Paper 48
`Entered: November 27, 2015
`
`Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`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 TONI R. SCHEINER, MICHAEL W. KIM, and
`BART A. GERSTENBLITH, Administrative Patent Judges.
`
`KIM, Administrative Patent Judge.
`
`
`
`ORDER
`Decision on Motion for Sanctions
`37 C.F.R. §§ 42.5, 42.12
`
`As authorized by the Board in an Order mailed July 7, 2015, Square,
`
`Inc. (“Petitioner”) filed a Motion for Sanctions Against Think Computer
`
`Corporation Under 37 C.F.R. § 42.12 on July 14, 2015. Paper 26, “Motion.”
`
`Petitioner requested authorization to file the Motion because an officer of
`
`
`Entered: November 27, 2015
`
`Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`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 TONI R. SCHEINER, MICHAEL W. KIM, and
`BART A. GERSTENBLITH, Administrative Patent Judges.
`
`KIM, Administrative Patent Judge.
`
`
`
`ORDER
`Decision on Motion for Sanctions
`37 C.F.R. §§ 42.5, 42.12
`
`As authorized by the Board in an Order mailed July 7, 2015, Square,
`
`Inc. (“Petitioner”) filed a Motion for Sanctions Against Think Computer
`
`Corporation Under 37 C.F.R. § 42.12 on July 14, 2015. Paper 26, “Motion.”
`
`Petitioner requested authorization to file the Motion because an officer of
`
`
`
`CBM2014-00159
`Patent 8,396,808 B2
`
`Patent Owner, Mr. Alan Greenspan, threatened to file purportedly baseless
`
`legal actions and publicly shame Petitioner’s expert, Dr. Norman Sadeh-
`
`Koniecpol, primarily focusing on the manner in which Dr. Sadeh presented
`
`testimony in this proceeding. Think Computer Corporation (“Patent
`
`Owner”) filed an Opposition to Petitioner’s Motion for Sanctions on July 23,
`
`2015 (Paper 28, “Opposition”), and Petitioner filed a Reply in Support of Its
`
`Motion for Sanctions on August 3, 2015 (Paper 31, “Reply”). For the
`
`reasons set forth below, Petitioner’s Motion is denied.
`
`As the party offering the Motion, the burden is on Petitioner to
`
`persuade the Board that sanctions are warranted. In general, a motion for
`
`sanctions should address three components: (i) whether a party has
`
`performed conduct that warrants sanctions; (ii) whether the moving party
`
`has suffered harm from that conduct; and (iii) whether the sanctions
`
`requested are proportionate to the harm suffered by the moving party. Cf.
`
`Ecclesiastes 9:10-11-12, Inc. v. LMC Holding Co., 497 F.3d 1135, 1143
`
`(10th Cir. 2007) (“We have identified a non-exhaustive list of factors that a
`
`district court ordinarily should consider in determining whether to dismiss
`
`an action with prejudice under Rule 41(b): (1) the degree of actual prejudice
`
`to the other party; (2) the amount of interference with the judicial process;
`
`(3) the litigant’s culpability; (4) whether the court warned the party in
`
`advance that dismissal would be a likely sanction for noncompliance; and
`
`(5) the efficacy of lesser sanctions.”). The parties mainly address factor (i)
`
`in their briefing. We deny Petitioner’s Motion, however, largely because of
`
`
`
`2
`
`
`
`CBM2014-00159
`Patent 8,396,808 B2
`
`factors (ii) and (iii); particularly, we are unable to discern harm to Petitioner
`
`sufficient to warrant sanctions at this time.1
`
`Specifically, any harm based on Mr. Greenspan’s conduct would most
`
`logically manifest itself by impacting negatively the testimony of Dr. Sadeh-
`
`Koniecpol. On these facts, however, we are unable to discern any impact on
`
`Dr. Sadeh-Koniecpol’s testimony. Among the factors that support this
`
`determination are the following: (1) Petitioner has not indicated that Dr.
`
`Sadeh-Koniecpol has withdrawn his testimony due to the conduct of Mr.
`
`Greenspan, and, indeed, Dr. Sadeh-Koniecpol has submitted a Reply
`
`Declaration (Ex. 1021) subsequent to the above-referenced actions of Mr.
`
`Greenspan, (2) the above-referenced actions of Mr. Greenspan occurred
`
`several months after the only deposition of Dr. Sadeh-Koniecpol of record in
`
`this proceeding (Ex. 2019), (3) Patent Owner did not take its opportunity to
`
`depose Dr. Sadeh-Koniecpol concerning his Reply Declaration, (4) we
`
`already have prohibited Patent Owner from contacting Dr. Sadeh-Koniecpol
`
`without prior Board authorization (Paper 24, 3), and (5) there does not
`
`appear to be any further opportunity for contact between Patent Owner and
`
`Dr. Sadeh-Koniecpol. Accordingly, in summary, there is every indication
`
`that Dr. Sadeh-Koniecpol’s testimony is squarely before the Board, that all
`
`such testimony is largely unaffected by the above-referenced actions of Mr.
`
`Greenspan, and that all such testimony will remain before the Board. On
`
`
`1 Should Patent Owner repeat such conduct, however, another factor to be
`considered may be whether any sanctions imposed would suffice “to deter
`repetition of the conduct or comparable conduct by others similarly
`situated.” See Fed. R. Civ. P. 11.
`
`
`
`3
`
`
`
`CBM2014-00159
`Patent 8,396,808 B2
`
`this record, we are unpersuaded that Mr. Greenspan’s conduct-to-date alone
`
`warrants sanctions at this time.
`
`Insofar as Petitioner is concerned that Patent Owner may conduct
`
`future actions that may cause Dr. Sadeh-Koniecpol to withdraw his
`
`testimony at a later point in time, Petitioner should bring those actions to the
`
`Board’s attention immediately if and when they occur. In any case, we have
`
`reviewed the Declarations of Dr. Sadeh-Koniecpol (Ex. 1002, 1021) as well
`
`as the transcript of his deposition (Exs. 2019, 2020). We find that the
`
`manner of Dr. Sadeh-Koniecpol’s testimony is completely in line with
`
`typical testimony before the Board, and agree with Petitioner that, absent
`
`much further elaboration and analysis (which we do not authorize at this
`
`time) Patent Owner’s line of inquiry concerning the mechanics of
`
`declaration preparation is “a waste of time, both for the witness and the
`
`Board.” Pevarello v. Lan, Patent Interference 105,394 MPT, slip op. at 19–
`
`21 (BPAI Jan. 12, 2007) (Paper 85). We agree with Petitioner also that the
`
`facts in this proceeding are very different from those set forth in Numatics,
`
`Inc. v. Balluff, Inc., No. 13-cv-11049, 2014 WL 7211167 (E.D. Mich. Dec.
`
`16, 2014), and James T. Scatuorchio Racing Stable, LLC v. Walmac Stud
`
`Mgmt., LLC, No. 5:11-cv-00374-DCR, 2014 WL 1744848 (E.D. Ky. Apr.
`
`30, 2014).
`
`IT IS ORDERED that Petitioner’s Motion is denied.
`
`
`
`
`
`
`
`4
`
`
`
`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
`
`
`
`
`
`5
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