Trial@uspto.gov
`571-272-7822
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`Paper 11
`Entered: 26 November 2012
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`LIBERTY MUTUAL INSURANCE COMPANY
`Petitioner,
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`v.
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`PROGRESSIVE CASUALTY INSURANCE COMPANY
`Patent Owner,
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`
`Case CBM-2012-00003 (JL)
`Patent 8,140,358
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`Before JAMES DONALD SMITH, Chief Administrative Patent Judge, JAMES T.
`MOORE, Vice Chief Administrative Patent Judge, MICHAEL P. TIERNEY, Lead
`Administrative Patent Judge,1 and JAMESON LEE, SALLY G. LANE, SALLY C.
`MEDLEY, JONI Y. CHANG, MICHAEL R. ZECHER, and BRIAN J.
`McNAMARA, Administrative Patent Judges.
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`LEE, Administrative Patent Judge.
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`ORDER ON REHEARING
`(REDUNDANT GROUNDS)
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`Introduction
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`Petitioner requested rehearing of our order entered October 25, 2012,
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`requiring a reduction of the number of unpatentability grounds asserted against the
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`1 Judge Tierney serves as Lead Judge of the Board’s Trial Section.
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`CBM-2012-00003
`Liberty Mutual Ins. Co. v. Progressive Casualty Ins. Co.
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`claims of Patent 8,140,358. Petitioner seeks rehearing only on some of the
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`grounds we identified as redundant. Two arguments are raised by Petitioner:
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`(1) where a claim includes a feature which is well known, Petitioner can attempt to
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`meet that limitation by reliance on expert testimony without need of specific
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`references, and alternatively by reliance on specific references disclosing that
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`feature; and (2) where a claim includes a limitation which can be met in multiple
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`ways, Petitioner should be free to present different alternatives, each one tailored
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`to one of the many ways for meeting that limitation. The arguments are either not
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`applicable to the facts of this case or unpersuasive.
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`Discussion
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`We disagree that Petitioner may hold back in reserve references disclosing a
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`claim feature while relying on expert testimony urging that the feature was well
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`known in the art. The references should be cited in support of the expert’s opinion.
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`Presenting different grounds based separately on expert opinion and on references
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`creates redundancy, promotes inefficiency, causes confusion, and imposes
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`unnecessary burden both on the Board and the Patent Owner.
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`We also could not have misapprehended or overlooked something not
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`adequately explained in the initial petition. For instance, Petitioner did not
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`“explain” in the initial petition the reasons it now presents as to why it supposedly
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`relied on each of Bouchard, Gray, and Lewis separately, i.e., to present three
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`alternative ways a feature in claim 17 may be met. A request for rehearing is not
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`an opportunity to supplement the initial petition. It is also not the case that
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`Bouchard, Gray, and Lewis were cited “separately” to account for different
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`alternatives recited in claim 17. Bouchard is included in all grounds 17:(1) to
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`-2-
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`CBM-2012-00003
`Liberty Mutual Ins. Co. v. Progressive Casualty Ins. Co.
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`17:(27) and 18:(1) to 18:(27). Petitioner added Gray to one third of those grounds
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`and Lewis to another one third of those grounds.
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`A petitioner is not generally precluded from arguing alternatives. As was
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`made clear in our initial decision, alternative grounds may be presented if an actual
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`need for presenting alternatives exists and is adequately explained in the petition.
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`That the Patent Owner may amend a challenged claim to recite something other
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`than what the Petitioner has initially cited does not generally present a genuine
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`need, because Petitioner may oppose a motion to amend and respond to new issues
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`arising from the amendment including evidence supporting the opposition. See 37
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`C.F.R. § 42.23 and Section H of the Office Patent Trial Practice Guide, 77 FR
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`48756, 48767 (Aug. 14, 2012).
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`Conclusion
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`For the foregoing reasons, Petitioner’s request for rehearing is granted to the
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`extent that we have reconsidered our decision in light of Petitioner’s request and
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`otherwise denied because we see no basis to change that decision.
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`-3-
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`CBM-2012-00003
`Liberty Mutual Ins. Co. v. Progressive Casualty Ins. Co.
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`By Electronic Transmission
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`Attorney for Petitioner Liberty Mutual Ins. Co.:
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`J. Steven Baughman, Esq.
`Ropes & Gray LLP
`steven.baughman@ropesgray.com
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`Attorneys for Patent Owner Progressive Casualty Ins. Co.:
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`Calvin P. Griffith, Esq.
`James L. Wamsley, III, Esq.
`John V. Biernacki, Esq.
`Jones Day
`cpgriffith@jonesday.com
`jlwamsleyiii@jonesday.com
`jvbiernacki@jonesday.com
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`-4-
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