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` Paper 9
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` Entered: August 10, 2022
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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.
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`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.”). Molo filed a Preliminary Response.
`Paper 8 (“Prelim. Resp.”). Because we determine that Chanel demonstrates
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`a reasonable likelihood that at least independent claims 1 and 2 of the ’161
`patent are unpatentable, we institute an inter partes review of all claims as
`challenged in the Petition. See 35 U.S.C. § 314(a).
`I. BACKGROUND
`
`A. Related Matters
`
`In addition to this Petition, Chanel has filed 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). Prelim. Resp. 2–3. Those patents, along with the ’161 patent at
`issue here, are also the subject of an infringement action filed February 22,
`2021 in Molo Design Ltd. v. Chanel, Inc., No. 1:21-cv-01578 (S.D.N.Y). Id.
`at 3; see also 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. Prelim. Resp. 4 n.1; see also 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. The partition comprises
`“a core 12 and a pair of supports 14, 16 at opposite ends of the core.” Id. at
`4:15–17, Fig. 1. Notably, the core is “formed from a flaccid flexible
`material,” wherein “a cellular structure having voids 30 is formed within the
`core” upon movement of the oppositely-facing end supports away from each
`other in a horizontal direction. Id. at 4:9–11, 4:43–45, Figs. 3–5. According
`to the ’161 patent, the core’s end supports “are made of a self-supporting
`material . . . , which has a degree of flexibility but also has sufficient rigidity
`to resist collapse of the core.” Id. at 4: 51–55, Figs. 4, 5. As a result, the
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`supports can be “moved away from one another . . . to expand the core so
`that the cellular structure is opened within the core.” Id. at 5:5–7, Fig. 4c.
`
`Once expanded, the core “has sufficient width to remain stable in a
`vertical position with the rigidity provided by the end supports.” Id. at 5:26–
`28. The degree of flexibility of the core can “accommodate different
`configurations and allow an appropriate shaped and sized partition to be
`installed in an otherwise open space.” Id. at 5:35–38, Fig. 9. The provision
`of the end supports also permits multiple partitions “to be joined end-to-end”
`via hook and loop fasteners. Id. at 5:48–55, Figs. 6–7. “Further support[s]
`may be provided along the length of the partition,” wherein each support has
`a base and dowel configured to be positioned within a void or cell of the
`core. See id. at 14:14–26, Fig. 48.
`
`According to the ’161 patent, the structure of this extensible partition
`is an improvement over prior art partitions that “are rigid, or have rigid
`frames, or are formed from rigid interconnected panels and . . . are relatively
`large, heavy, and cumbersome, and therefore difficult to set-up, take down,
`store, and transport.” Id. at 1:35–38. The inherent rigidity of such prior art
`partitions, the ’161 patent explains, “limits the extent to which they can be
`dynamically resized (extended or contracted) and reshaped to suit varying
`spaces and requirements, or readily moved around for relocation, or
`storage.” Id. at 1:42–51.
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`C. The Asserted Challenges
`Claims Challenged
`35 U.S.C. § Basis
`2, 6, 7, 8, 10, 12, 14
`102
`SoftHousing I1
`1–10, 12, 14, 18
`103
`SoftHousing I, SoftHousing II2,
`SoftHousing III3, 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
`
`102
`103
`
`103
`
`2, 6, 8, 10, 12, 14
`1–10, 12, 14, 18
`
`19–25, 27
`
`In further support of these challenges, Chanel submits the declaration
`
`of Lance Rake. See Ex. 1003. Molo, in turn, submits declarations from each
`of the named inventors of the ’161 patent. See Exs. 2006, 2007.
`
`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”).
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`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. 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,
`
`placing said base on a floor of said room, and
`
`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.
`
`
`
`II. ANALYSIS
`A. Level of Ordinary Skill in the Art
`
`Chanel’s declarant, Mr. Rake, testifies 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.” Ex. 1003 ¶ 46. At this stage, Molo does
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`not contest that testimony. See generally Prelim. Resp. Nor, for now, do we
`see any reason to question it. Thus, in deciding whether to institute, we keep
`in mind the level of skill in the art as articulated by Chanel’s declarant.
`B. Particularity of the Challenges
`
`Molo argues that the Petition should be denied for failing to identify
`the various claim challenges with sufficient particularity. See Prelim.
`Resp. 5–11 (citing Pet. 7); see also 35 U.S.C. § 312(a)(3) (stating a
`“particularity” requirement for petitions). According to Molo, although
`Chanel purports to identify five challenges to the claims, the use of the
`conjunction “and/or” in Chanel’s obviousness challenges gives rise to “at
`least 65 different obviousness combinations against the claims,” which Molo
`asserts “fails to meet the particularity requirements for an IPR petition.” Id.
`at 7, 9, 11.
`
`We disagree with Molo’s characterization of Chanel’s challenges.
`At the outset, we note that a petitioner’s use of the “and/or” conjunction in
`initially listing its challenges to the claims does not in and of itself warrant
`denial of a petition. Rather, the entire petition must be assessed in
`determining whether the particularity requirement is met. Here, in faulting
`the Petition for lacking particularity, Molo focuses solely on Chanel’s
`obviousness challenges as listed in a table on a single page of the Petition.
`See Pet. 7. What Molo disregards is Chanel’s detailed explanation of those
`challenges elsewhere in the Petition. See, e.g., id. at 32–44.
`
`For instance, with respect to the SoftHousing-based obviousness
`challenge (so-called “Ground 2”), the Petition identifies specific teachings
`from the prior art (be it Arens, Okuno, Stratton, etc.) that correspond to
`individual elements of the claims such that the challenge for each claim is
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`readily identifiable. See, e.g., Pet. 33–37 (mapping SoftHousing I to the
`preamble and element a of claim 1); id. at 38, 39, 42 (mapping Arens only to
`element b of claim 1, as well as dependent claims 3 and 5); id. at 43, 59
`(mapping Okuno only to dependent claims 12 and 14); id. at 64–66
`(mapping Stratton, Fischer, and Reisenthel only to element b of claims 19
`and 22); id. at 68–70 (mapping Tolna and EnduroFence only to element c of
`claims 19 and 22). In other words, Chanel’s use of the “and/or” conjunction
`does not apply across all the prior art references making up a particular
`challenge, but, as the Petition makes clear, applies to only a very limited
`number of tertiary references being relied upon to teach specific claim
`elements. For the remaining claim elements, the Petition makes clear that
`only a single reference is being relied upon, be it SoftHousing for
`“Ground 2,” SoftWall for “Ground 4,” or MacAllen for “Ground 5.”
`
`We discern nothing unusual or obtuse about Chanel’s approach to its
`obviousness challenges; the Petition could not be clearer in identifying the
`relevance of each reference as applied to the challenged claims. As such, we
`reject the notion that Chanel’s use of “and/or” when listing its challenges in
`an abbreviated format, such as a table, “results in an unwieldy, excessive,
`and burdensome number of possible combinations,” as Molo argues. See
`Prelim. Resp. 9–10. Rather, in the context of the Petition as a whole, Chanel
`has fully met its statutory burden of particularly identifying the challenge to
`each claim.
`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
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`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)
`(quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803
`(Fed. Cir. 1999)).
`
`Here, Chanel posits that we “need not construe any [claim] 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 we
`should deny the Petition because Chanel is advancing a claim construction
`that “directly conflicts” with its proposed construction in the parallel district
`court action for the terms “supports” and “self-supporting,” as recited in
`dependent claims 12 and 14. Prelim. Resp. 12–13; see also id. at 14
`(“Petitioner’s assertion that the Board need not construe these terms is in
`direct conflict with its representations to the district court.”). Although
`Molo contends “the Board would be committing reversible legal error” by
`failing to construe these claim terms further, it neither proffers its own
`construction of these terms nor otherwise explains why Chanel’s position––
`that no express construction is required to resolve the issues in dispute––is
`erroneous. See id. at 13–14. Instead, Molo asserts that, by advancing
`“inconsistent” and “contradictory” claim construction positions before us
`and the district court, Chanel “fail[s] to meet its burden under 37 C.F.R.
`§ 104(b)(3))” to demonstrate how the challenged claims should be
`construed. Id. at 17–19; see also id. at 14–15 (essentially same).
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`We disagree that Chanel’s claim construction positions before us and
`
`the district court are inconsistent or otherwise contradictory. Indisputably,
`Chanel elaborates on its construction of certain claim terms in the parallel
`district court action more so than it does here, but 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 in the district court action—“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, 9 n.1. That is the
`case here—the issues of infringement and indefiniteness before the district
`court may require a more detailed 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
`certain claim terms in the district court action, while simply saying here that
`the meaning of those terms is readily apparent from the prior art. Thus, we
`decline to deny the Petition on that basis.
`
`Moreover, Molo concedes that the alleged “direct conflict” regarding
`the construction of the terms “supports” and “self-supporting” arises only
`with respect to “[c]laims 12 and 14,” which are dependent claims. Prelim.
`Resp. 13–14. Neither of those terms appears in independent claims 1 and 2,
`which are the sole independent claims at issue in four of the five challenges
`making up the Petition. See Pet. 7. Indeed, in opposing Chanel’s challenge
`of independent claims 1 and 2, Molo focuses on whether the asserted prior
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`art discloses a wall that is “freestanding,” but the meaning of that term is not
`in dispute. See Prelim. Resp. 24–28, 37. Because, at this preliminary stage,
`the dispute centers on a limitation in independent claims 1 and 2 and the
`threshold for institution can be resolved without construing terms in the
`dependent claims, we reject the notion that Chanel somehow violates our
`rules by not developing a more explicit construction of those terms.13 See,
`e.g., Nidec, 868 F.3d at 1017 (approving Board decision not to construe
`claim language where the construction is not material to the dispute).
`D. Threshold for Institution
`1. The SoftHousing-Based Challenges
`a. Anticipation (Claims 2, 6, 7, 8 10, 12, and 14)
`We begin with Chanel’s challenge of method claim 2 as being
`
`anticipated by SoftHousing I. See Pet. 23. Here, Chanel provides a detailed
`mapping of how SoftHousing I satisfies each recited step. See id. at 23–27.
`Chanel also provides supporting testimony from its declarant, Mr. Rake. See
`Ex. 1003 ¶¶ 64–66, 101–109.
`
`Molo responds that Chanel fails to show that SoftHousing I satisfies
`the step of expanding the cellular structure “to form at least a substantially
`straight freestanding wall configuration, whilst maintaining its vertical
`extent.” See Prelim. Resp. 23–25, 33–37 (emphasis added). According to
`Molo, Chanel falls short “because the walls described in SoftHousing I are
`not ‘freestanding,’ but instead were required to be fastened to a perimeter
`wall or other stable structures to prevent the walls from falling over.” Id. at
`
`
`13 The same is true of the term “flaccid” in dependent claim 10, for which
`Molo also faults Chanel’s lack of an explicit construction. See Prelim. Resp.
`15–16, 18–19.
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`24–25. In support of that contention, Molo submits declarations from the
`inventors of the ’161 patent purporting to confirm that “prototypes” of the
`cellular walls depicted in SoftHousing I “did not have folding end panels or
`supports, which were only developed later,” and, thus, “were not self-
`supporting or vertically stable standing on their own, rendering them prone
`to collapse.” Id. at 35–36 (citing Exs. 2006, 2007 ¶ (xi) (xvii)).
`
`Although not a model of clarity, SoftHousing I nonetheless discloses
`enough to satisfy the threshold for institution on method claim 2. At the
`outset, we note that neither Chanel nor Molo disputes that the term
`“freestanding” means “standing alone free of support or attachment.” See
`Prelim. Resp. 24 (citing Ex. 2001 at 8). That meaning finds support in the
`Specification and the prosecution history of the ’161 patent. For instance,
`during prosecution of the ’161 patent, the applicants rebutted the Examiner’s
`view that “supports are required for the [cellular] 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.” Ex. 1002 at 185 (emphasis added). Based on that representation, the
`Examiner agreed that supports are not needed to make the cellular wall
`freestanding and subsequently allowed the claims. See id. at 190
`(“Applicant stated that an embodiment is capable of being freestanding
`without supports.”) (emphasis added).
`
`That end supports are not needed in order for the claimed wall to be
`freestanding is also consistent with the Specification, which provides:
`In some applications, the inherent stiffness of the material used
`in the core is such as to provide sufficient rigidity to the core
`when the cellular structure is expanded for the core to be self
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`supporting when expanded. Kraft paper or plastics material has
`provided sufficient rigidity for this purpose.
`Ex. 1001, 6:12–17 (emphasis added). So, not only does the prosecution
`history make clear that the wall can be freestanding in the absence of end
`supports, the Specification further clarifies that the inherent stiffness of the
`wall’s cellular structure alone suffices to make the wall “self-supporting,” in
`other words, freestanding. As such, we reject the notion that the cellular
`wall, as claimed, requires end supports in order to be “freestanding,” or that
`cellular walls, as a rule, must have end supports in order to become
`“freestanding.”
`
`With that premise in mind, we now turn to the disclosure of
`SoftHousing I, which indisputably includes images of a partition wall
`comprising a “soft, flexible honeycomb structure[] . . . made from 500 layers
`of a light, strong, white paper like material.” Ex. 1005 at 1 (describing how
`the wall is made); Ex. 1003 ¶¶ 66, 102 (showing pictures of the expanded
`wall). SoftHousing I also describes the wall as being a “multi-layered 10
`[inch] thick honeycomb wall[]” that can be “made from sheets of fine
`polyethylene fiber that is pressed into sheets” and “is lightweight yet strong,
`. . . puncture, tear, and abrasion resistant.” Ex. 1005 at 1. At this stage,
`Molo does not dispute that those passages, when read in the context of the
`images, satisfy the claim’s requirement that the “core” of the wall be made
`of “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.” See Prelim. Resp. 23–25, 28–37.
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`Moving on to whether SoftHousing I discloses that the wall is
`
`“freestanding” as required by the claims, we think the record supports a
`reasonable likelihood it does. For instance, SoftHousing I includes a series
`of four images showing the honeycomb core being expanded from its end
`surfaces to form a wall. See Ex. 1003 ¶¶ 66, 102. As shown, the base of the
`wall sits on the floor while the vertical extent of the wall stands freely
`upright due to the inherent rigidity of the honeycomb core. See id. (right-
`hand most picture of the four-image series). Despite Molo’s contention that
`the wall is not freestanding because it is being gripped by at one end, we
`note that the ’161 patent likewise depicts embodiments of its wall under a
`person’s grip while also disclosing it as “self-supporting when expanded.”
`See Ex. 1001, 5:65–6:16, Figs. 4(e), 8. Thus, at this preliminary stage, we
`are not persuaded that SoftHousing I’s depiction of a hand on one end of the
`otherwise upright wall necessarily precludes the wall from being
`freestanding.
`
`Rather, more likely, we think the images and description in
`SoftHousing I inform a skilled artisan that the honeycomb wall is fully
`capable of being freestanding. To that end, Molo expressly acknowledges
`that SoftHousing I depicts a so-called “softblock” in the background of some
`of the images. See id. The so-called “softblock” appears to have a relatively
`wide base enabling it to stand on its own. So, although some images in
`SoftHousing I depict a person’s hand gripping one end of the extended
`honeycomb wall, a skilled artisan would have understood from SoftHousing
`I’s disclosure as a whole that the honeycomb core can stand freely on its
`own when formed from a sufficiently rigid but lightweight material and
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`provided with a sufficiently wide base. See Ex. 1005, 1; Ex. 1003 ¶¶ 66,
`102, 108–109.
`
`As for Molo’s reliance on inventor testimony, we find that testimony
`unavailing at this stage because it is premised on the flawed understanding
`that actual “prototypes” of the wall depicted in SoftHousing I could not have
`been freestanding as they “did not have folding ends panels or supports,
`which were only developed later.” Prelim. Resp. 33–35 (citing Ex. 2006
`¶¶ xi, xvii; Ex. 2007 ¶¶ xi, xvii). But, as discussed above, the Specification
`and prosecution history of the ’161 patent make clear that a cellular wall can
`be freestanding, i.e., “self-supporting,” in the absence of end supports so
`long as it is made of an inherently rigid material. See Ex. 1001, 6:12–18; see
`also Ex. 1002 at 190 (“Applicant stated that an embodiment is capable of
`being freestanding without supports.”) (emphasis added). SoftHousing I
`indisputably discloses its cellular wall as being made of an inherently rigid
`material. See Ex. 1005 at 1 (describing that the “honeycomb structure” of
`the wall can be “made from sheets of fine polyethylene fiber” that “is
`lightweight yet strong, . . . puncture, tear, and abrasion resistant.”). Thus,
`without more, we do not find Molo’s inventor testimony particularly
`enlightening.14
`In sum, the current record supports a reasonable likelihood that
`Chanel will prevail in showing that SoftHousing I anticipates the method as
`recited by independent claim 2. Molo does not persuade us to the contrary at
`
`14 We also find Molo’s inventor testimony unpersuasive at this stage because
`it appears to focus on what elements were included in physical “prototypes”
`of the wall, as opposed to what one skilled in the art would have understood
`from the SoftHousing I publication itself. See Ex. 2006 ¶¶ xi, xvii; Ex. 2007
`¶¶ xi, xvii.
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`this preliminary stage. Also, we note that Molo does not treat Chanel’s
`challenge of dependent claims 6, 7, 8, 10, 12, and 14 as anticipated by
`SoftHousing I any differently from the challenge of independent claim 2
`from which they depend. Nonetheless, we have fully considered Chanel’s
`showing with respect to those dependent claims and conclude that Chanel
`demonstrates a reasonable likelihood of proving that they too are anticipated
`by SoftHousing I.
`b. Obviousness (Claims 1–10, 12, 14, and 18)
`Chanel challenges independent claim 1, as well as independent
`claim 2, as being obvious over the combination of SoftHousing I with
`SoftHousing II–III. See Pet. 32–39. The parties do not dispute that
`SoftHousing II and III describe the same honeycomb structure as that
`described in SoftHousing I. See Pet. 10–14; Prelim. Resp. 23–27.
`Molo does not treat the obviousness challenge of claims 1 and 2 any
`differently than Chanel’s anticipation challenge of claim 1 based on
`SoftHousing I alone. See Prelim. Resp. 23–37 (arguing that each reference
`lacks disclosure of the “freestanding wall configuration” recited by
`independent claims 1 and 2). Because the challenge based on SoftHousing I
`already meets the threshold for institution, and SoftHousing II and III simply
`build upon that challenge by disclosing additional aspects of the wall
`configuration in SoftHousing I, we conclude that Chanel likewise
`demonstrates a reasonable likelihood of prevailing on its obviousness
`challenge of independent claims 1 and 2. We have also considered Chanel’s
`showing with respect to dependent claims 3–10, 12, 14, and 18, and
`conclude Chanel demonstrates a reasonable likelihood that these dependent
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`claims too are unpatentable for obviousness over the asserted combination of
`SoftHousing I–III, Arens, and Okuno. See Pet. 39–44.
`2. The SoftWall-based Challenges
`Similar to the SoftHousing-based challenges, Chanel asserts that
`
`claims 2, 6, 8, 10, 12, and 14 are unpatentable as anticipated by SoftWall
`alone, and that claims 1–10, 12, 14 and 18 are unpatentable as obvious over
`SoftWall in combination with SoftHousing I–III, Arens, and Okuno. Pet.
`44–59. Recognizing that SoftWall describes the same wall configuration as
`SoftHousing I–III, Molo responds that “SoftWall suffers from the same
`deficiencies as the SoftHousing references because it makes no reference to
`‘freestanding’ ‘wall(s)’ recited by independent claims 1 and 2.” Prelim.
`Resp. 27–28. In support, Molo once again points to the inventors’
`declarations. Id. at 33–36 (citing Exs. 2006, 2007 at (xi), (xvii)).
`
`As discussed above, the preliminary record supports that the wall
`configuration disclosed in SoftHousing I–III, and described again in
`SoftWall (Ex. 1028), is freestanding despite Molo’s arguments to the
`contrary. In any event, because “[e]qual treatment of claims and grounds for
`institution purposes has pervasive support in SAS,” we institute review of the
`SoftWall-based challenges as raised in Chanel’s Petition. PGS Geophysical
`AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018).
`E. The MacAllen-based Challenge
`
`As for the other challenged claims, Chanel asserts that independent
`claims 19, 22, 23, and 27 (and their respective dependents) are unpatentable
`as obvious over the combined teachings of MacAllen, Stratton, Fischer,
`Reisenthel, Tolna, and/or EnduroFence. Pet. 59–82. In response, Molo
`contends, first, that Chanel “fails to clearly articulate the basis for the
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`combinations” of the asserted references and, second, that MacAllen
`“teaches away from using external vertical support structures because they
`would be redundant to the folded tubular supports” already taught by
`MacAllen. Prelim. Resp. 38–39. We disagree.
`
`Chanel clearly explains that the use of intermittently-spaced vertical
`supports in a flexible partition was “well-known in the art,” as taught by
`Stratton, Fischer and Reisenthel, and that one skilled in the art would have
`been motivated to add vertical supports to the partitions in MacAllen
`to fortify the structures and help them maintain a particular
`position or configuration . . . in a high-traffic location [where
`they] may be frequently bumped by passers-by . . . especially if
`the partition is made out of lightweight material such as that
`disclosed in MacAllen.
`Pet. 64, 66–67. According to Chanel, incorporating such vertical supports
`between the end supports already disclosed by MacAllen would have been
`nothing more than the predictable use of known elements according to their
`established function. Id. at 67. We agree, at least as the record currently
`stands.
`
`Nowhere does Molo meaningfully address the reasoning put forth by
`Chanel. See Prelim. Resp. 38–39. Upon review of the arguments and
`evidence presented in the Petition, and in the absence of argument and/or
`evidence to the contrary, we are persuaded that Chanel provides sufficient
`support for why one skilled in the art would have undertaken the asserted
`modification of MacAllen. See Pet. 64–67 (citing Ex. 1003 ¶¶ 86–92, 192–
`197). As such, Chanel demonstrates a reasonable likelihood of showing that
`the asserted combination renders obvious claims 19–25 and 27.
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`III. CONCLUSION
`For the above reasons, we determine that the information presented in
`Chanel’s Petition shows a reasonable likelihood that: (1) independent
`claim 2 of the ’161 patent is unpatentable as anticipated by SoftHousing I,
`and (2) independent claims 1 and 2 are unpatentable as obvious over the
`combination of SoftHousing I–III, Arens, and Okuno. Because Chanel
`demonstrates that at least one claim of the ’161 patent meets the threshold
`for institution, we institute an inter partes review of all the claims as
`challenged in the Petition. See 37 C.F.R. § 42.108(c); SAS Inst. v. Iancu,
`138 S. Ct. 1348, 1359–60 (2018).
`IV. ORDER
`
`Accordingly, it is:
`ORDERED that, pursuant to 35 U.S.C. § 314(a), an inter partes
`review of claims 1–10, 12, 14, 18–25, and 27 of the ’161 patent is instituted;
`and
`
`FURTHER ORDERED that, pursuant to 35 U.S.C. § 314(c) and
`37 C.F.R. § 42.4(b), notice is hereby given of the institution of trial, which
`will commence on the entry date of this Decision.
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`For PETITIONER:
`Gina Cornelio
`Mark A. Miller
`Geoffrey M. Godfrey
`Shannon L. Bjorklund
`DORSEY & WHITNEY LLP
`cornelio.gina@dorsey.com
`miller.mark@dorsey.com
`godfrey.geoff@dorsey.com
`bjorklund.shannon@dorsey.com
`
`For PATENT OWNER:
`Jared D. Schuettenhelm
`Michael Chibib
`Patrick J. Connolly
`BRACEWELL LLP
`jared.schuettenhelm@bracewell.com
`michael.chibib@bracewell.com
`patrick.connolly@bracewell.com
`
`
`
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