Trial@uspto.gov
`571-272-7822
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`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, Chief Administrative Patent Judge, JAMES T.
`MOORE, Vice Chief Administrative Patent Judge, 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.
`
`
`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
`2
`3
`4
`
`5
`
`6
`
`Universal Electronics Exhibit 2008, Page 1
`Universal Remote Control v. Universal Electronics, Trial No. IPR2014-01111
`
`

`
`CBM-2012-00003
`Liberty Mutual Ins. Co. v. Progressive Casualty Ins. Co.
`
`patent, Petitioner asserts four hundred and twenty two (422) grounds of
`unpatentability over prior art on a unit claim basis thus averaging more than 21
`grounds per claim. They include the four hundred and twenty grounds in
`Petitioner’s chart on pages 17-22 of the petition, an alleged anticipation of claim
`19 on page 70 of the petition, and an alleged anticipation of claim 20 on page 76 of
`the petition. We note that numerous redundant grounds would place a significant
`burden on the Patent Owner and the Board, and would cause unnecessary delays.
`
`Part 42 of Title 37, Code of Federal Regulations, governs proceedings before
`the Board and 37 C.F.R. § 42.1(b) provides that “[t]his part shall be construed to
`secure the just, speedy, and inexpensive resolution of every proceeding.” When
`promulgating the regulations, the Board considered “the effect of the regulations
`on the economy, the integrity of the patent system, the efficient administration of
`the Office, and the ability of the Office to timely complete proceedings” as
`mandated by 35 U.S.C. § 326(b). Conducting a proceeding contrary to those
`statutory considerations would frustrate Congressional intent.
`
`We take this opportunity to note that multiple grounds, which are presented
`in a redundant manner by a petitioner who makes no meaningful distinction
`between them, are contrary to the regulatory and statutory mandates, and therefore
`are not all entitled to consideration. In the present situation, the multiplicity of
`grounds requires so much of the petition that the Petitioner has failed to expressly
`identify the differences between any claim and the prior art in the Petitioner’s
`assertions of obviousness.
`
`A petitioner has the burden of proof to establish that it is entitled to the
`requested relief. 37 C.F.R. § 42.20(c). Differences between the claimed invention
`
`-2-
`
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`Universal Electronics Exhibit 2008, Page 2
`Universal Remote Control v. Universal Electronics, Trial No. IPR2014-01111
`
`

`
`CBM-2012-00003
`Liberty Mutual Ins. Co. v. Progressive Casualty Ins. Co.
`
`and the prior art are a critically important underlying factual inquiry for any
`obviousness analysis. Graham v. John Deere Co. of Kansas City,
`383 U.S. 1, 17 (1966). A petitioner who does not state the differences between a
`challenged claim and the prior art, and relies instead on the Patent Owner and the
`Board to determine those differences based on the rest of the submission in the
`petition risks having the corresponding ground of obviousness not included for trial
`for failing to adequately state a claim for relief.
`
`Here, we discuss only redundancy. Two types of redundancy are common
`in the instant petition. The first involves a plurality of prior art references applied
`not in combination to complement each other but as distinct and separate
`alternatives. All of the myriad references relied on provide essentially the same
`teaching to meet the same claim limitation, and the associated arguments do not
`explain why one reference more closely satisfies the claim limitation at issue in
`some respects than another reference, and vice versa. Because the references are
`not identical, each reference has to be better in some respect or else the references
`are collectively horizontally redundant.
`
`The second type of redundancy involves a plurality of prior art applied both
`in partial combination and in full combination. In the former case, fewer
`references than the entire combination are sufficient to render a claim obvious, and
`in the latter case the entire combination is relied on to render the same claim
`obvious. There must be an explanation of why the reliance in part may be the
`stronger assertion as applied in certain instances and why the reliance in whole
`may also be the stronger assertion in other instances. Without a bi-directional
`explanation, the assertions are vertically redundant.
`
`-3-
`
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`Universal Electronics Exhibit 2008, Page 3
`Universal Remote Control v. Universal Electronics, Trial No. IPR2014-01111
`
`

`
`CBM-2012-00003
`Liberty Mutual Ins. Co. v. Progressive Casualty Ins. Co.
`
`
`Horizontal Redundancy
`
`Scapinakis, Eisenmann, or Stanifer
`A.
`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
`Herrod and Bouchard. Then, for each of those four grounds of obviousness,
`Petitioner adds either Scapinakis, Eisenmann, or Stanifer. The three references
`Scapinakis, Eisenmann, and Stanifer are each applied to account for the same
`feature of claim 1 that pertains to a wireless transmitter, and Petitioner’s
`description of how each of the three is pertinent to that feature is substantively
`essentially the same.
`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 (1) 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.
`
`
`-4-
`
`
`
`1
`2
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`29
`30
`31
`
`Universal Electronics Exhibit 2008, Page 4
`Universal Remote Control v. Universal Electronics, Trial No. IPR2014-01111
`
`

`
`CBM-2012-00003
`Liberty Mutual Ins. Co. v. Progressive Casualty Ins. Co.
`
`
`
`1
`
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`23
`24
`25
`26
`27
`28
`29
`30
`31
`32
`33
`34
`
`
`
`
`
`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,
`
`-5-
`
`Universal Electronics Exhibit 2008, Page 5
`Universal Remote Control v. Universal Electronics, Trial No. IPR2014-01111
`
`

`
`CBM-2012-00003
`Liberty Mutual Ins. Co. v. Progressive Casualty Ins. Co.
`
`
`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
`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
`Scapinakis, Eisenmann, and Stanifer have been applied to meet the wireless
`transmitter feature of claim 1 redundantly. The redundancy carries forward to the
`various grounds of unpatentability of dependent claims 2-20, as additional
`references are appended to each basic combination to account for respective
`additional features in dependent claims.
`
`It is
`ORDERED that Petitioner has seven (7) days from the date of this
`
`communication to notify the Board which one of three groups of obviousness
`grounds it chooses to maintain against claim 1, as represented by the designation
`1:(6) to 1:(9) in the chart on page 17 of the petition (grounds relying on
`Scapinakis), the designation 1:(10) to 1:(13) in the chart (grounds relying on
`Eisenmann), and the designation 1:(14) to 1: (17) in the chart (grounds relying on
`Stanifer); the grounds that are not selected by Petitioner will not be considered;
`
`1
`2
`3
`4
`5
`6
`7
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`-6-
`
`
`
`Universal Electronics Exhibit 2008, Page 6
`Universal Remote Control v. Universal Electronics, Trial No. IPR2014-01111
`
`

`
`CBM-2012-00003
`Liberty Mutual Ins. Co. v. Progressive Casualty Ins. Co.
`
`FURTHER ORDERED that the Petitioner’s notification as to claim 1 in
`
`response to this order shall carry through in effect to all associated obviousness
`grounds asserted against dependent claims 2-20; for instance, with respect to claim
`2, if the Petitioner selects the grounds 1:(6) to 1:(9) based on Scapinakis, this
`selection will carry forward automatically to grounds 2:(6) to 2:(9) based on
`Scapinakis, and grounds 2:(10) to 2:(17) based on Eisenmann and Stanifer will not
`be considered;
`FURTHER ORDERED that if Petitioner fails to notify the Board timely as
`
`to which group of grounds to maintain, the Board will consider the grounds based
`on Scapinakis, as Scapinakis has the earliest date of publication as compared to
`Eisenmann and Stanifer, and that the grounds based on Eisenmann and Stanifer
`will not be considered.
`
`B. Kosaka, Black Magic, or Pettersen
`
`Claims 19 and 20 each depend on independent claim 1. Claim 19 adds that
`the server “is further configured to calculate an insured’s premium under the
`insured’s insurance policy based on the rating factor, or a surcharge or a discount
`to the insured’s premium, based on the rating factor.” Claim 20 adds that the
`server “is further 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 an insured’s premium under an insured’s insurance policy.”
`
`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.
`Thus, for each of the 17 grounds Petitioner asserts against independent claim 1,
`
`-7-
`
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`Universal Electronics Exhibit 2008, Page 7
`Universal Remote Control v. Universal Electronics, Trial No. IPR2014-01111
`
`

`
`CBM-2012-00003
`Liberty Mutual Ins. Co. v. Progressive Casualty Ins. Co.
`
`Petitioner adds Kosaka to make 17 grounds against each of claims 19 and 20, adds
`Black Magic to make 17 more grounds against each of claims 19 and 20, and adds
`Pettersen to make still 17 further more grounds against each of claims 19 and 20.
`
`Petitioner asserts simply that Kosaka teaches the claim features added to
`claim 1 by claims 19 and 20, that Black Magic teaches the claim features added to
`claim 1 by claims 19 and 20, and that Pettersen teaches the claim features added to
`claim 1 by claims 19 and 20, without relative distinction, in claim charts presented
`on pages 72-75 of the petition for claim 19 and on pages 77 and 78 for claim 20.
`With regard to Kosaka as applied to claims 19 and 20, Petitioner states (Pet.
`
`71:37 to 72:5):
`
`A POSITA would have been motivated to combine the
`teachings of each of combination 1:(1)-1:(17) 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 1:(1)-1:(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
`
`(Pet. 73:15-21):
`
`A POSITA would have been motivated to combine the
`teachings of each of combination 1:(1)-1:(17) 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 1:(1)-1:(17) would be enhanced by
`implementing them with Black Magic’s teachings of premium
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`
`22
`
`23
`24
`25
`26
`27
`28
`29
`
`-8-
`
`
`
`Universal Electronics Exhibit 2008, Page 8
`Universal Remote Control v. Universal Electronics, Trial No. IPR2014-01111
`
`

`
`CBM-2012-00003
`Liberty Mutual Ins. Co. v. Progressive Casualty Ins. Co.
`
`
`determinations to make advantageous use of the vehicle data for
`insurance purposes.
`
`With regard to Pettersen as applied to claims 19 and 20, Petitioner states
`
`(Pet. 75:3-9):
`
`A POSITA would have been motivated to combine the
`teachings of each of combination 1:(1)-1:(17) 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 1:(1)-1:(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,
`
`and as has been presented by the Petitioner, none of Kosaka, Black Magic, and
`Pettersen is stated by Petitioner to be a better reference than the other two
`references. Petitioner does not articulate any relative weakness for any one of the
`three references. Petitioner does not articulate any relative strength for any one of
`the three references. On this record, we conclude that Kosaka, Black Magic, and
`Pettersen have been redundantly applied to meet the claim features added by
`claims 19 and 20 relative to independent claim 1.
`
`It is
`ORDERED that Petitioner has seven (7) days from the date of this
`
`communication to notify the Board which one of three groups of obviousness
`grounds it chooses to maintain against each of claims 19 and 20, as represented by
`the designation 19:(1)-19:(17) and 20:(1)-20:(17) in the chart on page 21 of the
`petition (grounds relying on Kosaka), the designation 19:(18)-19:(34) and 20:(18)-
`
`-9-
`
`
`
`1
`2
`3
`4
`
`5
`
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`Universal Electronics Exhibit 2008, Page 9
`Universal Remote Control v. Universal Electronics, Trial No. IPR2014-01111
`
`

`
`CBM-2012-00003
`Liberty Mutual Ins. Co. v. Progressive Casualty Ins. Co.
`
`20:(34) in the chart on pages 21-22 of the petition (grounds relying on Black
`Magic), and the designation 19:(35)-19:(51) and 20:(35)-20:(51) in the chart on
`page 22 of the petition (grounds relying on Pettersen); the grounds that are not
`selected by Petitioner will not be considered;
`FURTHER ORDERED that if Petitioner fails to notify the Board timely as
`
`to which group of grounds to maintain, the Board will consider the grounds based
`on Pettersen, as Pettersen has the earliest date of publication as compared to
`Kosaka and Black Magic, and that the grounds based on Kosaka and Black Magic
`will not be considered.
`
`C. Gray or Lewis
`
`Claim 16 depends on independent claim 1. Claim 17 depends on claim 16
`and claim 18 depends on claim 17. Petitioner asserts 9 grounds of obviousness
`against claim 16, designated as grounds 16:(1) to 16:(9) in the chart on pages 20-21
`of the petition. On that foundation, Petitioner asserts 18 grounds of obviousness
`against each of claims 17 and 18, the first 9 relying on the addition of Gray to all
`the grounds of obviousness of base claim 16, and the second 9 relying on the
`addition of Lewis to all the grounds of obviousness of base claim 16. As applied
`by the Petitioner to account for the features of claims 17 and 18, there is no
`substantive difference between Gray and Lewis. Each purportedly discloses the
`features additionally required by claims 17 and 18 relative to base claim 16.
`Petitioner has not articulated any deficiency of Gray relative to Lewis or of Lewis
`relative to Gray. The explanations of their application are essentially the same.
`
`
`
`-10-
`
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`Universal Electronics Exhibit 2008, Page 10
`Universal Remote Control v. Universal Electronics, Trial No. IPR2014-01111
`
`

`
`CBM-2012-00003
`Liberty Mutual Ins. Co. v. Progressive Casualty Ins. Co.
`
`
`
`With respect to Gray, the Petitioner states (Pet. 67:11-16):
`
`A POSITA would have recognized that the systems disclosed in
`each of the combinations 16:(1) to 16:(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.
`
`With respect to Lewis, the Petitioner states (Pet. 69:3-8):
`
`A POSITA would have recognized that the systems disclosed in
`
`each of combinations 16:(1) to 16:(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.
`
`As explained above, Petitioner has applied Gray and Lewis in a manner that
`
`presents no distinction. On this record, Petitioner has not established a case that
`Gray may be better prior art for some reasons and Lewis better for other reasons.
`We conclude that Gray and Lewis have been redundantly applied to meet the
`features added by claims 17 and 18 relative to base claim 16.
`
`It is
`ORDERED that Petitioner has seven (7) days from the date of this
`
`communication to notify the Board which one of Gray and Lewis it chooses to add
`to the grounds asserted against claim 16, to render obvious claims 17 and 18; the
`reference that is not selected by Petitioner and corresponding grounds will not be
`considered;
`
`-11-
`
`
`
`1
`
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`29
`
`30
`
`Universal Electronics Exhibit 2008, Page 11
`Universal Remote Control v. Universal Electronics, Trial No. IPR2014-01111
`
`

`
`CBM-2012-00003
`Liberty Mutual Ins. Co. v. Progressive Casualty Ins. Co.
`
`FURTHER ORDERED that if Petitioner fails to notify the Board timely as
`
`to which reference to consider, the Board will consider the grounds based on Gray,
`because Gray has the earlier date of publication, and that the alleged grounds based
`on Lewis will not be considered.
`Vertical Redundancy
`Vertical redundancy exists when there is assertion of an additional prior art
`
`reference to support another ground of unpatentability when a base ground already
`has been asserted against the same claim without the additional reference and the
`Petitioner has not explained what are the relative strength and weakness of each
`ground. To move forward with such a multiplicity of grounds, Petitioner must
`articulate a reasonable basis to believe that from a certain perspective the base
`ground is stronger, and that from another perspective the ground with additional
`reference is stronger.
`
`The underlying principle is this: If either the base ground or the ground with
`additional reference is better from all perspectives, Petitioner should assert the
`stronger ground and not burden the Patent Owner and the Board with the other. If
`there is no difference, Petitioner should assert just one ground. Only if the
`Petitioner reasonably articulates why each ground has strength and weakness
`relative to the other should both grounds be asserted for consideration.
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`-12-
`
`
`
`Universal Electronics Exhibit 2008, Page 12
`Universal Remote Control v. Universal Electronics, Trial No. IPR2014-01111
`
`

`
`CBM-2012-00003
`Liberty Mutual Ins. Co. v. Progressive Casualty Ins. Co.
`
`A. Adding Gray or Lewis for Claims 17 and 18
`
`Petitioner first asserts 9 grounds of obviousness against claims 17 and
`18. They are designated as grounds 17:(1) to 17:(9) and 18:(1) to 18:(9) in
`the chart appearing on pages 20-21 of the petition. For no apparent or
`explained need, Petitioner then adds Gray (Ex. 1012) to the mix to support
`an additional 9 grounds against claims 17 and 18; they are designated as
`grounds 17:(10) to 17:(18) and 18:(10) to 18:(18) in the chart on page 21 of
`the petition. And for no further apparent or explained need, Petitioner adds
`Lewis (Ex. 1024) to the mix to support an additional 9 grounds against
`claims 17 and 18; they are designated as grounds 17:(19) to 17:(27) and
`18:(19) to 18:(27) in the chart on page 21 of the petition.
`
`The Petitioner states merely that one with ordinary skill would have
`recognized that the system disclosed in each of the 9 base grounds “would
`be enhanced by implementing them with the ability to communicate in the
`event of certain additional situations discussed in Gray” (Pet. 67:11-16) and
`also “would be enhanced by implementing them with the ability to
`communicate in the event of certain additional situations discussed in
`Lewis” (Pet. 69:3-8). That the base combination can be enhanced tells
`nothing about why it may be inadequate to meet the requirements of claims
`17 and 18 and why either Gray or Lewis can help to shore up that infirmity.
`Furthermore, if either Gray or Lewis can shore up an infirmity in the base
`combination, then the base combination should not be asserted concurrently
`with another ground including the base combination and Gray or Lewis.
`
`
`
`-13-
`
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`Universal Electronics Exhibit 2008, Page 13
`Universal Remote Control v. Universal Electronics, Trial No. IPR2014-01111
`
`

`
`CBM-2012-00003
`Liberty Mutual Ins. Co. v. Progressive Casualty Ins. Co.
`
`It is
`
`ORDERED that Petitioner has seven (7) days from the date of this
`
`communication to notify the Board which one of three groups of grounds it
`chooses to maintain against claims 17 and 18, the base combination of
`grounds 17:(1) to 17:(9) and 18:(1) to 18:(9) against claims 17 and 18,
`grounds 17:(10) to 17:(18) and 18:(10) to 18:(18), or grounds 17:(19) to
`17:(27) and 18:(19) to 18:(27); the grounds that are not selected by
`Petitioner will not be considered;
`FURTHER ORDERED that if Petitioner fails to notify the Board
`
`timely which grounds to maintain, the Board will consider the base
`combination of grounds 17:(1) to 17:(9) and 18:(1) to 18:(9) and the grounds
`based on Gray and Lewis will not be considered.
`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
`Herrod, over Kosaka and Bouchard, and also over Herrod and Bouchard.
`Then, for each of those initial four grounds of obviousness, Petitioner adds
`Scapinakis, Eisenmann, or Stanifer, to make 12 more grounds of
`obviousness for claim 1. Of those 12 additional grounds, 4 are from adding
`Scapinakis, 4 are from adding Eisenmann, and 4 are from adding Stanifer, to
`each of the initial 4 obviousness grounds for claim 1.
`
`Petitioner does not explain why the addition of any one of Scapinakis,
`Eisenmann, and Stanifer, is needed to augment the initial four grounds of
`obviousness directed against claim 1, i.e., over Kosaka, over Herrod, over
`
`-14-
`
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`Universal Electronics Exhibit 2008, Page 14
`Universal Remote Control v. Universal Electronics, Trial No. IPR2014-01111
`
`

`
`CBM-2012-00003
`Liberty Mutual Ins. Co. v. Progressive Casualty Ins. Co.
`
`Kosaka and Bouchard, and over Herrod and Bouchard. Petitioner articulates
`no infirmity or deficiency in the initial four grounds of obviousness rejection
`of claim 1, which would be made up or otherwise remedied by relying on
`Scapinakis, Eisenmann, or Stanifer.
`
`The Petitioner states merely that one with ordinary skill would have
`recognized that the system disclosed in each of the 4 initial obviousness
`grounds would be enhanced by incorporating the more sophisticated wireless
`telematics system to provide different types of data more efficiently to better
`determine driver performance as is discussed in Scapinakis, Eisenmann, and
`Stanifer. (Pet. 38:5-9; 40:4-8; 42:16 to 43:5). That the initial 4 grounds can
`be enhanced tells nothing about why it may be inadequate to meet the
`requirements of claim 1 and why any of Scapinakis, Eisenmann, and Stanifer
`can help to shore up that infirmity. And if any of Scapinakis, Eisenmann,
`and Stanifer can shore up an infirmity in the initial four obviousness
`grounds, then the initial four grounds should not be asserted concurrently
`with a separate ground adding Scapinakis, Eisenmann, or Stanifer.
`
`It is
`ORDERED that Petitioner has seven (7) days from the date of this
`
`communication to notify the Board which one of four groups of grounds it
`chooses to maintain against claim 1, i.e., first group with grounds designated
`as 1:(2) to 1:(5) in the chart on page 17 of the petition, second group with
`grounds designated as 1:(6) to 1:(9) including Scapinakis, third group with
`grounds designated as 1:(10) to 1:(13) including Eisenmann, and fourth
`group with grounds designated as 1:(14) to 1:(17) including Stanifer; the
`
`-15-
`
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`Universal Electronics Exhibit 2008, Page 15
`Universal Remote Control v. Universal Electronics, Trial No. IPR2014-01111
`
`

`
`CBM-2012-00003
`Liberty Mutual Ins. Co. v. Progressive Casualty Ins. Co.
`
`grounds in the non-selected groups will not be considered and neither will
`grounds which dependent on any ground in the non-selected groups;
`FURTHER ORDERED that if Petitioner fails to notify the Board
`
`timely as to which group of grounds to maintain, the Board will consider
`grounds 1:(6) to 1:(9) relying on the addition of Scapinakis; grounds 1:(2) to
`1:(5), 1:(10) to 1:(13), and 1:(14) to 1:(17) and grounds dependent thereon
`will not be considered.
`C. Adding Bouchard for Claim 1
`
`According to claim 1, a processor must collect vehicle data from a vehicle
`bus. Petitioner first asserts obviousness of claim 1 over Kosaka and also over
`Herrod, in grounds designated as 1:(2) and 1:(3) in the chart on page 17 of the
`petition. For those grounds, Petitioner alleges that collection of vehicle diagnostic
`data from a vehicle bus was well known in the art, without citing to any particular
`reference. In support of that assertion, Petitioner’s technical witness Andrews
`testified in his declaration ¶ 21, lines 10-14, that the On-Board Diagnostics II
`(OBD-II) vehicle bus was used in vehicles since 1994 and has, in fact, been
`required in passenger vehicles and light duty trucks since January 1996, as
`mandated by the Environmental Protection Agency.
`
`Nevertheless, Petitioner adds the prior art reference Bouchard to each of the
`two obviousness grounds based on Kosaka and Herrod to provide two additional
`grounds of obviousness, one based on Kosaka and Bouchard and the other based
`on Herrod and Bouchard. Bouchard is relied on as disclosing a processor that
`collects vehicle data from a vehicle bus. (Pet. 36:3-5). In that regard, Bouchard is
`said to be directed to a method and system for monitoring vehicle sensors to obtain
`
`-16-
`
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`Universal Electronics Exhibit 2008, Page 16
`Universal Remote Control v. Universal Electronics, Trial No. IPR2014-01111
`
`

`
`CBM-2012-00003
`Liberty Mutual Ins. Co. v. Progressive Casualty Ins. Co.
`
`various data elements and determine the operational status of a vehicle. (Pet.
`35:28-30). The Petitioner nowhere explains why reliance on Bouchard is needed
`in light of the alleged fact that collection of vehicle diagnostic data from a vehicle
`bus was well known to one with ordinary skill in the art and was actually required
`by law on certain types of vehicles since January of 1996. It is unknown why
`without reliance on Bouchard the obviousness grounds based on Kos