In eBay Inc. v. Lockwood, CBM2014-00025, Paper 34, CBM2014-00026, Paper 35  (August 12, 2014) the Board denied eBay’s motion to expunge the declaration of its expert, directed to unpatenability of the prior art, which eBay claimed was unnecessary since the Board only instituted the proceeding on indefiniteness.  The patent owner objected because the expert “construed the claims and applied the cited art from the perspective of a person of skill in the art (‘POSA’), demonstrating that a POSA would understand the [metes] and bounds of the claims.”

While parties are permitted to take inconsistent positions, as a practical matter it can sometimes backfire.