`571-272-7822
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`Paper No. 11
`Entered: 31 January 2013
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
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`LIBERTY MUTUAL INSURANCE COMPANY
`Petitioner,
`
`v.
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`PROGRESSIVE CASUALTY INSURANCE COMPANY
`Patent Owner,
`
`
`Case CBM-2012-00011 (JL)
`Patent 7,124,088
`
`
`Before JAMESON LEE, JONI Y. CHANG, and MICHAEL R. ZECHER,
`Administrative Patent Judges.
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`LEE, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
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`On January 29, 2013, a joint telephone conference call was held between
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`respective counsel for the parties and Judges Lee, Chang, and Zecher. Counsel for
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`patent owner (“Progressive”) brought the following information to the attention of
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`the patent judges:
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`
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`CBM-2012-00011
`Patent 7,124,088
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`
`
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`(1) that an application which is a continuation of the patent
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`involved in this proceeding, has been allowed by the examiner on
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`January 17, 2013; and
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`(2) that prior to or concurrent with such allowance, information
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`disclosure statements (“IDS”) providing the prior art references relied
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`on by the petitioner in this proceeding, declarations in support of the
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`petition, and the petition itself were indicated as having been
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`considered by the examiner.
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`In response to an inquiry from the patent judges, counsel for Progressive
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`also indicated that the examiner provided no substantive discussion beyond merely
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`indicating that the IDS provided was considered.
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`The judges indicated that the conference call itself provides sufficient notice
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`and no further submission from Progressive is necessary or authorized. During the
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`conference call, the judges did not consider substantive arguments from
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`Progressive’s counsel on the meaning, significance, or effect of the information
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`conveyed by counsel.
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`Counsel for petitioner (“Liberty Mutual”) noted that an examiner’s
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`allowance of claims in a continuation application is generally not pertinent and that
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`since the Board may access the prosecution history of the continuation application,
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`Liberty Mutual should have access to the official file of the continuation
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`application. Progressive’s counsel agreed to provide Liberty Mutual access to the
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`prosecution history of the continuation application. Counsel for both parties
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`agreed to work on a mutually satisfactory confidentiality arrangement in which
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`-2-
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`CBM-2012-00011
`Patent 7,124,088
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`Progressive would provide the prosecution history of the continuation application
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`to Liberty Mutual.
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`It is
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`ORDERED that Progressive is not authorized to file further supplemental
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`information regarding the allowance of the continuation application, and
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`FURTHER ORDERED that Progressive is not authorized to file in this
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`proceeding a copy of any paper in the prosecution history of the continuation
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`application.
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`-3-
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`CBM-2012-00011
`Patent 7,124,088
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`By Electronic Transmission
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`Attorney for Petitioner Liberty Mutual Ins. Co.:
`
`J. Steven Baughman, Esq.
`Nicole M. Jantzi, Esq.
`Ropes & Gray LLP
`steven.baughman@ropesgray.com
`nicole.jantzi@ropesgray.com
`
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`Attorneys for Patent Owner Progressive Casualty Ins. Co.:
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`James A. Collins, Esq.
`Joseph S. Hanasz, Esq.
`Robert Mallin, Esq.
`BRINKS HOFER GILSON & LIONE
`jcolins@brinkshofer.com
`jhanasz@brinkshofer.com
`rmallin@brinkshofer.com
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`-4-
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