Liberty Mutual Ins. Co. v. Progressive Casualty Ins. Co

Paper 7, October 21, 2012

CBM-2012-00003 (JL) (Patent 8,140,358)

[Petitioner should not assert redundant for unpatentability but select the strongest grounds]

FACTS

Petitioner, Liberty Mutual, challenged all claims of Progressive’s patent as obvious. The challenged patent had one independent claim and twenty claims in total, and the petitioner asserted a total of 422 grounds of unpatentability, averaging 21 grounds per claim.

HOLDING

The Board determined that the majority of grounds for unpatentability asserted in the petition were redundant and ordered that the petitioner select one ground of unpatentability for each claim within seven days of the order.

The Board noted that 37 C.F.R. § 42.1(b) shall be construed to secure just, speedy, and inexpensive proceedings. The Board’s regulations are promulgated pursuant to 35 U.S.C. § 326(b) and that conducting proceedings contrary to those statutory considerations would frustrate Congressional intent.

The Board identified two types of redundancy in the petition. Horizontal redundancy occurs when substantively the same grounds of unpatentability are asserted over different combinations of prior art without identifying relative strength and weaknesses of each combination. Vertical redundancy occurs when obviousness is asserted over some combination of prior art and then substantively the same assertion is made over that combination of prior art and some additional prior art “added to the mix.” The Board held that in such instances, petitioner must assert the strongest prior art (or combination) instead of unnecessarily multiplying grounds and placing undue burden of considering such redundant grounds on the Board and the Patent Owner.

TAKEAWAY

Petitioner should avoid asserting redundant grounds of unpatentability to ensure speedy and efficient proceedings. When the Board identified redundant grounds, the Board may order the petitioner to elect the grounds it wishes to continue to assert within seven days.

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