`Filed: September 2, 2014
`
`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 E
`__________________
`
`
`Before JENNIFER S. BISK, MICHAEL J. FITZPATRICK, and
`MITCHELL G. WEATHERLY, Administrative Patent Judges.
`
`
`
`PETITIONER’S REQUEST FOR ORAL ARGUMENT
`PURSUANT TO 37 C.F.R. § 42.70(a)
`
`
`
`
`
`
`
`
`Pursuant to 37 C.F.R. § 42.70(a), Petitioner Target Corporation (“Target” or
`
`“Petitioner”) respectfully requests the opportunity to present oral argument. There
`
`are currently six proceedings between Target and Patent Owner Destination
`
`Maternity Corporation (“DMC” or “Patent Owner”), four of which, as set forth in
`
`the Board’s February 14, 2014 Scheduling Order, are currently scheduled for oral
`
`argument on October 7, 2014. The four proceedings are:
`
`IPR2013-00530 (U.S. Patent No. RE43,563);
`
`IPR2013-00531 (U.S. Patent No. RE43,563);
`
`IPR2013-00532 (U.S. Patent No. RE43,531); and
`
`IPR2013-00533 (U.S. Patent No. RE43,531).
`
`Because there are related issues in these proceedings, Target believes that
`
`the above cases can be grouped for oral argument. Target requests two (2) hours
`
`of argument time, to address the following issues:
`
`1. IPR2013-00530 (U.S. Patent No. RE43,563):
`
`a. Grounds for which inter partes review was instituted:
`
`i. U.S. Patent No. RE43,563 claims 1-3 and 6-8 are anticipated by
`
`JCP fold-over panel jeans (Ex. 1002, at 2);
`
`ii. U.S. Patent No. RE43,563 claims 3 and 4 are obvious over JCP
`
`fold-over panel jeans (Ex. 1002, at 2) in view of JCP maternity
`
`bootcut jeans (Ex. 1002, at 3); and
`
`US.54787538.01
`
`-2-
`
`
`
`iii. U.S. Patent No. RE43,563 claim 1 is anticipated by U.S. Patent
`
`No. 6,276,175 (Ex. 1004).
`
`b. Any issues properly raised by Patent Owner in IPR2013-00530,
`
`including in Patent Owner’s Preliminary Response, Patent Owner’s
`
`Response, Patent Owner’s Observations on Cross-Examination of
`
`Reply Witness and Petitioner’s Response thereto, and Patent Owner’s
`
`Motion to Exclude and Petitioner’s Response thereto.
`
`c. Any issues addressed by Petitioner in IPR2013-00530, including the
`
`Petition for Inter Partes Review, Petitioner’s Reply to Patent Owner’s
`
`Response, and Petitioner’s Motion to Exclude and Patent Owner’s
`
`Response thereto.
`
`d. Issues related to all exhibits filed in IPR2013-00530.
`
`e. Rebuttal to issues raised by Patent Owner in IPR2013-00530.
`
`f. Any issues in IPR2013-00530 noted in Patent Owner’s Request for
`
`Oral Argument or otherwise raised by the Board.
`
`2. IPR2013-00531 (U.S. Patent No. RE43,563):
`
`a. Grounds for which inter partes review was instituted:
`
`i. U.S. Patent No. RE43,563 claims 1, 10, 11, and 16 are
`
`anticipated by JCP fold-over panel jeans (Ex. 1002, at 2);
`
`US.54787538.01
`
`-3-
`
`
`
`ii. U.S. Patent No. RE43,563 claim 14 is obvious over JCP fold-
`
`over panel jeans (Ex. 1002, at 2) and JCP maternity bootcut
`
`jeans (Ex. 1002, at 3);
`
`iii. U.S. Patent No. RE43,563 claims 12 and 13 are obvious over
`
`JCP fold-over panel jeans (Ex. 1002, at 2) in view of Expecting
`
`Style, by Lauren Sara (Ex. 1005, at 4, 5); and
`
`iv. U.S. Patent No. RE43,563 claims 1 and 20 are anticipated by
`
`U.S. Patent No. 6,276,175 (Ex. 1004).
`
`b. Any issues properly raised by Patent Owner in IPR2013-00531,
`
`including in Patent Owner’s Preliminary Response, Patent Owner’s
`
`Response, Patent Owner’s Contingent Motion to Amend, Patent
`
`Owner’s Reply to Petitioner’s Opposition to Patent Owner’s
`
`Contingent Motion to Amend, Patent Owner’s Observations on Cross-
`
`Examination of Reply Witness and Petitioner’s Response thereto, and
`
`Patent Owner’s Motion to Exclude and Petitioner’s Response thereto.
`
`c. Any issues addressed by Petitioner in IPR2013-00531, including the
`
`Petition for Inter Partes Review, Petitioner’s Reply to Patent Owner’s
`
`Response, Petitioner’s Opposition to Patent Owner’s Contingent
`
`Motion to Amend, and Petitioner’s Motion to Exclude and Patent
`
`Owner’s Response thereto.
`
`US.54787538.01
`
`-4-
`
`
`
`d. Issues related to all exhibits filed in IPR2013-00531.
`
`e. Rebuttal to issues raised by Patent Owner in IPR2013-00531.
`
`f. Any issues in IPR2013-00531 noted in Patent Owner’s Request for
`
`Oral Argument or otherwise raised by the Board.
`
`3. IPR2013-00532 (U.S. Patent No. RE43,531):
`
`a. Grounds for which inter partes review was instituted:
`
`i. U.S. Patent No. RE43,531 claims 1, 2, 5, 10, and 17 are
`
`anticipated by JCP fold-over panel jeans (Ex. 1002, at 2);
`
`ii. U.S. Patent No. RE43,531 claims 6 and 11 are obvious over
`
`JCP fold-over panel jeans (Ex. 1002, at 2) in view of JCP
`
`maternity bootcut jeans (Ex. 1002, at 3); and
`
`iii. U.S. Patent No. RE43,531 claims 15 and 16 are obvious over
`
`JCP fold-over panel jeans (Ex. 1002, at 2) in view of U.S.
`
`Patent Application Publication No. 2004/0049834 (Ex. 1003).
`
`b. Any issues properly raised by Patent Owner in IPR2013-00532,
`
`including in Patent Owner’s Preliminary Response, Patent Owner’s
`
`Response, Patent Owner’s Observations on Cross-Examination of
`
`Reply Witness and Petitioner’s Response thereto, and Patent Owner’s
`
`Motion to Exclude and Petitioner’s Response thereto.
`
`US.54787538.01
`
`-5-
`
`
`
`c. Any issues addressed by Petitioner in IPR2013-00532, including the
`
`Petition for Inter Partes Review, Petitioner’s Reply to Patent Owner’s
`
`Response, and Petitioner’s Motion to Exclude and Patent Owner’s
`
`Response thereto.
`
`d. Issues related to all exhibits filed in IPR2013-00532.
`
`e. Rebuttal to issues raised by Patent Owner in IPR2013-00532.
`
`f. Any issues in IPR2013-00532 noted in Patent Owner’s Request for
`
`Oral Argument or otherwise raised by the Board.
`
`4. IPR2013-00533 (U.S. Patent No. RE43,531):
`
`a. Grounds for which inter partes review was instituted:
`
`i. U.S. Patent No. RE43,531 claims 1, 24-26, 28, and 29 are
`
`anticipated by JCP fold-over panel jeans (Ex. 1002, at 2); and
`
`ii. U.S. Patent No. RE43,531 claims 26 and 27 are obvious over
`
`JCP fold-over panel jeans (Ex. 1002, at 2) in view of JCP
`
`maternity bootcut jeans (Ex. 1002, at 3).
`
`b. Any issues properly raised by Patent Owner in IPR2013-00533,
`
`including in Patent Owner’s Preliminary Response, Patent Owner’s
`
`Response, Patent Owner’s Observations on Cross-Examination of
`
`Reply Witness and Petitioner’s Response thereto, and Patent Owner’s
`
`Motion to Exclude and Petitioner’s Response thereto.
`
`US.54787538.01
`
`-6-
`
`
`
`c. Any issues addressed by Petitioner in IPR2013-00533, including the
`
`Petition for Inter Partes Review, Petitioner’s Reply to Patent Owner’s
`
`Response, and Petitioner’s Motion to Exclude and Patent Owner’s
`
`Response thereto.
`
`d. Issues related to all exhibits filed in IPR2013-00533.
`
`e. Rebuttal to issues raised by Patent Owner in IPR2013-00533.
`
`f. Any issues in IPR2013-00533 noted in Patent Owner’s Request for
`
`Oral Argument or otherwise raised by the Board.
`
`5. IPR2014-00508 (U.S. Patent No. RE43,563):
`
`a. Grounds for which inter partes review was requested:
`
`i. U.S. Patent No. RE43,563 claim 21 is anticipated by Asada
`
`(Exs. 2036, 2037, 1034, 1035);
`
`ii. U.S. Patent No. RE43,563 claim 20 is obvious over Asada
`
`(Exs. 2036, 2037, 1034, 1035) in view of U.S. Patent No.
`
`8,185,970 (Ex. 1037);
`
`iii. U.S. Patent No. RE43,563 claim 20 is obvious over Asada (Exs.
`
`2036, 2037, 1034, 1035) in view of U.S. Patent No. 4,506,390
`
`(Ex. 1017);
`
`US.54787538.01
`
`-7-
`
`
`
`iv. U.S. Patent No. RE43,563 claim 21 is obvious over JCP fold-
`
`over panel jeans (Ex. 1002, at 2) in view of Asada (Exs. 2036,
`
`2037, 1034, 1035); and
`
`v. U.S. Patent No. RE43,563 claim 21 is obvious over JCP (Exs.
`
`2036, 2037, 1034, 1035) fold-over panel jeans (Ex. 1002, at 2)
`
`in view of U.S. Patent No. 8,185,970 (Ex. 1037).
`
`b. Any issues properly raised by Patent Owner in IPR2014-00508,
`
`including those in Patent Owner’s Preliminary Response.
`
`c. Any issues addressed by Petitioner in IPR2014-00508, including the
`
`Petition for Inter Partes Review.
`
`d. Issues related to all exhibits filed in IPR2014-00508.
`
`e. Rebuttal to issues raised by Patent Owner in IPR2014-00508.
`
`f. Any issues in IPR2014-00508 noted in Patent Owner’s Request for
`
`Oral Argument or otherwise raised by the Board.
`
`6. IPR2014-00509 (U.S. Patent No. RE43,531):
`
`a. Grounds for which inter partes review was requested:
`
`i. U.S. Patent No. RE43,531 claim 19 is anticipated by Asada
`
`(Exs. 2036, 2037, 1034, 1035);
`
`US.54787538.01
`
`-8-
`
`
`
`ii. U.S. Patent No. RE43,531 claim 18 is obvious over Asada (Exs.
`
`2036, 2037, 1034, 1035) in view of U.S. Patent No. 8,185,970
`
`(Ex. 1037);
`
`iii. U.S. Patent No. RE43,531 claim 18 is obvious over Asada (Exs.
`
`2036, 2037, 1034, 1035) in view of U.S. Patent No. 4,506,390
`
`(Ex. 1017);
`
`iv. U.S. Patent No. RE43,531 claim 18 is obvious over JCP (Exs.
`
`2036, 2037, 1034, 1035) fold-over panel jeans (Ex. 1002, at 2)
`
`in view of U.S. Patent No. 8,185,970 (Ex. 1037); and
`
`v. U.S. Patent No. RE43,531 claim 19 is obvious over JCP fold-
`
`over panel jeans (Ex. 1002, at 2) in view of Asada (Exs. 2036,
`
`2037, 1034, 1035).
`
`b. Any issues properly raised by Patent Owner in IPR2014-00509,
`
`including those in Patent Owner’s Preliminary Response.
`
`c. Any issues addressed by Petitioner in IPR2014-00509, including the
`
`Petition for Inter Partes Review.
`
`d. Issues related to all exhibits filed in IPR2014-00509.
`
`e. Rebuttal to issues raised by Patent Owner in IPR2014-00509.
`
`f. Any issues in IPR2014-00509 noted in Patent Owner’s Request for
`
`Oral Argument or otherwise raised by the Board.
`
`US.54787538.01
`
`-9-
`
`
`
`Petitioner requests permission to use audio/visual equipment to display
`
`demonstrative exhibits, including a computer, projector, and screen to display
`
`demonstratives and exhibits. Petitioner also requests the services of a court
`
`reporter for the transcription of the oral argument in the above-identified
`
`proceedings.
`
`Dated: September 2, 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
`
`US.54787538.01
`
`-10-
`
`
`
`
`
`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 Petitioner’s Request for Oral Argument Pursuant to
`37 C.F.R. § 42.70(a) to be served via e-mail, as a PDF file attachment, on
`September 2, 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: September 2, 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
`
`By:
`
`US.54787538.01
`
`