Case CBM2013-00009
`Patent 8,140,358
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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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 CBM2013-00009
`Patent 8,140,358
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`PATENT OWNER’S REQUEST FOR REHEARING
`PURSUANT TO 37 C.F.R. § 42.71
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`TABLE OF CONTENTS
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`Case CBM2013-00009
`Patent 8,140,358
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`B.
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`B.
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`C.
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`I.
`II.
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`V.
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`INTRODUCTION ...................................................................................................... 1
`FACTUAL BACKGROUND ................................................................................... 1
`A.
`Liberty Filed Two Petitions Challenging The Same ’358 Patent
`Claims, And The Board Declined To Join The Proceedings ..................... 1
`The Board Entered Final Decisions In Both CBM2012-00003
`And CBM2013-00009 ...................................................................................... 4
`III. THIS REQUEST FOR REHEARING IS PROPER ............................................ 6
`IV. THE BOARD MISAPPREHENDED OR OVERLOOKED THAT
`POSTING TO PRPS ENTERS A FINAL WRITTEN DECISION ................ 7
`THE BOARD MISAPPREHENDED OR OVERLOOKED THE
`APPLICATION OF 35 U.S.C. § 325(e)(1) .............................................................. 9
`A.
`35 U.S.C. § 325(e)(1) Prohibited Maintaining This Proceeding
`Once The Board Entered Its Final Decision In CBM2012-00003 ........... 9
`35 U.S.C. § 325(e)(1)’s Estoppel Attached As Soon As The Board
`Entered Its Final Decision In CBM2012-00003 ........................................12
`The Board Misapprehended Or Overlooked The Effect Of
`Section 325(e)(1) On Its Authority To Enter A Final Decision In
`CBM2013-00009 After All The Claims In The ’358 Patent Were
`Adjudicated In The Final Decision In CBM2012-00003 .........................13
`VI. THE BOARD MISAPPREHENDED OR OVERLOOKED THE
`PROHIBITION ON ISSUING AN ADVISORY OPINION .........................15
`VII. CONCLUSION..........................................................................................................16
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`TABLE OF AUTHORITIES
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`CASES
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`Case CBM2013-00009
`Patent 8,140,358
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`Page
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`Breuer v. Jim’s Concrete of Brevard, Inc.,
`538 U.S. 691 (2003) ........................................................................................................... 11
`Ex parte Automotive Techs. Int’l,
`Appeal No. 2013-008246, Decision on Appeal (PTAB, Jan. 15, 2014) .................... 15
`Ex parte Talbott,
`Appeal No. 96-0811, Decision on Appeal, Paper No. 26 (BPAI, Feb. 17,
`1999) .................................................................................................................................... 15
`Function Media, L.L.C. v. Kappos,
`108 U.S.P.Q.2d 1577, 2013 U.S. App. LEXIS 4616 (Fed. Cir. 2013) ....................... 11
`Smallwood v. Gallardo,
`275 U.S. 56 (1927) ...................................................................................................... 10, 11
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`STATUTES
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`35 U.S.C. § 317(b).................................................................................................................... 11
`35 U.S.C. § 325(e) ............................................................................................................ passim
`35 U.S.C. § 327(a) .................................................................................................................... 13
`Pub. L. No. 112-29, § 18(a)(1)(A), 125 Stat. 284, 329 (2011) ........................................... 10
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`OTHER AUTHORITIES
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`37 C.F.R. § 42.2 .......................................................................................................................... 8
`37 C.F.R. § 42.71(d) .............................................................................................................. 1, 6
`37 C.F.R. § 42.73(d)(1) ........................................................................................... 3, 10, 12, 13
`77 Fed. Reg. 48612 (Aug. 14, 2012) ...................................................................................... 12
`Fed. R. Civ. P. 58(c) .................................................................................................................. 8
`Fed. R. Evid. 201 ....................................................................................................................... 5
`H.R. 1249, 112th Cong. (June 1, 2011) .................................................................................. 14
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`-ii-
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`I.
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`INTRODUCTION
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`Case CBM2013-00009
`Patent 8,140,358
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`Pursuant to 37 C.F.R. § 42.71(d), Patent Owner Progressive Casualty Insurance
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`Co. (“Progressive”) hereby submits this Request for Rehearing of the final written
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`decision (the “Final Decision”) entered February 11, 2014 (Paper 68) by the Patent
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`Trial and Appeal Board (“Board”). Progressive respectfully submits that the Board
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`misapprehended or overlooked the applicable law in entering its decision in
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`CBM2013-00009 cancelling claims 1-20 of U.S. Pat. No. 8,140,358 (“the ’358 Patent”)
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`because: (1) 35 U.S.C. § 325(e)(1) prohibits the Board from allowing CBM2013-00009
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`to be maintained by Petitioner once the Board issued its Final Decision in CBM2012-
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`00003; and (2) the CBM2013-00009 Final Decision constitutes an improper advisory
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`opinion.
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`II.
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`FACTUAL BACKGROUND
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`A.
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`Liberty Filed Two Petitions Challenging The Same ’358 Patent
`Claims, And The Board Declined To Join The Proceedings
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`On September 16, 2012, Liberty filed the CBM2012-00003 Petition to institute
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`Covered Business Method Review of all 20 claims in the ’358 Patent. (CBM2012-
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`00003, Paper No. 1.) On November 19, 2012, Liberty filed a second Petition on
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`those same claims. (CBM2013-00009, Paper No. 1.) All the references that Liberty
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`relied on therein had been asserted in CBM2012-00003, except for the article titled
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`“Understanding Radio Determination Satellite Service” (“RDSS article”) describing
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`the Geostar RDSS system. (CBM2013-00009, Ex. 1004.) Liberty was nonetheless
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`unquestionably aware of Exhibit 1004 when it filed its CBM2012-00003 Petition since
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`the cover declaration authenticating the article was signed September 14, 2012 (two
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`days prior to the filing date of the CBM2012-00003 Petition), and it was received by
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`fax the very next day. (CBM2013-00009, Ex. 1004, at 1.) Liberty’s CBM2012-00003
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`Petition had relied on the Geostar RDSS system as a basis for unpatentability, and the
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`Andrews declaration it submitted in support also discussed RDSS. (CBM2012-00003,
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`Paper No. 1, at 55-56; Id. Ex. 1025, at ¶ 26.)
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`The Board itself was well aware of this overlap of references in CBM2012-
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`00003 and CBM2013-00009. It characterized the two proceedings as “involv[ing] the
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`same parties, the same prior art references, and the same patent.” (CBM2013-00009,
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`Paper 16, at 2.) Indeed, even before the Board instituted CBM2013-00009, Liberty
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`“proposed joining [CBM2012-00003] with any covered business method patent
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`review to be instituted on CBM2013-00009[.]” (CBM2012-00003, Paper No. 19, at 2.)
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`The Board was also aware that the timing of its Final Decisions in CBM2012-
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`00003 and CBM2013-00009 could have substantive implications. On December 2,
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`2013, Liberty initiated a conference call requesting joinder of these two proceedings.
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`(CBM2013-00009, Paper No. 64.) It requested joinder because it was concerned
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`about the possible application of 35 U.S.C. § 325(e) and 37 C.F.R. § 42.73(d)(1). (Id.
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`at 2.) Progressive requested briefing on these issues and argued that “nothing should
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`be created or engineered to avoid whatever consequences that naturally flow from the
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`Board’s issuance of the final written decisions in the two cases[.]” (Id.) The Board
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`agreed with Progressive that “nothing unusual should be arranged to avoid a potential
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`issue that hinges on when the Board renders final written decisions in CBM2012-
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`00003 and CBM2013-00009.” (Id.) It also ordered that Liberty was “not authorized
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`to file a motion to join” the proceedings or “to seek that a single joint decision be
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`issued for CBM2012-00003 and CBM2013-00009[.]” (Id. at 3.) The Board held that
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`“[w]hatever is the consequence of the timing of the decisions, it is.” (Id. at 2.)
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`B.
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`The Board Entered Final Decisions In Both CBM2012-00003 And
`CBM2013-00009
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`On Febuary 11, 2014, the Board entered Final Decisions in CBM2012-00003
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`and CBM2013-00009. The Board upheld claims 1, 19, and 20 and held claims 2-18 of
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`the ’358 patent unpatentable in its CBM2012-00003 Final Decision, but then held
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`claims 1-20 of the ’358 patent unpatentable in its CBM2013-00009 Final Decision. In
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`each of these decisions, the Board stated that they were being entered “concurrently”
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`with one another. (CBM2012-00003, Paper 78 at 3; CBM2013-00009, Paper 68 at 2.)
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`On February 19, 2014, Progressive initiated a conference call with the Board
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`requesting that it confirm that the Final Decision in CBM2012-00003 was posted on
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`the PRPS System before the Final Decision in CBM2013-00009. In response to
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`Progressive’s request, the Board ruled that “from the Board’s perspective, the two
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`final written decisions were entered at the same time, regardless of the actual time of
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`day each paper was uploaded by the Board’s administrative staff into PRPS.”
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`(CBM2013-00009, Paper No. 69, at 2.)
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`As discussed at Section IV infra, Progressive submits that the Board has
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`misapprehended or overlooked that its decisions are entered at the times they are
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`posted to the PRPS. As such, Progressive is proffering new evidence identifying the
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`times at which its Final Written Decisions were posted to the PRPS in these two
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`cases. Since no such evidence existed until the Board issued the decisions, since the
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`evidence is not otherwise found in the record, and since the Board indicated in Paper
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`69 at 2 that “it cannot be of help in providing further information in that regard[,]”
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`good cause exists to admit Progressive’s evidence indicating the actual times when the
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`Board’s Final Decisions were posted and accessible to the public on the PRPS. This
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`evidence regarding the timing of the decisions is set forth in the accompanying
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`Declaration of James L. Wamsley submitted herewith as Exhibit 2036. As indicated
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`therein, the PRPS is the Board’s e-filing and case management system. (See Ex. 2036,
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`Wamsley Decl. at ¶ 3.) Timestamp metadata associated with the relevant PRPS
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`webpages reveals that the Final Decision in CBM2012-00003 was posted on PRPS at
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`10:50:25 AM EST on February 11, 2014, while the Final Decision in CBM2013-00009
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`was posted at 12:04:12 PM EST on February 11, 2014.1 (See id. at ¶¶ 4-6.) Since
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`PRPS is an official public record, the Board should alternatively take judicial notice of
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`these PRPS posting times. See Fed. R. Evid. 201. Finally, automated email
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`notifications from PRPS regarding the Final Decisions were received at 10:50 AM
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`EST for CBM2012-00003 and 12:04 PM EST for CBM2013-00009. (Ex. 2036,
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`Wamsley Decl. at ¶ 7 and Attachments C and D, respectively.)
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`Under Progressive’s legal argument herein, this evidence is relevant because it
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`shows that the two Final Decisions were not entered at the same time and that the
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`Final Decision in CBM2012-00003 was entered first. Because the proffered new
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`evidence is relevant and good cause exists for it to be admitted at this time,
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`Progressive respectfully requests its admission by the Board.
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`III. THIS REQUEST FOR REHEARING IS PROPER
`Under the Board’s rules, a request for rehearing may be filed where the party
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`challenging the decision can show that the Board misapprehended or overlooked
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`matters in its final written decision. 37 C.F.R. § 42.71(d). Progressive demonstrates
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`herein that the Board misapprehended or overlooked (1) when its final written
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`1 A paper titled “Final Written Decision” was posted at 10:56:31 AM EST on
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`the PRPS docket for CBM2013-00009, but was expunged by the Board. (See Wamsley
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`Decl. at ¶ 8.)
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`decisions are “entered,” (2) the application of Section 325(e)(1) to its decisions here,
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`and (3) that it lacks the authority to render advisory opinions on patentability.
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`A rehearing request should also identify where each matter was previously
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`addressed. See 37 C.F.R. § 42.71(d). However, in this case the Board foreclosed
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`Progressive from addressing these matters previously. The matters raised by
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`Progressive in this Request relate to the issues that were discussed in the December 2,
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`2013 conference call in this case. At that time, Progressive indicated that “nothing
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`should be created or engineered to avoid whatever consequences that naturally flow
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`from the Board’s issuance of the final written decisions in the two cases, and that at
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`the very least, there has to be substantive briefing on the issue.” (Paper 64 at 2.) In
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`its Order following that conference, the Board agreed with Progressive, and ruled that
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`(Id.):
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`nothing unusual should be arranged to avoid a potential issue that hinges on
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`when the Board renders final written decisions in CBM2012-00003 and
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`CBM2013-00009. Whatever is the consequence of the timing of the decisions,
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`it is. The Board should not act in favor of one party or another.
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`In entering its Final Decisions, the Board did not adhere to this ruling. Rather
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`than accepting “[w]hatever is the consequence of the timing of the decisions,” it
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`stated in its Final Decisions that they were entered concurrently, even though the
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`evidence – obtained from the Board’s own PRPS System – does not substantiate that
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`conclusion. And while the Board held in Paper 64 that it “should not act in favor of
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`one party or another[,]” its ruling that its Final Decisions were entered at the same
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`time favors the Petitioner in this trial proceeding.
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`Progressive has met the requirements for a rehearing request and respectfully
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`requests that this Request be granted, for the reasons explained below.
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`IV. THE BOARD MISAPPREHENDED OR OVERLOOKED THAT
`POSTING TO PRPS ENTERS A FINAL WRITTEN DECISION
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`The Board misapprehended or overlooked that entry of a final written decision
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`occurs when it is posted to the PRPS. PRPS is the Board’s case management and
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`electronic filing system, which the Board uses to docket papers in each post-grant
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`review. When an order or decision is posted to the PRPS, it becomes available and an
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`email notification automatically sent to the parties. (See Ex. 2036, Wamsley Decl. ¶ 3.)
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`The Board entered the Final Decisions in CBM2012-00003 and CBM2013-
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`00009 at the times when it posted them to the PRPS. This is confirmed by the
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`automated email notifications the PRPS generated and sent out when the decisions
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`were posted on the PRPS. (See id. at ¶ 7, Attachments C and D.)
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`The Board’s action in posting its decisions to the PRPS is analogous to the
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`entry of a final judgment in a civil action in U.S. District Court. Indeed, the Board’s
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`rules define a “judgment” as a final written decision by the Board. 37 C.F.R. § 42.2.
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`Under the Federal Rules, a civil judgment is “entered” when it is “entered in the civil
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`docket.” Fed. R. Civ. P. 58(c).
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`The Board stated that its Final Decisions in CBM2012-00003 and CBM2013-
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`00009 were “entered concurrently,” and it repeated that characterization when it
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`denied Progressive any further information as to when decisions were posted to the
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`PRPS. (See supra at Section II.B.) However, the Board’s characterization of the
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`decisions as “entered concurrently” does not make it so. A final written decision has
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`not been “entered” when it has not been disclosed by the Board. Moreover, the
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`statute attaches legal significance to entry of a final written decision, since it creates an
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`estoppel that prevents maintaining another proceeding. (See infra at Section V.) The
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`substantive rights provided under Section 325(e)(1) should not be made illusory.
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`There is no evidence to support the Board’s finding that its Final Decisions
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`were “entered concurrently” in CBM2012-00003 and CBM2013-00009. To the
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`contrary, the evidence shows that they were entered in sequence. (See supra at Section
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`II.B.) As such, the Board misapprehended or overlooked that its Final Decisions are
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`entered when they are posted to the PRPS and incorrectly found that they were
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`entered concurrently.
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`V. THE BOARD MISAPPREHENDED OR OVERLOOKED THE
`APPLICATION OF 35 U.S.C. § 325(e)(1)
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`The Board misapprehended or overlooked Section 325(e)(1) when – after
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`entering its Final Decision in CBM2012-00003 cancelling claims 2-18 and not
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`cancelling claims 1, 19, and 20 of the ’358 patent – it allowed CBM2013-00009 to be
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`maintained and then entered a Final Decision in that proceeding again adjudicating
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`the patentability of claims 1-20. As discussed below, the estoppel of Section 325(e)(1)
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`attached as soon as the Board entered its Final Decision in CBM2012-00003, and the
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`Board was then without authority to enter a Final Decision in CBM2013-00009.
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`A.
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`35 U.S.C. § 325(e)(1) Prohibited Maintaining This Proceeding
`Once The Board Entered Its Final Decision In CBM2012-00003
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`Section 325(e)(1) prohibits a petitioner from maintaining a post-grant review of
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`any claims on a ground that it could have raised in a proceeding in which a final
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`written decision has been entered by the Board:
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`The petitioner in a post-grant review of a claim in a patent under this chapter
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`that results in a final written decision under section 328(a), or the real party in
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`interest or privy of the petitioner, may not request or maintain a proceeding
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`before the Office with respect to that claim on any ground that the petitioner
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`raised or reasonably could have raised during that post-grant review.
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`35 U.S.C. § 325(e)(1) (emphasis added); see also 37 C.F.R. § 42.73(d)(1); Pub. L. No.
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`112-29, § 18(a)(1)(A), 125 Stat. 284, 329 (2011).
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`CBM2013-00009 was “maintained” in violation of the prohibition set forth in
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`Section 325(e)(1) once the Final Decision was entered first in CBM2012-00003, since
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`– as stated by the Board – both petitions addressed “the same prior art references,”
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`and the grounds asserted in CBM2013-00009 unquestionably could have been raised
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`in CBM2012-00003. (See supra at Section II.A.) The estoppel in Section 325(e)(1)
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`precludes the Petitioner from continuing a second proceeding, at any stage and in any
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`manner. Section 325(e) applies here even though briefing and oral argument had been
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`completed and the parties were awaiting the Board’s decision. As Justice Holmes
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`explained in a similar context, “[t]o maintain a suit is to uphold, continue on foot and
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`keep from collapse a suit already begun.” Smallwood v. Gallardo, 275 U.S. 56, 61 (1927).
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`In Smallwood, Justice Holmes was addressing the question of whether a plaintiff
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`was maintaining a suit while waiting for the Supreme Court to decide whether to grant
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`a writ of certiorari and hear the appeal. Id. at 60-61. The plaintiff had brought a suit
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`to restrain the collection of taxes, but after the District Court had ruled and the Court
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`of Appeals had affirmed, Congress changed the law providing that such a suit may not
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`be “maintained.” Id. In opining that to “maintain a suit” broadly included
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`“continu[ing] on,” Justice Holmes explained that the fact that the case was on appeal
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`was of no moment because “[w]hen the root is cut the branches fall.” Id. at 61-62
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`(citation omitted). As such, the Supreme Court held that the suit had to be dismissed
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`for lack of jurisdiction. Id. The Supreme Court more recently relied on this same
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`construction of “maintain” in Breuer v. Jim’s Concrete of Brevard, Inc., 538 U.S. 691 (2003).
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`In an unpublished decision, the Federal Circuit addressed the application of the
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`estoppel provision of the previous inter partes reexamination statute, 35 U.S.C.
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`§ 317(b), and its effect on the Patent Office’s ability to maintain a reexamination.
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`Function Media, L.L.C. v. Kappos, 108 U.S.P.Q. 2d 1577, 2013 U.S. App. LEXIS 4616
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`(Fed. Cir. 2013). The patentee had filed a petition to dismiss the reexamination of
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`certain claims in light of the prohibition on maintaining the reexamination following a
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`“final decision” in a co-pending civil action. 2013 U.S. App. LEXIS 4616, at *5. The
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`Patent Office denied the petition and held that the claims were invalid. Id., at *6-7.
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`The Federal Circuit vacated the Patent Office’s patentability determination, explaining
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`that “[t]here remains no argument for maintaining these claims in the inter partes
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`reexamination in light of the clear preclusion . . . . It would be improper for us to
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`address the merits of the Board’s findings that claims 52, 63, 90, and 231 of the ’025
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`patent are not patentable.” Id. at 7. That same rationale applies equally here.
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`B.
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`35 U.S.C. § 325(e)(1)’s Estoppel Attached As Soon As The Board
`Entered Its Final Decision In CBM2012-00003
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`The prohibition on maintaining this proceeding became effective as soon as
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`there was a “final written decision under section 328(a).” 35 U.S.C. § 325(e)(1); see also
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`37 C.F.R. § 42.73(d)(1) (estoppel applies when petitioner “has obtained a final written
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`decision on patentability”). As explained in the Federal Register, the estoppel attaches
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`once the Board enters its decision: “35 U.S.C. § 325(e)(1)[] provide[s] for estoppel in
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`proceedings before the Office where a final written decision was entered[.]” 77 Fed.
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`Reg. 48612, 48625 (Aug. 14, 2012).
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`The fact that the Board entered the Final Decision in CBM2012-00003 one
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`hour and fourteen minutes before it entered its Final Decision in CBM2013-00009
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`does not prevent application of the estoppel in Section 325(e)(1). Once the Board has
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`entered a final written decision on one or more patent claims, it cannot enter a
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`subsequent decision on those same claims at the behest of the same petitioner on
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`grounds it could have asserted in the earlier-filed Petition. Section 325(e)(1) does not
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`distinguish among cases or create an exception from the estoppel based on how long
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`the second proceeding is “maintained” after a final written decision was entered in the
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`first post grant review proceeding. Section 325(e)(1) would apply here whether
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`CBM2013-00009 was maintained for 50 days or 50 seconds following the Board’s
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`CBM2012-00003 Final Decision. Any other interpretation of the statute would make
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`application of the estoppel provision wholly arbitrary, since its application would then
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`depend on the relative timing of the Board’s decisions. Surely Congress did not
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`intend that the substantive estoppel it established in Section 325(e)(1) to depend on
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`the procedural happenstance of how much time elapsed between entry of final
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`decisions. Therefore, the CBM2013-00009 proceeding was “maintained” in violation
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`of Section 325(e)(1) as soon as the Board entered its Final Decision in CBM2012-
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`00003. 35 U.S.C. § 325(e)(1); 37 C.F.R. § 42.73(d)(1).
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`C. The Board Misapprehended Or Overlooked The Effect Of Section
`325(e)(1) On Its Authority To Enter A Final Decision In CBM2013-
`00009 After All The Claims In The ’358 Patent Were Adjudicated
`In The Final Decision In CBM2012-00003
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`As explained above, Section 325(e)(1) estops a petitioner from maintaining
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`another proceeding following the entry of a final written decision on the same patent
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`claims. As a result, the Board lacks authority to maintain a proceeding in which the
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`estoppel has attached. Any other interpretation would nullify the statute.
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`Where Congress intended for the Board to have authority to decide issues even
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`though the petitioner was no longer an interested party, it set forth that authority
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`expressly in the statute. 35 U.S.C. § 327(a) applies to the situation in which the
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`petitioner and patentee have settled the dispute as to patentability, but the Board has
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`already “decided the merits of the proceeding.” There, the Board has the authority to
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`“proceed to a final written decision” – even though “no petitioner remains in the
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`post-grant review” – and “no estoppel under section 325(e) shall attach to the
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`petitioner.” 35 U.S.C. § 327(a). By contrast, Congress did not provide the Board any
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`similar authority to issue a second final written decision once an estoppel attaches
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`under Section 325(e)(1). The statute should not be construed implicitly to provide the
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`Board with authority that Congress granted explicitly only in the settlement context.
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`Moreover, the legislative history makes clear that Section 325(e)(1) is intended
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`to prevent multiple challenges to a patent. When the House addressed H.R. 1249,
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`which contained almost identical language to what ultimately was enacted in Section
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`325(e)(1), the legislative record reflected the intent of the legislation to “preclude[]
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`[petitioners] from improperly mounting multiple challenges to a patent” via the post
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`grant review process. H.R. 1249, 112th Cong. (June 1, 2011). It further made clear
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`that “administrative attacks on the validity of a patent” are “not to be used as tools for
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`harassment.” (Id.) And, allowing such multiple attacks “would frustrate the purpose”
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`of the legislation as “providing quick and cost effective alternatives to litigation.” (Id.)
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`The Board misapprehended or overlooked the statutory requirements
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`Patent 8,140,358
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`applicable to CBM post-grant reviews and the clear legislative history when it entered
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`a Final Decision on claims 1-20 in CBM2013-00009 after it had entered a final written
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`decision in CBM2012-00003 on those same claims. The Board lacked the authority to
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`enter such a final written decision in CBM2013-00009 under Section 325(e)(1), and it
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`should vacate that decision and dismiss that proceeding.
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`VI. THE BOARD MISAPPREHENDED OR OVERLOOKED THE
`PROHIBITION ON ISSUING AN ADVISORY OPINION
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`The Board misapprehended or overlooked that its Final Decision in CBM2012-
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`00003 affected its ability to render a patentability determination in CBM2013-00009.
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`Since the Board was without authority to enter the Final Decision in CBM2013-00009
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`(see supra at Section V), that decision constitutes a prohibited advisory opinion:
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`[W]e have no authority under the statute (Title 35) or the code of federal
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`regulations (Title 37) to render advisory opinions on the patentability of
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`inventions.
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`Ex parte Talbott, Appeal No. 96-0811, Decision on Appeal, Paper No. 26, at 4-5
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`(BPAI, Feb. 17, 1999) (emphasis added). Moreover, the Board ruled that claims 2-18
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`were unpatentable in the CBM2012-00003 Final Decision, so its decision to again
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`cancel them in CBM2013-00009 is, a fortiori, an improper advisory opinion because
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`they had already been found unpatentable in CBM2012-00003. See id.; see also Ex parte
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`Automotive Techs. Int’l, Appeal No. 2013-008246, Decision on Appeal, at 8 (PTAB, Jan.
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`Patent 8,140,358
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`15, 2014) (explaining that arguments “relating to cancelled claims [] are moot”).
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`Congress was presumably aware of the Board’s precedent foreclosing it from
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`issuing advisory opinions. Nowhere in the statute or its legislative history did
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`Congress indicate any intent to abrogate this longstanding doctrine. Nor can the
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`statute be read as authorizing the Board to now issue advisory opinions and rule on
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`moot issues or for the Federal Circuit to take up appeals of such advisory opinions.
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`The Board was aware that the timing of its Final Decisions could have
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`implications. (CBM2013-00009, Paper No. 64.) The consequence of entering its
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`Final Decision first in CBM2012-00003 was that it deprived the Board of authority to
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`enter the Final Decision in CBM2013-00009, and mooted the question as to
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`patentability of claims 2-18 in CBM2013-00009 because they were cancelled in
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`CBM2012-00003. The Board misapprehended or overlooked the prohibition on
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`issuing advisory opinions and adjudicating moot patentability issues, and its Final
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`Decision in CBM2013-00009 constitutes an impermissible advisory opinion, which it
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`lacked authority to enter and should vacate, and dismiss the proceeding.
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`VII. CONCLUSION
`For all of the above reasons, Progressive respectfully requests that the Board
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`grant its Request for Rehearing, vacate its CBM2013-00009 Final Decision cancelling
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`claims 1-20 of the ’358 patent, and dismiss CBM2013-00009.
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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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`By:
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`March 12, 2014
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`Case CBM2013-00009
`Patent 8,140,358
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`CERTIFICATE OF SERVICE
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`I certify that a copy of the foregoing PATENT OWNER’S REQUEST FOR
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`REHEARING PURSUANT TO 37 C.F.R. § 42.71 was served on March 12, 2014 by
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`causing it to be sent by email to counsel for 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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`/s/ John V. Biernacki
`John V. Biernacki
`Registration No. 40,511
`JONES DAY
`North Point
`901 Lakeside Avenue
`Cleveland, Ohio 44114-1190
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`Attorney For Patent Owner
`Progressive Casualty Insurance Co.
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`CLI-2191163