Case: 17-2037 Document: 41 Page: 1 Filed: 04/20/2018UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT ________________ 17-2037 ________________ IN RE: RON MAATITA APPLICATION SERIAL NO.: 29/404,677 FILED: OCTOBER 24, 2011 FOR: SHOE BOTTOM ________________ Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board Appeal No. 2015-005829 ________________ SUPPLEMENTAL BRIEF OF APPELLANT ________________ STEVEN E. SHAPIRO JOSEPH G. SWAN 1223 Wilshire Blvd. #461 1334 Parkview Avenue Santa Monica, CA 90403 Suite 100 Tel: (310) 428-4776 Manhattan Beach, CA 90266 Tel: (310) 372-8624 Counsel for Appellant Ron Maatita April 20, 2018 Case: 17-2037 Document: 41 Page: 2 Filed: 04/20/2018 CERTIFICATE OF INTEREST Counsel for Appellant Ron Maatita certifies the following: 1. The full name of every party represented by me is: Ron Maatita. 2. The name of the real party in interest represented by me is: Dynasty Footwear, Ltd. 3. All parent corporations and any publicly held companies that own 10 percent or more of the stock of the parties represented by me are: None. 4. The names of all law firms and the partners and associates that have appeared for the party in the proceedings below or are expected to appear for the party in this court and who are not already listed on the docket for the current case: Steven E. Shapiro and Joseph G. Swan. 5. Counsel is not aware of any case to be pending in this or any other court or agency that will directly affect or be directly affected by this court’s decision in the pending appeal. Dated: April 20, 2018 /s/ Steven E. Shapiro Steven E. Shapiro Counsel for Appellant i Case: 17-2037 Document: 41 Page: 3 Filed: 04/20/2018 TABLE OF CONTENTS Page CERTIFICATE OF INTEREST .................................................................. i TABLE OF AUTHORITIES ...................................................................... iii ARGUMENT .............................................................................................. 1 I. INTRODUCTION ……………………....………………………... 1 . II. ARGUMENT ………………………………………………….. 2 A. Standard for “Single Inventive Concept” …………………… 2 1. “Single Inventive Concept” And Section 112 ……….. 2 2. Maatita Has Only a Single Inventive Concept ………. 3 3. PTO’s Flawed Multiple Embodiment Procedure ……. 5 B. “Patentably Distinct” And Multiple Embodiments ………… 10 III. CONCLUSION ................................................................................ 15 CERTIFICATE OF SERVICE CERTIFICATE OF COMPLIANCE ii Case: 17-2037 Document: 41 Page: 4 Filed: 04/20/2018 TABLE OF AUTHORITIES CASES PAGES DDR Holdings, LLC v. Hotels.Com, 773 F. 3d 1245 (Fed. Cir. 2014) 2 Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665 (Fed. Cir. 2008) (en banc) …………………………………… 3 Eli Lilly and Co. v. Barr Labs, 251 F. 3d 955 (Fed. Cir. 2001) ……. 10 Elmer v. ICC Fabricating, 67 F.3d 1571 (Fed. Cir. 1995) ………... 11 Ex parte Salsbury, 48 U.S.P.Q. 339 (Pat. Off. Bd. of Appeals 1940) 4 Feder v. Poyet, 89 O.G. 1343, 1344 (1899) ………………………. 11 Gorham Company v. White, 81 U.S. 511 (1872) ………………….. 3 In re Angstadt, 537 F.2d 498, 501 (CCPA 1976) ………………… 1 In re Bartlett, 300 F.2d 942, 944 (CCPA 1962) …………………... 8 In re Fisher, 427 F.2d 833 (CCPA 1970) …………………………. 14 In re Marti, 359 F.2d 900 (C.C.P.A. 1966) ……………………….. 10 In re Moore, 439 F.2d 1232 (CCPA 1971) ...................................... 2, 6 In re Rubinfield, 270 F.2d 391 (CCPA 1959) .................................. passim In re Van Ornum, 686 F.2d 937, 944-48 (CCPA 1982) ………….. 8 In re Vogel, 422 F.2d 438 (CCPA 1970) …………………………. 8 In re Weber, 580 F.2d 455, 458 (C.C.P.A. 1978) ………………… 6, 9 In re Wolfrum, 486 F.2d 588, 591(CCPA 1973) …………………. 1, 9 Perricone v. Medicis Pharmaceutical Corp., 432 F. 3d 1368 (Fed. Cir. 2005) ……………………………………………. 8 STATUTES AND REGULATIONS 35 U.S.C. § 112 (Pre-AIA) ................................................................ passim 35 U.S.C. §171 .................................................................................. 2, 12 35 USC § 121 ……………………………………………………… 3 37 CFR § 1.141 …………………………………………………….. 9 iii Case: 17-2037 Document: 41 Page: 5 Filed: 04/20/2018 I. INTRODUCTION This Court has ordered supplemental briefing concerning standards pertaining to “single inventive concept” and “patentably distinct” in the context of multiple embodiments presented in a design patent application. As is discussed more fully below, these concepts have no bearing on 35 USC § 112 issues whatsoever and the PTO has been unable to cite a single case that suggests they do.1 A design application with a single drawing necessarily has only one “inventive concept”2 and, therefore, a “same inventive concept” analysis cannot be properly applied here. In addition, the “same inventive concept” standard proposed by the PTO is not even appropriate where multiple embodiments are actually illustrated in a single application, so it is plainly not appropriate here. A “patentably distinct” inquiry in the present case is unfitting for the same reasons a “same inventive concept” inquiry is. Moreover, the PTO’s attempt to impose such an inquiry here is based on its misreading of Sections 1 The PTO expressly cautions examiners “against confusing claim breadth with claim indefiniteness.” MPEP § 2173.02(I). However, the PTO has done exactly that in the case at bench. 2 There is absolutely no precedent for dividing a continuous claim scope into arbitrarily defined portions. See, e.g., In re Wolfrum, 486 F.2d 588, 591(CCPA 1973). 1 Case: 17-2037 Document: 41 Page: 6 Filed: 04/20/2018 171 and 112 of Title 35. As such, the PTO’s attempt is nothing more than an end run around clearly established Section 112 principles. II. ARGUMENT A. Standard for “Single Inventive Concept”. 1. “Single Inventive Concept” And Section 112. The meaning of “inventive concept” depends on the particular context in which it is invoked.3 Here, the parties agree that the only issues expressly before this Court are whether Maatita’s patent application complies with 35 U.S.C. § 112. In the Section 112 context, unless there is clear evidence to the contrary, a patent’s inventive concept simply is the subject matter encompassed by its claim(s). In re Moore, 439 F.2d 1232, 1235 (CCPA 1971); In re Angstadt, 537 F.2d 498, 501 (CCPA 1976). For Section 112 purposes, therefore, the one and only “inventive concept” in the case at bench is the one defined by Maatita’s claim. The notion of determining whether a claim encompasses more than a “single inventive concept” is completely alien to any Section 112 analysis. 3 In a software patent case, for example, “inventive concept” can mean “some element or combination of elements sufficient to ensure that the claim in practice amounts to ‘significantly more’ than a patent on an ineligible concept.” DDR Holdings, LLC v. Hotels.Com, LP, 773 F. 3d 1245, 1255 (Fed. Cir. 2014). 2 Case: 17-2037 Document: 41 Page: 7 Filed: 04/20/2018 The PTO Director has been unable to cite a single case where such an inquiry was ever performed under Section 112. As Maatita has already demonstrated, the Examiner failed to meet his burden to show Maatita’s patent claim is indefinite and not enabled. As best Maatita can tell, the PTO seeks to sidestep settled Section 112 law by interjecting its multiple embodiment procedure into the mix. 2. Maatita Has Only a Single Inventive Concept. A single drawing can only depict a single design and a single-drawing (or any other single-embodiment) design patent application has only one “inventive concept”.4 This is true because, as this Court has repeatedly stated, the proper scope of a design patent is the “claimed design as a whole”, not just one design feature or another. Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665 (Fed. Cir. 2008) (en banc); see also, Rubinfield, 270 F.2d at 395 (“It is the appearance of a design as a whole which is controlling in determining questions of patentability and infringement.”), citing Gorham Company v. White, 81 U.S. 511, et seq. Since Maatita’s single drawing must be considered as a whole and not on some piecemeal 4 35 USC § 121 permits restriction in a patent application only when “two or more independent and distinct (emphasis added) inventions are claimed in one application”. It does not permit a hypothetical division of a continuous claim scope into multiple embodiments for that purpose. 3 Case: 17-2037 Document: 41 Page: 8 Filed: 04/20/2018 basis, it follows that there can only be one inventive concept reflected by his application. In addition, even the PTO acknowledges that the “single inventive concept” issue can only arise where multiple embodiments are illustrated in a single design patent application. See, MPEP § 1504.05 (“It is permissible to illustrate more than one embodiment of a design invention in a single application. However, such embodiments may be presented only if they involve a single inventive concept.”). At the same time, Appellee has not been able to cite a single case that holds otherwise and Maatita has been unable to find one.5 5 During oral argument, Appellee asserted that a single plan view is especially inappropriate (as compared to a perspective view, which was permitted in Ex parte Salsbury, 48 U.S.P.Q. 339 (Pat. Off. Bd. of Appeals 1940)) because an ordinary observer does not observe a design in a plan view, but rather in the context of a fully formed three-dimensional object. However, like a plan view, a perspective view is just a two-dimensional view (albeit from a different angle). As such, a perspective view cannot by itself possibly show the complete structure of any three-dimensional feature. Therefore, if the PTO’s position is accepted, this Court must hold that a design patent can never have just a single drawing (except, perhaps, where the claimed design involves only surface ornamentation or a computer icon.). In addition, such a position logically could not be limited to the design as a whole, but necessarily would apply to individual features of a claimed design. For example, individual concave features often are only visible in a single plan view, even when a full set of drawings has been provided. Presumably, however, this would be unacceptable under Section 112 based on the PTO's position because the full three-dimensionality of that particular feature is not depicted. Accepting the PTO's position, therefore, would reverse at least 80 years of accepted patent practice. 4 Case: 17-2037 Document: 41 Page: 9 Filed: 04/20/2018 3. PTO’s Flawed Multiple Embodiment Procedure. As shown above, a “same inventive concept” analysis has no place in the case at bench. Nevertheless, the PTO seeks to apply a procedure it uses to deal with design patent applications that separately illustrate more than one embodiment. Not only is application of that procedure not appropriate in this case, the procedure is flawed in and of itself. In re Rubinfield, 270 F.2d 391, 396 (C.C.P.A. 1959), stated that, depending “upon the particular circumstances of the individual case involved”, a design patent applicant may illustrate multiple embodiments in a single design patent application. Rubinfield, however, did not specify “the particular circumstances” in which such multiple embodiments are acceptable. The PTO has taken the unfounded and unfitting position that multiple “embodiments may be presented only if they involve a single inventive concept” such that two “designs involve a single inventive concept when the two designs are patentably indistinct according to the standard of nonstatutory double patenting.” MPEP § 1504.05. Although Rubinfield mentioned PTO double-patenting rejections, it said only: “It is not apparent … why that office should refuse to undertake a similar determination when different embodiments are presented in a single 5 Case: 17-2037 Document: 41 Page: 10 Filed: 04/20/2018 application.” 270 F.2d at 395 (emphasis added). By using the word “similar” instead of “same”, the CCPA left open how the PTO should address the “particular circumstances” of multiple embodiments in a single design patent application. Moreover, Rubinfield did not even remotely suggest that such a “similar” determination should constitute the exclusive standard.6 One problem with the PTO standard is that it does not take into account the facts that (1) an inventor has the unfettered right to define his own inventive concept (Moore, 439 F.2d at 1235; In re Weber, 580 F.2d 455, 458 (C.C.P.A. 1978)) and (2) expressly claiming multiple distinct embodiments – in and of itself – affects the scope of the claim (In re Weber 580 F.2d at 458). The very reason a design patent applicant illustrates multiple embodiments is to better (typically, more broadly) define the scope of her claim, and thus her inventive concept. A recently issued design patent titled “Drinking Vessel” provides an example: 6 The Rubinfield court only addressed the narrow issue of whether it is possible, under any circumstances, to include multiple embodiments in a design patent application. As part of its analysis, it simply considered a selection of different circumstances which would justify inclusion of multiple embodiments. It clearly did not engage in any detailed analysis of what standard should apply, much less specify any particular standard. 6 Case: 17-2037 Document: 41 Page: 11 Filed: 04/20/2018 The patent7 illustrates four embodiments, with similar appearances, apparently varying only in their dimensions (most noticeably, their heights, but also widths of certain portions and amount of taper). Here, the applicant has defined his claim so that it does not limit the relative dimensions of the base and upper portions (at least within the illustrated ranges). As can be seen from this example, so long as there is sufficient commonality among the multiple embodiments, that commonality defines the single inventive concept. An obviousness analysis, which has been 7 US Patent No. D812,429. US patents are publicly available in a patent database maintained by the United States Patent and Trademark Office. The US patents referenced herein can be located by entering the patent number at http://patft.uspto.gov/netahtml/PTO/srchnum.htm. 7 Case: 17-2037 Document: 41 Page: 12 Filed: 04/20/2018 acknowledged to be quite difficult and subjective (In re Bartlett, 300 F.2d 942, 944 (CCPA 1962)), serves no rational purpose, is not required or suggested by any applicable law, and unnecessarily complicates the analysis. The very concern addressed by the doctrine of obviousness-type double patenting (which underlies the PTO’s standard here) is not even present where multiple embodiments are illustrated in a single design patent application. That doctrine primarily was “adopted to prevent claims in separate applications or patents that do not recite the ‘same’ invention, but nonetheless claim inventions so alike that granting both exclusive rights would effectively extend the life of patent protection.” Perricone v. Medicis Pharmaceutical Corp., 432 F. 3d 1368, 1376 (Fed. Cir. 2005) (emphasis added). Where there is only a single patent application with multiple embodiments involved, there is no danger of unfairly extending “the life of patent protection” because the resulting patent will only have one term.8 For this additional reason, there simply is no justification for employing an obviousness analysis in the present situation.9 8 Because obviousness-type double patenting – in and of itself – does not present a problem, a patent rejection on that ground can be overcome by filing a terminal disclaimer. In re Vogel, 422 F.2d 438 (CCPA 1970). 9 A double patenting rejection also serves public policy interests by preventing the possibility of multiple suits against an accused infringer by different assignees of patents claiming patentably indistinct variations of the same invention. In re Van Ornum, 686 F.2d 937, 944-48 (CCPA 1982). 8 Case: 17-2037 Document: 41 Page: 13 Filed: 04/20/2018 Appellant has not found any decisions from this Court indicating what the correct standard should be for multi-embodiment design patents. However, there is useful guidance from utility patent precedent, particularly authority pertaining to a Markush claim which, like a multi-embodiment design patent, is a single claim with multiple distinct embodiments asserted (often nonobvious over each other). It is clear that a Markush claim is permissible and not required to be separated into multiple different patent applications. See, e.g., In re Weber, 580 F.2d at 458 and In re Wolfrum, 486 F.2d at 591.10 These utility patent examples indicate that distinct embodiments can be included in a single patent if there is sufficient commonality among them11. Therefore, a more appropriate standard for determining when multiple embodiments are acceptable would begin with an assessment of the common features (or design elements), in order to identify the inventive Multiple suits also are not a concern where multiple embodiments are illustrated in a single patent application. 10 Further guidance can be obtained from 37 CFR § 1.141 and MPEP § 806.04, which permit different species claims (even if determined to be nonobvious over each other) to be included within a single patent application if a generic claim (providing the requisite commonality) is found to be allowable over the prior art. 11 Such commonality is provided by the rest of the claim limitations in the case of a Markush claim and by the limitations of the independent claim in the case of distinct species dependent claims. 9 Case: 17-2037 Document: 41 Page: 14 Filed: 04/20/2018 concept across the embodiments, and then proceed to a determination of whether those features provide a discernible visual impression12 in each illustrated embodiment.13 B. “Patentably Distinct” And Multiple Embodiments. In the obviousness-type double patenting context, two concepts are not the “same inventive concept” unless they are “patentably distinct”. E.g. Eli Lilly and Co. v. Barr Laboratories, Inc., 251 F. 3d 955, 967-68 (Fed. Cir. 2001). “A later patent claim is not patentably distinct from an earlier patent claim if the later claim is obvious over, or anticipated by, the earlier claim.” Id. Since “patentably distinct” simply is the absence of “single inventive concept” in the double-patenting context, the same analysis set forth above with regard to “same inventive concept” applies. The PTO’s “patentably distinct” argument appears to boil down to the following assertions: (1) The Examiner articulated hypothetical embodiments within the scope of Maatita’s claim; (2) the hypothetical embodiments are patentably distinct with respect to each other; and (3) 12 See, e.g., Apple, Inc. v. Samsung Elecs. Co., 932 F. Supp. 2d 1076, 1087 (N.D. Cal. 2013). 13 This standard need not be the same as the standard applied in prior-art or infringement analyses. For instance, it would not imply the necessity of abstracting a design “concept” for either of those purposes, which might be problematic, e.g., under In re Marti, 359 F.2d 900 (C.C.P.A. 1966). 10 Case: 17-2037 Document: 41 Page: 15 Filed: 04/20/2018 Maatita’s claim is therefore not enabled. In fact, however, none of these assertions is true.14 As discussed above: (a) the case law is clear that the scope of a single claim cannot be arbitrarily separated into subsets; and (b) any embodiments within the scope of Maatita’s claim necessarily are part of a single inventive concept - the one illustrated in his drawings. Furthermore, PTO assertions (1) and (2) fly in the face of the long- standing rule that a design patent application can present a “generic” or “genus” claim by eliminating ornamental features from his drawings. As was explained in Feder v. Poyet, 89 O.G. 1343, 1344 (1899): If an inventor has a generic design capable of modification -- that is, a design made up of a small number of simple elements to which other elements may be added without modification of the essential elements -- he should, in order to secure protection for the generic design, show the design in his application in its simplest form. He must show the genus stripped of additions. [Emphasis added; see, also, Appx58 (discussing Elmer v. ICC Fabricating, 67 F.3d 1571 (Fed. Cir. 1995)).]15 14 Maatita disputes that the Examiner’s four hypothetical embodiments are patentably distinct with respect to one another. The Examiner’s conclusory statement to that effect was insufficient to meet his evidentiary burden. [See, Appx55.] 15 Rubinfield criticized Feder for requiring a generic claim in order to achieve breadth, but seemed to endorse the proposition that a generic claim may be utilized if the applicant believes it to be appropriate. Although Rubinfield rejected the use of claim language stating, “having the common appearance substantially as shown in [the drawings]”, this rejection was based on the form of the claim language, not the use of a generic claim per se. Rubinfield at 396 (“A so-called generic claim . . ., covering the ‘common appearance’ of two modifications, is apparently directed to some broad 11 Case: 17-2037 Document: 41 Page: 16 Filed: 04/20/2018 As to PTO assertion (3), that assertion has absolutely nothing to do with established enablement standards – standards that the examiner all but admitted were met by Maatita’s disclosure. Specifically, the Examiner stated that “one of ordinary skill could make and use multiple designs that could match applicant’s design when seen from a single viewpoint.” [Appx71.] The PTO’s “patentably distinct” contention is also based on a misreading of 35 U.S.C. § 171. Under Section 171, the invention is an “ornamental design for an article of manufacture”. Therefore, when applied to a design patent application, Section 112, paragraph 1, only requires a written description sufficient to enable a “person skilled in the art . . . to make and use” the applicant’s “ornamental design”. It does not require disclosure of additional ornamental features that the applicant does not choose to include as part of the scope of her claim. Unclaimed design elements are not needed “to make and use” a claimed ornamental design16. By definition, “ornamental design” is ornamentation and nothing more. In concept which is not illustrated.”). Unlike the applicant in Rubinfield, Maatita’s application illustrates his invention clearly and concretely. 16 Thus, contrary to the Examiner’s assertion, there would be no need for one of ordinary skill in the art to “invent” in order to arrive at Maatita’s claimed design. 12 Case: 17-2037 Document: 41 Page: 17 Filed: 04/20/2018 imposing his own hypothetical ornamental designs upon Maatita, the Examiner was confusing ornamentation for an article with structure of an article. Therefore, comparing unclaimed ornamental features to decide whether such unclaimed features are patentably distinct is meaningless. Design patents do not cover the articles themselves and do not need to enable manufacture of such articles. The inapplicability of a “patentably distinct” analysis to the case at bench is not changed by utility patent case law that states "the full scope of the claimed invention must be enabled." [Appellee’s Brief, p. 19.] First of all, as asserted by Maatita both in this appeal and below, such would require the Examiner to identify at least one embodiment that is not enabled by Maatita’s disclosure. [See, Maatita’s Opening Brief, p. 18 and Appx98.] The PTO has not refuted this, and the Examiner did not identify a single embodiment that is not enabled. Notably, in each case cited by the PTO on page 19 of its brief, the court specifically identified an embodiment that was not enabled before invalidating the patent on non-enablement grounds. Clearly, therefore, the Examiner here did not meet his evidentiary burden. Second, this line of utility patent case law does not apply to design patents. The “full scope” principle is based on the reasoning espoused in the 13 Case: 17-2037 Document: 41 Page: 18 Filed: 04/20/2018 leading case, In re Fisher, 427 F.2d 833 (CCPA 1970). In that case, the court explained: [35 U.S.C. § 112] requires that the scope of the claims must bear a reasonable correlation to the scope of enablement provided by the specification to persons of ordinary skill in the art. In cases involving predictable factors, such as mechanical or electrical elements, a single embodiment provides broad enablement in the sense that, once imagined, other embodiments can be made without difficulty and their performance characteristics predicted by resort to known scientific laws.” [427 F.2d at 839 (emphasis added).] The application of an “ornamental design” to an article of manufacture is entirely predictable. This is the very reason that design patents do not require written disclosure other than drawings. Further, it is the reason that the parties herein have been unable to find a single case wherein a design patent was found non-enabling where the claim was not indefinite. Therefore, the “full scope” rationale lends no support for engagement in a patentably distinct analysis of various iterations of hypothetical, unclaimed ornamental subject matter. 14 Case: 17-2037 Document: 41 Page: 19 Filed: 04/20/2018 III. CONCLUSION For the foregoing reasons, this Court should reverse the decision below and order that the Maatita Application issue as a patent. Respectfully submitted. /s/Steven E. Shapiro Joseph G. Swan Steven E. Shapiro 1334 Parkview Avenue 1223 Wilshire Blvd. #461 Suite 100 Santa Monica, CA 90403 Manhattan Beach, CA 90266 Tel: (310) 428-4776 Tel: (310) 372-8624 Counsel for Appellant Ron Maatita April 20, 2018 15 Case: 17-2037 Document: 41 Page: 20 Filed: 04/20/2018 CERTIFICATE OF SERVICE I certify that I served a copy on counsel of record on April 20, 2018 by electronic means (CM/ECF). /s/Joseph G. Swan Joseph G. Swan 1334 Parkview Avenue, Suite 100 Manhattan Beach, California 90266 Tel: (310) 372-8624
[email protected] Case: 17-2037 Document: 41 Page: 21 Filed: 04/20/2018 CERTIFICATE OF COMPLIANCE I hereby certify that this brief complies with this Court’s order requiring this brief to be no more than 15 pages because this brief is 15 pages. I further hereby certify that this brief complies with the applicable type-volume limitations because it contains 2,361 words. This certificate was prepared in reliance on the word- count function of the word-processing system (Word 2013) used to prepare this brief. I further certify that this brief complies with the typeface and type style requirements of Federal Rule of Appellate Procedure 32(a)(5) and (a)(6) because it has been prepared in a proportionally spaced typeface using Word 2013 in 14-point Times New Roman font. April 20, 2018 /s/ Steven E. Shapiro Steven E. Shapiro