In Campbell Soup Co. et al. v. Gamon Plus, Inc, (2018-2029, 2018-2030, September 26, 2019), the U.S. Court of Appeals for the Federal Circuit ignored the absence of a major visual element in a claimed design by finding that a prior art reference - that lacked this element - was nevertheless a proper primary reference under 35 USC 103.
The design patent in question, U.S. Pat. No. D612,646, claimed a portion of a can dispenser, namely a label area above a cylindrical can having flat vertical tabs in front of the can. The sole figure is shown below:
Following is the Linz primary reference:
The test for a proper primary reference in design patent obviousness analysis is whether the reference’s overall visual appearance is “basically the same” as the claimed design. This goes back to the Court’s seminal case, Durling v. Spectrum Furniture Co., 101 F.3d 100, 103 (Fed. Cir. 1996).
The most basic legal analysis – and logic - is that Linz cannot be basically the same in appearance as the ‘646 design if it is missing a claimed major visual element.
The Federal Circuit came to its conclusion with the flimsiest of logic:
“Accepting the Board’s description of the claimed designs as correct, the ever-so-slight differences in design, in light of the overall similarities, do not properly lead to the result that Linz is not “a single reference that creates ‘basically the same’ visual impression” as the claimed design. The parties do not dispute that Linz’s design is made to hold a cylindrical object in its display area.” [emphasis added]
Interestingly, neither the majority nor the dissent nor the Board discuss the claimed flat, vertical tabs that rest adjacent the cylindrical object. Linz shows curved tabs. Since only 3 elements are claimed in the ‘646 patent, the flat, vertical tabs certainly qualify as another major visual element.
Because of Gamon’s admission during oral argument that Linz’s dispenser was for a can, the Court used its imagination and imputed the appearance of a can into the Linz reference, and reversed the Board’s finding that Linz was not a proper primary reference.
To understand how ridiculous the Court’s holding is, imagine the hypothetical situation where Linz’s product appeared on the market after Gamon’s patent issued. Gamon sues Linz for infringement. The test for infringement is whether the designs are “substantially the same” in overall appearance, which is eerily similar to the test for a primary reference: whether it is “basically the same” as the claimed design. So, if Linz is a proper primary reference, it follows that the Linz product would infringe the Gamon patent – and I am 100% sure that no court in the land - much less a jury - would ever come to that conclusion.
Judge Newman in her dissent had it exactly right:
“My colleagues propose that since “Linz’s design is made to hold a cylindrical object in its display area”, the Linz design must be viewed with judicial insertion of the missing cylindrical element. This analysis is not in accordance with design patent law. Only after a primary reference is found for the design as a whole, is it appropriate to consider whether the reference design may be modified with other features, selected to match the patented design”. (emphasis added)
Ironically, in the seminal Durling case (citation above), the Court found the prior art reference to Schweiger was deficient as a proper primary reference precisely because it failed to disclose a significant visual element of the claimed design. The images of the patented design (top image) and Schweiger (bottom image) follow:
The Federal Circuit found that the absence of a triangular corner table in Schweiger prevented it from creating “basically the same visual impression as does Durling's design, and therefore cannot suffice as a primary reference.”
The Federal Circuit also contradicted the Board’s established precedent.
For example, in Vitro Packaging, LLC v. Saverglass, Inc., 2015 WL 5766302 (Sept. 29, 2015), the prior art bottle was deemed an improper primary reference despite having all the major visual elements of the claimed design.
And in Key-Bar LLC v. Curv Brands, LLC, PGR 2017-0006 (March 22, 2017), the prior art was visually quite close, but was found insufficient as a primary reference:
The fallout from the Campbell Soup decision is potentially devastating. USPTO examiners will now freely assert prior art in Sec. 103 rejections that is missing a major visual element against a claimed design, making design patents much more difficult to obtain. Similarly, petitioners in IPRs will have a much easier time invalidating design patents.
Campbell Soup’s radical departure from established case law reduces the certainty that design owners crave, and thus adversely affects business decisions. It also increases litigation costs and reduces the likelihood of successful settlement negotiations. This may be a stretch, but it also paves the way for another Supreme Court reversal of a Federal Circuit decision – if Gamon decides to go that way (a large part of me hopes that it will not, lest SCOTUS has another opportunity to muck up design patents again, as it did in Samsung v. Apple).
So, what will the Board do on remand? I predict it will reaffirm its original decision that Linz is not a proper primary reference, which will, as noted above, be in accordance with years of well-established case law.