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`Trials@uspto.gov
`Tel: 571-272-7822
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`Paper 6
`Entered: April 12, 2017
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`PANTIES PLUS, INC.,
`Petitioner,
`
`v.
`
`BRAGEL INTERNATIONAL, INC.,
`Patent Owner.
`
`Case IPR2017-00044
`Patent 7,144,296 B2
`
`Before MITCHELL G. WEATHERLY, KEVIN W. CHERRY, and
`JAMES A. WORTH, Administrative Patent Judges.
`
`WEATHERLY, Administrative Patent Judge.
`
`DECISION
`Instituting Inter Partes Review
`35 U.S.C. § 314, 37 C.F.R. §§ 42.4, 42.108
`
`I.
`
`INTRODUCTION
`
`A. BACKGROUND
`Panties Plus, Inc. (“PPI”) filed a petition (Paper 1, “Pet.”) to institute
`an inter partes review of claims 1, 2, and 5 (the “challenged claims”) of
`U.S. Patent No. 7,144,296 B2 (Ex. 1001, “the ’296 patent”). 35 U.S.C.
`§ 311. Bragel International, Inc. (“Bragel”) timely filed a Preliminary
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`Response. Paper 5 (“Prelim. Resp.”). Institution of an inter partes review is
`authorized by statute when “the information presented in the petition filed
`under section 311 and any response filed under section 313 shows that there
`is a reasonable likelihood that the petitioner would prevail with respect to at
`least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a);
`37 C.F.R. § 42.108. Based on our review of the record, we conclude that
`PPI is reasonably likely to prevail with respect to at least one of the
`challenged claims.
`PPI contends that the challenged claims are unpatentable under
`35 U.S.C. § 103 based on the following grounds (Pet. 5–61):
`
`References
`
`Canadian Patent App. No. 2,101,509 A1 (Ex. 1010,
`“Luckman”) and U.S. Patent No. 6,645,042 B2
`(Ex. 1011, “Davis”)
`
`U.S. Patent No. 6,231,424 B1 (Ex. 1012,
`“Valentin”) and U.S. Patent No. 6,857,932 B2
`(Ex. 1014, “Chen”)
`
`Basis
`
`Claims
`challenged
`
`§ 103 1, 2, and 5
`
`§ 103 1, 2, and 5
`
`U.S. Patent No. 5,755,611 (Ex. 1013, “Noble”),
`U.S. Patent No. 5,922,023 (Ex. 1015, “Mulligan”),
`and U.S. Patent No. 3,196,878 (Ex. 1016, “Hedu”)
`
`§ 103 1, 2, and 5
`
`Generally, Bragel contends that the Petition should be denied in its
`entirety. For the reasons described below, we institute an inter partes review
`of claims 1, 2, and 5 on all three grounds asserted above.
`B. RELATED PROCEEDINGS
`PPI identified as related matters the following district court
`proceedings in the U.S. District Court for the Central District of California:
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`Bragel International, Inc. v. Charlotte Russe, Inc. et al., 2:15-cv-08364 (the
`“CR Litigation”); Bragel International, Inc. v. Styles For Less, Inc. et al.,
`2:15-cv-01756 (the “SFL Litigation” and collectively with the CR Litigation,
`the “Related Litigation”); Bragel International, Inc. v. AGaci LLC, 2:15-
`cv-08439; Bragel International, Inc. v. E-Retail Society d/b/a Bra
`Society et al., 2:15-cv-07148; Bragel International, Inc. v. Charlotte
`Russe, Inc., 2:14-cv-07691; Bragel International, Inc. v. Remi Collections,
`LLC, 2:14-cv-02946; Bragel International, Inc. v. Love Culture, Inc., 2:11-
`cv-04336. Pet. 1.
`C. THE ’296 PATENT
`The ’296 patent generally relates to backless, strapless breast form
`systems that are designed to be worn in lieu of a traditional bra. Ex. 1001,
`Abstract. The ’296 patent explains that “externally worn articles are
`designed to replace a female human breast that has been surgically
`removed.” Ex. 1001, 1:45–47. More generally “[e]xternally worn articles
`that can be worn for the purpose of either enhancing or replacing human
`breasts are referred to a breast forms.” Id. at 1:47–49. The ’296 patent
`states that “[i]n addition to the demand for devices and methods for
`enhancing breast size and shape, there is also a demand for being able to use
`those devices and methods while wearing a full-range of clothing.” Id. at
`1:60–63. The subject matter of the ’296 patent addresses these problems.
`See id. at 1:60–2:72. By way of example, Figure 1 of the ’296 patent,
`reproduced below, depicts one embodiment of the breast form system in a
`front elevational view, including two breast forms 12 adjoined by a
`connector 14.
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`Figure 1 of the ’296 patent is a front view of a breast form
`system having a pair of breast forms adjoined by a connector.
`Each breast form 12 comprises a volume of silicone gel encased in a
`thermoplastic film, helping to provide a natural look and feel. Id. at 4:66–
`5:7. Each breast form also has a concave interior surface with a pressure
`sensitive adhesive layer so that breast forms 12 can be secured to the user’s
`breasts. Id. at 4:13–33. Connector 14 allows two breast forms 12 to be
`adjoined, allowing the user to create varying degrees of breast cleavage
`depending on where breast forms 12 are positioned on the user’s breasts. Id.
`at 3:42–53.
`Claim 1 is the only independent claim among the challenged claims
`and recites:
`1. An improved backless, strapless breast form system to be
`worn in place of a traditional bra, comprising:
`a pair of breast forms, wherein each breast form comprises:
`a volume of silicone gel encased between thermoplastic
`film material;
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`a concave interior surface facing towards a user’s breast
`having a pressure sensitive adhesive layer for securing
`the breast form to the user’s breast; and
`a connector adapted to adjoin the breast forms together,
`wherein the connector is positioned between inner sides of
`each of the breast forms.
`Id. at 8:48–59.
`
`II. ANALYSIS
`PPI seeks inter partes review on the grounds that claims 1, 2, and 5
`are unpatentable as obvious over three different combinations of prior art.
`Pet. 37–61. Bragel counters that inter partes review should be denied for
`three high-level reasons, including: PPI fails to identify all real parties in
`interest, Prelim. Resp. 4–9, the Board should deny the Petition in its
`discretion under 35 U.S.C. § 325(d), id. at 15–28, and the combinations of
`prior art asserted by PPI fail to render any claims invalid, id. at 28–54. For
`the reasons expressed below, we determine that Bragel’s first two arguments
`are unpersuasive. We also determine that PPI has persuasively demonstrated
`a reasonable likelihood of establishing that all three asserted grounds of
`unpatentability render claims 1, 2, and 5 obvious. Accordingly, we institute
`an inter partes review of all challenged claims on all asserted grounds.
`A. REAL PARTIES IN INTEREST
`PPI identifies itself as a real party in interest in these proceedings and
`represents that “[n]o other entities or persons other than the Petitioner has
`authority to direct or control Petitioner’s actions or decisions relating to this
`petition. Petitioner is funding all of the fees and costs of this petition.”
`Pet. 1. Bragel argues that PPI has failed to name all real parties in interest as
`required by 35 U.S.C. § 312(a)(2). Prelim. Resp. 3–9. According to Bragel,
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`Charlotte Russe, Inc. (“CR”) and Styles for Less, Inc. (“SFL,” collectively
`with CR, “the customer defendants”) are real parties in interest that must be
`identified in the Petition. Bragel argues that the failure to identify the
`customer defendants as real parties in interest “violates” § 312(a)(2) and
`requires that we deny the Petition. Id.
`Whether an entity is a real party in interest to a proceeding is a highly
`fact-dependent question. Office Patent Trial Practice Guide, 77 Fed. Reg.
`48,756, 48,759 (Aug. 12, 2012) (citing Taylor v. Sturgell, 553 U.S. 880
`(2008)). “A common consideration is whether the non-party exercised or
`could have exercised control over a party’s participation in a proceeding.”
`77 Fed. Reg. at 48,759 (citing Taylor, 553 U.S. at 895). “The concept of
`control generally means that ‘it should be enough that the nonparty has the
`actual measure of control or opportunity to control that might reasonably be
`expected between two formal coparties.’” Id. (quoting CHARLES WRIGHT, ET
`AL., 18A FED. PRAC. & PROC. §§ 4449, 4451 (2d ed. 2011)). The Board’s
`jurisdiction to consider a petition is not contingent upon a “correct”
`identification of all real parties in interest in the petition. Lumentum
`Holdings, Inc. v. Capella Photonics, Inc., Case IPR2015-00739, slip op. at 6
`(PTAB March 4, 2016) (Paper 38) (precedential). Later PTAB decisions
`indicate that a petition may be corrected after institution of trial to add a real
`party in interest if warranted without assigning a new filing date to the
`petition. E.g., Axon EP, Inc., et al. v. Derrick Corp., Case IPR2016-00642,
`slip op. at 3 (PTAB November 21, 2016) (Paper 17).
`Bragel does not explicitly argue that CR or SFL controls PPI’s
`participation in these proceedings. Nevertheless, Bragel implies that CR and
`SFL exert such control because of the degree to which all three entities have
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`cooperated in the Related Litigation. Prelim. Resp. 6–7. More specifically,
`Bragel notes that all three entities are represented in the Related Litigation
`by the same counsel, who also represents PPI here. Id. at 7 (citing Ex. 2021
`¶ 1; Ex. 2022 ¶ 1). Bragel also notes that all three entities rely on expert
`testimony from Ms. Yngvesdotter in the Related Litigation and that PPI
`submits a declaration from Ms. Yngvesdotter here. Id. at 7–8. Bragel
`further notes that all three entities are listed in Notices of Interested Parties
`filed in the Related Litigation under C.D. Cal. R 7.1-1. Id. at 6 (citing
`Ex. 2018; Ex. 2019).
`Without more definitive direct evidence that CR and/or SFL control
`PPI’s participation in these proceedings, we find that Bragel’s evidence is
`unpersuasive. Mere status as a co-defendant is insufficient to establish that
`the customer defendants had the required control over the filing of the
`Petition in this proceeding. 77 Fed. Reg. at 48,760. Additionally, PPI
`expressly states that “[n]o other entities or persons other than the Petitioner
`has authority to direct or control Petitioner’s actions or decisions relating to
`this petition. Petitioner is funding all of the fees and costs of this petition.”
`Pet. 1. The identification of PPI, CR, and SFL on “Notices of Interested
`Parties” merely reflects the co-defendant status of these entities in the CR
`Litigation or SFL Litigation. We do not find that the Notices are probative
`of whether CR or SFL controls PPI’s participation in this proceeding. On
`the current record, we are not persuaded that CR or SFL exert sufficient
`control over PPI to warrant a finding that either entity should be named as a
`real party in interest.
`Bragel also argues that a failure to name CR and SFL as real parties in
`interest would permit them to evade the estoppel provisions reflected in
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`35 U.S.C. § 315(e)(2) and unfairly “extend that window during with the
`Petition may be filed” by PPI without running afoul of the time bar under
`35 U.S.C. § 315(b). Prelim. Resp. 8–9. The presence or absence of estoppel
`under § 315(e)(2) does not inform an analysis of whether an entity should be
`named as a real party in interest. An entity’s status as a real party in interest
`is merely one of the necessary pre-conditions for justifying application of
`estoppel after the Board renders a final written decision. Control of a named
`party by an unnamed entity is the primary basis for determining whether the
`unnamed entity is a real party in interest.
`Bragel’s contention that adding CR or SFL as a real party in interest
`might “extend” the window for filing a petition by PPI without violating the
`time bar under § 315(b) is irrelevant. Bragel presents no argument that the
`Petition is barred or that the addition of CR or SFL would transform the
`Petition into one that is barred.
`In sum, PPI’s cooperation with and status as co-defendants with the
`customer defendants in the Related Litigation does not demonstrate
`persuasively that either CR or SFL has control or influence over PPI’s
`conduct of this proceeding. PPI has averred exactly the opposite in the
`Petition. Pet. 1. On this record, Bragel does not persuade us that the
`customer defendants have funded, directed, controlled, or influenced this
`proceeding in such a manner that they must be identified as real parties in
`interest or that the Petition should be denied for its failure to identify CR or
`SFL as a real party in interest.
`B. DISCRETIONARY DISMISSAL UNDER 35 U.S.C. § 325(d)
`Bragel argues that we should deny PPI’s request for inter partes
`review in our discretion under 35 U.S.C. § 325(d) because the Office
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`previously considered the prior art underlying grounds 2 and 3 and
`considered substantially the same arguments underlying ground 1. Prelim.
`Resp. 17. Section 325(d) states in pertinent part: “In determining whether
`to institute or order a proceeding under this chapter, chapter 30, or chapter
`31, the Director may take into account whether, and reject the petition or
`request because, the same or substantially the same prior art or arguments
`previously were presented to the Office.” 35 U.S.C. § 325(d). We deny
`Bragel’s request to exercise discretion not to institute based on § 325(d)
`because we do not consider any of the grounds presented by PPI to be based
`on “the same or substantially the same prior art or arguments previously
`presented to the Office.”
`1. Challenges Based on Valentin and Chen (Ground 2) and Noble,
`Mulligan, and Hedu (Ground 3)
`PPI’s Grounds 2 and 3 are based on prior art that was before the
`Office during prosecution of either the ’296 patent or its parent applications.
`However, the precise combinations of art forming the basis of Grounds 2
`and 3 were never applied by the Office against the claims in the ’296 patent,
`which differ in scope from those that issued in the parent patents. Bragel
`contends that claims at issue in prosecution of the U.S. Patent No.
`6,758,720 B2 (“the ’720 patent”)1 “incorporated numerous features recited
`in claim 1 of the ’296 Patent.” Prelim. Resp. 21 (citing Ex. 2029). Bragel
`states that one of those “features” is “an interior surface facing toward a
`user’s breast, wherein the entire interior surface has a pressure sensitive
`
`
`1 The ’720 patent is listed on the cover page of the ’296 patent as issuing
`from the first-filed patent application in the chain of priority for the
`’296 patent. Ex. 1001, cover page.
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`adhesive layer for adjoining the interior surface to the user’s breast.” Id.
`Bragel’s argument is unpersuasive because it depends upon the factually
`inaccurate implication that the quoted limitation appears in claim 1 of the
`’296 patent, when, in fact, it appears only in claim 1 of the ’720 patent.
`Compare Ex. 1001, 8:54–56 (claim 1 of ’296 patent), with Ex. 3003, 8:51–
`55 (claim 1 of ’720 patent). We are persuaded by PPI’s argument that the
`quoted portion of claim 1 of the ’720 patent, which was added in response to
`a final rejection, was the basis for its allowance by the Office. Pet. 12–13
`(citing Ex. 1009). The narrowed scope of claim 1 of the ’720 patent as
`compared to claim 1 in the ’296 patent renders the Office’s previous
`consideration of the prior art in Grounds 2 and 3 to be substantially different
`from arguments that PPI advances in those grounds. We have reviewed
`Bragel’s other contentions regarding the similarity of the prior art applied by
`the Office during prosecution of claims in priority applications to the
`’296 patent and find that none of those contentions warrants a discretionary
`denial of the Petition.
`2. Challenge Based on Luckman and Davis
`PPI’s Ground 1 is based upon the combination of Luckman and Davis,
`neither of which was presented to the Office during prosecution of the
`’296 patent or any of its parent applications. Prelim. Resp. 19. Bragel
`contends that PPI’s expert, Ms. Yngvesdotter, “essentially admits that Davis
`is substantially the same” as prior art considered by the Office during
`prosecution. Id. at 20. We find Bragel’s contentions to be unpersuasive as a
`mischaracterization of Ms. Yngvesdotter’s testimony. We are not persuaded
`that a discretionary denial of Ground 1 is warranted.
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`3. Bragel’s Desire for a Just, Speedy, and Inexpensive Resolution
`by the District Court
`Bragel, as part of its argument for a denial of the Petition pursuant to
`§ 325(d), argues that because the District Court in the Related Litigation has
`denied PPI’s motion for summary judgment of invalidity as having “no
`merit,” no reason exists to “‘tie[] up the Board’s limited resources’ . . . where
`the same arguments have already been rejected by . . . the District Court.”
`Id. at 27–28 (citing Exs. 2013, 2014, 2032, 2033). We find Bragel’s
`argument unpersuasive for two reasons. First, § 325(d) does not list rulings
`in a District Court as a basis upon which the Board may exercise discretion
`to deny a petition. See 35 U.S.C. § 325(d) (authorizing Board to consider
`prior art and argument previously presented to the Office). Bragel has
`identified no other applicable legal basis for considering parallel district
`court proceedings as a basis for denying a request for inter partes review.2
`Second, and more importantly, the Court of Appeals for the Federal
`Circuit (“CAFC”) has vacated the District Court’s grant of a preliminary
`injunction (Exs. 2015, 2016) because the denial of summary judgment of
`invalidity on which the preliminary injunction was based in part (Exs. 2013,
`2014) did not set forth “adequate findings” as required under Fed. R. Civ. P.
`52(a)(2). See Bragel Int’l, Inc. v. Styles for Less, Inc., et al., No. 2017-1328,
`slip op. at 5 (Fed. Cir. Jan. 5, 2017) (vacating grant of preliminary injunction
`and remanding for findings on PPI’s obviousness defense). Ex. 3001, 5.
`
`
`2 Bragel’s citation to Samsung Elecs. Co., Ltd. v. Rembrandt Wireless
`Technologies, LP, IPR2015-00114, Paper 14 (Jan. 28, 2015) at 7, is
`inapposite because the Samsung panel was considering whether arguments
`presented in the petition at issue were substantially similar to those presented
`in prior inter partes review proceedings within the Office.
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`Bragel failed to inform the Board of the CAFC’s Order, which eviscerates
`the factual basis of Bragel’s argument that the District Court has found that
`PPI’s “invalidity arguments have no merit.”3 Bragel also fails to inform the
`Board of the nature of the invalidity defenses asserted by PPI in the District
`Court, which precludes the Board from determining the degree to which the
`“same arguments” are before the Board and the District Court. Additionally,
`differences in the invalidity challenges presented by PPI in the Petition and
`in the District Court may justify different results before the Board and the
`District Court. See Novartis AG, et al. v. Noven Pharm., Inc., Case 2016-
`1678, 2016-1679, slip op. at 5–9 (Fed. Cir. April 4, 2017) (holding that prior
`rulings in District Court and Federal Circuit on patentability of claims does
`not preclude PTAB from reaching different result). Ex. 3002, 5–9.
`4. Conclusion
`For all the reasons described above, Bragel has not persuasively
`demonstrated why we should exercise discretion and deny the Petition.
`
`
`3 The Federal Circuit’s order vacating the District Court’s grant of a
`preliminary injunction was entered January 5, 2017, eight days before
`Bragel filed its Preliminary Response on January 13, 2017. Bragel should
`have notified the Board of the Federal Circuit’s ruling under 37 C.F.R.
`§ 42.11(a), which imposes upon Bragel a duty of candor and good faith
`before the Board. By signing the Preliminary Response, Bragel’s counsel
`certified that the Response complied with the requirements set forth in
`37 C.F.R. § 11.18(a), (b)(2). We remind counsel for all parties, but
`especially counsel for Bragel, that failing to notify the Board of known facts
`relevant to a party’s arguments may subject that party to sanctions under
`37 C.F.R. § 42.12. We also remind all counsel that, on its own initiative, the
`Board may order a party to show cause why sanctions should not be
`imposed. 37 C.F.R. § 42.11(d)(3).
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`C. CLAIM INTERPRETATION
`“A claim in an unexpired patent that will not expire before a final
`written decision is issued 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); see also Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131,
`2144–46 (2016) (affirming that USPTO has statutory authority to construe
`claims according to Rule 42.100(b)). When applying that standard, we
`interpret the claim language as it would be understood by one of ordinary
`skill in the art in light of the specification. 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.’”). Only terms which are in controversy need to be construed, and
`then only to the extent necessary to resolve the controversy. Vivid Techs.,
`Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).
`Neither party proposes express interpretations for any term appearing
`in any of the challenged claims. However, PPI draws our attention to an
`interpretation by the District Court for the Central District of California of
`“pressure sensitive adhesive layer” in claim 7 of U.S. Patent No. 6,852,001
`B2 (“the ’001 patent”).4 Pet. 25–26. Bragel does not express a position on
`the significance of the District Court’s prior interpretation of “pressure
`sensitive adhesive layer” as recited in claim 7 of the ’001 patent. Without
`further briefing on the import of the District Court’s ruling, we decline to
`
`
`4 The ’001 patent issued from a patent application in the priority chain for
`the ’296 patent. Ex. 1001, cover page.
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`comment upon it at this stage of the proceeding. Nevertheless, based on our
`review of the record before us, we determine that briefing during the trial on
`the express meaning of “a concave interior surface facing towards a user’s
`breast having a pressure sensitive adhesive layer for securing the breast form
`to the user’s breast” may assist us in resolving the dispute presented by the
`parties. Our review of the record also reveals that briefing on the express
`meaning of “adapted to adjoin the breast forms together” may assist us in
`resolving the dispute presented by the parties. Accordingly, we instruct the
`parties to address explicitly in their papers at trial the meaning of both
`phrases. Bragel shall address these issues in its Patent Owner Response, and
`PPI shall address them in its Reply. Both parties shall also identify any
`supporting evidence including at least evidence found in other claims, the
`Specification, and the prosecution history of the ’296 patent.
`D. THE CHALLENGES TO THE CLAIMS
`PPI challenges the patentability of claims 1, 2, and 5 on the grounds
`that the claims are obvious in light of various combinations of the following
`references: Luckman, Davis, Valentin, Chen, Noble, Mulligan, and Hedu.
`The Supreme Court in KSR International Co. v. Teleflex Inc., 550 U.S. 398
`(2007), reaffirmed the framework for determining obviousness as set forth in
`Graham v. John Deere Co., 383 U.S. 1 (1966). The KSR Court summarized
`the four factual inquiries set forth in Graham that we apply in determining
`whether a claim is reasonably likely to be unpatentable as obvious under
`35 U.S.C. § 103(a) as follows: (1) determining the scope and content of the
`prior art, (2) ascertaining the differences between the prior art and the claims
`at issue, (3) resolving the level of ordinary skill in the pertinent art, and
`(4) considering objective evidence indicating obviousness or
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`nonobviousness. KSR, 550 U.S. at 406. With these standards in mind, we
`address each challenge below.
`1. Obviousness in View of Luckman and Davis
`a) Luckman
`Luckman discloses “an external breast enhancement” acting “as a
`breast enlargement device, to be attached to the chest, over the natural
`female breasts.” Ex. 1010, Abstract. Luckman describes its breast
`enhancement device as having “a flexible silicone rubber material injected
`into the flexible shell of latex rubber” that results in a “more natural
`appearance and feel to the woman wearing it.” Id. at 3:3–4, 3:14–16.
`Luckman also describes that its device can “act as a bra.” Id. at 5:9.
`Luckman’s device includes silicone filler 18 within flexible shell 12 that is
`contoured to fit a single breast. Id. at 5:4–7, Figures 1, 2. Shell 12 includes
`rear peripheral edge 14 that is attached to the wearer’s chest wall using a
`“suitable adhesive.” Id. at 5:4–5.
`b) Davis
`Davis describes a “strapless, backless bra . . . including two cups and
`a connector” 16 for detachably connecting the two cups. Ex. 1011, Abstract;
`2:49–53, 4:12–14. The cups are attached to the user via double-sided
`adhesive tape 20 that is disposed on inside peripheral portions 30 of each
`cup 12, 14. Id. at 2:49–53, 4:52–63, Figure 3. Davis’s bra 10 purports to
`“enhance[] the appearance and provide[] uniform support of the user’s
`breasts” and is designed “for use with a greater variety of backless or other
`revealing clothing.” Id. at 2:29–34.
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`c) PPI’s Argument
`PPI contends that the combination of Luckman and Davis renders
`claims 1, 2, and 5 obvious. Pet. 26–37. PPI relies upon Luckman as
`teaching all elements of the challenged claims except for the connector, for
`which it relies upon Davis. Id. PPI also relies upon Luckman and Davis
`individually as each describing the “concave interior surface . . . having a
`pressure sensitive layer.” Id. at 28–29. PPI identifies in detail the manner in
`which it contends that every element of claims 1, 2, and 5 are described by
`the prior art. Id. at 26–37 (citing Ex. 1010, Abstract, 3:7–19, 3:22–23, 4:10–
`11, 4:19–20, 5:5–7, 5:17–19, 5:24–26, 6:9–11; Ex. 1011, Abstract, 2:15–20,
`2:29–31, 2:38–41, 2:44–47, 2:49–53, 4:12–16, 4:19–39, 4:50–63, 5:32–35,
`6:38–55, Figs. 1–3). PPI also contends that an ordinarily skilled artisan
`would have recognized that “silicone rubber is an elastomer that may come
`in a form of gel.” Id. at 28 (citing Ex. 1002 ¶ 88). PPI relies upon Ms.
`Yngvesdotter’s testimony that “considering the well-recognized needs in the
`prior art, e.g., to provide natural look and feel, together with breast
`enhancement, cleavage and push-up support, it would have been obvious to
`a POSITA to modify Luckman’s breast enhancement device to add Davis’s
`connector.” Id. at 34–35 (citing Ex. 1002 ¶¶ 81, 82, 92). PPI also argues,
`based primarily upon Ms. Yngvesdotter’s testimony, that an ordinarily
`skilled artisan would have considered the addition of Davis’s connector to
`Luckman’s breast forms to have been a predictable solution to a known goal
`of providing uniform support to both breasts. Id. at 36–37 (citing Ex. 1002
`¶ 94).
`
`16
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`IPR2017-00044
`Patent 7,144,296 B2
`
`d) Bragel’s Counterarguments
`Bragel argues that PPI’s challenge to the patentability of claims 1, 2,
`and 5 fails for two reasons. For the reasons expressed below, neither
`argument is persuasive at this stage of the proceeding.
`(1) Adhesive Layer
`Bragel argues that neither Luckman nor Davis describes the “concave
`interior surface facing towards a user’s breast having a pressure sensitive
`adhesive layer for securing the breast form to the user’s breast” recited in
`independent claim 1. Prelim. Resp. 33–34. The dispute turns on the scope
`of the quoted portion of the claim.
`PPI relies in part on an interpretation of “adhesive layer” rendered by
`a district court in a case involving a patent in the priority chain of the
`’296 patent in which that court purportedly found that “[t]he amount and
`type of pressure sensitive adhesive layer can vary, as can the portion of the
`interior surface to which [it] is attached.”
`Pet. 26 (quoting Ex. 1020, 5). PPI
`contends that Luckman’s adhesive on
`peripheral edge 14 of its surface 12 facing
`the breast meets the claimed limitation on
`the adhesive layer. Id. at 29 (citing
`Ex. 1010, 3:16–19, 3:22–23, 4:10–11).
`Peripheral edge 14 of the interior surface
`of shell 12 to which Luckman applies
`adhesive is illustrated in Luckman’s
`Figure 2, which is reproduced at right.
`
`17
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`IPR2017-00044
`Patent 7,144,296 B2
`
`PPI also argues that Davis describes the claimed adhesive layer as
`double-sided adhesive tape 20 with “breast-side medical grade non-
`sensitizing adhesive 26” on inside peripheral portions 30 of each cup 12, 14
`for attachment of the cups to the user as shown in Figure 3 of Davis, which
`is reproduced below. Id. at 29.
`
`
`
`Figure 3 of Davis is a view of the breast-facing side of its bra
`illustrating adhesive 26 on that breast-facing side.
`Bragel argues, without expressly interpreting the “concave interior
`surface” or the “adhesive layer,” that Luckman fails to describe the
`“adhesive layer” presumably because Luckman’s “peripheral edge” is not
`part of the “concave interior surface.” Prelim. Resp. 33–34. Bragel also
`argues that Davis describes its adhesive layer on the “peripheral portion 30,”
`which is presumably not part of the “concave interior surface.” Id. at 34.
`Neither party has offered an express interpretation of “a concave
`interior surface facing towards a user’s breast having a pressure sensitive
`adhesive layer for securing the breast form to the user’s breast.” Bragel
`appears to imply that the claim requires that the adhesive layer be applied to
`a concave portion of the “interior surface facing towards a user’s breast.”
`Alternatively, Bragel appears to imply that claim requires that the adhesive
`
`18
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`IPR2017-00044
`Patent 7,144,296 B2
`
`be positioned to contact the wearer’s breast when the breast form system is
`worn. PPI appears to imply that claim merely requires that the adhesive be
`positioned on any portion of the breast-facing surface of the claimed breast
`form system.
`Absent briefing with citations to relevant evidence, we decline to offer
`an express interpretation of the “adhesive layer.” Rather, we determine that
`PPI’s implied interpretation and its argument based on that interpretation
`demonstrates a reasonable likelihood of establishing that either Luckman or
`Davis or both describe the adhesive layer. Because resolution of the dispute
`may require an express interpretation of “a concave interior surface facing
`towards a user’s breast having a pressure sensitive adhesive layer for
`securing the breast form to the user’s breast,” we also direct the parties to
`address explicitly the meaning of this phrase at trial and cite relevant
`evidence from among at least other claims, the Specification, and the
`prosecution history.
`(2) Motivation to Combine Luckman and Davis
`Bragel argues that an ordinarily skilled artisan would not have added
`the connector of Davis to the breast enhancement devices of Luckman
`because Luckman’s “devices cannot be worn as a replacement for traditional
`bras and are not intended to be used without a bra for support.” Prelim.
`Resp. 35. Bragel relies heavily on testimony by Ms. Harder in which she
`draws the same conclusion about Luckman. Id. at 35–37 (citing Ex. 2001
`¶¶ 66, 80–82). However, Luckman directly contradicts Bragel’s argument
`when it describes that its devices can “act as a bra.” Ex. 1010, 5:9. Ms.
`Harder’s testimony also relies upon the same implied scope of the claimed
`“adhesive layer” that is already described above. Most of the cited
`
`19
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`IPR2017-00044
`Patent 7,144,296 B2
`
`testimony by Ms. Harder is unsupported by citations to other evidence,
`which reduces its probative value. See Ex. 2001 ¶¶ 80–82 (citing no
`evidence in suppo
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