Case IPR2022-00545
`U.S. Patent No. 9,689,161
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`CHANEL, INC.,
`Petitioner,
`v.
`MOLO DESIGN, LTD.,
`Patent Owner.
`
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`Case IPR2022-00545
`U.S. Patent 9,689,161
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`PATENT OWNER MOLO DESIGN LTD.’S
`SURREPLY
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`U.S. Patent No. 9,689,161
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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 IPR2022-00545
`U.S. Patent 9,689,161
`
`
`
`PATENT OWNER MOLO DESIGN LTD.’S
`SURREPLY
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`-1-
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`Case IPR2022-00545
`U.S. Patent No. 9,689,161
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`B.
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`C.
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`TABLE OF CONTENTS
`INTRODUCTION ........................................................................................... 6
`I.
`II. GROUNDS III AND IV: SOFTWALL DOES NOT TEACH OR
`SUGGEST AN “EXTENSIBLE WALL” THAT FORMS “AT
`LEAST A SUBSTANTIALLY STRAIGHT FREESTANDING
`WALL CONFIGURATION, WHILST MAINTAINING ITS
`VERTICAL EXTENT” ................................................................................... 8
`III. GROUNDS I and II: THE SOFTHOUSING REFERENCES DO NOT
`RENDER OBVIOUS AN “EXTENSIBLE WALL” THAT FORMS
`“AT LEAST A SUBSTANTIALLY STRAIGHT FREESTANDING
`WALL CONFIGURATION, WHILST MAINTAINING ITS
`VERTICAL EXTENT” ................................................................................. 10
`Chanel misrepresents the testimony of Mr. MacAllen and Ms.
`A.
`Forsythe ............................................................................................... 10
`The other images in SoftHousing I-II do not depict
`“freestanding” structures ..................................................................... 16
`Folding the “opposite ends” of the SoftHousing structures into a
`“tubular configuration” is not an obviousness modification ............... 19
`IV. GROUND V: A POSITA WOULD NOT BE MOTIVATED TO
`COMBINE MACALLEN 2008 WITH STRATTON, FISCHER, AND
`REISENTHEL, TOLNA, AND ENDUROFENCE ...................................... 22
`CHANEL FAILS TO REBUT MOLO’S OBJECTIVE EVIDENCE
`OF NON-OBVIOUSNESS ............................................................................ 24
`A.
`Industry Praise ..................................................................................... 27
`B.
`Commercial Success............................................................................ 27
`C.
`Copying ............................................................................................... 30
`VI. CONCLUSION .............................................................................................. 32
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`V.
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`U.S. Patent No. 9,689,161
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`TABLE OF AUTHORITIES
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` Page(s)
`
`Cases
`Belden Inc. v. Berk-Tek LLC,
`805 F.3d 1064 (Fed. Cir. 2015) .......................................................................... 31
`Fox Factory, Inc. v. SRAM, LLC,
`944 F.3d 1161 (Fed. Cir. 2019) .................................................................... 24, 25
`Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd.,
`821 F.3d 1359 (Fed. Cir. 2016) .......................................................................... 21
`Ex parte Jellá,
`90 U.S.P.Q. 2d 1009 (BPAI 2008) ..................................................................... 30
`Ex Parte Maeda,
`No. APPEAL 2010-009814, 2012 WL 5294326 (B.P.A.I. Oct. 23,
`2012) ................................................................................................................... 20
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) .......................................................................... 10
`W.L. Gore & Associates, Inc. v. Garlock, Inc.,
`721 F.2d 1540 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984) .................. 11
`Wasica Fin. GmbH v. Cont’l Auto. Sys., Inc.,
`853 F.3d 1272 (Fed. Cir. 2017) .......................................................................... 21
`WBIP, LLC v. Kohler Co.,
`829 F.3d 1317 (Fed. Cir. 2016) .......................................................................... 24
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`U.S. Patent No. 9,689,161
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`Exhibit No.
`2001
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`2002
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`2003
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`2004
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`2005
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`2006
`2007
`2008
`2009
`2010
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`2011
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`2012
`2013
`2014
`2015
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`EXHIBIT LIST
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`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 Forsythe
`Affidavit of Todd MacAllen
`US Patent No. 7,866,366
`Curriculum Vitae of Alan Ball
`Declaration of Alan Ball in support of Patent
`Owner’s Response
`Transcript of deposition of Lance Rake, taken
`December 20, 2022
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`Molo softwall Product Webpage (2005)
`Molo softwall Product Webpage (2005)
`Molo softwall Product Webpage (2005)
`Molo softwall Product Webpage (2005)
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`2016
`2017
`2018
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`2019
`2020
`2021
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`2022
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`2023
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`2024
`2025
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`2026
`2027
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`2028
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`2029
`2030
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`2031
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`2032
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`2033
`2034
`2035
`2036
`2037
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`Molo softwall Product Webpage (2005)
`Molo softwall Product Webpage (2005)
`Letter from Museum of Modern Art to
`Stephanie Forsyth (2005)
`Moma.org webpage (2005)
`The Index Project webpage (2005)
`Email from Evelyn Lacson To Stephanie
`Forsyth (2023)
`Years of Emerging Voices - The Architectural
`Laugue 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)
`Declaration of Conor M. Civins
`Email from Tran Vinh to molostore.com
`Email from Victoria Megans to Tran Vinh
`Email from Tran Vihn to Victoria Megans
`Email from Victoria Megans to Tran Vinh
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`Case IPR2022-00545
`U.S. Patent No. 9,689,161
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`I.
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`INTRODUCTION
`As explained herein, and in the Response and Alan Ball’s Declaration,
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`Petitioner Chanel, Inc. (“Chanel”) has failed to prove the challenged claims
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`unpatentable under any ground. Independent claims 1 and 2 include specific
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`elements missing from all of the prior art: forming “a substantially straight
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`freestanding wall configuration, whilst maintaining its vertical extent.” None of the
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`cited references disclose walls that are “freestanding,” either by explicitly describing
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`or suggesting this capability. Independent claims 19 and 22 recite other elements
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`missing from the prior art: a “longitudinally flexible and extensible wall” that forms
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`“at least a substantially straight freestanding wall” and has “at least two vertical
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`supports,” each comprising a base that is placed on the floor and dowel extending
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`upwards from the base, [and] said dowels of said at least two vertical supports
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`positioned in their respective void in said core that are “movable to temporarily
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`maintain said wall in an expanded serpentine configuration” (claim 19) or
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`“temporarily flex said wall into an expanded serpentine configuration.” (claim 22).
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`Finally, independent claims 23 and 27 also recite elements missing from the prior
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`art: at least two “articles” that are “stacked vertically on top of each other to form a
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`stack” and have “at least two vertical support structures....”
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`The primary references cited against independent claims 1 and 2, Softwall (ex.
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`1028), and Softhousing I, II, and III (Exs. 1005, 1006, and 1007, the “SoftHousing
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`references”) depict certain prototypes created by the inventors of the ’161 patent—
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`but none of these prototypes included or suggested to a person of ordinary skill in
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`the art (a “POSITA”) that the prototypes formed “a substantially straight
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`freestanding wall configuration.” Both inventors testified that this claimed feature
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`was not present in the SoftWall and SoftHousing references, and Chanel’s Reply,
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`with its flawed arguments and out-of-context excerpts from the inventors’ testimony,
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`does not cure this deficiency.
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`The primary reference cited against independent claims 19, 22, 23, and 27—
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`MacAllen 2008 (Ex. 1037) —fails to disclose the key features of the claims
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`mentioned above. Instead, Petitioner relies on three secondary references, none of
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`which disclose articles “stacked vertically on top of each other to form a stack.”
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`Chanel’s Reply does nothing to overcome the lack of disclosure in these references.
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`Accordingly, the Board should confirm the patentability of all claims.
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`U.S. Patent No. 9,689,161
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`II. GROUNDS III AND IV: SOFTWALL DOES NOT TEACH OR
`SUGGEST AN “EXTENSIBLE WALL” THAT FORMS “AT LEAST A
`SUBSTANTIALLY
`STRAIGHT
`FREESTANDING WALL
`CONFIGURATION, WHILST MAINTAINING ITS VERTICAL
`EXTENT”
`Chanel relies on a small section of Mr. MacAllen’s testimony in which Mr.
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`MacAllen stated that the structure shown in the SoftWall reference was a temporary
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`structure”: “Q The softwall shown in Exhibit 1028 appears to be standing on its own.
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`Was it? A Temporarily. Very temporarily.” Ex. 1029, 57:18-20. However, several
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`other portions of Mr. MacAllen’s deposition provide clarity as this alleged “standing
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`on its own” capability. As discussed by Mr. MacAllen, the early prototypes
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`(including Ex. 1028) were positioned for hasty photographs, but were otherwise
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`unstable and incapable of “standing alone free of support or attachment.” Ex. 1049,
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`28:7:29:14. For example, with regard to other prototypes depicted in some of the
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`SoftHousing references, Mr. MacAllen stated:
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`Q You also write in paragraph 11 that these prototypes were not self-
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`supporting or vertically stable standing on their own, rendering them
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`prone to collapse. What did you mean by that?
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`A They were unstable and would easily fall over.
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`Q Was that true for the softblock prototypes?
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`A Yes.
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`Q Did you do anything to prevent the softblock prototypes from
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`collapsing?
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`A Mostly, we used time efficiently, so we would stretch the blocks as
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`much as we could without tearing them to the point where they were
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`as open as they could be. And then we would have a very short
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`period of time to take a photograph before they would want to creep
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`back into their original form. They held quite a tight shape memory.
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`And when they creep back into their original form, of course, they
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`become compressed and there’s no stability. They just fall over.
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`Q For a short period of time, you were able to get a prototype
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`softblock to stand on its own; correct?
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`A No.
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`MR. CHIBIB: Vague.
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`A We could –
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`Q Let me ask that again, because I – for a short period of time, such as
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`the amount of time required to take a photograph, you were able to get
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`a prototype softblock to stand on its own; correct?
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`A We could. We had enough time to take a photograph, and we had
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`to be – we had to be quick.
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`Id. Ms. Forsythe concurred with Mr. MacAllen’s testimony: “It is important
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`to note that despite the fact that they're not attached to anything, doesn't mean that
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`they're stable.” Ex. 1050, 14:15-17.
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`Certainly, the Board’s construction adopted by the parties did not explicitly
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`include a temporal aspect. But a “plain and ordinary meaning” must be the meaning
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`as would have been understood by a person of ordinary skill in the art, in view of the
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`specification and the prosecution history. Phillips v. AWH Corp., 415 F.3d 1303
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`(Fed. Cir. 2005). Combined with the term “wall,” a POSITA would not interpret a
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`structure that is only “temporarily” standing on its own for a photographic moment
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`as a wall that is “standing alone free of support or attachment.” It is possible to
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`balance many objects, such as a playing card, on an edge for brief moment; but a
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`POSITA would hardly conclude that such an object is “freestanding.”
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`III. GROUNDS I AND II: THE SOFTHOUSING REFERENCES DO NOT
`RENDER OBVIOUS AN “EXTENSIBLE WALL” THAT FORMS “AT
`LEAST A SUBSTANTIALLY STRAIGHT FREESTANDING WALL
`CONFIGURATION, WHILST MAINTAINING ITS VERTICAL
`EXTENT”
`A. Chanel misrepresents the testimony of Mr. MacAllen and Ms.
`Forsythe
`Chanel argues that select images from SoftHousing I show structures that are
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`“freestanding”—that “stand[ing] alone free of support or attachment.” Petitioner
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`Reply (Paper 30), pp. 23-24, see Decision (Paper 9), p. 11. This assertion is
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`incorrect.
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`The images Chanel offers as proof of appearance of “freestanding” are taken
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`out-of-context from the reference and do not reflect the entirety of the reference.
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`W.L. Gore & Associates, Inc. v. Garlock, Inc., 721 F.2d 1540 (Fed. Cir. 1983), cert.
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`denied, 469 U.S. 851 (1984) (finding legal error when “the [prior art] references
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`were not assessed in their entireties”). The images, taken from SoftHousing I and II,
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`are described as “blankets of honeycomb tissue being opened into walls.”
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`SoftHousing II, p. 12. See also Ex. 2010, ¶ 81. A “blanket” of tissue is not
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`freestanding; a POSITA viewing the images of SoftHousing I and II and reading the
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`accompanying text would understand that “neither ‘blankets’ nor ‘tissue’ describe
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`concepts that are “freestanding.” Ex. 2010, ¶¶ 39-40, 124. The subsequent images in
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`the SoftHousing I and II references show the material as flexible, curved, and
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`draping. Id. These concepts, when viewed as a whole with the materials and
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`properties described in SoftHousing I and II, do not teach or suggest to a POSITA
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`that these prototypes are “freestanding.” Moreover, as discussed supra, the
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`SoftHousing reference includes numerous photos showing a person (Ms. Forsythe)
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`supporting the structures. Indeed, Chanel’s expert, Professor Rake, agreed that it was
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`unsurprising—based on the images in SoftHousing I—that the structures were not
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`“vertically stable standing on their own”:
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`Q.ꞏ ꞏOkay.ꞏ Would it surprise you that in her declaration, Ms.
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`Forsythe not only said that that's her holding the partitions, but that
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`none of those partitions were self-supporting or vertically stable
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`standing on their own?
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`A.ꞏ ꞏThat doesn't surprise me.
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`Ex. 2011, pp. 60-61 (emphasis added). Without the ’161 Patent as a guide, a POSITA
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`would not impute the features of claim 1 to the SoftHousing structures.
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`The prototypes depicted in these images are not actually “freestanding,” i.e.,
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`“standing alone free of attachment.” Exs. 2006 & 2007, pp. 3-4. Chanel
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`mischaracterizes the testimony from Mr. MacAllen and Ms. Forsythe in its attempt
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`to prove otherwise. In fact, the shorter “softblock” prototypes in these images were
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`not “freestanding” and only expandable for a brief moment to capture a photograph.
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`Ex. 1049, 28:7:29:14. Chanel relies on select portions from Mr. MacAllen’s
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`testimony that, in contrast to Chanel’s interpretation, provide a different and more
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`detailed characterization. A more complete portion of the relevant testimony is
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`provided below:
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`Q So you had -- strike that. On the right side of this photo, is that an
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`expanded softwall prototype?
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`A It is.
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`Q So am I correct that you had prototypes of both softwall and
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`softblock as of 2002?
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`A Yes.
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`Q In paragraph 11 of your affidavit you write "These early prototypes
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`did not have folding end panels or supports, which we only developed
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`later." Do you see that?
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`A Yes.
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`Q What did you mean by that?
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`A The early prototypes simply had no other -- they had no means of
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`self-support. They didn't have end panels. They didn't have folding
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`end panels. They didn't have any kind of end panels.
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`…
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`Q So, Mr. MacAllen, in paragraph 11 of your affidavit you wrote
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`"These early prototypes did not have folding end panels or supports,
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`which we only developed later." Can you restate your answer for what
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`you meant in that sentence there?
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`A The early prototypes didn't have a means of -- of support or self-
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`support. They had no folding end panels. They had no end panels at
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`all.
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`Q What do you mean by "end panels" in this context?
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`A End panels would be what we later developed to make the softwalls
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`stand on their own.
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`Q Did you mean that these prototypes did not have end panels that
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`were different from the panels that formed the core of the structure?
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`A Correct.
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`Q Could the ends of these prototypes be folded in a tubular
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`configuration?
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`A We know -- we know now that they could be.
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`Ex. 1049, 24:8-25:2;26:12-27:6. The above testimony states that the prototypes were
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`not “freestanding” in the manner recited in the ’161 Patent claims. Mr. MacAllen
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`also made clear that the specific “softblock” prototypes depicted in the images were
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`not “freestanding”:
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`Q You also write in paragraph 11 that these prototypes were not self-
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`supporting or vertically stable standing on their own, rendering them
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`prone to collapse. What did you mean by that?
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`A They were unstable and would easily fall over.
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`Q Was that true for the softblock prototypes?
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`A Yes.
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`Q Did you do anything to prevent the softblock prototypes from
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`collapsing?
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`A Mostly, we used time efficiently, so we would stretch the blocks as
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`much as we could without tearing them to the point where they were
`
`as open as they could be. And then we would have a very short
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`period of time to take a photograph before they would want to creep
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`back into their original form. They held quite a tight shape memory.
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`And when they creep back into their original form, of course, they
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`become compressed and there's no stability. They just fall over.
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`Q For a short period of time, you were able to get a prototype
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`softblock to stand on its own; correct?
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`A No.
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`MR. CHIBIB: Vague.
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`A We could --
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`Q Let me ask that again, because I -- for a short period of time, such
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`as the amount of time required to take a photograph, you were able to
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`get a prototype softblock to stand on its own; correct?
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`A We could. We had enough time to take a photograph, and we had
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`to be -- we had to be quick.
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`Ex. 1049, 28:7:29:14. Ms. Forsythe concurred with Mr. MacAllen’s testimony: “It
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`is important to note that despite the fact that they're not attached to anything, doesn't
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`mean that they're stable.” Ex. 1050, 14:15-17. In summary, the “softblock”
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`prototypes shown in the SoftHousing images that Chanel contends were
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`“freestanding” were not capable of “standing alone free of support or attachment”
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`for more than a brief moment for a photograph before springing back and becoming
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`unstable.
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`B.
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`The other images in SoftHousing I-II do not depict “freestanding”
`structures
`In the face of direct contradictory testimony from the inventors, Chanel still
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`contends that the two additional images in SoftHousing I and II “show softwalls that
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`appear to be freestanding”:
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`Petitioner’s Reply (Paper 30), p. 24. However, Mr. MacAllen directly
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`testified that the structures Chanel refers to were actually attached to the permanent
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`kitchen structure depicted in the image:
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`Q: So the prototype softwalls are surrounding the kitchen in this
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`layout?
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`A: Yeah. The prototype softwalls are all attached to the permanent
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`kitchen structure, which is a permanent self-supporting structure.
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`Q: This softwall on the -- shown above the kitchen in this aerial view;
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`is that attached to the kitchen?
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`A: Yeah, that prototype is attached to the kitchen.
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`Q: Where is it attached to the kitchen?
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`A: It's attached at the top. Its base is attached at the top, correct.
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`Q: The portion that abuts up against the kitchen rectangle?
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`A: Yes.
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`Ex. 1029, 49:17-50:7
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`Further, in view of the text of these references, a POSITA would understand
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`that these structures are attached to the solid wooden structure—the “kitchen”
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`described in SoftHousing II—in the photograph for support:
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`In the images cited by Chanel, the alleged “softwall” is in contact with the “kitchen”
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`structure. In view of the description of the materials as a “blankets of honeycomb
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`tissue,” a POSITA would understand that the structures in these images are attached
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`to the “kitchen” for support.
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`The SoftHousing references go on to describe using fasteners to attach the
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`structures to a wall. Ex. 1007, p. 2. For example, the SoftHousing III reference
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`makes clear that the structure is fastened to a wall. Ex. 1007, p. 2 (“(Velcro”)
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`fastenings attach unit to perimeter wall”). This disclosure of fasteners further
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`supports the interpretation by a POSITA: that the “softwall” structures in the images
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`cited by Chanel are not “freestanding” are attached to the “kitchen” wall for support.
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`C.
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`Folding the “opposite ends” of the SoftHousing structures into a
`“tubular configuration” is not an obviousness modification
`Claim 4 requires that “opposite ends of said core are flexible and are in a
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`tubular configuration about an axis parallel to said major faces.” Ex. 1001, 17:18-
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`20. It is undisputed that none of the cited references teach, describe, or mention a
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`“tubular configuration.” In fact, Chanel’s own expert testified as such:
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`Q. Okay. Did you see any prior art to any of the patents that are under
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`IPR here today, did you see any prior art where end supports were
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`folded into a tubular configuration?
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`A.ꞏ ꞏI don't believe so.
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` Ex. 2011, p. 135:16-23. Indeed, in their arguments regarding the challenge of U.S.
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`Patent No. 7,866,366 (the “’366 Patent”) in related proceeding IPR2022-00543,
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`Chanel has emphasized that the claims of the ’366 Patent only require the capability
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`of folding ends into a tubular configuration—because Chanel understands that any
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`attempt to use the references to actually show this configuration would necessarily
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`fail.
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`19
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`As noted in their Reply, Chanel’s expert provided two justifications for the
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`motivation to fold “ends” of the prior art structure into a “tubular configuration”: (1)
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`“aesthetic reasons, such as when curved or rounded ends fit better with other
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`elements of the environment”1 and (2) for “functional reasons, such as when
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`additional stability was desired.” Petitioner’s Reply (Paper 30), p. 28.
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`As to the functional reason for a motivation to fold the end panels into a
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`“tubular configuration,” Chanel impermissibly presents a new, naked, and
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`completely baseless argument in their Reply: that “folding paper is a well-known
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`way to enhance structure.” Petitioner’s Reply (Paper 30), p. 25. Chanel failed to
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`provide a single piece of evidence for this assertion, either in their original Petition
`
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`1 As to the use of “design choice,” the law cited by Molo is applicable here: “design
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`choice” as a motivation is only appropriate in specific circumstances and is “no
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`substitute for obviousness reasoning based on factual evidence.” Ex Parte Maeda,
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`No. APPEAL 2010-009814, 2012 WL 5294326, at *3 (B.P.A.I. Oct. 23, 2012).
`
`Chanel provides no support for their assertion that this law does not apply when a
`
`device has both aesthetic and functional elements. Regardless, the ’161 Patent
`
`specification clearly describes the “tubular configuration” of the “end panels” as
`
`functional. Ex. 1001, 4:13-15.
`
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`20
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`or in Professor Rake’s Declaration. The Board should ignore Chanel’s new
`
`arguments as to the motivation of a POSITA. “Shifting arguments in this fashion is
`
`foreclosed by statute, [Federal Circuit] precedent, and Board guidelines.” Wasica
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`Fin. GmbH v. Cont’l Auto. Sys., Inc., 853 F.3d 1272, 1286 (Fed. Cir. 2017);
`
`Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir.
`
`2016).
`
`Chanel again mischaracterizes the testimony of the inventors in an attempt to
`
`claim that the materials of the SoftHousing structures were easily foldable; they were
`
`not. Petitioner’s Reply (Paper 30), p. 25
`
` Mr. MacAllen testified that folding the prototypes was not functional as the
`
`core material was too fragile:
`
`Q: During your development of softwall, did you ever try folding the
`
`ends of the cellular core into a tubular configuration without attaching
`
`new end panels?
`
` A: Later on -- well, later into the development, as we were
`
`experimenting with different ways to make the ends supporting, one
`
`of the things that we came across was attaching more rigid surfaces to
`
`it and folding and temporarily holding the fold. And -- and then in
`
`doing that, we realized that we could just use the paper itself. But
`
`
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`21
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`that was not satisfactory in that you would have to repeatedly pull --
`
`pull on the paper, and it -- it was too fragile. And so as a solution, it
`
`-- it just didn't seem worthwhile to pursue on its own.
`
`Ex. 1049, 55:24-56:14. Accordingly, Chanel’s arguments regarding the motivation
`
`of a POSITA fail, and Chanel has failed to establish that the cited references render
`
`obvious dependent claim 4.
`
`IV. GROUND V: A POSITA WOULD NOT BE MOTIVATED TO
`COMBINE MACALLEN 2008 WITH STRATTON, FISCHER, AND
`REISENTHEL, TOLNA, AND ENDUROFENCE
`In its Reply, Chanel admits that MacAllen 2008 fails to disclose “vertical
`
`supports” as recited in independent claims 19, 22, 23, and 27. Chanel’s Reply
`
`reiterates its arguments regarding the combination of MacAllen 2008 with the
`
`secondary references of Stratton, Fisher, Reisenthel, Tolna and EnduroFence.
`
`Chanel cited Professor Rake’s assertion that supports are required to
`
`“maintain a particular configuration, given the ‘position memory’, the amount of
`
`expansion desired, and the degree of curvature.” Petitioner’s Reply (Paper 30), p.
`
`31. But the invention in MacAllen 2008 does not suffer from this need, so a POSITA
`
`would not have been motivated to combine the alleged “vertical supports” of the
`
`secondary references with MacAllen 2008. Chanel cites to a statement from Mr.
`
`MacAllen that some prototypes of a “tight shape memory” and “would want to creep
`
`
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`22
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`back to their original form.” Ex. 1029, 28:21-23. But Mr. MacAllen was referring to
`
`prototypes illustrative of shortcomings that are not present in the inventions
`
`disclosure and claimed in MacAllen 2008. Indeed, MacAllen 2008 teaches that the
`
`“wall” described therein may be easily moved to an expanded position without any
`
`mention or concern of contracting back upon itself. See Ex. 1037, [0031]-[0033].
`
`Chanel further argues that Molo’s application of KSR is flawed. Specifically,
`
`Chanel argues, without evidentiary support, that “[t]he vertical supports in Stratton,
`
`Fischer, and Reisenthel not only provide stability but are also moveable to change
`
`the shape of the prior art partitions and to help maintain a positional configuration.”
`
`Petitioner’s Reply (Paper 30), pp. 31-32. For example, the “support legs” of Stratton
`
`are used to maintain “an upright position when exposed to environmental conditions
`
`such as wind, rain, snow, or heavy vehicular traffic.” Ex. 1038, 3:45-49. Fisher, a
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`design patent, and Reisenthel, a design registration, do not state or describe that the
`
`reasons for the supports are for changing shape and maintain position—there is no
`
`explicit function to be gleaned from these design disclosures, and Chanel’s
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`hypothesizing is not supported by the references. Exs. 1039-1040.
`
`Chanel’s Reply fails to address the deficiencies of Tolna and EnduroFence
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`with regard to a motivation for the combination. Tolna is not directed to and does
`
`not disclosure an expandable structure, and EnduroFence fails to teach a “cellular
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`23
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`structure” as recited in the claims of the ’161 Patent. Ex. 2011, 157:24-158:3; 159:6-
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`9. Moreover, EnduroFence requires outdoor use in order to drive stakes into the turf.
`
`Id. at 159:13-18. Consequently, these references would not be combinable with the
`
`inventions of MacAllen 2008 that are formed from an expandable cellular structure.
`
`See Ex. 1037, Abstract.
`
`V. CHANEL FAILS TO REBUT MOLO’S OBJECTIVE EVIDENCE OF
`NON-OBVIOUSNESS
`Chanel first argues that Molo should be denied a presumption of nexus
`
`between Molo’s commercial products and the ’161 claims. In their arguments,
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`Chanel relies heavily on Fox Factory, Inc. v. SRAM but fails to consider the full
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`scope of the analysis set forth in that case. There exists “a presumption of nexus for
`
`objective considerations when the patentee shows that the asserted objective
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`evidence is tied to a specific product” and that the product “is the invention disclosed
`
`and claimed in the patent.” WBIP, LLC v. Kohler Co., 829 F.3d 1317, 1329 (Fed.
`
`Cir. 2016) (internal quotation marks omitted). As restated in Fox Factory, “[W]hat
`
`we do require is that the patentee demonstrate that the product is essentially the
`
`claimed invention.” Fox Factory, Inc. v. SRAM, LLC, 944 F.3d 1161, 1374 (Fed.
`
`Cir. 2019). Moreover, the evaluation of a nexus—a correspondence between a
`
`product and a patent claim—is not an abrupt line:
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`24
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`Put differently, the degree of correspondence between a product and a
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`patent claim falls along a spectrum. At one end of the spectrum lies
`
`perfect or near perfect correspondence. At the other end lies no or
`
`very little correspondence, such as where “the patented invention is
`
`only a component of a commercially successful machine or process.”
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`Id. Although we do not require the patentee to prove perfect
`
`correspondence to meet the coextensiveness requirement, what we do
`
`require is that the patentee demonstrate that the product is essentially
`
`the claimed invention.
`
`Id.
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`
`
`Molo is not reducing “the coextensiveness requirement to an inquiry into
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`whether a claim in the patent broadly covers the product” as alleged by Chanel.
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`Chanel misinterprets the case law by applying an analysis more appropriate to a
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`patented invention that is “a component of a commercially successful machine or
`
`process.” Fox Factory, 944 F.3d at 1374.2 Here, the claims at issue are the product
`
`
`2 Chanel’s asserts that Molo’s expert used an incorrect standard. However, Chanel
`
`asked Mr. Ball to establish a legal conclusion; under further questioning, Mr. Ball
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`25
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`and use of the product itself. For example, claim 1 of the ’161 patent is directed to
`
`“an assembly of walls for partitioning a room,” i.e., the softwall + softblock product.
`
`In another example, claim 2 is directed “a method of partitioning an area of a room.”
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`And, as discussed below, claims 1 and 2 of the ’161 patent are coextensive with the
`
`softwall + softblock products manufactured prior to 2008 and the subject of
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`significant industry praise. See Ex. 1049, pp. 75:7-21.
`
`Claims 1 and 2 of the ’161 patent are coextensive with softblock + softwall
`
`products shown in the photographs in Molo’s Response and demonstrate a clear
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`nexus between claims 1 and 2 and these products. Chanel states that “Molo fails to
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`address unclaimed features of softwall or to provide any analysis demonstrating that
`
`softwal
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