Trials@uspto.gov
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` Paper 10
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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
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`v.
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`DESTINATION MATERNITY CORPORATION,
`Patent Owner
`
`
`
`Case IPR2013-00531
`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. 1029 - Page 1
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`571-272-7822
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` Paper 10
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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 IPR2013-00531
`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. 1029 - Page 1
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`I.
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`INTRODUCTION
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`Case IPR2013-00531
`Patent RE43,563 E
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`
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`Petitioner Target Corporation filed a Corrected Petition for an inter partes
`review of claims 1, 10–14, 16, 20, and 21 of U.S. Patent No. RE43,563 E (the
`“’563 patent”). Paper 4 (“Pet.”). The Patent Owner, Destination Maternity
`Corporation, filed a Preliminary Response pursuant to 35 U.S.C. § 313. Paper 7
`(“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, 10–14, 16, and 20 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, but not as to claim 21.
`
`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 6). Petitioner contemporaneously filed another petition for a separate inter
`partes review of the ’563 patent. Claims 1–4 and 6–8 are the subject of that
`2
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`petition. See IPR2013-00530. Petitioner also filed two petitions for inter partes
`reviews of related U.S. Patent No. RE43,531 E. See IPR2013-00532;
`IPR2013-00533.
`
`B. The Asserted Grounds
`
`Petitioner presents the following grounds of unpatentability:
`References
`Basis Claims
`challenged
`1, 10, 11, 16,
`20, 21
`§ 103 11 and 14
`
`JCP fold-over panel jeans (Ex. 1002, 2)1 § 102
`
`§ 103
`§ 103
`
`Stangle and JCP maternity bootcut jeans
`Stangle and Lauren Sara
`
`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).
`
`3
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`JCP fold-over panel jeans and JCP
`maternity bootcut jeans (Ex. 1002, 3)2
`JCP fold-over panel jeans and Lauren
`Sara (Ex. 1005)3
`JCP fold-over panel jeans and Stangle
`(Ex. 1003)4
`JCP fold-over panel jeans and Browder
`(Ex. 1004)5
`Stangle
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`§ 103
`
`12 and 13
`
`12
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`20
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`§ 103
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`§ 103
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`§ 102
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`1, 10–13, 16,
`20, and 21
`14
`13 and 14
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`Stangle and Browder
`Browder
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`§ 103
`§ 102
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`20
`1 and 20
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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.
`
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`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
`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, 10–14, 16, 20, and 21, 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
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`a lower edge portion spaced from the upper edge portion
`and defining a second encircling circumference about the
`wearer’s lower abdomen region; and
`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. 28. 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.,
`
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`CBM2012-00001, Paper 70, 7 (PTAB June 11, 2013). Thus, any constructions
`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 find it useful to construe expressly several limitations as set forth below.
`
`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.
`
`3. a partial waistband extending across a back side of the lower edge portion
`and extending down into side seams
`
`Dependent claim 14 requires that “the belly panel further comprises a partial
`waistband extending across a back side of the lower edge portion and extending
`down into side seams of an article of clothing connected thereto.” We give this
`term its ordinary and customary meaning. However, we believe reference to an
`
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`embodiment of the ’563 patent that includes this limitation is helpful to
`understanding the term.
`The Specification discloses a partial waistband in conjunction with an
`embodiment of Figure 2, which is reproduced below.
`
`
`Figure 2 of the ’563 patent illustrates a rear view of the same garment that is
`illustrated in Figure 1. The Specification states that partial waistband 208 extends
`across the back side of the trousers (lower portion 104) above perimeter seam 202
`and from left side seam 110 to right side seam 112. Ex. 1001, col. 2, ll. 58–63. It
`further states that the partial waistband tapers as it extends toward the side seams.
`Id. at ll. 63–64. This is consistent with Figure 2, which illustrates partial
`
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`waistband 208 as having a top edge that extends downward as it extends toward,
`and ultimately into, side seams 110, 112.
`
`4. shaped and formed as a hyperboloid cylinder
`
`Dependent claim 20 requires that “the belly panel defines a tubular structure
`that is shaped and formed as a hyperboloid cylinder to fit a body type having a
`tapered torso.” The Specification does not define hyperboloid cylinder. However,
`it does state: “In FIGS. 1 and 2, the tubular structure is shaped and formed as
`a . . . hyperboloid cylinder to fit a body type having a tapered torso that tapers
`approximately from shoulder to waist.” Ex. 1001, col. 4, ll. 1–4. Figures 1 and 2
`illustrate a belly panel (upper portion 102) as having an hourglass shape.
`Petitioner agrees that a hyperboloid cylinder is hourglass-shaped. Pet. 33. Thus,
`consistent with the Specification, we construe “hyperboloid cylinder” as an
`hourglass-shaped cylinder.
`Further, we note that the claim requires the tubular structure to be “shaped
`and formed as a hyperboloid cylinder” (emphasis added). Thus, the required
`hyperboloid (or hourglass) cylinder shape refers to the belly panel’s residual shape.
`A belly panel that is not formed as a hyperboloid cylinder does not meet the
`limitation regardless of whether it can be stretched, constricted, or otherwise
`manipulated into a hyperboloid cylinder.
`
`5. shaped and formed as straight-sided cylinder
`
`Dependent claim 21 requires that “the belly panel defines a tubular structure
`that is shaped and formed as straight-sided cylinder to fit a body type having a
`correspondingly shaped torso.” The required straight-sided cylinder shape is given
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`its ordinary and customary meaning. Further, as with claim 20, the required shape
`of claim 21 refers to the belly panel’s residual shape. A belly panel that is not
`formed as a straight-sided cylinder does not meet the limitation regardless of
`whether it can be stretched, constricted, or otherwise manipulated into a straight-
`sided cylinder.
`
`B. Anticipation by JCP fold-over panel jeans
`
`Petitioner asserts that claims 1, 10, 11, 16, 20, and 21 are anticipated by the
`JCP fold-over panel jeans. Pet. 30–34. The JCP fold-over jeans appear on page 15
`of the JCP catalog. Ex. 1002, 2. An excerpt of page 15 is reproduced below.
`
`11
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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
`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.
`
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`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
`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 are illustrated as
`receding downward in the front and, thus, at least partially below the wearer’s
`belly. Ex. 1002, 2. 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.”
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`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 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 10, 11, 16, 20, and 21
`
`Each of claims 10, 11, 16, 20, and 21 depends from claim 1.
`Claim 10 requires that “the belly panel is foldable to comprise a folded
`band.” The panel of the JCP fold-over panel jeans is described and illustrated as
`foldable. Ex. 1002, 2.
`Claim 11 requires that “the belly panel is woven or knitted with elastic,
`stretchable strands.” The JCP fold-over panel jeans are made of
`“[c]otton/polyester/spandex” and described and illustrated as stretchable.
`Ex. 1002, 2.
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`Claim 16 requires that “the lower edge portion is configured to extend
`downward with a parabolic shape to accommodate the wearer’s expanding belly
`region.” The top of the JCP fold-over panel jeans are illustrated as receding
`downward in the front with a parabolic shape, thus, accommodating the wearer’s
`expanded belly. Ex. 1002, 2.
`Claim 20 requires that “the belly panel defines a tubular structure that is
`shaped and formed as a hyperboloid cylinder.” Claim 21 requires that “the belly
`panel defines a tubular structure that is shaped and formed as straight-sided
`cylinder.” The panel of the JCP fold-over panel jeans is not shown or described as
`being a hyperboloid or straight-sided cylinder. It is shown being worn by a model
`in a shape that is wider in its midsection than at its upper or lower ends.
`Nonetheless, Petitioner asserts that the stretchable panel can contract to take an
`hourglass or straight-sided cylinder shape when worn by a wearer having a
`corresponding body shape. Pet. 33. We are not persuaded by this argument, as it
`is not commensurate with the scope of the claims as construed above. In each
`instance, the claim requires that the tubular structure of the belly panel be “shaped
`and formed” in the required shape.
`On this record, we are persuaded that there is a reasonable likelihood that
`Petitioner will prevail in showing anticipation by the JCP fold-over panel jeans of
`claims 10, 11, and 16 but not claims 20 and 21.6
`
`
`6 Claim 21 is the only dependent claim for which Patent Owner presented a
`specific argument beyond its arguments regarding base claim 1. Prelim. Resp. 25–
`27.
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`C. Obviousness over JCP fold-over panel jeans and JCP maternity bootcut
`jeans
`
`Petitioner asserts that the subject matter of claim 14 would have been
`obvious over the JCP fold-over panel jeans and JCP maternity bootcut jeans.
`Pet. 34–37.7 Claim 14 depends from claim 1 and additionally requires that “the
`belly panel further comprises a partial waistband extending across a back side of
`the lower edge portion and extending down into side seams of an article of clothing
`connected thereto.”
`Page 19 of the JCP catalog describes and shows the JCP maternity bootcut
`jeans. Ex. 1002, 3. An excerpt of page 19 is reproduced below.
`
`
`
`
`7 Petitioner asserts that the subject matter of claim 11 also would have been
`obvious over the asserted references. Pet. 34. However, we deny this ground as to
`claim 11, because it is redundant of Petitioner’s ground that claim 11 is anticipated
`by the JCP fold-over panel jeans.
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`The photo excerpt depicts a photograph of a portion of the JCP maternity
`bootcut jeans. The JCP catalog states that the garment includes “an all-around
`elastic belly panel that can be folded up or down depending on your stage of
`pregnancy.” Ex. 1002, 3. In the photograph, however, the all-around belly panel
`(shown in black or dark blue) is concealed partially by a white shirt, as Petitioner
`concedes. Pet. 34. 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.
`Consequently, Petitioner relies on the JCP fold-over jeans for teaching the
`limitations of claim 1, and on the JCP maternity bootcut jeans for teaching the
`partial waistband limitation required by dependent claim 14. Pet. 36.
`The JCP maternity bootcut jeans appear to have such a partial waistband (the
`uppermost denim and rear portion of the jeans). An upper edge of the partial
`waistband tapers down toward the sides seams.
`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 claim 14.
`Pet. 34–36. In particular, and relying on the declaration testimony of Frances
`Harder, Petitioner points out that both products are jeans having attached belly
`panels, which could be swapped easily with one another. Pet. 35; Ex. 1011, ¶ 25.
`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. Pet. 35; 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
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`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,
`demonstrate non-obviousness. Prelim. Resp. 30–35; 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 31 (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
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`invention of dependent claim 14, as opposed to independent claim 1.8 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
`considerations are not persuasive.
`On this record, we are persuaded that there is a reasonable likelihood that
`Petitioner will prevail in showing unpatentability of claim 14 as obvious over the
`JCP fold-over panel jeans and JCP maternity bootcut jeans.
`
`D. Obviousness over JCP fold-over panel jeans and Lauren Sara
`
`Petitioner asserts that the subject matter of claims 12 and 13 would have
`been obvious over the JCP fold-over panel jeans and Lauren Sara. Pet. 37–39.
`Claims 12 and 13 depend from claim 1. Claim 12 additionally requires that
`“a top edge margin of the belly panel is folded over and sewn or knitted to an
`inside of the belly panel fabric.” Claim 13 additionally requires that “the belly
`panel comprises a double layer tubular structure.” Petitioner asserts that Lauren
`Sara teaches these additional limitations. Lauren Sara discloses step-by-step
`instructions for “how to transform your favorite jeans into a maternity pair.”
`Ex. 1005, 4–5. Lauren Sara generally instructs to remove a top portion of jeans,
`
`
`8 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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`create a home-made belly panel, and attach the panel to the inside upper edge of
`the modified jeans. Id. at 5.
`The belly panel is made from 2 pieces of fabric. Ex. 1005, 5. First, a 7-inch
`band of Lycra® fabric is sewn end-to-end to create a 7-inch tall Lycra tube, the
`circumference of which will depend on body size. Id. Second, a 3-inch band of
`elastic fabric is sewn end-to-end to create a 3-inch tall elastic tube having the same
`circumference as the Lycra tube. Id. A bottom edge of the Lycra tube is sewn to
`the inside upper edge of the modified jeans. Id. The elastic tube is placed inside
`the Lycra tube, and the Lycra tube is folded inward and downward over the elastic
`tube, forming a triple-layered belly panel. Id. The folded down edge of the Lycra
`tube (formerly the top edge) is then sewn to the inside upper edge of the modified
`jeans. Id. Lauren Sara does not specify whether the folded down edge of the
`Lycra tube is sewn directly to an inside surface of the jeans or whether it is first
`sewn to a surface of the Lycra tube.
`It is unclear whether Lauren Sara meets claim 12’s requirement that “a top
`edge margin of the belly panel is folded over and sewn or knitted to an inside of
`the belly panel fabric” (emphasis added). However, Petitioner also relies on
`evidence regarding the level of ordinary skill in the art to support this ground, as
`attested to by Ms. Harder. Pet. 37 (citing Ex. 1011, ¶¶ 27, 35). In particular, Ms.
`Harder testifies that a person of ordinary skill in the art “would have understood
`that belly panels could include a top edge of the belly panel folded over and sewn
`to or knitted back to an inside of the belly panel fabric, because, for example,
`hemlines were well-known and desired functional or fashionable elements that
`may be applied to clothing.” Ex. 1011, ¶ 35.
`
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`With respect to claim 13, Lauren Sara appears to meet the requirement of a
`belly panel that “comprises a double layer tubular structure.” That limitation is
`open-ended and inclusive of a triple layer structure.
`Petitioner provides reasoning with rational underpinning for modifying the
`JCP fold-over panel jeans in view of the known use of hemlines, thereby resulting
`in the subject matter of claim 12, and in view of Lauren Sara’s teaching of a triple-
`layered belly panel, thereby resulting in the subject matter of claim 13. Pet. 38.
`With respect to claim 12, Petitioner points out that hemlines were well-
`known, asserts that they were desired by wearers, and concludes that it would have
`been obvious to employ them in the JCP fold-over panel jeans. Pet. 37; Ex. 1011,
`¶¶ 27, 35. With respect to claim 13, Petitioner points out that both the JCP fold-
`over jeans and Lauren Sara relate to maternity jeans, asserts that wearers of such
`clothing desired value and comfort in their clothing, and concludes that it would
`have been obvious to use the folded over belly panel construction disclosed in
`Lauren Sara at the height used in the JCP fold-over panel jeans. Pet. 38; Ex. 1011,
`¶ 33. Further, the proposed modifications do no more than yield predictable
`results. See KSR, 550 U.S. at 416.
`Patent Owner’s purported evidence of secondary considerations is not
`persuasive. First, as discussed above, Patent Owner does not direct us to actual
`evidence of commercial success such as sales data. Second, Patent Owner has not
`linked the alleged praise to the inventions of dependent claims 12 and 13, as
`opposed to the invention of independent claim 1.
`
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`On this record, we are persuaded that there is a reasonable likelihood that
`Petitioner will prevail in showing that the subject matter of claims 12 and 13 would
`have been obvious over the JCP fold-over panel jeans and Lauren Sara.
`
`E. Obviousness over JCP fold-over panel jeans and Stangle
`
`Petitioner asserts that the subject matter of claim 12 would have been
`obvious over the JCP fold-over panel jeans and Stangle. Pet. 39–42. This ground
`is denied as redundant, because trial is being instituted for the same claim on the
`ground that it is unpatentable as obvious over the JCP fold-over panel jeans and
`Lauren Sara.9 See 37 C.F.R. § 42.108(a).
`
`F. Anticipation by Stangle
`
`Petitioner asserts that claims 1, 10–13, 16, 20, and 21 are anticipated by
`Stangle. Pet. 44–49. 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.
`
`
`9 As discussed above, Lauren Sara is not critical to instituting trial on this ground.
`
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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. 23, 45–47. 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 af
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