`571-272-7822
`
`Paper 10
`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 IPR2013-00531
`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 1029
`Target v. DMC
`IPR2013-00530, 531, 532, 533
`
`
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`Case IPR2013-00531
`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, 10-14, 16, 20, and 21 of U.S. Patent No. RE43,563 E (the
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`'"563 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.
`
`§ 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
`
`that Petitioner will prevail with respect to claims 1, 10-14, 16, and 20 of the '563
`
`patent. Accordingly, pursuant to 35 U.S.C. § 314, we authorize an inter partes
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`review to be instituted as to those claims, but not as to claim 21.
`
`A. Related Proceedings
`
`Patent Owner asserted the '563 patent against Petitioner in a pending lawsuit
`
`titled: Destination Maternity Corporation v. Target Corporation et al., Case No.
`
`2: 12-cv-05680-AB (E.D. Pa.). Pet. 1; Patent Owner Mandatory Notices 2
`
`(Paper 6). Petitioner contemporaneously filed another petition for a separate inter
`
`partes review ofthe '563 patent. Claims 1--4 and 6-8 are the subject of that
`
`2
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`Target Corporation Exhibit 1029
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`Case IPR2013-00531
`Patent RE43,563 E
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`petition. See IPR2013-00530. Petitioner also filed two petitions for inter partes
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`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:
`
`§ 102
`
`Basis Claims
`challenged
`1, 10, 11, 16,
`20,21
`11 and 14
`
`§ 103
`
`§ 103
`
`12 and 13
`
`§ 103
`
`12
`
`§ 103
`
`20
`
`§ 102
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`1 ' 1 0-13' 16'
`20, and 21
`14
`13 and 14
`
`References
`
`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 and Lauren
`Sara (Ex. 1005)3
`JCP fold-over panel jeans and Stangle
`(Ex. 1003)4
`JCP fold-over panel jeans and Browder
`(Ex. 1004)5
`Stangle
`
`Stangle and JCP maternity bootcut jeans
`Stangle and Lauren Sara
`
`§ 103
`§ 103
`
`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).
`
`3
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`Target Corporation Exhibit 1029
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`Stangle and Browder
`Browder
`
`§ 103
`§ 102
`
`20
`1 and 20
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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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`110
`
`FIG. 1
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`4
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`Target Corporation Exhibit 1029
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`Figure 1 illustrates a front view of garment 100 in accordance with the
`claimed invention ofthe '563 patent. Ex. 1001, col. 2, ll. 16-17, ll. 35-36. The
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`garment has upper portion 102 and lower portion 104 that are joined to one another
`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, 10-14, 16, 20, and 21, claim 1 is the sole
`
`independent claim. It is illustrative and reproduced as follows:
`
`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
`
`5
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`Target Corporation Exhibit 1029
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`Case IPR2013-00531
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`a lower edge portion spaced from the upper edge portion
`and defining a second encircling circumference about the
`wearer's lower abdomen region; and
`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.
`
`II.
`
`ANALYSIS
`
`A. Claim Construction
`
`In an inter partes review, "[a] claim in an unexpired patent shall be given its
`
`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
`
`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. 28. 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.,
`
`6
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`Target Corporation Exhibit 1029
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`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
`
`here.
`
`Second, Petitioner has not identified any construction implicit in the
`
`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,
`
`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
`
`adopting them here is not sufficient.
`
`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.
`
`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 1029
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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.
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`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
`
`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.
`
`3. a partial waistband extending across a back side of the lower edge portion
`and extending down into side seams
`
`Dependent claim 14 requires that "the belly panel further comprises a partial
`
`waistband extending across a back side of the lower edge portion and extending
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`down into side seams of an article of clothing connected thereto." We give this
`
`term its ordinary and customary meaning. However, we believe reference to an
`
`8
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`Target Corporation Exhibit 1029
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`embodiment of the '563 patent that includes this limitation is helpful to
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`understanding the term.
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`The Specification discloses a partial waistband in conjunction with an
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`embodiment of Figure 2, which is reproduced below.
`
`FIG . 2
`
`Figure 2 of the '563 patent illustrates a rear view of the same garment that is
`
`illustrated in Figure 1. The Specification states that partial waistband 208 extends
`
`across the back side of the trousers (lower portion 104) above perimeter seam 202
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`and from left side seam 110 to right side seam 112. Ex. 1001, col. 2, ll. 5 8-63. It
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`further states that the partial waistband tapers as it extends toward the side seams.
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`Id. at ll. 63-64. This is consistent with Figure 2, which illustrates partial
`
`9
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`Target Corporation Exhibit 1029
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`waistband 208 as having a top edge that extends downward as it extends toward,
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`and ultimately into, side seams 11 0, 112.
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`4. shaped and formed as a hyperboloid cylinder
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`Dependent claim 20 requires that "the belly panel defines a tubular structure
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`that is shaped and formed as a hyperboloid cylinder to fit a body type having a
`
`tapered torso." The Specification does not define hyperboloid cylinder. However,
`
`it does state: "In FIGS. 1 and 2, the tubular structure is shaped and formed as
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`a ... hyperboloid cylinder to fit a body type having a tapered torso that tapers
`
`approximately from shoulder to waist." Ex. 1001, col. 4, ll. 1-4. Figures 1 and 2
`
`illustrate a belly panel (upper portion 102) as having an hourglass shape.
`
`Petitioner agrees that a hyperboloid cylinder is hourglass-shaped. Pet. 33. Thus,
`
`consistent with the Specification, we construe "hyperboloid cylinder" as an
`
`hourglass-shaped cylinder.
`
`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 belly panel's residual shape.
`
`A belly panel that is not formed as a hyperboloid cylinder does not meet the
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`limitation regardless of whether it can be stretched, constricted, or otherwise
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`manipulated into a hyperboloid cylinder.
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`5. shaped and formed as straight-sided cylinder
`
`Dependent claim 21 requires that "the belly panel defines a tubular structure
`
`that is shaped and formed as straight-sided cylinder to fit a body type having a
`
`correspondingly shaped torso." The required straight-sided cylinder shape is given
`10
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`Target Corporation Exhibit 1029
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`its ordinary and customary meaning. Further, as with claim 20, the required shape
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`of claim 21 refers to the belly panel's residual shape. A belly panel that is not
`
`formed as a straight-sided cylinder does not meet the limitation regardless of
`
`whether it can be stretched, constricted, or otherwise manipulated into a straight(cid:173)
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`sided cylinder.
`
`B. Anticipation by JCP fold-over panel jeans
`
`Petitioner asserts that claims 1, 10, 11, 16, 20, and 21 are anticipated by the
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`JCP fold-over panel jeans. Pet. 30-34. The JCP fold-over jeans appear on page 15
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`of the JCP catalog. Ex. 1002, 2. An excerpt of page 15 is reproduced below.
`
`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
`
`11
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`Target Corporation Exhibit 1029
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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
`
`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
`
`of the model. The garment is said to "stretch for comfort." Id.
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`1. Claim 1
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`Based on the present record, the fold-over panel is "an expansible belly
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`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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`12
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`Target Corporation Exhibit 1029
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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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`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 are illustrated as
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`receding downward in the front and, thus, at least partially below the wearer's
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`belly. Ex. 1002, 2. Consequently, we are satisfied that the top of the jeans has "a
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`torso encircling circumference that recedes downward to make way for expansion
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`of the belly panel."
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`13
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`Target Corporation Exhibit 1029
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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
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`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
`
`wearer's breast area." The second argument is not persuasive; the photograph
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`discussed above shows that the upper edge portion of the JCP fold-over panel
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`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 10, 11, 16, 20, and 21
`
`Each of claims 1 0, 11 , 16, 20, and 21 depends from claim 1.
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`Claim 10 requires that "the belly panel is foldable to comprise a folded
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`band." The panel of the JCP fold-over panel jeans is described and illustrated as
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`foldable. Ex. 1002, 2.
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`Claim 11 requires that "the belly panel is woven or knitted with elastic,
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`stretchable strands." The JCP fold-over panel jeans are made of
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`"[ c ]otton/polyester/spandex" and described and illustrated as stretchable.
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`Ex. 1002, 2.
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`14
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`Target Corporation Exhibit 1029
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`Claim 16 requires that "the lower edge portion is configured to extend
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`downward with a parabolic shape to accommodate the wearer's expanding belly
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`region." The top of the JCP fold-over panel jeans are illustrated as receding
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`downward in the front with a parabolic shape, thus, accommodating the wearer's
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`expanded belly. Ex. 1002, 2.
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`Claim 20 requires that "the belly panel defines a tubular structure that is
`
`shaped and formed as a hyperboloid cylinder." Claim 21 requires that "the belly
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`panel defines a tubular structure that is shaped and formed as straight -sided
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`cylinder." The panel of the JCP fold-over panel jeans is not shown or described as
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`being a hyperboloid or straight-sided cylinder. It is shown being worn by a model
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`in a shape that is wider in its midsection than at its upper or lower ends.
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`Nonetheless, Petitioner asserts that the stretchable panel can contract to take an
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`hourglass or straight -sided cylinder shape when worn by a wearer having a
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`corresponding body shape. Pet. 33. We are not persuaded by this argument, as it
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`is not commensurate with the scope of the claims as construed above. In each
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`instance, the claim requires that the tubular structure of the belly panel be "shaped
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`and formed'' in the required 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
`claims 10, 11, and 16 but not claims 20 and 21.6
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`6 Claim 21 is the only dependent claim for which Patent Owner presented a
`specific argument beyond its arguments regarding base claim 1. Prelim. Resp. 25-
`27.
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`15
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`Target Corporation Exhibit 1029
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`C. Obviousness over JCP fold-over panel jeans and JCP maternity boot cut
`Jeans
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`Petitioner asserts that the subject matter of claim 14 would have been
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`obvious over the JCP fold-over panel jeans and JCP maternity bootcut jeans.
`Pet. 34-37.7 Claim 14 depends from claim 1 and additionally requires that "the
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`belly panel further comprises a partial waistband extending across a back side of
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`the lower edge portion and extending down into side seams of an article of clothing
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`connected thereto."
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`Page 19 of the JCP catalog describes and shows the JCP maternity bootcut
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`jeans. Ex. 1002, 3. An excerpt of page 19 is reproduced below.
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`7 Petitioner asserts that the subject matter of claim 11 also would have been
`obvious over the asserted references. Pet. 34. However, we deny this ground as to
`claim 11, because it is redundant ofPetitioner's ground that claim 11 is anticipated
`by the JCP fold-over panel jeans.
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`16
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`Target Corporation Exhibit 1029
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`The photo excerpt depicts a photograph of a portion of the JCP maternity
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`bootcut jeans. The JCP catalog states that the garment includes "an all-around
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`elastic belly panel that can be folded up or down depending on your stage of
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`pregnancy." Ex. 1002, 3. In the photograph, however, the all-around belly panel
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`(shown in black or dark blue) is concealed partially by a white shirt, as Petitioner
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`concedes. Pet. 34. Thus, and despite its name, it is not clear whether it is "adapted
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`to substantially cover a wearer's entire belly region," as required by base claim 1.
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`Consequently, Petitioner relies on the JCP fold-over jeans for teaching the
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`limitations of claim 1, and on the JCP maternity bootcut jeans for teaching the
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`partial waistband limitation required by dependent claim 14. Pet. 36.
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`The JCP maternity bootcut jeans appear to have such a partial waistband (the
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`uppermost denim and rear portion of the jeans). An upper edge of the partial
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`waistband tapers down toward the sides seams.
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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 claim 14.
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`Pet. 34-36. In particular, and relying on the declaration testimony of Frances
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`Harder, Petitioner points out that both products are jeans having attached belly
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`panels, which could be swapped easily with one another. Pet. 35; Ex. 1011, ~ 25.
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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. Pet. 35; Ex. 1011, ~ 25. Further, the swapping of the panels
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`and jeans does no more than yield predictable results. See KSR Int 'l Co. v. Telejlex
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`Inc., 550 U.S. 398, 416 (2007) ("The combination of familiar elements according
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`17
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`to known methods is likely to be obvious when it does no more than yield
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`predictable results.").
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`Patent Owner argues that objective indicia, or secondary considerations,
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`demonstrate non-obviousness. Prelim. Resp. 30-35; 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 31 (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
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`invention of dependent claim 14, as opposed to independent claim 1.8 See Geo. M
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`Martin Co. v. Alliance Mach. Sys. Int'l LLC, 618 F.3d 1294, 1305 (Fed. Cir. 2010)
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`("Industry praise must also be linked to the patented invention."). For at least
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`these reasons, Patent Owner's arguments regarding evidence of secondary
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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 claim 14 as obvious over the
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`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 claims 12 and 13 would have
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`been obvious over the JCP fold-over panel jeans and Lauren Sara. Pet. 37-39.
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`Claims 12 and 13 depend from claim 1. Claim 12 additionally requires that
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`"a top edge margin of the belly panel is folded over and sewn or knitted to an
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`inside of the belly panel fabric." Claim 13 additionally requires that "the belly
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`panel comprises a double layer tubular structure." Petitioner asserts that Lauren
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`Sara teaches these additional limitations. Lauren Sara discloses step-by-step
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`instructions for "how to transform your favorite jeans into a maternity pair."
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`Ex. 1005, 4-5. Lauren Sara generally instructs to remove a top portion of jeans,
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`8 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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`create a home-made belly panel, and attach the panel to the inside upper edge of
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`the modified jeans. Id. at 5.
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`The belly panel is made from 2 pieces of fabric. Ex. 1005, 5. First, a 7-inch
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`band ofLycra® fabric is sewn end-to-end to create a 7-inch tall Lycra tube, the
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`circumference of which will depend on body size. Id. Second, a 3-inch band of
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`elastic fabric is sewn end-to-end to create a 3-inch tall elastic tube having the same
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`circumference as the Lycra tube. Id. A bottom edge of the Lycra tube is sewn to
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`the inside upper edge of the modified jeans. !d. The elastic tube is placed inside
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`the Lycra tube, and the Lycra tube is folded inward and downward over the elastic
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`tube, forming a triple-layered belly panel. Id. The folded down edge of the Lycra
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`tube (formerly the top edge) is then sewn to the inside upper edge of the modified
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`jeans. Id. Lauren Sara does not specify whether the folded down edge of the
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`Lycra tube is sewn directly to an inside surface of the jeans or whether it is first
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`sewn to a surface of the Lycra tube.
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`It is unclear whether Lauren Sara meets claim 12' s requirement that "a top
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`edge margin of the belly panel is folded over and sewn or knitted to an inside of
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`the belly panel fabric" (emphasis added). However, Petitioner also relies on
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`evidence regarding the level of ordinary skill in the art to support this ground, as
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`attested to by Ms. Harder. Pet. 37 (citing Ex. 1011, ~~ 27, 35). In particular, Ms.
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`Harder testifies that a person of ordinary skill in the art "would have understood
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`that belly panels could include a top edge of the belly panel folded over and sewn
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`to or knitted back to an inside of the belly panel fabric, because, for example,
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`hemlines were well-known and desired functional or fashionable elements that
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`may be applied to clothing." Ex. 1011 , ~ 35.
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`With respect to claim 13, Lauren Sara appears to meet the requirement of a
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`belly panel that "comprises a double layer tubular structure." That limitation is
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`open-ended and inclusive of a triple layer structure.
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`Petitioner provides reasoning with rational underpinning for modifying the
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`JCP fold-over panel jeans in view of the known use of hemlines, thereby resulting
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`in the subject matter of claim 12, and in view of Lauren Sara's teaching of a triple(cid:173)
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`layered belly panel, thereby resulting in the subject matter of claim 13. Pet. 38.
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`With respect to claim 12, Petitioner points out that hemlines were well(cid:173)
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`known, asserts that they were desired by wearers, and concludes that it would have
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`been obvious to employ them in the JCP fold-over panel jeans. Pet. 37; Ex. 1011,
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`~~ 27, 35. With respect to claim 13, Petitioner points out that both the JCP fold(cid:173)
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`over jeans and Lauren Sara relate to maternity jeans, asserts that wearers of such
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`clothing desired value and comfort in their clothing, and concludes that it would
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`have been obvious to use the folded over belly panel construction disclosed in
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`Lauren Sara at the height used in the JCP fold-over panel jeans. Pet. 38; Ex. 1011,
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`~ 33. Further, the proposed modifications do no more than yield predictable
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`results. See KSR, 550 U.S. at 416.
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`Patent Owner's purported evidence of secondary considerations is not
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`persuasive. First, as discussed above, Patent Owner does not direct us to actual
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`evidence of commercial success such as sales data. Second, Patent Owner has not
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`linked the alleged praise to the inventions of dependent claims 12 and 13, as
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`opposed to the invention of independent claim 1.
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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 that the subject matter of claims 12 and 13 would
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`have been obvious over the JCP fold-over panel jeans and Lauren Sara.
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`E. Obviousness over JCP fold-over panel jeans and Stangle
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`Petitioner asserts that the subject matter of claim 12 would have been
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`obvious over the JCP fold-over panel jeans and Stangle. Pet. 39--42. This ground
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`is denied as redundant, because trial is being instituted for the same claim on the
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`ground that it is unpatentable as obvious over the JCP fold-over panel jeans and
`Lauren Sara.9 See 37 C.P.R.§ 42.108(a).
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`F. Anticipation by Stangle
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`Petitioner asserts that claims 1, 10-13, 16, 20, and 21 are anticipated by
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`Stangle. Pet. 44--49. Stangle discloses "a garment that enables the wearing of
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`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
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`other wearer whose body proportions have changed." Ex. 1 003, ~ 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. !d. at ~ 0029. Figures 5 and 6 of
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`Stangle are reproduced below.
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`9 As discussed above, Lauren Sara is not critical to instituting trial on this ground.
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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. 23, 45--4 7. Figure 10 is
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`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