Liberty Mutual Insurance Co v. Progressive Casualty Insurance Co

1. Case Identification

• Case #: CBM2012-00010
• Patent #: 7,124,088
• Filed: September 28, 2012
• Petitioner(s): Liberty Mutual Insurance Company
• Patent Owner(s): Progressive Casualty Insurance Co.
• Challenged Claims: 1-46

2. Patent Overview

• Title: Apparatus for Internet On-Line Insurance Policy Service
• Brief Description: The ’088 patent discloses a system for providing online insurance policy services. The system uses a web browser and various software "modules" on a remote computer to allow a policyholder to access policy information, adjust policy parameters, and have those changes implemented in real-time over the Internet.

3. Grounds for Unpatentability

Ground 1: Anticipation by NAIC - Claims 1-3, 12-41, and 44-46 are anticipated under 35 U.S.C. §102 by NAIC.

• Prior Art Relied Upon: NAIC (The Marketing of Insurance Over the Internet, a 1998 white paper from the National Association of Insurance Commissioners).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that the NAIC white paper, published over a year before the ’088 patent’s priority date, disclosed every element of the challenged claims. NAIC described that many insurers were already providing online policy services, allowing customers to "make changes on their policy" and conduct "instant transactions" 24 hours a day. The paper detailed using web browsers to access remote servers, authenticating users with passwords or digital certificates, and processing policy changes through automated systems, allegedly meeting the limitations of the claimed "information module" and "policy adjustment module" operating in "real-time."
  • Key Aspects: Petitioner emphasized that one of the ’088 patent's named inventors was acknowledged in the NAIC paper for his "outstanding contributions," yet the reference was never disclosed to the PTO during prosecution or reexamination.

Ground 2: Obviousness over NAIC and Lockwood - Claims 4-11, 42, and 43 are obvious under 35 U.S.C. §103 over NAIC in view of Lockwood.

• Prior Art Relied Upon: NAIC (a 1998 white paper) and Lockwood (Patent 4,567,359).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground asserted that while NAIC taught the fundamental online insurance servicing system, Lockwood taught specific functionality recited in dependent claims 4-11. Specifically, Lockwood disclosed a system that sends an acknowledgment, including a price reflecting the selected policy parameters, to the customer before the system fully processes and stores the policy change.
  • Motivation to Combine: Petitioner contended that a person of ordinary skill in the art (POSITA) would combine NAIC's web-based system with Lockwood's pre-implementation price acknowledgment. The motivation stemmed from the clear commercial advantage of allowing a customer to see and confirm the cost implications of a change before committing to it, a common and desirable feature in e-commerce.
  • Expectation of Success: Both references concerned online systems for insurance transactions. A POSITA would have found it a straightforward application of known programming techniques to integrate a price-confirmation step into the workflow of the online policy adjustment process described by NAIC.

Ground 3: Anticipation by ComputerGuard - Claims 1-15, 18-25, 27-33, and 35-46 are anticipated under §102 by ComputerGuard.

• Prior Art Relied Upon: ComputerGuard (a 1999 PR Newswire press release) and Fenton (Application # 09/329659).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner argued that ComputerGuard, an online insurance product publicly offered by CIGNA before the patent's filing date, was a real-world embodiment of the claimed invention. The press release described a website-based service for policyholders to update coverage. The Fenton application, cited to show the inherent features of the public ComputerGuard system, detailed how a user could log into the website using a password, view an existing policy for personal property (computers), and make real-time changes to parameters such as adding, deleting, or modifying insured items. This system allegedly performed all steps of the independent claims, including identifying the policyholder, verifying policy parameters, and adjusting them in real-time via an automated web server.

• Additional Grounds: Petitioner asserted additional obviousness challenges, including a combination of ComputerGuard and Tawil (Patent 5,225,976) to add more detailed teachings on automated claims processing.

4. Key Claim Construction Positions

• "real-time": Petitioner proposed construing this term to mean "at the same time or substantially the same time." This construction was argued to be broad and consistent with the specification, and critically, to encompass the "instant transactions" described in the NAIC reference and the automated processing of the ComputerGuard system. This countered the Patent Owner's narrower interpretation that was allegedly used to distinguish prior art during reexamination.
• "[...] module" (e.g., "information module," "policy adjustment module"): Petitioner construed these terms to mean "software associated with the functions as named for each 'module'." This construction avoided the limitations of a means-plus-function interpretation under §112(6) for the purposes of the petition, allowing the terms to read on the general software tools and web server functions described in the prior art.

5. Relief Requested

• Petitioner requested institution of a Covered Business Method patent review and cancellation of claims 1-46 of the ’088 patent as unpatentable under 35 U.S.C. §§ 102 and 103.