Takeaway: Any ex parte communication between Patent Owner and Petitioner’s expert outside the presence of counsel is wholly inappropriate.

In its Decision, the Board authorized Petitioner to file a motion for sanctions against Patent Owner. Also, the Board prohibited Patent Owner from contacting Petitioner’s expert, Dr. Sadeh, without prior Board authorization.

Petitioner had requested permission to file a motion for sanctions against Patent Owner in view of what was characterized as “Patent Owner’s ex parte communication with and harassment of Petitioner’s expert, Dr. Normal Sadeh.” In support of this request, Petitioner had provided the Board with a copy of any email from Patent Owner to Dr. Sadeh, in which Patent Owner had purportedly threatened “to use Dr. Sadeh’s cross-examination testimony . . . to publicly shame Dr. Sadeh and file baseless legal actions, if Dr. Sadeh does not withdraw his testimony.”

Petitioner had further noted that the email in question had caused Dr. Sadeh to feel threatened and harassed, that Petitioner was relying heavily on Dr. Sadeh’s testimony in this proceeding, and that it was too late to find a timely replacement for Dr. Sadeh. Thus, Petitioner had requested that the Board compel Patent Owner to cease contact with Dr. Sadeh, and that the Board sanction Patent Owner (e.g., by treating Dr. Sadeh’s testimony as unrebutted fact or by expunging various papers of records).

Patent Owner’s counsel responded to these Petitioner positions by indicating that it was not aware of the email in question, and that sanctions were not appropriate. It was the position of Patent Owner’s counsel that the referenced email was not a harassing communication because it merely communicated an intention to take appropriate legal action. Thus, Patent Owner asserted that a motion to exclude was more appropriate than a motion for sanctions at this point.

The Board agreed with Petition that ex parte communications between Patent Owner and Petitioner’s expert in the absence of counsel were not appropriate. Thus, the Board prohibited Patent Owner to from contacting Petitioner’s expert, Dr. Sadeh, without prior Board authorization, and authorized Petitioner to file a motion for sanctions against Patent Owner.

Square, Inc. v. Think Computer Corporation. CBM2014-00159
Paper 24: Order on Conduct of Proceeding Dated: July 7, 2015
Patents: 8,396,808 B2
Before: Michael W. Kim and Bart A. Gerstenblith
Written by: Kim