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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 MOTION TO STRIKE EXHIBITS 2034-2037
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`Petitioner Chanel, Inc. moves to strike Exhibits 2034-2037, which were filed
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`with Patent Owner Molo Design, Ltd.’s Sur-reply. Molo’s submission of Exhibits
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`2034-2037 violated 37 C.F.R. § 42.23(b) and the Consolidated Trial Practice Guide
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`because these exhibits admittedly constitute new evidence and are not deposition
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`transcripts of the cross-examination of any reply witness.
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`I.
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`BACKGROUND
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`Exhibits 2034-2037 purport to be emails sent or received by Molo in April
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`2017. Molo relies on these exhibits as evidence of copying. (See Paper 32 at 30-
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`31.) Molo could have filed these exhibits with its Response, in which it first raised
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`the issue of alleged copying (see Paper 19 at 69-71), or with its earlier Preliminary
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`Response (Paper 8). Instead, Molo withheld this new evidence until its Sur-Reply.
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`Chanel timely objected to Exhibits 2034-2037 and requested Molo withdraw
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`them. (Paper 33.) On April 19, 2023, Molo admitted these exhibits constitute “new
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`evidence,” and the Board authorized Chanel to file this Motion.
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`II. THE BOARD SHOULD STRIKE EXHIBITS 2034-2037 BECAUSE
`THEY WERE FILED CONTRARY TO THE BOARD’S RULES AND
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`TRIAL PRACTICE GUIDE
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`Molo’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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`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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`1
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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 permitted deposition
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`transcripts); Lenovo Holding Co., Inc. v. Dodots Licensing Solutions LLC,
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`IPR2019-01278, Paper 37 at 31-33 (PTAB Jan. 19, 2021) (same).
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`Striking Exhibits 2034-2037 would not unfairly prejudice Molo because
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`Molo had multiple opportunities to submit this evidence in a timely manner but
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`chose not to do so. Exhibits 2034-2037 are from Molo’s own files. Molo could
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`have filed these exhibits with its Response wherein it first raised the issue of
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`alleged copying (see Paper 19 at 69-71). Copying is an issue on which Molo bears
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`the burden of production. See ZUP, LLC v. Nash Mfg., 896 F.3d 1365, 1373 (Fed.
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`Cir. 2018) (“[A] patentee bears the burden of production with respect to evidence
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`of secondary considerations of non-obviousness.”). If Molo wanted to rely on these
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`exhibits as evidence of copying, it was obligated to submit them earlier.
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`Allowing Molo’s late submission of Exhibits 2034-2037 would unfairly
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`prejudice Chanel because Molo has deprived Chanel the opportunity to obtain and
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`2
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`present related discovery in its responsive briefing. For example, in the related
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`district court action, Molo produced an additional 2017 email (MOLO_00001811)
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`that is directly related to Exhibits 2034-2037 and that undercuts Molo’s copying
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`argument. If Molo had submitted Exhibits 2034-2037 in a timely manner, Chanel
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`would have introduced this other evidence to show how Molo’s copying argument
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`is baseless. Instead, Molo seeks to gain an unfair advantage by making a late and
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`incomplete submission of new evidence.
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`Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1078 (Fed. Cir. 2015), cited by
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`Molo, did not involve new evidence submitted with a Sur-reply and is therefore
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`inapposite. New evidence is treated differently at the Sur-reply stage, as the
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`language of 37 C.F.R. § 42.23(b) makes clear. The Reply declaration at issue in
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`Belden complied with § 42.23(b); Molo’s new Sur-reply evidence does not.
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`Lastly, Exhibits 2034-2037 do not “correct[] the record,” as Molo contends.
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`Chanel’s Reply observed that “Molo presents no evidence that Chanel had
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`knowledge of the ’161 patent or acquired a physical sample of the softwall product
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`before purchasing a competing product.” (Paper 30 at 11.) That statement was both
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`accurate and appropriate given that Molo bears the burden of production on
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`copying and failed to put forth any such evidence within the time permitted.
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`Molo’s belated attempt to plug this gap is barred by 37 C.F.R. § 42.23(b) and the
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`Trial Practice Guide. Accordingly, the Board should strike Exhibits 2034-2037.
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`3
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`Dated: April 24, 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
`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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`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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`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 24, 2023
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`By /Gina Cornelio/
`Gina Cornelio
`Registration No. 64336
`DORSEY & WHITNEY LLP
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`5
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