Trials@uspto.gov
`571-272-7822
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`
`
`
`
` Paper 14
`Entered: April 12, 2013
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`
`
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`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 (JL)
`Patent 8,140,358
`____________
`
`
`
`Before JAMESON LEE, JONI Y. CHANG, and MICHAEL R. ZECHER,
`Administrative Patent Judges.
`
`
`Lee, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`On April 10, 2013, the initial telephone conference call for this trial
`
`was held between respective counsel for the parties and Judges Lee, Chang,
`
`and Zecher. The purpose of the call was to discuss the motions that the
`
`parties intend to file and any proposed changes to the Scheduling Order
`
`(Paper 11). Each party filed its list of proposed motions (Papers 12 and 13)
`
`
`571-272-7822
`
`
`
`
`
` Paper 14
`Entered: April 12, 2013
`
`
`
`
`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 (JL)
`Patent 8,140,358
`____________
`
`
`
`Before JAMESON LEE, JONI Y. CHANG, and MICHAEL R. ZECHER,
`Administrative Patent Judges.
`
`
`Lee, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`On April 10, 2013, the initial telephone conference call for this trial
`
`was held between respective counsel for the parties and Judges Lee, Chang,
`
`and Zecher. The purpose of the call was to discuss the motions that the
`
`parties intend to file and any proposed changes to the Scheduling Order
`
`(Paper 11). Each party filed its list of proposed motions (Papers 12 and 13)
`
`
`
`CBM2013-00009
`Patent 8,140,358
`
`to provide the Board and the opposing party adequate notice to prepare for
`
`the conference call.
`
`Protective Order
`
`
`
`Liberty indicated that the parties may desire to have a protective order
`
`put in place to cover disclosure of confidential information. The parties
`
`agreed to work toward that end and to ask the Board for assistance if they
`
`need authorization to deviate from the default Protective Order in Appendix
`
`B to the Board’s Trial Practice Guide. See Office Patent Trial Practice
`
`Guide, 77 Fed. Reg. 48756, 48769 (Aug. 14, 2012). The parties offered to
`
`submit a red-lined copy based on the default protective order prior to
`
`initiating a conference call to discuss any variation from the default order.
`
`The Board appreciates the offer. The red-lined copy for discussion should
`
`not be filed. It should be sent by electronic mail as a courtesy copy for use
`
`in the telephone conference call to the Board with copy to each party.
`
`Pro Hac Vice Admission
`
`
`
`Liberty further proposed to file motions for pro hac vice admission of
`
`attorneys under 37 C.F.R. § 42.10(c). Such motions are already authorized
`
`in the Notice According Filing Date. (Paper 4.) Note, however, that the
`
`Office has published a Final Rule adopting new Rules of Professional
`
`Conduct. See Changes to representation of others Before the United States
`
`Patent and Trademark Office; Final Rule, 78 Fed. Reg. 20180 (Apr. 3,
`
`2013). The changes set forth in that Final Rule including the USPTO Rules
`
`of Professional Conduct take effect on May 3, 2013. Id. at 20180-81. Any
`
`motion for pro hac vice admission to be filed by the parties should also
`
`2
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`
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`CBM2013-00009
`Patent 8,140,358
`
`indicate that the person sought to be admitted will be subject to the
`
`USPTO’s new Rules of Professional Conduct which become effective on
`
`May 3, 2013.
`
`Claim Amendments
`
`
`
`Progressive indicated that it may seek to amend one or more claims.
`
`The panel expressed appreciation for patent owner’s commitment not to add
`
`new matter and not to enlarge the scope of existing claims. All proposed
`
`amendments must reasonably reflect an effort to obviate or render moot one
`
`or more of petitioner’s arguments against an unamended claim.
`
`Changes to the Scheduling Order
`
`
`
`During the conference call, the judges first noted that the instant trial
`
`is the last of the seven trials involving the same parties, and then explained
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`to counsel of both parties that the schedule illustrated in the Office Trial
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`Practice Guide, 77 Fed. Reg. 48757 (Aug. 14, 2012), provides merely a
`
`sample illustrative of how the statutory time limits may be met. It is not a
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`“default” or “standard” schedule that should be expected for all cases.
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`Instead, the judges consider all the factors on a case-by-case basis and set an
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`appropriate schedule accordingly. Given that the instant trial is the second
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`one for the same patent, that the prior art references on the basis of which
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`review was instituted are the subject of another petition in CBM2013-00003
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`involving the same parties, and that the parties jointly were seeking ways to
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`minimize separate cross-examinations of the same witness whose testimony
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`is relied on in multiple trials involving the same parties, the Board
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`considered seven weeks sufficient for preparation of the patent owner’s
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`3
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`CBM2013-00009
`Patent 8,140,358
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`response. The Board did not regard seven weeks as sufficient for the
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`petitioner to prepare an opposition to any motion to amend claims to be
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`submitted by the patent owner who has indicated in the other six trials that it
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`intends to file such a motion, because it would be difficult to anticipate in
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`what ways the patent owner would amend its claims.
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`
`
`Counsel for the patent owner represented that the patent owner would
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`need only to have the oral argument date, DUE Date 7, pushed back by ten
`
`days to November 7, 2013, and that he can work backwards from DUE Date
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`7 to determine new DUE Dates 1-6 that would be mutually acceptable to the
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`parties. Counsel for petitioner made no objection to the ten day adjustment.
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`Instead, counsel for the petitioner requested that the schedules of this review
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`and that in CBM2013-00003 be adjusted in a way that will ensure that the
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`two cases have oral argument on the same date. The judges explained that
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`while the due dates set in CBM2013-00003 cannot be pushed back in any
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`substantial manner because of the statutory one-year period from the time of
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`institution to issue a final written decision, the Board would consider
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`shortening the time periods in this trial if there is agreement between the
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`parties to do so.
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`
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`Counsel were instructed to consult with each other, after the
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`conference call, regarding whether they can agree on new DUE Dates 1-6,
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`with DUE Date 7 reset to November 10, 2013, and counsel for patent owner
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`was instructed to provide such new dates to the Board.
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`4
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`
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`CBM2013-00009
`Patent 8,140,358
`
`
`
`On April 11, 2013, counsel for patent owner informed the Board that
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`the parties were unable to reach agreement with respect to new dates for
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`DUE Dates 1-6.
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`It is
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`Order
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`ORDERED that Liberty is authorized to file a motion for pro
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`
`
`
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`hac vice admission under 37 C.F.R. § 42.10(c), and that such a motion shall
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`be filed in accordance with the “Order -- Authorizing Motion for Pro Hac
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`Vice Admission” in Case IPR2013-00010 (MPT), a copy of which is
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`available on the Board Web site (at http://www.uspto.gov/PTAB) under
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`“Representative Orders, Decisions, and Notices”; the patent owner has one
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`week from the time of filing of the motion to oppose the motion; any motion
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`for pro hac vice admission should also indicate that the person sought to be
`
`admitted will be subject to the USPTO’s new Rules of Professional Conduct
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`which become effective on May 3, 2013;
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`
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`FURTHER ORDERED that Progressive may file a motion to
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`amend one or more of its claims which are subject to at least one ground of
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`unpatentability challenge for which this trial has been instituted;
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`
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`FURTHER ORDERED that if the parties need authorization to
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`deviate from the default protective order, the parties may initiate a joint
`
`conference call and send by electronic mail a courtesy copy of a proposed
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`default protective order to the Board with copy to the opposing party no later
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`than two business days prior to the joint telephone conference call; and
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`5
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`
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`CBM2013-00009
`Patent 8,140,358
`
`
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`FURTHER ORDERED that DUE Dates 1-7 set in the Scheduling
`
`Order dated March 28, 2013 (Paper 11) will be reset in a separate First
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`Revised Scheduling Order, to add ten days to the due dates for each of Time
`
`Periods 1-7.
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`6
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`CBM2013-00009
`Patent 8,140,358
`
`PETITIONER:
`
`J. Steven Baughman
`Ropes & Gray
`Email: steven.baughman@ropesgray.com
`
`
`PATENT OWNER:
`
`Calvin P. Griffith
`James L. Wamsley, III
`John V. Biernacki
`Jones Day
`Email: cpgriffith@jonesday.com
`Email: jlwamsley@jonesday.com
`Email: jvbiernacki@jonesday.com
`
`
`
`
`7
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