Fresh From the Bench: Latest Federal Circuit Court Cases

CASE OF THE WEEK

In re Ron Maatita, Appeal No. 2017-2037 (Fed. Cir. Aug. 20, 2018)

In an appeal from an examiner’s rejection, the Federal Circuit addressed a rare issue concerning the application of 35 U.S.C. § 112 to design patents.

The application contained a single claim directed to an ornamental design for the bottom of an athletic shoe sole, which was rejected based on the applicant’s use of a single, two-dimensional plan view.  The examiner found, and the PTAB affirmed, that the two-dimensional drawing left the design open to multiple interpretations regarding the depth and contours of the claimed elements, rendering the claim not enabled and indefinite under Section 112.

The Federal Circuit reversed, first observing that because design patent claims are limited to what is shown in the application drawings, the “definiteness” and “enablement” requirements are similar and can ordinarily be addressed together in design patent cases.  The Court distinguished cases finding non-enablement and indefiniteness where irreconcilable inconsistencies existed between application drawings, or between drawings and the claim language.  Rather, the Court held that the only question in Maatita’s case was whether the single representation sufficiently described the design.  Observing that the definiteness inquiry is driven by whether the claim provides sufficient notice as to what will or will not infringe, the Court held 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.”

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Written by: Scott D. Eads and Nika F. Aldrich, Schwabe, Williamson & Wyatt

Contributors: Jason Wrubleski and Karri Kuenzli Bradley, Ph.D.