[00:00:00] Speaker 00:
Move on to 141586, progressive casualty versus liberty.

[00:00:07] Speaker 07:
I know the feeling.

[00:00:33] Speaker 04:
Okay.

[00:00:41] Speaker ?:
Okay.

[00:00:45] Speaker ?:
Okay.

[00:01:08] Speaker 00:
Are we, am I correct that the only issue here is the priority decision?

[00:01:13] Speaker 00:
Yes, correct.

[00:01:15] Speaker 07:
This is 1586-598.

[00:01:17] Speaker 07:
Okay, Your Honor.

[00:01:24] Speaker 07:
The sole issue is the priority of the claims based on the 650 application.

[00:01:29] Speaker 07:
It is a claim construction issue, which is reviewable de novo, because there were no underlying facts or determinations that were made that would make this anything other than a claim construction issue.

[00:01:44] Speaker 07:
If we look at the board's construction first of interface module, because that's the first place where we find error,

[00:01:54] Speaker 07:
Each of the experts, Zatkovich at 3236, A3236 paragraph 43, Andrews at A2458 paragraph 23, talked about what an interface module is and suggested that it's simply software that enables database access.

[00:02:14] Speaker 07:
Neither required a display.

[00:02:17] Speaker 07:
Now, the court may remember the sort of back and forth tangled approach to how this came to be in the final written decision.

[00:02:29] Speaker 07:
At page 33 of our brief, of our blue brief, we lay out what was in the initial petition, which is the driver safety score and driver safety data,

[00:02:41] Speaker 07:
That's what Liberty suggested were bases for lack of priorities.

[00:02:46] Speaker 07:
Then instead of narrowing the issues, the board went beyond those to add interface module, database, server-receiver interface, and selective onboard vehicle data.

[00:02:59] Speaker 00:
And then narrowed to interface modules.

[00:03:03] Speaker 00:
Can I just ask you a process question along the lines of the question that Judge Taranto posed earlier?

[00:03:09] Speaker 00:
If hypothetically we were to agree with the board that the substantial evidence supports the finding that the 650 application doesn't describe calculating a driver safety score, does that take care of the questions with regard to interface module and driver safety score?

[00:03:28] Speaker 00:
Do those issues go away or do we have to deal with them as well?

[00:03:33] Speaker 07:
Each of the issues requires support, so both interface module and driver safety score, but under the appropriate claim construction.

[00:03:44] Speaker 02:
But the absence of support for the driver safety score would mean that you're not entitled to the 650 priority data.

[00:03:52] Speaker 07:
It would mean we're not entitled.

[00:03:55] Speaker 07:
There's also driver safety data for claim 33.

[00:03:58] Speaker 02:
Let's combine them for a minute.

[00:03:59] Speaker 07:
So if you combine driver safety data and driver safety score, that's correct.

[00:04:04] Speaker 05:
How does projecting an estimated cost of insurance necessarily require generating a driver safety score?

[00:04:14] Speaker 07:
I think our position on driver safety score is really that it's a classification rating.

[00:04:19] Speaker 07:
not necessarily rejecting I put in the court say please.

[00:04:24] Speaker 07:
I said how does projecting a cost of insurance.

[00:04:29] Speaker 07:
We rely in two parts for driver safety score.

[00:04:33] Speaker 07:
Again, recognizing that it does not need to be a calculated driver safety score.

[00:04:39] Speaker 07:
We rely on A225 at 21 to 23 that discusses processing

[00:04:46] Speaker 07:
the right data elements to generate either the calculated or derived data elements.

[00:04:50] Speaker 07:
And we rely on A212 at 15 through 18, which discusses actual operating characteristics to provide a classification rating for an operator.

[00:05:02] Speaker 07:
And that is a classification rating being a risk value.

[00:05:07] Speaker 07:
And what the board's about driver safety score turned to that.

[00:05:19] Speaker 07:
The driver safety score at A19, the board said, was a calculated insurance risk value associated with driver safety.

[00:05:29] Speaker 07:
A rating is a risk value, but we suggest it does not need to be calculated.

[00:05:35] Speaker 07:
And the reason that we argued that, Your Honor, on driver safety score is because the example

[00:05:51] Speaker 07:
Let's say it this way.

[00:05:53] Speaker 07:
The word calculated appears nowhere in the claim language.

[00:05:59] Speaker 07:
In fact, what the claim talks about, and this is a claim that discusses processing as well, is that it only needs to be a processed insurance risk value associated with driver safety.

[00:06:13] Speaker 07:
There's nothing that says it has to be calculated, that it has to come up to be a number.

[00:06:18] Speaker 07:
In fact, it can be

[00:06:20] Speaker 07:
high, low, excessive, or prolonged as the spec says at A107, column 11, lines 44 to 61.

[00:06:29] Speaker 07:
So calculated is unnecessary in the construction.

[00:06:35] Speaker 07:
When calculated is removed, it's clear that a rating factor, a classification rating, is a risk value and provides support for the driver safety score.

[00:06:46] Speaker 07:
One thing that's also a consideration here is that the board had interpreted, even under the board's interpretation of Calculated, they found sufficient support in what was the McMillan patent, the 134 patent, which has the same specification, the same language as the 650 in pertinent part.

[00:07:12] Speaker 07:
They found that

[00:07:14] Speaker 07:
And that supported calculating the scaled score from an abstract score.

[00:07:19] Speaker 07:
So the board has already found in other prosecution that it's sufficient disclosure even for a calculator.

[00:07:26] Speaker 07:
But as we say, calculated is not necessary for the driver's safety score.

[00:07:31] Speaker 07:
It was an error in claim construction.

[00:07:35] Speaker 07:
As I was explaining to the court about the way in which the procedure occurred here, the shifting grounds

[00:07:44] Speaker 07:
are really one of the issues in this appeal that cause concern for progressive.

[00:07:49] Speaker 07:
The fact that the grounds instead of being narrowed as they should be in a CBM were in fact expanded and then changed again into the final written decision.

[00:08:03] Speaker 07:
The final written decision appears to rely on interface modules and require that an interface module have some type of display

[00:08:12] Speaker 07:
Now, in the board's own decisions about, in the discussion of interface modules, as I said, it's merely software that enables database access.

[00:08:22] Speaker 07:
The board found that there were interface modules at A22.

[00:08:26] Speaker 07:
In fact, that there were several interface modules.

[00:08:31] Speaker 07:
It said that there were three online interface modules.

[00:08:35] Speaker 07:
What the board appeared to do without making a careful claim construction, and this is where we have to infer because it wasn't laid out properly, is to require a display, and the absence of a display is what prevents there from being an interface module.

[00:08:52] Speaker 07:
So if you look at figure five, which is depicted on page 22, the board says that the arrow that goes between 518 and 530, the data storage and the charges algorithm, is the arrow that shows the transfer of data.

[00:09:11] Speaker 07:
And most of the arrow between the data storage 518 and charges algorithm 530 shows the transfer of data.

[00:09:18] Speaker 07:
So that at least is there with respect to the charges algorithm, although the board goes on to say that there must be some type of display.

[00:09:27] Speaker 07:
Display is not required for a proper interpretation of interface module.

[00:09:32] Speaker 07:
There was no requirement of a display any place in the specification.

[00:09:39] Speaker 02:
There was no... That's not an essential basis of the board's conclusion.

[00:09:44] Speaker 02:
if it were wrong to suggest that rendering requires an actual display, that doesn't mean it's finalized.

[00:09:55] Speaker 07:
It is essential with respect to interface modules.

[00:09:57] Speaker 07:
There is the further discussion as relates to driver safety score.

[00:10:01] Speaker 07:
And so as we discussed before, the argument can hinge on driver safety score.

[00:10:07] Speaker 07:
An interface module is clearly wrong, we believe.

[00:10:10] Speaker 07:
because all of those three examples are interface modules.

[00:10:15] Speaker 07:
We were trying to construct some sensibility of the board's decision because it appears to relate to interface module.

[00:10:23] Speaker 07:
It's captioned as interface module.

[00:10:26] Speaker 07:
And then instead of discussing interface module itself, it goes on to discuss

[00:10:33] Speaker 07:
well, there's a necessity for a display or there should be a driver safety score or there should be driver safety data.

[00:10:40] Speaker 07:
So we treat those separately, driver safety data and driver safety score.

[00:10:45] Speaker 02:
The claim requires an interface module that does a bunch of different things.

[00:10:49] Speaker 02:
So the board in its opinion is walking through the various things that it finds not to be done by anything

[00:11:00] Speaker 07:
and not be an interface module and then not to be and then not to be done is really that doesn't have the driver safety score driver safety it commingled to in a fashion that makes it difficult to understand what the board but to the point of driver safety score

[00:11:24] Speaker 07:
As we said, if you conclude that a driver safety score has to be calculated, for instance, that would also, and it had to be numeric, would render claim 41, which talks about a single numeric value superfluous.

[00:11:41] Speaker 07:
A single numeric value is a type of driver safety score, but it doesn't have to be a calculated or numerical value, as Liberty suggests.

[00:11:54] Speaker 02:
And your position is that an estimated cost is one kind of driver safety score?

[00:12:01] Speaker 02:
Am I understanding that?

[00:12:02] Speaker 07:
And a rating factor also, a classification rating, which creates a risk value as a driver safety score.

[00:12:10] Speaker 02:
I'm remembering at least certain reasons why rating factor, as I think the board said, is broader than driver safety scores.

[00:12:23] Speaker 02:
So the fact that the earlier application might describe in a relevant way the rating factor doesn't mean it's describing one particular kind of rating factor.

[00:12:33] Speaker 02:
So I just want to focus on the other point.

[00:12:36] Speaker 02:
Yeah, am I remembering right that the, was it the 650 application?

[00:12:40] Speaker 02:
I have a little trouble keeping track of all of them.

[00:12:46] Speaker 02:
That it does describe an estimated cost and is it right that if that description of an estimated cost were a description of a driver safety score or the companion term and claim 33 or something.

[00:13:04] Speaker 02:
that that would undermine the board's conclusion.

[00:13:08] Speaker 02:
Yes, that's right.

[00:13:14] Speaker 07:
I think this is a good time for me to discuss a little bit about the procedural error and what happened in this, in the way in which the board treated this.

[00:13:25] Speaker 07:
As the board went from

[00:13:27] Speaker 07:
driver safety score and driver safety data to then expand in its decision to institute to five different reasons for there being a lack of priority.

[00:13:37] Speaker 07:
And then narrowing down to an interface module without a clear construction of what an interface module is, it conflated the two terms in a fashion that if we were going to address

[00:13:56] Speaker 07:
the terms properly through expert testimony or through argument, we would want to have the opportunity to do so based on what appears to be the board's new view of what is lacking for priority.

[00:14:10] Speaker 00:
So instead of... I'm a little unclear.

[00:14:13] Speaker 00:
When they instituted, they relied on a number of grounds, including interface modules, right?

[00:14:18] Speaker 00:
Institution, yes.

[00:14:19] Speaker 00:
Institution.

[00:14:21] Speaker 00:
And then your complaint is when they got to the end,

[00:14:25] Speaker 00:
they got rid of the other terms, but they maintained only the interface module.

[00:14:32] Speaker 00:
Is that your argument?

[00:14:34] Speaker 07:
Part of it.

[00:14:35] Speaker 07:
The interface module

[00:14:38] Speaker 00:
I'm sorry.

[00:14:40] Speaker 00:
I mean, just as a process thing, forgetting the substance of what's here.

[00:14:43] Speaker 00:
I mean, if the Board Institute citing various things and then it comes, the weeds sway down based presumably in part on your argument to only one of those because of the arguments you've made, your view is then you get to start over again?

[00:15:00] Speaker 07:
No.

[00:15:01] Speaker 07:
What happened was when the Board said interface module in the final written decision,

[00:15:07] Speaker 07:
that judge Toronto pointed out there was a lot of further discussion about well it's not an interface module that has this that and the other particularly a driver safety score or driver safety data.

[00:15:18] Speaker 00:
But wasn't that part of the back and forth going back in terms of the reply and your friend's response?

[00:15:24] Speaker 00:
I mean that didn't just come out of nowhere and no one had ever heard of that, right?

[00:15:28] Speaker 00:
That was part of the give and take in the proceedings that preceded it.

[00:15:32] Speaker 07:
It was somewhat part of the give and take.

[00:15:34] Speaker 07:
Driver safety data was not part of the board's institution decision.

[00:15:39] Speaker 00:
No, I'm talking about what happened between the institution decision and then the final decision.

[00:15:44] Speaker 00:
So there was give and take which led the board.

[00:15:48] Speaker 00:
Was it a shock?

[00:15:50] Speaker 00:
Was it the first time?

[00:15:51] Speaker 00:
It wasn't the first time you had heard it.

[00:15:54] Speaker 00:
I'm wondering, even if new grounds for rejection somehow applies here, why this would fit into that box, even if it were applicable?

[00:16:03] Speaker 07:
The box it would fit in would be to give us an opportunity to fairly discuss the arguments relating to driver safety score and fairly discuss the arguments relating to driver safety data.

[00:16:17] Speaker 07:
separately because the board has conflated them in the final decision.

[00:16:21] Speaker 07:
In other words, the board didn't address them separately, the board pulled them together.

[00:16:26] Speaker 07:
And in that commingling, we would want the opportunity to explain why in the commingling

[00:16:34] Speaker 07:
through our experts or through argument, there was error.

[00:16:37] Speaker 07:
And we didn't have a chance to do that.

[00:16:39] Speaker 07:
It was a commingled attempt that brought together driver safety score and interface module in a rather confusing fashion of the board's decision.

[00:16:50] Speaker 00:
Okay, why don't we hear from the other side.

[00:16:55] Speaker 07:
And the other thing is the board did not clearly identify driver safety score with respect to the Charger's algorithm example of an interface module, but merely paraphrased the rest of the claim.

[00:17:10] Speaker 07:
So some of the things that the board did in its analysis were not the type of... She's just reminding me that you're into your rebuttal time, but you can finish the sentence.

[00:17:21] Speaker 00:
It's your time to do it.

[00:17:23] Speaker 00:
Thank you.

[00:17:30] Speaker 06:
With respect to the appeal concerning the 598 patent, as Your Honor recognized, priority is the only question.

[00:17:53] Speaker 06:
It's dispositive of the appeal.

[00:17:55] Speaker 06:
The arguments that progressive is advancing here both with respect to the claim construction of driver safety score and the argument that somehow driver safety data might be entitled to an earlier priority date even if driver safety score or not.

[00:18:12] Speaker 06:
are both waived.

[00:18:14] Speaker 06:
Neither was preserved before the board.

[00:18:16] Speaker 06:
With respect to claim construction, I cite the court to page A3118.

[00:18:22] Speaker 06:
This is the patent owner response filed by progressive.

[00:18:30] Speaker 02:
I thought that I was reading you to suggest that a claim construction argument, fully made and cleanly rejected at the institution stage, must be raised again after institution.

[00:18:44] Speaker 02:
And I can imagine that a system might work that way, but in the absence of some clear notice from the board that you have to rehash issues that you've fully raised and have been cleanly rejected,

[00:19:00] Speaker 02:
We don't ordinarily require litigants in any form to make every argument twice.

[00:19:07] Speaker 06:
Well, Your Honor, I think that there is a difference in the procedures under the AIAA that... There's something in the regulations say

[00:19:18] Speaker 02:
Any argument that you made at the institution stage, doesn't matter that you made it before.

[00:19:24] Speaker 02:
Clean slate after we institute and you have to make all arguments again or you have wasted.

[00:19:31] Speaker 06:
I'm not aware of a regulation to that effect.

[00:19:34] Speaker 06:
In the Versada case that the court recently decided they did hold, that the party had waived an argument because it did not advance it again in patent owner response in response to the institution decision.

[00:19:48] Speaker 02:
What argument was it?

[00:19:49] Speaker 02:
I don't remember which.

[00:19:50] Speaker 02:
There's a lot in that.

[00:19:51] Speaker 06:
Yeah, there is.

[00:19:52] Speaker 06:
And I'm forgetting what the specifics were.

[00:19:55] Speaker 06:
But here, I think what's significant is

[00:20:01] Speaker 06:
The way that the procedure is laid out is that there is, by its nature, only a tentative decision by the board and the institution's decision.

[00:20:12] Speaker 02:
and we know that progressive that that that that that that that that that's why i as i say i can imagine it would be sensible but in the ordinary course there are a lot you know in it you know pre-trial claims instructions they're subject to uh... modification later that doesn't mean you have to keep raising them at every stage including a jury instruction stage so if there were clear notes in which the board said

[00:20:41] Speaker 02:
Forget everything we said at the institution stage.

[00:20:44] Speaker 02:
If you want to object to it, you've got to use some of your pages in the patent owner's response to do it, then that's one thing.

[00:20:51] Speaker 02:
But knowing waiver by virtue of not re-raising something that has been clearly argued and cleanly rejected,

[00:21:00] Speaker 06:
Well, a couple of responses to that.

[00:21:03] Speaker 06:
First of all, Progressive understood that it could contest issues that were decided in the Institution decision, as it did with level of risk.

[00:21:12] Speaker 02:
We're not talking about could, we're talking about have to.

[00:21:17] Speaker 06:
certainly understood that progressive, when it stated on page 3118, progressive will apply this construction for purposes of this proceeding.

[00:21:27] Speaker 02:
Right, the board did understand.

[00:21:29] Speaker 02:
It said it agreed.

[00:21:30] Speaker 02:
Forget about what the board understood.

[00:21:33] Speaker 02:
You're saying they waived something.

[00:21:35] Speaker 02:
Waiver is something that usually you have to have notice about an obligation to do something and then fail to do it.

[00:21:41] Speaker 02:
And I'm not seeing why that's the case.

[00:21:43] Speaker 06:
Well, I think here

[00:21:45] Speaker 06:
To the extent that progressive believed that the board had overlooked something, progressive could have sought re-hearing before the board and it did not do so.

[00:21:55] Speaker 06:
And again, I think that there is something important about the structure here.

[00:21:59] Speaker 06:
Liberty, under the procedures before the board, does not have an opportunity to file a reply to the preliminary patent owner's response.

[00:22:09] Speaker 06:
The preliminary patent owner's response is filed to the petition and then the institution decision comes down.

[00:22:15] Speaker 06:
Then in the patent owner response, the patent owner lays out all of the arguments that the patent owner has in rebuttal to the institution decision.

[00:22:24] Speaker 06:
It is only at that time, after the patent owner has filed two 80 page briefs, that the petitioner has the opportunity to

[00:22:33] Speaker 06:
to file a 15 page reply to the arguments in the patent owner response.

[00:22:38] Speaker 02:
How many pages are there in the petitioner's petition?

[00:22:41] Speaker 06:
80 as well.

[00:22:42] Speaker 06:
So there's been 80, 160, 15.

[00:22:46] Speaker 06:
The petitioner does not have the opportunity to respond to arguments that were made in the preliminary patent owner response that have now been abandoned in the full patent owner response.

[00:22:58] Speaker 02:
You're talking about an argument on which in the institution decision the board agreed

[00:23:02] Speaker 02:
with what you wanted to argue, why would you need to argue about that?

[00:23:05] Speaker 06:
To the extent that Liberty would have had additional arguments to make in response to an argument, I think you're asking a question of procedure before the board, and I do think that, and I don't know if it happened in this particular proceeding, I do know that in some of the proceedings between Liberty and Progressive that the board gave notice that

[00:23:29] Speaker 06:
Any argument that the patent owner wanted to preserve had to be included in the patent owner response.

[00:23:35] Speaker 06:
And there's good reason to do so, because as happened here, the board is going to believe that an issue has been abandoned if the party indicates that it is applying that rule in the procedure.

[00:23:48] Speaker 06:
They could have simply noted, and we continue to stand on our objection, the board would have known if there was any need to further address that.

[00:23:57] Speaker 06:
They didn't.

[00:23:58] Speaker 06:
They relied on progressive agreement.

[00:24:01] Speaker 06:
Liberty relied on progressive agreement by not addressing it further.

[00:24:05] Speaker 06:
So I think that the issue has been weighed.

[00:24:07] Speaker 06:
Certainly the issue with respect to claim 33 being different has been weighed.

[00:24:11] Speaker 02:
Frank, can I turn away from this and focus on this estimated cost not being a rating safety factor?

[00:24:20] Speaker 02:
Rating factor.

[00:24:21] Speaker 02:
Rating.

[00:24:21] Speaker 02:
No, no, no.

[00:24:22] Speaker 02:
The rating factor.

[00:24:23] Speaker 02:
Driver safety score.

[00:24:24] Speaker 02:
Driver safety score.

[00:24:24] Speaker 02:
Sorry.

[00:24:26] Speaker 02:
Why is it not?

[00:24:27] Speaker 02:
If the estimated cost in turn is based on certain driver behavior, why is it not?

[00:24:33] Speaker 02:
The cost itself is not a driver safety factor.

[00:24:37] Speaker 06:
Well, as the board explained, the premium itself is the final answer.

[00:24:43] Speaker 06:
It is calculated based on the driver safety score.

[00:24:47] Speaker 06:
So the premium can't also be the driver safety score.

[00:24:51] Speaker 06:
progressive tried to engage in what I would characterize as sort of just engaging in definition upon definition that sort of turns the world upside down and they said well a driver safety score is a rating factor and a rating factor has been defined as something that is used to determine a

[00:25:10] Speaker 06:
premium and therefore premium necessarily includes a driver safety score.

[00:25:14] Speaker 06:
And that's simply not true.

[00:25:16] Speaker 05:
It's not sophistry, it's just an erroneous Venn diagram.

[00:25:19] Speaker 02:
There we go.

[00:25:21] Speaker 02:
Better characterization.

[00:25:23] Speaker 02:
Take rating factor out of it.

[00:25:25] Speaker 02:
What textual evidence in the claims or the specs indicates strongly or otherwise that an estimated cost is not a driver safety score.

[00:25:38] Speaker 06:
Because under the terms of the 598 patent, the driver safety score is used to calculate the premium.

[00:25:52] Speaker 02:
And the premium is not the same as the estimated cost.

[00:26:00] Speaker 06:
They're going to be related, but everything is related here.

[00:26:04] Speaker 06:
That's true.

[00:26:06] Speaker 06:
In the 650 application,

[00:26:09] Speaker 06:
There certainly is, I guess one question is, are we accepting or are we not accepting the board's construction?

[00:26:15] Speaker 06:
Because I think that even if that issue is preserved, the board's construction of driver safety score is warranted.

[00:26:23] Speaker 06:
The term that is being construed or the phrase being construed is

[00:26:29] Speaker 06:
responsive to a request to quantify driver behavior by processing the selected onboard vehicle data to render a driver safety score.

[00:26:42] Speaker 06:
Both the terms quantify and score

[00:26:45] Speaker 06:
can note numeric and calculation.

[00:26:49] Speaker 06:
I noticed that in their reply brief, Progressive cites a dictionary definition of quantifier and quantity and suggests that neither support the notion of calculation.

[00:27:01] Speaker 06:
When a party cites definitions of words that are not at issue in the claim, my antennae go up and I look at the same dictionary's definition of

[00:27:12] Speaker 06:
And it defines quantify as to find or calculate an amount.

[00:27:21] Speaker 06:
Similarly, score in that same dictionary is defined as a number of points.

[00:27:28] Speaker 06:
So both of these terms suggest, as the board rightly concluded, that there is for a driver safety score some

[00:27:36] Speaker 06:
manner of calculation of numeric points that is being applied.

[00:27:42] Speaker 06:
And that was supported further by the specifications and the additional text that was added.

[00:27:50] Speaker 06:
But between the 650 application and the 598 application, the Progressive added 12 new figures, 13 columns of text, most of which is addressed specifically to this

[00:28:04] Speaker 06:
feature of the 598 patent.

[00:28:07] Speaker 06:
And specifically, figure 9 is the figure that demonstrates the driver safety score.

[00:28:14] Speaker 06:
And it is, indeed, a calculation of weighted figures.

[00:28:19] Speaker 06:
0.5% to one measure of safety, 0.25 to another measure of safety, 0.3 to another measure of safety, add them up and you get driver safety score.

[00:28:31] Speaker 06:
That's window 918 in figure 9.

[00:28:34] Speaker 06:
So the board had ample support for its construction of this term in the claim language and in the specification.

[00:28:44] Speaker 02:
Can I just, I'm going to just press on this just a little bit more and I think I'm going to sound a little bit like a broken record.

[00:28:50] Speaker 02:
So an estimated insurance cost, that's a number, it has a dollar sign in front of it, but so what?

[00:28:57] Speaker 02:
And why is an estimated insurance cost not a driver safety score?

[00:29:05] Speaker 06:
Because, Your Honor, it may be, but it is not necessarily.

[00:29:11] Speaker 06:
That's the problem.

[00:29:13] Speaker 06:
The 650 application is, by its own terms, rooted in the old way of thinking about insurance, which was actuarial class.

[00:29:24] Speaker 06:
And what it said, the 650 application was doing, was that it was an object of the President's invention to generate actuarial classes and operative profiles related thereto based on actual driver characteristics of the vehicle and driver as represented by monitor recorded data elements

[00:29:47] Speaker 06:
for providing more knowledgeable, enhanced rating precision.

[00:29:50] Speaker 06:
So it's actuarial classes.

[00:29:52] Speaker 06:
They're making actuarial classes more accurate.

[00:29:57] Speaker 06:
more specific but it's rooted in this notion of actuarial class.

[00:30:01] Speaker 06:
One can calculate a premium or even an estimated cost of insurance which is just the precursor to the premium based on actuarial class without any need to go through the process of calculating a driver safety score as the board rightly held.

[00:30:20] Speaker 06:
Because a driver safety score is reflected on

[00:30:26] Speaker 06:
And I think it is related to this notion of rating factor.

[00:30:33] Speaker 06:
Description, specification rather, in the 598 patent, this is an A112, column 22, 18 through 22, says a rating factor such as a safety score.

[00:30:46] Speaker 06:
So driver safety score is one version of a rating factor.

[00:30:50] Speaker 06:
It may be one version of a way to calculate an estimated cost.

[00:30:55] Speaker 05:
Am I correct in another version of a rating factor would be an automobile safety score?

[00:31:01] Speaker 06:
That's true, because there is this distinction that's being drawn between what this is claiming is something that is specific to the driver.

[00:31:11] Speaker 06:
And that's why we say that the word individualized is appropriate here, because it's not about actuary of class.

[00:31:18] Speaker 06:
That is the invention of the 598M, or it's the claimed invention.

[00:31:22] Speaker 06:
Of course, we know now that Verge and Nakagawa invented it first, but that is what was claimed.

[00:31:28] Speaker 06:
That was what was different.

[00:31:30] Speaker 06:
from the old actuarial class.

[00:31:32] Speaker 06:
Actuarial class can be smaller or larger, but it's all about sort of a group of people.

[00:31:38] Speaker 06:
Driver safety score is calculated for the individual.

[00:31:42] Speaker 06:
And although, again, it may have been done, the 650 application may have been done with such calculation.

[00:31:50] Speaker 06:
It was not, there is no written description of that.

[00:31:54] Speaker 06:
All that's described is calculated and estimated cost and then ultimately a premium based on these more accurate actuarial classes.

[00:32:07] Speaker 06:
Again, this is an A2211.

[00:32:14] Speaker 06:
It says, it provides a classification rating of operator unit in an actuarial class, which has vastly reduced rating error over conventional insurance cost systems.

[00:32:26] Speaker 06:
So again, actuarial class is how the 650 application characterized it, not individual driver safety score.

[00:32:34] Speaker 06:
Driver safety data, if I could just briefly, because it was referenced a number of times by Progressive.

[00:32:40] Speaker 06:
The board's institution decision

[00:32:43] Speaker 06:
singled out driver safety score, said there was no written description in the 650 application, therefore none of the independent claims were entitled to priority on that basis, and the board specifically referred to claim 33 as one of those independent claims that was not entitled to priority because of the absence of written description of driver safety score.

[00:33:07] Speaker 06:
If Progressive had thought that claim 33 was different,

[00:33:11] Speaker 06:
It was required to say something about that in the patent owner response.

[00:33:15] Speaker 06:
They did not.

[00:33:16] Speaker 06:
To the contrary, they have a claim mapping chart that treats driver safety data with the representative claim one language about driver safety score.

[00:33:27] Speaker 06:
They actually do single out two other claims, claims 48 and 78 as non-representative claims.

[00:33:33] Speaker 06:
They do not single out claim 33 as a non-representative claim.

[00:33:37] Speaker 06:
That argument as well.

[00:33:39] Speaker 06:
Thank you.

[00:33:40] Speaker 06:
Thank you very much.

[00:33:56] Speaker 00:
Well, if you're here to talk process, I guess there are a few issues that are coming up.

[00:34:00] Speaker 01:
I finally get to say something.

[00:34:01] Speaker 01:
May it please the court?

[00:34:04] Speaker 01:
I'm hoping I didn't lug all this stuff on the Metro for nothing.

[00:34:08] Speaker 01:
The point of instituting trial is so that the board can render its final written decision under 328.

[00:34:16] Speaker 01:
That is where the board explains why the claims are or are not unpackable.

[00:34:21] Speaker 01:
So in this particular case, trial was instituted.

[00:34:24] Speaker 01:
The sole issue was priority.

[00:34:26] Speaker 01:
Progressive filed an extensive patent owner response on almost 50 pages of why its claims were entitled to priority to the 650 application, including interface module.

[00:34:36] Speaker 01:
The board renders its final written decision, and it discusses the issues that Progressive has raised.

[00:34:42] Speaker 01:
That's what Congress contemplated when it wrote the statute.

[00:34:46] Speaker 01:
But it's not procedural error.

[00:34:47] Speaker 01:
The corollary to that is the institution decision under 324 does not purport to limit the board's analysis in a final written decision.

[00:34:57] Speaker 01:
This isn't a scenario where we institute trial for the sole purposes of trying to figure out whether or not they got the institution decision right.

[00:35:04] Speaker 01:
The point of the institution decision frankly is captured at A3074, which is the last page of that decision, and it says

[00:35:14] Speaker 01:
Here's why we're ordering trial under 324.

[00:35:17] Speaker 01:
Here are the grounds.

[00:35:18] Speaker 01:
102 under Nakagawa, 102 under Burge, 103 under Burge inherent.

[00:35:23] Speaker 01:
Trial gets instituted.

[00:35:25] Speaker 01:
At that point, the world's your oyster if you're the patent owner.

[00:35:29] Speaker 01:
You make the arguments that you think are pertinent as to whether or not you can defend your patent.

[00:35:35] Speaker 01:
They probably will be, the corollary to this is the institution decision in an effort to be helpful,

[00:35:41] Speaker 01:
will give you the board's preliminary analysis of the issues that you've raised.

[00:35:45] Speaker 01:
But that analysis is exactly that, preliminary.

[00:35:48] Speaker 01:
It's not a rejection.

[00:35:50] Speaker 01:
It's not a binding statement on unpatentability such that when it gets to the final decision, it's stuck with what it said there.

[00:35:57] Speaker 00:
No, I know.

[00:35:57] Speaker 00:
But there's got to be some limits.

[00:35:59] Speaker 00:
The board just can't come up with something new and different than has been the subject of some discussion or opportunity for the other side to respond in its final decision.

[00:36:09] Speaker 01:
And that's fair, Your Honor.

[00:36:10] Speaker 01:
And in this case, for example, this interface module priority question clearly raised,

[00:36:14] Speaker 01:
The preliminary response raised it.

[00:36:16] Speaker 01:
The board addressed it in its institutional decision.

[00:36:18] Speaker 01:
Patent owner response addressed it.

[00:36:20] Speaker 01:
The reply addressed it.

[00:36:21] Speaker 01:
I mean, this was vetted thoroughly.

[00:36:23] Speaker 02:
Can I just say, I think I'm a little confused about what procedural issue we're actually talking about in this case.

[00:36:30] Speaker 02:
This case involves nothing but that new ground of rejection.

[00:36:35] Speaker 01:
Your Honor, that's an interesting point, because I didn't think it did either.

[00:36:37] Speaker 01:
But the discussion in the moving case sort of had a flavor of the board not only reached outside,

[00:36:44] Speaker 01:
the petition institution decision, but then it shifted grounds from the institution decision to the final written decision, which had that new grounds flavor.

[00:36:53] Speaker 00:
I mean, I think there's something there.

[00:36:54] Speaker 00:
It's not as drawn out, and it's not as detailed as in groups one and three.

[00:36:59] Speaker 00:
But there is this little piece, and I think your friend talked about it, just dealing with the interface module piece of it.

[00:37:06] Speaker 01:
Judge Frano, your question actually hit on something that, as I was sitting there, gave me some pause.

[00:37:10] Speaker 01:
But since it seems to have been fleshed out, you're correct.

[00:37:12] Speaker 01:
If you read that blue brief,

[00:37:13] Speaker 01:
you will not see an argument that somehow there's been.

[00:37:18] Speaker 02:
So in the statement of the issues, the blue brief says the board legally erred by Sue Asmante raising the issue of written description support from the interface module.

[00:37:26] Speaker 02:
When did the board do that in the institution decisions?

[00:37:30] Speaker 01:
I think that's their argument.

[00:37:32] Speaker 01:
And as we discussed in our blue brief, that's a challenge to the institution decision, which of course, under quota, was categorically foreclosed.

[00:37:41] Speaker 01:
And even if this court were inclined to reach it, as I detailed in my brief, they raised it.

[00:37:46] Speaker 01:
So I don't know what the board is supposed to do.

[00:37:48] Speaker 01:
If you file a preliminary response and you make arguments, the board is going to engage them at some level.

[00:37:53] Speaker 01:
And you can't complain.

[00:37:54] Speaker 01:
Procedurally, the board erred by doing something I asked it to do.

[00:37:59] Speaker 01:
But that is a challenge to the institution's decision, which Cuoto precludes.

[00:38:03] Speaker 01:
The other thing I'll add to this on the moving, my friend made the argument that the board commingled driver safety score and driver safety data.

[00:38:11] Speaker 01:
This reference to the fact that claim 33 among all the independents has the data and not the score.

[00:38:17] Speaker 01:
Well, the reason why if the board commingled, that's because Progressive commingled.

[00:38:22] Speaker 01:
As we detailed in our brief at 14 to 15, all of the arguments that Progressive made

[00:38:29] Speaker 01:
for the independent claims, which is one and includes 33, relied on the same disclosure for these pertinent limitations.

[00:38:37] Speaker 02:
And you and your brief have not addressed this question that I was harping on about estimated costs being or not being a driver safety score, is that right?

[00:38:48] Speaker 01:
I have the cover of saying no, we did not address that.

[00:38:52] Speaker 01:
So if there are any other further questions about the procedural issues.

[00:38:59] Speaker 01:
Oh, good time.

[00:39:12] Speaker 07:
Thank you.

[00:39:12] Speaker 07:
Your Honor, as to the point of the estimated cost of insuring the event, that's at

[00:39:19] Speaker 07:
212 in the 650 specification and that is something that is admitted to be disclosed.

[00:39:28] Speaker 02:
The question is whether it constitutes the thing claimed.

[00:39:34] Speaker 02:
I'm not entirely sure.

[00:39:37] Speaker 02:
I understand the chain of logic that says specifically an estimated cost cannot be a driver safety score.

[00:39:50] Speaker 02:
The general idea seems to be the driver safety score is something that enters into an estimation of cost and other things.

[00:39:58] Speaker 02:
And the estimation of cost will take account of driver safety and automobile safety and other things.

[00:40:04] Speaker 02:
So it can't really be the same.

[00:40:05] Speaker 02:
So what's your best argument for why the estimated cost can nevertheless be a driver safety score?

[00:40:15] Speaker 05:
And while you're doing that, do it as a logic.

[00:40:18] Speaker 05:
exercise as well.

[00:40:19] Speaker 05:
When I made that diagram comment, I was specifically talking about that basket of other possibilities, automobile safety for example.

[00:40:34] Speaker 07:
Remember we have two arguments on this, estimated cost and also classification rating.

[00:40:39] Speaker 07:
An estimated cost would be based on some type of rating, a classification rating.

[00:40:44] Speaker 07:
It's admitted that a classification rating is disclosed at a 212.

[00:40:49] Speaker 07:
The classification rating is discussed in claim 40 as being a rating factor which is a type of driver safety score.

[00:41:01] Speaker 07:
And so a rating factor driver safety score is something that's implied as it's used in this specification to relate to something that is a driver safety score.

[00:41:14] Speaker 02:
The board said in a reading from page 27 of the final written decision, there is no dispute that an insurance cost is not a driver safety score.

[00:41:27] Speaker 02:
Is the board wrong?

[00:41:28] Speaker 02:
There is, in fact, a dispute about that?

[00:41:32] Speaker 07:
Insurance cost requires a rating, and this is where I think the emphasis is on the rating factor.

[00:41:39] Speaker 07:
I don't believe we're saying that an insurance cost by itself necessarily is a driver safety score.

[00:41:46] Speaker 07:
It is a numerical number.

[00:41:48] Speaker 07:
But the insurance cost is necessarily based on a rating factor.

[00:41:52] Speaker 07:
That rating factor is a driver safety score.

[00:41:56] Speaker 07:
The score does not have to be a numerical driver safety score.

[00:42:00] Speaker 07:
It simply can't be something that's quantified as it is in the specification as high, low, excessive, or otherwise.

[00:42:07] Speaker 07:
When you look at driver safety data, data makes it clear that you do not have to have something that's quantified as a score.

[00:42:16] Speaker 07:
There's a difference between driver safety data and driver safety score.

[00:42:20] Speaker 07:
The board recognized that difference and said that driver safety data is broader than driver safety score.

[00:42:28] Speaker 07:
That's our argument.

[00:42:30] Speaker 07:
And as to the waiver issue that was raised, that's discussed in our gray brief at stages 20 and 21.

[00:42:38] Speaker 07:
We separately provided written description support for all of the claims, including claims with the driver safety data, claim 33.

[00:42:47] Speaker 07:
And this is something that we believe has been preserved.

[00:42:54] Speaker 07:
So if the court does find the driver safety data,

[00:42:57] Speaker 07:
is disclosed, then that will support claim 33, separate and independent from the other claim.

[00:43:05] Speaker 07:
I see that my time is up.

[00:43:07] Speaker 00:
All right.

[00:43:08] Speaker 00:
We thank both counsel, and that case is submitted.