PTAB Strategies and Insights – August 2021: For partial design patents and utility patents, the use of objective indices requires proof of a link with the unique characteristics claimed | Sterne, Kessler, Goldstein & Fox PLLC


In Campbell Soup Co. v. Gamon Plus, Inc.,[i] the Federal Circuit reviewed the application by the Patent Trial and Appeal Board of objective indices to design patent claims. The board concluded that the prior art has the same overall visual appearance as the designs claimed, but that it is offset by objective indications of non-obviousness. However, the Court concluded that there was substantial evidence to support neither the presumption of connection nor the Commission’s finding of connection. The Court therefore reversed the Board’s decision and concluded that the contested claims were not patentable.

The Court first considered whether the evidence supported the Board’s conclusion that Linz’s U.S. Design Patent No. D405,622 essentially creates the same overall visual appearance as the designs claimed. A side-by-side of the claimed aspects of the designs (removing broken lines) on the left and Linz on the right is shown below. The Court found no reason to interfere with the Commission’s finding.

The Court then turned to the link analysis. The Board found both a presumption of connection and a factual link between the claimed designs and evidence of commercial success and praise by the patentee.

Regarding a presumption of connection, the Court explained that the presumption only applies if the product allegedly a commercial realization of the claims is coextensive with the claimed invention. The Court stated that the coextensive analysis is not limited to whether the unclaimed elements are ornamentally insignificant but, as with utility patents, wonders whether there is functionally important unclaimed characteristics of the product (even if they are not of ornamental importance). In the present case, given the limited aspects of the claims illustrated by solid lines (as opposed to dotted lines), the Court concluded that the claims cover only a small part of the commercial product and that the product includes important elements. functional not claimed. In such cases, the presumption does not apply. Thus, the Court concluded that substantial evidence did not support the presumption of connection of the Commission.

Turning next to the factual connection, the Court said that in the absence of a presumption of connection, the connection can also be shown if the objective indicia are the direct result of unique features of the claimed invention (rather than ‘a characteristic known in the old art). The Court stated that the Commission found only four characteristics that distinguished the claimed designs from the prior art of Linz. The Court ruled that, in order to establish the connection, the patentee should have presented evidence that the objective indicia flowed from these four “unique characteristics”. The Court concluded that the patentee had not done so, presenting instead evidence linking the objective indicia to aspects of the commercial product that were already present in the prior art. Thus, as with the presumption, the Court held that substantial evidence did not support the Board’s finding of a factual connection.

To take with: For utility and design patents, if the claims relate to partial or limited aspects of the commercial product, the use of objective indices requires proof of a connection to the unique features of the claims (i.e. ie what is new compared to the prior art).

[i] Campbell Soup Co. v. Gamon Plus, Inc., Calls nos. 20-2344, 21-1019 (Federal Cir. August 19, 2021) (previous).

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