`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`_________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_________________
`
`
`TARGET CORPORATION
`Petitioner
`
`v.
`
`DESTINATION MATERNITY CORPORATION
`Patent Owner
`
`__________________
`
`Case IPR2013-00533
`Patent No. RE43,531
`__________________
`
`Before JENNIFER S. BISK, MICHAEL J. FITZPATRICK, and
`MITCHELL G. WEATHERLY, Administrative Patent Judges.
`
`
`PETITIONER’S REPLY TO
`PATENT OWNER’S RESPONSE
`
`
`
`
`

`

`
`
`I.
`
`II.
`
`TABLE OF CONTENTS
`
`Introduction ...................................................................................................... 1
`
`Claims 1, 24-26, 28, and 29 are Anticipated by JCP Fold-Over Panel
`Jeans (Ex. 1002) ............................................................................................... 1
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`F.
`
`The Claims Demonstrate that the Board’s Findings Are Correct ......... 2
`
`The Specification Demonstrates that the Board’s Findings Are
`Correct ................................................................................................... 3
`
`DMC’s Reliance on SFB Products to Support its Interpretation
`of Claim 1 Underscores the Lack of Support for its
`Interpretation ......................................................................................... 5
`
`Prior Art Teachings Show that the Board’s Findings Are
`Correct ................................................................................................... 5
`
`DMC’s Prior Infringement Allegations Are Consistent with the
`Board’s Findings ................................................................................... 8
`
`The JCP Fold-Over Panel Jeans Anticipate Claim 1 ............................ 8
`
`1.
`
`2.
`
`The JCP Fold-Over Panel Jeans Disclose the Belly-
`Panel-Height Requirement of Claim 1 ........................................ 8
`
`The JCP Fold-Over Panel Jeans Disclose the All-Stages-
`of-Pregnancy Requirement of Claim 1 ....................................... 8
`
`G.
`
`The JCP Fold-Over Panel Jeans Anticipates Claim 24 ....................... 11
`
`III. DMC Does Not Contest the Prima Facie Obviousness of Claims 25-
`26, and 28-29 Presuming the JCP Fold-Over Panel Jeans Anticipate
`Claim 1 ........................................................................................................... 12
`
`IV. DMC’s Secondary Considerations do not Rebut Petitioner’s Prima
`Facie Showing of Obviousness ..................................................................... 13
`
`US.54585039.01
`
`-i-
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`

`

`
`
`I.
`
`INTRODUCTION
`
`The parties’ key dispute centers on how high a belly panel must extend on a
`
`wearer to be within the scope of claim 1. The Board correctly determined and
`
`applied the broadest reasonable interpretation of the relevant ’531 Patent claims.
`
`In attempting to show that the Board erred, DMC: (1) ignores the express language
`
`of the claims and specification; (2) reads alleged features of its commercial Secret
`
`Fit Belly (“SFB”) products into the claims and specification; (3) ignores key
`
`teachings of the prior art; and (4) ignores its prior infringement allegations. As
`
`discussed below, the intrinsic and extrinsic evidence demonstrate that the ’531
`
`Patent claims-at-issue in this proceeding are unpatentable.
`
`II. CLAIMS 1, 24-26, 28, AND 29 ARE ANTICIPATED BY JCP FOLD-
`OVER PANEL JEANS (EX. 1002)
`
`The Board correctly observed that the JCP Fold-Over Panel Jeans (“JCP”)
`
`disclose all elements of claim 1. DMC does not dispute that JCP discloses all
`
`elements of claim 1, except for “an upper edge of the belly panel that encircles a
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`wearer’s torso just beneath the wearer’s breast area” and a belly panel that
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`“substantially cover[s] the wearer’s entire pregnant abdomen during all stages of
`
`pregnancy.” Paper 25, at 15, 16. If claim 1 is anticipated, DMC does not
`
`separately dispute that claims 25-26, and 28-29 are anticipated. Id. at 34-37.
`
`DMC disputes whether JCP discloses the additional limitations of claim 24, but
`
`JCP anticipates this claim. Id.
`
`
`
`
` 1
`
`

`

`
`
`A. The Claims Demonstrate that the Board’s Findings Are Correct
`Claim 1 does not require the belly panel to cover the entire pregnant
`
`abdomen. Ex. 1018, cl. 1. This is illustrated by the claim limitations
`
`“substantially covering the wearer’s entire pregnant abdomen” and “just beneath
`
`the [] breast area.” Id. (emphasis added). The Board’s interpretation of claim 1 is
`
`consistent with this claim language, while DMC’s interpretation of claim 1 ignores
`
`these phrases and incorrectly requires the entire pregnant abdomen, and more, to
`
`be covered by the belly panel. E.g., Paper 25, at 26-32.
`
`The flaws in DMC’s interpretation are brought to light simply by reading its
`
`motion to amend in IPR2013-00531 and its opposition in this proceeding. In each,
`
`DMC explains how “substantially” means “largely, but not wholly, that which is
`
`specified,” but DMC goes on to require the whole when applying the claim to the
`
`prior art; this is contrary to the meaning of “substantially” advanced by DMC and
`
`its expert. Ex. 1117, at 2-4, 6-9, Ex. 2026, ¶ 24, 52, 55-56, 62, 65-66; Ex. 2017, ¶¶
`
`21-22, 41, 44-45; Paper 25, at 7, 14 n. 2 (emphasis added), 20. Thus, a location
`
`just beneath the wearer’s breast area must necessarily include at least the portion of
`
`the abdomen as indicated by the Board; otherwise, “substantially covering the
`
`wearer’s entire pregnant abdomen” would improperly be deprived of meaning. See
`
`Merck & Co. v. Teva Pharm. USA, Inc., 395 F.3d 1364, 1372 (Fed. Cir. 2005) (“A
`
`claim construction that gives meaning to all the terms of the claim is preferred over
`
`
`
`
` 2
`
`

`

`
`
`one that does not do so.”); Paper 11, at 12. Dr. Brookstein, however, could not
`
`explain, in his deposition, whether removing “substantially” from claim 1 of the
`
`’563 Patent would alter its scope. Ex. 1078, at 227:22-228:4, 228:10-229:7.
`
`Turning to “just beneath the [] breast area,” the Board’s observation that
`
`“[t]he term ‘breast area’ connotes a broader [] meaning than the word ‘breast’
`
`alone” is correct. Paper 11, at 7. Petitioner’s expert, Ms. Harder, explained that
`
`adding “area” to a specific place could connote more than the place alone; i.e. the
`
`“L.A. area” encompasses more the than “L.A.,” alone. Ex. 2018, at 17:8-17.
`
`DMC’s interpretation is, therefore, inconsistent with the plain language of claim 1.
`
`B.
`
`The Specification Demonstrates that the Board’s Findings Are
`Correct
`
`The Board’s interpretation of claim 1 is also consistent with the
`
`specification. When the specification explicitly contemplates belly panel height,
`
`the panel is described as being “at least somewhat above the maximum girth of the
`
`abdomen.” Ex. 1018, at 3:36-41. DMC’s expert did not use this teaching in his
`
`opinion; indeed, he stated that “[s]omewhat is indefinite.” Ex. 1078, at 179:18-
`
`180:8, 180:10-12, 180:18-181:10, 181:24-182:2, 182:2-14. Instead, he purported
`
`to find implicit support for a height requirement. Ex. 1078, at 126:10-128:3.
`
`The “implicit” disclosures of belly panel height cited by DMC and its expert
`
`all relate to the belly panel “cover[ing] and fit[ting] over a growing abdomen.” Ex.
`
`1078, at 126:10-128:2. Moreover, these “teachings” identified by DMC exist in
`
`
`
`
` 3
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`

`

`
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`the prior art, and, to the extent that they support the belly panel height alleged by
`
`DMC, such panel height was known in prior art. See, e.g., Exs. 1002 (“over-the-
`
`belly coverage”); 2037 (Asada), at [0013], [0015]. For example:
`
`Source
`
`Figures
`
`Text
`• “[abdomen-covering portion 2] can be worn
`
`Asada
`
`(Ex.
`2037)
`
`’531
`Patent
`
`(Ex.
`1018)
`
`completely to envelop the abdomen with the entire
`
`abdomen-covering portion 2” (Ex. 2037, at [0013])
`
`Ex. 2037, Fig.
`2(c)
`
`• “abdomen-covering portion 2 . . . covers the entire
`
`
`
`abdomen at full term” (id. at [0015])
`
`• “belly panel . . . expansible to cover and fit over a
`
`growing abdomen during different stages of
`
`pregnancy” (Ex. 1018, at 1:46-48)
`
`
`
`• “[belly panel] is contractible elastically to cover an
`
`abdomen” (id. at 1:64-67)
`
`Ex. 1018, Fig.
`1A
`
`
`
`Further, the original independent claim, which included “cover and fit over a
`
`growing abdomen,” was amended to include “upper edge of the belly panel above
`
`a location of maximum girth of the abdomen” to distinguish Stern. Ex. 1020, at 9-
`
`10, 95-97, 110; Ex. 1017, Figs. 1-3. DMC, therefore, should not now be permitted
`
`to use terms such as “cover” and “cover and fit” to support its belly-panel-height
`
`requirement when it implicitly conceded that these terms did not support a belly-
`
`
`
`
` 4
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`

`

`
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`panel-height requirement during the prosecution of the parent patents to the ’531
`
`and ’563 Patents. Moreover, Dr. Brookstein did not review the prosecution file
`
`histories, but for an excerpt relating to examiner-suggested claim language. Ex.
`
`1078, at 149:23-25, 150:3-16, 150:18-151:2, 151:4-6. Accordingly, his opinion on
`
`the belly-panel-height requirement should not be entitled any weight.
`
`C. DMC’s Reliance on SFB Products to Support its Interpretation of
`Claim 1 Underscores the Lack of Support for its Interpretation
`
`DMC’s analyses of validity and claim scope consistently attempt to graft
`
`details of its SFB products into the claims and specification. E.g., Paper 25, at 7,
`
`20. Indeed, Dr. Brookstein goes so far as to rely on mannequins, and the manner
`
`in which various SFB products appear on mannequins, to support his interpretation
`
`of claim 1. Ex. 1078, at 129:12-16, 129:18-130:2, 130:4-130:11, 220:7-19,
`
`220:21-221:5; Ex. 2017, ¶ 42. A proper anticipation analysis, however, compares
`
`the claim language to the prior art to determine if each and every element of the
`
`claim is found in the prior art; the comparison is not between the prior art and
`
`alleged commercial embodiments of the claim in question. Old Reliable
`
`Wholesale, Inc. v. Cornell Corp., 635 F.3d 539, 544-45 (Fed. Cir. 2011). It is also
`
`improper to consider a commercial embodiment when determining the meaning of
`
`claims. Callaway Golf Co. v. Acushnet Co., 576 F.3d 1331, 1346 (Fed. Cir. 2009)
`
`D.
`
`Prior Art Teachings Show that the Board’s Findings Are Correct
`
`
`
`
` 5
`
`

`

`
`
`DMC’s position is inconsistent with the prior art it relies on to support its
`
`interpretation of the belly panel height required by claim 1. For example, Weiser
`
`(Exs. 2034; 1067) discloses a waist line “just below the breasts” that is lower than
`
`DMC’s application of “just beneath the wearer’s breast area” to both its SFB
`
`products and the prior art. Exs. 2034, 1067, Figs. 1, 2, 3:37-54 (emphasis added);
`
`c.f. Paper 25, at 7, 20 (emphasis added). Dr. Brookstein also used Weiser to define
`
`the upper abdomen, as shown in the annotated image, below. Ex. 1078, at 210:25-
`
`211:23, 211:25-212:7. Specifically, Weiser discloses that “[a] pregnant woman . . .
`
`has a vary [sic] definitive waist line or reduced girth line just below the breasts. .
`
`. . [T]he joining edges (seams 26 and 28) are provided at
`
`
`
`this waist line.” Ex. 2034, at 3:40-45 (emphasis added).
`
`As such, the waist line and seam 26 at the waist line are
`
`“just below the breasts,” which is necessarily at a higher
`
`location on the wearer’s torso than “just beneath the
`
`wearer’s breast area.” See Paper 11, at 7.
`
`In short, Wesier’s disclosure of “just below the breasts” is clearly inconsistent with
`
`both DMC’s arguments and Dr. Brookstein’s findings.
`
`E. DMC’s Prior Infringement Allegations Are Consistent with the
`Board’s Findings
`
`The Board’s interpretation of claim 1 also aligns with DMC’s prior
`
`contentions that various Target and third-party products meet the belly-panel-
`
`
`
`8
`
`

`

`
`
`height limitation of claim 1. See, e.g., ASM Am., Inc. v. Genus, Inc., 401 F.3d
`
`1340, 1347 (Fed. Cir. 2005) (prior statements by plaintiff’s Chief Technology
`
`Officer regarding the scope of the claims were proper extrinsic evidence in claim
`
`construction). In the present proceeding, however, DMC did not provide its prior
`
`infringement allegations to Dr. Brookstein. Ex. 1078, at 318:2-17. When shown
`
`images of products DMC accused of infringement long before the petition was
`
`filed in this proceeding, Dr. Brookstein explained how three of these products do
`
`not meet the belly-panel-height requirements of claim 1, and, indeed, how much
`
`higher the belly panels need to be to meet his interpretation of claim 1:
`
`
`
`Ex. 1070. See also (Target products) Exs. 1080; 1081; 1078, at 268:8-11, 268:14-
`
`269:5, 271:9-272:3; (Suits Your Belly products) Exs. 1077; 1085; 1078, at 315:16-
`
`20, 315:22-316:24, 317:3-5, 317:8-15; and (Salsa Jeans products) Exs. 1072; 1082-
`
`1084; 1078, at 279:19-24, 280:5-13, 280:16-281:2, 281:5-281:12.
`
`
`
`7
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`

`

`
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`Thus, proper extrinsic evidence demonstrates that the Board’s construction
`
`is both correct and consistent with DMC’s contentions regarding the scope of
`
`claim 1 prior to this proceeding.
`
`F.
`
`The JCP Fold-Over Panel Jeans Anticipate Claim 1
`1.
`
`The JCP Fold-Over Panel Jeans Disclose the Belly-Panel-
`Height Requirement of Claim 1
`
`JCP discloses the belly-panel-height limitation and anticipates claim 1 for
`
`several reasons. First, “the upper edge of the fold-over panel [of JCP] 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 . . . .” Paper 11, at 12. Second, even
`
`Dr. Brookstein and a named inventor, Lisa Hendrickson, agree that JCP discloses
`
`the top of the belly. Exs. 1069; 1002; 1078, at 263:18-265:2, 266:3-7, 266:10-22.
`
`And the disclosed belly panel extends above the line they claim denotes the
`
`approximate top of the belly. Ex. 1069. Finally, the height of the belly panel
`
`disclosed in JCP is consistent with the height of belly panels that DMC accused of
`
`infringement prior to this proceeding. See Section II.E, supra.
`
`2.
`
`The JCP Fold-Over Panel Jeans Disclose the All-Stages-of-
`Pregnancy Requirement of Claim 1
`
`JCP discloses this limitation and anticipates claim 1; DMC’s argument to the
`
`contrary is flawed in at least three ways. First, Dr. Brookstein (1) was unable to
`
`provide a reason why JCP does not expand circumferentially at least as much as
`
`the SFB products he tested, (2) does not dispute that JCP can expand and contract
`8
`
`
`
`

`

`
`
`radially and circumferentially, and (3) conceded that the disagreement concerns
`
`how far the belly panel may be pulled up by the wearer. Ex. 1078, at 335:11-15,
`
`335:17-336:2, 336:4-8, 341:22-342:8. Moreover, Dr. Brookstein determined that
`
`DMC’s SFB products disclose the all-stages-of-pregnancy requirement based only
`
`on SFB products placed on 3-month and 9-month mannequins. Ex. 2017, ¶ 42; Ex.
`
`1078, at 107:22-108:5, 109:11-15, 109:21-23, 109:25-110:3, 110:24-111:2, 111:4-
`
`12, 113:14-18. For Dr. Brookstein, this was apparently sufficient even though he
`
`did not analyze whether the SFB products would function at stages of pregnancy
`
`prior to 3 months, after nine months, and in postpartum. Id.
`
`
`
`Second, DMC and Dr. Brookstein mischaracterize and/or do not address or
`
`consider the testimony of a J.C. Penney witness with first-hand knowledge of JCP
`
`and the development of the depicted product, Ms. Simon, who confirmed that JCP
`
`meets this limitation and need not be folded to properly function. Paper 25, at 26-
`
`32; Ex. 1078, at 57:23-58:11; Ex. 3002, at 56:16-19, 176:22-177:12, 177:21-
`
`178:10; see also Ex. 3002, at 134:2-11, 145:13-15. For example, when questioned
`
`by counsel for Patent Owner, Ms. Simon confirmed that JCP stays up on wearer’s
`
`torso during all stages of pregnancy in each of the three configurations described in
`
`Exhibit 1002. The first excerpt was even cited by DMC, Paper 25, at 28-29, but,
`
`tellingly, DMC omitted the first Q&A.
`
`
`
`9
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`

`

`
`
`Q. Okay. Now, could each of these ways of wearing the pant be worn
`throughout a pregnancy?
`A. Yes. It depends on the customer.
`Q. What about the normal -- whatever -- whatever you designed it on,
`the normal customer, how would it -- would it change how they wore
`it depending on what stage of pregnancy they were in?
`A. It could.
`Q. How could it change?
`A. Personal preference. Some people don't like anything over their
`belly, so regardless of how big they were, they might still want it
`under their belly. Some people that are used to -- the younger
`customer that’s used to low-rise jeans might love it under the belly
`and might never raise it over her belly. It’s – it’s really a personal
`preference on where she wants to put it.
`Ex. 3002, at 176:22-177:12 (emphasis added).
`
`Q. Did you get feedback on how -- on how the pants stayed up on
`different people?
`A. Yes.
`Q. And what was that feedback?
`A. That it stayed up nicely because the elastic was secure.
`Q. For -- now, is that -- is that specific to when it’s folded or when
`it’s not folded?
`A. It’s specific to wherever -- what position it’s in.
`Q. Can you explain that?
`A. So you want it to stay to your body, whether it’s under your belly
`or over your belly -- belly; I’m sorry. So it was specific to that, that
`
`
`
`10
`
`

`

`
`
`the elastic had enough recovery that it stayed in place.
`Ex. 3002, at 177:21-178:10 (emphasis added). This is not evidence that JCP must
`
`be folded during some stages of pregnancy; this testimony establishes that JCP
`
`may be worn in any of at least three different ways, based on preference, during
`
`any stage or stages of pregnancy. Ex. 3002, at 134:2-11, 145:13-146:9, 176:9-
`
`177:12, 177:21-178:10.
`
`Finally, DMC’s criticism of JCP is premised on improperly converting
`
`permissive language into language of necessity. For instance, DMC claims that
`
`JCP must be folded during different stages of pregnancy to function. E.g., Paper
`
`25, at 26-32. The basis identified by DMC and its expert are statements that the
`
`garments “can be worn three different ways” or “can be worn” in various ways.
`
`E.g., Ex. 2017, ¶¶ 58, 44-45 (emphasis added). One of ordinary skill in the art
`
`would not understand “can” to create the requirement for which DMC argues. See,
`
`e.g., Ring Plus, Inc. v. Cingular Wireless, LLC, No 2:06-cv-159-DF, 2007 WL
`
`5688765, at *18 (E.D. Tex. July 9, 2007) (“[A] person of ordinary skill in the art
`
`would understand the word ‘can’ to be permissive rather than mandatory”).
`
`G. The JCP Fold-Over Panel Jeans Anticipates Claim 24
`The Board correctly observed, regarding ’531 Patent claim 10, “foldable”
`
`“does not require actual folding. It is enough that the fold-over panel be ‘foldable’
`
`in such a manner.” Ex. 1031, at 12. And claim 24, similarly, merely requires that
`
`the belly panel be “foldable.” Ex. 1018, cls. 10, 24. DMC and its expert do not
`11
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`
`
`

`

`
`
`address the Board’s observation on the plain language of claims 10 and 24, when
`
`they contend that JCP does not disclose this limitation because it is not depicted in
`
`Ex. 1002. Ex. 2017, ¶ 50; Paper 25, at 41, 42. Thus, DMC’s argument is
`
`unpersuasive in view of the Board’s observation on the plain language of the
`
`claim. Ex. 1031, at 12.
`
`Ms. Simon also described how JCP meets this limitation, but Dr. Brookstein
`
`did not review or address this portion of Ms. Simon’s testimony. Ex. 3002, at
`
`147:2-13; Ex. 1078, at 57:23-58:11. DMC and its expert also argue that JCP must
`
`be folded to function, but this is incorrect as demonstrated in Section II.F.2, supra.
`
`For all of these reasons, JCP anticipates claim 24.
`
`Moreover, JCP is explicitly described as foldable in a variety of
`
`configurations to “decide the fit you want,” such that the belly panel of these jeans
`
`is clearly “foldable toward the garment lower portion to provide a folded band on
`
`the garment lower portion to be worn as a garment bottom having no top.” Exs.
`
`1002; 1018, cl. 24.
`
`III. DMC DOES NOT CONTEST THE PRIMA FACIE OBVIOUSNESS
`OF CLAIMS 25-26, AND 28-29 PRESUMING THE JCP FOLD-OVER
`PANEL JEANS ANTICIPATE CLAIM 1
`DMC does not dispute that Petitioner provides prima facie obviousness
`
`showings for claims 26-27, but for its contention that JCP does not anticipate claim
`
`1. Paper 25, at 34-42. DMC also does not dispute the rational underpinnings for
`
`
`
`12
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`

`

`
`
`the identified combinations. Id.
`
`IV. DMC’S SECONDARY CONSIDERATIONS DO NOT REBUT
`PETITIONER’S PRIMA FACIE SHOWING OF OBVIOUSNESS
`
`DMC relies entirely on secondary considerations to demonstrate non-
`
`obviousness. Such secondary considerations fail for three reasons, but, even if
`
`they are accorded weight, they cannot overcome Petitioner’s strong showing of
`
`obviousness. First, DMC’s secondary considerations are entitled to little weight
`
`because DMC has not demonstrated a nexus between its secondary considerations
`
`and claims 26-27. MeadWestVaco Corp. v. Rexam Beauty & Closures, Inc., 731
`
`F.3d 1258, 1264–65 (Fed. Cir. 2013); Paulsen, 30 F.3d at 1482; IPR2013-00206,
`
`Paper 65, at 25, 26. No nexus exists because Mr. Green did not explain how any
`
`secondary considerations are linked to claims 26-27 rather than other claims of the
`
`patent (e.g., claim 1) or unclaimed subject matter. Ex. 1110, ¶¶ 10-11, 23-27;
`
`IPR2013-00206, Paper 65, at 26; e.g., Ex. 1079, at 58:17-23, 61:13-25, 133:8-
`
`134:12. For example, DMC consistently touts the seamlessness of the belly panels
`
`in its SFB products, but seamlessness is not claimed in claims 1, 26-27. Ex. 1078,
`
`at 345:15-19, 345:23-346:8; Ex. 2022, ¶ 21, n. 18; Exs. 2021; 2050. Moreover,
`
`Mr. Green failed to meaningfully consider whether a host of other factors
`
`contributed to the sales of DMC’s SFB products. Ex. 1110, ¶¶ 10, 12, 29, 37-48.
`
`And the bases that Mr. Green relied upon in his analysis and in forming his
`
`opinions are largely speculative and highly questionable. Ex. 1110, ¶¶ 10, 12, 28,
`
`
`
`13
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`

`

`
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`30-36. Thus, DMC’s secondary considerations are entitled to no weight. E.g.,
`
`Paulsen, 30 F.3d at 1482 (“[E]vidence [of secondary considerations] pertinent to
`
`[independent] claims 1 and 18 [] carries no weight with respect to [dependent]
`
`claims 2-4, 6, and 28-34.”); MeadWestVaco, 731 F.3d at 1264–65.
`
`Third, DMC’s contention that Petitioner “merely copied Patent Owner’s
`
`successful Secret Fit Belly® styles,” Paper 25, at 43, 44, is unsupported for several
`
`reasons. DMC claims that Petitioner “began selling products identical to Patent
`
`Owner’s Secret Fit Belly® product,” but provides no evidence demonstrating that
`
`any Target product is a copy of, or identical to, any SFB style. Paper 25, at 38-39.
`
`Indeed, they are not. Moreover, DMC concedes that Target’s products are not
`
`seamless like DMC’s SFB products. See Section II.E, supra; Paper 25, at 38-39.
`
`Indeed, DMC and its experts also go to great lengths to tout the importance of the
`
`seamless nature of the SFB products. Ex. 2021; Ex. 2022, ¶ 21, n. 18; Ex. 2050;
`
`Ex. 1078, at 344:16-19.
`
`Even if DMC’s secondary considerations are accorded weight they cannot
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`overcome Petitioner’s uncontested prima facie obviousness showings as a matter
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`of law. That is so because when inventions “represent[] no more than ‘the
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`predictable use of prior art elements according to their established functions’ . . .
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`the secondary considerations are inadequate to establish nonobviousness as a
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`matter of law.” Wyers v. Master Lock Co., 616 F.3d 1231, 1246 (Fed. Cir. 2010).
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`14
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`The exchange of one type of belly panel for another or the addition or removal of
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`minor features each represent the predictable use of prior art elements according to
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`their established functions. E.g., Ex. 1011, ¶¶ 25, 28; Paper 11, at 16. Thus, as a
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`matter of law, DMC’s secondary considerations cannot overcome Petitioner’s
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`obviousness showings for claims 26-27.
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`Dated: July 25, 2014
`
`By:
`
`
`
`/s/ Norman J. Hedges
`Norman J. Hedges (Reg. No. 44,151)
`FAEGRE BAKER DANIELS LLP
`300 N. Meridian St., Ste. 2700
`Indianapolis, IN 46204-1750
`Telephone: 317-237-0300
`Facsimile: 317-237-1000
`Norman.Hedges@FaegreBD.com
`
`
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`15
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`By:
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`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6(e), I hereby certify that I caused a true and
`
`correct copy of the foregoing document to be served via e-mail, as a PDF file
`attachment, on July 25, 2014, on the following:
`
`Paul A. Taufer
`Michael L. Burns
`DLA PIPER LLP (US)
`One Liberty Place
`1650 Market St., Ste. 4900
`Philadelphia, PA 19103-7300
`Telephone: (215) 656-3385
`Facsimile:
`(215) 606-3385
`Paul.Taufer@dlapiper.com
`Michael.Burns@dlapiper.com
`
`Stuart E. Pollack
`DLA PIPER LLP (US)
`1251 Avenue of the Americas
`27th Floor
`New York, NY 10020-1104
`Telephone: (212) 335-4964
`Facsimile:
`(212) 884-8464
`Stuart.Pollack@dlapiper.com
`
`
`Dated: July 25, 2014
`
`
`
`/s/ Norman J. Hedges
`Norman J. Hedges (Reg. No. 44,151)
`FAEGRE BAKER DANIELS LLP
`300 N. Meridian St., Ste. 2700
`Indianapolis, IN 46204-1750
`Telephone: 317-237-0300
`Facsimile: 317-237-1000
`Norman.Hedges@FaegreBD.com
`
`
`
`16
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`