By Brian Craig, J.D.
The PTAB erred in its obviousness analysis of two design patents that claimed ornamental designs for a gravity feed dispenser display.
The U.S. Court of Appeals for the Federal Circuit has vacated, in part, a decision by the Patent Trial and Appeal Board in a challenge brought by Campbell Soup Company that two patents designed to dispense cans using gravity owned by Gamon Plus, Inc., are not obvious. While the Federal Circuit agreed that substantial evidence supports the Board’s finding that one prior reference shows that the patents are not obvious, substantial evidence does not support the Board’s finding that another reference is not a proper primary refence. One member of the three-judge panel wrote a dissenting opinion arguing that the majority erred in modifying the design for one of the references by adding a can in order to create a similar design (Campbell Soup Co. v. Gamon Plus, Inc., September 26, 2019, Moore, K.).
Gamon Plus, Inc., owns U.S. Patent Nos. D612,646 (the ’646 patent) and D621,645 (the ’645 patent), which each claim the ornamental design for a gravity feed dispenser display. Campbell Soup Company petitioned for inter partes review that the claimed designs of the ’646 and ’645 Patents would have been obvious over U.S. Patent No. D405,622 ("Linz") and G.B. Patent Application No. 2,303,624 ("Samways"). The Board concluded that the claimed designs would not have been obvious over Linz and Samways. Campbell Soup appealed the Board’s decision.
Obviousness. The Federal Circuit reviewed the Board’s obviousness analysis based on four factors: (1) the scope and content of the prior art; (2) the differences between the claims and the prior art; (3) the level of ordinary skill in the art; and (4) objective considerations of nonobviousness. In the design patent context, the ultimate inquiry is whether the claimed design would have been obvious to a designer of ordinary skill who designs articles of the type involved. To determine whether one of ordinary skill would have combined teachings of the prior art to create the same overall visual appearance as the claimed design, the fact finder must first find a single reference, a something in existence, the de-sign characteristics of which are basically the same as the claimed design. To identify a primary reference, one must: (1) discern the correct visual impression created by the patented design as a whole; and (2) determine whether there is a single reference that creates basically the same visual impression.
Linz. The Federal Circuit concluded substantial evidence does not support the Board’s finding that Linz is not a proper primary reference. The parties do not dispute that the claimed designs of the ’645 and ’646 patents and the design of Linz are for dispensing cans and that a can would be used in the system. Instead, the parties dispute the dimensions of a can that would be used in Linz in comparison with that in the claimed designs. Accepting the Board’s description of the claimed designs as correct, the ever-so-slight differences in design, in light of the overall similarities, do not properly lead to the result that Linz is not a single reference that creates basically the same visual impression as the claimed designs. In light of these facts, the Board’s finding that Linz is not a proper primary reference is not supported by substantial evidence.
Samways. The Federal Circuit agreed, however, with the Board’s finding that Samways was not a proper primary reference. Samways has a dual dispensing area, compared to the single dispensing area of the claimed designs. In addition, Samways has a front label area with different dimensions that extends across both dispensing areas that the claimed designs. Given these differences, substantial evidence supports the Board’s finding that Samways does not create basically the same visual impression as the claimed designs.
Remand. Because substantial evidence does not support the Board’s finding that Linz is not a proper primary reference, the Federal Circuit vacated the Board’s conclusion that the claimed designs would not have been obvious over Linz in view of Samways. On remand, the Federal Circuit directed the Board to also consider the non-instituted grounds for unpatentability consistent with the U.S. Supreme Court’s decision in SAS Institute Inc. v. Iancu, 138 S. Ct. 1348 (2018).
Dissenting opinion. Circuit Judge Pauline Newman wrote a dissenting opinion arguing that the Linz design cannot serve as a primary reference. Judge Newman wrote that her colleagues err in design patent law in modifying the Linz design by adding a can in order to create a design more similar to the Gamon design. Judge Newman opined that this analysis is not in accordance with design patent law.
This case is Nos. 18-2029 and 18-2030.
Attorneys: Tracy Zurzolo Quinn (Holland & Knight LLP) for Campbell Soup Co. and Campbell Sales Co. Martin B. Pavane, (Cozen O'Connor) for Trinity Manufacturing, LLC. Andrew L. Tiajoloff (Tiajoloff & Kelly LLP) for Gamon Plus, Inc.
Companies: Campbell Soup Co.; Campbell Sales Co.; Trinity Manufacturing, LLC; Gamon Plus, Inc.
MainStory: TopStory Patent FedCirNews
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