Trials@uspto.gov
`571-272-7822
`
`
`
` Paper 68
`
`Entered: February 11, 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 CBM2013-00009
`Patent 8,140,358
`____________
`
`
`
`Before JAMESON LEE, JONI Y. CHANG, and MICHAEL R. ZECHER,
`Administrative Patent Judges.
`
`LEE, Administrative Patent Judge.
`
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 328(a) and 37 C.F.R. § 42.73
`
`
`
`571-272-7822
`
`
`
` Paper 68
`
`Entered: February 11, 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 CBM2013-00009
`Patent 8,140,358
`____________
`
`
`
`Before JAMESON LEE, JONI Y. CHANG, and MICHAEL R. ZECHER,
`Administrative Patent Judges.
`
`LEE, Administrative Patent Judge.
`
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 328(a) and 37 C.F.R. § 42.73
`
`
`
`
`Case CBM2013-00009
`Patent 8,140,358
`
`INTRODUCTION
`I.
`Liberty Mutual Insurance Company (“Liberty”) filed a petition on
`
`November 19, 2012, requesting a covered business method patent review of
`claims 1-20 of U.S. Patent No. 8,140,358 (“the ’358 patent”) pursuant to
`section 18(a) of the Leahy-Smith America Invents Act (“AIA”).1 Paper 2
`(“Pet.”). Progressive timely filed a preliminary response. Paper 8 (“Prelim.
`Resp.”). Taking into account Progressive’s preliminary response, the Board
`determined that the information presented in Liberty’s petition demonstrates
`that it is more likely than not that each of claims 1-20 of the ’358 patent is
`unpatentable. Pursuant to 35 U.S.C. § 324, the Board instituted this trial on
`March 28, 2013, as to claims 1-20 of the ’358 patent. Paper 10 (“Dec.”).
`This is the second petition Liberty has filed requesting a covered
`business method patent review of the ‘358 patent. The first petition was
`filed on September 16, 2012. On February 12, 2013, the Board instituted
`review (Case CBM2012-00003, Paper 15) on some of the grounds alleged
`by Liberty in that first petition. The second petition presents grounds of
`unpatentability not raised in the first petition. A final written decision in
`Case CBM2012-00003 is entered concurrently with this decision.
` During the trial, Progressive filed a patent owner response (Paper 21,
`“PO Resp.”), and Liberty filed a reply (Paper 27, “Reply”). A consolidated
`oral hearing with Case CBM2012-00003 was held on October 15, 2013.2
`
`
`1 Pub. L. No. 112-29, 125 Stat. 284, 329 (2011).
`2 A transcript of the oral hearing is included in the record as Paper 65.
`2
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`
`The Board has jurisdiction under 35 U.S.C. § 6(c). This decision is
`a final written decision under 35 U.S.C. § 328(a) as to the patentability of
`claims 1-20 of the ’358 patent. For reasons discussed below, Liberty has
`proved, by a preponderance of the evidence, that claims 1-20 of the ’358
`patent are unpatentable under 35 U.S.C. § 103. Therefore, claims 1-20 are
`herein cancelled.
`
`A. The ’358 Patent
`
` The ’358 patent relates to a vehicle monitoring system. Ex. 1001,
`Title. A data logging device is disclosed, which tracks the operation of a
`vehicle and/or operator behavior. Ex. 1001, 1:33-34. A processor reads data
`from an automotive bus that transfers data from vehicle sensors to other
`components. Id. at 1:40-42. The processor writes data that reflects a level
`of safety to a storage device. Id. at 1:42-44. A communication device links
`the data logging device to a network of computers. Id. at 1:44-45.
`
`The Background of the Invention portion of the disclosure of the ’358
`patent acknowledges preexisting methods for determining cost of insurance,
`and indicates that they gather data from “personal interviews and legacy
`sources.” Ex. 1001, 1:20-21. The discussion of preexisting methods
`indicates that such data may be used to classify applicants into actuarial
`classes that may be associated with insurance rates. Id. at 1:21-23. The
`same discussion further indicates that some of the data used to classify risk
`“is not verified and has little relevance to measuring risk.” Id. at 1:24-25.
`The disclosure states that the data may not be validated, may be outdated,
`
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`and may not support new or dynamic risk assessments. Id. at 1:27-29.
`“Systems may accumulate and analyze significant amounts of data and yet
`discover that the data does not accurately predict losses.” Id. at 1:25-27.
`The claims of the ’358 patent are directed to a system that monitors
`and facilitates a review of data collected from a vehicle that is used to
`determine a level of safety or cost of insurance. See e.g., Ex. 1001, Claim 1.
`Claim 1 is the only independent claim. Claims 2-20 each depend,
`directly or indirectly, from claim 1, which is reproduced below:
`
`1. A system that monitors and facilitates a review of data
`collected from a vehicle that is used to determine a level of
`safety or cost of insurance comprising:
`a processor that collects vehicle data from a vehicle bus
`that represents aspects of operating the vehicle;
`a memory that stores selected vehicle data related to a
`level of safety or an insurable risk in operating a vehicle;
`a wireless transmitter configured to transfer the selected
`vehicle data retained within the memory to a distributed
`network and a server;
`a database operatively linked to the server to store the
`selected vehicle data transmitted by the wireless transmitter, the
`database comprising a storage system remote from the wireless
`transmitter and the memory comprising records with operations
`for searching the records and other functions;
`where the server is 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
`where the server is further configured to generate a rating
`factor based on the selected vehicle data stored in the database.
`
`4
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`Patent 8,140,358
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`B. Related Proceedings
`
`Liberty indicates that the ’358 patent was asserted against it in
`Progressive Cas. Ins. Co. v. Safeco Ins. Co. of Ill., Case No. 1:10-cv-01370
`(N.D. Ohio). Pet. 7. The ’358 patent also is subject to a covered business
`method patent review in Case CBM2012-00003.
`
`C. Covered Business Method Patent
`
`Upon consideration of Liberty’s contentions in its petition and
`Progressive’s arguments in its preliminary response, the Board, in the
`Decision on Institution, determined that the ’358 patent is a covered business
`method patent as defined in section 18(a)(1)(E) of the AIA and 37 C.F.R.
`§ 42.301, because at least one claim of the ’358 patent is directed to a
`covered business method. Dec. 10-17. The Board concluded that the ’358
`patent is eligible for a covered business method patent review. Id. at 17.
`In its Patent Owner Response, Progressive argues that the Board must
`conduct a claim-by-claim analysis and determine that every challenged
`claim is directed to a covered business method, before it is authorized, under
`section 18(a)(1)(E) of the AIA, to review all of the challenged claims.
`PO Resp. 5-6, n. 3. Progressive asserts that the Board exceeded its statutory
`authority by instituting review of patent claims which the Board has not
`determined to be directed to a covered business method. Id.
`Progressive’s argument is based on an erroneous statutory
`construction that would interpret the word “patent” as “claim” in the
`
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`statutory provision on what is subject to review. We decline to adopt such
`an interpretation.
`As in any statutory construction analysis, we begin with the language
`of the statute. In re Swanson, 540 F.3d 1368, 1374-75 (Fed. Cir. 2008);
`Duncan v. Walker, 533 U.S. 167, 172 (2001); Crandon v. United States, 494
`U.S. 152, 158 (1990). “In the absence of a clearly expressed legislative
`intention to the contrary, the language of the statute itself must ordinarily be
`regarded as conclusive.” United States v. James, 478 U.S. 597, 606 (1986)
`(internal quotation marks and citations omitted). “It is well settled law that
`the plain and unambiguous meaning of the words used by Congress prevails
`in the absence of a clearly expressed legislative intent to the contrary.”
`Hoechst AG v. Quigg, 917 F.2d 522, 526 (Fed. Cir. 1990).
`Section 18(d)(1) of the AIA defines the term “covered business
`method patent” to mean (emphasis added):
`[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.
`If Congress intended to limit the availability of the covered business
`
`method patent review on a claim-by-claim basis, as urged by Progressive, it
`could have used the term “claim” rather than “patent.” Notably, when
`specifying the subject matter for review, Congress could have used the
`language “a claim that is directed to a method or corresponding apparatus”
`rather than “a patent that claims a method or corresponding apparatus.”
`
`6
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`Case CBM2013-00009
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`Section 18(d)(1) of the AIA clearly sets forth a single threshold based on just
`one claim—the satisfaction of which qualifies an entire patent as eligible for
`review—rather than a test which must be applied on a claim-by-claim basis
`to justify review of each claim.3 Therefore, a patent is eligible for a covered
`business method patent review if the subject matter of at least one claim is
`directed to a covered business method. Nothing in the legislative history, or
`other parts of the AIA, requires us to deviate from the plain meaning of the
`definition set forth in section 18(d)(1) of the AIA, as proposed by
`Progressive. Moreover, Progressive has not identified any statutory
`provision or legislative history that requires “each” claim for which trial is
`instituted to meet the test for a covered business method patent.
`With respect to Progressive’s argument concerning the Board’s
`determination that at least one claim of the ’358 patent is directed to a
`covered business method, Progressive provides no meaningful explanation
`as to why the Board’s analysis with regard to claim 1 was incorrect. PO
`Resp. 5-6, n. 3.
`For the foregoing reasons, we disagree with Progressive that the
`Board exceeded its statutory authority by instituting a covered business
`method patent review as to claims 2-20 of the ’358 patent. We find no error
`in the covered business method patent determination set forth in the
`Decision on Institution.
`
`
`3 See also Transitional Program for Covered Business Method Patents –
`Definitions of Covered Business Method Patent and Technological
`Invention; Final Rule, 77 Fed. Reg. 48,734, 48,736 (Aug. 14, 2012).
`7
`
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`Case CBM2013-00009
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`
`D. Prior Art Relied Upon
`
`For the grounds of unpatentability instituted in this proceeding,
`Liberty relies upon the following references as evidence of unpatentability:
`Chang
`U.S. Patent No. 5,446,757
`Aug. 29, 1995
`(Ex. 1006)
`Beaverton U.S. Patent No. 5,210,854
`May 11, 1993
`(Ex. 1007)
`Lowrey
`U.S. Patent No. 7,228,211 B1 June 5, 2007
`(Ex. 1008)
`Bouchard U.S. Patent No. 5,465,079
`Nov. 7, 1995
`(Ex. 1022)
`Gray
`U.S. Patent No. 4,651,157
`Mar. 17, 1987
`(Ex. 1023)
`Lewis
`U.S. Patent No. 5,438,312
`Aug. 1, 1995
`(Ex. 1024)
`Stanifer
`U.S. Patent No. 5,243,530
`Sept. 7, 1993
`(Ex. 1025)
`Kosaka
`Jap. Pub. App. H4-182868
`June 30, 1992
`(Ex. 1003)
`
`“Understanding Radio Determination Satellite Service,” Geostar
`
`Corporation (May 1989)
`(“RDSS”)
`
`
`
`Geostar Corp., Annual Report (Form 10-K) (April 16, 1990)
`
`(“Geostar 10-K”)
`
`
`
`
`
`
`(Ex. 1005)
`
`
`
`
`
`(Ex. 1004)
`
`
`
`
`
`
`
`
`
`
`
`8
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`Case CBM2013-00009
`Patent 8,140,358
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`E. Grounds of Unpatentability
`The Board instituted this covered business method patent review
`based on the following grounds of unpatentability:
`
`
`Claims
`1, 3, 5, 8, 9, 19,
`and 20
`2
`
`4
`
`6 and 7
`
`10-15
`
`16-18
`
`17 and 18
`
`17 and 18
`
`Basis
`
`References
`
`§ 103 RDSS, Kosaka, and Geostar 10-K
`
`§ 103 RDSS, Kosaka, Geostar 10-K, and Chang
`§ 103 RDSS, Kosaka, Geostar 10-K, and
`Beaverton
`§ 103 RDSS, Kosaka, Geostar 10-K, and Stanifer
`
`§ 103 RDSS, Kosaka, Geostar 10-K, and Lowrey
`§ 103 RDSS, Kosaka, Geostar 10-K, and
`Bouchard
`§ 103 RDSS, Kosaka, Geostar 10-K, Bouchard,
`and Gray
`§ 103 RDSS, Kosaka, Geostar 10-K, Bouchard,
`and Lewis
`
`
`In its petition, Liberty did not include Geostar 10-K as prior art in any
`
`alleged ground of unpatentability. Liberty states that, although Geostar 10-
`K qualifies as statutory prior art, it is cited by Liberty “simply to confirm
`additional inherent features of the Geostar system disclosed in RDSS as it
`existed before the ’598 patent’s priority date.” Pet. 20, n.11. In the Decision
`on Institution, the Board stated: “Although not necessary to do so, we will
`
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`upon institution of review re-designate, for consistency purposes, all grounds
`to identify RDSS and Geostar 10-K where only RDSS was identified by
`Liberty.” Dec. 23.
`
`II. ANALYSIS
`
`A. Claim Construction
`
`In a covered business method patent review, claim terms are given
`
`their broadest reasonable construction in light of the specification of the
`patent in which they appear. 37 C.F.R. § 42.300(b). Under the broadest
`reasonable construction standard, claims terms are given their ordinary and
`customary meaning as would be understood by one of ordinary skill in the
`art in the context of the entire disclosure. In re Translogic Tech. Inc.,
`504 F.3d 1249, 1257 (Fed. Cir. 2007). A particular embodiment appearing
`in the written description must not be read into a claim if the claim language
`is broader than the embodiment. In re Van Geuns, 988 F.2d 1181, 1184
`(Fed. Cir. 1993). If a feature is not necessary to give meaning to what the
`inventor means by a claim term, it would be “extraneous” and should not be
`read into the claim. Renishaw PLC v. Marposs Societa’ per Azioni,
`158 F.3d 1243, 1249 (Fed. Cir. 1998); E.I. du Pont de Nemours & Co. v.
`Phillips Petroleum Co., 849 F.2d 1430, 1433 (Fed. Cir. 1988).
`
`“rating factor”(independent claim 1)
`In its Petition, Liberty urged that “rating factor’ should be construed
`
`as meaning “a calculated insurance risk value such as a safety score or a
`usage discount.” Pet. 15-16. In support of that assertion, Liberty cited to
`portions of the specification of the ’358 patent. Pet. 16:3-9 (citing Ex. 1001,
`10
`
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`Case CBM2013-00009
`Patent 8,140,358
`
`22:23-24, 23:41-47, figs. 8 and 10). Progressive, in its preliminary response,
`presented no opposition to that proposed interpretation. In the Decision on
`Institution, the Board adopted Liberty’s proposed interpretation, but added
`the clarification that “an insurance risk value would be a value that reflects
`an associated level of insurance risk and, therefore, also a corresponding
`insurance premium.” Dec. 9:4-14.
`In its Patent Owner Response, Progressive stated the following with
`regard to the Board’s construction of “rating factor”:
`A POSITA would understand that the Board’s “insurance risk”
`refers to expected claims losses, and “an associated level of
`insurance risk” describes rating factors associated with actuarial
`classes.
`
`PO Resp. 12:14-17(citing Ex. 2013, Miller Decl. at ¶ 16.).
`
`Progressive’s argument is unpersuasive. The Decision on Institution
`is not a patent disclosure or a scientific research paper. It is not written from
`the perspective of one with ordinary skill in the art. Nor is it specifically
`written for one with ordinary skill in the art. When responding to an inquiry
`from the Board regarding the usefulness of such an argument and the cited
`expert testimony from Michael J. Miller (Ex. 2013 ¶ 16), counsel for
`Progressive attempted to recast the argument as Mr. Miller’s interpretation
`of “rating factor.” The pertinent portion of the exchange between the Board
`and counsel for Progressive is reproduced below:
`JUDGE LEE: Well, our opinion isn’t a patent document, it
`isn’t a patent specification, so I'm not sure what the value is for
`your expert to be interpreting our decision instituting trial from
`the perspective of one with ordinary skill in the art.
`11
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`
`MR. GRIFFITH: I understand, and a completely fair point. So,
`this is his interpretation of rating factor.
`
`Paper 65, 77:6-11.
`
`The cited testimony of Mr. Miller is reproduced below:
`
`16. A person of ordinary skill in the art would interpret
`the Board’s reference to “insurance risk” to mean expected
`claim losses, and “an associated level of insurance risk” to
`describe rating factors associated with actuarial classes.
`
`Ex. 2013 ¶ 16.
`
`The above-quoted testimony does not reflect an opinion of Mr. Miller
`on what the term “rating factor” means to one with ordinary skill in the art.
`Even if Mr. Miller has that opinion, it has not been expressed. Furthermore,
`that argument was not presented in Progressive’s patent owner response. A
`party may not present any new argument or evidence at final hearing. Office
`Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012).
`
`Thus, we maintain that “rating factor” is construed to mean “a
`calculated insurance risk value such as a safety score or a usage discount,”
`with the clarification that “an insurance risk value would be a value that
`reflects an associated level of insurance risk and, therefore, also a
`corresponding insurance premium.” The construction is broad, and does not
`require the use or reliance on “actuarial classes” to generate a rating factor.
`Nothing from the disclosure of the ’358 patent requires importing such an
`extraneous requirement into the claims. Similarly, “a corresponding
`
`
`
`
`
`12
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`Case CBM2013-00009
`Patent 8,140,358
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`insurance premium” refers to a general level of insurance premium, not
`necessarily any specific dollar amount of premium.
`
`B. Obviousness of Claims 1, 3, 5, 8, 9, 19
`and 20 over RDSS, Kosaka, and Geostar 10-K
`With respect to the alleged ground of unpatentability of claims 1, 3, 5,
`
`8, 9, 19, and 20, under 35 U.S.C. § 103, as obvious over RDSS, Kosaka, and
`Geostar 10-K, Liberty provides detailed explanations and analysis in its
`petition. Pet. 17-43, 45-46, 49-50, 56-58, 73-75. Liberty’s petition also
`relies on the declaration testimony of Mr. Scott Andrews (Ex. 1014).
`Having considered all of the arguments and evidence presented by both
`Liberty and Progressive, we determine that Liberty has shown, by a
`preponderance of the evidence, that claims 1, 3, 5, 8, 9, 19, and 20 are
`unpatentable, under 35 U.S.C. § 103, as obvious over RDSS and Kosaka.
`The level of ordinary skill is reflected by the prior art of record. See, e.g.,
`In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995).
`
`1. Kosaka4
`
`Kosaka relates to a risk evaluation device and an insurance premium
`determination device that makes use of the risk evaluation device. Ex. 1003,
`2:1:53-2:2:3. The risk evaluation device evaluates risk in moving bodies,
`
`
`4 Kosaka is a Japanese Patent Application Publication. The citations to
`Kosaka are to the English-Language Translation provided by Liberty and
`contained in Exhibit 1003. All reference to the page numbers in Kosaka
`refer to those numbers appearing at the top center of each page, not to the
`exhibit page numbers that appear at the bottom right corner of each page.
`13
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`Case CBM2013-00009
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`such as vehicles or insurance customers. Id. With regard to the prior art,
`Kosaka describes that pre-existing insurance premium determination
`systems determine rates based on static attributes of the customer. Ex. 1003,
`2:2:15-19. For instance, Kosaka describes that in pre-existing systems, it is
`normal for there to be no distinction in insurance premiums between
`operators who always operate safely and operators who occasionally take
`risks, and that it is, therefore, unfair to apply the same insurance premium to
`both. Ex. 1003, 2:2:36-42. Kosaka states, as an objective, the providing of
`an insurance premium determination device that increases or decreases
`premiums by determining changes continually through the detection of states
`that lead to risk in the insurance customer. Ex. 1003, 2:2:43-52.
`Figure 1 of Kosaka illustrates a block diagram of Kosaka’s device:
`
`
`As shown in Figure 1, External sensor 1 and internal sensor 2 detect
`data about the vehicle or insurance customer to provide as input to fuzzy
`logic part 3 (FIU 3). Ex. 1003, 4:2:4-20. For risk evaluation, FIU 3
`determines the comprehensive risk based on the input sensor data. Ex. 1003,
`4:2:20-26. The detection, by sensors 1 and 2, of the states that contribute to
`risk, and the evaluation of risk, by fuzzy logic 3, are both carried out in real-
`time. Ex. 1003, 4:1:30-34.
`
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`Premium calculation part 6 (CAL 6) calculates insurance premiums
`by processing the output from FIU 3. Ex. 1003, 4:2:26-31. System clock
`(CLK 5) supplies a timing signal to CAL 6. Ex. 1003, 4:2:31-33. Kosaka’s
`system further includes: (1) output interface (MRW 7) that has an electronic
`currency transfer request means or a prepayment amount erasing means; and
`(2) monetary amount file part (MEM 8) including either a memory that
`stores a prepayment balance or a transfer-side currency on-line system.
`Ex. 1003, 4:2:33-38. The output interface has an electronic currency
`transfer request means or a prepayment amount erasing means employing an
`interlock system. Ex. 1003, 4:2:33-36.
`Kosaka discloses specific uses of its device illustrated in Figure 1 in
`two application embodiments. In the first embodiment, the device is
`incorporated within a diving watch to be worn by a diver while diving.
`Ex. 1003, 4:2:39-41. In the second embodiment, the device is installed on a
`vehicle. Ex. 1003, 6:2:3-6. The vehicle embodiment employs, as a sensor, a
`Doppler radar, or alternatively ultrasound waves, to detect the operating
`speed of the vehicle. Ex. 1003, 6:2:7-11. Kosaka describes an effect of its
`invention as follows:
`Moreover, by using the risk evaluation device employing
`a risk evaluation part that operates by fuzzy logic together with
`an
`insurance premium determination system, change
`in
`insurance premiums in accordance with continually varying risk
`evaluation values can be settled in real time, thereby allowing
`insurance to be more equitable.
`
`Ex. 1003, 9:1:27-34.
`
`
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`More specifically, Kosaka states that an insurance premium
`determination system is used in addition to risk evaluation, “which allows
`risk evaluations that change from hour to hour during travel to be reflected
`in the insurance premium.” Ex. 1003, 7:2:20-25.
`
`2. RDSS5
`
`RDSS discloses a vehicle telematics system that wirelessly transmits
`“position data, status or alarms, and messages” from a plurality of vehicles
`to a central location for processing and management. Ex. 1004, 16:2:6-15.
`For instance, RDSS discloses that a transport company may need to know
`the whereabouts of each vehicle in its fleet, so that a dispatcher can
`immediately locate and communicate with one or all of the vehicles in the
`fleet to relay destination changes or other important information. Ex. 1004,
`1-2. The information communicated from each vehicle includes more than
`location data. In one embodiment, the terminal on the vehicle is connected
`to vehicle sensors, which include computing electronics and a diagnostic
`program for maintenance troubleshooting, that transmit to the central station
`sensed vehicle data such as engine overheat, low oil, open door, high
`refrigeration temperature, and burglar alarm. Ex. 1004, 50:2:2-19.
`While certain processing may be performed by the onboard terminal,
`operations “requiring extensive processing” are performed, instead, at the
`
`
`5 All references to RDSS in this decision are made using the original page
`numbers of the publication, rather than the six-digit numbering at the bottom
`right corner of Exhibit 1004.
`
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`central location, thereby “reducing the sophistication and cost of the
`terminal.” Ex. 1004, 46:1:6-9. Text messages are stored in a memory local
`to the vehicle for the benefit of later recall and transmission. Ex. 1004,
`48:2:1-8. The central location uses a server/computer system that processes
`incoming data and maintains automated file and storage facilities. Ex. 1004,
`16:2:6-16; 40:2:24-40.
`3. Geostar 10-K6
`Geostar 10-K is an annual report of Geostar Corporation, the
`
`publisher of RDSS, on Form 10-K, for the fiscal year ending December 31,
`1989, which was filed at the Security and Exchange Commission on April
`16, 1990. Ex. 1005. Geostar 10-K refers to a “GEOSTAR System” of
`Geostar Corporation. Liberty refers to the following two portions of Geostar
`10-K:
`The Company believes that the GEOSTAR System
`
`enables commercial fleet owners to increase asset utilization,
`reduce deadhead miles, shorten billing cycles, improve just-in-
`time deliveries, enhance security, lower insurance premiums,
`reduce communications costs, perform real-time operations and
`maintenance monitoring, scheduling, and controlling to achieve
`more efficient operations and reduce operating costs.
`
` Ex. 1005, 11:1-7 (emphasis added).
`
`The Company believes a market exists in the insurance,
`financial and retail industries for GEOSTAR System services
`because its real-time nationwide mobile processing of insurance
`
`
`6 All references to Geostar 10-K in this decision are made using the six-digit
`numbering at the bottom right corner of each page of the exhibit.
`17
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`claims, point-of-sales, credit verification, and funds transfer
`transactions will reduce financial and information float decision
`delays.
`
`Ex. 1005, 11:15-20 (emphasis added).
`
`4. Analysis
`
`a. Liberty’s Assertions about Geostar 10-K
`We address first the nature of Geostar 10-K as asserted by Liberty.
`As indicated above, in its petition, Liberty states that, although Geostar 10-K
`qualifies as statutory prior art, it is cited by Liberty “simply to confirm
`additional inherent features of the Geostar system disclosed in RDSS as it
`existed before the ’598 patent’s priority date.” Pet. 20, n.11.
`At the outset, however, we note that although Geostar 10-K is an
`official record, that does not mean it is a printed publication. To constitute a
`printed publication, a document “must have been sufficiently accessible to
`the public interested in the art.” In re Lister, 583 F.3d 1307, 1311 (Fed. Cir.
`2009); In re Cronyn, 890 F.2d 1158, 1161 (Fed. Cir. 1989). Whether a
`reference is publicly accessible is determined on a case-by-case basis based
`on the facts and circumstances surrounding disclosure of the reference to the
`public. In re Lister, 583 F.3d at 1311. Liberty explains little, if anything,
`about how “10-K” forms are indexed or catalogued at the Security and
`Exchange Commission, or how else the public may search the 10-K forms
`based on the technical content contained therein. Liberty has not established
`that Geostar 10-K constitutes statutory prior art.
`Liberty’s argument on inherent disclosure is unpersuasive. The
`applied prior art is RDSS as a document, not a physical system in actual
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`existence. At issue are the particulars described, in words and figures, in
`RDSS the document. Liberty has not shown that Geostar 10-K pertains to
`the specific disclosure of RDSS. Even if RDSS is describing an actual
`system of Geostar Corporation, that does not substitute the system for the
`document as prior art. In any event, Liberty has not established that the
`system had an unvarying configuration, or that RDSS and Geostar 10-K
`describe the same version of a system that had many configurations.
`
`Furthermore, the above-quoted text of Geostar 10-K do not purport to
`refer to facts. Rather, they refer to what the Geostar Corporation “believes.”
`The company “believes” that there is a market for its system in the insurance
`industry, and “believes” that its system would “lower insurance premiums”
`for a commercial fleet of vehicles. What a company subjectively believes
`does not establish a fact. Note that, as is pointed out by Progressive (PO
`Resp. 18:18-20), Geostar 10-K states: “The Company’s operations are
`currently in one industry: position determination and mobile satellite
`communications.” Ex. 1005, 4:33-34.
`
`For all of the foregoing reasons, as applied by Liberty, Geostar 10-K
`is ineffective to supplement the disclosure of RDSS in any meaningful way.
`Accordingly, Geostar 10-K is not further discussed in determining the
`patentability of claims over Kosaka and RDSS. To the extent the Decision
`on Institution states anything different about Geostar 10-K, it is superseded
`by our determination in this final written decision.
`
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`Liberty’s argument that Progressive failed to make a timely objection
`to Geostar 10-K is unpersuasive. The patent owner response is an
`appropriate place to challenge the content and significance of Geostar 10-K.
`
`b. The Memory Element of Claim 1
`Claim 1 requires a memory for storing the monitored vehicle data
`prior to such data being transmitted wirelessly to a distributed network and
`server. Kosaka refers to and discusses no such memory prior to the
`vehicle’s sensed data being supplied as input to fuzzy logic unit FIU 3.
`Liberty argues that there “necessarily and thus inherently” is a buffer to
`transfer the sensed data to fuzzy logic unit FIU 3, relying on the declaration
`testimony of Scott Andrews (Ex. 1014 ¶¶ 22, 31, 35). Pet. 34-35.
`Specifically, Mr. Andrews testifies:
`It was also well known that such in-vehicle monitoring devices
`would have memory, including volatile and non-volatile
`memory. Indeed, storing data in memory has been an integral
`part of any data processing system (including a telematics
`system) since long before 1996. . . . By 1996, most electronic
`systems in vehicles relied on digital processing and digital data
`buses. Such digital systems necessarily require the conversion
`of analog signals into digital form so that they can be
`manipulated and/or processed.
` This conversion process
`involves sampling the analog signals at regular time intervals
`and converting the signal values to digitally represented
`numbers. These numbers are then stored for subsequent
`processing using digital processors and software.
`
`Ex. 1014 ¶ 22. Mr. Andrews further testifies:
`Kosaka explains that the monitored data is collected for the
`purpose of analyzing and grouping it as “input value[s] for risk
`
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`evaluation.” Id. at 8. A person of ordinary skill in the art
`would have understood that selected vehicle data (e.g., speed
`data, following distance data, etc. relevant to risk evaluation) is
`stored in the in-vehicle device memory so it can be used as
`these “input values.” In such a system, one skilled in the art
`would understand that the analog input values to FIU (3), id. at
`Fig. 1, FIU-1 and FIU-II, id. at Fig. 9, would necessarily be
`digitized and stored in a buffer memory prior to fuzzy logic
`processing (e.g., before reaching FIU (3) in Fig. 1). Kosaka
`further explains that these input values are then outputs to a
`“second fuzzy logic part” as “fuzzy input value[s] for risk
`evaluation.”
`
`Ex. 1014 ¶ 35.
`
`To establish inherent disclosure, the evidence must show that a feature
`is necessarily described in the reference, and that it would be so recognized
`by persons of ordinary skill. In re Robertson, 169 F.3d 743, 745 (Fed. Cir.
`1999). The mere fact that a certain thing may result from a given set of
`circumstances is not sufficient to establish inherency. In re Rijckaert, 9 F.3d
`1531, 1534 (Fed. Cir. 1993). Inherency may not be established by
`probabilities or possibilities. In re Oelrich, 666 F.2d 578, 581 (CCPA 1981).
`
`The testimony of Mr. Andrews does not persuade us that storage in
`memory necessarily must occur prior to further processing of sensed vehicle
`data. However, the same te
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