“While acknowledging that the reversal of PTAB fact finding for lack of substantial evidence was unusual, the Federal Circuit proceeded to do just that.”
The Federal Circuit recently held in Campbell Soup Company v. Gamon Plus, Inc. (September 26, 2019) that a prior art reference lacking one of only two features shown in solid line was similar enough to the claimed design to constitute a proper primary reference.
Campbell Soup et al. appealed the final written decisions of the PTAB holding that they had not demonstrated that the claimed designs of U.S. Patent Nos USD612646 Gamon and USD621645 Gamon were obvious over the asserted prior art of U.S. Patent No. D405622 (USD405622 Linz) and GB Patent Application No. 2,303,624 (Samways GB2303624A). In their holding, the Board found that neither Linz nor Samways constituted proper primary prior art references. The Federal Circuit affirmed-in-part, vacated-in-part and remanded.
The Claimed Design, Described
The Board described the design claimed in the ‘646 patent as follows:
The single embodiment of the patent design illustrates and claims certain front portions of a gravity feed dispenser display. From top to bottom, a generally rectangular surface area, identified by the parties as an access door or label area, is curved convexly forward…The label area is taller vertically than it is wide horizontally, however, the boundary edges of the label area are not claimed. Below the label area there is a gap between the label area and the top of a cylindrical object lying on its side – the gap being approximately the same height as the label area. The width of the label area is generally about the same as the height of the cylindrical object lying on its side…The cylindrical article is positioned partially forward of the label area. Two rectangular lugs or stops, are positioned in front of the cylindrical object on each bottom side and stand vertically.
In short, the disputed claim was to a gravity feed dispenser with a label area recessed from where a cylindrical object was dispensed and held in place by two rectangular stops positioned on either side of the cylindrical object. In the ‘646 patent, the label area, cylindrical surface and rectangular stops are the only features of a fairly detailed drawing in solid line, while in the ‘645 patent only the cylindrical surface and label area are claimed, i.e., shown in solid line.
Assessing the Prior Art
Linz shows a gravity feed dispenser display having a label area recessed from a dispensing area bounded on either side by stops formed by the bottom of the dispenser, curved upward. Samways shows and claims a gravity feed dispenser with a label area recessed from a bifurcated dual dispensing area, the dispensing area further defined by bracket shaped stops. Neither Samways nor Linz show any dispensed object.
The Board held that Linz was not a proper primary reference, stating that “Linz does not disclose any object, including the size, shape and placement of the object in its display area” and “fails to disclose a cylindrical object below the label area in a similar spatial relationship to the claimed design.”
Campbell appealed and argued that substantial evidence did not support the Board’s rejection of Linz as a primary reference. Specifically, Campbell argued that a designer of ordinary skill would have understood the Linz dispenser was designed to hold cylindrical objects and that six of seven references cited on the first page of Linz are directed to dispensers for cylindrical objects. And further that the Board’s rejection of Linz for needing modification was improper where “it otherwise conveys basically the same visual impression as the claimed designs.”
For their part, Gamon argued that Linz does not show or describe its claimed displayed article and any hypothetical object read into Linz was necessarily the result of hindsight bias, as nothing in Linz suggested the appearance of articles to be displayed.
Holding and Dissent
While acknowledging that the reversal of PTAB fact finding for lack of substantial evidence was unusual, the Federal Circuit proceeded to do just that, stating that the parties did not dispute that the claimed designs and the design of Linz are all designs for dispensers of cans and that a can would be used in the system. With respect to Samways, the Court held that the dual dispensing area gave a different visual impression than the claimed design and upheld the Board’s finding that Samways was not a proper primary reference without reference to the lack of disclosure of the claimed dispensed cylindrical object.
Judge Newman dissented-in-part, saying that the majority’s insertion of a can into the design of the Linz reference was improper and did not follow the “ordinary observer” standard for design patent law:
My colleagues propose that since “Linz’s design is made to hold a cylindrical object in its display area,” the Linz design must be viewed with judicial insertion of the missing cylindrical object…
Judge Newman continued, citing In re Jennings, 182 F.2d 207 (CCPA 1950):
In considering patentability of a proposed design the appearance of the design must be viewed as a whole, as shown by the drawing or drawings, and compared with something in existence – not with something that might be brought into existence by selecting individual features from prior art and combining them. Id. at 208
“The absence from the primary references of a major design component cannot be deemed insubstantial” and “Ordinary observation resolves this case,” wrote Newman.