Progressive Casualty Insurance Co. v. Liberty Mutual Insurance Co.
In a non-precedential decision, the U.S. Court of Appeals for the Federal Circuit affirmed several formal written decisions of the Patent Trial and Appeal Board (PTAB or Board) invalidating the appellant's patents, while also providing important America Invents Act (AIA) tips. Progressive Casualty Insurance Co. v. Liberty Mutual Insurance Co., Case Nos. 14-1466; -1538; -1549; -1586; -1636; -1637; -1639; -1656 (Fed. Cir., Aug. 24, 2015) (Taranto, J.).
The appellee had initiated seven overlapping proceedings against the appellant in the Patent and Trademark Office (PTO), challenging claims of insurance-related covered business method (CBM) patents. The challenged claims arose from five separate patents related to the online pricing of automobile insurance based on vehicle use and the adjustment of insurance policies.
As an initial matter, the appellant argued that, under 35 U.S.C. § 325(e)(1), the Board was estopped from instituting one of the subject CBM proceedings. Under § 325(e)(1), a petitioner in a post-grant review that results in a final written decision may not then request or maintain a proceeding on any ground that the petitioner raised or could have raised during that prior post-grant review. Here, the appellant argued that because the Board posted one of its CBM decisions to its electronic docketing system an hour after posting a related CBM decision, the second Board decision was barred.
In rejecting the appellant's argument, the Federal Circuit highlighted two shortcomings. First, § 325(e)(1), by its terms, only limits certain actions by a petitioner. It does not prohibit the Board from reaching decisions. Second, the statute does not indicate precisely when a final decision has an estoppel effect. In the present case, the Board specifically stated that the two CBM decisions were being issued "concurrently." As such, the Federal Circuit found that the precise posting times in the electronic docketing system did not warrant reversal.
The appellant also challenged the Board's conclusion that all claims of one of its patents were anticipated by at least one piece of prior art. The appellant had previously argued to the Board that its patent was entitled to the benefit of an earlier priority date stemming from its immediate parent application. The Board rejected this argument, finding that a term found in all claims of the patent lacked written-description support in the parent application.
Noting that the adequacy of a written description is a question of fact, the Federal Circuit found "substantial evidence" supporting the Board's determination. Significantly, the Federal Circuit pointed to the Board's finding that while the parent application disclosed a broad genus, the application did not contain specific examples of the later claimed species: "the [appellant's] disclosure of a component [genus] does not, without more, imply disclosure of the particular types of [species] required" by the patent's claims. The result of the ruling was that the patent was not entitled to the earlier claimed priority date and the intervening prior art invalidated the claims. The Federal Circuit therefore affirmed the Board's decisions.
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