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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`Before the Honorable JAMESON LEE, JONI Y. CHANG, and MICHAEL R.
`ZECHER, Administrative Patent Judges.
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`PETITIONER LIBERTY MUTUAL INSURANCE CO.’S OPPOSITION TO
`PATENT OWNER’S MOTION TO EXCLUDE EVIDENCE PURSUANT
`TO 37 C.F.R. § 42.64(C)
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`
`
`1
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`______________
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`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
`______________
`
`Before the Honorable JAMESON LEE, JONI Y. CHANG, and MICHAEL R.
`ZECHER, Administrative Patent Judges.
`
`PETITIONER LIBERTY MUTUAL INSURANCE CO.’S OPPOSITION TO
`PATENT OWNER’S MOTION TO EXCLUDE EVIDENCE PURSUANT
`TO 37 C.F.R. § 42.64(C)
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`1
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`TABLE OF CONTENTS
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`Case CBM2012-00003
`Patent 8,140,358
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`Page
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`I.
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`Ms. O’Neil’s Testimony Responding to Progressive’s Arguments
`Regarding “Selected Vehicle Data” Is Proper Rebuttal ........................................... 3
`II. Ms. O’Neil’s Testimony Responding to Progressive’s Arguments
`Regarding “Rating Factor” Is Proper Rebuttal ......................................................... 5
`III. Mr. Andrew’s Testimony Responding to Progressive’s Arguments
`Regarding “Database” Is Proper Rebuttal ................................................................. 6
`IV. Mr. Andrew’s Testimony Responding to Progressive’s Arguments
`Regarding “Storing” and “Transmitting” “Selected Vehicle Data” Is
`Proper Rebuttal ............................................................................................................ 11
`V. Mr. Andrew’s Testimony Responding to Progressive’s Arguments
`Regarding Priority Is Proper Rebuttal ...................................................................... 12
`VI. Conclusion .................................................................................................................... 14
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`1
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`In response to Patent Owner’s Motion to Exclude (“Mot.”, Paper 58),
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`Petitioner1 respectfully submits that the Board, sitting as a non-jury tribunal with
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`administrative expertise, is well-positioned to determine and assign appropriate weight
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`to the evidence presented in this trial, without resorting to formal exclusion that might
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`later be held reversible error. See, e.g., S.E.C. v. Guenthner, 395 F. Supp. 2d 835, 842 n.3
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`(D. Neb. 2005); Builders Steel Co. v. Comm’r of Internal Revenue, 179 F.2d 377, 379 (8th
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`Cir. 1950) (vacating Tax Court decision for exclusion of competent, material
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`evidence); Donnelly Garment Co. v. NLRB, 123 F.2d 215, 224 (8th Cir. 1942) (finding
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`NLRB’s refusal to receive testimonial evidence was denial of due process). See also, e.g.,
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`Samuel H. Moss, Inc. v. FTC, 148 F.2d 378, 380 (2d Cir.), cert. denied, 326 U.S. 734 (1945)
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`(“Even in criminal trials to a jury it is better, nine times out of ten, to admit, than
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`exclude evidence and in such proceedings as these the only conceivable interest that
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`can suffer by admitting any evidence is the time lost, which is seldom as much as that
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`inevitably lost by idle bickering about irrelevancy or incompetence”). Even under the
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`strict application of the Rules of Evidence and arguments regarding the proper scope
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`of rebuttal that Progressive urges here, however, cf. 77 Fed. Reg. 48,612, 48,616 (Aug.
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`14, 2012, Rules of Practice) (“42.5(a) and (b) permit administrative patent judges wide
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`latitude in administering the proceedings to balance the ideal of precise rules against
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`1 All emphases are added and abbreviations are as in Petitioner’s Reply (“Rep.”, Paper
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`39).
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`1
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`the need for flexibility to achieve reasonably fast, inexpensive and fair proceedings”),
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`Petitioner’s evidence is entirely proper, while Progressive’s objections are baseless.
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`Despite the Board’s institution of trial based on its determination that
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`Petitioner had made a prima facie case of invalidity based on the evidence submitted
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`with the Petition (see Institution Decision (“ID”, Paper 15) at 21), Progressive now
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`argues that Petitioner’s rebuttal experts and documents should be excluded as “new
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`evidence” that should have been submitted with the Petition to make out that same
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`prima facie case. This contradicts both common sense and the Board’s Institution
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`Decision, which found there were no “holes” to “plug,” as Progressive now imagines.
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`(Mot. 1.) Notwithstanding Progressive’s attempt to avoid this trial with its
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`Preliminary Response, the Board found Petitioner’s submitted evidence addressed
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`each limitation of the challenged claims. Petitioner’s later rebuttal evidence, in
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`contrast, responded to Progressive’s efforts in its Opposition (“Opp.”, Paper 33) to
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`attack Petitioner’s prima facie case. While Petitioner’s Reply certainly continued to urge
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`invalidity on the same grounds instituted by the Board (as any reply will do), this was
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`entirely proper—it certainly did not transform Petitioner’s authorized rebuttal
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`evidence into part of a prima facie case, or otherwise make that rebuttal evidence
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`untimely or improper. Indeed, Progressive’s unsupported arguments to the contrary
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`would make all replies and reply evidence a nullity, and would deprive Petitioner and
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`others using these PTO trial mechanisms of their rights to present a case, confront
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`the Patent Owner’s attacks on that case (see F.R.E. 611), and carry their burden of
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`2
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`proof with the protections of basic fairness and due process.
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`I. Ms. O’Neil’s Testimony Responding to Progressive’s Arguments
`Regarding “Selected Vehicle Data” Is Proper Rebuttal
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`The September 16, 2012 Petition demonstrated that claim 1’s “selected vehicle
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`data” limitation is found in Nakagawa’s disclosure of, e.g., “collected” or “detected”
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`data and “usage data.” Pet. 23-24. To counter Progressive’s Opposition argument
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`with “expert” testimony that Nakagawa’s “usage data” would not satisfy “selected
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`vehicle data” as newly construed by Progressive, Ms. O’Neil properly pointed out that,
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`as understood by a POSITA, Nakagawa’s “usage data” does in fact satisfy this
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`limitation as interpreted by Progressive.2 See RX1032 ¶ 26. While Progressive may
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`wish otherwise (Mot. 4-5), the presentation of such evidence in rebuttal is entirely
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`proper. See, e.g., August 29, 2013 Telephonic Hearing Tr. (Paper 54, “Aug. 29, 2013
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`Tr.”) 8:11-19 (“If the opposition says…no one knows about anything, then they’re
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`entitled to put in 30 declarations if they want to say…anybody in this field would have
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`known about this…. [T]he reply evidence would have been triggered by the
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`opposition”); CBM2012-00010 (same parties), August 22, 2013 Telephonic Hearing
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`Tr. (Exhibit 2300, “CBM2012-00010 Tr.”) 23:18-20 (“[I]n a reply the party is
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`permitted to file rebuttal declaration testimony”), 30:3-10 (“[W]e’re going to consider
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`whether they filed a truly new argument in the reply or they’re really properly responding to
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`2 Petitioner and the Board had construed this term according to its ordinary meaning
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`in the context of the disclosure of the ‘358 Patent. E.g., ID 6.
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`3
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`your expert’s declarations. You really can’t…tie the other party’s hands by putting in a
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`declaration that said something and then expect the other side not to file something in
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`rebuttal.”); 77 Fed. Reg. at 48,620 (“replies may rely upon appropriate evidence to support
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`the positions asserted”), 48,638; Rules 42.63(a) (“Exhibits required. Evidence consists
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`of affidavits, transcripts of depositions, documents, and things”), 42.2 (Affidavit means
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`affidavit or declaration”), 42.24(c)
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`(page
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`limits
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`for “Replies” do “not
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`include…appendix of exhibits”). Moreover, this is precisely the type of rebuttal
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`testimony encouraged by the Board to “help crystalize issues for decision,” in
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`particular whether the disclosures of Nakagawa meet this limitation. See, e.g., 77 Fed.
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`Reg. 48,756, 48767 (August 14, 2012, Office Patent Trial Practice Guide).
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`While Progressive also complains that Ms. O’Neil cites to paragraph 65 of
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`Nakagawa in her rebuttal declaration (Mot. 5), this defies common sense: Progressive
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`and its “expert,” Mr. Zatkovich, repeatedly rely upon this very same paragraph to attack
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`Nakagawa in their Opposition, e.g., Opp. 16-18 (quoting and discussing Nakagawa ¶
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`[0065]); EX2007 ¶¶ 14, 16-17, 40, 42 (opining on Nakagawa ¶ [0065]), and for Ms.
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`O’Neil to respond properly to these assertions, her opinions must necessarily address
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`this same portion. Finally, Petitioner could not reasonably have responded in its
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`Petition to Progressive’s later expert testimony suggesting this limitation was not met,
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`nor was it obliged to guess Progressive’s later arguments. See, e.g., Aug. 29, 2013 Tr.
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`9:23-10:5 (“If the op[position] brings up something that could be addressed in the
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`reply, then it doesn’t matter that they could have put in that evidence” earlier). 3
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`Petitioner has introduced no “new evidence as to unpatentability” (Mot. 4)—it relies
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`upon the same ground and evidence with which it made its prima facie case. There is no
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`basis to exclude ¶ 26 of Ms. O’Neil’s Rebuttal Declaration, which is proper rebuttal
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`evidence.
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`II. Ms. O’Neil’s Testimony Responding to Progressive’s Arguments
`Regarding “Rating Factor” Is Proper Rebuttal
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`The Petition further demonstrated that the “rating factor” limitation of claim 1
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`is found in Nakagawa’s disclosure of, e.g., “operating level.” Pet. 26. In its later
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`Opposition, Progressive attempted to graft another requirement onto the Board’s
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`3 Progressive mischaracterizes the Board’s guidance as requiring a petition to identify
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`“all…supporting evidence” (Mot. 2), when the full statement Progressive edits to
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`create this impression actually reads, “Generally, the proceedings begin with the filing
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`of a petition that identifies all of the claims challenged and the grounds and supporting
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`evidence on a claim-by-claim basis.” 77 Fed. Reg. 48,756, 48,757 (Aug. 14, 2012). See
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`also id. at 48,763 (“the presentation of an overwhelming number of issues tends to
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`detract from the argument being presented, and can cause otherwise meritorious
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`issues to be overlooked or misapprehended. Thus, parties should avoid submitting a
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`repository of all the information that a judge could possibly consider, and instead focus on
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`concise, well-organized, easy-to-follow arguments supported by readily identifiable
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`evidence of record.”).
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`5
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`definition of “rating factor,” requiring that it be “based on or tied somehow to
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`expected claims losses or actuarial classes.” Opp. 29; EX2005 ¶ 44. Again, Ms.
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`O’Neil properly responded that Nakagawa’s “operating level,” as described in
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`paragraph 76 of Nakagawa, satisfies the “rating factor” element despite Progressive’s
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`new construction. See Rep. 6; RX1032 ¶ 27. Again, this was entirely proper (see supra
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`at 3-4), and again, this is precisely the sort of rebuttal encouraged by the Board’s
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`guidance, as it “help[s] crystalize issues for decision,” confirming that Progressive’s re-
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`write of the Board’s construction would make no difference, as it is still met by
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`Nakagawa’s “operating level.” See 77 Fed. Reg. 48,756, 48767. Once more, Petitioner
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`could not reasonably have responded to Progressive’s later re-definition of “rating
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`factor” in its earlier Petition, nor was it required to guess and attempt a pre-emptive
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`response to every possible Patent Owner argument. See supra at 4-5. Petitioner’s
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`evidence (¶ 27 of Ms. O’Neil’s Rebuttal Declaration ) is proper rebuttal that should not
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`be excluded.
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`III. Mr. Andrew’s Testimony Responding to Progressive’s Arguments
`Regarding “Database” Is Proper Rebuttal
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`The Petition demonstrated that claim 1’s “database” element is found in
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`Nakagawa’s disclosure of, e.g., storing and updating data in memory that corresponds
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`to particular users. Pet. 24-25. The Petition further explained that a POSITA would
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`have recognized that Nakagawa’s disclosure “explicitly…or at a minimum inherently”
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`discloses a database, as supported by the testimony of Petitioner’s expert, Scott
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`Andrews, who clearly testified that Nakagawa discloses what any POSITA would know is
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`a database. EX1025 ¶ 36 (“would be understood…as indicating a database”). See also
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`ID 16, 24-25 (concluding Petitioner’s “accompanying analysis” of Nakagawa
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`“appear[s] to have merit” and instituting trial on this basis). Cf. Mot. 8-10.
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`Progressive’s Opposition, however, introduced a host of new constructions and
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`requirements for various terms purportedly based on evidence and “expert” testimony
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`not in the record at the time of the Petition, arguing: (1) “database” should be construed as
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`“a file composed of records, each containing fields together with a set of operations
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`for searching, sorting, recombining, and other functions” (Opp. 10, 24)—functions
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`not recited in the specifications or claims; (2) “record” should be construed as “[a] data
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`structure that is a collection of fields (elements) each with its own name and type”
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`(Opp. 11, 24); (3) arrays—which the ‘358 Patent specifically identifies as a type of
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`“database” (EX1001, 31:36-41)—should instead be understood as falling outside the
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`definition of “records,” according to Progressive’s expert (EX2007 ¶ 55); (4)
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`“searching the records” should be understood as the “ability to locate and retrieve one
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`or more specific records from among the many records in the database” (Id. ¶ 28);
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`and (5) “other functions” must include “standard databases operations such as sorting
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`records, updating records, adding records, or deleting records” (Id. ¶¶ 32-33)—still
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`more functions not recited in the specifications or claims.
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`In rebuttal, Mr. Andrews properly responded to Progressive’s newly-presented
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`arguments by explaining that, even with each of Progressive’s unsupported additional
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`requirements, Nakagawa’s disclosure of storing and updating data in memory that
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`corresponds to particular users explicitly, or at a minimum, inherently, discloses the
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`re-written “database” limitation. See, e.g., RX1034 ¶¶ 11, 19-22 (explaining that for
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`different types of data to be recorded in memory in a way that can be located and
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`retrieved later based on user ID, a POSITA would understand that such data is stored
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`in a form that Mr. Zatkovich refers to as a “file”); 23, 26 (explaining that the different
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`types of data must “necessarily be stored in ‘records,’ as defined by Progressive”); 24
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`(explaining that, contrary to Mr. Zatkovich’s opinion, storage of such data is not
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`limited to “arrays” under Progressive’s relied-upon dictionary definition); 28
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`(explaining that updating such data in memory for a particular user discloses
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`“operations for searching the records” under Mr. Zatkovich’s new definition); 30-31
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`(explaining that storing and updating such data disclose “other functions” even under
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`Mr. Zatkovich’s new definition).
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`Mr. Andrew’s rebuttal testimony4 is perfectly appropriate rebuttal. Progressive’s
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`4 Progressive’s suggestion that Andrew’s “20-page discussion and opinions” are
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`somehow improper (Mot. 7 (emphasis original)) conveniently overlooks Progressive’s
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`own 85-page and 18-page “expert” declarations filed in support of Progressive’s 63-page
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`Opposition. EX2005; EX2007. Indeed, that Progressive’s Opposition requires more
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`than 100 pages of “expert” declaration further underscores that Petitioner could not
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`have anticipated and responded in its Petition to each and every argument Progressive
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`8
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`complaint that, in giving it, he cited to additional portions of Nakagawa (¶¶ [0067] and
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`[0068] and Figure 6) relating to the same disclosure of storing and updating data in
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`memory that corresponds to particular users, but that he had not previously called out
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`(Mot. 7-8), is just silly: paragraphs 67 and 68 of Nakagawa were cited and relied upon by
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`Progressive’s expert, Mr. Zatkovich (e.g., EX2007 ¶ 15); and Mr. Andrews’ first citation of
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`the illustration in Figure 6 (see RX1034 ¶ 17) was similarly in response to Mr.
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`Zatkovich’s own arguments against finding disclosure of the claimed database in
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`Nakagawa based on various Nakagawa Figures, including Figure 5 (e.g., EX2007 ¶ 35;
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`see also, e.g., RX1034 ¶¶ 13-18). None of these citations suddenly transforms Mr.
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`Andrews’ testimony into non-rebuttal material (cf. Mot. 7-8). Both Mr. Andrews and
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`Mr. Zatkovich testified they reviewed Nakagawa as a whole—not just selected bits
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`(e.g., EX1025 ¶ 13; EX2007 ¶ 2)—and the suggestion that Progressive and its expert
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`should be allowed to attack Nakagawa by pointing to certain excerpts while
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`preventing Petitioner and its expert from discussing these same and related portions
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`in rebuttal is nonsense, particularly since Nakagawa’s disclosure must be considered in
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`its entirety. See W.L. Gore & Associates, Inc. v. Garlock, Inc., 721 F.2d 1540, 1551-52 (Fed.
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`Cir. 1983).
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`Indeed, the portions Mr. Andrews relies upon in paragraph 69 (cited in Mr.
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`Andrews opening and rebuttal declarations, see EX1025 ¶ 36; RX1034 ¶ 28) and
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`might later raise.
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`paragraph 68 (additionally cited in Mr. Andrew’s rebuttal declaration, see RX1034 ¶ 28)
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`both describe updating data in memory that corresponds to a received ID in nearly
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`identical language. Compare EX1005 ¶ [0068] (“Here, the control part 22 on the server
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`side updates the ‘user data’ recorded in memory that corresponds to the received ID”)
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`with ¶ [0069] (“The control part 22 on the server side updates that ‘user data’ stored in
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`memory that corresponds to received IDs.”). Yet Progressive breathlessly paints this
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`indistinguishable wording difference as an “apparent attempt” by Mr. Andrews to
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`“disguise the fact that he was relying on new portions of Nakagawa” (Mot. 7-8),
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`despite the fact that Progressive’s Opposition—to which Mr. Andrews is responding—
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`relied upon the same portion of Nakagawa. Progressive’s meaningless nitpicking aside,5
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`no “new invalidity arguments and evidence” are being introduced in Mr. Andrew’s
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`rebuttal testimony (cf. Mot. 7), and Petitioner relies upon the same grounds and
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`evidence with which it previously established a prima facie case of invalidity. There is
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`no basis to exclude ¶¶ 11, 19-24, 26, 28, 30 and 31 of Mr. Andrews’ Rebuttal
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`5 Progressive also mischaracterizes Mr. Andrews’ testimony to concoct yet another
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`supposed discrepancy where none exists, suggesting he “admitted he did not opine on
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`‘user data.’” Mot. 8. As Mr. Andrews explained, his opinion did, in fact, address user
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`data: the “usage data” referred to in his original declaration is a subset of “user data.”
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`E.g., EX2016 at 298:1-5 (“the user data contains in part the usage data. It’s just got more
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`information”), 300:2-3 (“user data includes usage data”).
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`10
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`Declaration, as this evidence is entirely proper rebuttal.
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`IV. Mr. Andrew’s Testimony Responding to Progressive’s Arguments
`Regarding “Storing” and “Transmitting” “Selected Vehicle Data” Is
`Proper Rebuttal
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`The Petition demonstrated that claim 1’s “storing” and “transmitting” “selected
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`vehicle data” limitations are found in Nakagawa’s disclosures of, e.g., storing and
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`transmitting “detected” or “collected” data. Pet. 23-24. But Progressive ignored this
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`explicit disclosure and erroneously argued instead in its Opposition (1) that because
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`other portions of Nakagawa describe that certain types of data are processed into “point
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`values” before storage and transmission, all detected data in Nakagawa must be
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`processed this way; and (2) that such numeric usage data would not satisfy “selected
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`vehicle data” (which Progressive construed in its Opposition). See Rep. 4; Opp. 21-22;
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`EX2007 ¶¶ 39-41; see also supra, at 3-4. In making these arguments, Progressive and
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`its expert repeatedly relied on paragraphs 48 and 65 of Nakagawa in Progressive’s
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`Opposition. See, e.g., Opp. 16-18 (quoting and discussing Nakagawa ¶ [0065]);
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`EX2007 ¶¶ 14, 16-17, 40, 42 (opining on Nakagawa ¶ [0065]), 10 (opining on
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`Nakagawa ¶ [0048]). In rebuttal, Mr. Andrews properly responded to Progressive’s
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`arguments by explaining that these same portions relied upon by Progressive and its expert,
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`in fact (1) disclose storing and transmitting “detected” vehicle data without first
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`processing the data into point values, and (2) disclose that even the processed data
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`identified by Mr. Zatkovich satisfies Progressive’s construction of “selected vehicle
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`data.” See RX1034 ¶¶ 6, 9.
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`While Progressive complains that “Liberty’s use of these new portions of
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`Nakagawa”—the same paragraphs 48 and 65 of Nakagawa that Progressive and its expert
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`repeatedly relied upon—“is an improper attempt to introduce new arguments and
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`evidence with its Reply” (Mot. 11-12), this is ridiculous. Again, although Progressive
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`might wish for a proceeding in which Progressive and its expert could rely on
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`passages of a prior art reference to attack it, while preventing Petitioner (who bears
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`the burden) from submitting evidence addressing those same portions in rebuttal, such
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`a highly prejudicial proceeding is not what the Rules provide. See, e.g., Aug. 29, 2013
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`Tr. 8:8-9, 18:15-16 (“Petitioner gets the last word.”); CBM2012-00010 Tr. 30:7-10
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`(“You really can’t…tie the other party’s hands by putting in a declaration that said
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`something and then expect the other side not to file something in rebuttal.”), 26:6-8
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`(“Petitioner gets the last word. That’s the rule. They bear the burden.”). There is no
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`basis to exclude ¶¶ 6 and 9 of Mr. Andrew’s Rebuttal Declaration, which are proper
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`rebuttal evidence.
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`V. Mr. Andrew’s Testimony Responding to Progressive’s Arguments
`Regarding Priority Is Proper Rebuttal
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`The Petition included as evidence of invalidity references that were prior art
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`because the claims of the ‘358 Patent are not entitled to earlier priority (e.g., Pet. 3-4,
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`11-14). The Board, in instituting trial, did not reach Petitioner’s assertions in
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`considering the priority question, and confirmed instead that “entitlement to a priority
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`date for any claim is a mater for which Progressive bears the burden of proof.” ID 16.
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`The Board “reject[ed] Progressive’s arguments in that regard” (id.), finding numerous
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`deficiencies in the disclosures of each of the earlier applications in Progressive’s
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`asserted priority chain (ID at 17-19) and noting that Progressive, in its Preliminary
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`Response, did not even “discuss or identify written description for the claimed subject
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`matter” in the intervening ‘076 application and “ma[de] no attempt to establish
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`entitlement to a priority date” with respect to the majority of dependent claims. Id.
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`Thereafter, relying on “expert” declarations, Progressive argued
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`in
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`its
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`Opposition that the many missing aspects of written description are somehow
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`“inherent.” See, e.g., Opp. 39, 43, 48. This reliance on inherent disclosure is a new
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`position that stands in stark contrast to what Progressive argued in its Preliminary
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`Response, where it attempted to rely on explicit disclosures. For example, in its
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`Preliminary Response Progressive argued that “a rating factor that meets the petition’s
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`construction of rating factor is described throughout [its ‘650 application].” Preliminary
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`Response (Prelim.) (Paper 13) at 32-33. But in Progressive’s Opposition filed five
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`months later, Progressive argued instead that the ‘650 application’s purported
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`disclosure of determining insurance charges “necessarily involves generating and using a
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`rating factor.” Opp. 11.
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`When such a limitation “is not present in the written description whose benefit
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`is sought it must be shown that a person of ordinary skill would have understood, at
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`the time the patent application was filed, that the description requires that limitation.”
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`Hyatt v. Boone, 146 F.3d 1348, 1353 (Fed. Cir. 1998). Accordingly, in rebuttal
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`Petitioner’s experts responded to the inherency arguments Progressive made in its
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`Opposition by demonstrating that a POSITA would not have understood, at the time
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`the ‘650 application was filed, that the disclosures identified by Progressive in its Opposition
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`evidence necessarily required each of the missing claim limitations. See, e.g., RX1032 ¶¶
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`22-25; RX1034 ¶¶ 43-51. This rebuttal evidence is entirely proper and, of course could
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`not have been offered with the Petition, as Progressive had not yet made these arguments or
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`submitted the “expert” testimony on which it now relies. It is simply ludicrous to
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`suggest (Mot. 12-13) that Petitioner should or could have anticipated and
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`preemptively rebutted all of the arguments Progressive eventually settled on, especially
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`since it is apparent Progressive itself could not identify those arguments—five months earlier,
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`Progressive had tried and lost a different set of priority arguments in its Preliminary
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`Response. It is certainly not what the Rules require, and preventing Petitioner from
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`being able to respond substantively to Progressive and its experts on their new
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`priority positions would effectively rob Petitioner of any opportunity to address
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`Progressive’s supposed evidence. ¶¶ 43-51 of Mr. Andrew’s Rebuttal Declaration and
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`¶¶ 22-25 of Ms. O’Neil’s Rebuttal Declaration are proper rebuttal evidence, and
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`should not be excluded.
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`VI. Conclusion
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`For at least the reasons stated above, Progressive’s Motion to Exclude should
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`be denied.
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`14
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`Case CBM2012-00003
`Patent 8,140,358
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`Respectfully submitted,
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`ROPES & GRAY LLP
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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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`15
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`October 4, 2013
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`Case CBM2012-00003
`Patent 8,140,358
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`CERTIFICATE OF SERVICE
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`It is certified that a copy of PETITIONER LIBERTY MUTUAL
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`INSURANCE CO.’S OPPOSITION TO PATENT OWNER’S MOTION TO
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`EXCLUDE EVIDENCE PURSUANT TO 37 C.F.R. § 42.64(C) has been served
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`in its entirety on the Patent Owner as provided in 37 CFR § 42.6.
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`The copy has been served on October 4, 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
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