`FOR THE SOUTHERN DISTRICT OF NEW YORK
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`Civil Action No. 21-CV-1578 (VEC)
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`MOLO DESIGN, LTD.,
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`Plaintiff,
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`v.
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`CHANEL, INC.,
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`Defendant.
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`PLAINTIFF’S DISCLOSURE OF ASSERTED
`CLAIMS AND INFRINGEMENT CONTENTIONS
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`Pursuant to Local Patent Rule 6 and the Court’s Civil Case Management Plan and
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`Scheduling Order (“CMP,” ECF 27), Plaintiff Molo Design, Ltd. (“Molo”) hereby provides the
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`following Disclosure of Asserted Claims and Infringement Contentions (“Infringement
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`Contentions”) to Defendant Chanel, Inc. (“Chanel” or “Defendant”).
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`Molo provides these Infringement Contentions based upon publicly available information
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`reasonably available to it as of this date. Discovery has just commenced and Chanel has not yet
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`produced any documents or information regarding—or samples of—the products accused of
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`infringement. Accordingly, Molo reserves the right to amend, modify, or supplement the
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`disclosures set forth herein, including by identifying additional infringed claims, in light of
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`Chanel’s document production, responses to interrogatories, admissions, disclosures, fact witness
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`testimony, expert witness evidence, amendments to pleadings, and/or additional discovery and
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`evidence. Molo also reserves to the right to amend, modify, or supplement the disclosures set forth
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`herein in view of any claim construction order or other ruling issued by the Court, or for any other
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`Petitioner Chanel, Inc. Exhibit 1036
`Page 1
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`reason authorized by statute, the Federal Rules of Civil Procedure, the Patent Local Rules, the
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`Court’s orders, or applicable case law. Further, Molo reserves the right to amend, modify, or
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`supplement the disclosures set forth herein in the event that documents regarding the accused
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`instrumentalities are subsequently discovered.
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`The disclosures set forth herein are not intended to be, and should not be construed as, a
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`waiver of the attorney-client privilege, attorney work product, or any other applicable privilege or
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`immunity.
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`I.
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`DISCLOSURE OF ASSERTED CLAIMS AND INFRINGEMENT CONTENTIONS
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`Molo alleges that Chanel infringes one or more claims of the following patents: U.S. Patent
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`Nos. 7,866,366 (“the ’366 patent”); 8,561,666 (“the ’666 patent”); 9,689,161 (“the ’161 patent”);
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`and 9,797,134 (“the ’134 patent”) (individually an “Asserted Patent” and collectively, “the
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`Asserted Patents”). Molo’s specific infringement allegations for the Asserted Patents are provided
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`below.
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`a. Each Claim of Each Asserted Patent that is Infringed by Defendant (CMP §
`7(c)(i))
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`Based on the information currently known and reasonably available to Molo, and subject
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`to the limitations and reservations set forth above, Molo presently alleges that the Accused
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`Instrumentalities (as defined below) infringe the following claims of the Asserted Patents
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`(individually an “Asserted Claim” and collectively, “the Asserted Claims”).
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`Asserted Patent
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`Asserted Claims
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`The ’366 patent
`The ’666 patent
`The ’161 patent
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`The ’134 patent
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`1, 2, 5-7, 13, 20-23
`21-23
`2, 4-8, 10, 12, 14, 18, 19,
`20, 22
`1, 5, 6
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`Applicable subsection of
`35 U.S.C. § 271
`35 U.S.C. § 271(a)
`35 U.S.C. § 271(a)
`35 U.S.C. § 271(a)
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`35 U.S.C. § 271(a)
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`-2-
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`Petitioner Chanel, Inc. Exhibit 1036
`Page 2
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`of any elements of the Asserted Claims where the doctrine of equivalents would alter the
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`infringement analysis provided in the attached claim charts. Thus, without the benefit of the
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`Court’s claim construction, Molo presently believes that Defendant’s Accused Instrumentalities
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`literally infringe the Asserted Claims.
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`Nonetheless, to the extent a claim element is not met literally, Molo contends that any such
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`element would be present under the doctrine of equivalents because the Accused Instrumentalities
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`perform substantially the same function, in substantially the same way, to achieve substantially
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`the same result as the subject matter of the Asserted Claims. To the extent any differences are
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`alleged to exist between the Asserted Claims and the Accused Instrumentalities, such differences
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`are insubstantial.
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`Discovery in this case has just commenced and Chanel has not produced any documents
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`or information regarding the Accused Instrumentalities, samples of the Accused Instrumentalities,
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`or non-infringement contentions from Chanel. Accordingly, Molo reserves the right to apply the
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`doctrine of equivalents to each and every element after full discovery from Chanel or, as
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`appropriate, in response to the Court’s construction of the asserted claims. Moreover, should
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`Chanel contend that any element or limitation of the asserted claims is absent from the Accused
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`Instrumentalities, Molo reserves the right to demonstrate that the allegedly missing element or
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`limitation is present in the Accused Instrumentalities under the doctrine of equivalents.
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`f. Identification of Priority Dates (CMP § 7(c)(vi))
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`Molo contends that the Asserted Claims of the Asserted Patents are entitled to at least the
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`following priority dates based on the earliest application filing dates.
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` Asserted Claims of the ’366 patent: May 18, 2005
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` Asserted Claims of the ’666 patent: December 23, 2008
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`-7-
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`Petitioner Chanel, Inc. Exhibit 1036
`Page 3
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` Asserted Claims of the ’161 patent:
`o Claims 2, 4-8, 10, 12, 14, and 18: May 18, 2005
`o Claims 19, 20, and 22: December 23, 2009
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` Asserted Claims of the ’134 patent: December 23, 2008
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`Molo notes that each Asserted Claim may be entitled to an earlier priority date than the
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`patent application filing date due to an actual conception and reduction practice prior to filing.
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`Accordingly, Molo reserves the right present evidence that the Asserted Claims are entitled to
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`earlier priority dates based on earlier conceptions of the claimed inventions and earlier diligent
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`reductions to practice.
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`g. Molo’s Products, Devices, Processes, Methods, Acts, or Other Instrumentalities
`that Incorporate or Reflect the Asserted Claims (CMP § 7(c)(vii))
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`Molo presently identifies at least the following Molo products as practicing the following
`Asserted Claims.
`Patent-in-Suit
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`Molo Products
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`Claims
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`The ’366 patent
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`1, 2, 5-7, 13, 23
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`20
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`21
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`22
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`-8-
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`softwall, softblock, softwall with LED,
`LED for softwall, softblock with LED,
`and LED for softblock products
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`softwall, softblock, softwall with LED,
`LED for softwall, softblock with LED,
`and LED for softblock products with a
`height between 0.1 and 3 meters
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`softwall, softblock, softwall with LED,
`LED for softwall, softblock with LED,
`and LED for softblock products with a
`height between 0.1 and 0.5 meters
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`softwall, softblock, softwall with LED,
`LED for softwall, softblock with LED,
`and LED for softblock products with a
`height between 0.5 and 3 meters
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`Petitioner Chanel, Inc. Exhibit 1036
`Page 4
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`complaint in this action. On information and belief, Chanel’s infringement of the Asserted Patents
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`has thus been egregious, willful, wanton, malicious, in bad faith, deliberate, consciously wrongful,
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`and flagrant.
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`Discovery in this case has just commenced and Chanel has not produced any documents
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`or information regarding the Accused Instrumentalities. Accordingly, Molo reserves the right to
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`amend its willful infringement contentions after full discovery from Chanel.
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`II.
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`ACCOMPANYING DOCUMENT PRODUCTION
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`Based on information presently available to Molo, and subject to the limitations and
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`reservations set forth above, Molo hereby produces the file histories of the Asserted Patents with
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`this disclosure at MOLO_00000001 – MOLO_00001427.
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`Molo’s identification and production of file histories shall not be deemed to constitute an
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`admission as to the relevance of the information disclosed in the produced documents. Molo also
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`does not waive its right to object to the admissibility, at trial or any other proceeding, of any
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`document on the basis of privilege, work product immunity, relevance, or any other applicable
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`privilege or objection. Further, Molo’s accompanying production shall not be construed as limiting
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`or waiving Molo’s right to use or introduce any document or thing in this Action.
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`Dated: June 14, 2021
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`By: /s/ Conor Civins
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`Conor Civins (pro hac vice)
`BRACEWELL LLP
`111 Congress Avenue, Suite 2300
`Austin, TX 78701
`Telephone: (512) 472-7800
`Fax: (800) 404-3970
`conor.civins@bracewell.com
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`-12-
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`Petitioner Chanel, Inc. Exhibit 1036
`Page 5
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`Jared Schuettenhelm (pro hac vice)
`BRACEWELL LLP
`701 Fifth Avenue, Suite 6200
`Seattle, WA 98104
`Telephone: (206) 204-6200
`Fax: (800) 404-3970
`jared.schuettenhelm@bracewell.com
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`Grace Condro
`BRACEWELL LLP
`1251 Avenue of the Americas, 49th Floor
`New York, NY 10020
`Tel: 212-508-6100
`Fax: 800-404-3970
`grace.condro@bracewell.com
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` Attorneys for Plaintiff Molo Design Ltd.
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`-13-
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`Petitioner Chanel, Inc. Exhibit 1036
`Page 6
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`CERTIFICATE OF SERVICE
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`I hereby certify that on June 14, 2021, I electronically served the foregoing document via
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`email on the following counsel for Defendant Chanel, Inc.:
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`Bruce R. Ewing
`51 West 52nd Street
`New York, NY 10019
`(212) 415-9200
`ewing.bruce@dorsey.com
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`Geoffrey M. Godfrey
`Columbia Center
`701 Fifth Avenue, Suite 6100
`Seattle, WA 98104
`(206) 903-8800
`godfrey.geoff@dorsey.com
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`Shannon L. Bjorklund
`50 South Sixth Street, Suite 1500
`Minneapolis, MN 55402
`(612) 340-2600
`bjorklund.shannon@dorsey.com
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`Dated: June 14, 2021
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`/s/ Jared D. Schuettenhelm
`Jared D. Schuettenhelm
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`Petitioner Chanel, Inc. Exhibit 1036
`Page 7
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