United States: No design patent for you! – Fox factory extension complicates reliance on non-obviousness clues
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In Campbell Soup Co. vs. Gamon Plus, Inc., the Federal Circuit reversed the PTAB’s finding that Gamon’s design patents on gravity-fed soup stands were not obvious. 10 F.4th 1268 (Fed. Cir. Aug. 19, 2021) (“Gamon IIWhile the Supreme Court denied Gamon’s motion for writ of certiorari (in which Gamon argued that he had no opportunity to seek review of the PTAB’s decision by a duly appointed director of the USPTO), here is a closer look at the Federal Circuit Notice.
We have discussed the earlier provisions of this dispute here and here. In its earlier decision (2019), Gamon I, the Federal Circuit remanded this inter partes review to the PTAB after finding that a prior art reference, “Linz”, was an appropriate primary reference, despite the absence of a can in its designs in an area of distribution, as there was no dispute over the reference. distribution boxes. In this round, after the PTAB found the non-obviousness, the Federal Circuit compared the drawing versions of Gamon’s design patents (in which all broken lines were removed, to focus only on the positively claimed aspects of the design) to the main reference. Based on its comparison, the court concluded that the altered images (solid lines only) were “basically the same” as the design disclosed in the main Linz reference, and that any slight difference between the two “does not detract from to similarity in general appearances.” 10 F.4and at 1276.
Campbell comparison of the solid line part of the claimed design with the main reference (Linz)
The Federal Circuit also found that Gamon’s evidence regarding secondary considerations of non-obviousness (commercial success, praise, and copying) was unrelated to the claimed design and was insufficient to overcome a finding of obviousness. Gamon’s reliance on the named inventor’s testimony that commercial success was due to the label area having the same proportions as the box was considered a “self-serving assertion” that was unsubstantiated in the file. A link is presumed if a product which is the subject of objective indicia, 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 those unclaimed features are insignificant (not just for the claimed design, but “insignificant, period”), no presumption of connection applies. fox plantsaid the court, is not limited to evaluating secondary considerations of non-obviousness of utility patents, but also applies to design patents. Gamon II10 F.4and at 1277.
In the absence of a presumption of connection, Gamon had to present evidence that the commercial success and acclaim of the claimed design resulted from the “unique features” of the claimed design. Identifier. at 1278.
The requirement of a link between indicia of secondary non-obviousness considerations and the “unique features” of the design claim essentially requires that the indicia be linked to points of novelty of the claimed design. This seems contrary to the approach of the Federal Circuit in Egyptian Goddess vs. Swisa543 F.3d 665 (Fed. Cir. 2008) (bench) (rejecting a novelty point test for design infringement) and Int’l Seaway Trading Corp. vs. Walgreens589 F.3d 1233 (Fed. Cir. 2009) (extending egyptian goddess validity issues by rejecting a point of novelty test for the anticipation of design patents). Design patent holders may find it more difficult to link commercial success (or other objective indicia of non-obviousness) to patented designs, following the extension of fox plant requirement that success be linked to unique characteristics. This challenge can be particularly acute where the design patent claims less than the entirety of a particular product or article (e.g. using broken lines or shading to indicate unclaimed features), as a presumption of link will probably not be available after Gamon II.
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