Mmm, mmm, no good: Refocusing on the Article of Manufacture Requirement for Obviousness of Design Patents: Campbell Soup Co. v. Gamon Plus, Inc.

• Author: Welker, Avery J.

1. INTRODUCTION

   While Campbell's canned soup is appetizing to many, patent attorneys may not have an appetite for the law of obviousness. In the Inter Partes Review ("IPR") process, a petitioner often attempts to invalidate patent claims using the sword of obviousness. (1) When defending a patent in an IPR, a patent owner must apply evidence supporting patent validity to the invention itself. Why even have the requirement to link evidence to a patented invention in the first place? Campbell Soup Co. v. Gamon Plus, Inc. attempted to answer this question. (2)

   In Campbell Soup Co., the IPR petitioner, Campbell Soup, appealed a decision by the Patent Trial and Appeal Board ("PTAB") favoring the patent holder, Gamon Plus. (3) The PTAB's final written decision notably concluded that Campbell Soup did not prove the challenged design patents obvious even when compared against a similar design found in the prior art. (4) On appeal, the Court of Appeals for the Federal Circuit first determined that the prior art reference had the same overall visual appearance as the two design patents at issue. (5) According to the Federal Circuit, such a finding strongly suggested that the designs were obvious and thus unpatentable. (6) The law permits a patentee to introduce additional objective evidence of non-obviousness, such as commercial success, copying, and industry praise, but the Federal Circuit concluded that the patentee also failed to raise these arguments successfully. (7) Although Gamon's soup-can dispenser product was commercially successful, the evidence failed to link that success to the particular features claimed in the design patents. (8)

   To effectively address patent law's many facets among the different types of patents, this Note highlights how Campbell Soup Co. addresses the tension between adjudicating obviousness issues for different types of patents, including design and utility patents. (9) In addition, this Note describes where Campbell Soup Co. fits in with other recent Federal Circuit cases. Part II outlines the underlying facts, procedural history, and holdings in Campbell Soup Co. Part III provides the relevant legal background of design patents, Inter Partes Reviews, the law of obviousness, and pre-Campbell Soup Co. Federal Circuit precedent. Part IV describes the Federal Circuit's decisions in Campbell Soup Co. to invalidate the patents at issue and overturn the PTAB's IPR final decisions. And finally, Part V comments on how the Federal Circuit's holding in Campbell Soup Co. strengthens design patents and fosters design innovation by requiring design patent owners to tie a design directly to an article of manufacture. (10)

2. FACTS AND HOLDING

   Campbell Soup Company ("Campbell") sells canned soup nationwide in grocery stores. (11) To stock the soup in stores throughout the nation, Campbell used soup can dispensers designed and manufactured by Gamon Plus, Inc. ("Gamon"). (12) Gamon named the dispensers "iQ Maximizers" and sold almost $31 million of these dispensers to Campbell from 2002 to 2008. (13) Campbell installed the iQ Maximizers in 17,000 stores during that time. (14) Campbell attributed an increase in soup sales to the iQ Maximizer's large label area and storage efficiency. (15) However, in 2008, Campbell bought similar dispensers from another manufacturer, Trinity Manufacturing, LLC ("Trinity"). (16)

   In 2015, Gamon sued Campbell and Trinity for patent infringement. (17) In response to Gamon's lawsuit, Campbell and Trinity challenged the two design patents owned by Gamon through the Inter Partes Review (IPR) process. (18) The patents at issue, U.S. Patent Nos. D612,646 ("'D646") and D621,645 ("'D645") both claim "[t]he ornamental design for a gravity feed dispenser display, as shown and described." (19) Gamon implemented these designs in its iQ Maximizer gravity feed dispensers. (20)

   The patents at issue both claim the front display faceplate of a gravity-fed dispenser display. (21) Both patents at issue further claim "partial designs," which are designs "defined to include something less than the entire configuration or surface ornamentation of a particular product." (22) Specifically, 'D646 claims only the front-facing label area, cylindrical object length, edge, and dispenser front stop. (23) Similarly, 'D645 claims only the front-facing label area and part of a cylindrical object length showing curvature. (24) The two designs diverge at the cylindrical object edges and front stops, included in 'D646 but not in 'D645, and a small circle omission in 'D645 not present in 'D646. (25)

   Campbell and Trinity's IPR petitions sought review of the patents at issue. (27) They argued that the patents at issue were obvious over U.S. Patent No. D405,622 ("'D622") or U.S. Patent No. 4,909,578 ("'578")--which are other can dispenser designs. (28) The PTAB instituted review on only the 'D622 grounds. (29) 'D622, "Display Rack," shares the same perspective view as shown in both patents at issue and claims features related to the front-facing label display, side edges, item holding area, and front stops. (30)

   Initially, the PTAB held that Campbell and Trinity did not prove that the patents at issue were unpatentable. (31) That is, the PTAB concluded that 'D622 could not serve as a primary reference for proving unpatentability because 'D622 was too different from the claims of the patents at issue. (32) Campbell and Trinity appealed this decision to the Court of Appeals for the Federal Circuit. (33) The Federal Circuit's first review of the PTAB's decision vacated and remanded the PTAB's decision because "ever-so-slight differences" were not enough to show that 'D622 was not a proper primary reference. (34) The court further instructed the PTAB to consider the obviousness grounds based on '578 previously left behind. (35)

   The PTAB, on remand, again held that Campbell and Trinity did not prove unpatentability, '578 was not a proper primary reference, and the patents at issue would not be obvious over 'D622 either alone or combined with other references. (36) Regarding 'D622, the PTAB expanded on its original rationale to note that while 'D622 is visually similar to the patents at issue, objective indicia of nonobviousness were strong enough to outweigh the similarities. (37) Specifically, the PTAB found "Gamon's commercial success in selling iQ Maximizers to Campbell[,][] Campbell's praise of, and commercial success in using, the iQ Maximizer[,] and [] Trinity's copying of the iQ Maximizer" as the objective indicia of nonobviousness. (38) Further, the PTAB found that Gamon established a nexus between the objective indicia and 'D646 and 'D645 and that there was a presumption of that nexus because the iQ Maximizer is coextensive with the claims in the patents at issue. (39)

   Campbell and Trinity again appealed the PTAB's final written nonobviousness determination. (40) Reviewing the PTAB's decisions de novo, the Federal Circuit re-analyzed the Graham obviousness factors. (41) The court affirmed the PTAB's determination as to the first three Graham factors, finding that the potential primary reference, 'D622, had the same visual characteristics. (42) However, the court disagreed with the PTAB's findings of a presumption of nexus and nexus-in-fact between the designs in the patents at issue and the presented evidence of objective indicia -commercial success and praise - as the court determined that there was insubstantial evidence to support either proposition. (43) The court held that design patents and utility patents should be held to the same standard in the nexus-in-fact inquiry--and thus, the "objective indicia must be linked to a design patent claim's unique characteristics." (44) Further, the court determined that evidence of copying alone did not overcome the obviousness evidence present in 'D622. (45) Ultimately, the Federal Circuit reversed the PTAB's decisions, concluding that the patents at issue were obvious in view of 'D622 after weighing the Graham factors. (46)

3. LEGAL BACKGROUND

   In United States patent law, three types of patents are available to secure intellectual property rights for inventions: plant patents, (47) utility patents, (48) and design patents. (49) United States Code Title 35 governs United States patent law. (50) A patent owner holds a right to exclude others from the use outlined in the patent claims. (51) This Part discusses the legal framework of design patents and how the law of obviousness applies to design patents through the lens of an Inter Partes Review.

   1. Design Patents Generally

      A design patent protects the "new, original and ornamental design of an article of manufacture." (52) While 35 U.S.C. Chapter 16 (Sections 171-73) generally governs design patents, Section 171(b) applies the rest of Title 35 to design patents. (53) The United States Patent and Trademark Office ("USPTO") grants design patents for fifteen years from the date of issuance. (54) Protection is an exclusionary right and extends throughout the United States. (55)

      Ornamental features include the shape and configuration of the article of manufacture, a design applied to an article of manufacture, or a combination of the two. (56) An article of manufacture includes something made by hand or machine and discrete components of that product. (57) A design patent protects only ornamental features, and if a claimed design is primarily functional rather than ornamental, a design patent is invalid. (58) However, design patent law does not preclude a design patent if a claimed functional feature also contains ornamental designs. (59) In that case, a design patent will protect only the feature's ornamental aspects. (60)

      Design patents, unlike utility patents, contain only one claim--the "ornamental design for the article (specifying name) as shown, or as shown and described." (61) A design patent owner uses several drawings to show the scope of the exclusionary rights in the design patent. (62) The...