`571-272-7822
`
`
`
` Paper 64
`
`Entered: December 4, 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
`Patent 8,140,358
`____________
`
`
`
`Before JAMESON LEE, and JONI Y. CHANG, Administrative Patent
`Judges.
`
`LEE, Administrative Patent Judge
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`December 2, 2013, a telephone conference call was held between
`
`respective counsel for the parties and Judges Lee and Chang. Counsel for
`Petitioner initiated the conference call to ask that this proceeding be joined
`
`
`
`Case CBM2013-00009
`Patent 8,140,358
`
`with CBM2012-00003, which is also directed to Patent 8,140,358. The
`reason for the requested joiner is to avoid any possible argument that once a
`final written decision is issued in this case, another final written decision
`cannot be pursued or issued on the same claims, in CBM2012-00003, and
`vice versa. Petitioner’s concern stems from what it regards as potentially
`incorrect application of 35 U.S.C. § 325(e) and 37 C.F.R. § 42.73(d)(1).
`Alternatively, Petitioner proposed that a single joined decision be issued for
`this case and CBM2012-00003, or that the final written decisions for the two
`cases be issued on the same date, in that order of preference.
`
`Counsel for the Patent Owner expressed that he previously has not
`considered the issues that are involved, that it seems nothing should be
`created or engineered to avoid whatever consequences that naturally flow
`from the Board’s issuance of the final written decisions in the two cases, and
`that at the very least, there has to be substantive briefing on the issue.
`
`The Board agrees with the Patent Owner that nothing unusual should
`be arranged to avoid a potential issue that hinges on when the Board renders
`final written decisions in CBM2012-00003 and CBM2013-00009. Whatever
`is the consequence of the timing of the decisions, it is. The Board should not
`act in favor of one party or another.
`However, the Board noted that the schedules of CBM2012-00003 and
`CBM2013-00009 have been synchronized since April 19, 2013, and that
`final hearing was held on the same date. 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. In particular, note Revised
`
`2
`
`
`
`Case CBM2013-00009
`Patent 8,140,358
`
`Scheduling Order in CBM2012-00003 (Paper 30), and Second Revised
`Scheduling Order in CBM2013-00009 (Paper 17).
`It is
`ORDERED that Petitioner is not authorized to file a motion to join
`this proceeding with CBM2012-00003, to seek that a single joint decision be
`issued for CBM2012-00003 and CBM2013-00009, or to seek that the final
`written decisions for CBM2012-00003 and CBM2013-00009 be issued on
`the same date.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`3
`
`
`
`Case CBM2013-00009
`Patent 8,140,358
`
`PETITIONER:
`
`J. Steven Baughman
`James R. Myers
`Nicole M. Jantzi
`Ropes & Gray
`Email: steven.baughman@ropesgray.com
`Email: james.myers@ropesgray.com
`Email: nicole.jantzi@ropesgray.com
`
`PATENT OWNER:
`
`John V. Biernacki
`Calvin P. Griffith
`James L. Wamsley, III
`Jones Day
`Email: jvbiernacki@jonesday.com
`Email: cpgriffith@jonesday.com
`Email: jlwamsleyiii@jonesday.com
`
`
`4
`
`
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