UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________
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`EBAY ENTERPRISE, INC. AND EBAY, INC.
`Petitioners
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`v.
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`LAWRENCE B. LOCKWOOD
`Patent Owner
`_____________________
`
`Case CBM2014-00025
`U.S. Patent No. 7,010,508
`_____________________
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`OPPOSITION TO PETITIONER’S MOTION TO EXPUNGE
`NEWTON DECLARATION
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`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`
`_____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________
`
`
`EBAY ENTERPRISE, INC. AND EBAY, INC.
`Petitioners
`
`v.
`
`LAWRENCE B. LOCKWOOD
`Patent Owner
`_____________________
`
`Case CBM2014-00025
`U.S. Patent No. 7,010,508
`_____________________
`
`OPPOSITION TO PETITIONER’S MOTION TO EXPUNGE
`NEWTON DECLARATION
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`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`1
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`CBM2014-00025
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` In accordance with the Board’s Order of July 23, 2014, (Paper 30), Patent
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`Owner opposes Petitioner’s Motion to Expunge the Newton Declaration (Paper 31)
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`and files this Opposition.1
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`Time and again the Board has stated that “there is a strong public policy for
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`making all information filed in an administrative proceeding available to the
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`public, especially in a covered business method patent review, which determines
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`the patentability of claims in an issued patent. It is better to have a complete record
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`of the evidence submitted by the parties than to exclude particular pieces of
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`evidence.” CBM2013-00002, Paper 59 at 62; see also CBM2012-00002, Paper 66
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`at 60; IPR2012-00005, Paper 68 at 59. Here, Petitioner seeks to suppress evidence
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`that it voluntarily submitted and that Patent Owner has explained is germane to the
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`only issue at trial – i.e., whether the claims meet the definiteness requirement of §
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`112, ¶ 2. Ex. 2017 at 6:3-11.
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`The thrust of Petitioner’s argument is that “Dr. Newton does not opine on
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`indefiniteness in her declaration. Therefore, neither Petitioner not the Board relied
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`on Dr. Newton’s declaration for indefiniteness.” Paper 31 at 2. Regardless, she
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`1 Any tentative agreement on behalf of Patent Owner to expunge the Newton
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`declaration was contingent on the Board terminating this proceeding. Ex. 2017 at
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`12:8-17. Since the Board denied Patent Owner’s request to terminate, Paper 30 at
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`4, Patent Owner opposes Petitioner’s Motion to Expunge.
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`SKGF DOCKET NO. 3323.002CBM5
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`2
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`CBM2014-00025
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`
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`construed the claims and applied the cited art from the perspective of a person of
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`skill in the art (“POSA”), demonstrating that a POSA would understand the meets
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`and bounds of the claims. Ex. 1008 at ¶ 19. Moreover, she provided a definition of
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`relevant claim terms, id. at 14 (“A [POSA] would also have been conversant with
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`the concepts of backward-chaining and forward-chaining. Backward-chaining
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`is . . . . Forward-chaining is . . . .”), and presented claim charts that show where she
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`believes each claim element is supported in the disclosure of the ’508 Patent, id. at
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`27-174. Patent Owner – and the public – should not be deprived of this evidence,
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`especially before Patent Owner is able to formally respond to the merits of
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`Petitioner’s attack on its patent.
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`Moreover, Patent Owner is entitled to receive and then can submit to the
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`Board “relevant information that is inconsistent with a position advanced by
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`[eBay] during the proceeding.” 37 C.F.R. 42.51(b)(1)(iii). So Patent Owner
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`appears to have the right to submit the Newton Declaration as evidence as being
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`inconsistent with Petitioner’s indefiniteness argument.
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`But if Petitioner’s motion is granted, the Board should hold Petitioner to its
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`position that no evidence is required to carry its burden of proving by a
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`preponderance of the evidence that the claims are indefinite. Petitioner requested
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`institution of trial on the basis that the specification provides no disclosure of an
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`algorithm of certain claim elements. Paper 1 at 21-24. The Board has done so. In
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`support of expunging its own expert’s declaration, Petitioner has unequivocally
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`SKGF DOCKET NO. 3323.002CBM5
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`3
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`CBM2014-00025
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`stated that the only evidence it needs to show the claims are indefinite is the patent
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`and the prosecution history. Ex. 2017 at 12 (“Your Honor, I don’t agree that we
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`have no evidence. We have the evidence that we cited in the petition, which would
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`include the patents, the file history, the other exhibits that we submitted in the
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`petition, the prior art.”). Accordingly, Petitioner does not need to, nor should be
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`allowed to, provide further evidence in the form of a new declaration directed to
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`indefiniteness for at least two reasons.
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`First, any new declaratory evidence from Petitioner could only result in
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`them asserting new arguments on the sufficiency of disclosure of the ’508 Patent.
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`But Petitioner had an opportunity to provide evidence on this issue the day it filed
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`the Petition; but it chose not to. Petitioner must now live with that strategic
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`decision – regardless if a new law firm has taken over the proceeding.
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`Second, the Board has stated in many IPR and CBM proceedings that the
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`Petitioner is bound by the arguments and evidence in the Petition to meet their
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`burden of proving their case. Further, the Trial Practice Guide explicitly forbids
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`new arguments and evidence with the Reply. 77 Fed. Reg. 157 at 48,767 (“a reply
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`that raises a new issue or belatedly presents evidence will not be considered and
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`may be returned.”), 48,620 (“Reply evidence . . . must be responsive and not
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`merely new evidence that could have been presented earlier . . . .”). Patent Owner
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`would be unduly prejudiced by any new arguments and evidence presented after
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`Patent Owner files its brief on the merits.
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`SKGF DOCKET NO. 3323.002CBM5
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`4
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`CBM2014-00025
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`Respectfully submitted,
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`Date: August 1, 2014
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` STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
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`/Robert Greene Sterne/
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`
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` Robert Greene Sterne, Reg. No. 28,912
`Attorney for Patent Owner
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`SKGF DOCKET NO. 3323.002CBM5
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`5
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`CBM2014-00025
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`CERTIFICATION OF SERVICE
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`The undersigned hereby certifies that the foregoing “Opposition to
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`Petitioner’s Motion to Expunge Newton Declaration” was served electronically via
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`e-mail on August 1, 2014, in its entirety on the following:
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`Lead Counsel
`Don Daybell, Reg. No. 50,877
`Orrick, Herrington & Sutcliffe LLP
`2050 Main Street, Suite 1100
`Irvine, CA 92614-8255
`Main: (949) 567-6700
`Direct: (949) 852-7735
`Fax: (949) 567-6710
`Email: ddaybell@orrick.com
`
`Back-up Counsel
`James Maune, Reg. No. 67,187
`Orrick, Herrington & Sutcliffe LLP
`2050 Main Street, Suite 1100
`Irvine, CA 92614-8255
`Main: (949) 567-6700
`Direct: (949) 852-7721
`Fax: (949) 567-6710
`Email: jmaune@orrick.com
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`Respectfully Submitted,
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`
`/Robert Greene Sterne/
`
`Robert Greene Sterne (Registration No. 28,912)
`Lead Counsel for Patent Owner – Lawrence B.
`Lockwood
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`
`
`Date: August 1, 2014
`1100 New York Avenue, N.W.
`Washington, D.C.20005
`(202) 371-2600
`1886217_3.DOCX
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`
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`SKGF DOCKET NO. 3323.002CBM5
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`
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