In its Order, the Board addressed the situation where Petitioner had submitted the Declaration of its expert Dr. Sandra Newton in support of the Petition, but thereafter decided that it did not want to rely on the Declaration.  The reason for this decision was that the Board had instituted covered business method (CBM) review in this proceeding based solely on the asserted ground that the challenged claims were indefinite, whereas the Declaration of Dr. Newton did not expressly opine on indefiniteness.  In view of this decision, Petitioner withdrew its offer to make Dr. Newton available for cross-examination.

Patent Owner had earlier requested to compel Dr. Newton’s cross-examination, but the Board denied this request, at least partially in view of Petitioner’s acknowledgement “that it would not be able to rely on the Newton Declaration in any respect.”  The Board then authorized Petitioner to file a Motion to Expunge the Declaration from the record, which Petitioner did.  Patent Owner opposed because it wanted to preserve the right “to argue in its Response that certain portions of the Newton Declaration are inconsistent with positions advanced by Petitioner.”  The Board denied Petitioner’s Motion to Expunge for the aforementioned reasons set forth in Patent Owner’s Opposition.

The Board’s denial of Petitioner’s Motion to Expunge did not authorize Patent Owner to renew its previous attempt to seek the cross-examination of Dr. Newton.  As characterized by the Board, its denial of Petitioner’s Motion to Expunge “did not change the fact that Petitioner cannot rely on the Newton Declaration in any respect.”  Nonetheless, in a subsequent teleconference, Patent Owner renewed its earlier request to take the deposition of Dr. Newton.

Thus, the Board indicated that if Patent Owner now believes it would be prejudiced by the Declaration remaining in the record without Patent Owner being able to cross-examine Dr. Newton, then it may request that the Declaration be expunged.  In making this indication, the Board noted that this position had not been advanced by Patent Owner in its Opposition to Petitioner’s Motion to Expunge.  Thus, the Board 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 . . . be expunged from the record.’”

eBay Enterprise, Inc. and eBay Inc. v. Lawrence B. Lockwood, CBM2014-00025
Paper 37: Order on Conduct of the Proceeding
Dated: August 20, 2014
Patent: 7,010,508
Before: Michael W. Kim, and Benjamin D. M. Wood
Written by: Wood