Ron Maatita’s design patent application covers a shoe bottom – as shown above. Note here that most of the markings in the drawing are dashed lines — for design patents these are “broken lines” that indicate “environmental structure or boundaries that form no part of the design to be patented.” See MPEP 1503. I used my MSPaint skills to focus in on the particular portions of the shoe sole having solid lines.
During prosecution, the USPTO (examiner then PTAB) rejected the patent — finding the claim indefinite and not enabled. The particular problem with the drawing is that it is a flat plan view and does not show the three-dimensional structure — what do these lines actually represent in terms of 3D hills and valleys? The figures below is more ordinary for a shoe sole design — showing more than just a plan-view of the base.
On appeal, the Federal Circuit began its analysis with some crazy-talk as to how indefiniteness should be interpreted for design patents:
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.
[Crouch’s Diatribe] Lets reiterate the newly sanctioned process here to see whether my crazy-talk statement holds true: A judge (not someone of skill in the art) must place herself in the shoes of a person of skill in the art (PHOSITA). Then, while in that cosplay mode, the pretend PHOSITA looks at the claimed design from the perspective of an ordinary observer (OO) to see whether it provides reasonably certain limits. Note here that the an Ordinary Observer is in the position of considering evidence and making factual conclusions — in this case, however, the same evidentiary rules do not apply and the determination is a question of law. I wonder what other yoga poses are available to the panel.
In walking through the actual level of detail required, the court explained that sometimes a two-dimensional illustration is sufficient.
The design for an entire shoe or teapot, for instance, is inherently three-dimensional and could not be adequately disclosed with a single, plan- or planarview drawing. Whether an article infringed would depend on the perspective chosen to view the article, and a two-dimensional drawing provides no fixed perspective for viewing an article. The article would be infringing from one perspective but not from another. The design of a rug or placemat, on the other hand, is capable of being viewed and understood in two-dimensions through a plan- or planar-view illustration, which clearly defines the proper perspective.
In this case, the court recognized that a shoe sole is a three-dimensional object, but that it is still possible to sufficiently disclose a shoe sole design using just a plan-view.
[T]he fact that shoe bottoms can have three-dimensional aspects does not change the fact that their ornamental design is capable of being disclosed and judged from a two-dimensional, plan- or planar-view perspective—and that Maatita’s two-dimensional drawing clearly demonstrates the perspective from which the shoe bottom should be viewed. A potential infringer is not left in doubt as to how to determine infringement.
In the end, this means that Maatita’s patent will be much broader in scope because it is not limited to any particular three-dimensional shape, but rather only a to the appearance from a particular perspective.
The decision here is also in-line with the Federal Circuit’s ongoing undermining of the indefiniteness doctrine — what does “reasonable certainty” mean to the court?