Federal Circuit: 2D Depiction of 3D Article Can Satisfy Written Description in a Design Patent

August 29, 2018

The recent ruling in In re Maatita means that a two-dimensional drawing of a three-dimensional object may meet the enablement and definiteness requirements for a design patent.

The US Court of Appeals for the Federal Circuit, in In re Maatita[1], recently overturned a decision of the Patent Trial and Appeal Board (PTAB) that upheld a rejection of a design patent application based on insufficiency of the drawings. The Federal Circuit ruled that the examiner and the PTAB misapplied the law of indefiniteness (35 USC §112) in the context of design patents.

The design at issue is directed to a shoe bottom. The applicant chose to depict the design with only two drawings – each illustrating the same claimed portion with different unclaimed environmental features. One of the drawings is reproduced below:

Infographic - Datasource Item: USPTO-3D-Shoe

The examiner rejected the application alleging the drawing was susceptible to multiple, patentably distinct, interpretations. The lack of surface shading on the single drawing left the examiner questioning whether the claimed elements were raised or recessed. In rejecting the claim, the examiner illustrated four possible 3D interpretations of the 2D drawing (shown below). The illustrations depicted the claimed elements in different configurations, thus demonstrating, in the examiner’s view, the susceptibility of the illustrated design to alternative implementations that were so distinct that they could not properly be covered by a single claim. As a result, the examiner alleged, the claim lacked the degree of clarity required by both the enablement and written descriptions requirements for patentability.

Infographic - Datasource Item: USPTO-3D-Renderings

The Federal Circuit disagreed and pointed out that this is not a case where there is inconsistency between different views or between the written portion of the claim and the depicted views. Rather, the question addressed was whether the disclosure sufficiently described the design. To answer that question, the Federal Circuit relied on a 2014 US Supreme Court case interpreting a utility patent, Nautilus, Inc. v. Biosig Instruments, Inc.[2], in which the Supreme Court emphasized that the standard for adequacy of a claimed design should be a “reasonable certainty” standard. The purpose of the definiteness standard, the Federal Circuit wrote, 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 be infringed.”

Returning then to the particular context of design patents, the Federal Circuit rationalized that the standard for indefiniteness is connected to the standard of infringement, and should thus be judged from the perspective of an ordinary observer.[3] A design patent is infringed if “an ordinary observer, familiar with the prior art, would be deceived into thinking that the accused design was the same as the patented design.”[4]

a design patent is indefinite….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 the visual disclosure.[5]

Addressing directly the examiner’s illustration of four possible interpretations of the drawings, the Federal Circuit noted that assessing indefiniteness with the same analysis as that used for obviousness-type double patenting (as advocated by the government) was inappropriate. Moreover, the Federal Circuit credited the applicant’s view that the relative depths of various features—characterizing each of the examiner’s hypothetical distinct designs—are simply differences in unclaimed subject matter.[6]

It is interesting to note that the Federal Circuit, in dicta, addressed the adequacy of designs that were not before the court by remarking that a design for an entire shoe or teapot could not be adequately disclosed with a single plan or planar view drawing because, depending upon the perspective chosen to view such an article, it could either infringe or not infringe the claimed design. Here, the court found that the shoe bottom was susceptible to being understood in two dimensions – even if some applicants might have chosen to depict the shoe bottom in three dimensions.

It is also interesting to note that the claim sanctioned by the Federal Circuit may be broader in scope than an alternative claim in which the applicant provided multiple views and/or shading. Indeed, it would surely be argued that the claim to the 2D design may be considered to cover many 3D implementations such as those rendered by the examiner.

In addition to providing guidance for the law of indefiniteness in the context of design patents, practitioners seeking to take advantage of this ruling might proactively consider depicting their designs using multiple approaches; for example, using both two dimensional and three dimensional depictions.


If you have any questions or would like more information on the issues discussed in this LawFlash, please contact the authors, Kenneth J. Davis or John L. Hemmer in our Philadelphia office, or any of the following Morgan Lewis lawyers:

Joshua M. Dalton

Scott D. Sherwin
Jason C. White
C. Erik Hawes 

Louis W. Beardell, Jr.

San Francisco
Brent A. Hawkins
Brett A. Lovejoy, Ph.D.
Carla B. Oakley

Silicon Valley
Dion M. Bregman
Douglas J. Crisman
Andrew Gray IV
Michael J. Lyons

Washington, DC
Eric S. Namrow
Collin W. Park

[1] No. 2017-2037 (Fed. Cir. Aug. 20, 2018).

[2] 134 S. Ct. 2120, 2124 (2014).

[3] Slip op. at 9-10.

[4] Id. at 9 (quoting Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 672 (Fed. Cir. 2008) (en banc)).

[5] Id. at 10 (emphasis added).

[6] Id. at 10-11 (quoting MPEP §1504.04).