Digest of Progressive Casualty Ins. Co. v. Liberty Mutual Ins. Co., Nos. 2014-1466, 2014-1538, 2014-1549, 2014-1586, 2014-1636, 2014-1637, 2014-1639, 2014-1656 (Fed. Cir. Aug. 24, 2015) (non-precedential). On appeal from P.T.A.B. Before Prost, Wallach, and Taranto.

Procedural Posture: Patentee appealed the PTAB’s final written decisions in a series of covered business method reviews finding that claims of its patents were invalid over the prior art. CAFC affirmed.

  • Covered Business Methods: The Court did not need to determine whether the Board committed a procedural error by relying on an argument that was first raised in the petitioner’s reply brief. The patent owner argued that it did not have a full opportunity to respond to the new argument. However, any potential error was harmless because the Board independently determined that a person of ordinary skill in the art would have understood the meaning of certain terms in a prior art reference.
  • Estoppel: The Court found that the Board was not estopped from issuing its second decision under 35 U.S.C. § 325(e)(1). This section prevents a petitioner who has already filed a petition for post-grant review from filing another petition on any ground that they raised or reasonably could have raised during their first petition. It does not prevent the Board from issuing a second determination on the same patent. Furthermore, because the decisions were entered “concurrently” according to the Board, the fact that one decision was actually posted in the electronic docketing systems an hour after the other does not result in estoppel attaching between the two decisions.
  • Obviousness: Although the Board’s decisions would have benefitted from a more in-depth explanation for its finding of a motivation to combine various prior art references to find the challenged patents obvious, its rationale was apparent based on its brief citations to the record within its enumeration of each party’s position.
  • Obviousness: Although the Board’s rationale for why the prior art references demonstrated a motivation to combine was incomplete in isolation, its rationale was apparent based on a reading of the Board’s full decisions and its determination of the knowledge of a relevant skilled artisan.
  • Anticipation/Priority/Written Description: The Board properly held that one of the challenged patents could not antedate the prior art to avoid an anticipation determination because the claims of the challenged patent lacked written-description support from the alleged priority application. The challenged patent required that the “interface module” produce a “driver safety score” or “driver safety data,” while the parent application disclosed an interface module that bases its insurance rate calculations on “rating factors.” Agreeing with the Board, the Court noted that “driver safety score” and “driver safety data” were possible “rating factors,” but merely disclosing a component producing a rating factor in the alleged priority application did not disclose the particular factors required by the challenged patent’s claims.