Campbell Soup Co. et al. v. Gamon Plus, Inc.
Docket No. 2018-2029, -2030 (IPR2017-00091, -00094)
PROST, NEWMAN, MOORE
September 26, 2019
Brief Summary: PTAB’s design patent IPR decision vacated-in-part and affirmed-in-part (i.e., Lintz is a proper primary reference and Samways is not, respectively).
Summary: Campbell appealed PTAB IPR¬¬ final written decision (FWD) holding that Gamon’s design patents D621,646 and D612,645 would not have been obvious in view of a US design patent (“Linz” disclosing a “display rack”) and a Great Britain patent application (“Samways” disclosing a “dispenser with ‘a serpentine delivery path’” that works using gravity). Gamon’s design patents each claim “[t]he ornamental design for a gravity feed dispenser display, as shown and described” and include a single similar drawing. The FC reviewed the PTAB’s legal determinations (obviousness) de novo and its factual findings for substantial evidence (Arctic Cat, FC 2017 (Graham factors)). The FC panel explained that “[i]n the design patent context, the ultimate inquiry under section 103 [obviousness] is whether the claimed design would have been obvious to a designer of ordinary skill who designs articles of the type involved” (Durling, FC 1996; Apple, FC 2012 (“whether one of ordinary skill would have combined teachings of the prior art to create the same overall visual appearance as the claimed design”, “fact finder must first ‘find a single reference, a something in existence, the design characteristics of which are basically the same as the claimed design”)). The FC panel also explained that “[t]o 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’” and, if it “exists, related secondary references may be used to modify it” (Durling, FC 1996). The PTAB “found that Lintz was not a proper primary reference” as it does not disclose at least two features and “[a]dding a hypothetical can to Lintz before comparing the designs is improper under Durling because such comparison does not consider the design ‘in existence’ and the modification as a noticeable impact on the overall design.” The FC panel disagreed, writing that “the ever-so-slight differences in design, in light of the overall similarities, do not properly lead” to the PTAB’s conclusion (i.e., that conclusion is not supported by substantial evidence). The PTAB also found Samways was not a proper primary reference because “significant modifications would first need to be made” and the FC panel agreed (e.g., “Samways does not create basically the same visual impression as the claimed designs.”) Thus, the PTAB’s decision was vacated-in-part and affirmed-in-part (i.e., Lintz is a proper primary reference and Samways is not, respectively). The PTAB’s claim construction is discussed in FN1 (e.g., regarding dashed lines). Judge Newman dissented because “[m]y colleagues propose that…the Linz design must be viewed with judicial insertion of the missing cylindrical object” which “is not in accordance with design patent law” (In re Jennings, CCPA 1950 (“the appearance of the design must be viewed as a whole…and compared with something in existence”)).