`Tel: 571-272-7822
`
`
`
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` Paper 38
`
`
` Entered: August 20, 2014
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`
`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 CBM2014-00026
`Patent 5,576,951
`____________
`
`
`Before 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
`
`
`
`On August 19, 2014, a conference call was held between counsel for
`the parties and Judges Kim and Wood. Counsel for Patent Owner requested
`the call to renew its request to compel the deposition of Sandra Newton,
`Ph.D. Petitioner had submitted Dr. Newton’s Declaration (Ex. 1009) in
`support of its Petition, but subsequently determined not to rely on the
`Newton Declaration given that Dr. Newton did not expressly opine on the
`
`
`
`CBM2014-00026
`Patent 5,576,951
`
`sole issue on which we instituted this covered-business-method (CBM)
`review: whether the challenged claims are indefinite. Ex. 1016, 10:14-11:3.
`Accordingly, Petitioner withdrew its offer to make Dr. Newton available for
`cross-examination. Id. at 11:3-9.
`In an Order issued July 23, 2014 (Paper 31), we denied Patent
`Owner’s first request to compel Dr. Newton’s cross-examination. In doing
`so we noted, inter alia, Petitioner’s acknowledgement that it would not be
`able to rely on the Newton Declaration in any respect, and thus we
`determined that it was not necessary to compel her cross-examination to
`protect Patent Owner’s interests. Paper 31, 2-3. We also authorized
`Petitioner to move to expunge the Newton Declaration from the record.
`Id. at 4. Petitioner filed its Motion on July 28, 2014 (Paper 32), and Patent
`Owner filed an Opposition on August 1, 2014 (Paper 33).
`In an Order dated August 12, 2014 (Paper 35), we denied Petitioner’s
`Motion. It should be noted that the Motion was denied at Patent Owner’s
`request, and solely for the benefit requested by Patent Owner in its
`Opposition: to preserve for Patent Owner the opportunity to argue in its
`Response that certain portions of the Newton Declaration are inconsistent
`with positions advanced by Petitioner. Paper 33, 3. This Order did not
`authorize Patent Owner to seek, again, the cross-examination of Dr. Newton,
`particularly given that the Order did not change the fact that Petitioner
`cannot rely on the Newton Declaration in any respect. But if Patent Owner
`now believes that it is prejudiced by leaving the Newton Declaration in the
`record without it being able to cross-examine Dr. Newton (a position that
`Patent Owner did not advance in its Opposition to Petitioner’s Motion to
`Expunge), it may request expungement of the Newton Declaration no later
`
`
`
`2
`
`
`
`CBM2014-00026
`Patent 5,576,951
`
`than August 21, 2014.
`
`Order
`
`Accordingly, it is
`ORDERED that Petitioner may file a paper including a cover page
`and only the following one-sentence statement no later than August 21,
`2014: “We desire that the Newton Declaration (Ex. 1008) be expunged from
`the record.”
`
`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
`donf-PTAB@skgf.com
`jasone-PTAB@skgf.com
`rbemben-PTAB@skgf.com
`bpickard-PTAB@skgf.com
`
`
`
`
`
`
`
`3
`
`
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