PTAB Should Have Determined that Gravity Feed Display Design Patent is Obvious

In Campbell Soup Co. v. Gamon Plus, Inc. (Fed. Cir. Sept. 26, 2019), the Federal Circuit vacated the PTAB’s decision (discussed here) upholding the validity of Gamon’s design patent D621,645 (“the ‘645 patent”) for soup can display racks.  The court determined that substantial evidence did not support the Board’s finding that Linz is not a proper primary reference for a design patent obviousness challenge.  The court determined that based on the Board’s description of the claimed designs, and the parties’ agreement that Linz discloses a design for a system to hold a cylindrical object, the Board erred in finding that Linz was not a proper primary reference. The patent owner disputed the dimensions of a can that would be used in the Linz design, but the court concluded that “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 dissent, Judge Newman asserted that the court’s decision with respect to Linz is not in accordance with design patent law, in that the majority relied on assumptions of utilitarian features (such as curved rails of the Linz dispenser), not its design, to indicate that a cylindrical object could be displayed, and therefore viewed the Linz design with “judicial insertion of the missing cylindrical object.”  In view of the claimed design having only two claimed elements – a label area and the cylindrical object – Judge Newman determined that the cylindrical object was a major design component of the ‘645 patent, and reasoned that absence of a major design component in a reference cannot be deemed to be insubstantial.  According to Judge Newman, the majority incorrectly modified Linz by adding a can, and “[t]he Board correctly stated that ‘[a]ny reasoning that first requires a modification to Linz in order to arrive at a substantially similar design is improper under Durling.’”  In considering Judge Newman’s dissent, the court’s decision exposes some uncertainty as to the extent to which analyzing the degree of utility or intended purpose of the claimed design is appropriate when evaluating a primary reference, especially when design elements that would otherwise shed light on such analysis are unclaimed.

As the parties did not dispute Linz was intended to include a cylindrical object lying on its side, the Federal Circuit, in a 2-1 decision, reversed the PTAB’s finding that Linz was an improper primary Rosen reference.

The court remanded the case to the PTAB to consider non-instituted grounds for unpatentability consistent with the Supreme Court’s SAS Institute decision (discussed here).  Given the majority’s reliance on the parties not disputing that Linz is intended to hold a cylindrical object in its display area, going forward, parties to an IPR or PGR proceeding involving a design patent and a prospective Rosen reference missing what might otherwise make the reference nearly identical to the claimed design would be wise to consider introducing expert opinions as to what a “designer of ordinary skill who designs articles of the type involved” would understand is the intended purpose of the article shown in the prior art reference.

On October 10, 2019, Gamon filed a rehearing request, asking the court to rehear its decision, either by the same Panel or en banc, arguing the majority’s analysis improperly “applied utility-patent concepts of functionality in a design-patent obviousness analysis … to create a hypothetical can in Linz with an aesthetic appearance similar to that of the cylindrical article in the [claimed] designs.”