By: John Bird
In two final decisions dated January 23, 2014, the Patent Trial and Appeal Board (PTAB) canceled all reviewed claims of U.S. Patent No. 6,064,970, including both a single claim that the PTAB found to be directed to a business method and the patent's other claims. Liberty Mutual Insurance Co. v. Progressive Casualty Insurance Co., (CBM2012-00002, Paper No. 66 and CBM2014-00004, Paper No. 60). The final decisions were entered 363 days after the PTAB had instituted the covered business method (CBM) reviews of the '970 patent, meeting the 35 U.S.C. § 326(a)(11) requirement for a final determination within one year of the trial being instituted by two days.
Liberty Mutual filed these petitions, along with several other petitions for CBM review, on September 16, 2012, the first day of the CBM review program. Liberty Mutual had convinced the district court to stay civil actions pending the outcome of the CBM review. (Order dated April 17, 2013, in Progressive Casualty Insurance Co. v. Safeco Insurance Company of Illinois, et al. (1:10-CV-01370, N.D. Ohio)).
The claims of the '970 patent, as amended by an Ex Parte Reexamination Certificate, are directed to methods for determining an appropriate insurance based on vehicle monitoring. The PTAB had instituted review of all of the claims in CBM2014-00004 and all but two of the patent's claims in CBM2014-00002 even though the PTAB had only determined that claim 4 qualified as a "computer business method." The Patent Owner in its response asserted that the CBM proceedings should be dismissed with respect to all claims other than claim 4 because the PTAB had not determined that these claims were directed business methods (see for example CBM2012-00002, Paper No. 27, pages 2 and 3). The PTAB disagreed finding in both decisions that, because the America Invents Act (AIA) defines a "covered business method patent" as "a patent that claims a method or corresponding apparatus," all claims are subject to CBM review where at least one claim from the patent qualifies as a "covered business method" (CBM2012-00002, Paper No. 66, Page 6 and CBM2014-00004, Paper No. 60, Page 6).
The Petitioner Liberty Mutual has to be pleased with the America Invents Act. First their district court litigation was stayed, and now all claims of the '970 patent Have been canceled. But Liberty Mutual isn't the only Petitioner to have success with the AIA review proceedings thus far. It is believed that this decision extends the Petitioner winning streak to six straight PTAB final decisions in which all reviewed claims were found to be unpatentable. The decisions include: SAP America, Inc. v. Versata Development Group, Inc., CBM2012-00001, final decision June 11, 2013; Garmin International, Inc. v. Cuozzo Speed Technologies LLC (2012IPR-00001, final decision November 13, 2013); Idle Free Systems, Inc. v. Bergstrom, Inc., IPR2012-00027, final decision January 7, 2014); CRS Advanced Technologies, Inc. v. Frontline Technologies, Inc. (CBM2012-0005, final decision January 21, 2014), and the two Liberty Mutual decisions. As of January 23, 2014, there have been no final decisions upholding the patentability of claims for which CBM review or inter partes review was instituted.