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`IPR2022-00545
`U.S. Patent 9,689,161
`Petitioner’s Objections to Patent Owner’s Exhibits
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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.,
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`Petitioner,
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`v.
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`Molo Design, Ltd.,
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`Patent Owner.
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`Case IPR2022-00545
`U.S. Patent 9,689,161
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`PETITIONER’S OBJECTIONS TO PATENT OWNER’S EXHIBITS
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`IPR2022-00545
`U.S. Patent 9,689,161
`Petitioner’s Objections to Patent Owner’s Exhibits
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`Pursuant to 37 C.F.R. § 42.64(b)(1), Petitioner submits the following
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`objections to Exhibits 2034-2037 filed with Patent Owner’s Sur-Reply. Petitioner’s
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`objections are timely, being filed within 5 business days of service of Exhibits
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`2034-2037.
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`Petitioner objects to Exhibits 2034-2037 as untimely and filed in violation of
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`37 C.F.R. § 42.23(b) and the Consolidated Trial Practice Guide. Exhibits 2034-
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`2037 purport to be emails sent or received by Patent Owner in April 2017. Patent
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`Owner relies on these exhibits as evidence of copying. See Paper 32 at 30-31.
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`Patent Owner could have filed these exhibits with its Response, in which it first
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`raised the issue of alleged copying (see Paper 19 at 69-71), or with its earlier
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`Preliminary Response (Paper 8). Instead, Patent Owner withheld this new evidence
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`until its Sur-Reply, depriving Petitioner the opportunity to obtain related discovery
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`and to respond in its briefing.1
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`Patent Owner’s belated submission of Exhibits 2034-2037 violates 37 C.F.R.
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`§ 42.23(b) and the Consolidated Trial Practice Guide because these exhibits
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`1 Patent Owner’s untimely submission is especially prejudicial because Patent
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`Owner failed to include a closely related email in its possession that undercuts the
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`copying argument made in its Sur-Reply.
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`1
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`IPR2022-00545
`U.S. Patent 9,689,161
`Petitioner’s Objections to Patent Owner’s Exhibits
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`constitute new evidence and are not deposition transcripts of the cross-examination
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`of any reply witness. See 37 C.F.R. § 42.23(b) (“A sur-reply . . . may not be
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`accompanied by new evidence other than deposition transcripts of the cross-
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`examination of any reply witness.”); PTAB Consolidated Trial Practice Guide,
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`November 2019 at 73 (“The sur-reply may not be accompanied by new evidence
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`other than deposition transcripts of the cross-examination of any reply witness.”);
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`Satco Products, Inc. v. Seoul Semiconductor Co., LTD., IPR2020-00836, Paper 45
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`at 75-77 (PTAB Oct. 22, 2021) (striking exhibits filed with patent owner’s sur-
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`reply because they constituted new evidence other than deposition transcripts of
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`the cross-examination of any reply witness); Lenovo Holding Co., Inc. v. Dodots
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`Licensing Solutions LLC, IPR2019-01278, Paper 37 at 31-33 (PTAB Jan. 19, 2021)
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`(same).
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`Petitioner further objects to Exhibits 2034-2037 as constituting
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`impermissible hearsay to which no exception applies because Patent Owner relies
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`on its own statements in these documents to prove the truth of those statements.
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`See Fed. R. Evid. 801-802.
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`Petitioner further objects to Exhibits 2034-2037 as not properly
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`authenticated under Fed. R. Evid. 901 because Patent Owner has offered no
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`evidence showing that these documents are authentic or that they are self-
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`2
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`IPR2022-00545
`U.S. Patent 9,689,161
`Petitioner’s Objections to Patent Owner’s Exhibits
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`authenticating under Fed. R. Evid. 902.
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`Petitioner requests that Patent Owner immediately withdraw Exhibits 2034-
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`2037.
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`Dated: April 17, 2023
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`Respectfully submitted,
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`DORSEY & WHITNEY LLP
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`By /Gina Cornelio/
`Gina Cornelio
`Registration No. 64,336
`DORSEY & WHITNEY LLP
`1400 Wewatta Street, Suite 400
`Denver, CO 80202
`Telephone: (303) 629-3400
`Fax: (303) 629-3450
`cornelio.gina@dorsey.com
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`Mark A. Miller
`Registration No. 44,944
`DORSEY & WHITNEY LLP
`111 South Main Street, Suite 2100
`Salt Lake City, UT 84111-2176
`Tel: (801) 933-4068
`Fax: (801) 933-7373
`miller.mark@dorsey.com
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`Shannon L. Bjorklund (pro hac vice)
`DORSEY & WHITNEY LLP
`50 South Sixth Street, Suite 1500
`Minneapolis, MN 55402
`Tel: (612) 340-2600
`Fax: (612) 677-3086
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`3
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`IPR2022-00545
`U.S. Patent 9,689,161
`Petitioner’s Objections to Patent Owner’s Exhibits
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`bjorklund.shannon@dorsey.com
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`Geoffrey M. Godfrey (pro hac vice)
`DORSEY & WHITNEY LLP
`701 Fifth Avenue, Suite 6100
`Seattle, WA 98104
`Tel: (206) 903-8800
`Fax: (206) 299-3849
`godfrey.geoff@dorsey.com
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`4
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`IPR2022-00545
`U.S. Patent 9,689,161
`Petitioner’s Objections to Patent Owner’s Exhibits
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`CERTIFICATE OF SERVICE
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`The undersigned certifies service of this document pursuant to 37 C.F.R. §
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`42.6(e) upon the Patent Owner by causing a copy to be delivered via electronic
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`mail to the following counsel of record:
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`Michael Chibib
`Registration No. 40,950
`Bracewell LLP
`111 Congress Avenue, Suite 2300
`Austin, TX 78701
`(512) 472-7800 (t)
`(800) 404-3970 (f)
`michael.chibib@bracewell.com
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`
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`Jared D. Schuettenhelm
`Registration No. 59,539
`Patrick Connolly
`Registration No. 69,570
`BRACEWELL LLP
`701 Fifth Avenue, Suite 6200
`Seattle, Washington 98104-7018
`(206) 204-6200 (t)
`(800) 404-3970 (f)
`jared.schuettenhelm@bracewell.com
`patrick.connolly@bracewell.com
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`And a courtesy copy upon below counsel in the related district court matter via
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`electronic mail:
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`Conor Civins (conor.civins@bracewell.com)
`David Shargel (david.shargel@bracewell.com)
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`Dated: April 17, 2023
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`By /Gina Cornelio/
`Gina Cornelio
`Registration No. 64,336
`DORSEY & WHITNEY LLP
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`5
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