Trials@uspto.gov
`571-272-7822
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` Paper 11
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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
`____________
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`TARGET CORPORATION,
`Petitioner
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`v.
`
`DESTINATION MATERNITY CORPORATION,
`Patent Owner
`
`
`Case IPR2013-00533
`Patent RE43,531 E
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`
`
`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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`571-272-7822
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` Paper 11
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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 IPR2013-00533
`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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`Case IPR2013-00533
`Patent RE43,531 E
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`I.
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`INTRODUCTION
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`Petitioner Target Corporation filed a Corrected Petition for an inter partes
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`review of claims 1, 18, 19, and 24–29 of U.S. Patent No. RE43,531 E (the
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`―’531 patent‖). Paper 4 (―Pet.‖). The Patent Owner, Destination Maternity
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`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.
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`§ 314(a), which provides as follows:
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`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.
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`Upon consideration of the Petition and the Preliminary Response, we
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`determine that the information presented shows there is a reasonable likelihood
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`that Petitioner will prevail with respect to claims 1 and 24–29 of the ’531 patent.
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`Accordingly, pursuant to 35 U.S.C. § 314, we authorize an inter partes review to
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`be instituted as to those claims, but not as to claims 18 and 19.
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`A. Related Proceedings
`
`Patent Owner asserted the ’531 patent against Petitioner in a pending lawsuit
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`titled: Destination Maternity Corporation v. Target Corporation et al., Case No.
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`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, 2, 5, 6, 10, 11, and 15–17 are the
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`2
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`Patent RE43,531 E
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`subject of that petition. See IPR2013-00532. Petitioner also filed two petitions for
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`inter partes reviews of related U.S. Patent No. RE43,563 E. See IPR2013-00530;
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`IPR2013-00531.
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`B. The Asserted Grounds
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`Petitioner presents the following grounds of unpatentability:
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`References
`
`Basis Claims
`challenged
`JCP fold-over panel jeans (Ex. 1002, 2)1 § 102 1, 18, 19, 24–26,
`28, and 29
`§ 103 26 and 27
`
`JCP fold-over panel jeans and JCP
`maternity bootcut jeans (Ex. 1002, 3)2
`JCP fold-over panel jeans and Browder
`(Ex. 1004)3
`JCP fold-over panel jeans and Lauren
`Sara (Ex. 1005)4
`Stangle (Ex. 1003)5
`
`Stangle and JCP maternity bootcut jeans
`Stangle and Browder
`Stangle and Sara
`
`§ 103 18
`
`§ 103 26
`
`§ 102 1, 18, 19, 24, 25,
`28, and 29
`§ 103 26 and 27
`§ 103 18
`§ 103 26
`
`
`
`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 6,276,175 B1 (Aug. 21, 2001).
`4 Ex. 1005 is an excerpt from expecting style by Lauren Sara (2003).
`5 U.S. Patent Application Publication US 2004/0049834 A1 (Mar. 18, 2004).
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`Browder
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`§ 102 1 and 18
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`C. The ’531 Patent
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`The ’531 patent relates to a garment worn during different stages of
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`pregnancy and different stages of postpartum body changes. Ex. 1018, col. 1,
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`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
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`when worn.‖ Id. at ll. 42–44. Figure 1 of the ’531 patent is reproduced below.
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`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
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`approximate the waistline, at first torso encircling circumference 126. Id. at col. 2,
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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
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`as a skirt, which is indicated by phantom lines. Id. at ll. 31–34.
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`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
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`garment lower portion correspondingly recedes downward in the front. Id. at
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`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.
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`at col. 3, ll. 6–10.
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`D. Illustrative Claim
`
`Of the challenged claims 1, 18, 19, and 24–29, claim 1 is the sole
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`independent claim. It is illustrative and reproduced as follows:
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`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
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`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.
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`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,
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`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,
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`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,
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`Petitioner requests that we review Patent Owner’s district court infringement
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`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
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`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.
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`§ 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. 48756, 48764 (Aug. 14, 2012), a request for the Board to search a
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`party’s infringement contentions for implicit constructions and to find a basis for
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`adopting them here is not sufficient.
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`Although the parties do not proffer constructions of any claim limitations,
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`we find it useful to construe expressly several limitations as set forth below.
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`1. just beneath the wearer’s breast area
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`Claim 1 requires that the garment upper portion has ―a second torso
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`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
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`identify a location ―just beneath the wearer’s breast area‖ or define ―breast area.‖
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`In fact, outside of claim 1, the Specification does not mention ―breast area‖ or
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`―breast.‖
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`We give the term ―breast area‖ its ordinary and customary meaning, as read
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`in light of the Specification. The term ―breast area‖ connotes a broader a meaning
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`than the word ―breast‖ alone. Further, as the Specification acknowledges, wearers
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`have different body types. Ex. 1018, col. 3, ll. 17–21. Thus, a garment may satisfy
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`claim 1 for one wearer but not another because of differences in the wearers’ body
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`types.
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`2. shaped and formed as a hyperboloid cylinder
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`Dependent claim 18 requires that ―the garment upper portion is a tubular
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`structure, wherein the tubular structure is shaped and formed as a hyperboloid
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`cylinder to fit a body type having a tapered torso.‖ The Specification does not
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`define hyperboloid cylinder. However, it does state: ―In FIGS. 1 and 2, the tubular
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`structure is shaped and formed as a . . . hyperboloid cylinder to fit a body type
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`having a tapered torso that tapers approximately from shoulder to waist.‖
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`Ex. 1018, col. 3, ll. 58–61. Figures 1 and 2 illustrate a belly panel (upper portion
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`102) as having an hourglass shape. Petitioner agrees that a hyperboloid cylinder is
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`hourglass-shaped. Pet. 33. Thus, consistent with the Specification, we construe
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`―hyperboloid cylinder‖ as an hourglass-shaped cylinder.
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`Further, we note that the claim requires the tubular structure to be ―shaped
`
`and formed as a hyperboloid cylinder‖ (emphasis added). Thus, the required
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`hyperboloid (or hourglass) cylinder shape refers to the garment upper portion’s
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`residual shape. A garment upper portion that that is not formed as a hyperboloid
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`cylinder does not meet the limitation regardless of whether it can be stretched,
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`constricted, or otherwise manipulated into a hyperboloid cylinder.
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`3. shaped and formed as straight-sided cylinder
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`Dependent claim 19 requires that ―the garment upper portion is a tubular
`
`structure, wherein the tubular structure is shaped and formed as a straight sided
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`cylinder to fit a body type having a corresponding shaped torso.‖ The required
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`straight-sided cylinder shape is given its ordinary and customary meaning.
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`Further, as with claim 18, the required shape of claim 19 refers to the garment
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`upper portion’s residual shape. A garment upper portion that is not formed as a
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`straight-sided cylinder does not meet the limitation regardless of whether it can be
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`stretched, constricted, or otherwise manipulated into a straight-sided cylinder.
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`B. Anticipation by JCP fold-over panel jeans
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`Petitioner asserts that claims 1, 18, 19, 24–26, 28, and 29 are anticipated by
`
`the JCP fold-over panel jeans. Pet. 31–36. The JCP fold-over jeans appear on
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`page 15 of the JCP catalog. Ex. 1002, 2. An excerpt of page 15 is reproduced
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`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
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`of a pregnant model. The garment is said to ―stretch for comfort.‖ Id.
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`1. Claim 1
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`The JCP fold-over panel jeans includes a garment upper portion, consisting
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`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
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`stretches and, thus, is ―expansible to cover and fit over a growing abdomen during
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`different stages of pregnancy,‖ as required by the claim. Ex. 1002, 2. The JCP
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`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
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`first torso encircling circumference. This first torso encircling circumference
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`extends along the top of the jeans and recedes downward in the front and, thus, at
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`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.‖
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`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
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`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.
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`In the annotated photograph above, the upper edge of the fold-over panel
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`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 the fold-over panel as substantially covering the
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`model’s entire pregnant abdomen. Further, and again, the claim is not limited to a
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`wearer of any particular height or body type. Thus, the fold-over panel would
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`cover even more, and perhaps all, of another wearer’s entire pregnant abdomen if
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`that wearer were shorter and/or gained 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
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`panel jeans.
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`2. Claims 18, 19, 24–26, 28, and 29
`
`Each of claims 18, 19, 24–26, 28, and 29 depends, directly or indirectly,
`
`from claim 1.
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`Claim 18 requires that ―the garment upper portion is a tubular structure,
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`wherein the tubular structure is shaped and formed as a hyperboloid cylinder to fit
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`a body type having a tapered torso.‖ Claim 19 requires that ―the garment upper
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`portion is a tubular structure, wherein the tubular structure is shaped and formed as
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`a straight sided cylinder to fit a body type having a corresponding shaped torso.‖6
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`The panel of the JCP fold-over panel jeans is not shown or described as being a
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`hyperboloid or straight-sided cylinder. It is shown being worn by a model in a
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`shape that is wider in its midsection than at its upper or lower ends. Nonetheless,
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`Petitioner asserts that the stretchable panel can contract to take an hourglass or
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`straight-sided cylinder shape when worn by a wearer having a corresponding body
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`shape. Pet. 33–34. We are not persuaded by this argument, as it is not
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`commensurate with the scope of the claims as construed above. In each instance,
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`the claim requires that the tubular structure of the garment upper portion be shaped
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`and formed in the required shape.
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`Claim 24 requires that ―the garment upper portion is foldable toward the
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`garment lower portion to provide a folded band on the garment lower portion to be
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`worn as a garment bottom having no top.‖ The panel of the JCP fold-over panel
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`jeans is described and illustrated as foldable. Ex. 1002, 2. However, the JCP fold-
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`over panel jeans are not illustrated as folded in such a manner as ―to provide a
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`folded band on the garment lower portion to be worn as a garment bottom having
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`no top.‖ Nonetheless, on this record, we are persuaded that the fold-over panel is
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`foldable in numerous configurations, including into a folded band downward onto
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`to the garment lower portion.
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`
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`6 Claim 19 is the only dependent claim for which Patent Owner presented a
`specific argument beyond its arguments regarding base claim 1. Prelim. Resp. 28–
`31.
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`Claim 25 requires that ―the garment lower portion comprises one of a pair of
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`trousers and a skirt.‖ The JCP fold-over jeans, as the name suggests, employ a pair
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`of jeans as the garment lower portion. Ex. 1002, 2. Jeans are a type of trousers.
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`Claim 26 requires that ―the garment lower portion comprises denim jeans.‖
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`The JCP catalog does not describe expressly the fold-over panel jeans as being
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`made of denim. Ex. 1002, 2. Petitioner supports its denim argument, in part, with
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`declaration testimony from Frances Harder (Ex. 1011, ―Harder Decl.‖). Pet. 35
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`(citing Ex. 1011, ¶ 24). Ms. Harder opines that a person of ordinary skill in the art
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`would conclude that the JCP fold-over panel jeans are made of denim merely
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`because they are blue and made of cotton.7 Ex. 1011, ¶ 24. We do not find the
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`cited testimony persuasive, as the conclusion is not dictated by the relied-upon
`
`facts. However, based on the present record, we do find the catalog photographs
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`persuasive. In the photographs, the jeans appear to be made of denim. Ex. 1002,
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`2. In particular, the photograph showing the entire leg portions of the jeans is
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`persuasive. Id.
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`Claim 28 requires that ―the first torso-encircling circumference recedes
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`downward with a parabolic shape, said parabolic shape including a shallow
`
`curvature.‖ Claim 29 depends from claim 28 and additionally requires that ―the
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`belly panel extends at least partially under the abdomen of the wearer to meet the
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`parabolic receding circumference of the garment lower portion.‖ As discussed
`
`above, in conjunction with Petitioner’s assertion that the JCP fold-over panel jeans
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`7 The JCP catalog states that the jeans are made of ―[c]otton/polyester/spandex.‖
`Ex. 1002, 2.
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`anticipates claim 1, the first torso encircling circumference extends along the top of
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`the jeans and recedes downward in the front and, thus, at least partially below the
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`wearer’s belly. Ex. 1002, 2. The downward recession appears to be parabolic in
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`shape.
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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 by the JCP fold-over panel jeans of
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`claims 24–26, 28, and 29 but not claims 18 and 19.
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`C. Obviousness over JCP fold-over panel jeans and JCP maternity bootcut
`jeans
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`Petitioner asserts that the subject matter of claims 26 and 27 would have
`
`been obvious over the JCP fold-over panel jeans and JCP maternity bootcut jeans.
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`Pet. 36–38.
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`The JCP maternity bootcut jeans are described and shown in page 19 of the
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`JCP catalog. Ex. 1002, 3. The catalog states that it includes a ―[f]aux fly‖ and ―an
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`all-around elastic belly panel that can be folded up or down depending on your
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`stage of pregnancy.‖ Ex. 1002, 3. In photographs, however, the all-around belly
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`panel is concealed partially by a shirt, as Petitioner concedes. Pet. 36. Thus, and
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`despite its name, it is not clear whether it meets claim 1’s requirement of
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`―substantially covering the wearer’s entire pregnant abdomen.‖ Consequently,
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`Petitioner relies on the JCP fold-over jeans for teaching the limitations of claim 1,
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`and on the JCP maternity bootcut jeans for teaching the additional limitations
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`recited in dependent claims 26 and 27. Pet. 38.
`
`Claims 26 and 27 depend from claim 1. Claim 26 requires that ―the garment
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`lower portion comprises denim jeans.‖ Claim 27 requires that ―the garment lower
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`portion comprises a zipperless fly.‖ Based on the evidence of record, the JCP
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`maternity bootcut jeans appear to teach these additional limitations. The
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`photograph shows that the garment lower portion is denim jeans.8 Ex. 1002, 3.
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`Also, a front fly, which is visible in one photograph, is described as faux. Id.
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`Thus, we are persuaded that it is zipperless.
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`Petitioner provides reasoning with rational underpinning for substituting the
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`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 26 and 27.
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`Pet. 36–38. In particular, and relying on the declaration testimony of Ms. Harder,
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`Petitioner points out that both products are jeans having attached belly panels,
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`which could be swapped easily with one another. Id. at 36–37; Ex. 1011, ¶ 25. On
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`the present record, we are persuaded that swapping panels would have been an
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`obvious design choice to a person of ordinary skill in the art, and that it was
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`desired by customers. Pet. 36–37; Ex. 1011, ¶ 25. Further, the swapping of the
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`panels and jeans does no more than yield predictable results. See KSR Int’l Co. v.
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`Teleflex Inc., 550 U.S. 398, 416 (2007) (―The combination of familiar elements
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`according to known methods is likely to be obvious when it does no more than
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`yield predictable results.‖).
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`Patent Owner argues that objective indicia, or secondary considerations,
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`demonstrate non-obviousness. Prelim. Resp. 33–37; see also Graham v. John
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`Deere Co., 383 U.S. 1, 17–18 (1966) (―Such secondary considerations as
`
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`8 The photographs of the JCP maternity bootcut jeans show the denim aspect more
`clearly than the photographs of the JCP fold-over design jeans. See Ex. 1002, 2–3.
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`16
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`commercial success, long felt but unsolved needs, failure of others, etc., might be
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`utilized to give light to the circumstances surrounding the origin of the subject
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`matter sought to be patented. As indicia of obviousness or nonobviousness, these
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`inquiries may have relevancy.‖). In particular, Patent Owner states that ―publicly
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`available reviews for Patent Owner’s Secret Fit Belly® line of maternity bottoms
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`call out claimed features of Patent Owner’s Secret Fit Belly® garments, show
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`praise for the invention’s claimed features, and explain its commercial success.‖
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`Prelim. Resp. 34 (emphasis added).
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`Patent Owner reproduces the relied-upon reviews but does not direct us to
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`actual evidence of commercial success such as any sales data, let alone ―proof that
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`the sales were a direct result of the unique characteristics of the claimed
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`invention—as opposed to other economic and commercial factors unrelated to the
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`quality of the patented subject matter.‖ In re Huang, 100 F.3d 135, 140 (Fed. Cir.
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`1996). With respect to the alleged industry praise, Patent Owner has not linked the
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`praise to the inventions of dependent claims 26 and 27, as opposed to independent
`
`claim 1.9 See Geo. M. Martin Co. v. Alliance Mach. Sys. Int’l LLC, 618 F.3d 1294,
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`1305 (Fed. Cir. 2010) (―Industry praise must also be linked to the patented
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`invention.‖). For at least these reasons, Patent Owner’s arguments regarding
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`evidence of secondary considerations are not persuasive.
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`On this record, we are persuaded that there is a reasonable likelihood that
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`9 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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`Petitioner will prevail in showing unpatentability of claims 26 and 27 as obvious
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`over the JCP fold-over panel jeans and JCP maternity bootcut jeans.
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`D. Obviousness over JCP fold-over panel jeans and Lauren Sara
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`Petitioner asserts that the subject matter of claim 26 would have been
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`obvious over the JCP fold-over panel jeans and Lauren Sara. Pet. 40–42. This
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`ground is denied as redundant because trial is being instituted for the same claim
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`on other grounds. See 37 C.F.R. § 42.108(a).
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`E. Anticipation by Stangle
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`Petitioner asserts that claims 1, 18, 19, 24, 25, 28, and 29 are anticipated by
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`Stangle. Pet. 42–47. Stangle discloses ―a garment that enables the wearing of
`
`clothing that is otherwise too small to be zipped, buttoned snapped or otherwise
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`fastened, such as during pregnancy or with respect to an overweight wearer or
`
`other wearer whose body proportions have changed.‖ Ex. 1003, ¶ 0007. The
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`garment is described as a hollow, tubular sleeve that is worn around the waistline
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`and over the unfastened fly of the clothing. Id. at ¶ 0029. Figures 5 and 6 of
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`Stangle are reproduced below.
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`18
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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, 43–45. 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,
`
`¶ 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
`
`the clothing’s inside surface 34 but the moveable end can be folded inside or
`
`outside. Id. In Figure 10, the affixed end is folded to the outside, thus, covering
`
`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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`19
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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. 6–7. 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. 43 (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 as viewed
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`on the outer surface of the garment when not inside-out would recede downward.
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`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 18, 19, 24, 25, 28, and 29, which
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`depend 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 18, 26, and 27 would have
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`been obvious over Stangle in view of an additional reference. Pet. 48–53. Claims
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`18, 26, and 27 depend from claim 1, and Petitioner’s obviousness assertions are
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`premised on Stangle anticipating claim 1. Id. Thus, for at least reasons already
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`discussed above, there is not a reasonable likelihood that Petitioner will prevail in
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`showing unpatentability of claims 18, 26, and 27 as obvious principally over
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`Stangle.
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`G. Anticipation by Browder
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`Petitioner asserts that claims 1 and 18 are anticipated by Browder. Pet. 54–
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`56. Browder discloses control undergarments. Ex. 1004, col. 1, ll. 7–16. Figure 3
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`is reproduced below.
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`
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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
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`Figure 3 meets this limitation. Instead, to meet this limitation, Petitioner relies on
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`a teaching regarding a dif
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