UNITED STATES PATENT AND TRADEMARK OFFICE
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________
`
`LIBERTY MUTUAL INSURANCE CO.
`Petitioner
`
`v.
`
`PROGRESSIVE CASUALTY INSURANCE CO.
`Patent Owner
`______________
`
`Case CBM2013-00009
`Patent 8,140,358
`______________
`
`Before the Honorable JAMESON LEE, JONI Y. CHANG, and MICHAEL R.
`ZECHER, Administrative Patent Judges.
`
`PETITIONER LIBERTY MUTUAL INSURANCE CO.’S OPPOSITION TO
`PATENT OWNER’S REQUEST FOR REHEARING PURSUANT TO 37
`C.F.R. § 42.71
`
`
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________
`
`LIBERTY MUTUAL INSURANCE CO.
`Petitioner
`
`v.
`
`PROGRESSIVE CASUALTY INSURANCE CO.
`Patent Owner
`______________
`
`Case CBM2013-00009
`Patent 8,140,358
`______________
`
`Before the Honorable JAMESON LEE, JONI Y. CHANG, and MICHAEL R.
`ZECHER, Administrative Patent Judges.
`
`PETITIONER LIBERTY MUTUAL INSURANCE CO.’S OPPOSITION TO
`PATENT OWNER’S REQUEST FOR REHEARING PURSUANT TO 37
`C.F.R. § 42.71
`
`
`
`Case CBM2013-00009
`Patent 8,140,358
`Pursuant to the Board’s March 26, 2014 Order (Paper 75), Petitioner
`
`respectfully opposes Patent Owner’s Request for Rehearing (“Req.”, Paper 71), which
`
`should be denied because it is improper, untimely, and substantively incorrect.
`
`Progressive’s Request is improper because it relies on facts and “new evidence”
`
`(including unauthorized Exhibit 2036, Req. at 4-5) from after the Board’s Final
`
`Written Decision, which the Board could not have considered in making its decision.
`
`Under 37 C.F.R. § 42.71(d), a party “must specifically identify all matters the party
`
`believes the Board misapprehended or overlooked, and the place where each matter
`
`was previously addressed in a motion, an opposition, or a reply.” While Progressive’s
`
`Request for Rehearing is ostensibly a request for the Board to reconsider one of its
`
`Final Written Decisions, Progressive’s Request rests on the time Final Written
`
`Decisions were uploaded to PRPS by a paralegal after the Board completed the Final
`
`Written Decisions and could not be something the Board misapprehended or
`
`overlooked in issuing those decisions. Because Progressive is attempting to rely on
`
`evidence from after the decisions, its Request for Rehearing is improper.
`
`Indeed, Progressive’s Request itself reveals itself to be an untimely request to
`
`rehear the Board’s decision in its February 20, 2014 Order that “the two final written
`
`decisions [in CBM2012-00003 and CBM2013-00009] were entered at the same time.”
`
`Paper 69 at 2. To begin, that determination was correct, regardless of the actual time
`
`of day each paper was uploaded by the Board’s administrative staff. Moreover, to the
`
`extent Progressive takes issue with that determination in the February 20 Order, e.g.,
`
`
`
`1
`
`
`
`Case CBM2013-00009
`Patent 8,140,358
`Req. at 3-4 (quoting the February 20 Order and then immediately stating that “the
`
`Board has misapprehended or overlooked that its decisions are entered at the times
`
`they are posted to the PRPS”), any rehearing request directed to the substance of that
`
`Order was required to be filed by March 6, 2014. 37 U.S.C. § 42.71(d)(1). Because
`
`the Request was filed on March 12, 2014, it was untimely and should be denied for
`
`this additional reason.
`
`Finally, even if Progressive’s timing argument were preserved and correct,
`
`Progressive’s Request should still be denied. Progressive’s whole argument is
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`premised on 35 U.S.C. § 325(e), which states in relevant part that “petitioner . . . may
`
`not request or maintain a proceeding before the Office with respect to a claim on any
`
`ground that the petitioner raised or reasonably could have raised during that post-
`
`grant review.” But Progressive effectively reads the “petitioner” qualification entirely
`
`out of this provision, while misconstruing what it means to “maintain a proceeding.”
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`To begin, any prohibition against maintaining a proceeding falls only on a petitioner; it
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`does not preclude the Board from completing a proceeding by issuing a Final Written
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`Decision. The record of this proceeding closed on October 15, 2013 at the end of the
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`combined oral hearing for this Case and Case CBM2013-00003. Thereafter,
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`Petitioner did nothing to maintain this proceeding, and certainly did nothing to
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`maintain it during any time elapsing between the moment the CBM2012-00003 Final
`
`Written Decision was posted by a Board paralegal to PRPS and the moment the Final
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`Written Decision in this proceeding was posted by a Board paralegal to PRPS.
`
`
`
`2
`
`
`
`Case CBM2013-00009
`Patent 8,140,358
`Section 325(e) restricts only the ability of a petitioner to maintain a proceeding, and imposes
`
`no limits on the Board, whether in issuing a Final Written Decision or otherwise. The
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`Request thus rests on a fundamentally flawed reading of the America Invents Act
`
`(“AIA”) and should be denied.
`
`Indeed, Congress has made clear that the Board has the discretion to complete
`
`CBM reviews through Final Written Decisions, and to defend those decisions on
`
`appeal, even when no petitioner remains. For example, 35 U.S.C. § 327(a) confirms
`
`the Board “may proceed to a final written decision” without any challenging party.
`
`Contrary to Progressive’s misreading (Req. at 13), this confirmation of authority
`
`imposes no limits on the Board’s power to proceed to a Final Written Decision, or
`
`defend it thereafter. See, e.g., 35 U.S.C. §143 (“The Director shall have the right to
`
`intervene in an appeal from a decision entered by the Patent Trial and Appeal Board
`
`in a . . . post-grant review”). There is a clear public interest in having the validity of
`
`patent claims finally determined after being fully and fairly litigated before the Board
`
`over an eighteen month period, and that should not be derailed by settlement or
`
`otherwise. The Board’s ability to continue without the Petitioner makes this entirely
`
`unlike district court proceedings or inter partes reexamination, and Progressive’s attempt
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`to argue Petitioner is “maintaining” this proceeding by analogy to those inapposite
`
`contexts fails. Req. at 10-11 (discussing Smallwood v. Gallardo and Function Media, L.L.C.
`
`v. Kappos); id. at 7 (citing inapplicable Rule of Civil Procedure). Progressive’s Request
`
`for Rehearing should be denied.
`
`
`
`3
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`Case CBM2013-00009
`Patent 8,140,358
`
`
`
`
`ROPES & GRAY LLP
`
`
`
`By /J. Steven Baughman/
`J. Steven Baughman, Lead Counsel
`James R. Myers (pro hac vice), Back-up Counsel
`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
`
`4
`
`March 28, 2014
`
`
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`
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`
`
`
`CERTIFICATE OF SERVICE
`
`It is certified that a copy of PETITIONER LIBERTY MUTUAL INSUR-
`
`ANCE CO.’S OPPOSITION TO PATENT OWNER’S REQUEST FOR RE-
`
`HEARING 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 28, 2014 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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