Target Corporationv.Destination Maternity Corporation

Patent Trial and Appeal Board

Feb 12, 2015

13161169 (P.T.A.B. Feb. 12, 2015)

Trials@uspto.gov Paper 79
Tel: 571-272-7822 Entered: February 12, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

TARGET CORPORATION,
Petitioner,

v.

DESTINATION MATERNITY CORPORATION,
Patent Owner.

Case IPR2013-00530
Patent RE43,563 E

Before JENNIFER S. BISK, MICHAEL J. FITZPATRICK, and
MITCHELL G. WEATHERLY, Administrative Patent Judges.

FITZPATRICK, Administrative Patent Judge.

FINAL WRITTEN DECISION
35 U.S.C. § 318 and 37 C.F.R. § 42.73
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I. INTRODUCTION
Petitioner, Target Corporation, filed a Corrected Petition for an inter
partes review of claims 1–4 and 6–8 of U.S. Patent No. RE43,563 E (the
“’563 patent”). Paper 5, “Pet.” Patent Owner, Destination Maternity
Corporation, filed a Preliminary Response pursuant to 35 U.S.C. § 313.
Paper 10, “Prelim. Resp.” In a February 14, 2014, Decision, we granted the
Petition and instituted trial on the challenged claims as follows:
claims 1–3 and 6–8 as anticipated by JCP fold-over panel jeans
1
;
claims 3 and 4 as unpatentable over JCP fold-over panel jeans and
JCP maternity bootcut jeans;
2
and
claim 1 as anticipated by Browder.
3

Paper 13 (“Dec. on Pet.”), 22.
After institution, Patent Owner filed a Patent Owner Response (Paper
28, “PO Resp.”), and Petitioner filed a Reply (Paper 39, “Pet. Reply”).
4

Also, both parties filed motions to exclude, and Patent Owner filed
observations on the cross-examination of Vincent Thomas, who executed a
declaration in support of Petitioner’s Reply.

1
Ex. 1002 is an excerpt from JC Penney’s ontrend Maternity, Fall/Winter
Catalog (2005) (the “JCP catalog”). Page 2 of the exhibit (JCP catalog page
15) depicts “fold-over panel jeans,” hereafter, the “JCP fold-over panel
jeans.”
2
Page 3 of Ex. 1002 (JCP catalog page 19) depicts “maternity bootcut
jeans,” hereafter, the “JCP maternity bootcut jeans.”
3
U.S. Patent 6,276,175 B1, issued Aug. 21, 2001 (Ex. 1004).
4
The Patent Owner Response and several other papers and exhibits filed by
the parties were filed under seal. A public version (with redactions) of each
sealed document is available on PRPS.
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An oral hearing was held on October 7, 2014.
5

As discussed below, Petitioner has shown by a preponderance of the
evidence that claims 1–4 and 6–8 of the ’563 patent are unpatentable.
A. Related Proceedings and Procedural Background
Patent Owner asserted the ’563 patent against Petitioner in
Destination Maternity Corp. v. Target Corp., Case No. 2:12-cv-05680-AB
(E.D. Pa.). Pet. 1; Paper 7, 2. Petitioner filed two additional petitions for
inter partes reviews of the ’563 patent. IPR2013-00531 (filed Aug. 27,
2013); IPR2014-00508 (filed Mar. 14, 2014). Also, Petitioner filed three
petitions for inter partes reviews of related U.S. Patent No. RE43,531 E.
See IPR2013-00532; IPR2013-00533; IPR2014-00509.
B. The ’563 Patent
The ’563 patent relates to a garment worn during different stages of
pregnancy and different stages of postpartum body changes. Ex. 1001,
1:18–20. A stated “purpose of the invention is to provide a garment that
adapts to cover and fit a growing abdomen during pregnancy, wherein the
garment stays up when worn.” Id. at 1:51–53. Figure 1 of the ’563 patent is
reproduced below.

5
A transcript of the oral hearing is included in the record. Paper 74 (“Tr.”).
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Figure 1 illustrates a front view of garment 100 in accordance with the
claimed invention of the ’563 patent. Ex. 1001, 2:16–17, 2:35–36. The
garment has upper portion 102 and lower portion 104 that are joined to one
another proximate the waistline. Id. at 2:36–40. In the embodiment of
Figure 1, the garment lower portion comprises trousers, but other lower
portions are contemplated, such as a skirt, which is indicated by phantom
lines. Id. 2:40–43.
The garment upper portion includes belly panel 124 that is expansible
or stretchable to cover and fit over the abdomen during different stages of
pregnancy. Id. at 3:1–5. Bottom portion 128 of the belly panel projects
downward in the front. Id. at 3:5–7. Upper perimeter 108 of the garment
lower portion correspondingly recedes downward in the front. Id. at 3:8–13.
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Thus, the belly panel extends, partially at least, under the abdomen of the
wearer before meeting and joining the garment lower portion. Id. at 3:15–
20.
C. Illustrative Claim
Of the challenged claims 1–4 and 6–8, claim 1 is the sole independent
claim. It is illustrative and reproduced as follows:
1. A garment portion having an attached belly panel
portion comprising:
an expansible belly panel adapted to substantially cover a
wearer’s entire belly region, said belly region comprising an
area beginning just beneath the wearer’s breast area and
extending over the wearer’s abdomen to a lower abdomen
region beneath the wearer’s belly, said belly panel comprising:
an upper edge portion defining a first encircling
circumference about a wearer’s torso that is at or above
the wearer’s upper abdomen region, and
a lower edge portion spaced from the upper edge
portion and defining a second encircling circumference
about the wearer’s lower abdomen region; and
a garment lower portion, in communication with the
lower edge portion, having a torso encircling circumference that
recedes downward to make way for expansion of the belly
panel.
II. ANALYSIS
A. Claim Construction
“A claim in an unexpired patent shall be given its broadest reasonable
construction in light of the specification of the patent in which it appears.”
37 C.F.R. § 42.100(b). Pursuant to that standard, the claim language should
be read in light of the specification as it would be interpreted by one of
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ordinary skill in the art. In re Suitco Surface, Inc., 603 F.3d 1255, 1260
(Fed. Cir. 2010). Thus, we give claim terms their ordinary and customary
meaning. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
2007) (“The ordinary and customary meaning is the meaning that the term
would have to a person of ordinary skill in the art in question.” (internal
quotation marks omitted)).
We address below the limitations at issue in this proceeding.
1. Claim 1: “an expansible belly panel adapted to substantially cover a
wearer’s entire belly region, said belly region comprising an area
beginning just beneath the wearer’s breast area”
Patent Owner argues that “[c]laim 1 requires a panel that reaches just
beneath the wearer’s breast area.” PO Resp. 5 (emphasis added). Claim 1,
however, recites “an expansible belly panel adapted to substantially cover a
wearer’s entire belly region, said belly region comprising an area beginning
just beneath the wearer’s breast area.” Thus, it is the belly region, and not
the belly panel, that the claim recites as “beginning just beneath the wearer’s
breast area.” Ex. 1001, 5:35–37. The belly panel merely is required to be
“adapted to substantially cover a wearer’s entire belly region.”
2. Claim 1: “just beneath the wearer’s breast area”
Patent Owner argues that “just beneath the wearer’s breast area”
means “beneath the location of the breasts by a very small margin.” PO
Resp. 7 (citing Ex. 2017
6
¶¶ 14–22, 26–27). In particular, Dr. Brookstein

6
Exhibit 2017 is a declaration by David Brookstein, Sc.D., on behalf of
Patent Owner.
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notes that a dictionary definition for the word “just” is “by a very small
margin.” Ex. 2017 ¶ 21 (citing Ex. 2023, 679).
7

Because we determine that the limitation “just beneath the wearer’s
breast area” refers to the belly region of a wearer, and not the belly panel of
the claimed apparatus, we need not construe further this limitation for
purposes of this final written Decision.
3. Claim 1: “an expansible belly panel”
Patent Owner argues that “an expansible belly panel” means “a belly
panel that expands to a degree commensurate with covering a pregnant
abdomen.” PO Resp. 18 (citing Ex. 2017 ¶¶ 28–33) (our emphasis). In the
cited testimony, Dr. Brookstein relies on excerpts from the specification that
discuss embodiments in relation to pregnancy. In particular, he states:
When discussing “expansible” with regard to the belly panel,
the ‘563 patent routinely discusses that the belly panel must
cover and fit over a pregnant abdomen. For example, the
Specification identifies a “belly panel that is expansible to
cover and fit over a growing abdomen during different stages of
pregnancy.” (1:55-57), and “The belly panel 124 is expansible,
for example, when made of a stretchable fabric, to cover and fit
over a growing abdomen during different stages of pregnancy”
(3:2-5)[.]
Ex. 2017 ¶ 30. But, claim 1 does not require the belly panel to cover and fit
over a pregnant abdomen. It does not even mention pregnancy. Patent
Owner, through Dr. Brookstein, is attempting to read limitations into claim 1
from the specification, which we will not do. See Thorner v. Sony Computer

7
Exhibit 2023 is Merriam-Webster’s Collegiate Dictionary, 11th Edition
(2007).
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Entm’t Am. LLC, 669 F.3d 1362, 1366 (Fed. Cir. 2012) (“We do not read
limitations from the specification into claims.”).
Although the ’563 patent describes embodiments in the context of
pregnancy in certain instances, broader claim scope was obtained through
the use of claim language that lacked any such limitation. “It is the claims
that define the metes and bounds of the patentee’s invention. The patentee is
free to choose a broad term and expect to obtain the full scope of its plain
and ordinary meaning unless the patentee explicitly redefines the term or
disavows its full scope.” Thorner, 669 F.3d at 1367 (citation omitted).
Claim 1 recites “an expansible belly panel.” Patent Owner has not shown
(1) that the ’563 patent defines “expansible” to mean that the belly panel
expands to a degree commensurate with covering a pregnant abdomen or
(2) that the patentees disavowed, from the scope of the claim, belly panels
that expand albeit not to a degree commensurate with covering a pregnant
abdomen (if such a lesser degree exists).
We reject Patent Owner’s proposed construction. The broadest
reasonable construction of “expansible belly panel” is a belly panel that is
expandable.
4. Claim 1: “an upper edge portion defining a first encircling
circumference about a wearer’s torso that is at or above the wearer’s
upper abdomen region”
In its Preliminary Response, Patent Owner expressly argued that claim
1 requires “an upper edge of the belly panel that encircles a wearer’s torso
just beneath the wearer’s breast area.” Prelim. Resp. 11 (emphasis added).
To the contrary, we determined that claim 1 does not require this. Dec. on
Pet. 8. Instead, claim 1 requires “an upper edge portion defining a first
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encircling circumference about a wearer’s torso that is at or above the
wearer’s upper abdomen region” (emphasis added). Patent Owner
continues to argue (albeit implicitly) that the upper edge of the belly panel
must encircle a wearer’s torso just beneath the wearer’s breast area. PO
Resp. 13–14 (citing Ex. 2018, 78:13–79:1), 22 (same).
8
Patent Owner’s
argument is contrary to the language of the claims.
The term “at or above” connotes an imprecise location for the upper
edge of the belly panel in relation to the upper abdomen region. Further, the
frame of reference for the location of the upper edge portion (i.e., the upper
abdomen region) is not identified precisely. The ’563 patent does not define
the upper abdomen region or the lower abdomen region, or expressly
describe their boundaries. The ’563 patent, however, does state that in
Figure 1A, which is reproduced above, “the belly panel 124 extends at least
somewhat above the maximum girth of the abdomen, even during a later
stage of pregnancy, such that the belly panel 124 positions the torso
encircling circumference 134 at least somewhat above the location of
maximum girth to resist slipping down over the abdomen.” Ex. 1001, 3:46–
51.
Thus, in light of the specification, the broadest reasonable
construction of “upper abdomen region” would be that portion of the

8
Exhibit 2018 is a transcript of a deposition of Petitioner’s witness Frances
Harder.
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abdomen superior to the maximum girth of the abdomen.
9
Thus, an
individual wearer’s upper abdomen region can vary, such as during different
stages of pregnancy. In fact, according to Patent Owner, the upper abdomen
region may be “well below the breast area” in some instances but the
abdomen may reach “near the breast[s]” when the “belly region is larger,
such as in later stages of pregnancy.” PO Resp. 7.
10
Also, different wearers
would have differently sized and shaped abdomens. See Ex. 1001, 3:27–31
(acknowledging that wearers would have “different body types”).
The limitation “an upper edge portion defining a first encircling
circumference about a wearer’s torso that is at or above the wearer’s upper
abdomen region” requires the upper edge portion to encircle the wearer’s
torso at any location that is superior to the location of maximum girth of the
wearer’s torso.
Because of claim 1’s reference’s to a wearer, a garment may satisfy
the claim for one wearer but not another because of differences in the
wearers’ body types. See Ex. 1001, 3:27–31. Likewise, a garment may
satisfy claim 1 for a wearer in one instance but not another because the

9
Likewise, the broadest reasonable construction of “lower abdomen region”
would be that portion of the abdomen inferior to the maximum girth of the
abdomen.
10
At oral argument, counsel for both parties were asked whether there is any
distinction between the terms “abdomen” and “belly” in the context of the
’563 patent (and the related ’531 patent), and they agreed that there is none.
Tr. 10:21–11:2 (statement of counsel for Petitioner), 42:23–43:6 (statement
of counsel for Patent Owner).
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wearer’s abdomen may change, for example, during pregnancy. See PO
Resp. 7.
5. Claim 7: “belly panel . . . adapted to substantially cover and fit over
different body types”
Claim 7 recites “[t]he garment portion of claim 1, wherein said belly
panel is adapted to substantially cover and fit over different body types.”
Patent Owner does not propose an express construction for claim 7, but it
argues that a belly panel cannot meet the claim merely by being stretchable.
PO Resp. 44 (“Finally, the mere fact that something can expand does not
equate to expanding to a degree needed to conform to different body types as
required by Claim 7.”). But, Patent Owner does not provide any
quantification for the amount of stretching that it implies to be required of
the claim.
The broadest reasonable construction of “different body types” means
two or more body types that are not identical. Thus, claim 7 is met by a
belly panel if it is capable of substantially covering and fitting over the belly
region of two or more non-identical body types.
B. Claims 1–3 and 6–8 are Anticipated by the JCP Fold-Over Panel Jeans
Petitioner asserts that claims 1–3 and 6–8 are anticipated by the JCP
fold-over panel jeans. Pet. 31–34. The JCP fold-over panel jeans appear on
page 15 of the JCP catalog. Ex. 1002, 2. An excerpt of page 15 is
reproduced below.
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The photo excerpt depicts a series of inset photographs of the JCP
fold-over panel jeans, and accompanying text. As seen, the garment has
distinct upper and lower garment portions that are joined to one another
proximate the waist. The lower portion consists of jeans. The upper portion
is referred to as a “fold-over panel” that is designed to allow wear before,
during, and after pregnancy, and during different stages of pregnancy.
Ex. 1002, 2. The photographs show the garment in three configurations:
panel unfolded, panel folded once, and panel folded twice. In the unfolded
configuration, the panel appears to cover the entire belly or abdomen of the
model. The garment is said to “stretch for comfort.” Id.
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1. Claim 1
The JCP fold-over panel jeans has “an expansible belly panel” within
the meaning of the claim. Its panel stretches and, thus, is expansible. It is
“adapted to substantially cover a wearer’s entire belly region,” as shown in
one of the photographs, which is reproduced again, in larger form and with
annotations, below.

The photograph includes annotations showing upper and lower edge
portions of the fold-over panel. Ex. 1002, 2. As shown, the upper edge
portion encircles the wearer’s torso “at or above the wearer’s upper abdomen
region” because it does so superior to the maximum girth of the abdomen.
Also, the lower edge portion encircles the torso “about the wearer’s lower
abdomen region” because it does so inferior to the maximum girth of the
abdomen. The lower edge portion of the fold-over panel is attached to jeans,
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which meet the “garment lower portion” limitation of claim 1. The top of
the jeans recedes downward in the front and, thus, at least partially below the
wearer’s belly. Consequently, the top of the jeans has “a torso encircling
circumference that recedes downward to make way for expansion of the
belly panel.”
Patent Owner argues that the JCP fold-over panel jeans do not
anticipate claim 1 because the fold-over panel does not extend high enough
on the wearer’s body. In particular, Patent Owner argues that the fold-over
panel does not extend to just beneath the wearer’s breast area. PO Resp. 21–
32. Patent Owner’s argument is misplaced. As discussed above, claim 1
recites that the belly region of the wearer begins just beneath the wearer’s
breast area but does not require the belly panel to begin there. As shown on
page 15 of the JCP catalog, the fold-over panel substantially covers the
wearer’s entire belly region. Further, the panel is adapted to cover even
more of the belly region of different wearers, such as those of shorter stature
and/or having smaller bellies.
Petitioner has shown by a preponderance of the evidence that claim 1
is anticipated by the JCP fold-over panel jeans.
2. Claims 2, 3, and 6–8
Claim 2 depends from claim 1 and additionally requires “a pair of
trousers attached to said lower edge portion.” Ex. 1001, 5:51–52. The JCP
fold-over panel jeans, as the name suggests, employ a pair of jeans attached
to the lower edge portion of the fold-over panel. Ex. 1002, 2. Jeans are a
type of trousers.
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Claim 3 depends from claim 2 and additionally requires that the
trousers “comprise denim jeans.” The JCP catalog does not describe
expressly the fold-over panel jeans as being made of denim. Ex. 1002, 2.
We previously found that, in the photographs, the jeans appear to be made of
denim. Dec. on Pet. 12 (citing Ex. 1002, 2). In particular, we found the
photograph showing the entire leg portions of the jeans persuasive. Dec. on
Pet. 12 (citing Ex. 1002, 2). Patent Owner does not argue to the contrary.
See PO Resp. 41–42. We maintain our finding that JCP fold-over panel
jeans disclose denim jeans. Ex. 1002, 2.
Claims 6–8 depend from claim 1. Claim 6 additionally requires that
the “belly panel is adapted to cover the wearer’s belly region during
different stages of weight gains and losses.” Claim 7 additionally requires
that the “belly panel is adapted to substantially cover and fit over different
body types.” Claim 8 additionally requires that “the belly panel is elastically
expansible and contractible.” The JCP fold-over panel jeans meets these
limitations because the panel can change size and shape by stretching.
Ex. 1002, 2.
With respect to claim 7, Patent Owner argues that the JCP catalog
does not disclose (1) that the panel of the JCP fold-over panel jeans stretches
for purposes of covering different body types or (2) that it stretches enough
to cover different body types. PO Resp. 42–44. The reference need not
teach stretching for purposes of covering different body types. It need only
teach a belly panel that is “adapted to substantially cover and fit over
different body types.” The broadest reasonable construction of “different
body types” means two or more body types that are not identical. Also,
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claim 7 does not require the identical amount of coverage for the different
body types, just that each of two non-identical body types is substantially
covered and fitted. Thus, the limitation recited in claim 7 is very broad. The
stretchable panel of the JCP fold-over panel jeans satisfies the limitation
introduced in claim 7.
With respect to claim 8, Patent Owner argues that the JCP catalog
does not disclose explicitly that the panel of the JCP fold-over panel jeans is
contractible. PO Resp. 45. However, the catalog states that the JCP fold-
over panel jeans “stretch for comfort” and are made, in part, with spandex.
Ex. 1002, 2. Thus, we are persuaded that after the panel is stretched and the
stretching force is removed, it will contract.
Petitioner has shown by a preponderance of the evidence that claims
2, 3, and 6–8 are anticipated by the JCP fold-over panel jeans.
C. Claims 3 and 4 Would Have Been Obvious Over JCP Fold-Over
Panel Jeans and JCP Maternity Bootcut Jeans
Petitioner asserts that the subject matter of claims 3 and 4 would have
been obvious over the JCP fold-over panel jeans and JCP maternity bootcut
jeans. Pet. 34–37.
Page 19 of the JCP catalog describes and shows the maternity bootcut
jeans. Ex. 2002, 3. The catalog states that the garment includes a “[f]aux
fly” and “an all-around elastic belly panel that can be folded up or down
depending on your stage of pregnancy.” In the photographs, the all-around
belly panel is concealed partially by a shirt, as Petitioner concedes. Pet. 35.
Thus, and despite its name, it is not clear whether it is “adapted to
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substantially cover a wearer’s entire belly region,” as required by base
claim 1.
Claim 3 depends from claim 2 and additionally requires that the
trousers “comprise denim jeans.” Claim 4 depends from claim 3 and
additionally requires that the “denim jeans comprise one or more pockets
and a sewn zipperless fly front.” The JCP maternity bootcut jeans disclose
these additional limitations. The photographs clearly depict the jeans
portion of the garment as being denim and having pockets.
11
Ex. 1002, 3.
Also, a front fly, which is visible in one photograph, is described as faux.
Id. Thus, we are persuaded that it is sewn and zipperless.
Petitioner provides reasoning with rational underpinning for
substituting the jeans portion of the JCP fold-over panel jeans with the jeans
portion from the JCP maternity bootcut jeans, thereby resulting in the
subject matter of claims 3 and 4. Pet. 35–36. In particular, Petitioner points
out that both products are jeans having attached belly panels, which could be
swapped easily with one another through routine modification. Pet. 35.
Petitioner’s witness, Frances Harder, testified that swapping panels would
have been an obvious design choice to a person of ordinary skill in the art,
and that it was desired by customers. Ex. 1011 ¶ 25. Further, the swapping
of the panels and jeans does no more than yield predictable results. See KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (“The combination of

11
The photographs of the JCP maternity bootcut jeans better show the denim
aspect than the photographs of the JCP fold-over design jeans. Compare Ex.
1002, 2, with id. at 3.
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familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results.”).
Patent Owner argues that claims 3 and 4 are not obvious because
objective indicia, or secondary considerations, demonstrate their non-
obviousness.
12
PO Resp. 46–50; see also Graham v. John Deere Co., 383
U.S. 1, 17–18 (1966) (“Such secondary considerations as commercial
success, long felt but unsolved needs, failure of others, etc., might be utilized
to give light to the circumstances surrounding the origin of the subject
matter sought to be patented. As indicia of obviousness or nonobviousness,
these inquiries may have relevancy.”).
In particular, Patent Owner states that “[t]he success of the patented
Secret Fit Belly
®
styles, which practice all of the instituted claims of the
Patents-in-Suit including the claims challenged for obviousness, is
evidenced in the attached commercial success report.” PO Resp. 48 (citing
Ex. 2022
13
¶¶ 31–37; Ex. 2017, Exhibit 2). This is not an argument. It is an
invitation to scour Patent Owner’s evidence.
Also, Patent Owner’s reference to “the attached commercial success
report” is not clear. Nothing is “attached” to Patent Owner’s Response (nor
should anything be attached). The first citation is to Exhibit 2022, which is
entitled “Declaration by Philip Green Regarding Commercial Success” and

12
Patent Owner also argues that claims 3 and 4 are not obvious because the
JCP fold-over panel jeans do not teach the subject matter of claim 1, from
which they ultimately depend. PO Resp. 41–42. That argument fails, as
claim 1 is anticipated by the JCP fold-over panel jeans, as discussed above.
13
Exhibit 2022 is a declaration by Patent Owner’s witness Philip Green.
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may very well be what Patent Owner intended as the “attached commercial
success report.” However, Patent Owner also cites to Exhibit 2 of Exhibit
2017, which is “a report that [another Patent Owner witness, Dr.
Brookstein,] prepared showing that Secret Fit Belly
®
products practice the
claimed invention.” Ex. 2017 ¶ 11.
We have reviewed both of the cited sources, and we are not persuaded
by the purported evidence of commercial success of the inventions of claims
3 and 4.
Patent Owner asserts that the Secret Fit Belly
®
products embody each
of claims 1–4 and 6–8. PO Resp. 48. Patent Owner does not, however, link
the alleged commercial success of those products to the inventions of claims
3 or 4, as opposed to the invention of claim 1, for example, which is
anticipated by the JCP fold-over panel jeans. See J.T. Eaton & Co. v. Atl.
Paste & Glue Co., 106 F.3d 1563, 1571 (Fed. Cir. 1997) (“asserted
commercial success of the product must be due to the merits of the claimed
invention beyond what was readily available in the prior art”).
Patent Owner’s witness, Mr. Green, concedes that the commercial
success of Patent Owner’s products has nothing to do with the unique
characteristics of claims 3 and 4, which add limitations directed exclusively
to features of the trouser portion of the claimed invention. Claim 3 recites
“[t]he garment portion of claim 2, wherein said trousers comprise denim
jeans.” Claim 4 recites “[t]he garment portion of claim 3, wherein said
denim jeans comprise one or more pockets and a sewn zipperless fly front.”
Mr. Green states that “the commercial success of the Secret Fit Belly
bottoms is due primarily to the . . . patented features” earlier referenced in
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his declaration. Ex. 2022 ¶ 38. Nowhere in his declaration, however, does
Mr. Green reference any patented features unique to claims 3 and 4. In fact,
Mr. Green states:
Secret Fit Belly bottoms are available in various sizes, cuts, and
colors, including jeans, trousers, capris, skirts, and shorts.
[Patent Owner]’s Secret Fit Belly bottoms are similar in style to
all other bottoms offerings: generally the only difference is the
expandable panel that is the subject of the patents at issue in
this matter.
Ex. 2022 ¶ 20 (emphasis added).
Petitioner has shown by a preponderance of the evidence that claims 3
and 4 would have been obvious over the JCP fold-over panel jeans and JCP
maternity bootcut jeans.
D. Claim 1 is Anticipated by Browder
Petitioner asserts that claim 1 is anticipated by Browder. Pet. 49–51.
Browder discloses control undergarments. Ex. 1004, 1:7–16. Figure 3 is
reproduced below.

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Figure 3 illustrates a front view of high-waist brief 30. Ex. 1004,
2:40–41. The brief includes control area 35 that extends, upward from
crotch portion 38, “over the abdomen and ends below the wearer’s breasts.”
Id. at 3:55–64. The border between the crotch portion and control area
recedes downward in the front, as shown. Id. at Fig. 3. The control area
stretches. Id. at 3:39–46.
The control area is “an expansible belly panel” within the meaning of
claim 1. It stretches and is, thus, expansible. It is “adapted to substantially
cover a wearer’s entire belly region,” as also required by claim 1. See
Ex. 1004, Fig. 3, 3:55–57 (“control area 35 of high waist brief 30 is
extended over the abdomen and ends below the wearer’s breasts”).
An upper edge portion of the control area encircles the wearer’s torso
“at or above the wearer’s abdomen region,” and the lower edge portion
encircles the torso “about the wearer’s lower abdomen region,” as also
required by claim 1. The crotch portion meets the “garment lower portion”
limitation of claim 1; trousers are not required by the claim. The top of the
crotch portion recedes downward in the front and, thus, at least partially
below the wearer’s belly. Consequently, the crotch portion has “a torso
encircling circumference that recedes downward to make way for expansion
of the belly panel.”
Patent Owner argues that Browder does not anticipate claim 1 because
the control area is “designed to tighten, rather than expand.” PO Resp. 35
(conclusion after citing Ex. 1004, 3:37–38). This argument is not
persuasive. Patent Owner uses “tighten” as an antonym to “expand,” but
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Patent RE43,563 E

22
that is not how Browder uses the same root word. With reference to another
embodiment, Browder describes how a control area is made, stating:
Control area 25 is an area of the undergarment, in this example
brief 10, where increased control is desired. Increased control
in control area 25 is accomplished by tightening the fabric of
body 15 of brief 10 by using a 1 by 1 (1x1) alternating tuck
stitch pattern. Thus, the 1x1 alternating tuck stitch pattern
increases the modulus of the fabric. By increasing the modulus
of the fabric, the fabric stretches less and controls more.
Preferably, the modulus of the fabric is increased between about
6% and about 10%, more preferably about 8%. Increasing the
modulus by about 8% provides a desirable compromise
between control and comfort.
Ex. 1004, 3:35–46. Thus, the control area does not actively tighten rather
than expand when worn by a wearer. Instead, Browder discloses that, during
manufacture, the fabric of the control area is tightened to increase its
modulus, which makes it stretch less and control more. Ex. 1004, 3:35–46.
Browder expressly discloses that it stretches. Therefore, it is expansible.
Petitioner has shown by a preponderance of the evidence that claim 1
is anticipated by Browder.
III. MOTIONS TO EXCLUDE
Petitioner moved to exclude certain evidence relied upon by Patent
Owner to support its arguments for objective indicia of non-obviousness.
Paper 44. Resolution of Petitioner’s motion is unnecessary to this final
written Decision because, even considering the challenged evidence, Patent
Owner’s arguments that objective indicia demonstrate non-obviousness of
claims 3 and 4 are not persuasive. Accordingly, we dismiss Petitioner’s
Motion to Exclude as moot.
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Patent RE43,563 E

23
Patent Owner moved to exclude Petitioner’s Exhibits 1071, 1072,
1075–1077, 1080–1083, 1086–1092, 1110, 1116, and 2037.
14
Paper 51.
Resolution of Patent Owner’s motion is unnecessary to this final written
Decision because we do not rely on any of those exhibits is rendering our
Decision. Accordingly, we dismiss Patent Owner’s Motion to Exclude as
moot.
IV. CONCLUSION
Petitioner has shown by a preponderance of the evidence that claims
1–4 and 6–8 of the ʼ563 patent are unpatentable.
V. ORDER
Accordingly, it is
ORDERED that claims 1–4 and 6–8 of U.S. Patent No. RE43,563 E
are held unpatentable;
FURTHER ORDERED that both parties’ motions to exclude are
dismissed; and
FURTHER ORDERED that, because this Decision is final, a party to
the proceeding seeking judicial review of the Decision must comply with the
notice and service requirements of 37 C.F.R. § 90.2.

14
Despite its number, we understand that Exhibit 2037 was filed in this
proceeding by Petitioner. It appears that Petitioner numbered it “2037”
because that is the number Patent Owner already had assigned to the same
document when filing it as an exhibit being referenced in its motion to
amend in the related proceeding IPR2013-00531.
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Patent RE43,563 E

24
For PETITIONER:

Trevor Carter
Trevor.carter@faegrebd.com

Daniel Lechleiter
Daniel.lechleiter@faegrebd.com

For PATENT OWNER:

Paul Taufer
Paul.taufer@dlapiper.com

Michael Burns
Michael.burns@dlapiper.com

Stuart Pollack
Stuart.pollack@dlapiper.com