`571-272-7822
`
`Paper 10
`Date: February 19, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`TARGET CORPORATION,
`Petitioner
`
`v.
`
`DESTINATION MATERNITY CORPORATION,
`Patent Owner
`
`Case IPR2013-00532
`Patent RE43,531 E
`
`Before JENNIFER S. BISK, MICHAEL J. FITZPATRICK, and
`MITCHELL G. WEATHERLY, Administrative Patent Judges.
`
`FITZPATRICK, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`Target Corporation Exhibit 1031
`Target v. DMC
`IPR2013-00530, 531, 532, 533
`
`
`
`Case IPR2013-00532
`Patent RE43,531 E
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`I.
`
`INTRODUCTION
`
`Petitioner Target Corporation filed a Corrected Petition for an inter partes
`
`review of claims 1, 2, 5, 6, 10, 11, and 15-17 ofU.S. Patent No. RE43,531 E (the
`
`'"531 patent"). Paper 4 ("Pet."). The Patent Owner, Destination Maternity
`
`Corporation, filed a Preliminary Response pursuant to 35 U.S.C. § 313. Paper 7
`
`("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, 2, 5, 6, 10, 11, and 15-17 of
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`the '531 patent. Accordingly, pursuant to 35 U.S.C. § 314, we authorize an inter
`
`partes review to be instituted as to those claims.
`
`A. Related Proceedings
`
`Patent Owner asserted the '531 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
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`partes review ofthe '531 patent. Claims 1, 18, 19, and 24-29 are the subject of
`
`2
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`Target Corporation Exhibit 1031
`
`
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`Case IPR2013-00532
`Patent RE43,531 E
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`that petition. See IPR2013-00533. Petitioner also filed two petitions for inter
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`partes reviews of related U.S. Patent No. RE43,563 E. See IPR2013-00530;
`
`IPR20 13-00531.
`
`B. The Asserted Grounds
`
`Petitioner presents the following grounds ofunpatentability:
`
`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 Stangle
`(Ex. 1003)3
`Stangle
`
`Stangle and JCP maternity bootcut jeans
`Stangle and Lauren Sara (Ex. 1005)4
`Browder (Ex. 1 004 )5
`
`§ 102
`
`Basis Claims
`challenged
`1, 2, 5, 10,
`and 17
`6 and 11
`
`§ 103
`
`§ 103
`
`15 and 16
`
`§ 102
`
`§ 103
`§ 103
`§ 102
`
`1, 2, 5, 10,
`and 15-17
`6 and 11
`6 and 11
`1
`
`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 U.S. Patent Application Publication US 2004/0049834 AI (Mar. 18, 2004).
`4 Ex. 1005 is an excerpt from expecting style by Lauren Sara (2003).
`5 U.S. Patent 6,276,175 Bl (Aug. 21, 2001).
`
`3
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`Target Corporation Exhibit 1031
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`
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`Case IPR2013-00532
`Patent RE43,531 E
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`C. The '531 Patent
`
`The '531 patent relates to a garment worn during different stages of
`
`pregnancy and different stages of postpartum body changes. Ex. 1018, col. 1,
`11. 10-12. A stated "purpose of the invention is to provide a garment that adapts to
`
`cover and fit a growing abdomen during pregnancy, wherein the garment stays up
`
`when worn." Id. at 11.42-44. Figure 1 of the '531 patent is reproduced below.
`
`"3'"1-
`
`'\'2-A
`;..:.,..---
`
`122
`
`112
`
`11 8
`
`106
`
`104
`
`- 104
`/ /
`
`110
`
`I
`\
`
`--~
`
`114
`
`116
`
`FIG. 1
`
`Figure 1 illustrates a front view of garment 100 in accordance with the
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`claimed invention ofthe '531 patent. Ex. 1018, col. 2, 11.7-8, 11.26-27. The
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`garment has upper portion 102 and lower portion 104 that are joined to one another
`
`approximate the waistline, at first torso encircling circumference 126. Id. at col. 2,
`
`4
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`Target Corporation Exhibit 1031
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`Case IPR2013-00532
`Patent RE43,531 E
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`11. 27-31, col. 2, 1. 66- col. 3, 1. 4. In the embodiment ofFigure 1, the garment
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`lower portion comprises trousers, but other lower portions are contemplated, such
`
`as a skirt, which is indicated by phantom lines. Id. at ll. 31-34.
`
`The garment upper portion includes belly panel 124 that is expansible or
`
`stretchable to cover and fit over the abdomen during different stages of pregnancy.
`
`Id. at col. 2, 11. 59-63. The belly panel includes top perimeter hem 130, which
`
`forms second torso encircling circumference 134. Bottom portion 128 of the belly
`
`panel projects downward in the front. Id. at ll. 63-66. Upper perimeter 108 of the
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`garment lower portion correspondingly recedes downward in the front. !d. at
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`col. 2, 1. 66- col. 3, 1. 4. Thus, the belly panel extends, partially at least, under the
`
`abdomen of the wearer before meeting and joining the garment lower portion. Id.
`
`at col. 3, 11. 6-10.
`
`D. Illustrative Claim
`
`Of the challenged claims 1, 2, 5, 6, 10, 11 , and 15-17, claim 1 is the sole
`
`independent claim. It is illustrative and reproduced as follows:
`
`A garment, comprising:
`1.
`a garment upper portion having a belly panel that is expansible
`to cover and fit over a growing abdomen during different stages of
`pregnancy;
`a garment lower portion having a first torso encircling
`circumference that recedes downward to make way for expansion of
`the belly panel; and
`the garment upper portion having a second torso encircling
`circumference defining an upper edge of the belly panel that encircles
`a wearer's torso just beneath the wearer's breast area configured to
`hold the garment up and in place about the torso in a position of a
`
`5
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`Target Corporation Exhibit 1031
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`Case IPR2013-00532
`Patent RE43,531 E
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`location of maximum girth of the abdomen thereby substantially
`covering the wearer's entire pregnant abdomen during all stages of
`pregnancy.
`
`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. 29. We decline to do so.
`
`First, the claim construction standard used in district court is different than
`
`the broadest reasonable construction standard used here. See, e.g., In re Swanson,
`
`540 F.3d 1368, 1377-78 (Fed. Cir. 2008); SAP Am., Inc. v. Versata Dev. Grp., Inc.,
`
`CBM2012-00001, Paper 70, 7 (PTAB June 11, 2013). Thus, any constructions
`
`6
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`Target Corporation Exhibit 1031
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`Case IPR2013-00532
`Patent RE43,531 E
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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,
`
`we address one limitation of independent claim 1 on which the parties' arguments
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`implicitly are based.
`
`1. just beneath the wearer's breast area
`
`Claim 1 requires that the garment upper portion has "a second torso
`
`encircling circumference defining an upper edge of the belly panel that encircles a
`
`wearer's torso just beneath the wearer's breast area." The Specification does not
`
`identify a location 'just beneath the wearer's breast area" or define "breast area."
`
`In fact, outside of claim 1, the Specification does not mention "breast area" or
`
`"breast."
`
`We give the term "breast area" its ordinary and customary meaning, as read
`
`in light of the Specification. The term "breast area" connotes a broader a meaning
`
`than the word "breast" alone.
`
`7
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`Target Corporation Exhibit 1031
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`Case IPR2013-00532
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`Further, as the Specification acknowledges, wearers have different body
`types. Ex. 1018, col. 3, 11. 17-21. Thus, a garment may satisfy claim 1 for one
`
`wearer but not another because of differences in the wearers' body types.
`
`B. Anticipation by JCP fold-over panel jeans
`
`Petitioner asserts that claims 1, 2, 5, 10, and 17 are anticipated by the JCP
`
`fold-over panel jeans. Pet. 31-34. The JCP fold-over jeans appear on page 15 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
`
`8
`
`Target Corporation Exhibit 1031
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`Case IPR2013-00532
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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
`
`garment portions that are joined to one another proximate the waist. The lower
`
`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 a pregnant model. The garment is said to "stretch for comfort." !d.
`
`1. Claim 1
`
`The JCP fold-over panel jeans includes a garment upper portion, consisting
`
`of the fold-over panel, and a garment lower portion, consisting of the jeans. The
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`fold-over panel appears to be "a belly panel" within the meaning of claim 1. It
`
`stretches and, thus, is "expansible to cover and fit over a growing abdomen during
`
`different stages of pregnancy," as required by the claim. Ex. 1002, 2. The JCP
`
`fold-over panel jeans includes features corresponding to the required first and
`
`second torso encircling circumferences, as shown in one of the photographs, which
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`is reproduced again below, but larger and with annotations.
`
`9
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`Target Corporation Exhibit 1031
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`Case IPR2013-00532
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`1. over-the-belly coverage
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`The photograph includes annotations indicating features corresponding to
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`the first and second torso encircling circumferences required by claim 1. Ex. 1 002,
`
`2. As shown, the jeans and the fold-over panel meet at what has been labeled a
`
`first torso encircling circumference. This first torso encircling circumference
`
`extends along the top of the jeans and recedes downward in the front and, thus, at
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`least partially below the wearer's belly. Id. Consequently, we are satisfied that the
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`jeans have "a first torso encircling circumference that recedes downward to make
`
`way for expansion of the belly panel."
`
`As also shown, an upper edge of the fold-over panel has been labeled a
`
`second torso encircling circumference. Patent Owner argues that the JCP fold-over
`
`panel jeans do not anticipate claim 1 because this upper edge of the fold-over panel
`10
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`Target Corporation Exhibit 1031
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`Case IPR2013-00532
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`does not extend high enough on the wearer's body. In particular, Patent Owner
`
`argues that the fold-over panel (1) does not extend to 'just beneath the wearer's
`
`breast area" and (2) does not "substantially cover[] the wearer's entire pregnant
`
`abdomen." Prelim. Resp. 8. We are not persuaded by Patent Owner's arguments.
`
`In the annotated photograph above, the upper edge of the fold-over panel
`
`extends to just beneath the wearer's breast area. The skin of the model that is
`
`visible above the fold-over panel is part of the breast area, within the broadest
`
`reasonable interpretation of that term. Further, the fold-over panel would extend
`
`even higher on a wearer of a shorter stature.
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`The photograph also shows that the fold-over panel substantially covers the
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`model's entire pregnant abdomen; full coverage is not required by the claim.
`
`Further, and again, the claim is not limited to a wearer of any particular height or
`
`body type. Thus, the fold-over panel would cover even more, and perhaps all, of
`
`another wearer's entire pregnant abdomen if that wearer were shorter and/or gained
`
`less abdominal girth during pregnancy.
`
`On this record, we are persuaded that there is a reasonable likelihood that
`
`Petitioner will prevail in showing anticipation of claim 1 by the JCP fold-over
`
`panel jeans.
`
`2. Claims 2, 5, 10, and 17
`
`Each of claims 2, 5, 10, and 17 depends from claim 1.
`
`Claim 2 requires that "the second torso encircling circumference [at upper
`
`edge of belly panel] is adjustable in girth in conformance with different body
`
`types." Similarly, claim 17 requires that "the second torso encircling
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`11
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`Target Corporation Exhibit 1031
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`circumference comprises stretchable fabric to adjust the girth in conformance with
`
`different body types." The JCP fold-over panel jeans appear to meet these
`
`limitations, as they are made of"[ c ]otton/polyester/spandex" and described and
`
`illustrated as stretchable. Ex. 1002, 2.
`
`Claim 5 requires that "the garment upper portion comprises an elastic fabric
`
`that is contractible elastically to cover an abdomen during different stages of
`postpartum body changes." With respect to claim 5,6 Patent Owner argues that the
`
`panel of the JCP fold-over panel jeans, which stretches, is not "also contractible."
`
`Prelim. Resp. 29. We are not persuaded by this argument. Expansion and
`
`contraction are reciprocal movements. The JCP fold-over panel jeans "stretch for
`
`comfort." Ex. 1002, 2. Thus, they necessarily contract as well.
`
`Claim 10 requires that "the garment upper portion is foldable toward the
`
`garment lower portion to comprise a folded band on the garment lower portion."
`
`The JCP fold-over panel jeans appear to meet this limitation. Its panel is described
`
`and illustrated as foldable, including so as to form a folded band. Ex. 1002, 2.
`
`Although the folded bands shown in the photographs of page 15 of the JCP catalog
`
`do not appear to overlay any portion of the jeans, the claim does not require actual
`
`folding. It is enough that the fold-over panel be "foldable" in such a manner.
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`Based on the present record, the fold-over panel appears to be foldable in
`
`numerous configurations, including one in which a folded band overlays a top
`
`portion of the jeans.
`
`6 Claim 5 is the only dependent claim for which Patent Owner presented a specific
`argument beyond its arguments regarding base claim 1. Prelim. Resp. 29-32.
`
`12
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`Target Corporation Exhibit 1031
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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, 5, 10, and 17 by the JCP
`
`fold-over panel jeans.
`
`C. Obviousness over JCP fold-over panel jeans and JCP maternity bootcut
`Jeans
`
`Petitioner asserts that the subject matter of claims 6 and 11 would have been
`
`obvious over the JCP fold-over panel jeans and JCP maternity bootcut jeans.
`
`Pet. 34-3 7. Claims 6 and 11 depend from claim 1. Claim 6 requires that "the
`
`garment lower portion has a partial waistband extending from side seams of the
`
`garment lower portion and extending across a back side of the garment lower
`
`portion where the partial waistband widens above a wearer's pelvis." Similarly,
`
`claim 11 requires that "the garment lower portion has a partial waistband extending
`
`from side seams of the garment lower portion wherein the partial waistband tapers
`
`toward the side seams and widens above a wearer's pelvis across a back side of the
`
`garment lower portion."
`
`Page 19 of the JCP catalog describes and shows the JCP maternity bootcut
`
`jeans. Ex. 1002, 3. An excerpt of page 19 is reproduced below.
`
`13
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`Target Corporation Exhibit 1031
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`The excerpt depicts a photograph of a portion of the JCP maternity bootcut
`
`jeans. The JCP catalog states that the garment includes "an all-around elastic belly
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`panel that can be folded up or down depending on your stage of pregnancy."
`
`Ex. 1002, 3. In the photograph, however, the all-around belly panel (shown in
`
`black or dark blue) is concealed partially by a white shirt, as Petitioner concedes.
`
`Pet. 34-35. Thus, and despite its name, it is not clear whether it meets claim 1 's
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`requirement of"substantially covering the wearer's entire pregnant abdomen."
`
`Consequently, Petitioner relies on the JCP fold-over jeans for teaching the
`
`limitations of claim 1, and on the JCP maternity bootcut jeans for teaching the
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`partial waistband limitations required by dependent claims 6 and 11. Pet. 36-37.
`
`The JCP maternity bootcut jeans appear to have such a partial waistband (the
`
`uppermost denim and rear portion of the jeans). The partial waistband is widest in
`
`a central part of the back side of the garment and tapers toward the side seams.
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`Petitioner provides reasoning with rational underpinning for substituting the
`
`jeans portion of the JCP fold-over panel jeans with the jeans portion from the JCP
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`14
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`Target Corporation Exhibit 1031
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`maternity bootcut jeans, thereby resulting in the subject matter of claims 6 and 11.
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`Pet. 35-36. In particular, and relying on the declaration testimony of Frances
`
`Harder, Petitioner points out that both products are jeans having attached belly
`
`panels, which could be swapped easily with one another. Id. at 35; Ex. 1011, ~ 25.
`
`On the present record, we are persuaded that swapping panels would have been an
`
`obvious design choice to a person of ordinary skill in the art, and that it was
`
`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
`
`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 yield
`
`predictable results.").
`
`Patent Owner argues that objective indicia, or secondary considerations,
`
`demonstrate non-obviousness. Prelim. Resp. 35--40; see also Graham v. John
`
`Deere Co., 383 U.S. 1, 17-18 (1966) ("Such secondary considerations as
`
`commercial success, long felt but unsolved needs, failure of others, etc., might be
`
`utilized to give light to the circumstances surrounding the origin of the subject
`
`matter sought to be patented. As indicia of obviousness or nonobviousness, these
`
`inquiries may have relevancy."). In particular, Patent Owner states that "publicly
`
`available reviews for Patent Owner's Secret Fit Belly® line of maternity bottoms
`
`call out claimed features of Patent Owner's Secret Fit Belly® garments, show
`
`praise for the invention 's claimed features, and explain its commercial success."
`
`Prelim. Resp. 36 (emphasis added).
`
`Patent Owner reproduces the relied-upon reviews but does not direct us to
`
`evidence of commercial success, such as sales, let alone "proof that [any such]
`
`15
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`Target Corporation Exhibit 1031
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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
`
`respect to the alleged industry praise, Patent Owner has not linked the praise to the
`inventions of dependent claims 6 and 11, as opposed to independent claim 1. 7 See
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`Geo. M Martin Co. v. Alliance Mach. Sys. Int'l LLC, 618 F.3d 1294, 1305 (Fed.
`
`Cir. 2010) ("Industry praise must also be linked to the patented invention."). For at
`
`least these reasons, Patent Owner's arguments regarding evidence of secondary
`
`considerations are not persuasive.
`
`On this record, we are persuaded that there is a reasonable likelihood that
`
`Petitioner will prevail in showing unpatentability of claims 6 and 11 as obvious
`
`over the JCP fold-over panel jeans and JCP maternity bootcut jeans.
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`D. Obviousness over JCP fold-over panel jeans and Stangle
`
`Petitioner asserts that the subject matter of claims 15 and 16 would have
`
`been obvious over the JCP fold-over panel jeans and Stangle. Pet. 38--41. Claims
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`15 and 16 depend from claim 1. Claim 15 requires that "an edge margin of the
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`garment upper portion is folded over and knitted to an inside of the fabric to
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`provide a perimeter hem stitch." Similarly, claim 16 requires that "an edge margin
`
`of the garment upper portion is folded over and sewn or knitted to an inside of the
`
`7 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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`16
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`Target Corporation Exhibit 1031
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`fabric to provide a perimeter hem stitch." (Emphasis added to call out distinction
`
`with claim 15).
`
`Stangle discloses "a garment that enables the wearing of clothing that is
`
`otherwise too small to be zipped, buttoned snapped or otherwise fastened, such as
`
`during pregnancy or with respect to an overweight wearer or other wearer whose
`
`body proportions have changed." Ex. 1 003, ~ 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. Id. at~ 0029. As Petitioner points out, an upper portion (as well as
`
`a lower portion) of the tubular sleeve is folded over and can be attached to the
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`inside surface of the sleeve by either stitching or by being woven integrally (i.e.,
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`knitted). Pet. 39 (citing Ex. 1003, ~~ 0030-0031).
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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 relied-upon teachings of Stangle, thereby
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`resulting in the subject matter of claims 15 and 16. Pet. 40. In particular,
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`Petitioner offers testimony from Ms. Harder that a person of ordinary skill in the
`
`art would have understood that the folded over and stitched or knitted hem taught
`
`by Stangle could be employed on the upper edge of the belly panel of the JCP fold(cid:173)
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`over panel jeans, because both references relate to maternity clothing and because
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`wearers desire comfortable maternity clothing with durable edges that stay on their
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`bodies. Ex. 1011, ~ 37. Further, the proposed modifications do no more than yield
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`predictable 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
`
`evidence of commercial success such as sales data. Second, Patent Owner has not
`
`17
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`Target Corporation Exhibit 1031
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`linked the alleged industry praise to the inventions of dependent claims 15 and 16,
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`as opposed to 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 15 and 16 would
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`have been obvious over the JCP fold-over panel jeans and Stangle.
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`E. Anticipation by Stangle
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`Petitioner asserts that claims 1, 2, 5, 10, and 15-17 are anticipated by
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`Stangle. Pet. 41--46. As discussed above, Stangle discloses a tubular sleeve that is
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`worn around the waistline and over the unfastened fly of the clothing to enable the
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`wearing of clothing that is otherwise too small to be fastened, such as during
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`pregnancy. Ex. 1003, ~~ 0007,0029. Figures 5 and 6 of Stangle are reproduced
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`below.
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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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`Ft (1- , ID
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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
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`degrees, to the inside and stowed out of view and against the wearer's body. Id. at
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`~~ 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 extend to 'just beneath the wearer's breast area," as
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`required by claim 1. Prelim. Resp. 6. Petitioner relies on a disclosure that
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`sleeve 10 could be up to ten inches in height, which it asserts is sufficient to cover
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`substantially the belly region. Pet. 22 (citing Ex. 1003, ~~ 0032, 0035). However,
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`sleeve 10 is a different embodiment than the moveable sleeve 40 embodiment,
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`which Petitioner asserts anticipates. Unlike moveable sleeve 40, sleeve 10 is a
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`distinct accessory worn completely on the outside of the pants. See Ex. 1003,
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`~ 0035, Fig. 6, ref. 10.
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`Even if the moveable sleeve 40 were also ten inches in height-something
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`Petitioner has not alleged or shown-Petitioner's declaration testimony regarding
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`the sufficiency of ten inches still would not be persuasive. Ms. Harder opines that
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`ten inches of garment height is sufficient to cover "from just below the belly to just
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`below the breast area." Ex. 1011, ~ 31. However, in the moveable sleeve
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`embodiment of Stangle, the starting point is well below the waist, as the affixed
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`end extends downward from the waist. See Ex. 1 003, Fig. 1 0.
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`As also argued by Patent Owner, Petitioner has not shown that Stangle
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`discloses "a garment lower portion having a first torso encircling circumference
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`that recedes downward to make way for expansion of the belly panel," as required
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`by claim 1. Prelim. Resp. 17. Stangle does not describe expressly this feature, but
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`Petitioner attempts to show that Stangle Figure 8 illustrates it. Pet. 42 (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 recedes
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`downward. Ex. 1 003, ~ 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, 5, 10, and 15-17, which depend
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`from claim 1.
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`F. Obviousness over Stangle and other art
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`Petitioner asserts that the subject matter of claims 6 and 11 would have been
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`obvious over Stangle and the JCP maternity bootcut jeans and over Stangle and
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`Lauren Sara. Pet. 46-52. Claims 6 and 11 depend from claim 1, and Petitioner's
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`obviousness assertions are premised on Stangle anticipating claim 1. Id. 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 6 and 11 as obvious
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`over Stangle in view of the JCP maternity bootcut jeans or Lauren Sara.
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`G. Anticipation by Browder
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`Petitioner asserts that claim 1 is anticipated by Browder. Pet. 52-53.
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`Browder discloses control undergarments. Ex. 1004, col. 1, ll. 7-16. Figure 3 is
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`reproduced below.
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`I I
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`FIG. J
`Figure 3 illustrates a front view ofhigh-waist brief30. Ex. 1004, col. 2,
`11. 40-41. The brief includes control area 35 that extends, upward from crotch
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`portion 38, "over the abdomen and ends below the wearer's breasts." Id. at col. 3,
`11. 55-64. The control area stretches. Id. at col. 3, 11. 39--46. But, Browder does
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`not disclose that the control area substantially covers "the wearer's entire pregnant
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`abdomen during all stages of pregnancy," as required by claim 1. Indeed,
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`Petitioner does not allege that control area 35 of the asserted embodiment of
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`Figure 3 meets this limitation. Instead, to meet this limitation, Petitioner relies on
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`a teaching regarding a different embodiment, which, unlike high-waist brief 30, is
`described as a maternity brief. Pet. 53 (citing Ex. 1004, col. 4, 11. 50-59). That
`teaching, however, concerns a different embodiment. Ex. 1004, col. 4, 11. 50-59,
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`Fig. 11. Accordingly, we are not persuaded that Browder discloses all limitations
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`of claim 1 as arranged in the claim. See Net Money IN, Inc. v. VeriSign, Inc., 545
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`F .3d 1359, 1369 (Fed. Cir. 2008) ("Because the hallmark of anticipation is prior
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`invention, the prior art reference-in order to anticipate under 35 U.S. C. § 102-
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`must not only disclose all elements of the claim within the four comers of the
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`document, but must also disclose those elements arranged as in the claim."
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`(quotation marks and citation omitted)).
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`There is not a reasonable likelihood that Petitioner will prevail in showing
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`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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`prev