IN THE UNITED STATES DISTRICT COURT
`FOR THE SOUTHERN DISTRICT OF NEW YORK
`
`
`
`
`Civil Action No. 21-CV-1578 (VEC)
`
`
`
`
`MOLO DESIGN, LTD.,
`
`
`Plaintiff,
`
`
`v.
`
`CHANEL, INC.,
`
`
`Defendant.
`
`
`
`
`
`
`
`PLAINTIFF’S DISCLOSURE OF ASSERTED
`CLAIMS AND INFRINGEMENT CONTENTIONS
`
`Pursuant to Local Patent Rule 6 and the Court’s Civil Case Management Plan and
`
`Scheduling Order (“CMP,” ECF 27), Plaintiff Molo Design, Ltd. (“Molo”) hereby provides the
`
`following Disclosure of Asserted Claims and Infringement Contentions (“Infringement
`
`Contentions”) to Defendant Chanel, Inc. (“Chanel” or “Defendant”).
`
`Molo provides these Infringement Contentions based upon publicly available information
`
`reasonably available to it as of this date. Discovery has just commenced and Chanel has not yet
`
`produced any documents or information regarding—or samples of—the products accused of
`
`infringement. Accordingly, Molo reserves the right to amend, modify, or supplement the
`
`disclosures set forth herein, including by identifying additional infringed claims, in light of
`
`Chanel’s document production, responses to interrogatories, admissions, disclosures, fact witness
`
`testimony, expert witness evidence, amendments to pleadings, and/or additional discovery and
`
`evidence. Molo also reserves to the right to amend, modify, or supplement the disclosures set forth
`
`herein in view of any claim construction order or other ruling issued by the Court, or for any other
`
`Petitioner Chanel, Inc. Exhibit 1036
`Page 1
`
`
`FOR THE SOUTHERN DISTRICT OF NEW YORK
`
`
`
`
`Civil Action No. 21-CV-1578 (VEC)
`
`
`
`
`MOLO DESIGN, LTD.,
`
`
`Plaintiff,
`
`
`v.
`
`CHANEL, INC.,
`
`
`Defendant.
`
`
`
`
`
`
`
`PLAINTIFF’S DISCLOSURE OF ASSERTED
`CLAIMS AND INFRINGEMENT CONTENTIONS
`
`Pursuant to Local Patent Rule 6 and the Court’s Civil Case Management Plan and
`
`Scheduling Order (“CMP,” ECF 27), Plaintiff Molo Design, Ltd. (“Molo”) hereby provides the
`
`following Disclosure of Asserted Claims and Infringement Contentions (“Infringement
`
`Contentions”) to Defendant Chanel, Inc. (“Chanel” or “Defendant”).
`
`Molo provides these Infringement Contentions based upon publicly available information
`
`reasonably available to it as of this date. Discovery has just commenced and Chanel has not yet
`
`produced any documents or information regarding—or samples of—the products accused of
`
`infringement. Accordingly, Molo reserves the right to amend, modify, or supplement the
`
`disclosures set forth herein, including by identifying additional infringed claims, in light of
`
`Chanel’s document production, responses to interrogatories, admissions, disclosures, fact witness
`
`testimony, expert witness evidence, amendments to pleadings, and/or additional discovery and
`
`evidence. Molo also reserves to the right to amend, modify, or supplement the disclosures set forth
`
`herein in view of any claim construction order or other ruling issued by the Court, or for any other
`
`Petitioner Chanel, Inc. Exhibit 1036
`Page 1
`
`
`
`reason authorized by statute, the Federal Rules of Civil Procedure, the Patent Local Rules, the
`
`Court’s orders, or applicable case law. Further, Molo reserves the right to amend, modify, or
`
`supplement the disclosures set forth herein in the event that documents regarding the accused
`
`instrumentalities are subsequently discovered.
`
`The disclosures set forth herein are not intended to be, and should not be construed as, a
`
`waiver of the attorney-client privilege, attorney work product, or any other applicable privilege or
`
`immunity.
`
`I.
`
`DISCLOSURE OF ASSERTED CLAIMS AND INFRINGEMENT CONTENTIONS
`
`Molo alleges that Chanel infringes one or more claims of the following patents: U.S. Patent
`
`Nos. 7,866,366 (“the ’366 patent”); 8,561,666 (“the ’666 patent”); 9,689,161 (“the ’161 patent”);
`
`and 9,797,134 (“the ’134 patent”) (individually an “Asserted Patent” and collectively, “the
`
`Asserted Patents”). Molo’s specific infringement allegations for the Asserted Patents are provided
`
`below.
`
`a. Each Claim of Each Asserted Patent that is Infringed by Defendant (CMP §
`7(c)(i))
`
`Based on the information currently known and reasonably available to Molo, and subject
`
`to the limitations and reservations set forth above, Molo presently alleges that the Accused
`
`Instrumentalities (as defined below) infringe the following claims of the Asserted Patents
`
`(individually an “Asserted Claim” and collectively, “the Asserted Claims”).
`
`Asserted Patent
`
`Asserted Claims
`
`The ’366 patent
`The ’666 patent
`The ’161 patent
`
`The ’134 patent
`
`1, 2, 5-7, 13, 20-23
`21-23
`2, 4-8, 10, 12, 14, 18, 19,
`20, 22
`1, 5, 6
`
`Applicable subsection of
`35 U.S.C. § 271
`35 U.S.C. § 271(a)
`35 U.S.C. § 271(a)
`35 U.S.C. § 271(a)
`
`35 U.S.C. § 271(a)
`
`-2-
`
`Petitioner Chanel, Inc. Exhibit 1036
`Page 2
`
`
`
`of any elements of the Asserted Claims where the doctrine of equivalents would alter the
`
`infringement analysis provided in the attached claim charts. Thus, without the benefit of the
`
`Court’s claim construction, Molo presently believes that Defendant’s Accused Instrumentalities
`
`literally infringe the Asserted Claims.
`
`Nonetheless, to the extent a claim element is not met literally, Molo contends that any such
`
`element would be present under the doctrine of equivalents because the Accused Instrumentalities
`
`perform substantially the same function, in substantially the same way, to achieve substantially
`
`the same result as the subject matter of the Asserted Claims. To the extent any differences are
`
`alleged to exist between the Asserted Claims and the Accused Instrumentalities, such differences
`
`are insubstantial.
`
`Discovery in this case has just commenced and Chanel has not produced any documents
`
`or information regarding the Accused Instrumentalities, samples of the Accused Instrumentalities,
`
`or non-infringement contentions from Chanel. Accordingly, Molo reserves the right to apply the
`
`doctrine of equivalents to each and every element after full discovery from Chanel or, as
`
`appropriate, in response to the Court’s construction of the asserted claims. Moreover, should
`
`Chanel contend that any element or limitation of the asserted claims is absent from the Accused
`
`Instrumentalities, Molo reserves the right to demonstrate that the allegedly missing element or
`
`limitation is present in the Accused Instrumentalities under the doctrine of equivalents.
`
`f. Identification of Priority Dates (CMP § 7(c)(vi))
`
`Molo contends that the Asserted Claims of the Asserted Patents are entitled to at least the
`
`following priority dates based on the earliest application filing dates.
`
` Asserted Claims of the ’366 patent: May 18, 2005
`
` Asserted Claims of the ’666 patent: December 23, 2008
`
`-7-
`
`Petitioner Chanel, Inc. Exhibit 1036
`Page 3
`
`
`
` Asserted Claims of the ’161 patent:
`o Claims 2, 4-8, 10, 12, 14, and 18: May 18, 2005
`o Claims 19, 20, and 22: December 23, 2009
`
` Asserted Claims of the ’134 patent: December 23, 2008
`
`Molo notes that each Asserted Claim may be entitled to an earlier priority date than the
`
`patent application filing date due to an actual conception and reduction practice prior to filing.
`
`Accordingly, Molo reserves the right present evidence that the Asserted Claims are entitled to
`
`earlier priority dates based on earlier conceptions of the claimed inventions and earlier diligent
`
`reductions to practice.
`
`g. Molo’s Products, Devices, Processes, Methods, Acts, or Other Instrumentalities
`that Incorporate or Reflect the Asserted Claims (CMP § 7(c)(vii))
`
`Molo presently identifies at least the following Molo products as practicing the following
`Asserted Claims.
`Patent-in-Suit
`
`Molo Products
`
`Claims
`
`The ’366 patent
`
`1, 2, 5-7, 13, 23
`
`20
`
`21
`
`22
`
`-8-
`
`softwall, softblock, softwall with LED,
`LED for softwall, softblock with LED,
`and LED for softblock products
`
`softwall, softblock, softwall with LED,
`LED for softwall, softblock with LED,
`and LED for softblock products with a
`height between 0.1 and 3 meters
`
`softwall, softblock, softwall with LED,
`LED for softwall, softblock with LED,
`and LED for softblock products with a
`height between 0.1 and 0.5 meters
`
`softwall, softblock, softwall with LED,
`LED for softwall, softblock with LED,
`and LED for softblock products with a
`height between 0.5 and 3 meters
`
`Petitioner Chanel, Inc. Exhibit 1036
`Page 4
`
`
`
`complaint in this action. On information and belief, Chanel’s infringement of the Asserted Patents
`
`has thus been egregious, willful, wanton, malicious, in bad faith, deliberate, consciously wrongful,
`
`and flagrant.
`
`Discovery in this case has just commenced and Chanel has not produced any documents
`
`or information regarding the Accused Instrumentalities. Accordingly, Molo reserves the right to
`
`amend its willful infringement contentions after full discovery from Chanel.
`
`II.
`
`ACCOMPANYING DOCUMENT PRODUCTION
`
`Based on information presently available to Molo, and subject to the limitations and
`
`reservations set forth above, Molo hereby produces the file histories of the Asserted Patents with
`
`this disclosure at MOLO_00000001 – MOLO_00001427.
`
`Molo’s identification and production of file histories shall not be deemed to constitute an
`
`admission as to the relevance of the information disclosed in the produced documents. Molo also
`
`does not waive its right to object to the admissibility, at trial or any other proceeding, of any
`
`document on the basis of privilege, work product immunity, relevance, or any other applicable
`
`privilege or objection. Further, Molo’s accompanying production shall not be construed as limiting
`
`or waiving Molo’s right to use or introduce any document or thing in this Action.
`
`
`
`
`
`Dated: June 14, 2021
`
`
`
`
`
`
`
`
`
`By: /s/ Conor Civins
`
`Conor Civins (pro hac vice)
`BRACEWELL LLP
`111 Congress Avenue, Suite 2300
`Austin, TX 78701
`Telephone: (512) 472-7800
`Fax: (800) 404-3970
`conor.civins@bracewell.com
`
`
`-12-
`
`Petitioner Chanel, Inc. Exhibit 1036
`Page 5
`
`
`
`Jared Schuettenhelm (pro hac vice)
`BRACEWELL LLP
`701 Fifth Avenue, Suite 6200
`Seattle, WA 98104
`Telephone: (206) 204-6200
`Fax: (800) 404-3970
`jared.schuettenhelm@bracewell.com
`
`
`Grace Condro
`BRACEWELL LLP
`1251 Avenue of the Americas, 49th Floor
`New York, NY 10020
`Tel: 212-508-6100
`Fax: 800-404-3970
`grace.condro@bracewell.com
`
`
`
` Attorneys for Plaintiff Molo Design Ltd.
`
`
`
`-13-
`
`Petitioner Chanel, Inc. Exhibit 1036
`Page 6
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on June 14, 2021, I electronically served the foregoing document via
`
`email on the following counsel for Defendant Chanel, Inc.:
`
`Bruce R. Ewing
`51 West 52nd Street
`New York, NY 10019
`(212) 415-9200
`ewing.bruce@dorsey.com
`
`Geoffrey M. Godfrey
`Columbia Center
`701 Fifth Avenue, Suite 6100
`Seattle, WA 98104
`(206) 903-8800
`godfrey.geoff@dorsey.com
`
`Shannon L. Bjorklund
`50 South Sixth Street, Suite 1500
`Minneapolis, MN 55402
`(612) 340-2600
`bjorklund.shannon@dorsey.com
`
`Dated: June 14, 2021
`
`
`
`
`
`/s/ Jared D. Schuettenhelm
`Jared D. Schuettenhelm
`
`
`
`
`
`Petitioner Chanel, Inc. Exhibit 1036
`Page 7
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
