Trials@uspto.gov
`571-272-7822
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` Paper 10
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`Date: February 19, 2014
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`TARGET CORPORATION,
`Petitioner
`
`v.
`
`DESTINATION MATERNITY CORPORATION,
`Patent Owner
`
`
`Case IPR2013-00532
`Patent RE43,531 E
`
`
`
`Before JENNIFER S. BISK, MICHAEL J. FITZPATRICK, and
`MITCHELL G. WEATHERLY, Administrative Patent Judges.
`
`
`FITZPATRICK, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
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`
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`571-272-7822
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` Paper 10
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`Date: February 19, 2014
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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`TARGET CORPORATION,
`Petitioner
`
`v.
`
`DESTINATION MATERNITY CORPORATION,
`Patent Owner
`
`
`Case IPR2013-00532
`Patent RE43,531 E
`
`
`
`Before JENNIFER S. BISK, MICHAEL J. FITZPATRICK, and
`MITCHELL G. WEATHERLY, Administrative Patent Judges.
`
`
`FITZPATRICK, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
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`Case IPR2013-00532
`Patent RE43,531 E
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`I.
`
`INTRODUCTION
`
`Petitioner Target Corporation filed a Corrected Petition for an inter partes
`
`review of claims 1, 2, 5, 6, 10, 11, and 15–17 of U.S. Patent No. RE43,531 E (the
`
`―’531 patent‖). Paper 4 (―Pet.‖). The Patent Owner, Destination Maternity
`
`Corporation, filed a Preliminary Response pursuant to 35 U.S.C. § 313. Paper 7
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`(―Prelim. Resp.‖). We have jurisdiction under 35 U.S.C. § 314.
`
`The standard for instituting an inter partes review is set forth in 35 U.S.C.
`
`§ 314(a), which provides as follows:
`
`THRESHOLD—The Director may not authorize an inter partes
`review to be instituted unless the Director determines that the
`information presented in the petition filed under section 311 and any
`response filed under section 313 shows that there is a reasonable
`likelihood that the petitioner would prevail with respect to at least 1 of
`the claims challenged in the petition.
`
`Upon consideration of the Petition and the Preliminary Response, we
`
`determine that the information presented shows there is a reasonable likelihood
`
`that Petitioner will prevail with respect to claims 1, 2, 5, 6, 10, 11, and 15–17 of
`
`the ’531 patent. Accordingly, pursuant to 35 U.S.C. § 314, we authorize an inter
`
`partes review to be instituted as to those claims.
`
`A. Related Proceedings
`
`Patent Owner asserted the ’531 patent against Petitioner in a pending lawsuit
`
`titled: Destination Maternity Corporation v. Target Corporation et al., Case No.
`
`2:12-cv-05680-AB (E.D. Pa.). Pet. 1; Patent Owner Mandatory Notices 2
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`(Paper 6). Petitioner contemporaneously filed another petition for a separate inter
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`partes review of the ’531 patent. Claims 1, 18, 19, and 24–29 are the subject of
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`2
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`Case IPR2013-00532
`Patent RE43,531 E
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`that petition. See IPR2013-00533. Petitioner also filed two petitions for inter
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`partes reviews of related U.S. Patent No. RE43,563 E. See IPR2013-00530;
`
`IPR2013-00531.
`
`B. The Asserted Grounds
`
`Petitioner presents the following grounds of unpatentability:
`
`References
`
`JCP fold-over panel jeans (Ex. 1002, 2)1 § 102
`
`JCP fold-over panel jeans and JCP
`maternity bootcut jeans (Ex. 1002, 3)2
`JCP fold-over panel jeans and Stangle
`(Ex. 1003)3
`Stangle
`
`Stangle and JCP maternity bootcut jeans
`Stangle and Lauren Sara (Ex. 1005)4
`Browder (Ex. 1004)5
`
`Basis Claims
`challenged
`1, 2, 5, 10,
`and 17
`§ 103 6 and 11
`
`§ 103
`
`15 and 16
`
`§ 102
`
`§ 103
`§ 103
`§ 102
`
`1, 2, 5, 10,
`and 15–17
`6 and 11
`6 and 11
`1
`
`
`
`1 Ex. 1002 is an excerpt from JC Penney’s ontrend Maternity, Fall/Winter Catalog
`(2005) (the ―JCP catalog‖). Page 2 of the exhibit (catalog page 15) depicts ―fold-
`over panel jeans,‖ hereafter, the ―JCP fold-over panel jeans.‖
`2 Page 3 of Ex. 1002 (catalog page 19) depicts ―maternity bootcut jeans,‖ hereafter,
`the ―JCP maternity bootcut jeans.‖
`3 U.S. Patent Application Publication US 2004/0049834 A1 (Mar. 18, 2004).
`4 Ex. 1005 is an excerpt from expecting style by Lauren Sara (2003).
`5 U.S. Patent 6,276,175 B1 (Aug. 21, 2001).
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`3
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`Patent RE43,531 E
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`C. The ’531 Patent
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`The ’531 patent relates to a garment worn during different stages of
`
`pregnancy and different stages of postpartum body changes. Ex. 1018, col. 1,
`
`ll. 10–12. A stated ―purpose of the invention is to provide a garment that adapts to
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`cover and fit a growing abdomen during pregnancy, wherein the garment stays up
`
`when worn.‖ Id. at ll. 42–44. Figure 1 of the ’531 patent is reproduced below.
`
`Figure 1 illustrates a front view of garment 100 in accordance with the
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`claimed invention of the ’531 patent. Ex. 1018, col. 2, ll. 7–8, ll. 26–27. The
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`garment has upper portion 102 and lower portion 104 that are joined to one another
`
`approximate the waistline, at first torso encircling circumference 126. Id. at col. 2,
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`4
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`Patent RE43,531 E
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`ll. 27–31, col. 2, l. 66 – col. 3, l. 4. In the embodiment of Figure 1, the garment
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`lower portion comprises trousers, but other lower portions are contemplated, such
`
`as a skirt, which is indicated by phantom lines. Id. at ll. 31–34.
`
`The garment upper portion includes belly panel 124 that is expansible or
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`stretchable to cover and fit over the abdomen during different stages of pregnancy.
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`Id. at col. 2, ll. 59–63. The belly panel includes top perimeter hem 130, which
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`forms second torso encircling circumference 134. Bottom portion 128 of the belly
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`panel projects downward in the front. Id. at ll. 63–66. Upper perimeter 108 of the
`
`garment lower portion correspondingly recedes downward in the front. Id. at
`
`col. 2, l. 66 – col. 3, l. 4. Thus, the belly panel extends, partially at least, under the
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`abdomen of the wearer before meeting and joining the garment lower portion. Id.
`
`at col. 3, ll. 6–10.
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`D. Illustrative Claim
`
`Of the challenged claims 1, 2, 5, 6, 10, 11, and 15–17, claim 1 is the sole
`
`independent claim. It is illustrative and reproduced as follows:
`
`1. A garment, comprising:
`
`a garment upper portion having a belly panel that is expansible
`to cover and fit over a growing abdomen during different stages of
`pregnancy;
`
`a garment lower portion having a first torso encircling
`circumference that recedes downward to make way for expansion of
`the belly panel; and
`
`the garment upper portion having a second torso encircling
`circumference defining an upper edge of the belly panel that encircles
`a wearer’s torso just beneath the wearer’s breast area configured to
`hold the garment up and in place about the torso in a position of a
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`location of maximum girth of the abdomen thereby substantially
`covering the wearer’s entire pregnant abdomen during all stages of
`pregnancy.
`
`II. ANALYSIS
`
`A. Claim Construction
`
`In an inter partes review, ―[a] claim in an unexpired patent shall be given its
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`broadest reasonable construction in light of the specification of the patent in which
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`it appears.‖ 37 C.F.R. § 42.100(b). That construction must be consistent with the
`
`specification, and the claim language should be read in light of the specification as
`
`it would be interpreted by one of ordinary skill in the art. In re Suitco Surface,
`
`Inc., 603 F.3d 1255, 1260 (Fed. Cir. 2010). Thus, we give claim terms their
`
`ordinary and customary meaning. See In re Translogic Tech., Inc., 504 F.3d 1249,
`
`1257 (Fed. Cir. 2007) (―The ordinary and customary meaning is the meaning that
`
`the term would have to a person of ordinary skill in the art in question.‖ (internal
`
`quotation marks omitted)).
`
`The parties do not proffer constructions of any claim terms. However,
`
`Petitioner requests that we review Patent Owner’s district court infringement
`
`contentions claim chart (Ex. 1006), consider the claim constructions implicit
`
`therein, and apply those constructions here. Pet. 29. We decline to do so.
`
`First, the claim construction standard used in district court is different than
`
`the broadest reasonable construction standard used here. See, e.g., In re Swanson,
`
`540 F.3d 1368, 1377–78 (Fed. Cir. 2008); SAP Am., Inc. v. Versata Dev. Grp., Inc.,
`
`CBM2012-00001, Paper 70, 7 (PTAB June 11, 2013). Thus, any constructions
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`implicit in Patent Owner’s infringement contentions are not necessarily relevant
`
`here.
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`Second, Petitioner has not identified any construction implicit in the
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`infringement contentions, let alone explained a basis for adopting it. See 37 C.F.R.
`
`§ 42.104(b)(3) (petition must identify how each challenged claim is to be
`
`construed). Although a general statement that a claim should be given its broadest
`
`reasonable interpretation may be sufficient, see Office Patent Trial Practice Guide,
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`77 Fed. Reg. 48,756, 48,764 (Aug. 14, 2012), a request for the Board to search a
`
`party’s infringement contentions for implicit constructions and to find a basis for
`
`adopting them here is not sufficient.
`
`Although the parties do not proffer constructions of any claim limitations,
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`we address one limitation of independent claim 1 on which the parties’ arguments
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`implicitly are based.
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`1. just beneath the wearer’s breast area
`
`Claim 1 requires that the garment upper portion has ―a second torso
`
`encircling circumference defining an upper edge of the belly panel that encircles a
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`wearer’s torso just beneath the wearer’s breast area.‖ The Specification does not
`
`identify a location ―just beneath the wearer’s breast area‖ or define ―breast area.‖
`
`In fact, outside of claim 1, the Specification does not mention ―breast area‖ or
`
`―breast.‖
`
`We give the term ―breast area‖ its ordinary and customary meaning, as read
`
`in light of the Specification. The term ―breast area‖ connotes a broader a meaning
`
`than the word ―breast‖ alone.
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`Further, as the Specification acknowledges, wearers have different body
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`types. Ex. 1018, col. 3, ll. 17–21. Thus, a garment may satisfy claim 1 for one
`
`wearer but not another because of differences in the wearers’ body types.
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`B. Anticipation by JCP fold-over panel jeans
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`Petitioner asserts that claims 1, 2, 5, 10, and 17 are anticipated by the JCP
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`fold-over panel jeans. Pet. 31–34. The JCP fold-over jeans appear on page 15 of
`
`the JCP catalog. Ex. 1002, 2. An excerpt of page 15 is reproduced below.
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`The photo excerpt depicts a series of photographs of the JCP fold-over panel
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`jeans, and accompanying text. As seen, the garment has distinct upper and lower
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`garment portions that are joined to one another proximate the waist. The lower
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`portion consists of jeans. The upper portion is referred to as a ―fold-over panel‖
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`that is designed to allow wear before, during, and after pregnancy and during
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`different stages of pregnancy. Ex. 1002, 2. The photographs show the garment in
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`three configurations: panel unfolded, panel folded once, and panel folded twice. In
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`the unfolded configuration, the panel appears to cover the entire belly or abdomen
`
`of a pregnant model. The garment is said to ―stretch for comfort.‖ Id.
`
`1. Claim 1
`
`The JCP fold-over panel jeans includes a garment upper portion, consisting
`
`of the fold-over panel, and a garment lower portion, consisting of the jeans. The
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`fold-over panel appears to be ―a belly panel‖ within the meaning of claim 1. It
`
`stretches and, thus, is ―expansible to cover and fit over a growing abdomen during
`
`different stages of pregnancy,‖ as required by the claim. Ex. 1002, 2. The JCP
`
`fold-over panel jeans includes features corresponding to the required first and
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`second torso encircling circumferences, as shown in one of the photographs, which
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`is reproduced again below, but larger and with annotations.
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`The photograph includes annotations indicating features corresponding to
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`the first and second torso encircling circumferences required by claim 1. Ex. 1002,
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`2. As shown, the jeans and the fold-over panel meet at what has been labeled a
`
`first torso encircling circumference. This first torso encircling circumference
`
`extends along the top of the jeans and recedes downward in the front and, thus, at
`
`least partially below the wearer’s belly. Id. Consequently, we are satisfied that the
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`jeans have ―a first torso encircling circumference that recedes downward to make
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`way for expansion of the belly panel.‖
`
`As also shown, an upper edge of the fold-over panel has been labeled a
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`second torso encircling circumference. Patent Owner argues that the JCP fold-over
`
`panel jeans do not anticipate claim 1 because this upper edge of the fold-over panel
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`does not extend high enough on the wearer’s body. In particular, Patent Owner
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`argues that the fold-over panel (1) does not extend to ―just beneath the wearer’s
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`breast area‖ and (2) does not ―substantially cover[] the wearer’s entire pregnant
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`abdomen.‖ Prelim. Resp. 8. We are not persuaded by Patent Owner’s arguments.
`
`In the annotated photograph above, the upper edge of the fold-over panel
`
`extends to just beneath the wearer’s breast area. The skin of the model that is
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`visible above the fold-over panel is part of the breast area, within the broadest
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`reasonable interpretation of that term. Further, the fold-over panel would extend
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`even higher on a wearer of a shorter stature.
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`The photograph also shows that the fold-over panel substantially covers the
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`model’s entire pregnant abdomen; full coverage is not required by the claim.
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`Further, and again, the claim is not limited to a wearer of any particular height or
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`body type. Thus, the fold-over panel would cover even more, and perhaps all, of
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`another wearer’s entire pregnant abdomen if that wearer were shorter and/or gained
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`less abdominal girth during pregnancy.
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`On this record, we are persuaded that there is a reasonable likelihood that
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`Petitioner will prevail in showing anticipation of claim 1 by the JCP fold-over
`
`panel jeans.
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`2. Claims 2, 5, 10, and 17
`
`Each of claims 2, 5, 10, and 17 depends from claim 1.
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`Claim 2 requires that ―the second torso encircling circumference [at upper
`
`edge of belly panel] is adjustable in girth in conformance with different body
`
`types.‖ Similarly, claim 17 requires that ―the second torso encircling
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`circumference comprises stretchable fabric to adjust the girth in conformance with
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`different body types.‖ The JCP fold-over panel jeans appear to meet these
`
`limitations, as they are made of ―[c]otton/polyester/spandex‖ and described and
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`illustrated as stretchable. Ex. 1002, 2.
`
`Claim 5 requires that ―the garment upper portion comprises an elastic fabric
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`that is contractible elastically to cover an abdomen during different stages of
`
`postpartum body changes.‖ With respect to claim 5,6 Patent Owner argues that the
`
`panel of the JCP fold-over panel jeans, which stretches, is not ―also contractible.‖
`
`Prelim. Resp. 29. We are not persuaded by this argument. Expansion and
`
`contraction are reciprocal movements. The JCP fold-over panel jeans ―stretch for
`
`comfort.‖ Ex. 1002, 2. Thus, they necessarily contract as well.
`
`Claim 10 requires that ―the garment upper portion is foldable toward the
`
`garment lower portion to comprise a folded band on the garment lower portion.‖
`
`The JCP fold-over panel jeans appear to meet this limitation. Its panel is described
`
`and illustrated as foldable, including so as to form a folded band. Ex. 1002, 2.
`
`Although the folded bands shown in the photographs of page 15 of the JCP catalog
`
`do not appear to overlay any portion of the jeans, the claim does not require actual
`
`folding. It is enough that the fold-over panel be ―foldable‖ in such a manner.
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`Based on the present record, the fold-over panel appears to be foldable in
`
`numerous configurations, including one in which a folded band overlays a top
`
`portion of the jeans.
`
`
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`6 Claim 5 is the only dependent claim for which Patent Owner presented a specific
`argument beyond its arguments regarding base claim 1. Prelim. Resp. 29–32.
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`On this record, we are persuaded that there is a reasonable likelihood that
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`Petitioner will prevail in showing anticipation of claims 2, 5, 10, and 17 by the JCP
`
`fold-over panel jeans.
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`C. Obviousness over JCP fold-over panel jeans and JCP maternity bootcut
`jeans
`
`Petitioner asserts that the subject matter of claims 6 and 11 would have been
`
`obvious over the JCP fold-over panel jeans and JCP maternity bootcut jeans.
`
`Pet. 34–37. Claims 6 and 11 depend from claim 1. Claim 6 requires that ―the
`
`garment lower portion has a partial waistband extending from side seams of the
`
`garment lower portion and extending across a back side of the garment lower
`
`portion where the partial waistband widens above a wearer’s pelvis.‖ Similarly,
`
`claim 11 requires that ―the garment lower portion has a partial waistband extending
`
`from side seams of the garment lower portion wherein the partial waistband tapers
`
`toward the side seams and widens above a wearer’s pelvis across a back side of the
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`garment lower portion.‖
`
`Page 19 of the JCP catalog describes and shows the JCP maternity bootcut
`
`jeans. Ex. 1002, 3. An excerpt of page 19 is reproduced below.
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`The excerpt depicts a photograph of a portion of the JCP maternity bootcut
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`jeans. The JCP catalog states that the garment includes ―an all-around elastic belly
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`panel that can be folded up or down depending on your stage of pregnancy.‖
`
`Ex. 1002, 3. In the photograph, however, the all-around belly panel (shown in
`
`black or dark blue) is concealed partially by a white shirt, as Petitioner concedes.
`
`Pet. 34–35. Thus, and despite its name, it is not clear whether it meets claim 1’s
`
`requirement of ―substantially covering the wearer’s entire pregnant abdomen.‖
`
`Consequently, Petitioner relies on the JCP fold-over jeans for teaching the
`
`limitations of claim 1, and on the JCP maternity bootcut jeans for teaching the
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`partial waistband limitations required by dependent claims 6 and 11. Pet. 36–37.
`
`The JCP maternity bootcut jeans appear to have such a partial waistband (the
`
`uppermost denim and rear portion of the jeans). The partial waistband is widest in
`
`a central part of the back side of the garment and tapers toward the side seams.
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`Petitioner provides reasoning with rational underpinning for substituting the
`
`jeans portion of the JCP fold-over panel jeans with the jeans portion from the JCP
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`maternity bootcut jeans, thereby resulting in the subject matter of claims 6 and 11.
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`Pet. 35–36. In particular, and relying on the declaration testimony of Frances
`
`Harder, Petitioner points out that both products are jeans having attached belly
`
`panels, which could be swapped easily with one another. Id. at 35; Ex. 1011, ¶ 25.
`
`On the present record, we are persuaded that swapping panels would have been an
`
`obvious design choice to a person of ordinary skill in the art, and that it was
`
`desired by customers. Pet. 35; Ex. 1011, ¶ 25. Further, the swapping of the panels
`
`and jeans does no more than yield predictable results. See KSR Int’l Co. v. Teleflex
`
`Inc., 550 U.S. 398, 416 (2007) (―The combination of familiar elements according
`
`to known methods is likely to be obvious when it does no more than yield
`
`predictable results.‖).
`
`Patent Owner argues that objective indicia, or secondary considerations,
`
`demonstrate non-obviousness. Prelim. Resp. 35–40; see also Graham v. John
`
`Deere Co., 383 U.S. 1, 17–18 (1966) (―Such secondary considerations as
`
`commercial success, long felt but unsolved needs, failure of others, etc., might be
`
`utilized to give light to the circumstances surrounding the origin of the subject
`
`matter sought to be patented. As indicia of obviousness or nonobviousness, these
`
`inquiries may have relevancy.‖). In particular, Patent Owner states that ―publicly
`
`available reviews for Patent Owner’s Secret Fit Belly® line of maternity bottoms
`
`call out claimed features of Patent Owner’s Secret Fit Belly® garments, show
`
`praise for the invention’s claimed features, and explain its commercial success.‖
`
`Prelim. Resp. 36 (emphasis added).
`
`Patent Owner reproduces the relied-upon reviews but does not direct us to
`
`evidence of commercial success, such as sales, let alone ―proof that [any such]
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`sales were a direct result of the unique characteristics of the claimed invention-as
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`opposed to other economic and commercial factors unrelated to the quality of the
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`patented subject matter.‖ In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996). With
`
`respect to the alleged industry praise, Patent Owner has not linked the praise to the
`
`inventions of dependent claims 6 and 11, as opposed to independent claim 1.7 See
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`Geo. M. Martin Co. v. Alliance Mach. Sys. Int’l LLC, 618 F.3d 1294, 1305 (Fed.
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`Cir. 2010) (―Industry praise must also be linked to the patented invention.‖). For at
`
`least these reasons, Patent Owner’s arguments regarding evidence of secondary
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`considerations are not persuasive.
`
`On this record, we are persuaded that there is a reasonable likelihood that
`
`Petitioner will prevail in showing unpatentability of claims 6 and 11 as obvious
`
`over the JCP fold-over panel jeans and JCP maternity bootcut jeans.
`
`D. Obviousness over JCP fold-over panel jeans and Stangle
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`Petitioner asserts that the subject matter of claims 15 and 16 would have
`
`been obvious over the JCP fold-over panel jeans and Stangle. Pet. 38–41. Claims
`
`15 and 16 depend from claim 1. Claim 15 requires that ―an edge margin of the
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`garment upper portion is folded over and knitted to an inside of the fabric to
`
`provide a perimeter hem stitch.‖ Similarly, claim 16 requires that ―an edge margin
`
`of the garment upper portion is folded over and sewn or knitted to an inside of the
`
`
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`7 As discussed above, there is a reasonable likelihood that Petitioner will prevail in
`showing anticipation of claim 1 by the JCP fold-over panel jeans. Secondary
`considerations are not relevant when evaluating whether prior art anticipates a
`claim.
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`fabric to provide a perimeter hem stitch.‖ (Emphasis added to call out distinction
`
`with claim 15).
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`Stangle discloses ―a garment that enables the wearing of clothing that is
`
`otherwise too small to be zipped, buttoned snapped or otherwise fastened, such as
`
`during pregnancy or with respect to an overweight wearer or other wearer whose
`
`body proportions have changed.‖ Ex. 1003, ¶ 0007. The garment is described as a
`
`hollow, tubular sleeve that is worn around the waistline and over the unfastened fly
`
`of the clothing. Id. at ¶ 0029. As Petitioner points out, an upper portion (as well as
`
`a lower portion) of the tubular sleeve is folded over and can be attached to the
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`inside surface of the sleeve by either stitching or by being woven integrally (i.e.,
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`knitted). Pet. 39 (citing Ex. 1003, ¶¶ 0030–0031).
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`Petitioner provides reasoning with rational underpinning for modifying the
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`JCP fold-over panel jeans in view of the relied-upon teachings of Stangle, thereby
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`resulting in the subject matter of claims 15 and 16. Pet. 40. In particular,
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`Petitioner offers testimony from Ms. Harder that a person of ordinary skill in the
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`art would have understood that the folded over and stitched or knitted hem taught
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`by Stangle could be employed on the upper edge of the belly panel of the JCP fold-
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`over panel jeans, because both references relate to maternity clothing and because
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`wearers desire comfortable maternity clothing with durable edges that stay on their
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`bodies. Ex. 1011, ¶ 37. Further, the proposed modifications do no more than yield
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`predictable results. See KSR, 550 U.S. at 416.
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`Patent Owner’s purported evidence of secondary considerations is not
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`persuasive. First, as discussed above, Patent Owner does not direct us to actual
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`evidence of commercial success such as sales data. Second, Patent Owner has not
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`linked the alleged industry praise to the inventions of dependent claims 15 and 16,
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`as opposed to independent claim 1.
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`On this record, we are persuaded that there is a reasonable likelihood that
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`Petitioner will prevail in showing that the subject matter of claims 15 and 16 would
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`have been obvious over the JCP fold-over panel jeans and Stangle.
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`E. Anticipation by Stangle
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`Petitioner asserts that claims 1, 2, 5, 10, and 15–17 are anticipated by
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`Stangle. Pet. 41–46. As discussed above, Stangle discloses a tubular sleeve that is
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`worn around the waistline and over the unfastened fly of the clothing to enable the
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`wearing of clothing that is otherwise too small to be fastened, such as during
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`pregnancy. Ex. 1003, ¶¶ 0007, 0029. Figures 5 and 6 of Stangle are reproduced
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`below.
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`
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`Figures 5 and 6 illustrate unfastened pants as worn on a portion of a wearer’s
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`body. Id. at ¶ 0034. In Figure 6, sleeve 10 masks the open fly of the pants. Id.
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`The sleeve in Figure 6 is separate from the pants, id. at ¶ 0035, but Stangle also
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`discloses an embodiment with a ―moveable sleeve‖ that is attached to pants. Id. at
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`¶ 0037. Petitioner asserts that the attached moveable sleeve embodiment,
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`illustrated in Stangle Figure 10, anticipates claim 1. Pet. 24–25, 42–44. Figure 10
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`is reproduced below.
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`Figure 10 illustrates a sectional view of the attached moveable sleeve
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`embodiment of Stangle (with only one leg of the pants being visible). Ex. 1003,
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`¶ 0042. The sleeve is shown folded with affixed end 42 inside pant leg 32 and
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`moveable end 44 outside the pant leg. Id. at ¶ 0041. The affixed end is affixed to
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`the clothing’s inside surface 34 but the moveable end can be folded inside or
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`outside. Id. In Figure 10, the affixed end is folded to the outside, thus, covering
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`the fly of the pants (not shown). Alternatively, when the pants are able to be
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`fastened, the moveable end can be folded, through an angle of approximately 360
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`degrees, to the inside and stowed out of view and against the wearer’s body. Id. at
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`¶¶ 0037–0040.
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`Petitioner argues that a third configuration for the moveable end is possible
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`such that it could be folded upward to cover the belly (i.e., through an angle of
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`approximately 180 degrees). Pet. 24–25. However, Stangle does not disclose that
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`configuration, which is not surprising because it would result in an unfastened fly
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`being visible. Even though the configuration may be possible, we are not
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`persuaded that it would anticipate claim 1.
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`As argued by Patent Owner, Petitioner has not shown that the moveable end,
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`even when flipped up, could extend to ―just beneath the wearer’s breast area,‖ as
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`required by claim 1. Prelim. Resp. 6. Petitioner relies on a disclosure that
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`sleeve 10 could be up to ten inches in height, which it asserts is sufficient to cover
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`substantially the belly region. Pet. 22 (citing Ex. 1003, ¶¶ 0032, 0035). However,
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`sleeve 10 is a different embodiment than the moveable sleeve 40 embodiment,
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`which Petitioner asserts anticipates. Unlike moveable sleeve 40, sleeve 10 is a
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`distinct accessory worn completely on the outside of the pants. See Ex. 1003,
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`¶ 0035, Fig. 6, ref. 10.
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`Even if the moveable sleeve 40 were also ten inches in height—something
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`Petitioner has not alleged or shown—Petitioner’s declaration testimony regarding
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`the sufficiency of ten inches still would not be persuasive. Ms. Harder opines that
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`ten inches of garment height is sufficient to cover ―from just below the belly to just
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`below the breast area.‖ Ex. 1011, ¶ 31. However, in the moveable sleeve
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`embodiment of Stangle, the starting point is well below the waist, as the affixed
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`end extends downward from the waist. See Ex. 1003, Fig. 10.
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`As also argued by Patent Owner, Petitioner has not shown that Stangle
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`discloses ―a garment lower portion having a first torso encircling circumference
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`that recedes downward to make way for expansion of the belly panel,‖ as required
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`by claim 1. Prelim. Resp. 17. Stangle does not describe expressly this feature, but
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`Petitioner attempts to show that Stangle Figure 8 illustrates it. Pet. 42 (reproducing
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`Ex. 1003, Fig. 8 with Petitioner annotations). However, arguments based on patent
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`application drawings not explicitly made to scale are unavailing. Cf. Nystrom v.
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`TREX Co., Inc., 424 F.3d 1136, 1149 (Fed. Cir. 2005) (―arguments based on
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`drawings not explicitly made to scale in issued patents are unavailing‖).
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`Furthermore, because Figure 8 is an inside-out view of a Stangle embodiment,
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`Figure 8 may not reflect accurately whether the encircling circumference recedes
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`downward. Ex. 1003, ¶ 0041.
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`There is not a reasonable likelihood that Petitioner will prevail in showing
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`anticipation by Stangle of claim 1, or claims 2, 5, 10, and 15–17, which depend
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`from claim 1.
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`F. Obviousness over Stangle and other art
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`Petitioner asserts that the subject matter of claims 6 and 11 would have been
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`obvious over Stangle and the JCP maternity bootcut jeans and over Stangle and
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`Lauren Sara. Pet. 46–52. Claims 6 and 11 depend from claim 1, and Petitioner’s
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`obviousness assertions are premised on Stangle anticipating claim 1. Id. Thus, for
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`at least reasons already discussed above, there is not a reasonable likelihood that
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`Petitioner will prevail in showing unpatentability of claims 6 and 11 as obvious
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`over Stangle in view of the JCP maternity bootcut jeans or Lauren Sara.
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`G. Anticipation by Browder
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`Petitioner asserts that claim 1 is anticipated by Browder. Pet. 52–53.
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`Browder discloses control undergarments. Ex. 1004, col. 1, ll. 7–16. Figure 3 is
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`reproduced below.
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`Figure 3 illustrates a front view of high-waist brief 30. Ex. 1004, col. 2,
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`ll. 40–41. The brief includes control area 35 that extends, upward from crotch
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`portion 38, ―over the abdomen and ends below the wearer’s breasts.‖ Id. at col. 3,
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`ll. 55–64. The control area stretches. Id. at col. 3, ll. 39–46. But, Browder does
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`not disclose that the control area substantially covers ―the wearer’s entire pregnant
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`abdomen during all stages of pregnancy,‖ as required by claim 1. Indeed,
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`Petitioner does not allege that control area 35 of the asserted embodiment of
`
`Figure 3 meets this limitation. Instead, to meet this limitation, Petitioner relies on
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`a teaching regarding a different embodiment, which, unlike high-waist brief 30, is
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`described as a maternity brief. Pet. 53 (citing Ex. 1004, col. 4, ll. 50–59). That
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`teaching, however, concerns a different embodiment. Ex. 1004, col. 4, ll. 50–59,
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`Fig. 11. Accordingly, we are not persuaded that Browder discloses all limitations
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`of claim 1 as arranged in the claim. See Net MoneyIN, Inc. v. VeriSign, Inc., 545
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`F.3d 1359, 1369 (Fed. Cir. 2008) (―Because the hallmark of anticipation is prior
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`22
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`invention, the prior art reference—in order to anticipate under 35 U.S.C. § 102—
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`must not only disclose all elements of the claim within the four corners of the
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`document, but must also disclose those elements arranged as in the claim.‖
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`(quotation marks and citation omitted)).
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`There is not a reasonable likelihood that Petitioner will prevail in showing
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`anticipation of claim 1 by Browder.
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`III. CONCLUSION
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`For the foregoing reasons, we are persuaded that the information presented
`
`in the Petition establishes that there is a reasonable likelihood that Petitioner will
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`prevail in showing unpatentability of claims 1, 2, 5, 6, 10, 11, 15–17 of the ʼ531
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`patent.
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`The Board has not made a final determination on the patentability of the
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`challenged claims.
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`IV. ORDER
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`Accordingly, it is
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`ORDERED that, pursuant to 35 U.S.C. § 314, an inter partes review of the
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`’531 patent is hereby instituted on the following grounds:
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`Claims 1, 2, 5, 10, and 17 as anticipated by JCP fold-over panel jeans;
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`Claims 6 and 11 as obvious over the JCP fold-over panel jeans and JCP
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`maternity bootcut jeans; and
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`Claims 15 and 16 as obvious over the JCP fold-over
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