Trials@uspto.gov
`571-272-7822
`
`Paper 84
`Entered: April 11, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CAMPBELL SOUP COMPANY,
`CAMPBELL SALES COMPANY, and
`TRINITY MANUFACTURING, L.L.C.,
`Petitioner,
`
`v.
`
`GAMON PLUS, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-00091
`Patent D621,645 S
`____________
`
`Before GRACE KARAFFA OBERMANN,1 BART A. GERSTENBLITH,
`and ROBERT L. KINDER, Administrative Patent Judges.
`
`KINDER, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a); 37 C.F.R. § 42.73
`
`1 Trenton A. Ward left the Board in September 2017 and was replaced by
`Judge Obermann on the existing panel.
`
`
`571-272-7822
`
`Paper 84
`Entered: April 11, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CAMPBELL SOUP COMPANY,
`CAMPBELL SALES COMPANY, and
`TRINITY MANUFACTURING, L.L.C.,
`Petitioner,
`
`v.
`
`GAMON PLUS, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-00091
`Patent D621,645 S
`____________
`
`Before GRACE KARAFFA OBERMANN,1 BART A. GERSTENBLITH,
`and ROBERT L. KINDER, Administrative Patent Judges.
`
`KINDER, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a); 37 C.F.R. § 42.73
`
`1 Trenton A. Ward left the Board in September 2017 and was replaced by
`Judge Obermann on the existing panel.
`
`
`
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`
`INTRODUCTION
`I.
`Campbell Soup Company, Campbell Sales Company, and Trinity
`Manufacturing, L.L.C. (collectively, “Petitioner”) filed a Petition to institute
`an inter partes review of the claim for a “Gravity Feed Dispenser Display”
`in U.S. Patent No. D621,645 S (“the ’645 patent”). Paper 2 (“Pet.”).
`Gamon Plus, Inc. (“Gamon” or “Patent Owner”) filed a Preliminary
`Response to the Petition. Paper 9. Applying the standard set forth in
`35 U.S.C. § 314(a), we instituted an inter partes review of the challenged
`claim. Paper 12 (“Dec.”).
`During the trial, Patent Owner filed a Patent Owner Response
`(Paper 14, “PO Resp.”), and Petitioner filed a Reply (Paper 33, “Pet. Reply”)
`to the Patent Owner Response. We authorized Patent Owner to file a paper
`that identifies allegedly improper new argument and citations in Petitioner’s
`Reply (“Paper 40”), to which Petitioner filed a response (Paper 48). We also
`authorized Patent Owner to file a sur-reply addressing evidence that
`Petitioner produced late in the proceeding. Paper 68 (“PO Sur-reply”).
`Petitioner’s fully briefed Motion to Exclude Evidence is pending.
`Paper 49 (“Pet. Mot.”); Paper 59 (“PO Opp.”); Paper 66 (“Pet. Reply to
`Opp.”). Patent Owner’s fully briefed Motion to Exclude also is pending.
`Paper 51 (“PO Mot.”); Paper 58 (“Pet. Opp.”); Paper 67 (“PO Reply to
`Opp.”). We have also considered Patent Owner’s Motion for Observations
`on Cross-Examination of James M. Gandy (Paper 50) and Petitioner’s
`Opposition to the Motion for Observations (Paper 57).
`An oral hearing was held on January 23, 2018, and a copy of the
`transcript is part of the record. Paper 80 (“Tr.”).
`
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`We have jurisdiction under 35 U.S.C. § 6(b). This Decision is a Final
`Written Decision under 35 U.S.C. § 318(a) as to the patentability of the
`claim on which we instituted trial. Based on the record before us, we
`determine that Petitioner has not shown, by a preponderance of the evidence,
`that the claim of the ’645 patent is unpatentable under 35 U.S.C. § 103(a).
`Related Proceedings
`A.
`The parties state that the ’645 patent is at issue in Gamon Plus, Inc., et
`al. v. Campbell Soup Co., et al., Case No. 15-cv-8940 (N.D. Ill.). Pet. 3–4;
`Paper 6, 1–2. Petitioner also has filed petitions challenging the patentability
`of related design patents, IPR2017-00094 (U.S. Patent No. D612,646),
`IPR2017-00095 (U.S. Patent No. D621,644), and IPR2017-00096 (U.S.
`Patent No. D595,074).
`The ’645 Patent and Claim
`B.
`The ’645 patent (Ex. 1001) issued August 17, 2010, and is assigned to
`Gamon. Id. at [45], [73]. The ’645 patent claims “[t]he ornamental design
`for a gravity feed dispenser display, as shown and described.” Id. at [57].
`The claim for the ornamental design for a gravity feed dispenser display is
`depicted below:
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`The Figure of the ’645 patent is this perspective view of a gravity feed
`dispenser display. Id. As depicted, certain elements in the front area of the
`design are drawn in solid lines, but much of the rearward structure is
`illustrated by broken lines. The Description of the invention explains:
`The broken line showing is for the purpose of illustrating
`portions of the gravity feed dispenser display and forms no part
`of the claimed design.
`Id. at Description. See 37 C.F.R. § 1.152; see also MPEP § 1503.02,
`Subsection III (“Unclaimed subject matter may be shown in broken lines for
`the purpose of illustrating the environment in which the article embodying
`the design is used. Unclaimed subject matter must be described as forming
`no part of the claimed design or of a specified embodiment thereof.”).
`In an inter partes review, “[a] claim in an unexpired patent that will
`not expire before a final written decision is issued shall be given its broadest
`reasonable construction in light of the specification of the patent in which it
`appears.” 37 C.F.R. § 42.100(b). With respect to design patents, it is well-
`settled that a design is represented better by an illustration than a description.
`Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 679 (Fed. Cir. 2008)
`(en banc) (citing Dobson v. Dornan, 118 U.S. 10, 14 (1886)). Although
`preferably a design patent claim is not construed by providing a detailed
`verbal description, it may be “helpful to point out . . . various features of the
`claimed design as they relate to the . . . prior art.” Egyptian Goddess, 543
`F.3d at 679–80; cf. High Point Design LLC v. Buyers Direct, Inc., 730 F.3d
`1301, 1314–15 (Fed. Cir. 2013) (remanding to district court, in part, for a
`“verbal description of the claimed design to evoke a visual image consonant
`with that design”).
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`Petitioner contends the claim of the ’645 patent “covers the curved
`access door / label area, [and] the visible portion of the cylindrical can” as
`depicted below:
`
`
`Petitioner’s annotated Figure of the ’645 patent purportedly represents the
`entirety of the claim. Pet. 8; see Ex. 1002 ¶ 15.
`Gamon contends that certain aspects of the design claim are important
`esthetically. PO Resp. 4. Gamon points to “the relative position,
`dimensions and height of the label area with respect to the cylindrical can,
`which is a significant esthetic aspect of the design.” Id. “Specifically, the
`horizontal cylindrical article is positioned partially forward of the label area,
`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. (citing Ex. 2001 ¶ 5).
`Gamon also contends that
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`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.
`Id. at 6.
` Based on the positions of the parties, and considering the relationship
`of the prior art to the claimed design, we find it helpful to describe verbally
`certain features of the claim for purposes of this Final Decision. See
`Egyptian Goddess, 543 F.3d at 680. As shown in the Figure, above, the
`single embodiment of the patent design illustrates and claims certain front
`portions of a gravity feed dispenser display. From top to bottom, a generally
`rectangular surface area, identified by the parties as an access door or label
`area, is curved convexly forward. Pet. 8. For ease of reference, we refer to
`this portion as “the label area.” The label area is taller vertically than it is
`wide horizontally, however, the boundary edges of the label area are not
`claimed. Below the label area there is a gap between the label area and the
`top of a cylindrical object lying on its side – the gap being approximately the
`same height as the label area. See Ex. 2001 ¶¶ 5, 28; PO Resp. 5 (annotated
`Figure). The width of the label area is generally about the same as the
`height of the cylindrical object lying on its side. The height of the
`cylindrical object (lying on its side) is longer than its diameter. The
`cylindrical article is positioned partially forward of the label area. Ex. 2001
`¶¶ 5, 28.
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`Instituted Grounds
`C.
`We instituted trial based on the following grounds (Dec. 32):
`
`Basis
`Reference(s)
`§ 103(a)
`Linz2 and Samways3
`§ 103(a)
`Samways
`Samways and Linz
`§ 103(a)
`Petitioner supports its challenge with two declarations by Mr. James Gandy,
`one in support of the Petition (Ex. 1002 (“the Gandy Decl.”)), the other in
`support of Petitioner’s Reply (Ex. 1018 (“the Gandy Suppl. Decl.”)).
`Petitioner also relies on the declaration of Mr. Steven Visser. Ex. 1020 (“the
`Visser Decl.”). Gamon relies on two declarations by Mr. Terry Johnson, one
`in support of Patent Owner’s Response to the Petition (Ex. 2001 (“the
`Johnson Decl.”)), and a Supplemental Declaration in support of Patent
`Owner’s Opposition to Petitioner’s Motion to Exclude (Paper 604 (“the
`Johnson Suppl. Decl.”)). The parties rely on other evidence and exhibits as
`discussed below.
`
`Background
`D.
`Terry Johnson came up with the initial design idea underlying the
`patent after visiting a store and having a difficult time finding the home-style
`chicken noodle soup. Ex. 1021, 27:13–28:24. Unable to find the type of
`soup he was looking for, he ended up buying a plain noodle soup that did not
`
`
`2 U.S. Patent No. D405,622, Arthur W. Linz, issued Feb. 16, 1999 (“Linz,”
`Ex. 1008).
`3 G.B. Patent Application No. 2,303,624, published Feb. 26, 1997
`(“Samways,” Ex. 1009).
`4 Paper 60 is Bates stamped as Exhibit 2014 in the bottom, right-hand
`corner of each page. Exhibit 2014, however, was expunged.
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`go over well at home. Id. Terry Johnson recognized that if he was having a
`problem finding a particular type of soup, others were likely having the same
`problem, and Terry Johnson “came up with something that was pretty
`simple” – a display that would visually help purchasers of canned soup. Id.
`at 28:10–16; see also Pet. Reply 13 (citing Ex. 1021, 29[28]:15–16). A
`Campbell’s marketing manager noted that “shoppers would get so frustrated
`at not finding the flavor they wanted that they would walk away without it.”
`Ex. 2007, 1 (2004 interview with Jacques Finnel, Campbell’s marketing
`manager for retail development).
`After coming up with an initial concept, Terry Johnson, on behalf of
`Gamon,5 reached out to Campbell Soup Company’s CEO, David Johnson
`(no relation to Terry), to pitch the idea of putting Campbell’s soup cans on
`their side and then having them roll down an inclined plane, and also having
`“a big convex sign on the front of it to talk to the consumer.” Ex. 1021,
`27:13–16, 29:11–30:10. Terry Johnson testified that David Johnson quickly
`hung up because “[n]o one wanted me to turn the can on its side” at that
`time. Id.
`In later discussions with Campbell around 2002, Terry Johnson
`presented his concept to an executive board at Campbell, including Carl
`Johnson (no relation to Terry). Id. at 30:11–32:18. During these
`discussions, Campbell sponsored a project by a research company called
`
`5 Terry Johnson is the “CEO of Patent Owner Gamon Plus, Inc.” and also a
`named inventor on the challenged patent. Ex. 2001 ¶¶ 1, 2. Terry Johnson
`states that Gamon International is a corporate affiliate of Patent Owner
`Gamon Plus, Inc., and Gamon International is the entity responsible for
`delivering display racks to Campbell Soup. Id. ¶ 38; see also Ex. 2032, 12.
`With this distinction in mind, we refer to the Gamon entities collectively as
`“Gamon” unless otherwise noted.
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`Cannondale. See, e.g., Ex. 2032. According to statements attributed to
`Campbell’s Mr. Finnel, the consumer research indicated that the soup
`category was one of the most difficult to shop in supermarkets. Ex. 2007, 1.
`The initial Cannondale survey, as conveyed to Terry Johnson, suggested that
`sales may be lost if Campbell put its soup cans on their sides at the point of
`sale. Ex. 1021, 32:19–33:10. Campbell agreed, however, to run a test of
`Gamon’s proposed display rack in a small number of stores. Id. at 32:3–
`33:20; see also Ex. 2031, 5, 6, 10–12, 14–17, 26–29 (Cannodale report in
`2002
`
` noting that the Gamon display shelving would be tested).
`Soon after, Campbell allowed Gamon’s gravity feed display rack to be tested
`in 25 stores selling Campbell’s condensed soup. Id. at 32:3–33:20. The
`tested embodiment of the gravity feed display rack was the same design as
`embodied in Gamon’s ’645 and D612,646 design patents.6 Id. at 33:17–24;
`Ex. 2032, 4–10 (displaying Gamon’s gravity feed display rack at various test
`stores); Ex. 2001 ¶ 38 (citing Exs. 2005, 2006).
`Gamon’s commercial embodiment of the patented design was tested
`in a select number of stores and referred to as the IQ Maximizer. Ex. 1021,
`32:3–33:20, 35:13–15; Tr. 42:22–24; Ex. 2007, 1. Considering the outcome
`of the test market using the Gamon gravity feed display rack to sell
`
`6 The ’645 and ’646 design patents both claim priority to Gamon’s U.S.
`Patent No. 6,991,116 filed on June 20, 2003 (claiming priority to U.S.
`Provisional Application No. 60/404,648, filed on Aug. 20, 2002), listing the
`same three inventors. See, e.g., Ex. 1001, [60].
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`Campbell soup products, Campbell concluded that the display rack7
`increased its soup sales volume by 5.5–13.6% depending on the type of soup
`and brand. Ex. 2032, 4.8 Terry Johnson similarly testified based on his
`involvement in the project that Campbell’s “market study showed that
`Campbell could secure a 5% increase in sales using the Gamon display
`racks,” and “use of the Gamon display rack produced increased soup sales
`by 9 to 14% according to [a] market study conducted by Cannondale
`Consulting Inc.” Paper 60 ¶¶ 16, 18; Ex. 1021, 35:1–12. Campbell’s
`internal presentation discussing the results of this study was titled: “IQ
`SHELF MAXIMIZER The Power to Transform the Soup Section.”
`Ex. 2032, 1. The Gamon gravity feed display rack was described as
`“Breakthrough Gravity Feed Shelving,” that “Encourages purchase of
`additional varieties,” and resulted in positive consumer responses in every
`test market. Id. at 4–10.
`From 2002 until 2009, Campbell purchased approximately
`$31 million of Gamon’s gravity feed display racks9 and installed them in
`over 17,000 stores. Ex. 2001 ¶ 45; Tr. 50:1–5, 40:4–41:3; Ex. 2017, 14
`
`7 As suggested in the Cannondale report (Ex. 2031) other variables were
`controlled so that a determination could be made on the impact of Gamon’s
`IQ Maximizer – single variable testing. Ex. 2031, 26–27.
`8 Exhibits 2031 and 2032 are each considered by Campbell to be “internal
`Campbell presentations.” Paper 72, 1. Campbell describes these documents
`as representing “a broad range of consumer research that Campbell had
`undertaken to better understand consumer shopping experiences in the soup
`aisle and develop strategies to improve that experience.” Id. at 1. These
`documents were produced based on our Order (Paper 41) directing Campbell
`to produce the 2002 study referenced by Terry Johnson.
`9 Petitioner has not contested that the Campbell entities purchased
`$31 million in display racks from Gamon. See Tr. 50:1–5.
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`(Campbell’s 2007 Annual Report states that “[n]early 17,400 stores in the
`U.S. feature our gravity-feed shelving system. It is a powerful tool for
`merchandising Campbell’s condensed soups.”). The display racks
`purchased fall within the scope of the ’645 patent when a Campbell soup can
`is added to the display – the claim of the ’645 patent requires a cylindrical
`object as part of the claim. See Ex. 1001; Ex. 2032, 4–10; PO Sur-reply 4–5;
`Ex. 2001 ¶¶ 38–45; Tr. 40:4–41:3. The only purpose of the Gamon display
`racks tested and purchased by Campbell was the display of Campbell’s
`cylindrical soup cans as arranged in the patented design. Ex. 2001 ¶ 38
`(“These display racks displayed the condensed Campbell Soup cans in the
`exact configuration of the design of the ’645 patent.”); Tr. 43:24–45:24.
`In February 2004, after placing the display racks in 2800 stores,
`Campbell’s Mr. Finnel noted in a news publication that a “key benefit” of
`the IQ Maximizer was that the program enhances the shopping experience
`for the consumer and also “makes it easier for consumers to find desired
`products while giving visibility to others.” Ex. 2007, 1. Referring to the
`front portion of the gravity feed displays, Mr. Finnel states that “[t]he
`facings are better defined and easier for customers to shop, so fewer are
`needed.” Id.
`In 2005, Campbell issued its Annual Report to investors stating that
`the Gamon IQ Maximizer was available in 14,000 stores. Ex. 2015, 10.
`Campbell described the impact of the Gamon IQ Maximizer, noting “[t]he
`strong performance of Campbell’s condensed soup business demonstrates
`the value of the iQ Maximizer, an innovative gravity-feed shelf system for
`merchandising soup.” Id. The 2005 Annual Report described the IQ
`Maximizer as “making the soup aisle dramatically easier for consumers to
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`shop.” Id. The 2005 Annual Report also shows a graphic example of the
`use of the IQ Maximizer gravity feed shelf and on the same page states
`“[o]ur breakthroughs in soup merchandising continue to make it simpler for
`retailers to stock and maintain their soup shelves and easier and faster for
`consumers to shop.” Id. at 17. Campbell’s 2006 Annual Report (Ex. 2016)
`describes Gamon’s IQ Maximizer as now “available in 16,000 stores,” and
`similarly states that it “continues to be a powerful tool to merchandise
`Campbell’s condensed soups.” Ex. 2016, 8. Campbell described the IQ
`Maximizer as a “tool to deliver impactful consumer messages at the point of
`purchase” (id.), and as “Making Shopping Even Simpler” (id. at 22).
`Campbell again stated that the IQ Maximizer was a “breakthrough in soup
`merchandising.” Id. Campbell noted that its condensed soup sales increased
`by 5% in 2006, which Campbell attributed to “higher prices across the
`portfolio,” and “the additional installation of gravity-feed shelving systems
`and increased advertising.” Ex. 2017, 36; see also Ex. 2009, 2; Ex. 2010, 4.
`Campbell’s 2007 Annual Report similarly describes Gamon’s IQ Maximizer
`as “a powerful tool for merchandising Campbell’s condensed soups.”
`Ex. 2017, 14.
`In late 2008, Campbell began purchasing gravity feed display racks
`from Petitioner Trinity. PO Resp. 39, 43–44. Trinity’s display racks
`maintained the same basic design features as the Gamon racks. Id.;
`Ex. 2001 ¶¶ 48–51; Ex. 2012 (image of Trinity’s display rack for
`Campbell’s condensed soup cans); Ex. 2013 (image of Trinity’s display rack
`for Campbell’s Ready-To-Serve soup cans).
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`II. ANALYSIS
`Petitioner bears the burden of proving unpatentability of the
`challenged claims, and the burden of persuasion never shifts to Patent
`Owner. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375,
`1378 (Fed. Cir. 2015). To prevail, Petitioner must establish the facts
`supporting its challenge by a preponderance of the evidence. 35 U.S.C.
`§ 316(e); 37 C.F.R. § 42.1(d).
`A. Obviousness
`In a challenge to a design patent based on obviousness under
`35 U.S.C. § 103, the ultimate inquiry is “whether the claimed design would
`have been obvious to a designer of ordinary skill who designs articles of the
`type involved.” Apple, Inc. v. Samsung Elecs. Co., 678 F.3d 1314, 1329
`(Fed. Cir. 2012) (quoting Durling v. Spectrum Furniture Co., 101 F.3d 100,
`103 (Fed. Cir. 1996)). This obviousness inquiry consists of two steps.
`Apple, 678 F.3d at 1329. In the first step, a primary reference (sometimes
`referred to as a “Rosen reference”) must be found, “the design characteristics
`of which are basically the same as the claimed design.” Id. (quoting In re
`Rosen, 673 F.2d 388, 391 (CCPA 1982)). This first step is itself a two-part
`inquiry under which “a court must both ‘(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, 730 F.3d 1301, 1311–12 (Fed. Cir. 2013)
`(quoting Durling, 101 F.3d at 103).
`
`In the second step, the primary reference may be modified by
`secondary references “to create a design that has the same overall visual
`appearance as the claimed design.” Id. at 1311. However, the “secondary
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`references may only be used to modify the primary reference if they are ‘so
`related [to the primary reference] that the appearance of certain ornamental
`features in one would suggest the application of those features to the other.’”
`Durling, 101 F.3d at 103 (quoting In re Borden, 90 F.3d 1570, 1575 (Fed.
`Cir. 1996)).
`
`The Designer of Ordinary Skill
`B.
`Petitioner, relying on the testimony of Mr. Gandy, opines that:
`The designer of ordinary skill would be someone with a
`background or familiarity with commercial dispensers, and
`particularly dispensers for consumer commodities such as cans,
`bottles, or small packaged items. The designer of ordinary skill
`would have a basic understanding of physics and or mechanics,
`which may include practical experience in the field of studying
`or designing consumer commodity dispensers, or may include
`high school or introductory college level physics coursework.
`The designer of ordinary skill in the art would also have a basic
`understanding of the dimensions and functions afforded to cans
`and bottles in the context of packaging. The designer of ordinary
`skill would not necessarily need to be familiar with electrical or
`advanced mechanical concepts, as the relevant field of prior art
`is limited to relatively simple consumer commodity dispensers
`and displays.
`Pet. 24–25 (internal citations omitted) (citing Ex. 1002 ¶¶ 23–25). Gamon
`does not object to this description of the designer of ordinary skill in the art.
`Based on the final trial record, we agree that the designer of ordinary skill is
`as Petitioner asserts, except that we disagree that a designer of ordinary skill
`would need to have a basic understanding of the dimensions and functions
`afforded to cans and bottles in the context of packaging. This concept
`(dimensions and functions) is vague and the patented invention relates to a
`dispensing display, not packaging. See Ex. 1001, [54], [57] (The claim
`recites “[t]he ornamental design for a gravity feed dispenser display.”).
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`C. Obviousness Based on Linz and Samways
`We instituted review on the basis that the claimed design for the
`’645 patent would have been obvious to a designer of ordinary skill based on
`Linz and Samways. Dec. 32. Based on the final trial record before us, we
`are not persuaded that Petitioner has established by a preponderance of the
`evidence that the claim is unpatentable over Linz and Samways for the
`reasons explained below.
`1. Linz (Ex. 1008)
`Linz is titled “Display Rack” (Ex. 1008, [54]) and claims an
`“ornamental design for a display rack” (id. at [57]). Linz issued on
`February 16, 1999, making it prior art to the ’645 patent under pre-AIA 35
`U.S.C. § 102(b). Linz is cited on the face of the ’645 patent. Ex. 1001, [56].
`Linz discloses an ornamental design for a display rack having an
`access door / label area with a symmetric, convex arcuate shape, with a
`central apex that extends forward. Ex. 1008, Fig. 1. Figure 1 of Linz is
`reproduced below.
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`Figure 1 of Linz shows the claimed ornamental design for a display rack.
`Ex. 1008, Fig. 1. Although Linz has an area for receiving some type of
`object, Linz does not disclose the specific placement of any object in the
`display rack, including the size, shape, or orientation of any particular
`object.
`
`Samways (Ex. 1009)
`2.
`Samways is titled “Serpentine Dispenser.” Ex. 1009, [54]. Samways
`published on February 26, 1997, making it prior art to the ’645 patent under
`pre-AIA 35 U.S.C. § 102(b). Samways describes a dispenser with a
`serpentine delivery path along which cylindrical objects can move by gravity
`to an outlet or dispensing area. Id. at [57], 1:7–8 (“relates to dispensers for
`all cylindrical objects”), 17:32–33 (claiming a dispenser “adapted to
`dispense cylindrical objects”).
`As depicted in the embodiment of Figure 3 below, Samways’ design
`for a serpentine dispenser incorporates a large label area, front fascia 17,
`with a symmetric, convex arcuate shape, with a central apex that extends
`forward. Samways describes one embodiment as “preferably shaped to
`resemble a coffee jar, so as to be striking to the eye of the customer.” Id. at
`13:5–7, Fig. 3.
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`Figure 3 of Samways shown above is a perspective view of a gravity feed
`dispenser display. Id. at 3:11–13. As depicted above, Samways discloses
`outlet areas, or storage locations 20, 21, with U-shaped barriers 22, 24 on the
`sides, and I-shaped barrier 23 in between storage areas 20, 21. Id. at 11:6–
`30, Fig. 3. Barriers 22, 23, 24 include stops, or arms, located below the label
`area. There are three forward stops 22b, 23b, 24b and three rearward
`stops 22a, 23a, 24a, that help define storage areas 20 and 21 for receiving
`cylindrical objects on the downward incline of outlet 18 along ramp 16. Id.
`at 11:1–5. The forward stops 22b, 23b, 24b are positioned forward of the
`label area. As depicted, the forward stops are located to each side and in the
`center, with a gap between the stops. Left and right forward stops 22b, 24b
`are shaped like rectangles, center stop 23b is square shaped, and each stop
`stands perpendicular to the inclined portion of ramp 16, but not perfectly
`vertical.
`Storage locations 20, 21 are designed such that a cylindrical object
`loaded therein would be visible above forward stops 22b, 23b, 24b, as well
`
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`IPR2017-00091
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`as through the two gaps between the stops. Placement of a cylindrical object
`in the storage area behind the forward stops is depicted in Figure 4 of
`Samways.
`
`
`Figure 4 of Samways shown above depicts a side cross-section view of the
`gravity feed dispenser shown in Figure 3. Id. at 3:14–15. As depicted in
`Figure 4, there is a small gap between the bottom of label area 17 and the top
`of a forward cylindrical object allowing for visual display of the cylindrical
`object. As also visible in Figure 4, the label area extends far above the top
`of the rack and down to just above the top of a second cylindrical object –
`leaving less than one diameter of space between the cylinder and the bottom
`of the label area.
`3. Analysis of Obviousness Based on Linz and Samways
`a. Petitioner’s Contentions
`Petitioner contends the ornamental design of the ’645 patent would
`have been obvious to a designer of ordinary skill based on Linz in view of
`Samways. Pet. 29–34. Petitioner relies on a comparison of the combined
`ornamental features of Linz and Samways with the design of the ’645 patent,
`as well as the Gandy Declaration to support this analysis. Id. (citing
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`Ex. 1002 ¶¶ 48–57). Petitioner contends that Linz is the same basic claimed
`design, “and is therefore a suitable primary reference.” Id. at 30. Petitioner
`relies on Samways as the secondary reference. Id. at 31. According to
`Petitioner, Samways provides support for the placement and shape of a
`cylindrical object. Id. at 32–33.
`Petitioner contends that “to the extent that it can be argued that Linz
`does not inherently disclose a cylindrical can, it would be obvious to a
`designer of ordinary skill in the art to use the display rack of Linz to
`dispense cylindrical cans.” Id. at 30 (citing Ex. 1002 ¶ 50). According to
`Petitioner, the curvature of the bottom rails, and the loading area would
`indicate to a designer of ordinary skill in the art that the Linz display rack is
`intended for use with cylindrical cans. Id. Petitioner also argues that “[t]he
`use of a cylindrical can with Linz would yield predictable results – the can
`would roll from the loading area down to the stops of the display shelf, such
`that the can would be visible.” Id.; Ex. 1018 ¶ 33; Ex. 1020 ¶ 32 (“it would
`be obvious to such a designer to place a cylindrical object in the area of Linz
`designed to hold such an object”).
`Petitioner also argues that a design incorporating a cylindrical can is
`disclosed by Linz in view of Samways because Samways discloses
`cylindrical cans dispensed from a display shelf. Pet. 32. According to
`Petitioner, “combining the cans disclosed by Samways . . . with the design of
`Linz merely adds a can to the display shelf present in Linz.” Id. at 33.
`Petitioner contends that the relative positioning, dimensions, and
`scaling of the can and label area are not claimed. Pet. Reply 10, 13.
`Petitioner also alleges that the patent claim “disclaims any boundaries on the
`label area’s height and width.” Id. at 10; Ex. 1020 ¶ 28. Further, Petitioner
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`IPR2017-00091
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`contends that even if these features were claimed, the design of Linz is
`basically the same. Pet. Reply 10–11. Petitioner also contends that because
`Gamon’s expert, and inventor, characterizes the design as “simple,” it must
`therefore be obvious. Id. at 13 (quoting Ex. 1021, 29:15–16 [sic, 28:15–16],
`45:16–17).
`
`b. Patent Owner’s Contentions
`Gamon contends that Linz is not a proper Rosen reference because it
`is not “substantially similar” to the patented design. PO Resp. 2. Gamon
`contends that Linz cannot be a Rosen reference because it does not “show[]
`something in existence that, without substantial modification, creates
`basically the same visual impression as the design of the ‘645 patent.” Id. at
`7. Gamon reasons that it is improper to first modify a Rosen reference, and
`Petitioner “posit[s] substantial modifications of the appearance of the
`disclosed embodiments of the references to try to make them resemble the
`claimed design before they were employed as primary references.” Id.
`Specifically, Gamon argues that Petitioner would first have to modify Linz
`to contain a cylindrical article before it could be considered a Rosen
`reference. Id. at 7–8. Without those modifications, Linz is strikingly
`different from the design of the ’645 patent.
`Gamon argues that “[n]owhere in Linz does the reference describe,
`show or suggest the types of articles that might be displayed in this rack.”
`Id. at 22; Ex. 2001 ¶ 16. Gamon relies on the following graphical display
`comparing Linz with the Figure of the ’645 patent.
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`Figure 1 of Linz (left) and the ’645 patent Figure (right) each depict
`highlighted design features. According to Gamon, the highlights “show[] a
`distinct difference of the appearance of Linz relative to the ‘645 patent for a
`number of reasons,” including Linz’s failure to have “a cylindrical object, or
`any object, on display.” PO Resp. 23. Gamon points out that Linz fails to
`disclose “a curved label area that extends essentially to the sides of the
`rack,” because Linz has “flat strips extending laterally inward from the
`sides.” Id. (citing Ex. 2001 ¶ 16). Gamon’s primary argument is that
`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 as primary reference against the ‘645 patent.
`Id. at 24.
`Gamon contends that a designer of ordinary skill must first consider
`Linz without modification, and “Petitioners have improperly created and
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`added a cylindrical article of arbitrary appearance to Linz to try to make it a
`primary reference.” Id. Gamon contends Mr. Gandy’s analysis is improper
`because it presumes that a cylindrical can could be displayed and then goes
`on to create a can in the d
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