throbber
Trial@uspto.gov
`571-272-7822
`
`
`
`
`
`
`
`
`
`
`
`
`
` Paper 78
`
`
`
`
` Entered: April 1, 2014
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`LIBERTY MUTUAL INSURANCE CO.
`Petitioner
`
`v.
`
`PROGRESSIVE CASUALTY INSURANCE CO.
`Patent Owner
`____________
`
`Case CBM2013-00009
`Patent 8,140,358
`____________
`
`
`
`
`Before JAMESON LEE, JONI Y. CHANG, and MICHAEL R. ZECHER,
`Administrative Patent Judges.
`
`
`CHANG, Administrative Patent Judge.
`
`
`
`
`
`
`
`DECISION
`Progressive’s Request for Rehearing
`37 C.F.R. § 42.71
`
`

`

`Case CBM2013-00009
`Patent 8,140,358
`
`
`INTRODUCTION
`
`Progressive Casualty Insurance Company (“Progressive”) requests rehearing
`
`of the final written decision (Paper 68), holding claims 1-20 of U.S. Patent No.
`
`8,140,358 (“the ’358 patent”) unpatentable. Paper 71 (“Req.”). Liberty Mutual
`
`Insurance Company (“Liberty”) filed an opposition to Progressive’s requests for
`
`rehearing. Paper 76 (“Opp.”).1 For the reasons stated below, Progressive’s request
`
`for rehearing is denied.
`
`On March, 28, 2013, the Board instituted the instant covered business
`
`method patent review as to claims 1-20 of the ’358 patent. Paper 10. The Board
`
`also instituted a review in CBM2012-00003 with respect to claims 1-20 of the ’358
`
`patent. Liberty Mutual Insurance Co. v. Progressive Casualty Insurance Co.,
`
`CBM2012-00003, Paper 15. In response to the parties’ joint request, the Board
`
`synchronized the trial schedules for both reviews, as they involved the same patent
`
`and parties. Papers 16-17; CBM2012-00003, Papers 29-30. Also, the oral
`
`hearings for both reviews were merged and conducted at the same time, and the
`
`transcript for the oral hearing was made useable for both reviews. Papers 47, 65;
`
`CBM2012-00003, Papers 62, 76. The Board in effect consolidated the reviews,
`
`except that papers and exhibits are stored in separate files for case management.
`
`See 35 U.S.C. § 325(d).
`
`Pursuant to 35 U.S.C. § 328(a), the Board issued the final written decision in
`
`the instant proceeding and the final written decision for CBM2012-00003 on
`
`February 11, 2014, concurrently. Paper 68, p. 2 (“A final written decision in Case
`
`
`
`1 The Board authorized each party to file an opposition to the opposing party’s
`request for rehearing. Paper 75.
`
`2
`
`

`

`Case CBM2013-00009
`Patent 8,140,358
`
`
`CBM2012-00003 is entered concurrently with this decision.”); CBM2012-00003,
`
`Paper 78, p. 3 (“A final written decision in CBM2013-00009 is entered
`
`concurrently with this decision.”). In its request for rehearing, Progressive takes
`
`the position that, although the decisions were issued on the same day, the Board
`
`lacks statutory authority to issue the final written decision in the instant proceeding
`
`because it was posted electronically by the Board’s paralegal after the final written
`
`decision in CBM2012-00003 was posted. Req. 4.
`
`In pertinent part, 37 C.F.R. § 42.71(d) states:
`
`ANALYSIS
`
`The burden of showing a decision should be modified lies with the
`party challenging the decision. The request 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.
`
`In support of its position, Progressive argues the following: (1) the Board
`
`misapprehended or overlooked that posting to the Board’s public electronic
`
`system, Patent Review Processing System (PRPS), “enters” a final written decision
`
`(Req. 3-5, 7-8 (citing Ex. 2036)); (2) the Board misapprehended or overlooked the
`
`application of 35 U.S.C. § 325(e)(1) (Req. 8-14); and (3) the Board
`
`misapprehended or overlooked the prohibition on issuing an advisory opinion
`
`(Req. 14-15). Progressive also proffers a declaration of Mr. James Wamsley to
`
`support its arguments. Ex. 2036.
`
`Liberty opposes and argues that Progressive’s request for rehearing is
`
`improper for the following reasons: (1) Progressive’s request “rests on the time
`
`Final Written Decisions were uploaded to PRPS by a paralegal after the Board
`
`3
`
`

`

`Case CBM2013-00009
`Patent 8,140,358
`
`
`completed the Final Written Decisions and could not be something the Board
`
`misapprehended or overlooked in issuing those decisions”; and (2) Progressive
`
`attempts to rely on evidence from after the decisions. Opp. 1 (emphasis in the
`
`original). Liberty also submits that the Board’s Order entered on February 20,
`
`2014, (Paper 69, p. 2) stating that “the two final written decisions [in CBM2012-
`
`00003 and CBM2013-00009] were entered at the same time” is correct, “regardless
`
`of the actual time of day each paper was uploaded by the Board’s administrative
`
`staff.” Id. According to Liberty, Progressive’s arguments are premised on an
`
`erroneous interpretation of 35 U.S.C. § 325(e) to read the “petitioner” qualification
`
`entirely out of the statutory provision and misconstrue what it means to “maintain a
`
`proceeding.” Opp. 2-3.
`
`We have reviewed Progressive’s request for rehearing and carefully
`
`considered Progressive’s arguments. However, we are not persuaded that the final
`
`written decisions, with respect to the patentability of the claims of the ’358 patent,
`
`are not issued concurrently under 35 U.S.C. § 328(a), and that the Board lacks
`
`statutory authority to issue the final written decision in the instant proceeding.
`
`Rather, we agree with Liberty that, regardless of the actual time of day each paper
`
`was uploaded by the Board’s paralegal, the final written decisions are issued
`
`concurrently, and 35 U.S.C. § 325(e) does not preclude the Board from issuing the
`
`final written decision in the instant proceeding.
`
`We now address Progressive’s arguments in turn.
`
`1.
`
`Section 18(a) of the Leahy-Smith America Invents Act (“AIA”) provides
`
`that a covered business method patent review “shall be regard as, and shall employ
`4
`
`

`

`Case CBM2013-00009
`Patent 8,140,358
`
`
`the standards and procedures of, a post-grant review” with certain exceptions.
`
`Pub. L. No. 112-29, § 18(a)(1)(A), 125 Stat. 284, 329 (2011). The Board’s
`
`statutory authority for issuing a final written decision in an instituted covered
`
`business method patent review is set forth in 35 U.S.C. § 328(a), which states:
`
`(a) FINAL WRITTEN DECISION.—If a post-grant review is
`instituted and not dismissed under this chapter, the Patent Trial and
`Appeal Board shall issue a final written decision with respect to the
`patentability of any patent claim challenged by the petitioner and any
`new claim added under section 326(d).
`
`Progressive does not dispute that both final written decisions holding the
`
`claims of the ’358 patent unpatentable were issued on the same day, February 11,
`
`2014. Req. 3. Progressive also acknowledges that the final written decision in the
`
`instant proceeding, itself, states that it is entered concurrently with the final written
`
`decision in CBM2012-00003. Id. Nonetheless, Progressive maintains that there is
`
`“no evidence to support the Board’s finding that its Final Decisions were ‘entered
`
`concurrently’ in CBM2012-00003 and CBM2013-00009.” Id. at 8.
`
`That characterization is incorrect, as the Board did not make a finding in that
`
`regard, but simply declared how it was issuing the final written decisions in the
`
`instant proceeding and CBM2012-00003 pursuant to 35 U.S.C. § 328(a). The
`
`Board’s statement, itself, is an operative fact and requires no further supporting
`
`fact or evidence. Nothing in the statute prohibits the Board from issuing the final
`
`written decisions in two different proceedings for the same patent concurrently.
`
`To support its position that an electronic posting “enters” a final written
`
`decision, Progressive proffers metadata and courtesy electronic mail notifications
`
`as evidence to show the times of the day when the final written decisions were
`
`5
`
`

`

`Case CBM2013-00009
`Patent 8,140,358
`
`
`posted in PRPS. Req. 3-5 (citing Ex. 2036 ¶¶ 3-7; see, e.g., id. at ¶ 5 (“The
`
`metadata . . . indicates that [the final written decision in CBM2012-00003] was . . .
`
`available over the PRPS on February 11, 2014 at 10:50:25 AM EST (15:50:25.226
`
`GMT).”); id. at ¶ 6 (“The metadata . . . indicates that [the final written decision in
`
`CBM2013-00009] was . . . available over the PRPS on February 11, 2014 at
`
`12:04:12 PM EST (17:04:12.980 GMT).”). According to Progressive, because its
`
`supporting evidence shows that the final written decision of the instant proceeding
`
`was posted one hour and fourteen minutes after the final written decision in
`
`CBM2012-00003 was posted, the final written decisions were not issued
`
`concurrently. Req. 7-8; Ex. 2036 ¶¶ 4-7.
`
`Progressive’s reliance on the metadata and electronic mail notifications
`
`associated with the electronic postings is misplaced. Public accessibility is not a
`
`requirement for issuing a final written decision under 35 U.S.C. § 328(a), but
`
`rather a requirement to make the file history available to the public under
`
`35 U.S.C. § 326(a)(1). Progressive does not direct us to any authority to support
`
`its position that an electronic posting “issues” a final written decision.
`
`Moreover, the Board has not implemented the statutory provision under
`
`35 U.S.C. § 328(a) to define the precise moment when the Board issues a final
`
`written decision as the exact time of the day—measured in seconds—when the
`
`final written decision is posted in PRPS. In fact, the Board consistently has
`
`defined the entry date on the first page of each final written decision, as the day
`
`when the Board issues the final written decision, regardless of the mode of delivery
`
`or notification—mailing or posting electronically. That is consistent with the
`
`Office’s procedure for entering other official papers in this proceeding, and official
`
`6
`
`

`

`Case CBM2013-00009
`Patent 8,140,358
`
`
`papers in other proceedings. For instance, the Office accords the filing date of a
`
`patent application, and not the filing time of a patent application. The “entry date”
`
`procedure also is consistent with the procedure for setting time periods for the
`
`parties to file their papers, which is measured in the number of days, as opposed to
`
`seconds, from the entry date of a final written decision. See, e.g., 37 C.F.R.
`
`§ 42.71 (d)(2) (“Any request must be filed . . . [w]ithin 30 days of the entry of a
`
`final written decision or a decision not to institute a trial.”); 37 C.F.R. § 90.3(a)(1)
`
`(The notice of appeal must be filed no later than 63 days after the date of the final
`
`Board decision.).
`
`Indeed, the final written decision of the instant proceeding and the final
`
`written decision issued in CBM2012-00003 each set forth the same entry date of
`
`February 11, 2014. Paper 68, p. 1; CBM2012-00003, Paper 78, p. 1. Additionally,
`
`the final written decision, itself, clearly sets forth that “[a] final written decision in
`
`Case CBM2012-00003 is entered concurrently with this decision.” Paper 68, p. 2.
`
`Similarly, the final written decision in CBM2012-00003 states that “[a] final
`
`written decision in Case CBM2013-00009 is entered concurrently with this
`
`decision.” CBM2012-00003, Paper 78, p. 3. Each final written decision was
`
`decided by the same panel and is, itself, part of the official record. Progressive
`
`simply ignores the official records of both proceedings, including the final written
`
`decisions.
`
`The PRPS also displays the entry date of February 11, 2014, for both final
`
`written decisions. A screenshot of the PRPS entry listing for the instant
`
`proceeding is reproduced below.
`
`7
`
`

`

`Case CBM2013-00009
`Patent 8,140,358
`
`
`
`
`As shown above, PRPS displays February 11, 2014, as the entry date for the
`
`final written decision. Notably, PRPS does not display the time of the day when
`
`the final written decision or any other document was posted in PRPS. The Office
`
`does not expect the public to retrieve the metadata of each paper using Internet
`
`Explorer Tools, as Progressive did (Ex. 2036 ¶ 4; “Exhibit A”; “Exhibit B”),
`
`because the time of day each paper is uploaded by the administrative staff has no
`
`legal significance.
`
`For the foregoing reasons, the evidence before us establishes that both final
`
`written decisions with respect to the patentability of the claims of the ’358 patent
`
`were issued concurrently.
`
`We disagree with Progressive’s assertion that, by issuing the final written
`
`decisions with respect to the patentability of the claims of the ’358 patent
`
`concurrently, the Board “favors” Liberty. Req. 7. It is important to note that the
`
`8
`
`

`

`Case CBM2013-00009
`Patent 8,140,358
`
`
`concurrent issuance of the final written decisions is a natural consequence from
`
`synchronizing the trial schedules for both proceedings, which was requested by
`
`Progressive jointly with Liberty. Papers 16-17; CBM2012-00003, Papers 29-30.
`
`The Board did not act, sua sponte, to synchronize the trail schedules for both
`
`proceedings, but merely did so in response to Progressive’s request made jointly
`
`with Liberty. Id. During the trials, Progressive also merged and conducted
`
`discovery for both proceedings at the same time (see, e.g., Paper 36; CBM2012-
`
`00003, Paper 25) and conducted conference calls with the Board for both
`
`proceedings concurrently (see, e.g., Papers 37-38; CBM2012-00003, Papers 53-
`
`54). The final oral hearings for both proceedings were merged and conducted at
`
`the same time, and the transcript for the oral hearing was made useable for both
`
`reviews. Papers 47, 65; CBM2012-00003, Papers 62, 76. In effect, the
`
`proceedings were consolidated, at the request of the parties, except that the papers
`
`and exhibits are stored in separate files for case management. See 35 U.S.C.
`
`§ 325(d).
`
`In an Order dated December 4, 2013, we stated: “The parties can expect that
`
`the final written decisions for the two cases will issue on the same date, as that has
`
`been the plan according to the formal schedule.” Paper 64, p. 2. The parties did
`
`not object to the advance notice to the parties that the final written decisions for the
`
`two cases will issue on the same date. Therefore, it should not be a surprise to
`
`Progressive that the final written decisions for both proceedings were issued
`
`concurrently—which was a natural result from synchronizing the trial schedules
`
`for both proceedings.
`
`9
`
`

`

`Case CBM2013-00009
`Patent 8,140,358
`
`
`2.
`
`
`
`Progressive alleges that the Board misapprehended or overlooked the
`
`application of 35 U.S.C. § 325(e)(1). Req. 8-14. According to Progressive, the
`
`estoppel of 35 U.S.C. § 325(e)(1) “attached as soon as the Board entered its Final
`
`Decision in CBM2012-00003, and the Board was then without authority to enter a
`
`Final Decision in the CBM2013-00009.” Req. 9. Progressive maintains that the
`
`legislative history makes clear that 35 U.S.C. § 325(e)(1) is intended to prevent
`
`multiple challenges to a patent. Req. 13. We disagree.
`
`The estoppel provision as to a final written decision in a covered business
`
`method patent review is provided in 35 U.S.C. § 325(e)(1), which states (emphases
`
`added):
`
`PROCEEDINGS BEFORE THE OFFICE. — The petitioner in a post-
`grant review of a claim in a patent under this chapter that results in a
`final written decision under section 328(a), or the real party in interest
`or privy of the petitioner, may not request or maintain a proceeding
`before the Office with respect to that claim on any ground that the
`petitioner raised or reasonably could have raised during that post-
`grant review.
`
`Progressive does not dispute that 35 U.S.C. § 325(e)(1) places a restriction
`
`on a petitioner’s ability to “request or maintain a proceeding before the Office”
`
`after a final written decision under 35 U.S.C. § 328(a) has issued on the challenged
`
`claims. The estoppel provision under 35 U.S.C. § 325(e)(1) could not have
`
`terminated the instant proceeding prior to issuance of the final written decision,
`
`because the final written decision was issued concurrently with the final written
`
`decision in CBM2012-00003.
`
`10
`
`

`

`Case CBM2013-00009
`Patent 8,140,358
`
`
`In addition, nothing in 35 U.S.C. § 325(e)(1) precludes the Board from
`
`proceeding to a final written decision when a petitioner can no longer maintain a
`
`proceeding, or requires the Board to terminate the second proceeding with respect
`
`to both the petitioner and patent owner when a final written decision has issued in a
`
`first proceeding on the same claims of the same patent. To the contrary, 35 U.S.C.
`
`§ 327(a) provides that “[i]f no petitioner remains in the post-grant review, the
`
`Office may terminate the post-grant review or proceed to a final written decision
`
`under section 328(a)” (emphases added). Although Progressive interprets that
`
`statutory authorization narrowly, limiting it only to settlement situations,
`
`Progressive fails to recognize that 35 U.S.C. § 328(a) expressly requires the Board
`
`to issue a final written decision if the instituted covered business method patent
`
`review is not dismissed, as is the case here.
`
`With respect to Progressive’s argument that the legislative history makes
`
`clear that 35 U.S.C. § 325(e)(1) is intended to prevent multiple challenges to a
`
`patent (Req. 13), the statute does not prohibit the Board from maintaining multiple
`
`parallel proceedings that conclude concurrently. As discussed previously, the
`
`Board synchronized the trial schedules for both proceedings in response to
`
`Progressive’s request made jointly with Liberty. Papers 16-17; CBM2012-00003,
`
`Papers 29-30. Progressive also merged and conducted discovery for both
`
`proceedings at the same time (see, e.g., Paper 36; CBM2012-00003, Paper 25) and
`
`conducted conference calls with the Board for both proceedings concurrently (see,
`
`e.g., Papers 37-38; CBM2012-00003, Papers 53-54). In sum, both proceedings
`
`advanced on the same schedule to the concurrent issuance of the final written
`
`decisions. Therefore, the Board does not view these two parallel proceedings as
`
`11
`
`

`

`Case CBM2013-00009
`Patent 8,140,358
`
`
`multiple “serial” attacks on the ’358 patent.
`
`For the foregoing reasons, we are not persuaded that, once the final written
`
`decision in CBM2012-00003 was entered, 35 U.S.C. § 325(e)(1) terminated the
`
`instant proceeding or prohibited the Board from issuing the final written decision.
`
`3.
`
`Progressive alleges that the Board misapprehended or overlooked the
`
`prohibition on issuing an advisory opinion. Req. 14-15. According to Progressive,
`
`the Board’s unpatentability determination as to claims 1-20 of the ’358 patent in
`
`the instant proceeding became an advisory opinion once the Board determined that
`
`claims 2-18 of the ’358 patent were unpatentable in CBM2012-00003 and,
`
`subsequently, cancelled claims 2-18. Id.
`
`We disagree. Again, Progressive’s arguments rest on the erroneous premise
`
`that the final written decision of the instant proceeding was issued later than the
`
`issuance of the final written decision in CBM2012-00003. In fact, the final written
`
`decisions were issued concurrently on February 11, 2014. The final written
`
`decision of the instant proceeding, therefore, is not an advisory opinion, but rather
`
`a patentability determination under 35 U.S.C. § 328(a) as to claims 1-20 of the
`
`’358 patent. The patentability determinations of the instant proceeding and
`
`CBM2012-00003 are based on different grounds of unpatentability. Upon
`
`consideration of the parties’ arguments and supporting evidence, the Board
`
`determined that claims 1-20 of the ’358 patent were unpatentable under 35 U.S.C.
`
`§ 103(a) based on several combinations of RDSS and other cited prior art
`
`references. Paper 68, p. 50. In the CBM2012-00003, the Board determined that
`
`claims 2-18 of the ’358 patent were unpatentable under 35 U.S.C. § 103(a) based
`12
`
`

`

`Case CBM2013-00009
`Patent 8,140,358
`
`
`on several combinations of Nakagawa and other cited prior art references.
`
`CBM2012-00003, Paper 78, p. 69.
`
`It is important to note that the Order set forth in the final written decision in
`
`CBM2012-00003 (Paper 78, p. 70) to cancel claims 2-18 of the ’358 patent is not
`
`effective until the Director issues a certificate under 35 U.S.C. § 328(b), canceling
`
`those claims. Section 328(b) states:
`
`CERTIFICATE.—If the Patent Trial and Appeal Board issues a final
`written decision under subsection (a) and the time for appeal has
`expired or any appeal has terminated, the Director shall issue and
`publish a certificate canceling any claim of the patent finally
`determined to be unpatentable, confirming any claim of the patent
`determined to be patentable, and incorporating in the patent by
`operation of the certificate any new or amended claim determined to
`be patentable.
`
`More significantly, a certificate under 35 U.S.C. § 328(b) cannot be issued
`
`until the time for appeal has expired or any appeal has terminated. Here,
`
`no certificate, cancelling any claims of the ’358 patent, has been issued. Therefore,
`
`the final written decision of the instant proceeding was issued before any
`
`cancellation of the claims of the ’358 patent.
`
`For the foregoing reasons, we are not persuaded that the final written
`
`decision issued in the instant proceeding is an advisory opinion.
`
`CONCLUSION
`
`In view of the foregoing, Progressive has not carried its burden of
`
`demonstrating that the Board’s final written decision misapprehended or
`
`overlooked any matters. 37 C.F.R. § 42.71(d).
`
`Progressive’s request for rehearing is denied.
`
`13
`
`

`

`14
`
`Case CBM2013-00009
`Patent 8,140,358
`
`
`
`
`PETITIONER:
`
`J. Steven Baughman
`James R. Myers
`Nicole M. Jantzi
`ROPES & GRAY LLP
`steven.baughman@ropesgray.com
`james.myers@ropesgray.com
`nicole.jantzi@ropesgray.com
`
`
`PATENT OWNER:
`
`Calvin P. Griffith
`James L. Wamsley, III
`John V. Biernacki
`JONES DAY
`cpgriffith@jonesday.com
`jlwamsleyiii@jonesday.com
`
`

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