`Tel: 571-272-7822
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` Paper 34
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` Entered: August 12, 2014
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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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`EBAY ENTERPRISE, Inc. and EBAY Inc.,
`Petitioner,
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`v.
`
`LAWRENCE B. LOCKWOOD,
`Patent Owner.
`____________
`
`Case CBM2014-00025
`(Patent 7,010,508)
`____________
`
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`Before SALLY C. MEDLEY, MICHAEL W. KIM, and
`BENJAMIN D. M. WOOD, Administrative Patent Judges.
`
`WOOD, Administrative Patent Judge.
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
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`
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`By Order dated July 23, 2014, the Board authorized eBay Enterprise,
`Inc. and eBay, Inc. (collectively, “Petitioner”) to file a motion to expunge
`the Declaration of Dr. Sandra Newton (Ex. 1008), Petitioner’s sole declarant
`in this proceeding. Paper 30, 5. Petitioner filed its motion on July 28, 2014.
`Paper 31 (“Mot.”). Patent Owner filed an opposition to the motion on
`August 1, 2014. Paper 32 (“Opp.”)
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`
`
`CBM2014-00025
`Patent 7,010,508
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`
`In its motion, Petitioner asserts that Dr. Newton’s declaration “is no
`longer necessary to the trial.” Mot. 1. Petitioner explains that the “Board
`instituted this proceeding solely on the grounds that the challenged claims
`are indefinite,” and that “Dr. Newton does not opine on indefiniteness in her
`declaration.” Id. at 2. Petitioner also notes that “neither Petitioner nor the
`Board relied on Dr. Newton’s declaration for indefiniteness.” Id.1
`According to Petitioner, “[e]xpunging Dr. Newton’s declaration will further
`simplify and streamline this proceeding, by removing unnecessary
`testimony.” Id.
`Patent Owner opposes Petitioner’s motion. Patent Owner asserts that
`Dr. Newton’s declaration is “germane to the only issue at trial—i.e., whether
`the claims meet the definiteness requirement of § 112, ¶ 2.” Opp. 1.
`According to Patent Owner, Dr. Newton “construed the claims and applied
`the cited art from the perspective of a person of skill in the art (‘POSA’),
`demonstrating that a POSA would understand the [metes] and bounds of the
`claims.” Id. at 1-2. Patent Owner also notes that Dr. Newton “presented
`claim charts that show where she believes each claim element is supported
`in the disclosure of the ’508 Patent.” Id. at 2. Finally, Patent Owner asserts
`that it “is entitled to receive and . . . submit to the Board ‘relevant
`information that is inconsistent with a position advanced by [eBay] during
`the proceeding.’” Id. (quoting 37 C.F.R. 42.51(b)(1)(iii).
`We deny Petitioner’s motion. While we are sympathetic to
`Petitioner’s desire to simplify and streamline the proceeding, we are not
`persuaded that retaining the Newton Declaration in the record would be
`
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`1 Prior to Petitioner’s motion, we determined not to compel Dr. Newton’s
`deposition. Ex. 1014, 15:24-16:3.
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`2
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`CBM2014-00025
`Patent 7,010,508
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`unduly confusing or otherwise burdensome for the parties or the Board.
`Conversely, expunging the declaration might prejudice Patent Owner by
`denying it the opportunity to argue in its Response that certain portions of
`the declaration are inconsistent with a position advanced by Petitioner (we
`do not decide now what weight, if any, we may give the Newton Declaration
`in this regard). Therefore, we have determined that the better course of
`action is to retain the Newton Declaration in the record.
`Order
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`Accordingly, it is
`ORDERED that Petitioner’s motion to expunge the Newton
`Declaration (Ex. 1008) is denied.
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`3
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`CBM2014-00025
`Patent 7,010,508
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`PETITIONER:
`
`Don Daybell
`James Maune
`ORRICK, HERRINGTON & SUTCLIFFE LLP
`ddaybell@orrick.com
`jmaune@orrick.com
`
`PATENT OWNER:
`
`Robert Sterne
`Donald Featherstone
`Jason Eisenberg
`Richard Bemben
`Byron Pickard
`STERNE, KESSLER, GOLDSTEIN & FOX PLLC
`rsterne@skgf.com
`don-PTAB@skgf.com
`jasone-PTAB@skgf.com
`rbemben-PTAB@skgf.com
`bpickard-PTAB@skgf.com
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`4
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