939 F.3d 1335
Fed. Cir.2019Background:
- Gamon Plus owns design patents D612,646 and D621,645 claiming the ornamental design of a gravity-feed dispenser display (figures show a sideways cylindrical article under a label area and vertical stops).
- Appellants (Campbell Soup, Campbell Sales, Trinity) petitioned for inter partes review alleging obviousness over prior designs Linz (D405,622) and Samways (GB appl. 2,303,624).
- The PTAB instituted and then found Appellants failed to prove unpatentability because neither Linz nor Samways was a proper "primary reference" that creates the "basically the same" overall visual impression as the claimed designs.
- The Federal Circuit reviews legal issues de novo and factual findings for substantial evidence; in design-patent obviousness a primary reference must exist before using secondary references to modify it (Durling test).
- The panel held substantial evidence did not support the Board’s rejection of Linz as a primary reference (i.e., Linz can be a proper primary reference), but did support the Board’s rejection of Samways as a primary reference; court affirmed-in-part, vacated-in-part, and remanded.
Issues:
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether Linz is a proper primary reference | Linz inherently conveys a display for cylindrical articles (designer testimony, cited references) and thus creates basically the same visual impression; any minor dimensional differences are insubstantial | Linz shows no depicted cylindrical object or specified article dimensions; adding a can is impermissible modification/hindsight and applies utility principles to a design reference | Court: Reversed PTAB on Linz — substantial evidence lacking for PTAB’s rejection; Linz can serve as a primary reference; vacated PTAB obviousness finding over Linz in view of Samways and remanded |
| Whether Samways is a proper primary reference | Samways as a whole discloses a dispenser with the same basic design characteristics; PTAB erred by focusing only on illustrations | Samways has a dual dispensing area, central tabs/stops, and a taller label area spanning both areas—differences that change the overall visual impression | Court: Affirmed PTAB — substantial evidence supports that Samways is not a proper primary reference; no obviousness over Samways or Samways in view of Linz |
| Claim construction of dashed (broken) lines | Appellants: PTAB failed to give the broadest reasonable interpretation by excluding broken-line portions that show spatial relationships among label, can, and gaps | Appellee: Spatial relationships (e.g., label vs. cylindrical object) are part of the claimed design even if some boundaries are dashed | Court: PTAB’s claim construction was not in error; court did not reach remaining arguments |
Key Cases Cited
- Durling v. Spectrum Furniture Co., 101 F.3d 100 (Fed. Cir. 1996) (articulates primary-reference/basically-the-same visual-impression test for design-patent obviousness)
- Apple, Inc. v. Samsung Elecs. Co., 678 F.3d 1314 (Fed. Cir. 2012) (describes combining prior-art teachings to match overall visual appearance)
- MRC Innovations, Inc. v. Hunter Mfg., LLP, 747 F.3d 1326 (Fed. Cir. 2014) (reiterates "basically the same" visual-impression requirement)
- In re Jennings, 182 F.2d 207 (CCPA 1950) (holds comparisons must be to designs "in existence," not to hypothetical combinations)
- In re Rosen, 673 F.2d 388 (CCPA 1982) (requires a primary reference before finding obviousness in design context)
- Gorham Co. v. White, 81 U.S. 511 (1871) (foundational ordinary-observer test for design-patent infringement/identity)
- SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348 (2018) (directs PTAB to consider non-instituted grounds on remand)