The Federal Circuit took what it called an “unusual” step in Campbell Soup Co. v. Gamon Plus, Inc., Nos. 2018-2029, 2018-2030 (Fed. Cir. Sep. 26, 2019) by reversing the Board’s determination that a reference was not a proper primary reference.
In this design patent IPR litigation regarding cylindrical object dispensers, the Board found that two proposed references were not proper primary references because each failed the “basically the same” test. The Board found that the first reference required substantial modifications, like adding a cylindrical object, to appear visually similar to the challenged design. The second reference failed because making that design “basically the same” as the challenged design would require changing its dimensions and removing parts. In both cases, the Board emphasized that the visual appearance of proper primary references cannot be modified using hindsight.
The Federal Circuit agreed with the Board that the second reference required modifications such that it could not be a proper primary reference. But the Federal Circuit disagreed regarding the first reference. Because that reference substantially visually resembled the challenged design and differed from that design only slightly, the Federal Circuit reversed the Board’s factual finding for lack of substantial evidence.
Judge Newman dissented, believing that the Board was correct about both references. In Judge Newman’s view, the fact that the first reference required any modification to arrive at a substantially similar design to the challenged patent rendered it an improper primary reference.
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