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. Unassigned
`Filing Date: March 14, 2014
`__________________
`
`
`
`PETITION FOR INTER PARTES REVIEW
`UNDER 35 U.S.C. §§ 311-319 AND 37 C.F.R. § 42.100 ET SEQ.
`
`
`
`
`

`
`Inter Partes Review No. Unassigned
`Petition For Inter Partes Review
`
`
`TABLE OF CONTENTS
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`F.
`
`G.
`
`Real Party In Interest ............................................................................. 1
`
`Related Matters ...................................................................................... 1
`
`Lead and Back-Up Counsel ................................................................... 2
`
`Service Information ............................................................................... 2
`
`Grounds for Standing ............................................................................ 3
`
`Power of Attorney ................................................................................. 3
`
`Fees ........................................................................................................ 3
`
`II.
`
`Statement of the Precise Relief Requested ...................................................... 3
`
`III. Overview of the ’531 Patent ............................................................................ 4
`
`A.
`
`B.
`
`The Disclosed Invention in the ’531 Patent .......................................... 4
`
`Prosecution History of the ’531 Patent ................................................. 7
`
`IV. OVERVIEW OF BOARD DECISIONS RELATING TO THE ’531
`Patent ............................................................................................................... 8
`
`V. Overview of the Prior Art Relied Upon for the Challenge .............................. 9
`
`A.
`
`B.
`
`C.
`
`Asada ..................................................................................................... 9
`
`J.C. Penney ontrend Maternity Catalog, Fall/Winter 2005 ................ 10
`
`“expecting style” by Lauren Sara ........................................................ 14
`
`D. US Patent No. 8,185,970 to Summers ................................................. 15
`
`E.
`
`F.
`
`US Patent No. 4,506,390 to Stern ....................................................... 16
`
`US Patent Application Publication No. 2004/0049834 A1 to
`Stangle et al. ........................................................................................ 16
`
`VI. Construction of Certain Claim Terms ........................................................... 17
`
`

`
`Inter Partes Review No.Unassigned
`Petition For Inter Partes Review
`
`VII. Level of Ordinary Skill in the Art ................................................................. 18
`
`VIII. Threshold Requirement for Inter Partes Review .......................................... 18
`
`IX. Statement of Reasons for Relief Requested .................................................. 19
`
`A. Ground 1: Claims 1, 2, 5, 10, 17, 19, 24, 25, 28, and 29 are
`Unpatentable as Being Anticipated by Asada ..................................... 19
`
`B.
`
`C.
`
`Ground 2: Claims 6, 11, 26, and 27 are Unpatentable as Being
`Obvious Over Asada in View of the J.C. Penney ontrend
`Maternity Catalog at Page 19 .............................................................. 25
`
`Ground 3: Claim 18 is Unpatentable as Being Obvious Over
`Asada in View of US Patent No. 8,185,970 to Summers ................... 30
`
`D. Ground 4: Claim 18 is Unpatentable as Being Obvious Over
`Asada in View of US Patent No. 4,506,390 to Stern .......................... 35
`
`E.
`
`F.
`
`Ground 5: Claims 15 and 16 are Unpatentable as Being
`Obvious Over Asada in View of Stangle. ........................................... 38
`
`Ground 6: Claim 1 is Unpatentable as Being Anticipated by
`J.C. Penney ontrend Maternity Catalog at Page 15 ............................ 41
`
`G. Ground 7: Claim 18 is Unpatentable as Being Obvious Over
`JCP fold-over panel jeans in View of US Patent No. 8,185,970
`to Summers .......................................................................................... 43
`
`H. Ground 8: Claim 19 is Unpatentable as Being Obvious Over
`JCP fold-over panel jeans in View of Asada ...................................... 45
`
`X.
`
`Secondary Considerations ............................................................................. 47
`
`XI. Conclusion ..................................................................................................... 48
`
`
`
`
`
`ii
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`

`
`Inter Partes Review No.Unassigned
`Petition For Inter Partes Review
`
`
`LIST OF EXHIBITS
`
`
`Exhibit 1001:
`
`Exhibit 1002:
`
`
`
`
`Exhibit 1003:
`
`
`
`
`Exhibit 1004:
`
`Exhibit 1005:
`
`
`Exhibit 1006:
`
`
`Exhibit 1007:
`
`Exhibit 1008:
`
`
`Exhibit 1009:
`
`Exhibit 1010:
`
`
`
`
`
`
`
`Exhibit 1011:
`
`Exhibit 1012:
`
`Exhibit 1013:
`
`Exhibit 1014:
`
`Exhibit 1015:
`
`Hendrickson et al. US Patent No. RE43,563 (“the ’563 Patent”)
`
`J.C. Penney ontrend Maternity Catalog, dated Fall/Winter
`2005, cover and pages 15 and 19 (“JCP”)
`
`US Patent Application Publication No. 2004/0049834 A1 to
`Stangle, et al., published March 18, 2004 (“Stangle”)
`
`US Patent No. 6,276,175 to Browder (“Browder”).
`
`“expecting style,” by Lauren Sara, published by Bulfinch Press,
`a division of AOL Time Warner Book Group, in 2003 (“Lauren
`Sara”)
`
`Plaintiff’s Infringement contentions in Destination Maternity
`Corp. v. Target Corp et al., 2:12-cv-05680-AB (E.D. Pa.)
`
`Certified File Wrapper of US Patent No. RE43,563
`
`Certified File Wrapper of US Patent No. 7,900,276 (whose
`reissue application resulted in the ’563 Patent)
`
`Hendrickson et al. US Patent No. 7,900,276 (“the ’276 Patent”)
`
`PULSE; An Early Lesson in Prada, by Danielle Pergament,
`published by the New York Times on February 27, 2005
`(“Pergament”)
`
`Declaration of Frances Harder Executed Aug. 26, 2013
`
`Curriculum Vitae of Frances Harder
`
`Documents Considered by Frances Harder
`
`Simplicity 4890 by Simplicity Pattern Co., Inc.
`
`McCall’s 2431 by The McCall Pattern Company
`iii
`
`

`
`Inter Partes Review No.Unassigned
`Petition For Inter Partes Review
`
`
`Exhibit 1016:
`
`
`
`
`Exhibit 1017:
`
`Exhibit 1018:
`
`Exhibit 1019:
`
`Exhibit 1020:
`
`Plaintiff Destination Maternity Corporation’s Objections and
`Responses to Defendant’s First Set of Interrogatories
`
`
`
`US Patent No. 4,506,390 to Stern (“Stern”)
`
`Hendrickson et al. US Patent No. RE43,531 (“the ’531 Patent”)
`
`Hendrickson et al. US Patent No. 7,814,575 (“the ’575 Patent”)
`
`
`Exhibit 1021:
`
`Exhibit 1022:
`
`
`Exhibit 1023:
`
`Exhibit 1024:
`
`Certified File Wrapper of US Patent No. 7,814,575 (whose
`reissue application resulted in the ’531 Patent)
`
`Certified File Wrapper of US Patent No. RE43,531
`
`US Patent Application Publication No. 2004/0210987 to
`Carney
`
`US Patent Application Publication No. 2006/0010571 to
`Oakley
`US Patent No. 6,311,333 to Batra
`
`Exhibit 1025:
`
`US Patent No. 3,045,678 to Geimer
`
`Exhibit 1026:
`
`Petition for Inter Partes Review for IPR2013-00530
`
`Exhibit 1027:
`
`PTAB Decision for IPR2013-00530 dated February 14, 2014
`
`Exhibit 1028:
`
`Petition for Inter Partes Review for IPR2013-00531
`
`Exhibit 1029:
`
`PTAB Decision for IPR2013-00531 dated February 14, 2014
`
`Exhibit 1030:
`
`Petition for Inter Partes Review for IPR2013-00532
`
`Exhibit 1031:
`
`PTAB Decision for IPR2013-00532 dated February 19, 2014
`
`Exhibit 1032:
`
`Petition for Inter Partes Review for IPR2013-00533
`
`Exhibit 1033:
`
`PTAB Decision for IPR2013-00533 dated February 19, 2014
`iv
`
`

`
`Inter Partes Review No.Unassigned
`Petition For Inter Partes Review
`
`Exhibit 1034:
`
`Japanese Utility Model Patent No. 3,086,624 to Asada
`
`Exhibit 1035:
`
`Certified Translation of Asada
`
`Exhibit 1036:
`
`Declaration of Frances Harder Executed March 14, 2014
`
`Exhibit 1037:
`
`US Patent No. 8,185,970 to Summers
`
`Exhibit 1038:
`
`
`Exhibit 1039:
`
`Exhibit 1053:
`
`Webster’s Encyclopedic Unabridged Dictionary of the English
`Language: Definition of Hourglass
`
`The New Oxford Dictionary: Definition of Hourglass
`
`Materials Considered for the Second Declaration of Frances
`Harder
`
`v
`
`

`
`Inter Partes Review No. Unassigned
`Petition For Inter Partes Review
`
`
`
`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, 2, 5, 6, 10, 11,
`
`15-19, and 24-29 of US Patent No. RE43,531 (“the ’531 Patent,” Ex. 1001).
`
`A. Real Party In Interest
`Target Corporation is the real party-in-interest for this petition.
`
`B. Related Matters
`The ’531 Patent is the subject of a patent infringement lawsuit
`
`
`
`
`
`brought by Destination Maternity Corp. (“DMC” or “Patent Owner”) against
`
`Petitioner in the US District Court for the Eastern District of
`
`Pennsylvania, case number: 2:12-cv-05680-AB.
`
`In addition to the above identified district court litigation, the following
`
`matters may affect or be affected by a decision in this proceeding:
`
`Target Corp. v. Destination Maternity Corp.; Patent Trial
`
`and Appeal Board (“PTAB”), Petition for Inter Partes Review, Case No. IPR2013-
`
`00530 (Ex. 1026), the ’563 Patent, Institution Decision (Ex. 1027);
`
`Target Corp. v. Destination Maternity Corp.; PTAB, Petition for Inter Partes
`
`Review, Case No. IPR2013-00531 (Ex. 1028), the ’563 Patent, Decision (Ex.
`
`1029);
`
`1
`
`

`
`Inter Partes Review No. Unassigned
`Petition For Inter Partes Review
`
`
`Target Corp. v. Destination Maternity Corp.; PTAB, Petition for Inter Partes
`
`Review, Case No. IPR2013-00533 (Ex. 1030), Patent RE43,531 (“the ’531
`
`Patent”), Decision (Ex. 1031);
`
`Target Corp. v. Destination Maternity Corp.; PTAB, Petition for Inter Partes
`
`Review, Case No. IPR2013-00532 (Ex. 1032), the ’531 Patent, Decision (Ex.
`
`1033); and
`
`Target Corporation v. Destination Maternity Corp.; PTAB, Petition for Inter
`
`Partes Review, Case No. unknown, Patent RE43,563, filed March 14, 2014.
`
`C. Lead and Back-Up Counsel
`Lead Counsel
`
`
`
`Back-Up Counsel
`Norman Hedges
`
`
`
`Trevor Carter, same address and fax
`Faegre Baker Daniels LLP
`
`Tele: 317-237-1352
`300 N. Meridian St.
`
`
`Trevor.Carter@FaegreBD.com
`Indianapolis, IN 46204-1750
`
`Reg. No. 40,549
`
`
`Tele: 317-237-8691
`
`
`
`Fax: 317-237-1000
`
`
`Daniel Lechleiter, same address and fax
`Norman.Hedges@FaegreBD.com
`Tele: 317-237-1070
`Reg. No. 44,151
`
`
`
`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.
`
`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.
`
`
`
`2
`
`

`
`Inter Partes Review No. Unassigned
`Petition For Inter Partes Review
`
`
`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. This Petition is accompanied by a motion for
`
`joinder with IPR2013-00533 and has been timely filed within one month of the
`
`February 19, 2014 institution date of IPR2013-00532 and IPR2013-00533. The
`
`one year bar set forth in §42.101(b) does not apply. 37 C.F.R. §42.122(b).
`
`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, 2, 5, 6, 10, 11, 15-
`
`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.
`
`3
`
`
`
`

`
`Inter Partes Review No. Unassigned
`Petition For Inter Partes Review
`
`
`
`Reference
`
`Basis Claims
`
`Challenged
`
`Asada (Japanese UM 3,086,624)
`
`§102
`
`1, 2, 5, 10, 17, 19,
`
`24, 25, 28, and 29
`
`Asada and JCP maternity bootcut jeans (J.C. Penney
`
`§103
`
`6, 11, 26, and 27
`
`ontrend Maternity Catalog at p. 19)
`
`Asada and Summers (US Patent No. 8,185,970)
`
`Asada and Stern (US Patent No. 4,506,390)
`
`§103
`
`§103
`
`18
`
`18
`
`Asada and Stangle (US Pat. App. Pub. No.
`
`§103
`
`15 and 16
`
`2004/0049834)
`
`JCP fold-over panel jeans (J.C. Penney ontrend
`
`§102
`
`1
`
`Maternity Catalog at p. 15)
`
`JCP fold-over panel jeans and Summers
`
`JCP fold-over panel jeans and Asada
`
`§103
`
`§103
`
`18
`
`19
`
`
`
`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
`
`4
`
`

`
`Inter Partes Review No. Unassigned
`Petition For Inter Partes Review
`
`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 expansion of the upper belly panel. Id. Annotated copies of FIGS. 1 and 2
`
`of the ’531 Patent are reproduced below:
`
`FIG. 1:
`
`FIG. 2:
`
`
`
`
`
`
`
`
`
`5
`
`

`
`Inter Partes Review No. Unassigned
`Petition For Inter Partes Review
`
`
`Belly covering garment 100 includes a garment upper portion 102 whose
`
`lower end perimeter 106 is in communication with upper end perimeter 108 of the
`
`garment lower portion 104. ’531 Patent at 2:26-31.
`
`Lower portion 104 of garment 100 includes outer 110, 112 and inner 114,
`
`116 side seams, 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. Garment lower portion
`
`104 may also include a partial waistband 208 joining and extending from side
`
`seams 110, 112 of garment lower portion 104 and extending across the back side of
`
`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 taper towards side seams 110,
`
`112 with a center seam 210 to shape waistband 208 with a curvature above the
`
`wearer’s pelvis. Id.
`
`Lower portion 104 of 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 belly panel 124. ’531 Patent at 2:59-3:10. 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; lower
`
`portion 104 may also include a zipperless fly front defined in part by center seam
`
`118. Id. at 2:41-42, 2:46-48. Garment upper portion 102 includes a torso
`
`6
`
`

`
`Inter Partes Review No. Unassigned
`Petition For Inter Partes Review
`
`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 United States Patent and Trademark Office (“PTO”) repeatedly rejected
`
`the pending claims of the application that ultimately became the ’531 Patent, App.
`
`No. 11/756,242, and the subsequent reissue application, App. No. 13/161,138, over
`
`US Patent No. 4,506,390 to Stern (“Stern”)(Ex. 1017) alone or in combination with
`
`other references.1 Copies of FIGS. 1 and 2 of Stern are provided below.
`
`
`
`
`1 See Ex. 1021 for the prosecution history of the ’531 Patent and Ex. 1020 for the
`
`prosecution history of US Patent No. 7,814,575, which reissued as the ’531 Patent.
`
`US Patent No. 7,814,575 is a continuation of US Patent No. 7,900,276 (Ex. 1009).
`
`The reissue of US Patent No. 7,900,276 is US Patent No. RE43,563 (Ex. 1001).
`
`7
`
`

`
`Inter Partes Review No. Unassigned
`Petition For Inter Partes Review
`
`
`To overcome the PTO’s repeated rejections in view of Stern and obtain
`
`issuance of the only two independent claims at issue here and in the other co-filed
`
`Petition for Inter Partes Review, Patent Owner amended both claims to specify a
`
`panel height that exceeded the height of the panel disclosed in Stern. The prior art
`
`Petitioner submits in this Petition discloses this “missing” element of Stern, the
`
`absence of which led to the PTO’s issuance of this patent.
`
`IV. OVERVIEW OF BOARD DECISIONS RELATING TO THE ’531
`PATENT
`
`In IPR2013-00532 and IPR2013-00533, the Board collectively instituted
`
`inter partes review of claims 1, 2, 5, 6, 10, 11, 15-17, and 24-29. Ex. 1031 at p. 23
`
`and Ex. 1033 at p. 24. The Board did not institute inter partes review of claims 18
`
`and 19. Ex. 1033 at p. 24. Regarding these claims, the Board indicated that the
`
`garment of the primary reference, JCP fold-over panel jeans, is shown being worn
`
`by a model and is not commensurate with the scope of the claim term “formed” as
`
`construed in the decision. Ex. 1033 at pp. 12 and 13. In the decision, the Board
`
`construed “formed” as the garment upper portion’s “residual shape.” Ex. 1033 at
`
`pp. 8 and 9.
`
`Unlike the JCP fold-over panel jeans, Asada illustrates a belly panel 2 when
`
`not worn by a wearer/model (e.g., FIGS. 1(a) and 1(b)). Thus, Asada illustrates the
`
`“residual” shape of a belly panel 2, namely that of a straight-sided cylinder (claim
`
`19). Asada is the basis (alone or in combination) for all but two of the proposed
`
`8
`
`

`
`Inter Partes Review No. Unassigned
`Petition For Inter Partes Review
`
`grounds for cancellation. Summers and Stern, respectively, disclose a belly panel
`
`having a residual hourglass shape (claim 18).
`
`V. OVERVIEW OF THE PRIOR ART RELIED UPON FOR THE
`CHALLENGE
`A. Asada
`Asada (Ex. 1034) was published no later than June 28, 2002 and is a §102(b)
`
`prior art printed pubication to the ’531 Patent. Asada was not cited in the ’531
`
`Patent. Asada discloses maternity pants including pants portion 1 and an “entire
`
`abdomen-covering portion 2” comprised of “stretch knit material” that “envelop[s]
`
`the abdomen….” “over a long period of time from during a pregancy to post-
`
`partum.” Asada Trans., Ex. 1035 at ¶¶ [0009], [0011], [0013], and [0016].
`
`Abdomen-covering portion 2 is “expandable, contractible, and foldable.” Id. at ¶
`
`[0008]. Figures 1(a) and 1(b) of Asada are reproduced below.
`
`
`
`
`
`9
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`

`
`Inter Partes Review No. Unassigned
`Petition For Inter Partes Review
`
`
`Figure 1(a) is a front view of the maternity pants of Asada and FIG. 1(b) is a
`
`rear view collectivly showing abdomen-covering portion 2 extending front to back.
`
`The front of pants portion 1 includes a recessed, parabolic, and curved dip across
`
`the front to allow for the changing size of a woman’s belly before, during and after
`
`pregnancy. See Ex. 1036, Harder Dec. II at ¶ 26. Figures 1(a) and 1(b) show the
`
`maternity pants when not worn and abdomen-covering portion 2 in its residual
`
`shape. This is in constract to FIGS. 2(a)-2(c) (reproduced below) showing the
`
`maternity pants worn by a women. Belly panel 2 has a residual shape of a straight-
`
`sided cylinder. See Ex. 1036, Harder Dec. II at ¶ 23.
`
`
`
`Figures 2(a) and 2(b) of Asada show the maternity pants with abdonmen-
`
`covering portion 2 folded once at differing amounts to provide the wearer with
`
`desired levels of coverage. The stretch knit panel comprises fibers with elasticity
`
`that expand and contract. See Ex. 1036, Harder Dec. II at ¶ 27.
`
`B.
`J.C. Penney ontrend Maternity Catalog, Fall/Winter 2005
`The selected pages from the J.C. Penney ontrend Maternity Catalog,
`
`Fall/Winter 2005 (“JCP”) (Ex. 1002) disclose maternity jeans with a fold-over
`
`10
`
`

`
`Inter Partes Review No. Unassigned
`Petition For Inter Partes Review
`
`waistband comprised of spandex that provides “over-the-belly coverage,” “before,
`
`during and after your pregnancy” (Id. at p. 15) (“JCP fold-over panel jeans”) and
`
`Levis® slim-fit stretch bootcut jeans modified to include a fold-over waistband
`
`comprised of spandex (Id. at p. 19)(“JCP maternity bootcut jeans”). JCP was
`
`published no later than December 31, 2005, and is a §102(b) prior art printed
`
`pubication to the ’531 Patent. Page 15 of JCP was submitted to the PTO during
`
`prosecution of the ’276 and ’531 Patents. The below image shows Figures 1, 2, and
`
`3, in the lower left hand corner of catalog page 15.
`
`
`
`JCP also includes a description and images of the JCP maternity bootcut
`
`jeans, which are described as Levis® slim-fit stretch bootcut maternity jeans, that
`
`were not made available to the PTO during prosecution of the ’575 and ’531
`
`Patents. The following image (without the arrow and dash annotations) may be
`
`found on page 19 of JCP.
`
`11
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`

`
`Inter Partes Review No. Unassigned
`Petition For Inter Partes Review
`
`
`
`
`As shown in the above image, the full height of the belly panel of JCP
`
`maternity bootcut jeans is unclear, but the belly panel does share many of the same
`
`features as the belly panel of page 15. For example, the JCP fold-over panel jeans
`
`(p. 15) and JCP maternity bootcut jeans (p. 19) may be folded up or down
`
`depending on the wearer’s stage of pregnancy. Id. at pp. 15, 19.
`
`Figure 1 on page 15, describing how the fold-over band may be unfolded or
`
`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. Id. at pp. 15 and 19.
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`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. Id. at p. 15. See Ex. 1011, Harder Dec. I 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. I 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 pp.
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`15 and 19, Ex. 1002. As is apparent in FIG. 1 of JCP at p. 15, the fold-over panel
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`encircles the wearer’s torso at a location above the wearer’s belly region and at a
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`location 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 may be folded up or down depending on your stage of pregnancy.”)
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`illustrate the maternity jeans with the fold-over panel folded once or twice,
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`respectively, so as to provide the wearer with desired levels and locations of belly
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`comfort and support. Id. at pp. 15 and 19. For example, the fold-over panel of
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`JCP fold-over panel jeans “stretch[es] for comfort.” Id. at p. 15. The image and
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`text on page 19 decribe the “[f]aux fly” front and “[c]lassic 5-pocket styling” that
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`is included in the maternity jeans. Id. at p. 19. The rear yoke (i.e., partial
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`waistband) of JCP maternity bootcut jeans is visible on p. 19 and the yoke extends
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`from side seam to side seam while expanding up and over the pelvis at the back
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`center vertical seam. Id. at p. 19. The width of that yoke also changes, tapering
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`towards the side seams and widening up and over the pelvis towards the rear center
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`seam. Id. p. 19. See Ex. 1011, Harder Dec. I at ¶ 19.
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`“expecting style” by Lauren Sara
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`C.
`Lauren Sara (Ex. 1005) at the cover page, the copyright page, and pp. 42-43,
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`discloses a pair of maternity jeans with an expansible waist that extends from
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`below the belly to just beneath the belly button, and a method for creating those
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`maternity jeans from a pair of regular denim jeans. Lauren Sara was published in
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`2003 by Bulfinch Press and is §102(b) prior art to the ’531 Patent. Copies of
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`images showing the finished maternity jeans and six images depicting various steps
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`for creating the jeans are reproduced below, with a collection of arrows to indicate
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`features present in Lauren Sara. See Ex. 1011, Harder Dec. I at ¶ 23.
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`As provided in instructions 7-12, the dark blue, Lycra section of the
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`waistband of Lauren Sara is formed by folding a piece of material in half, which
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`creates a double-layer, and attaching the folded material to the inside of the lower
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`portion jeans. Lauren Sara at p. 43, Ex. 1005. The enlarged, center image above
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`on the right shows that the yoke (i.e., partial waistband), as indicated by the arrow,
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`of Lauren Sara remains in the jeans and that the yoke extends across the rear of the
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`jeans and into the left and right side seams of the jeans. Id. at p. 42. The yoke also
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`narrows towards the side seams and expands, above the pelvis, towards the rear
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`center seam. Id.
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`D. US Patent No. 8,185,970 to Summers
`Summers (Ex. 1037) was published no later than May 3, 2007 and was filed
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`on June 28, 2006, claiming priority to US Provisional Patent Application No.
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`60/694,623, filed on June 28, 2005. Summers is §102(e) prior art to the ’531
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`Patent. Summers was not cited in the ’531 Patent. Summers (Ex. 1037) discloses
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`several embodiments of a garment, each including a girdle portion 4 and a shirt
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`portion 6. Girdle portion 4 is made of an elastic material, such as interwoven
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`nylon or lycra spandex. Id. at 4:20-22. Girdle portion 4 can have a “uniform,
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`tapered, or silhouette contour that provides support and shapes the abdomen region
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`of a user.” Id. at 2:64-67. Girdle portion 4 aids “pregnant women” and gives
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`“post-pregnancy women” support. Id. at 7:6-13. Girdle portion 4 is worn
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`“immediately below the chest line” and provides support for both the upper
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`abdomen and lower abdomen. Id. at cols. 7:15, 6:44-46. Summers teaches that
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`belly panel 4 may have a “uniform, tapered, or silhouette contour.” Id. at 3:64-67.
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`E. US Patent No. 4,506,390 to Stern
`Stern (Ex. 1017) was published no later than March 26, 1985 and is a
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`§102(b) prior art printed pubication to the ’531 Patent. Stern was cited in the ’531
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`Patent. Stern discloses an elastic, tapered waistband portion 11 that is sewn to
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`body portion 13, illustrated as a skirt, but may also be other types of maternity
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`garments, such as a pair of slacks. Stern, Ex. 1017 at 3: 26, 27; 3:60; 4: 22; 3: 27-
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`30. Waistband portion 11 is designed not to abrade or cut a wearer “at any stage of
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`pregnancy.” Id. at 4: 67, 68. As discussed below in greater detail, waistband
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`portion 11 has a residual hourglass shape.
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`F. US Patent Application Publication No. 2004/0049834 A1 to
`Stangle et al.
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`US Patent App. Pub. No. 2004/0049834 A1 (“Stangle”) (Ex. 1003) discloses
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`an expansible sleeve (e.g., tubular band) for coverage and support of a pregnant
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`women’s belly that may be incorporated into garments such as skirts, shorts, and
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`pants. Id. at FIGS. 8-10, [0038], and [0040]-[0042]. Stangle was published on
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`March 18, 2004, and is a §102(b) prior art to the ’563 Patent. An annotated copy
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`of FIG. 4 is reproduced below with arrows indicating features.
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`As shown in FIG. 4, the first and second ends 12, 14 of the sleeve (e.g.,
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`tubular band) 10 may be folded over to create waist 22 and hip 24 folds. Stangle at
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`FIGS. 3, 4, [0029], [0030], Ex. 1003. The folds 22, 24 can provide additional
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`support for the wearer, and may be attached to the inside of the sleeve (e.g., tubular
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`band) 10 by stitching or integral weaving. Id. at FIG. 4, [0030], [0031]. When
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`folded, the folds 22, 24 create a double-layer tubular structure. Id. at FIG. 4.
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`VI. CONSTRUCTION OF CERTAIN CLAIM TERMS
`A claim in inter partes review is given the “broadest reasonable construction
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`in light of the specification.” See 37 C.F.R § 42.100(b). For purposes of this
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`proceeding, claim terms are presumed to take their broadest reasonable ordinary
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`meaning. Regarding claim 1, the Board indicated that “breast area” connotes a
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`broader meaning than the word “breast” alone. See Ex. 1033 at p. 7. Regarding
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`“hyperboloid cylinder” of claim 18, the Board construed this term as “an
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`hourglass-shaped cylinder.” See Ex. 1033 at p. 8. Regarding shaped and “formed”
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`of claims 18 and 19, the Board indicated that the required form refers to the belly
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`panel’s “residual shape.” See Ex. 1033 at pp. 8, 9. In addition to these terms, the
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`Board also made observations regarding other claim terms.
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`VII. LEVEL OF ORDINARY SKILL IN THE ART
`A person of ordinary skill in the art (“POSA”) of the ’531 Patent would have
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`been any of the following: (a) a graduate of a two or four-year degree program
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`with an associate’s or bachelor’s degree in fashion design and at least one to two
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`years of full-time, technical design experience in the commercial garment industry;
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`or (b) an individual with at least four years of full-time, technical design
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`experience in the commercial garment industry. See Ex. 1011, Harder Dec. I at
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`¶15. The capabilities of a POSA are described in Ex. 1011, Harder Dec. I at ¶16.
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`VIII. THRESHOLD REQUIREMENT FOR INTER PARTES REVIEW
`A petition for inter partes review must demonstrate “a reasonable likelihood
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`that the Petitioner would prevail with respect to at least one of the claims
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`challenged in the petition.” 35 U.S.C. §314(a). This Petition meets that threshold.
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`All elements of claims 1, 2, 5, 6, 10, 11, 15-19, and 24-29 of the ’531 Patent are
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`taught in the prior art references as explained below, and reasons to combine the
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`features of these prior art references are established for each ground under §102
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`and §103.
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`IX. STATEMENT OF REASONS FOR RELIEF REQUESTED
`A. Ground 1: Claims 1, 2, 5, 10, 17, 19, 24, 25, 28, and 29 are
`Unpatentable as Being Anticipated by Asada
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`As required by claim 1 and as shown in FIGS. 2(c) of Asada, abdomen-
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`covering portion 2 is a garment upper portion having an expandable belly panel 2
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`to cover and fit over a growing abdomen during different stages of pregancy.
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`Unlike the JCP fold-over panel jeans, Asada illustrates the belly panel 2 in its
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`“residual shape,” when not worn by a woman/model (e.g. FIGS. 1(a) and 1(b).
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`Belly panel 2 covers the entire abdomen “over a long period of time from
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`during a pregancy to post-partum.” Asada Trans., Ex. 1035 at ¶[0016].
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`Pants portion 1 of Asada is a garment lower portion 1 having a first torso
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`encircling circumference that recedes downward to make way for expansion of
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`belly panel 2 as shown in FIG. 1(a).
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`Belly panel 2 has a second torso encircling circumference defining an upper
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`edge of belly panel 2 that encircles a wearer’s torso just beneath the wearer’s
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`breast area and configured to hold the garment up and in place about the torso in a
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`position of a location of maximum girth of the abdomen thereby substantially
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`covering the wearer’s entire pregnant abdomen during all stages of pregnancy. See
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`Ex. 1036, Harder Dec. II at ¶ 22. Belly panel 2 of Asada covers the “entire
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`abdomen” and “envelops” the abdomen. Asada Trans. at [0014