UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`TARGET CORPORATION
`
`Petitioner
`
`V.
`
`DESTINATION MATERNITY CORPORATION
`
`Patent Owner
`
`Case NO. IPR2013-00533
`
`Patent RE43,531
`
`Dated: December 4, 2013
`
`PATENT OWNER’S PRELIMINARY RESPONSE TO CORRECTED
`
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO.
`
`RE43,531
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`EAST\59997812.1O
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`DMC Exhibit 2114_001
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`

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`TABLE OF CONTENTS
`
`Page
`
`I.
`
`II.
`
`INTRODUCTION ........................................................................................ .. 1
`
`BACKGROUND OF THE INVENTION .................................................... ..3
`
`III.
`
`PETITIONER’S REFERENCES DO NOT ANTICIPATE THE ‘S31
`
`PATENT'S CLAIM l ................................................................................... ..5
`
`a.
`
`b.
`
`c.
`
`d.
`
`e.
`
`JCP-A does not disclose the garment upper portion having the
`features claimed .................................................................................. ..7
`
`Stangle does not disclose either a garment upper portion or a
`garment lower portion that recedes downward to make way for
`expansion of the belly panel ............................................................. ..l7
`
`Browder fails to disclose either a garment upper portion or a
`garment lower portion that recedes downward to make way for
`expansion of the belly panel ............................................................. ..23
`
`The dependent claims are neither anticipated nor obvious
`because none of the asserted prior art is anticipatory to claim 1 ..... ..26
`
`Petitioner's references do not disclose the limitations of the
`
`dependent claims .............................................................................. . .28
`
`IV.
`
`THE CORRECTED PETITION'S CLAIM CHARTS IMPROPERLY
`
`CIRCUMVENT THE PAGE LIMIT SET FORTH IN 37 C.F.R. §
`42 .24 ........................................................................................................... . .3 l
`
`V.
`
`THE REAL-WORLD VALUE OF THE INVENTION IS
`
`SUPPORTED BY STRONG SECONDARY CONSIDERATIONS OF
`
`NON-OBVIOUSNESS ............................................................................... ..33
`
`VI.
`
`IF THE CORRECTED PETITION IS GRANTED, THE VERTICAL
`AND HORIZONTAL REDUNDANCIES IN PRIOR ART AND
`
`INTER PARTES PETITIONS SHOULD BE ELIMINATED .................. .38
`
`VII. CONCLUSION ........................................................................................... ..40
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`EAST\66511213.1
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`_ 1 _
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`DMC Exhibit 2114_002
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`LIST OF EXHIBITS
`
`Exhibit 2001:
`
`October 19, 2007 blog post on The Mommy Playbook
`
`Exhibit 2002:
`
`July 31, 2008 blog post on Mamanista!
`
`Exhibit 2003:
`
`Color artifact of JC Penney Catalog 2005 found in USSN
`12/117,004 (US 7,900,276)
`
`Exhibit 2004
`
`December 4, 2011 Form 1449 from US RE43,531
`
`Exhibit 2005:
`
`Excerpts from the October 10, 2013 Deposition of Mindy Simon
`
`Exhibit 2006:
`
`Excerpts from the October 4, 2013 Deposition of Gregory
`Stangle
`
`Exhibit 2007:
`
`May 31, 2008 blog post on Everyday Becky
`
`Exhibit 2008:
`
`July 15, 2008 Review: Secret Fit Belly Jeans from Motherhood
`Maternity
`
`Exhibit 2009:
`
`January 30, 2008 blog post on Pinching Your Pennies Forums
`
`Exhibit 2010:
`
`October 28, 2008 blog post on The Shy Girl’s Guide to
`Pregnancy and Parenting
`
`Exhibit 201 1:
`
`October 3, 2008 blog post on Mamapedia
`
`Exhibit 2012:
`
`January 2008 blog post on The Bump
`
`Exhibit 2013:
`
`October 15 , 2008 blog post on Pregnant Fashionista
`
`Exhibit 2014:
`
`August 2008 blog post on Libby's Latest
`
`Exhibit 2015:
`
`January 6, 2009 blog post on Keeping the Kingdom First
`
`Exhibit 2016:
`
`May 21, 2009 blog post on Pregnant Fashionista
`
`EAST\66511213.1
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`DMC Exhibit 2114_003
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`

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`I.
`
`INTRODUCTION
`
`Pursuant
`
`to 37 C.F.R.
`
`§ 42.107, patent owner, Destination Maternity
`
`Corporation (“Patent Owner”), hereby submits the following Preliminary Response
`
`to Target Corporation's (“Petitioner”) Corrected Petition for Inter Partes Review of
`
`U.S. Patent No. RE43,5 31 (the “‘531 Patent”). This filing is timely u11der 35 U.S.C.
`
`313 and 37 C.F.R. 42.107, as it is being filed within three months of the September
`
`5, 2013 mailing date of the Notice granting the Corrected Petition a filing date of
`
`August 27, 2013. See PTAB Sept. 5, 2013 Not. at 1. A trial should not be instituted
`
`in this matter as none of the references relied upon by Petitioner in its Corrected
`
`Petition gives rise to a reasonable likelihood of Petitioner prevailing with respect to
`
`a challenged claim of the '53] Patent.
`
`Petitioner has simultaneously filed three additional petitions for Inter Partes
`
`Review, two for each of the patents-in-suit (the '5 3 1 Patent and Patent No. RE43,5 63
`
`(the “'563 Patent”))1 that are being asserted against Petitioner in a litigation pending
`
`1 The Petition for Inter Partes Review No. 2013-00532 requested review of claims
`
`1, 2, 5, 6, 10, 11, 15-17 ofthe '531 Patent. The Petition for Inter Partes Review No.
`
`2013-00530 requested review of claims 1-4 and 6-8 of the '563 Patent. The Petition
`
`for Inter Partes Review No. 2013-00531 requested review of claims 1, 10-14, 16,
`
`20, and 21 ofthe '563 Patent.
`
`EAST\66511213.1
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`DMC Exhibit 2114_004
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`

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`in the United States District Court for the Eastern District of Pennsylvania.
`
`In the
`
`litigation, Patent Owner alleges that maternity clothing sold by Petitioner infringes
`
`the patents-in-suit. Petitioner’s infringing maternity clothing products compete with
`
`Patent Owner’s patented Secret Fit Belly® line of maternity bottoms. An exemplary
`
`image of Patent Owner's Secret Fit Belly® line of maternity bottoms is provided
`
`below:
`
`Petitioner's petitions, including the one at issue, all seek to cancel claim 1 of
`
`Patent Owner's patents-in-suit as anticipated, and each relies on the same three
`
`references: (1) images of a maternity garment from a J .C. Penney catalog that was
`
`EAST\66511213.1
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`_ Z _
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`DMC Exhibit 2114_0O5
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`

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`already considered by the PTO during prosecution of both patents-in-suit; (2) an
`
`abandoned patent application for a piece of fabric that can be used to cover an open
`
`zipper when a pregnant woman's regular bottoms no longer fit when fastened; and
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`(3) a patent for a constricting girdle, not an expansible maternity garment. Petitioner
`
`adds additional references to argue that the '53l Patent's dependent claims are
`
`obvious. None of these references make the claimed invention anticipated or
`
`obvious:
`
`they do not disclose or suggest
`
`the unique above-the-abdomen and
`
`below-the-breast elements that Patent Owner invented.
`
`Moreover, Petitioner's arguments include three serious threshold issues. First,
`
`Petitioner asserts that the JC Penney reference was sent to the PTO by Patent Owner
`
`as low-quality black and white images. This statement is wrong. Patent Owner
`
`provided high quality color images to the PTO of this reference, as shown by the
`
`PTO’s own records. Second, Petitioner "modified" images to make its arguments,
`
`but these modified images are not evidence, and should be disregarded. Petitioner's
`
`reliance on its "modified" images reflects the weakness of its case. Third, to skirt the
`
`60-page limitation, Petitioner used claim charts in direct contravention of the rules,
`
`even after this Board identified a defect in Petitioner's charting in its original
`
`petitions. Most of Petitioner’s arguments are recited in single-spaced claim charts.
`
`II.
`
`BACKGROUND OF THE INVENTION
`
`The '53l Patent, entitled "Belly Covering Garment,” concerns a garment worn
`
`EAST\66511213.1
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`-3-
`
`DMC Exhibit 2114_006
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`

`
`during different stages of pregnancy and different stages of postpartum body
`
`changes.
`
`‘S31 Patent, col.l 1.34-44, 64-67 (Corrected Petition Ex. No. 1018). As
`
`discussed in the patent, this new garment is a comfortable, non-constricting garment
`
`that adapts to cover and fit a growing abdomen during pregnancy, and actually stays
`
`up when worn — from the first trimester through pregnancy and post-pregnancy,
`
`post-partum body changes. E. g., id
`
`Maternity garments prior to the claimed invention had thin elastic waist bands
`
`at the upper edge, which caused discomfort when tightened around the body,
`
`particularly as a pregnant woman's sensitive abdominal region expanded during
`
`pregnancy. Id. l.l8—2l. Others had panels sewn into place with seams, which also
`
`caused discomfort to the sensitive abdominal region due to the panels pressing
`
`against the torso. Id. 1.21-24. Of utmost importance, women have complained that
`
`the maternity garments that existed prior to the claimed invention were difficult to
`
`keep in place, and gradually slipped downward while being worn, causing a
`
`pregnant woman to constantly pull her bottoms up throughout the day.
`
`Id. 1.25-27.
`
`As such, the inventors of the ‘S31 Patent recognized that a need existed for a
`
`maternity garment that covered and fit a growing abdomen of different body types
`
`during all stages of pregnancy, which fit comfortably.
`
`Id. 134-38.
`
`The inventor’s success in filling the aforementioned needs, among others, was
`
`evidenced in the popularity of Patent Owner’s Secret Fit Belly® line of maternity
`
`EAST\66511213.1
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`-4-
`
`DMC Exhibit 2114_007
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`

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`bottoms.
`
`Patent Owner’s Secret Fit Belly® line of maternity bottoms achieved
`
`tremendous commercial success, which has led to the development of hundreds of
`
`different Secret Fit Belly® styles currently available online, in Patent Owner’s
`
`stores, and in third party department stores. Shortly after the introduction of Patent
`
`Owner’s Secret Fit Belly® styles, a customer commented that the products were
`
`"[r]eally hard to find though because they are selling out of them so fast." Ex. 2001.
`
`The customer also stated: "All my other maternity pants I'm always tugging up on to
`
`keep them up no matter how far along in the pregnancy I am. These pants I don't
`
`l1ave to touch once I put o11. Its such a nice change." Id. Another customer stated:
`
`"Secret Fit Jeans put full panel maternity jeans to shame.
`
`If you are tired of
`
`mid-belly panels that cut into your stomach, fall down, and create awkward ‘panel
`
`lines,‘ you'll love the new secret fit panel that comes all the way above your belly to
`
`just below your chest." EX. 2002. This commercial success and product buzz
`
`caused many in the industry, including Petitioner, to copy the Secret Fit Belly®
`
`styles, thereby prompting the aforementioned lawsuit between Patent Owner and
`
`Petitioner.
`
`III.
`
`PETITIONER'S REFERENCES DO NOT ANTICIPATE THE
`
`‘531 PATENT'S CLAIM 1
`
`To anticipate a claim under § 102, "a single prior art reference [must] ‘not only
`
`disclose all of the elements of the claim within the four corners of the document, but
`
`EAST\66511213.1
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`DMC Exhibit 2114_008
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`

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`also disclose those elements arranged as in the claim.'” Cheese Sys., Inc. v. Tetra
`
`Pak Cheese andP0wder Sys., Inc, 725 F3d 1341, 1351 (Fed. Cir. 2013). If even one
`
`element is missing, there is no anticipation.
`
`l\/fl3EP § 2131.
`
`Claim 1 of the ‘53l Patent recites:
`
`A garment, comprising:
`
`a garment upper portion having a belly panel that is expansible to
`cover and fit over a growing abdomen during different stages of
`
`pregnancy;
`
`torso encircling
`lower portion having a first
`a garment
`circumference that
`recedes downward to make way for
`expansion of the belly panel; and
`
`the garment upper portion having a second torso encircling
`circumference defining an upper edge of the belly panel that
`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 stages of pregnancy.
`
`Petitioner attacks this claim solely based on anticipation under 35 U.S.C. §
`
`102. Petitioner relies on three references: (1) J .C. Penney ontrend Maternity Catalog
`
`at Page 15 (“JCP-A”), Corrected Pet. Ex. No. 1002 at 2; (2) U.S. Patent App. Pub.
`
`No. US 2004/0049834 A1 to Stangle et al. (“Stangle”), Corrected Pet. Ex. No. 1003,
`
`and (3) U.S. Patent No. 6,276,175 to Browder (“Browder”) Corrected Pet. Ex. No.
`
`1004. Yet none of JCP-A, Stangle, or Browder disclose the claimed elements of a
`
`garment upper portion reaching over the belly to just below the breast area as
`
`EAST\66511213.1
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`DMC Exhibit 2114_009
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`

`
`required for an anticipatory § 102 reference. And neither Stangle nor Browder
`
`disclose a garment lower portion that recedes downward to make way for expansion
`
`of the belly panel.
`
`Indeed, Petitioner's JCP-A reference was submitted by Patent
`
`Owner to the United States Patent and Trademark Office (“PTO”) in high quality
`
`color (contrary to Petitioner’s assertions), considered by the Examiner, and was not
`
`even deemed relevant enough to warrant an Office Action. Ex. 2003; Ex. 2004. As
`
`further detailed below, none of Petitioner's asserted references anticipate claim 1
`
`under §l02 .2
`
`a.
`
`JCP-A does not disclose the garment upper portion having the
`features claimed
`
`JCP-A is not an anticipatory reference simply because someone at JC Penney
`
`labeled a picture as “over-the-belly coverage.” The picture above the JCP-A
`
`“over-the-belly coverage” description does not show an upper edge of the belly
`
`panel that encircles a wearer's torso just beneath the wearer's breast area: the JCP—A
`
`picture does not show either the model's breast area or the top of the belly. And the
`
`JCP-A picture does not show the extent of belly coverage during different stages of
`
`pregnancy. Accordingly, what JC Penney called “over-the-belly coverage” does not
`
`The Corrected Petition’s grounds for u11pate11tability of the dependent claims
`
`hinge on either JCP—A, Stangle, or Browder anticipating claim 1. Because none of
`
`JCP-A, Stangle, or Browder anticipates claim 1, these grounds also fail.
`
`EAST\66511213.1
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`-7-
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`DMC Exhibit 2114_010
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`

`
`meet the ‘S31 Patent claims’ requirement that the "upper portion
`
`encircles a
`
`wearer's torso just beneath the wearer's breast area ."
`
`To the contrary, in the photographs from JCP-A, the pregnant belly continues
`
`upward outside the picture frame to an unknown point, and the top of the garment
`
`curves downward substantially (perhaps even falling down), thereby providing
`
`incomplete coverage even to the portion of the belly region shown in these
`
`photographs. Thus, JCP-A does not disclose either an upper edge extending to "just
`
`beneath the wearer's breast area," or a "garment upper portion
`
`substantially
`
`covering the wearer’s entire pregnant abdomen ...," as required by the claims:
`
`
`
`Consistent with these conclusions, JC Penny's corporate witness testified that
`
`JCP-A’s “over-the-belly” design rested on the belly, rather than at a point encircling
`
`a wearer's torso just beneath the wearer's breast area thereby substantially covering
`
`the wearer's entire pregnant abdomen:
`
`EAST\66511213.1
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`DMC Exhibit 2114_011
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`
`
`Q. I'm sorry, the one that's Number 1 [of JCP-A] over the belly coverage
`
`there.
`
`A. Okay.
`
`Q. The top edge of the band.
`
`A. Yes.
`
`Q. Is -- does it go straight across the belly?
`
`A. Straight across?
`
`Q. Yes.
`
`A. It —— it kind of curves along the belly.
`
`Q. I'm not going to test you on what kind of a curve that is --
`
`A. Thank you.
`
`Q. -- but can you explain why it curves?
`
`A. Because the belly is curved, so when it sits on the belly, it curves to the
`
`shape of the belly.
`
`Q. When you say, "Sits on the belly," how does it sit on the belly?
`
`A. Well, your belly -- I mean (indicating) it sits on your belly. This is your
`
`belly and it's -- it comes -- in picture 1, it comes over the belly, so it rests on the top
`
`of your belly.
`
`Simon Dep. 187:1-21 (emphasis added) (Ex. 2005).
`
`EAST\66511213.1
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`-9-
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`DMC Exhibit 2114_012
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`JCP-A’s incomplete coverage is even more evident when compared to the
`
`exemplary image of Patent Owner's Secret Fit Belly® line of maternity bottoms:
`
`
`
`JCP-A
`
`Secret Fit Belly®
`
`The absence of the breast area in the JCP-A picture is also apparent. JCP-A
`
`cannot anticipate claim 1 without explicitly showing either the breast area, an upper
`
`edge of the belly panel that encircles a wearer's torso just beneath the wearer's breast
`
`area or substantial coverage of the wearer's entire pregnant abdomen.
`
`Petitioner contends that JCP—A anticipates the claim’s substantially covering
`
`the wearer’s entire pregnant abdomen during all stages of pregnancy limitation
`
`because “[t]he upper edge of the belly panel in JCP-A is above the belly, i.e. at the
`
`EAST\66511213.1
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`_ 1U _
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`DMC Exhibit 2114_013
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`

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`wearer’s upper torso, because the belly panel provides ‘over-the-belly coverage.’
`
`and holds the garment
`
`in place ‘before, during and after your pregnancy.’”
`
`Corrected Pet. at 33. Yet Petitioner ignores that in the JCP-A picture, the garment
`
`does not have an upper edge en circling the wearer’s torso just beneath the breast area
`
`which is configured to hold the garment up and in place about the torso during a_ll
`
`stages of pregnancy. Corrected Pet. at 32-33.
`
`In the JCP-A images reproduced
`
`below, the already incomplete belly coverage discussed above is shown on a model
`
`who appears to be at nearly the same stage of pregnancy in all three images, with no
`
`disclosure relating to holding the garment "up and in place about the torso during all
`
`stages of pregnancy":
`
`
`
`In addition,
`
`in portions of the JCP-A product description omitted by
`
`Petitioner, JCP—A describes the above images and states that it is the “fold—over
`
`EAST\66511213.1
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`-11-
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`DMC Exhibit 2114_014
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`panel design that allows you to wear them before, during and after your pregnancy
`
`(see inset photos)” and that JCP-A “can be worn 3 ways depending on your stage of
`
`pregnancy.” In other words, JCP-A confirms that its “fold-over” feature is essential
`
`for holding the garment up and in place during certain stages of pregnancy. As
`
`illustrated above, when the garment is in the “fold-over” configuration (i.e., images
`
`2. and 3.), which, by JCP-A's own statements,
`
`is required at certain stages of
`
`pregnancy, even less of the pregnant abdomen is covered. As such, JCP-A fails to
`
`disclose an upper edge encircling the wearer’s torso just beneath the breast area
`
`configured to hold the garment up a11d i11 place about the torso duri11g a_ll stages of
`
`pregnancy.
`
`The above analysis is again confirmed by JC Penney’s deposition testimony
`
`regarding maternity design generally and the design shown in the JCP-A reference,
`
`which shows that different styles and locations are used for different stages of
`
`pregnancy, rather than one design covering the wearer's entire pregnant abdomen
`
`during all stages of pregnancy. For example:
`
`Q. Was there anything particular or special to maternity that other --
`
`A. Yes.
`
`Q. -- design projects didn't have?
`
`A. Yes.
`
`EAST\66511213.1
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`-12-
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`DMC Exhibit 2114_015
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`Q. Like what?
`
`A. The fit is much more complicated.
`
`Q. What do you mean?
`
`A. How it fits the body, because you have this belly that is changing every
`
`single day, and you want this pant to fit numerous women of all different sizes of all
`
`different stages of pregnancy. So it's really hard to get a good-fitting maternity pant.
`
`Q. How do you address that issue in designing maternity pants?
`
`A. That's why there's multiple styles to address different fits for different
`
`W011] 611.
`
`Simon Dep. 39:20-40:ll
`
`2005).
`
`Q. What about the normal -- whatever -- whatever you designed [JCP-A] on,
`
`the normal customer, how would it -- would it change how they wore it depending
`
`on what stage of pregnancy they were in?
`
`A. It could.
`
`Q. How could it change?
`
`A. Personal preference. Some people don't like anything over their belly, so
`
`regardless of how big they were, they might still want it under their belly. Some
`
`people that are used to -- the younger customer that's used to low-rise jeans might
`
`love it u11der the belly a11d might never raise it over her belly. It's -- it's really a
`
`EAST\66511213.1
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`-13-
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`DMC Exhibit 2114_016
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`personal preference on where she wants to put it.
`
`101. l76:25 -177:6-l2.
`
`Q. Okay. We're going to go to the figure Number I from [JCP-A]. So pulled
`
`all the way up, could someone who was not pregnant wear the pants that way?
`
`A. They could. I don't know why they would, but they could.
`
`Q. All right. Would the pants -- do you think the pants would stay up if they
`
`did that?
`
`A. It depends l1ow skinny she is.
`
`Id. l86:l3—20.
`
`By requiring the “fold-over” feature to hold the garment up and in place at
`
`earlier stages of pregnancy, the JCP-A garment necessarily exposes more of the
`
`wearer’s abdomen during those stages. Thus, JCP-A does not disclose claim l's new
`
`garment that substantially covers the entire abdomen during all stages of pregnancy.
`
`Further, even when the JCP-A garment is worn with its fold-over panel
`
`in an
`
`unfolded position (Le, image 1. above), the top of the fold-over panel curves
`
`downward substantially, further confirming that the JCP-A garment does not include
`
`an upper edge that encircles a wearer’s torso just beneath the breast area.
`
`Petitioner also contends that Patent Owner failed to submit JCP-A to the PTO
`
`in color. Corrected Pet. at 15-17. To the contrary, the PTO considered JCP-A i11
`
`EAST\66511213.1
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`-14-
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`DMC Exhibit 2114_017
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`

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`high resolution color, in direct contrast to Petitioner’s argument that “the scanned
`
`excerpt appears to have been of Very low quality .
`
`.
`
`. image does not provide a clear
`
`illustration of the boundaries of the disclosed belly panel in the three figures, and the
`
`text describing the functionality of the fold over panel
`
`in the three figures is
`
`illegible.”
`
`Id. at l5-l6. Patent Owner’s submission of JCP-A to the PTO is
`
`reproduced below and taken directly from the PTO’s records.3 Ex. 2003, Ex. 2004.
`
`.. Ink! twice -at IniwrIr5nAV.,"
`camlhrt and support ,
`
`3 JCP-A was submitted i11 color i11 all prosecutions and the same PTO examiner
`
`reviewed all patents. Patent Owner obtained a color artifact from the PTO from the
`
`file history for U.S. 7,900,276 (reissued as the ‘S63 Patent).
`
`EAST\66511213.1
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`-15-
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`DMC Exhibit 2114_018
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`

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`JCP—A was sent to the PTO in % quality and clearly shows all details of
`
`J CP-A, including the boundaries of the disclosed belly panel and the text as to the
`
`functionality of the fold over panel.
`
`The PTO thus fully considered JCP-A, and decided that JCP-A was not
`
`relevant to the claims of the ‘531 Patent. Ex. 2003; Ex. 2004; Corrected Pet. Ex. No.
`
`1021.
`
`Indeed, JCP-A was so inconsequential that the Examiner did not issue an
`
`office action citing JCP-A. See Petitioner Exhibits 1020-21. Significantly, tl1ePTO
`
`reached the same exact conclusion in Patent Owner’s ‘5 63 Patent, where JCP—A was
`
`again submitted to the PTO in high resolution color, considered by the Examiner,
`
`and no rejections were raised there either. Id. 1007. The PTO’s decision on JCP-A,
`
`which was rendered by a seasoned examiner of apparel patent applications, should
`
`be afforded substantial weight in determining whether to institute an Inter Partes
`
`Review, especially in View of the fact that JCP-A was considered twice by the PTO,
`
`and was in high resolution color each time. See 35 U.S.C. § 325(d) (“In determining
`
`whether to institute or order a proceeding under .
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`.
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`. chapter 31 [Inter Partes Review]
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`.
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`.
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`. the Director may take into account whether, and reject the petition or request
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`because, the same or substantially the same prior art or arguments previously were
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`presented to the Office”); see also Andersen Corp. V. Pella Corp, 300 Fed. App'x
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`893, 899 (Fed. Cir. 2008) ("When no prior art other than that which was considered
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`by the PTO examiner is relied on by the attacker, he has the added burden of
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`EAST\66511213.1
`
`_ 16 _
`
`DMC Exhibit 2114_019
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`

`
`overcoming the deference that is due to a qualified government agency presumed to
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`have properly done its job, which includes one or more examiners who are assumed
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`to have some expertise in interpreting the references and to be familiar from their
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`work with the level of skill in the art and whose duty it is to issue only Valid patents")
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`(citations omitted); Rohr v. McNuZty et al., 2003 WL 1386643, at *2-3 (Bd. Pat.
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`App. & Interf. Mar. 6, 2003) (deferring to the experience of examiners when
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`denying a request to add claims to a11 interference.)
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`In sum, JCP-A does not anticipate claim 1 of the ‘S31 Patent, Petitioner’s
`
`asserted arguments fail, and a trial should not be instituted on these grounds.
`
`b. Stangle does not disclose either a garment upper portion or a
`garment lower portion that recedes downward to make way for
`expansion of the belly panel
`
`There are two key elements that Stangle does not disclose: (l) "a garment
`
`upper portion
`
`that is expansible to cover and fit over a growing abdomen during
`
`different states of pregnancy ...", and (2), "a garment lower portion
`
`that recedes
`
`downward to make way for expansion of the belly panel." Instead, Stangle discloses
`
`a tube of fabric that is used to cover an unzipped pair of non-maternity pants. E. g. ,
`
`Stangle, Fig. 9, 1] [0040] (Corrected Pet. Ex. No. l003).
`
`First, Stangle does not disclose a garment upper portion that is expansible to
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`cover and fit over a growing abdomen during different states of pregnancy. The one
`
`Stangle embodiment that is attached to clothing, shown in Stangle Figures 7-10,
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`EAST\66511213.1
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`.17.
`
`DMC Exhibit 2114_020
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`

`
`folds from the waist area downward toward the crotch to operate as a covering for
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`unfastened conventional pants and provide support so the pants do not fall down. Id.
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`Figs. 7-10, 111] [0037] — [0042]. As such, Stangle is worn very low on the body, and
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`goes no higher on the wearer than the top of a lower-body garment (e.g., pant waist
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`line), which is ordinarily worn around the waist area.
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`Stangle Figures 8 and 9 illustrate the function of the attached moveable
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`sleeve. Figure 8, an inside-out view of clothing, shows the sleeve not in use and
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`“folded over inside the clothing 32 when not deployed by the wearer .
`
`.
`
`.
`
`Stangle,
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`1] [OO40]. Figure 9 shows the sleeve in use wl1e11, “as the wearer finds necessary for
`
`fastening undersize clothing or providing additional coverage or support, the wearer
`
`would instantly deploy the movable sleeve 40 by simply folding it out and over the
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`outside surface 36 of the clothing 32 to achieve its function .
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`.
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`.
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`Id.
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`
`
`@132.
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`In its Corrected Petition, Petitioner “modified” Stangle Figure 8 by sketching
`
`EAST\66511213.1
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`-13-
`
`DMC Exhibit 2114_021
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`

`
`new features into Figure 8. Corrected Pet. at 25, 43-47.
`
`MddifiI3c| ',FiEura_'3_-i
`__E1_6_F‘_ .
`-__'/'44 Mmraable End “
`
`40 Mgiveahie Sleeve
`
`Muueahlefinhl
`
`I
`
`N
`3 Inside Surface 1
`lk
`:ar.a21_ /1
`
`.
`
`Elcthlng ‘I-wt‘
`
`'
`
`FICTI 8
`
`
`
`31/11,
`
`clmhang I
`
`'
`
`'
`
`
`
`E I,-.
`
`: Arrued End
`
`4
`
`Mnvaahlg 51
`
`+4. Mjmreable End:
`
`3 Inside Suffac
`Inf 32}
`
`Petitioner’s
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`“modified”
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`figure—created with
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`knowledge
`
`of
`
`the
`
`invention—cannot be used to add to what Stangle disclosed.
`
`Petitioner’s
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`“modified” Figure 8 is misleading and not evidence, and should be disregarded.
`
`Moreover, Petitioner imported dimensions to a patent figure that was not drawn to
`
`scale, which cannot be used to challenge validity. See, e. g., Nystrom v. TREX C0,,
`
`Inc, 424 F.3d 1136, 1149 (Fed. Cir. 2005) (“arguments based on drawings not
`
`explicitly made to scale in issued patents are unavailing”).
`
`When attached to clothing,
`
`the Stangle sleeve is folded on top of, and
`
`downward over, the waist area of unfastened pants to cover the crotch area of the
`
`unfastened pants. Stangle, Figs. 7-10, 1111 [0037] — [OO42]. Stangle does not work
`
`with its sleeve folded up, because the wearer would be forced to expose an
`
`EAST\66511213.1
`
`-19-
`
`DMC Exhibit 2114_022
`
`

`
`
`
`unfastened crotch as shown in Stangle Figure 5:
`
`The above analysis is buttressed by Gregory Stangle’s own deposition
`
`testimony:
`
`Q. I want to go back to your patent application. I think it's Exhibit 4. You
`
`testified earlier that figures 7 to 10 are the figures where the -- we have it attached to
`
`the pants; is that correct?
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`A. Yes.
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`Q. Okay. And the description of those, I believe, starts around paragraph 37.
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`Take some time to review paragraph 37 to 46. (Witness viewing document.)
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`BY THE WITNESS:
`
`A. Okay.
`
`Q. In what you reviewed, do any of the paragraphs discuss wearing these --
`
`the attached sleeve up over the belly, upwards from the waist?
`
`EAST\66511213.1
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`-20-
`
`DMC Exhibit 2114_023
`
`

`
`A. No.
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`Q. Does anywhere in your patent application disclose that way of wearing the
`
`pants, the attachments?
`
`A. No.
`
`Stangle Dep. 173121-174 (EX. 2006).
`
`Significantly, even if a user pulled the Stangle sleeve upwa:rds—thus
`
`exposing the crotch—the top of the moveable sleeve would @ reach just beneath
`
`the wearer’s breast area. As illustrated in unmodified Stangle Figure 8, the sleeve
`
`extends only from the waist to the crotch:
`
`
`
`If the Stangle sleeve were made long enough to reach to just below the breast
`
`area, it would bunch up at the inseam in Figure 8. Stangle’s attached sleeve is meant
`
`to be “built into clothing 32 without impacting normal use.” Stangle, [0O25],
`
`[OO40]. Bunched-up material inside the pants at the crotch would impact Stangle's
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`EAST\66511213.1
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`-21-
`
`DMC Exhibit 2114_024
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`

`
`normal use, not only by being uncomfortable, but by impeding the fit and closure of
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`the garment.
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`Second, Stangle does not disclose a garment lower portion that recedes
`
`downward. Stan gle’s Figure 7 shows that there is no area that recedes downward to
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`make way for expansion of the belly panel. Instead, Stangle's tube is attached and
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`worn with conventional pants.
`
`In conventional pants, the waist band extends
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`straight across. And when Stangle's tube is deployed on conventional pants, it too
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`extends straight across to cover an open zipper and hold the pants up. E. g., Stangle,
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`Fig. 7, -M [0038] — [0o39];
`
`
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`Stangle’s attached sleeve is meant to be “built into clothing 32 without
`
`impacting normal use.” Stangle, [0O25], [OO40]. This allows a wearer to don the
`
`clothing in a normal fashion and only deploy the sleeve when necessary due to, for
`
`EAST\66511213.1
`
`-22-
`
`DMC Exhibit 2114_025
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`

`
`example, the clothing no longer fastening.
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`Id. at [O040]. Accordingly, aside from
`
`not being disclosed, the fabric tube of Stangle to be used with traditional clothing
`
`would not include a first torso encircling circumference that recedes downward to
`
`make way for expansion of the belly panel. Moreover, even aside from the fact that
`
`Stangle fails to disclose a downward recession, there is no reason why Stangle
`
`would need a downward recession in its waist band, as it would serve no purpose:
`
`Stangle’s sleeve is folded over unfastened pants. Accordingly, Stangle does not
`
`disclose a garment lower portion that recedes downward as shown in Figure 7.
`
`I11 sum, Sta11g1e does 11ot anticipate claim 1 of the ‘S31 Pate11t.
`
`c. Browder fails to disclose either a garment upper portion or a
`garment lower portion that recedes downward to make way for
`expansion of the belly panel
`
`Browder is a girdle. The Browder embodiments Petitioner points to are not
`
`maternity garments. It is also missing two key elements: (1) an "upper portion that is
`
`expansible to cover and fit over a growing abdomen", and (2) a "lower portion
`
`that recedes downward .”
`
`First, Browder fails to disclose a garment upper portion that is expansible to
`
`cover and fit over a growing abdomen. The Browder girdle requires “at least one
`
`area of control that has a stitch pattern increasing its modulus by about 8%, to
`
`provide a balance of comfort and control.” Browder, Abstract (Corrected Pet. Ex.
`
`No. 1004). The control area is a portion of the girdle that is manufactured by
`
`EAST\66511213.1
`
`-23-
`
`DMC Exhibit 2114_026
`
`

`
`“tightening the fabric .
`
`.
`
`. by using a l by l (l >< l) alternating tuck stitch pattern.” Id.
`
`col.3, 1.37-38. The tightened fabric pattern “increases the modulus of the fabric
`
`[such that] the fabric stretches less and controls more.” Id. 1.39-41. Accordingly,
`
`the control area of Browder is specifically designed to , rather than expand,
`
`like the garment upper portion of claim 1. It would be quite unpleasant to wear for a
`
`pregnant woman, if not harmful to the baby.
`
`Like all girdles,
`
`the "control area" 35 of Browder tightens, rather than
`
`expands. See Browder, col. 3, 1.53-57 (“FIGS 3 and 4 illustrate .
`
`.
`
`. control area 35
`
`extended over the abdomen a11d ends below the wearer’s breasts”).
`
`'-\_
`
`I,"
`
`B‘
`
`High wars: Bria
`
` \..v’. ‘
`a
`253:5
`'
`
`"/R HI.-.arPortion
`
`.
`1
`' g
`.
`
`36
`
`I
`
`I-‘rurrtFurl:iqn 1.
`
`
`
`
`)_
`
`ii
`
`FIG. 3
`
`FIG. 4
`
`Browder’s control area 35 prevents expansion in the waist, rather than
`
`promotes it. As such, Figures 3 and 4 do not disclose an expansible belly panel that
`
`EAST\66511213.1
`
`-24-
`
`DMC Exhibit 2114_027
`
`

`
`either covers and fits over a growing abdo