Trials@uspto.gov
`571-272-7822
`
`
`
`
`
` Paper 11
`Entered: March 15, 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 CBM2013-00003 (JL)
`Patent 8,090,598
`____________
`
`
`
`Before JAMESON LEE, JONI Y. CHANG, and MICHAEL R. ZECHER,
`Administrative Patent Judges.
`
`Chang, Administrative Patent Judge
`
`
`DECISION
`Institution of Covered Business Method Patent Review
`37 C.F.R. § 42.208
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`
` Paper 11
`Entered: March 15, 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 CBM2013-00003 (JL)
`Patent 8,090,598
`____________
`
`
`
`Before JAMESON LEE, JONI Y. CHANG, and MICHAEL R. ZECHER,
`Administrative Patent Judges.
`
`Chang, Administrative Patent Judge
`
`
`DECISION
`Institution of Covered Business Method Patent Review
`37 C.F.R. § 42.208
`
`
`
`
`
`
`
`Case CBM2013-00003
`Patent 8,090,598
`
`I. INTRODUCTION
`On October 15, 2012, Liberty Mutual Insurance Company (“Liberty”)
`filed a petition requesting a review under the transitional program for
`covered business method patents of U.S. Patent 8,090,598 (“the ’598
`patent”). (Paper 4, “Pet.”) The patent owner, Progressive Casualty
`Insurance Company (“Progressive”), filed a preliminary response on
`January 22, 2013. (Paper 9, “Prel. Resp.”) We have jurisdiction under
`35 U.S.C. §§ 6(b) and 324. See section 18(a) of the Leahy-Smith America
`Invents Act, Pub. L. 112-29, 125 Stat. 284, 329 (2011) (“AIA”).
`The standard for instituting a covered business method patent review
`is set forth in 35 U.S.C. § 324(a), which provides as follows:
`THRESHOLD --The Director may not authorize a post-grant
`review to be instituted unless the Director determines that the
`information presented in the petition filed under section 321, if
`such information is not rebutted, would demonstrate that it is
`more likely than not that at least 1 of the claims challenged in
`the petition is unpatentable.
`
`Liberty challenges the patentability of claims 1-78 of the ’598 patent.
`Taking into account Progressive’s preliminary response, we determine that
`the information presented in the petition does not demonstrate that it is more
`likely than not that claims 1-78 are unpatentable. Pursuant to 35 U.S.C.
`§ 324 and section 18(a) of the AIA, we do not authorize a covered business
`method patent review to be instituted as to claims 1-78 of the ’598 patent for
`the grounds of unpatentability asserted in Liberty’s petition.
`Accordingly, the petition is DENIED.
`
`2
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`Case CBM2013-00003
`Patent 8,090,598
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`A. Liberty’s Standing
`Liberty certifies that the ’598 patent was asserted against it in Case
`No. 1:10-cv-01370, Progressive Cas. Ins. Co. v. Safeco Ins. Co. of Ill. Et al.,
`pending in the U.S. District Court for the Northern District of Ohio. (Pet. 8.)
`Progressive does not dispute that certification.
`
`B. Covered Business Method Patent
`Under section 18(a)(1)(E) of the AIA, the Board may institute a
`transitional proceeding only for a patent that is a covered business method
`patent. Section 18(d)(1) of the AIA defines the term “covered business
`method patent” to mean:
`a patent that claims a method or corresponding apparatus for
`performing data processing or other operations used in the
`practice, administration, or management of a financial product
`or service, except that the term does not include patents for
`technological inventions.
`
`The legislative history explains that the definition of a covered
`business method patent was drafted to encompass patents “claiming
`activities that are financial or complementary to financial activity.” 157
`Cong. Rec. S5432 (daily ed. Sept. 8, 2011) (statement of Sen. Schumer).
`Section 18(d)(2) of the AIA provides that “the Director shall issue
`regulations for determining whether a patent is for a technological
`invention.” The legislative history points out that the regulation for this
`determination should only exclude “those patents whose novelty turns on a
`technological innovation over the prior art and are concerned with a
`technical problem which is solved with a technical solution and which
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`Patent 8,090,598
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`requires the claims to state the technical features which the inventor desires
`to protect.” 157 CONG. REC. S1364 (daily ed. Mar. 8, 2011) (statement of
`Sen. Schumer).
`Pursuant to that statutory mandate, the Office promulgated 37 C.F.R.
`§ 42.301(b) to define the term “technological invention” for the purposes of
`the transitional program for covered business method patents. Therefore,
`when determining whether a patent is for a technological invention in the
`context of the transitional program for covered business method patents,
`37 C.F.R. § 42.301(b) identifies the following for consideration:
`whether the claimed subject matter as a whole recites a
`technological feature that is novel and unobvious over the prior
`art; and solves a technical problem using a technical solution.
`
`To help the public better understand how the definition of a
`technological invention under 37 C.F.R. § 42.301(b) would be applied in
`practice, the Office Patent Trial Practice Guide provides the following
`guidance as to claim drafting techniques that typically would not render a
`patent a technological invention:
`(a) Mere recitation of known technologies, such as computer
`hardware, communication or computer networks, software,
`memory, computer readable storage medium, scanners, display
`devices, or databases, or specialized machines, such as ATM or
`point of sale device.
`(b) Reciting the use of known prior art technology to
`accomplish a process or method, even if the process or method
`is novel and non-obvious.
`(c) Combining prior art structures to achieve the normal,
`expected, or predictable result of that combination.
`
`4
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`Case CBM2013-00003
`Patent 8,090,598
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`77 Fed. Reg. 48756, 48763-64 (Aug. 14, 2012).
`In its petition, Liberty asserts that the ’598 patent is a covered
`business method patent because the claimed invention of the ’598 patent
`relates to the administration and management of an insurance policy to
`adjust insurance premiums based on monitored vehicle data. (Pet. 6.)
`Liberty further contends that the claimed invention of the ’598 patent is not a
`“technological invention” as defined in 37 C.F.R. § 42.301(b). (Pet. 7.)
`According to Liberty, the claimed subject matter of the ’598 patent does not
`include any “technological feature” that is novel and unobvious because the
`claimed system merely implement a way of assessing insurance risk. (Id.)
`Liberty also argues that the claimed subject matter as a whole solves the
`problem of determining a cost of insurance accurately, but not a technical
`problem. (Id.)
`Progressive counters that the claimed invention of the ’598 patent is a
`“technological invention” and, therefore, the ’598 patent is ineligible for a
`covered business method patent review. (Prel. Resp. 32-34.) Specifically,
`Progressive contends the claimed subject matter as a whole recites a
`technological feature that is novel and unobvious over the prior art. (Id. at
`34-37.) Progressive also argues that the claimed subject matter as a whole
`solves a technical problem using a technical solution. (Id. at 37-42.)
`To support those contentions, Progressive argues that the claimed
`invention is similar to the examples provided in the Office Patent Trial
`Practice Guide (77 Fed. Reg. at 48764), which the Office indicates would
`not be eligible for a covered business method patent review, and is more
`
`5
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`Case CBM2013-00003
`Patent 8,090,598
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`technically robust than the claims of U.S. Patent 6,553,350, which the Board
`has found eligible for a covered business method patent review. (Prel. Resp.
`32-37, 40-42.) In that regard, Progressive notes that in the notice of
`allowance, the Examiner stated that the closest prior art of record did not
`teach wirelessly receiving selected onboard vehicle data monitored by an in-
`vehicle data monitoring device. (Id. at 35-36.) Progressive points out that
`the claims “recite significant hardware, such as a vehicle, an in-vehicle data
`monitoring device, and wireless data transmission, as well as manipulation
`of real-world vehicle monitoring data that are used in a non-conventional
`manner.” (Id. at 41.)
`We are not persuaded by Progressive’s arguments. Rather, we
`determine that Liberty has demonstrated that the ’598 patent is a covered
`business method patent and the claimed invention is not a “technological
`invention” within the meaning of 37 C.F.R. § 42.301(b).
` The determination of whether a patent is eligible for covered business
`method patent review is based on what the patent claims. A patent having
`one claim directed to a covered business method is eligible for review even
`if the patent includes additional claims.1
`Here, the ’598 patent discloses a system for monitoring, recording,
`processing, and communicating operational data of a vehicle to determine
`the cost of insurance. (Ex. 1001, 1:15-22; 4:14-21.)
`
`
`1 Transitional Program for Covered Business Method Patents – Definitions
`of Covered Business Method Patent and Technological Invention; Final
`Rule, 77 Fed. Reg. 48734, 48736 (Aug. 14, 2012) (Response to Comment 8).
`6
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`Case CBM2013-00003
`Patent 8,090,598
`
`Claim 32, reproduced below, is illustrative:
`A risk management system comprising:
`a computer system that serves an interface module that is
`configured to establish relationships between data that
`represents a vehicle operating characteristic and a vehicle
`operator action of one or more users and data that represents
`levels of risk involved in an operation of one or more vehicles;
`a database that stores relationship data representing
`associations between vehicle data associated with a plurality of
`vehicles or operators and an operator or insurer monitored
`vehicle data, where the relationship data quantifies, for one or
`more vehicles or operators, relationships between relative levels
`of risk in the operation of the one or more vehicles and the
`monitored vehicle data; and
`an interface module that provides functionality to search
`the database for a risk assessment of the vehicle data, where the
`interface module is responsive to a request to quantify driver
`behavior by processing the monitored vehicle data to render a
`driver safety score, where the driver safety score establishes a
`level of risk associated with insuring a selected user or a
`vehicle.
`
`We observe that Progressive’s contentions are not commensurate with
`the scope of claim 32. Notably, the features that Progressive relies upon in
`its arguments, namely the wireless communication system, network server,
`and sensors for monitoring the vehicle operator’s driving characteristics, are
`described in the specification, but are not recited in claim 32. Therefore,
`Progressive’s arguments concerning the examples in the Office Patent Trial
`Practice Guide, another Board decision on covered business method patent
`eligibility, and the Examiner’s reasons for allowance are without merit.
`
`7
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`Case CBM2013-00003
`Patent 8,090,598
`
`Indeed, Progressive fails to point out any specific novel and
`non-obvious technological elements recited in claim 32. As noted in the
`’598 patent, the data capture process within the vehicle for insurance and
`claims processing as illustrated in Figure 1 of the ’598 patent “can be
`implemented with conventional computer programming” (Ex. 1001, 9:41-
`45); “[o]n-line Web sites for marketing and selling goods have become
`common place” (id. at 3:64-67); communications connections may be made
`wirelessly with the wireless technology that was known in the art at the time
`of the invention, such as Bluetooth® (id. at 7:40-42); and many types of
`vehicle operating data recording systems that were known at the time of the
`invention have been suggested for purposes of obtaining an accurate record
`of certain elements of vehicle operation (id. at 3:18-20). The mere recitation
`of known technologies — namely a user interface, a searchable database,
`and a computer — does not render the subject matter recited in claim 32 a
`technological invention. All of the technical elements as claimed are known
`and operated in their ordinary and predictable manner. Hence, the subject
`matter as a whole of claim 32 does not recite a novel and unobvious
`technological feature.
`We are also not persuaded by Progressive’s argument that the claimed
`subject matter as a whole solves a technical problem using a technical
`solution. The ’598 patent expressly states that the motor vehicle control and
`operating systems that were known in the art at the time of the invention
`could readily be modified to obtain the desired types of information relevant
`
`8
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`Case CBM2013-00003
`Patent 8,090,598
`
`to determine the cost of insurance. (Id. at 3:50-53.) Determining a cost of
`vehicle insurance is a financial problem rather than a technical problem.
`Accordingly, the ’598 patent is a covered business method patent as
`defined in section 18(d) of the AIA and 37 C.F.R. § 42.301.
`
`C. Prior Art Relied Upon
`Liberty relies upon the following prior art references:
`
`Kosaka
`
`JP H4-182868
`
`June 30, 1992 Ex. 1003
`
`Geostar, Understanding Radio
`Determination Satellite Service May 1989
`GB 2 286 369 A
`Aug. 16, 1995 Ex. 1006
`“Notes on Exposure and Premium
`May 9, 1930
`Ex. 1007
`Bases” by Paul Dorweiler
`
`Ex. 1004
`
`RDSS
`
`Herrod
`Dorweiler
`
`
`D. Alleged Grounds of Unpatentability
`Liberty seeks review of claims 1-78 based on the following grounds:
`A. Claims 1-8, 25-55, and 72-78 under 35 U.S.C. § 103 as being
`unpatentable over Kosaka and RDSS;
`B. Claims 9-26 and 56-72 under 35 U.S.C. § 103 as being unpatentable
`over Kosaka, RDSS, and Herrod; and
`C. Claims 5, 6, 12, 13, 21, 22, 25, 26, 52, 53, 59, 60, 68, 69, 72, 73, and
`78 under 35 U.S.C. § 103(a) as being unpatentable over Kosaka,
`RDSS, and Dorweiler.
`
`9
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`Casee CBM2013-00003
`
`
`Patennt 8,090,5998
`
`
`
`E. Thee ’598 Pateent
`
`
`monitoringg and commmunicatin
`
`
`
`The ’5988 patent relates to a ssystem for
`g
`
`
`
`
`operrational chaaracteristiccs and operrator actionns (e.g., sppeeds driveen) relatingg
`
`
`
`
`
`
`
`
`to a uunit of riskk (e.g., a mmotor vehiccle) to deteermine the
`
`insurance
`
`cost for thhe
`
`
`
`
`
`
`unit of risk. (EEx. 1001, 11:20-35.) FFigure 5 off the ’598 ppatent, rep
`roduced
`
`
`
`
`
`
`
`beloww, depicts an emboddiment of thhe claimedd inventionn of the ’5998 patent:
`
`
`
`00 having it of risk 20hows a uni98 patent shFigure 55 of the ’59
`
`
`
`
`
`data
`
`and recordds
`
`
`
`
`
`
`storaage, data prrocess logiic, and an oon-board ddevice thatt monitors
`
`
`
`
`
`
`
`sensor data andd trigger evvents. (Exx. 1001, 7:227-32; 12:331-36.) Alll relevant
`data
` The
`
`
`
`
`
`is stored inn a data stoorage device 518. (EEx. 1001, 112:61-62.)
`generate a
`events to g
`
`
`
`
`
`billinng or estimmating algoorithm 530 accesses tthe data or
`
`
`
`
`
`cost of insurannce for the uunit of riskk. (Ex. 10001, 13:5-8
`
`.) As showwn in
`10
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`Case CBM2013-00003
`Patent 8,090,598
`
`Figure 5, the insurer’s system also provides a Web server 220 to allow a
`customer to access via Internet 218 communication the relevant sensor data,
`and event data associated with the customer. (Ex. 1001, 13:24-29.) In
`particular, the insurer’s system provides a prospective on-line interface 550
`and an interface 552 for reporting acquired data. (Ex. 1001, 13:30-32.)
`
`F. Representative Claim
`Of the challenged claims, claims 1, 31, 32, 33, 48 and 78 are
`independent claims. Claims 2-30 depend from claim 1, claims 34-47 depend
`from claim 33, and claims 49-77 depend from claim 48.
`Claim 1 is illustrative:
`A risk management system comprising:
`[1] a server receiver configured to wirelessly receive selected
`onboard vehicle data monitored by an in-vehicle data
`monitoring device within a vehicle;
`[2] a network server system coupled to the server receiver that
`provides an interface having functionality configured to
`establish relationships between the selected onboard vehicle
`data and levels of risk in a usage based insurance system;
`[3] a database that stores relationship data indicating the
`relationships established between the selected onboard vehicle
`data relating to one or more users and an insured's monitored
`vehicle data, where the relationship data identifies, for an
`insured or other selected users, relationships between relative
`levels of risk and the selected onboard vehicle data; and
`[4] an interface module configured to search the database for a
`risk assessment of vehicle data, where the interface module is
`responsive to a request from a database user by using the
`relationship data and the selected onboard vehicle data to
`
`11
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`Case CBM2013-00003
`Patent 8,090,598
`
`identify the level of risk;
`[5] where the interface module is further configured to be
`responsive to a request to quantify driver behavior by
`processing the selected onboard vehicle data to render a driver
`safety score, where the driver safety score is characterized as a
`level of risk associated with insuring a selected operator or a
`vehicle.
`(Bracketed matter and emphasis added.)
`
`
`II. FINDINGS OF FACTS
`The findings of fact in this decision including those in the analysis are
`supported by a preponderance of the evidence.
`
`
`A. Kosaka
`Kosaka’s invention is related to an insurance premium determination
`system that increases or decreases insurance premiums by continually
`determining insurance premium changes through the detection of states that
`lead to risk in the insurance customer. (Ex. 1003, p. 2, col. 1:54-col. 2:3;
`col. 2:43-52.2) Kosaka’s insurance premium determination device employs
`a risk evaluation device for evaluating risk in the vehicle and driver. (Id.)
`Kosaka’s insurance premium determination system “allows risk evaluations
`that change from hour to hour during travel to be reflected in the insurance
`
`
`2 As Kosaka is a Japanese Unpublished Application, the citations to Kosaka
`are to the Certified English-Language Translation provided by Liberty in
`Exhibit 1003. The page numbers refer to those that appear on the top center
`of each page, and not the exhibit page numbers that appear on the bottom
`right corner.
`
`12
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`Casee CBM2013-00003
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`Patennt 8,090,5998
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`premmium.” (Idd. at p. 7, cool. 2:21-255.) Figure
`
`
`
`
`
`
`beloww, illustrattes one of KKosaka’s eembodimennts:
`
`
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`1 of Kosakka, reproduuced
`
`Referrinng to figuree 1, the external sensoor 1 and innternal senssor 2 detecct
`
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`the sstates of the driver annd vehicle tthat contribbute to riskk (e.g., speeed).
`
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`
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`(Ex. 1003, p. 33, col. 1:4-118; p. 4, cool. 2:4-17.)) The fuzzzy logic parrt 3
`
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`evaluuates risk bbased on thhe states off the driverr and vehiccle. (Id. att p. 3, col.
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`
`
`
`
`
`
`
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`2:23-30; p. 4, ccol. 2:18-220.) Speciffically, the
`
`
`outputs frrom sensorrs 1 and 2
`
`
`are uused as inpput values tto the fuzzyy logic parrt 3. (Id. att p. 4, col.
`2:18-19.)
`
`
`
`
`
`
`
`
`The risk evaluaation valuees determinned by the
`
`
`fuzzy logiic may be sstored in
`
`
`
`
`
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`the ffuzzy memmory 4. (Idd. at p. 4, cool. 2:24-266.) The dettection of tthe states
`
`real-time.
`
`
`
`
`
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`that contribute to risk andd the evaluuation of riisk are carrried out in
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`
`
`(Id. aat p. 4, col. 1:30-34.))
`
`
`
`Kosaka’s system fufurther inclludes a pre
`
`
`mium calcculation paart 6 that
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`uses the risk evvaluation vvalues to deetermine innsurance aadjustmentss. (Id. at
`
`
`
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`
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`p.4,
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`
`
`
`
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`col. 2:26-330.) The ppremium caalculation ppart 6 perfforms tempporal
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`
`
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`
`
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`integgration andd computattion of riskk evaluationn values, aand calculaates
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`to thhe premiumm calculatioon part 6 too perform ttime integrration. (Idd. at p. 4,
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`
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`
`
`
`
`
`
`
`
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`col. 2:31-33.) A determination of tthe insurannce adjustmment is alsoo
`13
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`insurrance premmiums. (Idd. at p. 4, cool. 2:26-299.) Systemm clock 5 iss connectedd
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`Casee CBM2013-00003
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`Patennt 8,090,5998
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`perfoormed in reeal-time. ((Id. at p. 4,, col. 1:30--34.) Kosaaka’s systeem further
`
`
`
`
`
`
`
`
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`incluudes: (1) aan output innterface 7 that has ann electronicc currencyy transfer
`
`
`
`
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`requuest means or a prepaayment amoount erasinng means;
`
`and (2) a mmonetary
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`amouunt file parrt 8 that stoores prepayyment balaance. (Id.
`
`
`
`
`
`
`
`at p. 4, coll. 2:33-38.))
`
`
`BB. RDSS
`
`
`RDSS discloses a GGEOSTARR® systemm. (Ex. 10004, p. 163.)) In
`
`
`
`
`n
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`partiicular, commpact radioo terminals located innside a vehhicle can seend positio
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`data,, status or aalarms, andd messages to GEOSSTAR® Ceentral in WWashingtonn,
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`DC. (Id.) Datta continuaally is receeived and pprocessed aat the GEOOSTAR®
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`
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`
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`compputer facility and dellivered to tthe users’ hheadquarteers locationns using
`
`(Id.) Figuure System
` 2 of
`
`
`
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`standdard commmercial commmunicatioons links.
`system:
`
`
`
`
`RDSSS, reproduuced beloww, illustratees RDSS’s
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`distributedd network
`
`
`
`
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`3 Thee page nummbers referr to the origginal page numbers oof the referrences, andd
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`not tthe exhibit page nummbers on thee bottom riight cornerr.
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`Figure System 2 of RDSS depicts the data transmission from a radio
`terminal to the central location.
`C. Herrod
`Herrod discloses a computer-based monitoring and reporting device
`
`that is used in a vehicle to measure driver acceleration patterns and report
`associated accident risks. (Ex. 1006, p. 1-24.) Herrod’s device uses the
`measured acceleration data to classify the driver into one of several groups,
`each of which associates with a different level of accident risk. (Id.)
`According to Herrod, safe drivers can use the measured acceleration data to
`demonstrate their competence to insurance companies. (Id. at p. 1.)
`
`
`III. ANALYSIS
`A. Claim Construction
`In a covered business method patent review, a claim in an unexpired
`
`patent shall be given its broadest reasonable construction in light of the
`specification of the patent in which it appears. 37 C.F.R. § 42.300(b).
`Under the broadest reasonable construction standard, claims are to be given
`their broadest reasonable interpretation consistent with the specification, and
`the claim language should be read in light of the specification as it would be
`interpreted by one of ordinary skill in the art. In re Am. Acad. of Sci. Tech.
`Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). This means that the words of
`the claim will be given their plain meaning unless the plain meaning is
`
`4 The page numbers refer to the original page numbers of the references, and
`not the exhibit page numbers on the bottom right corner.
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`inconsistent with the specification. In re Zletz, 893 F.2d 319, 321 (Fed. Cir.
`1989). In some cases, the ordinary meaning of claim language as
`understood by a person of skill in the art may be readily apparent even to lay
`judges, and claim construction in such cases involves little more than the
`application of widely accepted meaning of commonly understood words.
`Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005) (en banc).
`Liberty identifies several claim terms and its interpretation for those
`terms. (Pet. 16-18.) As a step in our analysis for determining whether to
`institute a covered business method patent review, we will address each
`claim term identified by Liberty in turn.
`
`1. “Rating Factor” (Claim 40)
`Liberty states that under the rule of broadest reasonable interpretation
`in light of the specification, “rating factor” means “a calculated insurance
`risk value such as a safety score or a usage discount.” (Pet. 17.) In support
`of that assertion, Liberty points to portions of the ’598 patent. (Pet. 17,
`citing Ex. 1001, 22:18-22 and 23:10-13.) Progressive presents no opposition
`to that interpretation.
`We determine that Liberty’s interpretation is consistent with the
`specification of the ’598 patent. On this record, we agree with that
`interpretation, but add the clarification that an insurance risk value would be
`a value that reflects an associated level of insurance risk and, therefore, also
`a corresponding insurance premium.
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`22. “Driver Safety Scoore” (Claimms 1-32 annd 48-78)
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`Liberty cconstrues ““driver saffety score”
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`to mean ““a calculateed
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`insurrance risk value assoociated withh driver saafety.” (Peet. 17-18.)
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`of thhat assertioon, Liberty points to pportions off the speciffication of
`the ’598
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`patennt. (Id., citing Ex. 10001, 22:18
`3:1-3.)
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`-22, 22:522-55, and 2
`fety score
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`The ’5988 specificaation is reassonably cleear that thee driver sa
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`is a ccalculated value. Nootably, Figuure 9 of thee ’598 pateent, reprodduced
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`beloww, illustrattes a displaay screen ssummarizinng the dataa regardingg
`of
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`operrational asppects of a vvehicle witth informattion relatedd to a cost
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`insurrance (ovaal added forr emphasiss). (Ex. 10001, 5:38-440.)
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`In supportt
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`Figuure 9 depictts a safety score expllanation seection (9188) which inndicates thee
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`safetty score is a weightedd functionn (920) (“[[[1.99 * 50%%] + [0.80
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` * 25%] +
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`[1.488 * 25%]] = 1.56 (saffety score))”) of an exxcessive sppeed factorr (922), an
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`aggrressive acceleration ffactor (924)) and an exxcessive brraking facttor (926).
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`(Ex. 1001, 22:448-49, 22:552-55, andd 23:1-3.)
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`Case CBM2013-00003
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`On this record, we adopt Liberty’s construction by interpreting the
`term “driver safety score” as “a calculated insurance risk value associated
`with driver safety” because it is consistent with the specification of the ’598
`patent.
`
`3. “Driver Safety Data” (Claims 33-47)
`Liberty construes “driver safety data” to have the same meaning as
`“driver safety score,” namely “a calculated insurance risk value associated
`with driver safety.” (Pet. 17-18.) However, claim 34 that depends from
`claim 33 recites “where the driver safety data comprises a driver safety
`score.” It is clear from that claim language that “driver safety data” has a
`broader scope than “driver safety score.”
`
`Based on this record, we broadly, but reasonably construe “driver
`safety data” to encompass “driver safety score” and other data associated
`with driver safety.
`
`4. “Insurance Rating” (Claims 4-6, 11-13, 20-22, 25, 26, 48, 51-53,
`58-60, 67-69, 72, 73, and 78)
`As to this term, Liberty asserts that it adopts the broadest reasonable
`construction applied by the Examiner during reexamination of U.S. Patent
`6,064,970, for which a benefit is sought by the ’598 patent. (Pet. 22, citing
`Ex. 1022, 3/7/11 OA at 46-47; Ex. 1001, 1:50-53, 2:49-50, 22:24-28.)
`Liberty interprets “insurance rating” to mean “a/some value/cost used to
`determine an overall cost associated with insurance of the vehicle.” (Id.)
`Progressive presents no opposition to that interpretation. We agree with
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`Liberty’s construction as it is consistent with the specification of the ’598
`patent.
`
`B. Alleged Grounds of Unpatentability
`Liberty contends that claims 1-78 of the ’598 patent are unpatentable
`under 35 U.S.C. § 103(a) based on various combinations of Kosaka, RDSS,
`Herrod, and Dorweiler. (Pet. 26-73.) In support of its contention, Liberty
`provides numerous claim charts to show how each claim limitation is met by
`the cited prior art references (Pet. 26-73), and asserts that a person of
`ordinary skill in the art would have been motivated to combine the cited
`references (Pet. 20-26).
`Progressive opposes and argues that the combination of Kosaka and
`RDSS does not meet certain limitations of the claims of the ‘598 patent as
`alleged by Liberty. (Prel. Resp. 11-17.) Specifically, Progressive argues
`that the combination of Kosaka and RDSS does not meet: (1) a server
`receiver that is “configured to wirelessly receive selected onboard vehicle
`data monitored by an in-vehicle data monitoring device within a vehicle”;
`and (2) “a network server system coupled to the server receiver that provides
`an interface having functionality configured to establish relationship
`between the selected onboard vehicle data and levels of risk in a usage based
`insurance system,”5 as recited in claim 1 (emphasis added). (Id.)
`
`
`5 Each of the challenged claims includes, or depends from a claim that
`includes, some variation of this limitation.
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`We are persuaded by Progressive’s arguments. In addition, we
`determine that there is insufficient factual evidence on this record to support
`Liberty’s contentions, and Liberty’s petition fails to articulate a reason with
`a rational underpinning to support the legal conclusion of obviousness.
`Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966) (The question of
`obviousness is resolved on the basis of underlying factual determinations.);
`In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (Obviousness grounds of
`unpatentability cannot be sustained by mere conclusory statements; instead,
`there must be some articulated reasoning with some rational underpinning to
`support the legal conclusion of obviousness.).
`We first note that Kosaka does not describe wireless transmission of
`monitored vehicle data to a network server receiver. Simply put, Kosaka’s
`system does not include “a server receiver,” “a network server system,” “an
`interface,” and any wirelessly transmission of monitored onboard vehicle
`data, as required by the disputed claim limitations. Rather, Kosaka’s system
`is an in-vehicle integrated system with all of the system components, such as
`the monitoring device, risk evaluation device, database, and insurance
`premium determination device, implemented onboard the vehicle to provide
`real-time risk evaluation and real-time premium calculation. (Ex. 1003, p. 3,
`col. 1:4-18; p. 4, col. 1:30-34; p. 4, col. 2:4-17.)
`While RDSS discloses a network system that can receive wireless
`transmission of vehicle data, RDSS does not describe a network server
`system being coupled to the server receiver that provides an interface having
`functionality configured to establish relationships between the selected
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`onboard vehicle data and levels of risk in a usage based insurance system.
`More importantly, it is unclear from the portions of the references relied
`upon by Liberty (Pet. 27-29) how Kosaka’s in-vehicle integrated system
`(which is not a distributed network system) would be combined with
`RDSS’s distributed network system. This is not a mere substitution of one
`known component for another known component to achieve a predictable
`result.
`In support of its assertions (Pet. 28-29), Liberty directs attention to the
`declaration of Ms. Mary O’Neil to demonstrate that a person of ordinary
`skill in the art would have understood that Kosaka’s disclosure of risk
`evaluation values is a disclosure of levels of risk. (Pet. 28, citing Ex. 1011,
`O’Neil Dec. ¶ 28.) Liberty further relies upon the declaration of Mr. Scott
`Andrews to establish that one of ordinary skill in the art would have
`understood RDSS’s disclosure of a server inherently discloses an interface
`so that the terminals can communicate with it. (Pet. 29, citing to Ex. 1015,
`Andrews Dec. ¶ 23.) However, Liberty’s assertions and experts’ testimonial
`evidence are unpersuasive. They fail to explain why one of ordinary skill in
`the art would modify Kosaka’s in-vehicle integrated system (which has the
`risk evaluation device onboard the vehicle to provide real-time risk
`evaluation) to transmit the monitored vehicle data wirelessly to a network
`server receiver. Unigene Labs v. Apotex, Inc., 655 F.3d 1352, 1360 (Fed.
`Cir. 2011); Bayer Schering Pharm. AG v. Barr Labs., Inc., 575 F.3d 1341,
`1347 (Fed. Cir. 2009) (To render a claim obvious, prior art cannot be
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`“vague” and must collectively, although not explicitly, guide a person of
`ordinary skill in the art towards a particular solution.).
`Liberty further asserts that one of ordinary skill in the art “would have
`recognized that Kosaka’s system of determining insurance rates using
`monitored in-vehicle operation data could be advantageously implemented
`using the wireless transmission system for telematics data and other features
`disclosed in RDSS, in order to, inter alia, communicate pertinent data to the
`insurer more efficiently.” (Pet.
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