Trials@uspto.gov
`571.272.7822
`
`
`
`
`
`
`
` Paper No. 36
` Entered: May 10, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CHANEL, INC.,
`Petitioner,
`
`v.
`
`MOLO DESIGN, LTD.,
`Patent Owner.
`____________
`
`IPR2022-00543 (Patent 7,866,366 B2)
`IPR2022-00544 (Patent 8,561,666 B2)
`IPR2022-00545 (Patent 9,689,161 B2)
`IPR2022-00546 (Patent 9,797,134 B2)1
`__________
`
`
`Before KEN B. BARRETT and RICHARD H. MARSCHALL,
`Administrative Patent Judges.
`
`MARSCHALL, Administrative Patent Judge.
`
`
`
`ORDER
`Denying Petitioner’s Motion to Strike
`37 C.F.R. §§ 42.20, 42.23(b)
`
`
`1 This Order addresses issues that are the same in each of the identified
`proceedings. We exercise our discretion to issue one Order to be filed in
`each proceeding. The parties are not authorized to use this style heading for
`any subsequent papers.
`
`
`
`
`571.272.7822
`
`
`
`
`
`
`
` Paper No. 36
` Entered: May 10, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CHANEL, INC.,
`Petitioner,
`
`v.
`
`MOLO DESIGN, LTD.,
`Patent Owner.
`____________
`
`IPR2022-00543 (Patent 7,866,366 B2)
`IPR2022-00544 (Patent 8,561,666 B2)
`IPR2022-00545 (Patent 9,689,161 B2)
`IPR2022-00546 (Patent 9,797,134 B2)1
`__________
`
`
`Before KEN B. BARRETT and RICHARD H. MARSCHALL,
`Administrative Patent Judges.
`
`MARSCHALL, Administrative Patent Judge.
`
`
`
`ORDER
`Denying Petitioner’s Motion to Strike
`37 C.F.R. §§ 42.20, 42.23(b)
`
`
`1 This Order addresses issues that are the same in each of the identified
`proceedings. We exercise our discretion to issue one Order to be filed in
`each proceeding. The parties are not authorized to use this style heading for
`any subsequent papers.
`
`
`
`
`
`IPR2022-00543 (Patent 7,866,366 B2)
`IPR2022-00544 (Patent 8,561,666 B2)
`IPR2022-00545 (Patent 9,689,161 B2)
`IPR2022-00546 (Patent 9,797,134 B2)
`
`On April 24, 2023, with our prior authorization, Petitioner Chanel,
`Inc., filed a Motion to Strike Exhibits 2034–2037. Paper 32 (“Motion” or
`“Mot.”); Ex. 3002 (authorizing briefing on the Motion). On April 28, 2023,
`Patent Owner Molo Design, Ltd., filed a Response in opposition to the
`Motion. Paper 33 (“Opposition” or “Opp.”).2
`Petitioner’s Motion seeks to exclude four emails (Exhibits 2034–
`2037) that Patent Owner filed and relied on for the first time in connection
`with its Sur-reply. Mot. 1. Petitioner argues that the emails relate to Patent
`Owner’s copying argument in support of its reliance on objective indicia of
`nonobviousness, and could have been filed when Patent Owner filed its
`Response, “in which it first raised the issue of alleged copying.” Id.
`According to Petitioner, these emails constitute “new evidence” under 37
`C.F.R. § 42.23(b) and that striking the Exhibits “would not unfairly
`prejudice Patent Owner because it had multiple opportunities to submit this
`evidence in a timely manner but chose not to do so.” Id. at 1–2. Petitioner
`also argues that allowing the late submission of the Exhibits would unfairly
`prejudice Petitioner because it would deprive Petitioner “the opportunity to
`obtain and present related discovery in its responsive briefing,” including
`“an additional 2017 email (MOLO_00001811) that is directly related to
`Exhibits 2034–2037 and that undercuts” Patent Owner’s copying argument.
`Id. at 2–3 (“If Molo had submitted Exhibits 2034-2037 in a timely manner,
`Chanel would have introduced this other evidence to show how Molo’s
`
`2 For purposes of expediency, we cite to the Motion, Opposition, and
`Exhibits filed in IPR2022-00543. Petitioner and Patent Owner filed similar
`papers and the same Exhibits 2034–2037 in IPR2022-00544, IPR2022-
`00545, and IPR2022-00546.
`
`2
`
`
`
`IPR2022-00543 (Patent 7,866,366 B2)
`IPR2022-00544 (Patent 8,561,666 B2)
`IPR2022-00545 (Patent 9,689,161 B2)
`IPR2022-00546 (Patent 9,797,134 B2)
`
`copying argument is baseless.”). Petitioner also contends that the emails do
`not correct the record, as Patent Owner alleges, because Petitioner’s
`statement in its Reply that Patent Owner “presents no evidence” that
`Petitioner “knew of the ’366 patent or acquired a softwall sample before
`purchasing a competing product . . . was both accurate and appropriate”
`given Patent Owner’s burden of production as to its copying allegation. Id.
`at 3.
`
`Patent Owner argues that “Exhibits 2034–2037 filed with Patent
`Owner’s Sur-reply directly rebut Petitioner’s false implication made in
`Petitioner’s Reply.” Opp. 2. Patent Owner contends that Petitioner’s
`statement in its Reply—that Patent Owner “presents no evidence” that
`Petitioner “acquired a softwall sample before purchasing a competing
`product”—reveals a clear “implication” that Petitioner “never purchased or
`had possession of Patent Owner’s relevant product and could not copy it.”
`Id. According to Patent Owner, the arguments it raises in its Sur-reply are
`not new and that “the Board should exercise its general discretion under 37
`C.F.R. § 42.5(b) and deny Petitioner’s Motion to Strike because the
`submission is the only meaningful opportunity for Patent Owner to rebut
`Petitioner’s false implication.” Id. Patent Owner further contends that
`“[n]ot allowing Patent Owner the opportunity to rebut this false implication
`is prejudicial to Patent Owner and a violation of the [Administrative
`Procedures Act (“APA”)] and Due Process.” Id. at 3–4. Finally, Patent
`Owner argues that denying Petitioner’s Motion will result in “minimal
`prejudice to Petitioner” and granting Petitioner’s Motion would result in
`
`3
`
`
`
`IPR2022-00543 (Patent 7,866,366 B2)
`IPR2022-00544 (Patent 8,561,666 B2)
`IPR2022-00545 (Patent 9,689,161 B2)
`IPR2022-00546 (Patent 9,797,134 B2)
`
`prejudice to Patent Owner by “admitting Petitioner’s false implication but
`limiting Patent Owner to attorney argument in rebuttal.” Id.
`We begin our analysis by addressing whether Exhibits 2034–2037
`constitute “new evidence” within the meaning of 37 C.F.R. § 42.23(b). Rule
`23(b) states that a “sur-reply may only respond to arguments raised in the
`corresponding reply and may not be accompanied by new evidence other
`than deposition transcripts of the cross-examination of any reply witness.”
`Patent Owner does not dispute Petitioner’s assertion that the Exhibits
`constitute new evidence under Rule 23(b) because they are not deposition
`transcripts. We agree.
`When a party introduces arguably new evidence with a filing, our
`Consolidated Trial Practice Guide (“CTPG”)3 states that the other party
`“may request authorization to file a motion to strike.” CTPG at 80.
`Alternatively, the party may request authorization to file a sur-reply. Id. As
`a general matter, we are capable of identifying new issues or belatedly
`presented evidence when weighing the evidence at the close of trial, and
`striking portions of a party’s filings is a remedy that we grant rarely. Id. We
`may allow the late filing of evidence, such as Exhibits 2034–2037 here, “in
`the interests of justice.” 37 C.F.R. § 42.5(c)(3).
`Petitioner here chose to file a Motion to Strike, although Petitioner
`also argues that the inability to file an additional brief constitutes prejudice
`that supports its Motion, and if it had the opportunity to file an additional
`brief, it would have included evidence that undermines Patent Owner’s
`copying assertions. Mot. 2–3. We generally agree with Petitioner that the
`
`3 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
`
`4
`
`
`
`IPR2022-00543 (Patent 7,866,366 B2)
`IPR2022-00544 (Patent 8,561,666 B2)
`IPR2022-00545 (Patent 9,689,161 B2)
`IPR2022-00546 (Patent 9,797,134 B2)
`
`statement it made in its Reply does not justify the late introduction of the
`Exhibits with Patent Owner’s Sur-reply. See id. at 3. Arguing that Patent
`Owner failed to present certain evidence in support of its copying allegation
`does not amount to an argument that no such evidence exists, justifying
`Patent Owner’s introduction of new evidence in support of that allegation
`that it could have submitted with its Response. See id. Similarly, we do not
`view Petitioner’s argument in Reply as creating a “false implication” that no
`such evidence exists or that failing to allow Patent Owner the opportunity to
`present rebuttal evidence violates the APA or Due Process. See Opp. 2–4.
`Nevertheless, where, as here, the potential prejudice to Petitioner may be
`substantially minimized if not eliminated by allowing Petitioner to file a
`brief addressing the merits of Patent Owner’s copying allegations and
`related new evidence, we determine that it is in the interests of justice to
`deny Petitioner’s Motion to Strike. This approach allows the parties an
`opportunity to address all arguments and evidence going to the merits of the
`dispute and provides the Panel with a complete record before reaching the
`merits of the issues.
`Accordingly, it is:
`ORDERED that Petitioner’s Motion to Strike in each of the above-
`captioned proceedings is denied;
`
`5
`
`
`
`IPR2022-00543 (Patent 7,866,366 B2)
`IPR2022-00544 (Patent 8,561,666 B2)
`IPR2022-00545 (Patent 9,689,161 B2)
`IPR2022-00546 (Patent 9,797,134 B2)
`
`FURTHER ORDERED that Petitioner may file a Sur-sur-reply
`addressing the copying issues raised in Patent Owner’s Sur-reply no later
`than May 25, 2023 and not exceeding three pages in length; and
`
`FURTHER ORDERED that Petitioner may file the 2017 email
`identified in its Motion (MOLO_00001811) as an exhibit, but no other
`exhibits, declarations, or papers may be filed by either party in connection
`with this dispute.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`6
`
`
`
`IPR2022-00543 (Patent 7,866,366 B2)
`IPR2022-00544 (Patent 8,561,666 B2)
`IPR2022-00545 (Patent 9,689,161 B2)
`IPR2022-00546 (Patent 9,797,134 B2)
`
`
`PETITIONER:
`Gina Cornelio
`Mark A. Miller
`DORSEY & WHITNEY LLP
`cornelio.gina@dorsey.com
`miller.mark@dorsey.com
`
`
`PATENT OWNER:
`Jared D. Schuettenhelm
`Michael Chibib
`Patrick J. Connolly
`BRACEWELL LLP
`jared.schuettenhelm@bracewell.com
`michael.chibib@bracewell.com
`patrick.connolly@bracewell.com
`
`7
`
`
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