In re Maatita: Has the Court Radically Redesigned Design Patent Coverage?

By Professor Sarah Burstein, University of Oklahoma College of Law

In re Maatita (Fed. Cir. 2018) – Dyk (author), Reyna & Stoll

[Professor Crouch already summarized the facts and the basics of the court’s decision here. I don’t want to re-cover the same ground but I will note this isn’t the first time Judge Dyk has engaged in what Professor Crouch aptly describes as design patent “cosplay layering.” See In re Seaway, which I discuss at FN 131 here.]

So, this is bad. This is really bad.

Maatita claimed a three-dimensional design for a “Shoe Bottom.” He illustrated the design he sought to patent with a single view, as shown below:

A U.S. design patent can only claim one design. Multiple embodiments of the same design may be claimed “only if they involve a single inventive concept according to the nonstatutory double patenting practice for designs.” MPEP § 1504.05.

The PTO viewed Maatita’s drawing as a claim for multiple “designs.” As the examiner’s illustrations (shown below) demonstrate, the segments of the shoe portion shown in Maatita’s drawing could—without more information—cover shapes of varying depth and could be either convex or concave:

And those are just a few examples of the range of three-dimensional designs potentially covered by Maatita’s claim. The PTO rejected Maatita’s claim under § 112 because it failed to make clear which of those designs was actually being claimed.

The Federal Circuit reversed. According to the Federal Circuit, a design patent claim is indefinite only “if it includes multiple, internally inconsistent drawings” or if “there are inconsistences between the visual disclosure and the claim language.”

Here, according to the Federal Circuit, it was perfectly clear what Maatita was claiming—namely, a configuration of indeterminate and potentially variable depth. In other words, the court found it clear (and was apparently untroubled by the fact) that Maatita was disclaiming “the relative depths and three dimensionality between the surface.” Thus, according to the Federal Circuit, the claim was neither indefinite or non-enabled under § 112.

To support its conclusion, the court conflated configuration and surface-ornamentation designs. According to the court, if a design for the surface ornamentation of a rug can be illustrated using a single “two-dimensional, plan- or planar-view,” there was no reason why a configuration design of indeterminate depth could not be so claimed, as long as it was clear what angle the ordinary viewer should view the design from. But surface-ornamentation and configuration are completely different types of designs. They should not be treated the same in all instances. The fact that an ordinary observer would view the surface-ornamentation design for a rug to be “the same” design (which is, after all, the test for infringement) whether it was used in a high-pile or low-pile rug does not mean that an ordinary observer would think that all of the shoe-sole designs claimed by Maatita were, in fact, “the same” design. Consider the examiner’s examples shown above. If a design patent claimed one of those, it wouldn’t be infringed by the others. If they’re not considered “the same” design for the purposes of infringement, they should not be considered “the same” design for the purposes of § 171.

If Maatita is read as holding that a 3D design of indeterminate depth is, in fact, a single “design” under § 171, then the Federal Circuit has radically redefined the concept of a patentable “design” to a degree not seen since In re Zahn (I discuss that decision in Section III(A)(2) here). In Zahn, the CCPA said it was okay to claim a “design” for the configuration of just a portion of an article of manufacture. Post-Zahn, applicants could craft claims that would be infringed even if the overall shape of the article differed, as long as the claimed portion looked the same.

But at least in Zahn, it was clear what the claimed portion looked like. Maatita has opened the door to design claims of unprecedented (or, at least, not previously judicially-sanctioned) breadth. It is true that the PTO already allowed applicants to claim designs of indeterminate length using brackets or similar drawing conventions. But it’s very different to say that a design for, say, crown molding is “the same” whether it’s six inches or six feet long, and quite another to say that all the shoe-sole configuration variations above (let alone the numerous other potential variations) are “the same.”

Moreover, unlike design patent examiners, patent attorneys and agents are not required to have any training in design. It may, therefore, be difficult for them to imagine and effectively communicate (e.g., by drawing) the scope of Maatita-type claims. This adds a further layer of complexity and potential peril for clients who wish to clear their new designs and determine their freedom to operate.

I hope the PTO will seek to have this case reheard en banc. Or even petition for certiorari. If they don’t, I hope that they will reject this claim on remand under § 171 on the grounds that it claims more than one “design for an article of manufacture.” After all, the Federal Circuit did not directly rule on that issue—though, admittedly, parts of the decision may be read as supporting that view. The better view is that those parts were merely instances of accepting Maatita’s views for the purposes of argument, since the single-design issue wasn’t necessary to the court’s ultimate disposition of the § 112 issues.

It may be that this decision is simply a part of a larger Federal Circuit campaign to, as Professor Crouch puts it, “undermin[e] . . . the indefiniteness doctrine.” But I’d like to suggest that this is yet another example of the evil Zahn hath wrought, with its radical redefinition of what constitutes a “design.” If the “design” mentioned in § 171 is whatever the applicant says it is, it’s difficult to see how courts will ever be able to apply § 112 in a coherent or logical way. (Of course, the word “design” itself isn’t terribly helpful in and of itself as I discuss in more detail here.) Perhaps this case is just another sign that the time has come for a re-appraisal of what types of “designs” U.S. design patent law can—and should—protect.

= = = =

Prof. Burstein tweets about design patents @design_law

30 thoughts on “In re Maatita: Has the Court Radically Redesigned Design Patent Coverage?

  1. 6

    I know it’s late to comment on this article by Prof. Berstein, but I feel compelled that I express my opinion on the Maatita decision. First, I concur with my friend Mr. Saidman that the ornamental design claimed in Maatita is just the two dimensional bottom surface of the treads of a shoe sole shown in solid lines. Effectively, applicant is claiming a portion of a portion of a shoe. That is, applicant is merely claiming as their ornamental design the bottom surface of the treads of a shoe sole shown in solid lines. The fact that the treads may be raised or recessed is irrelevant since applicant does not consider that to be part of their ornamental design. The fact of the matter is, the specific height or recess of the treads is primarily a functional consideration rather than an ornamental consideration, so why would applicant want to limit their design claimed to include a specific height or depth that has no ornamental aspects. The true ornamental aspects of a tread for a shoe sole is the two dimensional appearance of the bottom surface.

    Prof. Berstein seems to hold In re Zahn responsible for the Maatita decision. However, long before the Zahn decision design patents were being issued on ornamental designs embodied in less than a complete article of manufacture. For example, in the 1871 decision of Gorham v White the ornamental design was for the handles of table spoons and forks, just the handles. In addition, in the 1967 decision of In re Blum the ornamental design claimed was for a handrail unit with just the handrail shown in solid lines and the support members depicted in broken lines and forming no part of the ornamental design claimed. Furthermore, the court held in Blum that “there is a distinction to be observed between parts of the total article illustrated, in which a new design is embodied, and parts of that article which embody none of the design.” Clearly the court was saying that an ornamental design could be embodied in less than the complete article. If the Design Group of the USPTO had followed the holdings of the court in Blum there wouldn’t have been a Zahn decision.

    As for my friend Mr. Saidman’s suggestion for a new design registration law, I’ll remind everyone that for almost 30 years, starting with the Willis Bill introduced in the 85th Congress in 1957 there was a push to enact a design registration law supported by the USPTO. However, there never seemed to be enough interest in Congress or support by the ABA and AIPLA for such a design registration law. I may be wrong, but I doubt seriously that there is any interest in Congress or adequate support by the ABA and AIPA for such a Bill now.

    1. 6.2

      There is a session scheduled at the 2018 Design Law conference in October in Washington DC called “Examination vs. Registration”, where the debate will commence/continue. I will be a panelist. Many clients (and potential clients) are frustrated with the high cost and lengthy pendency of a design patent (paradoxically, the USPTO is proposing increasing the fee for “rocket docket” expedited handling of a design application from $900 to $2,000; go figure). And probably 99% of design patents get hung on a wall, never to be enforced. Why pay so much for a right that will simply hang on a wall? The EU has a better system, a registration system, whereby nearly all applicants get a registration, but examination for validity takes place only when a competitor is sufficiently financially motivated to file an invalidity action.

      1. 6.2.1

        I agree with you Perry that the time has come for a design registration system in the U.S.. I sense from my consulting work that the design examination process has deteriorated considerably. I think the USPTO should have been looking to move toward that direction once the U.S. became a member of the Hague Agreement. However, I maintain that it would be a long and arduous process to enact a design registration law. First you will need strong support from both the ABA and AIPLA and at least some support from upper management of the USPTO. Next you would need to find at least one member of Congress that has enough interest in a Design Registration Bill to introduce it into the House of Representatives. If you achieve all of that you then need a majority in Congress and the Senate to vote “yes” for such a Bill. That’s a difficult task. That being said, if I can be of any assistance in pursuing this goal let me know.

  2. 5

    The Maatita decision is good. It is really good.

    Prof. Burstein sounds an unnecessary alarm regarding Maatita. The case is a welcome development to design patent owners/applicants, especially in view of the anti-design patent forces typified by the good professor.

    The very first sentence indicates the depth of misunderstanding: “Maatita claimed a three-dimensional design for a “Shoe Bottom”. He did not. He claimed a two-dimensional design. The Court recognized this:

    “…. [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.”

    Slip op. at 13.

    It would be accurate to say that Maatita claimed a two-dimensional design of a three-dimensional product. Even if a 3D product forms the underlying basis of a design patent application, it has nothing to do with whether the applicant wishes to claim two-dimensional or three-dimensional aspects of the product. Don’t confuse the nature of the product with a design patent application claiming an aspect of the product.

    She argues that the claimed design of a portion of a drill bit in In re Zahn is ok, but Maatita is not, because in Zahn “it was clear what the claimed portion looked like”. I have no problem, nor would any designer of ordinary skill, or any other design lawyer I know, understanding what Maatita’s claimed design looks like. Nor would I have any problem comparing that claimed design to an accused product. Simply because the claimed design is broad, i.e., covers a number of possible accused designs, does not mean it does not comply with §112.

    Perhaps the outline of the claimed elements is the subject matter which the designer regarded as his/her design (as required by §112(b)), and is the “DNA” of what he/she wanted to claim, so that a copyist could not merely change the depth of some elements and avoid infringement; they’d have to change the DNA, i.e., not copy the essence of the design. If the various depths of the elements of the 3D product had been claimed, it would be a roadmap for the infringer to avoid the claim. The message to the copyists is: go create your own DNA, don’t copy Maatita’s.

    The good professor laments that if Maatita is read as holding that a 3D design of indeterminate depth is, in fact, a single “design” under § 171, then the Federal Circuit has radically redefined the concept of a patentable “design”. But as noted above Maatita does not claim a 3D design; it claims a 2D design consisting of the elements shown in solid lines in the single plan view. It is true that the claimed 2D design is likely based on a 3D product, but there can be no mistake – as noted by the Court – that no such 3D design was being claimed by Maatita. So, there is no radical redefinition.

    It would be well for the good professor to remember that ALL design patent drawings are 2-dimensional – that is the very nature of a drawing – and at some point during examination and infringement proceedings each such 2-dimensional drawing (there are typically 6 or 7 of them in a single design application) – is required to be compared – one by one – to corresponding views of either the prior art or the accused design. Just because the drawing is 2-dimensional does not prevent such a comparison; such comparisons occur every day. Just because such a 2-dimenional drawing happens to be the only drawing in a design patent does not prevent it from being compared to the prior art or to an accused design viewed from the same perspective. Just look at them.

    Regarding the §171 arguments, the Maatita patent claims one and only one design – the one shown in solid lines in the drawing figure. If it is a broad claim – if it perchance covers more than one possible configuration of the claimed elements – so be it. There is no prohibition against broad claims. The brake on overbroad claims – as always – is the prior art.

    1. 5.2

      Perry:

      Maatita does not claim a 3D design; it claims a 2D design consisting of the elements shown in solid lines in the single plan view.

      So a 3D surface on a shoe sole that happens to match the shoe surface doesn’t infringe. Okay, that’s good to know.

      If the various depths of the elements of the 3D product had been claimed, it would be a roadmap for the infringer to avoid the claim.

      News flash: the 2D design is also a roadmap for the infringer to avoid the claim.

      ALL design patent drawings are 2-dimensional – that is the very nature of a drawing

      Well …. sure … except that some design patent drawings clearly depict designs for 3 dimensional ornamentation. And some definitely don’t.

      Like it or not, Perry, design patent law is going to “grow up”. It’s going to be painful for everyone but most painful (and embarassing) for those trying to defend expansive design patent rights. Go ahead and ask me why that’s guaranteed to be the case.

      1. 5.2.1

        So a 3D surface on a shoe sole that happens to match the shoe surface doesn’t infringe. Okay, that’s good to know.

        You CANNOT be that thick.

        ANY 3D surface that happens to match the 2D design element infringes.

        This is a basic of design patent law – no matter how badly it is mangled with the attempted force-fitting into a utility-based legal foundation.

        News flash: the 2D design is also a roadmap for the infringer to avoid the claim.

        Ok. Sure. As is any other design patent – avoid what falls into the scope of the drawing and you are golden.

        So what?

        The trick of course is realizing the first point here that you botched.

        Like it or not, Perry, design patent law is going to “grow up”.

        Well I certainly hope so. I would even hazard a guess that Perry hopes so too.

        You are doing that empty ad hominem thing that comes with you lacking any control over your feelings, lashing out at anyone you perceive to be thinking “differently” than you.

        It’s going to be painful for everyone but most painful (and embarassing) for those trying to defend expansive design patent rights.

        Absolutely remains to be seen. And certainly does not come from whatever it is that you think that you have “added to the conversation” as to how to understand the currently written laws. Here’s a hint: you have add nothing (as usual).

        Go ahead and ask me why that’s guaranteed to be the case.

        I don’t care why you FEEL that’s guaranteed. I would rather have you ditch all the ad hominem and TRY to advance some cogent legal thinking.

    2. 5.3

      Perry:

      The brake on overbroad claims – as always – is the prior art.

      There is no examination of design patents in view of “the prior art.” The PTO hasn’t made the slightest effort to build or maintain a searchable database of prior art designs, nor has it made the slightest effort to force applicants to submit their designs using a standardized searchable template which would facilitate the creation of such a database.

      Everybody knows this.

      In other words, to paraphrase Perry, there is no brake on overbroad design patent claims which is exactly why this CAFC opinion is so messed up.

      Why is this hard to figure out?

      1. 5.3.1

        force applicants to submit their designs using a standardized searchable template which would facilitate the creation of such a database

        Where would the Office get authority to do such?

        Mind you, I am NOT panning the idea per se – at least here, you offer something cogent,, just that you are still tending to an Ends-justify-the Means type of “logic.”

        there is no brake on overbroad design patent claims which is exactly why this CAFC opinion is so messed up.

        You ASSUME the claim is “overbroad.” Then you ASSUME that “this CAFC opinion is so messed up” for “exactly why.”

        You assumptions have no tether to any cognitive legal position. What does “overbroad” mean? That you cannot have a broad claims? Why not? Clearly, the view that the claim was indefinite was simply legal error.

        Apparently, you FEEL that the claim wants “too much.” But other than your feelings (of which I frankly do not care), WHY (legally) is any level of “much” somehow “too much?”

        Answers lacking cognitive legal basis, or steeped in ad hominem are to be treated as you acceding that I have the better legal position.

        Why is this hard to figure out?

        It’s not – it’s just that you are not correct in what you think (feel) needs to be “figured out.”

      2. 5.3.2

        C’mon, MM, not even you can believe that there is no examination of design patents in view of the prior art.

        If a design is claimed narrowly, it is more difficult for an examiner to find prior art, so that many such design applications sail through to allowance without a prior art rejection. On the other hand, if a design is claimed broadly, 102/103/171 rejections are common; I have a warehouse full of them ready for your inspection MM – if you would only come out of the closet.

        If you are lamenting the fact that the design patent examiners don’t have all the potential prior art at their disposal, what else is new? Do utility examiners? As always, it’s up to the patent owners, competitors and litigants to do a better search later on, when there’s some real $$ at stake. Or maybe this is simply a good argument for having a new sui generis design registration law, and let the validity of the design right be challenged by those same stakeholders later on, a la the EU.

  3. 4

    The scope of the claim is the drawing.

    LOL

    “The scope of the claim is the words.”

    Very compelling stuff!

    One need not have “training in design” to understand this point about what scope is.

    Nobody is confused about “what scope is.” The confusion arises from the submission of an incredibly cr@p drawing of the claimed “design” where it isn’t clear from the drawing whether it’s 2-D design or a 3-D design, and if it’s a 3-D design it’s not clear what’s sticking up and what’s sticking in.

    The CAFC here is basically incorporating its worthless (and righteously rejected) test for indefiniteness, i.e., “if someone can figure out what it means, it’s not indefinite”.

    That is not a “standard” that yields reliability or quality. It’s a standard for elevating basement-level junk produced by incompetents to something of value. This is the CAFC’s worse habit and its unclear how they can be compelled to break it.

    1. 4.1

      Oops — this comment was meant as a response to comment 1. I’m in agreement with Prof Burnstein here.

    2. 4.2

      You seem to want to complain about something that I have not put forth. Is there any specific comment from you on what I have actually stated?

      Maybe you take issue that breadth is not indefiniteness.

      Is that it?

      You seem to agree with me vis a vis the poor fit of trying to shoehorn “design” into law written for “utility,” but you want to agree with Prof. Burstein who is NOT saying that. It is unclear just what it is that you are “agreeing with” from what she advances.

      1. 4.2.1

        You seem to want to complain about something that I have not put forth.

        In fact, I am actually complaining about your vapid worthless statement that “The scope of the claim is the drawing.”

        If you can’t understand why I objected to that silliness, that’s your problem. Eat your own dust, Billy.

        1. 4.2.1.1

          What exactly is “the silliness?”

          My statement is simply a reflection of the rule of law (emphasis added).

          37 cfr 1.153: A design patent application may only include a single claim. The single claim should normally be in formal terms to “The ornamental design for (the article which embodies the design or to which it is applied) as shown.”

          Sure, some words of description MAY accompany the drawing, but on the larger point, such are not a requirement (per se).

          Are you taking issue with the law or merely me being the one that presents it?

            1. 4.2.1.1.1.1

              Maybe instead of accusing someone else, you look at your own lack of ability to make a point.

      2. 4.2.2

        you want to agree with Prof. Burstein

        There is no “want.”

        I do agree with Professor Burnstein’s post. This decision is a giant pile of cr@p 0la and needs to be chucked in the trash bin along with the underlying application.

        1. 4.2.2.1

          There is ONLY a “want” when you say you agree, but then agree with me and not agree with anything in particular of what the Prof. stated.

          WHY do you come to the Ends that you do? WHY are your feelings such?

  4. 3

    The court said “the correct test . . . looks to how the ordinary observer would interpret the drawing actually included in the application.” Should Maatita be extended to an application which shows an article from the usual six directions but which does not contain a perspective view, or shading? For example, one which shows a running shoe in six orthogonal views, where parts of the contoured sole are only visible in one of the views (the bottom view)?

    1. 3.1

      Should Maatita be extended to an application which shows an article from the usual six directions…

      Arguably, that type of “extension” would be new matter.

      So, one must take the drawing as supplied – which then comes back to the basic premise that breadth is not to be confused with indefiniteness.

      Lacking those other views, what does the one supplied view tell you?

      Is that different than what the court here took from the one supplied view?

      1. 3.1.1

        Sorry, anon, I did not mean that type of extension. I was asking whether the logic of the court’s opinion in Maatita should be extended to a design patent application which, from its original filing date, shows a running shoe in six orthogonal views, where parts of the contoured sole are only visible in one of the views. It is a high-volume issue within the PTO, especially for design patent applications that originate outside the U.S. Most PTO examiners would reject the application with six figures (but no perspective view and no shading) using the same reasoning that was pursued by the PTO in Maatita. Is the PTO’s basis for those rejections no longer valid after Maatita?

        1. 3.1.1.1

          Apples and oranges.

          Clearly.

          It appears that you want to make equal two very different and unequal conditions.

          As you should appreciate, the arguments of the USPTO as if the present case WERE the different case with the (added matter) of the six orthogonal views were not fitting. Such would be fitting in the different case, so there would be NO “extension of logic” as you appear to surmise.

          In other words, the same logic – the same application of law – in each of the different cases would yield the (proper – and properly) different results.

          Not sure why, but you seem to want to have this decision be somehow deficient in logic, without providing a cogent rationale as to why.

      2. 3.1.2

        what does the one supplied view tell you?

        That the person who drafted the design application was incompetent.

  5. 2

    Is it worth considering that the design of sole patterns for shoes, in particular sneakers/tennis shoes, include separate mechanical and aesthetic elements. Sneakers are often sold in retail and online with a display of the sole. An argument could be made that those 2D designs are used “solely” to attract the attention of shoppers. By extension of the argument, the 3D configuration is limited to mechanical functions. At the very least, when NBA players dunk, the national audience sees the 2D pattern of his soles, independent of its contours.

  6. 1

    Maatita has opened the door to design claims of unprecedented (or, at least, not previously judicially-sanctioned) breadth.

    But does this not beg the distinction that breadth is not indefiniteness?

    There is a difference between saying “all three dimensional effects are covered, so long as the plan view is met” and “we cannot tell what effects are covered.”

    Moreover, unlike design patent examiners, patent attorneys and agents are not required to have any training in design. It may, therefore, be difficult for them to imagine and effectively communicate (e.g., by drawing) the scope of Maatita-type claims.

    Not sure what this means, or what point is being attempted. The scope of the claim is the drawing. One need not have “training in design” to understand this point about what scope is.

    On the other hand, if what you are upset about is that design patent law has been commingled with utility patent law, we may find some common ground. I would view the “answer” to not be one of further commingling, but rather, I would prefer to see “design patents” (e.g., design patent law), be drafted completely separate from utility patent law.

    The problem is NOT 112 – the problem is attempting to apply utility law as understood in 112 to a non-utilitarian item.

    1. 1.1

      I would prefer to see “design patents” (e.g., design patent law), be drafted completely separate from utility patent law.

      No doubt that would be vastly preferred.

      By the same reasoning, patents on methods of applying logic to data should also be drafted completely separately from utility patents. The idea that utility patent laws work to promote progress in everything is so utterly absurd on its face that one wouldn’t think this point would have to be made over and over again. But it does need to be made over and over again.

      1. 1.1.1

        Huge difference between the design and utility aspects and different flavors of utility.

        Just because you “feel” that the utility of software innovation is somehow “beneath” utility in other areas of innovation does not mean that utility should be so segregated.

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