Obviousness of a Design Patent

by Dennis Crouch

Campbell Soup v. Gamon Plus (Fed. Cir. 2021) [OPINION]

Obviousness of a design patent is governed by 35 U.S.C. 103, just like utility patents.  However, the methodology is a bit different.  Importantly, the Federal Circuit suggests that the obviousness inquiry should begin with a primary reference whose whose “design characteristics … are basically the same as the claimed design” and that creates “basically the same visual impression.” That primary reference can then be combined with other references to fill in gaps that would have been obvious in order to create the “same overall visual appearance as the claimed design.”  Apple v. Samsung (Fed. Cir. 2012).

Gamon’s design patents cover a can dispenser that might be used for cans of soda or cans of soup. U.S. Design Patent Nos. D612,646 and D621,645.  In the IPR, the PTAB originally sided with the patentee–finding that the asserted prior art (Linz) could not serve as a primary reference.  The basic issue was that the design patents claim a dispenser holding a can, and the key prior art (Linz) did not show the can itself.  On appeal, the Federal Circuit vacated — holding instead that Linz was a proper primary reference since it is clear Linz “is made to hold cylindrical objects in its display area.”  The primary reference also lacked tabbed holders found in the patents, but the appellate panel identified those as “ever-so-slight differences.”

Design Patent Obviousness: How to Pick a Primary Reference

Back on remand, the PTAB again sided with the patentee–holding that the  asserted references failed to show that the claimed design would have been obvious.  Now, back on appeal the Federal Circuit has reversed and finally concluded that the patented designs are obvious. 

Partial designs: At first glance, these designs appear to cover a fairly complex soup can dispenser. However, the dashed lines are shown only for context.  Once those broken lines are removed, all that remains is a boundary-free label area, rectangular stops, and a can.   The image below compares the claimed portion of the design against the Linz prior art.

Differences here – Can vs. no can; rectangular tabs vs curved tabs, elongated display portion. Despite these differences, on remand, PTAB found that Linz had the same overall visual appearance. Still, the PTAB sided with the PTAB based upon secondary considerations — so called “objective indicia of nonobviousness.”

  1. Gamon’s commercial success in selling its product that epitomized the patent (the iQ Maximizers)
  2. Campbell’s praise of, and commercial success in using Gamon’s product; and
  3. Copying of the design by a third party.

On appeal, the Federal Circuit rejected these considerations — finding a lack of nexus between the scope of the claims and the commercial success, praise, and copying.

In Graham v. Deere, the Supreme Court explained that “secondary considerations [such] as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized . . . [a]s indicia of obviousness or nonobviousness.”  Still, in order to even be considered, the activity must have a close nexus by to the invention:  The success was due to the invention (not just marketing); the innovative and patented aspects of the invention were copied or praised; etc.

The burden of proving nexus is generally placed on the patentee.  However, nexus can be presumed when the patent is commensurate in scope with the product being sold/praised/copied.  Here, the PTAB found that Gamon’s patented designs were directly incorporated into its iQ Maximizer products.

On appeal, the Federal Circuit reversed — finding that design patent only covers partial product and therefore the two are not essentially the same.  Here, the product includes many unclaimed features that are only dashed lines in the patent. See Fox Factory, Inc. v. SRAM, LLC, 944 F.3d 1366 (Fed. Cir. 2019).  The PTAB had considered the argument, but found the unclaimed features of the product “insignificant to the ornamental design.” In particular, the dispensers are generally lined-up side-by-side and so you generally only see the front display in a store.  On appeal, the Federal Circuit rejected that analysis.

The Board reasoned that “[t]he unclaimed rearward rails and side portions are not prominent ornamental features,” and those portions are, therefore, “insignificant to the ornamental design.” This circular reasoning reflects a misunderstanding of the law. 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. 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.” By limiting its analysis to ornamental significance, the Board simply did not answer the relevant question: whether the iQ Maximizer “is the invention.”

Slip. Op. The result here is that partial product claims will be hard-pressed to get a presumption of nexus.

Gamon had also attempted to prove the nexus — showing that the secondary indicia were directly related to the claimed features. On appeal though, the Federal Circuit rejected that evidence — holding that the secondary indicia is only permissible when associated with points-of-novelty within the design.

To establish nexus, Gamon needed to present evidence that the commercial success and praise of the iQ Maximizer derived from “unique characteristics” [of the patent.]  It failed to do so. Instead, it presented evidence that merely ties commercial success and praise to aspects of the [product] that were already present in the prior art.

Slip Op.

The patentee had also proven copying, and the Federal Circuit simply concluded that it was not enough.

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 Linz provides.

Slip Op.

The opinion is interesting because it reads as if the Federal Circuit is re-weighing the evidence as it walks through.  On careful analysis though, the court does not disturb any factual finding.  Rather, the trick is that several aspects of the obviousness analysis are questions of law, including the ultimate conclusion.  For those questions of law the court reviews the PTAB determination de novo and substitutes its opinion as authoritative.

31 thoughts on “Obviousness of a Design Patent

  1. 6

    Wow! I wish I could share with you, word for word, the anticipation and obviousness rejections I received from the same Examiner in two separate cases yesterday.
    The anticipation rejections can be dealt with by pointing out that the preamble of the claim describes what the design is for, and that the references are directed to completely different things. For example, the claimed design is directed to a container and the cited reference is directed to an end cap for a pipe. The ordinary observer would not purchase one mistaking it for the other….unless they were in the middle of a week-long binge fueled by alcohol and crystal meth.
    In the obviousness rejection, the Examiner basically says “I’m well aware that the pre-amble recites that this invention is directed to a _____ but I’m going to completely ignore that.” So, the Examiner is using hindsight to combine two radically different things in order to come up with the claimed ornamental design.
    Does anyone know if the analogous art test has been deemed applicable to the art cited in the obviousness rejection of a design patent claim? For example, to illustrate how far apart the two references are, imagine the primary reference is directed to a popsicle stick and the secondary reference is directed to a lamppost.

    1. 6.1

      The issue in design patent obviousness is whether a designer of ordinary skill of a _________ would look to the designs of a popsicle stick and a lampost in coming up with the claimed design. With that example, it seems like the answer is no. See In re Glavas, an old CCPA case.

      Anticipation is trickier, because usually a design can be anticipated by non-analogous art. Has Int’l Seaway changed that by equating the test for anticipation with the test for infringement?

      1. 6.1.1

        Nice exchange – thanks

  2. 5

    What continues to amaze me is that even though design and utility patents have the exact same statutory 35 USC 103 test for obviousness, the Fed. Cir. continues to completely ignore that and not even cite the controlling Sup. Ct. KSR 103 decision in every design patent obviousness or unobviousness decision including this one! As at least one D.C. judge has noted. They have never even attempted to distinguish KSR, They even ignore the 103 requirement for determining the level of skill of the statutory person of ordinary skill in the art, which for design patents is of course a product appearance designer, not a mechanical engineer. They ignore normal 103 case law on combining known features from different references as if it somehow does not apply to ornamental features for industrial designs. Although the solid lines of the design patent drawings are the claim, and should be treated as claim limitations, they are not treated like utility patent claim limitations.

    1. 5.1

      “They even ignore the 103 requirement for determining the level of skill of the statutory person of ordinary skill in the art”

      Too. Much. Work.

      Especially since you all buried us in cases from the unconstitutional PTAB Death Squad.

      Something had to give.

      Now . . . if Congress were to do away with the PTAB . . .

      1. 5.1.1

        ? Twice here the IPR PTAB decision was in favor of the patent owner. This was the Fed. Cir. twice reversing the PTAB and finding the patent obvious, i.e., holding that the “death squad” was not deadly enough!

    2. 5.2

      “They even ignore the 103 requirement for determining the level of skill of the statutory person of ordinary skill in the art, ”

      It’s been ignored for decades, both in US Federal Courts and especially at the USPTO.

    3. 5.3

      Thanks Paul – your comment provided a reason to read again the KSR decision.

      That being said, what exactly is (emphasis added):
      – “same statutory 35 USC 103 test for obviousness

      (of course, I am well aware of the NON-STATUTORY test as written by the Supreme Court dating back to the Graham v. Deere case – one of the first cases following the ACTUAL statutory changes of the Act of 1952 — to which, ipguy’s comment find its sticking point)

    4. 5.4

      Paul, if there was some logical way to apply KSR to design patents (there isn’t), don’t you think that at least one highly skilled (design) patent litigator would have figured it out, tried it out, and have had a court rule on it? As I’ve mentioned in other posts when you’ve brought this up, at least one design patentee whose design patent was found obvious by the CAFC filed a cert. petition on this very issue (i.e., KSR should apply), which of course was denied (this was the dog jersey case).

      1. 5.4.1

        Thanks Perry – I was waiting for you to remind Paul that this conversation has happened.

        I did not want to “offend” his sense of “Continu[ed] amaze[ment]

      2. 5.4.2

        Perry, as you note, at least one other design patent defendant did try to assert KSR. As to why more design patent suit defendants have not, I can only point to other Fed. Cir. decisions that were not challenged for many years until someone finally did so, like overruling the Fed. Cir. erroneous mooting of the special patent venue statute, mandatory TSM, and other now overruled Fed. Cir. practices. Of course, most defendants hope not to have to pay to go all the way to the Sup. Ct. to win, and many do.

        1. 5.4.2.1

          Hey, Paul… The dog jersey patentee was a bit late asserting KSR, raising it for the first time in its cert. petition, which is one of the reasons the CAFC hasn’t ruled on it (the other being it’s silly to do so). If you want to take a gander at all the reasons KSR does not/should not apply to design patents, check out my brief in opposition to cert. in that case.

          1. 5.4.2.1.1

            Perry, do you have a link for those of us a bit lazy?

            Thanks,

            1. 5.4.2.1.1.1

              No, sorry.

  3. 4

    Wow. Again Jason puts up a controversial post and then removes all the comments.

    The longer I participate on this blog the more I feel I have wasted my time. This blog is anti-patent and seemingly cares nothing of ethics. Jason is outright arrogant in that he doesn’t even both to try to understand why some of his posts are controversial and doesn’t even both to respond to objections to his ethical behavior.

    This blog is nothing but a forum for a few arrogant professors to build their reputation by tearing down the patent system with ZERO evidence that this is the right thing to do.

    1. 4.1

      And remember the context of this that I have linked to a number of articles and videos discussing how law schools protect law professors. Jason could probably do anything short of r a p e and the law school would protect him.

    2. 4.2

      Comments are still there (just closed to new comments).

      Off of the main view, click on the individual post to open that post, then click on the ‘show comments’ tab.

    3. 4.3

      Leave. Honestly, everyone’s experience with this blog would be better if you left. Your reckless accusations, your tantrums, and your bloviating would not be missed.

      1. 4.3.1

        And leave the brain trust to an Ordinary dolt like you?

      2. 4.3.2

        Your comment is also a bit ironic as it is I that have been telling you to learn to express yourself more concisely. I told you if you can’t make the issue clear in a paragraph that you probably don’t understand the issue.

      3. 4.3.3

        It illustrates too what a lightweight you are Ordinary.

        There are real issues here. The foreign origin applications and grants have gone up in the total percentage to 55%. Lemley makes clear academic ethics violations by putting up this graph and claiming that it shows the health of the U.S. patent system and U.S. innovation.

        Just as an illustration it looks to me like from 1980-2000 the U.S. origin utility patents grew at faster rate than they did from 2000-2021.

        So we have anti-patent people who are pretending to be academics putting up charts that are not normalized nor are they contextualized that the chart shows more about foreign origin utility patents than U.S. origin patent applications.

        Academics have a duty of candor in presenting data and for identifying or normalizing data.

        I would file a complaint with Stanford against Lemley but it would be ignored. I think Jason’s conduct borders on the unethical. I think Jason knew his graph would be misinterpreted as the comments illustrate it was. And, yet, Jason did not normalize the graph nor add comments about the rise of he foreign origin utility applications. Nor even say that the graph was dominated by foreign origin applications–not U.S. applications.

        1. 4.3.3.1

          Also makes me wonder what is going on. We see the rise of the anti-patent professor with ZERO evidence to support their views. And we see Lemley writing papers with people and then those people being appointed as professors. I’d like to know if SV is giving the universities money to appoint anti-patent professors.

          What we have is first a CAFC stacked and then the universities stacked and then lightweight dolts like Ordinary too simple-minded to get what is happening.

  4. 3

    “We do so enjoy our whack-a-patent!”

    — The CAFC

    1. 3.1

      🙂

      It is revenge for the way the Scotus treats the CAFC.

      1. 3.1.1

        This SCOTUS hates – hates – on the patents. The individual. Thomas is not a friend of patent law – property rights – which is odd for a so called – conservative judge. Due process to the wind – when it comes to patent/property rights. And yet another, ‘results oriented’ decision by CAFC, must be frustrating for the courts of record (the trial courts) to put up with this – all the effort – just to get flipped.

        1. 3.1.1.1

          After Gamon loses on its forthcoming en banc petition, a petition for cert. will be in order, giving SCOTUS yet another opportunity to put the Fed. Cir. in its place.

  5. 2

    Charley Foxtrot – and another display of why it was an error in the first instance of abomination of force-fitting designs into the (otherwise) utility aspects of patent world.

    1. 2.1

      Yup.

      They’re claiming two rectangular tabs arranged in parallel and spaced from each other, so how is the unclaimed stuff relevant in any way, shape or form?

      Hard to believe the arrangement of two tabs hasn’t existed before. Or that it can’t easily be designed around.

      But win or lose, the lawyers get to bill a lot for arguing how many angels fit on the head of a pin.

    2. 2.2

      Spot on, anon.

      Inexplicably, the court said:

      “[T]he coexensiveness requirement [of the presumption of nexus] does not depend on the type of patent at issue. The Board offered no rationale for taking a different approach in design patent cases, and we do not discern any. Accordingly, we reject the proposition that a product satisfies the coextensiveness requirement in the design patent context merely if its unclaimed features are ornamentally insignificant.” (emphasis on “ornamentally” in original).

      “In determining coextensiveness, the question is not whether unclaimed features [of Gamon] are insignificant to a product’s ornamental design. The question is instead whether unclaimed features are “insignificant,” period.” (emphasis on “to a product’s ornamental design” in original).

      “Because the IQ Maximizer undisputedly includes significant unclaimed functional elements, no reasonable trier of fact could find that the IQ Maximizer is coextensive with the claimed designs.”

      ‘functional elements’ … really?

      Once again, the court displays its ignorance when it comes to design patents.

      1. 2.2.1

        “the court displays its ignorance when it comes to design patents.”

        Just as is does with its repeated misapplication of Alice / Mayo.

  6. 1

    In a close case like this, the preamble may sometimes provide an argument for patentability, at least when dealing with an examiner. In this case, not so much as the preamble for one claim was “display rack” and the other was “gravity feed dispenser display” or the like. The inherent nature and purpose of the claimed device vs. the nature and purpose of the prior art lends itself to the argument that there is a different meaning to the claim in the eye of the ordinary observer.

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