UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`TARGET CORPORATION
`
`Petitioner
`
`V.
`
`DESTINATION MATERNITY CORPORATION
`
`Patent Owner
`
`Patent RE43,531
`
`Case No. IPR 2013-00530
`
`Case No. IPR 2013-00531
`
`Patent RE43,653
`
`Case No. IPR 2013-00532
`
`Case No. IPR 2013-00533
`
`
`
`Date: May 5, 2014
`
`Declaration of David Brookstein, Sc.D.
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`TARGET CORPORATION
`
`Petitioner
`
`V.
`
`DESTINATION MATERNITY CORPORATION
`
`Patent Owner
`
`Patent RE43,531
`
`Case No. IPR 2013-00530
`
`Case No. IPR 2013-00531
`
`Patent RE43,653
`
`Case No. IPR 2013-00532
`
`Case No. IPR 2013-00533
`
`
`
`Date: May 5, 2014
`
`Declaration of David Brookstein, Sc.D.
`
`
`
`
`
`1, David Brookstein, Sc.D., declare as follows:
`
`1.
`
`I have been retained by counsel
`
`for
`
`the Patent Owner, Destination
`
`Maternity Corporation, to offer technical opinions with respect to US.
`
`Patent No. RE43,531 E (“the ‘531 patent”) and US. Patent No. RE43,563
`
`E (“the ‘563 patent”), and prior art references cited in the Inter Partes
`
`Review proceedings for the ‘531 patent and the ‘563 patent.
`
`2.
`
`I was awarded a Bachelor of Textile Engineering from the Georgia
`
`Institute of Technology (“Georgia Tech”) in 1971, a Master of Science in
`
`Textile Technology from the Massachusetts Institute of Technology
`
`(“IVHT”) in 1973, and a Doctor of Science in the field of mechanical
`
`engineering from MIT in 1976. My current curriculum vita is attached
`
`hereto as Exhibit 1.
`
`3. I was a professor of Textile Engineering at Georgia Tech from 1975 -1980.
`
`I was Associate Director of Albany International Research Co. (formerly
`
`Fabric Research Laboratories) from 1980—1994.
`
`I was Dean of the School
`
`of Engineering and Textiles and Executive Director of Research at
`
`Philadelphia University (formerly Philadelphia College of Textiles and
`
`Science) from 1994 to 2010. In 2010, I was appointed Executive Dean for
`
`University Research at Philadelphia University and served in that position
`
`through June 2012.
`
`In July 2012, I resigned from Philadelphia University
`
`to become Dean of
`
`the Science, Technology, Engineering,
`
`and
`
`Mathematics Division of Montgomery County Community College in
`
`Pennsylvania. In May 2013, I retired from academia and I now serve as an
`
`independent consultant.
`
`
`
`4. At Philadelphia University I was the Principal Investigator for a US Army
`
`8-year funded research and development program titled “Laboratory for
`
`Engineered Human Protection”. The Laboratory’s charter was to create
`
`garments that protect American servicemen and women against battlefield
`
`hazards, which were also sufficiently comfortable to wear for time periods 7
`
`required by the mission. One of the objectives of the research and
`
`development program was to design, develop and produce prototype
`
`chemically protective garments with the required comfort using the latest
`
`materials produced in collaboration with selected suppliers.
`
`5. I was elected a Fellow of the American Society of Mechanical Engineers in
`
`1995 and a Fellow of the Textile Institute in 1992.
`
`6. I am a named inventor on 12 US. Patents dealing with textile materials
`
`andutextile manufacturing.
`
`7.
`
`I have reviewed the following documents
`
`for preparation of this
`
`declaration:
`
`o
`
`0
`
`the ‘531 patent
`
`the ‘563 patent
`
`o PTAB Case No. IPR2013-00530 Patent RE43,563 _ CORRECTED
`
`PETITION FOR INTER PAR TES REVIEW UNDER 35 U.S.C. §§ 311—
`
`319 AND 37 CPR. § 42.100 ETSEQ.
`
`o PTAB Case No. IPR2013—00531 Patent RE43,563 - CORRECTED
`
`PETITION FOR INTER PARTES REVIEW UNDER 35 U.S.C. §§ 311—
`
`319 AND 37 C.F.R. § 42.100 ETSEQ.
`
`
`
`PTAB Case No. IPR2013—00532 Patent RE43,563 - CORRECTED
`
`PETITION FOR INTER PARTES REVIEW UNDER 35 U.S.C. §§ 311-
`
`319 AND 37 C.F.R. § 42.100 ETSEQ.
`
`PTAB Case No. IPR2013—00532 Patent RE43,531 — CORRECTED
`
`PETITION FOR INTER PARTES REVIEW UNDER 35 U.S.C. §§ 311—
`
`319 AND 37 C.F.R. § 42.100 ETSEQ.
`
`PTAB Case No. IPR2013—00532 Patent RE43,531 — CORRECTED
`
`PETITION FOR INTER PARTES REVIEW UNDER 35 U.S.C. §§ 311—
`
`319 AND 37 C.F.R. § 42.100 ETSEQ.
`
`PTAB Case No. {PR2013-00530 Patent RE43,563—PATENT
`
`OWNER’S PRELIMINARY RESPONSE TO CORRECTED
`
`PETITION FOR INTER PARTES REVIEW OF US. PATENT NO.
`
`RE43,563
`
`PTAB Case No. IPR2013-00531 Patent RE43,563-PATENT
`
`OWNER’S PRELIMINARY RESPONSE TO COMCTED
`
`PETITION FOR INTER PARTES REVIEW OF US. PATENT NO.
`
`RE43,563
`
`PTAB Case No. IPR2013—00532 Patent RE43,531-PATENT
`
`OWNEst PRELIMINARY RESPONSE TO CORRECTED
`
`PETITION FOR INTER PARTES REVIEW OF US. PATENT NO.
`
`RE43,531
`
`PTAB Case No. IPR2013—00533 Patent RE43,531—PATENT
`
`OWNER’S PRELIMINARY RESPONSE TO CORRECTED
`
`PETITION FOR INTER PARTES REVIEW OF US. PATENT NO.
`
`RE43,531
`
`
`
`o PTAB Case No.1PR2013-00530 Patent RE43,563 n-Decision
`
`Institution of Inter Partes Review
`
`0 PTAB Case No. IPR2013-00531 Patent RE43,563 — Decision
`
`Institution of Inter Partes Review
`
`0 PTAB Case No.1PR2013—00532 Patent RE43,531 — Decision
`
`Institution of Inter Partes Review
`
`0 PTAB Case No.1PR2013-00533 Patent RE43,531 — Decision
`
`Institution of Inter Partes Review
`
`0 US Patent No. 6,276, I75 (“the Browder patent”)
`
`0 US Patent No. 6,669,064 (“the ’064 patent”)
`
`0 US Patent No. 5,034,999 (“the “999 patent”)
`
`0 US Patent No. 7,089.59? (‘the ‘597 patent”)
`
`a Catalog excerpts from JC Penney entrend Maternity, F(111/Winter
`
`Catalog (2005) (“JCP-A”)
`
`- Merriam-Webster’s Collegiate Dictionary, 11“" Ed. , 2007
`
`. Clothing Technology, English Edition 1, Verlag Europe-Noumey,
`
`Vollmer GmbH & Co, 1996, p. I34.
`
`. Textiles, 5th Edition, Macmillan Publishing, Co.,1nc., 1979, p. 188.
`
`o Handbook of Technical Textiles, Woodhead Publishing Ltd., 2000, p.
`
`106
`
`o The Modern Textile Dictionary, Little Brown, 1954.
`
`8. I am being compensated by counsel for the Patent Owner at the rate of
`
`$400/hour and my compensation is not dependent on the outcome of either
`
`my opinions or the proceedings.
`
`
`
`9. My declaration is organized in the following manner:
`
`I.
`
`Qualifications of Persons of Ordinary Skill In The Art
`(‘CPOSA33)
`
`II.
`
`Overview of the ‘531 patent including proposed claim
`
`construction
`
`III.
`
`Overview of the ‘563 patent including proposed claim
`
`construction
`
`_ IV.
`
`Overview of JCP-A
`
`V.
`
`Overview of Browder
`
`VI.
`
`Rebuttal of Alleged Anticipation of the ‘5 31 patent by Petitioner
`
`under 35 U.S.C. § 102 by JCP-A
`
`VII.
`
`Rebuttal of Alleged Anticipation of the ‘5 63 patent by Petitioner
`
`under 35 U.S.C. § 102 by JCP-A
`
`VIII.
`
`Rebuttal of Alleged Anticipation of the ‘563 patent by Petitioner
`
`under 35 U.S.C. § 102 by Browder
`
`Qualifications of Persons of Ordinary Skill In The Art (“POSA”)
`
`Based on my experience as a dean and professor in the area of textile
`
`engineering and my experience as a research and development laboratory
`
`director, it is my opinion that persons of ordinary skill in the art (“POSA”)
`
`during the time frame of the priority dates of the Patents—in-Suit would
`
`possess any of the following: (a) a graduate of a two—year or four—year degree
`
`program with an associate’s or bachelor’s degree in fashionldesign and at
`
`least one to two years of full—time,
`
`technical design experience in the
`
`commercial garment industry; or (b) an individual with at least four years of
`
`
`
`II.
`
`10.
`
`full time, technical design experience in the commercial garment industry; or
`
`(c) a baccalaureate degree in textile engineering.
`
`Overview of the ‘531 Patent Including Proposed Claim Construction
`
`The ‘531 patent entitled “BELLY COVERING GARMENT” was filed in
`
`the US Patent and Trademark Office (“USPTO”) on June 15, 2011 and
`
`issued on July 24, 2012. The ‘531 patent is a reissue of US Patent No.
`
`7,814,575 (“the ‘575 patent”), which was filed in the USPTO on May 31,
`
`2007, and issued on October 19, 2010. The Patent Owner advertises that its
`
`Secret Fit Belly® line of maternity clothes is covered by the ‘531 patent.1
`
`The “531 patent discloses a “garment that adapts to cover andfit a growing
`
`abdomen during pregnancy, wherein the garment stays up when worn”.
`
`(1:42-44) The invention covered in the ‘531 patent fulfills an unmet need for
`
`a garment to stay up and fit comfortably when worn (1 :3 6-3 7).
`
`11.
`
`On October 17, 2013, I examined four Secret Fit Belly® exemplar products
`
`(Style 93480-01, Style 96316—42, Style 91401—01 and Style 94278—10) and
`
`placed them on AlvaForm Pregnancy Fit Mannequins (3 month pregnancy
`
`and 9 month pregnancy).
`
`In my opinion, the products met the limitations of
`
`claim 1 (the only independent claim) and many of the dependent claims of
`the ‘563 patent. The products also met the need for a garment that adapts to
`
`cover and fit a growing abdomen during pregnancy, comes up to just
`
`beneath the location of the breasts of the wearer, and has a design and
`
`structure which enables it to stay up when worn. My examination of the fit
`
`I http://www.motherhood.com/maternity/secret~fit-belly.asp
`
`
`
`of the Secret Fit Belly® products on the mannequins shows that the belly
`
`panel stays up due to the fact that it comes up to just beneath the breast area
`
`and, as such, has substantially more coverage over the narrowing part of the
`
`abdomen and thus creates more frictional force to hold the garment up while
`
`worn. Accordingly, if the garment tried to come down past the upper and
`
`relatively narrow portion of the abdomen it would need to circumferentially
`
`expand and the stretch nature of the belly panel fabric would prohibit it from
`
`passively expanding unless it were actively pulled down by the wearer.
`
`Attached, as Exhibit 2, is a report that I prepared showing that Secret Fit
`
`Belly® products practice the claimed invention.
`
`Below is a set of photographs of Secret Fit Belly® Style 91401—01 that I
`
`took on October 17, 2013, which clearly supports my opinion.
`
`Breast Area
`
`
`
`3 month
`
`
`
`Breast_Area _
`
`Breast Area
`
`
`
`9 month
`
`12.
`
`It is my understanding that, in an Inter Partes Review of an unexpired patent,
`
`the PTAB gives the claims the “broadest reasonable construction in light of
`
`the specification as it would be interpreted by one of ordinary skill in the
`
`art”. Further,
`
`in the USPTO Manual of Patent Examining Procedure
`
`(MPEP) it is stated at 21 11.01 fill that “The ordinary and customary meaning
`
`of a term may be evidenced by a variety of sources, including the words of
`
`the claims themselves, the specification, drawings, andprior art. ”
`
`13.
`
`Counsel for the Patent Owner has asked me to propose a broadest reasonable
`
`construction as it would be interpreted by a POSA of some of the claim
`
`language in Claim 1 of the ‘531 patent. As such, I am providing my opinion
`
`on the meaning and construction of the terms “just beneath the wearer’s
`
`breast area”. My opinion is based on 1) the specification of the ‘531 patent,
`
`2) the language of the claims of the ‘531 patent, 3) examples of prior art
`
`identifying the “breast area”, 4) prior art patents which use the term “breast
`
`area” only in the claims, and 5) the dictionary definitions of ‘jusl” and
`
`“substantially”.
`
`
`
`14.
`
`The ‘531 specification does not explicitly discuss the term “breast area”.
`
`However,
`
`it
`
`is my opinion that
`
`there are many instances of implicit
`
`discussion in the “531 patent, which supports a broadest
`
`reasonable
`
`construction by a POSA of ‘just beneath the wearer’s breast area” to mean
`
`“beneath the location of the breasts by a very small margin”.
`
`15.
`
`Fig. 1 and Fig. 1A ofthe ‘531 patent are shown below:
`
`"is
`
`“1:
`
`”L3
`
`In describing Fig. 1 and Fig. 1A, the specification of the ‘531 patent discloses
`
`that “In FIG. I,
`
`the garment upper portion 102 has a belly panel 124 to
`
`provide an abdomen covering area. The belly panel 124 is expansible, for
`
`example, when made of a stretchable fabric,
`
`to cover and fit over a growing
`
`abdomen during difirerent stages ofpregnancy, FIG. IA. ”
`
`16.
`
`In my opinion the claim language in the ‘531 patent fiirther supports a
`
`broadest reasonable construction by a POSA that “just beneath the wearer ’s
`
`10
`
`
`
`breast area” can be construed as “beneath the location of the breasts by a
`
`very small margin”. Claim 1 states that the belly panel “is expansible to
`
`cover andfit over a growing abdomen during different stages ofpregnancy ”
`
`and has an “upper edge ofthe belly panel that encircles a wearer's torso just
`
`beneath the wearer’s breast area configured to hold the garment up and in
`
`place about the torso in a position of a location of maximum girth of the
`
`abdomen thereby substantially covering the wearer’s entire pregnant
`
`abdomen during all stages ofpregnancy”. Thus, it is my opinion, based on
`
`the claim language,
`
`that the wearer’s breast area ends before the abdominal
`
`area begins. Further, it is my opinion that by using the terms “breast area”
`
`and “abdomen” to describe different locations on the wearer, the wording of
`
`claim 1 supports a construction that “breast area” is only the location of the
`
`breasts and: as sucha it excludes a construction of “breast area” that includes
`
`the abdomen because both terms are used separately to locate the top of the
`
`belly panel during all stages of pregnancy.
`
`17.
`
`The ‘531 patent Specification discusses the expansible and contractible
`
`nature of the stretchable belly panel, which allows the belly panel to reach
`
`just beneath the breast area during all stages of pregnancy on wearers with
`
`different body types. “The belly panel 124 comprises a portion of the
`
`stretchable fabric. The tubular structure is adaptable to cover and fit
`
`difierent body types by being elastically expansible and contractible. ” (3:45—
`
`48) ”The tubular structure is elastically expansible to widen the tubular
`
`girth at selected locations and amounts where needed to fit a body type, and
`
`is elastically contractible to narrow the tubular girth at selected locations
`
`and amounts where needed to fit the body type. “ (3:53-57)
`
`11
`
`
`
`18.
`
`It
`
`is my opinion that even though the Specification and some of the
`
`dependent claims discuss different wearer body types, the language should
`
`not affect the construction of “just beneath the wearer’s breast area”. The
`
`Specification explains that the expansible and contractible nature of the
`
`panel allows the garment to cover and fit a growing abdomen even if the
`
`wearers have different body types.
`
`(3:47-57). As such, the discussion of
`
`different body types does not affect the term “just beneath the wearer’s
`
`breast area”. Rather, the Specification explains that the garment will still
`
`perform its function even when wearers of different body types don the
`
`patented garment because the garment expands and contracts to account for
`
`more or less girth.
`
`19.
`
`The term “breast area” has been covered in earlier patents and clearly
`
`shows that “breast area” is the location of the breasts. For example, U.S.
`
`Patent No. 6,669,064 explains that “Nurser 10 includes a flexible shoulder
`
`sling 12 to which is attached, positioned in the breast area of user ’s chest .
`
`.
`
`the sling holds container 16 in the breast area of the user’s. ” 4:36-46
`
`(emphasis added). Figure 1 below read with this description shows that the
`
`described “breast area” is the location of the breasts.
`
`12
`
`
`
`
`
`US. Patent No. 5,034,999 explains that, during nursing, “the mother will
`
`want to check on his or her progress .
`
`.
`
`. by opening one of the portals 18
`
`above each breast area 18a .
`
`.
`
`. where the child would be nursing,
`
`preferably near the infant’s head while he is nursing.” 2:60-67 (emphasis
`
`added). Again, Figure 1, shown below, read with this description shows that
`
`the described “breast area” is the location of the breasts.
`
`
`
`13
`
`
`
`Analogous art also shows that the bottom of the breast area does not include
`
`the abdomen. US. Pat. No. 7,089,597 shoWs that the breast area ends at the
`empire line or inframammary fold. In describingr Fig. 2A (reproduced below),
`
`the ‘597 patent states: “wide fabrics 14a and 14b are stitched along lines that
`
`extend from a supporting point P at the front center to the armpits, passing
`
`beneath the breast area. ” 9:34:38 (emphasis added). Coincidentally, the
`
`USPTO Primary Examiner for the ‘597 patent is the same Priniaiy Examiner
`
`for the ‘5 31 patent.
`
`
`
`20.
`
`I conducted a search on the USPTO “Patent Search” web site to see if there
`
`were analogous art where the term “breast area” is only found-in the claims
`
`of patents. I found US Patent No. 8,016,640 where in claim 3 it states “said
`
`piece of stretchable material is formed as a sling and is shaped inwardly
`
`from a direction at a center of a breast area at its ends to allow the sting to
`
`sit neatly on the breast while holding the breast with the breast supported
`
`from said outside edge. “ (emphasis added) Further I found US Patent No.
`
`4,5903624 where in claim 1
`
`it states “each of said lefi‘ and right blouse
`
`panels configured when laidflat and without stitching to be larger than the
`
`breast area of the gown, thereby producing a billowing of the blouse panels
`
`14
`
`
`
`or accommodatin the
`g
`
`P
`
`atient’s breasts with the ed es 0 the blouse anels
`8
`P
`
`interconnected to the back panel and corresponding skirt panels, ” (emphasis
`
`added)
`
`21.
`
`While the word “just” is not in the ‘531 patent specification it does have a
`
`known definition that can be found in the Merriam-Webster’s Collegiate
`
`Dictionary, 11th Edition, 2007 at page 679. “Just” is defined, in the context
`
`of location, as “by a very small margin”. This definition of ‘just”
`
`corresponds to the remainder of Claim 1
`
`regarding the garment upper
`
`portion (belly panel), which requires “substantially covering the wearer’s
`
`entire pregnant abdomen during all stages ofpregnancy. ” The Merriam-
`
`Webster’s Collegiate Dictionary, 11th Edition, 2007 at page 1245 defines
`
`“substantially” as “being largely but not wholly that which is specified”,
`
`Accordingly,
`
`it
`
`is my opinion,
`
`if .a wearer’s entire abdomen, during
`
`pregnancy, is substantially covered (“being largely but not wholly that which
`
`
`is Specified”), the top edge of the garment upper portion must be below the
`
`location of the breasts by a very small margin.
`
`22.
`
`It is my opinion that based on 1) the specification of the ‘531 patent; 2) the
`
`language of the claims of the ‘531; 3) examples of prior art identifying the
`
`“breast area”; 4) the prior art patents which use the term “breast area” in the
`
`claims only; and 5) the dictionary definitions of “just” and “substantially”,
`
`the claim term “just beneath the wearer’s breast area” should have the
`
`broadest reasonable construction by a POSA of “beneath the location of the
`
`breasts by a very small margin
`
`15
`
`
`
`III.
`
`Overview of the ‘563 patent including proposed claim construction
`
`23.
`
`The ‘563 patent entitled “BELLY COVERING GARMENT” was filed in
`
`the US Patent and Trademark Office (“USPTO”) on June 15, 2011 and
`
`issued on August 7, 2012. The ‘563 patent is a reissue of US Patent No.
`
`7,900,276 (“the ‘276 patent”), which was filed in the USPTO on May 8,
`
`2007 and issued on March 8. 2011. The Patent Owner advertises that its
`
`Secret Fit Belly® line of maternity clothes is covered by the ‘563 patent.2
`
`The ‘563 patent discloses “a garment upper portion has a belly panel that is
`
`expansible to cover andfit over a growing abdomen during different stages
`
`ofpregnancy.” (1 :55-57) The invention covered in the ‘563 patent fulfills an
`
`unmet need for a garment that adapts to cover and fit a growing abdomen
`
`during pregnancy, wherein the garment stays up when worn. (125163) As
`
`discussed in the ‘563 patent, this new garment is a comfortable garment that
`
`adapts to cover and fit over a wearer’s belly region during different stages of
`
`weight gains and/or losses, and stays up when worn. (1:55-58, 2:9—1 1, 3:27-
`
`31) The “563 patent discloses that prior to this invention “women have
`
`complained that the maternity garments that existed prior to the claimed
`
`invention were diflicult to keep in place, and gradually Slipped down while
`
`being worn. ” (1:34-36) As such, the inventors of the ‘563 patent recognized
`
`a need for a garment that covers and fits a growing abdomen during different
`
`stages of pregnancy and would stay up and fit comfortably while being
`
`worn. Further, it would stay up when worn over different body types (1 :43—
`
`47)
`
`2 http://www.motherhood.com/maternity/secret-fit—bellyasp
`
`16
`
`
`
`24.
`
`On October 17, 2013, I examined four Secret Fit Belly® exemplar products
`
`(Style 93480-01, Style 96316-42, Style 91401—01 and Style 94278—10) and
`
`placed them on AlvaForm Pregnancy Fit Mannequins (3 month pregnancy
`
`and 9 month pregnancy).
`
`In my opinion, the products met the limitations of
`
`claim 1 (the only independent claim), and many of the dependent claims of
`
`the ‘563 patent. The product also met the need for a garment that adapts to
`
`cover and fit a growing abdomen during pregnancy, comes up to just
`
`beneath the location of the breasts of the wearer, and has a design and
`
`structure which enables it to stay up when worn. My examination of the fit
`
`of the Secret Fit Belly® products on the mannequins shows that the belly
`
`panel stays up due to the fact that it comes up to just beneath the breasts, and
`
`as such, has substantially more coverage over the narrowing part of the
`
`abdomen and thus creates more frictional force to hold the garment up while
`
`worn. Accordingly, if the garment tried to come down past the upper and
`
`relatively narrow portion of the abdomen it would need to circumferentially
`
`expand and the stretch nature of the belly panel fabric would prohibit it from
`
`passively expanding unless it were actively pulled down by the wearer.
`
`Attached as Exhibit 2 is a report that I prepared showing that Secret Fit
`
`Belly® products practice the claimed invention.
`
`Below is a set of photographs of Secret Fit Belly® Style 91401—01 that I
`
`took on October 17, 2013 which clearly supports my opinion.
`
`I have
`
`identified the abdomen and breast area, the latter being supported by the
`
`above.
`
`17
`
`
`
`Breast Area
`‘
`1
`A?"
`
`Breast Area
`
`
`
`
`
`Breast Area
`
`25.
`
`It is my understanding that in an Inter Partes Review of an unexpired patent
`
`the PTAB gives the claims the “broadest reasonable construction in light of
`
`the Specification as it would be interpreted by one of ordinary Skill in the
`
`art”. Further,
`
`in the USPTO Manual of Patent Examining Procedure
`
`(MPEP) it is stated at 2111.0] 111 that “The ordinary and customary meaning
`
`18
`
`
`
`of a term may be evidenced by a variety of sources, including the words of
`
`the claims themselves, the specification, drawings, andprior art.”
`
`26.
`
`Counsel for the Patent Owner has asked me to propose a construction of
`
`some of the claim language in Claim 1 of the ‘563 patent that would be
`
`interpreted by a POSA. As such I am providing my expert opinion on the
`
`meaning and construction of the terms “just beneath the wearer ’s breast
`
`area”. My opinion is based on 1)
`
`the specification of the ‘563 patent
`
`(specification identical
`
`to the specification for the ‘531 patent), 2) the
`
`language of the claims of the ‘563 patent, 3) examples of prior art
`
`identifying the “breast area”, 4) prior art patents which use the term “breast
`
`area” only in the claims, and 5) the dictionary definitions of “just” and
`
`“substantially”.
`
`27.
`
`In Wl4-21 of my declaration I discussed the claim term “just beneath the
`
`wearer’s breast area” and provided a broadest reasonable construction that
`
`would be interpreted by a POSA as “beneath the location of the breasts by a
`
`very small margin ”.
`
`28.
`
`Counsel for the Patent Owner has asked me to propose a broadest reasonable
`
`construction of some of the claim language in Claim 1 of the ‘563 patent that
`
`would be interpreted by a POSA. As such, I am providing a discussion that
`
`the claim term “an expansible belly panel” can be construed as “a belly
`
`panel that expands to a degree commensurate with covering a pregnant
`
`abdomen”.
`
`19
`
`
`
`29.
`
`The ‘563 patent specification supports a construction of “an expansible belly
`
`panel” as “a belly panel that expands to a degree commensurate with
`
`covering a pregnant abdomen”.
`
`30.
`
`When discussing “expansible” with regard to the belly panel, the ‘563 patent
`
`routinely discusses that the belly panel must cover and fit over a pregnant
`
`abdomen. For example, the Specification identifies a “belly panel that is
`
`expansible to cover andfit over a growing abdomen during diflerent stages
`
`of pregnancy.” (1:55—57), and “The belly panel 124 is expansible, for
`
`example, when made of a stretchable fabric, to cover andfit over a growing
`
`abdomen during diflerent stages ofpregnancy ” (322—5)
`
`31.
`
`The ‘563 patent specification routinely discusses the need for comfort when
`
`wearing the garment covered by the “563 patent. For example “Another
`
`embodiment of the invention provides a garment that fits comfortably while
`
`being worn” (1:63—64), “According to an embodiment of the invention, an
`
`expansible tubular upper portion of the garment
`
`is seamless
`
`to fit
`
`comfortably while being worn” (2:9—12), and “the stretchable fabric is
`
`woven or knitted to form a continuous, seamless tubular structure, such that
`
`the garment 100 is comfortable to wear due to the absence of seams that
`
`would tend to press against the torso.” (429—12)
`
`32.
`
`It is my opinion that, for an expansible belly panel to be comfortable, it must
`
`be non—constricting and, as such, not constrictor control the expansion of the
`
`abdomen during pregnancy but adapt in a comfortable manner to a growing
`
`abdomen.
`
`20
`
`
`
`33.
`
`It is my opinion that, based on the specification of the ‘563 patent, the
`
`broadest
`
`reasonable construction by a POSA of the claim term “an
`
`expanstble belly panel” should be construed as “a belly panel that expands
`
`to a degree commensurate with covering a pregnant abdomen ”.
`
`IV.
`
`Overview of JCP-A
`
`34.
`
`I have reviewed a section (page 15) of the JC Penney ontrend Maternity
`
`Fall/Winter Catalog (2005) that the Petitioner has cited and asserts is prior
`
`art to the ‘531 patent and the “563 patent. A product entitled “FOLD~
`
`OVER PANEL JEANS” is advertised. JC Penney touts that the jeans have
`
`“a unique fold-over panel design that allows you to wear them before,
`
`during and after your pregnancy”. Below is a pictorial excerpt from the
`
`advertisement.
`
`
`
`' ‘3. mm twice {at towwrisc
`cannon and support
`
`.‘
`
`The above pictorial excerpt shows at
`
`the far
`
`left
`
`(“1. over-the—belly
`
`coverage”), a belly panel that, while covering a portion of the abdomen,
`
`21
`
`
`
`does not come up to just beneath the wearer’s breast area.
`
`In fact, none of
`
`the pictures show the lower part of the wearer’s breasts at all.
`
`It is my
`
`opinion that a POSA would understand that this advertisement is focused on
`
`providing a product with its primary feature being a fold-over belly panel
`
`that provides comfort during all stages during and after pregnancy by folding
`
`and unfolding the panel depending on belly size.
`
`In fact, two of the inset
`
`picture descriptions are specifically directed to comfort (e.g. “2. fold once
`
`for mid—rise comfort” and “3. fold twice for low rise comfort and support”)”.
`
`A POSA would understand that the garment shown in the advertisement
`
`does not provide any feature that would enable it to stay up, without folding
`
`it over, during all stages of pregnancy.
`
`In fact, IC Penney does not tout this
`
`in this reference.
`
`Overview of the Browder patent (US Patent No. 6,276,175)
`
`35.
`
`The Browder patent entitled “SEAMLESS TORSO CONTROLLING
`
`GARMENT AND METHOD OF MAKING” was filed in the US Patent
`
`and Trademark Office (“USPTO”) on April 29, 1999 and issued on August
`
`21, 2001. The Browder patent discloses a control garment and a method for
`
`providing additional control to selected portions of a garment. Further,
`
`it
`
`discloses garments provided with additional control
`
`through the use of
`
`elastomeric yarn and purpose—specific knitting techniques, and methods for
`
`providing such control.
`
`(126—13) The control area fabric is formed by an
`
`alternating tuck stitch knit pattern. The disclosed tuck stitch pattern is a 1 by
`
`1 (1X1) alternating tuck stitch. (2:12-14) The Browder patent specification
`
`discloses that the 1X1 alternating tuck stitch pattern tightens the fabric and
`
`increases the modulus of the elastomeric yarn. Thus,
`
`the tuck stitch
`
`22
`
`
`
`decreases the amount of stretch in the fabric. (2:29-34) This would be
`
`understood by a POSA.
`
`36.
`
`A POSA would understand that knit fabrics made with tuck stitches are less
`
`extensible, and thus less expansible, than jersey knit fabrics such as those I
`
`have observed in the knitted expansible belly panel of the Secret Fit Belly®
`
`products.3 Photographs of the stretched jersey knitted expansible belly
`
`panels that I examined are shown below in an enlarged view.
`
` ,tqt‘é: ‘-
`
`Q‘g Q
`t - ‘3‘”
`‘
`a it“
`9 $.92!
`
`Secret Fit BBHV®
`
`Secret Fit Belly®
`
`94273-10
`
`96316-42 '
`
`
`
`Secret Fit Belly®
`
`Secret Fit Belly®
`
`93480431
`
`91401-01
`
`3 Textiles, 5th Edition, Macmillan Publishing, Co., Inc. , 1979, p. 188.
`
`23
`
`
`
`A POSA would understand that,
`
`for a jersey knit fabric,
`
`the primary
`
`mechanism of extension or expansion is a result of the knitted 100p
`
`reconfiguring to unbend when a tensile load is applied to the fabric. This is
`
`shown in the stretched Secret Fit Belly® belly panel photographs that I
`
`provided above. To further illustrate, I have drawn the following schematic:
`
`Knitted loop
`
`I-fi
`Stretched
`
`_ _
`
`Stitch
`
`Width
`
`Stitch
`
`Width
`
`Below is a drawing of a 1x1 alternating tuck stitch pattern such as that
`
`disclosed in Browder. The shaded column of stitches (wales) are the tuck
`
`stitches. The red circled knit stitch leg of the tuck is already bent or
`
`straightened in the knit fabric’s relaxed or off—the-rnachine configuration.
`
`
`
`24
`
`
`
`A POSA would understand that the knitted loop configuration found in a
`
`1X1 tuck stitch would have very limited extensibility or expansibility due to
`
`the “as knitted” loop’s straight or unbent configuration along with the
`
`straight portion of yarn at the top of the knitted loop. A diagram showing
`
`relative extensibility or expansibility for jersey knit fabrics and tuck stitch
`
`fabrics is shown below“:
`
`
`
`
`Extensibility or Expanisibility
`
`
`
`
` Limited byu
`
`
`
`Tuck Stitch
`
`1x1 Alternating
`Tuck Stitch Knit
`
`(Browder)
`
`Jersey Stitch Knit
`
`For a tuck stitch fabric, such as that disclosed in Browder, the elasticity or
`
`expansibility is substantially limited by the relatively straight tuck stitch and
`
`4 Handbook of Technical Textiles, Woodhead Publishing Limited, 2000, p. 106.
`
`5 The Modern Textile Dictionary, Little Brown, 1954.
`
`25
`
`
`
`the straightened knit loop leg as shown above. As such, the elasticity or
`
`expansibility is substantially less than that found in a jersey stitch fabric. A
`
`POSA would not consider a tuck stitch fabric to be extensible or expansible
`
`in well-understood textile terms. As such, a POSA would not specify using a
`
`tuck stitch knit fabric for any garment design that required a relatively
`
`highly expansible‘ fabric, such as the garments disclosed in the Patents-in—
`
`Suit.
`
`36.
`
`Browder provides drawings of various torso controlling garments. For
`
`example, Fig.
`
`1 and Fig. 2 show a “brief”, Fig. 3 and Fig. 4 show a “high
`
`waist brief”, Fig. 5 and Fig. 6 show a..“half slip”, Fig. 7 and Fig. 8 Show a
`
`“thigh slimmer”, Fig. 10 shows a “body slip”, and Fig.
`
`11 shows a
`
`“maternity brief".
`
`In Fig.1, there is a control area 25 of the undergarment
`
`where increased control
`
`is desired and is accomplished by using a 1x1
`
`alternating tuck stitch pattern.
`
`(3:34-38)
`
`The Browder
`
`specification
`
`discloses that the alternating tuck stitch pattern increases the modulus of the
`
`fabric and thus the fabric stretches less and controls more. (3:38-42)
`
`Browder,
`
`in fact, recognizes the balance between comfort and control by
`
`disclosing that an 8% increase in fabric modulus is a desirable compromise
`
`between control and comfort
`
`(3:43—45).
`
`This disclosed compromise
`
`reinforces the fact that increased control can lead to decreases in wearer’s
`
`comfort. The control area for the other garments that are disclosed in
`
`Browder are shown in the high waist brief (35), the half—slip (65), the thigh
`
`slimmer (85), the body slip (105), and the maternity brief (125).
`
`26
`
`
`
`37.
`
`There is one instance where Browder does disclose fabric covering the
`
`stomach portion which is specifically knitted without any control area. This
`
`is for the “maternity brief “shown in Fig. 11 and shown below.
`
`
`
`In Fig. 11, a portion covering the stomach area (123) is shown, and does not
`
`extend just beneath the breasts and is specifically knitted without any control
`
`area to allow the stomach to expand as needed. (4:55—57) Thus, it is my
`
`opinion that the comparison of the control portions that are disclosed (35,
`
`65, 85, 105 and 125) are not expansible when compared with a portion that
`
`is expansible (123). It is also my opinion that the Browder control areas are
`
`not expansible within the meaning of the ‘563 patent.
`
`In other words, the
`
`Browdercontrol areas are not expansible to a degree commensurate with
`
`covering a pregnant abdomen.
`
`27
`
`
`
`VI.
`
`Rebuttal of Alleged Anticipation of the ‘531 patent by Pet
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