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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`CHANEL, INC.,
`Petitioner,
`v.
`MOLO DESIGN, LTD.,
`Patent Owner.
`
`
`Case IPR2021-00543
`U.S. Patent 9,689,161
`
`
`
`PATENT OWNER MOLO DESIGN LTD.’S
`RESPONSE
`
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`1
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`

`

`Case IPR2022-00545
`U.S. Patent No. 9,689,161
`
`
`
`I. 
`II. 
`
`V. 
`
`TABLE OF CONTENTS
`INTRODUCTION ......................................................................................... 10 
`BACKGROUND ........................................................................................... 12 
`A. 
`Background ......................................................................................... 12 
`III.  OVERVIEW OF THE ‘161 PATENT .......................................................... 15 
`IV.  CLAIM CONSTRUCTION .......................................................................... 17 
`Petitioner’s Advancement of Claim Constructions Positions that
`A. 
`it Contends are Legally Erroneous Fails to Meet its Burden .............. 17 
`The Board’s Guidance on “Freestanding” .......................................... 19 
`B. 
`THE CHALLENGED CLAIMS ARE NOT INVALID ............................... 20 
`A.  None of the References Cited for Ground 1 Teach the Claimed
`“extensible wall” that forms “at least a substantially straight
`freestanding wall configuration, whilst maintaining its vertical
`extent”.................................................................................................. 22 
`B.  None of the References Cited for Ground 2 Render Obvious the
`Claimed “extensible wall” that forms “at least a substantially
`straight freestanding wall configuration, whilst maintaining its
`vertical extent” .................................................................................... 26 
`Petitioner’s obviousness conclusions are not based on
`1. 
`images from the SoftHousing references and are not
`representative of the conclusions of a POSITA ........................ 28 
`A POSITA Would Not Interpret The Figures in The ‘161
`Patent as Supporting Petitioner’s position ................................ 33 
`Petitioner provides no evidence or reasoning for
`modifying the SoftHousing references .................................... 34 
`The disclosure of fastenings in SoftHousing III do not
`support Petitioner’s alleged interpretation of the
`SoftHousing references by a POSITA ...................................... 35 
`C.  None of the References Cited for Ground 2 Render Obvious
`Claim 2 ................................................................................................ 37 
`
`2. 
`
`3. 
`
`4. 
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`Case IPR2022-00545
`U.S. Patent No. 9,689,161
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`
`
`1. 
`
`Petitioner’s obviousness conclusions are not based on
`images from the SoftHousing references and are not
`representative of the conclusions of a POSITA ........................ 37 
`D.  None of the References Cited for Ground 2 Render Obvious
`Dependent Claim 4 .............................................................................. 38 
`None of the References Cited for Ground 2 Render Obvious
`Dependent Claims 3, 5-10, 12, 14, and 18 .......................................... 41 
`None of the References Cited for Ground 3 teach the Claimed
`“extensible wall” that forms “at least a substantially straight
`freestanding wall configuration, whilst maintaining its vertical
`extent”.................................................................................................. 42 
`G.  None of the References Cited for Ground 4 Render Obvious the
`Claimed “”extensible wall” that forms “at least a substantially
`straight freestanding wall configuration, whilst maintaining its
`vertical extent” .................................................................................... 44 
`H.  None of the References Cited for Ground 4 Render Obvious
`Independent Claim 2 ........................................................................... 46 
`None of the References Cited for Ground 4 Render Obvious
`Dependent Claim 4 .............................................................................. 47 
`None of the References Cited for Ground 4 Render Obvious
`Dependent Claims 3, 5-10, 12, 14, and 18 .......................................... 47 
`K.  None of the References Cited for Ground 5 Render Obvious the
`Claimed “a longitudinally flexible and extensible wall “ having
`“at least two vertical supports …”....................................................... 47 
`None of the References Cited for Ground 5 Render Obvious
`Dependent Claims 20-21 ..................................................................... 53 
`M.  None of the References Cited for Ground 5 Render Obvious the
`Claimed “at least two articles … stacked vertically on top of
`each other to form a stack” and each article having “at least two
`vertical support structures” in Claims 23 and 27 ................................ 54 
`N.  None of the References Cited for Ground 5 Render Obvious
`Dependent Claims 24-26 ..................................................................... 58 
`
`E. 
`
`F. 
`
`I. 
`
`J. 
`
`L. 
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`Case IPR2022-00545
`U.S. Patent No. 9,689,161
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`VI.  THERE ARE STRONG OBJECTIVE INDICA OF
`NONOBVIOUSNESS THAT DEMONSTRATE THE
`PATENTABILITY OF THE CHALLENGED CLAIMS ............................. 58 
`A. 
`Softwall Products Practice The Claims ............................................... 59 
`B. 
`The Industry Praised the Softwall product, which resides in the
`Museum of Modern Art (MOMA) ...................................................... 63 
`Softwall Products Have Achieved Commercial Success .................... 65 
`C. 
`Copying of Softwall Products by Petitioner and Others ................... 69 
`D. 
`The Claimed Invention Fulfilled a Long-Felt Need ............................ 71 
`E. 
`VII.  CONCLUSION .............................................................................................. 73 
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`Case IPR2022-00545
`U.S. Patent No. 9,689,161
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`
`
`
`Cases
`
`TABLE OF AUTHORITIES
`
`
`
`Page(s)
`
`Amgen Inc. v. Hoechst Marion Roussel, Inc.,
`314 F.3d 1313 (Fed. Cir. 2003)................................................................................................19
`
`Apple Inc. v. Samsung Elecs. Co.,
`839 F.3d 1034 (Fed. Cir. 2016)....................................................................................61, 63, 69
`
`In re Aslanian,
`590 F.2d 911 (CCPA 1979) .....................................................................................................28
`
`Belden Inc. v. Berk-Tek, LLC,
`805 F.3d 1064 (Fed. Cir. 2015)..........................................................................................28, 45
`
`Cable Elec. Prods., Inc. v. Genmark, Inc.,
`770 F.2d 1015 (Fed. Cir. 1985)................................................................................................67
`
`In re Chu,
`66 F.3d 292 (Fed. Cir. 1995)....................................................................................................40
`
`Crocs, Inc. v. Int'l Trade Comm'n,
`598 F.3d 1294 (Fed. Cir. 2010)..........................................................................................63, 68
`
`Demaco Corp. v. F. Von Langsdorff Licensing Ltd.,
`851 F.2d 1387 (Fed. Cir. 1988)................................................................................................63
`
`Diamond Rubber Co. v. Consol. Tire Co.,
`220 U.S. 428 (1911) .................................................................................................................67
`
`Dominion Dealer Sols., LLC v. AutoAlert, Inc.,
`IPR2014-00684, 2014 WL 5035359 (P.T.A.B. Oct. 6, 2014) .................................................32
`
`Finisar Corp. v. Direct TV Group, Inc,
`523 F.3d 1323 (Fed. Cir. 2008)................................................................................................23
`
`Geo. M. Martin Co. v. Alliance Mach. Sys. Intern. LLC,
`618 F.3d 1294 (Fed. Cir. 2010)................................................................................................61
`
`In re GPAC Inc.,
`57 F.3d 1573 (Fed. Cir. 1995)............................................................................................63, 68
`
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`Case IPR2022-00545
`U.S. Patent No. 9,689,161
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`
`ipDataTel, LLC et al. v. ICN Acquisition,
`IPR2018-01822, Paper No. 19 (PTAB Apr. 22, 2019) ......................................................18, 19
`
`Ex Parte Maeda,
`No. APPEAL 2010-009814, 2012 WL 5294326 (B.P.A.I. Oct. 23, 2012) .............................40
`
`In re Magnum Oil Tools Int’l, Ltd.,
`829 F.3d 1364 (Fed. Cir. 2016)..........................................................................................28, 45
`
`Merck & Co. v. Teva Pharm. USA, Inc.,
`395 F.3d 1364 (Fed. Cir. 2005)................................................................................................63
`
`OrthoPediatrics Corp. v. K2M, Inc.,
`IPR2018-01546, Paper No. 10 (PTAB Feb. 14, 2019) ................................................18, 19, 20
`
`OrthoPediatrics,
`IPR2018-01546 ........................................................................................................................19
`
`Panduit Corp. v. Dennison Mfg. Co.,
`810 F.2d 1561 (Fed. Cir. 1985)................................................................................................67
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) (en banc) ................................................................................17
`
`Polaris Indus., Inc. v. Artic Cat, Inc.,
`882 F.3d 1056 (Fed. Cir. 2018)..........................................................................................57, 67
`
`Richardson v. Suzuki Motor Co.,
`868 F.2d 1226 (Fed. Cir. 1989)................................................................................................23
`
`Skechers U.S.A., Inc. v. Nike, Inc.,
`IPR2016-00870, 2016 WL 7051431 ........................................................................................32
`
`Specialty Composites v. Cabot Corp.,
`845 F.2d 981 (Fed. Cir. 1988)..................................................................................................67
`
`TQ Delta v. CISCO Sys., Inc.,
`942 F.3d 1352 (Fed. Cir. 2019)....................................................................................24, 27, 43
`
`Transocean Offshore Deepwater Drilling, Inc. v. Maersk Drilling USA, Inc.,
`699 F.3d 1340 (Fed. Cir. 2012)................................................................................................67
`
`Verdegaal Bros. v. Union Oil Co. of California,
`814 F.2d 628 (Fed. Cir. 1987)..................................................................................................23
`
`WBIP, LLC v. Kohler Co.,
`829 F.3d 1317 (Fed. Cir. 2016)..........................................................................................56, 57
`
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`Case IPR2022-00545
`U.S. Patent No. 9,689,161
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`
`Yeda Rsch. v. Mylan Pharms. Inc.,
`906 F.3d 1031 (Fed. Cir. 2018)................................................................................................32
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`Case IPR2022-00545
`U.S. Patent No. 9,689,161
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`
`
`Exhibit No.
`2001
`
`2002
`
`2003
`
`2004
`
`2005
`
`2006
`2007
`2008
`2009
`2010
`
`2011
`
`2012
`2013
`2014
`2015
`2016
`2017
`
`EXHIBIT LIST
`
`Description of Exhibit Document
`Joint Disputed Claim Terms Chart, filed in
`Molo Design Ltd. v. Chanel, Inc., No 21-cv-
`1578 (S.D.N.Y.), dated September 24, 2021
`(Dkt. No. 38)
`Defendant Chanel, Inc.’s Claim Construction
`Brief, filed in Molo Design Ltd. v. Chanel,
`Inc., No 21-cv-1578 (S.D.N.Y.), dated
`November 30, 2021 (Dkt. No. 43)
`Plaintiff Molo Design Ltd.’s Notice Regarding
`Chanel’s Supplement Claim Construction
`Positions, filed in Molo Design Ltd. v. Chanel,
`Inc., No 21-cv-1578 (S.D.N.Y.), dated
`February 18, 2022 (Dkt. No. 51)
`Chanel’s Response to Molo’s Supplemental
`Claim Construction Statement, filed in Molo
`Design Ltd. v. Chanel, Inc., No 21-cv-1578
`(S.D.N.Y.), dated February 25, 2022 (Dkt. No.
`54)
`Pedersen, Martin C, “The Soft House,”
`Metropolis Magazine (Jul. 2004)
`Affidavit of Stephanie Forsythee
`Affidavit of Todd MacAllen
`US7866366
`Curriculum Vitae of Alan Ball
`Declaration of Alan Ball in support of Patent
`Owner’s Preliminary Response
`Transcript of deposition of Lance Rake, taken
`December 20, 2022
`
`Molo softwall Product Webpage (2005)
`Molo softwall Product Webpage (2005)
`Molo softwall Product Webpage (2005)
`Molo softwall Product Webpage (2005)
`Molo softwall Product Webpage (2005)
`Molo softwall Product Webpage (2005)
`
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`Case IPR2022-00545
`U.S. Patent No. 9,689,161
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`
`
`2018
`
`2019
`2020
`2021
`
`2022
`
`2023
`
`2024
`2025
`
`2026
`2027
`
`2028
`
`2029
`2030
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`2031
`
`2032
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`
`
`
`
`Letter from Museum of Modern Art to
`Stephanie Forsythe (2005)
`Moma.org webpage (2005)
`The Index Project webpage (2005)
`Email from Evelyn Lacson To Stephanie
`Forsythe (2023)
`Years of Emerging Voices - The Architectural
`League of New York - Princeton Architectural
`Press (2021)
`MoMA PS1 Young Architects Program (YAP)
`Competition (2005)
`Azure Magazine - A-Z Awards (2011)
`Best of NeoCon - Gold Award Architectural
`products for softwall + softblock modular
`system (2014)
`AIT Award - Retail Trend for softwall (2014)
`ADEX Awards Certificate - Molo Design-
`Gold-softwall + softblock modular system
`(2015)
`FRAME Magazine Award at Orgatec
`Germany (2018)
`Affidavit of Leo Lubke (2021)
`Molo Clients – See Brands we Worth (Google
`Cache of https://molodesign.com/clients/)
`MUSEUMS & ART GALLERIES that have
`acquired molo products
`Complaint filed in Molo Design Ltd. v.
`Chanel, Inc., No 21-cv-1578 (S.D.N.Y.), dated
`February 22, 2021 (Dkt. No. 1 2031)
`
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`Case IPR2022-00545
`U.S. Patent No. 9,689,161
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`
`I.
`
`INTRODUCTION
`This bulk of this case can be resolved by addressing one question—whether
`
`any of the Petitioner’s cited references disclose a structure that forms a “substantially
`
`straight freestanding wall configuration” while “maintaining its vertical extent.” The
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`answer to this question is a resounding No.
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`Critically, there is no dispute that the cited references fail to provide any
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`textual description of the recited “substantially straight freestanding wall
`
`configuration”—during a recent deposition, Plaintiff’s own expert admitted as
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`much. Instead, for the majority of recited grounds, Petitioner simply cites pictures
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`from various references, points to something in the picture that it self-servingly
`
`labels a “freestanding,” and declares that the claim element must be present. But,
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`critically, nothing in any of these pictures demonstrates that the various portions
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`identified by Petitioner are both “freestanding” as the claims explicitly require. In
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`contrast, in many cases the pictures illustrate a structure that must either be fixed to
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`a wall of a building or be held up by an individual person to prevent it from falling.
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`And in other cases, the structures are shown flopped over and with the ends lying
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`flat on the floor. As such, nothing in these pictures teaches or suggests the claimed
`
`a “freestanding” configuration that maintains “its vertical extent.”
`
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`U.S. Patent No. 9,689,161
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`Compounding this deficiency is the fact that, in Grounds 1 and 2, Petitioner
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`does not rely on the actual pictures found in the primary references themselves.
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`Instead, Petitioner cites and annotates enlarged, high-resolution pictures that it only
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`obtained during discovery in the co-pending district court case. But as Petitioner’s
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`expert admits, these pictures were used because he needed “better images” than
`
`those provided in the references cited for Grounds 1 and 2. Critically, Petitioner has
`
`made no attempt to demonstrate that these higher resolution images were available
`
`to a Person of Ordinary Skill in the Art (“POSITA”) at the time the application for
`
`the 161 patent was filed. Nor has Petitioner attempted to show that any conclusions
`
`based on these enhanced images are representative of conclusions that a POSITA
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`would have drawn from the actual pictures shown in the references themselves. For
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`this additional reason, Grounds 1 and 2 fail.
`
`Even if the numerous legal and factual flaws in Petitioner’s assertions of
`
`obviousness were ignored, Petitioner’s grounds would still fail because there is
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`substantial objective evidence of nonobviousness. The features of the claims form
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`the heart of Patent Owner’s industry changing softwall products. As set forth below,
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`softwall has received overwhelming
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`industry praise, achieved substantial
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`commercial success, and seen numerous instances of copying. Thus, even if
`
`Petitioner’s attempt to cobble together all the claim elements from a medley of
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`U.S. Patent No. 9,689,161
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`different references was accepted, Petitioner’s objective evidence strongly
`
`demonstrates the patentability of the claimed invention.
`
`II. BACKGROUND
`A. Background
`Molo Design, Ltd. (“Molo”) is a design and production studio, based in
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`Vancouver, Canada, that is led by Stephanie Forsythee and Todd MacAllen. Ms.
`
`Forsythee and Mr. MacAllen first began working together in architecture school,
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`going on to win a number of accolades for design projects and conceptual ideas,
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`including the Grand Prize in the Aomori Northern Style Housing Competition in
`
`Japan. Throughout their careers, Ms. Forsythee and Mr. MacAllen have also been
`
`inspired by the concept of smaller, tactile objects having true potency in the
`
`experience of space. Drawing on these experiences, Ms. Forsythee and Mr.
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`MacAllen formed Molo to explore how furniture can heighten the sense of human
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`scale and experience, as well as how furniture and product design can benefit from
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`thinking in the larger context of place and space making. Molo follows these
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`principles in making a variety of products that are balanced between the realms of
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`art, design, and architecture. Among other products, Molo makes award-winning
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`flexible space partitions—known as softwall + softblock products—that exemplify
`
`its exploration of experiential space making. Examples of these products are
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`discussion in Section VII supra.
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`U.S. Patent No. 9,689,161
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`Thanks to Ms. Forsythee’s and Mr. MacAllen’s constant search for innovation
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`and remarkable creativity, Molo has collected, in the almost two decades since its
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`foundation, an impressive list of orders, successes and awards. Molo’s designs have
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`been recognized in the design industry for their poetic beauty and pragmatic
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`innovation. Among other accolades, Molo has been honored with the prestigious
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`Danish INDEX Award 2005; the Emerging Voices Award from The Architectural
`
`League of New York 2010; the Design Vanguard Award from Architectural Record
`
`Magazine 2010; and recognition from the Museum of Modern Art (MoMA) in New
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`York City that has acquired several Molo products for their permanent collection,
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`including softwall. Leading retailers and design companies, including Louis Vuitton,
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`Apple, and Hermes, recognize Molo’s design and innovation and all three have been
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`ongoing, regular clients of Molo for more than a decade purchasing Molo’s softwall
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`+ softblock products.. United States based clients that have also purchased Molo
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`softwall + softblock products include at least Apple, Nike, Estee Lauder, Levi
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`Strauss & Co, Calvin Klein, Diane von Furstenberg, Tommy Hilfiger, Vanity Fair,
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`Condé Nast, NASA, The Smithsonian, MasterCard, Google, Facebook, Instagram,
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`and Ebay. Molo’s softwall + softblock products can also be seen in retail settings,
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`showrooms, commercial spaces, offices and exhibitions across the world, including
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`in New York, Chicago, Las Vegas, Austin, Detroit, Los Angeles, San Francisco,
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`U.S. Patent No. 9,689,161
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`Toronto, Vancouver, Paris, Barcelona, Milan, Berlin, London, Copenhagen
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`Shanghai, and Tokyo.
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`
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`In light of the visible commercial success of Molo’s products, in 2014 a
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`Chanel employee expressed interest in Molo’s collection, including its softwall +
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`softblock products. Subsequently, in 2016, one of Chanel’s executive directors
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`visited Molo at the International Contemporary Furniture Fair (“ICFF”) in New
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`York City. The following year, the same executive director ordered samples of
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`Molo’s softwall + softblock product.
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`Subsequently, Chanel retained two third-party companies—one in the U.S.
`
`and one in Europe—to prepare window displays for an upcoming advertising
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`campaign. These companies entered into discussions with Molo regarding
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`supplying softwall + softblock products, during which time Molo provided
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`extensive information regarding the products. After receiving this information, these
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`companies informed Molo that Chanel intended to use another supplier. Notably,
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`during these discussions, Molo expressly informed Chanel’s agents that its products
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`were patented. Nonetheless, in or around February 2021, Molo became aware that
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`Chanel stores in the United States—including multiple stores in New York City—
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`had installed displays using materials that copied its patented softwall + softblock
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`products.
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`U.S. Patent No. 9,689,161
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`III. OVERVIEW OF THE ‘161 PATENT
`The ’161 Patent is directed to articles of flexible furniture having “a core from
`
`a plurality of laminar panels of a flexible flaccid material.” See, e.g., Ex. 1001, 1:35-
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`37. In particular, the ’161 Patent recognizes that furniture used to divide space, such
`
`as partitions, is rigid or has a rigid frame; consequently, such furniture is “large,
`
`heavy, and cumbersome,” and difficult to “set-up, take down, store, and transport.”
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`As the ’161 patent explains, this inherent rigidity limits the extent to which
`
`such furniture “can be dynamically resized (extended or contracted) and reshaped to
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`suit varying spaces and requirements, or readily moved around for relocation, or
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`storage.” Id. at 1:42-46. For example, in many environments, it is desirable to
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`“subdivide and reshape space on a temporary basis,” id. At 52-54, such as a “window
`
`display in a retail setting [or] in a showroom.” Id. at 59-63. In these settings, rigid,
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`heavy, and cumbersome furniture components “may be costly to transport, difficult
`
`to set up/take down, and may require significant storage space.” Id. at 63-65. These
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`limitations “place significant constraints on the ways in which a given space can be
`
`partitioned” and limit the functionality of the space. Id. at 1:66-2:3.
`
`The ’161 Patent describes a “freestanding extensible wall for partitioning an
`
`area of a room” and claims an “assembly of walls or partitioning an area of a room,”
`
`a “method for partitioning an area of a room,” a “longitudinally flexible and
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`Case IPR2022-00545
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`extensible wall for partitioning an area of a room,” and a “kit of parts” having a wall
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`or articles of flexible furniture. Id. at Claims 1-2 and 22-27. Each “wall” or “article
`
`of flexible furniture” includes a core formed from laminar panels and having
`
`supports at the opposite ends of the core. Id. at 2:8-11. As noted by the Board, the
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`core is a cellular structure that may be opened to expand the core. Decision (Paper
`
`9), pp. 2-3. The expanded partition has a width and “rigidity provided by the end
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`supports” to “remain stable in a vertical position” (i.e., “freestanding”). Ex 1001,
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`5:26-28. This functionality is illustrated in Figures 4(d) and 4(e) of the ’161 Patent:
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`Id. at Figure 4. The supports also permit partitions to be joined “end-to-end” (in
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`seriatim). Id. at 5:49-59; Fig. 6.
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`Case IPR2022-00545
`U.S. Patent No. 9,689,161
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`IV. CLAIM CONSTRUCTION
`The Patent Office’s policy is to give the claims of a duly granted patent in a
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`review the same claim construction standard that would be used in a civil action, as
`
`set forth in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). See 37
`
`C.F.R. § 42.100(b). Under this standard, claim terms generally are construed in
`
`accordance with their ordinary and customary meaning, as would have been
`
`understood by a person of ordinary skill in the art, in view of the specification and
`
`the prosecution history pertaining to the patent at issue. See id. The ordinary and
`
`customary meaning of a claim term “is its meaning to the ordinary artisan after
`
`reading the entire patent,” and “as of the effective filing date of the patent
`
`application.” Phillips, 415 F.3d 1303 at 1313, 1321.
`
`A.
`
`Petitioner’s Advancement of Claim Constructions Positions that it
`Contends are Legally Erroneous Fails to Meet its Burden
`Petitioner has the burden to establish how a challenged claim should be
`
`construed and apply the construed limitations to the cited art. See 37 C.F.R. §
`
`42.104(b)(3). As Patent Owner previously explained, Petitioner has advanced
`
`multiple claim constructions arguments that directly conflict with Petitioner’s
`
`arguments in the co-pending district court litigation. Patent Owner’s Preliminary
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`Response (Paper 6), pp. 4-14. Petitioner’s assertion that none of the claim terms
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`Case IPR2022-00545
`U.S. Patent No. 9,689,161
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`require construction—is both “improper” and invites reversible “legal error.” Id. at
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`11.
`
`First Petitioner contends that the terms “end panels” and “operable” need not
`
`be construed. Petition (Paper 1), p. 22. This position directly conflicts with
`
`Petitioner’s claim constructions advanced in the district court proceeding. Patent
`
`Owner’s Preliminary Response, pp. 6-8. Indeed, Petitioner represented to the district
`
`court that “failing to issue a construction, or issuing a ‘plain and ordinary meaning’
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`construction” for the term “supports” is both “improper” and invites “legal error.”
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`Ex. 2002. p. 26. Importantly, by “failing to reconcile the proffered construction in
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`the Petition with its very different construction before the district court”—and
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`advancing positions that it alleges are legally erroneous—Petitioner “fails to satisfy
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`[its] burden” to identify how the challenged claims are to be construed and applied
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`to the prior art. OrthoPediatrics Corp. v. K2M, Inc., IPR2018-01546, Paper No. 10
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`at 12 (PTAB Feb. 14, 2019); ipDataTel, LLC et al. v. ICN Acquisition, IPR2018-
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`01822, Paper No. 19 at 13-14 (PTAB Apr. 22, 2019).
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`Second, Petitioner asserts that the Board need not construe “flaccid,” arguing
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`that it would be “readily apparent” to a person of ordinary skill if a structure was
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`made from flaccid material. Petition (Paper 1), pp. 22, 38. However, in the district
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`court proceeding, Petitioner alleged this claim term to be indefinite. Ex. 2002, p. 16.
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`By failing to reconcile these positions, Petitioner has not met its burden to
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`demonstrate how the terms should be construed as required by the Board’s
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`regulations. ipDataTel, IPR2018-01822, Paper No. 19 at 13-14; see also
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`OrthoPediatrics, IPR2018-01546.
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`As shown above, Petitioner’s claim construction positions on several terms
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`are more than an elaboration of the final position taken in the district court
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`proceeding. Decision (Paper 7), p. 6. Claims are to be construed “the same way for
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`both invalidity and infringement.” Amgen Inc. v. Hoechst Marion Roussel, Inc., 314
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`F.3d 1313, 1330 (Fed. Cir. 2003). Here, Petitioner has taken positions that are
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`demonstrably different than those taken in the district court proceeding—in which
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`Petitioner explicitly or implicitly admits are directly relevant to validity. Ex. 2002 at
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`6-8, 16. By failing to reconcile these contradictory positions, Petitioner has failed to
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`meet its burden to demonstrate how the challenged claims should be construed and
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`applied to the identified references. ipDataTel, IPR2018-01822, Paper No. 19 at 13-
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`14; OrthoPediatrics, IPR2018-01546, Paper No. 10 at 12.
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`B.
`The Board’s Guidance on “Freestanding”
`In the Institution Decision, the Board applied the proper legal framework for
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`claim construction and determined that “freestanding” means “standing alone free
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`of support of attachment.” Decision, p. 11. Patent Owner does not dispute the
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`Board’s determination and has applied the Board’s interpretation of “freestanding”
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`as basis for the arguments set forth herein.
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`The Board recognized that SoftHousing I is “not a model of clarity” but
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`believed the disclosure sufficient to satisfy the threshold for institution. Id. The
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`Board correctly noted that all three SoftHousing references disclose the same general
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`design and substantially overlap, albeit with varying grades of image quality
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`between each reference. With regard to Grounds 3 and 4, the Board noted that
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`“SoftWall describes the same wall configuration as SoftHousing I–III” and referred
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`to this wall configuration in the brief discussion of Patent Owner’s preliminary
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`arguments. Id. at p. 16. With regard to Ground 5, the Board agreed with Petitioner
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`that the modification of MacAllen to incorporate the teachings of Stratton, Fischer,
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`and Reisenthel, is “nothing more than the predictable use of known elements
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`according to their established function.” Id. at p. 17.
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`V. THE CHALLENGED CLAIMS ARE NOT INVALID
`Challenged claim 1 of the ’161 Patent recites:
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`1. An assembly of walls for partitioning an area of a room, the assembly
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`comprising: at least a first freestanding extensible wall and a second
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`freestanding extensible wall, each one of said first and said second
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`walls having a base, a top, oppositely directed surfaces extending
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`between said base and said top, said base, top and surfaces defining a
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`core, said core comprising a cellular structure having multiple voids
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`extending from said base to said top upon movement of said oppositely
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`directed surfaces away from each other, said base having a width of at
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`least 10 centimeters and placed on a floor, and said core having a height
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`of at least 1 meter, whereby opposite ends of said core may be moved
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`apart to expand said cellular structure and extend the length of said
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`core and to form at least a substantially straight freestanding wall
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`configuration, whilst maintaining its vertical extent; and said first and
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`said second walls are arranged in seriatim with an opposite end of said
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`first wall adjacent to and in abutment with an opposite end of said
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`second wall, and at least one fastener is positioned at said opposite end
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`of said first wall and at said opposite end of said second wall to
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`releasably secure said opposite ends to one another.
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`Challenged claim 2 of the ’161 patent recites:
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`A method for partitioning an area of a room, the method
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`comprising: positioning an extensible wall in the area of said room,
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`said wall having a base, a top, oppositely directed surfaces extending
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`between said base and said top, said base, top and surfaces defining a
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`core, said core comprising a cellular structure having multiple voids
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`extending from said base to said top upon movement of said oppositely
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`directed surfaces away from each other, said base having a width of at
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`least 10 centimeters and said core having a height of at least 1 meter;
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`placing said base on a floor of said room, and moving opposite ends of
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`said core apart to expand said cellular structure and extend the length
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`of said core and to form at least a substantially straight freestanding
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`wall configuration, whilst maintaining its vertical extent.
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`Ex. 1001, claims 1-2 (emphasis added). Critically, none of the references cited in
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`any of Petitioner’s proposed grounds teach or suggest an “extensible wall” that is “at
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`least a substantially straight freestanding wall configuration, whilst maintaining its
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`vertical extent.” Instead, as explained below, Petitioner relies entirely on conclusory
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`expert testimony to assume that these elements must be present. Because these
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`assumptions fall far short of meeting Petitioner’s burden to prove invalidity, the
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`Petition fails.
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`A. None of the References Cited for Ground 1 Teach the Claimed
`“extensible wall” that forms “at least a substantially straight
`freestanding wall configuration, whilst maintaining its vertical
`extent”
`Ground 1 of the petition relies on SoftHousing I to anticipate indepe