Trials@uspto.gov
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` Paper 46
` Entered: August 9, 2023
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CHANEL, INC.,
`Petitioner,
`
`v.
`
`MOLO DESIGN, LTD.,
`Patent Owner.
`____________
`
`IPR2022-00545
`Patent 9,689,161 B2
`____________
`
`
`Before KEN B. BARRETT, CARL M. DEFRANCO, and
`RICHARD H. MARSCHALL, Administrative Patent Judges.
`
`DEFRANCO, Administrative Patent Judge.
`
`
`
`JUDGMENT
`Final Written Decision
`Determining Some Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
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`571-272-7822
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` Paper 46
` Entered: August 9, 2023
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`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CHANEL, INC.,
`Petitioner,
`
`v.
`
`MOLO DESIGN, LTD.,
`Patent Owner.
`____________
`
`IPR2022-00545
`Patent 9,689,161 B2
`____________
`
`
`Before KEN B. BARRETT, CARL M. DEFRANCO, and
`RICHARD H. MARSCHALL, Administrative Patent Judges.
`
`DEFRANCO, Administrative Patent Judge.
`
`
`
`JUDGMENT
`Final Written Decision
`Determining Some Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`
`
`IPR2022-00545
`Patent 9,689,161 B2
`
`
`Molo Design, Ltd. (“Molo”) is the owner of U.S. Patent No.
`9,689,161 B2 (Ex. 1001, “the ’161 patent”). Chanel, Inc. (“Chanel”) filed a
`Petition requesting inter partes review of claims 1–10, 12, 14, 18–25, and 27
`of the ’161 patent. Paper 1 (“Pet.”). We instituted inter partes review of all
`the claims as challenged in the Petition. Paper 9 (“Inst. Dec.”). Molo filed a
`response (Paper 19, “PO Resp.”), Chanel filed a reply (Paper 30, “Pet.
`Reply”), and Molo followed with a sur-reply (Paper 32, “PO Sur-Reply”).
`We also permitted Chanel to file a Sur-Sur-Reply (Paper 40) to address new
`evidence that Molo introduced with its sur-reply. See Paper 36 (denying
`Chanel’s motion to strike but authorizing Chanel to file rebuttal evidence
`and argument).
`We have jurisdiction under 35 U.S.C. § 6. We held an oral hearing on
`June 8, 2023, a transcript of which is in the record. Paper 45 (“Hrg. Tr.”).
`This Final Written Decision is entered pursuant to 35 U.S.C. § 318(a). For
`the reasons below, we determine that Chanel fails to demonstrate that
`claims 1–10, 12, 14, and 18 of the ’161 patent are unpatentable as
`anticipated under 35 U.S.C. § 102(b) or obvious under 35 U.S.C. § 103.
`However, we determine that Chanel does demonstrate that claims 19–25 and
`27 are unpatentable as obvious under 35 U.S.C. § 103.
`
`I. BACKGROUND
`
`A. Related Matters
`Chanel filed concurrent petitions for inter partes review of three
`
`related patents—U.S. Patent Nos. 7,866,366 B2 (IPR2022-00543),
`8,561,666 B2 (IPR2022-00544), and 9,797,134 B2 (IPR2022-00546). Those
`patents, along with the ’161 patent at issue here, are also the subject of an
`infringement action filed February 22, 2021 and captioned Molo Design Ltd.
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`2
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`Patent 9,689,161 B2
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`v. Chanel, Inc., No. 1:21-cv-01578 (S.D.N.Y). See Paper 6 at 2. That action
`was stayed on May 2, 2022, pending the outcome of our review of Chanel’s
`Petition in this proceeding and the related proceedings. See Ex. 3001 (Stay
`Order).
`
`B. The ’161 Patent
`The ’161 patent relates to a “freestanding extensible wall for
`
`partitioning an area of a room.” Ex. 1001, Abstract, Fig. 1. The partition
`has “a core formed from a plurality of laminar panels of a flexible flaccid
`material.” Id. at 2:9–11. Each of the laminar panels “has a pair of
`oppositely-directed major faces with faces of adjacent panels being inter-
`connected to provide a cellular structure upon movement of the faces
`away from each other.” Id. at 2:11–14, Figs. 2, 3. Figure 1 of the ’161
`patent, reproduced below, is a perspective view of the freestanding partition.
`
`
`As shown, the partition comprises “a core 12 and a pair of supports
`14, 16 at opposite ends of the core.” Id. at 4:15–17. The supports are
`connected to end panels at opposite ends of the core. Figure 3 of the ’161
`patent, reproduced below, is a partial cross-sectional view of the expanded
`core depicting the end panels of the core with the supports attached thereto.
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`3
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`As shown, the expanded core includes interconnecting panels 18a,
`18b, 18c forming voids 30 within the core, and end panels 18d at opposite
`ends of the core. Id. at 4:30–51. “The supports 14 and 16 extend laterally
`beyond the core as indicated at 32 and are adhered to respective ones of the
`end panels 18d.” Id. at 4:59–61. As described, the supports 14 and 16 “are
`made from a self-supporting material, typically a non woven felt material,
`which has a degree of flexibility but also has sufficient rigidity to resist
`collapse of the core.” Id. at 4:51–55.
`
`With the core expanded, “the supports 14 and 16 may be folded along
`a vertical axis to provide enhanced rigidity at each end of the partition 12.”
`Id. at 5:12–14, Fig. 5. The supports include Velcro fasteners that permit
`opposite edges of the supports to be “brought together” and “engage one
`another” to “hold the support in a folded tubular configuration.” Id. at 5:15–
`19, Fig. 5. “Further support[s] may be provided along the length of the
`partition” by using dowels inserted into the voids of the core and supported
`by bases. Id. at 14:14–26, Fig. 48.
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`4
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`2, 6, 8, 10, 12, 14
`1–10, 12, 14, 18
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`19–25, 27
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`C. The Asserted Challenges
`Claims Challenged
`35 U.S.C. §
`2, 6, 7, 8, 10, 12, 14
`102
`1–10, 12, 14, 18
`103
`
`Basis
`SoftHousing I1
`SoftHousing I, SoftHousing II, 2
`SoftHousing III, 3 Arens, 4 and/or
`Okuno5
`SoftWall6
`SoftWall, SoftHousing I–III,
`Arens, and/or Okuno
`MacAllen, 7 Stratton, 8 Fischer, 9
`Reisenthel, 10 Tolna, 11 and/or
`EnduroFence12
`In further support of these challenges, Chanel submits the declaration
`
`of Lance Rake. See Ex. 1003. Molo, in turn, submits the declaration of
`Alan Ball. See Ex. 2010. Molo also submits declarations from each of the
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`1 DBEW International Design Competition 2004, Golden Prize, HANSSEM
`CO., LTD., May 9, 2004 (Ex. 1005, “SoftHousing I”).
`2 Design Beyond East & West—Collection of Winning Works of DBEW
`International Design Contest (Interior Architecture of China Magazine ed.)
`TIANJIN UNIVERSITY PRESS, March 2004 (Ex. 1006, “SoftHousing II”).
`3 First Step Soft Housing, Common Ground, Nov. 6, 2003 (Ex. 1007,
`“SoftHousing III”).
`4 US 4,493,174, issued Jan. 15, 1985 (Ex. 1013, “Arens”).
`5 JP S49-87173 A, published Aug. 21, 1974 (Ex. 1011, “Okuno”).
`6 Flexible textile walls expand and compress to create rooms-within-a-room,
`ARCHITECTURAL RECORD, VOL. 192, NO. 9, P. 205, Sept. 2004 (Ex. 1028,
`“SoftWall”).
`7 US 2008/0023156 A1, published Jan. 31, 2008 (Ex. 1037, “MacAllen”).
`8 US 7,217,061 B2, issued May 15, 2007 (Ex. 1038, “Stratton”).
`9 US Des. 353,946, issued Jan. 3, 1995 (Ex. 1039, “Fischer”).
`10 US 2005/0076552 A1, published Apr. 14, 2005 (Ex. 1040, “Tolna”).
`11 DM 057 813, published Dec. 28, 2005 (Ex. 1041, “Reisenthel”).
`12 Enduro Fence Package-150’, MARKERS, INC., Aug. 27, 2008 (Ex. 1042,
`“EnduroFence”).
`
`102
`103
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`103
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`5
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`Patent 9,689,161 B2
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`named inventors of the ’161 patent, Ms. Stephanie Forsythe and Mr. Todd
`MacAllen. See Exs. 2006, 2007.
`
`D. The Challenged Claims
`Six of the challenged claims are independent—claims 1, 2, 19, 22, 23,
`
`and 27. Independent claims 1, 2, 19, and 22 are directed to an “extensible
`wall,” while independent claims 23 and 27 are directed to “flexible
`furniture.” Ex. 1001, 16:40–19:32. Independent claim 2 is illustrative and
`recites:
`2. A method for partitioning an area of a room, the method
`
`comprising:
`
`positioning an extensible wall in the area of said room,
`said wall having a base, a top, oppositely directed surfaces
`extending between said base and said top, said base, top and
`surfaces defining a core, said core comprising a cellular structure
`having multiple voids extending from said base to said top upon
`movement of said oppositely directed surfaces away from each
`other, said base having a width of at least 10 centimeters and said
`core having a height of at least 1 meter,
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`placing said base on a floor of said room, and
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`moving opposite ends of said core apart to expand said
`cellular structure and extend the length of said core and to form
`at least a substantially straight freestanding wall configuration,
`whilst maintaining its vertical extent.
`Id. at 16:64–17:13 (emphases added).
`Independent claim 1 is directed to an “assembly” of the extensible
`walls described in claim 2, and, like claim 2, requires that each extensible
`wall “form at least a substantially straight freestanding wall configuration,
`whilst maintaining its vertical extent.” Id. at 16:40–63.
`
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`II. ANALYSIS
`
`A. Burdens of Proof
`To prevail in its challenges, Chanel must prove unpatentability by a
`preponderance of the evidence. 35 U.S.C. § 316(e) (2018); 37 C.F.R.
`§ 42.1(d) (2018); see also Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356,
`1363 (Fed. Cir. 2016) (“In an [inter partes review], the petitioner has the
`burden from the onset to show with particularity why the patent it challenges
`is unpatentable.”). This burden of persuasion never shifts to Molo. 13 See
`Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378
`(Fed. Cir. 2015) (discussing the burdens of proof in an inter partes review).
`
`B. Level of Ordinary Skill in the Art
`Chanel argues, with support from its declarant, Mr. Rake, that one
`
`skilled in the art during the relevant time frame “would have a bachelor’s
`degree and at least two years of relevant experience working as an industrial
`designer, interior designer, furniture designer, architect, or other similar
`professional” and “would be knowledgeable regarding furniture design
`and/or the design of exhibit and display systems, and would have a general
`understanding of related manufacturing processes.” Pet. 21–22 (citing Ex.
`1003 ¶¶ 42–46). Molo does not contest Chanel’s definition, and Mr. Rake
`agrees that it accurately reflects the level of skill in the art. See Pet. Reply 1
`(“The parties agree on the POSITA and level of ordinary skill in the art.”);
`Ex. 2010 ¶ 34 (“I believe this is an accurate definition of a POSITA and
`
`
`13 Although occasionally we may focus on Molo’s arguments, we do not
`shift the ultimate burden from Chanel. We focus on Molo’s arguments
`simply to identify issues in dispute, some of which we find unpersuasive in
`view of the record as a whole.
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`have used this for my analysis.”). Because Chanel’s definition of the level
`of skill in the art appears reasonable and consistent with the ’161 patent and
`the prior art, we adopt it for purposes of our analysis.
`
`C. Claim Construction
`Pursuant to 37 C.F.R. § 42.100(b), we apply the claim construction
`
`standard set forth in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005)
`(en banc). That is, the words of a claim are generally given their plain and
`ordinary meaning as would have been understood by one skilled in the art at
`the time of the invention and in the context of the entire patent disclosure.
`Id. at 1312–13. Only terms in controversy need be construed, and only to
`the extent necessary to resolve the controversy. See Nidec Motor Corp. v.
`Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017).
`1. Chanel’s claim construction positions in the district court
`Chanel argues that we “need not construe any terms in order to
`resolve the underlying controversy” because “[a]ny reasonable interpretation
`of those terms—as understood by a POSITA at the time of the invention—
`reads on the prior art.” Pet. 22–23. Molo responds that Chanel’s refusal to
`expressly construe any claim terms in this proceeding “directly conflicts”
`with Chanel’s position in the parallel district court action, where Chanel
`proposed an express construction for the claim terms “end panels” and
`“operable,” and argued that the term “flaccid” is indefinite. PO Resp. 17–
`18. According to Molo, by advancing “contradictory” claim construction
`positions before us and the district court and “[b]y failing to reconcile these
`positions, [Chanel] has not met its burden to demonstrate how the [claim]
`terms should be construed as required by the Board’s regulations.” Id. at 19;
`see also id. at 17 (citing 37 C.F.R. § 42.104(b)(3)).
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`We disagree that Chanel advances contradictory positions before us
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`and the district court. Although Chanel may elaborate on its construction of
`certain claim terms in the parallel district court action more so than it does
`here, that is because the district court action involves issues of infringement
`and indefiniteness that are wholly outside the purview of this proceeding.
`Indeed, when Molo raised this identical argument before the district court—
`“that Chanel has engaged in gamesmanship by advancing conflicting
`arguments before the PTAB and this Court”—the district court explained
`that “it is neither uncommon nor impermissible for a party to advance
`different arguments before a District Court and the PTAB” where the
`parallel action “concerns issues outside the scope of inter partes review.”
`Ex. 3001 at 9 n.1.
`
`That is the case here—the issues of infringement and indefiniteness
`before the district court may require a more developed claim construction
`than is needed to resolve the issue of patentability here. Thus, like the
`district court, we see nothing improper about Chanel advancing a more
`detailed meaning of claim terms to the district court, while simply saying
`here that the meaning of those terms is readily apparent from the prior art or
`that no express construction is needed because the prior art discloses the
`disputed limitations under any construction. We see no reason to incentivize
`Chanel to create claim construction issues that have no bearing on the
`challenges in the Petition. And because we can resolve the issue of whether
`Chanel meets its burden of proving unpatentability without expressly
`construing the claim terms “end panels,” “operable,” and “flaccid,” we reject
`the notion that Chanel somehow violates our rules by not developing a more
`explicit construction of those terms.
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`2. “freestanding”
`Independent claims 1 and 2 require that the claimed extensible wall be
`“freestanding . . . whilst maintaining its vertical extent.” Notably, neither
`Chanel nor Molo disputes our preliminary construction of the term
`“freestanding” to mean “standing alone free of support or attachment,” as set
`forth in our Institution Decision. See PO Resp. 19–20 (“Patent Owner does
`not dispute the Board’s determination and has applied the Board’s
`interpretation of ‘freestanding’ as basis for [its] arguments set forth
`herein.”); Pet. Reply 23 (“It is undisputed that ‘freestanding’ means
`‘standing alone free of support or attachment.’” ).
`The meaning of “freestanding” set forth in our Institution Decision is
`consistent with the Specification and prosecution history of the ’161 patent.
`For instance, during prosecution, the applicants rebutted the Examiner’s
`finding that “supports are required for the structure to be freestanding” by
`representing that “the extended wall, which is the structure itself, is
`freestanding when the base of the wall is placed on the floor of a room” and
`is “without supports.” Ex. 1002 at 185, 190 (first emphasis added). Based
`on that representation—that the expanded structure is capable of standing on
`its own without additional supports that are not part of the structure itself—
`the Examiner allowed the claims. See id. at 192.
`The Specification also supports that the expanded structure is
`freestanding in the absence of additional supports due to foldable supports
`14 and 16 being adhered to end panels 18d at opposite ends of the core so as
`to be part of the structure itself—
`An end panel 18d of the core is connected to respective
`ones of the supports 14 and 16 over its entire width. The supports
`14 and 16 are made from a self-supporting material, typically a
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`10
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`non woven felt material, which has a degree of flexibility but also
`has sufficient rigidity to resist collapse of the core 12. The
`supports 14 and 16 extend laterally beyond the core as indicated
`at 32 and are adhered to respective ones of the end panels 18d.
`* * *
`Once partially extended, the supports 14 and 16 may be
`folded along a vertical axis to provide enhanced rigidity at each
`end of the partition 12.
`
`* * *
`[T]he supports 14, 16, at the free ends of the partition [are]
`folded upon themselves to provide stable support.
`Ex. 1001, 4:50–61, 5:12–14, 5:57–59. With that intrinsic evidence in mind,
`we maintain the construction in our Institution Decision that the term
`“freestanding” means “standing alone free of support or attachment.”
`
`D. Anticipation Based on SoftHousing I
`1. Claims 2, 6, 7, 8, 10, 12, and 14
`We begin with Chanel’s challenge that independent claim 2 is
`
`unpatentable as anticipated by SoftHousing I. Pet. 23. In particular, Chanel
`contends that a series of images from SoftHousing I, reproduced below,
`show a softwall prototype that satisfies each of the recited steps of method
`claim 2. See id. at 23–27 (citing Ex. 1003 ¶¶ 64–66, 101–109).
`
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`According to Chanel, the above images depict a “freestanding” wall
`under our interpretation of that term, i.e., a wall that is “standing alone free
`of support or attachment.” Pet. 27. It is undisputed that, as shown in those
`images, one of the inventors of the ’161 patent, Ms. Forsythe, is expanding a
`“softwall” prototype so as to position it on the floor. We also note that
`Chanel does not rely on the softblock prototypes in the background of the
`above images, presumably because they indisputably lack “a height of at
`least 1 meter,” as also required by claim 2. See id. at 23–27, 33–37; see also
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`12
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`Hrg. Tr. 9:6–11 (confirming that Chanel is “relying on the taller prototypes”
`where “the claims require at least one meter of height”). Indeed, the Petition
`never references the “softblock” embodiment in mapping the images of
`SoftHousing I to claim 2, and, instead, annotates only aspects of the taller
`“wall” embodiment as meeting the claim limitations. See id. To the extent
`Chanel later argues in its reply brief that the “softblock” prototype depicted
`in SoftHousing I is “freestanding,” we reject that argument as raising a new
`ground/embodiment not previously argued in the Petition. See, e.g., Pet.
`Reply 23–25.
`Chanel also points to two additional images in SoftHousing I,
`reproduced below, contending that they also disclose softwalls that are
`“freestanding.” Pet. 24; see also Pet. Reply 24 (“The photographs were
`staged so that the expanded structures appear to be freestanding.”).
`
`Molo responds that none of the images in SoftHousing I depicts “a
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`substantially straight freestanding wall configuration, whilst maintaining its
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`vertical extent,” as recited by claim 2. See PO Resp. 22–26. According to
`Molo, the SoftHousing I images show that “Ms. Forsythe (one of the
`inventors of the ’161 Patent) is either holding up the structure for support, or
`the structure is affixed to a wall for support.” Id. at 23–24. In support, Molo
`submits the testimony of the two inventors of the ’161 patent, Ms. Forsythe
`and Mr. MacAllen.
`
`As for Chanel’s reliance on the softwall images in SoftHousing I, we
`agree with Molo that none of those images depicts “a substantially straight
`freestanding wall configuration, whilst maintaining its vertical extent,” as
`recited by claim 2. Nor would one skilled in the art have understood them as
`such. Instead, the images appear to show that the softwall is being held by a
`person to avoid collapse or attached to a permanent wall to avoid collapse.
`Indeed, both inventors of the ’161 patent, Mr. MacAllen and Ms. Forsythe,
`corroborated that the images in SoftHousing I depict “early prototypes” that
`“did not have folding end panels or supports, which [were] only developed
`later,” and, thus, the prototypes “were not self-supporting or vertically stable
`standing on their own, rendering them prone to collapse.” Ex. 2007 ¶ (xi),
`Ex. 2006 ¶ (xi), respectively.
`Similarly, under questioning from Chanel’s counsel, Mr. MacAllen
`described the images in SoftHousing I as follows:
`Q. On the right side of this photo, is that an expanded
`softwall prototype?
`A. It is.
`Q. And in the background left of this photo, is that an
`expanded softblock prototype?
`A. It is.
`Q. So am I correct that you had prototypes of both softwall
`and softblock as of 2002?
`A. Yes.
`
`14
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`Q. In paragraph 11 of your affidavit you write “These
`early prototypes did not have folding end panels or supports,
`which we only developed later.” Do you see that?
`A. Yes.
`Q. What did you mean by that?
`A. The early prototypes simply had no other -- they had
`no means of self-support. They didn't have end panels. They
`didn’t have folding end panels. They didn't have any kind of end
`panels.
`
`* * *
`Q. What do you mean by “end panels” in this context?
`A. End panels would be what we later developed to make
`the softwalls stand on their own.
`Q. Did you mean that these prototypes did not have end
`panels that were different from the panels that formed the core of
`the structure?
`A. Correct.
`Q. Could the ends of these prototypes be folded in a
`tubular configuration?
`A. We know -- we know now that they could be.
`* * *
`Q. You also write in paragraph 11 that these prototypes
`were not self-supporting or vertically stable standing on their
`own, rendering them prone to collapse. What did you mean by
`that?
`
`
`
`A. They were unstable and would easily fall over.
`Ex. 1049, 24:8–25:2, 26:21–27:6, 28:7–13 (emphases added).
`That testimony by Mr. MacAllen confirms what the images in
`SoftHousing I already show, namely, the softwall is being held up by a
`person or is attached to another structure. 14 Despite that evidence, Chanel
`
`
`14 We previously noted in our Institution Decision that Molo’s inventor
`testimony was unpersuasive because it failed to account for how one skilled
`in the art would have understood SoftHousing I. See Inst. Dec. 14 n. 14.
`Now that Chanel’s cross-examination of the inventors is part of the record,
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`15
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`contends that the images “were staged so that the expanded structures appear
`to be freestanding.” See Pet. Reply 24. But Chanel’s contention in that
`regard lacks evidentiary support or other citation to the record. 15 If
`anything, the fact that Ms. Forsythe appears in the images and is clearly
`shown holding the ends of the softwall would have informed the viewer that
`some support was needed to hold up the softwall, otherwise why have Ms.
`Forsythe in the image at all. So, in our view, the images in SoftHousing I
`likely would have suggested to one skilled in the art that the softwall
`prototypes depicted therein are not standing alone free of support or
`attachment.
`Chanel attempts to make much of the fact that Mr. MacAllen “never
`disclosed” that the softwalls in SoftHousing I “were prone to collapse.” Pet.
`Reply 25. But the fact that Mr. MacAllen may have neglected to disclose
`certain information about the softwalls depicted in SoftHousing I is
`irrelevant. The relevant inquiry is more about what the images disclose than
`what they do not. To that end, one skilled in the art looking at the images in
`SoftHousing I would have seen Ms. Forsythe holding the ends of the
`softwall prototype, which reasonably would have raised a concern about
`whether the softwall prototype would collapse in the absence of her grip,
`especially given the accompanying description of the softwall prototype as
`
`
`we find that the inventor testimony more clearly reflects what one skilled in
`the art would have gleaned from the images in SoftHousing I.
`15 To the extent Chanel points to the testimony of Ms. Forsythe and Mr.
`MacAllen that “the shorter softblock prototypes were, in fact, freestanding,”
`we are not persuaded. See Pet. Reply 24. That is because the Petition did
`not rely on SoftHousing I’s softblock embodiment when challenging the
`claims.
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`comprising “soft, flexible honeycomb structures” made of “white tissue
`paper.” Ex. 1005 at 1 n.*.
`Chanel also argues that two additional images in SoftHousing I,
`reproduced below, “show softwalls that appear to be freestanding.” Pet.
`Reply 24. Those images, however, clearly show the softwall prototype
`either attached to or leaning against what appears to be a solid-white
`permanent wall. Thus, based on what those images plainly show, we find it
`doubtful that one skilled in the art would consider the softwall prototypes
`depicted therein to be freestanding, or as properly construed, standing alone
`free of support or attachment.
`
`Mr. MacAllen indeed confirms that the softwall prototypes in the
`above images were attached to the solid-white permanent wall. Under
`questioning, Mr. MacAllen explains the images as follows:
`Q. So the prototype softwalls are surrounding the kitchen
`in this layout?
`
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`A. Yeah. The prototype softwalls are all attached to the
`permanent kitchen structure, which is a permanent self-
`supporting structure.
`Q. This softwall on the -- shown above the kitchen in this
`aerial view; is that attached to the kitchen?
`A. Yeah, that prototype is attached to the kitchen.
`Q. Where is it attached to the kitchen?
`A. It’s attached at the top. Its base is attached at the top,
`correct.
`Q. The portion that abuts up against the kitchen rectangle?
`A. Yes.
`
`Ex. 1049, 49:17–50:7.
`We find that testimony persuasive and credible. Each image clearly
`depicts the softwall prototype in contact with the solid-white kitchen wall.
`Moreover, looking at the images in conjunction with the description of the
`softwall prototypes depicted in SoftHousing I—“soft, flexible honeycomb
`structures,” “white tissue paper,” and “material is like a curtain”—one
`skilled in the art would have been left with the distinct impression that the
`softwall prototypes are too flimsy to support themselves unless attached to a
`permanent kitchen wall or some other structure. Ex. 1005 at 1–2.
`In sum, we determine that a preponderance of the evidence weighs
`against finding that SoftHousing I anticipates independent claim 2. Chanel
`does not persuade us otherwise. And because challenged claims 6, 7, 8, 10,
`12, and 14 depend from claim 2, Chanel likewise fails to demonstrate they
`are anticipated by SoftHousing I.
`2. Dependent Claims 12 and 14
`Aside from their dependency on claim 2, we also find unpersuasive
`Chanel’s arguments and evidence for why dependent claims 12 and 14 are
`anticipated by SoftHousing I. Claims 12 and 14 require that the
`
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`“freestanding wall” of claim 2 include “a pair of supports at opposite ends of
`said core, . . . said supports being self-supporting to provide rigidity to said
`core.” Ex. 1001, 17:38–43, 46–47. Attempting to overcome the lack of any
`disclosure in SoftHousing I of a “freestanding wall,” Chanel annotates the
`images in SoftHousing I to allegedly show “supports” on the ends of the
`honeycomb core from which the softwall prototype is made. Pet. 30.
`Chanel’s annotations of the SoftHousing I images are reproduced below.
`
`
`
`
`
`We reject Chanel’s annotation of the above images as wholly
`unsupported and exceedingly misleading. Not only does Chanel’s
`annotation improperly inject a claim element into the images that is plainly
`not there, but the evidence as a whole indicates the contrary. For instance,
`as described in SoftHousing I, the softwall prototype is constructed of
`“white tissue paper.” Ex. 1005 at 1 n.*. Consistent with that description, the
`above images to the left and center show the softwall protype in a collapsed
`state at the feet of Ms. Forsythe, much like a folded blanket. That is hardly
`indicative of end faces that provide rigidity. And although the image to the
`right shows the softwall prototype standing upright, it is unclear how much
`of the structure is being propped up by Ms. Forsythe given that only one of
`her hands is gripping the end of the softwall while her other hand is hidden
`from view and could very well be propping up the rear of the softwall.
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`Moreover, as confirmed in sworn declarations from Ms. Forsythe and
`Mr. MacAllen, the so-called “supports” that Chanel annotates into existence
`were not present in the softwall prototypes depicted in SoftHousing I. See
`Ex. 2006 ¶ xvii; Ex. 2007 ¶ xvii. According to their declarations, the
`softwall prototypes “did not have folding end panels or supports” but were
`“prone to collapse” when left to stand on their own. Id. We find that
`testimony persuasive, as it is consistent with what the above images plainly
`show—that the end faces of the honeycomb core are flimsy and lack
`sufficient rigidity to stand on their own, especially given their collapsed state
`at the feet of Ms. Forsythe.
`Based on the evidence as a whole, we reject the notion that
`SoftHousing I discloses “supports . . . being self-supporting to provide
`rigidity to said core,” as required by dependent claims 12 and 14. As such,
`Chanel does not demonstrate by a preponderance of the evidence that
`dependent claims 12 and 14 are anticipated by SoftHousing I.
`E. Obviousness Based on SoftHousing I–III, Arens, and/or Okuno
`Chanel challenges claims 1–10, 12, 14, and 18 as obvious over
`SoftHousing I in combination with SoftHousing II and III, 16 Arens, and/or
`Okuno. See Pet. 7, 32. This obviousness challenge is somewhat misleading,
`however, because it really consists of three separate challenges in which
`Chanel discusses:
`
`
`16 It is undisputed that SoftHousing II and III describe the same expansible
`softwall as that described in SoftHousing I. See Pet. 14 (“SoftHousing III
`includes some of the same images as SoftHousing I and II”), 32 (“A
`POSITA would have been motivated to combine the SoftHousing I–III
`publications because they concern the same prior art product/project.”).
`
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`(1) only SoftHousing I and Arens in challenging
`independent claim 1 and dependent claims 3–5 (see id. at 33–42);
`(2) only SoftHousing I in challenging independent claim 2
`and dependent claims 6–10, and 18 (see id. at 39, 42, 44); and
`(3) only SoftHousing I and Okuno in challenging
`dependent claims 12 and 14 (see id. at 43–44).
`
`Aside from identifying SoftHousing II and III as a basis for obviousness,
`nowhere does Chanel otherwise substantively discuss SoftHousing II and III
`in conjunction with specific elements of the challenged claims. See id. at
`32–44. As such, we address this obviousness challenge only as particularly
`discussed in the Petition. For the reasons discussed below, this obviousness
`challenge, which relies primarily on SoftHousing I, fares no better than
`Chanel’s anticipation challenge based on the same reference. 17
`1. Independent Claim 1
`As mentioned above, Chanel’s obviousness challenge of claim 1
`identifies only SoftHousing I and Arens as teaching the various claim
`elements. See Pet. 33–39. Just as it did in arguing anticipation of claim 2,
`Chanel’s obviousness challenge of claim 1 relies solely on images in
`SoftHousing I for teaching the “freestanding wall” element. Compare Pet.
`24–27 (anticipation challenge of claim 2), with id. at 33–37 (obviousness
`challenge of claim 1). But Chanel’s arguments and evidence for why
`SoftHousing I discloses the “freestanding wall” of claim 1 are no more
`persuasive to prove obviousness than when Chanel posed them in a failed
`
`17 Because these SoftHousing I-based obviousness challenges fall short in
`demonstrating unpatentability of the challenged claims, we need not reach
`Molo’s objective indicia of non-obviousness, which Molo asserts only in
`support of independent claims 1 and 2. See PO Resp. 61, 64 (arguing nexus
`only with respect to claim 2); PO Sur-Reply 26–27, 32 (arguing nexus only
`with respect to claims 1 and 2).
`
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`attempt to show anticipation
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