`57 1 -27 2-7 822
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`LIBERTY MUTUAL INSURANCE COMPANY
`
`Petitioner,
`
`V.
`
`PROGRESSIVE CASUALTY INSURANCE COMPANY
`
`Patent Owner,
`
`Case CBM-2012-00003 (JL)
`Patent 8,140,358
`
`Before JAMES DONALD SMITH, ChiefAdministrative Patent Judge, JAMES T.
`MOORE, Vice ChiefAdministrative PatentJudge, MICHAEL P. TIERNEY, Lead
`Administrative Patent Judge,1 and JAMESON LEE, SALLY G. LANE, SALLY C.
`MEDLEY, JONI Y. CHANG, MICHAEL R. ZECHER, and BRIAN J.
`McNAMARA, Administrative Patent Judges.
`
`LEE, Administrative Patent Judge.
`
`(DUI-POONA
`
`ORDER
`
`(REDUNDANT GROUNDS)
`
`Introduction
`
`This petition for covered business method patent reVieW of Patent 8,140,358
`
`(’358 patent) was filed on September 16, 2012. Against all 20 claims of the ’358
`
`1 Judge Tierney serves as Lead Judge of the Board’s Trial Section.
`
`1
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`L&H CONCEPTS 2008
`SKYHAWKE TECHNOLOGIES V. L&H CONCEPTS
`IPR2014-00437
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`
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`CBM-2012-00003
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`Liberty Mutual Ins. Co. V. Progressive Casualty Ins. Co.
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`patent, Petitioner asserts four hundred and twenty two (422) grounds of
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`unpatentability over prior art on a unit claim basis thus averaging more than 21
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`grounds per claim. They include the four hundred and twenty grounds in
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`Petitioner’s chart on pages 17-22 of the petition, an alleged anticipation of claim
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`19 on page 70 of the petition, and an alleged anticipation of claim 20 on page 76 of
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`the petition. We note that numerous redundant grounds would place a significant
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`burden on the Patent Owner and the Board, and would cause unnecessary delays.
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`Part 42 of Title 37, Code of Federal Regulations, governs proceedings before
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`the Board and 37 C.F.R. § 42.1(b) provides that “[t]his part shall be construed to
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`secure the just, speedy, and inexpensive resolution of every proceeding.” When
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`promulgating the regulations, the Board considered “the effect of the regulations
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`on the economy, the integrity of the patent system, the efficient administration of
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`the Office, and the ability of the Office to timely complete proceedings” as
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`mandated by 35 U.S.C. § 326(b). Conducting a proceeding contrary to those
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`statutory considerations would frustrate Congressional intent.
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`We take this opportunity to note that multiple grounds, which are presented
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`in a redundant manner by a petitioner who makes no meaningful distinction
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`between them, are contrary to the regulatory and statutory mandates, and therefore
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`are not all entitled to consideration. In the present situation, the multiplicity of
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`grounds requires so much of the petition that the Petitioner has failed to expressly
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`identify the differences between any claim and the prior art in the Petitioner’s
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`assertions of obviousness.
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`A petitioner has the burden of proof to establish that it is entitled to the
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`requested relief 37 C.F.R. § 42.20(c). Differences between the claimed invention
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`-2-
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`CBM-2012-00003
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`Liberty Mutual Ins. Co. V. Progressive Casualty Ins. Co.
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`and the prior art are a critically important underlying factual inquiry for any
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`obviousness analysis. Graham v. John Deere C0. ofKansas City,
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`383 US. l, 17 (1966). A petitioner who does not state the differences between a
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`challenged claim and the prior art, and relies instead on the Patent Owner and the
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`Board to determine those differences based on the rest of the submission in the
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`petition risks having the corresponding ground of obviousness not included for trial
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`for failing to adequately state a claim for relief
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`Here, we discuss only redundancy. Two types of redundancy are common
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`in the instant petition. The first involves a plurality of prior art references applied
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`not in combination to complement each other but as distinct and separate
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`alternatives. All of the myriad references relied on provide essentially the same
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`teaching to meet the same claim limitation, and the associated arguments do not
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`explain why one reference more closely satisfies the claim limitation at issue in
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`some respects than another reference, and vice versa. Because the references are
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`not identical, each reference has to be better in some respect or else the references
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`are collectively horizontally redundant.
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`The second type of redundancy involves a plurality of prior art applied both
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`in partial combination and in full combination. In the former case, fewer
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`references than the entire combination are sufficient to render a claim obvious, and
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`in the latter case the entire combination is relied on to render the same claim
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`obvious. There must be an explanation of why the reliance in part may be the
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`stronger assertion as applied in certain instances and why the reliance in whole
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`may also be the stronger assertion in other instances. Without a bi-directional
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`explanation, the assertions are vertically redundant.
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`-3-
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`CBM-2012-00003
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`Liberty Mutual Ins. Co. V. Progressive Casualty Ins. Co.
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`Horizontal Redundancy
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`A.
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`Scapinakis, Eisenmann, or Stanifer
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`Claim 1 is the only independent claim. Petitioner first asserts obviousness of
`
`claim 1 over Kosaka, over Herrod, over Kosaka and Bouchard, and also over
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`Herrod and Bouchard. Then, for each of those four grounds of obviousness,
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`Petitioner adds either Scapinakis, Eisenmann, or Stanifer. The three references
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`Scapinakis, Eisenmann, and Stanifer are each applied to account for the same
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`feature of claim 1 that pertains to a wireless transmitter, and Petitioner’s
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`description of how each of the three is pertinent to that feature is substantively
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`essentially the same.
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`With regard to Scapinakis (Ex. 1016), Petitioner states (Pet. 37:29 to 38:9):
`
`Scapinakis — which is directed to vehicle telematics and was not
`previously cited to the PTO — discusses wirelessly transmitting
`recorded vehicle data (e.g., road speed) from “on-board recorder[s]”
`to a distributed network (e.g., radio, cellular, or satellite network) and
`a server (e.g., remote central computer) in real-time. Ex. 1016 at 26-
`27.
`
`A POSITA would have been motivated to combine the
`
`teachings of each of (l) Kosaka, (2) Herrod, (3) Kosaka in view of
`Bouchard, or (4) Herrod in view of Bouchard, with Scapinakis, given
`their similar purpose of using vehicle telematics to evaluate driving
`characteristics. For example a POSITA would have recognized that
`Kosaka’s or Herrod’s teachings of evaluating driving characteristics
`using monitored vehicle operation data would be enhanced by
`incorporating the similar but more sophisticated wireless telematics
`system discussed in Scapinakis in order to provide different types of
`data more efficiently to better determine driver performance.
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`_\_\_\
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`wwNNNNNNNNNNAééAAAAAommflmm-waAOLOCXJNmUl-bw
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`CBM-2012-00003
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`Liberty Mutual Ins. Co. V. Progressive Casualty Ins. Co.
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`With regard to Eisenmann (Ex. 1006), Petitioner states (Pet. 39:23 to 40:8):
`
`Eisenmann — which is directed to vehicle telematics and was not
`
`previously cited to the PTO in connection with the ‘358 Patent —
`discusses the use of a wireless transmitter (e.g., cellular mobile
`transceiver) configured to transfer vehicle data retained within the
`memory (e.g., smart card) to a distributed network (e.g., cellular
`telephone network, public switched telephone network) and a server
`(e.g., insurance company computer and database) in real-time. EX.
`1006 at 2:36-49; 7:33-44; 22:29-26; 23:1-12; 23: 13-27; Fig. 12.
`
`A POSITA would have been motivated to combine the
`
`teachings of each of (1) Kosaka, (2) Herrod, (3) Kosaka in view of
`Bouchard, or (4) Herrod in view of Bouchard, with Eisenmann, given
`their similar purpose of using vehicle telematics to evaluate driving
`characteristics, such as for insurance purposes. For example a
`POSITA would have recognized that Kosaka’s or Herrod’s teachings
`of evaluating driving characteristics from monitored data would be
`enhanced by incorporating Eisenmann’s more sophisticated wireless
`telematics system to convey different types of data more efficiently to
`better determine driver performance.
`
`With regard to Stanifer (EX. 1007), Petitioner states (Pet. 42:7 to 43:5):
`
`Stanifer — which is directed to vehicle telematics and was not
`
`previously cited to the PTO — discusses a wireless transmitter (e.g.,
`“terminal node controller” and “radio transceiver”) configured to
`transfer selected vehicle data (e.g., geographic location) retained
`within memory (e.g., “computer memory”) to a distributed network
`(e.g., “packet radio link”) and a server (e.g., base station). EX. 1007 at
`2:35-50; 4:4-17; 11:41-44; 12:18-22.
`
`A POSITA would have been motivated to combine the
`
`teachings of (1) Kosaka, (2) Herrod, (3) Kosaka in view of Bouchard,
`or (4) Herrod in view of Bouchard, with [Stanifer], given their similar
`purpose of using vehicle telematics to evaluate driving characteristics,
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`-5-
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`CBM-2012-00003
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`Liberty Mutual Ins. Co. V. Progressive Casualty Ins. Co.
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`such as for insurance purposes. For example a POSITA would have
`recognized that Kosaka’s or Herrod’s teachings of evaluating driving
`characteristics using monitored data would be enhanced by
`incorporating Stanifer’s teachings of a similar but more sophisticated
`wireless telematics system in order to convey different types of data
`more efficiently to better determine driver performance.
`
`As is evident from the above-quoted text, and as has been presented by the
`
`Petitioner, in order to satisfy the wireless transmitter feature of claim 1, none of
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`Scapinakis, Eisenmann, and Stanifer is a better reference than the other two
`
`references. Petitioner does not articulate any relative weakness in any respect for
`
`any one of the three references. Petitioner does not articulate any relative strength
`
`in any respect for any one of the three references. On this record, we conclude that
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`Scapinakis, Eisenmann, and Stanifer have been applied to meet the wireless
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`transmitter feature of claim 1 redundantly. The redundancy carries forward to the
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`various grounds of unpatentability of dependent claims 2-20, as additional
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`references are appended to each basic combination to account for respective
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`additional features in dependent claims.
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`It is
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`ORDERED that Petitioner has seven (7) days from the date of this
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`communication to notify the Board which one of three groups of obviousness
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`grounds it chooses to maintain against claim 1, as represented by the designation
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`l:(6) to l:(9) in the chart on page 17 of the petition (grounds relying on
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`Scapinakis), the designation l:(lO) to l:(l3) in the chart (grounds relying on
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`Eisenmann), and the designation l:(l4) to l: (17) in the chart (grounds relying on
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`Stanifer); the grounds that are not selected by Petitioner will not be considered;
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`OLDCXJ‘JQO‘I-POONA
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`-6-
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`CBM-2012-00003
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`Liberty Mutual Ins. Co. V. Progressive Casualty Ins. Co.
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`FURTHER ORDERED that the Petitioner’s notification as to claim 1 in
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`response to this order shall carry through in effect to all associated obviousness
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`grounds asserted against dependent claims 2-20; for instance, With respect to claim
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`2, if the Petitioner selects the grounds l:(6) to l:(9) based on Scapinakis, this
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`selection Will carry forward automatically to grounds 2:(6) to 2:(9) based on
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`Scapinakis, and grounds 2:(10) to 2:(17) based on Eisenmann and Stanifer Will not
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`be considered;
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`FURTHER ORDERED that if Petitioner fails to notify the Board timely as
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`to Which group of grounds to maintain, the Board Will consider the grounds based
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`on Scapinakis, as Scapinakis has the earliest date of publication as compared to
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`Eisenmann and Stanifer, and that the grounds based on Eisenmann and Stanifer
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`Will not be considered.
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`B.
`
`Kosaka, Black Magic, or Pettersen
`
`Claims 19 and 20 each depend on independent claim 1. Claim 19 adds that
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`the server “is further configured to calculate an insured’s premium under the
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`insured’s insurance policy based on the rating factor, or a surcharge or a discount
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`to the insured’s premium, based on the rating factor.” Claim 20 adds that the
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`server “is further configured to process selected vehicle data that represents one or
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`more aspects of operating the vehicle With data that reflects how the selected
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`vehicle data affects an insured’s premium under an insured’s insurance policy.”
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`According to the Petitioner, each of Kosaka (Ex. 1003), Black Magic (Ex.
`
`1015), and Pettersen (EX. 1013) discloses the features added by claims 19 and 20.
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`Thus, for each of the 17 grounds Petitioner asserts against independent claim 1,
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`-7-
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`CBM-2012-00003
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`Liberty Mutual Ins. Co. V. Progressive Casualty Ins. Co.
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`Petitioner adds Kosaka to make 17 grounds against each of claims 19 and 20, adds
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`Black Magic to make 17 more grounds against each of claims 19 and 20, and adds
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`Pettersen to make still 17 further more grounds against each of claims 19 and 20.
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`Petitioner asserts simply that Kosaka teaches the claim features added to
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`claim 1 by claims 19 and 20, that Black Magic teaches the claim features added to
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`claim 1 by claims 19 and 20, and that Pettersen teaches the claim features added to
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`claim 1 by claims 19 and 20, without relative distinction, in claim charts presented
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`on pages 72-75 of the petition for claim 19 and on pages 77 and 78 for claim 20.
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`With regard to Kosaka as applied to claims 19 and 20, Petitioner states (Pet.
`
`71:37 to 72:5):
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`A POSITA would have been motivated to combine the
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`teachings of each of combination l:(l)-l:(l7) with Kosaka, given
`their similar purpose of using vehicle telematics to evaluate driving
`characteristics, including for insurance purposes. For example, a
`POSITA would have recognized that the system disclosed in each of
`combinations l:(l)— l :(17) would be enhanced by implementing them
`with Kosaka’s teachings of making insurance premium calculations
`based on the evaluations in order to make advantageous use of the
`vehicle data for insurance purposes.
`
`With regard to Black Magic as applied to claims 19 and 20, Petitioner states
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`(Pet. 73:15-21):
`
`A POSITA would have been motivated to combine the
`
`teachings of each of combination l:(l)-l:(l7) with Black Magic,
`given their similar purpose of using vehicle telematics to evaluate
`driving characteristics, including for insurance purposes. For
`example, a POSITA would have recognized that the system disclosed
`in each of combinations l:(l)-l :(17) would be enhanced by
`implementing them with Black Magic’s teachings of premium
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`26
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`29
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`CBM-2012-00003
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`Liberty Mutual Ins. Co. V. Progressive Casualty Ins. Co.
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`determinations to make advantageous use of the vehicle data for
`insurance purposes.
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`With regard to Pettersen as applied to claims 19 and 20, Petitioner states
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`(Pet. 75:3-9):
`
`A POSITA would have been motivated to combine the
`
`teachings of each of combination l:(l)-l:(l7) with Pettersen, given
`their similar purpose of using vehicle telematics to evaluate driving
`characteristics, such as for insurance purposes. For example, a
`POSITA would have recognized that the system disclosed in each of
`combinations l:(l)— l :(17) would be enhanced by implementing them
`with Pettersen’s teachings of insurance premium evaluations to make
`advantageous use of the vehicle data for insurance purposes.
`
`As explained above, for satisfying the additional feature of claims 19 and 20,
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`and as has been presented by the Petitioner, none of Kosaka, Black Magic, and
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`Pettersen is stated by Petitioner to be a better reference than the other two
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`references. Petitioner does not articulate any relative weakness for any one of the
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`three references. Petitioner does not articulate any relative strength for any one of
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`the three references. On this record, we conclude that Kosaka, Black Magic, and
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`Pettersen have been redundantly applied to meet the claim features added by
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`claims 19 and 20 relative to independent claim 1.
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`It is
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`ORDERED that Petitioner has seven (7) days from the date of this
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`communication to notify the Board which one of three groups of obviousness
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`grounds it chooses to maintain against each of claims 19 and 20, as represented by
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`the designation l9:(l)—l9:(l7) and 20:(l)-20:(l7) in the chart on page 21 of the
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`petition (grounds relying on Kosaka), the designation l9:(l8)-l9:(34) and 20:(l8)-
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`-9-
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`CBM-2012-00003
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`Liberty Mutual Ins. Co. V. Progressive Casualty Ins. Co.
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`20:(34) in the chart on pages 21-22 of the petition (grounds relying on Black
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`Magic), and the designation l9:(35)-l9:(51) and 20:(35)-20:(51) in the chart on
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`page 22 of the petition (grounds relying on Pettersen); the grounds that are not
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`selected by Petitioner will not be considered;
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`FURTHER ORDERED that if Petitioner fails to notify the Board timely as
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`to which group of grounds to maintain, the Board will consider the grounds based
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`on Pettersen, as Pettersen has the earliest date of publication as compared to
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`Kosaka and Black Magic, and that the grounds based on Kosaka and Black Magic
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`will not be considered.
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`C.
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`Gray or Lewis
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`Claim 16 depends on independent claim 1. Claim 17 depends on claim 16
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`and claim 18 depends on claim 17. Petitioner asserts 9 grounds of obviousness
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`against claim 16, designated as grounds l6:(l) to l6:(9) in the chart on pages 20-21
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`of the petition. On that foundation, Petitioner asserts l8 grounds of obviousness
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`against each of claims 17 and 18, the first 9 relying on the addition of Gray to all
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`the grounds of obviousness of base claim 16, and the second 9 relying on the
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`addition of Lewis to all the grounds of obviousness of base claim 16. As applied
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`by the Petitioner to account for the features of claims 17 and 18, there is no
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`substantive difference between Gray and Lewis. Each purportedly discloses the
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`features additionally required by claims 17 and 18 relative to base claim 16.
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`Petitioner has not articulated any deficiency of Gray relative to Lewis or of Lewis
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`relative to Gray. The explanations of their application are essentially the same.
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`-10-
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`CBM-2012-00003
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`Liberty Mutual Ins. Co. V. Progressive Casualty Ins. Co.
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`With respect to Gray, the Petitioner states (Pet. 67:1 1-16):
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`A POSITA would have recognized that the systems disclosed in
`each of the combinations l6:(l) to l6:(9), which describe systems for
`evaluating driving characteristics using monitored vehicle data
`received wirelessly from a vehicle telematics device with the ability to
`communicate in the event of certain situations, would be enhanced by
`implementing them with the ability to communicate in the event of
`certain additional situations as discussed in Gray.
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`With respect to Lewis, the Petitioner states (Pet. 69:3-8):
`
`A POSITA would have recognized that the systems disclosed in
`each of combinations l6:(l) to l6:(9), which describe systems for
`evaluating driving characteristics using monitored vehicle data
`received wirelessly from a vehicle telematics device with the ability to
`communicate in the event of certain situations, would be enhanced by
`implementing them with the ability to communicate in the event of
`certain additional situations as discussed in Lewis.
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`As explained above, Petitioner has applied Gray and Lewis in a manner that
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`presents no distinction. On this record, Petitioner has not established a case that
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`Gray may be better prior art for some reasons and Lewis better for other reasons.
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`We conclude that Gray and Lewis have been redundantly applied to meet the
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`features added by claims 17 and 18 relative to base claim 16.
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`It is
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`ORDERED that Petitioner has seven (7) days from the date of this
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`communication to notify the Board which one of Gray and Lewis it chooses to add
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`to the grounds asserted against claim 16, to render obvious claims 17 and 18; the
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`reference that is not selected by Petitioner and corresponding grounds will not be
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`considered;
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`-11-
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`CBM-2012-00003
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`Liberty Mutual Ins. Co. V. Progressive Casualty Ins. Co.
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`FURTHER ORDERED that if Petitioner fails to notify the Board timely as
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`to which reference to consider, the Board will consider the grounds based on Gray,
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`because Gray has the earlier date of publication, and that the alleged grounds based
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`on Lewis will not be considered.
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`Vertical Redundancy
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`Vertical redundancy exists when there is assertion of an additional prior art
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`reference to support another ground of unpatentability when a base ground already
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`has been asserted against the same claim without the additional reference and the
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`Petitioner has not explained what are the relative strength and weakness of each
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`ground. To move forward with such a multiplicity of grounds, Petitioner must
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`articulate a reasonable basis to believe that from a certain perspective the base
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`ground is stronger, and that from another perspective the ground with additional
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`reference is stronger.
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`The underlying principle is this: If either the base ground or the ground with
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`additional reference is better from all perspectives, Petitioner should assert the
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`stronger ground and not burden the Patent Owner and the Board with the other. If
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`there is no difference, Petitioner should assert just one ground. Only if the
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`Petitioner reasonably articulates why each ground has strength and weakness
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`relative to the other should both grounds be asserted for consideration.
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`-12-
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`CBM-2012-00003
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`Liberty Mutual Ins. Co. V. Progressive Casualty Ins. Co.
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`A.
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`Adding Gray or Lewis for Claims 17 and 18
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`Petitioner first asserts 9 grounds of obviousness against claims 17 and
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`18. They are designated as grounds 17:(1) to 17:(9) and l8:(1) to l8:(9) in
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`the chart appearing on pages 20-21 of the petition. For no apparent or
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`explained need, Petitioner then adds Gray (Ex. 1012) to the mix to support
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`an additional 9 grounds against claims 17 and 18; they are designated as
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`grounds 17:(10) to l7:(l8) and l8:(10) to l8:(l8) in the chart on page 21 of
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`the petition. And for no further apparent or explained need, Petitioner adds
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`Lewis (Ex. 1024) to the mix to support an additional 9 grounds against
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`claims 17 and 18; they are designated as grounds 17:(19) to 17:(27) and
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`l8:(19) to l8:(27) in the chart on page 21 of the petition.
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`The Petitioner states merely that one with ordinary skill would have
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`recognized that the system disclosed in each of the 9 base grounds “would
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`be enhanced by implementing them with the ability to communicate in the
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`event of certain additional situations discussed in Gray” (Pet. 67:11-16) and
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`also “would be enhanced by implementing them with the ability to
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`communicate in the event of certain additional situations discussed in
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`Lewis” (Pet. 69:3-8). That the base combination can be enhanced tells
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`nothing about why it may be inadequate to meet the requirements of claims
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`17 and 18 and why either Gray or Lewis can help to shore up that infirmity.
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`Furthermore, if either Gray or Lewis can shore up an infirmity in the base
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`combination, then the base combination should not be asserted concurrently
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`with another ground including the base combination and Gray or Lewis.
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`-13-
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`CBM-2012-00003
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`Liberty Mutual Ins. Co. V. Progressive Casualty Ins. Co.
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`It is
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`ORDERED that Petitioner has seven (7) days from the date of this
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`communication to notify the Board which one of three groups of grounds it
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`chooses to maintain against claims 17 and 18, the base combination of
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`grounds l7:(l) to l7:(9) and l8:(l) to l8:(9) against claims 17 and 18,
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`grounds l7:(lO) to l7:(l8) and l8:(10) to l8:(l8), or grounds l7:(l9) to
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`l7:(27) and l8:(l9) to l8:(27); the grounds that are not selected by
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`Petitioner will not be considered;
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`FURTHER ORDERED that if Petitioner fails to notify the Board
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`timely which grounds to maintain, the Board will consider the base
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`combination of grounds l7:(l) to l7:(9) and l8:(l) to l8:(9) and the grounds
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`based on Gray and Lewis will not be considered.
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`B.
`
`Adding Scapinakis, Eisenmann, or Stanifer for Claim 1
`
`As we discussed earlier in the section titled “Scapinakis, Eisenmann,
`
`or Stanifer,” Petitioner first asserts obViousness of claim 1 over Kosaka, over
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`Herrod, over Kosaka and Bouchard, and also over Herrod and Bouchard.
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`Then, for each of those initial four grounds of obViousness, Petitioner adds
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`Scapinakis, Eisenmann, or Stanifer, to make 12 more grounds of
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`obViousness for claim 1. Of those 12 additional grounds, 4 are from adding
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`Scapinakis, 4 are from adding Eisenmann, and 4 are from adding Stanifer, to
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`each of the initial 4 obViousness grounds for claim 1.
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`Petitioner does not explain why the addition of any one of Scapinakis,
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`Eisenmann, and Stanifer, is needed to augment the initial four grounds of
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`obViousness directed against claim 1, i.e., over Kosaka, over Herrod, over
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`-14-
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`CBM-2012-00003
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`Liberty Mutual Ins. Co. V. Progressive Casualty Ins. Co.
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`cooowoucn-booN—x
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`Kosaka and Bouchard, and over Herrod and Bouchard. Petitioner articulates
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`no infirmity or deficiency in the initial four grounds of obviousness rejection
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`of claim 1, which would be made up or otherwise remedied by relying on
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`Scapinakis, Eisenmann, or Stanifer.
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`The Petitioner states merely that one with ordinary skill would have
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`recognized that the system disclosed in each of the 4 initial obviousness
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`grounds would be enhanced by incorporating the more sophisticated wireless
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`telematics system to provide different types of data more efficiently to better
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`determine driver performance as is discussed in Scapinakis, Eisenmann, and
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`Stanifer. (Pet. 38:5-9; 40:4-8; 42:16 to 43:5). That the initial 4 grounds can
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`be enhanced tells nothing about why it may be inadequate to meet the
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`requirements of claim 1 and why any of Scapinakis, Eisenmann, and Stanifer
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`can help to shore up that infirmity. And if any of Scapinakis, Eisenmann,
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`and Stanifer can shore up an infirmity in the initial four obviousness
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`grounds, then the initial four grounds should not be asserted concurrently
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`with a separate ground adding Scapinakis, Eisenmann, or Stanifer.
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`It is
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`ORDERED that Petitioner has seven (7) days from the date of this
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`communication to notify the Board which one of four groups of grounds it
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`chooses to maintain against claim 1, 116., first group with grounds designated
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`as l:(2) to l:(5) in the chart on page 17 of the petition, second group with
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`grounds designated as l:(6) to l:(9) including Scapinakis, third group with
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`grounds designated as l:(lO) to l:(l3) including Eisenmann, and fourth
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`group with grounds designated as l:(l4) to l:(l7) including Stanifer; the
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`CBM-2012-00003
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`Liberty Mutual Ins. Co. V. Progressive Casualty Ins. Co.
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`grounds in the non-selected groups will not be considered and neither will
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`grounds which dependent on any ground in the non-selected groups;
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`FURTHER ORDERED that if Petitioner fails to notify the Board
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`timely as to which group of grounds to maintain, the Board will consider
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`grounds l:(6) to l:(9) relying on the addition of Scapinakis; grounds l:(2) to
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`l:(5), 1:(10) to l:(l3), and l:(l4) to l:(l7) and grounds dependent thereon
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`will not be considered.
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`C.
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`Adding Bouchard for Claim 1
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`According to claim 1, a processor must collect vehicle data from a vehicle
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`bus. Petitioner first asserts obviousness of claim 1 over Kosaka and also over
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`Herrod, in grounds designated as l:(2) and l:(3) in the chart on page 17 of the
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`petition. For those grounds, Petitioner alleges that collection of vehicle diagnostic
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`data from a vehicle bus was well known in the art, without citing to any particular
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`reference. In support of that assertion, Petitioner’s technical witness Andrews
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`testified in his declaration 11 21, lines 10- 14, that the On—Board Diagnostics II
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`(OBD-II) vehicle bus was used in vehicles since 1994 and has, in fact, been
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`required in passenger vehicles and light duty trucks since January 1996, as
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`mandated by the Environmental Protection Agency.
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`Nevertheless, Petitioner adds the prior art reference Bouchard to each of the
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`two obviousness grounds based on Kosaka and Herrod to provide two additional
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`grounds of obviousness, one based on Kosaka and Bouchard and the other based
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`on Herrod and Bouchard. Bouchard is relied on as disclosing a processor that
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`collects vehicle data from a vehicle bus. (Pet. 36:3-5). In that regard, Bouchard is
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`said to be directed to a method and system for monitoring vehicle sensors to obtain
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`CBM-2012-00003
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`Liberty Mutual Ins. Co. V. Progressive Casualty Ins. Co.
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`various data elements and determine the operational status of a vehicle. (Pet.
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`35:28-30). The Petitioner nowhere explains why reliance on Bouchard is needed
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`in light of the alleged fact that collection of vehicle diagnostic data from a vehicle
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`bus was well known to one with ordinary skill in the art and was actually required
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`by law on certain types of vehicles since January of 1996. It is unknown why
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`without reliance on Bouchard the obviousness grounds based on Kosaka and
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`Herrod would be deemed inadequate insofar as the vehicle data bus limitation is
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`concerned. If they are not inadequate in that connection, then additional grounds
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`including Bouchard should not be asserted. If Bouchard is necessary, then Kosaka
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`and Herrod should not be asserted without Bouchard.
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`It is
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`ORDERED that Petitioner has seven (7) days from the date of this
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`communication to notify the Board which one of two groups of obviousness
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`grounds it chooses to maintain against claim 1, i.e., first group with grounds based
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`on Kosaka and Herrod and designated as l:(2) and l:(3) in the chart on page 17 of
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`the petition, and second group with grounds designated as l:(4) and l:(5) which
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`include the addition of Bouchard; the grounds in the non-selected group will not be
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`considered and neither will grounds which depend on any ground in the non-
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`selected group;
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`FURTHER ORDERED that if Petitioner fails to notify the Board timely,
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`the Board will consider grounds l:(2) and l:(3) which rely on the alleged fact that
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`collecting diagnostic data from a vehicle bus was well known; grounds l:(4) and
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`l:(5) which rely on Bouchard for its disclosure of a vehicle data bus and grounds
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`dependent thereon will not be considered.
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`-17-
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`CBM-2012-00003
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`Liberty Mutual Ins. Co. V. Progressive Casualty Ins. Co.
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`ack
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`By Electronic Transmission
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`Attorney for Petitioner Liberty Mutual Ins. Co.:
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`J. Steven Baughman, Esq.
`Ropes & Gray LLP
`steven.baughman@ropesgrayeom
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`Attorneys for Patent Owner Progressive Casualty Ins. Co.:
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`Calvin P. Griffith, Esq.
`James L. Wamsley, III, Esq.
`John V. Biernacki, Esq.
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`Jones Day
`cpgriffith@jonesday.com
`'lwamsle iii
`'onesda .com
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`jvbiernacki@jonesdayeom
`
`-18-
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`