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
`______________
`
`Before the Honorable JAMESON LEE, JONI Y. CHANG, and MICHAEL R.
`ZECHER, Administrative Patent Judges.
`
`PETITIONER LIBERTY MUTUAL INSURANCE CO.’S
`REPLY TO PATENT OWNER’S OPPOSITION TO LIBERTY’S MOTION
`TO EXCLUDE
`
`
`______________
`
`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
`REPLY TO PATENT OWNER’S OPPOSITION TO LIBERTY’S MOTION
`TO EXCLUDE
`
`
`
`Case CBM2012-00003
`Patent 8,140,358
`Petitioner1 hereby replies in support of its Motion to Exclude (“Mot.”, Paper
`
`55) and in response to Progressive’s Opposition (“Opp.”, Paper 64). Ironically, Pro-
`
`gressive’s strongest response here is an imagined one: Progressive imagines Petitioner
`
`really made no motion at all, but argued, instead, that Progressive’s evidence should
`
`be admitted. (Cf. Opp. 2). Far from it. While Petitioner acknowledges that the Board
`
`has broad discretion to admit and consider evidence (Mot. 1-3), should the Board de-
`
`cide to apply the rules of evidence strictly in the proceedings between these parties—
`
`as Progressive itself urges (e.g., Paper 58 (Progressive’s Motion to Exclude); CBM2012-
`
`00010, Paper 45 (same))—Progressive’s unqualified “expert” testimony and belated
`
`evidence clearly fail under those rules, and should be excluded.
`
`I. Mr. Zatkovich is Not Qualified
`
`To begin with, Progressive does not dispute that Mr. Zatkovich is not qualified to
`
`provide opinions regarding a POSITA’s understandings on insurance matters. Mot. 5-6.
`
`At a minimum, those portions of his testimony (see, e.g., EX2007 ¶¶ 8, 99, 104) should
`
`be excluded.
`
`Nor does Progressive dispute that Mr. Zatkovich lacked the qualifications that he
`
`conceded were required: he did not have “as of January 1996…at least one to two
`
`years of experience with telematics systems for vehicles…including communica-
`
`tions and locations technologies.” (EX2007 ¶¶ 8, 4, 5; Mot. 5-6;Opp. 2-6). On this
`
`
`1 All emphases are added and abbreviations are as in Petitioner’s Motion (Paper 55).
`
`
`
`1
`
`
`
`Case CBM2012-00003
`Patent 8,140,358
`point, Progressive, which bears the burden of proving Mr. Zatkovich qualified by a pre-
`
`ponderance of the evidence, Daubert v. Merrell Dow Pharmaceuticals, Inc., 509 U.S. 579,
`
`592 n.10 (1993), points only to his statement that he has “more than 4 years experi-
`
`ence 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.” (Opp. 3). But Progressive omits that this Geico/Hartford ex-
`
`perience only began in 1996: it did not give him one to two years of experience as of 1996
`
`(EX2008 (Zatkovich CV) at 4; Mot. 5-6), when the disclosures in the ‘650 application
`
`Mr. Zatkovich purports to interpret were originally made, as Mr. Zatkovich himself
`
`conceded was necessary. (EX 2007 ¶ 8). Nor did Progressive ever offer the Board
`
`any evidence or explanation of how (in contradiction of Mr. Zatkovich’s own testi-
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`mony (id.), as well as Progressive’s own positions in co-pending proceedings between
`
`these parties2) any later, post-1996 experience would enable Mr. Zatkovich to provide
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`such testimony—and its current argument (Opp. 3) implicitly concedes he lacked this
`
`experience as of 1996. The suggestion Petitioner was somehow obligated to give Mr.
`
`Zatkovich a second chance to explain himself in deposition (Opp. 4-5) is nonsense,3
`
`
`2 E.g., CBM2012-00010, Mot. (Paper 45) at 5 (arguing expert’s “work experience prior
`
`to 1993” is “irrelevant to the pertinent art of the ‘088 Patent”).
`
`3 To the contrary, the Rules anticipate a “party challenging an expert’s qualifications
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`may question the expert’s qualifications during cross-examination and can raise the chal-
`
`
`
`2
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`
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`Case CBM2012-00003
`Patent 8,140,358
`and is not the rule: if Progressive had further evidence of Mr. Zatkovich’s qualifica-
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`tions, it could have offered it in response to Petitioner’s objections (MX1045 § III;
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`MX1046 § I). 37 C.F.R. § 42.64(b)(2). It did not even try. Quite simply, Progressive
`
`failed to meet its burden of qualifying Mr. Zatkovich.
`
`II.
`
`Progressive’s Belated Attempt to Introduce Evidence Improperly Relied
`Upon by Its Expert Should be Rejected
`
`Finally, while Progressive tees up a multitude of excuses (Opp. 6-8), it never ac-
`
`tually explains why it never provided a copy in this trial of the document referred to and re-
`
`lied upon by Mr. Miller in paragraph 15 of Exhibit 2005—even in response to Petitioner’s
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`specific, repeated objections under Rule 42.63 and Rule 42.6(c), which Progressive admits
`
`required it to file this exhibit “with the first document in which it is cited.” Opp. 7.
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`Remarkably, Progressive now argues that it “complied” with Rule 42.6(c) by filing
`
`the document in a different trial involving a different patent—a position that
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`makes a mockery of the Rules and is belied by Progressive’s own filing of that same
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`document again in other trial proceedings (e.g., CBM2012-00004, EX2012; CBM2012-
`
`00002, EX2012)—although never in this trial. And now, having ignored its opportuni-
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`ty to do so under Rule 42.64(b)(2) either time that Petitioner objected, Progressive vio-
`
`lates the Rules again by attempting to file the document as a new Exhibit (Exhibit
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`2018) six business days before the oral hearing in this trial. The issue is not
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`lenges in its oppositions and, where appropriate, in a motion to exclude evidence.” 77 Fed. Reg.
`
`48,643.
`
`
`
`3
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`
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`Case CBM2012-00003
`Patent 8,140,358
`whether Petitioner or its experts were capable of locating a document Progressive
`
`purported to rely upon, but Progressive’s refusal to follow the Board’s Rules even after
`
`its error had been pointed out twice. See MX1045 § IV; MX1046 § II. If the Board de-
`
`termines to enforce its rules with the strictness Progressive has urged, this improper
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`evidence should also be excluded.
`
`
`
`
`
`
`
`Respectfully submitted,
`
`
`ROPES & GRAY LLP
`
`
`
`
`
`
`
`
`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
`
`Attorneys for Petitioner Liberty Mutual Insurance Co.
`
`Mailing address for all PTAB correspondence:
`ROPES & GRAY LLP
`IPRM – Floor 43
`Prudential Tower
`800 Boylston Street
`Boston, Massachusetts 02199-3600
`
`4
`
`October 8, 2013
`
`
`
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`It is certified that a copy of PETITIONER LIBERTY MUTUAL INSUR-
`
`
`
`
`
`ANCE CO.’S REPLY TO PATENT OWNER’S OPPOSITION TO LIBER-
`
`TY’S MOTION TO EXCLUDE has been served in its entirety on the Patent
`
`Owner as provided in 37 CFR § 42.6.
`
`The copy has been served on October 8, 2013 by causing the aforementioned
`
`document to be electronically mailed to:
`
`Calvin P. Griffith, at: cpgriffith@jonesday.com
`
`James L. Wamsley, III at: jlwamsleyiii@jonesday.com
`
`John V. Biernacki at: jvbiernacki@jonesday.com
`
`pursuant to the Petitioner and Patent Owner’s agreement.
`
`
`
`
`/Jordan M. Rossen/
`Jordan M. Rossen
`
`ROPES & GRAY LLP
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