`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`TARGET CORPORATION
`
`Petitioner
`
`V.
`
`DESTINATION MATERNITY CORPORATION
`
`Patent Owner
`
`Patent No. RE43,5 63
`Filing Date: June 15, 2011
`1ss11e Date: August 7, 2012
`Title: BELLY COVERING GARMENT
`
`Inter Partes Review No. IPR2014-00508
`
`Filing Date: March 14, 2014
`
`CORRECTED PETITION FOR INTER PARTES REVIEW
`
`UNDER 35 U.S.C. §§ 311-319 AND 37 C.F.R. § 42.100 ETSEQ.
`
`US.53914403.01
`
`DMC Exhibit 2116_001
`
`
`
`Inter Partes Review No. IPR20 14-00508
`Corrected Petition For Inter Partes Review
`
`TABLE OF CONTENTS
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`F.
`
`Real Party In Interest ........................................................................... ..l
`
`Related Matters .................................................................................... ..l
`
`Lead and Back—Up Counsel ................................................................. ..2
`
`Service Information ............................................................................. ..2
`
`Grounds for Standing .......................................................................... ..3
`
`Power of Attorney ............................................................................... ..3
`
`G.
`
`Fees ...................................................................................................... ..3
`
`II.
`
`Statement of the Precise Relief Requested .................................................... ..3
`
`III. Overview of the ’563 Patent .......................................................................... ..4
`
`A.
`
`The Disclosed Invention in the ’563 Patent ........................................ ..4
`
`B.
`
`Prosecution History of the ‘S63 Patent ............................................... ..7
`
`IV. OVERVIEW OF BOARD DECISIONS RELATING TO THE ’563
`
`Patent ............................................................................................................. ..8
`
`V.
`
`Overview of the Prior Art Relied Upon for the Challenge ............................ ..9
`
`A.
`
`Asada ................................................................................................... ..9
`
`B.
`
`C.
`
`D.
`
`E.
`
`J. C. Penney 0ntrendMaterntty Catalog, Fall/Winter 2005 .............. .. 10
`
`“expecting style ” by Lauren Sara ...................................................... .. 14
`
`US Patent No. 8,185,970 to Summers ............................................... ..l5
`
`US Patent No. 4,506,390 to Stern ..................................................... ..l6
`
`VI.
`
`Construction of Certain Claim Terms ......................................................... ..l6
`
`VII. Level of Ordinary Skill in the Art ............................................................... .. 17
`
`VIII. Threshold Requirement for Inter Partes Review ........................................ .. l7
`
`Us.53914403.01
`
`DMC Exhibit 2116_002
`
`
`
`Inter Partes Review No. IPR2014-00508
`Corrected Petition For Inter Partes Review
`
`IX.
`
`Statement of Reasons for Relief Requested ................................................ ..18
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`F.
`
`G.
`
`H.
`
`Ground 1: Claims 1, 2, 6-8, 10, 11, 16, and 21 are Unpatentable
`as Being Anticipated by Asada ......................................................... .. 18
`
`Ground 2: Claims 12 and 13 are Unpatentable as Being
`Obvious Over Asada in View of “expecting style ” by Lauren
`Sara .................................................................................................... ..23
`
`Ground 3: Claims 3, 4, and 14 are Unpatentable as Being
`Obvious Over Asada in View of the J.C. Penney ontrena’
`Maternity Catalog at Page 19 ............................................................ ..26
`
`Ground 4: Claim 20 is Unpatentable as Being Obvious Over
`Asada in View of US Patent No. 8,185,970 to Summers ................. ..30
`
`Ground 5: Claim 20 is Unpatentable as Being Obvious Over
`Asada in View of US Patent No. 4,506,390 to Stern ........................ ..36
`
`Ground 6: Claim 1 is Unpatentable as Being Anticipated by
`J. C. Penney ontrena’ Maternity Catalog at Page 15 .......................... .38
`
`Ground 7: Claim 21 is Unpatentable as Being Obvious Over
`JCP fold-over panel jeans in View of Asada .................................... ..4O
`
`Ground 8: Claim 20 is Unpatentable as Being Obvious Over
`JCP fold-over panel jeans in View of Summers ............................... ..42
`
`X.
`
`Secondary Considerations ........................................................................... ..44
`
`XI.
`
`Conclusion ................................................................................................... ..44
`
`US.53914403.01
`
`ii
`
`DMC Exhibit 2116_003
`
`
`
`Inter Partes Review No. IPR2014-00508
`Corrected Petition For Inter Partes Review
`
`LIST OF EXHIBITS
`
`Exhibit 1001 :
`
`Hendrickson et al. US Patent No. RE43,563 (“the ’563 Patent”)
`
`Exhibit 1002:
`
`JC. Penney ontrena’ Maternity Catalog, dated Fall/Winter
`2005, cover and pages 15 and 19 (“JCP”)
`
`Exhibit 1003:
`
`US Patent Application Publication No. 2004/0049834 A1 to
`Stangle, et al., published March 18, 2004 (“Stangle”)
`
`Exhibit 1004:
`
`US 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 (“Lauren
`Sara”)
`
`Exhibit 1006:
`
`Plaintiff s Infringement contentions in Destination Maternity
`Corp. V. Target Corp et al., 2: l2-cv-05680-AB (E.D. Pa.)
`
`Exhibit 1007:
`
`Certified File Wrapper of US Patent No. RE43,563
`
`Exhibit 1008:
`
`Certified File Wrapper of US Patent No. 7,900,276 (whose
`reissue application resulted in the ’563 Patent)
`
`Exhibit 1009:
`
`Hendrickson et al. US 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 101 l :
`
`Declaration of Frances Harder Executed Aug. 26, 2013
`
`Exhibit 1012:
`
`Curriculum Vitae of Frances Harder
`
`Exhibit 1013:
`
`Documents Considered by Frances Harder
`
`Exhibit 1014:
`
`Simplicity 4890 by Simplicity Pattern Co., Inc.
`
`US.539l4403.0l
`
`iii
`
`DMC Exhibit 2116_004
`
`
`
`Inter Partes Review No. IPR20 14-00508
`Corrected Petition For Inter Partes Review
`
`Exhibit 1015:
`
`McCall’s 2431 by The McCall Pattern Company
`
`Exhibit 1016:
`
`Plaintiff Destination Maternity Corporation’s Objections and
`Responses to Defendant’s First Set of lnterrogatories
`
`Exhibit 1017:
`
`US Patent No. 4,506,390 to Stern (“Stern”)
`
`Exhibit 1018:
`
`Hendrickson et al. US Patent No. RE43,53l (“the ’531 Patent”)
`
`Exhibit 1019:
`
`Hendrickson et al. US Patent No. 7,814,575 (“the ’575 Patent”)
`
`Exhibit 1020:
`
`Certified File Wrapper of US Patent No. 7,814,575 (whose
`reissue application resulted in the ’53l Patent)
`
`Exhibit 1021 :
`
`Certified File Wrapper of US Patent No. RE43,531
`
`Exhibit 1022:
`
`US Patent Application Publication No. 2004/0210987 to
`Carney
`
`Exhibit 1023:
`
`US Patent Application Publication No. 2006/0010571 to
`Oakley
`
`Exhibit 1024:
`
`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—0053l
`
`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
`
`US.539l4403.0l
`
`iv
`
`DMC Exhibit 2116_005
`
`
`
`Inter Partes Review No. IPR20 14-00508
`Corrected Petition For Inter Partes Review
`
`Exhibit 1032:
`
`Petition for Inter Partes Review for IPR2013-00533
`
`Exhibit 1033:
`
`PTAB Decision for IPR2013-00533 dated February 19, 2014
`
`Exhibit 1034:
`
`Japanese Utility Model Patent No. 3,086,624 to Asada
`
`Exhibit 103 5:
`
`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 103 8:
`
`Webster’s Encyclopedic Unabridged Dictionary of the English
`Language: Definition of Hourglass
`
`Exhibit 1039:
`
`The New Oxford Dictionary: Definition of Hourglass
`
`Exhibit 1040:
`
`Target’s First Set of Requests for Production to DMC (served
`Mar. 12, 2013)
`
`Exhibit 1041 :
`
`Target’s First Set of Interrogatories to DMC (served Mar. 12,
`2013)
`
`Exhibit 1042:
`
`Exhibit 1043:
`
`Exhibit 1044:
`
`Exhibit 1045:
`
`Pertinent Pages Excerpted from DMC’s Objections and Second
`Supplemental Responses to Target’s First Set of Interrogatories
`(served Oct. 14, 2013)
`
`Letter from Counsel for DMC, Dated October 1 1, 2013,
`Memorializing DMC’s Supplemental Production of Documents
`Bearing Bates Nos. DMC0l19316-DMC0l19453
`
`Letter from Counsel for DMC, Dated September 27, 2013,
`Memorializing DMC’s Supplemental Production of Documents
`Bearing Bates Nos. DMC0064438-DMC0l16976
`
`English Translation and Japanese-Language Version of a
`Preliminary Notice of Rejection, Dated June 26, 2012, in
`Japanese Patent Application No. 2010—510393, as Produced by
`
`US.53914403.01
`
`V
`
`DMC Exhibit 2116_006
`
`
`
`Inter Partes Review No. IPR20 14-00508
`Corrected Petition For Inter Partes Review
`
`DMC Bearing Bates Nos. DMC0116962-DMC0116968
`
`Exhibit 1046:
`
`Japanese Patent Application No. 2010-510393
`
`Exhibit 1047:
`
`International Publication No. WO 2008/ 1 5 0595
`
`Exhibit 1048:
`
`E-mail from Counsel for DMC, Dated March 7, 2014,
`Confirming that the Document Produced by DMC Bearing
`Bates Nos. DMC0116962—DMC0116968 Is Not Confidential
`
`Exhibit 1049:
`
`Declaration of Debbie Cairns in Support of Defendants’
`Uncontested Motion to Serve Defendants’ First Supplemental
`Invalidity Contentions, Dated October 14, 2013
`
`Exhibit 1050:
`
`E-mail from Park IP Translation Delivery, Dated October 2,
`2013, at 11:46 PM, Conveying a Certified English Translation
`of Japanese Registered Utility Model No. 3086624 (“Asada”)
`
`Exhibit 1051:
`
`Japanese-Language Version and Certified English Translation
`of a Decision of Rejection Dated December 25, 2013, in
`Japanese Patent Application No. 2010-510393
`
`Exhibit 1052:
`
`Changes to Implement Inter Partes Review Proceedings, Post-
`Grant Review Proceedings, and Transitional Program for
`Covered Business Method Patents, 77 Fed. Reg. 48679, 48680
`(Aug. 14, 2012)
`
`Exhibit 1053:
`
`Materials Considered for the Second Declaration of Frances
`
`Harder
`
`US.539l4403.0l
`
`DMC Exhibit 2116_007
`
`
`
`Inter Partes Review No. IPR2014-00508
`Corrected 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 mterpartes review of claims 1-4, 6-8, 10-14,
`
`16, 20, and 21 ofUS Patent No. RE43,563 (“the ’563 Patent,” Ex. 1001).
`
`A.
`
`Real Party In Interest
`
`Target Corporation is the real party-in-interest for this petition.
`
`B.
`
`Related Matters
`
`The ’563 Patent is the subject of a patent infringement lawsuit
`
`brought by Destination 1\/[atemity Corp. (“D1\/IC” 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. IPR20l3-
`
`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);
`
`US.53914403.0l
`
`DMC Exhibit 2116_008
`
`
`
`Inter Partes Review No. IPR2014-00508
`Corrected 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. IPR20l4-00509, Patent RE43,531 filed March 14, 2014.
`
`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.
`
`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.
`
`US.53914403.01
`
`DMC Exhibit 2116_009
`
`
`
`Inter Partes Review No. IPR20 14-00508
`Corrected 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 a.n inter partes review challenging the ‘S63 Patent claims on the
`
`grounds identified in this Petition. This Petition is accompanied by a motion for
`
`joinder with IPR20l3-00531 and has been timely filed within one month of the
`
`February 14, 2014 institution date of IPR20l3-00531 (and IPR20l3-00530). The
`
`one year bar set forth in §42.l0l(b) does not apply. 37 C.F.R. §42.l22(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.
`
`11.
`
`STATEMENT OF THE PRECISE RELIEF REQUESTED
`
`Petitioner respectfully requests that ’563 Patent claims 1-4, 6-8, 10-14, 16,
`
`20, and 21 be canceled based on the following grounds. A full statement of the
`
`reasons for this request is presented in later sections of this Petition.
`
`US.539l4403.0l
`
`DMC Exhibit 2116_010
`
`
`
`Inter Partes Review No. IPR2014-00508
`Corrected Petition For Inter Partes Review
`
`Reference
`
`Asada (Japanese UM 3,086,624)
`
`Asada and Lauren Sara (“expecting style” by Lauren
`
`Sara)
`ontrendMaternityCatalogatp. 19)
`
`
`
`§l02
`
`1, 2, 6-8, 10, 11,
`
`Claims Challenged
`I 16,21
`I
`
`§103
`
`12 and 13
`
`Asada and JCP maternity bootcut jeans (J .C. Penney
`
`§l03
`
`3, 4, and 14
`
`Asada and Summers (US Patent No. 8,185,970)
`
`Asada and Stern (US Patent No. 4,506,390)
`
`§103
`
`§103
`
`20
`
`JCP fold-over panel jeans (J.C. Penney ontrend
`
`§l02
`
`1
`
`Maternity Catalog at p. 15)
`
`JCP fold-over paneljeans and Asada
`JCP fold-over paneljeans and Summers
`
`§l03
`§103
`
`III. OVERVIEW OF THE ’563 PATENT
`
`A.
`
`The Disclosed Invention in the ’563 Patent
`
`The ’563 Patent (Ex. 1001) discloses a garment that may be worn “during
`
`different stages of pregnancy and different stages of postpartum body changes.”
`
`’5 63 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
`
`US.539l4403.0l
`
`4
`
`DMC Exhibit 2116_011
`
`
`
`Inter Partes Review No. IPR20 14-00508
`Corrected Petition For Inter Partes Review
`
`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 ’563 Patent are reproduced below:
`
`FIG. 1:
`
`FIG. 2:
`
`US.539l4403.0l
`
`DMC Exhibit 2116_012
`
`
`
`Inter Partes Review No. IPR20 14-00508
`Corrected 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.
`
`’563 Patent at 2:35-40.
`
`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.
`
`’563 Patent at 2:40-51. Gannent 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 2:58-67. 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
`
`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 and
`
`below bottom portion 128 of belly panel 124.
`
`’563 Patent at 3:8-20. Belly panel
`
`124 extends at least partially under the abdomen of the garment wearer and may
`
`include elastic or stretchable fabric. Id. at 3: 16-31. 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 2:55-57, 2:50-51. Garment upper portion 102 includes a torso encircling
`
`US.539l4403.01
`
`DMC Exhibit 2116_013
`
`
`
`Inter Partes Review No. IPR20 14-00508
`Corrected Petition For Inter Partes Review
`
`perimeter 134 to hold garment 100 up and in place.
`
`’563 Patent at 3:37-39. 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 upper
`
`portion 102 to create a hem stitch 132. Id. at 3:32-37.
`
`B.
`
`Prosecution History of the ’563 Patent
`
`The United States Patent and Trademark Office (“PTO”) repeatedly rejected
`
`the pending claims of the application that ultimately became the ’563 Patent, App.
`
`No. 12/117,004, and the subsequent reissue application, App. No. 13/ 161,169, over
`
`US Patent No. 4,506,390 to Stern (“Stern”)(EX. 1017) alone or in combination with
`
`other references} Copies of FIGS. 1 and 2 of Stern are provided below.
`
`
`
`1 See Ex. 1007 for the prosecution history of the ’563 Patent and Ex. 1008 for the
`
`prosecution history of US Pate11t No. 7,900,276, which reissued as the ’563 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).
`
`US.539l4403.0l
`
`DMC Exhibit 2116_014
`
`
`
`Inter Partes Review No. IPR2014-00508
`Corrected 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 ’563
`
`PATENT
`
`In IPR2013—00530 and IPR2013—0053 1, the Board collectively instituted
`
`Ifnterpartes review of claims 1-4, 6-8, 10-14, 16, and 20. Ex. 1027 at p. 22 and EX.
`
`1029 at p. 28. The Board did not institute mlerpartes review of claim 21. Ex.
`
`1029 at p. 28. Regarding claim 20 and 21, 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. 1029 at p. 15. In the decision, the Board construed “formed” as
`
`the garment upper portion’s “residual shape.” Ex. 1029 at p. 10.
`
`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 (see
`
`claim 21). Asada is the basis (alone or in combination) for all but two of the
`
`US.539l4403.0l
`
`DMC Exhibit 2116_015
`
`
`
`Inter Partes Review No. IPR20 14-00508
`Corrected Petition For Inter Partes Review
`
`proposed grounds for cancellation. Summers and Stern, respectively, disclose a
`
`belly panel having a residual hourglass shape (see claim 20).
`
`V.
`
`OVERVIEW OF THE PRIOR ART RELIED UPON FOR THE
`
`CHALLENGE
`
`A.
`
`Asada
`
`Asada (Ex. l034) was published no later than June 28, 2002 and is a §l02(b)
`
`prior art printed pubication to the ’563 Patent. Asada was not cited in the ’563
`
`Patent. Asada discloses maternity pants including pants portion l 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 W [0009], [00ll], [00l3], [00l6]. Abdomen-
`
`covering portion 2 is “expandable, contractible, and foldable.” Id. at 1] [0008].
`
`Figures 1(a) and l(b) of Asada are reproduced below.
`
`{I}
`
`In}
`
`
`
`»u.rI'r
`
`
`
`- - l*llll»::i' -
`
`
`
` 2 -glitt-
`
`I
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`US.539l4403.0l
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`DMC Exhibit 2116_016
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`Inter Partes Review No. IPR2014-00508
`Corrected Petition For Inter Partes Review
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`Figure 1(a) is a front view of the maternity pants of Asada and FIG. l(b) is a
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`rear view collectivly showing abdoinen-covering portion 2 extending front to back.
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`The front of pants portion 1 includes a recessed, parabolic, and curved dip across
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`the front to allow for the changing size of a woman’s belly before, during and after
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`pregnancy. See Ex. 1036, Harder Dec. 11 at 11 26. Figures 1(a) and l(b) show the
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`maternity pants when not worn and abdomen-covering portion 2 in its residual
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`shape. This is in constract to FIGS. 2(a)-2(c) (reproduced below) showing the
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`maternity pants worn by a women. Belly panel 2 has a residual shape of a straight-
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`sided cylinder. See Ex. 1036, Harder Dec. 11 at 11 23.
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`{I}
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`in}:
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`In}
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`Figures 2(a) and 2(b) of Asada show the maternity pants with abdonmen-
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`covering portion 2 folded once at differing amounts to provide the wearer with
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`desired levels of coverage. The stretch knit panel comprises fibers with elasticity
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`that expand and contract. See EX. 1036, Harder Dec. 11 at 11 27.
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`B.
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`J. C. Penney ontrend Maternity Catalog, Fall/Winter 2005
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`The selected pages from the JC. Penney ontrend Maternity Catalog,
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`F all/Winter 2005 (“JCP”) (Ex. 1002) disclose maternity jeans with a fold-over
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`US.53914403.01
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`10
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`DMC Exhibit 2116_017
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`Inter Partes Review No. 1PR2014-00508
`Corrected Petition For Inter Partes Review
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`waistband comprised of spandex that provides “over-the-belly coverage,” “before,
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`during and after your pregnancy” (Id. at p. l5)(“JCP fold-over panel jeans”) and
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`Levis® slim—fit stretch bootcut jeans modified to include a fold—over waistband
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`comprised of spandex (Id. at p. 19)(“JCP maternity bootcut jeans”). JCP was
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`published no later than December 31, 2005 , and is a §102(b) prior art printed
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`pubication to the ’563 Patent. Page 15 of JCP was submitted to the PTO during
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`prosecution of the ’276 and ’563 Patents. The below image shows Figures 1, 2, and
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`3, in the lower left hand comer of catalog page 15.
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`comfort and support‘
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`3. fold twice for low-rise,
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`JCP also includes a description and images of the JCP maternity bootcut
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`jeans, which are described as Levis® slim-fit stretch bootcut maternity jeans, that
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`were not made available to the PTO during prosecution of the ’276 and ’563
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`Patents. The following image (without the arrow and dash annotations) may be
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`found on page 19 of JCP.
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`US.53914403.0l
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`11
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`DMC Exhibit 2116_018
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`Inter Partes Review No. 1PR2014-00508
`Corrected Petition For Inter Partes Review
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`JCPenney catalog &
`internet exclusive!
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`As shown in the above image, the full height of the belly panel of JCP
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`maternity bootcut jeans is unclear, but the belly panel does share many of the same
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`features as the belly panel of page 15. For example, the JCP fold-over panel jeans
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`(p. 15) and JCP maternity bootcut jeans (p. 19) may be folded up or down
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`depending on the wearer’s stage of pregnancy. Id. at pp. 15, 19.
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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. 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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`US.539l4403.0l
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`12
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`DMC Exhibit 2116_019
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`Inter Partes Review No. IPR20 14-00508
`Corrected Petition For Inter Partes Review
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`belly to just below the breast area. Id at p. 15. See Ex. l0l l, Harder Dec. 1 at 1]
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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. l0ll, Harder Dec. 1 at 1] 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 l9, 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. l5.
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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. l5, 19. For example, the fold-over panel of JCP
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`fold-over panel jeans “stretch[es] for comfort.” Id. at p. 15. The image and text on
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`page 19 decribe the “[f]aux fly” front and “[c]lassic 5-pocket styling” that is
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`included in the maternity jeans. Id. at p. 19. The rear yoke (i.e., partial waistband)
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`of JCP maternity bootcut jeans is visible on p. 19 and the yoke extends from side
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`seam to side seam while expanding up and over the pelvis at the back center
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`US.539l4403.0l
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`13
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`DMC Exhibit 2116_020
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`Inter Partes Review No. 1PR2014-00508
`Corrected Petition For Inter Partes Review
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`vertical seam. Id. at p. 19. The width of that yoke also changes, tapering towards
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`the side seams and widening up and over the pelvis towards the rear center seam.
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`Id. at p. 19. See EX. 1011, Harder Dec. 1 atfll 19.
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`C.
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`“expecting style” by Lauren Sara
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`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 ’563 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. 1 at 11 23.
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`transform
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`your favorite
`jeans into a
`maternity pair
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`‘
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`US.53914403.01
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`DMC Exhibit 2116_021
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`Inter Partes Review No. IPR20 14-00508
`Corrected Petition For Inter Partes Review
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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.
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`US Patent No. 8,185,970 to Summers
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`Summers (Ex. 1037) was published no later than May 3, 2007 a11d 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 and §l02(e) prior art to the ’563
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`Patent. Summers was not cited in the ’563 Patent. Summers (Ex. 1037) discloses
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`several embodiments of a gannent, 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.
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`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 3:64-67. Girdle portion 4 aids “pregnant women” and gives
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`“post-pregnancy women” support. Id. at 7:6-13. The girdle portion 4 is worn
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`US.539l4403.0l
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`15
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`DMC Exhibit 2116_022
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`Inter Partes Review No. IPR20 14-00508
`Corrected Petition For Inter Partes Review
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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 7:15 and 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.
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`US Patent No. 4,506,390 to Stern
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`Stern
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`1017) was published no later than March 26, 1985 and is a
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`§102(b) prior art printed pubication to the ’563 Patent. Stern was cited in the ’563
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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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`gannents, 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 i11 greater detail, waistband
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`portion 11 has a residual hourglass shape.
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`VI. CONSTRUCTION OF CERTAIN CLAIM TERMS
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`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.lOO(b). For this proceeding, claim
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`terms are presumed to take their broadest reasonable ordinary meaning. Regarding
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`“hyperboloid cylinder” (claim 20), the Board construed this term as “an hourglass-
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`shaped cylinder.” See EX. 1029 at p. 10. Regarding “shaped and formed” (claims
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`20 and 21), the Board indicated that the required form refers to the belly panel’s
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`US.539l4403.0l
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`16
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`DMC Exhibit 2116_023
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`Inter Partes Review No. IPR2014-00508
`Corrected Petition For Inter Partes Review
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`“residual shape.” See Ex. 1029 at pp. 10, 11. In addition to these terms, the Board
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`also made observations regarding other claim terms.
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`VII. LEVEL OF ORDINARY SKILL IN THE ART
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`A person of ordinary skill in the art (“POSA”) of the ’563 Patent would have
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`been any of the following:
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`(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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`1115. The capabilities of a POSA are described in Ex. 1011, Harder Dec. I at 1116.
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`VIII. THRESHOLD REQUIREMENT FOR INTER PAR TES REVIEW
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`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. §3 l4(a). This Petition meets that threshold.
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`All elements of claims 1-4, 6-8, 10-14, 16, 20, and 21 of the ’563 Patent are taught
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`in the prior art references as explained below, and reasons to combine the features
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`of these prior art references are established for each ground under §lO2 and §l03.
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`US.539l4403.0l
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`17
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`DMC Exhibit 2116_024
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`Inter Partes Review No. IPR2014-00508
`Corrected Petition For Inter Partes Review
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`IX.
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`STATEMENT OF REASONS FOR RELIEF REQUESTED
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`A.
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`Ground 1: Claims 1, 2, 6-8, 10, 11, 16, and 21 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 an expandable belly panel 2 adapted to substantially cover a
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`wearer’s entire belly region. Unlike the JCP fold-over panel jeans, Asada
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`illustrates the belly panel 2 in its “residual shape,” when not worn by a
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`woman/model (e. g. FIGS. 1(a) and 1(b)). The upper edge o