{"id":2172,"date":"2018-08-20T18:34:10","date_gmt":"2018-08-20T22:34:10","guid":{"rendered":"https:\/\/patents.harnessip.com\/?p=2172"},"modified":"2018-09-02T20:55:22","modified_gmt":"2018-09-03T00:55:22","slug":"if-the-drawing-is-sufficient-to-determine-infringement-it-complies-with-35-usc-%c2%a7112","status":"publish","type":"post","link":"https:\/\/patents.harnessip.com\/?p=2172","title":{"rendered":"If the Drawing is Sufficient to Determine Infringement, it Complies with 35 USC \u00a7112"},"content":{"rendered":"

In In Re Maatita<\/a>, [2017-2037] (August 20, 2018), the Federal Circuit reversed the PTAB\u00a0affirmance of the rejection of\u00a0Maatita\u2019s design patent application on the design of an athletic shoe bottom.<\/p>\n

The Examiner rejected Maatita’s application containing a single two-dimensional plan-view drawing to disclose a\u00a0shoe bottom design and left the design open to\u00a0multiple interpretations regarding the depth and contour\u00a0of the claimed elements.\u00a0and indefinite under 35 U.S.C. \u00a7 112, and the PTAB affirmed.<\/p>\n

\"\"<\/a><\/p>\n

The Examiner hypothesized four different designs, each of which were\u00a0patentably distinct and therefore could not be covered by\u00a0a single claim. Thus, the Examiner concluded that Maatita\u2019s single claim was indefinite\u00a0and not enabled, as one would not know which of the\u00a0many possible distinct embodiments of the claim is applicant\u2019s
\nin order to make and use applicant\u2019s design.\u00a0\u00a0The Board concluded that because the single\u00a0view does not adequately reveal the relative depths and\u00a0three dimensionality between the surfaces provided, the\u00a0Specification does not reveal enough detail to enable the\u00a0claimed shoe bottom, under 35 U.S.C. \u00a7 112, first paragraph,\u00a0and that the same lack of clarity and detail also\u00a0makes the scope of the claim indefinite under 35 U.S.C.\u00a0\u00a7 112, second paragraph.<\/p>\n

The Federal Circuit\u00a0noted that because patent claims are limited to what is\u00a0shown in the application drawings, there is often little\u00a0difference in the design patent context between the concepts\u00a0of definiteness (whether the scope of the claim is\u00a0clear with reasonable certainty) and enablement (whether\u00a0the specification sufficiently describes the design to
\nenable an average designer to make the design).\u00a0 The Federal Circuit said that a\u00a0visual disclosure may be inadequate\u2014and its associated\u00a0claim indefinite\u2014if it includes multiple, internally\u00a0inconsistent drawings.\u00a0 However errors and inconsistencies between drawings do not merit\u00a0a \u00a7 112 rejection, however, if they do not preclude the\u00a0overall understanding of the drawing as a whole.\u00a0\u00a0It is also possible for a disclosure to be inadequate\u00a0when there are inconsistencies between the visual disclosure\u00a0and the claim language.\u00a0 However, the Federal Circuit said\u00a0the present case does not involve inconsistencies in the\u00a0drawings, or inconsistencies between the drawings and\u00a0the verbal description, but rather a single representation\u00a0of a design that is alleged to be of uncertain scope.\u00a0 The Federal Circuit said the question was\u00a0whether the disclosure sufficiently describes\u00a0the design.<\/p>\n

The purpose of\u00a0\u00a7 112\u2019s definiteness requirement, then, is to ensure that\u00a0the disclosure is clear enough to give potential competitors\u00a0(who are skilled in the art) notice of what design is\u00a0claimed\u2014and therefore what would infringe.\u00a0\u00a0With this purpose in mind, it is clear that the standard\u00a0for indefiniteness is connected to the standard for\u00a0infringement.\u00a0\u00a0Given that\u00a0the purpose of indefiniteness is to give notice of what
\nwould infringe, we believe that in the design patent\u00a0context, one skilled in the art would assess indefiniteness\u00a0from the perspective of an ordinary observer. Thus, a
\ndesign patent is indefinite under \u00a7 112 if one skilled in the\u00a0art, viewing the design as would an ordinary observer,\u00a0would not understand the scope of the design with reasonable\u00a0certainty based on the claim and visual disclosure.\u00a0\u00a0So long as the scope of the invention is clear with reasonable\u00a0certainty to an ordinary observer, a design patent
\ncan disclose multiple embodiments within its single claim\u00a0and can use multiple drawings to do so.<\/p>\n

The fact that shoe bottoms can have three-dimensional\u00a0aspects does not change the fact that their ornamental\u00a0design is capable of being disclosed and judged from a
\ntwo-dimensional, plan- or planar-view perspective\u2014and\u00a0that Maatita\u2019s two-dimensional drawing clearly demonstrates\u00a0the perspective from which the shoe bottom should
\nbe viewed. A potential infringer is not left in doubt as to\u00a0how to determine infringement. In this case, Maatita\u2019s\u00a0decision not to disclose all possible depth choices would
\nnot preclude an ordinary observer from understanding the\u00a0claimed design, since the design is capable of being understood\u00a0from the two-dimensional, plan- or planar-view
\nperspective shown in the drawing.<\/p>\n

Because a designer of ordinary skill in the art, judging\u00a0Maatita\u2019s design as would an ordinary observer, could\u00a0make comparisons for infringement purposes based on the
\nprovided, two-dimensional depiction, Maatita\u2019s claim\u00a0meets the enablement and definiteness requirements of\u00a0\u00a7 112. The Federal Circuit reversed the decision of the Board.<\/p>\n

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.\u00a0 Will the Supreme Court bother with another design patent case?<\/p>\n","protected":false},"excerpt":{"rendered":"

In In Re Maatita, [2017-2037] (August 20, 2018), the Federal Circuit reversed the PTAB\u00a0affirmance of the rejection of\u00a0Maatita\u2019s 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 … Continue reading →<\/span><\/a><\/p>\n","protected":false},"author":2,"featured_media":0,"comment_status":"closed","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[10],"tags":[],"class_list":["post-2172","post","type-post","status-publish","format-standard","hentry","category-designs"],"post_mailing_queue_ids":[],"_links":{"self":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/2172","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/users\/2"}],"replies":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcomments&post=2172"}],"version-history":[{"count":1,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/2172\/revisions"}],"predecessor-version":[{"id":2174,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/2172\/revisions\/2174"}],"wp:attachment":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=2172"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=2172"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=2172"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}