NOTE: This disposition is nonprecedential.

United States Court of Appeals 

for the Federal Circuit ______________________ 

PROGRESSIVE CASUALTY INSURANCE CO.,

Appellant

v.

LIBERTY MUTUAL INSURANCE CO.,

Appellee

______________________ 

2014-1466

______________________ 

Appeal from the United States Patent and Trademark 

Office, Patent Trial and Appeal Board in No. CBM2012-

00002.

------------------------------------------------------------------

PROGRESSIVE CASUALTY INSURANCE CO.,

Appellant

v.

LIBERTY MUTUAL INSURANCE CO.,

Appellee

______________________ 

2014-1538

______________________ 
2 PROGRESSIVE CASUALTY v. LIBERTY MUTUAL

Appeal from the United States Patent and Trademark 

Office, Patent Trial and Appeal Board in No. CBM2012-

00010.

------------------------------------------------------------------

PROGRESSIVE CASUALTY INSURANCE CO.,

Appellant

v.

LIBERTY MUTUAL INSURANCE CO.,

Appellee

______________________ 

2014-1549

______________________ 

Appeal from the United States Patent and Trademark 

Office, Patent Trial and Appeal Board in No. CBM2013-

00002.

------------------------------------------------------------------

PROGRESSIVE CASUALTY INSURANCE CO.,

Appellant

v.

LIBERTY MUTUAL INSURANCE CO.,

Appellee

______________________ 

2014-1586

______________________ 

Appeal from the United States Patent and Trademark 

Office, Patent Trial and Appeal Board in No. CBM2013-

00004.

------------------------------------------------------------------
PROGRESSIVE CASUALTY v. LIBERTY MUTUAL 3

PROGRESSIVE CASUALTY INSURANCE CO.,

Appellant

v.

LIBERTY MUTUAL INSURANCE CO.,

Cross-Appellant

______________________ 

2014-1636, 2014-1637

______________________ 

Appeals from the United States Patent and Trademark Office, Patent Trial and Appeal Board in No. 

CBM2012-00003.

-----------------------------------------------------------------

PROGRESSIVE CASUALTY INSURANCE CO.,

Appellant

v.

LIBERTY MUTUAL INSURANCE CO.,

Appellee

______________________ 

2014-1639

______________________ 

Appeal from the United States Patent and Trademark 

Office, Patent Trial and Appeal Board in No. CBM2013-

00009.

-------------------------------------------------------------------

PROGRESSIVE CASUALTY INSURANCE CO.,

Appellant
4 PROGRESSIVE CASUALTY v. LIBERTY MUTUAL

v.

LIBERTY MUTUAL INSURANCE CO.,

Appellee

______________________ 

2014-1656

______________________ 

Appeal from the United States Patent and Trademark 

Office, Patent Trial and Appeal Board in No. CBM2012-

00004.

______________________ 

Decided: August 24, 2015 

______________________ 

 GARY M. ROPSKI and JAMES ROBERT SOBIERAJ, Brinks 

Gilson & Lione, Chicago, IL, argued for appellant. Also 

represented by CYNTHIA A. HOMAN, JAMES A. COLLINS,

LAURA A. LYDIGSEN, NICHOLAS ANTONIO RESTAURI, DAVID 

LINDNER. 

 JAMES MYERS and DOUGLAS HALLWARD-DRIEMEIER, 

Ropes & Gray LLP, Washington, DC, argued for appellee

and cross-appellant. Also represented by PAUL MICHAEL 

SCHOENHARD, JON STEVEN BAUGHMAN, JORDAN ROSSEN,

JONATHAN ROBERT FERENCE-BURKE. 

 

ROBERT J. MCMANUS, Office of the Solicitor, United 

States Patent and Trademark Office, Alexandria, VA, 

argued for intervenor Michelle K. Lee. Also represented 

by SCOTT WEIDENFELLER, THOMAS W. KRAUSE, NATHAN K.

KELLEY. 

______________________ 

Before PROST, Chief Judge, WALLACH, and TARANTO,

Circuit Judges.
PROGRESSIVE CASUALTY v. LIBERTY MUTUAL 5

TARANTO, Circuit Judge. 

Liberty Mutual Insurance Company initiated seven 

overlapping proceedings against Progressive Casualty 

Insurance Company in the Patent and Trademark Office, 

challenging many claims of several of Progressive’s insurance-related patents under the statutory program for 

review of “covered business method” patents. See GTNX, 

Inc. v. INTTRA, Inc., 789 F.3d 1309, 1310 (Fed. Cir. 2015) 

(describing transitional program for review of such patents under 35 U.S.C. §§ 321–329, pursuant to the LeahySmith America Invents Act, Pub. L. No. 112–29, 

§ 18(a)(1), 125 Stat. 284, 329–31 (2011)). We now have 

before us Progressive’s appeals from the Patent Trial and 

Appeal Board’s final written decisions that many claims 

are invalid over prior art. See 35 U.S.C. §§ 328, 329. We 

affirm. We need not address Liberty’s cross-appeal in one 

proceeding, because that cross-appeal concerns claims 

held invalid in another proceeding whose result we affirm. 

The claims at issue come from five patents: (1) claims 

1–20 of U.S. Patent No. 8,140,358; (2) claims 1–78 of U.S. 

Patent No. 8,090,598; (3) claims 1 and 3–18 of U.S. Patent 

No. 6,064,970; (4) claims 1–46 of U.S. Patent No. 

7,124,088; and (5) claims 1–9 and 13–59 of U.S. Patent 

No. 7,877,269. The challenged claims of the ’358, ’598, 

and ’970 patents relate to pricing automobile insurance 

based on vehicle use, such as the number of sudden stops 

over a given period. The challenged claims of the ’088 and 

’269 patents relate to adjusting insurance policies online.

For oral argument, we organized the appeals from the 

Board’s seven decisions into four (single-case or multicase) groups. We follow that grouping here and address a 

subset of the many issues raised by the parties. We have 

jurisdiction under 28 U.S.C. § 1295(a)(4)(A).
6 PROGRESSIVE CASUALTY v. LIBERTY MUTUAL

A 

The first group of appeals consists of Progressive’s 14-

1636 and 14-1639 appeals and Liberty’s 14-1637 crossappeal. The appeals are from two final written decisions 

of the Board that address the ’358 patent. In CBM 2012-

3, 2014 WL 651401 (Feb. 11, 2014), the Board invalidated 

all claims but 1, 19, and 20 for obviousness. In CBM

2013-9, 2014 WL 651402 (Feb. 11, 2014), the Board invalidated all claims of the ’358 patent for obviousness. As 

Progressive and Liberty agreed at oral argument, Oral 

Arg. (14-1336, -1337, -1339) at 13:30–14:40, the decision 

in CBM 2012-3 need not be addressed if we affirm the 

decision in CBM 2012-9—which we do.

As a preliminary matter, we reject Progressive’s argument that, under 35 U.S.C. § 325(e)(1), the Board was 

estopped from entering its CBM 2013-9 decision. Section 

325(e)(1) provides:

PROCEEDINGS BEFORE THE OFFICE.—The petitioner 

in a post-grant review of a claim in a patent under 

this chapter that results in a final written decision under section 328(a), or the real party in interest or privy of the petitioner, may not request 

or maintain a proceeding before the Office with 

respect to that claim on any ground that the petitioner raised or reasonably could have raised during that post-grant review.

Progressive argues that § 325(e)(1) bars the Board’s entry 

of its CBM 2013-9 decision because the Board posted that 

decision to its electronic docketing system just over an 

hour after, but the same day as, it posted the CBM 2012-3 

decision.

There are two problems with Progressive’s contention. 

First: § 325(e)(1) by its terms does not prohibit the Board 

from reaching decisions. It limits only certain (requesting 

or maintaining) actions by a petitioner. Nothing in the 
PROGRESSIVE CASUALTY v. LIBERTY MUTUAL 7

provision, or chapter 32 more generally, equates that 

limitation on a petitioner with Board authority to enter a 

decision. Cf. § 327(a) (Board may enter decision even 

after petitioner settles and drops out of the proceeding). 

Second: § 325(e)(1) does not say when a final decision 

begins to have estoppel effect (on the petitioner). Here, 

the Board stated in its two decisions that they were being 

entered “concurrently.” CBM 2012-3, 2014 WL 651401, at 

*2; CBM 2013-9, 2014 WL 651402, at *1. The Board

previously agreed to the parties’ joint request to “synchronize the timelines in both trials” because the reviews 

involved the same parties, the same patent, and overlapping prior-art references. A8387 (14-1639 appeal). We 

see nothing in the statute (or any regulation or other 

source) that forecloses the Board’s treatment of the two 

same-day decisions as simultaneous and therefore outside 

§ 325(e)(1)’s scope, regardless of the precise times of 

posting on an electronic docketing system. See also 

§§ 325(d), 326(a)(4) (conferring authority on the PTO to

decide how to deal with multiple related proceedings). 

On the merits, we conclude that the Board did not err 

in invalidating all of the ’358 patent’s claims in CBM 

2013-9. We address two of Progressive’s challenges to 

that ruling—one procedural, the other substantive. 

Progressive argues that the Board committed a procedural error by relying, in its final written decision, on a 

portion of Kosaka, a published Japanese patent application (Jap. Pub. App. H4-182868), that neither Liberty’s 

petition nor the Board’s institution decision had relied on. 

Kosaka describes a device that determines insurance 

premiums by evaluating risk in moving bodies. It describes an embodiment that uses fuzzy logic, and the 

Board, in its institution decision, pointed to Kosaka’s 

fuzzy-logic processor and memory as disclosing certain 

limitations of Progressive’s patent claims. Progressive 

responded in its patent-owner response that a relevant 
8 PROGRESSIVE CASUALTY v. LIBERTY MUTUAL

skilled artisan would neither have experience with nor 

understand fuzzy logic. The Board rejected the argument 

in its final written decision, relying in part on Kosaka’s 

statement that “‘determination [of risk evaluation values] 

may be carried out without using fuzzy logic’” by using a 

“‘common insurance table’” instead. A5036 (quoting 

A5162) (14-1639 appeal). Neither Liberty’s petition nor 

the Board’s institution decision had pointed to the insurance-table passage of Kosaka; it was raised for the first 

time, as teaching claim limitations, in Liberty’s postinstitution reply brief—after Progressive no longer had a 

full opportunity to respond to it with evidence. 

Liberty, along with the Director of the PTO, argues 

that the Board’s reliance on the previously unmentioned 

passage in Kosaka was not a “new ground of rejection” 

because that label applies only in examination and reexamination. See 37 C.F.R. § 41.50(b); 37 C.F.R. § 41.77(b). 

But the Administrative Procedure Act imposes its own 

similar obligations on Board actions, including in covered 

business method reviews. For example, 5 U.S.C. 

§ 554(b)(3) requires that “[p]ersons entitled to notice of an 

agency hearing shall be timely informed of . . . the matters of fact and law asserted”; § 554(c) requires that 

agencies give “all interested parties opportunity for . . . 

the submission and consideration of facts [and] arguments . . . [and] hearing and decision on notice”; and 

§ 556(d) “entitle[s]” a party “to submit rebuttal evidence.” 

Indeed, § 554(b)(3) has been applied to mean that “an 

agency may not change theories in midstream without 

giving respondents reasonable notice of the change” and 

“the opportunity to present argument under the new 

theory.” Rodale Press, Inc. v. FTC, 407 F.2d 1252, 1256–

57 (D.C. Cir. 1968). The APA’s requirements may well 

embody, in substance, the inquiry at the heart of the newgrounds-of-rejection analysis: “whether applicants have 

had fair opportunity to react to the thrust of the rejec-
PROGRESSIVE CASUALTY v. LIBERTY MUTUAL 9

tion.” In re Biedermann, 733 F.3d 329, 337 (Fed. Cir. 

2013) (internal quotation marks and citation omitted). 

We need not pursue the legal analysis to a conclusion, 

even if Progressive has a substantial argument that the 

Board—by relying on a factual assertion about the teaching of a passage of Kosaka that Progressive had no opportunity to respond to—committed a notice error. If there 

was error, it was harmless. The Board did not rely solely 

on the insurance-table passage of Kosaka. It independently rejected Progressive’s lack-of-knowledge argument, making a determination supported by the evidence 

that a relevant skilled artisan would have understood 

fuzzy logic. In light of the independent ground, any error 

regarding the insurance-table passage in Kosaka did not 

affect the outcome.

Progressive also attacks the substance of the Board’s 

obviousness conclusion, which was based on Kosaka and

an informational booklet by the Geostar Corporation 

called Understanding Radio Determination Satellite 

Service (RDSS). Specifically, Progressive argues that the 

Board lacked evidence to find, and did not adequately 

articulate, a motivation for a relevant skilled artisan to 

combine the two references. Motivation to combine is a 

question of fact that we review for substantial evidence. 

In re Gartside, 203 F.3d 1305, 1316 (Fed. Cir. 2000).

The Board’s affirmative explanation for its finding of 

a motivation to combine is cursory. It consists of a singleparagraph recitation of three points from Liberty’s petition, some not even addressing motivation to combine, 

followed by the Board’s declaration of agreement. The

Board’s affirmative treatment would have benefited from 

elaboration to display the needed effort to place itself into 

the mindset of the hypothetical person of ordinary skill in 

the art considering prior-art knowledge without hindsight

use of the patent claims as a guide. 
10 PROGRESSIVE CASUALTY v. LIBERTY MUTUAL

Nevertheless, the Board’s findings make its rationale 

clear, and the brief citations to the record accompanying 

the enumeration of Liberty’s points provide substantial 

evidence to support that rationale in the present setting. 

In particular, the Board found that a relevant skilled 

artisan would have understood the benefits of the RDSS 

model (using a central terminal for resource-intensive 

computing) for use in an insurance system. CBM 2013-9, 

2014 WL 651402, at *13. The Board adequately supported this proposition with a declaration from Liberty’s 

expert Scott Andrews, which stated that a relevant skilled 

artisan would realize that “various components of Kosaka 

. . . could be advantageously implemented at a remote 

central computer system/server of the insurer” because 

“processing at a central computing system” would allow 

one to “tak[e] advantage of, e.g., larger storage capacity, 

centralized collections of data involving multiple customers, and faster and more sophisticated computing capabilities.” A7846–47 at ¶¶ 37–38 (14-1639 appeal). We have 

been presented no persuasive reason to conclude that the 

Andrews evidence is insufficient to support the Board’s 

finding here.

B 

Progressive’s appeal in 14-1586 challenges the Board’s 

determination in CBM 2013-4, 2014 WL 1252839 (Mar. 

13, 2014), that all claims of the ’598 patent are anticipated by at least one piece of prior art (with some claims also 

held to claim matter that is unpatentable because of 

obviousness). Progressive’s chief argument seeks to 

antedate the prior art based on the contention that the 

’598 patent is entitled to the benefit of the earlier priority 

date of its immediate parent application, U.S. Patent 

Application No. 09/571,650. The Board rejected that

contention, finding that the “interface module” required 

by all claims of the ’598 patent lacks written-description 

support in the ’650 application. 
PROGRESSIVE CASUALTY v. LIBERTY MUTUAL 

11

The correctness of the written-description finding is 

the only issue raised by Progressive that warrants discussion—which can be brief. The adequacy of a written 

description is a question of fact, and we review the 

Board’s finding for substantial evidence. Noelle v. Lederman, 355 F.3d 1343, 1348 (Fed. Cir. 2004). Substantial 

evidence is present here. 

All claims require that the interface module produce 

either a “driver safety score” or “driver safety data.” See, 

e.g., ’598 patent, col. 28, lines 44–49. The Board construed “driver safety score” as “a calculated insurance risk 

value associated with driver safety”; it construed “driver 

safety data” as “encompassing ‘driver safety score’ and 

other data associated with driver safety.” CBM 2013-4, 

2014 WL 1252839, at *7. In either case, Progressive 

shows only that the ’650 application discloses an interface 

module that calculates insurance premiums and that this

calculation is based on “rating factors,” which might be of 

a variety of types, not merely factors based on safety. 

Progressive fails to show error in the Board’s finding that 

the ’650 application does not disclose an interface module 

producing a “driver safety score” or “driver safety data,” 

which are particular examples of possible “rating factors”—examples not described in the ’650 application. 

Progressive’s overarching argument is that a “rating

factor” is a type of “driver safety score” or “driver safety 

data.” But as the Board found, that gets matters backwards: a “rating factor” is broader than the two claim 

terms. Id. at *7, *15. The ’598 patent’s own written

description refers to “a total discount [that] is based upon 

a calculation including . . . a rating factor, such as a safety 

score,” ’598 patent, col. 22, lines 19–21, with other examples of “rating factors” including “a daytime mileage

adjustment, a nighttime mileage adjustment and a high 

risk mileage adjustment,” id., col. 23, lines 11–13. Substantial evidence supports the notion that these latter 

examples are not associated with driver safety, as “mile-
12 PROGRESSIVE CASUALTY v. LIBERTY MUTUAL

age” suggests that they track risk levels based on a vehicle’s amount of use independent of how safely one drives. 

In short, the ’650 application’s disclosure of a component 

producing a rating factor does not, without more, imply 

disclosure of the particular types of rating factor required 

by the ’589 patent’s claims—namely, a driver safety score

or driver safety data. And Progressive has pointed to no 

other disclosures that might suffice; in particular, Progressive acknowledged at oral argument that it was not 

contending that the “estimated cost” disclosed in the ’650 

application is a driver safety score or driver safety data. 

Oral Arg. (14-1586 appeal) at 41:14–42:08; see also CBM

2013-4, 2014 WL 1252839, at *15 (“There is no dispute 

that an insurance cost is not a driver safety score.”).

We conclude that substantial evidence supports the

Board’s written-description-based determination that the

’598 patent is not entitled to the ’650 application’s priority 

date. Progressive has raised no other significant challenge to the CBM 2013-4 decision, which we affirm. 

C 

Progressive’s appeals in 14-1466 and 14-1656 challenge the Board’s invalidations, for obviousness, of all 

claims of the ’970 patent. In CBM 2012-2, 109 U.S.P.Q.2d 

1833 (Jan. 23, 2014), the Board invalidated all claims but

7 and 8. In CBM 2012-4, 2014 WL 2213411 (Jan. 23, 

2014), the Board invalidated all claims without exception.

Progressive raises only two issues that warrant discussion. Our discussion of one, a notice-error challenge 

involving the insurance-table portion of Kosaka, can be 

limited to the observation that the notice-error challenge 

here is not meaningfully different from the notice-error 

challenge raised in Progressive’s 14-1639 appeal. In Part 

A, supra, we have rejected the challenge in that appeal. 

We do so in the present appeals too.
PROGRESSIVE CASUALTY v. LIBERTY MUTUAL 

13

What remains is Progressive’s challenge to the Board 

finding of a motivation to combine certain references—

some focused on vehicle-use monitoring but not premium 

determination, others focused on premium determination 

but not vehicle-use monitoring. The Board relied on the 

finding that the prior-art Florida Guide, a 1988 shoppers’ 

guide for automobile insurance in Florida, taught that 

insurers were required to generate insured profiles in 

issuing policies. That rationale is incomplete in isolation, 

and the Board did not set forth in one place the totality of 

its rationale for finding a motivation to combine. Nevertheless, although the Board’s full rationale must be pieced 

together through a reading of the Board’s full decisions at 

issue, the Board’s findings make its rationale clear, and 

substantial evidence supports that rationale. In particular, the Board made two key findings that, when put 

together, provide sufficient reason to combine the references at issue. 

First, the Board reasonably found that a relevant 

skilled artisan would have had knowledge of basic actuarial principles, standards, and practices, which, crucially, 

aim to determine insurance premiums based on an accurate assessment of risk. See, e.g., CBM 2012-2, 109

U.S.P.Q.2d 1833, at *11, *15–16, *22–23. For example, 

the Board relied on portions of the Florida Guide and 

declarations from Liberty’s expert Mary O’Neil. The 

passages relied on show that insurers set insurance 

premiums at prices commensurate with projected risk (in 

part to comply with nondiscrimination laws). E.g., id. at 

*10, *13–14, *21–23; see also A164–68 (Florida Guide); 

A3564–65 at ¶¶ 20–22, A3567–68 at ¶ 26 (Ms. O’Neil’s

original declaration); A4538–41 at ¶¶ 8–13 (Ms. O’Neil’s 

rebuttal declaration). Thus, as the Board recognized, a 

relevant skilled artisan would have been motivated to 

develop more reliable methods for creating and applying 

actuarial classes, see CBM 2012-2, 109 U.S.P.Q.2d 1833, 

at *27–28—something consistent with both Kosaka and 
14 PROGRESSIVE CASUALTY v. LIBERTY MUTUAL

the ’970 patent itself. A121 (-1466 appeal) (Kosaka identifying, as a problem to be solved, that insurance systems 

“do not consider the role of the insurance agreement 

customer’s environment and movements in governing risk 

levels”); ’970 patent, col. 2, lines 47–51 (“[T]he limited 

amount of accumulated relevant data and its minimal 

evidential value towards computation of a fair cost of 

insurance has generated a long-felt need for an improved 

system.”).

Second, the Board reasonably found that a relevant 

skilled artisan would have had familiarity with the idea of 

use-based insurance, as, among other things, the ’970 

patent itself acknowledges that it had “‘been suggested to 

detect and record seatbelt usage to assist in determination of the vehicle insurance costs.’” ’970 patent, col. 2, 

line 66 through col. 3, line 2; CBM 2012-2, 109 U.S.P.Q.2d 

1833, at *11 (citing this part of the ’970 patent); id. at *20

(citing the same). References directly and indirectly 

related to insurance confirm such knowledge. See, e.g., 

A120 (14-1466 appeal) (Kosaka); A146 (14-1466 appeal) 

(Black Magic); A149 (14-1466 appeal) (Herrod); A7135 

(14-1656 appeal) (Pettersen).

Therefore, because a relevant skilled artisan would 

have been motivated to make insurance determinations 

more accurate and would have known of at least some 

use-based actuarial methods, he or she would have been 

motivated to look at use-monitoring methods in other 

safety-related contexts to see what else might yield helpful actuarial data. The Board did not clearly state this 

rationale in any single portion of its decisions. But see

CBM 2012-2, 109 U.S.P.Q.2d 1833, at *10–11, *27–28; 

CBM 2012-4, 2014 WL 2213411, at *10–11, *20. Nevertheless, the rationale is apparent when the decisions are 

read as a whole. Because substantial evidence supports 

this motivation-to-combine rationale, we affirm the 

Board’s CBM 2012-2 and CBM 2012-4 decisions.
PROGRESSIVE CASUALTY v. LIBERTY MUTUAL 

15

D 

Progressive’s 14-1538 and 14-1549 appeals challenge 

the Board’s invalidations, for obviousness, of all claims of 

the ’088 and ’269 patents in CBM 2012-10, 2014 WL 

869413 (Feb. 24, 2014), and CBM 2013-2, 2014 WL 

824373 (Feb. 24, 2014), respectively. We have fully considered Progressive’s arguments and find them unpersuasive. We affirm the Board’s decisions without further 

discussion.

CONCLUSION

For the foregoing reasons, the judgments of the Board 

are affirmed.

No costs.

AFFIRMED