UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`TARGET CORPORATION
`
`Petitioner
`
`V.
`
`DESTINATION MATERNITY CORPORATION
`
`Patent Owner
`
`Patent RE43,563
`
`Case No. IPR 2013-00531
`
`
`
`Date: May 5, 2014
`
`Declaration of David Brookstein, Sc.D. in Support of Patent Owner’s Motion
`
`in the Alternative to Amend Claim 1 of the ’563 Patent
`
`DMC Exhibit 2026
`
`Target v. DMC
`|PR2013-00530, 531, 532, 533
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`TARGET CORPORATION
`
`Petitioner
`
`V.
`
`DESTINATION MATERNITY CORPORATION
`
`Patent Owner
`
`Patent RE43,563
`
`Case No. IPR 2013-00531
`
`
`
`Date: May 5, 2014
`
`Declaration of David Brookstein, Sc.D. in Support of Patent Owner’s Motion
`
`in the Alternative to Amend Claim 1 of the ’563 Patent
`
`DMC Exhibit 2026
`
`Target v. DMC
`|PR2013-00530, 531, 532, 533
`
`
`
`I, David Brookstein, Sc.D., declare as follows:
`
`1. I have been retained by counsel
`
`for the Patent Owner, Destination
`
`Maternity Corporation, to offer technical opinions with respect to US.
`
`Patent No. RE43,563 E (“the ‘563 patent”), proposed amendments to the
`
`’563 patent, and prior art references cited in the Inter Partes Review
`
`proceedings for the ‘531 patent and the ‘563 patent.
`
`2. I was awarded a Bachelor of Textile Engineering from the Georgia
`
`Institute of Technology (“Georgia Tech”) in 1971, a Master of Science in
`
`Textile Technology from the Massachusetts Institute of Technology
`
`(“MIT”) in 1973, and a Doctor of Science in the field of mechanical
`
`engineering from MIT in 1976. My current curriculum vita is attached
`
`hereto as Exhibit 1.
`
`3.
`
`I was a professor of Textile Engineering at Georgia Tech from 197 5-1980.
`
`I was Associate Director of Albany International Research Co. (formerly
`
`Fabric Research Laboratories) from 1980-1994. I was Dean of the School
`
`of Engineering and Textiles and Executive Director of Research at
`
`Philadelphia University (formerly Philadelphia College of Textiles and
`
`Science) from 1994 to 2010. In 2010, I was appointed Executive Dean for
`
`University Research at Philadelphia University and served in that position
`
`through June 2012. In July 2012, I resigned from Philadelphia University
`
`to become Dean of
`
`the Science, Technology, Engineering,
`
`and
`
`Mathematics Division of Montgomery County Community College in
`
`DMC Exhibit 2026
`
`
`
`Pennsylvania. In May 2013, I retired from academia and I now serve as an
`
`independent consultant.
`
`. At Philadelphia University I was the Principal Investigator for a US. Army
`
`8-year funded research and development program titled “Laboratory for
`
`Engineered Human Protection”. The Laboratory’s charter was to create
`
`garments that protect American servicemen and women against battlefield
`
`hazards, which were also sufficiently comfortable to wear for time periods
`
`required by the mission. One of the objectives of the research and
`
`development program was to design, develop and produce prototype
`
`chemically protective garments with the required comfort using the latest
`
`materials produced in collaboration with selected suppliers.
`
`. I was elected a Fellow of the American Society of Mechanical Engineers in
`
`1995 and a Fellow of the Textile Institute in 1992.
`
`. I am a named inventor on 12 US. Patents dealing with textile materials
`
`and textile manufacturing.
`
`. I have reviewed the following documents
`
`for preparation of this
`
`declaration:
`
`o The ’531 patent
`
`o
`
`0
`
`the ’563 patent
`
`the proposed amendments to Claim 1 of the ’563 patent
`
`o PTAB Case No. IPR2013-00530 Patent RE43,563 - CORRECTED
`
`PETITION FOR INTER PARTES REVIEW UNDER 35 U.S.C. §§ 311-
`
`319 AND 37 C.F.R. § 42.100 ETSEQ.
`
`DMC Exhibit 2026
`
`
`
`PTAB Case No. IPR2013-00531 Patent RE43,563 - CORRECTED
`
`PETITION FOR INTER PARTES REVIEW UNDER 35 U.S.C. §§ 311-
`
`319 AND 37 C.F.R. § 42.100 ETSEQ.
`
`PTAB Case No. IPR2013-00532 Patent RE43,563 - CORRECTED
`
`PETITION FOR INTER PARTES REVIEW UNDER 35 U.S.C. §§ 311-
`
`319 AND 37 C.F.R. § 42.100 ETSEQ.
`
`PTAB Case No. IPR2013-005 30 Patent RE43,563 -PATENT
`
`OWNER’S PRELIMINARY RESPONSE TO CORRECTED
`
`PETITION FOR INTER PARTES REVIEW OF US. PATENT NO.
`
`RE43,563
`
`PTAB Case No. IPR2013-005 31 Patent RE43,563 -PATENT
`
`OWNER’S PRELIMINARY RESPONSE TO CORRECTED
`
`PETITION FOR INTER PARTES REVIEW OF US. PATENT NO.
`
`RE43,563
`
`PTAB Case No. IPR2013-00530 Patent RE43,563 — Decision
`
`Institution of Inter Partes Review
`
`PTAB Case No. IPR2013-00531 Patent RE43,563 — Decision
`
`Institution of Inter Partes Review
`
`PTAB Case No. IPR2013-00532 Patent RE43,531 — Decision
`
`Institution of Inter Partes Review
`
`PTAB Case No. IPR2013-00533 Patent RE43,531 — Decision
`
`Institution of Inter Partes Review
`
`US. Patent No. 4,506,390 (“Stern”)
`
`US. Patent No. 6,276, 175 (“Browder”)
`
`US. Patent No. 6,669,064 (“the ’064 patent”)
`
`US. Patent No. 5,034,999 (“the ‘999 patent”)
`
`DMC Exhibit 2026
`
`
`
`0 US. Patent No. 7,089,597 (‘the ‘597 patent”)
`
`0 U.S. Patent Appl. Pub. No. US. 2006/0010571 (“Oakley”)
`
`O U.S. Patent Appl. Pub. No. 2004/0049834 A1 (“Stangle”)
`
`0 U.S. Patent Appl. Pub. No. 2004/0210987 (“Carney”)
`
`0
`
`Japanese Utility Model Patent No. 3,086,624 (“Asada”) — certified
`
`English translation
`
`0
`
`“expecting style,” an article by Lauren Sara, published by Bulfinch
`
`Press, 2003 (“Sara”)
`
`0 Catalog excerpts from JC Penney ontrena’ Maternity, Fall/Winter
`
`Catalog (2005) (“JCP-A”)
`
`o Merriam-Webster’s Collegiate Dictionary, 11th Ed. , 2007
`
`0 Clothing Technology, English Edition 1, Verlag Europe-Noumey,
`
`Vollmer GmbH & Co, 1996, p. 134.
`
`0 Textiles, 5th Edition, Macmillan Publishing, Co., Inc., 1979, p. 188.
`
`0 Handbook of Technical Textiles, Woodhead Publishing Ltd., 2000, p.
`
`106
`
`0 The Modern Textile Dictionary, Little Brown, 1954.
`
`8. I am being compensated by counsel for the Patent Owner at the rate of
`
`$400/hour and my compensation is not dependent on the outcome of either
`
`my opinions or the proceedings.
`
`9. My declaration is organized in the following manner:
`
`I.
`
`Qualifications of Persons of Ordinary Skill In The Art (“POSA”)
`
`DMC Exhibit 2026
`
`
`
`II.
`
`Overview of the ’563 Patent Including Proposed Claim
`Construction
`
`III.
`
`Identification of the Most Relevant Prior Art
`
`IV.
`
`Overview of JCP-A
`
`V.
`
`Overview of Asada
`
`VI.
`
`Overview of Browder
`
`VII.
`
`Overview of Stangle and Carney
`
`VIII.
`
`Opinion on the Non-Anticipation of Proposed Amended Claim 1
`of the ’563 Patent Under 35 U.S.C. § 102 by JCP-A
`
`IX.
`
`X.
`
`XI.
`
`Opinion on the Non-Anticipation of Proposed Amended Claim 1
`of the ’563 Patent Under 35 U.S.C. § 102 by Asada
`
`Opinion on the Non-Anticipation of Proposed Amended Claim 1
`of the ’563 Patent Under 35 U.S.C. § 102 by Browder
`
`Opinion on the Lack of Anticipation and Lack of Obviousness of
`Proposed Amended Claim 1 of the ’563 Patent Under 35 U.S.C.
`§§ 102 and 103.
`
`Qualifications of Persons of Ordinary Skill In The Art (“POSA”)
`
`10.
`
`Based on my experience as a dean and professor in the area of textile
`
`engineering and my experience as a research and development laboratory
`
`director, it is my opinion that persons of ordinary skill in the art (“POSA”)
`
`during the time frame of the priority dates of the Patents-in-Suit would
`
`possess any of the following: (a) a graduate of a two-year or four-year
`
`degree program with an associate’s or bachelor’s degree in fashion design
`
`and at least one to two years of full-time, technical design experience in the
`
`commercial garment industry; or (b) an individual with at least four years of
`
`full time, technical design experience in the commercial garment industry; or
`
`(c) a baccalaureate degree in textile engineering.
`
`DMC Exhibit 2026
`
`
`
`II.
`
`Overview of the ‘563 Patent Including Proposed Claim Construction
`
`11.
`
`The ‘563 patent entitled “BELLY COVERING GARMENT” was filed in
`
`the US. Patent and Trademark Office (“USPTO”) on June 15, 2011 and
`
`issued on August 7, 2012. The ‘563 patent is a reissue of US. Patent No.
`
`7,900,276 (“the ‘276 patent”), which was filed in the USPTO on May 8,
`
`2007 and issued on March 8. 2011. The Patent Owner advertises that its
`
`Secret Fit Be11y® line of maternity clothes is covered by the ‘563 patent.1
`
`The ‘563 patent discloses “a garment upper portion has a belly panel that is
`
`expansible to cover andfit over a growing abdomen during diflerent stages
`
`ofpregnancy.” (1 :55-57) The invention covered in the ‘563 patent fulfills an
`
`unmet need for a garment that adapts to cover and fit a growing abdomen
`
`during pregnancy, wherein the garment stays up when worn. (1:51-53) As
`
`discussed in the ‘563 patent, this new garment is a comfortable garment that
`
`adapts to cover and fit over a wearer’s belly region during different stages of
`
`weight gains and/or losses, and stays up when worn. (1:55-58, 2:9-11, 3:27-
`
`31) The ‘563 patent discloses that prior to this invention “women have
`
`complained that the maternity garments that existed prior to the claimed
`
`invention were difiicult to keep in place, and gradually slipped down while
`
`being worn. ” (1:34-36) As such, the inventors of the ‘563 patent recognized
`
`a need for a garment that covers and fits a growing abdomen during different
`
`stages of pregnancy and would stay up and fit comfortably while being
`
`1
`
`hflp://www.motherhood.com/maternity/secret-fit-belly.asp
`
`DMC Exhibit 2026
`
`
`
`worn. Further, it would stay up when worn over different body types (1:43-
`
`47).
`
`12.
`
`Counsel for Patent Owner has informed me that in the event the Board does
`
`not accept the patentability of Claim 1 of the ’5 63 patent in view of the prior
`
`art of record, Patent Owner will move to amend Claim 1 as follows. Counsel
`
`for Patent Owner has informed me that text enclosed in double brackets
`
`(“[[ ]]”) indicates language to be deleted from the claim, and text that is
`
`underlined (“
`
`
`
`“) indicates text to be added to the claim.
`
`A garment portion having an attached belly panel portion
`comprising:
`
`[a] an expansible belly panel adapted to [[substantially]]
`cover
`a wearer's
`entire belly region,
`said belly region
`comprising an area beginning just beneath the wearer's breast
`area and extending over the wearer's abdomen to a lower
`abdomen region beneath the wearer's belly, said belly panel
`comprising:
`
`[b] an upper edge portion defining a first encircling
`circumference about [[a]] th_e wearer's torso that is at or above
`the wearer's upper abdomen region during all
`stages of
`pregnancy, and
`
`[c] and a lower edge portion spaced from the upper
`edge portion and defining a second encircling circumference
`about the wearer's lower abdomen region; and
`
`in communication with the
`[d] a garment lower portion,
`lower edge portion, having a torso encircling circumference that
`recedes downward to make way for expansion of the belly
`panel.
`
`13.
`
`On October 17, 2013, I examined four Secret Fit Belly® exemplar products
`
`(Style 93480-01, Style 96316-42, Style 91401-01 and Style 94278-10) and
`
`placed them on AlvaForm Pregnancy Fit Mannequins (3 month pregnancy
`
`DMC Exhibit 2026
`
`
`
`and 9 month pregnancy). In my opinion, the products met the limitations of
`
`Claim 1 (the only independent claim), and many of the dependent claims of
`
`the ‘563 patent. The product also met the need for a garment that adapts to
`
`cover and fit a growing abdomen during pregnancy, comes up to just
`
`beneath the location of the breasts of the wearer, and has a design and
`
`structure which enables it to stay up when worn. My examination of the fit
`
`of the Secret Fit Belly® products on the mannequins shows that the belly
`
`panel stays up due to the fact that it comes up to just beneath the breasts, and
`
`as such, has substantially more coverage over the narrowing part of the
`
`abdomen and thus creates more frictional force to hold the garment up while
`
`worn. Accordingly, if the garment tried to come down past the upper and
`
`relatively narrow portion of the abdomen it would need to circumferentially
`
`expand and the stretch nature of the belly panel fabric would prohibit it from
`
`passively expanding unless it were actively pulled down by the wearer.
`
`Attached as Exhibit 2 is a report that I prepared showing that Secret Fit
`
`Belly® products practice the claimed invention.
`
`Below is a set of photographs of Secret Fit Belly® Style 91401-01 that I
`
`took on October 17, 2013 which clearly supports my opinion.
`
`I have
`
`identified the abdomen and breast area, the latter being supported by the
`
`above.
`
`DMC Exhibit 2026
`
`
`
`Breast Area
`
`3 month
`
`
`
`
`Breast Area
`
`Breast Area
`
`9 month
`
`14.
`
`It is my understanding that in an Inter Partes Review of an unexpired patent
`
`the PTAB gives the claims the “broadest reasonable construction in light of
`
`the specification as it would be interpreted by one of ordinary skill in the
`
`art”. Further,
`
`in the USPTO Manual of Patent Examining Procedure
`
`(MPEP) it is stated at 2111.01 111 that “The ordinary and customary meaning
`
`10
`
`DMC Exhibit 2026
`
`
`
`of a term may be evidenced by a variety of sources, including the words of
`
`the claims themselves, the specification, drawings, and prior art.”
`
`15.
`
`Counsel for the Patent Owner has asked me to propose a construction of
`
`some of the claim language in Claim 1 of the ‘563 patent that would be
`
`interpreted by a POSA. As such I am providing my expert opinion on the
`
`meaning and construction of the terms “just beneath the wearer’s breast
`
`area”. My opinion is based on 1) the specification of the ‘563 patent, 2) the
`
`language of the claims of the ‘563 patent, 3) examples of prior art
`
`identifying the “breast area”, 4) prior art patents which use the term “breast
`
`area” only in the claims, and 5) the dictionary definitions of “just” and
`
`“substantially.”
`
`16.
`
`The ’563 patent specification does not explicitly discuss the term “breast
`
`area.” However, it is my opinion that there are many instances of implicit
`
`discussion in the ’563 patent, which supports a broadest
`
`reasonable
`
`construction by a POSA of “just beneath the wearer’s breast area” to mean
`
`“beneath the location of the breasts by a very small margin”.
`
`ll
`
`DMC Exhibit 2026
`
`
`
`17.
`
`Fig. l and Fig. 1A of the ’563 patent are shown below:
`
`
`
`In describing Fig.
`
`l and Fig. 1A,
`
`the specification of the ’563 patent
`
`discloses that “In FIG. I, the garment upper portion 102 has a belly panel
`
`124 to provide an abdomen covering area. The belly panel 124 is
`
`expansible, for example, when made of a stretchable fabric, to cover andfit
`
`over a growing abdomen during diflerent stages ofpregnancy, FIG. IA. ”
`
`18.
`
`In my opinion the claim language in the ’563 patent further supports a
`
`broadest reasonable construction by a POSA that “just beneath the wearer’s
`
`breast area” can be construed as “beneath the location of the breasts by a
`
`very small margin. ” Before the proposed claim amendment, Claim 1 states
`
`that the belly panel “substantially cover[s] a wearer’s entire belly region
`
`comprising an area beginning just beneath a wearer’s breast area and
`
`extending over the wearer’s abdomen to a lower abdomen region beneath
`
`the wearer’s belly” and has an “upper edge portion defining a first
`
`encircling circumference about the wearer’s torso that is at or above the
`
`12
`
`DMC Exhibit 2026
`
`
`
`wearer’s upper abdomen. ” In my opinion, based on this claim language, that
`
`the wearer’s breast area ends before the abdominal area begins. Further, it is
`
`my opinion that by using the terms “breast area” and “abdomen” to describe
`
`different
`
`locations on the wearer,
`
`the wording of Claim 1 supports a
`
`construction that “breast area” is only the location of the breasts and, as
`
`
`such it excludes a construction of “breast area” that includes the abdomen
`
`because both terms are used separately to locate the top of the belly panel
`
`during all stages of pregnancy.
`
`19.
`
`The ’563 patent specification discusses the expansible and contractible
`
`nature of the stretchable belly panel, which allows the belly panel to reach
`
`just beneath the breast area during all stages of pregnancy on wearers with
`
`different body types. “The belly panel 124 comprises a portion of the
`
`stretchable fabric. The tubular structure is adaptable to cover and fit
`
`difi’erent body types by being elastically expansible and contractible. ” (3:45-
`
`48) ”The tubular structure is elastically expansible to widen the tubular
`
`girth at selected locations and amounts where needed to fit a body type, and
`
`is elastically contractible to narrow the tubular girth at selected locations
`
`and amounts where needed to fit the body type. “ (3:53-57)
`
`20.
`
`It
`
`is my opinion that even though the Specification and some of the
`
`dependent claims discuss different wearer body types, the language should
`
`not affect the construction of “just beneath the wearer’s breast area”. The
`
`Specification explains that the expansible and contractible nature of the
`
`panel allows the garment to cover and fit a growing abdomen even if the
`
`wearers have different body types. (3:47-57). As such, the discussion of
`
`different body types does not affect the term “just beneath the wearer’s
`
`13
`
`DMC Exhibit 2026
`
`
`
`breast area”. Rather, the Specification explains that the garment will still
`
`perform its function even when wearers of different body types don the
`
`patented garment because the garment expands and contracts to account for
`
`more or less girth.
`
`21.
`
`The term “breast area” has been covered in earlier patents and clearly
`
`shows that “breast area” is the location of the breasts. For example, US.
`
`Patent No. 6,669,064 explains that “Nurser 10 includes a flexible shoulder
`
`sling 12 to which is attached, positioned in the breast area of user ’s chest. .
`
`the sling holds container 16 in the breast area of the user’s.” 4:36-46
`
`(emphasis added). Figure 1 below read with this description shows that the
`
`described “breast area” is the location of the breasts.
`
`
`
`US. Patent No. 5,034,999 explains that, during nursing, “the mother will
`
`want to check on his or her progress .
`
`.
`
`. by opening one of the portals 18
`
`above each breast area 18a .
`
`.
`
`. where the child would be nursing,
`
`14
`
`DMC Exhibit 2026
`
`
`
`preferably near the infant’s head while he is nursing.” 2:60-67 (emphasis
`
`added). Again, Figure 1, shown below, read with this description shows that
`
`the described “breast area” is the location of the breasts.
`
`
`
`Analogous art also shows that the bottom of the breast area does not include
`
`the abdomen. US. Pat. No. 7,089,597 shows that the breast area ends at the
`
`empire line or inframammary fold. In describing Fig. 2A (reproduced below),
`
`the ‘597 patent states: “widefabrics 14a and 14b are stitched along lines that
`
`extend from a supporting point P at the front center to the armpits, passing
`
`beneath the breast area. ” 9:34:38 (emphasis added). Coincidentally,
`
`the
`
`USPTO Primary Examiner for the ‘5 97 patent is the same Primary Examiner
`
`for the ‘531 patent.
`
`15
`
`DMC Exhibit 2026
`
`
`
`
`
`22.
`
`I conducted a search on the USPTO “Patent Search” web site to see if there
`
`were analogous art where the term “breast area” is only found in the claims
`
`of patents. I found US. Patent No. 8,016,640 where in claim 3 it states “said
`
`piece of stretchable material is formed as a sling and is shaped inwardly
`
`from a direction at a center of a breast area at its ends to allow the sling to
`
`sit neatly on the breast while holding the breast with the breast supported
`
`from said outside edge. “ (emphasis added) Further I found US. Patent No.
`
`4,590,624 where in Claim 1
`
`it states “each of said left and right blouse
`
`panels configured when laidflat and without stitching to be larger than the
`
`breast area of the gown, thereby producing a billowing of the blouse panels
`
`for accommodating the patient's breasts with the edges of the blouse panels
`
`interconnected to the back panel and corresponding skirt panels,” (emphasis
`
`added)
`
`23.
`
`While the word “just” is not in the ’563 patent specification it does have a
`
`known definition that can be found in the Merriam-Webster’s Collegiate
`
`Dictionary, 11th Edition, 2007 at page 679. “Just” is defined, in the context
`
`of location, as “by a very small margin.” It is my opinion that based on 1)
`
`16
`
`DMC Exhibit 2026
`
`
`
`the specification of the ‘563, patent; 2) the language of the claims of the
`
`‘563 patent; 3) examples of prior art identifying the “breast area”; 4) the
`
`prior art patents which use the term “breast area” in the claims only; and 5)
`
`the dictionary definitions of “just,” the claim term “just beneath the wearer’s
`
`breast area” should have the broadest reasonable construction by a POSA of
`
`“beneath the location of the breasts by a very small margin. ”
`
`24.
`
`The definition of “just,” above, corresponds to the pre-amendment language
`
`of Claim 1
`
`regarding the garment upper portion (belly panel), which
`
`required that it “substantially cover the wearer's entire belly region.” The
`
`Merriam-Webster’s Collegiate Dictionary, 11th Edition, 2007 at page 1245
`
`defines “substantially” as “being largely but not wholly that which is
`
`specified”. Accordingly,
`
`it is my opinion, if a wearer’s entire abdomen,
`
`during pregnancy, is substantially covered (“being largely but not wholly
`
`
`that which is specified”), the top edge of the garment upper portion must be
`
`below the location of the breasts by a very small margin. Therefore, when
`
`the modifier “substantially” is removed from the claim as in the proposed
`
`amendment,
`
`the claim element
`
`is narrowed to more clearly mean “an
`
`expansible belly panel that entirely covers a wearer’s bellyfrom beneath the
`
`location of the breasts by a very small margin to a lower abdomen region
`
`beneath the wearer’s belly.”
`
`25.
`
`Counsel for the Patent Owner has asked me to propose a broadest reasonable
`
`construction of the term “an expansible belly panel” in proposed amended
`
`Claim 1 of the ‘563 patent that would be interpreted by a POSA. As such, I
`
`am providing a discussion that the claim term “an expansible belly panel”
`
`17
`
`DMC Exhibit 2026
`
`
`
`can be construed as “a belly panel that expands to a degree commensurate
`
`with covering a pregnant abdomen. ”
`
`26.
`
`The ’563 patent specification supports a construction of “an expansible belly
`
`panel” as “a belly panel that expands to a degree commensurate with
`
`covering a pregnant abdomen. ”
`
`27.
`
`When discussing “expansible” with regard to the belly panel, the ’563 patent
`
`routinely discusses that the belly panel must cover and fit over a pregnant
`
`abdomen. For example, the Specification identifies a “belly panel that is
`
`expansible to cover andfit over a growing abdomen during dijferent stages
`
`of pregnancy.” (1:55-57), and “The belly panel 124 is expansible, for
`
`example, when made of a stretchable fabric, to cover andfit over a growing
`
`abdomen during diflerent stages ofpregnancy ” (3:2-5). In addition, that the
`
`belly panel expands to accommodate a pregnant abdomen is finther clarified
`
`by the proposed amended Claim 1, which recites “an upper edge portion
`
`defining a first encircling circumference about the wearer’s torso that is at
`
`or above the wearer’s upper abdomen region during all stages of
`
`pregnancy.” A POSA would understand that the inserted language to mean
`
`“throughout an entire pregnancy.”
`
`28.
`
`The ’563 patent specification routinely discusses the need for comfort when
`
`wearing the garment covered by the ’563 patent. For example “Another
`
`embodiment of the invention provides a garment that fits comfortably while
`
`being worn” (1:63-64), “According to an embodiment of the invention, an
`
`expansible tubular upper portion of the garment
`
`is seamless to fit
`
`comfortably while being worn” (2:9-12), and “the stretchable fabric is
`
`18
`
`DMC Exhibit 2026
`
`
`
`woven or knitted to form a continuous, seamless tubular structure, such that
`
`the garment 100 is comfortable to wear due to the absence of seams that
`
`would tend to press against the torso.” (4:9-12)
`
`29.
`
`It is my opinion that, for an expansible belly panel to be comfortable, it must
`
`be non-constricting and, as such, not constrict or control the expansion of the
`
`abdomen during pregnancy but adap_t in a comfortable manner to a growing
`
`abdomen.
`
`30.
`
`It is my opinion that, based on the specification of the “563 patent, the
`
`broadest
`
`reasonable construction by a POSA of the claim term “an
`
`expansible belly panel” should be construed as “a belly panel that expands
`
`to a degree commensurate with covering a pregnant abdomen. ”
`
`III.
`
`Identification of the Closest Prior Art to Proposed Amended Claim 1 of
`the ’563 Patent
`
`31.
`
`I have been informed by counsel for the Patent Owner that to anticipate a
`
`claim under 35 U.S.C. § 102 “a single prior art reference [must] not only
`
`disclose all of the elements of the claim within the four corners of the
`
`document, but
`
`...also disclose those elements arranged as a claim”
`
`Accordingly,
`
`it
`
`is my understanding that if even one claim element is
`
`missing in the alleged anticipated prior art, there is no anticipation.
`
`32.
`
`Counsel for the Patent Owner has asked me to identify the closest prior art I
`
`am aware of, including the prior art cited in the ’563 patent, prior art from
`
`the presently instituted reexamination proceedings (PTAB Case Nos.
`
`19
`
`DMC Exhibit 2026
`
`
`
`IPR2013-00530,
`
`IPR2013-0053l,
`
`IPR2013-00532,
`
`IPR2013-00533)
`
`to
`
`Claim 1 of the ’563 patent as amended. Counsel for the Patent Owner also
`
`asked me to consider references from PTAB Case Nos. IPR2014-00508 and
`
`IPR2014-00509.
`
`33.
`
`As the ’563 Patent specification explains, prior art maternity garments
`
`tended to fall within three general categories:
`
`(1) garments that covered a wearer’s body “below the abdomen or
`
`belly during various stages of pregnancy,” constructed as knits or
`
`woven fabrics (’563 Patent, 1:24-26);
`
`(2) garments with elastic belts or waist bands that caused discomfort
`
`when tightened about the body (id. , 1:27 -29); and
`
`(3) garments with stretchable panels sewn into place with sewn seams
`
`(id., 1:29-31), or jeans whose waistbands have been replaced by
`
`elastic bands (id., 1:37-39).
`
`The prior art references I reviewed fell into one or more of these three
`
`categories of maternity garments, as I explain in the following examples.
`
`34.
`
`Category 1: Garments covering the body below the abdomen
`
`An example of this category of prior art can be seen in US. Patent No.
`
`4,506,390 to Stern (“Stern”). Stern, which was identified by Petitioner as
`
`prior art in the instituted IPR proceedings as Exhibit 1017, discloses a
`
`maternity garment with an expandable waistband portion of elastic material
`
`that accommodates the changing shape of a woman’s abdomen during
`
`different stages of pregnancy. ABSTRACT; 2:34-37. The elastic band in
`
`Stern is designed to extend only over the lower portion of the growing belly,
`
`20
`
`DMC Exhibit 2026
`
`
`
`which is a common characteristic of the garments in this category. This is
`
`illustrated in Figure 2:
`
`[3
`
`FIG. 2
`
`35.
`
`Categog; II: Garments with uncomfortable belts or waist bands
`
`An example of this category of prior art can be seen in US Patent
`
`Application Publication No. US. 2006/0010571 A1 by Oakley (“Oakley”).
`
`Oakley, which was identified by Petitioner as prior art in the instituted IPR
`
`proceedings as Exhibit 1023, discloses a maternity garment with a double-
`
`waistband design, as depicted in Figure 1C:
`
`F: (T. 1C
`
`
`
`The double waistband is “for use on a maternity garment that can be worn
`
`during all stages of pregnancy,” and is worn “around a woman’s waist at the
`
`21
`
`DMC Exhibit 2026
`
`
`
`same location as would the waistband of a normal pair of pants,” which is
`
`characteristic of this category of prior art garment. ABSTRACT.
`
`36.
`
`Categom III: Garments with stretchable panels sewn into place
`
`An example of this category of prior art can be seen in “expecting style,” an
`
`article by Lauren Sara, published by Bulfinch Press, 2003 (“Sara”). Sara,
`
`which was identified by Petitioner as prior art
`
`in the instituted IPR
`
`proceedings as Exhibit 1005, contains instructions to transform an ordinary
`
`pair of jeans into maternity jeans by sewing in an elastic waistband (similar
`
`to the waistband in Oakley). Because the elastic waistband of Sara’s
`
`modified jeans is constructed out of a single strip of 3” wide elastic fabric
`
`whose ends are sewn together, they will necessarily have a sewn seam,
`
`which would also put this reference into Category 11. See Sara at p. 5:
`
`6. Measure the cut edge. Cut a piece of 3" wide elastic, 2%" shorter than the
`
`measurement of the cut edge (third photo). (For example, if your new ieans
`
`measure 36”, cut the elastic to 33‘5".)
`
`5". Cut a piece of non-Item Lycra lmlt fabric (choose any' color you Ilkel 7’" wide
`
`and the same length as the elastic.
`
`8. Sew the two 7" ends of the Lycra fabric together, creating a circle. Place the
`
`circle Inside the leans, Ilnlng up the edges as you sew the Lycra tn the top inside
`
`edge of the jeans with a V2" seam allowance, stretching the fabrlc slightly to flt
`
`the drmmference (fourth photo).
`
`Also, as is characteristic of maternity garments in this category, the elastic
`
`panels do not rise above the waistline to any significant degree (Sara at 4):
`
`22
`
`DMC Exhibit 2026
`
`
`
`how/U)
`
`transform]
`
`rnfiewflypmr
`
`yourfavorfie
`jeansinUJa
`
`37.
`
`Based on my review,
`
`the closest prior art I have seen with respect to
`
`proposed amended Claim 1 are:
`
`0 JC Penney 0ntrena’ Maternity Fall/Winter Catalog (2005) (“JCP-A”);
`
`0
`
`Japanese Utility Model Patent No. 3,086,624 to Asada (“Asada”); and
`
`0 US. Patent No. 6,276,175 to Browder (“Browder”).
`
`Although I consider these the closest with respect to amended claim 1, for
`
`the reasons I set forth below, I do not believe they anticipate proposed
`
`amended claim 1.
`
`In addition, US. Patent Application Publication No. 2004/0049834 A1 to
`
`Stangle, et al., (“Stangle”) was also cited as an anticipatory reference to
`
`Claim 1 of the ’563 patent. Another reference, US. Patent Application
`
`Publication No. 2004/0210987 to Carney (“Carney”) was cited on the face
`
`of the ’563 patent, and subsequently identified in the IPR2014-00508 and -
`
`509 petitions. These references disclose elastic bands that are worn over
`
`conventional or maternity garments to help keep them up. Because this type
`
`of art was cited as anticipatory art, I discuss them separately below.
`
`23
`
`DMC Exhibit 2026
`
`
`
`IV.
`
`Overview of JCP—A
`
`38.
`
`I have reviewed a section (page 15) of the JC Penney ontrend Maternity
`
`Fall/Winter Catalog (2005) that the Petitioner has cited and asserts is prior
`
`art to the’563 patent. A product entitled “FOLD-OVER PANEL JEANS” is
`
`advertised. JC Penney touts that the jeans have “a unique fold-over panel
`
`design that allows you to wear them before, during and after your
`
`pregnancy.” Below is a pictorial excerpt from the advertisement.
`
`
`
`3. ram mimic: lawn "
`man and support
`
`The above pictorial excerpt shows at
`
`the far
`
`left
`
`(“1. over-the—belly
`
`coverage”), a belly panel that, while covering a portion of the abdomen,
`
`does not come up to just beneath the wearer’s breast area. In fact, none of
`
`the pictures show the lower part of the wearer’s breasts at all. It is my
`
`opinion that a POSA would understand that this advertisement is focused on
`
`providing a product with its primary feature being a fold-over belly panel
`
`that provides comfort during all stages during and after pregnancy by folding
`
`and unfolding the panel depending on belly size. In fact, two of the inset
`
`picture descriptions are specifically directed to comfort (e.g. “2. fold once
`
`24
`
`DMC Exhibit 2026
`
`
`
`for mid-rise comfort” and “3. fold twicefor low rise comfort and support”)”.
`
`A POSA would understand that the garment shown in the advertisement
`
`does not provide any feature that would enable it to stay up, without folding
`
`it over, during all stages of pregnancy. In fact, JC Penney does not tout this
`
`in this reference.
`
`Overview of Asada (Japanese Utility Model Patent No. 3,086,624)
`
`39.
`
`The Asada reference entitled “Maternity Wear” was filed in the Japan Patent
`
`and Office on December 11, 2001 and issued on June 28, 2002. Asada
`
`discloses maternity pants characterized by a “pants portion” and “an
`
`expandable and eontractible, and foldable abdomen-covering portion using
`
`a stretch knit” attached to a pair of pants as shown in Figure 1, below. Asada
`
`at [0009], Fig. 1.
`
`mhllflilll
`
`mmmlU
`
`25
`
`DMC Exhibit 2026
`
`
`
`40.
`
`The abdomen-covering portion 2 “can be worn by freely folding,
`
`thereby
`
`making it possible to adjust them to an above-the-croteh portion.” Id.at
`
`1] [0012]. Asada elaborates that the garment may be worn by “shortening the
`
`above-the—erotch portion by folding the abdomen-covering portion 2 during
`
`the early stage of pregnancy or post-partum.” Id. During pregnancy, the
`
`belly panel “elongates pursuant to a gradual reduction in an amount that the
`
`abdomen-covering portion 2 is folded to fit the abdominal portion” as the
`
`abdomen expands. Id. at 1] [0013]. Asada illustrates this in Figure 2, which
`
`depicts the belly panel
`
`(or as Asada calls it,
`
`the “abdomen-covering
`
`portion”) in two folded configurations 2(a) and 2(b), and a completely
`
`unfolded configuration 2(c). See id.
`
`
`
`According to Asada, the belly panel of the maternity garment is folded over
`
`completely at the early stages of pregnancy, and gradually unfolded as the
`
`abdomen grows. “As shown in
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