UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Paper No. 24
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`TARGET CORPORATION
`
`Petitioner
`
`V.
`
`DESTINATION MATERNITY CORPORATION
`
`Patent Owner
`
`Case No. IPR2013-00533
`
`Patent RE43,531
`
`Dated: May 5, 2014
`
`PATENT OWNER’S RESPONSE TO CORRECTED PETITION FOR
`
`INTER PARTES REVIEW OF U.S. PATENT NO. RE43,531
`
`EASD742931812
`
`
`
`Paper No. 24
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`TARGET CORPORATION
`
`Petitioner
`
`V.
`
`DESTINATION MATERNITY CORPORATION
`
`Patent Owner
`
`Case No. IPR2013-00533
`
`Patent RE43,531
`
`Dated: May 5, 2014
`
`PATENT OWNER’S RESPONSE TO CORRECTED PETITION FOR
`
`INTER PARTES REVIEW OF U.S. PATENT NO. RE43,531
`
`EASD742931812
`
`
`
`TABLE OF CONTENTS
`
`Page
`
`I.
`
`II.
`
`INTRODUCTION .......................................................................................... 1
`
`BACKGROUND OF THE INVENTION ...................................................... 3
`
`III.
`
`CLAIM CONSTRUCTION ........................................................................... 4
`
`a.
`
`“just beneath wearer's breast area” ....................................................... 5
`
`IV.
`
`JCP-A DOES NOT ANTICIPATE CLAIM l ............................................. 15
`
`a.
`
`b.
`
`c.
`
`JCP-A does not disclose “an upper edge of the bely panel that
`encircles a wearer's torso just beneath wearer's breast area” ............. 16
`
`JCP-A does not disclose “substantially covering the wearer's
`entire pregnant abdomen during all stages of pregnancy” ................. 26
`
`The PTO already concluded that JCP-A in not anticipatory .............. 32
`
`V.
`
`THE DEPENDENT CLAIMS ARE VALID BECAUSE JCP-A DOES
`
`NOT ANTICIPATE CLAIM l ..................................................................... 34
`
`VI.
`
`JCP-A DOES NOT DISCLOSE THE LIMITATIONS OF CLAIM 24 ...... 36
`
`VII. CLAIMS 26 AND 27 ARE NOT OBVIOUS BECAUSE OF
`
`SECONDARY CONSIDERATIONS .......................................................... 37
`
`VIII. PETITIONER’S EXPERT’S CONTRIBUTION IS TENUOUS ................ 42
`
`IX.
`
`CONCLUSION ............................................................................................. 46
`
`EASD742931812
`
`_ i _
`
`
`
`LIST OF EXHIBITS
`
`Exhibit 1002:
`
`.].C. Penney ontrendMatemity Catalog, dated Fall/Winter
`2005, cover and pages 15 and 19 (“JCP”)
`
`Exhibit 101 1:
`
`Declaration of Frances Harder
`
`Exhibit 1018:
`
`Hendrickson et al. US. Patent No. RE43,531 (“the ’53]
`Patent”)
`
`Exhibit 1020:
`
`Certified File Wrapper of US. Patent No. 7,814,575 (whose
`reissue application resulted in the ’531 Patent)
`
`Exhibit 1021:
`
`Certified File Wrapper of US. Patent No. RE43,531
`
`Exhibit 2003:
`
`Color artifact of JC Penney Catalog 2005 found in USSN
`12/117,004 (US 7,900,276)
`
`Exhibit 2004:
`
`December 4, 201 1 Form 1449 from US RE43,563
`
`Exhibit 2005:
`
`Excerpts from the October 10, 2013 Deposition of Mindy
`Simon
`
`Exhibit 2017:
`
`Declaration of David Brookstein, Sc.D.
`
`Exhibit 2018:
`
`Deposition transcript of Frances Harder (April 24, 2014)
`
`Exhibit 2019:
`
`Deposition transcript of Amy Brady (October 10, 2013)
`
`Exhibit 2020:
`
`Exhibit 114 from deposition transcript of Amy Brady
`
`Exhibit 2021
`
`July 17, 2007 Patent Owner press release - introduction to Secret
`Fit Belly styles
`
`Exhibit 2022:
`
`Declaration of Philip Green
`
`Exhibit 2023:
`
`Merriam-Webster’s Collegiate Dictionary, 11th Ed., 2007, p.
`1245
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`EAST)74293181.2
`
`-11-
`
`
`
`Exhibit 2024:
`
`Merriam-Webster's Collegiate Dictionary, 1 1th Ed., 2007, p. 679
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`EAST\74293181.2
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`-iii-
`
`
`
`I.
`
`INTRODUCTION
`
`Pursuant
`
`to 37 C.F.R.
`
`§ 42.120, patent owner, Destination Maternity
`
`Corporation (“Patent Owner”), hereby submits the following Patent Owner
`
`Response to Target Corporation's (“Petitioner”) Corrected Petition for Inter Partes
`
`Review of US. Patent No. RE43,531 (the “‘5 31 Patent”). This filing is timely under
`
`the Scheduling Order and Stipulated Notice. See PTAB Feb. 19, 2014 Order, Paper
`
`12 at 5; Stip. Not, Paper 19, at 2.
`
`Petitioner filed six requests for Inter Partes Review for the '531 Patent and
`
`US. Patent No. RE43,563 (the “'563 Patent”) (collectively, the “Patents-in-Suit”).
`
`Four of the six Inter Partes Review petitions were instituted and two are pending
`
`with joinder motions.1 The instant Inter Partes Review was instituted for claims 1
`
`1 IPR2013-00532 was instituted for claims 1, 2, 5, 6, 10, 11, and 15—17 ofthe ‘531
`
`Patent. See PTAB Feb. 19, 2014 Dec. Paper 10, at 2. IPR2013-00533 was instituted
`
`for claims 1 and 24-29 ofthe '531 Patent. See PTAB Feb. 19, 2014 Dec. Paper 11, at
`
`2. IPR2013-0053O was instituted for claims 1-4 and 6-8 of the '563 Patent. See
`
`PTAB Feb. 14, 2014 Dec. Paper 13, at 2. IPR2013-00531 was instituted for claims
`
`1, 10-14, 16, and 20 ofthe '563 Patent. See PTAB Feb. 14, 2014 Dec. Paper 10, at 2.
`
`IPR20l4-00509 requested review of claims 1, 2,5, 6, 10, 11, 15-19, and 24-29 ofthe
`
`'531 Patent. See March 14, 2014 Pet., Paper No. 1, at 1. IPR20l4-00508 requested
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`EAST\74293181.2
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`
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`and 24-29 ofthe ‘531 Patent. See PTAB Feb. 19, 2014 Dec. Paper 11, at 2.
`
`The Patents-in- Suit are asserted against Petitioner in the United States District
`
`Court for the Eastern District of Pennsylvania.
`
`In the 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, which practice the
`
`claims of the Patents-in-Suit. See EX. 2017, Brookstein Dec. at 11 11. An exemplary
`
`image of Patent Owner's Secret Fit Belly® line of maternity bottoms is provided
`
`below:
`
`
`
`review of claims 1-4, 6-8, 10-14, 16, 20, and 21 of the '563 Patent. See March 14,
`
`2014 Pet, Paper No. 1, at 1.
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`EASP742931812
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`
`
`The Inter Partes Review for the ‘531 Patent is predicated on anticipation by
`
`J .C. Penney ontrend Maternity Catalog at Page 15 (“JCP-A”). Corrected Pet. EX.
`
`No. 1002 at 2; PTAB Feb. 19, 2014 Dec., Paper 11.
`
`JCP-A shows images of a
`
`maternity garment from a J .C. Penney catalog that was already considered by the
`
`PTO during prosecution of both Patents-in-Suit. This reference is not anticipatory
`
`because it does not disclose the limitations of “an upper edge of the bely panel that
`
`encircles a wearer's torso just beneath wearer's breast area” and “substantially
`
`covering the wearer's entire pregnant abdomen during all stages of pregnancy.”
`
`II.
`
`BACKGROUND OF THE INVENTION
`
`The '531 Patent, entitled ”Belly Covering Garment," concerns a garment worn
`
`during different stages of pregnancy and different stages of postpartum body
`
`changes.
`
`'531 Patent, col.1 1.34-44, 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. 1.18-21. Others had panels sewn into place with seams, which also
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`EAST\74293181.2
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`
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`caused discomfort to the sensitive abdominal region due to the panels pressing
`
`against the torso. Id. 1.21-24. 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. 1.25-27.
`
`As such, the inventors of the '531 Patent recognized that a need existed for a
`
`maternity garment that expanded to cover and fit over a growing abdomen during all
`
`stages of pregnancy, regardless of body type.
`
`Id. 134-38.
`
`The inventor’s fulfillment of the aforementioned needs, among others, was
`
`evidenced in the popularity and commercial success of Patent Owner’s Secret Fit
`
`Belly® line of maternity bottoms. There are now hundreds of different Secret Fit
`
`Belly® styles currently available online, in Patent Owner’s stores, and in third party
`
`department stores.
`
`III. CLAIM CONSTRUCTION
`
`The United States Patent and Trademark Office (“PTO”) “determines the
`
`scope of claims in patent applications not solely on the basis of the claim language,
`
`but upon giving claims their broadest reasonable construction in light of the
`
`specification as it would be interpreted by one of ordinary skill in the art.” Phillips v.
`
`AWH Corp, 415 F.3d 1303, 1316 (Fed. Cir. 2005)
`
`(citations and internal
`
`punctuation omitted). Under this standard, claim terms are given their plain
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`EAST\74293181.2
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`
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`meaning to those skilled in the art based on, inter alia, “the words of the claims
`
`themselves, the specification, drawings, and prior art.” MPEP 2111.01. Dictionary
`
`definitions may be used to determine the broadest reasonable interpretation of a
`
`claim term. In re Scroggl'e, 442 Fed. App’X 547, 550 (Fed. Cir. 2011).
`
`The PTO’s standard is not boundless; rather, it must be “consistent with the
`
`interpretation that those skilled in the art would reach.” MPEP 21 11. “Accordingly,
`
`the PTO’s interpretation of claim terms should not be so broad that it conflicts with
`
`the meaning given to identical terms in other patents from analogous art.” In re
`
`Cortrlght, 165 F.3d 1353, 1358 (Fed. Cir. 1999).
`
`a. “just beneath wearer's breast area”
`
`The broadest reasonable construction of “just beneath the wearer’s breast
`
`area” is “beneath the location of the breasts by a very small margin.” See EX. 2017,
`
`Brookstein Dec. at 1111 13-22.
`
`The claim term “breast area” was introduced via an examiner's amendment.
`
`See Aug. 31, 2010 '575 patent Notice of Allowance EX. 1020. This amendment was
`
`made after an office action that included a § 112 rejection requiring that the height of
`
`the panel be “defined in regard to the garment itself and not the wearer or the
`
`location needs to be defined in regard to the wearer according to a body location
`
`that would not be different on each wearer so that the location is clear and
`
`definite.” '575 patent, June 8, 2010 Office Action at 7 (emphasis added) EX. 1020.
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`EAST\74293181.2
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`
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`Accordingly, the Examiner required “just beneath the wearer’s breast area” to avoid
`
`the issue that a garment would satisfy claim 1 for one wearer but not another because
`
`of differences in the wearers’ body types.
`
`Although the specification does not discuss “breast area” in detail, Fig. 1A
`
`(reproduced below) shows that the panel may completely cover the abdomen and
`
`extended upward to the breasts. See ‘531 Patent, col. 2, 1.9-10 (“FIG. 1A is a view
`
`similar to FIG. 1, and discloses a body panel covering a growing abdomen”); EX.
`
`2017, Brookstein Dec. at 1111 14-15.
`
`
`
`In describing Fig. 1A, the specification states that “the garment upper portion
`
`102 has a belly panel 124 to provide an abdomen covering area [that is] expansible .
`
`.
`
`. to cover and fit over a growing abdomen during different stages of pregnancy.”
`
`'531 patent, 2:59-63. As such, the Specification supports a construction of “just
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`EAST\74293181.2
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`
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`beneath the wearer’s breast area” as “beneath the location of the breasts by a very
`
`small margin.”
`
`The claim language also supports a construction that “just beneath the
`
`wearer’s breast area” is “beneath the location of the breasts by a very small margin.”
`
`See EX. 2017, Brookstein Dec. at 1] l6. Claim 1 states that the panel rises to a
`
`location “just beneath the wearer’s breast area .
`
`.
`
`. substantially covering the
`
`wearer’s entire pregnant abdomen during all stages of pregnancy.” In other words,
`
`claim 1 requires that the breast area ends before the abdomen begins because
`
`substantial coverage of the abdomen cannot include partial coverage of the breast
`
`area as shown on the annotated picture below. M. ‘H l 1.
`
`are”! fires
`
`Btu“ Area
`
`
`
`9 month
`
`By using the terms “breast area” and “abdomen” to describe different
`
`locations on a wearer, the wording of claim 1 supports a construction that “breast
`
`area” is the location of the breasts. It also excludes a construction of “breast area”
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`EAST\74293181.2
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`
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`that includes the abdomen because both terms are used in locating the top of the
`
`panel during all stages of pregnancy. Id. 1] 16.
`
`The Specification’s discussion of different body types supports a construction
`
`of “just beneath the wearer’s breast area” as “beneath the location of the breasts by a
`
`very small margin.” Id. W 17-18. The Specification explains that the eXpansible
`
`and contractible nature of the panel allows the panel to reach just beneath the breast
`
`area during all stages of pregnancy on wearers of different body types. The
`
`Specification states:
`
`The tubular structure is adaptable to cover and fit different
`
`body
`
`types
`
`by
`
`being
`
`elastically
`
`expansible
`
`and
`
`contractible. Different body types have different muscle
`
`mass distributions and spinal columns of different
`
`curvatures, which make the tubular structure conform to
`
`the different body types by expanding and contracting in
`
`different
`
`locations and amounts when worn by the
`
`different body types. 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.
`
`‘531 Patent, col. 3 1.47—57.
`
`The Specification does not indicate that body types will affect the location of the
`
`garment because the stretchability and contractability of the garment allows it to
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`EAST\74293181.2
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`
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`adapt to different body types. For example, if a wearer is a size small and has a
`
`spinal columns that is different than a standard spinal column that designers use for
`
`size small, the garment could expand to reach just beneath the breast area. The
`
`Specification shows that the garment is adaptable to cover and fit different body
`
`types.
`
`Petitioner’s expert’s deposition testimony supports a construction of “breast
`
`area” as the “location of the breasts”; for example:
`
`Q. Okay. Before you were involved in this case, what was
`
`your understanding of where the breast area is -- is located
`
`on a person?
`
`A. Well, the breast area could -- could, in theory, talk
`
`about the bra, talk about the actual breast. So it depends
`
`on, you know, wha -- what in -- in what context we're
`
`talking about. Or it could be area -- it could be, what is the
`
`area? I mean, what is the area of LA? You're talking
`
`about miles or are you talking about 5 -- 5 feet?
`
`Q. Sure.
`
`A. So it depends on what you define as what the area is.
`
`Every -- every -- every definition of area could -- could be
`
`different.
`
`Q. Sure. Sure. But when you're working with clothing to
`
`cover the breast area, what's your understanding of breast
`
`area in that context?
`
`A. To cover the breast area?
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`EAST\74293181.2
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`
`
`Q. Yes.
`
`A. Then I would think we're talking about a bra.
`
`Q. Okay. Are there other definitions of -- well, what do
`
`you mean by ”bra” when you said we're talking about the
`
`bra?
`
`A. Well, the bra is holding the actual breast of the woman.
`
`And that would be considered, as you were talking about,
`
`something covering the breast area.
`
`Harder Dep. 17:8-18:ll (EX. 2018)
`
`Q. BY MR. POLLACK: Normally, breast area would
`
`refer to over the breast?
`
`A. Over the breast.
`
`Q. Okay.
`
`A. So that's what I would define normally as being the
`
`breast area.
`
`Id. 24:9-14.
`
`Q. Okay. And the breast area is the breasts?
`
`A. Is -- we've --
`
`Q. The bra?
`
`A. Yeah. We've already discussed that the breast area
`
`would be where the bra would be fitting.
`
`Id. 4724-483.
`
`Q. Yes.
`
`Does -- does the maternity brief in Figure 11 encircle --
`
`have an upper edge of a belly panel that encircles a
`
`wearer's torso just beneath the wearer's breast area?
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`EAST\74293181.2
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`10
`
`
`
`A. It's hard to tell because there's no reference of where --
`
`the breast area here. You see that -- the bulge of the
`
`stomach, and it looks like it tapers down. And that's
`
`normally where a pregnant woman's breast -- a pregnant
`
`woman's belly or abdomen would grow is below the
`
`breast. But without seeing where the reference of the
`
`breast is on this, it's very hard to tell where it finishes or
`
`where it starts.
`
`Id. 78:13-79:1.
`
`Petitioner’s expert further testified that she has the expertise to define “breast area.”
`
`Id. 51:11-19. Petitioner’s expert also admitted that the asserted prior art did not
`
`define the term “breast area.” E.g., Id. 27:8-10 (JC Penny catalog); id 28:13-21
`
`(Browder); 30:4-7 (Sara); id. 30:17-31:2 (Stangle); id 32:5-8 (Pergament).
`
`Even though the asserted prior art did not discuss “breast area,” the term is
`
`well known in the art and analogous art shows that the “breast area” is the location of
`
`the breasts. See Ex. 2017, Brookstein Dec. at 11 19. For example, US. Patent No.
`
`6,669,064 (the “’064 patent”) 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.”
`
`‘064 patent, 4:36-46
`
`(emphasis added).
`
`Figure 1 below read with this description shows that the
`
`described “breast area” is the location of the breasts.
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`EAST\74293181.2
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`11
`
`
`
`
`
`US. Patent No. 5,034,999 (the “’999 patent”) 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,
`
`preferably near the infant's head while he is nursing.” 2:60-67 (emphasis added).
`
`Again, Figure 1 below read with this description shows that the described “breast
`
`area” is the location of the breasts.
`
`
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`EAST\74293181.2
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`12
`
`
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`Analogous art also shows that the bottom of the breast area does not include
`
`the abdomen. US. Pat. No. 7,089,597 (the “’597 patent”) shows that the breast area
`
`ends at the empire line or inframammary fold.
`
`In describing Fig. 2A (reproduced
`
`below), the ‘597 patent states: “wide fabrics 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.” ‘597 patent, 9:34:38 (emphasis added). Of note, the Primary
`
`Examiner for the ‘597 patent is the same Primary Examiner for the Patents-in-Suit.
`
`
`
`Moreover, as the term “breast area” is known in the art as the location of the
`
`breasts, analogous art includes patents where the term “breast area” is only found in
`
`the claims. See Ex. 2017, Brookstein Dec. at 11 20; see also, e.g., US. Patent No.
`
`8,016,640, claim 3 (“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 0n the breast while holding the breast with the breast
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`EAST\74293181.2
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`13
`
`
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`supported from said outside edge”) (emphasis added); US. Patent No. 4,590,624,
`
`claim 1 (“each of said left and right blouse panels configured when laid flat and
`
`without stitching to be larger than the breast area of the gown,
`
`thereby
`
`producing a billowing 0f 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).
`
`The word “just” is defined as “by a very small margin.”
`
`See just.
`
`Merriam-Webster's Collegiate Dictionary, 11th Ed, 2007, p. 679 EX. 2024, see also
`
`Ex. 2017, Brookstein Dec. at 11 21. This definition of “just” comports with the
`
`remainder of
`
`the
`
`claim, which requires
`
`that
`
`the garment upper portion
`
`“substantially2 cover[] the wearer's entire pregnant abdomen during all stages of
`
`pregnancy.” In other words, if a wearer's entire pregnant abdomen is substantially
`
`covered during all stages of pregnancy, the top of the garment upper portion must be
`
`below the location of the breasts by a very small margin and Vice-versa.
`
`Based on the language of the claims, the Specification, the file history, and
`
`analogous art, the broadest reasonable construction of “just beneath the wearer’s
`
`2 The definition of “substantially” is “being largely but not wholly that which is
`
`specified.” See substantial. Merriam-Webster's Collegiate Dictionary, 11th Ed,
`
`2007, p. 1245 EX. 2023.
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`EAST\74293181.2
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`14
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`
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`breast area” is “beneath the location of the breasts by a very small margin.” See EX.
`
`2017, Brookstein Dec. at W 13-22.
`
`IV.
`
`JCP-A DOES NOT ANTICIPATE 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 comers of the document, but
`
`111
`also disclose those elements arranged as in the claim. Cheese Sys, Inc. v. Tetra
`
`Pak Cheese andPowder Sys., Inc, 725 F3d 1341, 1351 (Fed. Cir. 2013). If even one
`
`element is missing, there is no anticipation.
`
`lVlPEP § 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;
`
`a garment
`
`lower portion having a first
`
`torso encircling
`
`circumference that
`
`recedes downward to make way for
`
`expansion of the belly panel; and
`
`the garment upper portion having a second torso encircling
`
`circumference defining an upper edge of the belly panel that
`
`encircles a wearer's torso just beneath the wearer's breast area
`
`configured to hold the garment up and in place about the torso in
`
`a position of a location of maximum girth of the abdomen
`
`thereby substantially covering the wearer's entire pregnant
`
`abdomen during all stages of pregnancy.
`
`JCP-A does not disclose, at a minimum, either “an upper edge of the bely
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`EAST\74293181.2
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`15
`
`
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`panel
`
`that encircles a wearer's torso just beneath wearer's breast area” or
`
`“substantially covering the wearer's entire pregnant abdomen during all stages of
`
`pregnancy.” See EX. 2017, Brookstein Dec. at W 34, 40-48.
`
`Indeed, JCP-A was
`
`already considered by the PTO in high quality color (contrary to Petitioner’s
`
`assertions) and was not even deemed relevant enough to warrant an Office Action.
`
`EX. 2003, EX. 2004.3
`
`a. JCP-A does not disclose “an upper edge of the bely panel that
`encircles a wearer's torso just beneath wearer's breast area”
`
`JCP-A does not disclose an upper edge of the belly panel that encircles a
`
`wearer's torso just beneath the wearer's breast area, i.e., beneath the location of the
`
`breasts by a very small margin, because, at a minimum, JCP-A does not show either
`
`the model's breast area or even the top of the belly, and the surrounding text does not
`
`suggest that JCP-A is intended to reach that high. See EX. 2017, Brookstein Dec. at
`
`W 53-57. Petitioner’s expert testified that it cannot be determined whether a panel
`
`reaches to the breast area without also picturing the breast area when discussing
`
`Browder:
`
`The instituted grounds for unpatentability of the dependent claims hinge on
`
`JCP-A anticipating claim 1. Because JCP-A does not anticipate claim 1, these
`
`grounds also fail.
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`EAST\74293181.2
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`l6
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`Q. Yes.
`
`Does -- does the maternity brief in Figure 11 encircle --
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`have an upper edge of a belly panel that encircles a
`
`wearer's torso just beneath the wearer's breast area?
`
`A. It's hard to tell because there's no reference of where --
`
`the breast area here. You see that -- the bulge of the
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`stomach, and it looks like it tapers down. And that's
`
`normally where a pregnant woman's breast -- a pregnant
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`woman's belly or abdomen would grow is below the
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`breast. But without seeing where the reference of the
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`breast is on this, it's very hard to tell where it finishes or
`
`where it starts.
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`Harder Dep. 78:13-79:l (Ex. 2018).
`
`Petitioner’s expert also testified that the breasts are not pictured in JCP-A. Id.
`
`177: 15-19. Without seeing a JCP-A sample, Petitioner’s expert could only conclude
`
`that
`
`the panel ended “below the breast area somewhere.”
`
`Id. 179:7-180:12.
`
`Petitioner’s expert did not see any garment samples of asserted prior art, even
`
`though she further testified that she would need to see the garments to determine
`
`validity. See, 6. g. , id. 96:20-97:13 (expert did not see any prior art samples and was
`
`surprised that none existed); see also l'd. 55:20-56:4 (expert would have to see the
`
`Browder garment to determine whether it is expansible). As such, Petitioner’s
`
`expert’s opinion that JCP-A anticipates is not credible.
`
`Indeed, if JCP-A reached to the breast area, it would be expected that the text
`
`EAST\74293181.2
`
`17
`
`
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`would say so and would refer to this unusual feature. EX. 2017, Brookstein Dec. at 11
`
`46.
`
`Instead, JCP-A does not even show the model’s breast area or the top of the
`
`belly, since JC Penney did not consider the breast area to be important to its design.
`
`See EX. 2017, Brookstein Dec. at 11 43.
`
`Moreover, what JC Penney called “over-the-belly coverage” is a different
`
`type of product that does not meet the '531 Patent claims' requirement that the ”upper
`
`portion
`
`encircles a wearer's torso just beneath the wearer's breast area ....” Id.
`
`The reference to “over-the-belly coverage” in JCP-A is a term of art for products
`
`having a belly panel with an upper end that rests directly on the user’s belly. This
`
`type of product is the type of prior art garment referred to in the ‘531 Patent, which
`
`suffered from the problem that it was difficult to keep in place, as it gradually
`
`slipped downward while being worn. E. g, ‘531 Patent, col. 1, 125-27. Consistent
`
`with these conclusions, JC Penny's corporate witness testified that JCP-A’s
`
`“over-the-belly” design rested directly on the belly, rather than extend upward to 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]
`
`over the belly coverage there.
`
`A. Okay.
`
`Q. The top edge of the band.
`
`A. Yes.
`
`EAST\74293181.2
`
`18
`
`
`
`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:
`
`EAST\74293181.2
`
`l9
`
`
`
`Breast Area
`
`-l
`
`Secret Fit Belly‘fl'
`JCP-A
`866 EX. 2017, Brookstein Dec. at 1] 42. As shown, the top of the garment rests
`
`directly on the user’s belly and also curves downward substantially (which appears
`
`consistent with similarly constructed prior art garments that suffered from the
`
`problem that they would gradually slip downward while being worn). 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 or even the top of the belly.
`
`The JCP-A text also does not suggest that the garment is intended to reach higher to
`
`the breast area, and JCP-A’s inset photos that omit the breast area evidences that JC
`
`Penney did not consider the breast area to be important to its design. See Id. 1] 47.
`
`The difference in height is important. By rising just beneath the breast area,
`
`the ‘531 Patent provides a product that stays up better than JCP-A and other prior art
`
`EAST\74293181.2
`
`20
`
`
`
`products. See EX. 2017, Brookstein Dec. at 1] 11. The additional coverage to the
`
`breast area creates more frictional force to hold the garment up. Id. Also, to move
`
`downward, a large portion of the ‘531 Patent’s upper garment portion needs to first
`
`significantly expand over a belly to move from a position just beneath the breast area
`
`off the wearer.
`
`Id. The functional advantages of Patent Owner’s invention was
`
`confirmed by Petitioner:
`
`EAST\74293181.2
`
`
`
`Brady Dep. 71 :8-72:22 (EX. 2019)
`
`As shown in the photographs from JCP-A (reproduced below), 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:
`
`EAST\74293181.2
`
`22
`
`
`
`
`
`In its institution decision, the Board stated:
`
`In [JCP-A], the upper edge of the fold-over panel extends
`
`to just beneath the wearer’s breast area. The skin of the
`
`model that is visible above the fold-over panel is part of
`
`the
`
`breast
`
`area, within
`
`the
`
`broadest
`
`reasonable
`
`interpretation of that term. Further, the fold-over panel
`
`would extend even higher on a wearer of a shorter stature.
`
`See PTAB Feb. 19, 2014 Dec. Paper 11, at 12.
`
`Using Patent Owner’s claim construction, the skin of the model above the
`
`JCP-A garment is not part of the breast area because it is not the location of the
`
`breasts. See EX. 2017, Brookstein Dec. at 11 43. Rather, the skin of the model above
`
`the JCP-A garment is part of the abdomen. Neither the top of the abdomen nor the
`
`breast area is shown. As such, JCP-A is not anticipatory.
`
`Moreover, Patent Owner’s claim construction is not affected by wearers of
`
`EAST\74293181.2
`
`23
`
`
`
`different body types. See EX. 2017, Brookstein Dec. at 11 44. As noted above, the
`
`portions of the specification that describe coverage on different body types shows
`
`that the expansible and contractible nature of the patented garment allows the panel
`
`to reach just beneath the breast area during all stages of pregnancy on wearers of
`
`different body types. Even assuming, arguendo, that the model in JCP-A has a
`
`non-standard body type, JCP-A would still have to reach just beneath the breast area
`
`to be anticipatory. It does not.
`
`Further, it is understood by one skilled in the art that the correct size of the
`
`garment is worn. See EX. 2017, Brookstein Dec. at 11 45; Harder Dep. 133:10-17,
`
`212:23-214: 16 (EX. 2018). The possibility that the pictured garment in JCP-A could
`
`reach just beneath the breast area on a person where the pictured JCP-A is a few
`
`sizes too big does not convert JCP-A into a § 102 reference. See Continental Can
`
`Co. USA, Inc. v. Monsanto Co., 948 F.2d 1264, 1269 (Fed. Cir. 1991) (“Inherency,
`
`however, may not be established by probabilities or possibilities. The mere fact that
`
`a certain thing may result from a given set of circumstances is not sufficient”).
`
`Further, Petitioner does not provide any analysis that the possibility is even viable.
`
`Id. at 1268 (“[Extrinsic evidence] must make clear that the missing descriptive
`
`matter is necessarily present in the thing described in the reference, and that it would
`
`be so recognized by persons of ordinary skill”). Rather, Petitioner’s expert
`
`explained how a garment could be designed to reach just beneath the breast area
`
`EAST\74293181.2
`
`24
`
`
`
`accounting for different sizes:
`
`Q. BY MR. POLLACK: If you wanted to design a product
`
`that would go up to just beneath the breasts, what would
`
`you do?
`
`A. Probably I would get in some models and find out what
`
`the measurements are and do a fit and sort of do a
`
`technical analysis of what you would need to do and then
`
`also analyze the fabrics to see which types of fabrics
`
`stretch better. And some of them will stretch more than
`
`others and be -- and be comfortable on different sizes.
`
`Q. Would you use mannequins, as well? Is that something
`
`that's done?
`
`A. Yeah. You have mannequins with -- sometimes they
`
`will have a strap-on pregnant belly or you can actually
`
`have mannequins made to different sizes of the pregnancy.
`
`Q. Okay. And that would be part of the process of
`
`designing a -- maternity pants that went to just under the
`
`breast area?
`
`A. That's right. They would check it on different sizes --
`
`different sizes and different timing of the pregnancy, so
`
`siX months, seven months, eight months, depending on
`
`that.
`
`Harder Dep. 135:2-24 (EX. 2018).
`
`Moreover, Petitioner’s expert testified that the JCP-A pants were “too big for
`
`EAST\74293181.2
`
`25
`
`
`
`the mannequin”:
`
`Q. And you're saying these are loose around the crotch?
`
`A. They look loose.
`
`Q. Is it possible that the reason for that is that the jeans are
`
`falling down a little bit on this mannequin so it's not tight
`
`over the crotch?
`
`MR. LECHLEITER: Objection. Form.
`
`THE WITNESS: I would say t
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