Covered Business Method Patent Review
`United States Patent No. 6,064,970
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Attorney Docket No.:
` LMIC-018-802
`Customer No. 28120
`
`Requester: Liberty Mutual
` Insurance Company
`
`§
`§
`§
`§
`§
`§
`§
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`
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`Inventor: Robert John McMillan et al.
`
`United States Patent No.: 6,064,970
`Formerly Application No.: 09/135,034
`Issue Date: May 16, 2000
`
`Filing Date: Aug. 17, 1998
`
`Former Group Art Unit: 2761
`
`Former Examiner: Edward R. Cosimano
`
`For: Motor Vehicle Monitoring System for Determining a Cost of Insurance
`
`MAIL STOP PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`Post Office Box 1450
`Alexandria, Virginia 22313-1450
`
`PETITION FOR COVERED BUSINESS METHOD PATENT REVIEW OF
`UNITED STATES PATENT NO. 6,064,970 PURSUANT TO 35 U.S.C. § 321,
`37 C.F.R. § 42.304
`
`
`
`Pursuant to 35 U.S.C. § 321 and 37 C.F.R. § 42.304, the undersigned, on behalf
`
`of and acting in a representative capacity for petitioner, Liberty Mutual Insurance
`
`Company (“Petitioner” and real party in interest), hereby petitions for review under
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`the transitional program for covered business method patents of claims 1 and 3-18 (all
`
`claims) of U.S. Pat. No. 6,064,970 (“the ‘970 Patent”), issued to Progressive Casualty
`
`Insurance Company (“Progressive”). A reexamination certificate (6,064,970 C1)
`
`issued on January 10, 2012. Petitioner hereby asserts that it is more likely than not
`
`that at least one of the challenged claims is unpatentable and respectfully requests
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`institution of a covered business method review of the ‘970 Patent for judgment
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`against Claims 1 and 3-18 (all claims) as unpatentable under § 103, with prior art
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`

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`Covered Business Method Patent Review
`United States Patent No. 6,064,970
`rejections based on the Bouchard, Pettersen, Herrod, New York Guide, and Florida
`
`Guide references cited herein.1
`
`
`
`
`1 As discussed in Section III, infra, Petitioner has simultaneously filed a Petition
`seeking a covered business method review of the ‘970 Patent requesting judgment
`against these claims based on different prior art references. Petitioner notes that the
`Director, pursuant to Rule 325(c), may determine at the proper time that merger of
`these proceedings may be appropriate.
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`ii
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`Covered Business Method Patent Review
`United States Patent No. 6,064,970
`
`TABLE OF CONTENTS
`
`
`I. 
`II. 
`
`INTRODUCTION .......................................................................................... 1 
`PETITIONER HAS STANDING ................................................................... 3 
`The ‘970 Patent Is a Covered Business Method Patent ........................... 3 
`A. 
`Petitioner Is a Real Party In Interest Sued for Infringement ................... 5 
`B. 
`III.  OVERVIEW OF SPECIFIC GROUNDS FOR WHICH IT IS MORE
`LIKELY THAN NOT THAT THE CHALLENGED CLAIMS (1 AND 3-
`18) ‘970 PATENT ARE UNPATENTABLE ................................................... 5 
`IV.  Background Information For the ‘970 Patent ................................................... 6 
`A.  Overview of the ‘970 Patent ................................................................... 6 
`The ‘970 Patent Prosecution History ...................................................... 7 
`B. 
`The ‘970 Patent Reexamination File History ......................................... 10 
`C. 
`V.  DETAILED EXPLANATION OF REASONS FOR RELIEF REQUESTED
`SHOWING IT IS MORE LIKELY THAN NOT THAT AT LEAST ONE
`OF THE CHALLENGED CLAIMS IS UNPATENTABLE ........................ 17 
`The Challenged Claims Are Invalid Under § 103 .................................. 18 
`A. 
`Claim Construction .................................................................... 19 
`1. 
`2. 
`The Challenged Claims (1 and 3-18) Are Rendered
`Obvious Under § 103 by Combinations of the Bouchard,
`Pettersen, Herrod, New York Guide, and Florida Guide
`References .................................................................................. 22 
`Overview of Bouchard .................................................. 22 
`(a) 
`Overview of Pettersen ................................................... 24 
`(b) 
`Overview of Florida Guide ........................................... 26 
`(c) 
`Overview of New York Guide ...................................... 27 
`(d) 
`Overview of Herrod ...................................................... 29 
`(e) 
`Overview of Dorweiler .................................................. 30 
`(f) 
`Overview of Camhi ....................................................... 30 
`(g) 
`Motivations to Combine ................................................ 31 
`(h) 
`(i) .... Bouchard with Pettersen ........................................ 31 
`(ii) ... Bouchard, Pettersen, and New York Guide ........... 32 
`
`iii
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`(b) 
`
`(c) 
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`Covered Business Method Patent Review
`United States Patent No. 6,064,970
`(iii) . Bouchard, Pettersen, and Herrod .......................... 32 
`(iv) .. Bouchard, Pettersen, and Florida Guide ................ 33 
`(v) ... Bouchard, Pettersen, and Dorweiler ...................... 33 
`(vi) .. Bouchard, Pettersen, and Camhi ............................ 34 
`Independent Claim 1 .................................................................. 34 
`(a) 
`Claim 1 is Rendered Obvious Under § 103 by
`Bouchard in View of Pettersen ...................................... 34 
`Claim 1 is Rendered Obvious Under § 103 by
`Bouchard in View of Pettersen and New York
`Guide ............................................................................ 38 
`Claim 1 is Rendered Obvious Under § 103 by
`Bouchard in View of Pettersen and Herrod ................... 38 
`Dependent Claim 3 is Rendered Obvious by: (1) Bouchard
`and Pettersen; (2) Bouchard, Pettersen, and New York
`Guide; or (3) Bouchard, Pettersen, and Herrod .......................... 39 
`Independent Claim 4 .................................................................. 41 
`(a) 
`Claim 4 is Rendered Obvious by Bouchard in View
`of Pettersen ................................................................... 41 
`Claim 4 is Rendered Obvious by Bouchard in View
`of Pettersen and Florida Guide ..................................... 43 
`Claim 4 is Rendered Obvious by Bouchard in View
`of Pettersen and New York Guide ................................ 44 
`Independent Claim 5 .................................................................. 45 
`(a) 
`Claim 5 is Rendered Obvious by Bouchard in View
`of Pettersen ................................................................... 45 
`Claim 5 is Rendered Obvious by Bouchard in View
`of Pettersen and Florida Guide ..................................... 50 
`Claim 5 is Rendered Obvious by Bouchard in View
`of Pettersen and New York Guide ................................ 50 
`Independent Claim 6 .................................................................. 50 
`(a) 
`Claim 6 is Rendered Obvious by Bouchard in View
`of Pettersen ................................................................... 50 
`
`(b) 
`
`(c) 
`
`(b) 
`
`(c) 
`
`3. 
`
`4. 
`
`5. 
`
`6. 
`
`7. 
`
`iv
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`

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`8. 
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`9. 
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`Covered Business Method Patent Review
`United States Patent No. 6,064,970
`Claim 6 is Rendered Obvious by Bouchard in View
`of Pettersen and New York Guide ................................ 55 
`Claim 6 is Rendered Obvious by Bouchard in View
`of Pettersen and Herrod ................................................ 56 
`Dependent Claim 7 is Rendered Obvious by: (1) Bouchard
`and Pettersen; (2) Bouchard, Pettersen, and New York
`Guide; or (3) Bouchard, Pettersen, and Herrod .......................... 56 
`Dependent Claim 8 is Rendered Obvious by: (1) Bouchard
`and Pettersen; (2) Bouchard, Pettersen, and New York
`Guide; or (3) Bouchard, Pettersen, and Herrod .......................... 58 
`10.  Dependent Claim 9 .................................................................... 61 
`(a) 
`Claim 9 is Rendered Obvious by: (1) Bouchard in
`View of Pettersen and Dorweiler; (2) Bouchard in
`View of Pettersen, New York Guide, and
`Dorweiler; or (3) Bouchard in View of Pettersen,
`Herrod, and Dorweiler .................................................. 61 
`Claim 9 is Rendered Obvious by: (1) Bouchard in
`View of Pettersen and Camhi; (2) Bouchard in
`View of Pettersen, New York Guide, and Camhi;
`or (3) Bouchard in View of Pettersen, Herrod, and
`Camhi ............................................................................ 62 
`11.  Dependent Claim 10 is Rendered Obvious by: (1)
`Bouchard and Pettersen; (2) Bouchard, Pettersen, and New
`York Guide; or (3) Bouchard, Pettersen, and Herrod ................. 63 
`12.  Dependent Claim 11 is Rendered Obvious by: (1)
`Bouchard and Pettersen; (2) Bouchard, Pettersen, and New
`York Guide; or (3) Bouchard, Pettersen, and Herrod ................. 64 
`13.  Dependent Claim 12 .................................................................. 65 
`(a) 
`Claim 12 is Rendered Obvious by: (1) Bouchard in
`View of Pettersen; (2) Bouchard in View of
`Pettersen and New York Guide; or (3) Bouchard in
`View of Pettersen and Herrod ....................................... 65 
`Claim 12 is Rendered Obvious by: (1) Bouchard in
`View of Pettersen and Dorweiler; (2) Bouchard in
`View of Pettersen, New York Guide, and
`
`(b) 
`
`(b) 
`
`(c) 
`
`(b) 
`
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`Covered Business Method Patent Review
`United States Patent No. 6,064,970
`Dorweiler; or (3) Bouchard in View of Pettersen,
`Herrod, and Dorweiler .................................................. 66 
`14.  Dependent Claim 13 is Rendered Obvious by: (1)
`Bouchard and Pettersen; (2) Bouchard, Pettersen, and New
`York Guide; or (3) Bouchard, Pettersen, and Herrod ................. 67 
`15.  Dependent Claim 14 is Rendered Obvious by: (1)
`Bouchard and Pettersen; (2) Bouchard, Pettersen, and New
`York Guide; or (3) Bouchard, Pettersen, and Herrod ................. 68 
`16.  Dependent Claim 15 .................................................................. 69 
`(a) 
`Claim 15 is Rendered Obvious by: (1) Bouchard in
`View of Pettersen; (2) Bouchard in View of
`Pettersen and New York Guide; or (3) Bouchard in
`View of Pettersen and Herrod ....................................... 69 
`Claim 15 is Rendered Obvious by: (1) Bouchard in
`View of Pettersen and Dorweiler; (2) Bouchard in
`View of Pettersen, New York Guide, and
`Dorweiler; or (3) Bouchard in View of Pettersen,
`Herrod, and Dorweiler .................................................. 70 
`17.  Dependent Claim 16 is Rendered Obvious by: (1)
`Bouchard and Pettersen; (2) Bouchard, Pettersen, and
`Florida Guide; or (3) Bouchard, Pettersen, and New York
`Guide ......................................................................................... 71 
`18.  Dependent Claim 17 is Rendered Obvious by: (1)
`Bouchard and Pettersen; (2) Bouchard, Pettersen, and
`Florida Guide; or (3) Bouchard, Pettersen, and New York
`Guide ......................................................................................... 72 
`Independent Claim 18 ................................................................ 73 
`(a) 
`Claim 18 is Rendered Obvious by Bouchard in
`View of Pettersen .......................................................... 73 
`Claim 18 is Rendered Obvious by Bouchard in
`View of Pettersen and New York Guide ....................... 77 
`Claim 18 is Rendered Obvious by Bouchard in
`View of Pettersen and Herrod ....................................... 78 
`Claim 18 is Rendered Obvious by Bouchard in
`View of Pettersen and Dorweiler ................................... 78 
`VI.  CONCLUSION ............................................................................................. 79 
`
`19. 
`
`(b) 
`
`(b) 
`
`(c) 
`
`(d) 
`
`vi
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`

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`Covered Business Method Patent Review
`United States Patent No. 6,064,970
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`vii
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`EXHIBIT LIST
`
`Exhibit 1001
`
`Exhibit 1002
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`Exhibit 1003
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`Exhibit 1004
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`Exhibit 1005
`
`Exhibit 1006
`
`Exhibit 1007
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`Exhibit 1008
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`Exhibit 1009
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`Exhibit 1010
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`Exhibit 1011
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`Exhibit 1012
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`Exhibit 1013
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`Exhibit 1014
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`Exhibit 1015
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`Exhibit 1016
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`Covered Business Method Patent Review
`United States Patent No. 6,064,970
`
`United States Patent No. 6,064,970 with
`Jan. 10, 2012 Ex Parte Reexamination
`Certificate
`United States Patent No. 6,064,970 File
`History
`United States Patent No. 6,064,970
`Reexamination File History
`U.S. Patent No. 5,465,079, filed on August
`13, 1993, and issued on November 7, 1995
`(“Bouchard”)
`PCT Patent Pub. No. WO 90/02388,
`published on March 8, 1990 (“Pettersen”)
`1995 Consumers Guide on Automobile
`Insurance (Downstate), published in 1988
`(“New York Guide”)
`Herrod, published on August 16, 1995
`(“Herrod”)
`1988 Automobile Insurance Shoppers’
`Guide, published in 1988 (“Florida Guide”)
`“Notes on Exposure and Premium Bases”
`by Paul Dorweiler, published on May 9,
`1930 (“Dorweiler”)
`U.S. Patent No. 5,430,432, filed on July 22,
`1994, and issued on July 4, 1995 (“Camhi”)
`Declaration of Mary L. O’Neil (“O’Neil
`Dec.”)
`Curriculum Vitae and Case List of Mary L.
`O’Neil
`“Disparate Impact and Unfairly
`Discriminatory Insurance Rates” by
`Michael J. Miller
`Declaration of Scott Andrews, dated
`September 15, 2012
`
`Curriculum vitae of Scott Andrews and List
`of Matters
`
`OBD-II Background—Where’d It Come
`From?,
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`viii
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`Covered Business Method Patent Review
`United States Patent No. 6,064,970
`http://www.OBDii.com/background.html
`(follow “Where’d it come from?”
`hyperlink)
`
`Excerpt from Shuji Mizutani, Car
`Electronics, page 250 (Nippondenso Co.
`Ltd. 1992)
`
`Excerpt from David S. Boehner,
`Automotive Microcontrollers, in
`Automotive Electronics Handbook, pages
`11.24-11.29 (Ronald K. Jurgen ed., 1995)
`
`Declaration of Amanda F. Wieker
`
`Declaration of Georginne Blundell
`
`Exhibit 1017
`
`Exhibit 1018
`
`Exhibit 1019
`
`Exhibit 1020
`
`ix
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`

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`Covered Business Method Patent Review
`United States Patent No. 6,064,970
`
`I.
`
`INTRODUCTION
`
`The ‘970 Patent is merely an attempt to claim ideas long known in the art—
`
`monitoring and recording vehicle data for insurance rating. Independent claims 1, 4-
`
`6, and 18 have four main elements: (1) “monitoring” or “extracting” data representing
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`vehicle or driver behavior during a selected time period; (2) “recording” the data in,
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`e.g., a database; (3) “generating” either an actuarial class or insured profile with limits
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`and deductibles; and (4) “determining” a retrospective insurance cost. Dependent
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`claims 3 and 7-17 simply recite additional details.2
`
`These claimed principles were not invented by Applicants, as confirmed by,
`
`inter alia, the ‘970 Patent’s Background and Applicants’ statements during prosecution
`
`and ex parte reexamination. Indeed, Applicants admitted it was well known to monitor,
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`record and use data collected from a vehicle to assess insurance costs. First,
`
`Applicants acknowledged as commonplace:
`
`
`
`
`
`Systems that “disclose a variety of conventional techniques for recording
`vehicle operation data elements in a variety of data recording systems”
`(Ex. 1001 at 2:54-61);
`Vehicle tracking systems “with navigation systems for providing
`
`
`2 These claims add one or more of the following: (1) raw, derived, and calculated data
`(claim 3); (2) determining a trigger event and storing/transmitting a related signal
`(claims 7-8); (3) using an output data value for computing an insurance rating for a
`future data collection period (claim 9); (4) comparing data elements to preset values to
`create an adjusted insurance cost output (claims 10-11); (5) using adjusted cost for a
`prospective or retrospective basis (claim 12); (6) generating an adjusted underwriting
`cost (claims 13-14), including for a prospective or retrospective basis (claim 15); (7)
`applying a discount or surcharge to the base cost of vehicle insurance (claims 16-17).
`
`
`
`1
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`

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`
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`Covered Business Method Patent Review
`United States Patent No. 6,064,970
`information describing a vehicle’s location . . . . When such positioning
`information is combined with roadmaps in an expert system, vehicle
`location is ascertainable” (id. at 3:28-34);
`Radio communication
`links and cellular phones for “immediate
`communication of certain types of data elements or . . . a more
`immediate response
`in cases of theft, accident, break-down or
`emergency” (id. at 1: 61-66); and
`Detection and recording of vehicle usage data, e.g., seatbelt usage, to
`assess vehicle insurance costs (id. at 1:66-2:2).
`Second, the ‘970 Patent concedes that “[c]urrent motor vehicle control and operating
`
`
`
`systems comprise electronic systems readily adaptable for modification to obtain the
`
`desired types of information relevant to determination of the cost of insurance.” Id.
`
`at 3:25-28. And, third, the ‘970 Patent makes plain that actuarial classes were already
`
`used to rate insureds in “conventional insurance.” Id. at 1:16-2:37. Indeed, during
`
`prosecution Applicants stated that the prior art was “useful for teaching the
`
`collection of operational data about a vehicle . . . . [that] can be acquired by
`
`automobile insurance companies for ‘appropriately allocating higher costs only
`
`among the highest risk drivers’ . . . [or for] evaluat[ing] the driving habits of
`
`vehicle operators.’” Ex. 1002 at 128, 7/19/99 Amend. at 5.
`
`During reexamination, the Examiner found all original claims anticipated or
`
`obvious by the prior art (including references cited in this Petition). The Owner
`
`obtained allowance with amended claims only by telling the Examiner after final
`
`rejection that the addition of either (i) actuarial classes of insurance or (ii) an insured
`
`
`
`2
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`Covered Business Method Patent Review
`United States Patent No. 6,064,970
`profile including limits and deductibles distinguishes the claims over the art. As the
`
`prosecution history makes clear, this was the sole reason the Examiner was persuaded to allow
`
`the claims. (See infra, § IV.C.) In fact, as demonstrated in this Petition, this was false:
`
`both concepts were standard in all vehicle insurance policies and necessary to comply
`
`with state insurance regulations, as exemplified by the explicit statements in the New
`
`York and Florida consumer insurance guides cited in proposed grounds for rejection
`
`in this Petition. (See infra, § V.) Accordingly, the amended claims are all similarly
`
`invalid, and judgment should be entered against each of them.
`
`II.
`
`PETITIONER HAS STANDING
`A.
`The ‘970 Patent is a “covered business method patent” under § 18(d)(1) of the
`
`The ‘970 Patent Is a Covered Business Method Patent
`
`Leahy-Smith America Invents Act, Pub. L. 112-29 (“AIA”) and § 42.301.3 As
`
`discussed above, the ‘970 Patent involves methods for analyzing and processing data
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`for financial products and services—specifically, insurance. See Ex. 1011, O’Neil Dec.
`
`¶ 19. The claimed methods concern the administration and management of an
`
`insurance policy to adjust insurance premiums based on monitored vehicle data. See
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`AIA § 18(d)(1); § 42.301(a). See also 77 Fed. Reg. 48,734, 48,735 (Aug. 14, 2012)
`
`(“[T]he definition of covered business method patent was drafted to encompass
`
`patents ‘claiming activities that are financial in nature, incidental to a financial activity
`
`
`3 All sections cited in this Petition are from either 35 U.S.C. or 37 C.F.R. unless stated
`otherwise. All emphasis is added by Petitioner unless otherwise noted.
`
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`3
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`Covered Business Method Patent Review
`United States Patent No. 6,064,970
`or complementary to a financial activity.’”) (citation omitted). The ‘970 Patent also is
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`not a “technological invention” because it does not claim “subject matter as a whole
`
`[that] recites a technological feature that is novel and unobvious over the prior art[]
`
`and solves a technical problem using a technical solution.” § 42.301(b). Indeed, the
`
`PTO clearly concluded during reexamination that there was no “technological
`
`feature” that was novel and unobvious. To the contrary, the claims were (incorrectly)
`
`considered patentable only because they had been amended to recite the abstract
`
`manipulation of information—“generating”/“determining” either an actuarial class or
`
`an insured profile—which is not a “technological feature.” Indeed, the claimed
`
`methods merely implement a way of “bas[ing] insurance charges with regard to
`
`current material data . . . to provide a classification rating of the operator and the
`
`vehicle in an actuarial class.” Ex. 1001 at 3:45-49. The subject matter as a whole also
`
`does not solve a “technical problem.” Id. at 3:25-28 (“Current motor vehicle control
`
`and operating systems comprise electronic systems readily adaptable for modification
`
`to obtain the types of information relevant to determination of the cost of
`
`insurance.”). Instead, it supposedly “overcomes the problem of determining [a] cost
`
`of vehicle insurance based upon data which does not take into consideration how a
`
`specific vehicle is operated.” Id. at 3:42-45, 5:44-46 (“Other benefits and advantages
`
`of the subject new vehicle insurance cost determination process will become apparent
`
`to those skilled in the art”). The ‘970 Patent – as filed, argued, and issued – concerns
`
`nothing more than non-technical issues of insurance costs. See Ex. 1001 at [52] (‘970
`
`
`
`4
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`

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`Covered Business Method Patent Review
`United States Patent No. 6,064,970
`Patent classified in U.S. Class 705/4, “Insurance (e.g., computer implemented system
`
`or method for writing insurance policy, processing insurance claim, etc.).”).
`
`Petitioner Is a Real Party In Interest Sued for Infringement
`
`B.
`As discussed in the Mandatory Notices, the ‘970 Patent was asserted against
`
`Petitioner in Case No. 1:10-cv-01370, Progressive Cas. Ins. Co. v. Safeco Ins. Co. of Ill. et al.,
`
`pending in the U.S. District Court for the Northern District of Ohio.
`
`III. OVERVIEW OF SPECIFIC GROUNDS FOR WHICH IT IS MORE
`LIKELY THAN NOT THAT THE CHALLENGED CLAIMS (1 AND
`3-18) ‘970 PATENT ARE UNPATENTABLE
`
`Pursuant to § 42.208 (and § 42.300), Petitioner asserts that at least one—and,
`
`indeed, every one—of the challenged claims of the ‘970 Patent is unpatentable as
`
`invalid under the requirements of § 103. The accompanying Exhibit List lists all prior
`
`art references relied upon in the present Petition for the asserted grounds of invalidity
`
`under § 103—including references not previously cited to or considered by the PTO.
`
`Section V.A identifies each ground upon which it is more likely than not that the
`
`challenged claims are unpatentable as obvious under § 103, and renders a detailed
`
`explanation therefor. This Petition relies on certain prior art applied by the PTO
`
`during reexamination (including the primary “Bouchard” reference) to reject the
`
`original claims of the ‘970 Patent, together with additional references confirming that
`
`the “actuarial class” and “insured profile” limitations the Patent Owner added to
`
`obtain allowance did not, in fact, draw any distinction from the prior art. As noted
`
`above, Petitioner has simultaneously filed an additional Petition seeking covered
`
`
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`5
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`

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`Covered Business Method Patent Review
`United States Patent No. 6,064,970
`business method review and judgment against the same claims of the ‘970 Patent
`
`based on different prior art – in particular, based on additional references (including
`
`the primary “Kosaka” reference) that the PTO applied in reexamination to reject the
`
`original claims. (Again, Petitioner notes the Director, pursuant to Rule 325(c), may
`
`determine at the proper time that merger of these proceedings may be appropriate.)4
`
`IV. BACKGROUND INFORMATION FOR THE ‘970 PATENT
`A. Overview of the ‘970 Patent
`The ‘970 Patent – issued to Progressive on May 16, 2000, with Robert J.
`
`McMillan, Alexander D. Craig, and John P. Heinen as the named inventors – states it
`
`is directed to “a method and system of determining a cost of automobile insurance
`
`based on monitoring, recording and communicating data representative of operator
`
`and vehicle driving characteristics.” Ex. 1001, ‘970 Pat. at Abstract. As explained in
`
`Section I, most of the written description of the ‘970 Patent relates to well-known
`
`insurance schemes and vehicle monitoring technologies, many acknowledged by the
`
`patent itself as prior art. The ‘970 Patent thus recognizes that “current motor vehicle
`
`control and operating systems comprise electronic systems readily adaptable for
`
`modification to obtain the desired types of information relevant to determination of
`
`the cost of insurance.” Id. at Col. 3: 25-28. Indeed, Figure 3 discloses a motor vehicle
`
`
`4 Petitioner acknowledges with appreciation the procedural guidance provided by the
`Chief Judge and others at the Patent Trial and Appeal Board regarding the
`appropriateness of such a division of grounds under the transitional program for
`covered business method patents.
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`6
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`Covered Business Method Patent Review
`United States Patent No. 6,064,970
`with well-known components for “implementing the subject invention” (id. at Col.
`
`5:44-46) – e.g., on-board computer (300), vehicle data bus (304), vehicle sensors (306),
`
`driver input device (308), car battery (310), GPS antenna (312), and comm. link (314).
`
`
`
`The claims of the ‘970 Patent – reciting monitoring and recording vehicle data and
`
`determining a cost of insurance for the monitored period – are thus mere
`
`combinations of known elements. See supra § I, supra.
`
`B. The ‘970 Patent Prosecution History
`The application resulting in the ‘970 Patent (No. 09/135,034) was filed on
`
`August 17, 1998, and claims priority to U.S. App. No. 08/592,958, filed on January
`
`1996. Originally-filed claims 1-20 were canceled and claims 28-47 were added by
`
`preliminary amendments. In the First Office Action the Examiner rejected all
`
`pending claims (21-40).5 Claims 21-24, 28, 29, 33 and 34 were rejected under 35
`
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`5 The Examiner re-numbered pending claims 28-47 as prosecution claims 21-40. The
`Examiner also raised various other objections, including impermissible new matter,
`nonstatutory double patenting, indefiniteness, and failure to provide a written
`description requirement. Ex. 1002, 3/18/99 OA (“OA 1”) at 3-4.
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`U.S.C. § 102(b) as being “clearly anticipated by Camhi et al (5,430,432) or Ousbourbe
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`[sic] (5,499,182).” Ex. 1002 at 137, OA 1 at 5. Rather than disputing the Examiner’s
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`conclusions, Applicants admitted that both teach (1) collecting vehicle driver data and
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`(2) providing that data to insurers for assessing insurance rates. Instead, they tried to
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`distinguish their “invention” from Camhi and Ousborne on one ground, asserting
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`that these references merely teach rating for a future period based on past driving
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`activity. Ex. 1002 at 128, 7/19/99 Amend. at 5 (“[A] more sophisticated scheme of
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`collecting historical information in a conventional insurance scheme by generating a
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`prospective rate based upon then known operating results and parameters of the
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`vehicle operator.”). According to Applicants, the “important and consequential
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`advantage” of their invention, by contrast, is “determining insurance costs for a
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`certain period based upon how the vehicle is operated during that very same time
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`period.” Id. at 5-6 (“[T]he subject invention determines the cost of insurance
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`for a certain time period based upon the data elements collected during that
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`same time period”); (“[T]he important and consequential advantage of the subject
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`invention, of determining insurance costs for a certain period based upon how
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`the vehicle is operated during that very same period, is defined in the claims and
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`thus patentably distinguishes the invention from the teachings of the references.”6).
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`Thus, in arguing to obtain allowance Applicants clearly limited their “invention” to
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`6 As noted during reexamination, Applicants, represented by the same attorney, made
`the same argument when seeking allowance of the ‘970 Patent’s parent application.
`See Ex. 1003 at 2722, 9/22/2010 Request at 12 n.5.
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`United States Patent No. 6,064,970
`merely determining insurance cost adjustments, premium adjustments, and ratings for
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`application to the monitored time period and affirmatively disclaimed determining
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`prospective cost adjustments, premium adjustments and ratings for application to a
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`future time period.
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`The Examiner was not persuaded – finding that Applicants’ arguments were
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`premised, in part, on reasons for allowance in the parent application for claims that
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`were narrower than the claims of the instant application – and maintained his
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`rejections, citing Camhi and Ousborne as references that “record data which is to be
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`used by an insurance company for the purpose of determining the cost of insurance
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`based on driver habits.” Ex. 1002 at 122, 8/13/99 OA at 3. Applicants attempted
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`again in an interview to argue their claims were novel because they taught adjusting
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`insurance premiums for the current monitored period and not a future period. See Ex.
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`1002 at 110, 11/12/99 Int. Sum. (“[T]he instant invention . . . adjusts the insurance
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`premium for the current insurance premium period and not a future insurance
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`premium period as in the applied prior art.”).
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`As a result, the Examiner agreed to allow claims 21, 24, and 26, and agreed to
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`allow claims 22 and 28 if amended to reflect the “current insurance premium period”
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`limitations.7 Id. Applicants thereafter amended claim 22 to require that the database
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`then “be[] used to determine an insurance charge for the vehicle operation for
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`said selected time period,” and claim 28 to require that “the output data value is
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`7 Filed claims 21, 22, 24, 26 and 28 issued as claims 1, 2, 4, 5 and 6, respectively.
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`used to compute an insurance rating for the vehicle FOR the data collection
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`period.” (emphasis
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`in original), and Applicants argued these addressed the
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`Examiner’s concern that “he failed to see . . . a correlation between the data collection
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`mentioned in these claims and the particular period of insurance charges for which
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`the data is used are the same periods.” Id. at 112, 11/15/99 Amend. at 2.
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`The Examiner allowed claims 21-23, 26, 28-34, 37, 38 and 41 (Ex. 1002 at 108,
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`Notice of Allowability), all now including at least one limitation requiring monitoring
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`the vehicle for a time period and determining the insurance cost for that same period.8
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`C. The ‘970 Patent Reexamination File History
`On November 24, 2010, Petitioner successfully requested reexamination of the
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`‘970 Patent (Control No. 90/011,252). See Ex. 1003, Order Granting Request at 1.
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`On January 10, 2012, an Ex Parte Reexamination Certificate for the ‘970 Patent issued.
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`Independent claims 1 and 4-6 were amended; independent claim 2 was cancelled;
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`dependent claim 3 was amended; and dependent claims 16-17 and independent claim
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`18 were newly added. See generally Ex. 1001, Reexam. Cert.
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`Progressive amended independent original claims 1 and 6, and newly-added
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`claim 18, in reexamination to include, inter alia, new steps concerning actuarial classes
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`of insurance based on monitored data (new text italicized, deleted text in brackets):
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`1. A method of generating a database comprising data elements
`representative of operator or vehicle driving characteristics, the method
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`8 For a more fulsome discussion of the file history for the ‘970 Patent, see § II.B.1(b)
`of the Request for Ex Parte Reexamination. See Ex. 1003 at 2719-25, Request at 9-15.
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`comprising:
`generating acturial [sic] classes of insurance, which group operators or
`vehicles having a similar risk characteristic, from actual monitored driving
`characteristics during a selected time period as represented by recorded data elements
`representative of an operating state of the vehicles or an action of the operators; and
`monitoring a plurality of the data elements . . . .
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`6. A me