`Tel: 571-272-7822
`
`
`
`
` Paper 34
`
`
` Entered: August 12, 2014
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`EBAY ENTERPRISE, Inc. and EBAY Inc.,
`Petitioner,
`
`v.
`
`LAWRENCE B. LOCKWOOD,
`Patent Owner.
`____________
`
`Case CBM2014-00025
`(Patent 7,010,508)
`____________
`
`
`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
`
`
`
`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.”)
`
`
`
`CBM2014-00025
`Patent 7,010,508
`
`
`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
`
`
`1 Prior to Petitioner’s motion, we determined not to compel Dr. Newton’s
`deposition. Ex. 1014, 15:24-16:3.
`
`
`
`2
`
`
`
`CBM2014-00025
`Patent 7,010,508
`
`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
`
`Accordingly, it is
`ORDERED that Petitioner’s motion to expunge the Newton
`Declaration (Ex. 1008) is denied.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`3
`
`
`
`CBM2014-00025
`Patent 7,010,508
`
`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
`
`
`
`4
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
