UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`Attorney Docket No.: LMIC-021-801
`Customer No. 28120
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`Case CBM-2012-00003 (JL)
`Patent 8,140,358
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`PETITIONER LIBERTY MUTUAL INSURANCE CO.’S NOTIFICATION
`IN RESPONSE TO ORDER (REDUNDANT GROUNDS)
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`Pursuant to this Board’s October 25, 2012 Order (Redundant Grounds) (Paper
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`Petitioner,
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`LIBERTY MUTUAL INSURANCE
`CO.
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`v.
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`PROGRESSIVE CASUALTY
`INSURANCE CO.
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`Patent Owner.
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`No. 7, “Order”) in connection with the Petition for Covered Business Method Patent
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`Review of United States Patent No. 8,140,358 Pursuant to 35 U.S.C. § 321, 37 C.F.R.
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`§ 42.304 (“Petition” or “Pet.”), the undersigned, on behalf of and acting in a
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`representative capacity
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`for Petitioner, Liberty Mutual Insurance Company
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`(“Petitioner”), hereby submits this Notification as required by the Order.
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`Prefatory Statement
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`Petitioner notes at the outset its appreciation for the opportunity to address the
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`six combinations of alternative rejections the Board identified in the Order as
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`1
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`“redundancies.” Petitioner had undertaken in the space permitted in the Petition (see
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`37 CFR § 42.24) to present pertinent art confirming that the claims at issue are
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`obvious not only in light of a single combination of references, but based on
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`information that was very widely known in the art. Petitioner believed that—while
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`the challenged patent’s large proportion of dependent claims yielded a large absolute
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`number of combinations—those alternatives would not unduly increase the burden of
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`this proceeding. Indeed, Petitioner understands 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
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`42.51(b)(1)(iii), as adopted, does not preclude a party from arguing in the
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`alternative…”); 77 FR 48,700 (“The rules do not preclude providing alternative claim
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`constructions in a petition...”). However, Petitioner recognizes and shares the Board’s
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`concern with efficiency and timing.1 Accordingly, Petitioner has indicated below
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`which combinations it will pursue as required by the Order, while also noting the
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`reasons indicated in the Petition for including the other combinations not being
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`1 Petitioner has also received the Board’s October 25, 2012 Order (Denial of Grounds
`– 37 C.F.R. § 42.208(b)) (Paper No. 8), which concludes that the Petition did not
`sufficiently identify support in the Kosaka reference (standing alone and in various
`combinations) for certain proposed grounds of invalidity. While Petitioner
`respectfully disagrees with this conclusion, rather than requesting that the Board
`reconsider that decision Petitioner intends, in the interest of efficiency, to submit
`within two weeks a separate petition presenting Kosaka in combination with a
`different prior art reference, with the benefit of the fuller explanation and
`consideration that a separate petition affords. Petitioner notes that the Director,
`pursuant to Rule 325(c), may determine at the proper time that merger of that Petition
`with this proceeding may be appropriate.
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`2
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`selected pursuant to the Order.2 In several instances identified below and in the
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`accompanying motion, Petitioner is also seeking rehearing as to the inclusion of
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`particular combinations the Board’s Order does not, by its present terms, permit –
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`including, in particular, the inclusion of sufficient alternatives to address the differing
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`limitations of Markush groups found in the challenged claims, and the inclusion of
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`express prior art disclosures as an alternative to expert testimony about the common
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`knowledge of one of ordinary skill.
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`“Horizontal Redundancy”
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`A.
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`Scapinakis, Eisenmann, or Stanifer
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`Required selection: To the extent the Board’s Order compels Petitioner to
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`select one of three groups of obviousness grounds relying on Scapinakis, Eisenmann,
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`or Stanifer for independent claim 1 and associated obviousness grounds for
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`dependent claims 2-20, Petitioner chooses, in response to this portion of the Order,
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`to maintain the group of obviousness grounds relying on Scapinakis. (As noted
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`below, however, “Vertical Redundancy B” identified in the Order—as understood by
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`Petitioner—requires a further selection that renders this selection moot, and as to
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`which none of these grounds (including grounds based on Scapinakis) is selected.)
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`2 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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`3
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`Comment regarding original combinations: Petitioner respectfully notes
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`that, contrary to characterization of these combinations in the Order, and consistent
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`with the page limitations imposed by 37 CFR § 42.24, Petitioner did indicate in the
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`Petition the differences among grounds relying on Scapinakis, Eisenmann, and
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`Stanifer. For example, the Petition expressly described Scapinakis as disclosing, inter
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`alia, the use of a device to wirelessly transfer “collect[ed] real-time vehicle-related
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`data” to “a central [office] computer” for “analysis and report generation (e.g., on
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`speeding and excessive idling).” (Pet. 38-39) (emphasis original) (citing Scapinakis at
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`26-27). The Petition expressly described Eisenmann as disclosing, in turn, the use of
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`a device to wirelessly transfer “records related to operation of motor vehicles” to an
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`“insurance company computer.” (Pet. 40-41) (emphasis original) (citing Eisenmann at
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`2:36-49, 22:29-36). And finally, the Petition expressly identified Stanifer as disclosing,
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`inter alia, the use of a device to wirelessly transfer “geographic position of . . . vehicles”
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`to a “remote station.” (Pet. 43-44) (emphasis original) (citing Stanifer at 2:35-50). As
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`indicated by the cited disclosures and Petitioner’s emphasis, differences exist in the
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`degree of the disclosures’ specificity regarding the particular type of data being
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`transferred (i.e., Scapinakis’ “collected” vehicle-related data vs. Eisenmann’s vehicle
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`operation records vs. Stanifer’s “geographic position”) and the entity to which the
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`data is transferred (i.e., Scapinakis’ “central” computer vs. Eisenmann’s “insurance”
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`computer vs. Stanifer’s “remote station”). Without knowing what weight, if any, the
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`Patent Owner or Board might attribute to these differences, Petitioner presented
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`these alternatives for the Board’s consideration, which collectively emphasize the
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`breadth of the art’s teachings on the well-known concept of wireless transmission in
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`vehicle telematics.
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`B.
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`Kosaka, Black Magic, or Pettersen
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`Required selection: To the extent the Board’s Order compels Petitioner to
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`select one of three groups of obviousness grounds relying on Kosaka, Black Magic or
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`Pettersen for dependent claims 19-20, Petitioner chooses to maintain the group of
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`obviousness grounds relying on Kosaka.
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`Comment regarding original combinations: Petitioner respectfully submits
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`that Petitioner did indicate in the Petition the differences among grounds relying on
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`Kosaka, Black Magic, and Pettersen. For example, with respect to claim 19, the
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`Petition expressly described Kosaka as disclosing, inter alia, the use of a server to
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`calculate “insurance premiums” and “change in insurance premium” “determined
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`from a risk evaluation value.” (Pet. 72) (emphasis original) (citing Kosaka at 3-4). The
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`Petition expressly described Black Magic as disclosing, inter alia, the use of a server to
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`“rate premiums according to styles of driving and locality of use.” (Pet. 74) (emphasis
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`original) (citing Black Magic at 2). Finally, the Petition expressly described Pettersen as
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`disclosing, inter alia, the use of a server to “set a more fair bonus arrangement” based
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`on “driving pattern.” (Pet. 75) (emphasis original) (citing Pettersen at 1). As indicated
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`by the cited disclosures and Petitioner’s emphasis, differences exist in the specificity
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`of the disclosures regarding the value being calculated (i.e., Kosaka’s “premiums” and
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`5
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`“change” in insurance premium vs. Black Magic’s premiums vs. Pettersen’s “bonus”)
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`and the types of data recited as being used (i.e., Kosaka’s “risk evaluation value” vs.
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`Black Magic’s “styles of driving and locality of use” vs. Pettersen’s “driving pattern”).
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`Again, without knowing what weight, if any, the Patent Owner or Board might
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`attribute to these differences, Petitioner presented these alternatives for the Board’s
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`consideration, which collectively emphasize the breadth of the art’s teachings
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`regarding premium determination using vehicle telematics.
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`C. Gray or Lewis
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`Required selection: To the extent the Board’s Order compels Petitioner to
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`select one of two groups of obviousness grounds relying on Gray or Lewis for
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`dependent claims 17-18, Petitioner chooses to maintain the group of obviousness
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`grounds relying on Gray. (As noted below, however, “Vertical Redundancy A”
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`identified in the Order—as understood by Petitioner—requires a further selection
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`that renders this selection moot, and as to which none of these grounds (including
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`grounds based on Gray) is selected.)
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`Additional grounds for which rehearing is sought: Petitioner respectfully
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`notes that dependent claim 17, from which claim 18 depends, is a Markush-type claim
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`that recites three alternatives: “where the driving incident comprises [1] exceeding a
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`speed threshold, [2] traveling outside of a designation, or [3] a lock out condition.”
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`6
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`Accordingly, Petitioner presented references—Bouchard,3 Gray, and Lewis—
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`respectively covering each of the three claimed alternatives. Contrary to the
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`characterization of the Petition in the Order, the Petition indicated the differences
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`between grounds relying on Gray and Lewis (and, as discussed below in connection
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`with the Order’s “Vertical Redundancy” A, relying on Bouchard) to cover different
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`portions of the Markush group. For example, with respect to claim 17, the Petition
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`expressly described Gray as disclosing, inter alia, transmitting an alert to a third party
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`when the driving incident is “traveling outside of a designation (e.g., vehicle has moved
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`outside of a predetermined circle of protection)”—i.e., the second alternative recited
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`in the Markush group of claim 17. (Pet. 68) (citing Gray at 4:17-21, 5:67-6:21).
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`Further, the Petition expressly described Lewis as disclosing, inter alia, transmitting an
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`alert to a third party when the driving incident is “a lock out condition”—i.e., the third
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`alternative recited in the Markush group of claim 17. (Pet. 69) (citing Lewis at 2:58-67).
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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. Accordingly, Petitioner respectfully requests in its accompanying
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`request for rehearing that the Board reconsider this portion of the Order and permit
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`3 See discussion, infra, regarding “Vertical Redundancy” A.
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`7
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`Petitioner to assert grounds relying on Lewis as well as Gray. See Petitioner’s Request
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`for Rehearing, filed concurrently herewith.
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`“Vertical Redundancy”
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`A.
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`Adding Gray or Lewis for Claims 17 and 18
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`Required selection: To the extent the Board’s Order compels Petitioner to
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`select one of three groups of obviousness grounds relying on Bouchard, Gray or
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`Lewis for dependent claims 17-18, Petitioner chooses to maintain the group of
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`obviousness grounds relying on Bouchard. As noted above, this selection renders
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`moot the selection supra in response to the Order’s “Horizontal Redundancy C,” and
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`those combinations are accordingly not selected.
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`Additional grounds for which rehearing is sought: As discussed above
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`with respect to “Horizontal Redundancy C,” dependent claim 17, which claim 18
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`depends upon, is a Markush-type claim that recites three alternatives: “where the
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`driving incident comprises [1] exceeding a speed threshold, [2] traveling outside of a
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`designation, or [3] a lock out condition.” Accordingly, Petitioner presented three
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`references—Bouchard, Gray, and Lewis—to cover each of the three alternatives,
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`respectively. Contrary to the characterization of the Petition in the Order, Petitioner
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`did indicate in the Petition the differences between grounds relying on Gray, Lewis,
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`and Bouchard to cover different portions of the Markush group. For example, with
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`respect to claim 17, the Petition expressly described Bouchard as disclosing, inter alia,
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`transmitting an alert to a third party when the driving incident is “exceeding a speed
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`8
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`threshold”—i.e., the first alternative recited in the Markush group of claim 17. (Pet.
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`66) (citing Bouchard at 30:29-38; 31:41-46). And as discussed above with respect to
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`“Horizontal Redundancy C,” the Petition expressly described Gray and Lewis as
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`disclosing the second and third alternatives in the Markush-group of claim 17,
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`respectively.
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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. Accordingly, Petitioner respectfully requests in its accompanying
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`Request for Rehearing that the Board reconsider this portion of the Order and permit
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`Petitioner to assert grounds relying on Lewis and Gray, as well as Bouchard. See
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`Petitioner’s Request for Rehearing, filed concurrently herewith.
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`B.
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`Adding Scapinakis, Eisenmann, or Stanifer for Claim 1
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`Required selection: To the extent the Board’s Order compels Petitioner to
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`select one of four groups of obviousness grounds relying on the base reference or
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`combination
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`(as supported by Petitioner’s expert declaration),4 Scapinakis,
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`Eisenmann, or Stanifer for independent claim 1, Petitioner chooses to maintain the
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`group of obviousness grounds relying on the base reference or combination (as
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`4 Base reference or combination in this instance refers specifically to Kosaka, Herrod,
`Kosaka and Bouchard, and Herrod and Bouchard, as represented by the designations
`1:(2) to 1:(5) in the chart on page 17 of the Petition.
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`supported by Petitioner’s expert declaration). As noted above, this selection
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`renders moot the selection supra in response to the Order’s “Horizontal Redundancy
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`A,” and those combinations are accordingly not selected.
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`Additional grounds for which rehearing is sought: As discussed above
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`with respect to “Horizontal Redundancy A,” and contrary to the characterization of
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`the Petition in the Order, Petitioner did indicate in the Petition the differences among
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`grounds relying on Scapinakis, Eisenmann, and Stanifer. Moreover, Petitioner also
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`provided expert testimony to support the fact that wireless transmission was well-
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`known to a person of ordinary skill in the art without the need for resort to additional
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`references (see, e.g., Pet. 29-30 (citing Ex. 1025, Andrews Dec. ¶¶ 23-24); 33 (citing Ex.
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`1025, Andrews Dec. ¶¶ 20, 23, 34)), in addition to these three alternative references
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`expressly disclosing wireless transmission. (Pet. 38-44).
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`Petitioner respectfully submits that, because the Board has not yet determined
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`what weight it will accord Petitioner’s proffered expert testimony, Petitioner should in
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`fairness be permitted to argue both (1) that wireless transmission was well-known to
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`one of ordinary skill without the need for resort to specific prior art references, and (2)
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`in the alternative, that a specific prior art reference confirms that such wireless
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`transmission was known. Accordingly, Petitioner respectfully requests in its
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`accompanying Request for Rehearing that the Board reconsider this portion of the
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`Order and permit Petitioner to assert grounds relying on the base reference or
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`combination, as well as grounds relying on Scapinakis in the alternative. See
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`Petitioner’s Request for Rehearing, filed concurrently herewith.
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`C.
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`Adding Bouchard for Claim 1
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`Required selection: To the extent the Board’s Order compels Petitioner to
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`select one of two groups of obviousness grounds for independent claim 1, i.e., a first
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`group with grounds based on Kosaka and Herrod (as supported by Petitioner’s expert
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`declaration) and designated as 1:(2) and 1:(3) in the chart on page 17 of the Petition,
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`and a second group with grounds designated as 1:(4) and 1:(5) which include the
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`addition of Bouchard, Petitioner chooses to maintain the group of obviousness
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`grounds relying on Kosaka and Herrod (as supported by Petitioner’s expert
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`declaration).
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`Additional grounds for which rehearing is sought: In addition to
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`providing expert testimony to support the fact that collecting diagnostic data from a
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`vehicle bus was well known (See e.g., Pet. 28 (citing Ex. 1025, Andrews Dec. ¶¶ 21, 28);
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`32-33 (citing Ex. 1025, Andrews Dec. ¶¶ 21, 32)), Petitioner in the alternative
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`presented a combination with Bouchard, which expressly discloses collecting
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`diagnostic data from a vehicle bus. (Pet. 36-37). Petitioner respectfully submits that,
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`because the Board has not yet determined what weight it will accord Petitioner’s
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`proffered expert testimony, Petitioner should in fairness be permitted to argue both
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`(1) that such use of a vehicle bus was well-known to one of ordinary skill without the
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`need for resort to specific prior art references, and (2) in the alternative, that a specific
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`prior art reference confirms that this was known. Accordingly, Petitioner respectfully
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`requests in its accompanying Request for Rehearing that the Board reconsider this
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`portion of the Order and permit Petitioner to assert grounds relying on Kosaka and
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`Herrod (as supported by Petitioner’s expert declaration), as well as grounds relying on
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`Bouchard in the alternative. See Petitioner’s Request for Rehearing, filed concurrently
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`Respectfully submitted,
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`ROPES & GRAY LLP
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`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
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`12
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`herewith.
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`November 1, 2012
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`CERTIFICATE OF SERVICE
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`It
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`is certified
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`that a copy of PETITIONER LIBERTY MUTUAL
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`INSURANCE CO.’S NOTIFICATION
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`IN RESPONSE TO ORDER
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`(REDUNDANT GROUNDS) has been served in its entirety on the Patent Owner as
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`provided in 37 CFR § 42.6.
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`The copy has been served on November 1, 2012 by causing the
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`aforementioned 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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`/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
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`13