`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`TARGET CORPORATION
`Petitioner
`
`v.
`
`DESTINATION MATERNITY CORPORATION
`Patent Owner
`_____________
`
`Case No. IPR2013-00533
`(U.S. Patent No. RE43,531)
`_____________
`
`Dated: September 2, 2014
`
`Before JENNIFER S. BISK, MICHAEL J. FITZPATRICK, and
`MITCHELL G. WEATHERLY Administrative Patent Judges.
`
`PATENT OWNER’S REQUEST FOR ORAL ARGUMENT
`
`EAST\82246123.1
`
`
`
`Pursuant to 37 C.F.R. § 42.70(a), Patent Owner, Destination Maternity
`
`Corporation (“Patent Owner”) hereby requests oral argument in the present inter
`
`partes review proceeding. Oral argument is currently scheduled for the following
`
`four related instituted cases, including the present case, on October 7, 2014: (1)
`
`IPR2013-00530 (U.S. Patent No. RE43,563); (2) IPR2013-00531 (U.S. Patent No.
`
`RE43,563);
`
`(3)
`
`IPR2013-00532 (U.S. Patent No. RE43,531);
`
`and (4)
`
`IPR2013-00533 (U.S. Patent No. RE43,531). Patent Owner believes these four
`
`cases can be grouped for oral argument, and requests two (2) hours of oral
`
`argument.
`
`DMC specifies the following issues to be argued (without waiving
`
`consideration of any issue not listed below):
`
`1.
`
`The appropriate construction to be given to the disputed claim terms
`
`including:
`
`a. "just beneath wearer's breast area";
`
`b. "just beneath the wearer’s breast area";
`
`c. "an expansible belly panel"; and
`
`d. "during all stages of pregnancy."
`
`2.
`
`The failure of the references to anticipate or render obvious the claims
`
`upon which inter partes review has been instituted, which are as follows:
`
`a. IPR2013-00532 (U.S. Patent No. RE43,531)
`
`EAST\82246123.1
`
`- 2 -
`
`
`
`i. Claims 1, 2, 5, 10, and 17 as anticipated by JCP fold-over panel
`
`jeans;
`
`ii. Claims 6 and 11 as obvious over the JCP fold-over panel jeans
`
`and JCP maternity bootcut jeans; and
`
`iii. Claims 15 and 16 as obvious over the JCP fold-over panel jeans
`
`and Stangle.
`
`b. IPR2013-00533 (U.S. Patent No. RE43,531)
`
`i. Claims 1, 24–26, 28, and 29 as anticipated by JCP fold-over
`
`panel jeans; and
`
`ii. Claims 26 and 27 as obvious over the JCP fold-over panel jeans
`
`and JCP maternity bootcut jeans.
`
`c. IPR2013-00530 (U.S. Patent No. RE43,563)
`
`i. Claims 1–3 and 6–8 as anticipated by JCP fold-over panel jeans;
`
`ii. Claims 3 and 4 as unpatentable as being directed to subject
`
`matter that would have been obvious in light of JCP fold-over
`
`panel jeans and JCP maternity bootcut jeans; and
`
`iii. Claim 1 as anticipated by Browder.
`
`d. IPR2013-00531 (U.S. Patent No. RE43,563)
`
`i. Claims 1, 10, 11, and 16 as anticipated by JCP fold-over panel
`
`jeans;
`
`EAST\82246123.1
`
`- 3 -
`
`
`
`ii. Claim 14 as obvious over the JCP fold-over panel jeans and JCP
`
`maternity bootcut jeans;
`
`iii. Claims 12 and 13 as obvious over the JCP fold-over panel jeans
`
`and Lauren Sara; and
`
`iv. Claims 1 and 20 as anticipated by Browder.
`
`3.
`
`Secondary considerations of nonobviousness including commercial
`
`success;
`
`4.
`
`Patent Owner's Motion for Observation Regarding Cross-Examination
`
`of Reply Witness and Petitioner's response thereto;
`
`5.
`
`Patent Owner’s Motion In The Alternative To Amend Claim 1 Of U.S.
`
`Patent No. RE43,563, filed on May 5, 2014, and Petitioner’s opposition thereto;
`
`6.
`
`Reply to arguments raised in Petitioner’s Petitions for Inter Partes
`
`Review;
`
`7.
`
`Reply to arguments raised in Petitioner’s Replies to Patent Owner
`
`Responses to Petitions;
`
`8.
`
`Patent Owner’s Motion to Exclude Evidence and Petitioner’s response
`
`thereto;
`
`9.
`
`Petitioner’s Motion to Exclude Evidence and Patent Owner’s response
`
`thereto;
`
`EAST\82246123.1
`
`- 4 -
`
`
`
`10. Response to any issues properly specified by Petitioner in its request
`
`for oral argument;
`
`11. Response to Petitioner’s presentation on all matters; and
`
`12. Any other issues briefed or presented by the parties throughout this
`
`trial.
`
`For oral argument, Patent Owner requests to use audio/visual equipment to
`
`display demonstrative exhibits, including a computer, projector and screen for a
`
`display. Patent Owner also requests a court reporter for oral argument.
`
`In
`
`accordance with the Trial Practice Guide, 77 Fed. Reg. at 48768, Patent Owner will
`
`contact the Board Trial Division paralegal to discuss these requests.
`
`EAST\82246123.1
`
`- 5 -
`
`
`
`Dated: September 2, 2014
`
`Respectfully submitted,
`
`DLA PIPER LLP (US)
`/s/ Paul Taufer
`Paul A. Taufer (USPTO Reg. No.
`35,703)
`Michael L. Burns (USPTO Reg. No.
`57,593)
`DLA Piper LLP (US)
`One Liberty Place
`1650 Market Street, Suite 4900
`Philadelphia, PA 19103
`Phone: (215) 656-3385
`Facsimile: (215) 606-3385
`paul.taufer@dlapiper.com
`michael.burns@dlapiper.com
`
`Stuart Pollack (USPTO Reg. No. 43,862)
`DLA Piper LLP (US)
`1251 Avenue of the Americas
`27th Floor
`New York, NY 10020-1104
`Phone: (212) 335-4964
`Facsimile: (212) 884-
`stuart.pollack@dlapiper.com
`
`Attorneys for Patent Owner, Destination
`Maternity Corporation
`
`EAST\82246123.1
`
`- 6 -
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies that on September 2, 2014 a complete and entire
`
`copy of Patent Owner’s Request for Oral Argument was provided via email to the
`
`Petitioner by serving the email correspondence address of record as follows:
`
`Norman J. Hedges
`R. Trevor Carter
`Daniel M. Lechleiter
`Faegre Baker Daniels LLP
`300 N. Meridian Street, Suite 2700
`Indianapolis, Indiana 46204-1750
`Phone: (317) 237-0300
`Fax: (317) 237-1000
`Norman.Hedges@FaegreBD.com
`trevor.carter@FaegreBD.com
`daniel.lechleiter@FaegreBD.com
`
`/s/ Paul Taufer
`Paul A. Taufer
`
`EAST\82246123.1
`
`- 7 -