Liberty Mutual v. Progressive (CBM2012-00002): Filing Date Notice and a Telephonic Certification

The first petitions under the AIA’s transitional program for covered business method patents were filed on September 16, 2012. Liberty Mutual Insurance Company v. Progressive Casualty/BHGL, CBM2012-00002, which challenged U.S. Patent 6,064,970, carries the second CBM case number. The Board’s notice of filing date, mailed September 21, 2012, shows how the Board handled a missing standing certification in those first days. The first CBM review was SAP v. Versata.

Background

A CBM review had a special threshold. Under section 18 of the AIA, a person could petition only if it, its real party in interest or its privy had been sued for infringement of the patent or charged with infringement. The Board’s rules carry this into the petition. Under 37 C.F.R. § 42.302, a petitioner must meet that requirement and must not be estopped. Under 37 C.F.R. § 42.304(a), the petition must show that the patent is a covered business method patent and that the petitioner meets the eligibility requirements of § 42.302.

On reviewing Liberty Mutual’s petition, the Board found that the required certification was missing.

What the notice records

A telephonic cure. On September 17, 2012, the lead trial judge held a conference call with Liberty Mutual’s counsel to address the omission. Counsel was asked to certify that the petitioner was not barred or estopped from requesting the proceeding, and did so. The Board, in its words, “exercises its discretion” and accepted the telephonic certification.

Filing date accorded. The petition was accorded a filing date of September 16, 2012, the date it was filed.

Next steps. The notice then set the clock for the preliminary phase:

• An administrative patent judge was designated to manage the proceeding.
• The patent owner could file a preliminary response within three months of the notice, limited to reasons why review should not be instituted, or could waive it to speed things up.
• The patent owner was reminded to file its mandatory notices under 37 C.F.R. § 42.8(a)(2) within 21 days of service of the petition.
• All filings had to be made electronically through the Board’s system, unless 37 C.F.R. § 42.6(b)(2) permitted otherwise.

Why it matters

Standing statements are required, not optional. Every AIA petition must address the petitioner’s eligibility. In IPR, 37 C.F.R. § 42.104(a) requires certification that the patent is available for review and that the petitioner is not barred or estopped. In CBM review, the showing under § 42.304(a) also covered the sued-or-charged requirement and the covered business method status of the patent. For how these thresholds compare, see starting an AIA post-grant proceeding.

The notice of filing date starts the clock. The preliminary response period runs from the notice. The patent owner’s 21-day mandatory notice deadline runs from service of the petition.

Early flexibility should not be assumed. Accepting a certification by phone was a discretionary accommodation in the program’s first week. Compare the stricter handling of other early filing problems in Macauto v. Baumeister & Ostler and Ariosa v. Isis. The safer course is a petition that contains every required statement.

Later developments

The CBM program was transitional and ended on September 16, 2020, so no new CBM petitions can be filed. The general filing-date and mandatory-notice rules discussed here continue to apply to IPR and post-grant review; readers should check current USPTO guidance for details.

Key takeaways

• Liberty Mutual’s CBM petition omitted the § 42.304 standing certification.
• Counsel certified by phone that the petitioner was not barred or estopped, and the Board accepted it as a matter of discretion.
• The petition received a September 16, 2012 filing date, starting the three-month preliminary response period.
• Patent owners must file mandatory notices within 21 days of service of the petition under § 42.8(a)(2).