Federal Circuit Reverses PTAB Rejection Of Design Patent Application
On August 20, 2018, the Court of Appeals for the Federal Circuit (CAFC) issued an opinion reversing a decision of the Patent Trial and Appeal Board (PTAB) in which the PTAB had rejected a design patent application for indefiniteness. In re Ron Maatita, —F.3d—, (Fed. Cir. Aug. 20, 2018). The CAFC ruled that the PTAB had wrongly applied the indefiniteness standard in the context of a design patent claiming the design of the sole of an athletic shoe.
A design patent protects the ornamental design of a product, not its function. 35 U.S.C. § 171. Design patents are noteworthy not only because they protect non-functional elements of a product, but because, unlike utility patents, they allow a patent owner to recover an infringer’s total profits resulting from the infringement. 35 U.S.C. § 289.
In this case, the patent applicant had claimed a two-dimensional view of the bottom of an athletic shoe (a view looking straight up at the bottom of the shoe). The PTAB had agreed with the patent examiner that because there could be many three-dimensional implementations consistent with the two-dimensional drawing, the claimed design was indefinite and therefore not patentable.
Citing the Supreme Court’s decision in Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120 (2014), the CAFC noted that “a patent is indefinite for § 112 purposes whenever its claim, read in light of the visual disclosure (whether it be a single drawing or multiple drawings), ‘fail[s] to inform, with reasonable certainty, those skilled in the art about the scope of the invention.’” The CAFC explained that the purpose of the definiteness requirement “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.” Given that design-patent infringement turns on the impression an ordinary observer would have of the claimed design compared to the accused infringing product, “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.”
On the merits of the case before it, the CAFC observed that the ornamental design of an object like “an entire shoe or teapot” is “inherently three-dimensional” and so would require three-dimensional representation in the drawings of a design patent. But the CAFC found that the bottom of a shoe sole, while it can be a three-dimensional surface, is more like “a rug or placemat” that can be understood, and infringement evaluated, from a single two-dimensional drawing. The CAFC therefore found the claim definite and reversed the rejection.
In light of this decision, the design patent in question could be infringed by any number of different shoe designs. Especially in view of the more generous damages available for design-patent infringement compared to utility patent infringement, the decision is another reminder that manufacturers should carefully consider protecting the ornamental design of their products as well as their mechanical or electronic structure.