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Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 24
`Entered: July 7, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`
`
`SQUARE, INC.,
`Petitioner,
`
`v.
`
`THINK COMPUTER CORPORATION,
`Patent Owner.
`_______________
`
`Case CBM2014-00159
`Patent 8,396,808 B2
`_______________
`
`
`
`Before MICHAEL W. KIM and BART A. GERSTENBLITH,
`Administrative Patent Judges.
`
`KIM, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of Proceeding
`37 C.F.R. § 42.5
`
`On July 2, 2015, a conference call was held between counsel
`for Petitioner and Patent Owner, as well as Judges Kim and
`Gerstenblith. During the call, Petitioner requested authorization to
`file a motion for sanctions against Patent Owner, due to Patent
`
`

`
`CBM2014-00159
`Patent 8,396,808 B2
`
`Owner’s ex parte communication with and harassment of Petitioner’s
`expert, Dr. Normal Sadeh. A copy of the email, forwarded to the
`Board by Petitioner’s counsel, addressed from Patent Owner to
`Dr. Sadeh, is attached as Exhibit 3001. Petitioner characterizes
`generally the contents of the email as a threat to use Dr. Sadeh’s
`cross-examination testimony (Ex. 2019) to publicly shame Dr. Sadeh
`and file baseless legal actions, if Dr. Sadeh does not withdraw his
`testimony.
`As a result of Patent Owner’s conduct, Petitioner asserts that
`Dr. Sadeh feels threatened, rattled, and harassed to the detriment of
`Petitioner, in that it is not entirely clear whether Dr. Sadeh will
`continue to be available to Petitioner in this proceeding. Petitioner
`relies heavily on Dr. Sadeh’s expert testimony in making its case, and
`Petitioner asserts that the case has progressed too far to find a timely
`replacement. Accordingly, Petitioner requests that (1) the Board
`assist in discontinuing contact between Patent Owner and Dr. Sadeh,
`and (2) the Board sanction Patent Owner, some options including
`(a) deem Dr. Sadeh’s testimony as unrebutted fact, and (b) expunge
`certain papers of record, for example, Dr. Sadeh’s cross-examination
`(Ex. 2019) and Mr. Greenspan’s Declaration (Ex. 2005).
`Patent Owner’s counsel responds it was not aware of the
`aforementioned email communication, and that sanctions are not
`appropriate. Patent Owner’s counsel opines that Patent Owner stands
`behind the substance of the communication, that this does not
`constitute harassment as there is nothing illegal about communicating
`an intention to take appropriate legal action, that Patent Owner’s
`
`
`
`2
`
`

`
`CBM2014-00159
`Patent 8,396,808 B2
`
`counsel is not involved with the referenced potential legal actions as
`they are outside the scope of this proceeding, and that a motion to
`exclude is a more appropriate vehicle for dealing with this situation.
`Patent Owner’s counsel concedes that direct contact between Patent
`Owner and Dr. Sadeh is not ideal, and that generally any matter
`affecting a legal proceeding should run through counsel.
`Petitioner replies that ex parte communications between a party
`and an opposing expert is inappropriate under any circumstances, that
`the threatened legal action is wholly unfounded, that a motion to
`exclude is not an appropriate vehicle for dealing with threatening
`conduct, that Dr. Sadeh’s form of testimony is typical of the form of
`testimony presented in these types of proceedings, and that these type
`of actions are ongoing and have been representative of Patent Owner’s
`conduct throughout this proceeding.
`As an initial matter, we agree that any ex parte communication
`between Patent Owner and Dr. Sadeh outside the presence of counsel
`is wholly inappropriate. We are persuaded further that additional
`briefing on the matter is warranted, given the above circumstances.
`IT IS ORDERED that Patent Owner is prohibited from
`contacting Dr. Sadeh without prior Board authorization;
`IT IS FURTHER ORDERED that Petitioner is authorized to
`file a motion for sanctions by July 14, 2015;
`IT IS FURTHER ORDERED that Patent Owner is authorized
`to file an opposition to the motion for sanctions by July 23, 2015; and
`IT IS FURTHER ORDERED that Patent Owner is authorized
`to file a reply to the motion for sanctions by August 3, 2015.
`
`
`
`3
`
`
`
`

`
`CBM2014-00159
`Patent 8,396,808 B2
`
`
`For PETITIONER:
`
`Michael T. Rosato
`Robin L. Brewer
`WILSON SONSINI GOODRICH & ROSATI, P.C.
`mrosato@wsgr.com
`rbrewer@wsgr.com
`
`For PATENT OWNER:
`
`Sean Goodwin
`Michael Aschenbrener
`ASCHENBRENER LAW, P.C.
`sgg@aschenbrenerlaw.com
`mja@aschenbrenerlaw.com
`
`
`
`
`4

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