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By Tony Dutra
Jan. 27 --The Patent Trial and Appeal Board is now four-for-four in cancelling patent claims challenged under the “covered business method” proceeding enabled in 2012 by the America Invents Act.
As opposed to the previous two cases where 35 U.S.C. §101, on patent eligibility, was at issue, the board on Jan. 23 used obviousness under Section 103 to find Progressive Casualty Insurance Co.'s claims unpatentable (Liberty Mut. Ins. Co. v. Progressive Cas. Ins. Co., P.T.A.B., No. CBM2012-00002, 1/24/14), and (Liberty Mut. Ins. Co. v. Progressive Cas. Ins. Co., P.T.A.B., No. CBM2012-00004, 1/24/14).
Progessive asserted multiple patents against Liberty Mutual Insurance Co. and others in Progressive Casualty Ins. Co. v. Safeco Ins. Co. of Ill., No. 1:10-cv-01370 (N.D. Ohio).
Liberty Mutual filed 10 CBM challenges, including the one at issue in the instant two decisions (U.S. Patent No. 6,064,970) and against four other Progressive patents with trial in progress as to each of the four (U.S. Patent Nos. 7,124,088 in CBM2012-00010; 7,877,269 in CBM2013-00002; 8,090,598 in CBM2013-00004; and 8,140,358 in CBM2012-00002, CBM2012-00003 and CBM2013-00009).
The CBM petitions cited a 1995 prior art reference in common but each petition combined it with different references to make the case for obviousness of the challenged claims.
The PTAB's decisions held that all the challenged claims of the patent, directed to “a method for determining an automobile insurance premium based on data collected from monitored motor vehicle operational characteristics and operator's driving characteristics” and with a 1996 priority date, were obvious under either combination.
The board also provided some guidance to challengers in CBM cases as to the opportunity to enter new evidence in the last document allowed under the proceeding, the petitioner's reply to the patent owner's response. The board denied Progressive's motion to exclude a declaration relied on in the reply because it “properly responded to issues raised by Progressive in the patent owner response.”
Administrative Patent Judge Joni Y. Chang wrote the PTAB's opinion, joined by APJs Jameson Lee and Michael R. Zecher.
J. Steven Baughman of Ropes & Gray LLP, Boston, represented Liberty Mutual. Calvin P. Griffith of Jones Day, Cleveland, represented Progressive.
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