In In Re Maatita, [2017-2037] (August 20, 2018), the Federal Circuit reversed the PTAB affirmance of the rejection of Maatita’s design patent application on the design of an athletic shoe bottom.

The Examiner rejected Maatita’s application containing a single two-dimensional plan-view drawing to disclose a shoe bottom design and left the design open to multiple interpretations regarding the depth and contour of the claimed elements. and indefinite under 35 U.S.C. § 112, and the PTAB affirmed.

The Examiner hypothesized four different designs, each of which were patentably distinct and therefore could not be covered by a single claim. Thus, the Examiner concluded that Maatita’s single claim was indefinite and not enabled, as one would not know which of the many possible distinct embodiments of the claim is applicant’s
in order to make and use applicant’s design.  The Board concluded that because the single view does not adequately reveal the relative depths and three dimensionality between the surfaces provided, the Specification does not reveal enough detail to enable the claimed shoe bottom, under 35 U.S.C. § 112, first paragraph, and that the same lack of clarity and detail also makes the scope of the claim indefinite under 35 U.S.C. § 112, second paragraph.

The Federal Circuit noted that because patent claims are limited to what is shown in the application drawings, there is often little difference in the design patent context between the concepts of definiteness (whether the scope of the claim is clear with reasonable certainty) and enablement (whether the specification sufficiently describes the design to
enable an average designer to make the design).  The Federal Circuit said that a visual disclosure may be inadequate—and its associated claim indefinite—if it includes multiple, internally inconsistent drawings.  However errors and inconsistencies between drawings do not merit a § 112 rejection, however, if they do not preclude the overall understanding of the drawing as a whole.  It is also possible for a disclosure to be inadequate when there are inconsistencies between the visual disclosure and the claim language.  However, the Federal Circuit said the present case does not involve inconsistencies in the drawings, or inconsistencies between the drawings and the verbal description, but rather a single representation of a design that is alleged to be of uncertain scope.  The Federal Circuit said the question was whether the disclosure sufficiently describes the design.

The purpose of § 112’s definiteness requirement, then, 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.  With this purpose in mind, it is clear that the standard for indefiniteness is connected to the standard for infringement.  Given that the purpose of indefiniteness is to give notice of what
would infringe, we believe that in the design patent context, one skilled in the art would assess indefiniteness from the perspective of an ordinary observer. Thus, 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.  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.

The 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 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. In this case, Maatita’s decision not to disclose all possible depth choices would
not preclude an ordinary observer from understanding the claimed design, since the design is capable of being understood from the two-dimensional, plan- or planar-view
perspective shown in the drawing.

Because a designer of ordinary skill in the art, judging Maatita’s design as would an ordinary observer, could make comparisons for infringement purposes based on the
provided, two-dimensional depiction, Maatita’s claim meets the enablement and definiteness requirements of § 112. The Federal Circuit reversed the decision of the Board.

It seems that the Federal Circuit is exempting design patent inventors from their part of the quid pro quo for protection — a complete disclosure of the invention.  Will the Supreme Court bother with another design patent case?

In Samsung Electronics Co., Ltd. v. Apple Inc., 580 U.S. ____ (2016), the Supreme Court reversed the award of $399,000,000 for infringement of Apple’s design patents  covering the iPhone (U.S. Patent Nos. D618677, D593087, and D604305).

35 USC §289 sets for a special damage remedy for design patents:

Whoever during the term of a patent for a design, without license of the owner, (1) applies the patented design, or any colorable imitation thereof, to any article of manufacture for the purpose of sale, or (2) sells or exposes for sale any article of manufacture to which such design or colorable imitation has been applied shall be liable to the owner to the extent of his total profit, but not less than $250, recoverable in any United States district court having jurisdiction of the parties.

The Court of Appeals for the Federal Circuit identified the entire Samsung phone as the “article of manufacture” for purposes of calculating §289 damages because consumers could not separately purchase components of the smart phone.  The Supreme Court, after looking up article of manufacture in the dictionary, concluded that an article of manufacture is broad enough to encompass both a product sold to a consumer, as well as  a component of that product.

Finding that the Federal Circuit’s narrower reading of article of manufacture cannot be squared with the text of §289, the Supreme Court reversed the award, and remanded for determination of whether the relevant article of manufacture is the smartphone, or a particular component of the smartphone.

On remand, it is entirely possible that $399 million damage award could be affirmed, if it is determined that the article of manufacture covered is the Samsung smart phone, and not simply some part of the smart phone.  U.S. Patent Nos. D618677 and D593087 disclose and claim an “electronic device” — which presumably covers at least some of the “innards” of the phone,

and U.S. Patent No. D604305 discloses and claims a “graphical user interface for a display screen or portion thereof” — which likewise would include at least some of the “innards” of the phone for generating the images on the display:

How these patents are treated on remand will be instructive on how design patents should be drafted going forward.  There may be an advantage in drafting the application so that the “article of manufacture” is a comprehensive (and profitable) as possible.

In High Point Design LLC v. Meijer, Inc., [2014-1464], the Federal Circuit in a non-precedential, but still instructive decision, reversed summary judgment of anticipation but affirmed summary judgment of non-infringement of U.S. Patent No. D598183 on a Slipper.

In reversing the district court’s finding of anticipation, the Federal Circuit said that “Design patent anticipation requires a showing that a single prior art reference is ‘identical in all material respects’ to the claimed design.”  View the evidence in the light most favorable to the patent owner, the Federal Circuit found that a reasonable jury could have found that there was not clear and convincing evidence of anticipation.

The Federal Circuit criticized the distraction court for not performing a side-by-side comparison, but instead concluding that the claimed design and the prior art share the same characteristics.  The Federal Circuit noted that the district court’s analysis was “on too high a level of abstraction,” failing to focus on the distinctive visual appearance of the prior art and the claimed design.  The detail of the analysis that the Federal Circuit undertook was instructive:

The Federal Circuit also pointed to differences in the soles of the slippers, resurrecting the infamous Contessa Food Prods., Inc. v. Conagra, Inc., shrimp platter case.

While the Federal Circuit reversed the district court’s summary judgment of anticipation, it affirmed the district court’s judgment of non-infringement with a similarly detailed comparison between the accused product and the patent.

The district court conducted a side-by-side comparison between the claimed design and the accused slippers, and concluded that the accused slipper “evokes a soft, gentle image” while the patented design “appears robust and durable.”  The Federal Circuit agreed, finding that “the patented and accused designs bring to mind different impressions.”  The Federal Circuit characterized the accused design as “soft and formless” while the patent design appeared “structured and formed.”

Differences in the soles of the designs also factored into the determination.

The Federal Circuit recognized that both designs essentially consist of a slipper with a fuzzy portion extending upward out of the foot opening, but said that such high-level similarities, are not sufficient to demonstrate infringement.

Although not precedential, the opinion is instructive on how to compare designs for purpose of anticipation and for purposes of infringement.

In Young v. Ann Stone, Inc., 1:13-cv-04920 (N.D. Ill. 2014) the district court granted judgment on the pleadings that defendant’s design for a golf practice target:

does not infringe U.S. Patent No. D442,661:

“because the two devices are so obviously dissimilar as to warrant a finding of non-infringement as a matter of law”.

In the words of the court, “[o]ne of the most obvious differences between the products is that top of the lower disk on defendant’s product is noticeably inclined, directing the ball upward to the center where it is held in place. Plaintiff’s design features a flat lower base with what appears to be a washer around the center column that holds the ball. This difference is readily apparent upon even a casual view of the two products.”  The court said that the spaced discs were functional and could not serve as the basis for a determination that its product infringes on the patented design, noting that “all of the prior art shares this feature” and finding that it is “the unique mechanisms among the products that contribute to the overall differences in appearance”.  In the context of the prior art such as U.S. Patent Nos. 1,297,055 and 2,899,207 , the district court’s decision makes even more sense:

Of note to design practitioners, is that the defendant’s arguments about the cap on the flag pole and the placement of the flag contributed to court’s finding that the designs were different:

Defendant argues that the rounded cap on plaintiff’s flagpole is substantially different from the tapered insert on defendant’s flagpole. The flag of the alleged infringer’s product also covers the top of the flagpole, while the suggested flag on the patented product (which is not a part of the patented design) appears to attach to the pole well below the cap in question, leaving the top of the flagpole visible. When the products are viewed as a whole, this difference adds to the impression that the two products are plainly dissimilar.

Most of the art of design patent drafting is deciding what to show and what not to show, and of what is shown, what is in solid and what is in dashed lines.  The court’s discussion of such details is a reminder to the careful prosecutor to pay attention.