Design Patent Obviousness: How to Pick a Primary Reference

by Dennis Crouch

The law in this area is a total mess, and this case substantially increases the confusion. 

Campbell Soup Co. v. Gamon Plus, Inc. (Fed. Cir. 2019)

Gamon Plus’s two design patents at issue here are directed to particular aspect of a design for a gravity feed can dispenser. U.S. Design Pats. D612,646 and D621,645.  Campbell’s filed IPR challenges after Gamon sued for infringement.  After initiating the IPRs, the PTAB eventually concluded decided that the claimed design had not been proven obvious.  On appeal, the Federal Circuit has vacated and remanded — holding that the Board had improperly excluded a prior art reference (Linz) as a “primary reference” for the obviousness analysis.

OK – Look at these to “designs.”  Note here that only solid lines count for the actual patented design — the broken (ghost) lines show what the rest of the product might look like.  My replacement drawings are below – showing the design without the ghost lines.

  • D612,646 (on the left) has that curved top portion – no borders claimed so it might continue on wider or stop; two little tabs holding a can; and a portion of a cylindrical object.
  • D621,645 (on the right) is the same except the can might be longer, and the tabs are not claimed.

Design patents are governed by the same obviousness statute – Section 103 – and follow the same Graham v. John Deere inquiry. The inquiry as restated by the Federal Circuit is whether it would have been obvious to PHOSITA to have “combined teachings of the prior art to create the same overall visual appearance as the claimed design.” Apple v. Samsung (Fed. Cir. 2012).  In Apple, the court also provided a methodology of first beginning with a primary reference — a single reference whose “design characteristics … are basically the same as the claimed design” i.e., creates “basically the same visual impression.” See Durling v. Spectrum Furniture Co. (Fed. Cir. 1996); In re Rosen, 673 F.2d 388 (CCPA 1982)

The key reference in this case is Linz, but you’ll note that Linz does not disclose the tabs and neither show a can.

In its decision the PTAB found that the lack of a disclosed can was critical and that adding a “hypothetical can” would be improper. PTAB: Linz “fails to disclose a cylindrical object below the label area in a similar spatial relationship to the claimed design.”  On appeal, the Federal Circuit found that Linz was a proper primary reference since it is clear Linz “is made to hold cylindrical objects in its display area.”  Note – the Federal Circuit did an extremely poor job of explaining this key part of the holding.  The court did rule that the PTAB’s decision lacked ‘substantial evidence’ which indicates its problem is associated with improper factual conclusions rather than improper application of law. However, the court should have analyzed this case with direct reference to Durling and other design patent obviousness precedent.

In its decision, the court agreed with the PTO that the second reference – Samways – could not be a primary reference because of its “dual dispensing area” and “taller” dispensing area.  I’ll note here that this decision appears faulty since the patent itself (especially if looking at its priority documents) contemplates that the dispensers will be lined-up side-by-side — creating the same look as a double-dispenser; and, the ‘taller’ label in Samways should not be a factor since the patent as drawn does not set any limits on the height of the label portion.

On remand, the Board will need to reconsider obviousness.  In addition, the Federal Circuit ordered the Board to “also consider the non-instituted grounds for unpatentability consistent with the Supreme Court’s decision in SAS.

The opinion here was penned by Judge Moore and joined by Judge Prost.  Judge Newman wrote in dissent — arguing that a primary reference must show the can. “The cylindrical object is a major design component.”

= = = =

A third patent was invalidated by the PTAB. D595,074.  I don’t think that one was appealed. The ‘074 patent is part of the same patent family as the ones above and here you can see the way that they are designed to go side-by-side. The key prior art here was U.S. Patent No. 3,203,554, issued Aug. 31, 1965 (“Pendergrast”).

= = = = =

Another pending appeal has to do with a utility patent that is part of the same patent family. As part of the IPR, Gamon cancelled claims 1-16, and the PTAB agreed that the rest of the challenged claims were OK (not proven unpatentable).  Campbell’s appeal is pending before the Federal Circuit.

= = = = =

I pulled-up the original provisional application from this family of patents and found this interesting image (below).  Gamon (who is suing Campbell for infringement) used Cambell soup displays for the figures in its provisional patent application.


33 thoughts on “Design Patent Obviousness: How to Pick a Primary Reference

  1. 8

    Why has design patent law developed to treat the designer of ordinary skill as as complete m oron?

    1. 8.1

      Re: “Why has design patent law developed to treat the designer of ordinary skill as as complete m oron?”
      Bingo, a more pointed version of a key point in my article cited at comment 2 below.
      It is even worse in the PTO itself. A study Dennis did a few years ago showed that design patent applications rarely even get 103 rejections.
      Part of that is due to effectively inconsistent CCPA and Fed. Cir. decisions asserting on one and that design claim scope is narrow, but then in litigation allowing loose lay infringement comparisons, as well as acting if the Sup. Ct. SCR decision somehow does not apply to designs.

      1. 8.2.1


        Are you embracing the slippery slope of having the Legal Fiction of a Person Having Ordinary Skill In The Art having some (unidentified) level of “ordinary creativity?”

        Do you not recognize this slope as being nothing more than the camel’s nose of Flash of Genius?

  2. 7

    In short, Judge Newman’s dissent is spot on; the Board had it right. And kudos to the law firm that prepared and prosecuted these design patents 😉 knowing at the time that Campbell Soup had ripped off Gamon’s invaluable can dispenser designs.

    1. 7.1

      And kudos to the law firm that prepared and prosecuted these design patents 😉 knowing at the time that Campbell Soup had ripped off Gamon’s invaluable partial face plate with no defined vertical edges that could be applied to a can dispenser.


      Why has design patent law developed that treats the ordinary designer as a complete idiot?

      1. 7.1.1

        Remember Perry is the guy who once asserted that it was more difficult to come up with a simple ornamentation than a complex one. Wrap your ahead around that.


          That comment comes from the context of a designer.

          You show your own ig nor ance (and haughty contempt for those that actually know something about design and design patent law) with your arr o gant (and OH SO TRUMP-like) comment here, Malcolm.

          I have worn many hats in my career. Design engineer was one of them. You “Derp Dance” around comments geared to your Trump-like behavior, and yet you continually ACT like the very person that you rant about.

          It is truly stultifying that you seem so completely oblivious to this “feature” of your “swagger.”


              Actually it does.

              But you cannot see it because you are c1ue1ess.

              It is just not surprising to see you AGAIN acting like Trump.

  3. 5

    Two quick comments on the substantive design patent itself, as it is submitted WITH the can:

    1) the design of the unit itself that is made and sold to grocery stores does NOT contain cans. What is the theory of Infringement (who exactly is doing infringing of what?)

    2) the actual cans (shape, location, motion/rest etc) may well be said to be indicative merely of functional utility, and thus, of themselves NOT carry design patent weight.

  4. 4

    Could we articulate the major failure of these claims?

    They a don’t show an ornamental pattern applied to an article. And they don’t show an ornamental design of any article.

    Granting patents on this kind of nonsense is i n s a n e.

    Blow the whistle, insiders. Iancu is a fraud. He should be working to fix the design patent travesty and instead he’s working overtime to further corrupt the utility patent system.

    1. 4.1

      Design patent law has nothing to do with your obsess10n over a Iancu.

      You do yourself no favors with going off the rails ranting about something that should be ranted about (design patent law) with such an obvious non sequitur (your feelings about Iancu, driven at least in part by your political feelings).

      1. 4.1.1

        “Design patenting has nothing to do with the Director of the agency which hands out design patents!”

        Sure, Bildo. Whatever you say.


            “Derp derp I live in an alternate derp reality without administrative agencies derp helps if you are born yesterday derp!”


              You do know how administrative agencies work, eh?

              Wait – you have no respect at all for Boundy, and as I recall, you scoff at any of his Admin Law postings.

              Ah yes, as expected, MORE Trump-like behavior from you Malcolm.

      1. 3.2.2


        Kappos was and is a public figure who headed the agency incompetently and then traded on the agency’s incompetency after he left, specifically highlighting design patents. I have his comments saved and his attorneys know this. They also know that what would come out in court about Big Bald Design Dave is way worse than what’s out there already.


          have his comments saved and his attorneys know this.

          … and coming out in Malcolm’s book really soon

  5. 2

    Re: “The law in this area [103 re design patents] is a total mess, and this case substantially increases the confusion,” [Re Campbell Soup Co. v. Gamon Plus, Inc. (Fed. Cir. 2019).]
    Indeed, and other examples were noted in “Design Patents §103 – Obvious to Whom and As Compared to What?” Patently-O, Sept. 17, 2014.
    [The Dennis-extracted solid line can and stop tab “claim” here is so “ornamental” it should be in MOMA next to Andy W’s Campbell Soup can prints.]

    1. 1.1

      Useful Arts implicates utility – something that Design Patents expressly do not encompass.

      Design Patents should simply be wiped off of the books.


          No. This is consistent with the PRO-patent side and the plain fact that patent law was put in place for protection of utility.

          Protection of expression has a distinct (and distinctly different) set of laws. The bass tard dization should make no one happy (and Congress is to blame).


              I am pretty sur that Dave Kappos has never commented on the aspect that I note at 1.1 and

              That you want to project an emotion that is just not evident on the record (no doubt, from comments that he has made that are entirely in regards to different aspects) only shows your willingness to obfuscate.

              It then is also no surprise that you try to obfuscate on these different aspects by trying to paint my consistent views as somehow being INconsistent.

              Stay focused and stay on point please.

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