UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________
`
`EBAY ENTERPRISE, INC.
`Petitioner
`v.
`LAWRENCE B. LOCKWOOD
`Patent Owner
`_____________________
`CASE NO: CBM2014-00025
`Patent No. 7,010,508
`_____________________
`
`EBAY ENTERPRISE, INC.’S
`MOTION TO EXPUNGE
`
`
`_____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________
`
`EBAY ENTERPRISE, INC.
`Petitioner
`v.
`LAWRENCE B. LOCKWOOD
`Patent Owner
`_____________________
`CASE NO: CBM2014-00025
`Patent No. 7,010,508
`_____________________
`
`EBAY ENTERPRISE, INC.’S
`MOTION TO EXPUNGE
`
`
`
`Petitioner moves to expunge the declaration of Dr. Sandra Newton (Ex.
`
`1008) from this proceeding, because that declaration is no longer necessary to the
`
`trial. In the July 21 conference call, Petitioner sought and received authorization
`
`for this motion. Ex. 1014, July 21, 2014 Hearing Tr., 11:10-19. At the hearing,
`
`Counsel for Patent Owner seemingly agreed to expunging the declaration, stating
`
`“I think it’s true, we do not oppose them withdrawing or striking the Newton
`
`declaration.” Id., 12:8-11.1 Indeed, the Board declined to compel Dr. Newton’s
`
`deposition at least in part “because the declaration is going to be expunged.” Id.,
`
`15:24-16:3.
`
`Where an IPR declarant is not made available for cross-examination, that
`
`declarant’s declaration is excluded from the record. Clearwire Corp. v. Mobile
`
`Telecommunications Tech., Inc., IPR2013-00306, Paper No. 18, at 3 (PTAB, Dec.
`
`9, 2013) (advising a party that if it failed to make its witness available for cross-
`
`examination, “the declaration of its witness will be excluded.”) Similarly, where
`
`declarations or other exhibits are no longer being relied upon by the party that
`
`submitted them, such exhibits are expunged. Palo Alto Networks, Inc. v. Juniper
`
`1 It appears that Patent Owner is now taking the opposite stance. Two days after
`
`the hearing, Counsel for Patent Owner advised counsel for Petitioner that while
`
`Patent Owner hadn’t made a final decision, “I anticipate we will oppose the
`
`motion.”
`
`1
`
`
`
`Networks, Inc., IPR2013-00466, Paper No. 23, at 3 (PTAB, Feb. 13, 2014)
`
`(expunging an expert report excerpt, where Patent Owner “indicated that it does
`
`not rely up[on the exhibit] for a ‘substantive’ purpose regarding the merits of the
`
`grounds of unpatentability proposed in the petition”); Gnosis SPA, v. South
`
`Alabama Med. Sci. Found., IPR2013-00116, Paper No. 37, at 2 (PTAB, October
`
`31, 2013) (expunging exhibits that Patent Owner no longer relied on).
`
`The Board instituted this proceeding solely on the grounds that the
`
`challenged claims are indefinite. Paper No. 24, at 23. Dr. Newton does not opine
`
`on indefiniteness in her declaration. Therefore, neither Petitioner nor the Board
`
`relied on Dr. Newton’s declaration for indefiniteness. Indeed, Petitioner does not
`
`cite to Dr. Newton’s declaration in support of the indefiniteness issue in the
`
`Petition Pet. 21-24; Paper No. 30, at 3. And the Board also did not cite to Dr.
`
`Newton’s declaration in the analysis portion of the Board’s Decision to Institute.
`
`Paper No. 24, at 15-22; Paper No. 30, at 3. The Board found that this case would
`
`be simplified by cancelling Dr. Newton’s deposition, because in that event “the
`
`declaration would be for naught.” Ex. 1014, July 21, 2014 Hearing Tr., 7:17-18;
`
`Paper No. 30, at 3. Expunging Dr. Newton’s declaration will further simplify and
`
`streamline this proceeding, by removing unnecessary testimony.
`
`Patent Owner has suggested that it may be prejudiced, because it may want
`
`to cite to portions of Dr. Newton’s declaration itself. Ex. 1014, July 21, 2014
`
`2
`
`
`
`Hearing Tr., 8:22-9:1. Yet Patent Owner has already argued that Dr. Newton’s
`
`testimony “should be given ‘little or no weight.’” PO Prelim. Resp. at 25. Patent
`
`Owner also tacitly conceded that there is no prejudice, when it agreed on the record
`
`that it did not oppose withdrawing or striking the Newton declaration. Ex. 1014,
`
`12:8-11.
`
`Patent Owner also suggested in correspondence to Petitioner that it believes
`
`that Petitioner should be estopped from taking positions in the future that
`
`contradict the Newton declaration. Patent Owner, however, is merely speculating
`
`about what may or may not occur in the future. Paper No. 30, at 3 (holding that
`
`“[i]t is speculative as to what Petitioner may or may not argue or include with their
`
`Reply Brief.”) Furthermore, Dr. Newton’s declaration cannot give rise to any
`
`future estoppel. Before estoppel could be triggered the Board must have relied on
`
`Dr. Newton’s declaration. New Hampshire v. Maine, 532 U.S. 742, 750-51 (2001).
`
`However, the Board has not relied on Dr. Newton’s declaration. Paper No. 30, at
`
`3. Petitioner respectfully requests that Dr. Newton’s declaration, Exhibit 1008, be
`
`expunged.
`
`ORRICK, HERRINGTON & SUTCLIFFE LLP
`
`Dated: July 28, 2014
`
`By:
`
`/Don Daybell/
`Don Daybell, Lead Counsel for Petitioner
`eBay Enterprise, Inc.
`Reg. No. 50,877
`
`3
`
`
`
`APPENDIX
`
`PETITIONER’S EXHIBIT LIST
`
`Description
`
`Filed
`
`Exhibit
`No.
`
`1001
`
`1002
`
`1003
`
`U.S. Patent No. 4,359,631: “Self-Service Terminal,”
`Lockwood, et al. filed July 11, 1980 (“Lockwood”),
`is prior art under 35 USC § 102(b)
`
`“A Model of an Audit Judgment in the Form of an
`Expert System”
`
`“GAIT SPERT: An Expert SYstem for the
`Evaluationof Abnormal Human Locomotion Arising
`from Stroke,” James M. Dzierzanowski,et al.
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`1004
`
`“The EMYCIN Manual,” William van Melle, et al.
`
`1005
`
`1006
`
`1007
`
`“Expert System for Diesel Electric Locomotive
`Repair,” Harold E. Johnson, et al.
`
`“An Interactive Video Information Terminal,” Ronald
`D. Gordon
`
`U.S. Patent No. 7,010,508 to Lockwood
`(“the ‘508 Patent”)
`
`1008
`
`Declaration of Dr. Sandra Newton, Ph.D.
`
`1009
`
`iRobot Complaint
`
`4
`
`
`
`Exhibit
`No.
`
`Description
`
`Filed
`
`1010
`
`Burberry Complaint
`
`1011
`
`Airgas Complaint
`
`1012
`
`Declaration of Howard I. Sherman
`
`1013
`
`Affidavit of Mark P. Wine
`
`1014
`
`July 21, 2014 Conference Call
`
`X
`
`X
`
`X
`
`X
`
`X
`
`5
`
`
`
`CERTIFICATION OF SERVICE (37 C.F.R. § 42.6(e))
`
`The undersigned hereby certifies
`
`that
`
`the above-captioned “EBAY
`
`ENTERPRISE, INC.’S MOTION TO EXPUNGE” with exhibits and updated
`
`Exhibit List was served in its entirety on July 28, 2014, upon the following parties
`
`via electronic mail:
`
`Robert Greene Sterne
`rsterne@skgf.com
`Donald J. Featherstone
`donf-PTAB@skgf.com
`Jason D. Eisenberg
`jasone-PTAB@skgf.com
`Byron L. Pickard
`bpickard-PTAB@skgf.com
`Richard M. Bemben
`rbemben-PTAB@skgf.com
`Sterne, Kessler, Goldstein & Fox P.L.L.C.
`1100 New York Avenue, N.W.
`Washington, D.C. 20005-3934
`Attorneys for Patent Owner
`
`/Sally Hartwell/
`Sally Hartwell
`
`6
`
`
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