The Campbell Soup Company (“Campbell”) is an American food processing company founded in 1869 in Camden, New Jersey. Campbell is widely known for their extensive line of Ready-to-Cook canned soups. Over the past one-hundred years, they have acquired other brands such as Pepperidge Farm, V8, and Prego.
Trinity Manufacturing Corporation (“Trinity”) designs soup cans and dispensers and licenses their products to Campbell. A rival manufacturing company, Gamon Plus, Inc. (“Gamon”), owns two design patents for a “gravity feed dispenser display”. Gamon also owns utility patents for similar technology. In 2015, Gamon sued Campbell and Trinity for patent infringement. Following the filing of the infringement suit, Campbell petitioned for Inter Partes Review of Gamon’s patents with the Patent Trial and Appeal Board (“PTAB”) claiming obviousness to one of ordinary skill in the art. The challenges to the design patents revealed some interesting determinations, having been reviewed by PTAB not once, but twice, issuing decisions that have been overturned each time by the United States Court of Appeals for the Federal Circuit (“Federal Circuit”).
The PTAB, also dubbed the “death squad”, initially found that Campbell failed to prove unpatentability because the prior art was not sufficiently similar to the claimed designs to constitute a proper primary reference. The Federal Circuit disagreed with PTAB’s analysis and remanded. PTAB again found that Campbell failed to prove the prior art alone or in combination with one another rendered the claimed designs obvious, despite being similar in overall appearance. As part of its decision, PTAB determined the evidence of secondary considerations, also known as objective indicia of nonobviousness, outweighed the similarities in appearance between the prior art and claimed designs such that the claimed designs were not obvious.
After the final written decision was issued for the second time, Campbell appealed to the Federal Circuit again. The Federal Circuit still disagreed with the decision made by PTAB, invalidating Gamon’s design patents. The Federal Circuit concluded, in a precedential decision that the claimed designs are substantially similar in overall appearance, enough to render the claimed designs obvious in light of the prior art. The Federal Circuit also reasoned that the evidence of secondary considerations was not enough to overcome the strong evidence of obviousness.
The Federal Circuit determined the commercial success was not driven by the unique features of the claimed designs, but rather due to the “significant unclaimed functional elements” not claimed in Gamon’s patents. The Federal Circuit stated, “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.” Additionally, Gamon “presented evidence that merely ties commercial success and praise to aspects of the label area that were already present in the prior art.” For this reason, the Federal Circuit afforded the evidence little weight, such that it was not enough to overcome the strong evidence present of obviousness in light of the prior art.
These decisions underscore the importance of secondary consideration in an obviousness analysis, especially on the point of establishing nexus. This evidence can make or break the case in many respects, particularly on appeal. Secondary Considerations can be enough to overcome strong evidence of obviousness, but the analysis is so fact-intensive that establishing a connection between the claimed features and the evidence can be a challenge. The Federal Circuit, by way of this decision, is attempting to clarify the correct question to address during this analysis, and how the evidence is to be received by the courts.
These decisions also highlight the frequent disagreement between PTAB and the Federal Circuit. It is always interesting when PTAB and the Federal Circuit can be presented with the same case, but ultimately reach diametrically opposed decisions. As a note, Gamon’s utility patents were upheld by the Federal Circuit. That means the dispute is far from over. Although it appears the design patent challenges may have ended, Campbell and Gamon are still tangling in the patent infringement cases, including those related to Gamon’s utility patents. Evident from the time and resources expended, Campbell is willing to appeal relentlessly on decisions that are not in their favor.