`571-272-7822
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`Paper 13
`Date: February 14, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`TARGET CORPORATION,
`Petitioner
`
`v.
`
`DESTINATION MATERNITY CORPORATION,
`Patent Owner
`
`Case IPR2013-00530
`Patent RE43,563 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
`
`Target Corporation Exhibit 1027
`Target v. DMC
`IPR2013-00530, 531, 532, 533
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`
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`Case IPR2013-00530
`Patent RE43,563 E
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`I.
`
`INTRODUCTION
`
`Petitioner Target Corporation filed a Corrected Petition for an inter partes
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`review of claims 1--4 and 6-8 of U.S. Patent No. RE43,563 E (the '"563 patent").
`
`Paper 5 ("Pet."). The Patent Owner, Destination Maternity Corporation, filed a
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`Preliminary Response pursuant to 35 U.S.C. § 313. Paper 10 ("Prelim. Resp.").
`
`We have jurisdiction under 35 U.S. C. § 314.
`
`The standard for instituting an inter partes review is set forth in 35 U.S. C.
`
`§ 314( a), which provides as follows:
`
`THRESHOLD-The Director may not authorize an inter partes
`review to be instituted unless the Director determines that the
`information presented in the petition filed under section 311 and any
`response filed under section 313 shows that there is a reasonable
`likelihood that the petitioner would prevail with respect to at least 1 of
`the claims challenged in the petition.
`
`Upon consideration of the Petition and the Preliminary Response, we
`
`determine that the information presented shows there is a reasonable likelihood
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`that Petitioner will prevail with respect to claims 1--4 and 6-8 of the '563 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.
`
`A. Related Proceedings
`Patent Owner asserted the '563 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 7). Petitioner contemporaneously filed another petition for a separate inter
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`partes review ofthe '563 patent. Claims 1, 10-14, 16, 20, and 21 are the subject
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`2
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`Target Corporation Exhibit 1027
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`Case IPR2013-00530
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`of that petition. See IPR20 13-00531. Petitioner also filed two petitions for inter
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`partes reviews of related U.S. Patent No. RE43,531 E. See IPR2013-00532;
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`IPR2013-00533.
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`B. The Asserted Grounds
`Petitioner presents the following grounds ofunpatentability:
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`References
`
`Basis Claims
`challenged
`1-3 and 6-8
`3 and4
`
`§ 102
`§ 103
`
`JCP fold-over panel jeans (Ex. 1002, 2) 1
`JCP fold-over panel jeans and JCP
`maternity bootcut jeans (Ex. 1002, 3)2
`JCP fold-over panel jeans, JCP maternity § 103
`bootcut jeans, and Lauren Sara
`(Ex. 1005)3
`Stangle (Ex. 1 003)4
`§ 102
`§ 103
`Stangle and JCP maternity bootcut jeans
`Stangle, JCP maternity bootcut jeans, and § 103
`Lauren Sara
`Browder (Ex. 1 004 )5
`
`3 and4
`
`1, 2, and 6-8
`3 and4
`3 and4
`
`1
`
`§ 102
`
`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(cid:173)
`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 Ex. 1005 is an excerpt from expecting style by Lauren Sara (2003).
`4 U.S. Patent Application Publication US 2004/0049834 AI (Mar. 18, 2004).
`5 U.S. Patent 6,276,175 Bl (Aug. 21, 2001).
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`3
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`Target Corporation Exhibit 1027
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`C. The '563 Patent
`The '563 patent relates to a garment worn during different stages of
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`pregnancy and different stages of postpartum body changes. Ex. 1001, col. 1,
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`11. 18-20. 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 11. 51-53. Figure 1 of the '563 patent is reproduced below.
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`122
`
`- 104
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`/
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`110
`
`FIG. 1
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`Figure 1 illustrates a front view of garment 100 in accordance with the
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`claimed invention ofthe '563 patent. Ex. 1001, col. 2, 11. 16-17, 11. 35-36. The
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`garment has upper portion 102 and lower portion 104 that are joined to one another
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`4
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`Target Corporation Exhibit 1027
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`approximate the waistline. Id. at 11. 36--40. In the embodiment of Figure 1, the
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`garment lower portion comprises trousers, but other lower portions are
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`contemplated, such as a skirt, which is indicated by phantom lines. !d. at ll. 40--43.
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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.
`
`Id. at col. 3, ll. 1-5. Bottom portion 128 of the belly panel projects downward in
`the front. !d. at 11. 5-7. Upper perimeter 108 of the garment lower portion
`correspondingly recedes downward in the front. !d. at ll. 8-13. Thus, the belly
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`panel extends, partially at least, under the abdomen of the wearer before meeting
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`and joining the garment lower portion. !d. at ll. 15-20.
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`D. Illustrative Claim
`Of the challenged claims 1-4 and 6-8, claim 1 is the sole independent claim.
`
`It is illustrative and reproduced as follows:
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`A garment portion having an attached belly panel portion
`
`1.
`compnsmg:
`an expansible belly panel adapted to substantially cover a
`wearer's entire belly region, said belly region comprising an area
`beginning just beneath the wearer's breast area and extending over the
`wearer's abdomen to a lower abdomen region beneath the wearer's
`belly, said belly panel comprising:
`an upper edge portion defining a first encircling
`circumference about a wearer's torso that is at or above the
`wearer's upper abdomen region, and
`a lower edge portion spaced from the upper edge portion
`and defining a second encircling circumference about the
`wearer's lower abdomen region; and
`
`5
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`Target Corporation Exhibit 1027
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`Case IPR2013-00530
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`a garment lower portion, in communication with the lower edge
`portion, having a torso encircling circumference that recedes
`downward to make way for expansion of the belly panel.
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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
`
`it appears." 37 C.P.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
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`it would be interpreted by one of ordinary skill in the art. In re Suitco Surface,
`
`Inc., 603 F.3d 1255, 1260 (Fed. Cir. 2010). Thus, we give claim terms their
`
`ordinary and customary meaning. See In re Translogic Tech., Inc., 504 F.3d 1249,
`
`1257 (Fed. Cir. 2007) ("The ordinary and customary meaning is the meaning that
`
`the term would have to a person of ordinary skill in the art in question." (internal
`
`quotation marks omitted)).
`
`The parties do not proffer constructions of any claim terms. However,
`
`Petitioner requests that we review Patent Owner's district court infringement
`
`contentions claim chart (Ex. 1 006), 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
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`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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`6
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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 3 7 C.F .R.
`
`§ 42.1 04(b )(3) (petition must identify how each challenged claim is to be
`
`construed). Although a general statement that a claim should be given its broadest
`
`reasonable interpretation may be sufficient, see Office Patent Trial Practice Guide,
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`77 Fed. Reg. 48,756, 48,764 (Aug. 14, 2012), a request for the Board to search a
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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 address two limitations of independent claim 1 on which the parties' arguments
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`implicitly are based.
`
`1. an expansible belly panel adapted to substantially cover a wearer's entire
`belly region, said belly region comprising an area beginning just beneath
`the wearer's breast area
`Patent Owner argues that claim 1 requires the belly panel to extend to "an
`
`area beginning just beneath the wearer's breast area." Prelim. Resp. 8. However,
`
`it is the belly region, and not the belly panel, that the claim recites as "beginning
`just beneath the wearer's breast area." Ex. 1001, col. 5, 11. 35-37. The belly panel
`
`merely is required to be "adapted to substantially cover a wearer's entire belly
`region." Id. at 11. 34-35.
`
`7
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`Target Corporation Exhibit 1027
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`The Specification does not define "belly region" or "breast area." Those
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`terms appear only in the claims. Thus, we give those terms their ordinary and
`
`customary meaning.
`
`Also, the scope of claim 1 is defined, at least partially, in relation to a
`
`wearer. As the Specification notes, wearers have different body types. Ex. 1001,
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`col. 3, 11. 27-31. Thus, a garment may satisfy claim 1 for one wearer but not
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`another because of differences in the wearers' body types.
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`2. an upper edge portion defining a first encircling circumference about a
`wearer's torso that is at or above the wearer's upper abdomen region
`Patent Owner argues that claim 1 requires "an upper edge of the belly panel
`
`that encircles a wearer's torso just beneath the wearer's breast area." Prelim.
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`Resp. 11. However, claim 1 does not require this. Rather, it requires "an upper
`
`edge portion defining a first encircling circumference about a wearer's torso that is
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`at or above the wearer's upper abdomen region" (emphasis added).
`
`The Specification does not define "upper abdomen region." That term
`
`appears only in claim 1. Thus, we give it its ordinary and customary meaning.
`
`B. Anticipation by JCP fold-over panel jeans
`Petitioner asserts that claims 1-3 and 6-8 are anticipated by the JCP fold-
`
`over panel jeans. Pet. 31-34. The JCP fold-over jeans appear on page 15 ofthe JC
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`Penney catalog. Ex. 1002, 2. An excerpt of page 15 is reproduced below.
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`8
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`Target Corporation Exhibit 1027
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`Case IPR2013-00530
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`2999
`
`fold-over panel jeans-
`you decide the fit you want
`• can be worn 3 ways depending
`on your stage of pregnancy
`• clean, flattering front
`• stretch for comfort
`
`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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`9
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`Target Corporation Exhibit 1027
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`the unfolded configuration, the panel appears to cover the entire belly or abdomen
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`of the model. The garment is said to "stretch for comfort." Id.
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`1. Claim 1
`Based on the present record, the fold-over panel is "an expansible belly
`
`panel" within the meaning of the claim. It stretches and, thus, is expansible. It is
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`"adapted to substantially cover a wearer's entire belly region," as shown in one of
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`the photographs, which is reproduced again below, but larger and with annotations.
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`1. over-the-bell covera e
`The photograph includes annotations showing upper and lower edge portions
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`of the fold-over panel. Ex. 1002, 2. As shown, the upper edge portion encircles
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`the wearer's torso "at or above the wearer's abdomen region," and the lower edge
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`10
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`Target Corporation Exhibit 1027
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`portion encircles the torso "about the wearer's lower abdomen region." The lower
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`edge portion of the fold-over panel is attached to jeans, which meet the "garment
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`lower portion" limitation of claim 1. The top of the jeans recedes downward in the
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`front and, thus, at least partially below the wearer's belly. Consequently, we are
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`satisfied that the top of the jeans has "a torso encircling circumference that recedes
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`downward to make way for expansion of the belly panel."
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`Patent Owner argues that the JCP fold-over panel jeans do not anticipate
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`claim 1 because the fold-over panel does not extend high enough on the wearer's
`
`body. In particular, Patent Owner argues that the fold-over panel (1) does not
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`extend to "an area beginning just beneath the wearer's breast area" and (2) does
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`not have "an upper edge portion ... that is at or above the wearer's upper abdomen
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`region." Prelim. Resp. 8. Patent Owner's first argument is misplaced, as claim 1
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`does not require the belly panel to extend to "an area beginning just beneath the
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`wearer's breast area." The second argument is not persuasive; the photograph
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`discussed above clearly shows that the upper edge portion of the JCP fold-over
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`panel encircles the wearer's torso at the wearer's upper abdomen region.
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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 2, 3, and 6-8
`Claim 2 depends from claim 1 and additionally requires "a pair of trousers
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`attached to said lower edge portion." Ex. 1001, col. 5, 11. 51-52. The JCP fold(cid:173)
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`over jeans, as the name suggests, employ a pair of jeans attached to the lower edge
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`portion of the fold-over panel. Ex. 1002, 2. Jeans are a type of trousers.
`11
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`Claim 3 depends from claim 2 and additionally requires that the trousers
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`"comprise denim jeans." The JCP catalog does not describe expressly the fold(cid:173)
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`over panel jeans as being made of denim. Ex. 1002, 2. Petitioner supports its
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`denim argument, in part, with declaration testimony from Frances Harder (Ex.
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`1011, "Harder Decl."). Pet. 33 (citing Ex. 1011, ~ 24.) Ms. Harder opines that a
`
`person of ordinary skill in the art would conclude that the JCP fold-over panel
`jeans are made of denim merely because they are blue and made of cotton. 6
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`Ex. 1011, ~ 24. We do not find the 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 persuasive. In the photographs, the jeans appear to be
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`made of denim. Ex. 1002, 2. In particular, the photograph showing the entire leg
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`portions of the jeans is persuasive. !d.
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`Claim 6-8 depend from claim 1. Claim 6 additionally requires that the
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`"belly panel is adapted to cover the wearer's belly region during different stages of
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`weight gains and losses." Claim 7 additionally requires that the "belly panel is
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`adapted to substantially cover and fit over different body types." Claim 8
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`additionally requires that "the belly panel is elastically expansible and
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`contractible." The JCP fold-over panel jeans meets these limitations because the
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`panel can change size and shape by stretching. Ex. 1002, 2. Indeed, the JCP
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`catalog states that it can be worn before, during, and after pregnancy, as well as
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`during different stages of pregnancy. !d.
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`6 The JCP catalog states that the jeans are made of "Cotton/polyester/spandex."
`Ex. 1002, 2.
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`12
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`Target Corporation Exhibit 1027
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`With respect to claim 8,7 Patent Owner argues that the JCP fold-over panel,
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`which stretches, is not "also contractible." Prelim. Resp. 25. We are not
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`persuaded by this argument. Expansion and contraction are reciprocal movements.
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`The JCP fold-over panel jeans "stretch for comfort." Ex. 1002, 2. Thus, they
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`necessarily contract as well.
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`On this record, we are persuaded that there is a reasonable likelihood that
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`Petitioner will prevail in showing anticipation of claims 2, 3, and 6-8 by the JCP
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`fold-over panel jeans.
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`C. Obviousness over JCP fold-over panel jeans and JCP maternity boot cut
`Jeans
`Petitioner asserts that the subject matter of claims 3 and 4 would have been
`
`obvious over the JCP fold-over panel jeans and JCP maternity bootcut jeans.
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`Pet. 34-37.
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`Page 19 of the JCP catalog describes and shows the maternity bootcut jeans.
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`Ex. 2002, 3. The catalog states that the garment includes a "[f]aux fly" and "an all(cid:173)
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`around elastic belly panel that can be folded up or down depending on your stage
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`of pregnancy." In the photographs, the all-around belly panel is concealed
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`partially by a shirt, as Petitioner concedes. Pet. 35. Thus, and despite its name, it
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`is not clear whether it is "adapted to substantially cover a wearer's entire belly
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`region," as required by base claim 1.
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`7 Claim 8 is the only dependent claim for which Patent Owner presented a specific
`argument beyond its arguments regarding base claim 1. Prelim. Resp. 25-29.
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`13
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`Target Corporation Exhibit 1027
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`Claim 3 depends from claim 2 and additionally requires that the trousers
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`"comprise denim jeans." Claim 4 depends from claim 3 and additionally requires
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`that the "denim jeans comprise one or more pockets and a sewn zipperless fly
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`front." Based on the evidence of record, the JCP maternity bootcut jeans appear to
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`meet these additional limitations. The photographs clearly depict the jeans portion
`of the garment as being denim and having pockets. 8 Ex. 1002, 3. Also, a front fly,
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`which is visible in one photograph, is described as faux. Id. Thus, we are
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`persuaded that it is sewn and 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 3 and 4.
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`Pet. 35-36. In particular, Petitioner points out that both products are jeans having
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`attached belly panels, which could be swapped easily with one another. Pet. 35.
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`On 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. !d. (citing 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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`Telejlex Inc., 550 U.S. 398, 416 (2007) ("The combination of familiar elements
`
`according to known methods is likely to be obvious when it does no more than
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`yield predictable results.").
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`Patent Owner argues that objective indicia, or secondary considerations,
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`8 The photographs of the JCP maternity bootcut jeans better show the denim aspect
`than the photographs of the JCP fold-over design jeans. See Ex. 1002, 2-3.
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`demonstrate non-obviousness. Prelim. Resp. 32-37; 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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`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. at 33 (emphasis added).
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`Patent Owner reproduces the relied-upon reviews but does not direct us to
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`evidence of commercial success, such as sales, let alone "proof that [any such]
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`sales were a direct result of the unique characteristics of the claimed invention-as
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`opposed to other economic and commercial factors unrelated to the quality of the
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`patented subject matter." In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996). With
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`respect to the alleged industry praise, Patent Owner has not linked the praise to the
`invention of dependent claims 3 and 4, as opposed to independent claim 1. 9 See
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`Geo. M Martin Co. v. Alliance Mach. Sys. Int'l LLC, 618 F.3d 1294, 1305 (Fed.
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`Cir. 2010) ("Industry praise must also be linked to the patented invention."). For at
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`least these reasons, Patent Owner's arguments regarding evidence of secondary
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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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`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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`Petitioner will prevail in showing unpatentability of claims 3 and 4 as obvious over
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`the JCP fold-over panel jeans and JCP maternity bootcut jeans.
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`D. Obviousness over JCP fold-over panel jeans, JCP maternity boot cut jeans,
`and Lauren Sara
`Petitioner asserts that the subject matter of claims 3 and 4 would have been
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`obvious over the JCP fold-over panel jeans, JCP maternity bootcut jeans, and
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`Lauren Sara. Pet. 3 7-40. This ground is denied as redundant because trial is being
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`instituted for the same claims on the ground that they are unpatentable as obvious
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`over the JCP fold-over panel jeans and JCP maternity bootcut jeans. See 37 C.P.R.
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`§ 42.108(a).
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`E. Anticipation by Stangle
`Petitioner asserts that claims 1, 2, and 6-8 are anticipated by Stangle.
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`Pet. 40-44. Stangle discloses "a garment that enables the wearing of clothing that
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`is otherwise too small to be zipped, buttoned snapped or otherwise fastened, such
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`as during pregnancy or with respect to an overweight wearer or other wearer whose
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`body proportions have changed." Ex. 1003, ~ 0007. The garment is described as a
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`hollow, tubular sleeve that is worn around the waistline and over the unfastened fly
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`of the clothing. !d. at~ 0029. Figures 5 and 6 of Stangle are reproduced below.
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`16
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`30
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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. !d. at
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`~ 0037. Petitioner asserts that the attached moveable sleeve embodiment,
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`illustrated in Stangle Figure 10, anticipates claim 1. Pet. 24-25, 42--44. Figure 10
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`is reproduced below.
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`Figure 10 illustrates a sectional view of the attached moveable sleeve
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`embodiment of Stangle (with only one leg of the pants being visible). Ex. 1003,
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`~ 0042. The sleeve is shown folded with affixed end 42 inside pant leg 32 and
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`moveable end 44 outside the pant leg. Id. at ~ 0041. The affixed end is affixed to
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`the clothing's inside surface 34 but the moveable end can be folded inside or
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`outside. !d. In Figure 10, the affixed end is folded to the outside, thus, covering
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`the fly of the pants (not shown). Alternatively, when the pants are able to be
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`fastened, the moveable end can be folded, through an angle of approximately 360
`
`degrees, to the inside and stowed out of view and against the wearer's body. Id. at
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`~~ 003 7-0040.
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`Petitioner argues that a third configuration for the moveable end is possible
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`such that it could be folded upward to cover the belly (i.e., through an angle of
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`approximately 180 degrees). Pet. 24-25. However, Stangle does not disclose that
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`configuration, which is not surprising because it would result in an unfastened fly
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`being visible. Even though the configuration may be possible, we are not
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`persuaded that it would anticipate claim 1.
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`As argued by Patent Owner, Petitioner has not shown that the moveable end,
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`even when flipped up, could "substantially cover a wearer's entire belly region," as
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`required by claim 1. Prelim. Resp. 7. Petitioner relies on a disclosure that sleeve
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`10 could be up to ten inches in height, which it asserts is sufficient to cover
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`substantially the entire belly region. Pet. 22 (citing Ex. 1003, ~~ 0032 and 0035).
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`However, sleeve 10 is a different embodiment than the moveable sleeve 40
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`embodiment, which Petitioner asserts anticipates. Unlike moveable sleeve 40,
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`sleeve 10 is a distinct accessory worn completely on the outside of the pants. See
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`Ex. 1003, ~ 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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`that Petitioner has not alleged or shown-Petitioner's declaration testimony
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`regarding the sufficiency of ten inches would still not be persuasive. Ms. Harder
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`opines that ten inches of garment height is sufficient to cover "from just below the
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`belly to just below the breast area." Ex. 1011, ~ 31. However, in the moveable
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`sleeve embodiment of Stangle, the starting point is well below the waist, as the
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`affixed 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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`includes "a garment lower portion ... having a torso encircling circumference that
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`recedes downward to make way for expansion of the belly panel," as required by
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`claim 1." Prelim. Resp. 14. Stangle does not expressly describe 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 2 and 6-8, which depend from
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`claim 1.
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`F. Obviousness over Stangle and other art
`Petitioner asserts that the subject matter of claims 3 and 4 would have been
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`obvious over Stangle and the JCP maternity bootcut jeans, both with and without
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`Lauren Sara. Pet. 44-49. Claims 3 and 4 ultimately depend from claim 1, and
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`Petitioner's assertions are premised on Stangle anticipating claim 1. !d. Thus, for
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`at least reasons already discussed above, there is not a reasonable likelihood that
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`Petitioner will prevail in showing unpatentability of claims 3 and 4 as obvious over
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`Stangle in view of the JCP maternity bootcut jeans, with or without Lauren Sara.
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`G. Anticipation by Browder
`Petitioner asserts that claim 1 is anticipated by Browder. Pet. 49-51.
`Browder discloses control undergarments. Ex. 1004, col. 1, 11. 7-16. Figure 3 is
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`reproduced below.
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`FIG. J
`Figure 3 illustrates a front view of a high-waist brief. Ex. 1004, col. 2, 11.
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`40--41. The brief 30 includes control area 3 5 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,
`11. 55-64. The border between the crotch portion and control area recedes
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`20
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`downward in the front, as shown. Id. at Fig. 3. The control area stretches. Id. at
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`col. 3, ll. 39--46.
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`Based on the present record, the control area is "an expansible belly panel"
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`within the meaning of claim 1. It stretches and is, thus, expansible. It is "adapted
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`to substantially cover a wearer's entire belly region," as required by the claim.
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`Ex. 1004, col. 3, ll. 55-57, Fig. 3.
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`An upper edge portion of the control area encircles the wearer's torso "at or
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`above the wearer's abdomen region," and the lower edge portion encircles the
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`torso "about the wearer's lower abdomen region," as also required by claim 1. The
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`crotch portion meets the "garment lower portion" limitation of claim 1; trousers are
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`not required by the claim. The top of the crotch portion recedes downward in the
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`front and, thus, at least partially below the wearer's belly. Consequently, we are
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`satisfied that the crotch portion has "a torso encircling circumference that recedes
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`downward to make way for expansion of the belly panel."
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`Patent Owner argues that Browder does not anticipate claim 1 because the
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`asserted embodiment of Figure 3 is not a maternity garment. Prelim. Resp. 20.
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`That argument is not persuasive, as claim 1 does not require a maternity garment.
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`Patent Owner also argues that the Browder control area cannot expand.
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`Prelim. Resp. 20. Patent Owner asserts that Browder, therefore, cannot meet the
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`"expansible belly panel" or "garment lower portion ... having a torso encircling
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`circumference that recedes downward to make way for expansion of the belly
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`panel" limitations of claim 1. !d. Patent Owner's argument, however, is not
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`supported factually. Browder states that the control area has a tightened fabric
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`pattern such that it "stretches less and controls more" (than it would if not
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`tightened during manufacture). Ex. 1004, col. 3, 11. 39--41. Thus, it "stretches"
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`some amount, and, therefore, is expandable.
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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 Browder.
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`III. CONCLUSION
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`For the foregoing reasons, we are persuaded that the information presented
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`in the Petition establishes that there is a reasonable likelihood that Petitioner will
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`prevail in showing unpatentability of claims 1--4 and 6-8 of the '563 patent.
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`The Board has not made a final determination on the patentability of the
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`challenged claims.
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`Accordingly, it is
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`IV. ORDER
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`ORDERED that, pursuant to 35 U.S.C. § 314, an inter partes review of the
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`'563 patent is hereby instituted on the following grounds:
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`Claims 1-3 and 6-8 as anticipated by JCP fold-over panel jeans;
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`Claims 3 and 4 as unpatentable as being directed to subject matter that
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`would have been obvious in light of JCP fold-over panel jeans and JCP
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`maternity bootcut jeans; and
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`Claim 1 as anticipated by Browder.
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`FURTHER ORDERED that no other ground ofunpatentability alleged in
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`the Petition for any claim is authorized for this inter partes review;
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`FURTHER ORDERED that pursuant to 35 U.S. C. § 314(d) and 37 C.P.R.
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`§ 42.4, notice is hereby given of the institution of a trial; the trial commences on
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`the entry date of this decision; and
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`FURTHER ORDERED that an initial conference call with the Board is
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`scheduled for 1:00PM ET on March 13,2014. The parties are directed to the
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`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,765-66 (Aug. 14,
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`2012), for guidance in preparing for the initial conference call, and should be
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`prepared to discuss a