Takeaway: If a petitioner submits a declaration with the petition and then decides not to rely upon the declaration, the petitioner can indicate such and prevent cross-examination of the deponent in cases where the declaration was not cited in the relevant portions of the petition or the decision to institute.

In its Order, the Board denied Patent Owner’s Motion to Compel Cross-Examination of Petitioner’s sole declarant in support of the Petition. The parties had agreed to deposition dates for the declarant, and one week before the deposition, Petitioner indicated that it would no longer be relying on the declaration in the proceeding and cancelled the deposition.  The Board denied Patent Owner’s Motion to Compel because, as noted by Petitioner, Petitioner cannot further rely on any statements made in the declaration.  Therefore, failure to provide the declarant for cross-examination is to the detriment of Petitioner.  Further, neither the Board nor Petitioner referred to the declaration in neither the relevant portions of the Petition nor the Decision to Institute.

Patent Owner argued that if another declaration is filed with Petitioner’s Reply, then Patent Owner will not have a chance to provide a full written response, and that it was concerned that the substance of Petitioner’s Reply and supporting declaration would exceed the proper scope of the grounds instituted by the Board in this proceeding. The Board did not see how these issues related to the cross-examination of the current declaration.  The Board also authorized Petitioner’s request to file a motion to expunge the declaration, and denied Petitioner’s request to terminate the trial because neither the relevant portions of the Petition nor the Decision to Institute referred to the declaration.

eBay Enterprises, Inc. and eBay Inc. v. Lawrence B. Lockwood, CBM2014-00025
Paper 30: Order on Conduct of the Proceeding
Dated: July 23, 2014
Patent 7,010,508
Before: Michael W. Kim and Benjamin D.M. Wood
Written by: Kim