Tommy John Inc v. Pakage Apparel Inc

1. Case Identification

• Case #: IPR2024-01163
• Patent #: 10,834,974
• Filed: July 12, 2024
• Petitioner(s): Tommy John, Inc.
• Patent Owner(s): 0912139 B.C. LTD. (Pakage Apparel, Inc.)
• Challenged Claims: 1-13, 15-16

2. Patent Overview

• Title: Male Undergarment with Genital Pouch
• Brief Description: The ’974 patent describes a male undergarment featuring a body, a waistband, and an internal elastic stretch panel. This panel is attached inside the front portion of the garment and is dimensioned to gather the front fabric, creating a three-dimensional pouch to support the wearer's genitals.

3. Grounds for Unpatentability

Ground 1: Claims 1-13 and 15-16 are obvious over Kitsch in view of Brocks

• Prior Art Relied Upon: Kitsch (Application # US2008/0178369) and Brocks (Patent 5,461,729).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Kitsch discloses a male underwear garment with nearly all features of claim 1, including a body, waistband, and an internal stretch panel made of four-way stretch material that forms a pouch. Kitsch’s “side panels” are made of an elasticized mesh fabric and are attached inside the front of the brief to form a pouch compartment that cups and supports the genitalia.
  • Motivation to Combine: Petitioner argued that Kitsch does not explicitly teach the key limitation of claim 1[g]: attaching the stretch panel in a pre-stretched state so that its unstretched dimensions are smaller than the corresponding dimensions of the front portion, thereby "gathering" the fabric. Brocks allegedly remedies this by teaching the formation of a genital pouch by stitching elastic strips to fabric panels while the strips are in a stretched state. When the stretching force is released, the elastic contracts and causes a "shirring" or "gathering" of the fabric to form the pouch. A POSITA would combine Brocks’s gathering technique with Kitsch’s pouch design to create a more secure, supportive, and well-defined pouch.
  • Expectation of Success: A POSITA would have had a high expectation of success because the combination involved applying a known technique for pouch formation (stretched elastic attachment from Brocks) to a similar garment structure (Kitsch's elastic side panels). This modification would predictably enhance the pouch-forming function without requiring new materials or complex redesign.

Ground 2: Claims 1-9, 11, 13, and 16 are obvious over Carrillo in view of Brocks

• Prior Art Relied Upon: Carrillo (International Publication No. WO 01/37687) and Brocks (Patent 5,461,729).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner contended that Carrillo discloses a "hygienic elastic garment" for men's underwear with a U-shaped elastic panel sewn to the inner front portion. This panel has a vertical opening and is designed to gently pull the genitals forward for separation and support, mapping to the claimed stretch panel. Petitioner further argued a POSITA would have understood this elastic material to be four-way stretch to accommodate body movement and prevent tearing.
  • Motivation to Combine: Similar to the argument in Ground 1, Petitioner asserted that Carrillo does not explicitly teach attaching its U-shaped elastic panel in a stretched state to gather the front fabric. Brocks supplies this teaching. A POSITA would be motivated to apply Brocks's method of attaching stretched elastic to Carrillo's garment to better define the pouch area, improve support, and create more volume, thereby enhancing Carrillo’s intended function of genital separation.
  • Expectation of Success: The proposed combination was presented as a simple substitution of one known manufacturing method for another. A POSITA would have reasonably expected that attaching Carrillo's elastic panel in a stretched state, as taught by Brocks, would successfully gather the front fabric and create a supportive pouch.

Ground 3: Claims 10, 12, and 15 are obvious over Carrillo and Brocks, further in view of Kitsch

• Prior Art Relied Upon: Carrillo (International Publication No. WO 01/37687), Brocks (Patent 5,461,729), and Kitsch (Application # US2008/0178369).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon the combination of Carrillo and Brocks to address specific dependent claims. Petitioner argued Kitsch provides the teachings for a spandex blend material (claim 10), a specific garment construction (claim 12), and a dart seam for extra volume (claim 15). Kitsch explicitly discloses its elastic side panels are a spandex blend (80% Nylon/20% Spandex). It also teaches a conventional boxer brief construction where the front and rear portions are joined at a seam forward of the perineum, with the elastic panels attached at this seam. Finally, Kitsch describes a central dart seam in its pouch to create a "shelf-like plateau" and add volume.
  • Motivation to Combine: A POSITA seeking to implement or improve upon the Carrillo/Brocks design would look to analogous art like Kitsch for well-known features. To select a suitable material, a POSITA would be motivated to use Kitsch's high-performance spandex blend for its known stretch and moisture-wicking properties. For garment construction, they would adopt Kitsch’s standard and efficient method of joining front and rear panels. To improve pouch volume and fit, they would incorporate the common and effective technique of a dart seam as taught by Kitsch.

4. Arguments Regarding Discretionary Denial

• Fintiv Factors: Petitioner argued that discretionary denial under Fintiv is not warranted. The parallel district court case is in its earliest stages, with fact discovery just beginning. No significant proceedings, such as a Markman hearing, have occurred, and the trial date is distant, meaning an institution decision from the PTAB would issue well before trial.
• 35 U.S.C. § 325(d): Petitioner contended that denial under §325(d) is inappropriate because, while the primary references were submitted in an Information Disclosure Statement (IDS) during prosecution, the Examiner never relied on them in any rejection. Crucially, the specific combinations of Kitsch, Brocks, and Carrillo as presented in the petition were never considered, meaning the grounds are new and have not been previously evaluated by the Office.

5. Relief Requested

• Petitioner requests the institution of an inter partes review and the cancellation of claims 1-13 and 15-16 of the ’974 patent as unpatentable under 35 U.S.C. §103.