Design patents have always represented a curious form of intellectual property protection. Unlike with utility patents, there is no prerequisite of a useful function. Unlike with copyright rights, in an infringement action there is no defense of independent creation. Finally, unlike with trade dress rights, there is no issue of secondary meaning. Nevertheless, as with other types of patents, the owner of a design patent is entitled to prevent unauthorized persons from making, using, offering for sale, selling, and importing products that contain the patented design.

The potential value of design patents has led many competitors to challenge their validity both in court and at the U.S. Patent and Trademark Office (USPTO). As with utility patents, the grounds for invalidating a patented design include both lack of novelty and obviousness. The novelty analysis is often straightforward, but as a recent decision from the U.S. Court of Appeals for the Federal Circuit (CAFC), Campbell Soup v. Gamon Plus, 2019 WL 4678100 (Fed. Cir. Sept. 26, 2019), illustrates, determining whether a design is obvious over the prior art can be challenging.

Patentability of Designs

Design patents are for ornamental designs of articles of manufacture, though the term "ornamental" is liberally construed, and thus, many design patents are directed to what more commonly would be thought of as industrial designs. A design patent contains a single claim, the scope of which is defined by a set of one or more figures. The coverage afforded by a design patent extends to the appearance of the design as embodied in the claimed article of manufacture. Curver Luxembourg, SARL v. Home Expressions, 2019 WL 4308879 (Fed. Cir. Sept. 12, 2019).

Among the requirements for patentability of a design is that the design must be non-obvious as provided for by 35 U.S.C. §103. 35 U.S.C. §171; In re Borden, 90 F.3d 1570, 1574 (Fed. Cir. 1996). The issue of whether a particular design is non-obvious can be difficult to resolve, but any challenge under §103 to the patentability of a design requires the identification of what has come to be known as a primary reference.

The Search for a Primary Reference

Just prior to the creation of the CAFC, its predecessor court, the U.S. Court of Customs and Patent Appeals (CCPA) set down a framework for analyzing the issue of non-obviousness with respect to designs:

[T]here must be a reference, a something in existence, the design characteristics of which are basically the same as the claimed design in order to support a holding of obviousness. Such a reference is necessary whether the holding is based on the basic reference alone or on the basic reference in view of modifications suggested by secondary references.

673 F.2d 388, 391 (CCPA 1982). Thus, the CCPA directed that a determination should be made as to whether a reference, which elsewhere in the opinion it describes a "primary reference," is basically the same as the claimed design. Under this standard, only after a primary reference is identified can one look to secondary references in order to determine whether the differences between the primary reference and the claimed design were obvious.

In In re Rosen, which was an appeal from ex parte prosecution, the design at issue was a transparent coffee table that had three V- or L- shaped legs. Id. at 389. The purported primary reference was a desk. In determining whether the asserted prior art reference could qualify as a primary reference, the CCPA noted that the conversion of the desk to a coffee table without other modifications in design would not have generated the applicant's design. Id. Consequently, the cited reference could not qualify as a basic or primary reference. Id. As a practical matter, In re Rosen established a presumption that a prior art reference must be very close to a purportedly patentable design in order to qualify as a primary reference that can be used to invalidate or preclude patenting of that design.

The CAFC Early Cases

Fourteen years after In re Rosen, the CAFC decide two cases in which it applied the In re Rosen framework.

First, in In re Borden, 90 F.3d 1570 (Fed. Cir. 1996), which like In re Rosen, was an appeal from an ex parte rejection, the CAFC was asked to determine whether a design for a twin neck dispensing container was obvious. Id. at 1571. The examiner cited a prior art reference that like the design at issue depicted a dispensing container with a twin neck. Id. at 1573.  Further, it contained all of the same design elements as the design at issue except for the shape of one chamber within the container. Id. at 1574. This degree of similarity rendered the designs "basically the same" as required under In re Rosen, and ultimately, when the CAFC combined this reference with the other references of record, it affirmed the rejection by the ex parte examiner.

Second, in Durling v. Spectrum, 101 F.3d 100 (Fed. Cir. 1996), which was decided two months after In re Borden, the CAFC again analyzed whether a prior art reference would qualify as a primary reference for the determining whether a design was obvious. However, unlike In re Rosen and In Borden, here the appeal arose out of a litigation.

Both the cited design and patented design were directed to sectional sofas, and the CAFC set forth a two-step analysis under which to address the issue of obviousness. First, one needs to discern the visual impression that the patented design creates as a whole. Second, one needs to determine whether there is a single reference that creates basically the same visual impression, i.e., there is prior art that qualifies as a primary reference. Id. at 103.

The CAFC then noted that the district court had erred in the first part of the analysis, which led it to misapply the second part of the analysis. The district court misconstrued the patented design too broadly, focusing on the general concept as a sectional sofa with integrated end tables and not on the specific claimed design that used these concepts. Id.

More specifically, the CAFC noted that the visual appearance of the patented design was that of a three-piece sectional sofa that contained two sofa sections at approximately right angles to each other with a triangle corner table, rounded corners at a specific location, a bolster pillow and certain double front rails. The design of the purported primary reference was that of a three-piece sofa with linear sofa sections that were placed at approximately right angles. However, in contrast to the patented design, the cited design contained a third, curved sofa section between the other two sofa sections thereby creating an impression of a rounded right angle. Additionally, although like the patented design, the cited design had rounded ends, bolster pillows and a double front rail, the design of the front rails was different. Because of these differences, the CAFC held that the cited reference could not qualify as a primary reference. Thus, under Durling, a prior art reference that is generally related to the design at issue and uses similar design concepts but does not create a similar specific impression will not qualify as a primary reference.

'Campbell Soup'

Recently, in Campbell Soup v. Gamon Plus, 2019 WL 4678100 (Fed. Cir. Sept. 26, 2019), the CAFC revisited the issue of when a prior art reference qualifies as a primary reference. The case was before the CAFC as an appeal from an Inter Partes Review in which Gamon Plus was the patent holder and Campbell Soup was the petitioner.

The designs were directed to a gravity feed dispenser. The dispenser was configured to dispense cans.

Campbell Soup separately advanced two references as primary references: Linz and Samways, arguing that the patented designs were obvious over: (1) Linz in view of Samways; (2) Samways alone; and (3) Samways in view of Linz. The Board of Patent Appeals and Interferences held that neither Linz nor Samways would qualify as primary references. Campbell Soup appealed.

Using the two-prong Durling framework, the CAFC considered each of the cited references. With respect to Linz, the CAFC reversed the lower court's holding that it was not a proper primary reference; however, with respect to Samways, the CAFC affirmed the finding that it was not a primary reference.

The lower court had interpreted the claimed design as being directed to certain portions of a gravity feed dispenser that have an access door with specific features and a cylindrical object below it. That court noted that Linz did not disclose any feature that corresponded to the patentholder's design of a cylindrical object (a can) and concluded that to infer a cylindrical object from Linz would by improper but that feature did not explicitly appear in Linz. Consequently, despite the undisputed evidence that a person of ordinary skill in the art would have known that a cylindrical can would in practice be used in the article of manufacture of Linz, the trial court concluded that Linz could not be a primary reference.

On appeal, the parties did not disagree that Linz was directed to an ornamental design for a device for dispensing cans. Instead they disputed the dimensions of a can that would be used in Linz as opposed to being used in the claimed design. The CAFC ignored the issue of the can size and held that it was in the unusual position of having to reverse the district court's factual finding that Linz was not a proper primary reference because of a "lack of substantial evidence support." In other words, the size of the can was irrelevant, and although not explicitly stated, the CAFC disagreed that the absence of the appearance of a can in the Linz reference precluded a finding of it to be a primary reference. Without this basis on which to bar Linz from being a primary reference and no evidence to refute that it suggested a can, the CAFC reversed the lower court.

By contrast, with respect to Samways, the CAFC affirmed the finding that it was not a primary reference. The trial court had found significant differences in the design of Samways and the patented designs, including that the cited reference had a dual dispensing area whereas the patented design had a single dispensing area. Additionally, the dimensions of the front label area were different between the two patent designs and the design of Samways.

In dissent, Judge Newman disagreed with the application of the primary reference doctrine to Linz. She noted that the majority had improperly inserted the can element into Linz in order to allow Linz to qualify as a primary reference. As Judge Newman's opinions often do, she highlights a tension between an analytic framework and the application of a doctrine by the CAFC. She, like the trial court, read the case law as imparting a quasi-novelty requirement for a prior art reference to qualify as a primary reference for design patent analysis, i.e., she implied that in order for a reference to be a primary reference, within its four corners there must be a design that is basically the same as the design at issue. Although the decision was part of a dissent, one can imagine that were Gamon to appeal or other litigants to address this issue, future jurists might look to Judge Newman's reasoning to reverse the holding of Campbell Soup.

Conclusion

Invalidating a design patent because a design would have been obvious has always been challenging. In particular, examiners and litigants have often had difficulty in identifying prior art that qualifies as a primary reference, i.e., disclosing a design that is basically the same as what has been claimed. Campbell Soup slightly relaxes this standard, standing for the proposition that for a reference to disclose a design that is basically the same as another design, the prior art design may explicitly, inherently, or implicitly disclose the "basically the same design." This will require more fact-intensive analyses by the USPTO and triers of fact, and it should lead accused infringers to rethink whether to expand the scope of there searches for and assertions of prior art references.

Scott D. Locke is a partner at Dorf & Nelson and chairs the intellectual property practice group.