The Federal Court ruled that Chanel did not infringe Molo Design’s patent on a Flexible Wall System, and that claims 1 and 2 are invalid as being anticipated or obvious in light of the prior art.
Molo Design, Ltd. v. Chanel Canada ULC et al, 2024 FC 1260
Background
In early 2021, Chanel used window displays featuring large blocks of “honeycomb” tissue paper. Such tissue paper is commonly used in festive decorations, where multiple sheets of paper are glued together with offset lines of adhesive to form honeycomb-like lattice when expanded. Chanel had used mood boards during conceptualization that included pictures of Molo’s flexible partition products called “softwall” and “softblock”, which were arguably based on Molo’s patent. Molo alleged that Chanel, instead of purchasing its patented products, opted for cheaper copies supplied by a former distributor of Molo’s products in France, Procédés Chénel.
In this action, Molo alleged that Chanel and Procédés Chénel infringed 11 of the 17 claims of Molo’s patent. The Court held that the window décor products supplied by Procédés Chénel to be used by Chanel did not comprise all of the essential elements of the claimed subject matter of the patent and, hence, was non-infringing. The Court further invalidated claims 1 and 2, and all asserted claims dependent thereon (except claim 3), on the basis of anticipation and obviousness in light of prior art publications, including Molo’s own prior disclosure.
The primary issues for determination for the Court were: Gillette defence, claim construction, infringement, and validity.
Gillette defence
The Gillette defence is a short-cut way for a defendant in a patent case to prove it is not infringing the patent. In essence, the defendant shows that its product is the same as, or not patentably distinct from, a product in the prior art, in which case either the patent does not cover the defendant’s product or, if it does, it must also cover the prior art and be invalid as lacking novelty. However, the Court, citing Western Oilfield[1], observed that the Gillette defence is not practical where the Court needs to address issues of claim construction and validity. Since Chanel and Procédés Chénel each had brought counterclaims of invalidity, the Court needed to construe claims and determine whether the asserted claims were valid. Hence, the Gillette defence exercise was determined to be superfluous and unnecessary with no beneficial “shortcut” achieved.
Claim construction
The Court denied Molo’s contention that it is an error to refer to the disclosure of the patent when construing the claims of a patent unless the claims’ language is ambiguous. The Court observed that the disputed terms of Molo’s patent were not unambiguous and that even experts of both parties had referred to the patent’s disclosure when interpreting the claims. Hence, the Court used purposive construction and relied on the patent’s disclosure to construe the claims.
The Court found, inter alia, the following to be essential elements of claim 1: article of flexible furniture including a partition; wherein the partition has a core formed from multiple laminar panels made of flaccid material, and a pair of supports each connected to one of the faces, where the supports are self-supporting to provide rigidity to the core to provide a freestanding wall providing resistance to the core from collapsing when the supports are pulled in opposite directions to expand the lattice. Significantly, the Court construed the claims to mean that the pair of supports in the claimed articles of flexible furniture had to be separate elements distinct from the core, which provide rigidity to the core and are thus more rigid than the core.
Claim 3, which was ultimately dependent on claim 1 and was the only asserted claim to survive the invalidity challenge, included the additional elements of having fasteners on the supports to maintain the tubular configuration.
Infringement
The above determination on the interpretation of claims 1 to 3 was crucial since the main infringement issue was whether Chanel’s window décors had a pair of supports that are self-supporting to provide rigidity to the core. Chanel argued that the blocks in their products were simply honeycomb paper, which Molo’s patent describes and claims as the core, but that their product did not have the required pair of supports. On the other hand, Molo argued that the outer sheets of Chanel’s honeycomb paper blocks provided the necessary rigidity to the core and thus constituted a pair of supports.
The Court ultimately rejected Molo’s arguments, indicating that its argument was circular since such assertion effectively makes all blocks of honeycomb paper to necessarily constitute a support, where its outer sheet can never be a laminar panel of the core. Further, the Court found that Molo had failed to provide any coherent or satisfactory explanation as to how the final sheet of paper adds any rigidity to the core to Chanel’s products. Since Chanel’s products did not comprise all of the essential elements of the claims, they were found not to infringe the claims of Molo’s patent.
The Court did not address Procédés Chénel’s additional territoriality argument that it was not liable for infringement of a Canadian patent since all of its activities were conducted in France. The Court also deemed it not necessary to address the issues of inducing infringement and infringement by “common design”, and monetary and other remedies raised by Molo.
Validity
Chanel and Procédés Chénel asserted invalidity of Molo’s patent in light of the prior art, including Molo’s own prior disclosure of partitions incorporating honeycomb paper more than one year before it filed for its patent. Chanel cited four prior art publications, viz., US Patent No. 4,288,485 (“Suominen”), Japanese Patent JP H2-33654 (“Harada”), Japanese Patent Application S49-87173 A (“Okuno”), and Molo’s own prior disclosure made to the organizers of an international design competition and published in early 2004, more than one year before the filing date of Molo’s patent in November 2005. In view of the disclosures of the prior art publications of Suominen and Molo’s own disclosure, the Court held that 10 out of 11 claims alleged to be infringed by Molo were invalid for being anticipated and obvious. The Harada and Okuno prior art were held not to anticipate the claims.
Interestingly, the Court further noted that had the claim construction proposed by Molo been accepted, i.e., the two outer laminar panels made of the same material as the other panels being viewed as supports that provide rigidity to the core, then additional prior art references would have become relevant for purposes of anticipation, including the well-known honeycomb tissue paper itself.
[1] Western Oilfield Equipment Rentals Ltd v. M-I LLC, 2021 FCA.