August 24, 2018
On August 20, in In re Maatita, a Federal Circuit panel clarified how to assess enablement and indefiniteness with respect to design patents and applications, particularly regarding multi-dimensional articles. The court reversed the decision of the Patent Trial and Appeal Board (PTAB) that affirmed the examiner’s rejection of an application for a patent on the design of a shoe bottom, concluding that “the level of detail required should be a function of whether the claimed design for the article is capable of being defined by a two-dimensional, plan- or planar-view illustration.”
Inventor Ron Maatita filed a design patent application with two figures and a single claim. The application was titled “Shoe Bottom.” Figure 1 is reproduced below:
During prosecution, the examiner rejected the claim under 35 U.S.C. § 112, paragraphs one and two, alleging that the “claim is indefinite because the scope of protection sought is not disclosed in the specification or understandable as depicted in the drawings.” The examiner noted that the claim was not enabled “because the disclosed is not understandable to a designer of ordinary skill in the art without resorting to conjecture.” The examiner further stated that there “is no understanding of the shape, contour, relative placement, and orientation of the elements of the design to one other. The drawing is subject to multiple interpretations as it could be understood to be configured in a number of ways.”
By way of example, the examiner provided several examples that “could match applicant’s design when seen from a single viewpoint”:
The PTAB affirmed the examiner’s rejection, and Maatita appealed that decision to the Federal Circuit.
The Federal Circuit stated the purpose of section 112’s definiteness requirement as follows: “to ensure that the disclosure is clear enough to give potential competitors (who are skilled in the art) notice of what design is claimed—and therefore what would infringe.” The Federal Circuit explained that the standard for indefiniteness is connected to the standard for infringement, concluding that “a design patent is indefinite under § 112 if one skilled in the art, viewing the design as would an ordinary observer, would not understand the scope of the design with reasonable certainty based on the claim and visual disclosure.”
Applying this standard to the facts, the Federal Circuit stated that the level of detail required is a function of whether the claimed design for the article is capable of being defined by a two-dimensional plan- or planar-view illustration. Giving the examples of an entire shoe or a teapot, the court stated that they are inherently three-dimensional and could not be adequately disclosed with a single plan- or planar-view drawing because infringement would depend on the perspective chosen to view the article. This is in contrast to a rug or placemat, which could be viewed and understood in two dimensions.
The court recognized that a shoe sole is typically three-dimensional, but that “their ornamental design is capable of being disclosed and judged from a two-dimensional, plan- or planar-view perspective—and that Maatita’s two-dimensional drawing clearly demonstrates the perspective from which the shoe bottom should be viewed. A potential infringer is not left in doubt as to how to determine infringement.”
The In re Maatita decision is relevant for design patent prosecution because it provides guidance on how many views of an article are needed to fully disclose the scope of the design. The decision is also relevant for design patent litigation because it provides guidance on the standards and application of enablement and indefiniteness as related to the sufficiency of the drawings.
For more information on this ruling, please contact Fitch Even partner Jon A. Birmingham, author of this alert.
For more information on recent cases involving design patents, access a recording here of the August 2018 Fitch Even webinar, Design Patent Enforcement: Recent U.S. Court and PTAB Decisions.
Fitch Even IP Alert®