Design Patents: Federal Circuit Jumps into COSPLAY Layering

In re Maatita (Fed. Cir. 2018) (Dynasty Footwear) (Before DYK, REYNA, and STOLL)

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.

Rejection Reversed.

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?

19 thoughts on “Design Patents: Federal Circuit Jumps into COSPLAY Layering

  1. 3

    The decision here is also in-line with the Federal Circuit’s ongoing undermining of the indefiniteness doctrine…

    I am not following. How does this decision “undermine” the concept of indefiniteness?

  2. 2

    Indeed Dennis, “one skilled in the art, viewing the design as would an ordinary observer” continues the Fed. Cir. muddling of the Fed. Cir. tests for 103 obviousness versus infringement of design patents, and there was no need for that strange legal statement, which is inconsistent with long established law as to WHOM a claim is “indefinite.” The panel could have merely said that showing tread depth was not relevant or 112 necessary to the claim coverage of the ornamental appearance* of a shoe tread pattern to an ordinary designer of shoe tread [or tire tread] patterns.

    *The only thing that counts for design patents.

    1. 2.1

      It is truly bizarre. Why on earth should it matter that an “ordinary observer” (??!!) could not find that a design patent drawing illustrates an ornamental design with “reasonably certainty”?

      I can see how the converse might be true, i.e., if an “ordinary observer” can understand it, then that would suggest that 112 has been met.

      But the greater point remains: it is ridiculous to try to shunt utility patent law into design patent law.

      1. 2.1.1

        Re: “..the greater point remains: it is ridiculous to try to shunt utility patent law into design patent law.”
        It does not have to be this ridiculous. Nor can it be avoided, since most patent statutes like 103 and 112 apply equally to both utility and design patents, and the Fed. Cir. does not have authority to re-write them.
        One would have thought the Apple v. Samsung design patents litigation saga on rounded beveled corners cases, etc., would have finally inspired some legislative reform interest, but apparently not.

        1. 2.1.1.1

          Nothing can inspire legislative interest. Literally nothing. In a world of Fox News polarization, the House-Senate-President progression of legislation is simply too burdensome to work for anything except absolutely must-pass legislation (and even then, it is going to fail catastrophically one of these days).

          Constitutional reform is a necessary prerequisite for serious patent reform (and there are a lot of reforms urgently needed from Congress). Anyone who wants patent reform should be working first for a constitutional convention. We need to restructure the bill-to-law legislative process to deal with a world of press polarization and ideologically coherent parties.

          1. 2.1.1.1.1

            Constitutional reform is a necessary prerequisite for serious patent reform

            ? I don’t see why.

            Anyone who wants patent reform should be working first for a constitutional convention.

            Sounds like fun! Who gets to attend?

          2. 2.1.1.1.2

            Save the political nonsense. More than 200 bills have been passed a signed by the President this Congress, and almost 800 have passed one or both houses and are awaiting further action. Maybe the bills you’re watching haven’t gone anywhere, but for sheer numbers, that’s probably an average or above pace. Certainly not significantly below as you imply.

            1. 2.1.1.1.2.1

              Throughout the 1970s, the average Congress saw ~760 bills enacted into law. Throughout the 1980s that average dropped to ~664 per laws enacted per Congress.

              Then in the 1990s the rate plunged down to ~486 laws per Congress. The rate continued to decline to 443 per Congress in the aughts.

              If we exclude the present Congress (whose term is not yet finished, and therefore whose total is not yet knowable), then there has been an average of ~300 laws per Congress throughout the twenty-teens.

              In other words, the facts support my hypothesis, not yours. The political branches are demonstrably losing the ability to pass legislation that can be signed into law.

              I contend that this is a function of increasing partisan polarization. There are political structures that are well adapted to functioning with such polarization (the U.K., for example). Now is the time to reform the system to adapt our institutions to deal with the increasing polarization.

              1. 2.1.1.1.2.1.1

                I would prefer to work on reducing the polarization rather than “adapting” to it (and thus cementing it into place).

        2. 2.1.1.2

          Nor can it be avoided, since most patent statutes like 103 and 112 apply equally to both utility and design patents, and the Fed. Cir. does not have authority to re-write them.

          No doubt that Congress bears responsibility here.

          But the CAFC could perhaps try harder to get their attention.

        3. 2.1.1.3

          The Federal Circuit of course cannot rewrite 102, 103 or 112. But it can certainly interpret them differently for utility patents and design patents, as they have. As an example, there is a long string of design patent case law for 103 (starting with In re Rosen) that is completely irrelevant to utility patent case law, and KSR has never been applied in the design patent context (although many have tried) since it makes no sense to do so. Another example is the 112 “make and use” requirement that only makes sense in the utility patent context. For design patents, the disclosure should only require a designer of ordinary skill to understand what the design looks like – how to make it and how to use it are irrelevant.

          1. 2.1.1.3.1

            But it can certainly interpret them differently for utility patents and design patents

            Can you explain how that is NOT rewriting the statutes?

            As far as I can tell, the statutes themselves are NOT written so as to give different meanings for the different contexts of design or utility.

            I think that you are far too generous in what you are labelling as “interpret.”

            I do not think that a single statute is properly interpretable to create requirement in one context and – and as you adroitly observe – “never apply” those requirements in another context. The law – as written either applies or does not apply. Creating/Inserting “context” differences that yield DIFFERENT laws is not “interpreting.”

            Bottom line? See post 1 below.

            1. 2.1.1.3.1.1

              When I used the word “interpret”, I meant that the courts through the case law provide guidance on how to apply the various statutes, much as SCOTUS did in Graham v. John Deere and KSR when it interpreted 103.

              Under your logic, all of the design patents granted in the modern era are invalid because – inter alia – none of them enable a designer of ordinary skill how to make the design, which is – last time I looked – a 112 requirement for patents. The fact is that design patents were shoehorned into 35 USC via section 171 without much thought (obviously) as to how the other sections of the statute might or might not apply. This is because design patents have always been the black sheep of the family, the afterthought, the Rodney Dangerfield of patents – until recently.
              Perhaps, in the aftermath of Apple v. Samsung, now is the time for some comprehensive legislation to fix that. And/or to put designs in the Copyright Office in a registration (non-examination) system, a la the Community Designs system in Europe, and in other more modern design protection regimes.

              1. 2.1.1.3.1.1.1

                The fact is that design patents were shoehorned into 35 USC via section 171 without much thought (obviously) as to how the other sections of the statute might or might not apply.

                Absolutely.

                And just as absolutely, does not change one iota what it means to interpret a law.

                What you are advocating is NOT interpretation.

                ANY of the changes you go on to mention are preferable to the current masquerade.

      1. 1.1.1

        I would definitely back a nomination by Congress to appoint Perry Saidman to be a point person (much like Judge Rich) on a panel to intelligently write a distinct design patent law system.

        1. 1.1.1.1

          As someone pointed out, the Congress is busy at the moment, so I don’t think they have room on their plate to consider a new design protection regime. However, it just so happens that I have been tinkering for awhile with amendments to the Vessel Hull Design Protection Act, Title 17, Chapter 13, to include all industrial designs. It’s a registration (i.e., non-examination) system run by the Copyright Office. Maybe I’ll dust it off.

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