UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`Attorney Docket No.: LMIC-021-801
`Customer No. 28120
`
`
`
`Case CBM-2012-00003 (JL)
`Patent 8,140,358
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`
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`
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`
`Petitioner,
`
`LIBERTY MUTUAL INSURANCE
`CO.
`
`
`v.
`
`PROGRESSIVE CASUALTY
`INSURANCE CO.
`
`Patent Owner.
`
`
`
`
`
`
`
`PETITIONER LIBERTY MUTUAL INSURANCE CO.’S REQUEST FOR
`REHEARING ON ORDER (REDUNDANT GROUNDS)
`
`Pursuant to 37 CFR § 42.71(d), the undersigned, on behalf of and acting in a
`
`representative capacity
`
`for Petitioner, Liberty Mutual Insurance Company
`
`(“Petitioner”), hereby submits this Request for Rehearing on portions of this Board’s
`
`October 25, 2012 Order (Redundant Grounds) (Paper No. 7, “Order”) in connection
`
`with the Petition for Covered Business Method Patent Review of United States Patent
`
`No. 8,140,358 (“’358 Patent”) Pursuant to 35 U.S.C. § 321, 37 C.F.R. § 42.304
`
`(“Petition” or “Pet.”).
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`Attorney Docket No.: LMIC-021-801
`Customer No. 28120
`
`
`
`Case CBM-2012-00003 (JL)
`Patent 8,140,358
`
`
`
`
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
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`
`
`Petitioner,
`
`LIBERTY MUTUAL INSURANCE
`CO.
`
`
`v.
`
`PROGRESSIVE CASUALTY
`INSURANCE CO.
`
`Patent Owner.
`
`
`
`
`
`
`
`PETITIONER LIBERTY MUTUAL INSURANCE CO.’S REQUEST FOR
`REHEARING ON ORDER (REDUNDANT GROUNDS)
`
`Pursuant to 37 CFR § 42.71(d), the undersigned, on behalf of and acting in a
`
`representative capacity
`
`for Petitioner, Liberty Mutual Insurance Company
`
`(“Petitioner”), hereby submits this Request for Rehearing on portions of this Board’s
`
`October 25, 2012 Order (Redundant Grounds) (Paper No. 7, “Order”) in connection
`
`with the Petition for Covered Business Method Patent Review of United States Patent
`
`No. 8,140,358 (“’358 Patent”) Pursuant to 35 U.S.C. § 321, 37 C.F.R. § 42.304
`
`(“Petition” or “Pet.”).
`
`
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`
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`As stated in Petitioner’s Notification in Response to Order (Redundant
`
`Grounds), filed concurrently herewith, Petitioner had undertaken in the space
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`permitted in the Petition (see 37 CFR § 42.24) to present pertinent art confirming that
`
`the claims at issue are obvious not only in light of a single combination of references,
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`but based on information that was very widely known in the art. Petitioner believed
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`that—while the challenged patent’s large proportion of dependent claims yielded a
`
`large absolute number of combinations—those alternatives would not unduly increase
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`the burden of this proceeding, and Petitioner understood from USPTO guidance that
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`alternative arguments are to be permitted in the trial process in the transitional
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`program for covered business method patents. See, e.g., 77 FR 48,640 (“Section
`
`42.51(b)(1)(iii), as adopted, does not preclude a party from arguing in the
`
`alternative…”); 77 FR 48,700 (“The rules do not preclude providing alternative claim
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`constructions in a petition...”). However, Petitioner also recognizes and shares the
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`Board’s concern with efficiency and timing. Accordingly, Petitioner has indicated in
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`its Notification which combinations it will pursue as required by the Order,1 while
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`also indicating three instances (detailed below) in which Petitioner is seeking rehearing
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`to allow the inclusion of particular combinations the Board’s Order does not, by its
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`present terms, permit – including, in particular, the inclusion of sufficient alternatives
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`to address the differing alternative limitations of Markush groups found in the
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`1 Petitioner notes that, in light of the requirements of the Board’s Order, the grounds
`not selected pursuant to the Order are not grounds the Petitioner is raising in the
`requested trial. See, e.g., 125 Stat 284 §§ 18(a)(1)(A), 18(a)(1)(D).
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`
`
`2
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`
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`challenged claims, and the inclusion of express prior art disclosures as an alternative
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`to expert testimony about the common knowledge of one of ordinary skill.
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`37 CFR § 42.71(d) provides that a party dissatisfied with a decision of the
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`Board may request a rehearing. As detailed herein, Petitioner respectfully submits that
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`the Board misapprehended or overlooked certain matters raised in the Petition, and
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`that this supports rehearing on the portions of the Order identified below. See 37
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`CFR § 42.71(d).
`
`I.
`
`“Horizontal Redundancy C” & “Vertical Redundancy A” – Bouchard,
`Gray or Lewis for Claims 17 and 18
`
`Petitioner respectfully requests rehearing on the portions of the Order
`
`requiring Petitioner to (a) select one of two groups of obviousness grounds relying on
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`Gray or Lewis, and (b) select one of three groups of obviousness grounds relying on
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`Bouchard, Gray or Lewis, for claims 17 and 18 of the ‘358 Patent. (See Order at
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`11:26-12:4; 14:2-12).
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`Claim 18 depends upon claim 17, which, in turn, depends upon claim 16.
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`Claim 16, in turn, depends upon independent claim 1. Dependent claim 16 recites
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`“where the wireless transmitter is further configured to respond to a trigger event by
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`transmitting an alert to a third party when a driving incident occurs.” Dependent
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`claim 17 is a Markush-type claim that recites three alternatives: “where the driving
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`incident comprises [1] exceeding a speed threshold, [2] traveling outside of a
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`designation, or [3] a lock out condition.”
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`
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`3
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`
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`The Order acknowledges that Petitioner asserts nine grounds of obviousness
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`against claims 17 and 18, designated as grounds 17:(1) to 17:(9) and 18:(1) to 18:(9) in
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`the chart appearing on pages 20-21 of the Petition. (See Order at 13:2-4). Each of
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`these nine grounds relies on Bouchard, which Petitioner expressly described as
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`disclosing, inter alia, transmitting an alert to a third party when the “driving incident”
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`is “exceeding a speed threshold”—i.e., the first alternative recited in the Markush-
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`group of claim 17. (See, e.g., Pet. 66) (“Bouchard discloses that the driving
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`incident comprises exceeding a speed threshold at 30:29-38; 31:41-46.”)
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`(emphasis original).
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`The Order, however, states that “for no apparent or explained need, Petitioner
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`then adds Gray (Ex. 1012) to the mix to support an additional 9 grounds against
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`claims 17 and 18.” (Order at 13:4-8). Petitioner respectfully submits that this is
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`incorrect, and that the Board overlooked the fact that Petitioner added Gray
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`specifically to assert additional alternative grounds against the second alternative
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`recited in the Markush group of claim 17—i.e., “where the driving incident comprises .
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`. . [2] traveling outside of a designation.” Petitioner expressly described Gray as
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`disclosing transmitting an alert to a third party when the driving incident is “traveling
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`outside of a designation.” (See, e.g., Pet. 67-68) (“Gray discloses . . . transmitting an
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`alert to a third party (e.g., central station) when a driving incident occurs,
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`where the driving incident comprises traveling outside of a designation (e.g.,
`
`
`
`4
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`
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`vehicle has moved outside of a predetermined circle of protection) at 4:17-21,
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`5:67-6:21.”) (emphasis original).
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`The Order further states that “for no further apparent or explained need,
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`Petitioner adds Lewis (Ex. 1024) to the mix to support an additional 9 grounds against
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`claims 17 and 18.” (Order at 13:8-11). Petitioner respectfully submits that, again, the
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`Board overlooked the fact that Petitioner added Lewis specifically to assert additional
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`alternative grounds against the third alternative recited in the Markush group of claim
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`17—i.e., “where the driving incident comprises . . . [3] a lock out condition.” For
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`example, Petitioner expressly described Lewis as disclosing transmitting an alert to a
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`third party when the driving incident is a “lock out condition.” (See, e.g., Pet. 69)
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`(“Lewis discloses that the driving incident comprises a lock out condition at
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`2:58-67.”) (emphasis original).
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`Similarly, in the portion of the Order addressing “Horizontal Redundancy C,”
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`the Order states that “[a]s applied by the Petitioner to account for the features of
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`claim 17 and 18, there is no substantive difference between Gray and Lewis.” (Order
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`at 10:18-20). Petitioner respectfully submits that the Board overlooked the fact that,
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`as expressly indicated in the Petition, substantive differences do exist between Gray,
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`which discloses transmitting an alert when “traveling outside of a designation,” and
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`Lewis, which discloses transmitting an alert during a “lock out condition”—two
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`separate members of the Markush group of claim 17.
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`
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`5
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`
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`Petitioner respectfully submits that—particularly in light of the Patent Owner’s
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`ability to propose amendments in this proceeding that might seek to eliminate one or
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`more of the Markush members from these claims—Petitioner should be permitted to
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`present prior art references to cover each of the members of the Markush group of
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`claims 17 and 18, as specified in the Petition. Accordingly, Petitioner respectfully
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`requests that the Board reconsider this portion of the Order and permit Petitioner to
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`assert the group of obviousness grounds relying on Gray and Lewis, in addition to
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`Bouchard, for claims 17-18.2
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`II.
`
`“Vertical Redundancy B” – Adding Scapinakis, Eisenmann, or Stanifer
`for Claim 1
`
`Petitioner respectfully requests rehearing on the portions of the Order
`
`requiring Petitioner to select one of four groups of obviousness grounds relying on: a
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`first group of base references/combinations (as supported by Petitioner’s expert
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`declaration) designated as 1:(2) to 1:(5) in the chart on page 17 of the Petition, a
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`second group with grounds designated as 1:(6) to 1:(9) including Scapinakis, a third
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`group with grounds designated as 1:(10) to 1:(13) including Eisenmann, and a fourth
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`group with grounds designated as 1:(14) to 1:(17) including Stanifer. (See Order at
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`15:18-16:7).
`
`
`2 Specifically, these are designated in the chart on pages 20-21 of the Petition as
`grounds 17:(1) to 17:(9) and 18:(1) to 18:(9) for the addition of Bouchard, grounds
`17:(10) to 17:(18) and 18:(10) to 18:(18) for the addition of Gray, and grounds 17:(19)
`to 17:(27) and 18:(19) to 18:(27) for the addition of Lewis.
`
`
`
`6
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`
`
`Independent claim 1 of the ‘358 Patent recites, inter alia, “a wireless transmitter
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`configured to transfer the selected vehicle data retained within the memory to a
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`distributed network and a server.” As discussed in the Petition, the use of a device to
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`wirelessly transfer data retained within a memory to a server via a distributed network
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`was well-known in the art. As evidence that this concept was obvious to a person of
`
`ordinary skill, Petitioner specifically cited to the expert declaration of Scott Andrews
`
`in
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`support of
`
`the
`
`grounds
`
`for obviousness
`
`relying on
`
`the base
`
`references/combinations (i.e., Kosaka, Herrod, Kosaka and Bouchard, and Herrod
`
`and Bouchard). (See e.g., Pet. 29-30 (citing Ex. 1025, Andrews Dec. ¶¶ 23-24); 33 (citing
`
`Ex. 1025, Andrews Dec. ¶¶ 20, 23, 34)).
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`The Order states that the “Petitioner adds Scapinakis, Eisenmann, or Stanifer,
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`to make 12 more grounds of obviousness for claim 1” but “does not explain why the
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`addition of any one of Scapinakis, Eisenmann, and Stanifer, is needed to augment the
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`initial four grounds of obviousness directed against claim 1.” (Order at 14:17-24).
`
`Petitioner respectfully submits that this is incorrect, and that the Board overlooked
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`the fact that Petitioner expressly added these alternative references to provide explicit
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`disclosures of wirelessly transmitting selected vehicle data to a server via a distributed
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`network in the event that the Board were to determine that the statements from
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`Petitioner’s expert (provided in the base references/combinations) did not suffice to
`
`prove this point. For example, the Petition expressly described (a) Scapinakis as
`
`disclosing, inter alia, the use of a device to wirelessly transfer “collect[ed] real-time
`
`
`
`7
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`
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`vehicle-related data” to “a central [office] computer” for “analysis and report
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`generation (e.g., on speeding and excessive idling)” (Pet. 38-39) (emphasis original)
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`(citing Scapinakis at 26-27); id. (“To the extent it could be argued that any further
`
`disclosure may be required with respect to limitation (1d), Scapinakis discloses it”); (b)
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`Eisenmann as disclosing, inter alia, the use of a device to wirelessly transfer “records
`
`related to operation of motor vehicles” to “insurance company computer” (Pet. 40-
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`41) (emphasis original) (citing Eisenmann at 2:36-49, 22:29-36); id. (“To the extent it
`
`could be argued that any further disclosure may be required with respect to limitation
`
`(1d), Eisenmann discloses it”); and (c) Stanifer as disclosing, inter alia, the use of a
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`device to wirelessly transfer “geographic position of . . . vehicles” to a “remote
`
`station.” (Pet. 43-44) (emphasis original) (citing Stanifer at 2:35-50); id. (“To the extent
`
`it could be argued that any further disclosure may be required with respect to
`
`limitation (1d), Stanifer discloses it”).
`
`Petitioner respectfully submits that, because the Board has not yet determined
`
`what weight it will accord Petitioner’s proffered expert testimony, Petitioner should in
`
`fairness be permitted to argue both (1) that wireless transmission was well-known to
`
`one of ordinary skill without the need for resort to specific prior art references, and (2)
`
`in the alternative, that a specific prior art reference (Scapinakis)3 confirms that such
`
`
`3 As stated in Petitioner’s Notification in Response to Order (Redundant Grounds)
`submitted concurrently herewith, to the extent the Board’s Order compels Petitioner
`to select one of three groups of obviousness grounds relying on Scapinakis,
`Eisenmann, or Stanifer for independent claim 1 and associated obviousness grounds
`
`
`
`8
`
`
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`wireless transmission was known, as specified in the Petition. Accordingly, Petitioner
`
`respectfully requests that the Board reconsider this portion of the Order and permit
`
`Petitioner to assert, in the alternative, the group of obviousness grounds relying on
`
`Scapinakis, in addition to the base references/combinations (as supported by
`
`Petitioner’s expert declaration), for independent claim 1.4
`
`III. “Vertical Redundancy C” – Adding Bouchard for Claim 1
`
`Petitioner respectfully requests rehearing on the portions of the Order
`
`requiring Petitioner to select one of two groups of obviousness grounds relying on a
`
`first group of base references (as supported by Petitioner’s expert declaration)
`
`designated as 1:(2) and 1:(3) in the chart on page 17 of the Petition, and a second
`
`group with grounds designated as 1:(4) and 1:(5) which include the addition of
`
`Bouchard. (See Order at 17:12-24).
`
`Independent claim 1 of the ‘358 Patent recites, inter alia, “a processor that
`
`collects vehicle data from a vehicle bus that represents aspects of operating the
`
`vehicle.” As discussed in the Petition, the use of a processor to collect vehicle data
`
`from a vehicle bus was well-known in the art. As evidence that this concept was
`
`obvious to a person of ordinary skill, Petitioner specifically cited to the expert
`
`for dependent claims 2-20, Petitioner chooses, in response to this portion of the
`Order, to maintain the group of obviousness grounds relying on Scapinakis.
`4 Specifically, these are designated in the chart on pages 17-22 of the Petition as
`grounds 1:(2) to 1:(5) for the base references/combinations (i.e., Kosaka, Herrod,
`Kosaka and Bouchard, and Herrod and Bouchard), grounds 1:(6) to 1:(9) for the
`addition of Scapinakis, and associated obviousness grounds for dependent claims 2-
`20.
`
`
`
`9
`
`
`
`declaration of Scott Andrews in support of the grounds for obviousness relying on
`
`the base references (i.e., Kosaka and Herrod). (See e.g., Pet. 28 (citing Ex. 1025,
`
`Andrews Dec. ¶¶ 21, 28); 32-33 (citing Ex. 1025, Andrews Dec. ¶¶ 21, 32)).
`
`The Order states that the “Petitioner adds the prior art reference Bouchard to
`
`each of the two obviousness grounds based on Kosaka and Herrod” but “Petitioner
`
`nowhere explains why reliance on Bouchard is needed in light of the alleged fact that
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`collection of vehicle diagnostic data from a vehicle bus was well known to one with
`
`ordinary skill in the art and was actually required by law on certain types of vehicles
`
`since January of 1996.” (Order at 17:2-5). Petitioner respectfully submits that this is
`
`incorrect, and that the Board overlooked the fact that Petitioner added Bouchard to
`
`provide explicit disclosure of collecting vehicle data from a data bus in the event that
`
`the Board were to determine that the statements from Petitioner’s expert (provided in
`
`the base combinations) did not suffice to prove this point. For example, the Petition
`
`expressly states that “[t]o the extent it could be argued that any further
`
`disclosure is required with respect to this limitation, Bouchard discloses a
`
`processor (e.g., “microcontroller”) that collects vehicle data from a vehicle bus
`
`(e.g., “vehicle-wide system serial data bus”) that represents aspects of
`
`operating the vehicle at 5:53-6:3, 29:25-38.” (Pet. 36-37) (emphasis original).
`
`Petitioner respectfully submits that, because the Board has not yet determined
`
`what weight it will accord Petitioner’s proffered expert testimony, Petitioner should in
`
`fairness be permitted to argue both (1) that such use of a vehicle bus was well-known
`
`
`
`10
`
`
`
`to one of ordinary skill without the need for resort to specific prior art references, and
`
`(2) in the alternative, that a specific prior art reference confirms that this was known,
`
`as specified in the Petition. Accordingly, Petitioner respectfully requests that the
`
`Board reconsider this portion of the Order and permit Petitioner to assert, in the
`
`alternative, the group of obviousness grounds relying on Bouchard, in addition to the
`
`base references (as supported by Petitioner’s expert declaration), for independent
`
`claim 1.5
`
`CONCLUSION
`
`For the foregoing reasons, Petitioner respectfully requests rehearing of the
`
`Order as specified above.
`
`
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`
`
`Respectfully submitted,
`
`ROPES & GRAY LLP
`
`
`
`By /J. Steven Baughman/
`J. Steven Baughman
`Registration No. 47,414
`ROPES & GRAY LLP
`Prudential Tower
`800 Boylston Street
`Boston, Massachusetts 02199-3600
`(202) 508-4606
`(617) 235-9492 (Fax)
`Attorneys/Agents For Petitioner
`
`November 1, 2012
`
`5 Specifically, these are designated in the chart on pages 17-22 of the Petition as
`grounds 1:(2) and 1:(3) for the base references (i.e., Kosaka and Herrod), grounds 1:(4)
`to 1:(5) for the addition of Bouchard, and associated obviousness grounds for
`dependent claims 2-20.
`
`
`
`11
`
`
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`CERTIFICATE OF SERVICE
`
`It
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`is certified
`
`that a copy of PETITIONER LIBERTY MUTUAL
`
`
`
`INSURANCE CO.’S REQUEST FOR REHEARING ON ORDER
`
`(REDUNDANT GROUNDS) has been served in its entirety on the Patent Owner as
`
`provided in 37 CFR § 42.6.
`
`The copy has been served on November 1, 2012 by causing the
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`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.
`
`
`/J. Steven Baughman/
`J. Steven Baughman
`Registration No. 47,414
`Customer No. 28120
`Prudential Tower
`800 Boylston Street
`Boston, Massachusetts 02199-3600
`(202) 508-4606
`(617) 235-9492 (Fax)
`Attorneys/Agents For Petitioner
`
`
`
`
`
`12
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