Enablement (and Definiteness): In re Maatita October 24, 2018 Richard Stockton

112(a): Enablement “The specification shall ... enable any person skilled in the art to which [the invention] pertains … to make and use the same.”

112(b): Definiteness “The specification shall conclude with [a claim] particularly pointing out and distinctly claiming the subject matter … .” Omitted at end: “…which the inventor ... regards as the invention.”

In re Maatita, 900 F.3d 1369 (Fed. Cir. Aug. 20, 2018)

What Did Maatita Do? (besides reversing the rejections here) Merged enablement and definiteness analysis Confirmed Nautilus definiteness standard applies to DPs Connected definiteness to design patent infringement standard Condoned lower court “error” case law for DPs…

Ex parte Asano, 201 USPQ 315 (BPAI 1978) 1. The attachment cable illustrated in Figure 1 is shown as recessed within the pulley surface while in Figure 5 it is illustrated as slightly raised from the pulley surface. 2, 6. The boom support coupling shown in Figure 2 is not illustrated in Figure 1. 3. The pivot connecting the boom to the hydraulic cylinder is not shown symmetrical on both sides of the boom in Figure 1. 4. The boom is spaced from the vehicle cab in Figure 1, but touching the cab in Figure 6. 5. The boom in Figure 1 has a right angle bend adjacent the vehicle cab, but this bend is not apparent in Figure 6. 7. The box-like structure at the base of the pivot connecting the boom to the hydraulic cylinder shown in Figure 2 does not appear in Figure 3. 8. The reel-like structure on the vehicle body connected to the boom attachment cable in Figure 2 is not shown in Figure 3. 9, 10. The low flat profiled structure connected with a support or cable to the boom support structure in Figure 2 is illustrated as a rounded structure in Figure 3. x11. Two vertical stacks are illustrated in Figure 2 while three are shown in Figure 3. x12, 17. The stacks shown in Figures 2 and 3 are not shown in Figure 5. 13, 16. The forward line of the vehicle body adjacent the cab is not shown in Figure 5. 14, 15. The structure for connecting the boom supports are illustrated as extending transversely beyond the boom frame in Figure 5 but are illustrated as being flush with the frame in Figures 1 and 6. 18. The attachment boom cable is not shown as extending over the top pulley in Figure 6.

Times Three Clothier v. Spanx 2014 WL 1688130 (S.D.N.Y. 2014)

Eclectic Prods. v. Painters Prod. 2015 WL 930045 (D.Or. 2015) There was a clear plastic cap over this in related apps. Courts can correct minor errors (Court may correct “obvious minor typographical and clerical errors,” but “major errors are subject only to correction by the PTO.” Novo Indus., LP v. Micro Molds Corp., 350 F.3d 1348, 1357 (Fed. Cir. 2003)).

No rehearing request (mandate issued), but cert. deadline: 12/19/18 What’s Next… No rehearing request (mandate issued), but cert. deadline: 12/19/18 Further rejections? Factual distinctions? Maatita’s legacy may not be its holding… Understand second-hand that enablement rejection has been withdrawn ivo Maatita. No rehearing/en banc filed, but cert still available Rejs: Restriction (121), enablement/definiteness Dist: only for single view (obv std applies), conflated analysis here, shoe/teapot Legacy: so many factual dist, that risky to provide one view. Really only rely when

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