Attorney Docket No.:
`
` LMIC-021-802
`Customer No. 28120
`
`Petitioner: Liberty Mutual
`
` Insurance Company
`
`§
`§
`§
`§
`§
`§
`§
`
` Covered Business Method Patent Review
`United States Patent No. 8,140,358
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`Inventor: Ling et al.
`
`United States Patent No.: 8,140,358
`Formerly Application No.: 12/132,487
`Issue Date: March 20, 2012
`
`Filing Date: June 3, 2008
`
`Former Group Art Unit: 3695
`Former Examiner: Robert R. Niquette
`
`For: Vehicle Monitoring System
`
`MAIL STOP PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`Post Office Box 1450
`Alexandria, Virginia 22313-1450
`
`PETITION FOR COVERED BUSINESS METHOD PATENT REVIEW OF
`UNITED STATES PATENT NO. 8,140,358 PURSUANT TO 35 U.S.C. § 321,
`37 C.F.R. § 42.304
`
`
`
`Pursuant to 35 U.S.C. § 321 and 37 C.F.R. § 42.304, the undersigned, on behalf
`
`of and acting in a representative capacity for petitioner, Liberty Mutual Insurance
`
`Company (“Petitioner” and real party in interest), hereby petitions for review under
`
`the transitional program for covered business method patents of claims 1-20 (all
`
`claims) of U.S. Patent No. 8,140,358 (“the ‘358 Patent”), issued to Progressive
`
`Casualty Insurance Company (“Progressive”). Petitioner hereby asserts that it is more
`
`likely than not that at least one of the challenged claims is unpatentable for the
`
`
`
`

`

` Covered Business Method Patent Review
`United States Patent No. 8,140,358
`
`reasons set forth herein and respectfully requests review of, and judgment against,
`
`claims 1-20 as unpatentable under § 103.1
`
`
`
`
`1 As discussed in Section I, infra, Petitioner has previously filed a Petition (No.
`CBM2012-00003) seeking a covered business method review of the ‘358 Patent
`requesting judgment against these claims raising different questions based on different
`prior art references and combinations under §§ 102 and 103. Petitioner notes that the
`Director, pursuant to Rule 325(c), may determine at the proper time that merger of
`these proceedings may be appropriate.
`
`ii
`
`

`

`TABLE OF CONTENTS
`
` Covered Business Method Patent Review
`United States Patent No. 8,140,358
`
`
`I. 
`II. 
`
`INTRODUCTION ....................................................................................................... 1 
`PETITIONER HAS STANDING ............................................................................ 5 
`A. 
`The ‘358 Patent Is a Covered Business Method Patent ............................... 5 
`B. 
`Petitioner Is a Real Party In Interest Sued for and Charged With
`Infringement ....................................................................................................... 7 
`III.  OVERVIEW OF SPECIFIC GROUNDS FOR WHICH IT IS MORE
`LIKELY THAN NOT THAT THE CHALLENGED CLAIMS (1-20) OF
`THE ‘358 PATENT ARE UNPATENTABLE ...................................................... 8 
`IV.  Background Information For the ‘358 Patent .......................................................... 8 
`A. 
`The ‘358 Patent .................................................................................................. 8 
`B. 
`The ‘358 Patent Prosecution History .............................................................. 9 
`C. 
`The Earliest Possible Priority Date for Claims 1, 16-17, 19-20 of the ‘358
`Patent Is January 23, 2004 and the Earliest Possible Priority Date for
`Claims 2-15, 18 of the ‘358 Patent is June 3, 2008 ..................................... 12 
`V.  DETAILED EXPLANATION OF REASONS FOR RELIEF
`REQUESTED, SHOWING IT IS MORE LIKELY THAN NOT THAT AT
`LEAST ONE OF THE CHALLENGED CLAIMS IS UNPATENTABLE . 14 
`A. 
`Claim Construction .......................................................................................... 15 
`B. 
`The Challenged Claims Are Invalid Under § 103 ....................................... 16 
`1. 
`Independent Claim 1 ........................................................................... 17 
`(a) 
`Claim 1 is Rendered Obvious Under § 103 by
`RDSS in View of Kosaka ..................................................... 17 
`Dependent Claim 2 is Rendered Obvious Under § 103 by
`RDSS, in View of Kosaka and Chang ............................................... 43 
`Dependent Claim 3 is Rendered Obvious Under § 103 by
`RDSS, in view of Kosaka .................................................................... 45 
`Dependent Claim 4 is Rendered Obvious Under § 103 by
`RDSS, in view of Kosaka and Beaverton ......................................... 46 
`Dependent Claim 5 is Rendered Obvious Under § 103 by
`RDSS, in view of Kosaka .................................................................... 49 
`Dependent Claim 6 is Rendered Obvious Under § 103 by
`RDSS, in view of Kosaka and Stanifer ............................................. 50 
`
`2. 
`
`3. 
`
`4. 
`
`5. 
`
`6. 
`
`iii
`
`

`

`7. 
`
`8. 
`
`9. 
`
`Dependent Claim 7 is Rendered Obvious Under § 103 by
`RDSS, in view of Kosaka and Stanifer ............................................. 54 
`Dependent Claim 8 is Rendered Obvious Under § 103 by
`RDSS, in view of Kosaka .................................................................... 56 
`Dependent Claim 9 is Rendered Obvious Under § 103 by
`RDSS, in view of Kosaka .................................................................... 57 
`10.  Dependent Claim 10 is Rendered Obvious Under § 103 by
`RDSS, in view of Kosaka and Lowrey .............................................. 58 
`11.  Dependent Claim 11 is Rendered Obvious Under § 103 by
`RDSS, in view of Kosaka and Lowrey .............................................. 60 
`12.  Dependent Claim 12 is Rendered Obvious Under § 103 by
`RDSS, in view of Kosaka and Lowrey (as Confirmed by
`MSM6500 Press Release) .................................................................... 60 
`13.  Dependent Claim 13 is Rendered Obvious Under § 103 by
`RDSS, in view of Kosaka and Lowrey .............................................. 62 
`14.  Dependent Claim 14 is Rendered Obvious Under § 103 by
`RDSS, in view of Kosaka and Lowrey .............................................. 63 
`15.  Dependent Claim 15 is Rendered Obvious Under § 103 by
`RDSS, in view of Kosaka and Lowrey .............................................. 64 
`16.  Dependent Claim 16 is Rendered Obvious Under § 103 by
`RDSS, in view of Kosaka and Bouchard .......................................... 65 
`17.  Dependent Claim 17 ............................................................................ 67 
`(a) 
`Dependent Claim 17 is Rendered Obvious Under §
`103 by RDSS, in view of Kosaka and Bouchard .............. 67 
`Dependent Claim 17 is Rendered Obvious Under §
`103 by RDSS, in view of Kosaka, Bouchard, and
`Gray ........................................................................................ 68 
`Dependent Claim 17 is Rendered Obvious Under §
`103 by RDSS, in view of Kosaka, Bouchard, and
`Lewis ........................................................................................ 70 
`18.  Dependent Claim 18 is Rendered Obvious Under § 103 by
`(1) RDSS, in view of Kosaka and Bouchard; (2) RDSS, in
`view of Kosaka, Bouchard, and Gray; and (3) RDSS, in
`view of Kosaka, Bouchard, and Lewis .............................................. 72 
`19.  Dependent Claim 19 is Rendered Obvious Under § 103 by
`RDSS, in view of Kosaka .................................................................... 73 
`
`(b) 
`
` Covered Business Method Patent Review
`United States Patent No. 8,140,358
`
`
`(c) 
`
`iv
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`

`

` Covered Business Method Patent Review
`United States Patent No. 8,140,358
`
`
`20.  Dependent Claim 20 is Rendered Obvious Under § 103 by
`RDSS, in view of Kosaka .................................................................... 74 
`VI.  CONCLUSION........................................................................................................... 75 
`
`
`v
`
`

`

`EXHIBIT LIST
`
`Exhibit 1001
`Exhibit 1002
`
`Exhibit 1003
`
`Exhibit 1004
`
`Exhibit 1005
`
`Exhibit 1006
`
`Exhibit 1007
`
`Exhibit 1008
`
`Exhibit 1009
`
`Exhibit 1010
`Exhibit 1011
`Exhibit 1012
`Exhibit 1013
`Exhibit 1014
`
` Covered Business Method Patent Review
`United States Patent No. 8,140,358
`
`
`United States Patent No. 8,140,358
`United States Patent No. 8,140,358 File
`History
`Japan Patent Application H4-182868, filed
`on November 19, 1990, and published on
`June 30, 1992 (“Kosaka”)
`Geostar, Understanding Radio
`Determination Satellite Service (Jane Pierce
`& Marilyn Finley ed.) (May 1989) (“RDSS”)
`
`Geostar Corp., Annual Report (Form 10-K)
`(Apr. 16, 1990) (“Geostar 10-K”)
`
`United States Patent No. 5,446,757, filed on
`June 14, 1993, and issued on August 29,
`1995 (“Chang”)
`United States Patent No. 5,210,854, filed on
`June 14, 1989, and issued on May 11, 1993
`(“Beaverton”)
`United States Patent No. 7,228,211, filed on
`March 26, 2004, and issued on June 5, 2007
`(“Lowrey”)
`“QUALCOMM’s MSM6500 Multimedia
`Single-Chip Solution Enables High-
`Performance Multimode Handsets
`Supporting CDMA2000 1X, 1xEV-DO and
`GSM/GPRS,” PR Newswire, published
`November 12, 2002 (“MSM6500 Press
`Release”)
`United States Patent No. 5,797,134
`United States Patent No. 6,064,970
`United States Patent No. 6,868,386
`United States Patent No. 8,090,598
`Declaration of Scott Andrews, dated
`November 19, 2012
`
`vi
`
`

`

`Exhibit 1015
`
`Exhibit 1016
`
`Exhibit 1017
`
`Exhibit 1018
`
`Exhibit 1019
`
`Exhibit 1020
`Exhibit 1021
`Exhibit 1022
`
`Exhibit 1023
`
`Exhibit 1024
`
`Exhibit 1025
`
` Covered Business Method Patent Review
`United States Patent No. 8,140,358
`
`
`Curriculum vitae of Scott Andrews and List
`of Matters
`OBD-II Background—Where’d It Come
`From?,
`http://www.OBDii.com/background.html
`(follow “Where’d it come from?” hyperlink)
`Excerpt from Shuji Mizutani, Car
`Electronics, page 250 (Nippondenso Co.
`Ltd. 1992)
`Excerpt from David S. Boehner,
`Automotive Microcontrollers, in
`Automotive Electronics Handbook, pages
`11.24-11.29 (Ronald K. Jurgen ed., 1995)
`Robert D. Briskman, “Radio Determination
`Satellite Service,” Proceedings of the IEEE,
`Vol. 78, No. 7 (July 1990)
`Declaration of Amanda F. Wieker
`Declaration of Georginne Blundell
`United States Patent No. 5,465,079, filed on
`August 13, 1993, and issued on November
`7, 1995 (“Bouchard”)
`United States Patent No. 4,651,157, filed on
`May 7, 1985, and issued on March 17, 1987
`(“Gray”)
`United States Patent No. 5,438,312, filed on
`April 19, 1994 and issued on August 1, 1995
`(“Lewis”)
`United States Patent No. 5,243,530, filed on
`July 26, 1991, and issued on September 7,
`1993 (“Stanifer”)
`
`vii
`
`

`

` Covered Business Method Patent Review
`United States Patent No. 8,140,358
`
`I.
`
`INTRODUCTION
`
`The ‘358 Patent is merely an attempt to claim an old idea long known in the
`
`art—comparing monitored vehicle data with prescribed levels of risk to generate an
`
`insurance-related factor. Sole independent claim 1 generally requires: (1) vehicle
`
`monitoring components (including a processor, memory, and wireless transmitter)
`
`that collect, store, and wirelessly transmit monitored data; (2) a database linked to a
`
`server that stores the vehicle data transmitted from the device; and (3) a server that
`
`processes the vehicle data (based on its effects on an insurance premium, safety, or
`
`level of risk) and generates a “rating factor.” Dependent claims 2-20 simply tack on
`
`an array of conventional implementation choices (relating, e.g., to the wireless
`
`transmitter, alerting a third-party to a driving incident, calculating an insurance
`
`premium based upon the “rating factor,” or processing insurance-related vehicle data).
`
`These were not, of course, invented by the Applicants—as the ‘358 Patent’s
`
`asserted parent patents concede.2 For example, U.S. Pat. No. 6,064,970 (“‘970 Pat.”)
`
`(Exhibit 1011) acknowledged as commonplace:
`
` “[V]ehicle operating data recording systems” that “disclose a variety of
`
`conventional techniques for recording vehicle operation data elements in a
`
`variety of data recording systems” (Ex. 1011 at 2:54-61);
`
` Vehicle tracking systems that use “communication links with navigation
`
`
`2 As discussed, infra, at § IV.C, in fact the ‘358 Patent’s claims are not entitled to claim
`priority to the applications issuing as these supposed “parent” patents.
`
`
`
`

`

` Covered Business Method Patent Review
`United States Patent No. 8,140,358
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`systems for providing information describing a vehicle’s location based upon
`
`navigation signals. When such positioning information is combined with
`
`roadmaps in an expert system, vehicle location is ascertainable” (Ex. 1011 at
`
`3:28-34);
`
` Radio communication links and cellular phones for “immediate communication
`
`of certain types of data elements or . . . a more immediate response in cases of
`
`theft, accident, break-down or emergency” (Ex. 1011 at 2:61-66);
`
` “[I]nsurance rating systems [that] provide discounts and surcharges for some
`
`types of use of the vehicle, equipment on the vehicle and type of driver”
`
`including “[b]usiness use,” “[s]afety equipment on the vehicle,” “antilock
`
`brakes,” and “safe driver” (Ex. 1011 at 2:21-37); and
`
` Detection and recording of vehicle usage data, e.g., seatbelt usage, to assess
`
`vehicle insurance costs (Ex. 1011 at 2:66-3:2).
`
`The ‘970 Patent also conceded that “[c]urrent motor vehicle control and operating
`
`systems comprise electronic systems readily adaptable for modification to obtain the
`
`desired types of information relevant to determination of the cost of insurance.” Ex.
`
`1011 at 3:25-28. Progressive, however, affirmatively deleted each of these explicit
`
`acknowledgements about the known prior art before its claimed priority chain reached
`
`the application for the ‘358 Patent, and the different PTO Examiner who would
`
`2
`
`

`

` Covered Business Method Patent Review
`United States Patent No. 8,140,358
`
`consider the ‘358 Patent’s application accordingly did so without any of these
`
`admissions from Progressive.
`
`Tellingly, the only supposedly inventive feature prompting the Examiner to
`
`allow the ‘358 Patent claims—generating a “rating factor”—was also already well
`
`known in the art. The Examiner believed that “the prior art of record fails to teach:
`
`where the server is configured to process the selected vehicle data that represents one
`
`or more aspects of operating the vehicle with data that reflects how the selected
`
`vehicle data affects a premium of an insurance policy, safety or level of risk; and
`
`where the server is further configured to generate a rating factor based on the selected
`
`vehicle data stored in the database.” Ex. 1002, at 000026-27. But in fact the prior art
`
`was full of such teachings. Kosaka, for example—a reference Petitioner cites here in
`
`combination with RDSS—clearly teaches this element (properly construed for
`
`purposes of this Review, see § 42.300(b) 3) in disclosing a “risk evaluation” system that
`
`“evaluates risk” based on “states that contributes to risk” and “empirical knowledge”
`
`to determine “risk evaluation values.” (Ex. 1003 at 3-4).4
`
`
`3 All sections cited herein are from either 35 U.S.C. or 37 C.F.R., as the context
`indicates, unless stated otherwise. All emphasis is added by Petitioner unless
`otherwise noted.
`4 As noted above, Petitioner previously filed an additional Petition (No. CBM2012-
`00003) seeking covered business method review and judgment against the same claims
`of the ‘358 Patent, but raising different questions based on different prior art
`references and combinations under §§ 102 and 103—including the primary
`“Nakagawa” and “Herrod” references not previously considered by the PTO, and a
`different set of grounds involving Kosaka (but not, as here, in combination with
`
`3
`
`

`

` Covered Business Method Patent Review
`United States Patent No. 8,140,358
`
`Moreover, while Petitioner presents prior art that predates any claimed priority
`
`date for the ‘358 Patent, the claims of the ‘358 Patent are not (as discussed, infra, at
`
`IV.C) entitled to claim priority to the applications issuing as the parent ‘134, ‘970,
`
`‘386, or ‘598 patents. Independent claim 1’s recitation of a “server . . . configured to
`
`generate a rating factor based on the selected vehicle data stored in the database” is an
`
`entirely new concept distinct from what the ‘134, ‘970 and ‘386 patents’ written
`
`descriptions disclosed. Similarly, the elements recited in claims 2-15 and 18 do not
`
`find any support in any of the ‘358 Patent’s parents because none of their respective
`
`disclosures demonstrate that Applicants were in possession of the inventions recited
`
`in those claims.
`
`Indeed, even if Patent Owner Progressive were to argue that the bare-bones
`
`disclosures in the ‘358 Patent’s parent applications actually provided the necessary
`
`primary reference RDSS). In that proceeding, the Board entered an October 25, 2012
`Order (Denial of Grounds – 37 C.F.R. § 42.208(b)) (CBM2012-00003, Paper No. 8),
`concluding that the earlier Petition did not sufficiently identify support in Kosaka
`(standing alone and in various different combinations not presented here) for certain
`proposed grounds of invalidity. While respectfully disagreeing with this conclusion,
`Petitioner, rather than requesting reconsideration, now files this separate petition
`presenting Kosaka as a secondary reference in combination with a different primary
`prior art reference (RDSS), which raises new questions and addresses the concerns
`perceived by the Board in the earlier Petition, with the benefit of the fuller
`explanation and consideration that a separate petition affords. See, e.g., infra at §
`V.B.1(a). Petitioner notes that the Director, pursuant to Rule 325(c), may determine
`at the proper time that merger of that Petition with this proceeding may be
`appropriate. Petitioner also acknowledges with appreciation the procedural guidance
`provided by the Lead Trial Judge and others at the Patent Trial and Appeal Board
`regarding the appropriateness of such a division of grounds under the transitional
`program.
`
`4
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`

`

` Covered Business Method Patent Review
`United States Patent No. 8,140,358
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`support, and thus tried to claim priority back to 2000 or even 1996, Petitioner’s
`
`references discussed here would certainly still be invalidating because they provide far
`
`more disclosure than any supposed “support” in Progressive’s applications. For
`
`example, if Progressive were to try to stretch the scope of the claimed “rating factor”
`
`to argue purported support in its earlier filings, this will simply underscore the far
`
`deeper and earlier disclosures of Petitioner’s cited art, including the 1992 Kosaka
`
`reference, which “determines comprehensive risk based on reasoning utilizing vague
`
`empirical knowledge through the input of the internal measured data and the external
`
`measured data” and “performs temporal integration and computation of risk
`
`evaluation values, and thereby calculates insurance premiums.” Ex. 1003 at 4. Simply
`
`put, the ‘358 Patent disclosed nothing that was not already exceedingly well known,
`
`and its claims are, accordingly, invalid.
`
`II.
`
`PETITIONER HAS STANDING
`A.
`The ‘358 Patent is a “covered business method patent” under § 18(d)(1) of the
`
`The ‘358 Patent Is a Covered Business Method Patent
`
`Leahy-Smith America Invents Act, Pub. L. 112-29 (“AIA”) and § 42.301. As
`
`discussed above, the ‘358 Patent is directed to analyzing and processing data for
`
`financial products and services—specifically, insurance. The claimed invention
`
`concerns the administration and management of an insurance policy to adjust
`
`insurance premiums based on monitored vehicle data. See AIA § 18(d)(1); 37 C.F.R.
`
`§ 42.301(a). See also 77 Fed. Reg. 48,734, 48,735 (Aug. 14, 2012) (“[T]he definition of
`
`5
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`

`

` Covered Business Method Patent Review
`United States Patent No. 8,140,358
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`covered business method patent was drafted to encompass patents ‘claiming activities
`
`that are financial in nature, incidental to a financial activity or complementary to a
`
`financial activity.’”) (citation omitted). Although certain conventional components are
`
`recited in the claims, 5 the ‘358 Patent is clearly not a “technological invention”
`
`because it does not claim “subject matter as a whole [that] recites a technological
`
`feature that is novel and unobvious over the prior art[] and solves a technical problem
`
`using a technical solution.” § 42.301(b). There is no “technological feature” of the
`
`‘358 Patent that is novel and unobvious. The claimed invention simply uses data
`
`obtained from conventional vehicle monitoring systems to generate insurance-related
`
`“rating factors.” And, as noted above, the reason the Examiner gave for allowing the
`
`claims in the first place was his belief that the prior art before him failed to disclose a
`
`server configured to “process selected vehicle data that represents one or more
`
`aspects of operating the vehicle with data that reflects how the selected vehicle data
`
`affects a premium of an insurance policy, safety or level of risk” and “generate a rating
`
`factor based on the selected vehicle data stored in the database.” Ex. 1002, 000026-
`
`27. The subject matter as a whole also does not solve a “technical problem.” Instead,
`
`
`5 See, e.g., 77 Fed. Reg. 48,756 48,764 (Aug. 14, 2012) (“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 an ATM or point of sale device,” or
`“[r]eciting the use of known prior art technology to accomplish a process or method,
`even if that process or method is novel and non-obvious” would “not typically render
`a patent a technological invention.”).
`
`6
`
`

`

` Covered Business Method Patent Review
`United States Patent No. 8,140,358
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`the only problem allegedly present in the prior art was that “some data used to classify
`
`risk is not verified and has little relevance to measuring risk. Systems may accumulate
`
`and analyze significant amounts of data and yet discover that the data does not
`
`accurately predict losses. The data may not be validated, may be outdated, and may
`
`not support new or dynamic risk assessments.” Ex. 1001 at 1:24-29. The ‘358
`
`Patent—as filed, argued, and issued—concerns non-technical issues of insurance
`
`rating.6
`
`B.
`
`Petitioner Is a Real Party In Interest Sued for and Charged With
`Infringement
`
`Progressive has amended its complaint 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, to add an assertion of the ‘358 Patent against Petitioner.
`
`The ‘358 Patent also is or may be at issue in certain other matters in addition to the
`
`other Petition filed previously (see n.1, supra).7
`
`
`6 The Original Class (i.e., primary classification) of the ‘358 Patent is U.S. Class 705/4,
`“Insurance (e.g., computer implemented system or method for writing insurance
`policy, processing insurance claim, etc.).” Ex. 1001 at (52).
`7 Petitioner identifies the following further judicial or administrative matters, including
`applications and patents claiming, or which may claim, the benefit of the ‘358 Patent’s
`priority date: Progressive Cas. Ins. Co. v. State Farm Mut. Auto. Ins. Co., No. 1:12cv1068
`(N.D. Ohio); Progressive Cas. Ins. Co. v. Hartford Fire Ins. Co. et al., No. 1:12cv1070 (N.D.
`Ohio); U.S. Pat. Nos. 6,868,386, 6,064,970, 5,797,134, 8,090,598, and 8,311,858;
`Pending U.S. Pat. App. Nos. 13/618,021, 13/617,929, and 13/338,959; Ex Parte
`Reexamination of U.S. Pat. No. 6,064,970 (Ctrl. No. 90/011,252); Covered Business
`Method Patent Review Petitions re U.S. Patent Nos. 6,064,970 (Nos. CBM2012-
`
`7
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`

`

` Covered Business Method Patent Review
`United States Patent No. 8,140,358
`
`III. OVERVIEW OF SPECIFIC GROUNDS FOR WHICH IT IS MORE
`LIKELY THAN NOT THAT THE CHALLENGED CLAIMS (1-20)
`OF THE ‘358 PATENT ARE UNPATENTABLE
`
`Pursuant to § 42.208 (and § 42.300), Petitioner asserts that at least one—and,
`
`indeed, every one—of the challenged claims of the ‘358 Patent is unpatentable as
`
`invalid under the requirement of § 103. The Exhibit List above lists all prior art
`
`references relied upon in the present Petition for the asserted grounds of invalidity
`
`under § 103—including references not previously cited to or considered by the PTO.
`
`Section V.B lists each ground upon which it is more likely than not that the
`
`challenged claims are unpatentable as obvious under § 103, and renders a detailed
`
`explanation therefor.
`
`IV. BACKGROUND INFORMATION FOR THE ‘358 PATENT
`A.
`The ‘358 Patent—issued to Progressive on March 20, 2012—states it is related
`
`The ‘358 Patent
`
`to “data acquisitions, and particularly to a system that acquires data related to
`
`evaluating risk.” Ex. 1001 at 1:17-18. As explained in Section I, the majority of the
`
`‘358 Patent’s written description relates to well-known insurance schemes and vehicle
`
`monitoring methods. Figure 3, for example, catalogs an array of well-known
`
`components, such as an on-board computer (300), vehicle data bus (304), driver input
`
`device (308), car battery (310), location receiver (312), and communication link (314):
`
`
`00002, and CBM2012-00004), 8,090,598 (No. CBM2013-00003 and CBM2013-
`00004), and 8,140,358 (No. CBM2012-00003).
`
`8
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`

` Covered Business Method Patent Review
`United States Patent No. 8,140,358
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`
`
`
`As discussed above, these were not inventions of the Applicants. And their claims
`
`similarly contain nothing inventive, reciting vehicle monitoring components that
`
`collect, store, and wirelessly transmit in-vehicle monitored data, a remote database
`
`that stores the vehicle data transmitted from the device, and a server that processes
`
`the vehicle data and generates a “rating factor”—all known in the art.
`
`B. The ‘358 Patent Prosecution History
`The application resulting in the ‘358 Patent (No. 12/132,487) was filed on June
`
`3, 2008, as a continuation-in-part of U.S. App. No. 10/764,076, which in turn was
`
`filed on January 23, 2004, and issued as the ‘598 Patent. The ‘598 patent is a
`
`continuation-in-part of U.S. App. No. 09/571,650, filed May 15, 2000, which issued
`
`as U.S. Patent No. 6,868,386 (“the ‘386 patent”), which in turn is a continuation-in-
`
`part of U.S. App. No. 09/135,034, filed August 17, 1998, which issued as the ‘970
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`patent. The ‘970 patent is a continuation of U.S. Application No. 08/592,958, filed
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`January 29, 1996, which issued as U.S. Patent No. 5,797,134 (“the ‘134 patent”). Ex.
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` Covered Business Method Patent Review
`United States Patent No. 8,140,358
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`1001, at 1. A copy of the ‘358 Patent prosecution history is attached as Exhibit 1002,
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`excluding the prior art of record.
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`Applicants initially filed the application for the ‘358 Patent with 130 claims.
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`Ex. 1002 at 002008-31. On April 13, 2004, the Examiner issued a restriction
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`requirement, identifying thirteen claim groups. Ex. 1002 at 000297-311. The
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`Applicants elected the Examiner’s Group III,8 comprising amended claims 40-57 as
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`well as newly added claims 131-132. Ex. 1002 at 000287. Independent claim 40
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`generally recited three elements: (1) vehicle monitoring components, comprising a
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`processor, memory, and wireless transmitter, that collect, store, and wirelessly
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`transmit in-vehicle monitored data; (2) a database linked to a server that stores the
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`vehicle data transmitted from the device; and (3) a server that processes the vehicle
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`data based on its effects on an insurance premium, safety, or level of risk, and
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`generates a “rating factor.” Id. at 000268. Dependent claims 41-57 generally
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`concerned further limitations on the “wireless transmitter,” and claims 131-132
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`concerned further limitations on the “server.” Id. at 000268-271, 000285-86.
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`8 Group III was directed to “a processor that collects vehicle data from a vehicle bus
`that represents aspects of operating the vehicle; a memory that stores selected vehicle
`data related to a level of safety or an insurable risk in operating a vehicle; a wireless
`transmitter configured to transfer the selected vehicle data retained within the
`memory to a distributed network when a wireless network indicates a capacity to
`receive the selected vehicle data; and a monitor to display the selected vehicle data
`that represents one or more aspects of operating the vehicle with data that reflects
`how the selected vehicle data affects a premium of an insurance policy, safety or level
`of risk, classified in class 705, subclass 4.” Ex. 1002 at 000299-30.
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` Covered Business Method Patent Review
`United States Patent No. 8,140,358
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`On June 29, 2011, the Examiner rejected all pending claims as anticipated by
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`U.S. Patent No. 5,835,008 (“Colemere”), which was filed on November 27, 1996 and
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`issued November 10, 1998, and is generally directed to an information system that
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`monitors the position and motions of a driver’s feet to provide information that can
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`be put into usable form for drivers, vehicle systems, and traffic authorities. Ex. 1002
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`at 000217-25. In response, Applicants argued priority over Colemere based on related
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`U.S. Pat. App. No. 08/592,958, filed January 29, 1996, but did not identify any
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`disclosure in that application to support their claim of priority. Ex. 1002 at 000147.
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`On January 12, 2012, the Examiner issued a Notice of Allowance but refused
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`to accept Applicants’ priority arguments. Ex. 1002 at 000026. The Examiner
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`maintained Colemere was prior art, with “a processor that collects vehicle data from a
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`vehicle bus that represents aspects of operating the vehicle; a memory that stores
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`selected vehicle data related to a level of safety or an insurable risk in operating a
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`vehicle; a wireless transmitter configured to transfer the selected vehicle data retained
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`within the memory to a distributed network and a server; a database operatively linked
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`to the server to store the selected vehicle data transmitted by the wireless transmitter,
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`the database comprising a storage system remote from the wireless transmitter and
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`the memory comprising records with operations for searching the records and other
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`functions.” Id. The Examiner stated these reasons for allowance (id. at 26-27):
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`Even though, the prior art of record teaches the above-mentioned
`features, the prior art fails to teach:
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` Covered Business Method Patent Review
`United States Patent No. 8,140,358
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`
`where the server is configured to process selected vehicle data that
`represents one or more aspects of operating the vehicle with data that
`reflects how the selected vehicle data affects a premium of an insurance
`policy, safety or level of risk;
`and where the server is further configured to generate a rating factor
`based on the selected vehicle data stored in the database.
`For this reason claim 40 is deemed to be allowable over the prior art of
`record and claims 41-57, 131 and 132 are allowed by dependency …
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`C. The Earliest Possible Priority Date for Claims 1, 16-17, 19-20 of the
`‘358 Patent Is January 23, 2004 and the Earliest Possible Priority
`Date for Claims 2-15, 18 of the ‘358 Patent is June 3, 2008
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`The continuation-in-part application that issued as the ‘358 Patent was filed on
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`June 3, 2008, claiming priority to four parent applications (discussed above), the
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`earliest filed on January 29, 1996.9 To claim a pre-2008 priority date, however, the
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`claims at issue must be directed to subject matter disclosed in the prior application(s)
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`in the manner provided by § 112 ¶ 1, and must contain a written description of the
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`invention. See, e.g., Vas-Cath Inc. v. Mahurkar, 9