DCT
2:25-cv-12089
Molo Design Ltd v. Party Rental Ltd
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Molo Design, Ltd. (Canada)
- Defendant: Party Rental Ltd. (New Jersey)
- Plaintiff’s Counsel: Bracewell LLP
- Case Identification: 2:25-cv-12089, D.N.J., 06/24/2025
- Venue Allegations: Venue is alleged to be proper in the District of New Jersey because the Defendant is incorporated in, and maintains its principal place of business in, New Jersey.
- Core Dispute: Plaintiff alleges that Defendant’s "Soft Wall Room Divider" products, offered for rent, infringe patents related to flexible, collapsible partitions constructed with an expandable cellular core.
- Technical Context: The technology concerns lightweight, reconfigurable furniture and partitions using honeycomb-like structures, which are significant in the markets for interior design, event management, and temporary space division.
- Key Procedural History: The complaint notes that on October 9, 2023, the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB) issued final written decisions upholding the validity of all challenged claims of the ’366 Patent and numerous claims of the ’161 Patent, suggesting the patents have previously withstood validity scrutiny. The complaint also alleges pre-suit discussions between the parties beginning in February 2024 and a cease-and-desist letter sent in June 2025.
Case Timeline
| Date | Event |
|---|---|
| 2005-05-18 | Priority Date for ’366 and ’161 Patents |
| 2011-01-11 | U.S. Patent No. 7,866,366 Issues |
| 2017-06-27 | U.S. Patent No. 9,689,161 Issues |
| 2023-10-09 | PTAB issues decisions upholding validity of asserted patents |
| 2024-02-14 | Earliest alleged date of discussions between parties |
| 2025-06-04 | Plaintiff sends cease-and-desist letter to Defendant |
| 2025-06-24 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 7,866,366: "Flexible Furniture System" (Issued Jan. 11, 2011)
The Invention Explained
- Problem Addressed: The patent describes conventional partitions and furniture as often being rigid, heavy, cumbersome, and difficult to store or transport, which limits their utility for creating temporary or dynamic spaces. Such items are also typically opaque, which can disrupt natural lighting (Compl. Ex. A, ’366 Patent, col. 1:18-59).
- The Patented Solution: The invention is an article of furniture built around a core of thin, interconnected "laminar panels" made of a "flaccid material" like tissue paper (’366 Patent, col. 2:50-56). These panels are joined in an alternating pattern to form a cellular or honeycomb-like structure that can be expanded from a flat, collapsed state into a three-dimensional form (’366 Patent, col. 3:1-17; Fig. 3). The core is bounded by a pair of "self-supporting" end pieces that provide rigidity and serve as handles to expand the structure (’366 Patent, col. 3:18-25).
- Technical Importance: This design enables the creation of lightweight, portable, and easily stored furniture and space dividers that can be reconfigured into various shapes (’366 Patent, col. 1:33-38).
Key Claims at a Glance
- The complaint asserts independent claim 1 (Compl. ¶21).
- Essential elements of Claim 1 include:
- An article of flexible furniture with a core of "laminar panels of a flaccid material."
- Adjacent panels are interconnected to form an expandable "cellular structure."
- A pair of "self-supporting" supports are at opposite ends of the core.
- The supports provide rigidity and are "flexible so as to be foldable into a tubular configuration."
- A "plurality of fasteners" on each support secures the tubular configuration and permits connection to an adjacent article.
- The complaint alleges infringement of "one or more claims," potentially reserving the right to assert dependent claims (Compl. ¶26).
U.S. Patent No. 9,689,161: "Flexible Furniture System" (Issued June 27, 2017)
The Invention Explained
- Problem Addressed: The background addresses the same challenges as the ’366 Patent regarding the inflexibility and bulk of traditional partitions (Compl. Ex. B, ’161 Patent, col. 1:31-59).
- The Patented Solution: This patent claims a method for partitioning a room using the technology. The method comprises the steps of positioning an extensible wall with a cellular core, placing its base on the floor, and moving the ends apart to expand the cellular structure into a "substantially straight freestanding wall configuration" (’161 Patent, Abstract; col. 17:1-18). The claim recites specific dimensional limitations: the base must have a width of at least 10 centimeters, and the core must have a height of at least 1 meter (’161 Patent, col. 17:7-8).
- Technical Importance: By claiming the method of use, this patent provides a different scope of protection than the apparatus claims of the parent ’366 Patent, covering the act of deploying the flexible partition technology in a space.
Key Claims at a Glance
- The complaint asserts independent claim 1 (Compl. ¶37).
- Essential steps of method Claim 1 include:
- Positioning an extensible wall with a cellular core in a room.
- The wall must have a base width of at least 10 cm and a core height of at least 1 meter.
- Placing the base on the floor.
- Moving the opposite ends apart to expand the core.
- Forming a "substantially straight freestanding wall configuration" while maintaining its vertical extent.
- The complaint alleges infringement of "one or more claims," potentially reserving the right to assert dependent claims (Compl. ¶45).
III. The Accused Instrumentality
- Product Identification: Defendant's "Soft Wall Room Dividers," identified as an 8-foot model (Compl. ¶21, ¶38).
- Functionality and Market Context: The accused products are described as "lightweight, freestanding partitions" with a "flexible accordion design" that are used to "partition an area of a room" (Compl. ¶38-39). The complaint alleges they are made with a core of interconnected paper panels forming a cellular structure and have end supports with fasteners (Compl. ¶22-25). An image provided in the complaint shows the product stored in a flat, rectangular bag for transport (Compl. p. 17, ¶44). The Defendant allegedly rents these products for events, advertising their ability to "create unique shapes, curves, or straight walls" (Compl. p. 17). The complaint specifically alleges the product has a base of 15 inches (38.1 cm) and a height of 96 inches (2.44 m), meeting the dimensional requirements of the ’161 Patent (Compl. ¶42).
IV. Analysis of Infringement Allegations
’366 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| An article of flexible furniture having a core formed from a plurality of laminar panels of a flaccid material... | Defendant’s “Soft Wall” comprises a core formed by a plurality of laminar panels, made of paper, in which each panel has a pair of oppositely directed major faces. | ¶22 | col. 2:48-56 |
| adjacent faces of said panels being inter-connected to provide a cellular structure upon movement... | Adjacent faces of the panels are interconnected to form a cellular structure when expanded, as shown in a provided side-by-side visual comparison. | ¶22; p. 8 | col. 3:1-12 |
| a pair of supports at opposite ends of said core and connected to respective ones of said faces... | The accused dividers include a pair of supports at opposite ends of the core, which are connected to the faces. | ¶23; p. 9 | col. 3:18-20 |
| said supports being self-supporting to provide rigidity to said core whereby said supports may be moved apart to expand... | The supports provide rigidity and can be moved apart to expand the cellular structure and extend the length of the core. | ¶24 | col. 3:20-25 |
| and flexible so as to be foldable into a tubular configuration about an axis parallel to said major faces... | The supports are flexible and can be folded into a tubular configuration around an axis parallel to the panel faces. | ¶24; p. 10 | col. 4:51-62 |
| and a plurality of fasteners on each of said supports to secure said supports in said tubular configuration... | The dividers include a plurality of fasteners on each support to secure them in the tubular configuration. | ¶25; p. 11 | col. 3:34-39 |
- Identified Points of Contention:
- Scope Questions: A potential dispute may arise over the term "flaccid material". While the complaint alleges the accused product is made of paper, which the patent contemplates, the specific properties of that paper could be litigated to determine if it meets the "flaccid" characteristic as defined by the patent.
- Technical Questions: Claim 1 requires fasteners that both "secure said supports in said tubular configuration" and "permit connection to an adjacent support." The complaint alleges the presence of fasteners for the tubular configuration (Compl. ¶25). A question for discovery will be whether these same fasteners also permit connection to an adjacent unit, as the claim requires a dual function.
’161 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A method for partitioning an area of a room, the method comprising: positioning an extensible wall in the area of said room... | Defendant’s "Soft Wall Room Divider" is advertised and used to partition an area of a room, and its website describes it as having a "flexible accordion design." | ¶38-39 | col. 17:1-3 |
| said wall having a base, a top... defining a core, said core comprising a cellular structure... | The accused product has a base, top, and a core with a cellular structure of multiple voids that extend from base to top upon expansion, as shown in an annotated product image. | ¶40-41; p. 14 | col. 17:3-7 |
| said base having a width of at least 10 centimeters and said core having a height of at least 1 meter... | The complaint alleges the accused product's base is 15 inches (38.1 cm) and its height is 96 inches (2.44 m), explicitly meeting the claim's dimensional requirements. | ¶42 | col. 17:7-8 |
| placing said base on a floor of said room, and moving opposite ends of said core apart to expand... to form at least a substantially straight freestanding wall configuration... | The complaint alleges the product is used by placing its base on the floor and moving its ends apart to form a freestanding wall, as shown in product photos. | ¶43; p. 16 | col. 17:11-18 |
- Identified Points of Contention:
- Scope Questions: Claim 1 requires forming a "substantially straight" configuration. The complaint cites Defendant's marketing, which promotes the product's ability to form "curves, or straight walls" (Compl. p. 17). This raises the question of how "substantially straight" should be construed and what evidence will be required to prove that infringing uses occur.
- Technical Questions: As the Defendant is a rental company, a central question will be whether it directly infringes the method claim by performing all the steps itself (e.g., during setup for clients) or whether Plaintiff's case will rely more heavily on theories of indirect infringement, where Defendant is alleged to have induced its customers to perform the patented method.
V. Key Claim Terms for Construction
Term: "flaccid material" (’366 Patent, Claim 1)
- Context and Importance: The definition of this term is central to the scope of the apparatus claim, as it dictates the type of material from which the core must be made. The Defendant may argue its material is semi-rigid and therefore not "flaccid."
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification provides multiple examples, including "standard white, flame retardant tissue paper" (’366 Patent, col. 2:54-56) as well as "heavier weight paper material, such as Kraft paper, or a non-woven textile material" like Tyvek (’366 Patent, col. 4:28-32). This suggests the term covers a range of flexible materials, not just the lightest possible embodiment.
- Evidence for a Narrower Interpretation: The preferred embodiment uses "tissue paper" (’366 Patent, col. 2:56), and the term "flaccid" itself implies a lack of inherent stiffness. A party might argue the term should be limited to materials that cannot support their own weight until formed into the cellular structure.
Term: "self-supporting" (’366 Patent, Claim 1, referring to the supports)
- Context and Importance: This term defines the structural requirement for the end pieces. Infringement will depend on whether the accused product's end pieces possess the requisite level of rigidity without external aid.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification defines the term functionally, stating the supports have "sufficient rigidity to resist collapse of the core" (’366 Patent, col. 3:22-23). This functional language may support a broader construction that encompasses any support that achieves this result.
- Evidence for a Narrower Interpretation: The specification discloses embodiments where the supports are made of "non woven felt material" (’366 Patent, col. 3:20-21) or "rigid material such as a millboard" (’366 Patent, col. 5:5-6). A party could argue that "self-supporting" implies a level of rigidity akin to these specific examples.
VI. Other Allegations
- Indirect Infringement: The complaint alleges that Defendant encourages infringement by renting out products that it "knew or had reason to know infringed" the asserted patents, thereby encouraging its customers to perform the infringing use and method (Compl. ¶30, ¶49).
- Willful Infringement: Willfulness is alleged based on Defendant’s purported knowledge of Molo's patent rights. This knowledge is allegedly established through: (1) discussions between the parties since at least February 2024; (2) constructive notice via Plaintiff's virtual patent marking website, which is linked from its product pages; and (3) actual notice via a cease-and-desist letter sent on June 4, 2025 (Compl. ¶27-29, ¶46-48).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of infringement liability: For the '161 method patent, the case may turn on whether the plaintiff can prove direct infringement by the defendant, a rental company, or if the analysis will shift to indirect infringement, focusing on whether the defendant's business model and instructions induce its customers to perform the patented steps.
- A second key issue will concern claim scope and construction: The dispute over the '366 apparatus patent will likely focus on whether the accused product's components meet specific claim limitations, particularly the definitions of "flaccid material" for the core and "self-supporting" for the end pieces.
- A final dispositive question will relate to willfulness and damages: Given the allegations of pre-suit knowledge from business discussions, a virtual marking page, and a formal cease-and-desist letter—bolstered by prior PTAB decisions affirming patent validity—the defendant's state of mind will be a critical factor in determining if infringement was willful, which could expose it to enhanced damages.