In a recent decision, the Federal Circuit has enabled design patent applicants to seek broader protection for three-dimensional designs—specifically those that, despite being embodied in three-dimensional articles, are “capable of being disclosed and judged from a two-dimensional, plan- or planar-view perspective.”1 In In re Maatita, the court articulated a standard for definiteness of design patent claims that may be familiar to most patent practitioners – whether one of ordinary skill in the art, when judging the claim and figures from the perspective of an ordinary observer, would understand the scope of the design with reasonable certainty.2 Therefore, while the “reasonable certainty” standard set forth in Nautilus3 is applicable in the design patent context, it is judged not simply from the perspective of one of ordinary skill in the art, but from the perspective of that person of ordinary skill when viewing the disclosure as would an ordinary observer. By connecting the standard for indefiniteness with the test for infringement in the design patent context, the court concluded that design patent claims should not be rejected simply because a design for a three-dimensional article is claimed in fewer than three dimensions.
On August 20, 2018, the Federal Circuit reversed indefiniteness rulings by the Patent Trial and Appeal Board (“the PTAB”), finding that a claimed design for a shoe bottom that was described by a single plan view drawing satisfied the definiteness and enablement requirements of 35 U.S.C. § 112.4 Despite acknowledging that the single drawing did not specifically define the shoe bottom in three-dimensions, the court determined that the drawing sufficiently disclosed the design such that a person of ordinary skill in the art, when viewing the design from the perspective of an ordinary observer, would understand the scope of the claimed design with reasonable certainty.5
In 2011, Ron Maatita filed design patent application no. 29/404,677, directed to an ornamental design for a shoe bottom, and including two figures, each depicting a single plan view of the claimed design.6 Both figures depicted the same claimed design using solid lines and differed only in their inclusion of different unclaimed environment, which according to U.S. design patent practice is depicted using broken lines.7 Figure 1 is reproduced below.
The examiner rejected the claimed design as indefinite and not enabled for allegedly being open to several patentably distinct interpretations. In support of the final rejection, the Examiner produced several three-dimensional renderings, reproduced below, that illustrated different depths and contours of a shoe bottom that could be described by the plan view drawings of the claimed design.8 The PTAB affirmed the Examiner’s rejections, agreeing that because the plan view could be interpreted as corresponding to various different three-dimensional embodiments, the claimed design was both indefinite and not enabled.9
On appeal to the Federal Circuit, the panel of Judges Dyk, Reyna, and Stoll disagreed with the PTAB.10 Assessing indefiniteness and enablement together,11 the court began by noting that the purpose of the definiteness requirement of § 112 is to ensure that potential infringers are given clear notice regarding the scope of what is claimed, explaining “it is clear that the standard for indefiniteness is connected to the standard for infringement.” Accordingly, in view of precedent from both design and utility patent cases,13 the court reasoned that because infringement of design patents is judged from the perspective of an ordinary observer, and because definiteness is based on the perspective of a person of ordinary skill in the art, “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.”14 While the court did not explicitly rely on Ex Parte Kaufman, which is a non-precedential PTAB decision regarding another shoe sole design, the court’s ruling here recognizes the difference between indefiniteness and claim breadth that was recognized in Kaufman.15
This decision appears to give greater freedom to design patent applicants to define the scope of their designs. For example, applicants may now be able to strategically file design applications that include a limited number of views, and effectively claim a single design that potentially corresponds to several different three-dimensional “embodiments.” This decision could have an even more immediate effect on design patent infringement litigation, where patentees might now argue that alleged ambiguity as to depth or contour, especially arising from a two-dimensional design intended for a three-dimensional article, does not support a case for indefiniteness, but instead supports an argument regarding broader claim scope. Of course, it remains to be seen whether the PTO will seek review of this decision, or whether the PTO will ultimately allow the subject application after the case is returned to the PTAB. Finally, it is unclear whether or how the USPTO, through the examining corps, may implement the Federal Circuit’s holding here. But in the meantime, In re Maatita will impact arguments and strategies both for design patent applicants and holders, and for accused infringers.
1 In re Maatita, 900 F.3d 1369, 1378 (Fed. Cir. 2018).
2 Id. at 1377.
3 Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2124 (2014) (“[A] patent is invalid for indefiniteness if its claims, read in light of the specification delineating the patent, and the prosecution history, fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention.”).
4 Maatita, 900 F.3d at 1379.
5 Id. at 1378.
6 Id. at 1371.
7 Id. at 1372.
8 Id. at 1373-74.
9 Id. at 1375.
10 Id. at 1371.
11 Id. at 1375 (explaining that because design patent claims are limited to the disclosure of the drawings, the concepts of definiteness and enablement are similar in the design patent context, and that “[i]n this case, in particular, . . . the indefiniteness and enablement inquiries are similar and can be assessed together.”).
12 Id. at 1376.
13 See id. at 1375-77 (citing Ex Parte Asano, 201 U.S.P.Q. 315, 317 (B.P.A.I. 1978); Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2129 (2014); Carnegie Steel Co. v. Cambria Iron Co., 185 U.S. 403, 437 (1902); Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 672 (Fed. Cir. 2008) (en banc); Gorham Mfg. Co. v. White, 81 U.S. 511, 528 (1871); Int’l Seaway Trading Corp. v. Walgreens Corp., 589 F.3d 1233, 1238 (Fed. Cir. 2009)).
14 Maatita, at 1376-77.
15 See id. at 1378-79 (“[T]he fact that shoe bottoms can have three-dimensional aspects does not change the fact that their ornamental design is capable of being disclosed and judged from a two-dimensional, plan- or planar-view perspective . . . . We do not, of course, suggest that an applicant for a design of a shoe bottom could not choose to disclose his design from a three-dimensional perspective, as many do. If so, that would be the scope of the claimed design for purposes of judging obviousness, indefiniteness, or infringement. That is not what Maatita has done here.”); see also Ex Parte Kaufman, Appeal 2012-003545, Serial No. 29/247,378, at 4-5 (P.T.A.B. Mar. 14, 2014) (“Appellant has made clear that the scope of the claim is broad in that it covers an ornamental design for only the portion of the shoe sole as viewed from the top elevation. This claim breadth does not render the claim indefinite.”).
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