Liberty Mutual Insurance Co.v.Progressive Casualty Insurance Co.Download PDFPatent Trial and Appeal BoardApr 1, 201412132487 (P.T.A.B. Apr. 1, 2014) Copy Citation Trial@uspto.gov Paper 79 571-272-7822 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 CBM2013-00009 Patent 8,140,358 ____________ Before JAMESON LEE, JONI Y. CHANG, and MICHAEL R. ZECHER, Administrative Patent Judges. CHANG, Administrative Patent Judge DECISION Liberty’s Request for Rehearing 37 C.F.R. § 42.71 Case CBM2013-00009 Patent 8,140,358 2 INTRODUCTION Liberty Mutual Insurance Company (“Liberty”) requests rehearing of the final written decision (Paper 68), holding claims 1-20 of U.S. Patent No. 8,140,358 (“the ’358 patent”) unpatentable. Paper 73 (“Req.”). Progressive Casualty Insurance Company (“Progressive”) filed an opposition to Liberty’s request for rehearing. Paper 77 (“Opp.”). 1 A request for rehearing must be in the form of a motion. 37 C.F.R. § 42.20(a). The request must identify specifically all matters the party believes the Board misapprehended or overlooked, and the place where each matter was addressed previously. 37 C.F.R. § 42.71(d). For the reasons stated below, Liberty’s request for rehearing is denied. ANALYSIS On March, 28, 2013, we instituted the instant covered business method patent review as to claims 1-20 of the ’358 patent. Paper 10. We also instituted a review in CBM2012-00003 with respect to claims 1-20 of the ’358 patent. Liberty Mutual Insurance Co. v. Progressive Casualty Insurance, Co., CBM2012-00003, Paper 15. In response to the parties’ joint request, we synchronized the trial schedules for both reviews, as they involved the same patent and parties. Papers 16-17; CBM2012-00003, Papers 29-30. During the trials, the parties also merged and conducted discovery for both proceedings at the same time (see, e.g., Paper 36, Ex. 2029; CBM2012-00003, Paper 25, Ex. 2016) and conducted conference calls 1 We authorized each party to file an opposition to the opposing party’s request for rehearing. Paper 75. Case CBM2013-00009 Patent 8,140,358 3 with the Board for both proceedings concurrently (see, e.g., Papers 37-38; CBM2012-00003, Papers 53-54). 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 47, 65; CBM2012-00003, Papers 62, 76. We in effect consolidated the reviews, at the request of the parties, except that papers and exhibits are stored in separate files for case management. See 35 U.S.C. § 325(d). In a prior Order, we stated: “The parties can expect that the final written decision for the two cases will issue on the same date, as that has been the plan according to the formal schedule.” Paper 64, p. 2. 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. Pursuant to 35 U.S.C. § 328(a), we issued the final written decision in the instant proceeding and the final written decision for CBM2012- 00003 on February 11, 2014, concurrently. Paper 68 at 2 (“A final written decision in Case CBM2012-00003 is entered concurrently with this decision.”); CBM2012- 00003, Paper 78 at 3 (“A final written decision in CBM2013-00009 is entered concurrently with this decision.”). In its request for rehearing, Liberty seeks the following relief: In the event that this Board denies Progressive’s rehearing request in Case CBM2013-00009, Petitioner respectfully requests that the Board deny Petitioner’s rehearing requests concurrently for both CBM2012-00003 and CBM2013-00009. In the event that the Board grants rehearing in Case CBM2013-00009, Petitioner requests that the Board issue a single combined final decision for both CBM2012- 00003 and CBM2013-00009, effective February 11, 2014. Req. 2. Case CBM2013-00009 Patent 8,140,358 4 Liberty filed a similar request for rehearing in CBM2012-00003 (Paper 81). In its opposition filed in the instant proceeding, Progressive counters that Liberty’s request is not a proper rehearing request because “it seeks relief contingent on how the Board will in the future rule on the rehearing request filed by [Progressive], Paper 71.” Opp. 1 (emphasis omitted); see also Opp. 2-3. We have reviewed Liberty’s request for rehearing, as well as Progressive’s arguments submitted in its opposition. We agree with Progressive that Liberty has not shown that the final written decision misapprehended or overlooked any matter. Liberty’s request that we should issue a single combined final written decision is moot because we deny Progressive’s request for rehearing (see Paper 78). Liberty’s request that we should issue the decisions denying its requests for both proceedings concurrently also is not necessary in light of the previous Order granting the parties’ joint request to synchronize the trial schedules for both proceedings (Papers 16-17; CBM2012-00003, Papers 29-30). Consistent with that Order, we hereby issue the instant decision on Liberty’s request for rehearing and the decision on Liberty’s request for rehearing filed in CBM2012-00003 concurrently. CONCLUSION Liberty has not shown that the final written decision misapprehended or overlooked any matter. See 37 C.F.R. § 42.71(d). Liberty’s request for rehearing is denied. Case CBM2013-00009 Patent 8,140,358 5 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 Copy with citationCopy as parenthetical citation