Liberty Mutual Insurance Co.v.Progressive Casualty Insurance Co.

Patent Trial and Appeal Board

Apr 1, 2014

09135034 (P.T.A.B. Apr. 1, 2014)

Trial@uspto.gov Paper 64
571-272-7822 Entered: April 1, 2014

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 CBM2012-00004
Patent 6,064,970
____________

Before JAMESON LEE, JONI Y. CHANG, and MICHAEL R. ZECHER,
Administrative Patent Judges.

CHANG, Administrative Patent Judge.

DECISION
Progressive’s Request for Rehearing
37 C.F.R. § 42.71

Case CBM2012-00004
Patent 6,064,970
2
INTRODUCTION
Progressive Casualty Insurance Company (“Progressive”) requests rehearing
of the final written decision (Paper 60), holding claims 1 and 3-18 of U.S. Patent
No. 6,064,970 (“the ’970 patent”) unpatentable. Paper 62 (“Req.”). Progressive
proffers a declaration of Mr. James Wamsley to support its arguments. Ex. 2026.
On January 25, 2013, the Board instituted the instant covered business
method patent review as to claims 1 and 3-18 of the ’970 patent, as well as
CBM2012-00002 with respect to claims 1, 3-6, and 9-18 of the ’970 patent.
Paper 10; Liberty Mutual Insurance Co. v. Progressive Casualty Insurance
Co.,CBM2012-00002, Paper 10. The trial schedules for both reviews were
synchronized, as they involved the same patent and parties. Paper 11; CBM2012-
00002, Paper 11. Also, the oral hearings for both reviews were merged and
conducted at the same time, and the transcript for the oral hearing was made
useable for both reviews. Papers 50, 58; CBM2012-00002, Papers 55, 64.
The Board issued the final written decision in the instant proceeding and the final
written decision for CBM2012-00002, on January 23, 2014, concurrently.
Paper 60, p. 3 (“A final written decision in CBM2012-00002 is entered
concurrently with this decision.”); CBM2012-00002, Paper 66, p. 3 (“A final
written decision in CBM2012-00004 is entered concurrently with this decision.”).
In its request for rehearing, Progressive takes the position that the Board
lacks statutory authority to issue the final written decision in the instant proceeding
because it was posted electronically 50 seconds after the final written decision in
CBM2012-00002 was posted. Req. 4; Ex. 2026 ¶¶ 4-6. For the reasons stated
below, Progressive’s request for rehearing is denied.
Case CBM2012-00004
Patent 6,064,970
3
ANALYSIS
In pertinent part, 37 C.F.R. § 42.71(d) states:
The burden of showing a decision should be modified lies with the
party challenging the decision. The request must specifically identify
all matters the party believes the Board misapprehended or
overlooked, and the place where each matter was previously
addressed in a motion, an opposition, or a reply.
In support of its position, Progressive argues the following: (1) the Board
misapprehended or overlooked that posting to the Board’s public electronic
system, Patent Review Processing System (PRPS), “enters” a final written decision
(Req. 3-4, 6-8 (citing Ex. 2026)); (2) the Board misapprehended or overlooked the
application of 35 U.S.C. § 325(e)(1) (Req. 8-13); and (3) the Board
misapprehended or overlooked the prohibition on issuing an advisory opinion
(Req. 14-15). We disagree.
1.
Section 18(a) of the Leahy-Smith America Invents Act (“AIA”) provides
that a covered business method patent review “shall be regard as, and shall employ
the standards and procedures of, a post-grant review” with certain exceptions.
Pub. L. No. 112-29, § 18(a)(1)(A), 125 Stat. 284, 329 (2011). The Board’s
statutory authority for issuing a final written decision in an instituted covered
business method patent review is set forth in 35 U.S.C. § 328(a), which states:
(a) FINAL WRITTEN DECISION.—If a post-grant review is
instituted and not dismissed under this chapter, the Patent Trial and
Appeal Board shall issue a final written decision with respect to the
patentability of any patent claim challenged by the petitioner and any
new claim added under section 326(d).
Case CBM2012-00004
Patent 6,064,970
4
Progressive does not dispute that both final written decisions holding the
claims of the ’970 patent unpatentable were issued on the same day, January 23,
2014. Req. 3. Progressive also acknowledges that the final written decision in the
instant proceeding, itself, states that it is entered concurrently with the final written
decision in CBM2012-00002. Id. Nonetheless, Progressive maintains that there is
“no evidence to support the Board’s finding that its Final Decisions were ‘entered
concurrently’ in CBM2012-00002 and CBM2012-00004.” Id. at 7.
That characterization is incorrect, as the Board did not make a finding in that
regard, but simply declared how it was issuing the final written decisions in the
instant proceeding and CBM2012-00002 pursuant to 35 U.S.C. § 328(a). The
Board’s statement, itself, is an operative fact and requires no further supporting
fact or evidence. Nothing in the statute prohibits the Board from issuing the final
written decisions in two different proceedings for the same patent concurrently.
To support its position that an electronic posting “enters” a final written
decision, Progressive proffers metadata and courtesy electronic mail notifications
as evidence to show the times of the day when the final written decisions were
posted in PRPS. Req. 3-4 (citing Ex. 2026 ¶¶ 4-7; see, e.g., id. at ¶ 5 (“The
metadata . . . indicate[s] that [the final written decision in CBM2012-00002] was
. . . available over the PRPS on January 23, 2014 at 1:25:52 PM EST
(18:25:52.294 GMT).”); id. at ¶ 6 (“The metadata . . . indicates that [the final
written decision in CBM2012-00004] was . . . available over the PRPS on January
23, 2014 at 1:26:42 PM EST (18:26:42.301 GMT).”). According to Progressive,
because its supporting evidence shows that the final written decision of the instant
proceeding was posted 50 seconds after the final written decision in CBM2012-
Case CBM2012-00004
Patent 6,064,970
5
00002 was posted, the final written decisions were not issued concurrently.
Req. 7-8; Ex. 2026 ¶¶ 4-7.
Progressive’s reliance on the metadata and electronic mail notifications
associated with the electronic postings is misplaced. Public accessibility is not a
requirement for issuing a final written decision under 35 U.S.C. § 328(a), but
rather a requirement to make the file history available to the public under
35 U.S.C. § 326(a)(1). Progressive does not direct us to any authority to support
its position that an electronic posting “issues” a final written decision.
Moreover, the Board has not implemented the statutory provision under
35 U.S.C. § 328(a) to define the precise moment when the Board issues a final
written decision as the exact time of the day—measured in seconds—when the
final written decision is posted in PRPS. In fact, the Board consistently has
defined the entry date on the first page of each final written decision, as the day
when the Board issues the final written decision, regardless of the mode of delivery
or notification—mailing or posting electronically. That is consistent with the
Office’s procedure for entering other official papers in this proceeding, and official
papers in other proceedings. For instance, the Office accords the filing date of a
patent application, and not the filing time of a patent application. The “entry date”
procedure also is consistent with the procedure for setting time periods for the
parties to file their papers, which is measured in the number of days, as opposed to
seconds, from the entry date of a final written decision. See, e.g., 37 C.F.R.
§ 42.71 (d)(2) (“Any request must be filed . . . [w]ithin 30 days of the entry of a
final written decision or a decision not to institute a trial.”); 37 C.F.R. § 90.3(a)(1)
Case CBM2012-00004
Patent 6,064,970
6
(The notice of appeal must be filed no later than 63 days after the date of the final
Board decision.).
Indeed, the final written decision of the instant proceeding and the final
written decision issued in CBM2012-00002 each set forth the same entry date of
January 23, 2014. Paper 60, p. 1; CBM2012-00002, Paper 66, p. 1. Additionally,
the final written decision, itself, clearly sets forth that “[a] final written decision in
CBM2012-00002 is entered concurrently with this decision.” Paper 60, p. 3.
Similarly, the final written decision in CBM2012-00002 states that “[a] final
written decision in CBM2012-00004 is entered concurrently with this decision.”
CBM2012-00002, Paper 66, p. 3. Each final written decision was decided by the
same panel and is, itself, part of the official record. Progressive simply ignores the
official records of both proceedings, including the final written decisions.
The PRPS also displays the entry date for both final written decisions. A
screenshot of the PRPS entry listing for this proceeding is reproduced below.

Case CBM2012-00004
Patent 6,064,970
7
As shown in the screenshot above, PRPS displays January 23, 2014, as the
entry date for the final written decision. Notably, PRPS does not display the time
of the day when the final written decision or any other document was posted in
PRPS. The Office does not expect the public to retrieve the metadata of each
paper using Internet Explorer Tools, as Progressive did (Ex. 2026 ¶ 4; Attachments
A, B), because the time of day when each paper is uploaded by the administrative
staff has no legal significance.
For the foregoing reasons, the evidence before us establishes that the final
written decisions with respect to the patentability of the ’970 patent were issued
concurrently.
We disagree with Progressive’s assertion that, by issuing the final written
decisions with respect to the patentability of the claims of the ’970 patent
concurrently, the Board “favors” Liberty. Req. 6. It is important to note that the
concurrent issuance of the final written decisions is a natural consequence from
synchronizing the trial schedules for both proceedings, which was requested by
Progressive jointly with Liberty. Paper 15; CBM2012-00002, Paper 16.
Liberty filed the petition in the instant proceeding and the petition in
CBM2012-00002 on the same day, September 16, 2012. The Board instituted both
covered business method patent reviews on the same day, January 25, 2013, and
both proceedings advanced on the same schedule to the concurrent issuance of the
final written decisions. During the trials, Progressive also merged and conducted
discovery for both proceedings at the same time (see, e.g., Papers 22-24;
CBM2012-00002, Papers 21-23) and conducted conference calls with the Board
and Liberty for both proceedings concurrently (see, e.g., Papers 15-16; CBM2012-
Case CBM2012-00004
Patent 6,064,970
8
00002, Papers 16-17). The final oral hearings for both proceedings were merged
and conducted at the same time, and the transcript for the oral hearing was made
useable for both reviews. Papers 50, 58; CBM2012-00002, Papers 55, 64. In
effect, the proceedings were consolidated, except that the papers and exhibits are
stored in separate files for case management. See 35 U.S.C. § 325(d).
In an order dated December 4, 2013, we stated: “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.” Paper 57, pp. 2-3. The parties
did not object to the advance notice to the parties that the final written decisions for
the two cases will issue on the same date. Therefore, it should not be a surprise to
Progressive that the final written decisions for both proceedings were issued
concurrently—which was a natural result from synchronizing the trial schedules
for both proceedings.
2.
Progressive alleges that the Board misapprehended or overlooked the
application of 35 U.S.C. § 325(e)(1). Req. 8-13. According to Progressive, the
estoppel of 35 U.S.C. § 325(e)(1) “attached as soon as the Board entered its Final
Decision in CBM2012-00002, and the Board was then without authority to enter a
Final Decision in the CBM2012-00004 proceeding.” Req. 8. Progressive
maintains that the legislative history makes clear that 35 U.S.C. § 325(e)(1) is
intended to prevent multiple challenges to a patent. Req. 13. We disagree.
Case CBM2012-00004
Patent 6,064,970
9
The estoppel provision as to a final written decision in a covered business
method patent review is provided in 35 U.S.C. § 325(e)(1), which states (emphases
added):
PROCEEDINGS BEFORE THE OFFICE. — The petitioner in a post-
grant review of a claim in a patent under this chapter that results in a
final written decision under section 328(a), or the real party in interest
or privy of the petitioner, may not request or maintain a proceeding
before the Office with respect to that claim on any ground that the
petitioner raised or reasonably could have raised during that post-
grant review.
Progressive does not dispute that 35 U.S.C. § 325(e)(1) places a restriction
on a petitioner’s ability to “request or maintain a proceeding before the Office”
after a final written decision under 35 U.S.C. § 328(a) has issued on the challenged
claims. The estoppel provision under 35 U.S.C. § 325(e)(1) could not have
terminated the instant proceeding prior to issuance of the final written decision,
because the final written decision was issued concurrently with the final written
decision in CBM2012-00002.
In addition, nothing in 35 U.S.C. § 325(e)(1) precludes the Board from
proceeding to a final written decision when a petitioner can no longer maintain a
proceeding, or requires the Board to terminate the second proceeding with respect
to both the petitioner and patent owner when a final written decision has issued in a
first proceeding on the same claims of the same patent. To the contrary, 35 U.S.C.
§ 327(a) provides that “[i]f no petitioner remains in the post-grant review, the
Office may terminate the post-grant review or proceed to a final written decision
under section 328(a)” (emphases added). Although Progressive interprets that
statutory authorization narrowly, limiting it only to settlement situations,
Case CBM2012-00004
Patent 6,064,970
10
Progressive fails to recognize that 35 U.S.C. § 328(a) expressly requires the Board
to issue a final written decision if the instituted covered business method patent
review is not dismissed, as is the case here.
With respect to Progressive’s argument that the legislative history makes
clear that 35 U.S.C. § 325(e)(1) is intended to prevent multiple challenges to a
patent (Req. 13), the statute does not prohibit the Board from maintaining multiple
parallel proceedings that conclude concurrently. As discussed above, Liberty filed
the petition in the instant proceeding and the petition in CBM2012-00002 on the
same day, September 16, 2012. The Board instituted both covered business
method patent reviews on the same day, January 25, 2013, and the trial schedules
for both proceedings were synchronized. Papers 10, 15; CBM2012-00002,
Papers 10, 16. Progressive also merged and conducted discovery for both
proceedings at the same time (see, e.g., Papers 22-24; CBM2012-00002, Papers
21-23) and conducted conference calls with the Board for both proceedings
concurrently (see, e.g., Papers 15-16; CBM2012-00002, Papers 16-17). In sum,
both proceedings advanced on the same schedule to the concurrent issuance of the
final written decisions. Therefore, the Board does not view these two parallel
proceedings as multiple “serial” attacks on the ’970 patent.
For the foregoing reasons, we are not persuaded that, once the final written
decision in CBM2012-00003 was entered, the estoppel provision under 35 U.S.C.
§ 325(e)(1) terminated the instant proceeding or prohibited the Board from issuing
the final written decision.
Case CBM2012-00004
Patent 6,064,970
11
3.
Progressive alleges that the Board misapprehended or overlooked the
prohibition on issuing an advisory opinion. Req. 14-15. According to Progressive,
the Board’s unpatentability determination as to claims 1 and 3-18 of the ’970
patent in the instant proceeding became an advisory opinion once the Board
determined that claims 1, 3-6, and 9-18 of the ’970 patent were unpatentable in
CBM2012-00002 and, subsequently, cancelled those claims. Id.
We disagree. Again, Progressive’s arguments rest on the erroneous premise
that the final written decision of the instant proceeding was issued 50 seconds later
than the issuance of the final written decision in CBM2012-00002. In fact, the
final written decisions were issued concurrently on January 23, 2014. The final
written decision of the instant proceeding, therefore, is not an advisory opinion, but
rather a patentability determination under 35 U.S.C. § 328(a) as to claims 1 and 3-
18 of the ’970 patent.
Pursuant to 35 U.S.C. § 328(a), upon consideration of the parties’ arguments
and supporting evidence, the Board determined that claims 1 and 3-18 of the ’970
patent were unpatentable under 35 U.S.C. § 103(a) based on several combinations
of Bouchard, Pettersen, Herrod, Florida Guide, Camhi, and Dorweiler. Paper 60,
p. 52. In the CBM2012-00002, the Board determined that claims 1, 3-6, and 9-18
of the ’970 patent were unpatentable under 35 U.S.C. § 103(a) based on several
combinations of Kosaka, Florida Guide, Black Magic, and Herrod. CBM2012-
00002, Paper 66, p. 70. The final written decision in CBM2012-00002 does not
address claims 7 and 8, as the grounds of unpatentability with respect to these
claims were denied in the Decision on Institution (CBM2012-00002, Paper 10,
Case CBM2012-00004
Patent 6,064,970
12
p. 31-32). Therefore, the patentability determinations of the instant proceeding and
CBM2012-00002 are based on different grounds of unpatentability.
It is important to note that the Order set forth in the final written decision in
CBM2012-00002 (Paper 66, p. 71) to cancel claims 1, 3-6, and 9-18 of the ’970
patent is not effective until the Director issues a certificate under 35 U.S.C.
§ 328(b), canceling those claims. Section 328(b) states:
CERTIFICATE.—If the Patent Trial and Appeal Board issues a final
written decision under subsection (a) and the time for appeal has
expired or any appeal has terminated, the Director shall issue and
publish a certificate canceling any claim of the patent finally
determined to be unpatentable, confirming any claim of the patent
determined to be patentable, and incorporating in the patent by
operation of the certificate any new or amended claim determined to
be patentable.
More significantly, a certificate under 35 U.S.C. § 328(b) cannot be issued
until the time for appeal has expired or any appeal has terminated. Here,
no certificate, cancelling any claims of the ’970 patent, has been issued. Therefore,
the final written decision of the instant proceeding was issued before any
cancellation of the claims of the ’970 patent.
For the foregoing reasons, we are not persuaded that the final written
decision issued in the instant proceeding is an advisory opinion.
CONCLUSION
In view of the foregoing, Progressive has not carried its burden of
demonstrating that the Board’s final written decision misapprehended or
overlooked any matters. 37 C.F.R. § 42.71(d).
Progressive’s request for rehearing is denied.
Case CBM2012-00004
Patent 6,064,970
13

PETITIONER:

J. Steven Baughman
James R. Myers
Nicole M. Jantzi
ROPES & GRAY LLP
steven.baughman@ropesgray.com
james.myers@ropesgray.com
nicole.jantzi@ropesgray.com

PATENT OWNER:

Calvin P. Griffith
James L. Wamsley, III
John V. Biernacki
JONES DAY
cpgriffith@jonesday.com
jlwamsleyiii@jonesday.com