Paper No. 17
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`TARGET CORPORATION
`Petitioner
`
`v.
`
`DESTINATION MATERNITY CORPORATION
`Patent Owner
`_____________
`
`Case No. IPR2014-00509
`(U.S. Patent No. RE43,531)
`_____________
`
`Dated: June 24, 2014
`
`Before JENNIFER S. BISK, MICHAEL J. FITZPATRICK, and
`MITCHELL G. WEATHERLY Administrative Patent Judges.
`
`PATENT OWNER'S OPPOSITION TO PETITIONER'S MOTION FOR
`JOINDER TO RELATED INSTITUTED INTER PARTES REVIEW
`
`EAST\76977084.4
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`TARGET CORPORATION
`Petitioner
`
`v.
`
`DESTINATION MATERNITY CORPORATION
`Patent Owner
`_____________
`
`Case No. IPR2014-00509
`(U.S. Patent No. RE43,531)
`_____________
`
`Dated: June 24, 2014
`
`Before JENNIFER S. BISK, MICHAEL J. FITZPATRICK, and
`MITCHELL G. WEATHERLY Administrative Patent Judges.
`
`PATENT OWNER'S OPPOSITION TO PETITIONER'S MOTION FOR
`JOINDER TO RELATED INSTITUTED INTER PARTES REVIEW
`
`EAST\76977084.4
`
`
`
`TABLE OF CONTENTS
`
`I.
`
`INTRODUCTION ..........................................................................................1
`
`II. MATERIAL FACTS IN DISPUTE ...............................................................1
`
`III.
`
`IV.
`
`LEGAL STANDARDS AND APPLICABLE RULES .................................3
`
`JOINDER IS NOT APPROPRIATE..............................................................5
`
`a.
`
`b.
`
`c.
`
`The Petition presents new patentability analysis and substantive
`arguments substantially beyond those in IPR2013-00533...................5
`
`Petitioner did not explain adequately the impact of the new
`substantive issues on the Patent Owner and the trial schedule ............6
`
`Petitioner did not establish that joinder would promote efficient
`resolution of the unpatentability issues................................................8
`
`V.
`
`IF PETITIONER'S MOTION IS GRANTED, THE SCHEDULE
`SHOULD BE EXTENDED SIX MONTHS ................................................10
`
`VI. CONCLUSION.............................................................................................11
`
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`- i -
`
`
`
`LIST OF EXHIBITS
`
`Evidence Filed with Patent Owner’s
`Opposition to Petitioner’s Motion for Joinder
`
`Exhibit 2107
`
`Exhibit 2108
`
`Exhibit 2109
`
`Exhibit 2110
`
`PTAB Scheduling Order for IPR2013-00530 dated February
`14, 2014
`
`PTAB Scheduling Order for IPR2013-00531 dated February
`14, 2014
`
`PTAB Scheduling Order for IPR2013-00532 dated February
`19, 2014
`
`PTAB Scheduling Order for IPR2013-00533 dated February
`19, 2014
`
`Exhibit 2113
`
`Motion for Joinder for IPR2014-00508 dated March 14, 2014
`
`Exhibit 2114
`
`Patent Owner’s Preliminary Response for IPR2013-00533
`dated December 4, 2013
`
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`- ii -
`
`
`
`Petitioner’s Filed Exhibits Cited in Patent Owner’s
`Opposition to Petitioner’s Motion for Joinder
`
`Exhibit 1002:
`
`J.C. Penney ontrend Maternity Catalog, dated Fall/Winter
`2005, cover and pages 15 and 19 (“JCP”)
`
`Exhibit 1018
`
`Hendrickson et al. US Patent No. RE43,531 (“the ’531
`Patent”)
`
`Exhibit 1027:
`
`PTAB Decision for IPR2013-00530 dated February 14, 2014
`
`Exhibit 1029:
`
`PTAB Decision for IPR2013-00531 dated February 14, 2014
`
`Exhibit 1031:
`
`PTAB Decision for IPR2013-00532 dated February 19, 2014
`
`Exhibit 1033:
`
`PTAB Decision for IPR2013-00533 dated February 19, 2014
`
`Exhibit 1034:
`
`Japanese Utility Model Patent No. 3,086,624 to Asada
`
`Exhibit 1035
`
`Certified Translation of Asada
`
`Exhibit 1037:
`
`US Patent No. 8,185,970 to Summers
`
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`- iii -
`
`
`
`I.
`
`INTRODUCTION
`
`Pursuant
`
`to 37 C.F.R. § 42.23, Patent Owner Destination Maternity
`
`Corporation ("Patent Owner") opposes
`
`the Petitioner Target Corporation
`
`("Petitioner") Motion for Joinder to Related Instituted Inter Partes Review
`
`("Motion"). See Joinder Mot., Paper No. 3. Petitioner moves to join its Petition
`
`for Inter Partes Review ("Petition") with IPR2013-00533.1
`
`Id.; Petition and
`
`Corrected Petition, Paper Nos. 1 and 9 at 1. The Motion should be denied because
`
`(a) the Petition presents substantial new patentability analysis and substantive
`
`arguments that go well beyond those in IPR2013-00533; (b) Petitioner did not
`
`explain adequately the impact of the new substantive issues on the Patent Owner
`
`and the trial schedule; and (c) Petitioner did not establish that joinder would
`
`promote efficient resolution of the unpatentability issues.
`
`II. MATERIAL FACTS IN DISPUTE
`
`For the purpose of responding to this Motion, Patent Owner only disputes
`
`the following:
`
`3. Patent Owner disputes "but on new grounds—i.e., in view of Japanese
`
`Registered Utility Model No. 3086624 ("JP U3086624" or "Asada") (Ex. 1034 and
`
`1 Petitioner filed a Motion to Limit the Petition on March 25, 2014. See Motion to
`
`Limit the Petition, Paper No. 7. Because the Motion was not granted, Patent
`
`Owner is responding to the full Corrected Petition.
`
`EAST\76977084.4
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`- 1 -
`
`
`
`Ex. 1035) alone and in combination with other prior art references." The new
`
`grounds asserted by Petitioner are not limited to Asada. For example, Petitioner
`
`asserted another new patent, US Patent No. 8,185,970 to Summers ("Summers")
`
`(Ex. 1037).
`
`4. Asada is not invalidating prior art to the '531 Patent under 35 U.S.C. §
`
`102. At a minimum, Asada does not disclose the limitations of "an upper edge of
`
`the belly panel that encircles a wearer's torso just beneath wearer's breast area" and
`
`"substantially covering the wearer's entire pregnant abdomen during all stages of
`
`pregnancy."
`
`It also does not disclose a tubular structure, the tubular structure
`
`shaped and formed as a straight sided cylinder or as a hyperboloid cylinder, since
`
`there are no drawings or descriptions in Asada of how the sides of the Asada
`
`garment are shaped.
`
`8. Claims 18 and 19 and the Board's findings speak for themselves. To the
`
`extent this paragraph states any other factual or legal averments, such averments
`
`are denied.
`
`9-10. Asada speaks for itself. To the extent these paragraphs state any other
`
`factual or legal averments, such averments are denied.
`
`15-16. Patent Owner lacks knowledge or information sufficient to form a
`
`belief as to the truth of the averments of these paragraphs, and therefore denies the
`
`same.
`
`EAST\76977084.4
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`
`
`
`III. LEGAL STANDARDS AND APPLICABLE RULES
`The Board has discretion to join an inter partes review with another inter
`
`partes review. 35 U.S.C. § 315. When exercising this discretion, patent trial
`
`regulations and joinder rules must be construed to secure the just, speedy, and
`
`inexpensive resolution of every proceeding. See 35 U.S.C. § 316(b); 37 C.F.R. §
`
`42.1(b).
`
`The moving party has the burden to establish that joinder is appropriate.
`
`E.g., IPR2013-00386 ("Sony"), Paper 16 at 4. A moving party's joinder motion
`
`should "(1) set forth the reasons why joinder is appropriate; (2) identify any new
`
`grounds of unpatentability asserted in the petition; (3) explain what impact (if any)
`
`joinder would have on the trial schedule for the existing review; and (4) address
`
`specifically how briefing and discovery may be simplified." Id. at 4.
`
`Joinder was not appropriate when a petition presented new patentability
`
`analysis and substantive arguments substantially beyond those already before the
`
`Board that would affect the trial schedule, burden and expense to the parties. Id. at
`
`7-10.
`
`In Sony, the petitioners sought to challenge a new claim, assert three new
`
`grounds of unpatentability, five new prior art references, and introduce a new
`
`expert declaration.
`
`Id.
`
`Joinder was denied because it would,
`
`inter alia,
`
`substantially impact the trial schedule for the ongoing review and add burden and
`
`expense to the parties. Id. at 7-9.
`
`EAST\76977084.4
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`- 3 -
`
`
`
`In denying the motion, the Board noted that the instituted proceeding was
`
`filed seven months ago with at least one deposition completed and a patent owner
`
`response due less than a month from the Board's decision. Id. at 7. The Board also
`
`stated:
`
`Notably, Petitioners in their Motion do not propose a
`modified schedule if joinder is granted or explain how
`the current schedule can be reconciled with the due dates
`for this proceeding. Petitioners further argue that the
`Board may order
`[the parties]
`to consolidate their
`submissions and to conduct
`joint discovery where
`appropriate, but do not explain in detail what procedures
`should be followed or how such procedures would
`minimize the impact on the current schedule.
`Id. at 7-8 (internal punctuation and citations omitted).
`
`Similarly, joinder was denied when a new claim, a new party, and new
`
`declarations would be added to five related inter partes reviews. IPR2013-00319
`
`("NetApp"), Paper 18 at 5-9. Of note, the Board indicated that the movant did not
`
`explain how joinder would promote efficient resolution of the unpatentability
`
`issues without substantially affecting the schedule and the parties' burden by
`
`explaining how to coordinate discovery and the schedule in the five related inter
`
`partes reviews. Id. at 7-8.
`
`EAST\76977084.4
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`- 4 -
`
`
`
`IV.
`
`JOINDER IS NOT APPROPRIATE
`
`The Motion should be denied because (a) the Petition presents new
`
`patentability analysis and substantive arguments substantially beyond those in
`
`IPR2013-00533; (b) Petitioner did not explain adequately the impact of the new
`
`substantive issues on the Patent Owner and the trial schedule; and (c) Petitioner did
`
`not establish that joinder would promote efficient resolution of the unpatentability
`
`issues.
`
`a.
`
`The Petition presents new patentability analysis and substantive
`arguments substantially beyond those in IPR2013-00533
`
`The Petition's breadth is enormous. At this late stage in the instituted IPRs,
`
`this Petition challenges claims 1, 2, 5, 6, 10, 11, 15-19, and 24-29 of U.S. Patent
`
`No. RE43,531 (the "'531 Patent") (Ex. 1018). Corrected Petition, Paper No. 9 at ii.
`
`The Petition argues that
`
`the newly asserted Asada reference invalidates, by
`
`anticipation, claims 1, 2, 5, 10, 17, 19, 24, 25, 28, and 29 in ground 1.
`
`Id. The
`
`Petition also asserts that the Asada reference invalidates claims 6, 11, 15-16, 18-
`
`19, 26, and 27 in grounds 2-5 and 8, under § 103, in numerous combinations. Id.
`
`The Petition further asserts another new reference—Summers—in various
`
`combinations with two other references—invalidates claim 18 under § 103, in
`
`grounds 3 and 7. Id.
`
`In total, the Petition challenges 17 claims on eight different grounds, and
`
`includes six new § 103 arguments and six new references. See Corrected Petition,
`
`EAST\76977084.4
`
`- 5 -
`
`
`
`Paper No. 9 at ii; Motion for Joinder, Paper No. 3 at 6-7; Target Corp. v.
`
`Destination Maternity Corp., PTAB, Decision, Case No. IPR2013-00532 (Ex.
`
`1031); Target Corp. v. Destination Maternity Corp., PTAB, Decision, Case No.
`
`IPR2013-00533 (Ex. 1033). Of the eight grounds for unpatentability, only ground
`
`6 is common with IPR2013-00533, which asserts that J.C. Penney ontrend
`
`Maternity Catalog at Page 15 ("JCP-A") (Ex. 1002) is a § 102 reference for claim
`
`1. Paper No. 9 at ii; Board Decision for IPR2013-00533 (Ex. 1033). The only
`
`commonality with the Petition and IPR2013-00533 is that JCP-A is an alleged §
`
`102 reference for claim 1. As such,
`
`the Petition presents substantial new
`
`patentability analysis and substantive arguments that go well beyond those in
`
`IPR2013-00533.
`
`b.
`
`Petitioner did not explain adequately the impact of the new
`substantive issues on the Patent Owner and the trial schedule
`Like the movants in Sony and NetApp, the Petitioner neither proposed a
`
`modified schedule should its Motion be granted nor explained how the IPR2013-
`
`00533 schedule can be reconciled with the due dates for this proceeding. Instead,
`
`Petitioner provided conclusory statements without outlining a plan and dates
`
`certain for achieving the plan:
`
`To the extent that the Board decides to institute trial in
`the Third '531 Petition, Target will agree to place all
`three cases involving the '531 Patent on the same post-
`institution schedule. Target does not object to formal
`- 6 -
`
`EAST\76977084.4
`
`
`
`consolidation of IPR2013-00532 and IPR2013-00533,
`and also does not object to consolidated briefing and
`discovery in all three cases. Further, Target is willing to
`forfeit a reasonable portion of its response period to the
`extent
`that
`is deemed necessary to provide DMC
`sufficient time to address the additional issues raised in
`the Third '531 Petition. Target will also accommodate
`any reasonable logistical or scheduling request of DMC
`in order to accommodate joinder of the proceedings.
`Motion at 14.
`
`Petitioner's suggestions to consolidate and forfeit a reasonable portion of its
`
`response period is largely moot because Patent Owner's responses to the instituted
`
`'531 Patent proceeding have been filed and Petitioner's reply is due on July 14,
`
`2014, less than three weeks from the date of this filing. See Target Corp. v.
`
`Destination Maternity Corp., PTAB, Scheduling Order, Case No. IPR2013-00533,
`
`Paper 12 at 5 (Ex. 2110). Consolidation also prejudices Patent Owner by lessening
`
`the page limits for Patent Owner and depriving Patent Owner its entitlement to full
`
`discovery. Even though Petitioner's case in chief is largely complete with its
`
`unconsolidated petitions, Patent Owner will need its full allotment of pages to
`
`respond to the new patentability analysis and substantive arguments substantially
`
`beyond those in IPR2013-00533. Patent Owner must also depose Petitioner’s
`
`expert on the new petitions.
`
`EAST\76977084.4
`
`- 7 -
`
`
`
`If the Motion is granted,
`
`the schedule will need to be extended and
`
`reconciled with five other proceedings, four of which were instituted more than
`
`four months ago (Ex. Nos. 1027, 1029, 1031, 1033). Petitioner provided no
`
`concrete plan for doing so, much less "explain in detail what procedures should be
`
`followed or how such procedures would minimize the impact on the current
`
`schedule." Sony at 9.
`
`It would be impractical and prejudicial to conduct and complete six IPR
`
`proceedings within the statutorily required time period.
`
`If joinder occurs, at a
`
`minimum Patent Owner will have to re-depose Petitioner's expert regarding her
`
`new declaration and the instituted Petition, prepare new expert declarations, and
`
`respond to the petition. The Patent Owner will have to do the same in the '563
`
`Patent proceedings.
`
`See Target Corp. v. Destination Maternity corp., PTAB,
`
`Motion for Joinder, Case No. 2014-00508 (Ex. 2113). Petitioner may also have to
`
`re-depose Patent Owner's experts because its replies are due July 14 (Ex. Nos.
`
`2107, 2108, 2109, 2110). Completing these tasks along with all other requirements
`
`for six IPR proceedings will require a substantial schedule extension.
`
`c.
`
`Petitioner did not establish that joinder would promote efficient
`resolution of the unpatentability issues
`Although only claims 18 and 19 are not instituted for Inter Partes Review,
`
`the Petition re-challenges 15 instituted claims in four different grounds with two
`
`new pieces of prior art and two new § 103 combinations. See Corrected Petition,
`
`EAST\76977084.4
`
`- 8 -
`
`
`
`Paper No. 9 at ii; Target Corp. v. Destination Maternity Corp., PTAB, Decision,
`
`Case No. IPR2013-00532 (Ex. 1031); Target Corp. v. Destination Maternity
`
`Corp., PTAB, Decision, IPR2013-00533 (Ex. 1033). Claims 18 and 19 are only
`
`included in grounds 1, 3-4, and 7-8. Corrected Petition, Paper No. 9 at ii.
`
`Accordingly, the Petition is not focused on requesting review of the two claims
`
`that were not previously instituted, but rather effectively doubling the workload of
`
`Patent Owner and the Board.
`
`The increased workload stems from additional challenges to already
`
`instituted claims. Grounds 1, 2, 5, and 6 include new § 102 and § 103 arguments
`
`relating to claims that were already addressed and instituted for Inter Partes
`
`Review. Corrected Petition, Paper No.9 at
`
`ii; Target Corp. v. Destination
`
`Maternity Corp., PTAB, Decision, Case No.!PR2013-00533 (Ex. 1033).
`
`For
`
`example, aside from claim 19, ground 1 also argues that the newly asserted Asada
`
`reference is a § 102 reference for claims 1, 2, 5, 10, 17, 24, 25, 28, and 29 of the
`
`'531 Patent, when the Board already instituted Inter Partes Review under § 102 for
`
`those claims in view of JCP-A. See Target Corp. v. Destination Maternity Corp.,
`
`PTAB, Decision, Case No.
`
`IPR2013-00532 (Ex. 1031); Target Corp. v.
`
`Destination Maternity Corp., PTAB, Decision,
`
`IPR2013-00533 (Ex. 1033).
`
`Grounds 2 and 5, which challenge claims 6, 11, 15, 16, 26, and 27 in two new §
`
`103 combinations, are likewise already instituted under § 103.
`
`Id. Accordingly,
`
`EAST\76977084.4
`
`- 9 -
`
`
`
`joinder of a multitude of already instituted claims would not promote efficient
`
`resolution of the unpatentability issues and also would be prejudicial to Patent
`
`Owner to be required to expend considerable time, effort and money to address
`
`Petitioner’s new arguments relating to the already instituted claims.
`
`V.
`
`IF PETITIONER'S MOTION IS GRANTED, THE SCHEDULE
`SHOULD BE EXTENDED SIX MONTHS
`
`For the reasons explained above, Petitioner's Motion should be denied.
`
`However, in the event that the Board rules otherwise, the schedule in IPR2013-
`
`00533 (and the related IPR proceedings) should be extended six months to reflect
`
`the additional briefing, information, arguments, depositions, and declarations that
`
`will be added, and the additional analysis and expense that will be needed. The
`
`six-month extension is based on the schedule of IPR2013-00533, which had a little
`
`over 300 days from Patent Owner's preliminary response on December 4, 2013 to
`
`due date 7 on October 7, 2014. See Target Corp. v. Destination Maternity Corp.,
`
`PTAB, Preliminary Response, Case No. IPR2013-00533 (Ex. 2114); Target Corp.
`
`v. Destination Maternity Corp., PTAB, Scheduling Order, IPR2013-00533 (Ex.
`
`2110). Although adding the same amount of time from today would push Due
`
`Date 7 past a six-month extension to the end of April 2015, Petitioner's suggestion
`
`to forgo its response time could eliminate the overage. See Motion for Joinder,
`
`Paper 3 at 14.
`
`Indeed, Petitioner acknowledges on pages 8, and 14-15 of its
`
`Motion that it would be accommodating and that an extension may be warranted
`
`EAST\76977084.4
`
`- 10 -
`
`
`
`and that such an extension is permitted under 35 U.S.C. § 316(a)(11). And Patent
`
`Owner is accommodating Petitioner with this extension by effectively delaying the
`
`underlying District Court litigation, which may re-commence following conclusion
`
`of the Inter Partes Review proceedings.
`
`VI. CONCLUSION
`
`Accordingly, Patent Owner's requests that Petitioner's Motion be denied.
`
`Date: June 24, 2014
`
`DLA PIPER LLP (US)
`s/ Paul A. Taufer
`
`Paul A. Taufer (Reg. No. 35,703)
`Michael L. Burns (Reg. No. 57,593)
`DLA Piper LLP (US)
`One Liberty Place
`1650 Market Street, Suite 4900
`Philadelphia, PA 19103
`Phone: (215) 656-3385
`Facsimile: (215) 606-3385
`paul.taufer@dlapiper.com
`michael.burns@dlapiper.com
`
`Stuart E. Pollack (Reg. No. 43,862)
`DLA Piper LLP (US)
`1251 Avenue of the Americas
`27th Floor
`New York, NY 10020-1104
`Phone: (212) 335-4964
`Facsimile: (212) 884-8464
`stuart.pollack@dlapiper.com
`
`Attorneys for Patent Owner, Destination
`Maternity Corporation
`
`EAST\76977084.4
`
`- 11 -
`
`
`
`CERTIFICATE OF SERVICE
`
`he undersigned certifies that on June 24, 2014, a complete and entire copy of
`
`the Patent Owner's Opposition to Petitioner's Motion for Joinder to Related
`
`Instituted Inter Partes Review was provided via email to the Petitioner by serving
`
`the email correspondence address of record as follows:
`
`Norman J. Hedges
`R. Trevor Carter
`Daniel M. Lechleiter
`Faegre Baker Daniels LLP
`300 N. Meridian Street, Suite 2700
`Indianapolis, Indiana 46204-1750
`Phone: (317) 237-0300
`Fax: (317) 237-1000
`Norman.Hedges@FaegreBD.com
`trevor.carter@FaegreBD.com
`daniel.lechleiter@FaegreBD.com
`
`/s/ Paul Taufer
`Paul A. Taufer
`
`EAST\76977084.4
`
`- 12 -
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