 5.) As such, Liberty cannot claim
`
`any inability to locate the Statement of Principles or any prejudice in its ability to
`
`fully respond to Mr. Miller’s reference to it.
`
`Furthermore, Progressive has complied with the rule. 37 C.F.R. §42.6(c)
`
`requires that “[e]ach exhibit must be filed with the first document in which it is
`
`cited[,]” and Progressive complied with this rule when it first cited the Statement
`
`of Principles in CBM2012-00002. (Emphasis added.) And, the Office Patent Trial
`
`Practice Guide makes clear that the purpose of this rule is to “allow for uniformity
`
`in citing to the record[,]” which Progressive accomplished by citing to the previous
`
`CLI-2148517v1
`
`7
`
`
`
`
`filing of the Statement of Principles as Exhibit 2012 in CBM2012-00002. See 77
`
`Case CBM2012-00003
`Patent 8,140,358
`
`Fed. Reg. at 48,617. Moreover, Liberty cannot be heard to complain under 37
`
`C.F.R. § 42.63(a), which requires that evidence be filed in the form of an exhibit,
`
`as Liberty’s own witness admitted that Mr. Miller was just “repeat[ing]” arguments
`
`from the CBM Review in which Progressive had, in fact, filed the Statement of
`
`Principles. (Ex. 1032 at ¶ 16.) Nevertheless, Progressive herewith files another
`
`copy of the Statement of Principles as Exhibit 2018, which is the same one filed in
`
`the co-pending CBM2012-00002 as Exhibit.
`
`Liberty has failed to articulate any cognizable basis for excluding Mr.
`
`Miller’s testimony, and the Board should deny Liberty’s motion.
`
`IV. CONCLUSION
`For at least these reasons, Liberty’s Motion should be denied.
`
`Respectfully submitted,
`
`JONES DAY
`
`/s/Calvin P. Griffith
`Calvin P. Griffith
`Registration No. 34,831
`JONES DAY
`901 Lakeside Avenue
`Cleveland, Ohio 44114-1190
`(216) 586-3939
`
`Attorney For Patent Owner
`Progressive Casualty Insurance Co.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`By:
`
`
`
`
`
`
`
`
`
`
`8
`
`
`
`
`
`
`October 4, 2013
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`CLI-2148517v1
`
`
`
`
`
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`I certify that a copy of the foregoing PATENT OWNER’S OPPOSITION
`
`TO MOTION TO EXCLUDE EVIDENCE was served on October 4, 2013 by
`
`causing them to be sent by email to counsel for Petitioner at the following email
`
`addresses:
`
`Steven.baughman@ropesgray.com
`Nicole.jantzi@ropesgray.com
`James.myers@ropesgray.com
`LibertyMutualPTABService@ropesgray.com
`
`
`
`/s/ John V. Biernacki
`John V. Biernacki
`Registration No. 40,511
`JONES DAY
`901 Lakeside Avenue
`Cleveland, Ohio 44114-1190
`
`Attorney For Patent Owner
`Progressive Casualty Insurance Co.
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
