“By limiting its analysis to ornamental significance, the Board simply did not answer the relevant question: whether the iQ Maximizer ‘is the invention.’” – CAFC
The U.S. Court of Appeals for the Federal Circuit yesterday reversed the Patent Trial and Appeal Board’s (PTAB’s) finding that Campbell Soup Company, Campbell Sales Company, and Trinity Manufacturing, LLC did not demonstrate the claimed designs of Gamon, Inc.’s design patents would have been obvious over the prior art. The CAFC held that the designs were obvious because Gamon did not prove a nexus between commercial success and the claims, and because the evidence of Trinity’s copying did not overcome the strong evidence of obviousness provided by the prior art.
Gamon, Inc. owns U.S. Design Patent Nos. D612,646 and D621,645, which claim “[t]he ornamental design for a gravity feed dispenser display.” The asserted prior art consists of U.S. Design Patent No. D405,622 (Linz) or U.S. Patent No. 4,909,578 (Abbate). Linz discloses “a display rack.”
Gamon’s commercial product encompassing the claimed designs is the “iQ Maximizer gravity feed dispenser,” of which Gamon sold $31 million worth between 2002 and 2009. Campbell installed the product in 17,000 stores nationwide and attributed increased sales in part to the dispenser. Campbell also purchased dispensers from Trinity beginning in late 2008.
In 2015, Gamon sued Campbell and Trinity in district court, and Campbell and Trinity thus petitioned for inter partes review (IPR) of the ’646 and ’645 patents on the grounds that the claimed designs would have been obvious over (1) Linz in view of other references and (2) Abbate in view of Linz or another reference. The Patent Trial and Appeal Board (PTAB) instituted on Linz but not on Abbate. The Board ultimately held that Linz was not similar enough to the claimed designs to constitute a proper primary reference.
Campbell and Trinity appealed to the CAFC and the Court issued a decision in October 2019 remanding for consideration on several points, including that “the ‘ever-so-slight differences’ the Board identified between Linz and the claimed designs did not support its finding that Linz is not a proper primary reference” and that the Board must consider the non-instituted grounds consistent with the Supreme Court’s decision in SAS Institute Inc. v. Iancu. On remand, the Board once again found that the appellants had failed to prove unpatentability.
In its discussion, the CAFC considered the four Graham factors (Graham v. John Deere Co., 383 U.S. 1, 17– 18 (1966)):
(1) the scope and content of the prior art;
(2) the differences between the claims and the prior art;
(3) the level of ordinary skill in the art; and
(4) objective indicia of nonobviousness, such as commercial success, long felt but unsolved needs, and failure of others.
Turning to the first three factors, the CAFC agreed with the Board’s conclusion that Linz creates the same overall visual appearance as the claimed designs. Gamon did not challenge this finding.
As to objective indicia on non-obviousness, however, the CAFC disagreed with the PTAB’s findings of a presumption of nexus and a nexus-in-fact between the claimed designs and the evidence of commercial success and praise. The court said the Board’s reasoning that “‘ [t]he unclaimed rearward rails and side portions are not prominent ornamental features,’ and those portions are, therefore, ‘insignificant to the ornamental design,’” misunderstands the law. The CAFC further explained:
In determining coextensiveness, the question is not whether unclaimed features are insignificant to a product’s ornamental design. The question is instead whether unclaimed features are “insignificant,” period. See Fox Factory, 944 F.3d at 1374. That is because the purpose of the coextensiveness requirement is to ensure that nexus is presumed only when the product “is the invention disclosed and claimed.” Id. (emphasis in original). By limiting its analysis to ornamental significance, the Board simply did not answer the relevant question: whether the iQ Maximizer “is the invention.”
The court also rejected the Board’s attempt to distinguish Fox Factory because it dealt with a utility patent, saying that “the coextensiveness requirement does not depend on the type of patent at issue.”
The CAFC next held that Gamon failed to establish that the commercial success and praise of the iQ Maximizer derived from the “unique characteristics” that distinguished the claimed design from Linz. The court rejected the PTAB’s assertion that objective indicia need not be tied to the claimed design’s unique characteristics because “the invalidity analysis [in design patent cases] focuses on the ornamental design as a whole.” The CAFC said that obviousness analysis in utility patent cases likewise focuses on the claimed invention as a whole, “and yet we still require a link to the claimed invention’s unique characteristics in that context.”
As to the Board’s finding that Trinity’s copying of the unique characteristics of Gamon’s designs was a factor that outweighed the similarity in visual appearance to Linz, the court said “we conclude that this alone does not overcome the strong evidence of obviousness that Linz provides.”
In a separate, nonprecedential opinion, the CAFC affirmed the PTAB’s finding that Campbell had failed to establish by a preponderance of the evidence that the challenged claims of Gamon’s U.S. Patent No. 8,827,111 because the court adopted the Board’s construction of the dispositive claim limitation “offset rearwardly.”