PATENT CASE OF THE WEEK

In re Ron Maatita, Appeal No. 2017-2037 (Fed. Cir. Aug. 20, 2018)

In an appeal from an examiner’s rejection, the Federal Circuit addressed a rare issue concerning the application of 35 U.S.C. § 112 to design patents.

The application contained a single claim directed to an ornamental design for the bottom of an athletic shoe sole, which was rejected based on the applicant’s use of a single, two-dimensional plan view.  The examiner found, and the PTAB affirmed, that the two-dimensional drawing left the design open to multiple interpretations regarding the depth and contours of the claimed elements, rendering the claim not enabled and indefinite under Section 112.

The Federal Circuit reversed, first observing that because design patent claims are limited to what is shown in the application drawings, the “definiteness” and “enablement” requirements are similar and can ordinarily be addressed together in design patent cases.  The Court distinguished cases finding non-enablement and indefiniteness where irreconcilable inconsistencies existed between application drawings, or between drawings and the claim language.  Rather, the Court held that the only question in Maatita’s case was whether the single representation sufficiently described the design.  Observing that the definiteness inquiry is driven by whether the claim provides sufficient notice as to what will or will not infringe, the Court held 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.”

The Court further opined that, in the context of design patents, 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.”  By way of example, the Court observed that a design for an entire shoe or a teapot could not be adequately disclosed with a single, planar-view drawing, because in that case, whether an article infringed would depend on the perspective chosen to view the article.  By contrast, the design of a rug or placemat is capable of being viewed and understood in two dimensions, even with variations in pile or texture.

The Court held that for purposes of definiteness and enablement, the bottom of a shoe is more analogous to a placemat than a teapot, and thus capable of being disclosed and judged from a two-dimensional perspective.  Relying in part on precedent finding that a single claim can disclose multiple embodiments, the Court found that the applicant’s choice not to disclose all possible depth choices did not preclude an ordinary observer from understanding the claimed design and determining infringement.  The Court took pains to point out, however, that an applicant for a shoe bottom design could also choose to disclose the design from a three-dimensional perspective, which would then be the scope of the claimed design for purposes of judging obviousness and other determinations.

Opinion can be found here.