On July 7, 2015, the Patent Trial and Appeal Board issued an order in Square, Inc. v. Think Computer Corporation, CBM2014-00159, stating that any ex parte communication between a Patent Owner and an opposing expert outside the presence of counsel is “wholly inappropriate.”
The order arose following an email communication sent from Aaron Greenspan, inventor of U.S. Patent No. 8,396,808 at issue and President/CEO of Think Computer Corporation, directly to Norman Sadeh-Koniecpol, Ph.D., a professor at Carnegie Mellon University and expert for the Petitioner.
In the email, Mr. Greenspan took issue with the fact that Dr. Sadeh-Koniecpol had admitted during testimony to writing only ten percent of the Declaration he submitted in support of Square, Inc.’s Petition for Covered Business Method Review. Mr. Greenspan noted that “the declaration was almost entirely ghostwritten by [Petitioner’s] attorneys, and you signed your name to it, all while collecting $625.00 per hour for your supposed expertise. The term “supposed” is deliberately used here because you also could not properly define the basic term ‘ACH’ despite claiming to be an expert on mobile payments.” Mr. Greenspan labeled Dr. Sadeh-Koniecpol’s actions as “detestable” and “highly unethical” further stating, “I expect that Carnegie Mellon University and Dean Andrew W. Moore in particular would join me in finding your behavior to be ethically problematic.” Mr. Greenspan concluded the email by notifying Dr. Sadeh-Koniecpol that he had 48 hours to withdraw his written testimony from the proceedings, otherwise the Patent Owner would commence legal action against Dr. Sadeh-Koniecpol personally, as well as forward the email to Dean Moore and every computer science department head at Carnegie Mellon.
The Petitioner contacted the Board and asserted that Dr. Sadeh-Koniecpol felt threatened and harassed following the email communication, to the extent that he might not continue to be available to the Petitioner. Accordingly, the Petitioner requested that the Board assist in preventing further contact between the Patent Owner and Dr. Sadeh-Koniecpol and that the Board consider sanctions against the Patent Owner, such as deeming Dr. Sadeh-Koniecpol’s testimony to be unrebutted fact and expunging certain papers of record, such as Dr. Sadeh-Koniecpol’s cross examination or Mr. Greenspan’s Declaration. The Patent Owner defended its actions, asserting that sanctions were not appropriate because it is not illegal to communicate an intent to take appropriate legal action and suggesting that a motion to exclude would be a more appropriate action for the Board to take if necessary.
The Board’s order puts Patent Owners and Petitioners on notice that all communication with opposing experts should be conducted civilly and exclusively through counsel to keep such communications from having an unintended impact on the proceedings.
Following a conference call with counsel for both sides, the Board ordered that (1) Patent Owner is prohibited from contacting Dr. Sadeh-Koniecpol without prior Board authorization, and (2) Petitioner is authorized to file a motion for sanctions, to which Patent Owner may respond. The Board’s order puts Patent Owners and Petitioners on notice that all communication with opposing experts should be conducted civilly and exclusively through counsel to keep such communications from having an unintended impact on the proceedings.