by Dennis Crouch

The law in this area is a total mess, and this case substantially increases the confusion.

Campbell Soup Co. v. Gamon Plus, Inc. (Fed. Cir. 2019)

Gamon Plus’s two design patents at issue here are directed to particular aspect of a design for a gravity feed can dispenser. U.S. Design Pats. D612,646 and D621,645. Campbell’s filed IPR challenges after Gamon sued for infringement. After initiating the IPRs, the PTAB eventually concluded decided that the claimed design had not been proven obvious. On appeal, the Federal Circuit has vacated and remanded — holding that the Board had improperly excluded a prior art reference (Linz) as a “primary reference” for the obviousness analysis.

OK – Look at these to “designs.” Note here that only solid lines count for the actual patented design — the broken (ghost) lines show what the rest of the product might look like. My replacement drawings are below – showing the design without the ghost lines.

D612,646 (on the left) has that curved top portion – no borders claimed so it might continue on wider or stop; two little tabs holding a can; and a portion of a cylindrical object.

(on the left) has that curved top portion – no borders claimed so it might continue on wider or stop; two little tabs holding a can; and a portion of a cylindrical object. D621,645 (on the right) is the same except the can might be longer, and the tabs are not claimed.

Design patents are governed by the same obviousness statute – Section 103 – and follow the same Graham v. John Deere inquiry. The inquiry as restated by the Federal Circuit is whether it would have been obvious to PHOSITA to have “combined teachings of the prior art to create the same overall visual appearance as the claimed design.” Apple v. Samsung (Fed. Cir. 2012). In Apple, the court also provided a methodology of first beginning with a primary reference — a single reference whose “design characteristics … are basically the same as the claimed design” i.e., creates “basically the same visual impression.” See Durling v. Spectrum Furniture Co. (Fed. Cir. 1996); In re Rosen, 673 F.2d 388 (CCPA 1982)

The key reference in this case is Linz, but you’ll note that Linz does not disclose the tabs and neither show a can.

In its decision the PTAB found that the lack of a disclosed can was critical and that adding a “hypothetical can” would be improper. PTAB: Linz “fails to disclose a cylindrical object below the label area in a similar spatial relationship to the claimed design.” On appeal, the Federal Circuit found that Linz was a proper primary reference since it is clear Linz “is made to hold cylindrical objects in its display area.” Note – the Federal Circuit did an extremely poor job of explaining this key part of the holding. The court did rule that the PTAB’s decision lacked ‘substantial evidence’ which indicates its problem is associated with improper factual conclusions rather than improper application of law. However, the court should have analyzed this case with direct reference to Durling and other design patent obviousness precedent.

In its decision, the court agreed with the PTO that the second reference – Samways – could not be a primary reference because of its “dual dispensing area” and “taller” dispensing area. I’ll note here that this decision appears faulty since the patent itself (especially if looking at its priority documents) contemplates that the dispensers will be lined-up side-by-side — creating the same look as a double-dispenser; and, the ‘taller’ label in Samways should not be a factor since the patent as drawn does not set any limits on the height of the label portion.

On remand, the Board will need to reconsider obviousness. In addition, the Federal Circuit ordered the Board to “also consider the non-instituted grounds for unpatentability consistent with the Supreme Court’s decision in SAS.

The opinion here was penned by Judge Moore and joined by Judge Prost. Judge Newman wrote in dissent — arguing that a primary reference must show the can. “The cylindrical object is a major design component.”

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A third patent was invalidated by the PTAB. D595,074. I don’t think that one was appealed. The ‘074 patent is part of the same patent family as the ones above and here you can see the way that they are designed to go side-by-side. The key prior art here was U.S. Patent No. 3,203,554, issued Aug. 31, 1965 (“Pendergrast”).

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Another pending appeal has to do with a utility patent that is part of the same patent family. As part of the IPR, Gamon cancelled claims 1-16, and the PTAB agreed that the rest of the challenged claims were OK (not proven unpatentable). Campbell’s appeal is pending before the Federal Circuit.

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I pulled-up the original provisional application from this family of patents and found this interesting image (below). Gamon (who is suing Campbell for infringement) used Cambell soup displays for the figures in its provisional patent application.