In its Decision, the Board held that claims 1-78 of the ’598 patent are unpatenable under 35 U.S.C. § 102. The ’598 patent relates to a system for monitoring and communicating operational characteristics and operator actions (e.g., speeds driven) relating to a unit of risk (e.g., a motor vehicle) to determine the insurance cost for the unit of risk.
Qualification for Covered Business Method Review
Patent Owner argued that not all of the claims of the ’598 patent were eligible for review, because not all of the claims qualify as a covered business method. The Board held that, based on the statutory language of the AIA, the availability of the covered business method patent review is determined for the patent, not on a claim-by-claim basis. Thus, the Board held that where at least one claim in a patent is a covered business method, then all the claims of that patent are available for covered business method patent review.
Unpatentability Based on Prior Art
The references asserted by Petitioner would not qualify as prior art if the claims of the ’598 patent were supported by the parent application, to which the ’598 patent was a continuation-in-part. However, the Board agreed with Petitioner that written description support was not found in the parent application for any of claims 1-78 of the ’598 patent.
Upon determining that the two references qualified as prior art, the Board also agreed with Petitioner that the two references individually each anticipated each and every element of claims 1-78 of the ’598 patent. The Board specifically addressed each element that Patent Owner asserted as missing, finding each argument by Patent Owner to be unpersuasive based on the evidence before the Board.
Orders Related to Motions to Exclude Evidence
Petitioner moved to exclude declaration evidence presented by two declarants supporting Patent Owner’s positions. As to the first expert, Petitioner argued that he was not sufficiently knowledgeable about insurance matters or telematics matters as of 1996 (the earliest effective filing date claimed by the ’598 patent). The Board held that his qualifications were sufficient to give expert testimony with regard to vehicle telematics, and that his alleged lack of expertise explicitly with regard to insurance would be taken into consideration by the Board when weighing his testimony. Further, the Board held that Rule 702 of the Federal Rules of Evidence does not require the relevant experience of the witness to have been acquired prior to the earliest effective filing date of the patent under review.
With regard to the other declarant, Petitioner requested that an exhibit be excluded that was referred to in the Patent Owner Response, but not provided until responding to Petitioner’s Motion to Exclude. Patent Owner attempted to refer Petitioner to an exhibit previously provided to Petitioner in the related litigation rather than providing a separate copy in the CBM proceeding. The Board explained that this was improper, but that there was no harm to Petitioner, so the exhibit would not be excluded.
Patent Owner moved to exclude certain evidence submitted in support of Petitioner’s Reply. A motion to exclude must explain why the evidence is not admissible (e.g., relevance or hearsay), but may not be used to challenge the sufficiency of the evidence to prove a particular fact. Office Patent Trial Practice Guide, 77 Fed. Reg. 48,765, 48,767 (Aug. 14, 2012). While a motion to exclude may raise issues related to admissibility of evidence, it is not an opportunity to file a sur-reply, and also is not a mechanism to argue that a reply contains new arguments or relies on evidence necessary to make out a prima facie case. The Board held that Patent Owner’s motion contained such improper arguments and was in the nature of a sur-reply. Further, the Board said that, in any case, the arguments were without merit.
Liberty Mutual Insurance Co. v. Progressive Casualty Insurance Co., CBM2013-00004
Paper 53: Final Written Decision
Dated: March 13, 2014
Patent 8,090,598
Before: Jameson Lee, Joni Y. Chang, and Michael R. Zecher
Written by: Chang
Related Proceedings: Progressive Casualty Ins. Co. v. Safeco Ins. Co. of Ill., No. 1:10-cv-01370 (N.D. Ohio)