GAMON FILES PETITION FOR EN BANC REVIEW OF FEDERAL CIRCUIT DECISION INVALIDATING ITS TWO DESIGN PATENTS AS OBVIOUS, IN SPITE OF STRONG EVIDENCE OF COMMERCIAL SUCCESS AND COPYING

 On September 20, 2021, Gamon filed a petition for en banc review of the decision of the Federal Circuit of August 19, 2021 in which the Court reversed the PTAB’s finding that had held that Gamon’s two (very similar) design patents were nonobvious in view of the extensive evidence of copying by Campbell.

My blog last month reviewed the Federal Circuit’s decision. Just so you know where I stand, the column was titled:  IN A BREATHTAKING OPINION, THE FEDERAL CIRCUIT NIXES NEXUS FOR DESIGN PATENTS, EQUATES THEM WITH UTILITY PATENTS, AND IGNORES STRONG EVIDENCE OF COPYING

There are three major points worthy of en banc review.

First, the law of the presumption of nexus was basically jettisoned.  The Court had said that any additional structure outside the elements that make up the claim of a patent makes a finding of co-extensiveness, and consequently a presumption of nexus, impossible.

Second, the Court reversed the PTAB finding of nexus-in-fact based on “unique characteristics” of the designs, which they seemed to translate into a point of novelty test.  The court said one claimed element (out of three) was in the prior art, thus there was no nexus.

Finally, and perhaps most egregiously, the Court’s assessment of the record ignored the evidence of copying, which goes against case law that said copying is prima facie proof of nexus.  This is particularly important in design patent law, since virtually all cases involve copying by the infringer. 

It is worth reviewing the issue of copying.  Evidence of copying was strong, fully briefed, and relied upon by the Board.  The Board said:

“The final trial record before us is replete with evidence of copying.

[C]opying requires evidence of efforts to replicate a specific product, which may be demonstrated through internal company documents, direct evidence such as disassembling a patented prototype, photographing its features, and using the photograph as a blueprint to build a replica, or access to the patented product combined with substantial similarity to the patented product.  

Campbell’s internal presentations in 2002 demonstrate that Campbell was aware that Gamon’s gravity feed display racks would increase sales volume of Campbell’s soup.   After obtaining the results of the Cannondale survey, Campbell purchased tens of thousands of Gamon’s display racks between 2002 and 2009. Campbell had access to the patented design and significant motivation to continue using the same design. Campbell’s annual reports praise the Gamon display racks and link increased Campbell soup sales to the ornamental features of these display racks. See supra. Around 2009, Campbell transitioned from purchasing Gamon’s display racks to those sold by Petitioner Trinity. The Trinity display racks are substantially similar to the Gamon racks, especially as related to the patented ornamental front label area and the ability to place a cylindrical object below the label area.  

Campbell’s and Trinity’s access to the patented product combined with substantial similarity of Trinity’s product to the patented product provide unrefuted evidence that Gamon’s display racks were copied. Petitioner has not presented any evidence to refute copying. To the contrary, Petitioner admitted that their only rebuttal to Gamon’s copying allegations was that the patents should be held invalid or that there was no pending patent claim when the Gamon products were copied.  

Accordingly, we determine that Gamon has established that Petitioner copied Gamon’s patented display racks.”

Here's the sum total  of what the Federal Circuit said about copying:

“For purposes of this appeal, we assume substantial evidence supports the Board’s finding that Trinity copied the unique characteristics of the claimed designs. Even accepting the evidence of copying, we conclude that this alone does not overcome the strong evidence of obviousness that [the prior art patent to] Linz provides.”

The chance of the Court granting a petition for en banc review is quite small, so the next stop for Gamon may be a petition for cert. to the U.S. Supreme Court.