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’S RESPONSE TO
`PETITIONER’S MOTION TO STRIKE EXHIBITS 2034-2037
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`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’S RESPONSE TO
`PETITIONER’S MOTION TO STRIKE EXHIBITS 2034-2037
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`Case IPR2022-00545
`U.S. Patent No. 9,689,161
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`Exhibits 2034-2037 filed with Patent Owner’s Sur-reply directly rebut
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`Petitioner’s false implication made in Petitioner’s Reply. This rebuttal evidence goes
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`to the issue of copying as evidence of non-obviousness. The arguments raised in
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`Patent Owner’s Sur-reply were not new, and Petitioner only objected to the exhibits
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`themselves. As discussed herein, the Board should exercise its general discretion
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`under 37 C.F.R. § 42.5(b) and deny Petitioner’s Motion to Strike because the
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`submission is the only meaningful opportunity for Patent Owner to rebut Petitioner’s
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`false implication.
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`In their Reply, Petitioner stated that “Molo presents no evidence that Chanel
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`… acquired a softwall sample before purchasing a competing product.” Paper 30 at
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`11. The implication is clear: Petitioner Chanel never purchased or had possession of
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`Patent Owner’s relevant product and could not copy it. To directly rebut this false
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`implication, Patent Owner submitted Exhibits 2034-2037 that show purchase of a
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`“softwall sample” by Petitioner.
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`Patent Owner acknowledges the requirements of 37 C.F.R. § 42.23(b)
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`regarding the submission of new evidence in a Sur-reply. However, Patent owner
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`respectfully notes that under § 42.5, the Board has wide discretion in almost all
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`aspects of this proceeding. Indeed, under § 42.5(b) “[t]he Board may waive or
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`suspend a requirement of parts 1, 41, and 42 and may place conditions on the waiver
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`Case IPR2022-00545
`U.S. Patent No. 9,689,161
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`or suspension.” 37 C.F.R. § 42.5(b) As such, the Board has discretion to suspend §
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`42.23(b) and allow Patent Owner’s probative rebuttal evidence. See e.g., Belden Inc.
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`v. Berk-Tek LLC, 805 F.3d 1064, 1081 ((Fed. Cir. 2015) (stating that the Board has
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`authority to “waive or suspend a regulation that the patent owner believes impairs
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`its opportunity to respond”).
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`Petitioner did not object to the authenticity or admissibility of Exhibits 2034-
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`2037, as they are merely Petitioner’s business records. See Fed. R. Civ. P. 803(6).
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`Each of Exhibits 2034-2037 is an electronic correspondence (i.e., an email) between
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`Petitioner’s employee and Patent Owner’s employee. Consequently, there is
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`minimal prejudice to Petitioner in allowing these exhibits, as they were already in
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`Petitioner’s possession.
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`Patent Owner is entitled by law to present rebuttal evidence. If the rules in
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`prohibit such evidence, then those rules violate Due Process and the Administrative
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`Procedures Act (APA).1 Under the APA, the Board “must allow ‘a party . . . to submit
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`rebuttal evidence . . . as may be required for a full and true disclosure of the facts.’”
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`Dell Inc. v. Acceleron, LLC, 818 F.3d 1293, 1301 (Fed. Cir. 2016) (vacating a Board
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`decision where patent owner “ha[d] not had the required opportunity to present
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`evidence” to counter a factual assertion relied on in the Board’s decision). Here,
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`1 Patent Owner must challenge the rule in this venue to preserve a rule challenge for appeal. Ciena Corp. v. Oyster
`Optics, LLC, 958 F.3d 1157, 1159-62 (Fed. Cir. 2020).
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`Case IPR2022-00545
`U.S. Patent No. 9,689,161
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`Petitioner implied a factual assertion relevant to non-obviousness—it is insufficient
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`for Patent Owner to address this false implication solely with attorney argument in
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`the Sur-reply. Not allowing Patent Owner the opportunity to rebut this false
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`implication is prejudicial to Patent Owner and a violation of the APA and Due
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`Process.
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`With regard to Petitioner’s arguments regarding the untimeliness of Exhibits
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`2034-2037, Patent Owner notes that Rule 42.5(c)(3) excuses late actions if, inter
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`alia, it “would be in interests of justice.” 37 C.F.R. 42.5(c)(2); see Hengdian Grp.
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`DMEGC Magnetics Co., Ltd. v. Gitachi Metals, Ltd., IPR2017-01312, Paper 14 at 4
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`(PTAB Jan. 3, 2018) (“In deciding whether the interests of justice support
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`considering the merits of a late filing, [the Board examines] the prejudice that would
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`result from considering or not considering the merits”). As noted, there is minimal
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`prejudice to Petitioner to retaining these exhibits in the record. The prejudice to
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`Patent Owner results from admitting Petitioner’s false implication but limiting
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`Patent Owner to attorney argument in its rebuttal. As such, the prejudice from
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`striking Patent Owner’s exhibits would outweigh any prejudice to Petitioner.
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`For the foregoing reasons, Petitioner’s Motion should be denied.
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`Case IPR2022-00545
`U.S. Patent No. 9,689,161
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`Dated: April 28, 2023
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`Respectfully Submitted,
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`By:
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`/s/ Michael Chibib
`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
`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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`Counsel for Patent Owner Molo
`Design, Ltd
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`Case IPR2022-00545
`U.S. Patent No. 9,689,161
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a copy of the foregoing document was
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`served on counsel of record for PETITIONERS on APRIL 28, 2023, by causing a
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`copy to be delivered via electronic mail to the following counsel of record:
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`Gina Cornelio (lead counsel)
`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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`Geoffrey M. Godfrey (pro hac vice)
`DORSEY & WHITNEY LLP
`Columbia Center
`701 Fifth Avenue, Suite 6100
`Seattle, WA 98104
`Tel: (206) 903-8800
`Fax: (206) 299-3849
`godfrey.geoff@dorsey.com
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`Dated: April 28, 2023
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`By:
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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
`/s/ Michael Chibib
`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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`Case IPR2022-00545
`U.S. Patent No. 9,689,161
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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
`
`Counsel for Patent Owner Molo
`Design, Ltd
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