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Can a design patent claim multiple three-dimensional embodiments
based on a two-dimensional illustration? The U.S. Court of Appeals for
the Federal Circuit (Federal Circuit) has reversed the Patent Trial and
Appeal Board (PTAB), creating a new test for the indefiniteness of
claimed ornamental features based on limited, two-dimensional
illustrations. In re: Maatita, No. 2017-2037 (Fed. Cir. August 20,
2018).
The applicant, Ron Maatita, filed U.S. Design
Patent Application No. 29/404,677 (unpublished) claiming a series of
features on an athletic shoe bottom. The rest of the shoe bottom was
disclaimed. The applicant included two two-dimensional drawings of the
shoe bottom which differed only in the unclaimed environment surrounding
the claimed features.
Maatita's Claimed Design (dashed lines indicate disclaimed subject matter)
During
prosecution, the examiner ultimately rejected the application under 35
U.S.C. § 112 as being indefinite since the two-dimensional plan views
left the design open to multiple interpretations regarding depth and
contour of the claimed features. Specifically, the applicant disclosed
only two-dimensional views for features which were three-dimensional in
nature. In a final rejection, the examiner included four different
possible three-dimensional embodiments of the claimed features. Because
these embodiments were patentably distinct, the examiner argued that
they could not be covered by a single claim. The examiner's position
was affirmed by the Patent Trial Board of Appeals (PTAB) on March 29,
2017.
Possible Embodiments Presented by the Examiner
On
August 20, 2018, the Court of Appeals for the Federal Circuit
unanimously reversed the PTAB. The Federal Circuit explained that,
"[t]he purpose of § 112's definiteness requirement … is 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." Maatita, slip op. at 9. The Federal Circuit then
linked the standard for indefiniteness to the standard for
infringement, adapting a test created by Egyptian Goddess, Inc. v.
Swisa, Inc. 543 F.3d 665, 672 (Fed. Cir. 2008) (en banc). In assessing
the indefiniteness of a design application of uncertain scope, the
Federal Circuit stated 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." Maatita, slip op.
at 10. "So long as the scope of the invention is clear with reasonable
certainty to an ordinary observer, a design patent can disclose multiple
embodiments within its single claim and can use multiple drawings to do
so." Id.
Rejecting the PTAB's argument that the claimed
design was indefinite because the two-dimensional plan views could be
applied to the three-dimensional features in a number of different ways,
the Federal Circuit stated 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." Id. at 12. "The design for an entire shoe … is
inherently three dimensional and could not be adequately disclosed with a
single, plan-, or planar-view drawing." Id. Comparatively, "[t]he
design of a rug … is capable of being viewed and understood in two
dimensions through a plan- or planar-view illustration." Id. "Such a
claim, with a single drawing, would cover all similarly designed rugs or
mats." Id. The Federal Circuit was not persuaded by the PTAB’s
argument that the varying surface depths of a shoe bottom impact the
visual impression of the claimed features. "[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 – and that
[applicant’s] two-dimensional drawing clearly demonstrates the
perspective from which the shoe bottom should be viewed." Id. at 13.
Rather, the “decision not to disclose all possible depth choices would
not preclude an ordinary observer from understanding the claimed design,
since the design is capable from being understood” from the
two-dimensional perspective in the drawing. Id.
The
Federal Circuit's decision may have a significant impact on the filing
strategy for design patent applications. Typically, design patent
applications include several figures showing the claimed ornamental
features from a variety of plan and orthogonal views. For large,
three-dimensional designs, this filing strategy will likely remain the
same.
However, for ornamental features adorning only a
single surface of a product, this ruling may provide an incentive to
provide fewer drawings from fewer perspectives to capture as much scope
as possible.
This ruling may also create some concern for
commercial entities trying to avoid infringement. Broader design
patent claims create a higher risk of infringing a claimed design. When
assessing design patents similar to Maatita's, designers and
manufacturers will have to carefully examine a product from the limited
perspectives shown in the design patent to determine their risk for
infringement. A three-dimensional component to a design may not be
sufficient to avoid infringement of a claimed design disclosed only from
a two-dimensional perspective.
It is not yet clear if
this case will be reheard en banc or if the U.S. Patent and Trademark
Office will file a petition for certiorari. Disputes involving design
patents rarely reach the Supreme Court. However, the significance of
this decision may be significant enough to warrant further review.
Source: Brinks Gilson & Lione
Author: Danielle Anne Phillip & Paul Lunsford
Editor: dora