LIBERTY MUTUAL INSURANCE CO.v.PROGRESSIVE CASUALTY INSURANCE CO.

Patent Trials and Appeals Board

Mar 15, 2013

10764076 - (D) (P.T.A.B. Mar. 15, 2013)

Trials@uspto.gov Paper 11
571-272-7822 Entered: March 15, 2013

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 CBM2013-00003 (JL)
Patent 8,090,598
____________

Before JAMESON LEE, JONI Y. CHANG, and MICHAEL R. ZECHER,
Administrative Patent Judges.

Chang, Administrative Patent Judge

DECISION
Institution of Covered Business Method Patent Review
37 C.F.R. § 42.208

Case CBM2013-00003
Patent 8,090,598
2
I. INTRODUCTION
On October 15, 2012, Liberty Mutual Insurance Company (“Liberty”)
filed a petition requesting a review under the transitional program for
covered business method patents of U.S. Patent 8,090,598 (“the ’598
patent”). (Paper 4, “Pet.”) The patent owner, Progressive Casualty
Insurance Company (“Progressive”), filed a preliminary response on
January 22, 2013. (Paper 9, “Prel. Resp.”) We have jurisdiction under
35 U.S.C. §§ 6(b) and 324. See section 18(a) of the Leahy-Smith America
Invents Act, Pub. L. 112-29, 125 Stat. 284, 329 (2011) (“AIA”).
The standard for instituting a covered business method patent review
is set forth in 35 U.S.C. § 324(a), which provides as follows:
THRESHOLD --The Director may not authorize a post-grant
review to be instituted unless the Director determines that the
information presented in the petition filed under section 321, if
such information is not rebutted, would demonstrate that it is
more likely than not that at least 1 of the claims challenged in
the petition is unpatentable.
Liberty challenges the patentability of claims 1-78 of the ’598 patent.
Taking into account Progressive’s preliminary response, we determine that
the information presented in the petition does not demonstrate that it is more
likely than not that claims 1-78 are unpatentable. Pursuant to 35 U.S.C.
§ 324 and section 18(a) of the AIA, we do not authorize a covered business
method patent review to be instituted as to claims 1-78 of the ’598 patent for
the grounds of unpatentability asserted in Liberty’s petition.
Accordingly, the petition is DENIED.
Case CBM2013-00003
Patent 8,090,598
3
A. Liberty’s Standing
Liberty certifies that the ’598 patent was asserted against it in Case
No. 1:10-cv-01370, Progressive Cas. Ins. Co. v. Safeco Ins. Co. of Ill. Et al.,
pending in the U.S. District Court for the Northern District of Ohio. (Pet. 8.)
Progressive does not dispute that certification.
B. Covered Business Method Patent
Under section 18(a)(1)(E) of the AIA, the Board may institute a
transitional proceeding only for a patent that is a covered business method
patent. Section 18(d)(1) of the AIA defines the term “covered business
method patent” to mean:
a patent that claims a method or corresponding apparatus for
performing data processing or other operations used in the
practice, administration, or management of a financial product
or service, except that the term does not include patents for
technological inventions.
The legislative history explains that the definition of a covered
business method patent was drafted to encompass patents “claiming
activities that are financial or complementary to financial activity.” 157
Cong. Rec. S5432 (daily ed. Sept. 8, 2011) (statement of Sen. Schumer).
Section 18(d)(2) of the AIA provides that “the Director shall issue
regulations for determining whether a patent is for a technological
invention.” The legislative history points out that the regulation for this
determination should only exclude “those patents whose novelty turns on a
technological innovation over the prior art and are concerned with a
technical problem which is solved with a technical solution and which
Case CBM2013-00003
Patent 8,090,598
4
requires the claims to state the technical features which the inventor desires
to protect.” 157 CONG. REC. S1364 (daily ed. Mar. 8, 2011) (statement of
Sen. Schumer).
Pursuant to that statutory mandate, the Office promulgated 37 C.F.R.
§ 42.301(b) to define the term “technological invention” for the purposes of
the transitional program for covered business method patents. Therefore,
when determining whether a patent is for a technological invention in the
context of the transitional program for covered business method patents,
37 C.F.R. § 42.301(b) identifies the following for consideration:
whether the claimed subject matter as a whole recites a
technological feature that is novel and unobvious over the prior
art; and solves a technical problem using a technical solution.
To help the public better understand how the definition of a
technological invention under 37 C.F.R. § 42.301(b) would be applied in
practice, the Office Patent Trial Practice Guide provides the following
guidance as to claim drafting techniques that typically would not render a
patent a technological invention:
(a) Mere recitation of known technologies, such as computer
hardware, communication or computer networks, software,
memory, computer readable storage medium, scanners, display
devices, or databases, or specialized machines, such as ATM or
point of sale device.
(b) Reciting the use of known prior art technology to
accomplish a process or method, even if the process or method
is novel and non-obvious.
(c) Combining prior art structures to achieve the normal,
expected, or predictable result of that combination.
Case CBM2013-00003
Patent 8,090,598
5
77 Fed. Reg. 48756, 48763-64 (Aug. 14, 2012).
In its petition, Liberty asserts that the ’598 patent is a covered
business method patent because the claimed invention of the ’598 patent
relates to the administration and management of an insurance policy to
adjust insurance premiums based on monitored vehicle data. (Pet. 6.)
Liberty further contends that the claimed invention of the ’598 patent is not a
“technological invention” as defined in 37 C.F.R. § 42.301(b). (Pet. 7.)
According to Liberty, the claimed subject matter of the ’598 patent does not
include any “technological feature” that is novel and unobvious because the
claimed system merely implement a way of assessing insurance risk. (Id.)
Liberty also argues that the claimed subject matter as a whole solves the
problem of determining a cost of insurance accurately, but not a technical
problem. (Id.)
Progressive counters that the claimed invention of the ’598 patent is a
“technological invention” and, therefore, the ’598 patent is ineligible for a
covered business method patent review. (Prel. Resp. 32-34.) Specifically,
Progressive contends the claimed subject matter as a whole recites a
technological feature that is novel and unobvious over the prior art. (Id. at
34-37.) Progressive also argues that the claimed subject matter as a whole
solves a technical problem using a technical solution. (Id. at 37-42.)
To support those contentions, Progressive argues that the claimed
invention is similar to the examples provided in the Office Patent Trial
Practice Guide (77 Fed. Reg. at 48764), which the Office indicates would
not be eligible for a covered business method patent review, and is more
Case CBM2013-00003
Patent 8,090,598
6
technically robust than the claims of U.S. Patent 6,553,350, which the Board
has found eligible for a covered business method patent review. (Prel. Resp.
32-37, 40-42.) In that regard, Progressive notes that in the notice of
allowance, the Examiner stated that the closest prior art of record did not
teach wirelessly receiving selected onboard vehicle data monitored by an in-
vehicle data monitoring device. (Id. at 35-36.) Progressive points out that
the claims “recite significant hardware, such as a vehicle, an in-vehicle data
monitoring device, and wireless data transmission, as well as manipulation
of real-world vehicle monitoring data that are used in a non-conventional
manner.” (Id. at 41.)
We are not persuaded by Progressive’s arguments. Rather, we
determine that Liberty has demonstrated that the ’598 patent is a covered
business method patent and the claimed invention is not a “technological
invention” within the meaning of 37 C.F.R. § 42.301(b).
The determination of whether a patent is eligible for covered business
method patent review is based on what the patent claims. A patent having
one claim directed to a covered business method is eligible for review even
if the patent includes additional claims.1
Here, the ’598 patent discloses a system for monitoring, recording,
processing, and communicating operational data of a vehicle to determine
the cost of insurance. (Ex. 1001, 1:15-22; 4:14-21.)

1 Transitional Program for Covered Business Method Patents – Definitions
of Covered Business Method Patent and Technological Invention; Final
Rule, 77 Fed. Reg. 48734, 48736 (Aug. 14, 2012) (Response to Comment 8).
Case CBM2013-00003
Patent 8,090,598
7
Claim 32, reproduced below, is illustrative:
A risk management system comprising:
a computer system that serves an interface module that is
configured to establish relationships between data that
represents a vehicle operating characteristic and a vehicle
operator action of one or more users and data that represents
levels of risk involved in an operation of one or more vehicles;
a database that stores relationship data representing
associations between vehicle data associated with a plurality of
vehicles or operators and an operator or insurer monitored
vehicle data, where the relationship data quantifies, for one or
more vehicles or operators, relationships between relative levels
of risk in the operation of the one or more vehicles and the
monitored vehicle data; and
an interface module that provides functionality to search
the database for a risk assessment of the vehicle data, where the
interface module is responsive to a request to quantify driver
behavior by processing the monitored vehicle data to render a
driver safety score, where the driver safety score establishes a
level of risk associated with insuring a selected user or a
vehicle.
We observe that Progressive’s contentions are not commensurate with
the scope of claim 32. Notably, the features that Progressive relies upon in
its arguments, namely the wireless communication system, network server,
and sensors for monitoring the vehicle operator’s driving characteristics, are
described in the specification, but are not recited in claim 32. Therefore,
Progressive’s arguments concerning the examples in the Office Patent Trial
Practice Guide, another Board decision on covered business method patent
eligibility, and the Examiner’s reasons for allowance are without merit.
Case CBM2013-00003
Patent 8,090,598
8
Indeed, Progressive fails to point out any specific novel and
non-obvious technological elements recited in claim 32. As noted in the
’598 patent, the data capture process within the vehicle for insurance and
claims processing as illustrated in Figure 1 of the ’598 patent “can be
implemented with conventional computer programming” (Ex. 1001, 9:41-
45); “[o]n-line Web sites for marketing and selling goods have become
common place” (id. at 3:64-67); communications connections may be made
wirelessly with the wireless technology that was known in the art at the time
of the invention, such as Bluetooth® (id. at 7:40-42); and many types of
vehicle operating data recording systems that were known at the time of the
invention have been suggested for purposes of obtaining an accurate record
of certain elements of vehicle operation (id. at 3:18-20). The mere recitation
of known technologies — namely a user interface, a searchable database,
and a computer — does not render the subject matter recited in claim 32 a
technological invention. All of the technical elements as claimed are known
and operated in their ordinary and predictable manner. Hence, the subject
matter as a whole of claim 32 does not recite a novel and unobvious
technological feature.
We are also not persuaded by Progressive’s argument that the claimed
subject matter as a whole solves a technical problem using a technical
solution. The ’598 patent expressly states that the motor vehicle control and
operating systems that were known in the art at the time of the invention
could readily be modified to obtain the desired types of information relevant
Case CBM2013-00003
Patent 8,090,598
9
to determine the cost of insurance. (Id. at 3:50-53.) Determining a cost of
vehicle insurance is a financial problem rather than a technical problem.
Accordingly, the ’598 patent is a covered business method patent as
defined in section 18(d) of the AIA and 37 C.F.R. § 42.301.
C. Prior Art Relied Upon
Liberty relies upon the following prior art references:
Kosaka JP H4-182868 June 30, 1992 Ex. 1003
RDSS Geostar, Understanding Radio Determination Satellite Service May 1989 Ex. 1004
Herrod GB 2 286 369 A Aug. 16, 1995 Ex. 1006
Dorweiler “Notes on Exposure and Premium Bases” by Paul Dorweiler May 9, 1930 Ex. 1007

D. Alleged Grounds of Unpatentability
Liberty seeks review of claims 1-78 based on the following grounds:
A. Claims 1-8, 25-55, and 72-78 under 35 U.S.C. § 103 as being
unpatentable over Kosaka and RDSS;
B. Claims 9-26 and 56-72 under 35 U.S.C. § 103 as being unpatentable
over Kosaka, RDSS, and Herrod; and
C. Claims 5, 6, 12, 13, 21, 22, 25, 26, 52, 53, 59, 60, 68, 69, 72, 73, and
78 under 35 U.S.C. § 103(a) as being unpatentable over Kosaka,
RDSS, and Dorweiler.
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Case CBM2013-00003
Patent 8,090,598
11
Figure 5, the insurer’s system also provides a Web server 220 to allow a
customer to access via Internet 218 communication the relevant sensor data,
and event data associated with the customer. (Ex. 1001, 13:24-29.) In
particular, the insurer’s system provides a prospective on-line interface 550
and an interface 552 for reporting acquired data. (Ex. 1001, 13:30-32.)
F. Representative Claim
Of the challenged claims, claims 1, 31, 32, 33, 48 and 78 are
independent claims. Claims 2-30 depend from claim 1, claims 34-47 depend
from claim 33, and claims 49-77 depend from claim 48.
Claim 1 is illustrative:
A risk management system comprising:
[1] a server receiver configured to wirelessly receive selected
onboard vehicle data monitored by an in-vehicle data
monitoring device within a vehicle;
[2] a network server system coupled to the server receiver that
provides an interface having functionality configured to
establish relationships between the selected onboard vehicle
data and levels of risk in a usage based insurance system;
[3] a database that stores relationship data indicating the
relationships established between the selected onboard vehicle
data relating to one or more users and an insured's monitored
vehicle data, where the relationship data identifies, for an
insured or other selected users, relationships between relative
levels of risk and the selected onboard vehicle data; and
[4] an interface module configured to search the database for a
risk assessment of vehicle data, where the interface module is
responsive to a request from a database user by using the
relationship data and the selected onboard vehicle data to
Case CBM2013-00003
Patent 8,090,598
12
identify the level of risk;
[5] where the interface module is further configured to be
responsive to a request to quantify driver behavior by
processing the selected onboard vehicle data to render a driver
safety score, where the driver safety score is characterized as a
level of risk associated with insuring a selected operator or a
vehicle.
(Bracketed matter and emphasis added.)

II. FINDINGS OF FACTS
The findings of fact in this decision including those in the analysis are
supported by a preponderance of the evidence.
A. Kosaka
Kosaka’s invention is related to an insurance premium determination
system that increases or decreases insurance premiums by continually
determining insurance premium changes through the detection of states that
lead to risk in the insurance customer. (Ex. 1003, p. 2, col. 1:54-col. 2:3;
col. 2:43-52.2) Kosaka’s insurance premium determination device employs
a risk evaluation device for evaluating risk in the vehicle and driver. (Id.)
Kosaka’s insurance premium determination system “allows risk evaluations
that change from hour to hour during travel to be reflected in the insurance

2 As Kosaka is a Japanese Unpublished Application, the citations to Kosaka
are to the Certified English-Language Translation provided by Liberty in
Exhibit 1003. The page numbers refer to those that appear on the top center
of each page, and not the exhibit page numbers that appear on the bottom
right corner.
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Case CBM2013-00003
Patent 8,090,598
15
Figure System 2 of RDSS depicts the data transmission from a radio
terminal to the central location.
C. Herrod
Herrod discloses a computer-based monitoring and reporting device
that is used in a vehicle to measure driver acceleration patterns and report
associated accident risks. (Ex. 1006, p. 1-24.) Herrod’s device uses the
measured acceleration data to classify the driver into one of several groups,
each of which associates with a different level of accident risk. (Id.)
According to Herrod, safe drivers can use the measured acceleration data to
demonstrate their competence to insurance companies. (Id. at p. 1.)

III. ANALYSIS
A. Claim Construction
In a covered business method patent review, a claim in an unexpired
patent shall be given its broadest reasonable construction in light of the
specification of the patent in which it appears. 37 C.F.R. § 42.300(b).
Under the broadest reasonable construction standard, claims are to be given
their broadest reasonable interpretation consistent with the specification, and
the claim language should be read in light of the specification as it would be
interpreted by one of ordinary skill in the art. In re Am. Acad. of Sci. Tech.
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). This means that the words of
the claim will be given their plain meaning unless the plain meaning is

4 The page numbers refer to the original page numbers of the references, and
not the exhibit page numbers on the bottom right corner.
Case CBM2013-00003
Patent 8,090,598
16
inconsistent with the specification. In re Zletz, 893 F.2d 319, 321 (Fed. Cir.
1989). In some cases, the ordinary meaning of claim language as
understood by a person of skill in the art may be readily apparent even to lay
judges, and claim construction in such cases involves little more than the
application of widely accepted meaning of commonly understood words.
Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005) (en banc).
Liberty identifies several claim terms and its interpretation for those
terms. (Pet. 16-18.) As a step in our analysis for determining whether to
institute a covered business method patent review, we will address each
claim term identified by Liberty in turn.
1. “Rating Factor” (Claim 40)
Liberty states that under the rule of broadest reasonable interpretation
in light of the specification, “rating factor” means “a calculated insurance
risk value such as a safety score or a usage discount.” (Pet. 17.) In support
of that assertion, Liberty points to portions of the ’598 patent. (Pet. 17,
citing Ex. 1001, 22:18-22 and 23:10-13.) Progressive presents no opposition
to that interpretation.
We determine that Liberty’s interpretation is consistent with the
specification of the ’598 patent. On this record, we agree with that
interpretation, but add the clarification that an insurance risk value would be
a value that reflects an associated level of insurance risk and, therefore, also
a corresponding insurance premium.

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(922), an
or (926).

Case CBM2013-00003
Patent 8,090,598
18
On this record, we adopt Liberty’s construction by interpreting the
term “driver safety score” as “a calculated insurance risk value associated
with driver safety” because it is consistent with the specification of the ’598
patent.
3. “Driver Safety Data” (Claims 33-47)
Liberty construes “driver safety data” to have the same meaning as
“driver safety score,” namely “a calculated insurance risk value associated
with driver safety.” (Pet. 17-18.) However, claim 34 that depends from
claim 33 recites “where the driver safety data comprises a driver safety
score.” It is clear from that claim language that “driver safety data” has a
broader scope than “driver safety score.”
Based on this record, we broadly, but reasonably construe “driver
safety data” to encompass “driver safety score” and other data associated
with driver safety.
4. “Insurance Rating” (Claims 4-6, 11-13, 20-22, 25, 26, 48, 51-53,
58-60, 67-69, 72, 73, and 78)
As to this term, Liberty asserts that it adopts the broadest reasonable
construction applied by the Examiner during reexamination of U.S. Patent
6,064,970, for which a benefit is sought by the ’598 patent. (Pet. 22, citing
Ex. 1022, 3/7/11 OA at 46-47; Ex. 1001, 1:50-53, 2:49-50, 22:24-28.)
Liberty interprets “insurance rating” to mean “a/some value/cost used to
determine an overall cost associated with insurance of the vehicle.” (Id.)
Progressive presents no opposition to that interpretation. We agree with
Case CBM2013-00003
Patent 8,090,598
19
Liberty’s construction as it is consistent with the specification of the ’598
patent.
B. Alleged Grounds of Unpatentability
Liberty contends that claims 1-78 of the ’598 patent are unpatentable
under 35 U.S.C. § 103(a) based on various combinations of Kosaka, RDSS,
Herrod, and Dorweiler. (Pet. 26-73.) In support of its contention, Liberty
provides numerous claim charts to show how each claim limitation is met by
the cited prior art references (Pet. 26-73), and asserts that a person of
ordinary skill in the art would have been motivated to combine the cited
references (Pet. 20-26).
Progressive opposes and argues that the combination of Kosaka and
RDSS does not meet certain limitations of the claims of the ‘598 patent as
alleged by Liberty. (Prel. Resp. 11-17.) Specifically, Progressive argues
that the combination of Kosaka and RDSS does not meet: (1) a server
receiver that is “configured to wirelessly receive selected onboard vehicle
data monitored by an in-vehicle data monitoring device within a vehicle”;
and (2) “a network server system coupled to the server receiver that provides
an interface having functionality configured to establish relationship
between the selected onboard vehicle data and levels of risk in a usage based
insurance system,”5 as recited in claim 1 (emphasis added). (Id.)

5 Each of the challenged claims includes, or depends from a claim that
includes, some variation of this limitation.
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We are persuaded by Progressive’s arguments. In addition, we
determine that there is insufficient factual evidence on this record to support
Liberty’s contentions, and Liberty’s petition fails to articulate a reason with
a rational underpinning to support the legal conclusion of obviousness.
Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966) (The question of
obviousness is resolved on the basis of underlying factual determinations.);
In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (Obviousness grounds of
unpatentability cannot be sustained by mere conclusory statements; instead,
there must be some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness.).
We first note that Kosaka does not describe wireless transmission of
monitored vehicle data to a network server receiver. Simply put, Kosaka’s
system does not include “a server receiver,” “a network server system,” “an
interface,” and any wirelessly transmission of monitored onboard vehicle
data, as required by the disputed claim limitations. Rather, Kosaka’s system
is an in-vehicle integrated system with all of the system components, such as
the monitoring device, risk evaluation device, database, and insurance
premium determination device, implemented onboard the vehicle to provide
real-time risk evaluation and real-time premium calculation. (Ex. 1003, p. 3,
col. 1:4-18; p. 4, col. 1:30-34; p. 4, col. 2:4-17.)
While RDSS discloses a network system that can receive wireless
transmission of vehicle data, RDSS does not describe a network server
system being coupled to the server receiver that provides an interface having
functionality configured to establish relationships between the selected
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onboard vehicle data and levels of risk in a usage based insurance system.
More importantly, it is unclear from the portions of the references relied
upon by Liberty (Pet. 27-29) how Kosaka’s in-vehicle integrated system
(which is not a distributed network system) would be combined with
RDSS’s distributed network system. This is not a mere substitution of one
known component for another known component to achieve a predictable
result.
In support of its assertions (Pet. 28-29), Liberty directs attention to the
declaration of Ms. Mary O’Neil to demonstrate that a person of ordinary
skill in the art would have understood that Kosaka’s disclosure of risk
evaluation values is a disclosure of levels of risk. (Pet. 28, citing Ex. 1011,
O’Neil Dec. ¶ 28.) Liberty further relies upon the declaration of Mr. Scott
Andrews to establish that one of ordinary skill in the art would have
understood RDSS’s disclosure of a server inherently discloses an interface
so that the terminals can communicate with it. (Pet. 29, citing to Ex. 1015,
Andrews Dec. ¶ 23.) However, Liberty’s assertions and experts’ testimonial
evidence are unpersuasive. They fail to explain why one of ordinary skill in
the art would modify Kosaka’s in-vehicle integrated system (which has the
risk evaluation device onboard the vehicle to provide real-time risk
evaluation) to transmit the monitored vehicle data wirelessly to a network
server receiver. Unigene Labs v. Apotex, Inc., 655 F.3d 1352, 1360 (Fed.
Cir. 2011); Bayer Schering Pharm. AG v. Barr Labs., Inc., 575 F.3d 1341,
1347 (Fed. Cir. 2009) (To render a claim obvious, prior art cannot be
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“vague” and must collectively, although not explicitly, guide a person of
ordinary skill in the art towards a particular solution.).
Liberty further asserts that one of ordinary skill in the art “would have
recognized that Kosaka’s system of determining insurance rates using
monitored in-vehicle operation data could be advantageously implemented
using the wireless transmission system for telematics data and other features
disclosed in RDSS, in order to, inter alia, communicate pertinent data to the
insurer more efficiently.” (Pet. 21, citing to Ex. 1015, Andrews Dec. ¶ 29.)
To support that assertion, Mr. Andrews testifies that: (1) “[a] person of
ordinary skill in the art, therefore, would have found it obvious to use, for
example, this OBD-II port vehicle bus connection to monitor and collect the
data because it was required to be in cars as of 1995”; and (2) “[a] person of
ordinary skill in the art would have found it obvious to implement the
system of Kosaka so as to transmit the data wirelessly, e.g., through an
RDSS system, to a remote server to perform analysis.” (Ex. 1015, ¶ 29.)
We are not persuaded by Liberty’s assertion and Mr. Andrews’ testimony.
As discussed supra, Kosaka’s system is an in-vehicle integrated
system with all of the system components, such as the monitoring device,
risk evaluation device, database, and insurance premium determination
device, implemented onboard the vehicle to provide real-time risk
evaluation and real-time premium calculation. (Ex. 1003, p. 3, col. 1:4-18;
p. 4, col. 1:30-34; p. 4, col. 2:4-17.) Liberty does not explain specifically
how Kosaka’s system would be modified in view of RDSS. For instance,
Liberty fails to specify which of Kosaka’s components would be separated
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from Kosaka’s main in-vehicle integrated system so that RDSS’s wireless
transmission system could be used, which of Kosaka’s components would be
substituted by which RDSS’s components in the alleged combination, and
where each of Kosaka’s components would be located in such a
combination.
Liberty’s expert testimonial evidence also does not provide adequate
factual evidence to support Liberty’s assertion of obviousness. Notably, it is
unclear as to how Mr. Andrew’s testimony on the use of an OBD-II port
vehicle bus connection to monitor and collect vehicle data (Ex. 1015, ¶¶ 21
& 29) supports the use of wireless transmission of monitored vehicle data.
It is also unclear whether Liberty is proposing implementing an OBD-II port
vehicle bus connection in Kosaka’s system, as there is no discussion of an
OBD-II port vehicle bus connection in Liberty’s petition itself.
Additionally, Liberty fails to provide sufficient factual evidence to
support its position that modifying Kosaka’s in-vehicle integrated system to
implement a wireless transmission of monitored vehicle data would achieve
efficiency and other alleged, but unspecified benefits. We determine that the
testimony of Mr. Andrews (Ex. 1015, ¶ 29) relied upon by Liberty also
contains no such factual evidence, other than an unsupported allegation of
obviousness, which is entitled to no weight. See Avia Grp. Int’l, Inc. v. L.A.
Gear Cal., In., 853 F.2d 1557, 1564 (Fed. Cir. 1998); Nutrition 21 v United
States, 930 F.2d 867, 871 n.2 (Fed. Cir. 1991) (An expert’s opinion on the
ultimate legal conclusion of obviousness itself is not entitled to any weight.).

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IV. CONCLUSION
For the foregoing reasons, we concluded that Liberty’s petition does
not demonstrate that it is more likely than not that claims 1-78 of the ’598
petition would have been unpatentable over Kosaka, RDSS, Herrod and
Dorweiler. Accordingly, the petition is denied.

V. RELATED PROCEEDING
Liberty also filed a petition requesting a covered business method
patent review of claims 1-78 of the ’598 patent in CBM2013-00004. In that
proceeding, we have authorized the institution of a covered business method
patent review for claims 1-78 based on the following grounds of
unpatentability:
A. Claims 1-78 under 35 U.S.C. § 102 as being anticipated by Burge;
B. Claims 1-78 under 35 U.S.C. § 102 as being anticipated by
Nakagawa;
C. Claims 16, 17, 63, and 64 under 35 U.S.C. § 103(a) as being
unpatentable over Burge in view of Herrod; and
D. Claim 47 under 35 U.S.C. § 103(a) as being unpatentable over
Nakagawa in view of Herrod.

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VI. ORDER
For the forgoing reasons, it is
ORDERED that pursuant to 35 U.S.C. § 324 and section 18(a) of
the AIA, a covered business method patent review is hereby denied as to
claims 1-78 of the ’598 patent for the following grounds:
A. Claims 1-8, 25-55, and 72-78 under 35 U.S.C. § 103 as being
unpatentable over Kosaka and RDSS;
B. Claims 9-26 and 56-72 under 35 U.S.C. § 103 as being
unpatentable over Kosaka, RDSS, and Herrod;
C. Claims 5, 6, 12, 13, 21, 22, 25, 26, 52, 53, 59, 60, 68, 69, 72, 73,
and 78 under 35 U.S.C. § 103(a) as being unpatentable over
Kosaka, RDSS, and Dorweiler; and
FURTHER ORDERED that no trial is instituted in this proceeding.

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PETITIONER:

J. Steven Baughman
Nicole M. Jantzi
Ropes & Gray
Email: steven.baughman@ropesgray.com
Email: nicole.jantzi@ropesgray.com

PATENT OWNER:

Calvin P. Griffith
James L. Wamsley, III
John V. Biernacki
Jones Day
Email: cpgriffith@jonesday.com
Email: jlwamsleyiii@jonesday.com
Email: jvbiernacki@jonesday.com