10.03.19 | IP Alert | Federal Circuit Finds Campbell Soup’s “Primary” Reference to be “M’m! M’m! Good!”

Federal Circuit Finds Campbell Soup’s “Primary” Reference to be

“M’m! M’m! Good!”

By Jason S. Shull

On
Sept. 26, a split panel of the U.S. Court of Appeals for the Federal Circuit
revived Campbell Soup Co.’s and Trinity Manufacturing’s challenge of design patents covering a display rack, ruling
that the U.S. Patent Trial and Appeal Board (PTAB) wrongly excluded a prior art
reference as serving as a “primary reference.”[i] 

In October 2016, after they were sued
for patent infringement, Campbell and Trinity filed petitions seeking inter partes review of two patents owned
by Gamon Plus, Inc.  The petitions alleged that the design patents would have been obvious at the time
of invention in view of several prior art references. 

PTAB cases involving design patents are
rare.  Of the many thousands of petitions
filed with the PTAB since 2012, less than 1 percent have challenged a design
patent.  To challenge a design patent based on obviousness, one must
first find a “primary” reference that is “something in existence, the design
characteristics of which are basically the same as the claimed design.”[ii]  Only then may the “primary” reference be
modified in light of the secondary reference “to create a design that has the
same overall visual appearance as the claimed design.”[iii]

Here, the two Gamon patents challenged
by Campbell and Trinity claim:
“The ornamental design for a gravity feed dispenser display, as shown and
described.”  The sole figure   of the first patent is depicted below.

As
can be seen, the figure shows the contour of a soup can displayed in the
dispenser in solid lines.  This is
notable because solid lines in
design patent drawings define the claimed design.  The sole figure of the second patent is identical to that of the first patent, except for minor
variations.   

U.S.
Patent No. D405,622 (Linz) was one of the “primary” references cited by
Campbell and Trinity.  Linz has the title
“DISPLAY RACK” and it shows a number of views of its display.  A figure from Linz is shown below.  In contrast to the Gamon patents, Linz does
not show or describe any article that it might display.

The
PTAB instituted IPRs for both Gamon patents, but in its final written
decisions, the PTAB found nonobviousness based on its finding that Linz failed
to provide a visual impression basically
the same as the patented
designs.  The PTAB compared a
perspective figure of Linz with the figures of the Gamon patents and concluded
that the differences prevented Linz from being a “primary” reference against
either of the Gamon design patents. 

Specifically,
the PTAB explained: “The biggest
difference between the designs is that Linz
does not disclose
a cylindrical object
in its display.  The claimed
cylindrical object, and its spatial
relationship to the label area in the [Gamon patent], is half of the scope of
the design claim.”[iv]  The PTAB further stated that “[a]dding a hypothetical can to Linz before comparing
the designs is improper under Durling because such comparison does not consider the
design ‘in existence’ and the modification has a noticeable impact on the
overall design.”[v]
 The PTAB, therefore, held that the unmodified Linz
reference does not have basically the same design characteristics as the
claimed designs as a whole.

The
Federal Circuit majority, however, disagreed. 
In a majority opinion authored by Circuit Judge Kimberly Ann Moore, the
Federal Circuit vacated the Board’s conclusion that the claimed designs would
not have been obvious.  The court noted
that the “case presents the unusual situation where we reverse the Board’s
factual finding that Linz is not a proper primary reference for lack of
substantial evidence support.”[vi]  The court acknowledged that Linz does not
show or describe any article that it might display.  However, the court relied heavily on the fact
that it was undisputed between the parties that the claimed designs of the
Gamon patents and the design of Linz are for dispensing cans and that a can
would be used in the design of Linz.[vii]  The central, factual dispute with respect to
Linz, according to the Federal Circuit, was “the dimensions of a can that would
be used in Linz in comparison with that in the claimed designs.”[viii]  But the Federal Circuit shrugged off this
distinction as “ever-so-slight differences.”[ix]  According to the court: “The parties do not
dispute that Linz’s design is made to hold a cylindrical object in its display
area.  In light of these facts, the
Board’s finding that Linz is not a proper primary reference is not supported by
substantial evidence.”[x] 

Circuit Judge Pauline Newman dissented
from the ruling, saying that the PTAB had “correctly applied the law of design
patent” and correctly determined that “Linz
cannot serve as a primary reference.”[xi]  Judge Newman wrote that the soup can was a “major
design component” of the Gamon design and “cannot be deemed insubstantial.”[xii]  According to Judge Newman, the majority erred by “modifying the Linz design by adding a can
. . . in order to create a design more similar to the
Gamon design.  She noted, “Only after a
primary reference is found for the design as a whole, is it appropriate to consider
whether the reference design may be modified with other features, selected
to match the patented design.” 

Quoting In re Jennings, 182 F.2d 207 (CCPA 1950), Judge Newman wrote: “In considering patentability of a proposed design the appearance of the design must be viewed as a whole, as shown by the drawing, or drawings, and compared with something in existence—not with something that might be brought into existence by selecting individual features from prior art and combining them.”[xiii] 

Click here to view the court’s decision in Campbell Soup Co. v. Gamon Plus, Inc.


[i] Campbell Soup
Co. v. Gamon Plus, Inc
., Appeal Nos.
2018-2019, 2018-2030 (Fed Cir. Sept. 26, 2019).

[ii] Apple, Inc.
v. Samsung Elecs. Co
., 678 F.3d 1314,
1329 (Fed. Cir. 2012 (internal quotation marks omitted).

[iii]
Durling v. Spectrum
Furniture Co.
, 101
F.3d 100, 103 (Fed. Cir. 1996).

[iv] Final Written Opinion, IPR2017-0091, at 33.

[v] Id. at 32 (quoting Durling,
101 F.3d at 103). 

[vi] Campbell Soup
Co. v. Gamon Plus, Inc
., Appeal Nos.
2018-2019, 2018-2030 (Fed Cir. Sept. 26, 2019), at 9. 

[vii] Id

[viii]
Id

[ix] Id.  

[x] Id. at 10 (citing Durling,
101 F.3d at 103).

[xi] Id., dissent at 1, 6. 

[xii] Id., dissent at 6.

[xiii]
In re
Jennings
, 182 F.2d 207, 208 (CCPA 1950).