CAFC Partially Reverses PTAB on Primary References

Last week, a split panel of the U.S. Court of Appeals for the Federal Circuit issued an opinion in Campbell Soup Company v. Gamon Plus Inc., No. 2018-2029, -2030 (Sept. 26 2019). The ruling affirmed-in-part, vacated-in-part, and remanded a decision by the Patent Trial and Appeal Board (PTAB) holding two Gamon design patents were not obvious over the prior art.

The Gamon design patents are directed to ornamental designs for a “gravity feed dispenser display.” Campbell petitioned for inter partes review (IPR), asserting the claimed designs were obvious based on two prior art references—the Linz reference and the Samways reference. The PTAB concluded that Campbell did not establish unpatentability of the claimed designs because neither Linz nor Samways was similar enough to the claimed designs to constitute a proper primary reference. Campbell appealed.

The Federal Circuit reviewed the PTAB’s factual findings on Linz and Samways for substantial evidence. The Court began by explaining that the obviousness inquiry in the design patent context requires the fact finder to first identify a primary reference. Identifying a primary reference requires: (1) discerning the “correct visual impression created by the patented design as a whole;” and (2) “determining whether there is a single reference that creates ‘basically the same’ visual impression.” The Court accepted the PTAB’s assessment of the visual impression created by the patented design, and moved to the next step. First addressing Linz, the Court found the PTAB’s rejection of it as a primary reference was in error. The Court noted it was undisputed the claimed designs and the design of Linz were both for dispensing cans, and that the primary distinction advocated by Gamon related to the dimensions of the cans to be displayed. The Court determined that “the ever-so-slight differences in design, in light of the overall similarities,” compelled the finding that Linz is “a single reference that creates ‘basically the same’ visual impression” as the claimed designs. The Court, therefore, vacated the PTAB’s decision as to obviousness grounds relying on Linz as the primary reference. Turning next to Samways, the Court found substantial evidence supported the PTAB’s finding that it is not a proper primary reference. Specifically, “Samways has a dual dispensing area, compared to the single dispensing area of the claimed designs, and has a front label area with different dimensions that extends across both dispensing areas.” The Court thus affirmed the PTAB’s decision as to obviousness grounds relying on Samways as the primary reference. The case was remanded for further proceedings, and the Court instructed the PTAB on remand to also consider the non-instituted grounds consistent with the Supreme Court’s decision in SAS Institute Inc. v. Iancu.

Judge Newman, in dissent, explained she would have affirmed the PTAB’s determination that Linz is an improper primary reference. Specifically, she agreed with the PTAB that the cylindrical object in the display is a major design component of the claimed designs, and that the lack of that component in the Linz design represents a substantial difference.

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