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By Tony Dutra
March 18 — Liberty Mutual Insurance Co. took full advantage of the ability to challenge patents at the Patent Trial and Appeal Board after being sued for infringement by Progressive Casualty Insurance Co.
After a March 13 board decision, the claims of all five patents asserted in court have been cancelled through the “covered business method” proceeding enabled in September 2012 by the America Invents Act (Liberty Mutual Ins. Co. v. Progressive Cas. Ins. Co.,P.T.A.B., No. CBM2013-00004, 3/13/14).
Progressive first asserted the patents (U.S. Patent Nos. 6,064,970, 7,124,088, 7,877,269, 8,090,598 and 8,140,358) in 2010 against Liberty Mutual, Safeco Insurance Co. and others. Progressive Cas. Ins. Co. v. Safeco Ins. Co. of Ill., No. 1:10-cv-01370 (N.D. Ohio). Progressive later filed complaints related to the same patents against Allstate Insurance Co. (No. 1:11-cv-00082), State Farm Mutual Automobile Insurance Co. (No. 1:12-cv-01068) and Hartford Fire Insurance Co. (No. 1:12-cv-01070).
The case against Liberty Mutual was stayed initially for Patent and Trademark Office reexamination. Liberty Mutual then filed three CBM petitions on the first day the AIA-enabled CBM challenge became available. The company filed a total of 10 petitions over a two-month period, with two petitions against each of the five patents. Again, the Northern District of Ohio court stayed litigation while the PTAB reviewed the petitions.
Though the PTAB ultimately denied three of the petitions, it instituted trial on at least one challenge against each patent. And the dual-challenge approach proved effective with at least one patent: claims 7-8 of the ‘970 patent survived the CBM2012-00002 challenge, but not the CBM2012-00004 challenge against the same patent.
In prior actions, the board agreed with Liberty Mutual and cancelled claims of four of the asserted patents.
The March 13 decision was on the ‘598 patent, titled “Monitoring system for determining and communicating a cost of insurance.” The patent is directed to “a system for acquiring and processing relevant data for an insured unit of risk, such as a vehicle or other machine, for purposes of providing a more accurate determination of the cost of insurance for the unit of risk and for communicating or quoting the so determined cost to an owner of the unit of risk.”
The board determined that all 78 claims of the patent were anticipated independently by two different 2002 patent applications—the filing date for the ‘598 patent was 2004—and obvious in light of each combined with a 1995 British application.
The board's opinion was notable in its response to Progressive's argument that a covered business method petition must be assessed on a claim-by-claim basis. That is, Progressive contended that only claim 32 of the ‘598 patent is drawn to a statutorily defined business method, limiting the PTAB to review of that claim only.
However, the board said, referring to Section 18(d)(1) of the AIA, “a patent is eligible for a covered business method patent review if the subject matter of at least one claim is directed to a covered business method.”
Administrative Patent Judge Joni Y. Chang wrote the opinion, joined by APJs Jameson Lee and Michael R. Zecher.
J. Steven Baughman of Ropes & Gray, Washington, represented Liberty Mutual. Calvin P. Griffith of Jones Day, Cleveland, represented Progressive.
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Ruling is available at http://pub.bna.com/ptcj/CBM2013-00004final.pdf
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