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No Coextensive Nexus for Gravity-Fed Soup-Can Dispenser

Posted by Thomas P. Howard | Aug 31, 2021 | 0 Comments

By James Juo.

The Federal Circuit in Campbell Soup Co. v. Gamon Plus, Inc., Nos. 20-2344 and 21-1019 (Fed. Cir. Aug. 19, 2021), reversed the Patent Trial and Appeal Board in two inter partes reviews regarding U.S. Design Pat. Nos. D612,646 and D621,645 (the `646 Patent, and `645 Patent, respectively) owned by Gamon. The Court found that there was no nexus between the evidence of commercial success and the claimed designs.

The design patents at issue relate to a gravity feed dispenser display for soup cans and other canned products.

The claimed design of the `646 Patent did not include the features drawn in dashed lines, and thus were limited to what the parties refer to as the “label area,” “cylindrical object,” and “stops” (the entire design is reproduced on the left, and the isolated label area, cylindrical object (or can), and stops are on the right):

The claimed design of the `645 Patent was similar, but did not include the stops, among other design features.

The primary prior art reference was a display rack illustrated in U.S. Patent No. D405,622 to Linz.

According to the Board, although Linz alone has the same overall visual appearance as the claimed designs, it was outweighed by objective indicia of nonobviousness, namely commercial success, industry praise, and copying.

Gamon's commercial embodiment, called the iQ Maximizer gravity feed dispenser, which had been praised by Campbell and others in the industry for increasing soup sales and being more efficient, is shown here:

The Board found that the successful commercial product was coextensive with the claimed design (meaning that the product “is the invention disclosed and claimed”), which established a presumption of a nexus between the objective evidence and the claimed design. Evidence of objective indicia of nonobviousness must have a “nexus” to the claims, that is, “there must be a legally and factually sufficient connection between the evidence and the patented invention.”

On appeal, the Federal Circuit held that the Board misapplied the law with respect to the coextensiveness by discounting the unclaimed features of the design as “not prominent ornamental features.”

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.… By limiting its analysis to ornamental significance, the Board simply did not answer the relevant question: whether the iQ Maximizer “is the invention.”

Id. (emphasis in original).

Because the claimed designs “cover only a small portion of the iQ Maximizer: its label area, cylindrical object, and stops”; and “the iQ Maximizer undisputedly includes significant unclaimed functional elements”; the commercial product was not coextensive with the claimed design. The Court did not go so far as to hold that the presumption of nexus can never apply in design patent cases, but noted it was “hard to envision a commercial product that lacks any significant functional features such that it could be coextensive with a design patent claim.”

Even without the presumption from coextensiveness, a patentee may still establish a “nexus” in fact by showing that the objective indicia are the direct result of the unique characteristics of the claimed design. This would require evidence that the commercial success and praise of the iQ Maximizer derived from those “unique characteristics”; which were (1) a larger cylindrical object (or soup can), (2) the can resting partially forward of the label area, (3) a taller label area that mimics the proportions of the can, and (4) spacing equal to one label length between the label and the can. But the Court found that the evidence of record merely tied commercial success and praise to aspects of the label area that were already present in the prior art.

With respect to the evidence of copying, the Court found this, by itself, was not enough to overcome the strong evidence of obviousness in the Linz reference.

Thus, the Federal Circuit reversed the Board's decisions and held that the claimed designs would have been obvious over Linz.

The patent attorneys at Thomas P. Howard, LLC are experienced in evaluating obviousness and other validity issues in connection with patent prosecution and litigation.

About the Author

Thomas P. Howard

Thomas Howard is an experienced trial lawyer that handles intellectual property litigation nationwide, including copyright, trademark, trade secret and patent litigation, as well as complex civil litigation, including breach of contract, interference with contract, breach of fiduciary duty, conspiracy, fraud and fraudulent transfer of assets.


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