Access practice tools, as well as industry leading news, customizable alerts, dockets, and primary content, including a comprehensive collection of case law, dockets, and regulations. Leverage...
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.
To contact the reporter on this story: Tony Dutra in Washington at email@example.com
To contact the editor responsible for this story: Naresh Sritharan at firstname.lastname@example.org
Ruling is available at http://pub.bna.com/ptcj/CBM2013-00004final.pdf
All Bloomberg BNA treatises are available on standing order, which ensures you will always receive the most current edition of the book or supplement of the title you have ordered from Bloomberg BNA’s book division. As soon as a new supplement or edition is published (usually annually) for a title you’ve previously purchased and requested to be placed on standing order, we’ll ship it to you to review for 30 days without any obligation. During this period, you can either (a) honor the invoice and receive a 5% discount (in addition to any other discounts you may qualify for) off the then-current price of the update, plus shipping and handling or (b) return the book(s), in which case, your invoice will be cancelled upon receipt of the book(s). Call us for a prepaid UPS label for your return. It’s as simple and easy as that. Most importantly, standing orders mean you will never have to worry about the timeliness of the information you’re relying on. And, you may discontinue standing orders at any time by contacting us at 1.800.960.1220 or by sending an email to email@example.com.
Put me on standing order at a 5% discount off list price of all future updates, in addition to any other discounts I may quality for. (Returnable within 30 days.)
Notify me when updates are available (No standing order will be created).
This Bloomberg BNA report is available on standing order, which ensures you will all receive the latest edition. This report is updated annually and we will send you the latest edition once it has been published. By signing up for standing order you will never have to worry about the timeliness of the information you need. And, you may discontinue standing orders at any time by contacting us at 1.800.372.1033, option 5, or by sending us an email to firstname.lastname@example.org.
Put me on standing order
Notify me when new releases are available (no standing order will be created)