In a case relating to the sufficiency of the drawings of a design patent application, the US Court of Appeals for the Federal Circuit found compliance with the enablement and definiteness requirements of 35 USC §112 where the applicant presented only a two-dimensional view of the design. In Re: Ron Maatita, Case No. 17-2037 (Fed. Cir. Aug. 20, 2018) (Dyk, J).
Design patent claims are defined by the application drawings, and 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). In this case, the Federal Circuit addressed enablement and indefiniteness together as analogous to an inquiry into hypothetical infringement.
Maatita submitted an application for a design patent that included only a plan-view of the sole of a shoe as viewed from below. The examiner rejected the application as indefinite and non-enabling because the depth and direction of features disposed on the shoe bottom could not be ascertained from the two-dimensional image.
The Patent Trial and Appeal Board agreed, concluding that “because the single view does not adequately reveal the relative depths and three dimensionality between the surfaces provided,” the specification was not enabling under § 112, ¶ 1, and that the resulting “lack of clarity” rendered the scope of the claim indefinite under § 112, ¶ 2. Maatita appealed.
The Federal Circuit, answering the question of “whether the disclosure sufficiently describes
the design,” explained that the standard for indefiniteness is connected to the standard for infringement. Citing its 2008 en banc decision in Egyptian Goddess v. Swisa, the Court explained that “[i]n the design patent context, one skilled in the art would look to the perspective of the ordinary observer since that is the perspective from which infringement is judged.” As the Court observed, “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.” Here, where the design was that of an athletic shoe sole, the Court concluded that the ornamental design in question was capable of being disclosed and judged from a two-dimensional perspective.
Indeed, in the view of the Federal Circuit, the fact that Maatita submitted only a two-dimensional drawing demonstrated the perspective from which the shoe bottom should be viewed in terms of an infringement analysis. The Court concluded that because a potential infringer is essentially instructed to interpret the design from the plan-view image of the shoe, i.e., from directly below only and without regard to three-dimensional aspects of the sole, such a potential infringer should be capable of determining infringement.
However, the Federal Circuit cautioned that the result is largely driven by the two-dimensional nature of the athletic shoe sole and that designs that are “inherently three-dimensional could not be adequately disclosed with a single, plan- or planar- view drawing.”
Practice Note: In design patents, a single plan-view drawing may provide adequate disclosure to meet definiteness and enablement requirements of § 112, instead affecting only the scope of the claim.