FEDERAL CIRCUIT PROVIDES CLARIFICATION REGARDING PROPER PRIMARY REFERENCE FOR ESTABLISHING OBVIOUSNESS OF DESIGN PATENTS
On September 26, 2019, in Inter Partes Review Campbell Soup Co. v. Gamon Plus, Inc., 2018-2029, 2018-2030, a majority of the Federal Circuit panel held that U.S. design patent no. D512,646 was obvious in view of a combination of two prior art design patents. As is well established, a prior art reference may be used as a primary reference to prove obviousness of a design patent only if the reference is a “single reference that creates ‘basically the same‘ visual impression” as the claimed design. See, for example, Apple v. Samsung, 678 F.3d 1314 (Fed. Cir 2012).
The design patent in Campbell Soup is directed to the combination of part of a can dispenser and a can. As shown in the figure above reproduced from the ‘646 patent, only the can itself and some parts of the dispenser are provided in solid lines, while the rest of the design is provided in broken lines and is unclaimed subject matter.
The primary reference applied in the obviousness combination was a design patent that shows a can dispenser that has an appearance that is similar to the dispenser of the ‘646 patent, but does not show the can itself. The Federal Circuit found that the prior art design was a proper primary reference, even if the reference did not show a can, because the prior art dispenser design “is made to hold a cylindrical design in its display area.”
This decision clarifies that the proper test for determining whether a primary reference is properly applied is not rigidly limited to the figures shown in the document. In the Final Written Decision, the PTAB had applied a rigid test based on only what is shown in the prior art document, while the majority of the Federal Circuit panel disagreed, finding that the proper test allows some flexibility.
This issue came before the Federal Circuit due to the fact that, in accordance with 35 U.S.C. § 311(b), only patents or printed publications may be applied as prior art during an Inter Partes Review. In a district court litigation, the defendant would likely have presented evidence that an actual dispenser product was used with an actual can. There would have been no need to rely on a design patent showing only the dispenser itself.
John M. Bird is a partner in the Washington, DC Office of Sughrue Mion PLLC. His focus is on the protection and enforcement of designs and a wide range of electrical and mechanical technologies, including analytical/measurement systems, medical devices, HVAC systems, printers/copiers, telecommunications systems, data recording mediums, semiconductor fabrication, bearings, welding processes, sports equipment, footwear, and various automobile components, such as tires, transmissions, engines, fuel-injection systems, motors, lamps, steering systems, connectors/wiring, valves, and control/monitoring systems.
See his full biography here.