Denying Petitioner’s Motion to Expunge Declaration CBM2014-00025

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Takeaway: If a petitioner argues indefiniteness in a CBM proceeding and also offers expert testimony construing the terms to support a rejection over prior art, the Board will not likely expunge the declaration even if it only institutes trial on indefiniteness because it may be prejudicial to the patent owner.

In its Order, the Board denied Petitioner’s Motion to Expunge the Declaration of its sole declarant in the proceeding. Petitioner asserted that the declaration is no longer necessary at trial because the Board only instituted the proceeding on the ground that the challenged claims are indefinite, and the declarant does not opine on indefiniteness and neither the Board nor Petitioner relied upon the declaration for indefiniteness.  Therefore, expunging the declaration will simplify and streamline the proceeding.  Patent Owner opposed the Motion arguing that because the declarant was able to construe the claims from the perspective of a person of ordinary skill in the art, that fact is germane to the issue of indefiniteness.

The Board denied Petitioner’s Motion, stating it is not persuaded that retaining the declaration in the record would be unduly confusing or otherwise burdensome for the parties or the Board. Further, expunging the declaration would prejudice Patent Owner by denying it the opportunity to argue that portions of the declarations are inconsistent with a position advanced by Petitioner.

eBay Enterprise, Inc. and eBay Inc. v. Lockwood, CBM2014-00025
Paper 34: Order on Conduct of the Proceeding
Dated: August 12, 2014
Patent 7,010,508
Before: Sally C. Medley, Michael W. Kim, and Benjamin D.M. Wood
Written by: Wood