From: Trials <Trials@USPTO.GOV>
`Sent: Wednesday, April 19, 2023 2:29 PM
`To: Chibib, Michael <michael.chibib@bracewell.com>; Trials <Trials@USPTO.GOV>;
`cornelio.gina@dorsey.com
`Cc: godfrey.geoff@dorsey.com; bjorklund.shannon@dorsey.com; miller.mark@dorsey.com;
`Schuettenhelm, Jared <jared.schuettenhelm@bracewell.com>; Connolly, Patrick
`<patrick.connolly@bracewell.com>; Civins, Conor <conor.civins@bracewell.com>; Tompkins, Brian
`<brian.tompkins@bracewell.com>
`Subject: RE: Cases IPR2022-00543, -00544, -00545, -00546 Request Authorization to File Motion to
`Strike
`
`Counsel,
`
`From the Board-
`
`Based on the parties’ statements below, we grant Petitioner’s unopposed request for authorization
`to file a motion to strike. The motion shall not exceed three pages in length and shall be filed no
`later than April 24th. Patent Owner may file an opposition to the motion that shall not exceed three
`pages in length and shall be filed no later than April 28th. No reply is authorized at this time.
`
`Regards,
`
`Esther Goldschlager
`Supervisory Paralegal Specialist
`Patent Trial & Appeal Board
`U.S. Patent & Trademark Office
`
`From: Chibib, Michael <michael.chibib@bracewell.com>
`Sent: Wednesday, April 19, 2023 9:01 AM
`To: Trials <Trials@USPTO.GOV>; cornelio.gina@dorsey.com
`Cc: godfrey.geoff@dorsey.com; bjorklund.shannon@dorsey.com; miller.mark@dorsey.com;
`Schuettenhelm, Jared <jared.schuettenhelm@bracewell.com>; Connolly, Patrick
`<patrick.connolly@bracewell.com>; Civins, Conor <conor.civins@bracewell.com>; Tompkins, Brian
`<brian.tompkins@bracewell.com>
`
`

`

`Subject: RE: Cases IPR2022-00543, -00544, -00545, -00546 Request Authorization to File Motion to
`Strike
`
`CAUTION: This email has originated from a source outside of USPTO. PLEASE CONSIDER THE SOURCE before
`responding, clicking on links, or opening attachments.
`
`Dear Honorable Board –
`
`Patent Owner appreciates the Board’s request for the basis of filing new evidence (Exs. 2034-2037)
`in Patent Owner’s sur-reply (Paper 30). Patent Owner appreciates the import of 37 CFR § 42.23(b),
`but also understands that the Board has “broad discretion to regulate the presentation of evidence.”
`Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1078 (Fed. Cir. 2015). It is this discretion that Patent
`Owner seeks to invoke to correct the record regarding copying, specifically whether Chanel
`purchased a Molo softwall + softblock product prior to purchasing a competing product. There is no
`prejudice to Chanel because the new evidence consists of emails to which Chanel was a party.
`Chanel knew or should have known of their existence.
`
`In its Reply, Chanel claimed that there was no evidence of this purchase. Paper 28, p. 10. The new
`evidence simply corrects the record by providing the correspondence between Chanel and Molo
`leading up to the purchase of the Molo softwall + softblock product in 2017—before Chanel
`purchased the competing product.
`
`Because Exs. 2034-2037 are new evidence, Patent Owner does not oppose Petitioner’s request to
`address the issue via a motion to strike.
`
`Best regards,
`
`Mike Chibib
`
`______​
`MICHAEL CHIBIB
`Partner
`michael.chibib@bracewell.com | download v-card
`T: +1.512.494.3635 | F: +1.512.479.3945 | M: +1.512.289.8509
`
`BRACEWELL LLP
`111 Congress Avenue, Suite 2300 | Austin, TX | 78701-4061
`bracewell.com | profile | LinkedIn | Twitter
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`This message is sent by a law firm and may contain information that is privileged or confidential. If
`you received this transmission in error, please notify the sender by reply e-mail and delete the
`message and any attachments.
`From: Trials <Trials@USPTO.GOV>
`Sent: Tuesday, April 18, 2023 10:58 AM
`To: cornelio.gina@dorsey.com; Trials <Trials@USPTO.GOV>
`
`

`

`Cc: godfrey.geoff@dorsey.com; bjorklund.shannon@dorsey.com; miller.mark@dorsey.com;
`Schuettenhelm, Jared <jared.schuettenhelm@bracewell.com>; Chibib, Michael
`<michael.chibib@bracewell.com>; Connolly, Patrick <patrick.connolly@bracewell.com>; Shargel,
`David <david.shargel@bracewell.com>; Civins, Conor <conor.civins@bracewell.com>
`Subject: RE: Cases IPR2022-00543, -00544, -00545, -00546 Request Authorization to File Motion to
`Strike
`
`Counsel,
`
`From the Board-
`
`Before addressing Petitioner’s request for authorization to file a motion to strike, we would like to
`hear from Patent Owner as to the basis for filing the exhibits with its Sur-reply and how such a filing
`comports with our rules. Patent Owner should also indicate whether it opposes Petitioner’s request
`to address the issue via a motion to strike. Patent Owner should provide such a response no later
`than 12 p.m. ET tomorrow, April 19th.
`
`Regards,
`
`Esther Goldschlager
`Supervisory Paralegal Specialist
`Patent Trial & Appeal Board
`U.S. Patent & Trademark Office
`
`From: cornelio.gina@dorsey.com <cornelio.gina@dorsey.com>
`Sent: Monday, April 17, 2023 6:12 PM
`To: Trials <Trials@USPTO.GOV>
`Cc: godfrey.geoff@dorsey.com; bjorklund.shannon@dorsey.com; miller.mark@dorsey.com;
`jared.schuettenhelm@bracewell.com; michael.chibib@bracewell.com;
`patrick.connolly@bracewell.com; david.shargel@bracewell.com; conor.civins@bracewell.com
`Subject: Cases IPR2022-00543, -00544, -00545, -00546 Request Authorization to File Motion to
`Strike
`
`CAUTION: This email has originated from a source outside of USPTO. PLEASE CONSIDER THE SOURCE before
`responding, clicking on links, or opening attachments.
`
`Dear Honorable Board,
`
`Petitioner respectfully requests authorization to file a motion to strike Exhibits 2034-2037 filed with
`Patent Owner’s Sur-Reply in each of the above-referenced proceedings. Petitioner timely filed
`objections to these exhibits and in those objections requested that Patent Owner withdraw Exhibits
`2034-2037. See, e.g., IPR2022-000543, Paper 31.
`
`Petitioner contends that Exhibits 2034-2037 were filed in violation of 37 C.F.R. § 42.23(b) and the
`Consolidated Trial Practice Guide because these exhibits constitute new evidence and are not
`
`

`

`deposition transcripts of the cross-examination of any reply witness. See 37 C.F.R. § 42.23(b); PTAB
`Consolidated Trial Practice Guide, November 2019 at 73; Satco Products, Inc. v. Seoul Semiconductor
`Co., LTD., IPR2020-00836, Paper 45 at 75-77 (PTAB Oct. 22, 2021); Lenovo Holding Co., Inc. v. Dodots
`Licensing Solutions LLC, IPR2019-01278, Paper 37 at 31-33 (PTAB Jan. 19, 2021). Exhibits 2034-2037
`purport to be emails sent or received by Patent Owner in April 2017. Patent Owner relies on these
`exhibits as evidence of copying. Patent Owner could have filed these exhibits with its Response, in
`which it first raised the issue of alleged copying, or with its earlier Preliminary Response. Instead,
`Patent Owner withheld this new evidence until its Sur-Reply, depriving Petitioner the opportunity to
`obtain related discovery and to respond in its briefing.
`
`Sincerely,
`Gina Cornelio
`Counsel for Petitioner
`
`Gina N. Cornelio
`Partner
`Patent Group Co-Head
`
`
`DORSEY & WHITNEY LLP
`1400 Wewatta Street
`Suite 400 | Denver, CO 80202-5549
`P: 303.352.1170 F: 303.629.3450 C: 303.927.8643
`
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`
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