UNITED STATES PATENT AND TRADEMARK OFFICE
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`—————————————
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`LIBERTY MUTUAL INSURANCE CO.
`Petitioner
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`v.
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`PROGRESSIVE CASUALTY INSURANCE CO.
`Patent Owner
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`—————————————
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`Case CBM2012-00004
`Patent 6,064,970
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`—————————————
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`PATENT OWNER’S NOTICE OF OBJECTIONS TO EVIDENCE
`PURSUANT TO 37 C.F.R. § 42.64
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`CLI-2145304v1
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`—————————————
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`—————————————
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`LIBERTY MUTUAL INSURANCE CO.
`Petitioner
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`v.
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`PROGRESSIVE CASUALTY INSURANCE CO.
`Patent Owner
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`—————————————
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`Case CBM2012-00004
`Patent 6,064,970
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`—————————————
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`PATENT OWNER’S NOTICE OF OBJECTIONS TO EVIDENCE
`PURSUANT TO 37 C.F.R. § 42.64
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`CLI-2145304v1
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`The undersigned, on behalf of Patent Owner Progressive Casualty Insurance
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`Case CBM2012-00004
`Patent 6,064,970
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`
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`Co. (“Patent Owner”), hereby provides Notice to the Board that the objections
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`made on the record herewith were served to Liberty Mutual Insurance Co. pursuant
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`to 37 C.F.R. § 42.64. See also 37 C.F.R. 42, Office Patent Trial Practice Guide,
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`part II, § I (77 Fed. Reg. 48,756, 48,767 (Aug. 14, 2012)).
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`By:
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`Respectfully submitted,
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`JONES DAY
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`/s/Calvin P. Griffith
`Calvin P. Griffith
`Registration No. 34,831
`JONES DAY
`North Point
`901 Lakeside Avenue
`Cleveland, Ohio 44114-1190
`(216) 586-3939
`(216) 579-0212 (Fax)
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`Attorney For Patent Owner
`Progressive Casualty Insurance Co.
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`September 25, 2013
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`CLI-2145304v1
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`1
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`—————————————
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`—————————————
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`LIBERTY MUTUAL INSURANCE CO.
`Petitioner
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`v.
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`PROGRESSIVE CASUALTY INSURANCE CO.
`Patent Owner
`
`—————————————
`
`Case CBM2012-00004
`Patent 6,064,970
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`—————————————
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`PATENT OWNER’S OBJECTIONS TO
`EVIDENCE PURSUANT TO 37 C.F.R. § 42.64
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`CLI-2145304v1
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`Pursuant to 37 C.F.R. § 42.64(b)(1), the undersigned, on behalf of Patent
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`Case CBM2012-00004
`Patent 6,064,970
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`
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`Owner Progressive Casualty Insurance Co. (“Patent Owner”), hereby submits the
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`following objections to Exhibit 1027 filed on September 18, 2013 by Liberty
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`Mutual Insurance Co. (“Liberty” or “Petitioner”) in response to Patent Owner’s
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`Objections to Evidence, filed September 4, 2013. Pursuant to 37 C.F.R. § 42.62,
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`Patent Owner’s objections below apply the Federal Rules of Evidence (“F.R.E.”).
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`I.
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`PATENT OWNER MAINTAINS ITS PRIOR OBJECTIONS
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`Patent Owner maintains all objections it previously set forth, including its
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`objections filed on August 13, 2013 and September 4, 2013. (See CBM2012-
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`00004, Paper Nos. 31 and 35).
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`II. EXHIBIT 1027 GOES BEYOND EVIDENCE PERMITTED UNDER
`37 C.F.R. § 42.64(B)(2)
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`37 C.F.R. § 42.64(b)(2) provides that a “party relying on evidence to which
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`an objection is timely served may respond to the objection by serving supplemental
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`evidence within ten business days of service of the objection.” Patent Owner
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`objects to Exhibit 1027 because it goes beyond, and is not proper supplemental
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`evidence pursuant to, 37 C.F.R. § 42.64(b)(2).
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`III. OBJECTIONS TO EXHIBIT 1027 AND ANY REFERENCE
`TO/RELIANCE THEREON
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`Patent Owner hereby objects to Exhibit 1027, Declaration of Mary Lou
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`O’Neil, dated September 18, 2013 (“O’Neil Fourth Declaration”).
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`CLI-2145304v1
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`1
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`Grounds for objection: 37 C.F.R. § 42.61 (Admissibility of Evidence),
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`Case CBM2012-00004
`Patent 6,064,970
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`F.R.E. 402 (Relevance), F.R.E. 403 (Excluding Relevant Evidence for Prejudice,
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`Confusion, Waste of Time, or Other Reasons), F.R.E. 901 (Authentication), 37
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`C.F.R. § 42.223 (Filing of Supplemental Evidence), F.R.E. 702, 703, 705 (Witness
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`Not Qualified to Provide Expert Testimony), F.R.E. 602 (Lack of Personal
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`Knowledge), F.R.E. 801, 802 (Impermissible Hearsay), 37 C.F.R. § 42.23(b)
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`(Outside Scope of Response and Petition), and the O’Neil Fourth Declaration is
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`unauthorized testimony.
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`Patent Owner advanced no position that provides a proper basis for the
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`belated submission of the O’Neil Fourth Declaration or the exhibits referenced
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`therein, i.e., Exhibit 1023 and the O’Neil Third Declaration (Exhibit 1025). (37
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`C.F.R. § 42.23(b); 37 C.F.R. § 42.223; 37 C.F.R. 42, Office Patent Trial Practice
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`Guide, part II, § I (77 Fed. Reg. 48,756, 48,767 (Aug. 14, 2012)). The statements
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`in the O’Neil Fourth Declaration have no relevant bearing on any issue properly
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`raised in this proceeding or argument raised by Patent Owner. (F.R.E. 402, 403;
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`37 C.F.R. § 42.61). Rather, the O’Neil Fourth Declaration is an attempt to raise
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`new theories to support invalidity arguments in an effort to establish a prima facie
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`case of unpatentability of the claims that should have been submitted with the
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`Petitioner’s petition. The content of the O’Neil Third Declaration and Exhibit
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`1023 are either inapplicable or should have been submitted when the petition for
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`CLI-2145304v1
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`2
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`review was filed, not after the institution of this trial. (F.R.E. 403; 37 C.F.R.
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`Case CBM2012-00004
`Patent 6,064,970
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`§ 42.223; 37 C.F.R. 42, Office Patent Trial Practice Guide, part II, § I).
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`Further, O’Neil’s new testimony could have been elicited during direct
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`examination in the first instance. (Id.) O’Neil’s attempt to now offer testimony in
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`her Declaration is not rebuttal evidence and should not be allowed to remedy any
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`deficiency with any improperly previously filed O’Neil Declaration.
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`The O’Neil Fourth Declaration was not authorized by the Board. None of
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`the PTAB rules or regulations authorizes filing new testimonial evidence in
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`conjunction with a Petitioner reply that does not arise from the submission of a
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`substitute claim or is responsive to a Patent Owner’s claim amendments, especially
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`in light of the prejudice to Patent Owner because there is no opportunity to respond
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`to or rebut new declarations submitted at this stage. Consequently, the O’Neil
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`Fourth Declaration is both outside the scope of Patent Owner’s Response and
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`impermissible supplemental evidence. (37 C.F.R. § 42.223; 37 C.F.R. § 42.23(b);
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`37 C.F.R. 42, Office Patent Trial Practice Guide, part II, § I).
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`Petitioner apparently presents the O’Neil Fourth Declaration, and
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`specifically ¶ 2, in an attempt to verify the source, dates and/or authenticity of
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`Exhibit 1023, titled “Interpretative Opinion 3: Professional Communications of
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`Actuaries and Interpretive Opinion 4: Actuarial Principles and Practices.” O’Neil
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`claims to be “familiar with” and to “have used” Opinion No. 3 without specifying
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`CLI-2145304v1
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`3
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`how she used it or was familiar with it or specifying when she used it or became
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`Case CBM2012-00004
`Patent 6,064,970
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`familiar with it, including whether that use and familiarity was coextensive with
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`any use of or familiarity with Opinion No. 4. (See O’Neil Fourth Declaration, at
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`¶ 2.) Nor is O’Neil claiming that her hard copy document is identical to Exhibit
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`1023, but rather claims some of the words are “the same” and then adds the
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`ambiguous description that they “may contain slightly different formatting,”
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`conceding her lack of knowledge. (Id., emphasis added). O’Neil has failed to
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`provide any relevant statement or personal knowledge regarding the original
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`publication date of the materials submitted as Exhibit 1023 (F.R.E. 402, 602; 37
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`C.F.R. § 42.61); and she failed to provide any proper basis for concluding that the
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`document is a true and accurate copy as it existed at the time of publication, to the
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`extent it was published prior to when she purportedly downloaded it (F.R.E. 901).
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`Therefore, the declaration, and testimony regarding Exhibit 1023, is both
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`prejudicial and irrelevant to any issue in this proceeding. (F.R.E. 402; 37 C.F.R.
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`§ 42.61; F.R.E. 403).
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`Furthermore, the O’Neil Fourth Declaration seeks to verify the source of
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`Exhibit 1023 even though it is inadmissible supplemental evidence and not
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`relevant to any issue of this proceeding. (F.R.E. 402; 37 C.F.R. § 42.61; 37 C.F.R.
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`§ 42.23(b); 37 C.F.R. § 42, Office Patent Trial Practice Guide, part II, § I).
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`Consequently, the O’Neil Fourth Declaration is irrelevant, outside the scope of
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`CLI-2145304v1
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`4
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`Patent Owner’s Response, and constitutes impermissible supplemental evidence.
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`Case CBM2012-00004
`Patent 6,064,970
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`(37 C.F.R. § 42.223; 37 C.F.R. § 42.23(b); 37 C.F.R. § 42, Office Patent Trial
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`Practice Guide, part II, § I).
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`All the statements contained in the O’Neil Fourth Declaration are out of
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`court statements offered for the truth of the matter asserted therein and constitute
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`impermissible hearsay. (F.R.E. 801, 802). Further, the O’Neil Fourth Declaration
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`refers to out of court statements offered for the truth of the matter asserted therein,
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`and they also constitute impermissible hearsay. (Id.)1 Nor has a showing been
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`made that a hearsay exception or exclusion applies.
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`Additionally, the O’Neil Fourth Declaration is not relevant because O’Neil
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`is not qualified to testify and lacks the necessary “scientific, technical, or other
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`specialized knowledge [to] help the trier of fact to understand the evidence or to
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`determine a fact in issue” because she is not sufficiently knowledgeable about the
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`subject matter on which she has offered her opinions in her declaration. (F.R.E.
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`702; 37 C.F.R. § 42.61; 37 C.F.R. § 42.65; see also F.R.E. 402, 703, 705).
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`Accordingly, permitting any reliance on this purported expert testimony in
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`submissions of Petitioner would be misleading and unfairly prejudicial to Patent
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`Owner. (F.R.E. 403).
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`1 For example, in ¶ 2, O’Neil refers to her Third Declaration.
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`CLI-2145304v1
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`5
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`IV. CONCLUSION
`For at least these reasons, the Patent Owner objects to Exhibit 1027.
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`Case CBM2012-00004
`Patent 6,064,970
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`
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`September 25, 2013
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`By:
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`Respectfully submitted,
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`JONES DAY
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`/s/Calvin P. Griffith
`Calvin P. Griffith
`Registration No. 34,831
`JONES DAY
`North Point
`901 Lakeside Avenue
`Cleveland, Ohio 44114-1190
`(216) 586-3939
`(216) 579-0212 (Fax)
`
`Attorney For Patent Owner
`Progressive Casualty Insurance Co.
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`CLI-2145304v1
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`6
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`CERTIFICATE OF SERVICE
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`I certify that a copy of the foregoing PATENT OWNER’S NOTICE OF
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`OBJECTIONS TO EVIDENCE PURSUANT TO 37 C.F.R. § 42.64 and PATENT
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`OWNER’S OBJECTIONS TO EVIDENCE PURSUANT TO 37 C.F.R. § 42.64
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`were served on September 25, 2013 by causing them to be sent by email to counsel
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`for the Petitioner at the following email addresses:
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`Steven.baughman@ropesgray.com
`Nicole.jantzi@ropesgray.com
`James.myers@ropesgray.com
`LibertyMutualPTABService@ropesgray.com
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`
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`/s/ John V. Biernacki
`John V. Biernacki
`Registration No. 40,511
`JONES DAY
`North Point
`901 Lakeside Avenue
`Cleveland, Ohio 44114-1190
`
`Attorney For Patent Owner
`Progressive Casualty Insurance Co.
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