No design patents for you!--Extension of Fox Factory Complicates Reliance on Indicia of Non-ObviousnessIn Campbell Soup Co. v. Gamon Plus, Inc., the Federal Circuit reversed the PTAB’s finding that Gamon’s design patents on gravity-fed displays for soup were non-obvious. 10 F.4th 1268 (Fed. Cir. Aug. 19, 2021) (“Gamon II”). As the Supreme Court denied Gamon’s petition for writ of certiorari (in which Gamon argued it did not have an opportunity to request review of the PTAB’s decision by a properly-appointed Director of the USPTO), here’s a closer look at the Federal Circuit’s opinion.

We’ve discussed earlier dispositions of this dispute here and here. In its earlier (2019) decision, Gamon I, the Federal Circuit remanded this inter partes review to the PTAB after finding a prior art reference, “Linz”, was a proper primary reference, despite its drawings lacking a can in a dispensing area, as there was no dispute the reference was used for dispensing cans. In this round, after the PTAB found non-obviousness, the Federal Circuit compared versions of the drawings of Gamon’s design patents (in which all of the broken lines were removed, to focus just on the positively-claimed aspects of the design) to the primary reference. Based on its comparison, the court concluded the modified (solid lines-only) images were “basically the same” as the design disclosed in the primary Linz reference, and that any slight differences in the two “do not substantially detract from the similarity in overall appearances.” 10 F.4th at 1276.

No design patents for you!–Extension of Fox Factory Complicates Reliance on Indicia of Non-Obviousness

Campbell comparison of solid-lined portion of claimed design to primary (Linz) reference

The Federal Circuit also concluded Gamon’s evidence of secondary considerations of non-obviousness (commercial success, praise, and copying) lacked nexus to the claimed design and was insufficient to overcome a conclusion of obviousness. Gamon’s reliance on the named inventor’s testimony that the commercial success was due to the label area having the same proportions as the can was considered a “self-serving assertion” that lacked support in the record. A nexus is presumed if a product that is the subject of objective indicia evidence, such as commercial success, is coextensive with the claimed invention.  Fox Factory, Inc. v. SRAM, LLC, 944 F.3d 1366 (Fed. Cir. 2019). But where there are unclaimed features, absent a finding that such unclaimed features are insignificant (not just to the claimed design, but “insignificant, period”), no presumption of nexus applies. Fox Factory, said the court, is not limited to assessing secondary considerations of non-obviousness of utility patents, but also applies to design patents. Gamon II, 10 F.4th at 1277.

With no presumption of nexus, Gamon needed to present evidence that the commercial success and praise of the claimed design derived from the “unique characteristics” of the claimed design.  Id. at 1278.

The requirement for a link between indicia of secondary considerations of non-obviousness and the design claim’s “unique characteristics” essentially calls for the indicia be tied to points of novelty of the claimed design. This seems contrary to the Federal Circuit’s approach in Egyptian Goddess v. Swisa, 543 F.3d 665 (Fed. Cir. 2008) (en banc) (rejecting a point-of-novelty test for design patent infringement) and Int’l Seaway Trading Corp. v. Walgreens, 589 F.3d 1233 (Fed. Cir. 2009) (extending Egyptian Goddess to issues of validity by rejecting a point-of-novelty test for anticipation of design patents). Design patent holders may have a more difficult time establishing a nexus between commercial success (or other objective indicia of non-obviousness) and patented designs, in the wake of the extension of the Fox Factory requirement that the success be linked to unique features. This challenge may be particularly acute where the design patent claims less than the entirety of a particular product or article (such as through use of broken lines or shading to indicate unclaimed features), since a presumption of nexus will unlikely be available after Gamon II.