[00:00:47] Speaker 03:
when our final case this morning is number seventeen days twenty thirty seven uh... in rain that he had missed a ship your honors of the pleases the court and steven shakira represent the opponent t but he took uh... this appeal concerns a whether or not a but he does design patent application

[00:01:16] Speaker 03:
is indefinite and not enabling.

[00:01:20] Speaker 03:
With respect to enabling, the examiner all but admitted that the invention was enabled by the disclosure.

[00:01:32] Speaker 03:
On the appendix page 71 at the top, he provided four different embodiments that were covered by the claim.

[00:01:44] Speaker 03:
And at the top of that

[00:01:47] Speaker 03:
portion he wrote and I'm quoting on page 71 at the top and it says one of ordinary skill could make and use multiple designs that could match applicants design so in essence he admitted that multiple designs were

[00:02:18] Speaker 03:
within the grasp of a person of ordinary skill in the art, which is a means that was enabled.

[00:02:23] Speaker 03:
He provided four, in essence, admitted that these four were enabled.

[00:02:29] Speaker 03:
So factually, rather than meet his burden, the examiner actually admitted enablement.

[00:02:40] Speaker 04:
What do you understand that the board's ruling would require you to do here to file

[00:02:48] Speaker 04:
for separate patent applications?

[00:02:51] Speaker 04:
Is that the consequence of it?

[00:02:53] Speaker 03:
What the examiner was saying?

[00:02:55] Speaker 03:
Well, what the board said.

[00:02:58] Speaker 03:
Your Honor, I think, I don't think that's exactly what the board said.

[00:03:03] Speaker 03:
What our position is, is that there was a single, in essence, a single drawing that had a single inventive.

[00:03:10] Speaker 04:
That's what your position is.

[00:03:11] Speaker 04:
I'm just asking you, what does the board decision do to you?

[00:03:17] Speaker 04:
Obviously, you're able to file a patent application.

[00:03:20] Speaker 04:
What are they saying that you should be doing?

[00:03:23] Speaker 04:
Filing four separate patent applications?

[00:03:25] Speaker 03:
Well, they're saying that we had to narrow our claim, that our claim had to show... What's wrong with my statement?

[00:03:33] Speaker 04:
I'm trying to understand what's going on.

[00:03:35] Speaker 03:
Well, I think if the examiner, if the board were correct, we would have to file more than four applications.

[00:03:42] Speaker 03:
It might be 50 or something like that.

[00:03:46] Speaker 00:
All the different permutations?

[00:03:48] Speaker 00:
That would be 50 different permutations of whether these different design elements are concave or convex or whatever the three-dimensional aspect is?

[00:03:59] Speaker 03:
Well, it wasn't just either whether they're concave, it would be relative depth.

[00:04:04] Speaker 03:
So that could be different.

[00:04:06] Speaker 03:
I mean, there could be, I mean, he gave four examples, the examiner did, but there could be more permutations.

[00:04:14] Speaker 03:
it what would really happen is that we were forced problem here that that your your design captures this innumerable infinite number of permutations well i think that's that's actually very common in design design patents for instance uh... applicants are allowed to use uh... broken lines uh... there's they're they're allowed to uh...

[00:04:42] Speaker 03:
not show the entire article.

[00:04:44] Speaker 03:
I mean there can be every design patent typically unless it's completely in solid line in every possible view.

[00:04:53] Speaker 02:
What happened to your case if you'd have... everything's the same except you had another drawing that just simply showed the underlying structure of the design?

[00:05:03] Speaker 03:
Well if it would show the underlying structure in another view, then we've now narrowed our coverage.

[00:05:09] Speaker 03:
we've narrowed it significantly, and I think as the director... From 50 to 1?

[00:05:15] Speaker 03:
Or from 1,000 to 1?

[00:05:17] Speaker 03:
Well, it's basically narrowed us down to one application, one particular design where we might have... In that design, a placida wouldn't have any problem understanding it, correct?

[00:05:31] Speaker 02:
I'm sorry?

[00:05:32] Speaker 02:
That one design, a placida would not have any problem understanding that design.

[00:05:38] Speaker 03:
You mean a person?

[00:05:40] Speaker 03:
a person of ordinary skill would... I think you could put in perspectives where somebody skilled in the art would be able to say, yes, that's a particular embodiment.

[00:05:54] Speaker 03:
Yes, that's true.

[00:05:56] Speaker 02:
And without that underlying structure, a person of ordinary skill in the art would look at that and not know what else exists and would be left to speculate.

[00:06:07] Speaker 02:
Well, Your Honor, I... The pen, the claim,

[00:06:09] Speaker 02:
wouldn't inform a person of ordinary skill in the art as to the extent of the invention?

[00:06:17] Speaker 03:
Your Honor, I don't think that's correct because that would go to the indefiniteness part of the argument.

[00:06:25] Speaker 03:
But indefiniteness basically says, compare what's in the patent to what's in, let's say, a shoe bottom.

[00:06:34] Speaker 03:
And it's just a visual impression.

[00:06:36] Speaker 03:
So all anybody has to do in order to

[00:06:39] Speaker 03:
determine what the scope of the claim is, is take the Matita drawing, take the shoe, and look.

[00:06:46] Speaker 03:
And if they have similar visual impression, it's within the scope of the patent.

[00:06:52] Speaker 02:
I find this case interesting because of that point right there.

[00:06:55] Speaker 02:
So let's say somebody comes along two weeks later after this patent is issued.

[00:07:00] Speaker 02:
They have the same design except at the bottom they have a triangular shape.

[00:07:05] Speaker 02:
Would that be an infringing patent?

[00:07:07] Speaker 02:
You mean triangular from the view of looking like this?

[00:07:11] Speaker 02:
Yeah, connecting the sole right there where the design is on the sole of the tennis shoe down to wherever else that sole is glued on or connected to.

[00:07:20] Speaker 02:
There's now, let's say, a triangular shape down there.

[00:07:24] Speaker 03:
But what I'm asking is the triangular shape visible from this view?

[00:07:28] Speaker 02:
Regardless of the shape, any type of shape, would they be infringing the pen?

[00:07:32] Speaker 03:
Well, I think the issue is

[00:07:35] Speaker 03:
does it have the same visual impression?

[00:07:37] Speaker 03:
So it would depend on what exactly is it, if it's something that's significant.

[00:07:45] Speaker 03:
Because I think when you look at infringement, it's whether it's substantially similar from a visual standpoint.

[00:07:52] Speaker 03:
So I think for the purposes of the Matita patent application, what a person would do is look at the bottom, look at the drawing, look at the bottom.

[00:08:02] Speaker 03:
Now if the triangle,

[00:08:04] Speaker 03:
Instead of you have a kind of a curved shape, you have a triangle shape that probably takes it outside the scope of the patent.

[00:08:13] Speaker 03:
But if the triangle isn't visible from this view, there could still be infringement.

[00:08:23] Speaker 04:
Under Rubenfield, as I understand it, under design patent law, you can only have one client.

[00:08:31] Speaker 04:
It can have multiple embodiments.

[00:08:33] Speaker 04:
Correct.

[00:08:34] Speaker 04:
But you can't have an application which covers more than one invention.

[00:08:40] Speaker 04:
What do you understand the difference to be between an embodiment and an invention?

[00:08:48] Speaker 04:
Is that based on overall appearance?

[00:08:52] Speaker 03:
Well, I think if you look at the Moore case, the Moore case says that the

[00:08:58] Speaker 03:
inventor or the applicant defines his or her invention, which is what Matita did.

[00:09:04] Speaker 03:
The definition of his inventive concept is in his drawing.

[00:09:07] Speaker 04:
Help me understand what the difference is between claiming multiple embodiments of a single invention and claiming more than one invention.

[00:09:17] Speaker 04:
What do you understand in the design patent area to be the difference between us?

[00:09:22] Speaker 04:
How do you determine which is which?

[00:09:24] Speaker 03:
The rule, I believe, is that

[00:09:27] Speaker 03:
if it's the same inventive concept, you can have multiple embodiments.

[00:09:32] Speaker 00:
How do you know if it's the same inventive concept?

[00:09:38] Speaker 03:
I don't know if there's a hard and fast rule to be honest, Your Honor, but basically they would have to be fairly similar.

[00:09:44] Speaker 03:
If it's something that takes it outside of the scope of this significantly, of the first

[00:09:56] Speaker 03:
figure, embodiment, then the other one would probably be a separate invention.

[00:10:03] Speaker 03:
But the issue for Matita was there is only one inventive concept, which is what is demonstrated in his drawing.

[00:10:11] Speaker 00:
I think the examiner thought there was more than one inventive concept, right?

[00:10:15] Speaker 03:
I think what the examiner was saying is that there could be multiple ways to implement Matita's design.

[00:10:23] Speaker 03:
His design is

[00:10:25] Speaker 03:
a design for an article, and you could vary the article here and there to maybe make it look different if you were to look at other viewpoints.

[00:10:33] Speaker 03:
Which would create different inventions.

[00:10:36] Speaker 04:
They wouldn't be different inventions because his invention... Under the examiner's view, they're different inventions, and therefore they have to be separate applications.

[00:10:47] Speaker 03:
I think the examiner was basically saying that

[00:10:52] Speaker 03:
He could articulate different ways to achieve Matita's invention and that the, because we're now looking at section 112 and that somebody would have to then select of all these different embodiments, what's covered.

[00:11:07] Speaker 00:
I thought that he was saying, you know, at the bottom of page 71, he says, well, one embodiment or more may be protected by a single claim.

[00:11:15] Speaker 00:
Multiple embodiments may only be presented if they involve a single inventive concept.

[00:11:21] Speaker 00:
I thought that he was recognizing the same thing you are.

[00:11:24] Speaker 03:
Yes, Your Honor.

[00:11:24] Speaker 00:
But concluding that the inventive concept here, there are multiple inventive concepts here.

[00:11:28] Speaker 03:
Well, I think what the examiner did that was incorrect here is he didn't follow in Ray Moore.

[00:11:37] Speaker 03:
And what he did was decide for the inventor what is the scope of the claim.

[00:11:43] Speaker 03:
The inventor, Matita, had set forth a drawing that set forth his inventive concept and his claim.

[00:11:50] Speaker 03:
And granted, it's broad.

[00:11:52] Speaker 03:
It's a broad claim.

[00:11:53] Speaker 03:
But that's what he claimed.

[00:11:55] Speaker 04:
So the examiner... I don't understand how... I'm just trying to see if there's agreement on the basic law.

[00:12:03] Speaker 04:
If you have more than one inventive concept, you've got to have separate applications, right?

[00:12:11] Speaker 03:
If there is more than one inventive concept, you would have to have separate applications.

[00:12:17] Speaker 03:
Okay, so why

[00:12:19] Speaker 03:
Is there just a single inventive concept here?

[00:12:22] Speaker 03:
Because Matita provided a single drawing that shows his inventive concept.

[00:12:28] Speaker 03:
Well, that can't be.

[00:12:29] Speaker 04:
Just because somebody submits a single drawing, that it's conclusively established that it's a single inventive concept?

[00:12:35] Speaker 03:
Well, that's what he claims.

[00:12:38] Speaker 03:
Basically, you would look at it from the top and say, does it look like this?

[00:12:43] Speaker 03:
This is the scope.

[00:12:44] Speaker 03:
I gave an example, for instance, in a utility patent.

[00:12:49] Speaker 03:
you know, a claim that says acid but the fact that it could be citric acid or some other type of acid doesn't mean that you had to it can't cover all the acids.

[00:12:58] Speaker 03:
This is just simply a broad claim.

[00:13:00] Speaker 03:
It's one inventive concept.

[00:13:02] Speaker 04:
In all the cases where there's been... It can't be that just because you file a single drawing that that automatically means it's a single inventive concept, right?

[00:13:13] Speaker 04:
It can't be.

[00:13:14] Speaker 04:
Can it?

[00:13:15] Speaker 03:
I think it does, Your Honor, because there's only one

[00:13:19] Speaker 03:
one concept that's presented.

[00:13:21] Speaker 04:
In the cases where these issues come up is when people actually... Every time somebody submits a single drawing and the examiner says, well, you've got to file different applications because this is more than one inventive concept, the answer to that is, well, you can't say that because we had a single drawing.

[00:13:38] Speaker 03:
I'm not aware of any case where there's been a single drawing that there's been a finding that there's more than one inventive concept.

[00:13:44] Speaker 02:
Did you argue that could claim as a genus claim?

[00:13:48] Speaker 03:
In a sense, yes, your honor.

[00:13:50] Speaker 03:
And because a design patent covers one invention, you can claim it broadly.

[00:13:57] Speaker 03:
The cases talk about that.

[00:13:59] Speaker 03:
You can take features out.

[00:14:01] Speaker 03:
You don't have to include features if you want broader coverage.

[00:14:05] Speaker 03:
So in the cases where the inventive concept comes up is when somebody shows different embodiments in their application, then the examiner might look at that and say, you know, I think

[00:14:18] Speaker 03:
You have different inventive concepts here, but we only have one.

[00:14:22] Speaker 03:
We all have a single drawing.

[00:14:23] Speaker 03:
And I gave examples.

[00:14:24] Speaker 03:
This is standard practice in the patent office where, you know, I gave some examples so that you could see what the practice is.

[00:14:31] Speaker 03:
And there are patents that show one drawing of a shoe, of shoes, shoe bottoms.

[00:14:37] Speaker 03:
There's, I think one of a light.

[00:14:39] Speaker 03:
These are three-dimensional articles yet the, um,

[00:14:45] Speaker 03:
you know the inventive content there's just a single drawing and that's that's acceptable and that's issued as a patent okay you want to save your rebuttal time?

[00:14:55] Speaker 04:
thank you your honor I think the

[00:15:09] Speaker 01:
What the office is trying to do here, Your Honor, in making its enablement slash indefinite, this rejection, is to ensure clarity as it currently stands with the single... That's hard to achieve in this area.

[00:15:23] Speaker 01:
Yes, it is, Your Honor.

[00:15:24] Speaker 01:
But here, we have a single two-dimensional drawing is what we've got, a plan view.

[00:15:30] Speaker 01:
And when we have a two-dimensional drawing, what it applies to is a three-dimensional design.

[00:15:36] Speaker 01:
That's where the problem lies.

[00:15:39] Speaker 01:
What Appellant is trying to get... Why is that a problem?

[00:15:43] Speaker 01:
Well, because when you're trying to get protection for a design, there's three different, let me give you, there's three different basic categories.

[00:15:50] Speaker 01:
Category one would be like a print, a picture.

[00:15:54] Speaker 01:
It would be on a flat surface, like on a t-shirt or on a flat plate.

[00:15:58] Speaker 01:
If that's all that Appellant was seeking to claim in his design, it's just a simple print design, there'd be no problem with this drawing.

[00:16:05] Speaker 01:
it would be just fine.

[00:16:06] Speaker 01:
But when you go to the next category, the configuration category, which is more of a three-dimensional object where the design has an impact on the form of that object, in that category, there's a greater requirement for more disclosure.

[00:16:20] Speaker 01:
And the reason is... How does it impact the form of the object?

[00:16:24] Speaker 01:
Well, he says in his claim, I claim the following design for a shoe sole.

[00:16:30] Speaker 01:
We know the shoe sole

[00:16:32] Speaker 01:
is necessarily going to be in a three-dimensional form with treads and protrusions and recessed areas.

[00:16:38] Speaker 01:
In fact, when the examiner produced examples of how that could possibly be viewed, Appellant agreed that those possible examples would be covered by the scope of that claim.

[00:16:49] Speaker 01:
Accordingly, if you want a claim that covers something of that scope, which is in the three-dimensional category of configuration designs, you have to give a disclosure that is adequate for the

[00:17:01] Speaker 01:
ordinary artisan to understand what your design is.

[00:17:04] Speaker 04:
The problem here... The problem is that there are lots of design patents that are granted for three-dimensional objects that are based on a single drawing, right?

[00:17:16] Speaker 01:
On a single drawing, but typically the single drawing gives a perspective view, your honor.

[00:17:20] Speaker 01:
Let me give you an example.

[00:17:22] Speaker 01:
A perspective view of a design for a chair, which is a three-dimensional object.

[00:17:28] Speaker 01:
If you have a perspective view,

[00:17:29] Speaker 01:
you can see the shapes and the way the design's going to look.

[00:17:32] Speaker 01:
If you give someone simply a planned view of a three-dimensional object, and when you're looking down at that planned view, if there are many different ways that the three dimensions can be envisioned, then you have not given a clear understanding of the scope of that claim.

[00:17:47] Speaker 01:
And furthermore, you've not enabled an ordinary artisan to make a user.

[00:17:52] Speaker 02:
The observer would be looking at all the different dimensions at one time.

[00:17:56] Speaker 02:
In this situation, the observer's only looking at one

[00:17:59] Speaker 02:
One dimension, that's the sole of the shoe.

[00:18:02] Speaker 01:
Does it matter what's beneath the design, the structure?

[00:18:08] Speaker 01:
Well, yes, it does.

[00:18:08] Speaker 01:
Because when we say beneath the design, it's what's visible.

[00:18:12] Speaker 01:
Because if you walk into a shoe store, and I look at a bunch of shoes on the shelf, and I flip them all over, and I look at the soles, what's visible to me?

[00:18:19] Speaker 01:
The three-dimensional configuration of that shoe sole.

[00:18:22] Speaker 01:
I'm not looking at planned views of all those shoes in the store.

[00:18:26] Speaker 01:
So when we talked earlier a little bit about infringement

[00:18:29] Speaker 01:
I think the Supreme Court years ago clarified what that test was, and this court recently clarified it again, is that it's the ordinary observer test.

[00:18:39] Speaker 01:
So if an ordinary observer walks into a store and looks at all these shoes on the shelf and flips over the soles, what is it that they're going to see?

[00:18:47] Speaker 01:
They're going to see a three-dimensional shoe sole.

[00:18:49] Speaker 01:
They're not going to see planned views of all those shoe soles.

[00:18:52] Speaker 01:
Therefore, when you try to compare this design patent that potentially could issue here, when you flip

[00:18:58] Speaker 02:
I'm having a hard time here.

[00:19:00] Speaker 02:
I'm sorry.

[00:19:00] Speaker 02:
Oh, no, no, it's my fault.

[00:19:02] Speaker 02:
I mean, if you flip a shoe over and you're just looking at the treads, why do you say you're looking at a three-dimensional?

[00:19:11] Speaker 02:
I mean, here, all you're looking at is, you know, you have these little shapes.

[00:19:16] Speaker 02:
When you look at the drawing, I think it's pretty clear what the design is.

[00:19:19] Speaker 01:
Well, and if you look at the, if we go back to page four, appendix page four of the board decision where they reprint

[00:19:27] Speaker 01:
the examiner's illustrations of possibilities of ways to envision it.

[00:19:30] Speaker 01:
If you see there, the examiner was just giving examples.

[00:19:33] Speaker 01:
He's saying, here's four different ways.

[00:19:35] Speaker 01:
There are probably hundreds of ways that you could envision it based on that plan view.

[00:19:39] Speaker 01:
And if you look at these four different ways and you saw four different shoe soles like this in the shoe store, they would all look different.

[00:19:46] Speaker 01:
They would all create a different visual impression, which is what a design patent is protecting.

[00:19:52] Speaker 01:
It's the visual impression given to that ordinary observer

[00:19:55] Speaker 01:
That's what they're looking at.

[00:19:56] Speaker 01:
And these different configurations that can be imagined is where the problem lies.

[00:20:01] Speaker 01:
Because if an ordinary artisan cannot pick up the design patent and look at the drawing and figure out what the configuration is, but has to imagine hundreds of different possibilities, that's speculation as to what to play.

[00:20:13] Speaker 01:
So in order to get protection, he has to file hundreds of different patent applications?

[00:20:17] Speaker 01:
No, I don't think so.

[00:20:18] Speaker 01:
I think what could have been done is a single patent application could have been filed here with a different

[00:20:24] Speaker 01:
drawing, a drawing that gives a perspective view or an additional drawing.

[00:20:28] Speaker 01:
And yes, it's true.

[00:20:29] Speaker 00:
Wouldn't that be just limited then to one embodiment, if you will?

[00:20:33] Speaker 00:
Whether you call it an embodiment or inventive concept, it would then be limited to one of these or another depiction, like what the examiner had.

[00:20:41] Speaker 01:
Not exactly, Your Honor.

[00:20:43] Speaker 01:
If you came forth with a better drawing, a perspective view, or multiple drawing views of this thing, and the applicant used the solid lines and the dashed lines appropriately,

[00:20:54] Speaker 01:
Again, the solid lines become the claimed subject matter.

[00:20:57] Speaker 01:
The dashed lines become the unclaimed subject matter.

[00:21:00] Speaker 01:
Accordingly, you could still disclose multiple indistinct embodiments.

[00:21:06] Speaker 01:
But it's true, by definition, if you come in with a perspective view drawing, it is going to be narrower than what they're trying to get here.

[00:21:13] Speaker 00:
But it wouldn't... Tell me what that might look like, because I'm having a hard time envisioning what you're talking about in terms of how you could claim it, cover a lot of different embodiments,

[00:21:22] Speaker 00:
Right.

[00:21:23] Speaker 00:
Somehow through the use of dashed lines.

[00:21:26] Speaker 01:
Well, that's the whole point.

[00:21:28] Speaker 01:
The way design patent law works is if you use these solid lines, that's your claim subject matter.

[00:21:35] Speaker 00:
I understand that, but tell me what the drawing would look like.

[00:21:37] Speaker 01:
Well, for example, let's say we were just going to claim this rectangular portion of the lectern.

[00:21:44] Speaker 00:
What I mean specifically with respect to the shoe.

[00:21:46] Speaker 01:
Yeah.

[00:21:47] Speaker 01:
I mean, the drawing would definitely show the structure

[00:21:51] Speaker 01:
that the way the shoe sole looked, whether these things were protruding or whether they were recessed.

[00:21:55] Speaker 01:
Now, that doesn't mean they would have to claim every single line and every single distinct portion of that shoe sole.

[00:22:02] Speaker 01:
Nevertheless, you have to give an understanding of the three-dimensional thing that you're trying to get a design patent on.

[00:22:09] Speaker 01:
And right now, they haven't done that.

[00:22:10] Speaker 01:
Now, it's true.

[00:22:11] Speaker 01:
You can control the breadth of your claim through the use of these dashed and solid lines.

[00:22:15] Speaker 01:
But nevertheless, that doesn't give you the right to just have uncontrolled breadth, which this claim

[00:22:20] Speaker 01:
falls into the category of vagueness where the breath becomes so uncontrolled that it's not clear.

[00:22:25] Speaker 04:
The problem is sometimes you're allowed to have a single drawing with a two-dimensional view which covers multiple embodiments where the embodiments might differ in shape.

[00:22:42] Speaker 04:
And what I find puzzling is how am I supposed to distinguish

[00:22:46] Speaker 04:
between situations in which you can do that with a single two-dimensional drawing and those in which you can't.

[00:22:56] Speaker 01:
Let me read you a quote to help you with that, Your Honor.

[00:23:00] Speaker 01:
The examiner cited repeatedly throughout his office action and the board cited it.

[00:23:05] Speaker 01:
There's this old commissioner decision called Salisbury.

[00:23:09] Speaker 01:
And that's unfortunately there's not a lot of case law in this area.

[00:23:14] Speaker 01:
So what the agency relies on,

[00:23:16] Speaker 01:
And what courts rely on when they have to is these very old commissioner decisions.

[00:23:20] Speaker 01:
And there's this Salisbury decision.

[00:23:22] Speaker 01:
And if you read what Salisbury says, it's quite interesting.

[00:23:26] Speaker 01:
And it talks about the three different categories of articles.

[00:23:32] Speaker 01:
You have flat articles, which are flat.

[00:23:34] Speaker 01:
And then you have these configuration type articles, which have a three dimensional shape.

[00:23:38] Speaker 01:
And it says, it's recognized that a flat article can generally be sufficiently illustrated by a single view.

[00:23:45] Speaker 01:
Likewise, articles of a symmetrical nature are often sufficiently illustrated by a single well-executed perspective view, since it can be deduced with certainty from one view how the article will appear from the other side.

[00:23:59] Speaker 01:
However, with articles that are unsymmetrical and which present different appearances from different points of view, one figure from a single point, however well-executed, is not sufficient for complete disclosure.

[00:24:12] Speaker 01:
So here's the problem.

[00:24:13] Speaker 01:
If you've got an object that you know is symmetrical, and you know it looks the same in all different angles, it's very easy to say, hey, here's one view, and I'm telling you it looks the same in all different angles, so you only have to provide that view sufficient disclosure.

[00:24:26] Speaker 01:
Here, what we have is an unsymmetrical type article, where these sous sol features could be in any number of different ways.

[00:24:36] Speaker 01:
And as a result, a single view is inadequate to provide sufficient disclosure

[00:24:41] Speaker 01:
for this type of design.

[00:24:42] Speaker 01:
So that's kind of the test on how you measure or how an examiner would determine whether or not the drawings are sufficient.

[00:24:49] Speaker 01:
And that principle also pops up in another old.

[00:24:54] Speaker 04:
OK, but take a look at page 15 of the blueprint.

[00:24:59] Speaker 04:
And here are other shoe cells that have been branded based on a single flat.

[00:25:08] Speaker 04:
So what's the difference between those and this?

[00:25:12] Speaker 01:
Sorry, page 15 of the blue brief, your honor?

[00:25:14] Speaker 04:
Yeah.

[00:25:18] Speaker 01:
Yeah, these are other shoe sole designs.

[00:25:20] Speaker 01:
I can't say for sure if these are perfectly flat with simply just a ornamental design on them or if they're three-dimensional configurations.

[00:25:28] Speaker 01:
It's not entirely clear to me.

[00:25:33] Speaker 01:
Whether or not other patents have issued in violation of this principle or not, I can't say.

[00:25:38] Speaker 01:
What I can say is, if we had a flat sole, a perfectly flat surface sole, and all we wanted to do was imprint this design on the bottom of that flat sole and there were no tread configurations, the drawing would be just fine.

[00:25:51] Speaker 01:
But that's not what we've got.

[00:25:52] Speaker 02:
On piece 15, you do have a shoe sole with different configurations.

[00:25:57] Speaker 02:
And I believe that all these patents were issued with just one drawing.

[00:26:01] Speaker 02:
Right.

[00:26:02] Speaker 01:
Well, I don't know, because we don't actually have those patents in front of us, whether it's

[00:26:08] Speaker 01:
a singular drawing or not.

[00:26:09] Speaker 01:
Nevertheless, remember you can also have words in a design patent.

[00:26:12] Speaker 01:
If the design patent would have said what we're seeking protection on is simply the flat sole with just the print, no problem.

[00:26:20] Speaker 01:
You could do it.

[00:26:21] Speaker 01:
But that's not what's happening here.

[00:26:23] Speaker 01:
The sole would have to be flat.

[00:26:24] Speaker 01:
What was that?

[00:26:25] Speaker 01:
The sole would have to be flat.

[00:26:26] Speaker 01:
Exactly.

[00:26:27] Speaker 01:
Like a tennis sneaker in the old days when they played on clay courts, they had flat soles, or grass courts, they had flat soles.

[00:26:34] Speaker 01:
And if all you wanted to do was imprint

[00:26:37] Speaker 01:
a design on there with no deep-depthness or no raised levels, that would be no problem.

[00:26:43] Speaker 01:
But what you've got here is a three-dimensional configuration design.

[00:26:48] Speaker 01:
And in fact, the examiner confirmed that during the prosecution and even challenged the appellant to say, hey, are all you seeking is a protection for a print?

[00:26:59] Speaker 02:
And that's not what they're seeking, because the appellant is... Would it make a difference to your argument if these

[00:27:04] Speaker 02:
patents were in fact supported with only one drawing, one figure?

[00:27:08] Speaker 01:
It wouldn't make a difference, Your Honor, because even if you could prove to me or an appellant could prove to me that somehow these old patents were issued in violation of this principle, the bottom line is the principle that we're arguing is correct.

[00:27:21] Speaker 01:
It's there for a good reason.

[00:27:23] Speaker 01:
It's consistent with 35 U.S.

[00:27:24] Speaker 01:
Code, Section 112.

[00:27:26] Speaker 01:
And we want this court to give us a decision to make it clear, because we have so little law in this area.

[00:27:32] Speaker 01:
It's beneficial to us to clarify it.

[00:27:34] Speaker 01:
So even if we can find old cases where the office may have issued this.

[00:27:39] Speaker 01:
Do you claim that this is a genus claim?

[00:27:44] Speaker 01:
I don't know that they've ever said it's a genus claim.

[00:27:48] Speaker 01:
And here's the problem again.

[00:27:50] Speaker 01:
If you want to claim multiple embodiments, they have to be indistinct from each other, which means

[00:27:57] Speaker 01:
The examiners illustrated three or four examples here.

[00:27:59] Speaker 01:
What does that mean, indistinct from each other?

[00:28:03] Speaker 01:
Patentably indistinct, Your Honor.

[00:28:04] Speaker 01:
What does that mean?

[00:28:06] Speaker 01:
Well, in the design world, we know there's a test of obviousness under the Rosen reference.

[00:28:11] Speaker 01:
And the Rosen reference theory would determine whether or not something was obvious or not from something else.

[00:28:16] Speaker 01:
And if you couldn't meet that test, they would be indistinct.

[00:28:20] Speaker 01:
I mean they would be distinct from each other and they couldn't be in a single patent application.

[00:28:24] Speaker 00:
So it's like the obviousness double patenting standard?

[00:28:27] Speaker 01:
Very similar, right.

[00:28:29] Speaker 00:
Is that what you're drawing from with the idea that you couldn't have claims in two different patents drawn to the same inventive concept?

[00:28:38] Speaker 01:
As Judge Dyke earlier pointed out, there's this older case called Rubenfeld and in Rubenfeld they say yes, you have to have a single claim in a design patent and that single claim has to be

[00:28:49] Speaker 01:
directed to a single inventive concept.

[00:28:51] Speaker 01:
And if you try to put in other claims in that patent application that are distinct, patently distinct, what will happen is there will be an automatic restriction.

[00:29:01] Speaker 01:
And it will be restricted out.

[00:29:02] Speaker 01:
They have to be filed in a separate application.

[00:29:04] Speaker 01:
If you, though, simply come forth with embodiments of the same invention and they are indistinct, you're permitted to leave those in the same application.

[00:29:13] Speaker 01:
So here, the examiner indeed said,

[00:29:17] Speaker 01:
The examples that he gave, the four or five examples, those are indistinct from each other.

[00:29:21] Speaker 01:
In fact, I don't believe during the prosecution that appellant ever disagreed with that because the board said in their decision they referenced it.

[00:29:29] Speaker 04:
Indistinct from each other?

[00:29:30] Speaker 01:
Right.

[00:29:31] Speaker 01:
Let me show you.

[00:29:34] Speaker 01:
I thought the theory was that they were patently distinct.

[00:29:38] Speaker 01:
Let me take you to page five of the board decision if I misquoted.

[00:29:41] Speaker 01:
Wait, wait, wait.

[00:29:42] Speaker 01:
Am I right?

[00:29:43] Speaker 01:
patently distinct from each other.

[00:29:45] Speaker 01:
If I misspoke, I'm sorry.

[00:29:47] Speaker 01:
But let me take you to page 5 of the appendix, APPX 5, at the very top.

[00:29:54] Speaker 01:
Look at what it starts on page 4 and it carries over.

[00:29:58] Speaker 01:
Appellant admits on the bottom of page 4, appendix page 4, that the claim covers multiple embodiments.

[00:30:04] Speaker 01:
And then he quotes, as the examiner notes, multiple different embodiments encompassed within the scope.

[00:30:09] Speaker 01:
So the appellant admits it's covered.

[00:30:11] Speaker 01:
And then it says on page 5,

[00:30:14] Speaker 01:
The appellant does not refute that the claim covers examiner's various depicted embodiments and does not refute that the covered embodiments may be patently distinct.

[00:30:23] Speaker 01:
So the examiner made a determination that said, hey, if these were the separate embodiments that you were trying to bring forth in a separate application, the examiner would treat those as distinct and restrict them out.

[00:30:38] Speaker 04:
That was never... And so if you as applied to determine what's patently distinct here, you say we should apply the obviousness test.

[00:30:46] Speaker 01:
What does that mean that the test... Well, I think what happens is when the examiner evaluates the multiple embodiments in an application, he'll say, is A distinct from B?

[00:30:57] Speaker 01:
And how do I figure that out?

[00:30:58] Speaker 01:
We have to apply a patentability distinction test.

[00:31:02] Speaker 01:
That's what happens.

[00:31:02] Speaker 01:
And the test is?

[00:31:03] Speaker 01:
And in the design world,

[00:31:05] Speaker 01:
It's either anticipated or it's obvious.

[00:31:08] Speaker 01:
And if it's neither of those.

[00:31:09] Speaker 01:
OK, but what's the test for obviousness?

[00:31:12] Speaker 01:
Well, under the Rosen doctrine, there's something called the Rosen reference, which is basically the same as the other reference.

[00:31:19] Speaker 01:
And then you have to have either a secondary reference or a reason why that app, the ordinary artist would combine them together.

[00:31:25] Speaker 01:
So the point is, in the design world, there is a way to evaluate, just like there is in the utility world, whether or not two things are distinct from each other.

[00:31:35] Speaker 01:
The examiner said... Can you say again what you understand the test to be?

[00:31:38] Speaker 01:
Well, is it patently distinct?

[00:31:42] Speaker 01:
Is one thing patently distinct from the other thing?

[00:31:45] Speaker 01:
Yeah, but that's not a helpful formulation.

[00:31:47] Speaker 04:
Yeah, and it's not... You have to have some way of figuring out what patently distinct means in the design world.

[00:31:55] Speaker 01:
Right.

[00:31:55] Speaker 01:
And there's an established body of law in design patent law that talks about the doctor of anticipation.

[00:32:02] Speaker 01:
That's not patently distinct.

[00:32:03] Speaker 01:
and the doctrine of obviousness.

[00:32:05] Speaker 01:
They're not patently distinct either.

[00:32:07] Speaker 01:
And you would go through those typical established design tests to evaluate.

[00:32:12] Speaker 02:
The objection here was not on obviousness.

[00:32:14] Speaker 01:
No.

[00:32:15] Speaker 01:
Right.

[00:32:15] Speaker 01:
And really, why would you apply an obviousness test?

[00:32:18] Speaker 01:
Well, the only reason that would ever come up is if we were trying to figure out whether two drawings that were submitted in an application were distinct from each other.

[00:32:26] Speaker 01:
That's the only reason.

[00:32:27] Speaker 01:
Here, what we're talking about here is before that.

[00:32:29] Speaker 01:
We haven't even reached that point.

[00:32:31] Speaker 01:
We've got a single drawing, not multiple drawings, one drawing.

[00:32:34] Speaker 02:
Let's say you have two drawings.

[00:32:36] Speaker 02:
One is a size 7 and one is a size 9.

[00:32:38] Speaker 02:
Are those patently distinct?

[00:32:41] Speaker 01:
Well, the examiner would have to look at the drawings and just a difference in size.

[00:32:44] Speaker 01:
That same drawing?

[00:32:45] Speaker 01:
I mean, I couldn't say whether just a difference in size would be enough.

[00:32:51] Speaker 01:
They would have to run it through the patentable distinctness evaluation to determine.

[00:32:55] Speaker 01:
What is that test?

[00:32:56] Speaker 01:
Well, that's what I was trying to explain earlier is the, I know,

[00:33:00] Speaker 01:
What I was trying to explain earlier, Your Honor, is patent will... We really need your help.

[00:33:04] Speaker 02:
I mean, there's not a lot of law in this area.

[00:33:06] Speaker 01:
There's not.

[00:33:07] Speaker 01:
No.

[00:33:07] Speaker 01:
There's not.

[00:33:07] Speaker 01:
But really, patental distinctness is really not even an issue on the table in this case.

[00:33:12] Speaker 01:
So it was never briefed.

[00:33:13] Speaker 01:
It's never part of it.

[00:33:14] Speaker 01:
But what I'm trying to explain is, if there are multiple drawings in a single design application, there has to be a determination made on whether or not they're distinct from each other.

[00:33:23] Speaker 01:
And if they are, they get restricted out under the

[00:33:26] Speaker 01:
mandatory restriction.

[00:33:27] Speaker 01:
But that doesn't apply when you only have one drawing.

[00:33:29] Speaker 01:
Exactly.

[00:33:30] Speaker 01:
None of that applies here.

[00:33:31] Speaker 01:
What we've got here is a single drawing.

[00:33:33] Speaker 01:
The single drawing is being evaluated under 35 U.S.

[00:33:36] Speaker 01:
Code 112.

[00:33:37] Speaker 01:
And the examiner has said, hey, because I can imagine many, many, many possible configurations in the three dimensions from your single two-dimensional drawing, that's a problem.

[00:33:47] Speaker 01:
And because that's a problem and it requires conjecture or guessing, therefore, it fails the enablement and indefinite.

[00:33:55] Speaker 02:
Let's say you had a drawing

[00:33:56] Speaker 02:
a couple of these other figures that are in here.

[00:34:00] Speaker 02:
Wouldn't the observer look at this and say, well, OK, I understand these three configurations, but I can imagine a whole lot more.

[00:34:08] Speaker 01:
Well, I think that's the whole point.

[00:34:12] Speaker 01:
We're trying to get the patent.

[00:34:13] Speaker 01:
If the patent issues, what the office wants is let's nail it down.

[00:34:18] Speaker 01:
What is the thing that you're claiming?

[00:34:20] Speaker 01:
We don't want to guess that there's 100.

[00:34:23] Speaker 01:
We want to know what it is that you're claiming.

[00:34:24] Speaker 01:
What is your design?

[00:34:26] Speaker 01:
What is the visual impression that you're protecting in the three-dimensional configuration context?

[00:34:30] Speaker 01:
And if you can make that clear from your drawing, no problem.

[00:34:34] Speaker 00:
I thought there was an additional point, which does get into whether it's patentably distinct or a different inventing concept, which is I hear your adversary saying, wait, you just look at it from the plan view.

[00:34:47] Speaker 00:
You turn it over and look at it from that view.

[00:34:50] Speaker 00:
And then you would be able to determine, regardless of the three-dimensional aspect,

[00:34:56] Speaker 00:
whether it meets that design or not.

[00:34:59] Speaker 00:
And I thought that one of the responses was, no, that wouldn't work because there'd be so many different possibilities and they wouldn't be patentably distinct.

[00:35:13] Speaker 00:
And you could only have your patent directed to a single

[00:35:19] Speaker 00:
inventive concept.

[00:35:21] Speaker 00:
So am I correct in understanding that that is kind of part of the argument that's being made here?

[00:35:26] Speaker 01:
I think the problem is if you're in the infringement world, let's say the patent issue just like this with a single two-dimensional drawing, the problem would be is we want to take that patent drawing and we want to compare that to the alleged infringing device, an alleged infringing article, and the problem would be we're now comparing a two-dimensional plan view to a three-dimensional object, but since there are all these possibilities

[00:35:48] Speaker 01:
that could be alleged infringing devices, it would be very difficult for us to nail down what's infringing and what's not infringing.

[00:35:55] Speaker 01:
All we would be looking at is this plan view.

[00:35:58] Speaker 01:
So the ordinary observer test would have a very difficult time of applying that test in the infringement context without an adequate disclosure.

[00:36:07] Speaker 01:
I think that's what I was trying to say.

[00:36:09] Speaker 01:
I apologize if I've been talking a little bit too quickly.

[00:36:13] Speaker 01:
There's a lot of information here.

[00:36:15] Speaker 01:
And if I was a little too fast there

[00:36:17] Speaker 01:
misstated, I apologize.

[00:36:19] Speaker 01:
I don't know if that helps.

[00:36:21] Speaker 01:
It's kind of the policy behind why we need to be somewhat scrutinizing with 112, because if we have clarity before the patent issues, then there's not a problem later when the patent gets enforced.

[00:36:34] Speaker 01:
That's what we're trying to do.

[00:36:36] Speaker 01:
And I think the office is acting, and not only that, we have to make sure the claim is enabled, not just for a part of the claim, but for the full scope of the claim, because that's the legal standard that we have to go by.

[00:36:48] Speaker 01:
Here, appellant might have pointed out, oh, one of these drawings.

[00:36:52] Speaker 01:
And he says that the examiner admitted that they're enabled.

[00:36:53] Speaker 01:
The examiner admitted by showing these examples that it's enabled.

[00:36:57] Speaker 01:
Well, that's not an admission.

[00:36:59] Speaker 01:
That's a demonstration by the examiner how difficult it is to nail down what the visual impression is, because there's so many of them.

[00:37:07] Speaker 01:
And so I think that's it.

[00:37:08] Speaker 01:
Thank you very much.

[00:37:15] Speaker 03:
Thank you, Your Honor.

[00:37:18] Speaker 03:
I'd just like to point out that with regard to those four examples, they're not at a planned view.

[00:37:28] Speaker 03:
They're at a different view.

[00:37:30] Speaker 03:
What the examiner did was add in limitations that are not part of our claim.

[00:37:35] Speaker 03:
It's a genus claim.

[00:37:37] Speaker 03:
Granted, it's broad.

[00:37:38] Speaker 03:
But it's very simple for someone to take the bottom of a shoe, this drawing, and look at the visual impression and decide whether or not there's infringement or this falls within the scope.

[00:37:48] Speaker 03:
Now, with regard to enablement, and I'll just say this is a Section 112 case.

[00:37:54] Speaker 03:
The one thing that Pelley hasn't applied are the actual standards of Section 112.

[00:38:00] Speaker 03:
He cites, for instance, he quoted from Salisbury.

[00:38:04] Speaker 03:
Salisbury is an old case that was reversed.

[00:38:07] Speaker 03:
It's inconsistent with Zahn because what the basis of Salisbury was is that the article wasn't shown completely.

[00:38:17] Speaker 03:
It was a car.

[00:38:19] Speaker 03:
There was one drawing.

[00:38:20] Speaker 03:
You can't see the back of the car in the drawing.

[00:38:22] Speaker 03:
Therefore, they said that Salisbury said it's invalid because it doesn't have a complete disclosure of the article.

[00:38:30] Speaker 03:
But as Zahn made clear, it's a design for an article.

[00:38:34] Speaker 03:
We're not designing an article.

[00:38:37] Speaker 03:
And what the examiner, the board, and appellee are trying to do are add limitations that are not in our claim.

[00:38:45] Speaker 03:
So yes, it's broad.

[00:38:47] Speaker 03:
It's a genus.

[00:38:48] Speaker 03:
from an indefinite standpoint, it's very simple to make a decision as to whether or not there's an infringement.

[00:38:54] Speaker 03:
Okay, Mr. Shapiro, I think we're out of time.

[00:38:57] Speaker 03:
Thank you.

[00:38:58] Speaker 04:
Oh, sorry.

[00:38:59] Speaker 04:
You may be disappointed, but that's the way it is.

[00:39:02] Speaker 03:
I didn't realize I had six minutes.

[00:39:03] Speaker 03:
There are a lot of people who are disappointed.

[00:39:04] Speaker 04:
I get that, Your Honor.

[00:39:06] Speaker 04:
Thank you.

[00:39:07] Speaker 04:
The panel would like both sides to provide us with supplemental briefs on the issue of what the standard is for determining

[00:39:18] Speaker 04:
when there are patently distinct designs.

[00:39:23] Speaker 04:
And why don't we say 15 pages aside and two weeks from now.

[00:39:32] Speaker 04:
Is that feasible?

[00:39:34] Speaker 04:
Yes, Your Honor.

[00:39:36] Speaker 04:
Thank you.

[00:39:37] Speaker 04:
Thank you.

[00:39:37] Speaker 04:
Thank both sides.

[00:39:38] Speaker 02:
Do you want to limit the question in situations where there's a single drawing?

[00:39:45] Speaker 04:
None of them want to be limited.

[00:39:48] Speaker 04:
But I think in doing the briefing, focus particularly on situations where there's a single drawing, and we're trying to figure out whether it's patentably distinct.

[00:39:59] Speaker 04:
But don't limit it to that.

[00:40:02] Speaker 04:
Thank you, Your Honor.

[00:40:03] Speaker 04:
OK.

[00:40:04] Speaker 04:
Thank you.

[00:40:05] Speaker 04:
Thank both sides.

[00:40:05] Speaker 04:
The case is submitted.

[00:40:06] Speaker 04:
That concludes our session for this morning.