Trials@uspto.gov
`571-272-7822
`
`
`
`
`
` Paper 31
`Entered: July 23, 2014
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`EBAY ENTERPRISES, Inc. and EBAY Inc.,
`Petitioner,
`
`v.
`
`LAWRENCE B. LOCKWOOD,
`Patent Owner.
`
`
`Case CBM2014-00026
`Patent 5,576,951
`____________
`
`
`Before MICHAEL W. KIM, and BENJAMIN D. M. WOOD,
`Administrative Patent Judges.
`
`KIM, Administrative Patent Judge
`ORDER
`Conduct of Proceeding
`37 C.F.R. § 42.5
`On July 21, 2014, a conference call was held between counsel for the
`parties and Judges Kim and Wood. Counsel for Patent Owner requested the
`call to seek guidance concerning the cross-examination of Dr. Sandra
`Newton, Petitioner’s sole declarant in support of its Petition. Pet. (citing
`Ex. 1009). Specifically, counsel for Patent Owner indicated that the parties
`had agreed to conduct the cross-examination of Dr. Newton on July 24, 2014
`and July 25, 2014 (Paper 28). Approximately one week before deposition,
`
`
`571-272-7822
`
`
`
`
`
` Paper 31
`Entered: July 23, 2014
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`EBAY ENTERPRISES, Inc. and EBAY Inc.,
`Petitioner,
`
`v.
`
`LAWRENCE B. LOCKWOOD,
`Patent Owner.
`
`
`Case CBM2014-00026
`Patent 5,576,951
`____________
`
`
`Before MICHAEL W. KIM, and BENJAMIN D. M. WOOD,
`Administrative Patent Judges.
`
`KIM, Administrative Patent Judge
`ORDER
`Conduct of Proceeding
`37 C.F.R. § 42.5
`On July 21, 2014, a conference call was held between counsel for the
`parties and Judges Kim and Wood. Counsel for Patent Owner requested the
`call to seek guidance concerning the cross-examination of Dr. Sandra
`Newton, Petitioner’s sole declarant in support of its Petition. Pet. (citing
`Ex. 1009). Specifically, counsel for Patent Owner indicated that the parties
`had agreed to conduct the cross-examination of Dr. Newton on July 24, 2014
`and July 25, 2014 (Paper 28). Approximately one week before deposition,
`
`
`
`CBM2014-00026
`U.S. Patent No. 5,576,951
`
`counsel for Petitioner contacted counsel for Patent Owner, and indicated that
`they would no longer be relying on Dr. Newton’s Declaration in this
`proceeding, and thus cancelled the cross-examination. Counsel for Patent
`Owner expressed concern regarding Petitioner’s position, and requested the
`Board to compel Petitioner to either (1) make Dr. Newton available for
`cross-examination on the agreed upon date or (2) if Dr. Newton is not made
`available, reimburse Patent Owner for certain costs and fees incurred by
`Patent Owner in connection with Dr. Newton’s cross-examination.
`As an initial matter, the parties indicated that the matter concerning
`costs and fees was addressed, and thus Patent Owner withdraws that request.
`The Board appreciates the parties coming to an agreement on that matter.
`Request to Compel Cross-Examination
`Concerning the request to compel the cross-examination of Dr.
`Newton, counsel for Patent Owner raised several issues. Upon consideration
`of both party’s positions, Patent Owner’s request is denied for the reasons
`set forth below.
`Counsel for Patent Owner asserts that because the Board instituted a
`trial based on the Petition, and the Petition cites Dr. Newton’s Declaration,
`the Board relied on Dr. Newton’s Declaration in instituting a trial in this
`proceeding, and thus Patent Owner should be provided the opportunity to
`cross-examine Dr. Newton. Petitioner opposes the request, as Petitioner
`acknowledges that they cannot rely further on any statement made in Dr.
`Newton’s Declaration, and thus the failure to provide Dr. Newton for cross-
`examination is to the detriment of Petitioner. On these facts, we are not
`
`2
`
`
`
`CBM2014-00026
`U.S. Patent No. 5,576,951
`
`persuaded there is sufficient reason to compel Dr. Newton’s testimony. In
`addition to the reasons set forth by Petitioner, we note that concerning the
`instituted grounds, neither the relevant portions of the Petition nor the
`analysis portion of the Decision to Institute (Paper 25) refer to Dr. Newton’s
`Declaration. Accordingly, it is not apparent how either Patent Owner would
`be prejudiced or the proceeding would benefit from the cross-examination of
`Dr. Newton.
`Counsel for Patent Owner asserts that if another declaration is filed
`with Petitioner’s Reply Brief in this proceeding, Patent Owner will not have
`a chance to provide a full written response. It is not apparent how any cross-
`examination of that possible declarant is related to the cross-examination of
`Dr. Newton. Additionally, it is speculative as to what Petitioner may or may
`not include with their Reply Brief. Moreover, even if such a declaration is
`filed, Patent Owner will have a chance to cross-examine such a declarant, if
`any, and file observations.
`Counsel for Patent Owner indicated that it was concerned that the
`substance of Petitioner’s Reply Brief and supporting declaration would
`exceed the proper scope of the grounds instituted by the Board in this
`proceeding. Again, it is not apparent how a possible scope of the Reply
`Brief is related to the cross-examination of Dr. Newton. It is speculative as
`to what Petitioner may or may not argue or include with their Reply Brief.
`Moreover, the Board is capable of ascertaining whether or not the substance
`of Petitioner’s Reply Brief, including any declaration, exceeds the proper
`scope of the instituted grounds.
`
`3
`
`
`
`CBM2014-00026
`U.S. Patent No. 5,576,951
`
`Other Requests
`Counsel for Petitioner requested authorization to file a motion to
`expunge the Declaration of Dr. Newton. Counsel for Petitioner proffers that
`this would clarify matters in this proceeding. Counsel for Patent Owner
`indicated that they may wish to cite certain portions of Dr. Newton’s
`Declaration that they assert support their positions. We authorize
`Petitioner’s request.
`Counsel for Patent Owner requested that if Petitioner cannot rely on
`Dr. Newton’s Declaration, the trial should be terminated. Essentially, Patent
`Owner is asserting that without Dr. Newton’s Declaration, Petitioner has no
`basis to support any of the grounds of unpatentability set forth in the
`Petition, and thus, facially, there is no basis to conduct a trial. Petitioner
`opposes the request, and asserts that there is other evidence of record to
`support its arguments with regards to the instituted grounds. We agree with
`Petitioner that termination of the trial is not warranted. As set forth above,
`concerning the instituted grounds, neither the relevant portions of the
`Petition nor the analysis portion of Decision to Institute (Paper 25) refers to
`Dr. Newton’s Declaration.
`Counsel for Patent Owner requests authorization to file a transcript of
`the conference call as an exhibit. The request is granted.
`For the reasons given, it is
`ORDERED that Patent Owner’s request to compel Petitioner to make
`Dr. Newton available for cross-examination on July 24, 2014 and July 25,
`2014 is DENIED;
`
`4
`
`
`
`CBM2014-00026
`U.S. Patent No. 5,576,951
`
`FURTHER ORDERED that if Petitioner does not make Dr. Newton
`available for cross-examination, Petitioner cannot rely further on Dr.
`Newton’s Declaration (Ex.1009) for any purpose in this proceeding;
`FURTHER ORDERED that Petitioner’s request to file a motion to
`expunge Dr. Newton’s Declaration is GRANTED. Petitioner is authorized
`to file a three page motion by July 28, 2014, and Patent Owner is authorized
`to a file a three page opposition by August 1, 2014;
`FURTHER ORDERED that Patent Owner’s request to terminate this
`proceeding is DENIED; and
`FURTHER ORDERED that Patent Owner’s request to file the
`transcript of this call as an exhibit in this proceeding is GRANTED. Patent
`Owner shall submit the transcript with a one-page cover sheet indicating the
`exhibit number only. No other papers are permitted to be filed in connection
`with this request.
`
`
`
`
`5
`
`
`
`CBM2014-00026
`U.S. Patent No. 5,576,951
`
`For PETITIONER:
`Don Daybell
`James Maune
`ORRICK, HERRINGTON & SUTCLIFFE LLP
`ddaybell@orrick.com
`jmaune@orrick.com
`
`For PATENT OWNER:
`Robert Sterne
`Donald Featherstone
`Jason Eisenberg
`Richard Bemben
`Byron Pickard
`STERNE, KESSLER, GOLDSTEIN & FOX PLLC
`rsterne@skgf.com
`donf-PTAB@skgf.com
`jasone-PTAB@skgf.com
`rbemben-PTAB@skgf.com
`bpickard-PTAB@skgf.com
`
`
`
`6
`
`
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