Takeaway: A feature that is recited as only substantially covering a particular region may not be construed, under the broadest reasonable construction, to extend to the recited bounds of that region.

In its Final Written Decision, the Board found that Petitioner had shown by a preponderance of the evidence that all challenged claims (claims 1-4 and 6-8) of the ’563 patent are unpatentable. The ’563 patent “relates to a garment worn during different stages of pregnancy and different stages of postpartum body changes.”

The Board addressed claim construction, stating that claims in an unexpired patent are given their broadest reasonable construction in light of the specification of the patent. The Board first analyzed the term “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 argued that the claim required that a panel reach just beneath the wearer’s breast area, but the Board disagreed, finding that it was the belly region that was required to extend that far. With regard to the term “just beneath the wearer’s breast area,” the Board found that construction was unnecessary because the term refers to the belly region and not the belly panel. Turning to the term “expansible belly panel,” the Board defined the term as “a belly panel that is expandable,” disagreeing with Patent Owner’s proposal that the term be limited to covering a pregnant abdomen.

Next, the Board addressed the term “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.” Noting that the “upper abdomen region” is not clearly defined by the claim, the Board consulted the specification, finding that the region would be “that portion of the abdomen superior to the maximum girth of the abdomen.” Thus, the limitation “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,” which could vary based on the wearer or even based on the stage of pregnancy.

Finally, the Board analyzed the term “belly panel . . . adapted to substantially cover and fit over different body types” of claim 7, finding that Patent Owner’s arguments did not provide any quantification for the amount of stretching required to “substantially cover and fit over different body types.” Thus, the Board found the limitation to be 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.”

The Board next addressed the asserted grounds of unpatentability. Addressing anticipation based on a JC Penney catalog for fold-over panel jeans, the Board disagreed with Patent Owner’s assertion that the product shown in the catalog did not disclose a panel extending “high enough on the wearer’s body.” The Board found that the JC Penney catalog disclosed a panel substantially covering the belly region and noted that it was the belly region, and not the panel, that the claims require to extend to just beneath the wearer’s breast area. Thus, the Board was persuaded that claims 1-3 and 6-8 were anticipated by the JC Penney reference.

With respect to dependent claims 3 and 4, Petitioner asserted obviousness based on the JC Penney catalog applied to claim 1 in view of JC Penney Bootcut jeans. Patent Owner alleged nonobviousness based on the secondary consideration of commercial success. First, the Board found Patent Owner’s claim of commercial success to be “an invitation to scour Patent Owner’s evidence” rather than an argument, based on Patent Owner’s conclusory statement and string citation to its Exhibits. Reviewing the cited sources, the Board was not persuaded. Even if the products asserted to be commercially successful embodied claims off the ’563 patent, Patent Owner had not linked “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.” The Board also noted that Patent Owner’s expert conceded “that the commercial success of Patent Owner’s products has nothing to do with the unique characteristics of claims 3 and 4.” Thus, the Board was persuaded that claims 3 and 4 were unpatentable.

Regarding the final ground of anticipation of claim 1 by Browder, Patent Owner argued that the reference disclosed a control area that would “tighten, rather than expand.” The Board found this argument unpersuasive because “Browder expressly discloses that it stretches. Therefore, it is expansible.”

Turning to the motions to exclude, the Board dismissed as moot Petitioner’s Motion to exclude certain of Patent Owner’s evidence of secondary considerations because the evidence was nonetheless unpersuasive. The Board also did not rely upon Petitioner’s evidence subject to Patent Owner’s Motion, and therefore, also dismissed Patent Owner’s Motion as moot.

Target Corp. v. Destination Maternity Corp., IPR2013-00530
Paper 79: Final Written Decision
Dated: February 12, 2015
Patent: RE43,563 E
Before: Jennifer S. Bisk, Michael J. Fitzpatrick, and Mitchell G. Weatherly
Written by: Fitzpatrick
Related Proceedings: Destination Maternity Corp. v. Target Corp., Case No. 2:12-cv-05680-AB (E.D. Pa.); IPR2013-00531; IPR2014-00508; IPR2013-00532; IPR2013-00533; IPR2014-00509