`
`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
`
`
`—————————————
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`PURSUANT TO 37 C.F.R. § 42.207
`
`
`
`
`
`

`

`
`
`
`
`I. 
`
`II. 
`
`
`
`TABLE OF CONTENTS
`
`Introduction ..................................................................................................... 1 
`A. 
`The ‘358 Patent is Not a “Covered” Business Method Patent ............. 8 
`B. 
`The Petition Uses Art that is Either Not Prior Art or is Missing
`Key Limitations .................................................................................... 8 
`The ‘358 Patent is a Patent for a Technological Invention and is
`Ineligible for Covered Business Method Review ......................................... 10 
`A.  A Comparison of the Claimed Subject Matter of the ‘358 Patent
`to the Examples from the Office Patent Trial Practice Guide
`Demonstrates that the ‘358 Patent is a Patent for a
`Technological Invention that is Not Subject to Covered
`Business Method Review ................................................................... 11 
`The Claimed Subject Matter of the ‘358 Patent as a Whole
`Recites a Technological Feature that is Novel and Unobvious
`Over the Prior Art ............................................................................... 15 
`The Claimed Subject Matter as a Whole Solves a Technical
`Problem Using a Technical Solution .................................................. 18 
`The ‘358 Patent is Not Subject to Covered Business Method
`Review ................................................................................................ 20 
`III.  The Petition Uses Art that is Not Prior Art and is Missing Key
`Limitations, Thereby Failing to Satisfy the Elevated Threshold
`Standard Requiring a Showing that it is More Likely Than Not that a
`Challenged Claim will be Found Invalid ...................................................... 21 
`A.  Alleged Grounds Based on Nakagawa ............................................... 21 
`1. 
`Alleged Ground of Unpatentability 1:1 ................................... 22 
`2. 
`Alleged Grounds of Unpatentability 9:1, 9:3, 19:1, 20:1,
`19: Anticipation by Nakagawa, 20: Anticipation by
`Nakagawa ................................................................................. 33 
`B.  Herrod: Alleged Ground of Unpatentability 1:3 ................................ 38 
`The Dependent Claims are Allowable at Least for the Reasons
`C. 
`Noted Above ....................................................................................... 47 
`IV.  Conclusion .................................................................................................... 47 
`
`
`D. 
`
`B. 
`
`C. 
`
`
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`-i-
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`

`

`
`
`
`TABLE OF AUTHORITIES
`
`
`CASES
`Cybersource Corp. v. Retail Decisions, Inc.,
`654 F.3d 1366 (Fed. Cir. 2011) .......................................................................... 13
`
`Page
`
`In re Gosteli,
`872 F.2d 1008 (Fed. Cir. 1989) .......................................................................... 32
`
`In re Kotzab,
`217 F.3d 1365 (Fed. Cir. 2000) ............................................................................ 1
`
`In re Rouffet,
`149 F.3d 1350 (Fed. Cir. 1998) ............................................................................ 1
`
`In re Wertheim,
`541 F.2d 257 (CCPA 1976) ................................................................................ 32
`
`Panduit Corp. v. Dennison Mfg. Co.,
`810 F.2d 1561 (Fed. Cir. 1987) ............................................................................ 1
`
`Vas-Cath, Inc. v. Mahurkar,
`935 F.2d 1555 (Fed. Cir. 1991) .................................................................... 32, 33
`
`STATUTES
`
`35 U.S.C. § 102 ............................................................................................ 22, 45, 46
`
`35 U.S.C. § 103 ........................................................................................................ 38
`
`35 U.S.C. § 112 ............................................................................................ 22, 32, 33
`
`35 U.S.C. § 120 ........................................................................................................ 22
`
`Leahy-Smith America Invents Act, Section 18 ................................................... 8, 10
`
`RULES
`
`37 C.F.R. § 42.20(c) ............................................................................................. 9, 10
`
`37 C.F.R. § 42.207 ..................................................................................................... 1
`
`-ii-
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`
`

`

`
`37 C.F.R. § 42.208(c) ................................................................................................. 7
`
`37 C.F.R. § 42.301(a) ............................................................................. 11, 15, 19, 21
`
`37 C.F.R. § 42.301(b) .............................................................................................. 19
`
`OTHER AUTHORITIES
`
`CBM2012-00003, Order (Denial of Grounds) ................................................ 7, 8, 22
`
`CBM2012-00003, Order (Redundant Grounds) .............................................. 7, 8, 22
`
`CBM2012-00003, Order (Summary of Grounds Remaining) ......................... 7, 8, 22
`
`Changes to Implement Transitional Program for Covered Business Method
`Patents,
`77 Fed. Reg. 48709 (Aug. 14, 2012) .................................................................. 11
`
`Transitional Program for Covered Business Method Patents,
`77 Fed. Reg. 48734 (Aug. 14, 2012) .............................................................. 8, 10
`
`Office Patent Trial Practice Guide,
`77 Fed. Reg. 48764 (Aug. 14, 2012) ............................................................ 12, 17
`
`M.P.E.P. § 716.01(c) ................................................................................................ 46
`
`M.P.E.P. § 2141.01 .................................................................................................. 46
`
`M.P.E.P. § 2141.02 .................................................................................................... 1
`
`M.P.E.P. § 2144.03 .................................................................................................. 46
`
`M.P.E.P. § 2163(I) ................................................................................................... 33
`
`U.S. Patent Application No. 09/571,650 ..........................................................passim
`
`U.S. Patent No. 5,797,134 ........................................................................................ 23
`
`U.S. Patent No. 6,868,386 ........................................................................................ 23
`
`U.S. Patent No. 6,957,133 ........................................................................................ 35
`
`
`
`
`
`
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`-iii-
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`

`

`Case CBM2012-00003
`Patent 8,140,358
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`I.
`
`INTRODUCTION
`
`
`
`Liberty Mutual Insurance Company (“Petitioner”) asserts that U.S. Patent
`
`No. 8,140,358 (the “‘358 Patent”) is nothing more than a combination of known
`
`elements – “merely an attempt to claim an old idea long known in the art.”
`
`(Petition at 1; see also Petition at 2-5.) But “[m]ost if not all inventions arise from
`
`a combination of old elements.” In re Kotzab, 217 F.3d 1365, 1369 (Fed. Cir.
`
`2000); accord In re Rouffet, 149 F.3d 1350, 1357 (Fed. Cir. 1998). The
`
`Petitioner’s argument ignores a bedrock principle of United States patent law: It is
`
`improper to dissect a claimed invention into discrete elements and then evaluate
`
`those elements one-by-one. Rather, the claims must be considered as a whole,
`
`because it is the combination of claim limitations functioning together that
`
`constitutes the claimed invention. See, e.g., Panduit Corp. v. Dennison Mfg. Co.,
`
`810 F.2d 1561, 1567 (Fed. Cir. 1987) (“Courts are required to view the claimed
`
`invention as a whole.”) (emphasis in original); see also M.P.E.P. § 2141.02. The
`
`combinations of claim elements set forth in the ‘358 patent claims recite a novel
`
`configuration of technological features that operates in a unique manner. The ‘358
`
`claims are not invalid in view of the art cited by the Petitioner.
`
`
`
`
`
`1
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`

`

`The ‘358 patent’s novel configuration of technological features, along with
`
`Case CBM2012-00003
`Patent 8,140,358
`
`
`
`
`other innovations, enabled the patent owner – Progressive Casualty Insurance
`
`Company (“Progressive”) – to create an entirely new product line known as
`
`“usage-based insurance.” Progressive’s novel technology – since imitated by
`
`many of its competitors – provided a dramatic improvement over prior methods of
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`monitoring, recording, communicating, and processing operator and vehicle
`
`driving characteristics, for use in determining vehicle insurance costs and ratings.
`
`Progressive’s pioneer status within the field of usage-based insurance is evidenced
`
`by the very early January 29, 1996, filing date of the original parent application to
`
`the ‘358 patent. The inventions claimed in the ‘358 patent were simply not known
`
`or used by others at this time. One of the Petitioner’s cited references, “Black
`
`Magic,” published near the time of filing of the parent application to the ‘358
`
`patent, acknowledged as much, terming the general area of usage-based insurance
`
`as “science fiction.” (Ex. 1015, Black Magic at 1.)
`
`
`
`The technological innovations described and claimed in Progressive’s
`
`pioneering patent applications have enabled that “science fiction” to become
`
`reality. Progressive’s leadership in usage-based insurance has been acknowledged
`
`in industry publications.1 As shown below, one published report identifies
`
`
`1 E.g., “Telematics Pioneers - One leading carrier, Progressive Insurance,
`has over a decade’s headstart with Telematics. Its patented ‘Snapshot’ program is
`
`
`
`
`
`2
`
`

`

`
`Progressive as the only company having greater than six years experience in the
`
`Case CBM2012-00003
`Patent 8,140,358
`
`usage-based insurance field. (Ex. 2001 at 2.)
`
`
`
`
`
`The claims of the ‘358 patent recite technological features that are used to
`
`determine rating factors by directly monitoring actual vehicle operational
`
`
`(continued…)
`
`
`already rolled out, with enrollments increasing to 50,000 new policyholders a
`month in 39 states. As such, Progressive has proved the acceptance and scalability
`of UBI in the U.S.” (Ex. 2001, The Telematics Advantage: Growth, Retention and
`Transformational Improvement with Usage-Based Insurance, Cognizant 20-20
`Insights, January 2012, at 2.) See also Ex. 2002, Usage-Based Insurance Next
`Wave for Personal Auto, PropertyCasualty360, July 14, 2011: “Progressive has
`been one of the early leaders and continues in that direction, having introduced its
`usage-based product in 37 states and the District of Columbia thus far . . . .”
`
`
`
`
`
`3
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`

`

`
`characteristics. (See, e.g., ‘358 patent at claim 1, reciting “a processor that collects
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`Case CBM2012-00003
`Patent 8,140,358
`
`vehicle data from a vehicle bus that represents aspects of operating the vehicle.”)
`
`Prior methods employed by insurance companies relied on general demographic
`
`information to fit drivers and vehicles into broad actuarial classes of insurance
`
`from which the insurance risk posed by a particular policy could be estimated.
`
`(See id. at 15:63-65, describing factors “including demographics such as the sex,
`
`age, marital status, and/or address of an insured party or machine operator.”) By
`
`contrast, the claimed systems of the ‘358 patent involve the use of electronics and
`
`sensors connected to a vehicle, which enable the claimed features of, for example,
`
`collecting and processing data concerning vehicle performance to occur. The
`
`result is a network of hardware and sensors that monitor, collect, and record data
`
`about an insured vehicle; communication technology (i.e., cellular telephone,
`
`radio, satellite, or other wireless communication systems) used to transmit the data
`
`to a server; and the server that analyzes and processes that data. These
`
`technological features permit the development of a rating factor that is specific to
`
`the operator or vehicle, based upon the manner in which that particular vehicle is
`
`operated.
`
`
`
`Figure 3 of the ‘358 patent and the accompanying description illustrate some
`
`of these aspects of the technological invention claimed in the ‘358 patent:
`
`
`
`
`
`4
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`

`

`Case CBM2012-00003
`Patent 8,140,358
`
`
`
`FIG. 3 shows an exemplary motor vehicle. An on-board portable
`mobile device 300 (the device 300) monitors and records output of
`diverse sensors and operator actions to assess a level of risk or
`determine a price or cost of insurance. One, two or more operating
`sensors (e.g., physically or wirelessly linked to a physical or virtual
`data bus) within the vehicle may monitor a variety of raw data
`elements. The data may be transmitted to in-vehicle OEM (Original
`Equipment Manufacturer) processors that manage powertrain, safety,
`entertainment, comfort, or ancillary functions. . . . The in-vehicle data
`bus 304 may be connected to on-board device 300 through a virtual or
`physical connector, such as, for example, a vehicle connector
`compliant with SAE-1962 or On Board Diagnostic connector (e.g.,
`ODBI, ODBII, ODBIII, etc.) and the protocols they convey.
`
`
`
`5
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`

`

`Case CBM2012-00003
`Patent 8,140,358
`
`
`
`In some systems, in-vehicle or network communication occurs
`through a wireless protocol or network. Transceivers may provide
`short and/or long range radio, optical link, or operational links that
`may not require a physical communication path to transmit data. . . . A
`second receiver or transceiver in the device 300 may track location
`through navigation signals that may comprise a GPS (global
`positioning system) protocol . . . or other locating protocols or systems
`312 (referred to as the location protocols). In FIG. 3, a cellular or
`wireless protocol, a wireless or cellular telephone, a radio, a satellite,
`or other wireless communication system may link the device to a
`privately accessible or publicly accessible distributed network or
`directly to an intermediate surrogate or central control station.
`
`(‘358 patent, 4:21-5:39, emphasis added.) Contrary to the Petitioner’s
`
`mischaracterization of the ‘358 claims (Petition at 1-5), the components shown in
`
`Figure 3 are technological features that are configured to operate in a unique
`
`manner and ultimately used to determine insurance costs or rating factors. As
`
`described in further detail below, claims 1-20 of the ‘358 patent recite novel,
`
`patentable methods, and the Petitioner’s invalidity arguments under §§ 102 and
`
`103 have no merit. Lacking sufficient grounds demonstrating that it is more likely
`
`than not that at least one of the claims challenged in the petition is unpatentable,
`
`Liberty Mutual’s petition should be denied.
`
`
`
`
`
`6
`
`

`

`The Board, acting sua sponte, has already recognized for this petition that
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`Case CBM2012-00003
`Patent 8,140,358
`
`
`
`
`numerous of Petitioner’s proposed grounds of unpatentability cannot be
`
`maintained. Petitioner asserted an astounding 422 separate grounds of
`
`unpatentability against the 20 claims of the ‘358 patent. The 422 grounds not only
`
`contained many redundancies, as specially addressed in the Board’s Order
`
`(Redundant Grounds issued on October 25, 2012), but also put forth as a primary
`
`ground a reference (Kosaka) that had already been submitted to the Office during
`
`original prosecution. Further, the grounds of unpatentability based on Kosaka
`
`were recognized as infirm by the Board, leading the Board to strike all grounds
`
`based on Kosaka, thereby removing 196 of the 422 grounds. (See Order (Denial of
`
`Grounds issued on October 25, 2012).) Petitioner’s election of certain of the
`
`redundant grounds with which to go forward further reduced the number of
`
`remaining grounds to 42. (See Order (Summary of Grounds Remaining issued on
`
`November 26, 2012).)
`
`
`
`As described in detail below, Petitioner has not established that it is more
`
`likely than not that at least one of the claims challenged in the petition is
`
`unpatentable. 37 C.F.R. § 42.208(c). Petitioner’s petition should be denied for at
`
`least the following reasons:
`
`
`
`
`
`
`
`
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`7
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`

`

`Case CBM2012-00003
`Patent 8,140,358
`
`A. The ‘358 Patent Is Not a “Covered” Business Method Patent
`Section 18 of the America Invents Act (“AIA”) provides that the Director
`
`
`
`
`
`may institute a transitional proceeding only for a patent that is a covered business
`
`method patent. Leahy-Smith America Invents Act, Pub. L. No. 112-29, § 18
`
`(2011); Transitional Program for Covered Business Method Patents, 77 Fed. Reg.
`
`48734 (Aug. 14, 2012). Section 18(d)(1) defines a covered business method patent
`
`as a patent that claims a method or corresponding apparatus for performing data
`
`processing or other operations used in the practice, administration, or management
`
`of a financial product or service, except that the term does not include patents for
`
`technological inventions.” The significant technological features recited in the
`
`claims of the ‘358 patent, including vehicle buses, communications technology, and
`
`a server, have a significant role (i.e., a non-conventional role) in the novelty of the
`
`claims. In light of this, the ‘358 patent is a patent for a “technological invention”
`
`and not subject to covered business method review.
`
`B.
`
`The Petition Uses Art that Is Either Not Prior Art or Is Missing
`Key Limitations
`
`
`
`As noted above, the Board’s Order (Redundant Grounds) and Order (Denial
`
`of Grounds) removed 380 grounds of unpatentability asserted by Petitioner. The
`
`remaining 42 grounds rely on art that is either not prior art or is missing key
`
`limitations of the ‘358 patent’s claims. Specifically, as described in further detail
`
`below, the claims of the ‘358 patent are supported by a parent application filed in
`
`
`
`
`
`8
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`

`

`
`2000, thereby predating the 2002 filing date of the primary Nakagawa reference on
`
`Case CBM2012-00003
`Patent 8,140,358
`
`which the petition relies.2 Thus, any grounds advanced by Petitioner based on
`
`Nakagawa must be denied, since Nakagawa is not prior art with respect to the
`
`claims of the ‘358 patent.
`
`
`
`Further, another reference advanced by Petitioner, Herrod, is defective
`
`because it is missing key limitations of the ‘358 patent’s claims. Like the Kosaka
`
`reference thrown out by the Board, Herrod discloses only local processing of
`
`vehicle data and therefore fails to disclose key features related to remote
`
`processing of vehicle data. Due to these deficiencies of the Nakagawa and Herrod
`
`references, the petition fails to demonstrate that it is more likely than not that at
`
`least one of the claims challenged in the petition is unpatentable. Therefore,
`
`Petitioner’s petition should be denied, and no covered business method review
`
`should be instituted.
`
`
`
`The Petitioner has the burden of proof to establish that it is entitled to the
`
`requested relief. 37 C.F.R. § 42.20(c) (2012). As described in further detail
`
`below, Petitioner has not met its burden because it has not established that it is
`
`more likely than not that at least one of the claims challenged in the petition is
`
`2 The Patent Owner submits that the ‘358 claims have support in an earlier
`application as well, but given the 2002 date of Nakagawa, there is no need to delve
`into that issue in this response.
`
`
`
`
`
`9
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`

`

`
`unpatentable. Id. § 42.208(c). It is therefore respectfully requested that the
`
`Case CBM2012-00003
`Patent 8,140,358
`
`petition be denied.
`
`II.
`
`THE ‘358 PATENT IS A PATENT FOR A TECHNOLOGICAL
`INVENTION AND IS INELIGIBLE FOR COVERED BUSINESS
`METHOD REVIEW
`
`Section 18 of the AIA provides that the Director may institute a transitional
`
`proceeding only for a patent that is a covered business method patent. 77 Fed.
`
`Reg. 48734 (Aug. 14, 2012). Section 18(d)(1) specifies that a covered business
`
`method patent is a patent that claims a method or corresponding apparatus for
`
`performing data processing or other operations used in the practice, administration,
`
`or management of a financial product or service, except that the term does not
`
`include patents for technological inventions. Section 18(d)(2) of the AIA provides
`
`that the Director will issue regulations for determining whether a patent is for a
`
`technological invention.
`
`The Director issued those regulations as 37 C.F.R. § 42.301 (2012). The
`
`meaning of “technological invention” is expounded upon in part (b), which states
`
`that “[i]n determining whether a patent is for a technological invention solely for
`
`purposes of the Transitional Program for Covered Business Methods (section
`
`42.301(a)), the following will be considered on a case-by-case basis: whether the
`
`claimed subject matter as a whole recites a technological feature that is novel and
`
`
`
`
`
`10
`
`

`

`
`unobvious over the prior art; and solves a technical problem using a technical
`
`Case CBM2012-00003
`Patent 8,140,358
`
`solution” (the “Technological Invention inquiry”).
`
`The Petitioner bears the burden of showing that the claims of the patent at
`
`issue are not directed to a technological invention in order to establish standing to
`
`proceed. Id. § 42.304(a); 77 Fed. Reg. 48709 (Aug. 14, 2012). The Petitioner
`
`must show that the technological invention exception does not apply. In the
`
`present case, the Petitioner is unable to make the requisite showing because the
`
`claimed subject matter as a whole i) recites a technological feature that is novel
`
`and unobvious over the prior art and ii) solves a technical problem using a
`
`technical solution.
`
`A. A Comparison of the Claimed Subject Matter of the ‘358 Patent
`to the Examples from the Office Patent Trial Practice Guide
`Demonstrates that the ‘358 Patent is a Patent for a Technological
`Invention that Is Not Subject to Covered Business Method Review
`
`The claims of the ‘358 patent recite technological features that are novel and
`
`unobvious over the prior art, and the claimed subject matter solves a technical
`
`problem using a technical solution, making the ‘358 patent a technological patent
`
`that is not subject to covered business method review. This is supported by the
`
`examples of patents that would not be eligible for covered business method review,
`
`as set forth in the USPTO’s Office Patent Trial Practice Guide. The guide states:
`
`The following are examples of patents that claim a technological
`invention that would not be subject to a CBM review proceeding:
`
`
`
`
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`11
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`

`
`
`Case CBM2012-00003
`Patent 8,140,358
`
`(a) A patent that claims a novel and non-obvious hedging
`
`machine for hedging risk in the field of commodities trading.
`
`(b) A patent that claims a novel and non-obvious credit card
`reader for verifying the validity of a credit card transaction.
`
`(Office Patent Trial Practice Guide, 77 Fed. Reg. 48764 (Aug. 14, 2012).)
`
`
`Notwithstanding these examples of non-covered business method patents,
`
`the Petitioner appears to interpret § 301 as applying to any patents that in any way
`
`involve processing data as part of a business transaction. Yet the hedging machine
`
`example makes clear that Petitioner’s interpretation is wrong. The hedging
`
`machine takes pricing data as an input and outputs strategies for hedging risk in the
`
`form of contracts to enter into, where those contracts represent legal obligations
`
`between parties. Such a machine is entirely business oriented. Thus, the
`
`Petitioner’s per se approach, without any analysis to determine whether the patent
`
`is directed to a technological invention, is clearly inappropriate.
`
`The credit card reader for verifying the validity of a credit card transaction is
`
`also a highly informative example. In the credit card reader example, the reader
`
`senses an account number associated with a credit card that is stored on the
`
`magnetic strip of the credit card. The credit card reader then processes that
`
`account number along with certain other credit card business transaction data to
`
`
`
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`12
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`

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`verify the validity of the credit card transaction. This example appears to be based
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`Case CBM2012-00003
`Patent 8,140,358
`
`on Cybersource Corp. v. Retail Decisions, Inc., 654 F.3d 1366 (Fed. Cir. 2011).3
`
`The claims of the ‘358 patent include some similarities to the exemplary
`
`credit card reader that is not subject to covered business method review. Like the
`
`credit card reader, the claims of the ‘358 patent include components configured to
`
`access sensor data in the form of vehicle data from a vehicle bus that represents
`
`aspects of operating the vehicle. Like the credit card reader, the claims of the ‘358
`
`patent further include components configured to process the sensor data to generate
`
`a result.
`
`The claims of the ‘358 patent are even one step further removed from
`
`eligibility for covered business method review. The credit card reader sensor
`
`detects an account number, which is pure business data. In stark contrast, the
`
`sensor data utilized in the claims of the ‘358 patent is descriptive of real-world,
`
`physical data regarding the operation of a vehicle. A multitude of example sensors
`
`
`3 In Cybersource, the technology related to verifying the validity of a credit
`card transaction (i.e., credit card fraud detection). More specifically, the claimed
`subject matter involved checking an IP address associated with an incoming
`purchase against prior credit card purchases, some of which may have been flagged
`as having been fraudulent, to make a determination of whether the incoming credit
`card purchase is genuine or should be flagged as likely fraudulent. Cybersource,
`654 F.3d at 1667-68.
`
`
`
`
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`13
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`

`
`are described at col. 7, line 15 to col. 8, line 4, which includes at least 47 different
`
`Case CBM2012-00003
`Patent 8,140,358
`
`sensors related to actual vehicle operations that can be monitored.
`
`The ‘358 patent claims have a similar top-level structure (acquiring sensor
`
`data and processing that sensor data) as in the credit card reader example, but are
`
`substantially more technical because they call for sensing real-world vehicle
`
`operation data in contrast to business account data. As such, the claims of the ‘358
`
`patent must be further on the spectrum from covered business method review
`
`eligibility than the credit card reader.
`
`
`
`(Note the relative distances from the threshold of the four examples
`are arbitrary in the above illustration.)
`
`As a patent for a technological invention, the ‘358 patent is excluded from
`
`the definition of a covered business method in 37 C.F.R. § 42.301(a) and is
`
`therefore ineligible for covered business method review. Thus, the petition to
`
`
`
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`
`14
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`review the ‘358 patent under the covered business method review program must be
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`dismissed.
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`B.
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`The Claimed Subject Matter of the ‘358 Patent as a Whole Recites
`a Technological Feature That is Novel and Unobvious Over the
`Prior Art
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`In attempting to make the required showing that the claimed subject matter
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`of the ‘358 patent is not a patent for a technological invention, the petition devotes
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`three sentences to arguing that the ‘358 patent does not claim subject matter as a
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`whole that recites a technological feature that is novel and unobvious over the prior
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`art. The petition states:
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`There is no “technological feature” of the ‘358 Patent that is novel and
`unobvious. The claimed invention simply uses data obtained from
`conventional vehicle monitoring systems to generate insurance-related
`“rating factors.” And, as noted above, the reason the Examiner gave
`for allowing the claims in the first place was his belief that the prior
`art before him failed to disclose a server configured to “process
`selected vehicle data that represents one or more aspects of operating
`the vehicle with data that reflects how the selected vehicle data affects
`a premium of an insurance policy, safety or level of risk” and
`“generate a rating factor based on the selected vehicle data stored in
`the database.” Ex. 1002, 000026-27.
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`(Petition at 6.)
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`Petitioner’s argument is flawed in that the portions of the claim noted by the
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`Patent 8,140,358
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`Examiner as containing allowable subject matter do include a technological
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`feature. The Examiner said that the server processes selected vehicle data that
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`represents one or more aspects of operating the vehicle with data that reflects
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`how the selected vehicle data affects a premium of an insurance policy, safety or
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`level of risk, where the server is further configured to generate a rating factor
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`based on the selected vehicle data stored in the database.
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`The claim features highlighted by the Examiner involve the processing of
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`sensor data from a vehicle. The data is collected from a vehicle bus that represents
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`aspects of operating the vehicle. Example sensors for capturing such data are
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`depicted in and described in reference to FIG. 3 of the ‘358 patent.
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`The USPTO’s Office Patent Trial Practice Guide cautions that insignificant
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`recitations of technology will not typically render a patent a technological
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`invention.4 However, the technology for collecting, recording, and utilizing the
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`sensor data from a vehicle, where the data represents aspects of operating the
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`vehicle is substantial and includes GPS, vehicle speed sensors, throttle position
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`sensors, turn signal indicators, and many others described at col. 7, line 15 to col.
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`8, line 4 of the ‘358 patent.
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`There is more technology involved in the collection, recording, and
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`utilization of the sensor data from a vehicle than in the credit card reader example
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`of an invention that does not qualify for covered business method review. Having
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`analogous high level functionality as the credit card reader while processing real-
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`world vehicle operation data instead of pure business account number data, the
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`data processing highlighted by the Examiner in claim 1 of the ‘358 patent qualifies
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`as a technological feature that meets the first prong of the Technological Invention
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`inquiry.
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`4 Office Patent Trial Practice Guide, 77 Fed. Reg. 48764 (Aug. 14, 2012):
`The following claim drafting techniques would not typically render a
`patent a technological invention:
`(a) Mere recitation of known technologies, such as computer
`hardware, communication or computer networks, software, memory,
`computer-readable storage medium, scanners, display devices or
`databases, or specialized machines, such as an ATM or point of sale
`device.
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`C. The Claimed Subject Matter as a Whole Solves a Technical
`Problem Using a Technical Solution
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`The second prong of the Technological Invention inquiry involves
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`determining whether the claims provide a technical solution to a technical problem.
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`Claim 1 of the ‘358 patent provides such a technical solution to a technical
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`problem.
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`The petition devotes five sentences to this second prong of the
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`Technological Invention inquiry, stating:
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`The subject matter as a whole also does not solve a “technical
`problem.” Instead, the only problem allegedly present in the prior art
`was that “some data used to classify risk is not verified and has little
`relevance to measuring risk. Systems may accumulate and analyze
`significant amounts of data and yet discover that the data does not
`accurately predict losses. The data may not be validated, may be
`outdated, and may not support new or dynamic risk assessments.” Ex.
`1001 at 1:24-29. The ‘358 Patent – as filed, argued, and issued –
`concerns non-technical issues of insurance rating.
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`(Petition at 6-7.) The petition further notes that the ‘358 patent was classified in
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`Class 705/04 for Data Processin