Trials@uspto.gov
`571-272-7822
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Paper No. 45
`
`
`
`
`
`
`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)
`
`
`Record of Oral Hearing
`Held: June 8, 2023
`
`
`
`
`
`Before KEN B. BARRETT, CARL M. DeFRANCO, and
`RICHARD H. MARSCHALL, Administrative Patent Judges.
`
`
`
`
`
`
`
`
`571-272-7822
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Paper No. 45
`
`
`
`
`
`
`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)
`
`
`Record of Oral Hearing
`Held: June 8, 2023
`
`
`
`
`
`Before KEN B. BARRETT, CARL M. DeFRANCO, and
`RICHARD H. MARSCHALL, Administrative Patent Judges.
`
`
`
`
`
`
`
`
`
`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)
`
`
`
`APPEARANCES:
`
`ON BEHALF OF THE PETITIONER:
`
`
`JEFF GODFREY, ESQUIRE
`SHANNON BJORKLUND, ESQUIRE
`GINA CORNELIO, ESQUIRE
`Dorsey & Whitney LLP
`
`
`ON BEHALF OF THE PATENT OWNER:
`
`
`MIKE CHIBIB, ESQUIRE
`Bracewell LLP
`
`
`The above-entitled matter came on for hearing on June 8, 2023,
`commencing at 9:41 a.m., via video teleconference.
`
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`(404) 684-6008
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`Jamison Professional Services
`East Pointe, GA
`
`www.jps-online.com
`
`
`
`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)
`
`
`
`P R O C E E D I N G S
`- - - - -
`JUDGE MARSCHALL: Good afternoon, everyone. This is the
`hearing in IPR 2022-00543, -00544, -00545, and -00546, between Petitioner
`Chanel, Inc., and Patent Owner Molo Design, Ltd. We're reviewing four of
`Molo Design's patents in these proceedings. I'm Judge Marschall. With me
`via video are Judges Barrett and DeFranco. Let's start with the parties'
`appearances, please, and let's start with Petitioner.
`MR. GODFREY: Good afternoon, Your Honors. Jeff Godfrey
`with Dorsey & Whitney, representing Petitioner Chanel, Inc. With me today
`are my colleagues Shannon Bjorklund and Gina Cornelio.
`JUDGE MARSCHALL: Thank you. And for Patent Owner?
`MR. CHIBIB: Good afternoon, Your Honors. Mike Chibib of
`Bracewell on behalf of Patent Owner Molo Design.
`JUDGE MARSCHALL: And is anybody else with you today?
`MR. CHIBIB: Not that I'm aware of. I think the client is on the
`public line. But other than that, I'm not aware of anyone.
`JUDGE MARSCHALL: All right. Thank you and welcome. As
`you know from our hearing order, each party will have a total of 60 minutes
`of total time to present arguments, and a portion of that time may be
`reserved for rebuttal. This hearing is taking place via videoconference. And
`during your presentation, please refer to exhibit or slide numbers to aid us in
`following along and to make the transcript clearer. Please do not interrupt
`
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`(404) 684-6008
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`Jamison Professional Services
`East Pointe, GA
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`www.jps-online.com
`
`
`
`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)
`
`the other party's presentation. You may object only during your argument
`time or following the rebuttal. Please be aware that we have provided a
`public access line for the public to watch this hearing. Petitioner, you will
`start. And before you get going, would you like to reserve any time for
`rebuttal?
`
`MR. GODFREY: Yes, Your Honor. We'd like to reserve 20
`minutes for rebuttal.
`JUDGE MARSCHALL: Okay. I will endeavor to give you a
`warning at, you know, the 5-to-10-minute mark, but I encourage you to keep
`time on your end so that people in the room can give you a warning as well.
`With that, you can begin when ready. And Patent Owner, just so you know,
`you can step down as you're about to do and mute your mic. That would be
`great. Thank you.
`MR. CHIBIB: Thank you, Your Honor.
`MR. GODFREY: Thank you, Your Honor. For the argument
`today, I'm going to start by addressing the '366 patent. My colleague, Ms.
`Bjorklund, will then address the other three patents. And then, I will address
`objective indicia of non-obviousness for all of the patents.
`I'm turning to Slide 2 now, starting with the '366 patent. There are
`three grounds of unpatentability, all obviousness. And I will focus on
`Ground 1, our strongest ground. Time permitting, I will then address
`Ground 2, and we will rely on our briefing for Ground 3.
`Turning to Slide 3. In this IPR, the key issues concern the prior art
`disclosure of Elements B and C of Independent Claim 1, supports that are
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`(404) 684-6008
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`Jamison Professional Services
`East Pointe, GA
`
`www.jps-online.com
`
`
`
`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)
`
`self-supporting and foldable into a tubular configuration, and fasteners.
`Neither party proposed a construction for any claim term, and there are no
`disputes unique to the dependent claims in this patent.
`Turning to Slide 4. For Ground 1, the primary reference is
`SoftHousing I, a webpage describing MacAllen and Forsythe's submission to
`the 2003 Design Beyond East and West competition, or DBEW. The web
`page includes a written description of SoftHousing plus the images
`MacAllen and Forsythe submitted to the competition. Molo admits the web
`page is 102(b) prior art, but disputes whether one could view large images of
`SoftHousing on the web page. There is extensive evidence showing the
`large images of SoftHousing were accessible by clicking on the thumbnail
`images on the top of the web page, as depicted in this example on Slide 4.
`And the most direct evidence is from Internet Archive. When you
`go to the archived copy of the prior art web page, you can click on the first
`thumbnail image, and it opens a pop-out window with a larger version of the
`image. The URL for the pop out window even includes the text big_img,
`short for big image. After opening the big image, you can right click, save
`image as, and download a .jpg copy of the image file. And that's how we
`obtained the large image shown here on the right of Slide 4.
`These same thumbnails and corresponding large images were also
`published on the Korean and Chinese language versions of the DBEW
`website, and those large images are shown in Slides 5 through 8. Internet
`Archive did not capture these other large images on the English version of
`the site, but the filenames are the same and Ms. Forsythe confirmed that
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`(404) 684-6008
`
`Jamison Professional Services
`East Pointe, GA
`
`www.jps-online.com
`
`
`
`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)
`
`these are the images they submitted to DBEW.
`The large images were also republished in books, on other
`websites, and described in contemporaneous newspaper and magazine
`articles. So there's ample evidence that an interested person of skill
`exercising reasonable diligence could have located the large images on the
`DBEW website.
`Moving to Slide 10. If there were any doubt about the large
`images on the website, SoftHousing I, there is no doubt the large images
`were published in SoftHousing II, the DBEW book. And a person of skill
`would know that SoftHousing I and II describe the same work and may
`easily be combined.
`Stepping back to Slide 9, Molo also complains that the Petition
`used higher resolution versions of these same images taken from Molo's
`DBEW brochure, Exhibit 1014. We see this as another non-issue. Ms.
`Forsythe confirmed the images from Exhibit 1014 are the same images they
`submitted to DBEW. That's in the testimony shown here, Exhibit 1050 at
`page 33, lines 11 to 24. And there is no material difference between the
`images in the SoftHousing prior art and the ones annotated in the Petition.
`All of the features annotated in the Petition are discernible in the
`SoftHousing prior art. And there was no sleight of hand. The Petition
`expressly noted the use of higher resolution images and Molo did the exact
`same thing in its Preliminary Response.
`Moving to Slide 12 and turning now to the claim limitations. And
`I'll start with the requirement of end supports that are self-supporting to
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`(404) 684-6008
`
`Jamison Professional Services
`East Pointe, GA
`
`www.jps-online.com
`
`
`
`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)
`
`provide rigidity to the core, which the Board interpreted as connoting
`sufficient rigidity to resist collapse of the core. These images on Slide 12
`are figures from the '366 patent depicting embodiments of expanded
`partitions that are self-supporting and resist collapse.
`JUDGE MARSCHALL: Before you go further, if you could just
`clarify your position on self-supporting versus freestanding, and if you view
`them as synonymous or if one is narrower than the other, and if we should
`be keeping track of that in your arguments.
`MR. GODFREY: We view them as different, although, as clear
`from the briefing, a lot of the evidence is the same. But they are different
`claim terms. And so I'm speaking specifically to self-supporting in the '366
`in this portion of the argument.
`JUDGE MARSCHALL: To you, one is more narrow than the
`
`other?
`
`MR. GODFREY: I don't know, Your Honor. It wasn't something
`that the parties focused in on in the briefing.
`JUDGE MARSCHALL: I didn't see any differences, and that's
`why I'm asking. They're different terms, so I understand why you say
`they're different and you don't want to treat them as identical yet. I don't
`know if there's any substantive difference. It sounds like you're not arguing
`for any substantive difference that the outcome might hinge on that
`difference, and I assume that's the same for Patent Owner, but we can ask
`Patent Owner during their time. Thank you. You may proceed.
`MR. GODFREY: That's correct for our position. Yes. So on
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`(404) 684-6008
`
`Jamison Professional Services
`East Pointe, GA
`
`www.jps-online.com
`
`
`
`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)
`
`Slide 13, shown here, these images are from the SoftHousing prior art and
`show expanded softwalls and softblocks that are self-supporting, as required
`by the claims. So if you consider the images at the top of Slide 13, in the
`foreground, Ms. Forsythe is expanding a softwall prototype. And in the
`background, there are three already expanded prototypes: a softwall on the
`left under the windows and two shorter softblocks in the middle background
`of the image. These photographs --
`JUDGE MARSCHALL: So your position is that -- I'm sorry. I'm
`going to be doing this interruption all the time today, but it's a little tough
`with the video, I understand. The softwall in the back, in the background, is
`it your position that it is not supported by a wall in any way?
`MR. GODFREY: Ms. Forsythe and Mr. MacAllen testified that
`that one in the back, in actual fact, was. I believe they said it had books on it
`or it was attached to a wall. However, our position is the relevant
`consideration is what these images would disclose to a person of ordinary
`skill in the art. And the images don't show books or fasteners. The images
`convey partitions and blocks that are self-supporting. And so the private
`knowledge that Ms. Forsythe and Mr. MacAllen may have had is not
`something that a person of ordinary skill had access to and would take away
`from viewing the SoftHousing prior art references.
`JUDGE MARSCHALL: And with regard to the softblock
`references or the image of the softblock products in the background, is it
`your position that those are not supported by anything and that even the
`testimony doesn't suggest that at the time of the photograph, they are not
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`(404) 684-6008
`
`Jamison Professional Services
`East Pointe, GA
`
`www.jps-online.com
`
`
`
`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)
`
`supported by anything?
`MR. GODFREY: Our position is they certainly do not appear to
`be supported and that Ms. Forsythe and Mr. MacAllen actually testified that
`in actual fact, the softblocks shown here were self-supporting. And that
`testimony is summarized in the -543 proceeding at Paper 28, page 22.
`JUDGE MARSCHALL: And for the other proceedings, some of
`the claims require at least one meter of height. Are you relying on those
`softblock products to meet that limitation or for those claims that require at
`least a meter of height, are you relying exclusively on the softwall
`prototypes?
`MR. GODFREY: We were relying on the taller prototypes and
`then also the knowledge and ability that one of skill in the art would have to
`vary the dimensions of a structure for a given application. And that is
`covered by our expert, Professor Rake.
`JUDGE MARSCHALL: Okay. Thank you.
`MR. GODFREY: So moving to Slide --
`JUDGE DEFRANCO: Counsel, going back to that figure --
`counsel, could you go back to the -- this is Judge DeFranco. Just going back
`to the figure there, you say they appear to be self-supporting. How do we
`know that somebody skilled in the art would not think that they appear to be
`supported or attached to the wall in the rear of the block? I mean, against
`the wall.
`
`MR. GODFREY: So maybe the best example of that would be the
`one in the top sequence of images on the far right-hand side which does not
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`(404) 684-6008
`
`Jamison Professional Services
`East Pointe, GA
`
`www.jps-online.com
`
`
`
`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)
`
`appear to be leaning against a wall. And there's no books or anything on top
`that would be visible. And so our expert, Professor Rake, looking at the
`images, it was his opinion that one of skill would view these as self-
`supported structures. And in the bottom sequence of images are some other
`examples. So in the middle image on the bottom and then in the one on the
`right, there's an overhead view and there's a wall that kind of extends
`horizontally across the room. And that wall, and certainly the right-hand
`side of that wall, does not appear to be having support from any other
`structure or fastening.
`JUDGE DEFRANCO: Well, the images on the bottom, how do
`we know that that's just not a model as opposed to an actual figure of the
`wall itself and its soft structure?
`MR. GODFREY: Yes, Your Honor. Even if they are a model, I
`think the images need to be viewed in the context of the overall DBEW
`submission and what it was trying to convey. And so the competition, the
`2003 DBEW competition, this was soliciting designs for a residence for a
`family of three. So the submissions are supposed to be communicating
`structures and partitions that in this case, that could be used, actually built
`and used for that purpose.
`So that's the overall context of the disclosure. And there's a
`textural description about the nature of the materials. And there's nothing in
`there that suggests in any way that if you attempted to use them for the
`purpose illustrated in the submission, they would collapse, defeating the
`purpose of the competition itself. And so our view is that taken overall, in
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`(404) 684-6008
`
`Jamison Professional Services
`East Pointe, GA
`
`www.jps-online.com
`
`
`
`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)
`
`the overall context, that even if these are tiny models, what they're meaning
`to convey is that one of skill could build partitions as depicted here for
`actually separating out rooms of a residence or pulling out bedrooms and
`various other uses described.
`JUDGE DEFRANCO: Okay. So you're saying could build. This
`is an obviousness argument, correct?
`MR. GODFREY: It is. Yes.
`JUDGE DEFRANCO: So somebody could build these structures,
`but there's still nothing indicating in those top row of four pictures that they
`are necessarily self-supporting as opposed to one looks like it's leaning
`against -- it could be leaning against that chair structure or supported by that
`chair structure on the right.
`MR. GODFREY: Our position, Your Honor, is that the images,
`such as the one on the top right, would convey to one of skill articles had
`actually been built that were self-supporting.
`JUDGE DEFRANCO: That's based solely on your expert
`testimony, Mr. Rake?
`MR. GODFREY: Yes, and the contents of the reference, of
`course, as well. Yes.
`So as I mentioned earlier, Molo argues that its prototypes were
`prone to collapse and therefore lacked the self-supporting ends. But this
`information wasn't disclosed in the SoftHousing prior art, and so it wasn't
`available to a person of skill. Molo is focusing on what MacAllen and
`Forsythe privately believed, but the relevant inquiry is what one of ordinary
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`(404) 684-6008
`
`Jamison Professional Services
`East Pointe, GA
`
`www.jps-online.com
`
`
`
`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)
`
`skill would have understood from the public disclosures.
`I'm going to advance to Slide 15. And the next issue, which is
`whether the end supports were foldable in a tubular configuration. Not
`actually folded for this patent, just capable of being folded in a tubular
`configuration. And the end supports were foldable in that manner as
`depicted here on Slide 15. So the SoftHousing prior art disclosed flexible
`structures made of fire retardant treated white tissue paper and fine
`polyethylene fiber pressed into sheets. And a person of skill would have
`understood that supports made of such material were capable of being folded
`in various configurations, including a tubular configuration. And the images
`shown here depict the flexible, foldable nature of the walls and the end
`supports.
`JUDGE MARSCHALL: If I can interrupt again, this is Judge
`Marschall. The first time tubular configuration appears in the claim, it does
`come right after foldable, in the phrase foldable into a tubular configuration,
`so I understand your argument that that may require a mere capability to be
`folded into that configuration and doesn't require a prior art reference to
`actually be shown in that configuration. However, later in the claim, it
`requires a plurality of fasteners that secure the supports in said tubular
`configuration. And that seems a little more definite, if you will, or a little
`more definitive that you need to actually show that the fasteners are going to
`secure the end supports in that tubular configuration. Do you disagree with
`that interpretation of the claim?
`MR. GODFREY: We do, Your Honor. We interpret the third
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`(404) 684-6008
`
`Jamison Professional Services
`East Pointe, GA
`
`www.jps-online.com
`
`
`
`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)
`
`limitation, Limitation C, as describing capabilities of the fasteners as well.
`So fasteners that could secure end supports in that configuration or could be
`used to attach articles, similar articles together. And we think that reading is
`the more reasonable one because those two exemplary uses recited in the
`claim are not ones you would do at the same time. You wouldn't secure the
`end in a tubular configuration and then attach it to another. Those are
`alternative uses that the plurality of fasteners must be capable of supporting
`to meet this claim limitation. That's our position.
`JUDGE MARSCHALL: Okay. And if we disagree with you on
`that, I suppose then you'd fall back to your obviousness argument, that it
`would have been obvious to secure them in that configuration for functional
`and aesthetic reasons. Is that accurate?
`MR. GODFREY: That's correct, Your Honor. And my colleague,
`Ms. Bjorklund, is going to address the details of that argument in the context
`of the '161 patent, which actually does have a claim that requires that.
`JUDGE MARSCHALL: Okay. Thank you.
`JUDGE DEFRANCO: Counsel, where are the plurality of
`fasteners in this picture?
`MR. GODFREY: There are no fasteners depicted in SoftHousing I
`and II. So in this obviousness argument, we are combining these references
`with SoftHousing III, which is a related reference, which -- well, let me
`advance to Slide 17. So Slide 17, this is SoftHousing III, a related reference
`also describing the same work. This has an express disclosure of fasteners
`on one end. And then, the other reference we rely on is in Slide 18, Arens,
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`East Pointe, GA
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`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)
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`which is for temporary partitions. And this, the Arens reference also
`discloses using a fastener on the end of the supports to connect partitions
`together via a post.
`And so these secondary references both teach the use of velcro to
`connect partitions. And we believe that this will be natural to combine these
`references with the primary reference, SoftHousing references.
`JUDGE DEFRANCO: But the claim says a plurality of fasteners
`on each of said supports. So first of all, where are the supports in the picture
`in the previous slide? Just on the ends?
`MR. GODFREY: Yes. The supports are the panels on the end of
`the expandable structures.
`JUDGE DEFRANCO: How do we know those are supports?
`Because the second picture from the left seems to be very flexible. Like, the
`entire structure is very flaccid, so to speak.
`MR. GODFREY: Yes, Your Honor. Supports may be flexible.
`They just need to provide sufficient rigidity to resist collapse of the core in
`this context. And that the amount of rigidity or flexibility that can work in
`any situation is going to depend also on the dimensions of the partition or
`the block. So more rigidity may be needed if you have a particularly tall
`partition with a narrow base, and less may be needed. So a variety of
`materials can be used, and the size of the structure, and the use to which it's
`being put, one of ordinary skill would understand that you had to vary the
`materials based on the use.
`JUDGE DEFRANCO: How do we know that there's any rigidity
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`Jamison Professional Services
`East Pointe, GA
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`www.jps-online.com
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`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)
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`to anything in these pictures? Where is the rigidity shown or disclosed?
`MR. GODFREY: So if I move back to Slide 13, so we are relying
`on, again, the images shown in SoftHousing I and II of the expanded
`partitions.
`JUDGE DEFRANCO: You're talking about the figure -- the
`picture on the right side?
`MR. GODFREY: So in the top sequence of images here, it would
`be the one on the right. And then, we would also point to the images in the
`background. You know, there's testimony that the softblocks were not
`attached to anything. So they were, in addition to what is actually
`communicated here to one of ordinary skill, in actual fact, they were not
`fastened or supported in any manner.
`JUDGE DEFRANCO: Okay. I understand the block. But where
`is the supports on that block? And where is the supports on the wall?
`Because it looks like -- is it Ms. Forsythe, one of the inventors -- she seems
`to be holding the ends of the wall. So I'm not sure that they're supported.
`MR. GODFREY: Yeah. The ends of the --
`JUDGE DEFRANCO: Other than the honeycomb -- what I'm
`having trouble with here is other than the honeycomb structure, I'm not
`seeing supports.
`MR. GODFREY: The supports are the last panel on either end of
`the partition, and they may be flexible and still operate as supports, as these
`claims are written.
`JUDGE DEFRANCO: Now, when you say panels, I'm not seeing
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`Jamison Professional Services
`East Pointe, GA
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`www.jps-online.com
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`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)
`
`panels. I just see the end of the honeycomb structure. Where are the panels?
`MR. GODFREY: So there's a panel on each end at the end of the
`structure, and that's the end supporting --
`JUDGE DEFRANCO: Is it something that's expressly disclosed?
`Or is it expressly shown?
`MR. GODFREY: I would say it is expressly shown in the images
`in the SoftHousing prior art. There are ends and --
`JUDGE DEFRANCO: Which image shows these panels?
`MR. GODFREY: So in this one, in this sequence of images at the
`top, maybe the third one is the best view of the end supports on either end of
`the partition.
`JUDGE DEFRANCO: And again, she's holding both of those so-
`called panels, would you agree?
`MR. GODFREY: Yes, because that --
`JUDGE DEFRANCO: Ms. Forsythe is holding it.
`MR. GODFREY: -- this is a -- yes. This is a sequence of images
`showing Ms. Forsythe expanding this prototype partition. So it's not
`expanded yet in the third image. In the fourth image, it is.
`JUDGE DEFRANCO: So would you call the supports in the third
`image self-supporting if she's holding the panels?
`MR. GODFREY: Yes. They have that property. The property
`just doesn't come into play until the structure is fully extended.
`JUDGE DEFRANCO: Until the fourth image.
`MR. GODFREY: Yes. But that property --
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`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)
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`JUDGE DEFRANCO: She is still holding.
`MR. GODFREY: She has her hand on the side, as also shown in
`figures in the patent that are described as expanded partitions that are self-
`supporting.
`JUDGE DEFRANCO: Well, that's in the patent. We can't use the
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`patent.
`
`MR. GODFREY: Agreed, Your Honor. Just saying the fact that
`there's a hand shown on one end, we don't think precludes an interpretation
`of that expanded structure as being self-supported.
`JUDGE DEFRANCO: Didn't your expert testify that if
`somebody's hands, though, are on the panels, that they're not self-supported?
`MR. GODFREY: I'm sorry, Your Honor. I couldn't hear your
`question.
`JUDGE DEFRANCO: Didn't your expert agree that if somebody
`is holding the ends of the structure, that the structure is not self-supporting?
`MR. GODFREY: I don't believe so, Your Honor. I don't believe.
`JUDGE DEFRANCO: Okay. Your experts said whatever they
`said. Okay. Thank you.
`MR. GODFREY: Okay. If there are no other questions on Ground
`1, Your Honor, I'm going to turn the argument over to my colleague, Ms.
`Bjorklund.
`MS. BJORKLUND: Good afternoon. Shannon Bjorklund. I'm
`first going to address the '161 patent, which has a number of features that
`overlap with the patent Mr. Godfrey just was discussing, the '366.
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`(404) 684-6008
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`Jamison Professional Services
`East Pointe, GA
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`www.jps-online.com
`
`
`
`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)
`
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`So to start out, if we look at Slide 21, it summarizes the grounds
`that Chanel is putting forth for invalidity of the '161 patent. There are, as
`you'll note, two sets of claims. An earlier set of claims that has a priority
`date of November 28, 2005, and a later set of claims which has a priority
`date of December 23, 2009. There are four limitations at issue with respect
`to these two sets of claims.
`With respect to the first set of claims, the questions are whether the
`prior art discloses a freestanding wall, which has some similarity to the
`issues raised by Mr. Godfrey. And number two, would it be obvious to a
`person of ordinary skill to fold the paper ends into a tubular configuration.
`With respect to the later claims, the questions are whether it would
`be obvious to a person of ordinary skill in the art to combine the prior art
`vertical supports with a softwall if you wanted to enhance the stability. And
`also, would it be obvious to a person of ordinary skill in the art that these
`could be stacked vertically.
`So I'm going to start by focusing on the earlier claims, which have
`the earlier priority date. Patent Independent Claim 2 is the independent
`claim for a number of the dependent claims and is what I'm going to be
`focusing on here. The first couple of -- I'm sorry. The first couple of
`limitations are similar to prior disclosures. And the third one that we're
`talking about is having a freestanding wall configuration.
`Now, I understand Your Honors are interested in whether
`freestanding and self-supporting are the same thing. I do think self-
`supporting does tie back to end supports that render it self-supporting,
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`Jamison Professional Services
`East Pointe, GA
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`www.jps-online.com
`
`
`
`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)
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`whereas freestanding does not have any reference to any separate article in
`order for it to be freestanding. So while those terms in the abstract, self-
`supporting and freestanding, may be similar and overlapping in many
`respects, the way in which they're used in the claims renders them different.
`So let's look at Slide 23. The '161 patent, because it has a slightly
`later priority date than the '366, has a different piece of prior art that we rely
`upon. And I'm going to start by looking at Grounds 3 and 4 and this new
`piece of prior art called softwall. As you can see, the softwall publication in
`Architectural Record shows an expanded wall that appears to be standing by
`itself. And in fact, the inventors confirmed that it was standing by itself.
`It doesn't appear to be attached to anything. And if you follow the
`arc and the line of the top portion of the wall, it does not appear to be
`bending, dipping, or twisting or sagging in any way. Thus, what they
`intended to project to the world, and did project, was that this particular
`structure was freestanding on its own, even without being folded into a
`tubular configuration.
`Now, as Professor Rake observed and as I think a person of
`ordinary skill or even a layperson would understand, in this field of art, the
`degree to which something could be freestanding depends a lot on the
`proportions used, the base, the width, and also the material that is used to be
`doing it. So in the '161 patent, at Column 6, lines 12 through 17, the Patent
`Owner states that the inherent stiffness of th
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