The United States Court of Appeals for the Federal Circuit overturned two decisions of the Patent Trial & Appeal Board (Board), finding that a soup company and a manufacturer of soup dispensers had failed to prove the non-patentability of two design patents covering can dispensers. The Court also concluded that the analysis of objective evidence of non-obviousness for utility patents also applies to design patents. Campbell Soup Co. v. Gamon Plus, Inc., Case Nos.20-2344, 21-1019 (Fed. Cir. August 19, 2021) (Moore, J.)
Gamon Plus holds two design patents relating to “the ornamental design of a gravity feed dispenser display” or can dispenser. Gamon’s marketed embodiment is called the iQ Maximizer Gravity Feed Dispenser. For nearly a decade, Gamon sold tens of millions of dollars from his iQ Maximizer to Campbell Soup. Campbell attributed the increase in soup sales in part to iQ Maximizer in its 10-K Securities and Exchange Commission reports (an industry publication) and in an internal marketing study. Campbell then began purchasing similar gravity feed dispensers from Trinity Manufacturing.
Gamon sued Campbell and Trinity for design patent infringement. Campbell and Trinity then asked between the parties Gamon patent review (DPI). In its final written decisions, the Board concluded that Campbell and Trinity failed to prove non-patentability because the prior art was not similar enough to the claimed designs to constitute an appropriate primary reference. Trinity (Campbell) appealed.
In that appeal, the Federal Circuit disagreed, quashed and fired. On referral, the Board again found that Campbell and Trinity had failed to prove the impossibility of patenting, concluding that the designs claimed would not have been obvious compared to the prior art. The Board found that although the prior art alone exhibited the same overall visual appearance as the claimed designs, there were objective indications of non-obviousness, including Gamon’s commercial success in selling the iQ Maximizers to Campbell, praise Campbell and his commercial success in using the iQ. Maximizer and Trinity’s copy of the iQ Maximizer. The Commission presumed that there was a connection between this objective evidence and the designs claimed, as it found that the iQ Maximizer met the claims, meaning that the product was essentially the disclosed invention, the features not claimed. being insignificant. The Commission also found that Gamon had established such a link regardless of the presumption. Campbell and Trinity appealed again.
Once again, the federal circuit has turned, concluding that the claimed designs would have been obvious compared to the prior art. In doing so, the Court upheld the Commission’s finding that the state of the art and the designs claimed shared the same overall visual appearance (which Gamon did not dispute), but concluded that the presumption of The Commission’s connection and the finding of a factual connection between the claimed designs and the evidence of commercial success and praise were not supported by substantial evidence. As to the presumption, the Court considered whether the iQ Maximizer was coextensive with the claimed invention. The link is presumed if the objective evidence is linked to a specific product which is “coextensive” with the claimed invention. The Commission acknowledged that the claimed parts of the display did not cover the entire display, but concluded that the iQ Maximizer met the claimed designs because the unclaimed features were not significant ornamental features and, therefore, insignificant. for ornamental design. The Court concluded that this emphasis on ornamental importance was wrong, explaining that the question is not whether the unclaimed features are insignificant for the ornamental design of a product, but whether the unclaimed features are insignificant. at all. The Court noted that coextensivity is a requirement, whether the contested patent is a design or utility patent. Since the iQ Maximizer had significant unclaimed functional elements, the Court concluded that no reasonable trier of fact could conclude that this product met the claimed designs.
Further, the Federal Circuit concluded that Gamon had not established a factual connection because he had failed to demonstrate that the objective evidence of non-obviousness was a direct result of the unique characteristics of the claimed invention instead. than a characteristic known in the prior art. Gamon has not presented evidence that the commercial success and praise of the iQ Maximizer stemmed from its unique features, on which the Commission based its finding of factual link. already present in the prior art. The Court rejected the Commission’s view that the need for a link between the objective indicia and the unique features of the design claimed existed only in utility patent cases and not in utility patent cases. design patents.
Although the Federal Circuit assumed that substantial evidence supported the Commission’s conclusion that Trinity copied the unique features of the claimed designs, it concluded that the proof of the copy alone did not supplant the strong evidentiary evidence presented. by prior art.