IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`_________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_________________
`
`TARGET CORPORATION
`Petitioner
`
`v.
`
`DESTINATION MATERNITY CORPORATION
`Patent Owner
`
`Patent No. RE43,563
`Filing Date: June 15, 2011
`Issue Date: August 7, 2012
`Title: BELLY COVERING GARMENT
`__________________
`
`Inter Partes Review No. 2013-00530
`Filing Date: August 27, 2013
`__________________
`
`CORRECTED PETITION FOR INTER PARTES REVIEW
`UNDER 35 U.S.C. §§ 311-319 AND 37 C.F.R. § 42.100 ET SEQ.
`
`dms.us.52766744.01
`
`Target Corporation
`EX. 1026 - Page 1
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`Inter Partes Review No. 2013-00530
`Corrected Petition For Inter Partes Review
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`TABLE OF CONTENTS
`
`I.
`
`Notices and Formalities ................................................................................... 1
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`F.
`
`G.
`
`Real Party In Interest ............................................................................. 1
`
`Related Matters ...................................................................................... 1
`
`Lead and Back-Up Counsel ................................................................... 1
`
`Service Information ............................................................................... 2
`
`Grounds for Standing ............................................................................ 2
`
`Power of Attorney ................................................................................. 2
`
`Fees ........................................................................................................ 2
`
`II.
`
`Statement of the Precise Relief Requested ...................................................... 2
`
`III. Overview of the ’563 Patent ............................................................................ 3
`
`A.
`
`B.
`
`The Disclosed Invention in the ’563 Patent .......................................... 3
`
`Prosecution History of the ’563 Patent ................................................. 6
`
`IV. Overview of the Prior Art Relied Upon for the Challenge ............................ 15
`
`A.
`
`B.
`
`C.
`
`D.
`
`J.C. Penney ontrend Maternity Catalog, Fall/Winter 2005 ................ 15
`
`U.S. Patent Application Publication No. 2004/0049834 A1 to
`Stangle et al. ........................................................................................ 20
`
`U.S. Patent No. 6,276,175 to Browder ................................................ 26
`
`“expecting style” by Lauren Sara ........................................................ 27
`
`V.
`
`Construction of Certain Claim Terms ........................................................... 29
`
`VI. Level of Ordinary Skill in the Art ................................................................. 30
`
`VII. Threshold Requirement for Inter Partes Review .......................................... 31
`
`dms.us.52766744.01
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`VIII. Statement of Reasons for Relief Requested .................................................. 31
`
`A. Ground 1: Claims 1-3 and 6-8 are Unpatentable as Being
`Anticipated by the J.C. Penney ontrend Maternity Catalog at
`Page 15 ................................................................................................ 31
`
`B.
`
`C.
`
`Ground 2: Claims 3 and 4 are Unpatentable as Being Obvious
`Over JCP-A in View of the J.C. Penney ontrend Maternity
`Catalog at Page 19 .............................................................................. 34
`
`Ground 3: Claims 3 and 4 are Unpatentable as Being Obvious
`Over JCP-A in View of JCP-B in Further View of “expecting
`style” by Lauren Sara .......................................................................... 37
`
`D. Ground 4: Claims 1, 2, and 6-8 are Unpatentable as Being
`Anticipated By U.S. Patent App. Pub. No. US 2004/0049834
`A1 to Stangle et al. .............................................................................. 40
`
`E.
`
`F.
`
`Ground 5: Claims 3 and 4 are Unpatentable as Being Obvious
`Over Stangle in View of JCP-B .......................................................... 44
`
`Ground 6: Claims 3 and 4 are Unpatentable as Being Obvious
`Over Stangle in View of JCP-B in Further View of Sara ................... 47
`
`G. Ground 7: Claim 1 is Unpatentable as Being Anticipated by
`U.S. Patent No. 6,276,175 to Browder ................................................ 49
`
`IX. Secondary Considerations ............................................................................. 51
`
`X.
`
`Conclusion ..................................................................................................... 51
`
`dms.us.52766744.01
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`EX. 1026 - Page 3
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`Inter Partes Review No. 2013-00530
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`LIST OF EXHIBITS
`
`Exhibit 1001:
`
`Hendrickson et al. U.S. Patent No. RE43,563 (“the ’563
`Patent”)
`
`Exhibit 1002:
`
`
`
`
`J.C. Penney ontrend Maternity Catalog, dated Fall/Winter
`2005, cover and pages 15 and 19 (“JCP”)
`
`Exhibit 1003:
`
`
`
`
`U.S. Patent Application Publication No. 2004/0049834 A1 to
`Stangle, et al., published March 18, 2004 (“Stangle”)
`
`Exhibit 1004:
`
`U.S. Patent No. 6,276,175 to Browder (“Browder”).
`
`Exhibit 1005:
`
`
`
`
`“expecting style,” by Lauren Sara, published by Bulfinch Press,
`a division of AOL Time Warner Book Group, in 2003 (“Sara”)
`
`Exhibit 1006:
`
`Plaintiff’s Infringement contentions in Destination Maternity
`Corp. v. Target Corp et al., 2:12-cv-05680-AB (E.D. Pa.)
`
`Exhibit 1007:
`
`Certified File Wrapper of U.S. Patent No. RE43,563
`
`Exhibit 1008:
`
`Certified File Wrapper of U.S. Patent No. 7,900,276 (whose
`reissue application resulted in the ’563 Patent)
`
`Exhibit 1009:
`
`Hendrickson et al. U.S. Patent No. 7,900,276 (“the ’276
`Patent”)
`
`Exhibit 1010:
`
`
`
`
`
`
`
`PULSE; An Early Lesson in Prada, by Danielle Pergament,
`published by the New York Times on February 27, 2005
`(“Pergament”)
`
`Exhibit 1011:
`
`Declaration of Frances Harder
`
`Exhibit 1012:
`
`Curriculum Vitae of Frances Harder
`
`Exhibit 1013:
`
`Documents Considered by Frances Harder
`
`Exhibit 1014:
`
`dms.us.52766744.01
`
`Simplicity 4890 by Simplicity Pattern Co., Inc.
`iii
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`Exhibit 1015:
`
`McCall’s 2431 by The McCall Pattern Company
`
`Exhibit 1016:
`
`
`
`
`Plaintiff Destination Maternity Corporation’s Objections and
`Responses to Defendant’s First Set of Interrogatories
`
`
`
`Exhibit 1017:
`
`U.S. Patent No. 4,506,390 to Stern (“Stern”)
`
`Exhibit 1018:
`
`Hendrickson et al. U.S. Patent No. RE43,531 (“the ’531
`Patent”)
`
`Exhibit 1019:
`
`Hendrickson et al. U.S. Patent No. 7,814,575 (“the ’575
`Patent”)
`
`Exhibit 1020:
`
`Certified File Wrapper of U.S. Patent No. 7,814,575 (whose
`reissue application resulted in the ’531 Patent)
`
`Exhibit 1021:
`
`Certified File Wrapper of U.S. Patent No. RE43,531
`
`Exhibit 1022:
`
`U.S. Patent Application Publication No. 2004/0210987 to
`Carney
`
`Exhibit 1023:
`
`U.S. Patent Application Publication No. 2006/0010571 to
`Oakley
`
`Exhibit 1024:
`
`U.S. Patent No. 6,311,333 to Batra
`
`Exhibit 1025:
`
`U.S. Patent No. 3,045,678 to Geimer
`
`dms.us.52766744.01
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`Inter Partes Review No. 2013-00530
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`
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`Pursuant to 35 U.S.C. §§ 311-319 and 37 C.F.R. § 42.100 et seq., Target
`
`Corporation (“Petitioner”) requests inter partes review of claims 1-4 and 6-8 of
`
`U.S. Patent No. RE43,563 (“the ’563 Patent”) (Ex. 1001) to Hendrickson et al.
`
`I.
`
`NOTICES AND FORMALITIES
`
`A.
`
`Real Party In Interest
`
`
`
`
`
`Target Corporation is the real party-in-interest for this petition (“Petition”).
`
`B.
`
`Related Matters
`
`The ’563 Patent is the subject of a patent infringement lawsuit brought by
`
`Destination Maternity Corporation (“DMC” or “Patent Owner”) against Petitioner
`
`in the United States District Court for the Eastern District of Pennsylvania. The
`
`Case Number of the lawsuit is: 2:12-cv-05680-AB.
`
`C.
`
`Lead and Back-Up Counsel
`
`
`
`
`Lead Counsel
`
`
`
`Norman Hedges
`
`Faegre Baker Daniels LLP
`
`300 N. Meridian St.
`
`
`Indianapolis, IN 46204-1750
`
`Tele: 317-237-8691
`
`
`Fax: 317-237-1000
`
`Norman.Hedges@FaegreBD.com
`Reg. No. 44,151
`
`
`
`
`
`
`
`
`
`
`Back-Up Counsel
`Trevor Carter, same address and fax
`Tele: 317-237-1352
`Trevor.Carter@FaegreBD.com
`Reg. No. 40,549
`
`
`
`Daniel Lechleiter, same address and fax
`Tele: 317-237-1070
`Daniel.Lechleiter@FaegreBD.com
`Reg. No. 58,254
`
`
`
`Petitioner hereby reserves the right to add additional registered practitioners
`
`as backup counsel in the event that this Petition for Inter Partes Review is granted.
`
`dms.us.52766744.01
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`D.
`
`Service Information
`
`
`
`Please address all correspondence to the lead counsel at the address shown
`
`above. Petitioner also consents to electronic service to the email address above.
`
`E.
`
`Grounds for Standing
`
`
`
`Petitioner hereby certifies that the patent for which review is sought is
`
`available for inter partes review and that Petitioner is not barred or estopped from
`
`requesting an inter partes review challenging the ’563 Patent claims on the
`
`grounds identified in this Petition.
`
`F.
`
`Power of Attorney
`
`A power of attorney designating counsel is being filed with this Petition.
`
`G.
`
`Fees
`
`
`
`The Commissioner is authorized to charge the $9,000 request fee, the
`
`$14,000 post-institution fee (total of $23,000), and any additional fees to our
`
`Deposit Account No. 02-0390 and to notify us of the same.
`
`II.
`
`
`
`STATEMENT OF THE PRECISE RELIEF REQUESTED
`
`Petitioner respectfully requests that ’563 Patent claims 1-4 and 6-8 be
`
`canceled based on the following grounds. A full statement of the reasons for this
`
`request is presented in later sections of this Petition.
`
`
`
`Ground 1: Claims 1-3 and 6-8 are unpatentable as being anticipated by the
`
`J.C. Penney ontrend Maternity Catalog at page 15 (“JCP-A”).
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`dms.us.52766744.01
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`2
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`
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`Ground 2: Claims 3 and 4 are unpatentable as being obvious over JCP-A in
`
`view of the J.C. Penney ontrend Maternity Catalog at page 19 (“JCP-B”).
`
`Ground 3: Claims 3 and 4 are unpatentable as being obvious over JCP-A in
`
`view of JCP-B in further view of “expecting style” by Lauren Sara (“Sara”).
`
`Ground 4: Claims 1, 2, and 6-8 are unpatentable as being anticipated by
`
`U.S. Patent App. Pub. No. US 2004/0049834 A1 to Stangle et al. (“Stangle”).
`
`Ground 5: Claims 3 and 4 are unpatentable as being obvious over Stangle in
`
`view of JCP-B.
`
`Ground 6: Claims 3 and 4 are unpatentable as being obvious over Stangle in
`
`view of JCP-B in further view of Sara.
`
`Ground 7: Claim 1 is unpatentable as being anticipated by U.S. Patent No.
`
`6,276,175 to Browder (“Browder”).
`
`III. OVERVIEW OF THE ’563 PATENT
`
`A.
`
`The Disclosed Invention in the ’563 Patent
`
`
`
`The ’563 Patent (Ex. 1001) discloses a garment that may be worn “during
`
`different stages of pregnancy and different stages of postpartum body changes.”
`
`(’563 Patent at Abstract). The upper portion of the garment includes a belly panel
`
`that is expansible to cover and fit over the abdomen of a pregnant woman, while
`
`the lower portion includes a circumference that recedes downward in front to make
`
`way for the expansion of the upper belly panel. (Id.)
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`dms.us.52766744.01
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`Annotated copies of FIGS. 1 and 2 of the ’563 Patent are reproduced below:
`
`FIG. 1:
`
`FIG. 2:
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`The belly covering garment 100 includes a garment upper portion 102 whose
`
`lower end perimeter 106 is in communication with the upper end perimeter 108 of
`
`the garment lower portion 104. (’563 Patent at 2:35-40).
`
`The lower portion 104 of the garment 100 includes outer 110, 112 and inner
`
`114, 116 side seams, the inner side seams 114, 116 joining a front center seam 118
`
`and a back side curved center seam 200. (’563 Patent at 2:40-51). The garment
`
`lower portion 104 may also include a partial waistband 208 joining and extending
`
`from the side seams 110, 112 of the garment lower portion 104 and extending
`
`across the back side of the garment lower portion. (Id. at 2:58-67). The partial
`
`waistband may also be sewn into perimeter seam 202 on the back side, and may
`
`taper towards side seams 110, 112 with a center seam 210 to shape the waistband
`
`208 with a curvature above the wearer’s pelvis. (Id.).
`
`The lower portion 104 of the garment 100 also includes a first torso
`
`encircling circumference 126 that recedes downward with a parabolic shape
`
`adjacent to and below the bottom portion 128 of the belly panel 124. (’563 Patent
`
`at 3:8-20). The belly panel 124 extends at least partially under the abdomen of the
`
`garment wearer, and may include elastic or stretchable fabric. (Id. at 3:16-31). If
`
`lower portion 104 pockets are desired, front 120, 122 and back pockets 204, 206
`
`may be added; the lower portion 104 may also include a zipperless fly front
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`defined in part by center seam 118. (Id. at 2:55-57 and 2:50-51, note that center
`
`seam 118 is misidentified as 106 in the specification).
`
`The garment upper portion 102 includes a torso encircling perimeter 134 to
`
`hold the garment 100 up and in place. (’563 Patent at 3:37-39). The upper portion
`
`102 may also have a top perimeter hem 130 made by folding over a top edge of the
`
`fabric and sewing or knitting the loose edge to the inside of the upper portion 102
`
`to create a hem stitch 132. (Id. at 3:32-37).
`
`B.
`
`Prosecution History of the ’563 Patent
`
`The application that ultimately became the ’563 Patent, App. No.
`
`12/117,004, was filed with the United States Patent and Trademark Office
`
`(“USPTO”) with 20 claims.1 On February 2, 2009, an unidentified third party
`
`submitted non-patent literature, including selected pages from the JC Penney
`
`Catalog Maternity Collection, dated Fall/Winter 2005, front and back cover pages,
`
`and pages 14, 15, and 28. See Ex. 1008 at pp. 59-60.
`
`1 The prosecution history of the ’563 Patent is attached as Exhibit 1007, and the
`
`prosecution history of U.S. Patent No. 7,900,276 (whose reissue issued as the ’563
`
`Patent) is attached as Exhibit 1008. The prosecution history of U.S. Patent
`
`7,814,575, a continuation of U.S. Patent No. 7,900,276, is attached as Exhibit
`
`1020, and the prosecution history of U.S. Patent No. RE43,531, the reissue of U.S.
`
`Patent No. 7,814,575, is attached as Exhibit 1021.
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`dms.us.52766744.01
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`In the first office action, issued December 29, 2009, the Examiner rejected
`
`all pending claims 1-20. Specifically, the Examiner rejected claims 1, 2, 4, 5, 6, 8,
`
`11, 12, 14-16, and 18 under 35 U.S.C. § 102 (“§102”) in view of 4,506,390
`
`(“Stern”) to Stern (Ex. 1017); claims 3 and 13 under 35 U.S.C. § 103 (“§103”) in
`
`view of Stern and U.S. App. Pub. No 2004/0210987 (“Carney”) to Carney (Ex.
`
`1022); claims 7 and 17 under §103 in view of Stern and U.S. App. Pub. No.
`
`2006/0010571 (“Oakley”) to Oakley (Ex. 1023); claims 9 and 19 under §103 in
`
`view of Stern and U.S. Patent No. 6,311,333 (“Batra”) to Batra (Ex. 1024); claims
`
`10 and 20 under §103 in view of Stern and U.S. Patent No. 3,045,678 (“Geimer”)
`
`to Geimer (Ex. 1025).
`
`
`
`The applicants responded to the first office action by cancelling all pending
`
`claims in favor of new claims 21-36, which applicant contended do not contain
`
`new matter. The applicants distinguished the art identified by the Examiner as
`
`follows:
`
`Regarding Stern, the applicants stated that, unlike Stern, which “only covers
`
`a lower portion of a wearer’s bulging stomach, and as a result, is limited to
`
`providing vertical support to the stomach primarily from beneath the wearer’s
`
`stomach region,” “the claimed belly panel, by virtue of the spacing between the
`
`upper and lower edge portions, is adapted to substantially cover a wearer’s entire
`
`belly region (emphasis added).” “This belly panel [of claim 21] includes an upper
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`edge portion that encircles a wearer's torso at or above the wearer's upper abdomen
`
`region. As a result, the claimed belly panel is able to encircle the wearer’s upper
`
`abdomen region, thereby providing added vertical support to the wearer's belly
`
`both from above said belly region as well as from beneath the belly region. In
`
`addition, as will be appreciated by a POSA, the claimed belly panel provides a
`
`substantially more comfortable experience for the wearer, particularly since there
`
`are no seams or edges which encircle the middle region of wearer's belly (as in
`
`Stern)2.”
`
`Regarding Carney, the applicants stated that “[u]nlike Claim 21, the band
`
`garment described in Carney does not substantially cover a wearer's entire belly
`
`region.”
`
`Regarding Oakley, the applicants stated that “as will be appreciated by those
`
`of skill in the art, a five or six inch rise above normal waistband would not cover a
`
`wearer’s entire belly region. To the contrary, such a five-six inch rise will only
`
`cover a lower portion of the wearer’s belly region. This is in sharp contrast to the
`
`belly panel of Claim 21, which substantially covers a wearer’s entire belly region.”
`
`
`
`The Examiner responded, on September 30, 2010, with a second office
`
`action that rejected all pending claims 21-36: claims 21, 22, 25-28, 30-32, and 36
`
`were rejected under §102 in view of Stern, claim 29 was rejected under §103 in
`
`2 But note that claim 21 does not claim a “seamless” panel.
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`view of Stern and Carney; claim 33 was rejected under §103 in view of Stern and
`
`Oakley; claims 23, 24, and 34 were rejected under §103 in view of Stern and Batra;
`
`and claim 35 was rejected under §103 in view of Stern and Geimer. The Examiner
`
`also stated that “Applicant argues that Stern does not cover an entire ‘belly region.’
`
`It is the Examiner's position that the term ‘entire belly region’ has not been clearly
`
`defined and that applicant has not claimed an entire pregnant belly from an area
`
`just under the breast, over an entire pregnant belly and that extends under the entire
`
`belly to support the belly. . . .[N]o garment measurement or parameters were given
`
`or claimed and different sized pregnant wearer’s [sic] will have differently sized
`
`pregnant belly’s [sic] especially during different stages of pregnancy such as from
`
`even one day of pregnancy to a few days etc. No specific pregnancy stages or time
`
`parameters in addition to size parameters of the panel has been given.”
`
`“Additionally, new claim 21 has been broadened compared to [original, now
`
`canceled] claim 1 and now also reads on the Oakley reference.” “No new
`
`patentable subject matter has been disclosed by applicant in the present
`
`application.”
`
`
`
`The applicants amended pending claim 21 to include a “garment lower
`
`portion” that “recedes downward,” and also “[f]or added clarity, independent
`
`Claim 21 was further amended to explicitly recite the bounds of the claimed “belly
`
`region,” which the Applicants submit is already implicit in the claims.”
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`“Importantly, the entire belly region comprises the area beginning just beneath the
`
`wearer's breast area, and extends over the wearer's abdomen to a lower abdomen
`
`region beneath the wearer's belly.”
`
`
`
`Regarding Stern, the applicants stated that “[i]n addition, as will be
`
`appreciated by those of skill in the art, the claimed belly panel provides a
`
`substantially more comfortable experience for the wearer, particularly since there
`
`are no seams or edges which encircle the middle region of wearer’s belly (as in
`
`Stern)3.”
`
`
`
`Regarding Carney, the applicants stated that “[u]nlike Claim 21, the band
`
`garment described in Carney does not substantially cover a wearer’s entire belly
`
`region. . . . As a result, even if arguendo Carney were combined with Stern, the
`
`combination would still fail to disclose a belly panel that substantially covers a
`
`wearer’s entire belly region.”
`
`
`
`Regarding Oakley, the applicants stated that “as will be appreciated by those
`
`of skill in the art, a five or six inch rise above normal waistband would not cover a
`
`wearer’s entire belly region. To the contrary, such a five-six inch rise will only
`
`cover a lower portion of the wearer’s belly region. This is in sharp contrast to the
`
`belly panel of Claim 21, which substantially covers a wearer’s entire belly region.”
`
`3 But note that claim 21 still does not claim a “seamless” panel.
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`In response to the applicants, the Examiner issued an Advisory Action, on
`
`December 9, 2010, stating that the amendments of claim 21 of November 10, 2010
`
`would not be entered, and that “[t]he invention is an expansible belly panel in
`
`combination with or attached to a lower garment torso encircling portion with the
`
`downward receding portion as now claimed.”
`
`
`
`The applicants interviewed the Examiner, and later overcame the Advisory
`
`Action by amending the preamble of pending claim 21 to include “having an
`
`attached belly panel portion,” on December 22, 2010. Application No. 12/117,004
`
`issued as U.S. Patent No. 7,900,276 (“the ’276 Patent”) (Ex. 1009) on March 8,
`
`2011.
`
`
`
`On June 15, 2011, the applicants filed App. No. 13/161,169 (see Ex. 1007),
`
`which requested a reissue of the ’276 Patent. The applicants added new dependent
`
`claims 17-21 and noted that the “claims as issued in the ’276 Patent remain
`
`unchanged.” The applicants also submitted an Information Disclosure Statement
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`(“IDS”) that lists “eight (8) . . . non-US publications,” and a declaration from
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`Ronald J. Masciantonio. A supplemental IDS was filed on December 15, 2011.
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`The Examiner issued a first office action on December 27, 2011, which
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`noted that the submitted declaration “did not identify the specific claim which is
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`defective,” rejected claims 18 and 19 under 35 U.S.C. § 112, ¶ 2, and provisionally
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`rejected all claims for obviousness-type double patenting in light of co-pending
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`reissue application No. 13/161,138 (which issued as U.S Patent No. RE43,531).
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`The Examiner did not consider two pages of “images from un-identified
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`documents,” because the documents were undated.
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`On January 5, 2012, applicants amended claim 18 to correct a “soley . .
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`typographic error,” filed a Terminal Disclaimer and filed a supplemental
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`declaration from Ronald J. Masciantonio.
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`
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`The USPTO approved applicants’ terminal disclaimer on February 22, 2012,
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`the Examiner issued a Notice of Allowance on May 11, 2012, and the ’563 Patent
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`issued on August 7, 2012.
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`During prosecution of the original application underlying the ’531 Patent, all
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`of the USPTO’s prior-art based rejections had Stern in common. Ex. 1020 at pp.
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`159-167, and 183-194; Ex. 1008 at pp. 107-115 and 148-157. Based on the sheer
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`frequency of the USPTO’s rejections involving Stern, Stern was the best piece of
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`prior art that the PTO relied upon to reject claims during prosecution.
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`Stern discloses a “maternity garment” having an “expandable waistband
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`portion . . . which completely encircles the garment” connected to a lower “body
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`portion.” (Ex. 1017 at Abstract.) The expandable waistband portion “swoops
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`down at the front portion of the garment to form a pouch which supports the lower
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`portion of a woman’s stomach.” (Id.). Stern’s Figures 1 and 2, below, show
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`Stern’s “waistband portion” (11) and “body portion” (13). (Id. at col. 3:23-30.) A
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`“curved downwardly expanding pouch” (19) “cups the lower portion of a woman’s
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`stomach and contours itself to fit it, and acts as a sling-like support which provides
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`added comfort to a wearer.” (Id. at col. 4:18-44.)
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`In order to obtain its patent claims in the parent ’575 Patent, Patent Owner
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`told the USPTO that Stern’s “waistband portion 11 does not encompass [Patent
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`Owner’s] claimed invention” because Stern does not disclose “a garment upper
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`portion having a second torso encircling circumference along the upper end of the
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`belly panel above a location of maximum girth of the abdomen to hold the garment
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`up and in place over the torso.” Ex. 1020 at pp. 95-97. In other words, according
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`to Patent Owner, the “claimed invention” was different from Stern because the
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`upper edge of Stern’s full panel (11, above) did not extend high enough—above
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`the “maximum girth of the abdomen”—on the wearer’s pregnant belly. Indeed, the
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`USPTO found that the location of the belly panel’s upper edge “is what defines
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`and differentiates applicant’s invention from the prior art.” Ex. 1020 at p. 190.
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`Therefore, in order to overcome the USPTO’s rejections in view of Stern, as
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`discussed above, Patent Owner was required to further refine the height of its
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`claimed belly panel by specifying that the “upper edge of the belly panel . . .
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`encircles a wearer’s torso just beneath the wearer’s breast area.” Ex. 1020 at pp.
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`209, 222, and 223.
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`Similarly, to obtain the sole independent claim of the ’276 Patent, which
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`became the sole independent claim of the related ’563 Patent challenged here,
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`Patent Owner told the USPTO that Stern’s “expandable waistband portion”
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`supported only a “lower portion of a woman’s stomach” and, unlike Patent
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`Owner’s claimed belly panel, was not “adapted to substantially cover a wearer’s
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`entire belly region.” Ex. 1008 at pp. 130-132 (emphases omitted). The USPTO
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`disagreed, finding that the claimed “entire belly region” was not “clearly defined”
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`and that Patent Owner had not claimed that its panel covered “an entire pregnant
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`belly from an area just under the breast, over an entire pregnant belly and that
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`extends under the entire belly to support the belly.” Ex. 1008 at pp. 154-
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`155. Therefore, in order to overcome the PTO’s rejections in view of Stern,
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`Patent Owner was forced to define the claimed “belly region” by giving it specific
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`boundaries, including a height “beginning just beneath the wearer’s breast area
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`and extending over the wearer’s abdomen to a lower abdomen region beneath the
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`wearer’s belly.” Ex. 1008 at pp. 163, 164 and 170.
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`Thus, to overcome the USPTO’s repeated rejections in view of Stern and
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`obtain issuance of the only two independent claims at issue here and in the other
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`three co-filed Petitions for Inter Partes Review, Patent Owner amended both
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`claims to specify a panel height that exceeded the height of the panel disclosed in
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`Stern. The prior art Petitioner submits in this Petition discloses this “missing”
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`element of Stern, the absence of which led to the USPTO’s issuance of this patent.
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`IV. OVERVIEW OF THE PRIOR ART RELIED UPON FOR THE
`CHALLENGE
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`J.C. Penney ontrend Maternity Catalog, Fall/Winter 2005
`A.
`The selected pages from the J.C. Penney ontrend Maternity Catalog,
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`Fall/Winter 2005 (“JCP”) (Ex. 1002) disclose maternity jeans with a fold-over
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`waistband comprised of spandex that provides “over-the-belly coverage,” “before,
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`during and after your pregnancy” (JCP at p. 15) (JCP-A) and Levis® slim-fit
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`stretch bootcut jeans modified to include a fold-over waistband comprised of
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`spandex (JCP-B) (JCP at p. 19). JCP was published no later than December 31,
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`2005, and is a §102(b) prior art printed pubication to the ’563 Patent.
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`While page 15 of JCP-A was submitted to the USPTO during prosecution of
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`the ’276 and ’563 Patents,4 the scanned excerpt appears to have been of very low
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`quality. JCP additionally includes material that was not submitted to the USPTO
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`during prosecution of the ’276 and ’563 Patents, such as the images and
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`description of J.C. Penney-exclusive Levis® slim-fit stretch bootcut maternity
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`jeans (JCP-B). Regarding the quality of the scanned material provided to the
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`USPTO, the below image shows Figures 1, 2, and 3, in the lower left hand corner
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`of catalog page 15, as depicted in the certified file wrapper of the ’563 patent. The
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`image does not provide a clear illustration of the boundaries of the disclosed belly
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`panel in the three figures, and the text describing the functionality of the fold over
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`panel in the three figures is illegible.
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`4 See ’276 Patent File Wrapper at February 2, 2009 Third Party Submission of
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`Prior Art Under 37 C.F.R. § 1.99. (Ex. 1008). The cover and page 15 (JCP-A) of
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`JCP was included in an IDS submitted by the Patentee during the reissue of the
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`’276 Patent, but the Examiner did not use JCP-A in a rejection. See December 27,
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`2011 List of References Considered by Examiner and December 27, 2011 Non-
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`Final Rejection and List of References Cited by Examiner. (Ex. 1008).
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`The following image, with added arrow and dash annotations, shows the same
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`three figures, as extracted from JCP.
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`
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`The difference is striking; the high resolution images clearly show
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`boundaries of the disclosed belly panel in each figure, other features of the
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`depicted product are readily apparent, and text describing the functionality of the
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`fold-over waistband is legible – none of which can be ascertained from the image
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`in the file wrapper of the ’563 Patent.
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`JCP also includes a description and images of a Levis® slim-fit stretch
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`bootcut maternity jeans product (JCP-B) that were not made available to the
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`USPTO during prosecution of the ’276 and ’563 Patents. The following image
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`(without the arrow and dash annotations) may be found on page 19 of the J.C.
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`Penney ontrend Maternity Catalog, Fall/Winter 2005.5
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`5 As shown in the above image, the full height of the belly panel of JCP-B is
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`unclear, but the belly panel does share many of the same features as the belly panel
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`of JCP-A. For example, JCP-A and JCP-B may be folded up or down depending
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`on the wearer’s stage of pregnancy. (JCP at pp. 15 and 19).
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`Accordingly, the high-resolution scans of JCP both not previously presented
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`to the USPTO or previously considered by the USPTO in low-quality form are
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`both material and non-cumulative to the art disclosed to the USPTO during
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`prosecution of the ’563 Patent.
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`Figure 1 on page 15, describing how the fold-over band may be unfolded or
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`folded over in the maternity jeans, and the text of page 19, describing how the all-
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`around belly panel can be folded up or down, ill