Académique Documents
Professionnel Documents
Culture Documents
I. INTRODUCTION....... 1
II. SUMMARY OF WHY THE BOARD SHOULD FIND THAT
PETITONERS HAVE NOT SHOWN UNPATENTABLILITY 2
i
3. Linz, without modification, does not give a visual impression that is
basically the same as that of the design of the 646 patent. .. 22
IV. Even if the Linz and Samways references were combined, the resulting
design would not have the same overall appearance to a designer of ordinary
skill in the art. . 29
A. Linz does not remotely suggest the overall esthetic appearance of the
645 patent. 32
B. Samways even less suggests the overall esthetic visual appearance of the
645 patent.. 35
VI. CONCLUSION 44
ii
TABLE OF AUTHORITIES
Cases Page(s)
Cases
Advanced Display Sys. v. Kent State Univ., 212 F.3d 1272 (Fed. Cir. 2000) ................ 39
Alco Standard Corp. v. TVA, 808 F.2d 1490, 1 U.S.P.Q.2d 1337 (Fed. Cir. 1986) ...... 38
Apple, Inc. v. Samsung Electronics Co. Ltd., 678 F.3d 1314 (Fed. Cir. 2012) .......12, 30
ATAS Intl, Inc. v. Centria, IPR2013-00259, Paper 13 (PTAB Sept. 24, 2013)............ 12
Atofina v. Great Lakes Chem. Corp., 441 F.3d 991 (Fed. Cir. 2006)............................ 26
Cont'l Can Co. USA v. Monsanto Co., 948 F.2d 1264 (Fed. Cir. 1991) ....................... 26
Crystal Semiconductor Corp. v. Tritech Microelectronics Int'l, Inc., 246 F.3d 1336, 57
U.S.P.Q.2d 1953 (Fed. Cir. 2001).....16
Durling v. Spectrum Furniture Co., 101 F.3d 100 (Fed. Cir. 1996)....................6, 19, 21
Graham v. John Deere Co., 383 U.S. 1, 148 U.S.P.Q. 459 (1966). .............................. 38
High Point Design LLC v. Buyers Direct, Inc., 730 F.3d 1301, 108 U.S.P.Q.2d 1183
(Fed. Cir. 2013) ............................................................................................................. 6
Hyatt v. Dudas, 492 F.3d 1365, 83 USPQ2d 1373 (Fed. Cir. 2007) ............................. 17
Jore Corp. v. Kouvato, Inc., 117 Fed. Appx. 761 (Fed. Cir. 2005) ............................... 13
KCJ Corp. v. Kinetic Concepts, Inc., 223 F.3d 1351, 1356, 55 U.S.P.Q.2d 1835 (Fed.
Cir. 2000) .................................................................................................................... 16
iii
In re Magnum Oil Tools Int'l, Ltd., 2016 WL 3974202 (Fed. Cir. July 25, 2016) .......... 2
Par Pharmaceuticals, Inc. v. TWI Pharmaceuticals, Inc., 773 F.3d 1186, 112
U.S.P.Q.2d 1945(Fed. Cir. 2014)................................................................................ 28
In re Rosen, 673 F.2d 388, 213 U.S.P.Q. 347 (CCPA 1982) .................................... 6, 12
Specialty Composites v. Cabot Corp., 845 F.2d 981, 6 U.S.P.Q.2D 1601 (Fed. Cir.
1988) ........................................................................................................................... 39
Sport Dimension, Inc. v. The Coleman Company, 820 F.3d 1316, 1323, 118
U.S.P.Q.2d 1607 (Fed. Cir. 2016)............................................................................... 21
Statutes
35 U.S.C. 103(a)............................................................................................................ 1
35 U.S.C. 316(e)............................................................................................................ 2
iv
EXHIBIT LIST
2009 Campbell Soup Company, SEC Form 10K for 2005, page 9
2010 Campbell Soup Company, SEC Form 10K for 2006, pages 10 and 11
2011 Campbell Soup Company, SEC Form 10K for 2007, page 12
v
I. INTRODUCTION
Patent Owner Gamon Plus, Inc. (herein Gamon) submit this merits response
to the Petition for Inter Partes Review (Paper 2, hereafter Petition) by Petitioners
On March 30, 2017, the Patent Trial and Appeal Board (the Board)
instituted trial of Gamons U.S. design patent no. D621,645 (the 645 patent) on
Samways) alone;
Samways.
The Board denied review of any other grounds in the Petition. Id.
1
I. SUMMARY OF WHY THE BOARD SHOULD FIND THAT
PETITONERS HAVE NOT SHOWN UNPATENTABLILITY
In an inter partes review . . . , the petitioner shall have the burden of proving
316(e). This burden remains with the petitioner through the proceeding. In re
Magnum Oil Tools Int'l, Ltd., 2016 WL 3974202, at *5-*7 (Fed. Cir. July 25, 2016).
The burden never shifts to the patent owner to prove that its claim is novel or
The Board should find that Petitioners did not carry their burden to prove
knowledge of a designer of ordinary skill in the art to try to make them more like
the claimed design are impermissible hindsight and are not supported by credible
evidence.
(c) Petitioners have failed to prove that, even if combined, the Linz and
Samways references suggest all aspects of the claim or render the claim obvious to
2
(d) The commercial success of the patented design, evidenced by substantially
increased sales by Petitioners using the design for their products, Petitioners
claimed design, and the Petitioners having subsequently slavishly copied the design
of the 645 patent are all secondary considerations that overcome all of Petitioners
The 645 patent claims The ornamental design for a gravity feed dispenser
display, as shown and described, and the disclosure has a single perspective view
of the claimed design, with portions of the structure in phantom and not included in
The portions of the structure that form the design are shown below highlighted
3
in blue.
The Board characterized the elements of the design claim in its Decision to
The Board however failed to note other aspects of the design claim that are
very important esthetically, i.e., the relative position, dimensions and height of the
label area with respect to the cylindrical can, which is a significant esthetic aspect of
forward of the label area, but most of the and with the label area at a height above
the bottom of the article that is about the same as the height of the label area. Id.,
para. 5. This spatial relationship may be seen in the annotated version of the patent
4
label area
most of the
cylindrical article
is forward of the
label area
height of
label area
In addition, while the width of the label area is about the same as the height
of the cylindrical article in the display, the ratio of height of the curved label area
to its width is similar to the height-to-diameter ratio of the cylindrical article in the
display, which creates an esthetic link between those parts absent in the prior art.
The claimed design has met with great commercial success, and Petitioners
have copied the design for their products, countering Petitioners arguments of
obviousness.
5
III. PETITIONERS HAVE FAILED TO PRESENT A PRIMARY
REFERENCE THAT LOOKS BASICALLY THE SAME AS THE
CLAIMED DESIGN.
as set out in, e.g., Durling v. Spectrum Furniture Co., 101 F.3d 100, 103, (Fed. Cir.
1996).
The first step is to identify a primary reference. In re Rosen, 673 F.2d 388, 391,
213 U.S.P.Q. 347 (CCPA 1982). That primary reference must be something in
existence, the design characteristics of which are basically the same as the claimed
reference, it is necessary to (1) discern the correct visual impression created by the
patented design as a whole; and (2) determine whether there is a single reference that
creates basically the same visual impression. High Point Design LLC v. Buyers
Direct, Inc., 730 F.3d 1301, 1311-12, 108 U.S.P.Q.2d 1183 (Fed. Cir. 2013) [emphasis
added].
rejection if major modifications are required to make the prior art reference look like
the claimed design. In re Harvey, 12 F.3d 1061, 1063, 29 U.S.P.Q.2d 1206 (Fed. Cir.
6
1993). Where there are differences between the proposed primary reference and the
claimed design, they must be de minimis in nature and unrelated to the overall esthetic
Grounds for obviousness of the 645 patent, it is clear neither Linz or Samways can
serve as a primary reference for an obviousness showing against the 645 patent,
modification, creates basically the same visual impression as the design of the 645
patent. Absent those primary references, obviousness the 645 patent has not been
established by Petitioners.
In the Decision to Institute this IPR, the Board did not rely on the actual visual
impression given by the respective Samways or Linz references, but, based on the
references to try to make them resemble the claimed design before they were
7
Linz based to add a cylindrical article), and at 26-27 (modification of Samways to
have one jar dispensing cradle that extends the full width of the sign above it).
nor Samways provides the same visual impression as the patented design, but where
those modifications are not added to Linz or Samways they are strikingly different
form the 645 patent, and therefore neither Linz nor Samways can serve as a primary
The Samways reference has three embodiments, only one of which, the second
hinged or clipped on the dispenser housing. See, Samways, page 9, lines 2 to 11.
The dispenser 10 has two distinct laterally side-by-side delivery paths for coffee jars
100, which have a lower cylindrical body and a top lid, as seen in FIG. 4 Samways,
In Samways, the coffee jars 100 roll down in each delivery path to respective
outlets 18 and 19, which have two side-by-side box-like storage locations 20 and 21
for placement of a jar 100 by a customer, each of which storage locations 20 and 21
8
extends only halfway across the dispenser 10 and slightly less than half the width of
the large curved fascia 17 held just above it. Samways, page 10, line 34 to page 11,
line 5 and FIG. 4. The fascia 17 of Samways is quite tall and extends down to close
front
fascia
coffee jar
with top
FIGS. 3 to 5 with the design of the 645 patent shows that the two dispensers
produce visual appearances that are completely dissimilar where compared at a scale
in which the cylindrical article of the 645 patent is about the same diameter as the
9
coffee jar of Samways. See, Declaration of Terry Johnson, para. 9. The size and
location of the fascia of Samways relative to the jars gives an asymmetrical visual
appearance relative to the very small coffee jar, as well as providing a top-heavy
appearance where the fascia represents more than 80% of the vertical height of the
dispenser, as well as most of the forward facing surface of the dispenser, compared
10
The above side-by-side comparison of the perspective view of Samways with
the 645 patent design makes it clear that, in contrast to an efficient and esthetically
pleasing display shown in the 645 patent, Samways is a lopsided and very crowded
display, most of which is the fascia or sign area. Id., para. 10.
Comparing Samways with the design of the 645 patent, it is apparent that
Samways differs in many ways from the design of the 645 patent, and these include
2. Samways does not have a label area about as wide as the cylindrical article
is tall, but instead the Samways fascia more than twice as wide as the height of
a jar;
3. Samways does not have a label area that is around 1.5 to not more than
about 2 times its width in height, but the Samways fascia has a height
substantially more than twice its width (see Samways FIG. 5);
4. Samways does not show a label area supported above a cylindrical article
height that is about the height of the label area but rather the fascia of
Samways is at least four times as tall as the distance of the fascia above the
11
5. Samways does not show a smooth-sided cylindrical article but jars having
separate tops.
visual impression compared to that given by the design of the 645 patent,
visual impression of Samways is basically the same as the design of the 645
patent, which is compact and elegant by comparison. See, In re Rosen, 673 F.2d 388,
391, 213 U.S.P.Q. 347 (CCPA 1982) (Reference could not serve as primary
reference because it does not give the same visual impression of lightness and
sufficient to destroy any arguable similarity of Samways to the 645 patent design
and its use as a primary reference. See, e.g., ATAS Intl, Inc. v. Centria, IPR2013-
00259 at *16 (PTAB Sept. 24, 2013) (asymmetric/irregular and symmetric regularly-
repeating designs were not basically the same to allow one to be a primary
reference against the design claim of the other); see also, Apple, Inc. v. Samsung
Electronics Co. Ltd., 678 F.3d 1314, 1330 (Fed. Cir. 2012)(identifying asymmetry as
the first reason why a reference was not suitable as a primary reference against a
symmetrical design).
In fact, the Board, in the Decision to institute this IPR held that Samways was
12
different enough from the 645 patent design that Samways did not anticipate the
645 patent design because the Samways dispenser has two side-by-side pathways.
See Institution Decision at 24.The Board further rejected the argument of Petitioner
that Samways could be modified by other alleged embodiments for the purposes of
to give basically the same visual impression as the design of the 645 patent, and,
looks basically the same as the design of the 645 patent, Petitioners have argued that
some radical modifications in the Samways reference can be made to try to make it
13
modification is required to make the reference look like the claimed design. Jore
Corp. v. Kouvato, Inc., 117 Fed. Appx. 761, 763 (Fed. Cir. 2005 citing In re Harvey,
Remove central
structure
separating paths
X X
X
Samways, FIG. 5
(showing modifications posited by Petitioners)
Petitioners argue that Samways may be modified as set out in the diagram
shape and dimensions of the articles (coffee jars) in the dispenser and removing parts
14
The changes urged by Petitioners are
4. creating a new jar that is twice as tall but of the same diameter as the
Petitioners contend that these modifications are de minimis, but that is clearly
absurd. The changes that Petitioners expert propounds are basically a reconstruction
of the device that, if nothing else, creates symmetry in the dispenser that it did not
have previously.
and substantial enough to exclude a design from being a primary reference. See,e.g.,
It also may be observed that the changes posited by Petitioners do not really
make the Samways top-heavy dispenser look anything like the desirable and
to one of ordinary skill in the art of product dispensers. See Declaration of Terry
15
b. The assertion that Samways describes a dispenser with only
one path based on a claim reciting only one path in its
elements is nonsense.
Petitioners expert, James Gandy, a former U.S. Patent & Trademark Office
Examiner, has provided a declaration that presents the basis of the Petitioners
unjustifiable assertion that the Samways reference describes a dispenser with only
claim 1 recites only a single serpentine path in the dispenser that it claims, and he
extrapolates from that Samways describes an embodiment having only one path. See
Samways claims a dispenser with only one serpentine delivery path. Ex. 1009, at 26,
(specification page 17), claim 1. A second serpentine delivery path is added to the
1. A dispenser comprising:
a serpentine delivery path ; and
a first outlet for the delivery path .
The Court of Appeals for the Federal Circuit has clearly held that the
indefinite articles a or an, when used in a patent claim, mean one or more in
16
Semiconductor Corp. v. Tritech Microelectronics Int'l, Inc., 246 F.3d 1336, 1347, 57
U.S.P.Q.2d 1953, 1958 (Fed. Cir. 2001), citing KCJ Corp. v. Kinetic Concepts, Inc.,
223 F.3d 1351, 1356, 55 U.S.P.Q.2d 1835, 1839 (Fed. Cir. 2000).
Under this rule of law, the proper reading of the claim is not only one as Mr.
Gandy asserts, but rather one or more serpentine paths. That does not suggest
necessarily only one path, and when read in the light of the specification, the claims
clearly do not define a dispenser with one and only one pathway.
The fact that Samways does not describe a dispenser with only one, and no
more than one, path extending across the width of the dispenser and the fascia is
clear in light of the fact that Samways could not have a claim that expressed such a
Such a claim could not be presented in Samways because the disclosure of the
Samways reference does not adequately describe such a design. The Samways
of 35 U.S.C. sec. 112 to allow presentation of such a utility patent claim because that
utility claim language does not read on any embodiment shown in the Samways
reference, and consequently, the claim would not be adequately supported for section
112. See, e.g., Hyatt v. Dudas, 492 F.3d 1365, 1371, 83 USPQ2d 1373, 1376-1377
17
(Fed. Cir. 2007). The Samways disclosure is even more clearly inadequate in the
context of design patents, since Samways clearly fails to suggest or support the
Finally, it is clear that the modifications urged by the Petitioners expert are
loaded with hindsight. even if claim 1 could be read to teach a single path version of
Samways, the least violence to the design would be by dropping one of the paths of
impression given by the dispenser in terms of the asymmetry of the dispenser and the
18
relative width of the fascia and the coffee jars.
introduces new structural elements purely from hindsight using the patented design
as a guide, not based on the reference itself. Petitioners contention that claim 1 of
embodiment having only one delivery path. That statement is dead wrong and based
Petitioners expert also asserts that [t]o the extent that it can be argued that
Samways does not disclose an ornamental design having only one dispensing
pathway per access door/label area, it would be obvious for a designer of ordinary
skill in the art to modify the teachings of Samways to have only one dispensing
pathway. Declaration of James Gandy, page 32-33, para. 67. Petitioners goes on to
argue that food cans may be of different sizes and that the designer would alter
Samways to have accommodate a can twice as tall as the coffee jars of Samways,
19
because the rule regarding primary references is that the primary reference must be
a something in existence, the design characteristics of which are basically the same
as the claimed design. Durling v. Spectrum Furniture Co., 101 F.3d 100, 103, 40
but has been created (unjustifiably) from the Samways design after the fact. This is
not a minor de minimis adjustment in appearance of an existing design that does not
affect the visual impression of the reference, but a radical revision that Petitioners
argue makes Samways look basically like the claimed design, which is not
1061, 1065, 29 U.S.P.Q.2d 1206, 1210 (Fed. Cir. 1993) As such, Petitioners altered
version of Samways with a single centered path and an article as tall as the fascia of
solely on the opinion of Mr. Gandy, a former Examiner at the U.S. Patent &
Trademark Office. Mr. Gandy as an Examiner may have expert knowledge of the
legal standard that the U.S. Patent & Trademark Office would apply in examining an
application for a design in the product dispenser art. However, as far as can be seen
20
from his declaration, Mr. Gandy has never worked in the area of designing product
dispensers apart from work as an Examiner, and he therefore cannot provide opinion
in the art would be, absent some established extrinsic factual basis. His unsupported
not as evidence. See, e.g., Sport Dimension, Inc. v. The Coleman Company, 820 F.3d
1316, 1323, 118 U.S.P.Q.2d 1607 (Fed. Cir. 2016)(District Court did not abuse
consultant for four decades, had no experience whatsoever in the specific field of the
patent because it does not give basically the same visual impression as the
that can serve as a primary reference against the 645 patent because such an
does not describe a centered symmetrical single path dispenser, and the
21
Samways design altered by allegedly obvious variants by a hypothetical
Linz is a design patent entitled DISPLAY RACK, and it shows a display rack
using six figures, largely in phantom lines. See Linz, page 1. The rack has a
pieces that curve upwardly with a slot between them. Id. at FIG. 1.
Nowhere in Linz does the reference describe, show or suggest the types of
articles that might be displayed in this rack, and the Board noted this fact in its
Linz. See, Institution Decision at *12 (the designs are not substantially the same
because the lack of a cylindrical object in Linz creates a distinct overall ornamental
of ordinary skill in the art would appreciate the size, shape and placement of the
22
object based on the teaching of Linz alone.), and at *18 (Linz does not display a
cylindrical object below the label area and behind the stops ).
(highlighted but not altered otherwise) with the figure of the645 patent, with the
Specifically, Linz also does not show or suggest these other features of the
2. a curved label area that extends essentially to the sides of the rack, Linz
23
having instead flat strips extending laterally inward from the sides a non-
negligible distance that makes the curved label area between the strips extend
Linz, without modification, lacking the cylindrical article shown in the 645
patent design and its other elements, really is missing half of the claimed design,
and therefore does not provide basically the same visual impression as the design
of the 645 patent, and therefore the unaltered Linz design cannot be cannot be used
Petitioners expert concedes that the Linz patent does not disclose a can. See,
Declaration of James Gandy, page 20, para. 44. Petitioners expert however argues
that Linz indicates to a designer of ordinary skill in the art that it is designed to
dispense cans, and proposes a modified Linz reference with a can of his own
creation. Id. at page 20, para. 45. However, these argued alterations of Linz to try to
make it look more like the design of the 645 patent are impermissible and
reference.
24
a. The addition of a cylindrical can to Linz is not a de
minimis modification of the reference.
Where there are differences between the proposed primary reference and the
claimed design, they must be de minimis in nature and unrelated to the overall esthetic
Whether the creation and addition of a can of arbitrary appearance to the rack
impact the fundamental characteristic of Linz that the Board considered in its
reasoning in instituting this IPR, are irrelevant issues. The only question is whether
the argued alteration of Linz is more than de minimis, and consequently improper.
to Linz makes it a suitable primary reference that looks basically the same as the
design of the 645 patent. However, Linz without the Petitioners proposed can lacks
a significant element of the overall appearance of the design, and, without the can
added, clearly fails to give a visual impression that is basically the same as the 645
patent. The argued change to Linz is therefore substantial, and not de minimis, in
terms of changing the visual appearance of the reference. The argued addition of the
can to Linz is therefore not permissible under In re Harvey, and the Linz reference
25
primary reference against the 645 patent.
cylindrically shaped objects, e.g., cans based on 1. the curved shape of the bottom
of Linz, and 2. a curved loading area for the dispenser. See, Declaration of James
First, the can with its arbitrary appearance that Petitioners have formulated in
the Linz rack cannot be inherent to Linz. Inherency requires that the undisclosed
feature necessarily is present in the reference. See, e.g., In re Giuffrida, 527 Fed.
Appx. 981, 984-985 (Fed. Cir. July 18, 2013), citing Atofina v. Great Lakes Chem.
Corp., 441 F.3d 991, 999 (Fed. Cir. 2006). See also Cont'l Can Co. USA v.
Monsanto Co., 948 F.2d 1264, 1268 (Fed. Cir. 1991). Mere probability is not
enough to find that the prior art inherently discloses something not explicitly present.
the Linz rack. See Declaration of Terry Johnson, para. 19. The particular can with its
possibilities, but it is not the only necessary article that could be used. Therefore its
26
addition cannot be supported on a theory of inherency.
Since the Linz reference itself does not inevitably necessitate the presence of
the can proposed by Petitioners, that can and its appearance are clearly not inherent
in Linz, and can only be the result of Petitioners using improper hindsight in trying
ornamental design context, the focus must be on appearances and not uses of the prior
art. In re Harvey, 12 F.3d at 1064. Relying on design concepts rather than actual
imagining because it appeared that Linz was designed to receive and display a
cylindrical object, e.g., a can. Petitioners proposed can addition to Linz is based
not only on their general functional analysis of the rack, but it is infused with
hindsight of the appearance of a cylindrical object as seen in the 645 patent design.
This use of the design concept of Linz in modifying the reference is directly
on reliance on the use of the prior art for determining patentability of an ornamental
design. See, In re Harvey, 12 F.3d at 1064. In that case, the Federal Circuit held that
the Board should have focused on actual appearances, rather than design concepts.
Id.
27
The reading of Linz urged by Petitioners is clearly based on a utility-patent-
type functional obviousness analysis and design concepts about the functional
operation of the Linz display. However, those functional theories are irrelevant to the
ornamental appearance of Linz, and the actual appearance of an object in the Linz
display rack is completely unknown, as the Board noted repeatedly in the decision to
utility patent area, and its extension to an obviousness analysis in the utility patent
area is a very high standard to meet. See, e.g., Par Pharmaceuticals, Inc. v. TWI
Pharmaceuticals, Inc., 773 F.3d 1186, 1195-96, 112 U.S.P.Q.2d 1945, 1952 (Fed.
Cir 2014). Bringing the utility-patent inherency across to the design patent area to
improper.
The Federal Circuit, in fact, has held as much in In re Cho, 813 F.2d 378, 1
U.S.P.Q.2d 1662 (Fed. Cir.1987). In that case, the Board of Patent Appeals and
Interferences analyzed the prior art as if for a utility patent and determined that it
would have been obvious to supply recessed flaps in a bottle cap in the utility
context. Id., 813 F.2d at 382. The Board then concluded that such bottle caps would
Id. The Federal Circuit reversed, holding that design obviousness does not follow
28
from utility obviousness. Id.
is therefore impermissible because the argued alteration is more than de minimis. The
Petitioners assertion that a can of the given appearance is inherent in Linz is based
in Linz, as required by In re Harvey, Linz is simply an empty rack that does not
provide basically the same visual impression as the combination ornamental design
IV. Even if the Linz and Samways references were combined, the resulting
design would not have the same overall appearance to a designer of
ordinary skill in the art.
If the first part of the test for obviousness is satisfied, i.e., a proper primary
reference shows a design that is basically the same as the claimed design, then the
obviousness analysis of the design proceeds to the second part of the test, whether
other references can modify the reference to create a design that has the same overall
visual appearance as the claimed design. Apple, Inc. v. Samsung Electronics Co. Ltd.,
29
678 F.3d 1314, 1329 (Fed. Cir. 2012). Obviousness must be evaluated from the
Here, even assuming arguendo that either Samways or Linz could properly
serve as a primary reference, applying the second part of the test, it is clear that
Petitioners cannot show that a designer of ordinary skill in the art could combine the
teaching of the Linz and Samways references in any proper way to produce exactly
the same as the overall appearance of the design of the 645 patent to a designer of
ordinary skill in the art. The relatively ungainly and unappealing display racks of Linz
or Samways do not remotely suggest what a designer of ordinary skill in the art would
design of the 645 patent. See Declaration of Terry Johnson, para. 26.
The design of the 645 patent was developed for the cans of condensed soup
sold by Petitioners Campbell Soup Company and Campbell Sales Company, and the
cylindrical article shown in the 645 patent is dimensioned the same as a Campbells
condensed soup can. Id. at para. 27. Those cans have a height of about four inches
and a diameter of about 2.5 inches, with a ratio of height to diameter of approximately
1.6:1. Id.
The curved label area or door above the cylindrical article in the 645 patent
has a height to width ratio that is approximately the same as the height to width ratio
of the soup cans, and to a degree gives the visual impression of a larger version of the
30
cylindrical article below it. Id.. This impression is enhanced by the fact that the curved
surface above cylindrical article extends substantially the entire width of the display
For ornamental or esthetic reasons, the curved label area in the 645 patent is
supported at a height above the sideways cylindrical article that is about the height of
the label area, and the label area is recessed somewhat rearward so that the cylindrical
article is largely forward of the label area and out from under it, to make it seem more
label area
most of the
cylindrical article
is forward of the
label area
height of
label area
As may be seen in the annotated diagram of the figure of the 645 patent above,
31
these spatial relationships give rise to a sense of space and availability of the
Linz does not remotely suggest such an overall esthetic appearance such as that
5/6d
1/12*d 1/12*d
As may be seen in the diagram above from FIG. 2 of Linz, the curved label of
Linz is held and extends between two flat strips that together take up about 1/6 of the
32
lateral width of the rack of Linz, allowing the curved label area only 5/6 or about 83%
of the lateral width of the rack. See Declaration of Terry Johnson, para. 29. This
narrowed lateral width of the curved label area results in a loss of the sense in the
645 patent that the label area is similar to a large can. Declaration of Terry Johnson,
para. 31. That is especially the case where a series of racks are on a shelf, as in Linz
FIG. 6, reproduced below, because the width of the flat strips is doubled between the
labels of adjacent racks, and this interrupts the series of curved shapes. Id. m.
Linz can be determined for comparison to the shape and size of the label area,
33
Furthermore, Linz does not have its label area recessed rearwardly from the
front of the rack to the degree that the 645 patent design does, as is clear from the
hypothetical article
(purely arguendo)
Petitioners cannot establish what the shape or size of an article in the Linz rack
would be, and also it is not clear where exactly it would be located, but, placing a
hypothetical article purely arguendo in the figure as far forward as possible, it is still
mostly rearward of the front end of the label area. Id., para. 33. Moreover, the
cramped opening available to access the article in the space behind the curved front
part of the Linz rack is esthetically far from the open sense created by the 645 patent
34
design. Id., para. 33.
Also, because the appearance of any article that might be placed in the Linz
rack is not shown, the relationship of the size and shape of the label area of Linz to
the size and shape of such an imagined article is not shown, and Linz therefore also
fails to suggest that dimensional relationship in the 645 patent of the cylindrical
Linz therefore does not remotely suggest the overall appearance of the
important spatial and dimensional relationships of the components of the 645 patent
design.
Samways even less suggests the overall esthetic visual appearance of the 645
35
height of fascia
1/5 * height
of fascia
The fascia of Samways may be of similar aspect to that of the coffee jar 100 of
its display, but the fascia is twice as wide as the coffee jars are tall, and it is supported
at a height that is only about 1/5 of its height above the coffee jar. Declaration of
Terry Johnson, para. 35. The huge difference in size of the fascia relative to the coffee
jar distinguishes it from the coffee jar esthetically, and the fascia extends so low in
the display that the coffee jar is visible as coming from a side of a thin slot at the
This is in marked contrast with the label area and cylindrical article of the 645
patent, in which the label area and cylindrical can are more tied together by being
36
closer in size and symmetrically placed, but where the label area doesnt intrude
Samways therefore also comes nowhere near suggesting the overall esthetic
Neither Samways nor Linz come near to suggesting the exact overall visual
appearance of the 645 patent, nor can the two references be fairly combined to do so
because the overall esthetic of the patented design is completely absent from both
references.
the two references and combine them with a resulting esthetic advantage not found
in either reference of the challenges, it is important to note that, in the design patent
features of the prior art designs to the [claimed design], rather than the visual
impression of the designs as a whole. In re Harvey, 12 F.3d 1061, 1065 (Fed. Cir.
For the foregoing reasons, the Board should find that Petitioners have failed to
meet their burden of proving unpatentability of the claim of the 645 patent on
Grounds 1, 2 and 3.
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V. Secondary Considerations indicate that the 645 patent design is not
obvious.
meet their burden to establish obviousness of the 645 patent, there are a number of
considerations may often be the most probative and cogent evidence of record, and
it may establish that an invention appearing to have been obvious in light of the
prior art was not. Alco Standard Corp. v. TVA, 808 F.2d 1490, 1 U.S.P.Q.2d 1337,
weighed against the evidence of obviousness, and may result in a determination that
that the petitioner has not shown by a preponderance of the evidence that any claims
are unpatentable. See, World Bottling Cap, LLC v. Crown Packaging Technology,
success, long felt need, and failure of others. Graham v. John Deere Co., 383 U.S.
38
Display Sys. v. Kent State Univ., 212 F.3d 1272, 1285 (Fed. Cir. May 18, 2000), see
also Specialty Composites v. Cabot Corp., 845 F.2d 981, 991, 6 U.S.P.Q.2D (BNA)
1601, 1608 (Fed. Cir. 1988) (reasoning that an accused infringer's close copying of
the "claimed invention, rather than one in the public domain, is indicative of
nonobviousness").
There has been massive commercial success of the invention of the 645
patent both in terms of sales of display racks that provide the patented design to
cans of soup on display, as well as in sales of soup displayed with the ornamental
customers of Patent Owner, have widely used display racks made in concert with
Petitioner Trinity Industries for their soup products that were copied directly from
racks made by Patent Owner Gamon so as to display cans of Campbell soup with
Plus, Inc., first delivered to Petitioner Campbell Soup Company, or its sales affiliate
Campbell Soup cans. Declaration of Terry Johnson, para. 38. Exemplary photographs
39
of that model of display may be seen in Exhibit 2005, which is a photograph of the
model of rack provided, and Exhibit 2006, which shows an actual installation with
Campbell condensed soup cans and advertising in place on the doors of the racks. See
Declaration of Terry Johnson, para. 38. These display racks displayed the condensed
Campbell Soup cans in the exact configuration of the design of the 645 patent. Id.
Oakland, California, and after the test Terry Johnson, CEO of Gamon Plus, Inc., was
advised that the test showed that the use of the display racks resulted in an increase
in sales of condensed Campbell Soup cans in a range of about 9% to 14%. Id., para.
39.
Petitioner Campbell Soup was very excited about the increased sales from use
of the display rack that provided the 645 patent design, which it named the IQ-Shelf-
Maximizer, and entered into an exclusive Supply Agreement with Patent Owner in
Patent Owner Gamon in about 2,800 stores, with plans to expand to 14,000 more
During this period, Gamon began to also provide display racks for not only the
Campbell condensed soup cans (the specific can shown in the 645 patent design) but
also for Campbell Ready-To-Serve soups, which are in cans that are slightly larger
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(5x3 inches instead of 4x2.5 inches). Id., para. 41. Gamon modified its racks by
scaling them up in size to correspond with the larger size of the Ready-To-Serve soup
cans, and the result was a larger version of the rack providing the design of the 645
patent. Id., para. 42; see also Exhibit 2008 (showing the relative size of the label area
Gamon also at some point provided a slight redesign of the Gamon display
racks for both the condensed and Ready-To-Serve soups cans by providing the label
areas of the Gamon displays with a frame around the prevent theft of the advertising
for the soups. Id.. The frame was very narrow and did not affect the essential visual
appearance of the display, i.e., the label area extending substantially the width of the
Petitioner Campbell Soup found that use of Gamons display racks resulted in
increased sales, and continued to order display racks from Patent Owner Gamon,
renewing the Supply Agreement in 2005 and in 2008. Id., para. 44. Campbell Soup
reported increases in soup sales in the years 2003 to 2008 and in its Form 10K annual
corporate reports to the SEC in 2005, 2006 and 2007 ascribed at least some the
increase in sales of soup to the gravity feed shelving systems installed in retail
stores, meaning the Gamon display racks. Id. See, also, Exhibit 2009, Campbell
Soup Company, SEC Form 10K for 2005; Exhibit 2010, Campbell Soup Company,
SEC Form 10K for 2006; Exhibit 2011, Campbell Soup Company, SEC Form 10K
41
for 2007. By about 2009, Petitioner Campbell Soup had installed the Gamon display
racks in about 30,000 stores, which represented almost all of the significant
45. Total sales of the Gamon display racks to Campbell Soup by 2009 had totaled
Sales of Campbell Soup from this group of stores can be estimated to have
represented at least 95% of Campbell Soups U.S. sales of condensed and Ready-To-
Serve soup, and total US sales of those soups represented over $1 billion a year for
If even a conservative one-percent of sales of those soups resulted from the use
of Gamon display racks, it would constitute $10 million in increased sales annually,
and if the increase due to the Gamon racks and use of the 645 patent design was
responsible for a 9 to 14 percent increase in sales, as the market test indicated, the
Gamon design would have produced an additional $80 million to $120 million
The design of the 645 patent was a significant component in the desirability
of the gravity feed shelving systems, and the increased sales using the Gamon
displays is clearly linked to the use of the patented Gamon display racks and design.
Id., para. 47. The increased sales and profits, which by now should total in the
hundreds of millions, that Petitioner Campbell Soup took in as a result of use of the
42
645 patent design in selling its soups constitute massive commercial success of the
patented design. This indicates that the claim of the 645 patent is nonobvious and
There are, however, other even more conclusive secondary considerations than
In or about late 2008, Patent Owner became aware of the fact that Campbell
Soup had begun to use other display racks that employed the design features of the
display racks that Patent Owner had been selling to Campbell Soup. Declaration of
Terry Johnson, para. 49. Despite protests of Patent Owner, the Petitioners have
continued to use theses display racks since then, apparently without any change in
configuration. Id.
The appropriation of the design of the 645 patent is apparent from photographs
of the display racks made by Petitioner Trinity Industries and used by Petitioners
Exhibit 2012 shows a current Campbell Soup store display for condensed soup
cans, and Exhibit 2013 shows a current Campbell Soup store display for Ready-To-
Serve soup cans. Id., para. 51. It is readily apparent that these displays are copied
directly from the design of Patent Owners display rack, as each of these racks has a
43
can with dimensions similar to those of the cylindrical article in the 645 patent, each
has a curved label area with similar dimensions and relative placement relative to the
Patent Owners rack and product design here, and that the copying has been
substantial. Patent Owner estimates that there are about 300,000 of these copied
display racks in US stores. Id., para. 52. The great commercial success of the
claimed design and the slavish copying by Petitioners of the patented design
establishes the desirability and nonobviousness of the patented design, which here
VI. CONCLUSION
For the reasons stated above, the Board should find that Petitioners have
and 3.
Respectfully submitted,
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IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE
THE PATENT TRIAL AND APPEAL BOARD
_________________________________________________________________
CERTIFICATE OF COMPLIANCE
limitations of 37C.F.R. 42.6 and 42.24. This brief is typed in Times New
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IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE
THE PATENT TRIAL AND APPEAL BOARD
_________________________________________________________________
CERTIFICATE OF SERVICE
46