Before Honorable JAMESON LEE, JONI Y. CHANG, and
`MICHAEL R. ZECHER, Administrative Patent Judges.
`
`
`
`PETITIONER’S REQUEST FOR REHEARING SEEKING CONDITIONAL
`RELIEF PURSUANT TO 37 C.F.R. § 42.71
`
`
`
`
`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
`
`—————————————
`
`
`
`MICHAEL R. ZECHER, Administrative Patent Judges.
`
`
`
`PETITIONER’S REQUEST FOR REHEARING SEEKING CONDITIONAL
`RELIEF PURSUANT TO 37 C.F.R. § 42.71
`
`
`
`
`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
`
`—————————————
`
`
`
`
`
`
`
`Pursuant to 37 C.F.R. § 42.71(d), Petitioner Liberty Mutual Insurance Company
`
`Case CBM2013–00009
`Patent 8,140,358
`
`(“Petitioner”) makes the following Request for Rehearing Seeking Conditional Relief
`
`(“Request”) in connection with the Final Written Decisions entered February 11, 2014,
`
`(Case CBM2013–00009, Paper 68; CBM2012-00003, Paper 78) by the Patent Trial and
`
`Appeal Board (“Board”) in Cases CBM2012-00003 and CBM2013-00009.
`
`On March 12, 2014, Progressive Casualty Insurance Co. (“Progressive”) filed
`
`Patent Owner’s Request for Rehearing Pursuant to 37 C.F.R. § 42.71 in this case.
`
`(Case CBM2013-00009, Paper 71.)
`
`In the event that this Board denies Progressive’s rehearing request in Case
`
`CBM2013-00009, Petitioner respectfully requests that the Board deny Petitioner’s
`
`rehearing requests concurrently for both CBM2012-00003 and CBM2013-00009. In
`
`the event that the Board grants rehearing in Case CBM2013-00009, Petitioner
`
`requests that the Board issue a single combined final decision for both CBM2012-
`
`00003 and CBM2013-00009, effective February 11, 2014.
`
`This Request seeks to address the potential de-linking of the two concurrent
`
`proceedings, for purposes of appellate review, created by Progressive’s Request for
`
`Rehearing in only CBM2013-00009. If the Board denies Progressive’s request for
`
`rehearing in CBM2013-00009 and also denies Petitioner’s requests for rehearing for
`
`both CBM2012-00003 and CBM2013-00009 (all effective at the same time), then the
`
`Board’s original intent that the CBMs proceed concurrently will be preserved. Thus,
`
`
`
`2
`
`
`
`
`appeals from the two CBM proceedings to the United States Court of Appeals for the
`
`Case CBM2013–00009
`Patent 8,140,358
`
`Federal Circuit will automatically proceed on the same timeline.
`
`The Board has clearly stated that both proceedings related to the ‘358 patent—
`
`this case and Case CBM2012–00003—were resolved by Final Written Decisions
`
`issued “concurrently.” (Case CBM2013–00009, Paper 68 at 2; Case CBM2012–00003,
`
`Paper 78 at 3.) As a consequence, neither decision was rendered before the other
`
`(and, inter alia, neither should be argued to have any preclusive effect on the other). In
`
`issuing these Final Written Decisions, the Board understandably misapprehended that
`
`Progressive, following the December 2, 2013 telephone conference with the Board
`
`and the Board’s December 4 Order (Case CBM2013–00009, Paper 64; Case
`
`CBM2012–00003, Paper 75), would take the position that the time of day each paper
`
`was uploaded to the Board’s electronic Patent Review Processing System (“PRPS”)
`
`could affect the Board’s stated “concurrent[]” resolution of these matters.
`
`Nonetheless, in this proceeding, Progressive claimed that because the Final Written
`
`Decision in CBM2012–00003 appeared to have been posted to PRPS slightly before
`
`the Final Written Decision in CBM2013–00009, the decisions were not entered
`
`concurrently. (Case CBM2013-00009, Paper 71 at 4-5.) As a consequence,
`
`Progressive claimed, the earlier decision in CBM2012–00003 mooted the issues
`
`decided in CBM2013-00009 and rendered that decision an advisory opinion
`
`unauthorized by statute as to claims 2-18. (Id. at 14–15.) Further, by filing the request
`
`
`
`3
`
`
`
`
`for rehearing in only one of the two proceedings, Progressive appears to have
`
`Case CBM2013–00009
`Patent 8,140,358
`
`undertaken to frustrate the Board’s clear intent that the matters be resolved together,
`
`with the apparent hope that the two cases would be de-linked for purposes of appeal
`
`to the United States Court of Appeals for the Federal Circuit.
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`Petitioner makes this request solely to preserve the current status, intended by
`
`the Board, that both proceedings be resolved at the same time. (Case CBM2013–
`
`00009, Paper 68 at 2, Paper 69 at 2; Case CBM2012-00003, Paper 78 at 3, Paper 79 at
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`2.) If the Board considers a request for rehearing in one case, it should
`
`simultaneously consider rehearing in the other, so that any new decisions can again be
`
`entered in both concurrently, in keeping with the Board’s stated intent and
`
`maintaining the synchronization of the case schedules.
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`In the alternative, Petitioner respectfully requests—again, only if the Board
`
`considers a request for rehearing in one case—that the Board reconsider the form in
`
`which it has rendered its Final Written Decisions in these two trials and, upon
`
`reconsideration, that the Board issue one combined final decision so as to maintain
`
`the status quo established in the Board’s already-rendered Final Written Decisions, in
`
`which neither decision was entered nor intended to be entered before the other. If
`
`Progressive’s anticipated request for reconsideration were to succeed in de-linking the
`
`two proceedings, then the Board’s stated intent could be frustrated. If the technical
`
`impossibility of simultaneous upload to PRPS were somehow found to make
`
`
`
`4
`
`
`
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`concurrent entry of the final decisions legally impossible, Petitioner would ask that the
`
`Case CBM2013–00009
`Patent 8,140,358
`
`Board reconsider the form in which it rendered its Final Written Decisions and, upon
`
`reconsideration, consolidate the two actions and/or enter a combined single Final
`
`Written Decision, and thereby preserve its stated intent to resolve both at once.
`
`CONCLUSION
`
`
`
`Petitioner requests: (1) that the Board consider and resolve the requests for
`
`rehearing concurrently for both CBM2012-00003 and CBM2013-00009, and/or (2) in
`
`the alternative, that if the Board rehears CBM2013-00009 that the Board also rehear
`
`CBM2012-00003 and issue one combined Final Written Decision for both
`
`CBM2012-00003 and CBM2013-00009.
`
`
`
`
`
`5
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`
`
`
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`
`
`
`
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`
`
`Respectfully submitted,
`
`
`ROPES & GRAY LLP
`
`Case CBM2013–00009
`Patent 8,140,358
`
`
`
`
`
`
`By /J. Steven Baughman/
`J. Steven Baughman, Lead Counsel
`James R. Myers (pro hac vice)
`Nicole M. Jantzi
`ROPES & GRAY LLP
`700 12th St. NW, Suite 900
`Washington, DC 20005
`Steven.baughman@ropesgray.com
`James.myers@ropesgray.com
`Nicole.jantzi@ropesgray.com
`
`Attorneys for Petitioner Liberty Mutual Insurance Co.
`
`Mailing address for all PTAB correspondence:
`ROPES & GRAY LLP
`IPRM – Floor 43
`Prudential Tower
`800 Boylston Street
`Boston, Massachusetts 02199-3600
`
`6
`
`March 13, 2014
`
`
`
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`Case CBM2013–00009
`Patent 8,140,358
`
`It
`
`is certified
`
`that a copy of PETITIONER’S REQUEST FOR
`
`
`
`
`
`REHEARING SEEKING CONDITIONAL RELIEF PURSUANT TO 37
`
`C.F.R. § 42.71 has been served in its entirety on the Patent Owner as provided in 37
`
`CFR § 42.6.
`
`The copy has been served on March 13, 2013 by causing the aforementioned
`
`document to be electronically mailed to:
`
`Calvin P. Griffith, at: cpgriffith@jonesday.com
`
`James L. Wamsley, III at: jlwamsleyiii@jonesday.com
`
`John V. Biernacki at: jvbiernacki@jonesday.com
`
`pursuant to the Petitioner and Patent Owner’s agreement.
`
`
` /s/ Jordan M. Rossen
`Jordan M. Rossen
`
`
`ROPES & GRAY LLP
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