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

`

`
`
`
`TABLE OF CONTENTS
`
`I.
`II.
`
`Introduction ..................................................................................................... 1
`The ‘358 Patent and Its Prosecution History .................................................. 3
`A.
`The ‘358 Patent .................................................................................... 3
`B.
`The Prosecution History ....................................................................... 6
`1.
`The Petition Does Not Rely on New Grounds for Alleged
`Unpatentability ........................................................................... 6
`Progressive Disclosed Wireless Transmission .......................... 7
`2.
`III. Claim Construction ......................................................................................... 8
`IV. The Petition Relies on Art That Is Missing Key Limitations and Is Not
`New, Thereby Failing to Satisfy the Elevated Threshold Standard
`Requiring a Showing That It Is More Likely Than Not That the
`Challenged Claim Will Be Found Invalid .................................................... 11
`A.
`The Combination of Kosaka and RDSS Are Missing Key
`Limitations of the Claims of the ‘358 Patent ..................................... 11
`1.
`Kosaka ...................................................................................... 12
`2.
`RDSS ........................................................................................ 13
`3.
`The Combination of Kosaka and RDSS .................................. 17
`The Board Should Deny the Petition Under 35 U.S.C. § 325(d),
`Since Kosaka Was Considered During Prosecution and RDSS
`Is Substantially the Same as References Considered During
`Prosecution ......................................................................................... 20
`The ‘358 Patent is a Patent for a Technological Invention and Is
`Ineligible for Covered Business Method Review ......................................... 30
`VI. Conclusion .................................................................................................... 31
`
`
`
`B.
`
`V.
`
`
`
`
`
`i
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`
`
`CASES
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`TABLE OF AUTHORITIES
`
`Page
`
`In re Kotzab,
`217 F.3d 1365 (Fed. Cir. 2000) ............................................................................ 3
`
`In re Robertson,
`169 F.3d 743 (Fed. Cir. 1999) ............................................................................ 16
`
`In re Rouffet,
`149 F.3d 1350 (Fed. Cir. 1998) ............................................................................ 3
`
`Panduit Corp. v. Dennison Mfg. Co.,
`810 F.2d 1561 (Fed. Cir. 1987) ............................................................................ 3
`
`STATUTES
`
`35 U.S.C. § 325(d) ................................................................................. 20, 21, 28, 30
`
`OTHER AUTHORITIES
`
`157 Cong. Rec. S1042 (daily ed. Mar. 1, 2011) ...................................................... 28
`
`“An Interest in Black Magic – Motor Technology” ............................................ 7, 26
`
`Control Your Own Insurance Costs: Pay as You Drive, Insure.com, May 29,
`2009 ....................................................................................................................... 4
`
`Decision (Institution of Covered Business Method Review) issued on
`February 12, 2013 for CBM 2012-00003 ........................................................... 10
`
`M.P.E.P. § 2141.02 .................................................................................................... 3
`
`M.P.E.P. § 2112(IV) ................................................................................................ 16
`
`Order (Denial of Grounds) issued on October 25, 2012 for CBM 2012-
`00003 ................................................................................................... 1, 11, 13, 17
`
`Order (Redundant Grounds) issued on October 25, 2012 for CBM 2012-
`00003 ................................................................................................................... 27
`
`
`
`ii
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`Request for Reexamination of U.S. Patent No. 6,064,970, Reexamination
`Control No. 90/011,252 ..................................................... 6, 7, 22, 23, 24, 25, 26
`
`The Telematics Advantage: Growth, Retention and Transformational
`Improvement with Usage-Based Insurance, Cognizant 20-20 Insights,
`January 2012 ......................................................................................................... 4
`
`U.S. Patent No. 5,797,134 ........................................................................................ 10
`
`Usage-Based Insurance Next Wave for Personal Auto, PropertyCasualty360,
`July 14, 2011 ......................................................................................................... 4
`
`“Vehicle Alert and Notification System,” IBM Tech. Disclosure Bulletin,
`Vol. 38, No. 8, August 1995 ........................................................................... 1, 26
`
`
`
`iii
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`

`

`Case CBM2013-00009
`Patent 8,140,358
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`I.
`
`INTRODUCTION
`
`
`
`Liberty Mutual Insurance Company (“Petitioner”) has filed a second petition
`
`against Progressive’s U.S. Patent No. 8,140,358 (the “‘358 patent”) in an attempt
`
`to fix portions of its first ‘358 petition that the Board rejected. (See Ex. 2005,
`
`Order (Denial of Grounds) issued on October 25, 2012 for CBM 2012-00003.)
`
`However, the instant petition also fails for several reasons.
`
`
`
`First, the references (Kosaka and RDSS) presented in the instant petition are
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`either not new or do not provide any additional teaching beyond what was
`
`previously considered by the Office during regular prosecution. Kosaka has
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`already been considered by the Board, with the Board recognizing sua sponte that
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`Kosaka did not teach the ‘358 claims. (Id. at 10-13.) The additional reference
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`presented in this petition (RDSS) is cumulative of references considered during the
`
`prosecution of the ‘358 patent and references considered in the first ‘358 petition.
`
`Multiple wireless transmitter references were considered by the Office during
`
`regular prosecution. (See, e.g., Ex. 2006, “Vehicle Alert and Notification System,”
`
`IBM Tech. Disclosure Bulletin, Vol. 38, No. 8, August 1995, at 209-10, discussing
`
`monitoring vehicle systems and using cellular technology to report monitored data
`
`
`
`
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`1
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`

`

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`to a third party agency for preemptively detecting maintenance issues.) More
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`Case CBM2013-00009
`Patent 8,140,358
`
`recently, the Board considered multiple wireless references in relation to the ‘358
`
`claims during its assessment of the first ‘358 petition, such as Scapinakis,
`
`Eisenmann, and Stanifer. Petitioner now pulls out another redundant wireless
`
`reference (RDSS) for the Board to consider. Thus, the petition should be denied
`
`because it is based on previously-rejected grounds.
`
`
`
`Second, Petitioner’s arguments based on previously-considered or redundant
`
`references are particularly weak here, since those references plainly fail to disclose
`
`key limitations of the claims. For example, claim 1 recites a particular architecture
`
`where a portion of the processing is performed on the vehicle and other processing
`
`is performed remotely. However, the Kosaka and RDSS references fail to teach
`
`the claimed division of the onboard vehicle data monitoring and the server
`
`processing of selected onboard vehicle data that is wirelessly received. This
`
`missing disclosure results in the proposed combination failing to teach multiple
`
`limitations in all of the claims. The proposed combination further fails to disclose
`
`the claimed server-side database that stores the selected vehicle data transmitted by
`
`the wireless transmitter. Claim 1 is explicit in that the database is remote: “the
`
`database comprising a storage system remote from the wireless transmitter”
`
`(emphasis added). For these and other reasons, it was entirely correct to allow the
`
`
`
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`2
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`

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`‘358 patent claims over Kosaka and references disclosing wireless transmission of
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`Case CBM2013-00009
`Patent 8,140,358
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`data.
`
`
`
`Due to the deficiencies of the Kosaka and RDSS references, the Petition
`
`lacks sufficient grounds demonstrating that it is more likely than not that at least
`
`one of the challenged claims is unpatentable. Therefore, the Petition should be
`
`denied, and no covered business method review should be instituted.
`
`II.
`
`
`
`THE ‘358 PATENT AND ITS PROSECUTION HISTORY
`A. The ‘358 Patent
`Petitioner criticizes the ‘358 patent by arguing that it is “merely an attempt
`
`to claim ideas long known in the art.” (Petition at 1; see also Petition at 2, 3.) This
`
`criticism is misplaced. “Most if not all inventions arise from a combination of old
`
`elements.” In re Kotzab, 217 F.3d 1365, 1369 (Fed. Cir. 2000); accord In re
`
`Rouffet, 149 F.3d 1350, 1357 (Fed. Cir. 1998). It is a bedrock principle of United
`
`States patent law that patentability is not assessed by dissecting a claimed
`
`invention into discrete elements and then evaluating those elements one-by-one.
`
`Rather, the claims must be considered as a whole, because it is the combination of
`
`claim limitations functioning together that constitutes the claimed invention. See,
`
`e.g., Panduit Corp. v. Dennison Mfg. Co., 810 F.2d 1561, 1567 (Fed. Cir. 1987)
`
`(“Courts are required to view the claimed invention as a whole.”) (emphasis in
`
`original); see also M.P.E.P. § 2141.02. The combinations of claim elements set
`
`
`
`
`
`3
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`

`

`
`forth in the ‘358 patent claims recite a novel configuration of technological
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`Case CBM2013-00009
`Patent 8,140,358
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`features that operates in a unique manner. The ‘358 claims are not invalid in view
`
`of the art cited by Petitioner.
`
`
`
`The invention claimed in the ‘358 patent was not known or used by others
`
`before the ‘358 patent. Indeed, Progressive’s leadership in usage-based insurance
`
`has been acknowledged in industry publications.1 One published report identifies
`
`Progressive as the only company having greater than six years experience in the
`
`usage-based insurance field. (Ex. 2001 at 2.) Other publications illustrate the
`
`infancy of the field even as of 1999 when “Progressive, for example, has been
`
`testing and refining usage-based programs.” (Ex. 2012, Control Your Own
`
`Insurance Costs: Pay as You Drive, Insure.com, May 29, 2009 at 2.) The 2009
`
`publication recognized Progressive’s primacy in this field and the later entrants:
`
`1 E.g., “Telematics Pioneers - One leading carrier, Progressive Insurance,
`has over a decade’s head start with Telematics. Its patented ‘Snapshot’ program is
`already rolled out, with enrollments increasing to 50,000 new policyholders a
`month in 39 states. As such, Progressive has proved the acceptance and scalability
`of UBI in the U.S.” (Ex. 2001, The Telematics Advantage: Growth, Retention and
`Transformational Improvement with Usage-Based Insurance, Cognizant 20-20
`Insights, January 2012, at 2.) See also Ex. 2002, Usage-Based Insurance Next
`Wave for Personal Auto, PropertyCasualty360, July 14, 2011: “Progressive has
`been one of the early leaders and continues in that direction, having introduced its
`usage-based product in 37 states and the District of Columbia thus far . . . .”
`
`
`
`
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`4
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`

`
`“While Progressive was first out of the gate in implementation of usage-based car
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`Case CBM2013-00009
`Patent 8,140,358
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`insurance, there’s a pack forming at the starting line.” (Id. at 3.)
`
`
`
`
`
`The claims of the ‘358 patent recite a risk management system comprised of
`
`technological features that generate, communicate, and process data used to
`
`determine rating factors. (See, e.g., ‘358 patent at claim 1, reciting wirelessly
`
`receiving “a database operatively linked to the server to store the selected vehicle
`
`data transmitted by the wireless transmitter.”) Prior approaches employed by
`
`insurance companies relied on data to classify risk that is not verified and has little
`
`relevance to measuring risk. (Id., 1:24-1:27.) By contrast, in the claims of the ‘358
`
`patent, data is collected from the actual vehicle bus that directly relates to the
`
`operation of an insured vehicle; communication technology (i.e., cellular
`
`
`
`
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`5
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`

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`telephone, radio, satellite, or other wireless communication systems) is used to
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`Case CBM2013-00009
`Patent 8,140,358
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`permit the data to be wirelessly transmitted for use by a server; and computer
`
`systems (i.e., a server, database, etc.) analyze and process that data. These
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`technological features permit the development of a rating factor (e.g., an insurance
`
`rating) that is specific to the operator or vehicle, based upon the manner in which
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`that particular vehicle is actually operated.
`
`The Prosecution History
`
`B.
`The prosecution history demonstrates that the instant Petition is based on
`
`
`
`two primary references that are the same as, or (in the case of the second reference)
`
`substantially the same as, references that were previously presented to the Office.
`
`Further, the prosecution history refutes a basic premise of the Petition, viz., that
`
`Progressive allegedly concealed that wireless transmission of data was known.
`
`1.
`
`The Petition Does Not Rely On New Grounds For Alleged
`Unpatentability
`
`
`
`Kosaka appears on the face of the ‘358 patent, evidencing its consideration
`
`by the Examiner during prosecution. Additionally, a copy of a reexamination
`
`request provided by Petitioner for U.S. Patent No. 6,064,970, granted from an
`
`application related to the ‘358 patent, was submitted that includes Petitioner’s
`
`significant discussion of Kosaka and its purported relevance to the technology of
`
`the ‘358 patent family. (Ex. 2007, Request for Reexamination of U.S. Patent No.
`
`6,064,970, Reexamination Control No. 90/011,252.) Thus, the Examiner had
`
`
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`

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`multiple opportunities to review Kosaka, including in light of Petitioner’s own
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`Case CBM2013-00009
`Patent 8,140,358
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`characterization of that reference.
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`
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`As discussed below, RDSS is cumulative of multiple references considered
`
`by the Examiner and the Board. With Kosaka having been thoroughly considered
`
`during prosecution and RDSS adding no non-cumulative teachings, the present
`
`Petition is simply a request to re-argue the relevance of Kosaka, a request that must
`
`be denied.
`
`Progressive Disclosed Wireless Transmission
`
`2.
`Petitioner argues that the Examiner mistakenly allowed the claims of the
`
`
`
`‘358 patent because Progressive allegedly “affirmatively deleted” subject matter
`
`concerning the state of the art with respect to wireless transmission of monitored
`
`data. (Petition at 2.) Yet the Examiner was made well aware of the state of the art
`
`in this area. Progressive submitted multiple references to the Office disclosing
`
`vehicle wireless transmission. One such reference was “Black Magic,” which
`
`discussed utilization of “GPS systems” with an “emergency location facility with a
`
`stolen vehicle tracking system.” (Ex. 2008, “An Interest in Black Magic – Motor
`
`Technology” at 1.) Other such references were also disclosed, as was Petitioner’s
`
`reexamination request (for the ‘970 patent) which discussed that very issue. (Ex.
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`2007 at 49.)
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`
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`7
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`

`

`The above discussed references confirm that Progressive did not commit
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`Case CBM2013-00009
`Patent 8,140,358
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`
`
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`misconduct by removing sentences already disclosed in multiple references
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`submitted to the Office. Petitioner’s claims in this respect should be rejected for
`
`what they have been revealed to be: an unwarranted attempt to vilify Progressive
`
`and its counsel’s conduct during prosecution. These arguments have no place in
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`this proceeding.
`
`III. CLAIM CONSTRUCTION
`
`
`
`In the February 12, 2013, decision (at page 6) instituting covered business
`
`method review of the ‘358 patent in CBM2012-00003, the Board adopted the
`
`Petitioner’s proposed construction of a “rating factor” as “a calculated insurance
`
`risk value such as a safety score or a usage discount” with the clarification “that an
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`insurance risk value would be a value that reflects an associated level of insurance
`
`risk and, therefore, also a corresponding insurance premium.” The Petitioner in the
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`present proceeding again submits that “rating factor” should be construed as “a
`
`calculated insurance risk value such as a safety score or a usage discount.”
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`(Petition at 16.)
`
`
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`The Patent Owner objects to the Board’s clarification in CBM2012-00003
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`and submits that the clarification should not be adopted in the present proceeding.
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`The clarification is in conflict with the broadest reasonable interpretation standard
`
`to be applied in covered business method review proceedings. The construction of
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`
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`8
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`

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`“rating factor” proposed by the Petitioner includes a safety score. The
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`Case CBM2013-00009
`Patent 8,140,358
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`specification of the ‘358 patent includes a number of examples where a safety
`
`score is divorced from any insurance premium. For example, FIG. 9 depicts a user
`
`interface that breaks down the determination of a safety score at 918.
`
`An example of a safety score is described at col. 22, line 59, to col. 23, line 28:
`
`
`
`In some systems, the safety score may be based on one or more
`driving or operational characteristics.
`In some systems,
`the
`characteristics may include a speed factor 922, an acceleration (and/or
`deceleration) factor 924, and/or a braking factor 926… In FIG. 9, the
`safety score or rating may be adjusted or weighted by a function, such
`as the function 920 that comprises a combination of speed factors 922,
`acceleration factors 924, and braking factors 926, or may be based on
`a single factor that may a raw data element, calculated data element,
`and/or derived data element alone.
`
`
`
`
`
`9
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`

`

`The safety score alone is an indication of operational safety. When desired,
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`Case CBM2013-00009
`Patent 8,140,358
`
`
`
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`the safety score can be used to determine an effect on an insurance premium, as is
`
`shown in discount section 818 in FIG. 9. However, standing alone, as shown at
`
`918, a safety score does not reflect a corresponding insurance premium. Because
`
`the safety score alone does not necessarily reflect an insurance premium, it is
`
`submitted that construction of “rating factor” as “a calculated insurance risk value
`
`such as a safety score or a usage discount,” where the “insurance risk value would
`
`be a value that reflects an associated level of insurance risk and, therefore, also a
`
`corresponding insurance premium” is overly narrow. Patent Owner instead
`
`recommends construction of “rating factor” as “an insurance risk value such as a
`
`safety score or a usage discount” as is consistent with the plain and ordinary
`
`meaning of the term in context of the disclosure of the ‘358 patent.
`
`
`
`Lastly for clarification, the “rating factor” and other claimed subject matter
`
`of the ‘358 patent have priority to the filing date of U.S. Patent Application No.
`
`08/592,958 (the ‘958 application), filed January 29, 1996, which issued as U.S.
`
`Patent No. 5,797,134 (Ex. 2003, the ‘134 patent). The Board’s decision in the first
`
`‘358 petition appears to suggest that Patent Owner is not entitled to such an early
`
`priority claim. (See Ex. 2009, Decision (Institution of Covered Business Method
`
`Review) issued on February 12, 2013 for CBM 2012-00003.) Patent Owner
`
`reasserts herein that the claimed subject matter has priority to the ‘958 application,
`
`
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`10
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`but did not do so in its preliminary response for CBM 2012-00003 because Patent
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`Case CBM2013-00009
`Patent 8,140,358
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`Owner only had to show priority to a prior 2000 application in order to predate
`
`certain references in that proceeding.
`
`IV. THE PETITION RELIES ON ART THAT IS MISSING KEY
`LIMITATIONS AND IS NOT NEW, THEREBY FAILING TO
`SATISFY THE ELEVATED THRESHOLD STANDARD
`REQUIRING A SHOWING THAT IT IS MORE LIKELY THAN NOT
`THAT THE CHALLENGED CLAIM WILL BE FOUND INVALID
`
`Petitioner uses Kosaka as a primary reference in its alleged grounds.
`
`However, the Board has already determined that Kosaka is missing claim
`
`limitations in the ‘385 patent. (See Ex. 2005, Order (Denial of Grounds) issued on
`
`October 25, 2012 for CBM 2012-00003.) The other primary reference (RDSS)
`
`merely discloses basic GPS vehicle operations and thus does not disclose the
`
`missing subject matter.
`
`A. The Combination of Kosaka and RDSS Are Missing Key
`Limitations of the Claims of the ‘358 Patent
`
`
`
`Liberty Mutual’s proposed combination of Kosaka plus RDSS fails to satisfy
`
`all limitations of claim 1, the sole independent claim. As such, claim 1 and all
`
`dependent claims are patentable over Kosaka combined with RDSS.
`
`
`
`Claim 1 requires a division of labor between a vehicle and a remote server
`
`that was previously found by the Board to be absent in Kosaka. In this regard,
`
`claim 1 recites a server that is configured to process wirelessly transmitted selected
`
`vehicle data to generate a rating factor and further recites a database that is both
`
`
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`11
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`operatively linked to the server for storing the wirelessly transmitted selected
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`vehicle data and is “remote” from the wireless transmitter. The wirelessly received
`
`selected onboard vehicle data is collected and stored by an in-vehicle processor
`
`and memory that reside within a vehicle. This claimed division of labor between
`
`the vehicle and the server-side processing provides a number of potential benefits,
`
`including the ability to provide usage based insurance billing on any billing
`
`schedule desired by the insurer and allowing convenient access to driving safety
`
`data to an insured, as exemplified in the display of FIG. 9. (See, e.g., ‘358 patent,
`
`13:29-36 and 22:51-23:28.)
`
`1. Kosaka
`The Board has already determined that Kosaka is limited to vehicle side data
`
`
`
`processing and that Kosaka does not transmit any onboard vehicle data monitored
`
`by an in-vehicle monitoring device. In the first ‘358 petition, the Board issued a
`
`denial of 196 of the 422 grounds of unpatentability alleged by Petitioner based on
`
`missing disclosure in Kosaka. (See Ex. 2005, Order (Denial of Grounds) issued on
`
`October 25, 2012 for CBM 2012-00003.)
`
`
`
`In the order denying grounds, the Board found that “the only wireless data
`
`transmitter disclosed in Kosaka is that in the diver embodiment for sending a
`
`distress signal to an aid boat or a buoy when the evaluated data indicates an
`
`extremely hazardous condition. . . . Petitioner has not identified any disclosure, in
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`
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`12
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`Kosaka’s vehicle embodiment, that sensed vehicle data is wirelessly transmitted to
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`Case CBM2013-00009
`Patent 8,140,358
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`any component anywhere. Even in Kosaka’s diver embodiment, what is wirelessly
`
`transmitted is a distress signal and not sensed data.” (Id. at 11.) The Board further
`
`determined that in “Kosaka, the data sensing component and the risk evaluation
`
`component are both parts of the same device worn by the diver or positioned
`
`onboard the vehicle.” (Id. at 12.)
`
`RDSS
`
`2.
`Petitioner apparently recognizes the weakness of Kosaka and introduces
`
`
`
`RDSS in an attempt to cure the deficiency. In this regard, RDSS is cited as
`
`allegedly disclosing “a database operatively linked to the server to store the
`
`selected vehicle data transmitted by the wireless transmitter” and “the server is
`
`configured to process selected vehicle data that represents one or more aspects of
`
`operating the vehicle.” (Petition at 38, 41.) RDSS, however, discloses nothing at
`
`all about processing insurance information. Like many other references previously
`
`considered by the Office, it merely discloses GPS and vehicle communications
`
`operations.
`
`
`
`RDSS is primarily directed to the use of a GPS system to handle
`
`emergencies. RDSS does not describe any relation between the alleged selected
`
`vehicle data (i.e., “data containing position, remote sensor status, messages, or
`
`emergency information”) and a level of safety or an insurable risk in operating a
`
`
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`13
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`vehicle. Instead, transmitted data is used for tracking the location of vehicles,
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`performing maintenance diagnostics, and communicating with drivers and
`
`emergency personnel. Because the data usages described in RDSS are
`
`conventional and not at all “related to a level of safety or an insurable risk in
`
`operating a vehicle,” RDSS fails to disclose the claimed memory that stores such
`
`selected vehicle data.
`
`
`
`Further, and as Petitioner tacitly acknowledges, RDSS does not disclose the
`
`server being 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, as
`
`required by limitation (1f). Yet that selected vehicle data is recited in each of
`
`limitations (1c), (1d), (1e), and (1f).
`
`
`
`Additionally, RDSS does not teach or suggest a memory that stores selected
`
`vehicle data related to a level of safety or an insurable risk in operating a vehicle.
`
`RDSS discloses transmission of two types of data from a vehicle to GEOSTAR
`
`Central: select vehicle data and text messages of up to 100 characters in length.
`
`(Ex. 1004, RDSS at 22.) The Petition’s citations for the memory limitation of
`
`claim 1 are only directed to storage of the text messages. (Petition at 33-34.) But
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`the text messages are not vehicle data related to a level of safety or an insurable
`
`risk in operating a vehicle.
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`14
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`The Petitioner seemingly recognizes this lack of an explicit disclosure of the
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`claimed memory and argues through the Andrews Declaration that such a memory
`
`is inherent in RDSS. Paragraph 22 of the Andrews Declaration argues that storing
`
`data in memory has been an integral part of any data processing system since long
`
`before 1996, citing to Boehner. While this may or may not be true, RDSS does not
`
`disclose the claimed memory that stores selected vehicle data related to a level of
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`safety or an insurable risk in operating a vehicle. If the Petitioner wished to rely on
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`the teachings of Boehner in disclosing the claimed memory, then the Petitioner
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`should have included it as a basis for the Petition.
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`As it stands, neither Boehner nor the assertions of Andrews establish that the
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`claimed memory storing selected vehicle data related to a level of safety or an
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`insurable risk in operating a vehicle is necessarily present in RDSS, a requirement
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`of a finding of inherency.2 In fact, the Petition expressly describes a situation
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`2 “To establish inherency, the extrinsic evidence must make clear that the
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`missing descriptive matter is necessarily present in the thing described in the
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`reference, and that it would be so recognized by persons of ordinary skill.
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`Inherency, however, may not be established by probabilities or possibilities. The
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`mere fact that a certain thing may result from a given set of circumstances is not
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`where such a memory is not necessary, that is, where the remote sensor data is
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`sensed and transmitted at the time when the terminal is polled. (Petition at 34.)
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`Because a configuration where the RDSS sensor data is sensed and transmitted
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`upon polling without intermediate storage is a plausible configuration, the claimed
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`memory that stores selected vehicle data related to a level of safety or an insurable
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`risk in operating a vehicle is not necessarily present in RDSS and is, thus, not
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`inherently disclosed.
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`Additionally, RDSS fails to disclose a wireless transmitter configured to
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`transfer the selected vehicle data retained within the memory to a distributed
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`network and a server, as recited in limitation (1d). As noted above in the
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`discussion of limitation (1c), RDSS does not disclose the limitation (1c) memory
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`or the limitation (1c) selected vehicle data related to a level of safety or an
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`insurable risk in operating a vehicle. Lacking the claimed memory, it is impossible
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`for RDSS to disclose transferring the selected vehicle data retained within the
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`memory. Further, without disclosure of the selected vehicle data related to a level
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`of safety or an insurable risk in operating a vehicle, it is impossible for RDSS to
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`(continued…)
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`sufficient.” In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (internal citations
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`omitted); see also M.P.E.P. §2112(IV).
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`disclose a wireless transmitter configured to transfer the selected vehicle data, as
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`Patent 8,140,358
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`alleged by the Petition.
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`RDSS also lacks disclosure of the claimed database operatively linked to the
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`server to store the selected vehicle data transmitted by the wireless transmitter.
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`This lack of disclosure stems from the absence of the required selected vehicle data
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`related to a level of safety or an insurable risk in operating a vehicle.
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`The Combination of Kosaka and RDSS
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`3.
`RDSS does not make up for the deficiencies of Kosaka. For example,
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`Petitioner does not allege that RDSS teaches any of the claimed server side
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`processing required by claim 1, such as the server processing selected vehicle data
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`that represents one or more aspects of operating the vehicle with data that reflects
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`how the selected vehicle data affects a premium of an insurance policy, safety or
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`level of risk. The Board has already determined that in “Kosaka, the data sensing
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`component and the risk evaluation component are both parts of the same device
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`worn by the diver or positioned onboard the vehicle.” (Ex. 2005 at 12, emphasis
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`added.) Thus, Kosaka discloses no server side processing of onboard vehicle data
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`at all. And, because RDSS does not disclose this feature, Petitioner has failed to
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`sustain its burden of proof, and this proposed ground of rejection should be denied.
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`This defect flows throughout the remainder of the Petition’s attempted
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`claim-mapping. For example, the ‘358 patent claims require the server to generate
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`a rating factor based on the selected vehicle data stored in the database. But the
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`Patent 8,140,358
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`server side generated “rating factor” of claim 1 is not found in a server in the
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`petition’s proposed Kosaka/RDSS combination because that combination does not
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`teach or suggest server side establishment of a “rating factor.”
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`Potential advantages of server side processing of selected vehicle data as
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`claimed in the ‘358 claims include the ability to provide enhanced and improved
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`communication and analysis of the relevant acquired data. The invention of the
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`‘358 patent allows for adjustment to the cost of insurance attributable to changes in
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`operating behavior patterns to address problems with previous approaches that
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`used data to classify risk that was “not verified” and had “little relevance to
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`measuring risk.” (‘358 patent, 1:24-25.)
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`The Petitioner has misunderstood the reasons for dismissal of grounds of
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`rejection in CBM Ref. No. 2012-00003. Kosaka is missing substantially more than
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`just a wireless transmitter. The lack of the claimed wireless transmitter in Kosaka
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`illustrates that Kosaka does not perform the substantial server side processing
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`required by the ‘358 patent claims. With RDSS including no disclosure of server
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`side processing of selected vehicle data that represents one or more aspects of
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`operating the vehicle with data that reflects how the selected vehicle data affects a
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`premium of an insurance policy, safety or level of risk, the combination of Kosaka
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`and RDSS fails to render the claims of the ‘358 patent obvious.
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