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patents lightbulb patent lockIt has been hornbook law for decades that obviousness in the design patent context requires the threshold existence of a primary reference—“a something in existence”—against which to compare the claimed design. If and only if a primary reference is found having design characteristics basically the same as the claimed design, secondary references may be considered to suggest modifications of that design to test the obviousness of the claimed invention. In its recent decision in Campbell Soup Co. v. Gamon Plus (Fed. Cir. Sept. 26, 2019), however, the Federal Circuit appeared to soften this requirement. Vacating and remanding a decision of the Patent Trial and Appeal Board (PTAB) upholding the validity of two design patents claiming ornamental designs of a soup can dispenser display, the Federal Circuit concluded substantial evidence did not support the PTAB’s finding that a reference was insufficiently similar to the claimed designs to be a primary reference. The Federal Circuit reached this conclusion though the design disclosed in the reference was missing, according to the PTAB, half the scope of the claimed design—specifically, a display can—because the prior art design was “made to hold” a cylindrical object in the display area. In reaching this conclusion over Judge Pauline Newman’s dissent, Judge Kimberly Moore, writing for herself and Chief Judge Sharon Prost, implicitly permitted modification of the design disclosed by the prior art reference before determining the reference to be a primary reference, opening the door, perhaps, to similar utilitarian considerations in future design patent cases.

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