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No Special Standards for Nexus of Objective Indicia Apply to Design Patents

| Brian C. BarnesDaniel P. Hughes

CAMPBELL SOUP COMPANY V. GAMON PLUS, INC.

Before Moore, Prost, and Stoll.  Appeal from the Patent Trial and Appeal Board.

Summary:  The standards for establishing a presumption of nexus or a nexus-in-fact between objective indicia of nonobviousness and patent claims are the same for design and utility patents.

Campbell requested inter partes review of two of Gamon’s design patents directed to gravity fed soup can dispensers.  The Board found that a prior art display rack created the same overall visual appearance of the patented design, but that this similarity was outweighed by objective indicia of nonobviousness.  The Board further found a presumption of a nexus between the objective indicia and the patented design because the differences between the claimed design and Gamon’s commercial product were “insignificant to the ornamental design” of the commercial product. The Board also found that, regardless of the presumption, there was a nexus between the objective indicia and the patented design.

On appeal, the Federal Circuit reversed, finding that the Board incorrectly applied different standards for determining nexus to design patents.  First, the Court found that the Board incorrectly limited its presumption of nexus analysis to features of “ornamental” design and should have instead applied the utility patent standard, which considers all the differences between the claimed design and the commercial product.  Under this standard, the Board should not have a found a presumption of nexus.  The Court also found that Board further erred by not requiring a link between the objective indicia and the unique features of the patented design, as is required for utility patents. Under the correct standard, there was no nexus-in-fact because the objective indicia were only linked to features of the commercial product that were known in the prior art.

Editor: Paul Stewart