Fed Circ invalidates can design patents after Campbell appeal
Campbell Soup has convinced the US Court of Appeals for the Federal Circuit that two can dispenser design patents should be invalidated for obviousness.
The precedential ruling overturns two prior Patent Trial and Appeal Board (PTAB) decisions which upheld the validity of the patents, owned by a former Campbell contractor Gamon Plus.
The patents (US numbers D612,646 and D621,645) cover an “ornamental gravity feed dispenser display” and relate to Gamon’s dispenser product, the iQ Maximizer.
Writing for the three-judge panel, Circuit Judge Kimberly Moore said that Gamon’s commercial success and “unique ornamental characteristics” were not enough to maintain validity over prior art submitted by Campbell.
Alongside this, the court published a second, shorter ruling relating to Gamon’s US patent number 8,827,111. Campbell challenged all claims of the ‘111 patent but the circuit judges were unpersuaded, affirming the PTAB’s decision to uphold the patent.
Establishing a ‘nexus’
In the design patent dispute, Gamon needed to establish a “nexus” between its design and the prior art, a 1999 patent referred to in the judgment as “Linz”. By nexus, the court said, it meant “there must be a legally and factually sufficient connection between the evidence and the patented invention”. To achieve this, Gamon had to identify the unique characteristics of its design and demonstrate how they contributed to the product’s commercial success.
The PTAB found four areas in which the iQ Maximizer differed from “Linz” in that it featured a larger cylindrical object; a resting point of the cylindrical object; a taller label area; and a greater spacing between the label and the cylinder.
Gamon relied on testimony from the named inventor of the can, Terry Johnson, who asserted that the iQ Maximizer’s commercial success was due specifically to the label area “having the same proportions as the can”.
However, the size of the label was not claimed in the design patent, leading the Federal Circuit to dismiss the argument.
“We, hold that, as in the utility patent context, objective indicia must be linked to a design patent claim’s unique characteristics.”
Case history
From 2002 to 2009, Gamon had sold approximately $31 million worth of iQ Maximizer dispensers to Campbell.
In late 2008, Campbell began purchasing similar dispensers from Trinity, which led Gamon to sue Campbell and Trinity in the US District Court for the Northern District of Illinois for patent infringement in 2015.
In response, Campbell and Trinity filed for an inter partes review of the ‘646 and ‘645 patents, claiming that they would be obvious over “Linz”.
In its first final decision, the board held that “Linz” was not similar enough to the claimed designs to constitute infringement. Campbell and Trinity appealed the decision to the Federal Circuit for the first time in 2019.
The circuit vacated and remanded the board’s first decision, noting that there were “ever-so-slight differences” between “Linz” and Gamon’s IQ Maximizer patents.
On remand, the board again held that Campbell and Trinity failed to prove unpatentability, reasoning that, although “Linz” has the same overall visual appearance as the Gamon designs, it was outweighed by the iQ Maximier’s commercial success and Trinity’s supposed “copying” of the iQ Maximizer.
On Tuesday, August 17, the Federal Circuit handed down a precedential ruling offering video game company Valve an opportunity to invalidate patents held by Ironburg Inventions that had been affirmed in a PTAB ruling in 2019.
Also, the circuit ruled that the US Patent and Trademark Office can’t claim back expert witness fees it incurred in defending patent rejections filed by inventor Gilbert Hyatt.
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