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. RE43,531
`Filing Date: June 15, 2011
`Issue Date: July 24, 2012
`Title: BELLY COVERING GARMENT
`__________________
`
`Inter Partes Review No. 2013-00533
`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.52764602.01
`
`Target Corporation
`EX. 1032 - Page 1
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`Inter Partes Review No. 2013-00533
`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 ’531 Patent ............................................................................ 4
`
`A.
`
`B.
`
`The Disclosed Invention in the ’531 Patent .......................................... 4
`
`Prosecution History of the ’531 Patent ................................................. 6
`
`IV. Overview of the Prior Art Relied Upon for the Challenge ............................ 14
`
`A.
`
`B.
`
`C.
`
`D.
`
`J.C. Penney ontrend Maternity Catalog, Fall/Winter 2005 ................ 14
`
`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
`
`VIII. Statement of Reasons for Relief Requested .................................................. 31
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`A. Ground 1: Claims 1, 18, 19, 24-26, 28, and 29 are Unpatentable
`as Being Anticipated by the J.C. Penney ontrend Maternity
`Catalog at Page 15 .............................................................................. 31
`
`B.
`
`C.
`
`Ground 2: Claims 26 and 27 are Unpatentable as Being
`Obvious Over JCP-A in View of the J.C. Penney ontrend
`Maternity Catalog at Page 19 .............................................................. 36
`
`Ground 3: Claim 18 is Unpatentable as Being Obvious Over
`JCP-A in View of U.S. Patent No. 6,276,175 to Browder .................. 38
`
`D. Ground 4: Claim 26 is Unpatentable as Being Obvious Over
`JCP-A in View of “expecting style,” by Lauren Sara ......................... 40
`
`E.
`
`F.
`
`Ground 5: Claims 1, 18, 19, 24, 25, 28, and 29 are Unpatentable
`as Being Anticipated by U.S. Patent App. Pub. No. US
`2004/0049834 A1 to Stangle et al. ...................................................... 42
`
`Ground 6: Claims 26 and 27 are Unpatentable as Being
`Obvious Over Stangle in View of JCP-B ............................................ 48
`
`G. Ground 7: Claim 18 is Unpatentable as Being Obvious Over
`Stangle in View of Browder ................................................................ 50
`
`H. Ground 8: Claim 26 is Unpatentable as Being Obvious Over
`Stangle in View of Sara ....................................................................... 52
`
`I.
`
`Ground 9: Claims 1 and 18 are Unpatentable as Being
`Anticipated by Browder ...................................................................... 54
`
`IX. Secondary Considerations ............................................................................. 56
`
`X.
`
`Conclusion ..................................................................................................... 56
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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:
`
`Simplicity 4890 by Simplicity Pattern Co., Inc.
`
`Exhibit 1015:
`
`McCall’s 2431 by The McCall Pattern Company
`
`dms.us.52764602.01
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`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.52764602.01
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`Inter Partes Review No. 2013-00533
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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, 18, 19, and 24-
`
`29 of U.S. Patent No. RE43,531 (“the ’531 Patent”) (Ex. 1018) 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 ’531 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 that 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.52764602.01
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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 ’531 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 ’531 Patent claims 1, 18, 19, and 24-29
`
`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, 18, 19, 24-26, 28, and 29 are unpatentable as being
`
`Anticipated by the J.C. Penney ontrend Maternity Catalog at page 15 (“JCP-A”).
`
`dms.us.52764602.01
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`Ground 2: claims 26 and 27 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: claim 18 is unpatentable as being obvious over JCP-A in view of
`
`U.S. Patent No. 6,276,175 to Browder (“Browder”).
`
`Ground 4: claim 26 is unpatentable as being obvious over JCP-A in view of
`
`expecting style, by Lauren Sara (“Sara”).
`
`
`
`Ground 5: claims 1, 18, 19, 24, 25, 28, and 29 are unpatentable as being
`
`anticipated by U.S. Patent App. Pub. No. US 2004/0049834 A1 to Stangle et al.
`
`(“Stangle”).
`
`Ground 6: claims 26 and 27 are unpatentable as being obvious over Stangle
`
`in view of JCP-B.
`
`Ground 7: claim 18 is unpatentable as being obvious over Stangle in view
`
`of Browder.
`
`Ground 8: claim 26 is unpatentable as being obvious over Stangle in view
`
`of Sara.
`
`Ground 9: claims 1 and 18 are unpatentable as being anticipated by
`
`Browder.
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`dms.us.52764602.01
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`III. OVERVIEW OF THE ’531 PATENT
`
`A.
`
`The Disclosed Invention in the ’531 Patent
`
`
`
`The ’531 Patent (Ex. 1018) discloses a garment that may be worn “during
`
`different stages of pregnancy and different stages of postpartum body changes.”
`
`(’531 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.)
`
`
`
`Annotated copies of FIGS. 1 and 2 of the ’531 Patent are reproduced below:
`
`FIG. 1:
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`FIG. 2:
`
`The belly covering garment 100 includes a garment upper portion 102 whose
`
`lower end perimeter/front center seam 106 is in communication with the upper end
`
`perimeter 108 of the garment lower portion 104. (’531 Patent at 2:26-31).
`
`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. (’531 Patent at 2:31-46). 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 2:49-58). The partial
`
`waistband may also be sewn into perimeter seam 202 on the back side, and may
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`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. (’531 Patent
`
`at 2:59-3:10). The belly panel 124 extends at least partially under the abdomen of
`
`the garment wearer, and may include elastic or stretchable fabric. (Id. at 3:6-21).
`
`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
`
`defined in part by center seam 118. (Id. at 2:41-42 and 2:46-48, 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. (’531 Patent at 3:27-30). 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 3:22-27).
`
`B.
`
`Prosecution History of the ’531 Patent
`
`The application that ultimately became the ’531 Patent, App. No.
`
`11/756,242, was filed with the United States Patent and Trademark Office
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`(“USPTO”), and included 11 claims. 1 On February 20, 2008, the applicant
`
`submitted a preliminary amendment prior to examination that added claims 12-17,
`
`each directed to a “seamless tubular structure” or “seamless tubular elastic fabric.”
`
`The applicants submitted an Information Disclosure Statement (IDS) on
`
`September 18, 2008, identifying prior art cited in a rejection to child application
`
`12/117,004, which issued as U.S. Patent No. 7,900,276 (“the ’276 Patent”) (Ex.
`
`1009). A second preliminary amendment was filed on November 3, 2008,
`
`amending original claims 1-3 and 6 and adding new dependent claims 12-25,
`
`displacing former new dependent claims 12-17. The applicants, essentially, argued
`
`that the amended claims were patentable because the claimed panel sits higher on
`
`the wearer’s torso than those of the prior art. For example, the applicants argued
`
`that: (1) the following limitation added to claim 1 distinguished U.S. Patent No.
`
`4,506,390 to Stern (“Stern”) (Ex. 1017): “the garment upper portion having a
`
`second torso encircling circumference along the upper end of the belly panel above
`
`a location of maximum girth of the abdomen to hold the garment up and in place
`
`1 The prosecution history of the ’531 Patent is attached as Exhibit 1021, and the
`
`prosecution history of U.S. Patent No. 7,814,575 (whose reissue issued as the ’531
`
`Patent) is attached as Exhibit 1020. U.S. Patent No. 7,814,575 is a continuation of
`
`U.S. Patent No. 7,900,276 (Ex. 1009). The reissue of U.S. Patent No. 7,900,276 is
`
`U.S. Patent No. RE43,563 (Ex. 1001).
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`over the torso;” (2) attached documents, copied (09/11/2008) from the website,
`
`http://www.motherhood.com show photographed garments commercially available
`
`from the Assignee of the present application, which distinguish the claims from the
`
`waistband on the garment of Stern; (3) 5”, 6”, or 7.25” elastic portions shown in
`
`the prior art are “too short to encompass the claimed invention;” and (4) “the
`
`stretchable band 10 of Carney U.S. Patent App. Pub. No. 2004/021087 (“Carney”)
`
`(Ex. 1022) does not supply the deficiencies of [Stern] previously discussed.”
`
`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. 1020 at pp. 126-128.
`
`In the first office action, issued December 30, 2009, the Examiner rejected
`
`all pending claims 1-25. Specifically, the Examiner rejected claims 1, 11, 16-20,
`
`and 25 under 35 U.S.C. § 102 (“§102”) in view of Stern (Ex. 1017), claims 3 and 4
`
`under 35 U.S.C. § 103 (“§103”) in view of Stern and Carney (Ex. 1022), claims
`
`21-24 under §103 in view of Stern and Patent App. Pub. No. 2006/0010571
`
`(“Oakley”) to Oakley (Ex. 1023), claims 6 and 12 under §103 in view of Stern and
`
`U.S. Patent No. 6,311,333 (“Batra”) to Batra (Ex. 1024), and claims 7-10 and 13-
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`15 under §103 in view of Stern and U.S. Patent No. 3,045,678 (“Geimer”) to
`
`Geimer (Ex. 1025).2
`
`
`
`The applicants responded to the first office action by cancelling claim 10
`
`and arguing that: (1) the top of the claimed panel must be “along the upper end of
`
`the belly panel above a location of maximum girth of the abdomen;” (2) Carney’s
`
`“stretchable band” “is not attached to the skirt or pants” and “has an entirely
`
`different purpose and principle of operation than that of the claimed invention . . .
`
`;” and (3) the “five or six-inch portion 112” of Oakley is “too short to encompass
`
`the claimed invention.”
`
`
`
`The Examiner responded with a second, and final, rejection, which rejected
`
`all pending claims 1-9 and 11-25. Claims 1, 11, 16-20, and 25 were rejected under
`
`§103 in view of Stern, claims 3 and 5 were rejected under §103 in view of Stern
`
`and Carney, claims 21-24 were rejected under §103 in view of Stern and Oakley,
`
`claims 7-9 and 13-15 were rejected under §103 in view of Stern and Geimer, and
`
`all claims were rejected under 35 U.S.C. § 112 ¶ 2 as indefinite. Regarding the
`
`indefiniteness rejection, the Examiner noted that the limitation “the belly panel
`
`above a location of maximum girth of the abdomen” is an indefinite subjective
`
`limitation because that location is different on each wearer.” The Examiner noted
`
`2 The cover of the office action notes that claims 2 and 5 were rejected, but the
`
`body of the office action does not include a detailed explanation of this rejection.
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`that the location needed to be defined with regard to the garment itself and not the
`
`wearer, or the location needs to be defined in regard to the wearer according to a
`
`body location that would not be different on each wearer so that the location is
`
`clear and definite. The Examiner believed this issue to be important, because the
`
`“location is what defines and differentiates applicant’s invention from the prior art.
`
`. . . Applicant has argued that [S]tern only cups the lower belly but applicant's
`
`claim did not define that the entire belly is covered. . . . Carney is used in the same
`
`fashion as an attached waistband. . . . The maximum girth area needs to be better
`
`defined.”
`
`
`
`On August 3, 2010 the applicants submitted an Interview Request Form,
`
`stating that the argument to be presented was “Stern’s failure to disclose a belly
`
`panel configured to fit over substantially an entire abdomen by expanding
`
`vertically and circumferentially.” On August 31, 2010, following a telephone
`
`interview, the Examiner issued an Examiner’s Amendment, Examiner’s Interview
`
`Summary, and a Notice of Allowance. The Examiner’s Amendment modified
`
`claim 1 to require “upper edge of the belly panel . . . encircles a wearer’s torso just
`
`beneath the wearer's breast area configured to hold the garment up and in place
`
`about the torso in a position of a location of maximum girth of the abdomen
`
`thereby substantially covering the wearer’s entire pregnant abdomen during all
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`stages of pregnancy.” U.S. Patent No. 7,814,575 (“the ’575 Patent”) (Ex. 1019)
`
`issued on October 19, 2010.
`
`
`
`The patentee filed a reissue application, App. No. 13/161,138 (see Ex. 1021)
`
`on June 15, 2011. In the reissue application, the patentee added new dependent
`
`claims 26-29, noted that the claims as issued remained unchanged, provided a
`
`signed declaration from Ronald J. Masciantonio, and submitted an IDS.
`
`
`
`A first office action during prosecution of the reissue application rejected all
`
`pending claims 1-29 for obviousness type-double patenting based on the pending
`
`reissue application that became U.S. Patent No. RE43,563 and also noted that the
`
`declaration submitted in conjunction with the reissue application was defective
`
`because it did not identify the specific claim that was defective.
`
`
`
`Applicants responded to the office action by filing a terminal disclaimer and
`
`filing a supplemental declaration from Ronald J. Masciantonio. After the USPTO
`
`approved the terminal disclaimer, the applicants submitted a second amended
`
`declaration from Ronald J. Masciantonio and a second IDS. The ’531 Patent
`
`issued on July 24, 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 child ’276 Patent,
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`which became the sole independent claim of the related ’563 Patent challenged
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`here, 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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`A.
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`J.C. Penney ontrend Maternity Catalog, Fall/Winter 2005
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`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 ’531 Patent.
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`While page 15 of JCP-A was submitted to the USPTO during prosecution of
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`the ’575 and ’531 Patents,3 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 ’575 and ’531 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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`3 See ’575 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. 1020). The cover and page 15 (JCP-A) of
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`JCP were included in an IDS submitted by the Patentee during the reissue of the
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`’575 Patent, but the Examiner did not use JCP in a rejection. See December 15,
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`2011 List of References Considered by Examiner and December 15, 2011 Non-
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`Final Rejection and List of References Cited by Examiner. (Ex. 1021).
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`of catalog page 15, as depicted in the certified file wrapper of the ’531 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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`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 ’531 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 ’575 and ’531 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 2005.4
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`4 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 the ’531 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, illustrate how the maternity jeans
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`may be worn with the fold-over panel completely unfolded. (JCP at pp. 15 and
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`19). The polyester/spandex fold-over panel is attached, via a seam, to the upper
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`circumference of the denim jeans, and covers the wearer’s torso from beneath the
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`belly to just below the breast area. (JCP at p. 15). See Ex. 1011 (Harder Dec.) at ¶
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`30. The tubular-knitted polyester-spandex panel inherently comprises fibers with
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`elasticity that expand and contract, allowing the panel to fit a variety of shapes and
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`body types including hyperboloid cylinder, straight-sided cylinder, and tapered
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`torso. See Ex. 1011 (Harder Dec.) at ¶ 29. The front of the jeans includes a
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`recessed, parabolic, and curved dip across the front of the wearer to allow for the
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`changing size of a woman’s belly before, during and after pregnancy. (JCP at p.
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`15 and 19). As is apparent in Fig. 1 of JCP at p. 15, the fold-over panel encircles
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`the wearer’s torso at a location above the wearer’s belly region and at a location
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`below the wearer’s belly region. (Id. at p. 15).
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`Figures 2 and 3 on page 15 and text on page 19 (“[The] all-around elastic
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`belly panel ma