Trial@uspto.gov
`571-272-7822
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` Paper 64
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` Entered: April 1, 2014
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`
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`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 CBM2012-00004
`Patent 6,064,970
`____________
`
`
`
`
`Before JAMESON LEE, JONI Y. CHANG, and MICHAEL R. ZECHER,
`Administrative Patent Judges.
`
`
`CHANG, Administrative Patent Judge.
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`
`
`
`
`
`
`DECISION
`Progressive’s Request for Rehearing
`37 C.F.R. § 42.71
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`
`571-272-7822
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` Paper 64
`
`
`
`
` Entered: April 1, 2014
`
`
`
`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 CBM2012-00004
`Patent 6,064,970
`____________
`
`
`
`
`Before JAMESON LEE, JONI Y. CHANG, and MICHAEL R. ZECHER,
`Administrative Patent Judges.
`
`
`CHANG, Administrative Patent Judge.
`
`
`
`
`
`
`
`DECISION
`Progressive’s Request for Rehearing
`37 C.F.R. § 42.71
`
`
`
`Case CBM2012-00004
`Patent 6,064,970
`
`INTRODUCTION
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`Progressive Casualty Insurance Company (“Progressive”) requests rehearing
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`of the final written decision (Paper 60), holding claims 1 and 3-18 of U.S. Patent
`
`No. 6,064,970 (“the ’970 patent”) unpatentable. Paper 62 (“Req.”). Progressive
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`proffers a declaration of Mr. James Wamsley to support its arguments. Ex. 2026.
`
`On January 25, 2013, the Board instituted the instant covered business
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`method patent review as to claims 1 and 3-18 of the ’970 patent, as well as
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`CBM2012-00002 with respect to claims 1, 3-6, and 9-18 of the ’970 patent.
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`Paper 10; Liberty Mutual Insurance Co. v. Progressive Casualty Insurance
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`Co.,CBM2012-00002, Paper 10. The trial schedules for both reviews were
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`synchronized, as they involved the same patent and parties. Paper 11; CBM2012-
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`00002, Paper 11. Also, the oral hearings for both reviews were merged and
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`conducted at the same time, and the transcript for the oral hearing was made
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`useable for both reviews. Papers 50, 58; CBM2012-00002, Papers 55, 64.
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`The Board issued the final written decision in the instant proceeding and the final
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`written decision for CBM2012-00002, on January 23, 2014, concurrently.
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`Paper 60, p. 3 (“A final written decision in CBM2012-00002 is entered
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`concurrently with this decision.”); CBM2012-00002, Paper 66, p. 3 (“A final
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`written decision in CBM2012-00004 is entered concurrently with this decision.”).
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`In its request for rehearing, Progressive takes the position that the Board
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`lacks statutory authority to issue the final written decision in the instant proceeding
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`because it was posted electronically 50 seconds after the final written decision in
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`CBM2012-00002 was posted. Req. 4; Ex. 2026 ¶¶ 4-6. For the reasons stated
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`below, Progressive’s request for rehearing is denied.
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`2
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`
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`Case CBM2012-00004
`Patent 6,064,970
`
`In pertinent part, 37 C.F.R. § 42.71(d) states:
`
`ANALYSIS
`
`The burden of showing a decision should be modified lies with the
`party challenging the decision. The request must specifically identify
`all matters
`the party believes
`the Board misapprehended or
`overlooked, and the place where each matter was previously
`addressed in a motion, an opposition, or a reply.
`
`In support of its position, Progressive argues the following: (1) the Board
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`misapprehended or overlooked that posting to the Board’s public electronic
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`system, Patent Review Processing System (PRPS), “enters” a final written decision
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`(Req. 3-4, 6-8 (citing Ex. 2026)); (2) the Board misapprehended or overlooked the
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`application of 35 U.S.C. § 325(e)(1) (Req. 8-13); and (3) the Board
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`misapprehended or overlooked the prohibition on issuing an advisory opinion
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`(Req. 14-15). We disagree.
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`1.
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`Section 18(a) of the Leahy-Smith America Invents Act (“AIA”) provides
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`that a covered business method patent review “shall be regard as, and shall employ
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`the standards and procedures of, a post-grant review” with certain exceptions.
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`Pub. L. No. 112-29, § 18(a)(1)(A), 125 Stat. 284, 329 (2011). The Board’s
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`statutory authority for issuing a final written decision in an instituted covered
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`business method patent review is set forth in 35 U.S.C. § 328(a), which states:
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`(a) FINAL WRITTEN DECISION.—If a post-grant review is
`instituted and not dismissed under this chapter, the Patent Trial and
`Appeal Board shall issue a final written decision with respect to the
`patentability of any patent claim challenged by the petitioner and any
`new claim added under section 326(d).
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`3
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`Case CBM2012-00004
`Patent 6,064,970
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`Progressive does not dispute that both final written decisions holding the
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`claims of the ’970 patent unpatentable were issued on the same day, January 23,
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`2014. Req. 3. Progressive also acknowledges that the final written decision in the
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`instant proceeding, itself, states that it is entered concurrently with the final written
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`decision in CBM2012-00002. Id. Nonetheless, Progressive maintains that there is
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`“no evidence to support the Board’s finding that its Final Decisions were ‘entered
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`concurrently’ in CBM2012-00002 and CBM2012-00004.” Id. at 7.
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`That characterization is incorrect, as the Board did not make a finding in that
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`regard, but simply declared how it was issuing the final written decisions in the
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`instant proceeding and CBM2012-00002 pursuant to 35 U.S.C. § 328(a). The
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`Board’s statement, itself, is an operative fact and requires no further supporting
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`fact or evidence. Nothing in the statute prohibits the Board from issuing the final
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`written decisions in two different proceedings for the same patent concurrently.
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`To support its position that an electronic posting “enters” a final written
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`decision, Progressive proffers metadata and courtesy electronic mail notifications
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`as evidence to show the times of the day when the final written decisions were
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`posted in PRPS. Req. 3-4 (citing Ex. 2026 ¶¶ 4-7; see, e.g., id. at ¶ 5 (“The
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`metadata . . . indicate[s] that [the final written decision in CBM2012-00002] was
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`. . . available over the PRPS on January 23, 2014 at 1:25:52 PM EST
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`(18:25:52.294 GMT).”); id. at ¶ 6 (“The metadata . . . indicates that [the final
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`written decision in CBM2012-00004] was . . . available over the PRPS on January
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`23, 2014 at 1:26:42 PM EST (18:26:42.301 GMT).”). According to Progressive,
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`because its supporting evidence shows that the final written decision of the instant
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`proceeding was posted 50 seconds after the final written decision in CBM2012-
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`4
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`Case CBM2012-00004
`Patent 6,064,970
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`00002 was posted, the final written decisions were not issued concurrently.
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`Req. 7-8; Ex. 2026 ¶¶ 4-7.
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`Progressive’s reliance on the metadata and electronic mail notifications
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`associated with the electronic postings is misplaced. Public accessibility is not a
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`requirement for issuing a final written decision under 35 U.S.C. § 328(a), but
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`rather a requirement to make the file history available to the public under
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`35 U.S.C. § 326(a)(1). Progressive does not direct us to any authority to support
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`its position that an electronic posting “issues” a final written decision.
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`Moreover, the Board has not implemented the statutory provision under
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`35 U.S.C. § 328(a) to define the precise moment when the Board issues a final
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`written decision as the exact time of the day—measured in seconds—when the
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`final written decision is posted in PRPS. In fact, the Board consistently has
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`defined the entry date on the first page of each final written decision, as the day
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`when the Board issues the final written decision, regardless of the mode of delivery
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`or notification—mailing or posting electronically. That is consistent with the
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`Office’s procedure for entering other official papers in this proceeding, and official
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`papers in other proceedings. For instance, the Office accords the filing date of a
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`patent application, and not the filing time of a patent application. The “entry date”
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`procedure also is consistent with the procedure for setting time periods for the
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`parties to file their papers, which is measured in the number of days, as opposed to
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`seconds, from the entry date of a final written decision. See, e.g., 37 C.F.R.
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`§ 42.71 (d)(2) (“Any request must be filed . . . [w]ithin 30 days of the entry of a
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`final written decision or a decision not to institute a trial.”); 37 C.F.R. § 90.3(a)(1)
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`5
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`Case CBM2012-00004
`Patent 6,064,970
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`(The notice of appeal must be filed no later than 63 days after the date of the final
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`Board decision.).
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`Indeed, the final written decision of the instant proceeding and the final
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`written decision issued in CBM2012-00002 each set forth the same entry date of
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`January 23, 2014. Paper 60, p. 1; CBM2012-00002, Paper 66, p. 1. Additionally,
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`the final written decision, itself, clearly sets forth that “[a] final written decision in
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`CBM2012-00002 is entered concurrently with this decision.” Paper 60, p. 3.
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`Similarly, the final written decision in CBM2012-00002 states that “[a] final
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`written decision in CBM2012-00004 is entered concurrently with this decision.”
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`CBM2012-00002, Paper 66, p. 3. Each final written decision was decided by the
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`same panel and is, itself, part of the official record. Progressive simply ignores the
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`official records of both proceedings, including the final written decisions.
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`The PRPS also displays the entry date for both final written decisions. A
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`screenshot of the PRPS entry listing for this proceeding is reproduced below.
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`6
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`Case CBM2012-00004
`Patent 6,064,970
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`As shown in the screenshot above, PRPS displays January 23, 2014, as the
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`entry date for the final written decision. Notably, PRPS does not display the time
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`of the day when the final written decision or any other document was posted in
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`PRPS. The Office does not expect the public to retrieve the metadata of each
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`paper using Internet Explorer Tools, as Progressive did (Ex. 2026 ¶ 4; Attachments
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`A, B), because the time of day when each paper is uploaded by the administrative
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`staff has no legal significance.
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`For the foregoing reasons, the evidence before us establishes that the final
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`written decisions with respect to the patentability of the ’970 patent were issued
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`concurrently.
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`We disagree with Progressive’s assertion that, by issuing the final written
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`decisions with respect to the patentability of the claims of the ’970 patent
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`concurrently, the Board “favors” Liberty. Req. 6. It is important to note that the
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`concurrent issuance of the final written decisions is a natural consequence from
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`synchronizing the trial schedules for both proceedings, which was requested by
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`Progressive jointly with Liberty. Paper 15; CBM2012-00002, Paper 16.
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`Liberty filed the petition in the instant proceeding and the petition in
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`CBM2012-00002 on the same day, September 16, 2012. The Board instituted both
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`covered business method patent reviews on the same day, January 25, 2013, and
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`both proceedings advanced on the same schedule to the concurrent issuance of the
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`final written decisions. During the trials, Progressive also merged and conducted
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`discovery for both proceedings at the same time (see, e.g., Papers 22-24;
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`CBM2012-00002, Papers 21-23) and conducted conference calls with the Board
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`and Liberty for both proceedings concurrently (see, e.g., Papers 15-16; CBM2012-
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`7
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`Case CBM2012-00004
`Patent 6,064,970
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`00002, Papers 16-17). The final oral hearings for both proceedings were merged
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`and conducted at the same time, and the transcript for the oral hearing was made
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`useable for both reviews. Papers 50, 58; CBM2012-00002, Papers 55, 64. In
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`effect, the proceedings were consolidated, except that the papers and exhibits are
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`stored in separate files for case management. See 35 U.S.C. § 325(d).
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`In an order dated December 4, 2013, we stated: “The parties can expect that
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`the final written decisions for the two cases will issue on the same date, as that has
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`been the plan according to the formal schedule.” Paper 57, pp. 2-3. The parties
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`did not object to the advance notice to the parties that the final written decisions for
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`the two cases will issue on the same date. Therefore, it should not be a surprise to
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`Progressive that the final written decisions for both proceedings were issued
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`concurrently—which was a natural result from synchronizing the trial schedules
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`for both proceedings.
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`2.
`
`
`
`Progressive alleges that the Board misapprehended or overlooked the
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`application of 35 U.S.C. § 325(e)(1). Req. 8-13. According to Progressive, the
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`estoppel of 35 U.S.C. § 325(e)(1) “attached as soon as the Board entered its Final
`
`Decision in CBM2012-00002, and the Board was then without authority to enter a
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`Final Decision in the CBM2012-00004 proceeding.” Req. 8. Progressive
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`maintains that the legislative history makes clear that 35 U.S.C. § 325(e)(1) is
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`intended to prevent multiple challenges to a patent. Req. 13. We disagree.
`
`8
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`
`
`Case CBM2012-00004
`Patent 6,064,970
`
`The estoppel provision as to a final written decision in a covered business
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`method patent review is provided in 35 U.S.C. § 325(e)(1), which states (emphases
`
`added):
`
`PROCEEDINGS BEFORE THE OFFICE. — The petitioner in a post-
`grant review of a claim in a patent under this chapter that results in a
`final written decision under section 328(a), or the real party in interest
`or privy of the petitioner, may not request or maintain a proceeding
`before the Office with respect to that claim on any ground that the
`petitioner raised or reasonably could have raised during that post-
`grant review.
`
`Progressive does not dispute that 35 U.S.C. § 325(e)(1) places a restriction
`
`on a petitioner’s ability to “request or maintain a proceeding before the Office”
`
`after a final written decision under 35 U.S.C. § 328(a) has issued on the challenged
`
`claims. The estoppel provision under 35 U.S.C. § 325(e)(1) could not have
`
`terminated the instant proceeding prior to issuance of the final written decision,
`
`because the final written decision was issued concurrently with the final written
`
`decision in CBM2012-00002.
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`In addition, nothing in 35 U.S.C. § 325(e)(1) precludes the Board from
`
`proceeding to a final written decision when a petitioner can no longer maintain a
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`proceeding, or requires the Board to terminate the second proceeding with respect
`
`to both the petitioner and patent owner when a final written decision has issued in a
`
`first proceeding on the same claims of the same patent. To the contrary, 35 U.S.C.
`
`§ 327(a) provides that “[i]f no petitioner remains in the post-grant review, the
`
`Office may terminate the post-grant review or proceed to a final written decision
`
`under section 328(a)” (emphases added). Although Progressive interprets that
`
`statutory authorization narrowly, limiting it only to settlement situations,
`
`9
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`
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`Case CBM2012-00004
`Patent 6,064,970
`
`Progressive fails to recognize that 35 U.S.C. § 328(a) expressly requires the Board
`
`to issue a final written decision if the instituted covered business method patent
`
`review is not dismissed, as is the case here.
`
`With respect to Progressive’s argument that the legislative history makes
`
`clear that 35 U.S.C. § 325(e)(1) is intended to prevent multiple challenges to a
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`patent (Req. 13), the statute does not prohibit the Board from maintaining multiple
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`parallel proceedings that conclude concurrently. As discussed above, Liberty filed
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`the petition in the instant proceeding and the petition in CBM2012-00002 on the
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`same day, September 16, 2012. The Board instituted both covered business
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`method patent reviews on the same day, January 25, 2013, and the trial schedules
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`for both proceedings were synchronized. Papers 10, 15; CBM2012-00002,
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`Papers 10, 16. Progressive also merged and conducted discovery for both
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`proceedings at the same time (see, e.g., Papers 22-24; CBM2012-00002, Papers
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`21-23) and conducted conference calls with the Board for both proceedings
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`concurrently (see, e.g., Papers 15-16; CBM2012-00002, Papers 16-17). In sum,
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`both proceedings advanced on the same schedule to the concurrent issuance of the
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`final written decisions. Therefore, the Board does not view these two parallel
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`proceedings as multiple “serial” attacks on the ’970 patent.
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`For the foregoing reasons, we are not persuaded that, once the final written
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`decision in CBM2012-00003 was entered, the estoppel provision under 35 U.S.C.
`
`§ 325(e)(1) terminated the instant proceeding or prohibited the Board from issuing
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`the final written decision.
`
`10
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`
`
`Case CBM2012-00004
`Patent 6,064,970
`
`3.
`
`Progressive alleges that the Board misapprehended or overlooked the
`
`prohibition on issuing an advisory opinion. Req. 14-15. According to Progressive,
`
`the Board’s unpatentability determination as to claims 1 and 3-18 of the ’970
`
`patent in the instant proceeding became an advisory opinion once the Board
`
`determined that claims 1, 3-6, and 9-18 of the ’970 patent were unpatentable in
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`CBM2012-00002 and, subsequently, cancelled those claims. Id.
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`We disagree. Again, Progressive’s arguments rest on the erroneous premise
`
`that the final written decision of the instant proceeding was issued 50 seconds later
`
`than the issuance of the final written decision in CBM2012-00002. In fact, the
`
`final written decisions were issued concurrently on January 23, 2014. The final
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`written decision of the instant proceeding, therefore, is not an advisory opinion, but
`
`rather a patentability determination under 35 U.S.C. § 328(a) as to claims 1 and 3-
`
`18 of the ’970 patent.
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`Pursuant to 35 U.S.C. § 328(a), upon consideration of the parties’ arguments
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`and supporting evidence, the Board determined that claims 1 and 3-18 of the ’970
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`patent were unpatentable under 35 U.S.C. § 103(a) based on several combinations
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`of Bouchard, Pettersen, Herrod, Florida Guide, Camhi, and Dorweiler. Paper 60,
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`p. 52. In the CBM2012-00002, the Board determined that claims 1, 3-6, and 9-18
`
`of the ’970 patent were unpatentable under 35 U.S.C. § 103(a) based on several
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`combinations of Kosaka, Florida Guide, Black Magic, and Herrod. CBM2012-
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`00002, Paper 66, p. 70. The final written decision in CBM2012-00002 does not
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`address claims 7 and 8, as the grounds of unpatentability with respect to these
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`claims were denied in the Decision on Institution (CBM2012-00002, Paper 10,
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`11
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`Case CBM2012-00004
`Patent 6,064,970
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`p. 31-32). Therefore, the patentability determinations of the instant proceeding and
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`CBM2012-00002 are based on different grounds of unpatentability.
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`It is important to note that the Order set forth in the final written decision in
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`CBM2012-00002 (Paper 66, p. 71) to cancel claims 1, 3-6, and 9-18 of the ’970
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`patent is not effective until the Director issues a certificate under 35 U.S.C.
`
`§ 328(b), canceling those claims. Section 328(b) states:
`
`CERTIFICATE.—If the Patent Trial and Appeal Board issues a final
`written decision under subsection (a) and the time for appeal has
`expired or any appeal has terminated, the Director shall issue and
`publish a certificate canceling any claim of the patent finally
`determined to be unpatentable, confirming any claim of the patent
`determined to be patentable, and incorporating in the patent by
`operation of the certificate any new or amended claim determined to
`be patentable.
`
`More significantly, a certificate under 35 U.S.C. § 328(b) cannot be issued
`
`until the time for appeal has expired or any appeal has terminated. Here,
`
`no certificate, cancelling any claims of the ’970 patent, has been issued. Therefore,
`
`the final written decision of the instant proceeding was issued before any
`
`cancellation of the claims of the ’970 patent.
`
`For the foregoing reasons, we are not persuaded that the final written
`
`decision issued in the instant proceeding is an advisory opinion.
`
`CONCLUSION
`
`In view of the foregoing, Progressive has not carried its burden of
`
`demonstrating that the Board’s final written decision misapprehended or
`
`overlooked any matters. 37 C.F.R. § 42.71(d).
`
`Progressive’s request for rehearing is denied.
`
`12
`
`
`
`Case CBM2012-00004
`Patent 6,064,970
`
`
`PETITIONER:
`
`J. Steven Baughman
`James R. Myers
`Nicole M. Jantzi
`ROPES & GRAY LLP
`steven.baughman@ropesgray.com
`james.myers@ropesgray.com
`nicole.jantzi@ropesgray.com
`
`
`PATENT OWNER:
`
`Calvin P. Griffith
`James L. Wamsley, III
`John V. Biernacki
`JONES DAY
`cpgriffith@jonesday.com
`jlwamsleyiii@jonesday.com
`
`13
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