In re: Ron Maatita
Decided: August 20, 2018
Ron Maatita filed a design patent application for an athletic shoe bottom, which the Examiner rejected as indefinite under §112. The Examiner said that although athletic shoe bottoms typically have three-dimensional designs, the application included only a single two-dimensional plan view (face on) drawing of the claimed shoe bottom; and without the expected third dimension, the claimed design is indefinite because it is open to multiple interpretations regarding the depths and contours of its tread elements.
Maatita then appealed to the PTAB, which affirmed the Examiner’s rejection. On Maatita’s subsequent appeal to the Federal Circuit, the Court agreed with the Patent Office that athletic shoe bottoms are typically three-dimensional, but reversed the rejection.
The panel began by noting that the purpose of §112’s definiteness requirement is to enable competitors to determine whether their own designs would infringe a patented design. And because a design patent claim is infringed when an ordinary observer, familiar with the prior art, would think that an accused design is the same as the patented design, the Federal Circuit reasoned that this type of claim is indefinite if that same ordinary observer would not understand the claimed design’s scope with reasonable certainty. This is precisely what the PTO urged: Maatita’s claimed design is indefinite because an ordinary observer would not understand what specific three-dimensional tread structure the claimed two-dimensional design was supposed to represent.
The Federal Circuit rejected this argument, explaining essentially that Maatita’s drawing of a shoe bottom did not need to disclose a third dimension because his claim only covered a two-dimensional design of tread elements. More generally, the level of detail required in a design patent drawing depends on the scope of the claim: an application claiming a three-dimensional design would obviously need to depict that design in three dimensions, but one claiming a two-dimensional design would not need to include a drawing that shows an unclaimed third dimension.
The Court went on to say that Maatita’s claimed design was fully capable of being defined by a two-dimensional illustration, because the disclosed illustration would leave no doubt in an ordinary observer’s mind as to the perspective from which the claimed shoe bottom should be viewed: from the bottom, face on. And when viewing a competing shoe from the same perspective, a potential infringer would have no difficulty determining infringement.
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