10 F.4th 1268
Fed. Cir.2021Background
- Gamon Plus owns design patents D612,646 and D621,645 claiming the ornamental design of a gravity-feed dispenser label area, a cylindrical object, and stops (many surrounding features shown in broken lines and not claimed).
- Linz (D405,622) discloses a display rack with a similar label area and receiving area; Appellants (Campbell, Trinity) argued Linz renders Gamon’s designs obvious.
- Gamon sold iQ Maximizer dispensers (incorporating the claimed label area) commercially to Campbell ($31M sales to Campbell; installed in ~17,000 stores); Campbell praised the label area and internal studies touted a “billboard effect.” Trinity later sold similar dispensers.
- PTAB initially held Appellants failed to prove unpatentability; Federal Circuit remanded (Campbell I) and instructed the Board to consider additional grounds per SAS; on remand the Board again found Gamon’s designs not shown obvious, relying on objective indicia (commercial success, praise, copying) and presuming nexus.
- The Federal Circuit held Linz creates the same overall visual impression as the claimed designs, found no substantial evidence of nexus between the asserted objective indicia and the claimed (limited) design features, and concluded the designs would have been obvious over Linz — reversing the Board.
Issues
| Issue | Plaintiff's Argument (Gamon) | Defendant's Argument (Campbell/Trinity) | Held |
|---|---|---|---|
| 1) Is Linz a proper primary reference that creates the same overall visual appearance? | Linz differs in small ways (can size, can position) so it is not basically the same. | Linz has the same overall appearance (label area, receiving area); differences are slight. | Linz is a proper primary reference; it creates the same overall visual impression. |
| 2) Does the presumption of nexus apply (is the commercial product coextensive with the claimed design)? | The iQ Maximizer is coextensive with the claimed design; unclaimed parts are ornamentally insignificant. | The claimed patents cover only a small portion of the product; unclaimed functional elements are significant. | Presumption of nexus does not apply; substantial evidence does not support coextensiveness. |
| 3) Is there nexus-in-fact tying commercial success/praise to the claimed design’s unique characteristics? | Sales, Campbell’s praise, and marketing studies show success is due to the claimed label-area design. | The evidence ties success to label-area features present in prior art; Gamon cannot show success derives from the patents’ unique claimed features. | No nexus-in-fact: evidence ties to features known in prior art and to unclaimed aspects (size not claimed). |
| 4) Can copying by Trinity and other objective indicia overcome the strong prior-art showing? | Copying and commercial praise show nonobviousness and corroborate invention’s value. | Even assuming copying, Linz’s strong similarity renders the claimed designs obvious. | Copying does not overcome the strong evidence of obviousness from Linz; overall obviousness established. |
Key Cases Cited
- Durling v. Spectrum Furniture Co., 101 F.3d 100 (Fed. Cir. 1996) (establishes primary-reference/overall-visual-appearance test for design obviousness)
- Spigen Korea Co. v. Ultraproof, Inc., 955 F.3d 1379 (Fed. Cir. 2020) (slight differences doctrine; ‘‘basically the same’’ standard)
- Apple, Inc. v. Samsung Elecs. Co., 678 F.3d 1314 (Fed. Cir. 2012) (design-patent substantial-difference guidance)
- In re Harvey, 12 F.3d 1061 (Fed. Cir. 1993) (limitations on combining references for design obviousness)
- MRC Innovations, Inc. v. Hunter Mfg., LLP, 747 F.3d 1326 (Fed. Cir. 2014) (fact questions in combining prior art for design patents)
- Fox Factory, Inc. v. SRAM, LLC, 944 F.3d 1366 (Fed. Cir. 2019) (nexus/coextensiveness requirement for objective indicia)
- Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387 (Fed. Cir. 1988) (coextensiveness and product-as-claimed discussion)
- WBIP, LLC v. Kohler Co., 829 F.3d 1317 (Fed. Cir. 2016) (nexus is a factual inquiry; objective indicia tied to claimed invention)
- Graham v. John Deere Co., 383 U.S. 1 (1966) (sets forth Graham factors for obviousness)