Trials@uspto.gov
`571-272-7822
`
`
`
` Paper 13
` Entered: March 30, 2017
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`
`
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`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CAMPBELL SOUP COMPANY,
`CAMPBELL SALES COMPANY, and
`TRINITY MANUFACTURING, LLC,
`Petitioner,
`
`v.
`
`GAMON PLUS, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-00094
`Patent D612,646 S
`____________
`
`
`Before TRENTON A. WARD, BART A. GERSTENBLITH, and
`ROBERT L. KINDER, Administrative Patent Judges.
`
`KINDER, Administrative Patent Judge.
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`571-272-7822
`
`
`
` Paper 13
` Entered: March 30, 2017
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CAMPBELL SOUP COMPANY,
`CAMPBELL SALES COMPANY, and
`TRINITY MANUFACTURING, LLC,
`Petitioner,
`
`v.
`
`GAMON PLUS, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-00094
`Patent D612,646 S
`____________
`
`
`Before TRENTON A. WARD, BART A. GERSTENBLITH, and
`ROBERT L. KINDER, Administrative Patent Judges.
`
`KINDER, Administrative Patent Judge.
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`IPR2017-00094
`Patent D612,646 S
`
`
`I.
`
`INTRODUCTION
`
`Campbell Soup Company, Campbell Sales Company, and Trinity
`
`Manufacturing, L.L.C. (collectively, “Petitioner”) filed a Petition to institute
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`an inter partes review of the claim for a gravity feed dispenser display in
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`U.S. Patent No. D612,646 S (“the ’646 patent”). Paper 2 (“Pet.”). Gamon
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`Plus, Inc. (“Gamon” or “Patent Owner”) filed a Preliminary Response to the
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`Petition. Paper 10 (“Prelim. Resp.”).
`
`Our factual findings and conclusions at this stage of the proceeding
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`are based on the evidentiary record developed thus far. This is not a final
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`decision as to patentability of the claim for which inter partes review is
`
`instituted. Any final decision would be based on the record as fully
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`developed during trial.
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`We have authority to determine whether to institute an inter partes
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`review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). Applying the
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`standard set forth in 35 U.S.C. § 314(a), which requires demonstration of a
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`reasonable likelihood that Petitioner would prevail with respect to the
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`challenged claim, we institute an inter partes review of the challenged claim
`
`based on the grounds identified in the Order section of this Decision.
`
`A. Related Proceedings
`
`The parties identify that the ’646 patent is at issue in Gamon Plus,
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`Inc., et al. v. Campbell Soup Co., et al., Case No. 15-cv-8940 (N.D. Ill.).
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`Pet. 4; Paper 6, 1–2. Petitioner also filed petitions challenging the
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`patentability of related design patents, IPR2017-00091 (U.S. Patent
`
`No. D621,645), IPR2017-00095 (U.S. Patent No. D621,644), and
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`IPR2017-00096 (U.S. Patent No. D595,074).
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`
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`2
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`IPR2017-00094
`Patent D612,646 S
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`B. The ’646 Patent and Claim
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`The ’646 patent (Ex. 1001) issued March 30, 2010, and is assigned to
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`Gamon. Id. at [10], [45], [73]. The ’646 patent is titled “Gravity Feed
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`Dispenser Display,” and the claim recites “[t]he ornamental design for a
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`gravity feed dispenser display, as shown and described.” Id. at [54], [57].
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`The claim for the ornamental design for a gravity feed dispenser display is
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`depicted below:
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`
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`The sole figure of the ’646 patent is this perspective view of a gravity feed
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`dispenser display. Id. As depicted, certain elements in the front area of the
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`design are drawn in solid lines, but the much of the rearward structure is
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`illustrated by broken lines. The Description of the invention explains:
`
`The broken line disclosure in the views is understood to represent
`the article in which the claimed design is embodied, but which
`forms no part of the claimed design, and where a broken line
`abuts a claimed surface it is understood to form an unclaimed
`boundary between claimed and unclaimed surfaces.
`
`3
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`IPR2017-00094
`Patent D612,646 S
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`Id. at Description. See 37 C.F.R. § 1.152; see also MPEP § 1503.02,
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`Subsection III (“Unclaimed subject matter may be shown in broken lines for
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`the purpose of illustrating the environment in which the article embodying
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`the design is used. Unclaimed subject matter must be described as forming
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`no part of the claimed design or of a specified embodiment thereof.”).
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`In an inter partes review, “[a] claim in an unexpired patent that will
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`not expire before a final written decision is issued shall be given its broadest
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`reasonable construction in light of the specification of the patent in which it
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`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)
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`(en banc) (citing Dobson v. Dornan, 118 U.S. 10, 14 (1886)). Although
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`preferably a design patent claim is not construed by providing a detailed
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`verbal description, it may be “helpful to point out . . . various features of the
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`claimed design as they relate to the . . . prior art.” Egyptian Goddess, 543
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`F.3d at 679–80; cf. High Point Design LLC v. Buyers Direct, Inc., 730 F.3d
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`1301, 1314–15 (Fed. Cir. 2013) (remanding to district court, in part, for a
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`“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 ’646 patent “covers the curved
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`access door / label area, the visible portion of the cylindrical can and the
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`stops in front of the can” as depicted below:
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`4
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`IPR2017-00094
`Patent D612,646 S
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`
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`Pet. 8–9. Petitioner’s annotated Figure of the ’646 patent purportedly
`
`represents the entirety of the claim. See Ex. 1002 ¶ 15. We have considered
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`Petitioner’s proposed claim construction (Pet. 21) as well as Patent Owner’s
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`proposal (Prelim. Resp. 4–5).
`
`Based on the positions of the parties, and considering the relationship
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`of the prior art to the claimed design, we find it helpful to describe verbally
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`certain features of the claim for purposes of this Decision. See Egyptian
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`Goddess, 543 F.3d at 680.
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`As shown in the figure, above, the single embodiment of the patent
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`design illustrates and claims certain front portions of a gravity feed dispenser
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`display. From top to bottom, a rectangular surface area, identified by the
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`parties as an access door or label area, is curved convexly forward. Pet. 8;
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`Prelim. Resp. 3. For ease of reference, we refer to this portion as “the label
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`area.” The label area is taller vertically than it is wide horizontally. Below
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`the label area there is a gap between the label area and the top of a
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`cylindrical object lying on its side. The width of the label area is generally
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`about the same as the height of the cylindrical object lying on its side. The
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`5
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`IPR2017-00094
`Patent D612,646 S
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`height of the cylindrical object (lying on its side) is longer than its diameter.
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`Two rectangular lugs, or stops, are positioned in front of the cylindrical
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`object on each side. The rectangular lugs are taller vertically than they are
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`wide horizontally and they stand vertically.
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`C. The Alleged Grounds of Unpatentability
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`Petitioner contends that the challenged claim is unpatentable on the
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`following grounds (Pet. 6).
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`Reference(s)
`
`Linz1
`
`Linz alone or in view of Samways2 or Knott3
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`Samways
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`Samways alone or in view of Linz
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`Abbate4 in view of Samways and/or Linz
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`Primiano5 in view of Samways or Knott6
`
`Basis
`
`§ 102
`
`§ 103(a)
`
`§ 102
`
`§ 103(a)
`
`§ 103(a)
`
`§ 103(a)
`
`
`Petitioner supports its challenge with a declaration by James Gandy.
`
`Ex. 1002 (“the Gandy Declaration”).7
`
`
`1 Ex. 1008, U.S. Patent No. D405,622, issued Feb. 16, 1999 (“Linz”).
`2 Ex. 1009, G.B. Patent Application No. 2,303,624, published Feb. 26, 1997
`(“Samways”).
`3 Ex. 1010, U.S. Patent No. D178,248, issued July 10, 1956 (“Knott”).
`4 Ex. 1011, U.S. Patent No. 4,909,578, issued Mar. 20, 1990 (“Abbate”).
`5 Ex. 1012, U.S. Patent No. 6,068,142, issued May 30, 2000 (“Primiano”).
`6 Petitioner’s chart on page 6 of the Petition includes a seventh ground
`identified as “Obvious under 35 U.S.C. § 103(a) over Knott in view of Linz,
`Samways or Primiano.” Pet. 6. The Petition, however, does not include
`substantive discussion of this ground and it appears inclusion of this ground
`in the chart was in error.
`7 Patent Owner objects to paragraphs 32 to 34 of the Gandy Declaration as
`“clearly inadmissible under 37 CFR sec. 42.65(a)” because these paragraphs
`
`6
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`IPR2017-00094
`Patent D612,646 S
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`
`II. ANALYSIS
`
`A.
`
`Principles of Law
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`1. Anticipation
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`The “ordinary observer” test for anticipation of a design patent is the
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`same as that used for infringement, except that for anticipation, the patented
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`design is compared with the alleged anticipatory reference rather than an
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`accused design. Int’l Seaway Trading Corp. v. Walgreens Corp., 589 F.3d
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`1233, 1238, 1240 (Fed. Cir. 2009). The ordinary observer test for design
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`patent infringement was first enunciated by the Supreme Court in Gorham
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`Co. v. White, 81 U.S. 511 (1871), as follows:
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`[I]f, in the eye of an ordinary observer, giving such attention as
`a purchaser usually gives, two designs are substantially the same,
`if the resemblance is such as to deceive such an observer,
`inducing him to purchase one supposing it to be the other, the
`first one patented is infringed by the other.
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`Id. at 528. The ordinary observer test requires the fact finder to consider all
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`of the ornamental features illustrated in the figures that are visible at any
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`time in the “normal use” lifetime of the accused product, i.e., “from the
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`completion of manufacture or assembly until the ultimate destruction, loss,
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`or disappearance of the article.” Int’l Seaway, 589 F.3d at 1241. Further,
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`while the ordinary observer test requires consideration of the overall prior art
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`and claimed designs,
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`[t]he mandated overall comparison is a comparison taking into
`account significant differences between the two designs, not
`minor or trivial differences that necessarily exist between any
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`present testimony related to patent law. Prelim. Resp. 5–6. Because we do
`not rely on these portions of the Gandy Declaration in reaching our
`Decision, we need not address these objections for purposes of this Decision.
`
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`7
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`two designs that are not exact copies of one another. Just as
`“minor differences between a patented design and an accused
`article’s design cannot, and shall not, prevent a finding of
`infringement” . . . so too minor differences cannot prevent a
`finding of anticipation.
`
`Id. at 1243 (citation omitted) (quoting Litton Sys., Inc. v. Whirlpool Corp.,
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`728 F.2d 1423, 1444 (1984)).
`
`2. 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
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`type involved.” Apple, Inc. v. Samsung Elecs. Co., 678 F.3d 1314, 1329
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`(Fed. Cir. 2012) (quoting Durling v. Spectrum Furniture Co., 101 F.3d 100,
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`103 (Fed. Cir. 1996)). This obviousness inquiry consists of two steps.
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`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 at 1311–12 (quoting Durling,
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`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
`
`references may only be used to modify the primary reference if they are ‘so
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`8
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`IPR2017-00094
`Patent D612,646 S
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`related [to the primary reference] that the appearance of certain ornamental
`
`features in one would suggest the application of those features to the other.’”
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`Durling, 101 F.3d at 103 (quoting In re Borden, 90 F.3d 1570, 1575 (Fed.
`
`Cir. 1996)).
`
`B.
`
`The Designer of Ordinary Skill
`
`Petitioner’s declarant, Mr. Gandy, opines:
`
`[A] designer of ordinary skill in the field of the ’646 Patent
`would have been a person 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 also have a basic
`understanding of physics and/or mechanics, which may include
`practical experience
`in
`the field of studying consumer
`commodity dispensers, or may
`include high school or
`introductory college level physics coursework. The designer of
`ordinary skill would also have a basic understanding of the
`dimensions and functions afforded to cans and bottles in the
`context of packaging.
`
`Ex. 1002 ¶¶ 23, 24. For purposes of this Decision, we proceed with the
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`understanding that the designer of ordinary skill is as Mr. Gandy asserts.
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`C.
`
`Anticipation Based on Linz
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`1. Linz (Ex. 1008)
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`Linz is titled “Display Rack” and claims an “ornamental design for a
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`display rack.” Ex. 1008, [54], [57]. Linz discloses an ornamental design for
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`a display rack having an access door / label area with a symmetric, convex
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`arcuate shape, with a central apex that extends forward. Pet. 11 (citing
`
`Ex. 1002 ¶ 36, Ex. 1008, Fig. 1). Figure 1 of Linz is reproduced below.
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`9
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`IPR2017-00094
`Patent D612,646 S
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`
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`Figure 1 of Linz is a perspective view of a display rack. Ex. 1008, Fig. 1.
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`As seen in Figure 1, Linz depicts a dispensing area with two curved stops.
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`The stops are positioned below and forward of the label area creating a
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`noticeable gap between the stops and the label area. The two stops are
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`positioned at the bottom right and left edge with a gap between for receiving
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`and displaying an object.
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`2. Analysis of Alleged Anticipation by Linz
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`Petitioner contends that the ’646 patent claim is anticipated by Linz.
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`Pet. 27. Petitioner relies on the Gandy Declaration. Petitioner contends that
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`to the ordinary observer, “the design disclosed by Linz is substantially the
`
`same as that claimed in the ‘646 Patent, such that the resemblance would
`
`deceive such an observer, inducing him to purchase one supposing it to be
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`the other.” Id.
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`Petitioner alleges “[t]he substantial similarities between Linz and the
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`‘646 Patent are evident from a simple comparison of Figure 1 of Linz to the
`
`sole drawing of the ‘646 Patent.” Id. (citing Ex. 1002 ¶ 43). Petitioner
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`10
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`IPR2017-00094
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`contends “Linz discloses an ornamental design with an access door / label
`
`area having a symmetric, convex arcuate shape, with a central apex
`
`extending forward,” as well as “stops located forward of, and below, the
`
`access door / label area, having a gap therebetween.” Id.
`
`Petitioner acknowledges that Linz does not disclose a cylindrical
`
`object (or can) laying on its side. Id. at 28. According to Petitioner,
`
`however, “the shape of the bottom of the dispenser disclosed by Linz, is
`
`curved, indicating to a designer of ordinary skill in the art that the dispenser
`
`disclosed in Linz is designed to dispense cans.” Id. Petitioner makes the
`
`same argument regarding the loading area for the dispenser also being
`
`curved which purportedly indicates “that Linz is designed to have cylindrical
`
`cans loaded into it from above, and roll through its internal structure until
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`they reach the stops of the display shelf.” Id. Petitioner provides an
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`annotated Figure 1 in support of this theory.
`
`
`
`
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`Annotated Figure 1 of Linz depicts a display rack with Petitioner’s added
`
`annotations and description. Id. Petitioner argues “a designer of ordinary
`
`skill would immediately recognize that Linz inherently discloses that its
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`display rack is intended to display cylindrically shaped objects, e.g., cans.”
`
`Id. at 29.
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`11
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`Patent Owner argues that Linz fails to disclose a cylindrical object
`
`lying on its side as required by the ’646 patent. According to Patent Owner,
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`“Linz itself in the patent specification does not describe or suggest what
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`objects it displays.” Prelim. Resp. 6. Patent Owner then contends that Linz
`
`lacks several ornamental features of the claim, but each of these features
`
`focuses on the lack of a cylindrical object lying on its side. Id. at 7–8.
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`Based on the record before us, we do not agree that Linz anticipates
`
`the claim of the ’646 patent. Petitioner’s argument that a designer of
`
`ordinary skill would find it inherent for Linz to display cylindrical objects
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`(Pet. 29) is unpersuasive on this record. First, the standard for anticipation is
`
`not what the designer of ordinary skill would perceive, but instead the eye of
`
`an ordinary observer, giving such attention as a purchaser usually gives.
`
`As depicted below, the ordinary observer would recognize the designs
`
`are not substantially the same, and would not be deceived to purchase one
`
`supposing it to be the other because the lack of a cylindrical object in Linz
`
`creates a distinct overall ornamental impression.
`
`The Figure of the ’646 patent
`
`Figure 1 of Linz
`
`
`
`
`
`
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`12
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`The Figure of the ’646 patent (left) is a perspective view of the claimed
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`gravity feed dispenser display and Figure 1 of Linz (right) is a perspective
`
`view of a display rack. Based on these figures, the Linz dispenser and
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`display does not appear sufficiently similar to the patented design to
`
`persuade us that there is a reasonable likelihood that, in the eye of an
`
`ordinary observer familiar with the prior art, the designs would appear
`
`substantially the same.
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`Accordingly, we determine that Petitioner has failed to establish a
`
`reasonable likelihood that the claim of the ’646 patent is anticipated based
`
`on Linz.
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`D. Obviousness Based on Linz Alone
`
`Petitioner contends the ornamental design for the ’646 patent would
`
`have been obvious to a designer of ordinary skill based on Linz. Petitioner
`
`contends that Linz is the same basic claimed design, “and is therefore a
`
`suitable primary reference.” Pet. 31. Petitioner relies in part on its
`
`anticipation analysis of Linz and further argues that “Linz discloses a display
`
`unit with ‘basically the same’ design characteristics as the claimed design,
`
`and any differences are de minimis.” Id. Petitioner recognizes that Linz
`
`does not disclose a cylindrical object as part of the overall design, but
`
`contends “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 33. According
`
`to Petitioner, “[t]he use of a cylindrical can with Linz would yield
`
`predictable results – the can would roll from the loading area down to the
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`stops of the display shelf, such that the can would be visible above the stops
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`and through the gap between same.” Id.
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`13
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`Patent Owner disagrees that Linz can serve as the primary reference.
`
`Prelim. Resp. 8–10. Patent Owner contends that because Linz “does not
`
`show a cylindrical article in the rack, and does not even suggest what might
`
`be displayed,” reliance on “Linz . . . as a primary reference is a case of
`
`nothing but hindsight.” Id. at 9. Patent Owner also contends that the design
`
`of Linz is distinct because “the exposed rectangular surface is notably
`
`narrower than the passage that carries the products” as compared to the
`
`width of the chute. Id.
`
`We determine, based on the current record, that Petitioner fails to
`
`establish sufficiently how the Linz design would have been modified to
`
`“create a design that has the same overall visual appearance as the claimed
`
`design.” Durling, 101 F.3d at 103. A designer of ordinary skill would
`
`recognize that Linz is designed to display some type of object, but Petitioner
`
`fails to establish sufficiently how a designer of ordinary skill in the art would
`
`appreciate the size, shape, and placement of the object based on the teaching
`
`of Linz alone. Although we agree that Linz may properly serve as the
`
`primary reference because it creates basically the same visual impression as
`
`the claimed design to the ordinary designer, Petitioner has not established
`
`how Linz suggests the placement, size, and shape of a cylindrical object as
`
`required by the ornamental design of the ’646 patent. Petitioner has failed to
`
`establish how the overall visual appearance of Linz alone would create a
`
`design that has the same overall visual appearance as the claimed design
`
`based on these distinctions. Furthermore, Petitioner does not address
`
`sufficiently what would motivate an ordinary designer to modify the display
`
`rack in Linz to arrive at a design with the same overall visual appearance as
`
`the ’646 patent.
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`Accordingly, we determine that Petitioner has failed to establish a
`
`reasonable likelihood that the claim of the ’646 patent is obvious based on
`
`Linz alone, and we do not institute an inter partes review as to this ground.
`
`E. Obviousness Based on Linz in View of Samways
`
`1. Samways (Ex. 1009)
`
`Samways is titled “Serpentine Dispenser.” Ex. 1009, [54]. 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 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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`15
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`Figure 3 of Samways shown above is a perspective view of a gravity feed
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`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 vertically and perpendicularly to ramp 16.
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`Storage locations 20, 21 are designed such that a cylindrical object
`
`loaded therein would be visible above forward stops 22b, 23b, 24b, as well
`
`as through the two gaps between the stops. Placement of a cylindrical object
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`in the storage area behind the forward stops is depicted in Figure 4 of
`
`Samways.
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`16
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`Patent D612,646 S
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`Figure 4 of Samways shown above depicts a side cross-section view of the
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`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
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`of a forward cylindrical object allowing for visual display of the cylindrical
`
`object.
`
`Samways depicts a dual delivery path in Figure 3, but it also describes
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`an embodiment with a single delivery path along which cylindrical objects
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`can move to a single outlet for the delivery channel. Id. at 19:26–31, 20:25–
`
`27.
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`2. Analysis of Alleged Obviousness Based on Linz in View
`of Samways
`
`Petitioner contends the ornamental design of the ’646 patent would
`
`have been obvious to a designer of ordinary skill based on Linz in view of
`
`Samways. Pet. 31–37. Petitioner relies on a comparison of the combined
`
`ornamental features of Linz and Samways with the design of the ’646 patent,
`
`as well as the Gandy Declaration to support this analysis. Id. (citing
`
`Ex. 1002 ¶¶ 44, 48–58). Petitioner relies on Linz as the primary reference
`
`and Samways as the secondary reference. Id. at 33. According to Petitioner,
`
`Samways provides support for the placement and shape of a cylindrical
`
`object and the claimed vertical stops forward of the cylindrical object. Id. at
`
`34. Additionally, as discussed above, Petitioner contends that Linz is the
`
`same basic claimed design, “and is therefore a suitable primary reference.”
`
`Id. at 31.
`
`Patent Owner disagrees because Linz “does not show a cylindrical
`
`article in the rack, and does not even suggest what might be displayed.”
`
`Prelim. Resp. 9. Patent Owner also contends that the design of Linz is
`
`17
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`IPR2017-00094
`Patent D612,646 S
`
`distinct because “the exposed rectangular surface is notably narrower than
`
`the passage that carries the products” as compared to the width of the chute.
`
`Id.
`
`Based on the record before us, Petitioner has established persuasively
`
`that Linz has design characteristics that are basically the same as those of the
`
`patented design, and is therefore a proper Rosen reference. Specifically,
`
`Linz depicts an ornamental design for a gravity feed dispenser display with a
`
`label area having a symmetric, convex arcuate shape, with a central apex
`
`extending forward. See Ex. 1008, Fig. 1. The label area is taller vertically
`
`than it is wide horizontally. Id. The stops are located forward of, and
`
`below, the label area, having a gap therebetween. See Pet. 27; Prelim.
`
`Resp. 7 (agreeing that Linz discloses “a pair of generally vertical
`
`members”).
`
`Linz does not display a cylindrical object below the label area and
`
`behind the stops, but Linz defines a space for display of such an object.
`
`Modification of Linz to achieve the patented design would not negatively
`
`impact the fundamental characteristic of Linz’s design. To the contrary,
`
`Linz appears designed to receive and display a cylindrical object, but simply
`
`lacks that object in its display area. C.f. In re Rosen, 673 F.2d at 391
`
`(rejecting the primary reference where “modifications of [it] necessary to
`
`achieve [the patented] design would destroy the fundamental characteristics”
`
`of that reference). We have also considered Patent Owner’s contention that
`
`the exposed rectangular surface in Linz is narrower than the passage that
`
`carries the products (Prelim. Resp. 9–10), but we find this position
`
`unpersuasive because the difference in width appears negligible. Based on
`
`the record before us, Linz creates basically the same visual impression as the
`
`18
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`
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`IPR2017-00094
`Patent D612,646 S
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`design for the gravity feed dispenser display claimed in the ’646 patent and
`
`is therefore a proper Rosen reference.
`
`Petitioner relies on Samways as the secondary reference. Pet. 34
`
`(citing Ex. 1002 ¶ 53). Petitioner contends the design disclosed in Samways
`
`is “so related” to Linz, because both references disclose ornamental designs
`
`for items that solve the same problem in the same manner – dispensing a can
`
`via a pathway leading to stops having a gap therebetween so that the can is
`
`visible to a consumer. Id. Further, Petitioner argues that a designer having
`
`ordinary skill in the art would be motivated to combine Linz with Samways
`
`because both references “are in the same field of art, solve the same
`
`problem, and in order to take advantage of the manufacturing cost and/or
`
`efficiency of having vertical stops.” Id. at 35 (citing Ex. 1002 ¶ 56).
`
`Petitioner relies on the teaching of Samways to incorporate a
`
`cylindrical can into the dispensing area of Linz. Id. at 36. Petitioner also
`
`relies on Samways to modify Linz’s existing stops to be vertical as depicted
`
`in Petitioner’s hypothetical figure portraying the combination of Linz and
`
`Samways, reproduced below.
`
`
`
`19
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`
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`IPR2017-00094
`Patent D612,646 S
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`Id. at 37. Petitioner’s annotated hypothetical figure of the combination of
`
`Linz and Samways depicts a cylindrical can behind vertical stops as taught
`
`by Samways. According to Petitioner, “[c]omparing the hypothetical
`
`reference to the claimed design of the ‘646 Patent through the eyes of a
`
`designer of ordinary skill shows that the ‘646 Patent is obvious.” Id. (citing
`
`Ex. 1002 ¶ 58). Petitioner concludes that “a designer of ordinary skill . . .
`
`would find that the claimed ‘646 patent design as a whole is substantially the
`
`same or has the same overall visual appearance as the modified Linz
`
`design.” Id.
`
`Patent Owner’s only challenge to the use of Samways in the
`
`combination is that “Samways has a huge curved front [label area] unlike the
`
`rectangular surface of Linz or the ‘646 patent, but it does not show any
`
`cylindrical articles clearly.” Prelim. Resp. 10.
`
`We are not persuaded by Patent Owner that the label area of Samways
`
`provides a substantially different overall visual appearance than that of the
`
`’646 patent or Linz, and we note that, contrary to Patent Owner’s arguments,
`
`Figure 4 of Samways does illustrate cylindrical articles (cans). See
`
`Ex. 1009, Fig. 4. Based on the record before us, Petitioner has established
`
`persuasively that the teachings of Linz and Samways may be combined
`
`because the designs are so related that the appearance of certain ornamental
`
`features in one design would suggest the application of those features to the
`
`other. Apple, 678 F.3d at 1329. We also are persuaded that Petitioner has
`
`explained sufficiently that a designer of ordinary skill could, as depicted and
`
`described in Samways (Figure 4), position a cylindrical object in the forward
`
`dispensing area of Linz and further modify Linz’s stops to be positioned
`
`vertically as also depicted in Samways. We are persuaded, for purposes of
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`20
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`IPR2017-00094
`Patent D612,646 S
`
`this Decision, that Petitioner has established sufficiently that the claimed
`
`design would have been obvious to a designer of ordinary skill based on the
`
`combination of Linz and Samways.
`
`Accordingly, based on the information presented at this stage of the
`
`proceeding, we are persuaded there is a reasonable likelihood Petitioner
`
`would prevail in showing that the claim of the ’646 patent would have been
`
`obvious over the teachings of Linz and Samways.
`
`F. Obviousness Based on Linz in View of Knott
`
`1. Knott (Ex. 1010)
`
`Knott is titled “Bin Dispenser For Small Cylindrical Articles” and
`
`claims an “ornamental design for a bin dispenser for small cylindrical
`
`articles, as shown.” Ex. 1010. Knott discloses that “Figure 1 is a front
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`perspective of a bin dispenser for small cylindrical articles.” Id. Figure 1 of
`
`Knott is reproduced below.
`
`
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`21
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`
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`IPR2017-00094
`Patent D612,646 S
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`Id. at Fig. 1. Petitioner contends that Knott discloses a serpentine dispenser
`
`having a cylindrical can dispensing area beneath the loading area. Pet. 14–
`
`15 (citing Ex. 1002 ¶ 38; Ex. 1010, Fig. 1).
`
`2. Analysis of Alleged Obviousness Based on Linz in View
`of Knott
`
`Petitioner contends the ornamental design of the ’646 patent would
`
`have been obvious to a designer of ordinary skill based on Linz in view of
`
`Knott. Id. at 31–37. Petitioner relies on a comparison of the combined
`
`ornamental features of Linz and Knott with the design of the ’646 patent, as
`
`well as the Gandy Declaration to support this analysis. Id. (citing Ex. 1002
`
`¶¶ 44, 48–58). Petitioner relies on Linz as the primary reference and Knott
`
`as the secondary reference. Id. at 33. According to Petitioner, Knott
`
`provides support for the placement and shape of a cylindrical object and the
`
`claimed vertical stops forward of the cylindrical object. Id. at 34.
`
`Petitioner relies on argument similar to the combination of Linz and
`
`Samways. Specifically, Petitioner contends Knott teaches dispensing
`
`cylindrical cans behind vertical stops to arrive at the claimed design. Id.
`
`
`
`Patent Owner argues that “Knott does not show cylindrical articles,
`
`although it does mention small cylindrical articles in its title, without any
`
`elaboration.” Prelim. R
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