Liberty Mutual Insurance Co v. Progressive Casualty Insurance Co

1. Case Identification

• 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 describes a system for the online servicing of insurance policies. It discloses using a conventional web browser to access a remote computer system, which contains software modules that allow a policyholder to view policy information and make real-time adjustments to policy parameters.

3. Grounds for Unpatentability

Ground 1: Anticipation over Peterson in view of RemoteWare - Claims 1-3, 12-13, 19-32, and 34-46 are anticipated under 35 U.S.C. §102.

• Prior Art Relied Upon: Peterson (Patent 5,903,873) and RemoteWare (a PR Newswire article from October 7, 1996).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Peterson discloses every element of the challenged claims. Peterson describes a system where an insurance agent, on behalf of a policyholder, uses a portable computer to make changes to an insurance policy. The system includes a home office computer that processes policy changes and sends updated information back to the agent's portable computer. Petitioner contended the "real-time" processing limitation of the ’088 patent is taught by Peterson's "urgent mode," which allows for immediate transmission and processing of policy changes, bypassing the standard nightly batch processing. The RemoteWare article was cited to confirm that the communication software mentioned in Peterson inherently included capabilities like web browser access over the Internet.
  • Key Aspects: A central theme of the petition was that the Patent Owner misled the Examiner during a prior ex parte reexamination by mischaracterizing Peterson’s "urgent mode" as a delayed batch process. Petitioner asserted that a correct reading of Peterson shows it anticipates the challenged claims.

Ground 2: Obviousness over Peterson/RemoteWare in view of Chelliah - Claims 4-18, 44, and 46 are obvious under 35 U.S.C. §103.

• Prior Art Relied Upon: Peterson (Patent 5,903,873), RemoteWare (1996 article), and Chelliah (Patent 5,710,887).
• Core Argument for this Ground:
  • Prior Art Mapping: To the extent Peterson was found not to teach providing an acknowledgment to the user before implementing a policy change (a limitation in claims like claim 4), Petitioner argued Chelliah supplied this teaching. Chelliah describes a general online e-commerce system that presents information about services and their prices to a customer for approval before the purchase is finalized. This corresponds to the ’088 patent’s function of providing a pre-implementation confirmation of policy changes.
  • Motivation to Combine: Petitioner asserted a person of ordinary skill in the art (POSITA) would combine the teachings of Peterson and Chelliah. Both references concern online business transaction systems. A POSITA would be motivated to integrate the standard e-commerce practice of a pre-transaction confirmation step, as taught by Chelliah, into Peterson’s online insurance system to improve usability, prevent errors, and provide the user an opportunity to confirm changes.
  • Expectation of Success: A POSITA would have a reasonable expectation of success in this combination, as it involved applying a well-known user interface feature to an existing online transaction system, a predictable and straightforward modification.

Ground 3: Obviousness over Peterson/RemoteWare in view of Tawil - Claims 25-26 and 44-46 are obvious under 35 U.S.C. §103.

• Prior Art Relied Upon: Peterson (Patent 5,903,873), RemoteWare (1996 article), and Tawil (Patent 5,225,976).

• Core Argument for this Ground:

  • Prior Art Mapping: For claims requiring a "claims information module," Petitioner argued that if Peterson was seen as not explicitly teaching this feature, Tawil did. Tawil discloses an automated system for processing and settling health insurance claims, including a database and processing means to evaluate claim submissions, determine approval, and transmit payment. This system constitutes a "claims information module."
  • Motivation to Combine: Petitioner noted that Peterson expressly teaches employing "known insurance processing systems." Claims processing is a fundamental aspect of insurance services. A POSITA, therefore, would have been directly motivated by Peterson's own disclosure to incorporate a known automated claims processing system, like that taught by Tawil, into Peterson’s online policy management system to offer a more comprehensive insurance service platform.
  • Expectation of Success: Combining these known, complementary components of an insurance system—policy management and claims processing—would have been a predictable and successful endeavor for a POSITA.

• Additional Grounds: Petitioner asserted further obviousness challenges against claims 44 and 46 based on the combination of Peterson, RemoteWare, Chelliah, and Tawil, arguing that a POSITA would have found it obvious to combine the features from all references for the same reasons articulated in the individual grounds.

4. Key Claim Construction Positions

• "accessing remote insurance information by an insurance policyholder": Petitioner proposed construing this term to mean access by a policyholder or someone acting on his or her behalf. This construction was critical because the Peterson reference describes an insurance agent entering information on behalf of the policyholder, which Petitioner argued meets this limitation.
• "real-time": Petitioner proposed construing this term to mean "at the same time or substantially the same time." This construction was central to the argument that Peterson's "urgent mode," which allows immediate dial-in and processing, satisfies the "real-time" limitation of the ’088 patent, contrary to the Patent Owner’s prior arguments that it involved a "batch delay."

5. Arguments Regarding Discretionary Denial

• Petitioner argued that review should not be denied under 35 U.S.C. §325(d), even though the Peterson reference was considered during a prior ex parte reexamination. The core of this argument was that the Patent Owner had misled the Examiner by presenting a flawed and illogical interpretation of Peterson’s "urgent mode" feature. Petitioner contended that it was presenting a more accurate explanation, with expert testimony, of how Peterson operates in real-time. Therefore, the Examiner did not have the opportunity to properly consider the true teachings of the reference, and the issues and arguments presented in the petition were not the same as those previously considered.

6. Relief Requested

• Petitioner requested institution of a Covered Business Method (CBM) patent review and cancellation of claims 1-46 of the ’088 patent as unpatentable.