Trials@uspto.gov
`571-272-7822
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` Paper 13
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` Date: February 14, 2014
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`TARGET CORPORATION,
`Petitioner
`
`v.
`
`DESTINATION MATERNITY CORPORATION,
`Patent Owner
`
`
`
`Case IPR2013-00530
`Patent RE43,563 E
`
`
`
`Before JENNIFER S. BISK, MICHAEL J. FITZPATRICK, and
`MITCHELL G. WEATHERLY, Administrative Patent Judges.
`
`FITZPATRICK, Administrative Patent Judge.
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
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`Target Corporation
`EX. 1027 - Page 1
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`571-272-7822
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` Paper 13
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` Date: February 14, 2014
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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`TARGET CORPORATION,
`Petitioner
`
`v.
`
`DESTINATION MATERNITY CORPORATION,
`Patent Owner
`
`
`
`Case IPR2013-00530
`Patent RE43,563 E
`
`
`
`Before JENNIFER S. BISK, MICHAEL J. FITZPATRICK, and
`MITCHELL G. WEATHERLY, Administrative Patent Judges.
`
`FITZPATRICK, Administrative Patent Judge.
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
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`Target Corporation
`EX. 1027 - Page 1
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`I.
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`INTRODUCTION
`
`Case IPR2013-00530
`Patent RE43,563 E
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`
`
`Petitioner Target Corporation filed a Corrected Petition for an inter partes
`review of claims 1–4 and 6–8 of U.S. Patent No. RE43,563 E (the “’563 patent”).
`Paper 5 (“Pet.”). The Patent Owner, Destination Maternity Corporation, filed a
`Preliminary Response pursuant to 35 U.S.C. § 313. Paper 10 (“Prelim. Resp.”).
`We have jurisdiction under 35 U.S.C. § 314.
`The standard for instituting an inter partes review is set forth in 35 U.S.C.
`§ 314(a), which provides as follows:
`THRESHOLD—The Director may not authorize an inter partes
`review to be instituted unless the Director determines that the
`information presented in the petition filed under section 311 and any
`response filed under section 313 shows that there is a reasonable
`likelihood that the petitioner would prevail with respect to at least 1 of
`the claims challenged in the petition.
`
`Upon consideration of the Petition and the Preliminary Response, we
`determine that the information presented shows there is a reasonable likelihood
`that Petitioner will prevail with respect to claims 1–4 and 6–8 of the ’563 patent.
`Accordingly, pursuant to 35 U.S.C. § 314, we authorize an inter partes review to
`be instituted as to those claims.
`
`A. Related Proceedings
`Patent Owner asserted the ’563 patent against Petitioner in a pending lawsuit
`titled: Destination Maternity Corporation v. Target Corporation et al., Case No.
`2:12-cv-05680-AB (E.D. Pa.). Pet. 1; Patent Owner Mandatory Notices 2
`(Paper 7). Petitioner contemporaneously filed another petition for a separate inter
`partes review of the ’563 patent. Claims 1, 10–14, 16, 20, and 21 are the subject
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`of that petition. See IPR2013-00531. Petitioner also filed two petitions for inter
`partes reviews of related U.S. Patent No. RE43,531 E. See IPR2013-00532;
`IPR2013-00533.
`
`§ 103
`
`3 and 4
`
`B. The Asserted Grounds
`Petitioner presents the following grounds of unpatentability:
`References
`Basis Claims
`challenged
`JCP fold-over panel jeans (Ex. 1002, 2)1 § 102
`1–3 and 6–8
`JCP fold-over panel jeans and JCP
`§ 103 3 and 4
`maternity bootcut jeans (Ex. 1002, 3)2
`JCP fold-over panel jeans, JCP maternity
`bootcut jeans, and Lauren Sara
`(Ex. 1005)3
`Stangle (Ex. 1003)4
`Stangle and JCP maternity bootcut jeans
`Stangle, JCP maternity bootcut jeans, and
`Lauren Sara
`Browder (Ex. 1004)5
`
`§ 102
`§ 103
`§ 103
`
`1, 2, and 6–8
`3 and 4
`3 and 4
`
`§ 102
`
`1
`
`
`1 Ex. 1002 is an excerpt from JC Penney’s ontrend Maternity, Fall/Winter Catalog
`(2005) (the “JCP catalog”). Page 2 of the exhibit (catalog page 15) depicts “fold-
`over panel jeans,” hereafter, the “JCP fold-over panel jeans.”
`2 Page 3 of Ex. 1002 (catalog page 19) depicts “maternity bootcut jeans,” hereafter,
`the “JCP maternity bootcut jeans.”
`3 Ex. 1005 is an excerpt from expecting style by Lauren Sara (2003).
`4 U.S. Patent Application Publication US 2004/0049834 A1 (Mar. 18, 2004).
`5 U.S. Patent 6,276,175 B1 (Aug. 21, 2001).
`
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`C. The ’563 Patent
`The ’563 patent relates to a garment worn during different stages of
`pregnancy and different stages of postpartum body changes. Ex. 1001, col. 1,
`ll. 18–20. A stated “purpose of the invention is to provide a garment that adapts to
`cover and fit a growing abdomen during pregnancy, wherein the garment stays up
`when worn.” Id. at ll. 51–53. Figure 1 of the ’563 patent is reproduced below.
`
`
`Figure 1 illustrates a front view of garment 100 in accordance with the
`claimed invention of the ’563 patent. Ex. 1001, col. 2, ll. 16–17, ll. 35–36. The
`garment has upper portion 102 and lower portion 104 that are joined to one another
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`approximate the waistline. Id. at ll. 36–40. In the embodiment of Figure 1, the
`garment lower portion comprises trousers, but other lower portions are
`contemplated, such as a skirt, which is indicated by phantom lines. Id. at ll. 40–43.
`The garment upper portion includes belly panel 124 that is expansible or
`stretchable to cover and fit over the abdomen during different stages of pregnancy.
`Id. at col. 3, ll. 1–5. Bottom portion 128 of the belly panel projects downward in
`the front. Id. at ll. 5–7. Upper perimeter 108 of the garment lower portion
`correspondingly recedes downward in the front. Id. at ll. 8–13. Thus, the belly
`panel extends, partially at least, under the abdomen of the wearer before meeting
`and joining the garment lower portion. Id. at ll. 15–20.
`
`D. Illustrative Claim
`Of the challenged claims 1–4 and 6–8, claim 1 is the sole independent claim.
`It is illustrative and reproduced as follows:
`1. A garment portion having an attached belly panel portion
`comprising:
`an expansible belly panel adapted to substantially cover a
`wearer’s entire belly region, said belly region comprising an area
`beginning just beneath the wearer’s breast area and extending over the
`wearer’s abdomen to a lower abdomen region beneath the wearer’s
`belly, said belly panel comprising:
`an upper edge portion defining a first encircling
`circumference about a wearer’s torso that is at or above the
`wearer’s upper abdomen region, and
`a lower edge portion spaced from the upper edge portion
`and defining a second encircling circumference about the
`wearer’s lower abdomen region; and
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`a garment lower portion, in communication with the lower edge
`portion, having a torso encircling circumference that recedes
`downward to make way for expansion of the belly panel.
`
`
`II. ANALYSIS
`
`A. Claim Construction
`In an inter partes review, “[a] claim in an unexpired patent shall be given its
`broadest reasonable construction in light of the specification of the patent in which
`it appears.” 37 C.F.R. § 42.100(b). That construction must be consistent with the
`specification, and the claim language should be read in light of the specification as
`it would be interpreted by one of ordinary skill in the art. In re Suitco Surface,
`Inc., 603 F.3d 1255, 1260 (Fed. Cir. 2010). Thus, we give claim terms their
`ordinary and customary meaning. See In re Translogic Tech., Inc., 504 F.3d 1249,
`1257 (Fed. Cir. 2007) (“The ordinary and customary meaning is the meaning that
`the term would have to a person of ordinary skill in the art in question.” (internal
`quotation marks omitted)).
`The parties do not proffer constructions of any claim terms. However,
`Petitioner requests that we review Patent Owner’s district court infringement
`contentions claim chart (Ex. 1006), consider the claim constructions implicit
`therein, and apply those constructions here. Pet. 29. We decline to do so.
`First, the claim construction standard used in district court is different than
`the broadest reasonable construction standard used here. See, e.g., In re Swanson,
`540 F.3d 1368, 1377–78 (Fed. Cir. 2008); SAP Am., Inc. v. Versata Dev. Grp., Inc.,
`CBM2012-00001, Paper 70, 7 (PTAB June 11, 2013). Thus, any constructions
`
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`implicit in Patent Owner’s infringement contentions are not necessarily relevant
`here.
`Second, Petitioner has not identified any construction implicit in the
`infringement contentions, let alone explained a basis for adopting it. See 37 C.F.R.
`§ 42.104(b)(3) (petition must identify how each challenged claim is to be
`construed). Although a general statement that a claim should be given its broadest
`reasonable interpretation may be sufficient, see Office Patent Trial Practice Guide,
`77 Fed. Reg. 48,756, 48,764 (Aug. 14, 2012), a request for the Board to search a
`party’s infringement contentions for implicit constructions and to find a basis for
`adopting them here is not sufficient.
`Although the parties do not proffer constructions of any claim limitations,
`we address two limitations of independent claim 1 on which the parties’ arguments
`implicitly are based.
`
`1. an expansible belly panel adapted to substantially cover a wearer’s entire
`belly region, said belly region comprising an area beginning just beneath
`the wearer’s breast area
`Patent Owner argues that claim 1 requires the belly panel to extend to “an
`area beginning just beneath the wearer’s breast area.” Prelim. Resp. 8. However,
`it is the belly region, and not the belly panel, that the claim recites as “beginning
`just beneath the wearer’s breast area.” Ex. 1001, col. 5, ll. 35–37. The belly panel
`merely is required to be “adapted to substantially cover a wearer’s entire belly
`region.” Id. at ll. 34–35.
`
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`The Specification does not define “belly region” or “breast area.” Those
`terms appear only in the claims. Thus, we give those terms their ordinary and
`customary meaning.
`Also, the scope of claim 1 is defined, at least partially, in relation to a
`wearer. As the Specification notes, wearers have different body types. Ex. 1001,
`col. 3, ll. 27–31. Thus, a garment may satisfy claim 1 for one wearer but not
`another because of differences in the wearers’ body types.
`
`2. an upper edge portion defining a first encircling circumference about a
`wearer’s torso that is at or above the wearer’s upper abdomen region
`Patent Owner argues that claim 1 requires “an upper edge of the belly panel
`that encircles a wearer’s torso just beneath the wearer’s breast area.” Prelim.
`Resp. 11. However, claim 1 does not require this. Rather, it requires “an upper
`edge portion defining a first encircling circumference about a wearer’s torso that is
`at or above the wearer’s upper abdomen region” (emphasis added).
`The Specification does not define “upper abdomen region.” That term
`appears only in claim 1. Thus, we give it its ordinary and customary meaning.
`
`B. Anticipation by JCP fold-over panel jeans
`Petitioner asserts that claims 1–3 and 6–8 are anticipated by the JCP fold-
`over panel jeans. Pet. 31–34. The JCP fold-over jeans appear on page 15 of the JC
`Penney catalog. Ex. 1002, 2. An excerpt of page 15 is reproduced below.
`
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`The photo excerpt depicts a series of photographs of the JCP fold-over panel
`jeans, and accompanying text. As seen, the garment has distinct upper and lower
`garment portions that are joined to one another proximate the waist. The lower
`portion consists of jeans. The upper portion is referred to as a “fold-over panel”
`that is designed to allow wear before, during, and after pregnancy and during
`different stages of pregnancy. Ex. 1002, 2. The photographs show the garment in
`three configurations: panel unfolded, panel folded once, and panel folded twice. In
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`the unfolded configuration, the panel appears to cover the entire belly or abdomen
`of the model. The garment is said to “stretch for comfort.” Id.
`
`1. Claim 1
`Based on the present record, the fold-over panel is “an expansible belly
`panel” within the meaning of the claim. It stretches and, thus, is expansible. It is
`“adapted to substantially cover a wearer’s entire belly region,” as shown in one of
`the photographs, which is reproduced again below, but larger and with annotations.
`
`
`The photograph includes annotations showing upper and lower edge portions
`of the fold-over panel. Ex. 1002, 2. As shown, the upper edge portion encircles
`the wearer’s torso “at or above the wearer’s abdomen region,” and the lower edge
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`portion encircles the torso “about the wearer’s lower abdomen region.” The lower
`edge portion of the fold-over panel is attached to jeans, which meet the “garment
`lower portion” limitation of claim 1. The top of the jeans recedes downward in the
`front and, thus, at least partially below the wearer’s belly. Consequently, we are
`satisfied that the top of the jeans has “a torso encircling circumference that recedes
`downward to make way for expansion of the belly panel.”
`Patent Owner argues that the JCP fold-over panel jeans do not anticipate
`claim 1 because the fold-over panel does not extend high enough on the wearer’s
`body. In particular, Patent Owner argues that the fold-over panel (1) does not
`extend to “an area beginning just beneath the wearer’s breast area” and (2) does
`not have “an upper edge portion . . . that is at or above the wearer’s upper abdomen
`region.” Prelim. Resp. 8. Patent Owner’s first argument is misplaced, as claim 1
`does not require the belly panel to extend to “an area beginning just beneath the
`wearer’s breast area.” The second argument is not persuasive; the photograph
`discussed above clearly shows that the upper edge portion of the JCP fold-over
`panel encircles the wearer’s torso at the wearer’s upper abdomen region.
`On this record, we are persuaded that there is a reasonable likelihood that
`Petitioner will prevail in showing anticipation of claim 1 by the JCP fold-over
`panel jeans.
`
`2. Claims 2, 3, and 6–8
`Claim 2 depends from claim 1 and additionally requires “a pair of trousers
`attached to said lower edge portion.” Ex. 1001, col. 5, ll. 51–52. The JCP fold-
`over jeans, as the name suggests, employ a pair of jeans attached to the lower edge
`portion of the fold-over panel. Ex. 1002, 2. Jeans are a type of trousers.
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`Claim 3 depends from claim 2 and additionally requires that the trousers
`“comprise denim jeans.” The JCP catalog does not describe expressly the fold-
`over panel jeans as being made of denim. Ex. 1002, 2. Petitioner supports its
`denim argument, in part, with declaration testimony from Frances Harder (Ex.
`1011, “Harder Decl.”). Pet. 33 (citing Ex. 1011, ¶ 24.) Ms. Harder opines that a
`person of ordinary skill in the art would conclude that the JCP fold-over panel
`jeans are made of denim merely because they are blue and made of cotton.6
`Ex. 1011, ¶ 24. We do not find the cited testimony persuasive, as the conclusion is
`not dictated by the relied-upon facts. However, based on the present record, we do
`find the catalog photographs persuasive. In the photographs, the jeans appear to be
`made of denim. Ex. 1002, 2. In particular, the photograph showing the entire leg
`portions of the jeans is persuasive. Id.
`Claim 6–8 depend from claim 1. Claim 6 additionally requires that the
`“belly panel is adapted to cover the wearer’s belly region during different stages of
`weight gains and losses.” Claim 7 additionally requires that the “belly panel is
`adapted to substantially cover and fit over different body types.” Claim 8
`additionally requires that “the belly panel is elastically expansible and
`contractible.” The JCP fold-over panel jeans meets these limitations because the
`panel can change size and shape by stretching. Ex. 1002, 2. Indeed, the JCP
`catalog states that it can be worn before, during, and after pregnancy, as well as
`during different stages of pregnancy. Id.
`
`
`6 The JCP catalog states that the jeans are made of “Cotton/polyester/spandex.”
`Ex. 1002, 2.
`
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`With respect to claim 8,7 Patent Owner argues that the JCP fold-over panel,
`which stretches, is not “also contractible.” Prelim. Resp. 25. We are not
`persuaded by this argument. Expansion and contraction are reciprocal movements.
`The JCP fold-over panel jeans “stretch for comfort.” Ex. 1002, 2. Thus, they
`necessarily contract as well.
`On this record, we are persuaded that there is a reasonable likelihood that
`Petitioner will prevail in showing anticipation of claims 2, 3, and 6–8 by the JCP
`fold-over panel jeans.
`
`C. Obviousness over JCP fold-over panel jeans and JCP maternity bootcut
`jeans
`Petitioner asserts that the subject matter of claims 3 and 4 would have been
`obvious over the JCP fold-over panel jeans and JCP maternity bootcut jeans.
`Pet. 34–37.
`Page 19 of the JCP catalog describes and shows the maternity bootcut jeans.
`Ex. 2002, 3. The catalog states that the garment includes a “[f]aux fly” and “an all-
`around elastic belly panel that can be folded up or down depending on your stage
`of pregnancy.” In the photographs, the all-around belly panel is concealed
`partially by a shirt, as Petitioner concedes. Pet. 35. Thus, and despite its name, it
`is not clear whether it is “adapted to substantially cover a wearer’s entire belly
`region,” as required by base claim 1.
`
`
`7 Claim 8 is the only dependent claim for which Patent Owner presented a specific
`argument beyond its arguments regarding base claim 1. Prelim. Resp. 25–29.
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`Claim 3 depends from claim 2 and additionally requires that the trousers
`“comprise denim jeans.” Claim 4 depends from claim 3 and additionally requires
`that the “denim jeans comprise one or more pockets and a sewn zipperless fly
`front.” Based on the evidence of record, the JCP maternity bootcut jeans appear to
`meet these additional limitations. The photographs clearly depict the jeans portion
`of the garment as being denim and having pockets.8 Ex. 1002, 3. Also, a front fly,
`which is visible in one photograph, is described as faux. Id. Thus, we are
`persuaded that it is sewn and zipperless.
`Petitioner provides reasoning with rational underpinning for substituting the
`jeans portion of the JCP fold-over panel jeans with the jeans portion from the JCP
`maternity bootcut jeans, thereby resulting in the subject matter of claims 3 and 4.
`Pet. 35–36. In particular, Petitioner points out that both products are jeans having
`attached belly panels, which could be swapped easily with one another. Pet. 35.
`On the present record, we are persuaded that swapping panels would have been an
`obvious design choice to a person of ordinary skill in the art, and that it was
`desired by customers. Id. (citing Ex. 1011, ¶ 25). Further, the swapping of the
`panels and jeans does no more than yield predictable results. See KSR Int’l Co. v.
`Teleflex Inc., 550 U.S. 398, 416 (2007) (“The combination of familiar elements
`according to known methods is likely to be obvious when it does no more than
`yield predictable results.”).
`Patent Owner argues that objective indicia, or secondary considerations,
`
`
`8 The photographs of the JCP maternity bootcut jeans better show the denim aspect
`than the photographs of the JCP fold-over design jeans. See Ex. 1002, 2–3.
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`demonstrate non-obviousness. Prelim. Resp. 32–37; see also Graham v. John
`Deere Co., 383 U.S. 1, 17–18 (1966) (“Such secondary considerations as
`commercial success, long felt but unsolved needs, failure of others, etc., might be
`utilized to give light to the circumstances surrounding the origin of the subject
`matter sought to be patented. As indicia of obviousness or nonobviousness, these
`inquiries may have relevancy.”). In particular, Patent Owner states that “publicly
`available reviews for Patent Owner’s Secret Fit Belly® line of maternity bottoms
`call out claimed features of Patent Owner’s Secret Fit Belly® garments, show
`praise for the invention’s claimed features, and explain its commercial success.”
`Prelim. Resp. at 33 (emphasis added).
`Patent Owner reproduces the relied-upon reviews but does not direct us to
`evidence of commercial success, such as sales, let alone “proof that [any such]
`sales were a direct result of the unique characteristics of the claimed invention—as
`opposed to other economic and commercial factors unrelated to the quality of the
`patented subject matter.” In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996). With
`respect to the alleged industry praise, Patent Owner has not linked the praise to the
`invention of dependent claims 3 and 4, as opposed to independent claim 1.9 See
`Geo. M. Martin Co. v. Alliance Mach. Sys. Int’l LLC, 618 F.3d 1294, 1305 (Fed.
`Cir. 2010) (“Industry praise must also be linked to the patented invention.”). For at
`least these reasons, Patent Owner’s arguments regarding evidence of secondary
`
`9 As discussed above, there is a reasonable likelihood that Petitioner will prevail in
`showing anticipation of claim 1 by the JCP fold-over panel jeans. Secondary
`considerations are not relevant when evaluating whether prior art anticipates a
`claim.
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`considerations are not persuasive.
`On this record, we are persuaded that there is a reasonable likelihood that
`Petitioner will prevail in showing unpatentability of claims 3 and 4 as obvious over
`the JCP fold-over panel jeans and JCP maternity bootcut jeans.
`
`D. Obviousness over JCP fold-over panel jeans, JCP maternity bootcut jeans,
`and Lauren Sara
`Petitioner asserts that the subject matter of claims 3 and 4 would have been
`obvious over the JCP fold-over panel jeans, JCP maternity bootcut jeans, and
`Lauren Sara. Pet. 37–40. This ground is denied as redundant because trial is being
`instituted for the same claims on the ground that they are unpatentable as obvious
`over the JCP fold-over panel jeans and JCP maternity bootcut jeans. See 37 C.F.R.
`§ 42.108(a).
`
`E. Anticipation by Stangle
`Petitioner asserts that claims 1, 2, and 6–8 are anticipated by Stangle.
`Pet. 40–44. Stangle discloses “a garment that enables the wearing of clothing that
`is otherwise too small to be zipped, buttoned snapped or otherwise fastened, such
`as during pregnancy or with respect to an overweight wearer or other wearer whose
`body proportions have changed.” Ex. 1003, ¶ 0007. The garment is described as a
`hollow, tubular sleeve that is worn around the waistline and over the unfastened fly
`of the clothing. Id. at ¶ 0029. Figures 5 and 6 of Stangle are reproduced below.
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`Figures 5 and 6 illustrate unfastened pants as worn on a portion of a wearer’s
`body. Id. at ¶ 0034. In Figure 6, sleeve 10 masks the open fly of the pants. Id.
`The sleeve in Figure 6 is separate from the pants, id. at ¶ 0035, but Stangle also
`discloses an embodiment with a “moveable sleeve” that is attached to pants. Id. at
`¶ 0037. Petitioner asserts that the attached moveable sleeve embodiment,
`illustrated in Stangle Figure 10, anticipates claim 1. Pet. 24–25, 42–44. Figure 10
`is reproduced below.
`
`
`
`Figure 10 illustrates a sectional view of the attached moveable sleeve
`embodiment of Stangle (with only one leg of the pants being visible). Ex. 1003,
`¶ 0042. The sleeve is shown folded with affixed end 42 inside pant leg 32 and
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`moveable end 44 outside the pant leg. Id. at ¶ 0041. The affixed end is affixed to
`the clothing’s inside surface 34 but the moveable end can be folded inside or
`outside. Id. In Figure 10, the affixed end is folded to the outside, thus, covering
`the fly of the pants (not shown). Alternatively, when the pants are able to be
`fastened, the moveable end can be folded, through an angle of approximately 360
`degrees, to the inside and stowed out of view and against the wearer’s body. Id. at
`¶¶ 0037–0040.
`Petitioner argues that a third configuration for the moveable end is possible
`such that it could be folded upward to cover the belly (i.e., through an angle of
`approximately 180 degrees). Pet. 24–25. However, Stangle does not disclose that
`configuration, which is not surprising because it would result in an unfastened fly
`being visible. Even though the configuration may be possible, we are not
`persuaded that it would anticipate claim 1.
`As argued by Patent Owner, Petitioner has not shown that the moveable end,
`even when flipped up, could “substantially cover a wearer’s entire belly region,” as
`required by claim 1. Prelim. Resp. 7. Petitioner relies on a disclosure that sleeve
`10 could be up to ten inches in height, which it asserts is sufficient to cover
`substantially the entire belly region. Pet. 22 (citing Ex. 1003, ¶¶ 0032 and 0035).
`However, sleeve 10 is a different embodiment than the moveable sleeve 40
`embodiment, which Petitioner asserts anticipates. Unlike moveable sleeve 40,
`sleeve 10 is a distinct accessory worn completely on the outside of the pants. See
`Ex. 1003, ¶ 0035, Fig. 6, ref. 10.
`Even if the moveable sleeve 40 were also ten inches in height—something
`that Petitioner has not alleged or shown—Petitioner’s declaration testimony
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`regarding the sufficiency of ten inches would still not be persuasive. Ms. Harder
`opines that ten inches of garment height is sufficient to cover “from just below the
`belly to just below the breast area.” Ex. 1011, ¶ 31. However, in the moveable
`sleeve embodiment of Stangle, the starting point is well below the waist, as the
`affixed end extends downward from the waist. See Ex. 1003, Fig. 10.
`As also argued by Patent Owner, Petitioner has not shown that Stangle
`includes “a garment lower portion . . . having a torso encircling circumference that
`recedes downward to make way for expansion of the belly panel,” as required by
`claim 1.” Prelim. Resp. 14. Stangle does not expressly describe this feature, but
`Petitioner attempts to show that Stangle Figure 8 illustrates it. Pet. 43 (reproducing
`Ex. 1003, Fig. 8 with Petitioner annotations). However, arguments based on patent
`application drawings not explicitly made to scale are unavailing. Cf. Nystrom v.
`TREX Co., Inc., 424 F.3d 1136, 1149 (Fed. Cir. 2005) (“arguments based on
`drawings not explicitly made to scale in issued patents are unavailing”).
`Furthermore, because Figure 8 is an inside-out view of a Stangle embodiment,
`Figure 8 may not reflect accurately whether the encircling circumference as viewed
`on the outer surface of the garment when not inside-out would recede downward.
`Ex. 1003, ¶ 0041.
`There is not a reasonable likelihood that Petitioner will prevail in showing
`anticipation by Stangle of claim 1, or claims 2 and 6–8, which depend from
`claim 1.
`
`F. Obviousness over Stangle and other art
`Petitioner asserts that the subject matter of claims 3 and 4 would have been
`obvious over Stangle and the JCP maternity bootcut jeans, both with and without
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`Lauren Sara. Pet. 44–49. Claims 3 and 4 ultimately depend from claim 1, and
`Petitioner’s assertions are premised on Stangle anticipating claim 1. Id. Thus, for
`at least reasons already discussed above, there is not a reasonable likelihood that
`Petitioner will prevail in showing unpatentability of claims 3 and 4 as obvious over
`Stangle in view of the JCP maternity bootcut jeans, with or without Lauren Sara.
`
`G. Anticipation by Browder
`Petitioner asserts that claim 1 is anticipated by Browder. Pet. 49–51.
`Browder discloses control undergarments. Ex. 1004, col. 1, ll. 7–16. Figure 3 is
`reproduced below.
`
`
`Figure 3 illustrates a front view of a high-waist brief. Ex. 1004, col. 2, ll.
`40–41. The brief 30 includes control area 35 that extends, upward from crotch
`portion 38, “over the abdomen and ends below the wearer’s breasts.” Id. at col. 3,
`ll. 55–64. The border between the crotch portion and control area recedes
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`downward in the front, as shown. Id. at Fig. 3. The control area stretches. Id. at
`col. 3, ll. 39–46.
`Based on the present record, the control area is “an expansible belly panel”
`within the meaning of claim 1. It stretches and is, thus, expansible. It is “adapted
`to substantially cover a wearer’s entire belly region,” as required by the claim.
`Ex. 1004, col. 3, ll. 55–57, Fig. 3.
`An upper edge portion of the control area encircles the wearer’s torso “at or
`above the wearer’s abdomen region,” and the lower edge portion encircles the
`torso “about the wearer’s lower abdomen region,” as also required by claim 1. The
`crotch portion meets the “garment lower portion” limitation of claim 1; trousers are
`not required by the claim. The top of the crotch portion recedes downward in the
`front and, thus, at least partially below the wearer’s belly. Consequently, we are
`satisfied that the crotch portion has “a torso encircling circumference that recedes
`downward to make way for expansion of the belly panel.”
`Patent Owner argues that Browder does not anticipate claim 1 because the
`asserted embodiment of Figure 3 is not a maternity garment. Prelim. Resp. 20.
`That argument is not persuasive, as claim 1 does not require a maternity garment.
`Patent Owner also argues that the Browder control area cannot expand.
`Prelim. Resp. 20. Patent Owner asserts that Browder, therefore, cannot meet the
`“expansible belly panel” or “garment lower portion . . . having a torso encircling
`circumference that recedes downward to make way for expansion of the belly
`panel” limitations of claim 1. Id. Patent Owner’s argument, however, is not
`supported factually. Browder states that the control area has a tightened fabric
`pattern such that it “stretches less and controls more” (than it would if not
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`tightened during manufacture). Ex. 1004, col. 3, ll. 39–41. Thus, it “stretches”
`some amount, and, therefore, is expandable.
`On this record, we are persuaded that there is a reasonable likelihood that
`Petitioner will prevail in showing anticipation of claim 1 by Browder.
`
`
`III. CONCLUSION
`
`For the foregoing reasons, we are persuaded that the information presented
`in the Petition establishes that there is a reasonable likelihood that Petitioner will
`prevail in showing unpatentability of claims 1–4 and 6–8 of the ʼ563 patent.
`The Board has not made a final determination on the patentability of the
`challenged claims.
`
`IV. ORDER
`
`Accordingly, it is
`ORDERED that, pursuant to 35 U.S.C. § 314, an inter partes review of the
`’563 patent is hereby instituted on the following grounds:
`Claims 1–3 and 6–8 as anticipated by JCP fold-over panel jeans;
`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
`Claim 1 as anticipated by Browder.
`
`
`
`FURTHER ORDERED that no other ground of unpatentability alleged in
`the Petition for any claim is authorized for this inter partes review;
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(d) and 37 C.F.R.
`§ 42.4, notice is hereby given of the institution of a trial; the trial commences on
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`the entry date of this decision; and
`FURTHER ORDERED that an initial conference call with the Board is
`scheduled for 1:00 PM ET on March 13, 2014. The parties are directed to the
`Office Patent Trial Pract
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