Trials@uspto.gov
`571-272-7822
`
`
`
`
` Paper 113
` Date: July 29, 2020
`
`
`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.
`____________
`
`IPR2017-00094
`Patent D612,646 S
`____________
`
`
`
`Before GRACE KARAFFA OBERMANN, BART A. GERSTENBLITH,
`and ROBERT L. KINDER, Administrative Patent Judges.
`
`KINDER, Administrative Patent Judge.
`
`
`JUDGMENT
`Final Written Decision on Remand
`Determining No Challenged Claim Unpatentable
`35 U.S.C. §§ 144, 318
`
`
`
`
`
`
`

`

`IPR2017-00094
`Patent D612,646 S
`
`
`INTRODUCTION
`I.
`We address this case on remand after a decision by the U.S. Court of
`Appeals for the Federal Circuit in Campbell Soup Co. v. Gamon Plus, Inc.,
`939 F.3d 1335 (Fed. Cir. 2019).
`Procedural Background
`A.
`Campbell Soup Company, Campbell Sales Company, and Trinity
`Manufacturing, L.L.C. (collectively, “Campbell” or “Petitioner”) filed a
`Petition to institute an inter partes review of the claim for a “Gravity Feed
`Dispenser Display” in U.S. Patent No. D612,646 S (Ex. 1001, “the ’646
`patent”). Paper 2 (“Pet.”). Gamon Plus, Inc. (“Gamon” or “Patent Owner”)
`filed a Preliminary Response to the Petition. Paper 10. Applying the
`standard set forth in 35 U.S.C. § 314(a), we instituted an inter partes review
`of the challenged claim. Paper 13 (“Dec.”). Specifically we instituted
`review of the design claim as to three grounds pursuant to 35 U.S.C. § 103:
`
`35 U.S.C. §
`§ 103(a)
`§ 103(a)
`§ 103(a)
`
`Reference(s)/Basis
`Linz1, Samways2
`Samways
`Samways, Linz
`
`Dec. 35. In our institution decision, we declined to institute review on nine
`of twelve grounds. Id. at 6, 35.
`During the original trial, Gamon filed a Patent Owner Response
`(Paper 24, “PO Resp.”), and Campbell filed a Reply (Paper 33, “Pet. Reply”)
`
`
`1 U.S. Patent No. D405,622, Arthur W. Linz, issued Feb. 16, 1999 (“Linz,”
`Ex. 1008).
`2 G.B. Patent Application No. 2,303,624, published Feb. 26, 1997
`(“Samways,” Ex. 1009).
`
`2
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`IPR2017-00094
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`to the Patent Owner Response. We authorized Gamon to file a paper
`identifying allegedly improper new argument and citations in Petitioner’s
`Reply (Paper 40), to which Campbell filed a response (Paper 48). We also
`authorized Gamon to file a sur-reply addressing evidence that Campbell
`produced late in the proceeding. Paper 68 (“PO Sur-reply”).
`An oral hearing was held on January 23, 2018, and a copy of the
`transcript is part of the record. Paper 80 (“Tr.”). On March 29, 2018, we
`issued a Final Written Decision. Paper 81 (“Final Dec.”) (Paper 84, redacted
`version). In our Final Written Decision, we concluded that Petitioner had
`not demonstrated by a preponderance of the evidence that the claim of the
`’646 patent is unpatentable under 35 U.S.C. § 103. In the decision, we
`weighed the evidence of obviousness and nonobviousness as a whole, and
`we determined that Petitioner had not demonstrated by a preponderance of
`the evidence that the claim of the ’646 patent is unpatentable as obvious
`based on Linz and Samways. We likewise determined that Petitioner had
`not demonstrated by a preponderance of the evidence that the claim of the
`’646 patent is unpatentable as obvious based on Samways alone or Samways
`and Linz. Petitioner filed a Notice of Appeal to the Federal Circuit on May
`31, 2018. Paper 85.
`On September 26, 2019, the Federal Circuit issued a decision
`affirming-in-part, vacating-in-part, and remanding for further consideration.
`Campbell Soup Co., 939 F.3d at 1335.
`The Federal Circuit determined that there was “no error in the Board’s
`claim construction,” with respect to the claim. Id. at 1340 n.1. The Federal
`Circuit affirmed our decision related to the Samways ground, determining
`“substantial evidence supports the Board’s finding that Samways is not a
`
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`proper primary reference,” and “substantial evidence supports the Board’s
`finding that Samways does not create basically the same visual impression
`as the claimed designs.” Id. at 1341–42.
`As to the ground under Section 103 based on Linz, the Federal Circuit
`determined “substantial evidence does not support the Board’s finding that
`Linz is not a proper primary reference.” Id. at 1342. The Federal Circuit
`then vacated “the Board’s conclusion that the claimed designs would not
`have been obvious over Linz in view of Samways” and remanded for further
`proceedings. Id. The Federal Circuit did not address any other findings
`related to obviousness based on Linz.
`The Federal Circuit also remanded and ordered that “the Board should
`also consider the non-instituted grounds for unpatentability consistent with
`the Supreme Court’s decision in SAS Institute Inc. v. Iancu, 138 S. Ct. 1348
`(2018).” Id. We discuss the Federal Circuit’s decision in more detail below.
`On December 20, 2019, we issued an Order Modifying Decision
`Instituting Inter Partes Review and Setting the Schedule for Further
`Proceedings on Remand. Paper 92. In light of the remand from the Federal
`Circuit and the Supreme Court’s decision in SAS, we modified our Decision
`on Institution to include each of the nine non-instituted grounds challenging
`the design claim of the ’646 patent. Id. at 4–5; Dec. 6. Also, pursuant to the
`parties’ agreement, we instituted a briefing schedule and set parameters
`requested by the parties for the remand proceeding. Id. at 3. Further, we
`requested the parties confer to determine if there were any grounds that
`Petitioner no longer intended to pursue. Id. at 6. If any agreement was
`reached, we authorized the parties to jointly request that the Board limit the
`proceeding through a joint motion. Id.
`
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`IPR2017-00094
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`Such a motion was filed on January 10, 2020. Paper 93. In that
`
`motion filed by Campbell, the parties agreed to limit the proceeding to the
`following grounds on remand3:
`
`Claim
`Challenged
`1
`1
`1
`1
`1
`1
`1
`1
`
`35 U.S.C. § Reference(s)/Basis
`
`§ 103(a)
`§ 103(a)
`§ 103(a)
`§ 103(a)
`§ 103(a)
`§ 103(a)
`§ 103(a)
`§ 103(a)
`
`Linz
`Linz, Samways
`Linz, Knott4
`Abbate5, Samways
`Abbate, Samways, Linz
`Abbate, Linz
`Primiano6, Samways
`Primiano, Knott
`
`Id. at 1.
`
`On January 27, 2020, we granted the parties’ request to limit the
`remand proceeding to the grounds and statutory basis requested by the
`parties. Paper 94. Accordingly, this Final Written Decision on Remand
`addresses each of the grounds set forth above.
`
`Pursuant to the briefing schedule on remand, Gamon filed a Patent
`Owner Response on Remand (Paper 95) and Campbell filed a Reply
`(Paper 97) to the Patent Owner Response on Remand. We authorized
`Gamon to file a Sur-reply (Paper 99), to which Campbell filed a response or
`
`
`3 In the chart above, we have separated the grounds remaining in the
`proceeding into the different combinations presented, for ease of reference.
`4 U.S. Patent No. D178,248, issued July 10, 1956 (“Knott,” Ex. 1010).
`5 U.S. Patent No. 4,909,578, issued Mar. 20, 1990 (“Abbate,” Ex. 1011).
`6 U.S. Patent No. 6,068,142, issued May 30, 2000 (“Primiano,” Ex. 1012).
`
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`Sur-sur-reply (Paper 103). We refer to the post remand briefing by the
`corresponding paper number.
`A second oral hearing was held on May 7, 2020, and a copy of the
`transcript is part of the record. Paper 112 (“Tr. 2”).
`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 ’646 patent is unpatentable under 35 U.S.C. § 103(a).
`Related Proceedings
`B.
`The parties state that the ’646 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. 4;
`Paper 6, 1–2. Campbell also has filed petitions challenging the patentability
`of related design patents. The proceeding in IPR2017-00091 (U.S. Patent
`No. D621,645) is also on remand from the Federal Circuit and we issue a
`final decision in that proceeding concurrently with this decision. In both
`IPR2017-00095 (U.S. Patent No. D621,644), and IPR2017-00096 (U.S.
`Patent No. D595,074) we issued final decisions on March 27, 2018, finding
`the respective design claims unpatentable.
`The ’646 Patent and Claim
`C.
`The ’646 patent (Ex. 1001) issued March 30, 2010, and is assigned to
`Gamon. Id. at [45], [73]. The ’646 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 ’646 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 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.
`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.”).
`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
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`may be “helpful to point out . . . various features of the claimed design as
`they relate to the . . . prior art.” Id. 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”).
`Because the Federal Circuit has reviewed, and found no error in, our
`claim construction, we maintain our determinations from the Final Decision.
`Campbell Soup Co., 939 F.3d at 1340, n.1 (“We see no error in the Board’s
`claim construction.”). These determinations are reiterated below. Campbell
`agrees that these prior findings below are the law of the case. Tr. 2, 13:18–
`14:13 (Board: “the Federal Circuit was pretty explicit as well that they
`adopted our claim construction . . . . Do you agree that is the law of the
`case, prior claim construction?” Counsel for Campbell: “I do, Your Honor.
`I mean, we took issue with it at the time but I accept that the Federal Circuit
`has ruled on that and I just would say that should be applicable here, too.”).
`We reiterate our claim construction below.
`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, below, the single embodiment of the patent design illustrates
`and claims certain front portions of a gravity feed dispenser display.
`
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`
`
`
`Patent Owner’s annotated and highlighted Figure of the ’646 patent shows a
`perspective view of a gravity feed dispenser display. PO Resp. 5. 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,” as annotated above.
`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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`
`Two rectangular lugs, or stops, are positioned in front of the
`cylindrical object on each bottom side and stand vertically. The rectangular
`lugs are taller vertically than they are wide horizontally and they stand
`vertically adjacent the cylindrical object about halfway up the diameter of
`the cylindrical object.
`We also consider the spatial relationships between the claimed
`features in our analysis as depicted in the Figure of the ’646 patent above.
`See Final Dec. 32–33 (“Although the boundary of the label area is
`disclaimed, Gamon has still claimed the surface area within the
`boundary. . . . When considering just the claimed area within the label area,
`a spatial relationship still exists between this claimed area and the cylindrical
`object.”); Tr. 48:13–19.
`D. Grounds on Remand
`As explained above, the following grounds are before us on remand:
`
`Claim
`Challenged
`1
`1
`1
`1
`1
`1
`1
`1
`
`35 U.S.C. § Reference(s)/Basis
`
`§ 103(a)
`§ 103(a)
`§ 103(a)
`§ 103(a)
`§ 103(a)
`§ 103(a)
`§ 103(a)
`§ 103(a)
`
`Linz
`Linz, Samways
`Linz, Knott
`Abbate, Samways
`Abbate, Samways, Linz
`Abbate, Linz
`Primiano, Samways
`Primiano, Knott
`
`Paper 93, 1–3; Paper 94, 4–5.
`Campbell supports its challenge with two declarations by Mr. James
`Gandy, one in support of the Petition (Ex. 1002 (“the Gandy Decl.”)), the
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`other in support of Petitioner’s Reply (Ex. 1018 (“the Gandy Suppl. Decl.”)).
`Campbell 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 (Paper 607 (“the Johnson Suppl.
`Decl.”)). The parties rely on other evidence and exhibits as discussed below.
`E. Development of the ’646 Design Patent
`Terry Johnson came up with the initial design idea underlying the
`ornamental design 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 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 15 (citing
`Ex. 1021, 28:15–16). A Campbell’s marketing manager agreed that
`shopping the soup isle was difficult and stated 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).
`
`
`7 Paper 60 is Bates stamped as Exhibit 2014 in the bottom, right-hand corner
`of each page. Exhibit 2014, however, was expunged.
`
`11
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`
`After coming up with an initial concept, Terry Johnson, on behalf of
`Gamon,8 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. Terry Johnson further explained that his design was meant to
`present to consumers as “a big convex sign that was the same as the label
`and it was the same proportions as the can.” Id. at 45:11–17.
`In later discussions with Campbell around 2002, Terry Johnson
`presented his concept to an executive board at Campbell, including Carl
`Johnson (again, no relation to Terry). Id. at 30:11–32:18. During these
`discussions, Campbell sponsored a project by a research company called
`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.
`An 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.
`
`8 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.
`
`12
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`

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`
`at 32:3–33:20; see also Ex. 2031, 5, 6, 10–12, 14–17, 26–29 (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. Ex. 1021, 32:3–33:20. The tested embodiment
`of the gravity feed display rack was the same design as embodied in
`Gamon’s D621,645 and ’646 design patents.9 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
`Campbell soup products, Campbell concluded that the display rack10
`increased its soup sales volume by 5.5–13.6% depending on the type of soup
`and brand. Ex. 2032, 4.11 Terry Johnson similarly testified based on his
`involvement in the project that Campbell’s “market study showed that
`
`
`9 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].
`10 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.
`11 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. These
`documents were produced based on our Order (Paper 41) directing Campbell
`to produce the 2002 study referenced by Terry Johnson.
`
`13
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`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 is 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 racks12 and installed them in
`over 17,000 stores. PO Resp. 47; Ex. 2001 ¶ 45; Tr. 50:1–5, 40:4–41:3;
`Ex. 2017, 14 (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.”). As admitted by
`Campbell, the display racks purchased fall within the scope of the ’646
`patent when a Campbell soup can is added to the display—the claim of the
`’646 patent requires a cylindrical object as part of the claim. See Tr. 2,
`19:10–15; Ex. 1001; Ex. 2032, 4–10; PO Sur-reply 5; Ex. 2001 ¶¶ 40–45;
`Tr. 40:4–41:3. The purpose of the Gamon display racks tested and
`purchased by Campbell was to display Campbell’s cylindrical soup cans as
`arranged in the patented design. Ex. 2001 ¶ 38 (“These display racks
`
`
`12 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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`displayed the condensed Campbell Soup cans in the exact configuration of
`the design of the ’646 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
`label area 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 that
`“[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 shop.” Id. The 2005 Annual Report also shows 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 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.),
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`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. 48. Trinity’s display racks maintained the
`same ornamental design features as the Gamon racks. Id. at 48–49;
`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).
`
`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
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`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 at 1311–12 (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
`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.
`Campbell, relying on the testimony of Mr. Gandy, states 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
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`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. 26 (internal citations omitted) (citing Ex. 1002 ¶¶ 22–25). Gamon does
`not object to this description of the designer of ordinary skill in the art.
`In our first Final Decision, we agreed that the designer of ordinary
`skill is as Campbell asserts, except that we disagreed 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.
`On appeal, the Federal Circuit did not disturb our finding as to the
`level of ordinary skill in the art. See generally Campbell Soup Co., 939 F.3d
`1335. The record on remand has not changed with respect to our
`consideration of this issue and, therefore, we maintain and reiterate that a
`designer of ordinary skill in the art would have had a background or
`familiarity with commercial dispensers, and particularly dispensers for
`consumer commodities such as cans, bottles, or small packaged items and 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.
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`C. Obviousness Based on Linz Alone or Linz and Samways/Knott
`Based on the final trial record before us, including the decision of the
`Federal Circuit, we are not persuaded that Campbell has established by a
`preponderance of the evidence that the claim is unpatentable over Linz
`alone, Linz and Samways, or Linz and Knott, 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 ’646 patent under pre-AIA 35
`U.S.C. § 102(b). Linz is cited on the face of the ’646 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.
`
`
`Figure 1 of Linz shows the claimed ornamental design for a display rack.
`Ex. 1008, Fig. 1.
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`Figure 3 of Linz, depicted below, shows a side view with a flat front
`
`label area with a small curvature. The bottom receiving area is noticeably
`curved upwards.
`
`
`Figure 3 of Linz is a right side elevational view. Figure 3 further shows that
`any can received in the bottom display area would be positioned either
`behind or directly under the front label area.
`We are also bound by the Federal Circuit’s determination that “the
`design of Linz [is] for dispensing cans and that a can would be used in the
`system.” Campbell Soup Co., 939 F.3d at 1341. Similarly, the Federal
`Circuit found “that Linz’s design is made to hold a cylindrical object in its
`display area.” Id.
`The parties briefing on remand focuses on the size, shape, position,
`and orientation of the hypothetical cylindrical object in the display area of
`Linz.
`
`2. Samways (Ex. 1009)
`Samways is titled “Serpentine Dispenser.” Ex. 1009, [54]. Samways
`published on February 26, 1997, making it prior art to the ’646 patent under
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`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’s design
`for a serpentine dispenser incorporates a large label area, front fascia 17,
`with a symmetric, convex arcuate shape, and a central apex that extends
`forward. Samways describes Figure 3 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.
`
`
`Figure 3 of Samways shown above is a perspective view of a gravity feed
`dispenser display. Id. at 3:11–13. As de