Case IPR2022-00545
`Patent 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,
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`v.
`MOLO DESIGN, LTD.,
`Patent Owner.
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`Case IPR2022-00545
`Patent 9,689,161
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`PATENT OWNER’S PRELIMINARY RESPONSE
`UNDER 37 C.F.R. § 42.107(a)
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`Patent 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,
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`v.
`MOLO DESIGN, LTD.,
`Patent Owner.
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`Case IPR2022-00545
`Patent 9,689,161
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`PATENT OWNER’S PRELIMINARY RESPONSE
`UNDER 37 C.F.R. § 42.107(a)
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`Patent 9,689,161
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`2.
`3.
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`TABLE OF CONTENTS
`INTRODUCTION ........................................................................................... 1
`I.
`BACKGROUND OF RELATED LITIGATION ............................................ 2
`II.
`III. THE PETITION SHOULD BE DENIED BECAUSE PETITIONER
`FAILS TO IDENTIFY THE GROUNDS FOR ITS CHALLENGE
`WITH SUFFICIENT PARTICULARITY ...................................................... 5
`IV. THE PETITION SHOULD BE DENIED BECAUSE PETITIONER
`HAS NOT MET ITS BURDEN TO ESTABLISH HOW THE
`CLAIMS SHOULD BE CONSTRUED ........................................................ 12
`Petitioner’s Advancement of Claim Construction Positions That
`A.
`It Contends are Legally Erroneous Fails to Meet its Burden .............. 12
`Petitioner’s Inconsistent and Conflicting Positions For
`1.
`“supports” and “self-supporting” .............................................. 13
`Petitioner’s Inconsistent Construction for “flaccid” ................. 15
`Petitioner’s Bases for Alleging Inconsistent Positions
`Have No Merit .......................................................................... 17
`Petitioner’s Failure to Identify Its Inconsistent Claim
`Constructions is a Breach of the Duty of Candor ............................... 20
`THE BOARD SHOULD DENY INSTITUTION BECAUSE THE
`PETITION HAS NOT SHOWN A REASONABLE LIKELIHOOD
`OF SUCCESS IN VIEW OF THE SOFTHOUSING REFERENCES ......... 23
`A. Overview of the SoftHousing and SoftWall References ...................... 23
`1.
`SoftHousing I (Exh. 1005) ........................................................ 23
`2.
`SoftHousing II (Exh. 1006) ....................................................... 25
`3.
`SoftHousing III (Exh. 1007) ...................................................... 27
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`B.
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`V.
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`B.
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`SoftWall (Exh. 1028) ................................................................. 27
`4.
`The Subject Matter of Each SoftHousing Reference and the
`SoftWall Reference Was Not Only Before the Examiner, but
`Does Not Disclose the Claimed Inventions ........................................ 28
`C. MacAllen 2008 Does Not Teach or Describe the Claimed
`Inventions ............................................................................................ 38
`VI. CONCLUSION .............................................................................................. 39
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`TABLE OF AUTHORITIES
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` Page(s)
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`Cases
`Adaptics Ltd. v. Perfect Co.,
`IPR2018-01596, Paper No. 20 (PTAB Mar. 6, 2019) .................................... 6, 10
`Amgen Inc. v. Hoechst Marion Roussel, Inc.,
`314 F.3d 1313 (Fed. Cir. 2003) .................................................................... 17, 20
`Edwards LifeSciences Corp. v. Boston Scientific Scimed, Inc.,
`IPR2017-01304, Paper No. 8 (PTAB Oct. 25, 2017) ......................................... 11
`EnergySource Minerals, LLC v. TerraLithium LLC,
`IPR2019-01606, Paper No. 7 (PTAB May 4, 2020) ...................................... 6, 10
`Enzo Biochem, Inc. v. Applera Corp.,
`599 F.3d 1325 (Fed. Cir. 2010) .......................................................................... 16
`Epsilon Data Mgmt., LLC v. Umbanet, Inc.,
`IPR2017-01743, Paper No. 20 (PTAB Apr. 30, 2018) ....................................... 20
`Facebook, Inc. v. Sound View Innovations, LLC,
`IPR2017-00998 .................................................................... 15, 16, 18, 20, 21, 23
`Harmonic Inc. v. Avid Tech., Inc.,
`815 F.3d 1356 (Fed. Cir. 2016) ............................................................................ 5
`Hunting Titan, Inc. v. DynaEnergetics Europe GmbH,
`PGR2020-00080, Paper No. 7 (PTAB Feb. 12, 2021) ............................... 6, 7, 10
`Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd.,
`821 F.3d 1359 (Fed. Cir. 2016) ............................................................................ 5
`InVue Security Prods., Inc. v. Mobile Tech., Inc.,
`IPR2019-00078, Paper No. 7 (PTAB May 1, 2019) .................................... 10, 11
`ipDataTel, LLC et al. v. ICN Acquisition,
`IPR2018-01822, Paper No. 19 (PTAB Apr. 22, 2019) ..................... 15, 16, 18, 21
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`Kiosoft Techs., LLC v. PayRange, Inc.,
`IPR2021-00086, Paper No. 12 (PTAB March 22, 2021) .... 15, 16, 17, 18, 20, 21
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`L & P Property Mgmt. Co. v. Remacro Mach. & Tech. (Wujiang) Co.,
`Ltd.,
`IPR2019-00255, Paper No. 15 (PTAB June 18, 2019) ...................................... 20
`Neil Ziegmann, N.P.Z., Inc. v. Stephens,
`IPR2015-01860, Paper No. 13 (PTAB Sept. 6, 2017) .................................. 33, 34
`OrthoPediatrics Corp. v. K2M, Inc.,
`IPR2018-01546, Paper No. 10 (PTAB Feb. 14, 2019) ..................... 14, 16, 18, 21
`Samsung Elecs. Am., Inc. v. Prisua Eng’g Corp.,
`948 F.3d 1342 (Fed. Cir. 2020) .......................................................................... 16
`Statutes
`35 U.S.C. § 312(a)(3) ........................................................................................... 5, 10
`Regulations
`37 C.F.R. § 42.51 (b)(iii) ......................................................................................... 20
`37 C.F.R. § 42.104(b)(3) ........................................................... 12, 13, 16, 19, 21, 22
`77 Fed. Reg. 48,756, 48,763 (Aug. 14, 2012) ........................................................... 6
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`LIST OF EXHIBITS
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`Joint Disputed Claim TermsChart, filed in Molo Design Ltd.v.
`Chanel, Inc., No 21-cv-1578 (S.D.N.Y.), dated September 24, 2021
`Dkt. No. 38
`Defendant Chanel, Inc.’s Claim Construction Brief, filed in Molo
`Design Ltd. v. Chanel, Inc., No 21-cv-1578 (S.D.N.Y.), dated
`November30, 2021 (Dkt. No. 43
`2003‘|Plaintiff Molo Design Ltd.’s Notice Regarding Chanel’s Supplement
`Claim Construction Positions, filed in Molo Design Ltd. v. Chanel,
`Inc., No 21-cv-1578 (S.D.N.Y.), dated February 18, 2022 (Dkt. No.
`51
`2004|Chanel’s Response to Molo’s Supplemental Claim Construction
`Statement, filed in Molo Design Ltd. v. Chanel, Inc., No 21-cv-1578
`S.D.N.Y.), dated February
`25, 2022 (Dkt. No. 54
`2005|Pedersen, Martin C, “The Soft House,” Metropolis Magazine(Jul.
`2004
`2006|Affidavit of Stephanie Forsythe
`2007|Affidavit of Todd MacAllen
`2008|U.S. Patent No. 7,866,366
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`2001
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`2002
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`I.
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`INTRODUCTION
`The Petition for inter partes review of claims 1-10, 12, 14, 18, 19-25, and 27
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`of U.S. Patent No. 9,689,161 (“the ’161 patent”), which is owned by Molo Design,
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`Ltd. (“Molo” or “Patent Owner” or “Applicant”) should be denied in its entirety for
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`multiple reasons.
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`First, Petitioner Chanel, Inc. (“Petitioner” or “Chanel”) advances claim
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`construction arguments that—at least according to Petitioner’s own representations
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`to the district court—would constitute reversible legal error if adopted by the Board.
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`In doing so, Petitioner fails to meet its statutory burden to demonstrate how the claim
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`terms should be construed and applied to the cited art. Even more significantly,
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`Petitioner has breached its duty of candor by concealing from the Board the fact that
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`it has taken conflicting and irreconcilable claim constructions positions in the related
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`district court proceeding.
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`Second, although Petitioner purports to present five distinct grounds,
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`including three obviousness grounds, these grounds are not delineated with the
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`required particularity that would enable Patent Owner to effectively respond to
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`Petitioner’s arguments. Instead, in each of its alleged obviousness grounds,
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`Petitioner attempts to connect numerous different references using the conjunction
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`“and/or,” resulting in at least 65 distinct obviousness combinations, in addition to
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`other grounds allegedly based on anticipation. As this Board’s decisions confirm,
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`such tactics are abusive, fail to establish the basis for Petitioner’s arguments with
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`particularity, and are nothing short of an attempt to improperly shift Petitioner’s
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`burden to Patent Owner.
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`Third, to the extent that Patent Owner can discern the grounds relied on by the
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`Petitioner, none of the references cited by Petitioner disclose, teach, or suggest the
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`required elements of the challenged claims, either alone or in combination. Indeed,
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`several the references are duplicative of references that were before the Office during
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`prosecution of the ’161 patent, and Petitioner fails to identify how the examiner erred
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`in his consideration of those references. Nor do the references teach or suggest
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`critical elements of the challenged claims. As such, the Petition fails to demonstrate
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`a reasonable likelihood of success on any ground.
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`Any one of these issues—taken alone—merits denial of the Petition. When
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`considered together, they strongly advise against instituting the IPR Petition.
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`II. BACKGROUND OF RELATED LITIGATION
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`On February 22, 2021, Patent Owner sued Petitioner in the Southern District
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`of New York, alleging infringement of the ’161 patent as well as three related patents
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`that are the subject of concurrently-filed IPR petitions. At or around the same time
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`it filed suit in New York, Patent owner also initiated actions addressing Petitioner’s
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`and its affiliates’ infringement of Patent Owner’s intellectual property rights in
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`several other countries, including France, Germany, Italy, Canada, and Taiwan.
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`In the ensuing year since Patent Owner initiated these actions, the parties have
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`engaged in significant discovery efforts, including: searching for and producing
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`large numbers of documents; propounding and responding to multiple sets of written
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`discovery; conducting multiple meet-and-confers regarding discovery; and
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`preparing and serving both infringing and invalidity contentions. The parties also
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`completed the entire claim construction identification and briefing process pursuant
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`to the district court’s Scheduling Order and the Southern District of New York’s
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`Local Patent Rules.
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`On February 4, 2022, only a few weeks before its statutory bar date, Petitioner
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`filed this Petition, together with the following IPR petitions for three related patents
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`that are also being asserted in the district court case:
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` IPR2022-00543, which challenges claims in U.S. Patent No. 7,866,366;
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` IPR2022-00544, which challenges claims in U.S. Patent No. 8,561,666;
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`and
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` IPR2022-00546, which challenges claims in U.S. Patent No. 9,797,134.
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`On the same day, Petitioner also filed a motion to stay the district court proceeding
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`in view of the IPR petitions.1
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`Notwithstanding the fact that the Board and the district court use the same
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`claim construction standard, Petitioner now advances vastly different claim
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`construction positions than it advances in the district court proceeding. For instance,
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`in the district court proceeding, Petitioner alleges that several terms in the challenged
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`claims of the ’161 patent must be explicitly construed. Petitioner also alleges that
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`failure to construe these terms would be both “improper” and invite “legal error,”
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`suggesting that any decision not to construe these terms would be subject to reversal
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`on appeal. In stark contrast to its representations to the district court, however, here
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`Petitioner alleges that the Board need not construe any terms at all.
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`Petitioner’s irreconcilable positions are further underscored by its position in
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`district court that certain terms are indefinite. For example, in the district court
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`proceeding, Petitioner contends that the term “flaccid”—which is recited in claim 10
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`of the ’161 patent—is indefinite and cannot be readily understood by a person of
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`1 On May 2, 2022, the Court stayed the district court litigation until the Board
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`decides whether institute Petitioner’s IPR petitions.
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`ordinary skill. But the Petition takes the opposite stance, alleging that whether a
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`structure was made from “flaccid” material would have been so readily apparent that
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`it need not even be construed by the Board.
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`In the time since the Petition was filed, Petitioner has also opposed efforts to
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`reconcile or unify its conflicting position in the different proceedings. Shortly after
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`the Petition was filed, Patent Owner expressly raised its concerns regarding
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`Petitioner’s inconsistent positions before the district court. But Petitioner stood fast
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`on its conflicting positions, taking the remarkable position that its claim construction
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`position in one proceeding “has no bearing” on its inconsistent position in the other
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`proceeding. Even more troubling, Petitioner has made no attempt to apprise the
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`Board of its conflicting positions and representations, despite its duty to do so.
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`Instead, Petitioner has left Patent Owner to address the issue in this Preliminary
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`Response.
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`III. THE PETITION SHOULD BE DENIED BECAUSE PETITIONER
`FAILS TO IDENTIFY THE GROUNDS FOR ITS CHALLENGE WITH
`SUFFICIENT PARTICULARITY
`“In an IPR, the petitioner has the burden from the onset to show with
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`particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid
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`Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3)). “It
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`is of the utmost importance that petitioners in the IPR proceedings adhere to [this]
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`requirement.” Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359,
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`1369 (Fed. Cir. 2016). Accordingly, a petitioner should not submit “a repository of
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`all the information that a judge could possibly consider, and instead focus on
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`concise, well-organized, easy-to-follow arguments.” EnergySource Minerals, LLC
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`v. TerraLithium LLC, IPR2019-01606, Paper No. 7 at 20-21 (PTAB May 4, 2020)
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`(citing Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,763 (Aug. 14,
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`2012)).
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`In keeping with this requirement, the Board has repeatedly explained that the
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`use of “and/or” as a “catch all” to combine numerous different references results in
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`grounds that are “not reasonably bounded in scope and [are] unduly burdensome for
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`both the Board and Patent Owner to address.” Energy Source, IPR2019-01606,
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`Paper No. 7 at 22; Hunting Titan, Inc. v. DynaEnergetics Europe GmbH, PGR2020-
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`00080, Paper No. 7 at 10 (PTAB Feb. 12, 2021) (finding that this style “lack[s]
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`particularity as voluminous, excessive, and burdensome”); Adaptics Ltd. v. Perfect
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`Co., IPR2018-01596, Paper No. 20 at 18-19 (PTAB Mar. 6, 2019) (same).2 It also
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`2 Indeed, because “and/or” “is a grammatical conjunction used to indicate that one
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`or more of the cases it connects may occur,” it “has been criticized as ‘[a] device,
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`or shortcut, that damages a sentence and often leads to confusion or ambiguity.”
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`Adaptics, IPR2018-01596, Paper No. 20 at 18, n.13.
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`gives rise to the “presentation of grounds that are uncertain and ill-defined.” Hunting
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`Titan, PGR2020-00080, Paper No. 7 at 9.
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`In this case, Petitioner has done precisely what this Board’s rules do not allow.
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`While the Petition purports to identify five grounds on which the challenge is based,
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`multiple grounds are based on combining a multiplicity of different references using
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`the conjunction “and/or” as illustrated below:
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`See Petition (“Pet.”) at 7.
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`Thus, for example, Ground 4 alone involves at least 25 different
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`combinations:
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`SoftWall3
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`SoftWall + SoftHousing I
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`SoftWall + SoftHousing II
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`SoftWall + SoftHousing III
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`SoftWall + Arens
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`SoftWall + Okuno
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`SoftWall + SoftHousing I + SoftHousing II
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`SoftWall + SoftHousing I + SoftHousing III
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`SoftWall + SoftHousing I + Arens
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`SoftWall + SoftHousing I + Okuno
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`SoftWall + SoftHousing II + SoftHousing III
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`SoftWall + SoftHousing II + Arens
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`SoftWall + SoftHousing II + Okuno
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`SoftWall + SoftHousing III + Arens
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`3 Under Petitioner’s theory, SoftWall alone would qualify as one combination as
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`Petitioner alleges that this reference “alone in view of the knowledge of a POSITA”
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`would render the claims obvious. Pet. at 51. Petitioner makes the same allegation
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`for the main reference cited in Ground 2.
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`SoftWall + SoftHousing III + Okuno
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`SoftWall + SoftHousing I + SoftHousing II + SoftHousing III
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`SoftWall + SoftHousing I + SoftHousing II + Arens
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`SoftWall + SoftHousing I + SoftHousing II + Okuno
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`SoftWall + SoftHousing I + SoftHousing III + Arens
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`SoftWall + SoftHousing I + SoftHousing III + Okuno
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`SoftWall + SoftHousing II + SoftHousing III + Arens
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`SoftWall + SoftHousing II + SoftHousing III + Okuno
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`SoftWall + SoftHousing I + SoftHousing II + SoftHousing II + Arens
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`SoftWall + SoftHousing I + SoftHousing II + SoftHousing II + Okuno
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`SoftWall + SoftHousing I + SoftHousing II + SoftHousing II + Arens
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`+ Okuno
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`Petitioner’s strategy of using “and/or” to connect multiple different references
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`is propagated throughout other grounds as well. For example, Petitioner’s use of
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`“and/or” to connect multiple difference references creates at least 16 different
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`combinations for Ground 2, and at least 24 different combinations for Ground 5. All
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`told, the Petition thus attempts to set forth at least 65 different obviousness
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`combinations against the claims, in addition to two separate grounds based on
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`anticipation. This results in an unwieldly, excessive, and burdensome number of
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`possible combinations. Energy Source, IPR2019-01606, Paper No. 7 at 20-21;
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`Hunting Titan, PGR2020-00080, Paper No. 7 at 10; Adaptics, IPR2018-01596,
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`Paper No. 20 at 18-19.4
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`This prejudice to Patent Owner is compounded by the fact that Petitioner’s
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`attempt this number of references “would require the panel or the Patent Owner to
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`scour the Petition to discern Petitioner’s evidence as to each of [20] claims in each
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`of three obviousness grounds.” InVue Security Prods., Inc. v. Mobile Tech., Inc.,
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`IPR2019-00078, Paper No. 7 at 15 (PTAB May 1, 2019). Such a requirement is
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`“tantamount
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`to
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`impermissibly
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`shifting Petitioner’s
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`burden
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`under
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`35 U.S.C. § 312(a)(3).” Id. (emphasis added). Nor is it the Board’s function “to
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`comb through Petitioner’s arguments in order to decipher the strongest argument or
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`to determine the strongest combination of references to challenge the claims.”
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`4 Petitioner has taken the same approach it its co-pending IPR petitions for the
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`related patents asserted by Patent Owner. For example, as noted in Patent Owner’s
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`Preliminary Responses to those petitions, the petition in IPR2022-00543 asserts 36
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`obviousness combinations, the petition IPR2022-00546 asserts 52 obviousness
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`combinations, and the petition in IPR2022-00544 also asserts 52 obviousness
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`combinations.
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`Edwards LifeSciences Corp. v. Boston Scientific Scimed, Inc., IPR2017-01304,
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`Paper No. 8 at 6, n.2 (PTAB Oct. 25, 2017) (denying institute where the petitioner
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`asserted seven different references in various combinations connected by “and/or”).
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`As the Board has also explained, the statutory requirement for particularity in
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`an IPR petition takes even more “heightened importance when considered in
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`conjunction with the all-or-nothing approach required for institution” under the
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`Supreme Court’s decision in SAS Institute Inc. v. Iancu. See InVue, IPR2019-00078,
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`Paper No. 7 at 13. For example, even if the Board might discern a specific
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`combination that did not lack clarity, under SAS the Board would be “required to
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`institute on all challenges in the Petition, not merely those that did not lack
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`particularity or were not voluminous and excessive.” Id. at 18. This would
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`compound the undue burden on Patent Owner, requiring it to “identify and respond
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`to all grounds . . . despite the lack of particularity” in the references. Id. It would
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`also require the Board to analyze whether each and every element of all 20
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`challenged claims is taught by the multitude of different references. Id. at 15.
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`As a result, Petitioner’s attempt to assert at least 65 different obviousness
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`combinations, as well as two separate anticipation grounds, fails to meet the
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`particularity requirements for an IPR petition. For this additional reason, the Petition
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`should be denied.
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`IV. THE PETITION SHOULD BE DENIED BECAUSE PETITIONER HAS
`NOT MET ITS BURDEN TO ESTABLISH HOW THE CLAIMS
`SHOULD BE CONSTRUED
`A.
`Petitioner’s Advancement of Claim Construction Positions That It
`Contends are Legally Erroneous Fails to Meet its Burden
`It is well established that the Petitioner has the burden to establish how a
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`challenged claim should be construed and apply the construed limitations to the cited
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`art. See 37 C.F.R. § 42.104(b)(3). In this proceeding, Petitioner has taken the
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`position that the “Board need not construe any terms in order to resolve the
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`underlying controversy.” Pet. at 22-23. But this position directly conflicts with
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`Petitioner’s arguments in the co-pending district court litigation. In that proceeding,
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`Petitioner not only alleges that numerous terms must be construed, but also that
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`“fundamental” disputes regarding the scope of the claim terms are directly “relevant
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`to the issue of invalidity.” Exh. 2002 at 6-7. Significantly, Petitioner also asserts
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`that the very claim construction position it now advances before the Board—i.e., that
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`none of the claim terms require construction—is both “improper” and invites
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`reversible “legal error.” Id. at 11.
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`In this Preliminary Response, Patent Owner addresses Petitioner’s treatment
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`of specific claim terms in detail. As explained below, by positing claim construction
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`positions that it simultaneously contends are improper and legally erroneous,
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`Petitioner has failed to demonstrate how the challenged claims should be construed
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`and applied to the identified references as required by the Board’s regulations.
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`37 C.F.R. § 42.104(b)(3). As a result, the Petition should be denied in its entirety.
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`1.
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`Petitioner’s Inconsistent and Conflicting Positions For
`“supports” and “self-supporting”
`Claims 12 and 14 of the ’161 patent recite the term “supports.” In this
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`proceeding, Petitioner takes the position that this term, together with every other
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`term in the ’161 patent, need not be construed. Pet. at 22-23. But in the district court
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`proceeding, Petitioner contends that “supports” must be construed as “supporting
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`panels that are different from the laminar panels that form the core.” Exh. 2001 at
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`6; Exh. 2002 at 5. In taking this position, Petitioner has not only represented that
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`“there is a fundamental dispute regarding the scope of this claim term” that requires
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`construction, but also that this dispute is directly “relevant to the issue of invalidity.”
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`Exh. 2002 at 6-7 (emphasis added). Even more significantly, Petitioner represented
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`to the district court that “failing to issue a construction, or issuing a ‘plain and
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`ordinary meaning’ construction” for the term “supports”—which is precisely what
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`Petitioner now proposes to the Board—is both “improper” and invites “legal error.”
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`Id. at 11 (emphasis added); id. at 12, n.7 (contending that there is a “clear” dispute
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`regarding the meaning of this term that “must be resolved” through claim
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`construction). Thus, pursuant to Petitioner’s representations to the district court, the
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`13
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`Board would be committing reversible legal error here by instituting this Petition
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`based on Petitioner’s proposed construction for “supports.”
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`But “supports” is not the only term for which Petitioner offers conflicting
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`positions. For instance, in the district court proceeding Petitioner contends that the
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`term “self-supporting” must be construed to mean “able to stay upright and resist
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`collapse without being supported by something else.” Exh. 2002 at 12.5 In doing
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`so, Petitioner has stated that the parties not only dispute the meaning of this term,
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`but has urged that this dispute confirms the necessity of claim construction. Id. at 13.
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`Petitioner has even introduced two different pieces of extrinsic evidence to support
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`its contention that this term should be construed in a specific manner. Id. at 14
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`(citing two dictionary definitions).
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`As a result, Petitioner’s assertion that the Board need not construe these terms
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`is in direct conflict with its representations to the district court. Moreover, by
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`“failing to reconcile the proffered construction in the Petition with its very different
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`construction before the district court”—and advancing positions that it alleges are
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`legally erroneous—Petitioner “fails to satisfy [its] burden” to identify how the
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`challenged claims are to be construed and applied to the prior art. OrthoPediatrics
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`5 This term is recited in Claim 12 of the ’161 patent.
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`14
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`Corp. v. K2M, Inc., IPR2018-01546, Paper No. 10 at 12 (PTAB Feb. 14, 2019);
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`Kiosoft Techs., LLC v. PayRange, Inc., IPR2021-00086, Paper No. 12 at 16 (PTAB
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`March 22, 2021) (denying institution where Petitioner had not “provided any reason
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`behind its inconsistent claim constructions in general”); Facebook, Inc. v. Sound
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`View Innovations, LLC, IPR2017-00998 & IPR2017-01002, Paper No. 13 at 18
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`(PTAB Sept. 5, 2017) (denying institution where Petitioner failed to inform the
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`board “of its seemingly inconsistent claim construction positions” before the district
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`court); ipDataTel, LLC et al. v. ICN Acquisition, IPR2018-01822, Paper No. 19 at
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`13-14 (PTAB Apr. 22, 2019) (denying institution where “Petitioner has not offered
`
`any explanation as to how its positions here and in the District Court can be
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`reconciled”).
`
`2.
`Petitioner’s Inconsistent Construction for “flaccid”
`Claim 10 of the ’161 patent also recites the term “flaccid.” In this proceeding,
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`Petitioner asserts that this term need not be construed by the Board. Pet. at 22-23.
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`But in the district court proceeding, Petitioner alleges that this term is indefinite
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`because it “is subjective and fails to inform those skilled in the art of the required
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`quality of the material.” Exh. 2002 at 16 (emphasis added). Petitioner also contends
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`that the “patent specifications fail to provide sufficient guidance regarding . . . how
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`those skilled in the art can determine whether a particular material is ‘flaccid.’” Id.
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`at 17 (emphasis added); see also id. at 18 (arguing that any suggestion that “those
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`skilled in the art will know [flaccid material] when they see it” is “amorphous”); id.
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`at 19 (asserting that the specification “fail[s] to provide a method for those skilled in
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`the art to determine whether a material is ‘flaccid.’”).
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`“If a claim is indefinite, the claim, by definition, cannot be construed” as
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`required by 37 C.F.R. §42.104(b)(3). ipDataTel, IPR2018-01822, Paper No. 19 at
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`14 (citing Enzo Biochem, Inc. v. Applera Corp., 599 F.3d 1325, 1332 (Fed. Cir.
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`2010)); Samsung Elecs. Am., Inc. v. Prisua Eng’g Corp., 948 F.3d 1342, 1350-51
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`(Fed. Cir. 2020) (confirming that the Board can neither “institute inter partes review
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`of claims for indefiniteness” nor “cancel challenged claims for indefiniteness.”).
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`Accordingly, pursuant to Petitioner’s district court position, the Board could not
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`construe this term. Thus, Petitioner’s failure to “offer[] any explanation as to how
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`its positions here and in the district court can be reconciled” establishes that it has
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`not met its burden to demonstrate how the terms should be construed as required by
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`the Board’s regulations. ipDataTel, IPR2018-01822, Paper No. 19 at 13-14
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`(denying institution where Petitioner argued that a claim term was indefinite in the
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`district court); see also OrthoPediatrics, IPR2018-01546, Paper No. 10 at 12;
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`Kiosoft, IPR2021-00086, Paper No. 12 at 16; Facebook, IPR2017-00998 &
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`IPR2017-01002, Paper No. 13 at 18.
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`16
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`3.
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`Petitioner’s Bases for Alleging Inconsistent Positions Have
`No Merit
`As noted above, Patent Owner raised the issue of Petitioner’s contradictory
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`positions in the district court proceeding shortly after this Petition was filed.
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`Exh. 2003. But rather reconcile its positions, Petitioner has taken the extraordinary
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`view that its claim construction position in one proceeding “has no bearing” on its
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`claim construction position in the other. Ex. 2004 at 3. To justify this contention,
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`Petitioner has alleged that it is entitled to take different claim construction because
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`the district court action “involves a broader set of issues,” including infringement.
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`Id. at 2.
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`Petitioner’s position is contrary to established law. Both the Board and district
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`courts use the Phillips claim construction standard, which was specifically “adopted
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`[by the Board] to avoid decisions that construe the same or similar claims of a
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`patent inconsistently across different forums.” Kiosoft, IPR2021-00086, Paper
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`No. 12 at 15 (emphasis added). Moreover, as the Federal Circuit has repeatedly
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`explained, “[i]t is axiomatic that claims are construed the same way for both
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`invalidity and infringement.” Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d
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`1313, 1330 (Fed. Cir. 2003) (emphasis added). Thus, Petitioner’s contention that
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`the claims can be construed one way in this proceeding for purposes of invalidity—
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`but must be construed differently for “a broader set of issues” such as infringement
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`17
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`in the district court—is firmly foreclosed by controlling precedent and is nothing
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`short of an invitation to commit clear legal error. And by taking such contradictory
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`positions, which it makes no attempt to reconcile, Petitioner has failed to meet its
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`burden to demonstrate how the challenged claims should be construed and applied
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`to the identified references. ipDataTel, IPR2018-01822, Paper No. 19 at 13-14;
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`OrthoPediatrics, IPR2018-01546, Paper No. 10 at 12; Kiosoft, IPR2021-00086,
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`Paper No. 12 at 16; Facebook, IPR2017-00998 & IPR2017-01002, Paper No. 13
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`at 18.
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`Patent Owner notes that, in the corresponding district court proceeding,
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`Petitioner also cited to a Board decision in Target Corp. v. Proxicom Wireless, LLC
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`as alleged support for its position on differing claim construction positions.
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`IPR2020-00904, Paper No. 11 (PTAB Nov. 10, 2020). But Petitioner’s reliance on
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`this decision is unavailing. For example, in Target, the Petitioner had simply
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`submitted preliminary constructions arguing that certain terms were indefinite. Id.
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`at 11-12. But in this case, Petitioner has gone much further, taking a final position
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`in its claim construction brief that explicitly contradicts its arguments in the Petition
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`regarding the term “flaccid.” See, e.g., Ex. 2002 at 16 (alleging that flaccid “is
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`subjective and fails to inform those skilled in the art of the required quality of the
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`material”) and 17 (asserting that the “patent specifications fail to provide sufficient
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`18
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`guidance regarding . . . how those skilled in the art can determine whether a
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`particular material is ‘flaccid.’”). And unlike Target, Petitioner has also alleged that
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`a failure to construe other claim terms—which is the course of action Petitioner now
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`proposes
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