`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`TARGET CORPORATION
`Petitioner
`
`v.
`
`DESTINATION MATERNITY CORPORATION
`Patent Owner
`_____________
`
`Case No. IPR2013-00532
`Patent RE43,531
`_____________
`
`Dated: December 4, 2013
`
`PATENT OWNER’S PRELIMINARY RESPONSE TO CORRECTED
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO.
`RE43,531
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`TABLE OF CONTENTS
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`Page
`
`I.
`II.
`III.
`
`b.
`
`c.
`
`d.
`
`e.
`
`INTRODUCTION ..........................................................................................1
`BACKGROUND OF THE INVENTION......................................................3
`PETITIONER'S REFERENCES DO NOT ANTICIPATE THE ‘531
`PATENT'S CLAIM 1 .....................................................................................5
`a.
`JCP-A does not disclose the garment upper portion having the
`features claimed....................................................................................7
`Stangle does not disclose either a garment upper portion or a
`garment lower portion that recedes downward to make way for
`expansion of the belly panel...............................................................17
`Browder fails to disclose either a garment upper portion or a
`garment lower portion that recedes downward to make way for
`expansion of the belly panel...............................................................23
`The dependent claims are neither anticipated nor obvious
`because none of the asserted prior art is anticipatory to claim 1 .......26
`Petitioner's references do not disclose the limitations of the
`dependent claims ................................................................................29
`THE CORRECTED PETITION'S CLAIM CHARTS IMPROPERLY
`CIRCUMVENT THE PAGE LIMIT SET FORTH IN 37 C.F.R. §
`42.24 .............................................................................................................32
`THE REAL-WORLD VALUE OF THE INVENTION IS
`SUPPORTED BY STRONG SECONDARY CONSIDERATIONS OF
`NON-OBVIOUSNESS.................................................................................35
`IF THE CORRECTED PETITION IS GRANTED, THE VERTICAL
`AND HORIZONTAL REDUNDANCIES IN PRIOR ART AND
`INTER PARTES PETITIONS SHOULD BE ELIMINATED ....................40
`VII. CONCLUSION.............................................................................................41
`
`IV.
`
`V.
`
`VI.
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`- i -
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`
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`LIST OF EXHIBITS
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`Exhibit 2001:
`
`October 19, 2007 blog post on The Mommy Playbook
`
`Exhibit 2002:
`
`July 31, 2008 blog post on Mamanista!
`
`Exhibit 2003:
`
`Color artifact of JC Penney Catalog 2005 found in USSN
`12/117,004 (US 7,900,276)
`
`Exhibit 2004
`
`December 4, 2011 Form 1449 from US RE43,531
`
`Exhibit 2005:
`
`Excerpts from the October 10, 2013 Deposition of Mindy Simon
`
`Exhibit 2006:
`
`Excerpts from the October 4, 2013 Deposition of Gregory
`Stangle
`
`Exhibit 2007:
`
`May 31, 2008 blog post on Everyday Becky
`
`Exhibit 2008:
`
`July 15, 2008 Review: Secret Fit Belly Jeans from Motherhood
`Maternity
`
`Exhibit 2009:
`
`January 30, 2008 blog post on Pinching Your Pennies Forums
`
`Exhibit 2010:
`
`October 28, 2008 blog post on The Shy Girl’s Guide to
`Pregnancy and Parenting
`
`Exhibit 2011:
`
`October 3, 2008 blog post on Mamapedia
`
`Exhibit 2012:
`
`January 2008 blog post on The Bump
`
`Exhibit 2013:
`
`October 15, 2008 blog post on Pregnant Fashionista
`
`Exhibit 2014:
`
`August 2008 blog post on Libby's Latest
`
`Exhibit 2015:
`
`January 6, 2009 blog post on Keeping the Kingdom First
`
`Exhibit 2016:
`
`May 21, 2009 blog post on Pregnant Fashionista
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`- ii -
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`I.
`
`INTRODUCTION
`
`Pursuant
`
`to 37 C.F.R. § 42.107, patent owner, Destination Maternity
`
`Corporation (“Patent Owner”), hereby submits the following Preliminary Response
`
`to Target Corporation's (“Petitioner”) Corrected Petition for Inter Partes Review of
`
`U.S. Patent No. RE43,531 (the “‘531 Patent”). This filing is timely under 35 U.S.C.
`
`313 and 37 C.F.R. 42.107, as it is being filed within three months of the September
`
`5, 2013 mailing date of the Notice granting the Corrected Petition a filing date of
`
`August 27, 2013. See PTAB Sept. 5, 2013 Not. at 1. A trial should not be instituted
`
`in this matter as none of the references relied upon by Petitioner in its Corrected
`
`Petition gives rise to a reasonable likelihood of Petitioner prevailing with respect to
`
`a challenged claim of the '531 Patent.
`
`Petitioner has simultaneously filed three additional petitions for Inter Partes
`
`Review, two for each of the patents-in-suit (the '531 Patent and Patent No. RE43,563
`
`(the “'563 Patent”))1 that are being asserted against Petitioner in a litigation pending
`
`in the United States District Court for the Eastern District of Pennsylvania. In the
`
`1 The Petition for Inter Partes Review No. 2013-00533 requested review of claims
`
`1, 18, 19, and 24-29 of the '531 Patent. The Petition for Inter Partes Review No.
`
`2013-00530 requested review of claims 1-4 and 6-8 of the '563 Patent. The Petition
`
`for Inter Partes Review No. 2013-00531 requested review of claims 1, 10-14, 16,
`
`20, and 21 of the '563 Patent.
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`
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`litigation, Patent Owner alleges that maternity clothing sold by Petitioner infringes
`
`the patents-in-suit. Petitioner’s infringing maternity clothing products compete with
`
`Patent Owner’s patented Secret Fit Belly® line of maternity bottoms. An exemplary
`
`image of Patent Owner's Secret Fit Belly® line of maternity bottoms is provided
`
`below:
`
`Petitioner's petitions, including the one at issue, all seek to cancel claim 1 of
`
`Patent Owner's patents-in-suit as anticipated, and each relies on the same three
`
`references: (1) images of a maternity garment from a J.C. Penney catalog that was
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`already considered by the PTO during prosecution of both patents-in-suit; (2) an
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`abandoned patent application for a piece of fabric that can be used to cover an open
`
`zipper when a pregnant woman's regular bottoms no longer fit when fastened; and
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`(3) a patent for a constricting girdle, not an expansible maternity garment. Petitioner
`
`adds one additional reference to argue that the '531 Patent's dependent claims are
`
`obvious. None of these references make the claimed invention anticipated or
`
`obvious:
`
`they do not disclose or suggest the unique above-the-abdomen and
`
`below-the-breast elements that Patent Owner invented.
`
`Moreover, Petitioner's arguments include three serious threshold issues. First,
`
`Petitioner asserts that the JC Penney reference was sent to the PTO by Patent Owner
`
`as low-quality black and white images. This statement is wrong. Patent Owner
`
`provided high quality color images to the PTO of this reference, as shown by the
`
`PTO's own records. Second, Petitioner "modified" images to make its arguments,
`
`but these modified images are not evidence, and should be disregarded. Petitioner's
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`reliance on its "modified" images reflects the weakness of its case. Third, to skirt the
`
`60-page limitation, Petitioner used claim charts in direct contravention of the rules,
`
`even after this Board identified a defect in Petitioner's charting in its original
`
`petitions. Most of Petitioner’s arguments are recited in single-spaced claim charts.
`
`II. BACKGROUND OF THE INVENTION
`
`The '531 Patent, entitled "Belly Covering Garment," concerns a garment worn
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`during different stages of pregnancy and different stages of postpartum body
`
`changes.
`
`'531 Patent, col.1 l.34-44, 64-67 (Corrected Pet Ex. No. 1018). As
`
`discussed in the patent, this new garment is a comfortable, non-constricting garment
`
`that adapts to cover and fit a growing abdomen during pregnancy, and actually stays
`
`up when worn – from the first trimester through pregnancy and post-pregnancy,
`
`post-partum body changes. E.g., id.
`
`Maternity garments prior to the claimed invention had thin elastic waist bands
`
`at the upper edge, which caused discomfort when tightened around the body,
`
`particularly as a pregnant woman's sensitive abdominal region expanded during
`
`pregnancy. Id. l.18-21. Others had panels sewn into place with seams, which also
`
`caused discomfort to the sensitive abdominal region due to the panels pressing
`
`against the torso. Id. l.21-24. Of utmost importance, women have complained that
`
`the maternity garments that existed prior to the claimed invention were difficult to
`
`keep in place, and gradually slipped downward while being worn, causing a
`
`pregnant woman to constantly pull her bottoms up throughout the day. Id. l.25-27.
`
`As such, the inventors of the '531 Patent recognized that a need existed for a
`
`maternity garment that covered and fit a growing abdomen of different body types
`
`during all stages of pregnancy, which fit comfortably.
`
`Id. l.34-38.
`
`The inventor’s success in filling the aforementioned needs, among others, was
`
`evidenced in the popularity of Patent Owner’s Secret Fit Belly® line of maternity
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`bottoms.
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`Patent Owner’s Secret Fit Belly® line of maternity bottoms achieved
`
`tremendous commercial success, which has led to the development of hundreds of
`
`different Secret Fit Belly® styles currently available online, in Patent Owner’s
`
`stores, and in third party department stores. Shortly after the introduction of Patent
`
`Owner’s Secret Fit Belly® styles, a customer commented that the products were
`
`"[r]eally hard to find though because they are selling out of them so fast." Ex. 2001.
`
`The customer also stated: "All my other maternity pants I'm always tugging up on to
`
`keep them up no matter how far along in the pregnancy I am. These pants I don't
`
`have to touch once I put on. Its such a nice change." Id. Another customer stated:
`
`"Secret Fit Jeans put full panel maternity jeans to shame.
`
`If you are tired of
`
`mid-belly panels that cut into your stomach, fall down, and create awkward 'panel
`
`lines,' you'll love the new secret fit panel that comes all the way above your belly to
`
`just below your chest." Ex. 2002. This commercial success and product buzz
`
`caused many in the industry, including Petitioner, to copy the Secret Fit Belly®
`
`styles, thereby prompting the aforementioned lawsuit between Patent Owner and
`
`Petitioner.
`
`III. PETITIONER'S REFERENCES DO NOT ANTICIPATE THE
`‘531 PATENT'S CLAIM 1
`
`To anticipate a claim under § 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 in the claim.'" Cheese Sys., Inc. v. Tetra
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`5
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`Pak Cheese and Powder Sys., Inc., 725 F3d 1341, 1351 (Fed. Cir. 2013). If even one
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`element is missing, there is no anticipation. MPEP § 2131.
`
`Claim 1 of the ‘531 Patent recites:
`
`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;
`
`torso encircling
`lower portion having a first
`a garment
`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 location of maximum girth of the abdomen
`thereby substantially covering the wearer's entire pregnant
`abdomen during all stages of pregnancy.
`
`Petitioner attacks this claim solely based on anticipation under 35 U.S.C. §
`
`102. Petitioner relies on three references: (1) J.C. Penney ontrend Maternity Catalog
`
`at Page 15 (“JCP-A”), Corrected Pet. Ex. No. 1002 at 2; (2) U.S. Patent App. Pub.
`
`No. US 2004/0049834 A1 to Stangle et al. (“Stangle”), Corrected Pet. Ex. No. 1003;
`
`and (3) U.S. Patent No. 6,276,175 to Browder (“Browder”) Corrected Pet. Ex. No.
`
`1004. Yet none of JCP-A, Stangle, or Browder disclose the claimed elements of a
`
`garment upper portion reaching over the belly to just below the breast area as
`
`required for an anticipatory § 102 reference. And neither Stangle nor Browder
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`disclose a garment lower portion that recedes downward to make way for expansion
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`of the belly panel.
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`Indeed, Petitioner's JCP-A reference was submitted by Patent
`
`Owner to the United States Patent and Trademark Office (“PTO”) in high quality
`
`color (contrary to Petitioner’s assertions), considered by the Examiner, and was not
`
`even deemed relevant enough to warrant an Office Action. Ex. 2003; Ex. 2004. As
`
`further detailed below, none of Petitioner's asserted references anticipate claim 1
`
`under §102.2
`
`a. JCP-A does not disclose the garment upper portion having the
`features claimed
`
`JCP-A is not an anticipatory reference simply because someone at JC Penney
`
`labeled a picture as “over-the-belly coverage.” The picture above the JCP-A
`
`“over-the-belly coverage” description does not show an upper edge of the belly
`
`panel that encircles a wearer's torso just beneath the wearer's breast area: the JCP-A
`
`picture does not show either the model's breast area or the top of the belly. And the
`
`JCP-A picture does not show the extent of belly coverage during different stages of
`
`pregnancy. Accordingly, what JC Penney called “over-the-belly coverage” does not
`
`meet the '531 Patent claims' requirement that the "upper portion … encircles a
`
`2
`
`The Corrected Petition’s grounds for unpatentability of the dependent claims
`
`hinge on either JCP-A, Stangle, or Browder anticipating claim 1. Because none of
`
`JCP-A, Stangle, or Browder anticipates claim 1, these grounds also fail.
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`wearer's torso just beneath the wearer's breast area …."
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`To the contrary, in the photographs from JCP-A, the pregnant belly continues
`
`upward outside the picture frame to an unknown point, and the top of the garment
`
`curves downward substantially (perhaps even falling down), thereby providing
`
`incomplete coverage even to the portion of the belly region shown in these
`
`photographs. Thus, JCP-A does not disclose either an upper edge extending to "just
`
`beneath the wearer's breast area," or a "garment upper portion … substantially
`
`covering the wearer’s entire pregnant abdomen …,” as required by the claims:
`
`Consistent with these conclusions, JC Penny's corporate witness testified that
`
`JCP-A’s “over-the-belly” design rested on the belly, rather than at a point encircling
`
`a wearer's torso just beneath the wearer's breast area thereby substantially covering
`
`the wearer's entire pregnant abdomen:
`
`Q. I'm sorry; the one that's Number 1 [of JCP-A]
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`over the belly coverage there.
`A. Okay.
`Q. The top edge of the band.
`A. Yes.
`Q. Is -- does it go straight across the belly?
`A. Straight across?
`Q. Yes.
`A. It -- it kind of curves along the belly.
`Q. I'm not going to test you on what kind of a curve
`that is --
`A. Thank you.
`Q. -- but can you explain why it curves?
`A. Because the belly is curved, so when it sits on
`the belly, it curves to the shape of the belly.
`Q. When you say, "Sits on the belly," how does it sit
`on the belly?
`A. Well, your belly -- I mean (indicating) it sits on
`your belly. This is your belly and it's -- it comes -- in
`picture 1, it comes over the belly, so it rests on the top of
`your belly.
`Simon Dep. 187:1-21 (emphasis added) (Ex. 2005).
`
`JCP-A’s incomplete coverage is even more evident when compared to the
`
`exemplary image of Patent Owner's Secret Fit Belly® line of maternity bottoms:
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`JCP-A
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`Secret Fit Belly®
`
`The absence of the breast area in the JCP-A picture is also apparent. JCP-A cannot
`
`anticipate claim 1 without explicitly showing either the breast area, an upper edge of
`
`the belly panel that encircles a wearer's torso just beneath the wearer's breast area or
`
`substantial coverage of the wearer's entire pregnant abdomen.
`
`Petitioner contends that JCP-A anticipates the claim’s substantially covering
`
`the wearer’s entire pregnant abdomen during all stages of pregnancy limitation
`
`because “[t]he upper edge of the belly panel in JCP-A is above the belly, i.e. at the
`
`wearer’s upper torso, because the belly panel provides ‘over-the-belly coverage.’
`
`and holds the garment
`
`in place ‘before, during and after your pregnancy.’”
`
`Corrected Pet. at 32. Yet Petitioner ignores that in the JCP-A picture, the garment
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`does not have an upper edge encircling the wearer’s torso just beneath the breast area
`
`which is configured to hold the garment up and in place about the torso during all
`
`stages of pregnancy. Corrected Pet. at 32. In the JCP-A images reproduced below,
`
`the already incomplete belly coverage discussed above is shown on a model who
`
`appears to be at nearly the same stage of pregnancy in all three images, with no
`
`disclosure relating to holding the garment "up and in place about the torso during all
`
`stages of pregnancy":
`
`In addition,
`
`in portions of the JCP-A product description omitted by
`
`Petitioner, JCP-A describes the above images and states that it is the “fold-over
`
`panel design that allows you to wear them before, during and after your pregnancy
`
`(see inset photos)” and that JCP-A “can be worn 3 ways depending on your stage of
`
`pregnancy.” In other words, JCP-A confirms that its “fold-over” feature is essential
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`for holding the garment up and in place during certain stages of pregnancy. As
`
`illustrated above, when the garment is in the “fold-over” configuration (i.e., images
`
`2. and 3.), which, by JCP-A's own statements, is required at certain stages of
`
`pregnancy, even less of the pregnant abdomen is covered. As such, JCP-A fails to
`
`disclose an upper edge encircling the wearer’s torso just beneath the breast area
`
`configured to hold the garment up and in place about the torso during all stages of
`
`pregnancy.
`
`The above analysis is again confirmed by JC Penney’s deposition testimony
`
`regarding maternity design generally and the design shown in the JCP-A reference,
`
`which shows that different styles and locations are used for different stages of
`
`pregnancy, rather than one design covering the wearer's entire pregnant abdomen
`
`during all stages of pregnancy. For example:
`
`to
`
`Q. Was there anything particular or special
`maternity that other --
`A. Yes.
`Q. -- design projects didn't have?
`A. Yes.
`Q. Like what?
`A. The fit is much more complicated.
`Q. What do you mean?
`A. How it fits the body, because you have this belly
`that is changing every single day, and you want this pant
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`to fit numerous women of all different sizes of all different
`stages of pregnancy. So it's really hard to get a
`good-fitting maternity pant.
`Q. How do you address that issue in designing
`maternity pants?
`A. That's why there's multiple styles to address
`different fits for different women.
`Simon Dep. 39:20-40:11 (Ex. 2005).
`
`Q. What about the normal -- whatever -- whatever
`you designed [JCP-A] on, the normal customer, how
`would it -- would it change how they wore it depending on
`what stage of pregnancy they were in?
`A. It could.
`Q. How could it change?
`A. Personal preference. Some people don't like
`anything over their belly, so regardless of how big they
`were, they might still want it under their belly. Some
`people that are used to -- the younger customer that's used
`to low-rise jeans might love it under the belly and might
`never raise it over her belly. It's -- it's really a personal
`preference on where she wants to put it.
`Id. 176:25 - 177:6-12.
`
`Q. Okay. We're going to go to the figure Number 1
`from [JCP-A]. So pulled all the way up, could someone
`who was not pregnant wear the pants that way?
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`A. They could. I don't know why they would, but
`they could.
`Q. All right. Would the pants -- do you think the
`pants would stay up if they did that?
`A. It depends how skinny she is.
`Id. 186:13-20.
`
`By requiring the “fold-over” feature to hold the garment up and in place at
`
`earlier stages of pregnancy, the JCP-A garment necessarily exposes more of the
`
`wearer’s abdomen during those stages. Thus, JCP-A does not disclose claim 1's new
`
`garment that substantially covers the entire abdomen during all stages of pregnancy.
`
`Further, even when the JCP-A garment is worn with its fold-over panel in an
`
`unfolded position (i.e., image 1. above), the top of the fold-over panel curves
`
`downward substantially, further confirming that the JCP-A garment does not include
`
`an upper edge that encircles a wearer’s torso just beneath the breast area.
`
`Petitioner also contends that Patent Owner failed to submit JCP-A to the PTO
`
`in color. Corrected Pet. at 15-17. To the contrary, the PTO considered JCP-A in
`
`high resolution color, in direct contrast to Petitioner’s argument that “the scanned
`
`excerpt appears to have been of very low quality . . . image does not provide a clear
`
`illustration of the boundaries of the disclosed belly panel in the three figures, and the
`
`text describing the functionality of the fold over panel in the three figures is
`
`illegible.”
`
`Id. at 15-16. Patent Owner’s submission of JCP-A to the PTO is
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`reproduced below and taken directly from the PTO’s records.3 Ex. 2003; Ex. 2004.
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`JCP-A was sent to the PTO in high quality and clearly shows all details of
`
`JCP-A, including the boundaries of the disclosed belly panel and the text as to the
`
`functionality of the fold over panel.
`
`The PTO thus fully considered JCP-A, and decided that JCP-A was not
`
`relevant to the claims of the ‘531 Patent. Ex. 2003; Ex. 2004; Corrected Pet. Ex. No.
`
`1021.
`
`Indeed, JCP-A was so inconsequential that the Examiner did not issue an
`
`office action citing JCP-A. See Petitioner Exhibits 1020-21. Significantly, the PTO
`
`3 JCP-A was submitted in color in all prosecutions and the same PTO examiner
`
`reviewed all patents. Patent Owner obtained a color artifact from the PTO from the
`
`file history for U.S. 7,900,276 (reissued as the '563 Patent).
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`reached the same exact conclusion in Patent Owner’s ‘563 Patent, where JCP-A was
`
`again submitted to the PTO in high resolution color, considered by the Examiner,
`
`and no rejections were raised there either. Id. 1007. The PTO’s decision on JCP-A,
`
`which was rendered by a seasoned examiner of apparel patent applications, should
`
`be afforded substantial weight in determining whether to institute an Inter Partes
`
`Review, especially in view of the fact that JCP-A was considered twice by the PTO,
`
`and was in high resolution color each time. See 35 U.S.C. § 325(d) (“In determining
`
`whether to institute or order a proceeding under . . . chapter 31 [Inter Partes Review]
`
`. . . the Director may take into account whether, and reject the petition or request
`
`because, the same or substantially the same prior art or arguments previously were
`
`presented to the Office”); see also Andersen Corp. v. Pella Corp., 300 Fed. App'x
`
`893, 899 (Fed. Cir. 2008) ("When no prior art other than that which was considered
`
`by the PTO examiner is relied on by the attacker, he has the added burden of
`
`overcoming the deference that is due to a qualified government agency presumed to
`
`have properly done its job, which includes one or more examiners who are assumed
`
`to have some expertise in interpreting the references and to be familiar from their
`
`work with the level of skill in the art and whose duty it is to issue only valid patents")
`
`(citations omitted); Rohr v. McNulty et al., 2003 WL 1386643, at *2-3 (Bd. Pat.
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`App. & Interf. Mar. 6, 2003) (deferring to the experience of examiners when
`
`denying a request to add claims to an interference.)
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`In sum, JCP-A does not anticipate claim 1 of the ‘531 Patent, Petitioner’s
`
`asserted arguments fail, and a trial should not be instituted on these grounds.
`
`b. Stangle does not disclose either a garment upper portion or a
`garment lower portion that recedes downward to make way for
`expansion of the belly panel
`
`There are two key elements that Stangle does not disclose: (1) "a garment
`
`upper portion … that is expansible to cover and fit over a growing abdomen during
`
`different states of pregnancy …"; and (2), "a garment lower portion … that recedes
`
`downward to make way for expansion of the belly panel." Instead, Stangle discloses
`
`a tube of fabric that is used to cover an unzipped pair of non-maternity pants. E.g.,
`
`Stangle, Fig. 9; ¶ [0040] (Corrected Pet. Ex. No. 1003).
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`First, Stangle does not disclose a garment upper portion that is expansible to
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`cover and fit over a growing abdomen during different states of pregnancy. The one
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`Stangle embodiment that is attached to clothing, shown in Stangle Figures 7-10,
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`folds from the waist area downward toward the crotch to operate as a covering for
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`unfastened conventional pants and provide support so the pants do not fall down. Id.
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`Figs. 7-10; ¶¶ [0037] – [0042]. As such, Stangle is worn very low on the body, and
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`goes no higher on the wearer than the top of a lower-body garment (e.g., pant waist
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`line), which is ordinarily worn around the waist area.
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`Stangle Figures 8 and 9 illustrate the function of the attached moveable
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`sleeve. Figure 8, an inside-out view of clothing, shows the sleeve not in use and
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`17
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`“folded over inside the clothing 32 when not deployed by the wearer . . . .” Stangle,
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`¶ [0040]. Figure 9 shows the sleeve in use when, “as the wearer finds necessary for
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`fastening undersize clothing or providing additional coverage or support, the wearer
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`would instantly deploy the movable sleeve 40 by simply folding it out and over the
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`outside surface 36 of the clothing 32 to achieve its function . . . .” Id.
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`In its Corrected Petition, Petitioner “modified” Stangle Figure 8 by sketching
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`new features into Figure 8. Corrected Pet. at 25, 42-46.
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`18
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`Petitioner’s
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`“modified”
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`figure—created with
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`knowledge
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`of
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`the
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`invention—cannot be used to add to what Stangle disclosed.
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`Petitioner’s
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`“modified” Figure 8 is misleading and not evidence, and should be disregarded.
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`Moreover, Petitioner imported dimensions to a patent figure that was not drawn to
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`scale, which cannot be used to challenge validity. See, e.g., Nystrom v. TREX Co.,
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`Inc., 424 F.3d 1136, 1149 (Fed. Cir. 2005) (“arguments based on drawings not
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`explicitly made to scale in issued patents are unavailing”).
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`When attached to clothing, the Stangle sleeve is folded on top of, and
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`downward over, the waist area of unfastened pants to cover the crotch area of the
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`unfastened pants. Stangle, Figs. 7-10; ¶¶ [0037] – [0042]. Stangle does not work
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`with its sleeve folded up, because the wearer would be forced to expose an
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`unfastened crotch as shown in Stangle Figure 5:
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`19
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`The above analysis is buttressed by Gregory Stangle’s own deposition
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`testimony:
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`Q. I want to go back to your patent application. I
`think it's Exhibit 4. You testified earlier that figures 7 to 10
`are the figures where the -- we have it attached to the
`pants; is that correct?
`A. Yes.
`Q. Okay. And the description of those, I believe,
`starts around paragraph 37. Take some time to review
`paragraph 37 to 46. (Witness viewing document.)
`BY THE WITNESS:
`A. Okay.
`Q. In what you reviewed, do any of the paragraphs
`discuss wearing these -- the attached sleeve up over the
`belly, upwards from the waist?
`A. No.
`Q. Does anywhere in your patent application
`disclose that way of wearing the pants, the attachments?
`A. No.
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`20
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`Stangle Dep. 173:21-174 (Ex. 2006).
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`Significantly, even if a user pulled the Stangle sleeve upwards—thus
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`exposing the crotch—the top of the moveable sleeve would not reach just beneath
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`the wearer’s breast area. As illustrated in unmodified Stangle Figure 8, the sleeve
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`extends only from the waist to the crotch:
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`If the Stangle sleeve were made long enough to reach to just below the breast
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`area, it would bunch up at the inseam in Figure 8. Stangle’s attached sleeve is meant
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`to be “built into clothing 32 without impacting normal use.” Stangle, [0025],
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`[0040]. Bunched-up material inside the pants at the crotch would impact Stangle's
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`normal use, not only by being uncomfortable, but by impeding the fit and closure of
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`the garment.
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`Second, Stangle does not disclose a garment lower portion that recedes
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`downward. Stangle’s Figure 7 shows that there is no area that recedes downward to
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`21
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`make way for expansion of the belly panel. Instead, Stangle's tube is attached and
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`worn with conventional pants.
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`In conventional pants, the waist band extends
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`straight across. And when Stangle's tube is deployed on conventional pants, it too
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`extends straight across to cover an open zipper and hold the pants up. E.g., Stangle,
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`Fig. 7, ¶¶ [0038] – [0039]:
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`Stangle’s attached sleeve is meant to be “built into clothing 32 without
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`impacting normal use.” Stangle, [0025], [0040]. This allows a wearer to don the
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`clothing in a normal fashion and only deploy the sleeve when necessary due to, for
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`example, the clothing no longer fastening. Id. at [0040]. Accordingly, aside from
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`not being disclosed, the fabric tube of Stangle to be used with traditional clothing
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`would not include a first torso encircling circumference that recedes downward to
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`make way for expansion of the belly panel. Moreover, even aside from the fact that
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`22
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`Stangle fails to disclose a downward recession, there is no reason why Stangle
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`would need a downward recession in its waist band, as it would serve no purpose:
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`Stangle’s sleeve is folded over unfastened pants. Accordingly, Stangle does not
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`disclose a garment lower portion that recedes downward as shown in Figure 7.
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`In sum, Stangle does not anticipate claim 1 of the ‘531 Patent.
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`c. Browder fails to disclose either a garment upper portion or a
`garment lower portion that recedes downward to make way for
`expansion of the belly panel
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`Browder is a girdle. The Browder embodiments Petitioner points to are not
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`maternity garments. It is also missing two key elements: (1) an "upper portion that is
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`expansible to cover and fit over a growing abdomen"; and (2) a "lower portion …
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`that recedes downward …."
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`First, Browder fails to disclose a garment upper portion that is expansible to
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`cover and fit over a growing abdomen. The Browder girdle requires “at least one
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`area of control that has a stitch pattern increasing its modulus by about 8%, to
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`provide a balance of comfort and control.” Browder, Abstract (Corrected Pet. Ex.
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`No. 1004). The control area is a portion of the girdle that is manufactured by
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`“tightening the fabric . . . by using a 1 by 1 (1×1) alternating tuck stitch pattern.” Id.
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`col.3, l.37-38. The tightened fabric pattern “increases the modulus of the fabric …
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`[such that] the fabric stretches less and controls more.” Id. l.39-41. Accordingly,
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`the control area of Browder is specifically designed to tighten, rather than expand,
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`23
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`
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`like the garment upper portion of claim 1. It would be quite unpleasant to wear for a
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`pregnant woman, if not harmful to the baby.
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`Like all girdles, the "control area" 35 of Browder tightens, rather than
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`expands. See Browder, col. 3, l.53-57 (“FIGS. 3 and 4 illustrate . . . control area 35
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`… extended over the abdomen and ends below the wearer’s breasts”).
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`Browder’s control area 35 prevents expansion in the waist, rather than
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`promotes it. As such, Figures 3 and 4 do not disclose an expansible belly panel that
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`either covers and fits over a growing abdomen during different stages of pregnancy
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`or substantially covers the wearer's entire pregnant abdomen during all stages of
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`pregnancy.
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`Second, Browder does not disclose a garment lower portion that recedes
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`EAST\59997812.10
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`24
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`
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`downward to make way for expansion of the belly panel. And the downward
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`recession does not make way for an expanding belly panel because the control area
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`35 prevents expansion in the waist.
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`Browder also discloses a maternity brief. But Petitioner omitted the figure of
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`Browder’s maternity brief, which tops out at the hip, and does not include a
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`downward recession to make way for expansion, as shown in Browder Figure 11:
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`In describing Figure 11, Browder states that the “control area 125 extends
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`over rear portion 121 and also extends onto front portion 122 covering the wearer’s
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`groin.” Browder, col. 4, l.53-55. The control area “controls the wearer’s buttocks
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`and hips, while simultaneously lifting the wearer’s stomach area.” Id. l.58-59. As
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`can be seen in Browder’s Figure 11 that illustrates the maternity brief, this maternity
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`girdle provides partial and incomplete coverage of the belly region, and does not
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`approach the breast area, which again is not pictured. Acco