Filed on behalf of Patent Owner Gamon Plus, Inc.

By: Andrew L. Tiajoloff, reg. no. 31575

Tiajoloff & Kelly LLP
Chrysler Building, 37th Floor
405 Lexington Avenue
New York, New York 10174
Tel.: 212 -490-3285
Fax: 212-490-3295
Email : atiajoloff@tkiplaw.com

U.S. PATENT & TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

Campbell Soup Company, Campbell Sales Company and

Trinity Manufacturing, LLC.
Petitioners,
v.

Gamon Plus, Inc.

Patent Owner

Case No. IPR2017-00091

U.S. patent no. D621,645

PATENT OWNERS MERITS RESPONSE

 TABLE OF CONTENTS
Page

TABLE OF AUTHORITIES .............................................................................. iii

EXHIBIT LIST ................................................................................................... v

I. INTRODUCTION....... 1
II. SUMMARY OF WHY THE BOARD SHOULD FIND THAT
PETITONERS HAVE NOT SHOWN UNPATENTABLILITY 2

III. PETITIONERS HAVE FAILED TO PRESENT A PRIMARY

REFERENCE THAT LOOKS BASICALLY THE SAME AS THE
CLAIMED DESIGN. 6
A. A finding of obviousness of a design patent requires a primary reference
that creates basically the same visual impression as the patented
design... 6

B. Neither Samways nor Linz can be primary references against the

claimed design of the 645 patent 7

1. Samways without modification does not give a visual impression that

is basically the same as that of the design of the 646 patent 8
2. Petitioners argued modifications of Samways to try to make it look
more like the 645 patent are major modifications that are not supported
by the reference or by any credible evidence, and excludes the modified
Samways as a primary reference. 13

a. Petitioners argued modifications of Samways are substantial and

cannot make it a primary reference. .. 13

b. The assertion that Samways describes a dispenser with only one

path because one claim recites only one path in its elements is
nonsense. ............... 16

c. Samways cannot be modified in a way obvious to an ordinary

designer and then used as a primary reference because the alleged
obvious variant is not something in existence and is not supported
by any competent evidence. . 19

i
 3. Linz, without modification, does not give a visual impression that is
basically the same as that of the design of the 646 patent. .. 22

4. Petitioners have improperly created and added a cylindrical article of

arbitrary appearance to Linz to try to make it a primary reference. .. 24

a. The addition of a cylindrical can to Linz is not a de minimis

modification of the reference. 25

b. Petitioners arguments for placement of a cylindrical can in the Linz

display are based on a hindsight-guided theory of inherency and on
utility patent concepts of obviousness that have no place in a design
patent analysis. ... 26

IV. Even if the Linz and Samways references were combined, the resulting
design would not have the same overall appearance to a designer of ordinary
skill in the art. . 29

A. Linz does not remotely suggest the overall esthetic appearance of the
645 patent. 32

B. Samways even less suggests the overall esthetic visual appearance of the
645 patent.. 35

V. Secondary Considerations indicate that the 645 patent design is not

obvious. 38
A. The claimed design has experienced a great deal of commercial success. 39
B. Petitioners Campbell Soup and Trinity appropriated Patent Owners
design by making and using more than 300,000 display racks that display
Petitioners products according to the patented design. ....................... 43

VI. CONCLUSION 44

ii
 TABLE OF AUTHORITIES

Cases Page(s)

Cases

Advanced Display Sys. v. Kent State Univ., 212 F.3d 1272 (Fed. Cir. 2000) ................ 39

Alco Standard Corp. v. TVA, 808 F.2d 1490, 1 U.S.P.Q.2d 1337 (Fed. Cir. 1986) ...... 38

Apple, Inc. v. Samsung Electronics Co. Ltd., 678 F.3d 1314 (Fed. Cir. 2012) .......12, 30

ATAS Intl, Inc. v. Centria, IPR2013-00259, Paper 13 (PTAB Sept. 24, 2013)............ 12

Atofina v. Great Lakes Chem. Corp., 441 F.3d 991 (Fed. Cir. 2006)............................ 26

In re Cho, 813 F.2d 378, 1 U.S.P.Q.2d 1662 (Fed. Cir.1987) ....................................... 28

Cont'l Can Co. USA v. Monsanto Co., 948 F.2d 1264 (Fed. Cir. 1991) ....................... 26

Crystal Semiconductor Corp. v. Tritech Microelectronics Int'l, Inc., 246 F.3d 1336, 57
U.S.P.Q.2d 1953 (Fed. Cir. 2001).....16

Durling v. Spectrum Furniture Co., 101 F.3d 100 (Fed. Cir. 1996)....................6, 19, 21

Graham v. John Deere Co., 383 U.S. 1, 148 U.S.P.Q. 459 (1966). .............................. 38

In re Giuffrida, 527 Fed. Appx. 981(Fed. Cir. 2013), ................................................... 26

In re Harvey, 12 F.3d 1061, 29 U.S.P.Q.2d 1206 (Fed. Cir.1993). ........................passim

High Point Design LLC v. Buyers Direct, Inc., 730 F.3d 1301, 108 U.S.P.Q.2d 1183
(Fed. Cir. 2013) ............................................................................................................. 6

Hyatt v. Dudas, 492 F.3d 1365, 83 USPQ2d 1373 (Fed. Cir. 2007) ............................. 17

Jore Corp. v. Kouvato, Inc., 117 Fed. Appx. 761 (Fed. Cir. 2005) ............................... 13

KCJ Corp. v. Kinetic Concepts, Inc., 223 F.3d 1351, 1356, 55 U.S.P.Q.2d 1835 (Fed.
Cir. 2000) .................................................................................................................... 16
iii
In re Magnum Oil Tools Int'l, Ltd., 2016 WL 3974202 (Fed. Cir. July 25, 2016) .......... 2

In re Oelrich, 666 F.2d 578 (CCPA 1981) .................................................................... 26

Par Pharmaceuticals, Inc. v. TWI Pharmaceuticals, Inc., 773 F.3d 1186, 112
U.S.P.Q.2d 1945(Fed. Cir. 2014)................................................................................ 28

In re Rosen, 673 F.2d 388, 213 U.S.P.Q. 347 (CCPA 1982) .................................... 6, 12

Specialty Composites v. Cabot Corp., 845 F.2d 981, 6 U.S.P.Q.2D 1601 (Fed. Cir.
1988) ........................................................................................................................... 39

Sport Dimension, Inc. v. The Coleman Company, 820 F.3d 1316, 1323, 118
U.S.P.Q.2d 1607 (Fed. Cir. 2016)............................................................................... 21

Statutes
35 U.S.C. 103(a)............................................................................................................ 1

35 U.S.C. 316(e)............................................................................................................ 2

35 U.S.C. sec. 112 .......................................................................................................... 17

iv
 EXHIBIT LIST

Ex. No. Brief Description

2001 Declaration of Terry J. Johnson

2002 U.S. Design Patent No. D621,645

2003 U.S. patent no. D405,622 to Linz

2004 Great Britain published patent application no. 2,303,624 of Samways

Photograph of model of Gamon display rack provided to

2005 Petitioner Campbell Soup in late 2002

2006 Photograph of installed Gamon display racks provided to Petitioner

Campbell Soup in late 2002
2007 System Overhaul, P.O.P. Times, February 2004

2008 Photograph of Gamon display for Campbell Soup Ready-To-Serve

soup.

2009 Campbell Soup Company, SEC Form 10K for 2005, page 9

2010 Campbell Soup Company, SEC Form 10K for 2006, pages 10 and 11

2011 Campbell Soup Company, SEC Form 10K for 2007, page 12

2012 Photograph of Petitioners Display Rack for Campbell condensed

soup

2013 Photograph of Petitioners Display Rack for Campbell Ready-To-

Serve soup

v
 I. INTRODUCTION

Patent Owner Gamon Plus, Inc. (herein Gamon) submit this merits response

to the Petition for Inter Partes Review (Paper 2, hereafter Petition) by Petitioners

Campbell Soup Company and Campbell Sales Company (collectively, Campbell),

and Trinity Manufacturing, LLC. (herein, Trinity).

On March 30, 2017, the Patent Trial and Appeal Board (the Board)

instituted trial of Gamons U.S. design patent no. D621,645 (the 645 patent) on

three grounds asserted by Petitioners:

Ground 1: whether the sole claim is obvious under 35 U.S.C. 103(a)

based on British patent application no. 2,303,624 (Exhibit 2004, herein

Samways) alone;

Ground 2: whether the sole claim is obvious under 35 U.S.C. 103(a)

based on Samways, as primary reference, in argued combination with

U.S. patent no. D405,622 (Exhibit 2003, herein Linz)

Ground 3: whether the sole claim is obvious under 35 U.S.C. 103(a)

based on Linz, as primary reference, in argued combination with

Samways.

Paper 13 (Institution Decision) at 32.

The Board denied review of any other grounds in the Petition. Id.

1
I. SUMMARY OF WHY THE BOARD SHOULD FIND THAT
PETITONERS HAVE NOT SHOWN UNPATENTABLILITY

In an inter partes review . . . , the petitioner shall have the burden of proving

a proposition of unpatentability by a preponderance of the evidence. 35 U.S.C.

316(e). This burden remains with the petitioner through the proceeding. In re

Magnum Oil Tools Int'l, Ltd., 2016 WL 3974202, at *5-*7 (Fed. Cir. July 25, 2016).

The burden never shifts to the patent owner to prove that its claim is novel or

nonobviousness. See id.

The Board should find that Petitioners did not carry their burden to prove

unpatentability of the design claimed in the 645 patent because:

(a) Petitioners evidence does not establish either Samways or Linz as a

substantially similar Rosen reference.

(b) Petitioners argued modifications of Linz and Samways based on posited

knowledge of a designer of ordinary skill in the art to try to make them more like

the claimed design are impermissible hindsight and are not supported by credible

evidence.

(c) Petitioners have failed to prove that, even if combined, the Linz and

Samways references suggest all aspects of the claim or render the claim obvious to

a designer of ordinary skill in the art.

2
 (d) The commercial success of the patented design, evidenced by substantially

increased sales by Petitioners using the design for their products, Petitioners

purchase of tens of millions of dollars of Patent Owners displays providing the

claimed design, and the Petitioners having subsequently slavishly copied the design

of the 645 patent are all secondary considerations that overcome all of Petitioners

contentions of obviousness of the 645 patent.

The 645 Patent Claim

The 645 patent claims The ornamental design for a gravity feed dispenser

display, as shown and described, and the disclosure has a single perspective view

of the claimed design, with portions of the structure in phantom and not included in

the patented design.

The 645 patent (design elements in blue)

The portions of the structure that form the design are shown below highlighted

3
in blue.

The Board characterized the elements of the design claim in its Decision to

Institute this IPR, when it observed:

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 rectangular surface area, identified by the parties as
an access door or label area, is curved convexly forward.
The label area is taller vertically than it is wide horizontally.
Below the label area there is a cylindrical object having a
generally cylindrical outer surface. At least a portion of the
cylindrical object is positioned slightly forward of and below
the label area.
Institution Decision at 5.

The Board however failed to note other aspects of the design claim that are

very important esthetically, i.e., 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. See Declaration of Terry J. Johnson, para. 4.

Specifically, the horizontal cylindrical article is positioned more than slightly

forward of the label area, but most of the 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.,

para. 5. This spatial relationship may be seen in the annotated version of the patent

figure below. The combination results in a compact-appearing display with an

ornamental appearance of openness around the cylindrical article by the rearward

positioning of the label area. Id.

4
 label area

most of the
cylindrical article
is forward of the
label area

height of
label area

The 645 patent, annotated to show spatial relationships

In addition, 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.

The claimed design has met with great commercial success, and Petitioners

have copied the design for their products, countering Petitioners arguments of

obviousness.

As will be shown here, Petitioners cannot meet their burden of proving

obviousness of this design.

5
III. PETITIONERS HAVE FAILED TO PRESENT A PRIMARY
REFERENCE THAT LOOKS BASICALLY THE SAME AS THE
CLAIMED DESIGN.

A. A finding of obviousness requires a primary reference that creates

basically the same visual impression as the patented design.

To show that a patented design is obvious requires application of a two-part test

as set out in, e.g., Durling v. Spectrum Furniture Co., 101 F.3d 100, 103, (Fed. Cir.

1996).

The first step is to identify a primary reference. In re Rosen, 673 F.2d 388, 391,

213 U.S.P.Q. 347 (CCPA 1982). That primary reference must be something in

existence, the design characteristics of which are basically the same as the claimed

design. Id, 673 F.2d at 391.

To determine whether a reference meets the threshold of being a primary

reference, it is necessary to (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 LLC v. Buyers

Direct, Inc., 730 F.3d 1301, 1311-12, 108 U.S.P.Q.2d 1183 (Fed. Cir. 2013) [emphasis

added].

A proposed reference cannot be a primary reference for an obviousness

rejection if major modifications are required to make the prior art reference look like

the claimed design. In re Harvey, 12 F.3d 1061, 1063, 29 U.S.P.Q.2d 1206 (Fed. Cir.

6
1993). Where there are differences between the proposed primary reference and the

claimed design, they must be de minimis in nature and unrelated to the overall esthetic

appearance of the design. Id., 12 F.3d at 1065-66.

Absent a proper primary reference, an obviousness determination of the design

is not possible. In re Rosen, 673 F.2d at 391.

B. Neither Samways nor Linz can be primary references against the

claimed design of the 645 patent.

Applying the requirement of a proper primary reference to the asserted

Grounds for obviousness of the 645 patent, it is clear neither Linz or Samways can

serve as a primary reference for an obviousness showing against the 645 patent,

because neither reference shows something in existence that, without substantial

modification, creates basically the same visual impression as the design of the 645

patent. Absent those primary references, obviousness the 645 patent has not been

established by Petitioners.

In the Decision to Institute this IPR, the Board did not rely on the actual visual

impression given by the respective Samways or Linz references, but, based on the

assertions of Petitioners expert James Gandy, allowed the Petitioners to posit

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. See, Institution Decision at 18 (modification of

7
Linz based to add a cylindrical article), and at 26-27 (modification of Samways to

have one jar dispensing cradle that extends the full width of the sign above it).

. Even with those impermissible and unjustifiable modifications neither Linz

nor Samways provides the same visual impression as the patented design, but where

those modifications are not added to Linz or Samways they are strikingly different

form the 645 patent, and therefore neither Linz nor Samways can serve as a primary

reference against the 645 patent design.

1. Samways, without modification, does not give a visual impression

that is basically the same as that of the design of the 646 patent.

The Samways reference has three embodiments, only one of which, the second

embodiment shown in Samways FIGS. 3 to 5, was relied on in the Institution

Decision to institute an IPR. See Institution Decision at 26 and at 28-29.

In FIGS. 3 to 5, Samways shows a dispenser 10 that includes a front fascia 17

hinged or clipped on the dispenser housing. See, Samways, page 9, lines 2 to 11.

The dispenser 10 has two distinct laterally side-by-side delivery paths for coffee jars

100, which have a lower cylindrical body and a top lid, as seen in FIG. 4 Samways,

p. 9, lines 25 to 27, and FIG. 4.

In Samways, the coffee jars 100 roll down in each delivery path to respective

outlets 18 and 19, which have two side-by-side box-like storage locations 20 and 21

for placement of a jar 100 by a customer, each of which storage locations 20 and 21

8
extends only halfway across the dispenser 10 and slightly less than half the width of

the large curved fascia 17 held just above it. Samways, page 10, line 34 to page 11,

line 5 and FIG. 4. The fascia 17 of Samways is quite tall and extends down to close

to the jars 100. See, Samways, FIGS. 4 and 5.

front
fascia

coffee jar
with top

Samways, FIG. 5 (highlighted) 645 patent figure (highlighted)

The side-by-side comparison above of the embodiment shown in Samways

FIGS. 3 to 5 with the design of the 645 patent shows that the two dispensers

produce visual appearances that are completely dissimilar where compared at a scale

in which the cylindrical article of the 645 patent is about the same diameter as the

9
coffee jar of Samways. See, Declaration of Terry Johnson, para. 9. The size and

location of the fascia of Samways relative to the jars gives an asymmetrical visual

appearance relative to the very small coffee jar, as well as providing a top-heavy

appearance where the fascia represents more than 80% of the vertical height of the

dispenser, as well as most of the forward facing surface of the dispenser, compared

to less than 50% in the 645 patent. Id.

Samways, FIG. 3 (highlighted) 645 patent figure (highlighted)

10
 The above side-by-side comparison of the perspective view of Samways with

the 645 patent design makes it clear that, in contrast to an efficient and esthetically

pleasing display shown in the 645 patent, Samways is a lopsided and very crowded

display, most of which is the fascia or sign area. Id., para. 10.

Comparing Samways with the design of the 645 patent, it is apparent that

Samways differs in many ways from the design of the 645 patent, and these include

the following substantial differences:

1. Samways does not have a cylindrical article centered symmetrically below a

label area, but asymmetrically off to the side;

2. Samways does not have a label area about as wide as the cylindrical article

is tall, but instead the Samways fascia more than twice as wide as the height of

a jar;

3. Samways does not have a label area that is around 1.5 to not more than

about 2 times its width in height, but the Samways fascia has a height

substantially more than twice its width (see Samways FIG. 5);

4. Samways does not show a label area supported above a cylindrical article

height that is about the height of the label area but rather the fascia of

Samways is at least four times as tall as the distance of the fascia above the

coffee jar storage location; and

11
 5. Samways does not show a smooth-sided cylindrical article but jars having

separate tops.

Together these many differences in Samways give it a markedly different

visual impression compared to that given by the design of the 645 patent,

disqualifying Samways as a primary reference. It cannot be said that the awkward

visual impression of Samways is basically the same as the design of the 645

patent, which is compact and elegant by comparison. See, In re Rosen, 673 F.2d 388,

391, 213 U.S.P.Q. 347 (CCPA 1982) (Reference could not serve as primary

reference because it does not give the same visual impression of lightness and

suspension in space conveyed by the patented design.)

Indeed, simply the asymmetrical placement of the coffee jar in Samways is

sufficient to destroy any arguable similarity of Samways to the 645 patent design

and its use as a primary reference. See, e.g., ATAS Intl, Inc. v. Centria, IPR2013-

00259 at *16 (PTAB Sept. 24, 2013) (asymmetric/irregular and symmetric regularly-

repeating designs were not basically the same to allow one to be a primary

reference against the design claim of the other); see also, Apple, Inc. v. Samsung

Electronics Co. Ltd., 678 F.3d 1314, 1330 (Fed. Cir. 2012)(identifying asymmetry as

the first reason why a reference was not suitable as a primary reference against a

symmetrical design).

In fact, the Board, in the Decision to institute this IPR held that Samways was

12
different enough from the 645 patent design that Samways did not anticipate the

645 patent design because the Samways dispenser has two side-by-side pathways.

See Institution Decision at 24.The Board further rejected the argument of Petitioner

that Samways could be modified by other alleged embodiments for the purposes of

anticipating the 645 patent. Id.

Therefore the cited embodiment of Samways, if not modified, cannot be said

to give basically the same visual impression as the design of the 645 patent, and,

consequently, Samways, absent any modification, cannot serve as a primary

reference against the 645 patent.

2. Petitioners argued modifications of Samways to try to make it

look more like the 645 patent are a major modification that is
not supported by the reference or by any credible evidence,
and excludes the modified Samways as a primary reference.

The unmodified Samways reference is unusable as a primary reference due to

its marked differences from the design of the 645 patent.

However, to try to circumvent the requirement of a primary reference that

looks basically the same as the design of the 645 patent, Petitioners have argued that

some radical modifications in the Samways reference can be made to try to make it

more resemble the design of the 645 patent.

a. Petitioners argued modifications of Samways are

substantial and cannot make it a primary reference.

A piece of prior art cannot serve as the primary reference if major

13
modification is required to make the reference look like the claimed design. Jore

Corp. v. Kouvato, Inc., 117 Fed. Appx. 761, 763 (Fed. Cir. 2005 citing In re Harvey,

12 F.3d 1061,1063 (Fed. Cir.1993).

Remove original jars

Introduce different
shaped cylindrical can

Remove central
structure
separating paths

X X
X

Samways, FIG. 5
(showing modifications posited by Petitioners)

Petitioners argue that Samways may be modified as set out in the diagram

above. These argued modifications of Samways involve arbitrarily changing the

shape and dimensions of the articles (coffee jars) in the dispenser and removing parts

of the dispenser to make it function with those changed articles.

14
 The changes urged by Petitioners are

1. replacement of the two serpentine paths of Samways with one path;

2. centering the path on the dispenser so as to be symmetrical

3. expanding storage spaces to the width of the dispenser, and

4. creating a new jar that is twice as tall but of the same diameter as the

earlier coffee jars in the dispenser.

Petitioners contend that these modifications are de minimis, but that is clearly

absurd. The changes that Petitioners expert propounds are basically a reconstruction

of the device that, if nothing else, creates symmetry in the dispenser that it did not

have previously.

That esthetic symmetry is not a de minimis modification, since a difference of

asymmetrical versus symmetrical visual appearance has been held to be significant

and substantial enough to exclude a design from being a primary reference. See,e.g.,

ATAS Intl Inc. v. Centria, IPR2013-00259 at *16.

It also may be observed that the changes posited by Petitioners do not really

make the Samways top-heavy dispenser look anything like the desirable and

commercially-successful design of the 645 patent, either to an ordinary observer or

to one of ordinary skill in the art of product dispensers. See Declaration of Terry

Johnson, para. 14.

15
 b. The assertion that Samways describes a dispenser with only
one path based on a claim reciting only one path in its
elements is nonsense.

Petitioners expert, James Gandy, a former U.S. Patent & Trademark Office

Examiner, has provided a declaration that presents the basis of the Petitioners

unjustifiable assertion that the Samways reference describes a dispenser with only

one serpentine path.

The argument presented by former Examiner Gandy is that Samways in its

claim 1 recites only a single serpentine path in the dispenser that it claims, and he

extrapolates from that Samways describes an embodiment having only one path. See

Petitioners Exhibit 1002, Declaration of James Gandy, para. 62 (However,

Samways claims a dispenser with only one serpentine delivery path. Ex. 1009, at 26,

(specification page 17), claim 1. A second serpentine delivery path is added to the

claims in claim 12.[emphasis added]).

In fact, however, claim 1 of Samways reads:

1. A dispenser comprising:
a serpentine delivery path ; and
a first outlet for the delivery path .

Samways, page 26 [emphasis and ellipsis added].

The Court of Appeals for the Federal Circuit has clearly held that the

indefinite articles a or an, when used in a patent claim, mean one or more in

claims containing open-ended transitional phrases such as comprising. Crystal

16
Semiconductor Corp. v. Tritech Microelectronics Int'l, Inc., 246 F.3d 1336, 1347, 57

U.S.P.Q.2d 1953, 1958 (Fed. Cir. 2001), citing KCJ Corp. v. Kinetic Concepts, Inc.,

223 F.3d 1351, 1356, 55 U.S.P.Q.2d 1835, 1839 (Fed. Cir. 2000).

Under this rule of law, the proper reading of the claim is not only one as Mr.

Gandy asserts, but rather one or more serpentine paths. That does not suggest

necessarily only one path, and when read in the light of the specification, the claims

clearly do not define a dispenser with one and only one pathway.

The fact that Samways does not describe a dispenser with only one, and no

more than one, path extending across the width of the dispenser and the fascia is

clear in light of the fact that Samways could not have a claim that expressed such a

structure, i.e., a claim that provided:

A dispenser comprising only one, and no more than one,

serpentine delivery path, wherein the serpentine path is as
wide as the dispenser and centered under a fascia .

Such a claim could not be presented in Samways because the disclosure of the

Samways reference does not adequately describe such a design. The Samways

disclosure would be inadequate under the enablement and description requirements

of 35 U.S.C. sec. 112 to allow presentation of such a utility patent claim because that

utility claim language does not read on any embodiment shown in the Samways

reference, and consequently, the claim would not be adequately supported for section

112. See, e.g., Hyatt v. Dudas, 492 F.3d 1365, 1371, 83 USPQ2d 1373, 1376-1377

17
(Fed. Cir. 2007). The Samways disclosure is even more clearly inadequate in the

context of design patents, since Samways clearly fails to suggest or support the

argued appearance of the dispenser, requiring an even higher level of disclosure.

Finally, it is clear that the modifications urged by the Petitioners expert are

loaded with hindsight. even if claim 1 could be read to teach a single path version of

Samways, the least violence to the design would be by dropping one of the paths of

the two-path design, as shown below.

Samways FIG. 5, modified so as to have one path

This alteration of Samways has virtually no effect on the total visual

impression given by the dispenser in terms of the asymmetry of the dispenser and the

18
relative width of the fascia and the coffee jars.

It is therefore clear that Petitioners proposed alteration of Samways

introduces new structural elements purely from hindsight using the patented design

as a guide, not based on the reference itself. Petitioners contention that claim 1 of

Samways describes a single-path dispenser is therefore completely untenable.

Samways does not contemplate, claim, and more importantly disclose an

embodiment having only one delivery path. That statement is dead wrong and based

on a nonsensical reading of the claims of the Samways reference.

c. Samways cannot be modified in a way obvious to an ordinary

designer and then used as a primary reference because the
alleged obvious variant is not something in existence and is
not supported by any competent evidence.

Petitioners expert also asserts that [t]o the extent that it can be argued that

Samways does not disclose an ornamental design having only one dispensing

pathway per access door/label area, it would be obvious for a designer of ordinary

skill in the art to modify the teachings of Samways to have only one dispensing

pathway. Declaration of James Gandy, page 32-33, para. 67. Petitioners goes on to

argue that food cans may be of different sizes and that the designer would alter

Samways to have accommodate a can twice as tall as the coffee jars of Samways,

and that there would be advantages to the alterations to Samways.

This assertion is irrelevant to the use of Samways as a primary reference

19
because the rule regarding primary references is that the primary reference must be

a something in existence, the design characteristics of which are basically the same

as the claimed design. Durling v. Spectrum Furniture Co., 101 F.3d 100, 103, 40

U.S.P.Q.2d 1788, 1790 (Fed. Cir.1996)[emphasis supplied], citing, In re Rosen, 673

F.2d at 391, 213 U.S.P.Q. at 350.

Petitioners argued obvious variant of Samways is clearly not in existence

but has been created (unjustifiably) from the Samways design after the fact. This is

not a minor de minimis adjustment in appearance of an existing design that does not

affect the visual impression of the reference, but a radical revision that Petitioners

argue makes Samways look basically like the claimed design, which is not

permissible in a design patent obviousness analysis. See, In re Harvey, 12 F.3d

1061, 1065, 29 U.S.P.Q.2d 1206, 1210 (Fed. Cir. 1993) As such, Petitioners altered

version of Samways with a single centered path and an article as tall as the fascia of

Samways is wide, is not something in existence as required by Durling and Rosen,

and cannot be a primary reference.

Second, the assertion of an obvious variant of Samways is based purely and

solely on the opinion of Mr. Gandy, a former Examiner at the U.S. Patent &

Trademark Office. Mr. Gandy as an Examiner may have expert knowledge of the

legal standard that the U.S. Patent & Trademark Office would apply in examining an

application for a design in the product dispenser art. However, as far as can be seen

20
from his declaration, Mr. Gandy has never worked in the area of designing product

dispensers apart from work as an Examiner, and he therefore cannot provide opinion

testimony as to what the actual substantive knowledge of a designer of ordinary skill

in the art would be, absent some established extrinsic factual basis. His unsupported

statement of obviousness therefore can only be read as auxiliary attorney argument,

not as evidence. See, e.g., Sport Dimension, Inc. v. The Coleman Company, 820 F.3d

1316, 1323, 118 U.S.P.Q.2d 1607 (Fed. Cir. 2016)(District Court did not abuse

discretion in excluding testimony of expert, who while an industrial design

consultant for four decades, had no experience whatsoever in the specific field of the

articles at issue, personal flotation devices).

To summarize the foregoing points regarding Samways:

Samways without modification cannot be a primary reference against the 645

patent because it does not give basically the same visual impression as the

645 patent design.

Samways cannot be altered as radically as Petitioners demand to be a design

that can serve as a primary reference against the 645 patent because such an

alteration would be substantial and not de minimis.

Samways also cannot be altered as Petitioners demand because the reference

does not describe a centered symmetrical single path dispenser, and the

21
 Samways design altered by allegedly obvious variants by a hypothetical

designer in the art is not something in existence, as required for a primary

reference by Durling and Rosen.

Samways therefore clearly cannot be a primary reference , and in its absence

as a primary reference, Grounds 1 and 2 necessarily fail to establish unpatentability

of the design of the 645 patent.

3. Linz, without modification, does not give a visual impression

that is basically the same as that of the design of the 646
patent.

Linz is a design patent entitled DISPLAY RACK, and it shows a display rack

using six figures, largely in phantom lines. See Linz, page 1. The rack has a

forwardly-disposed curved surface and below it a space defined by two bottom

pieces that curve upwardly with a slot between them. Id. at FIG. 1.

Nowhere in Linz does the reference describe, show or suggest the types of

articles that might be displayed in this rack, and the Board noted this fact in its

analysis rejecting Petitioners assertions of anticipation and of obviousness based on

Linz. See, Institution Decision at *12 (the designs are not substantially the same

because the lack of a cylindrical object in Linz creates a distinct overall ornamental

impression.), at *14 (Petitioner has failed to establish sufficiently how a designer

of ordinary skill in the art would appreciate the size, shape and placement of the

22
object based on the teaching of Linz alone.), and at *18 (Linz does not display a

cylindrical object below the label area and behind the stops ).

Linz, FIG. 1 (highlighted) 645 patent figure (highlighted)

The above side-by-side comparison of the perspective view of Linz

(highlighted but not altered otherwise) with the figure of the645 patent, with the

design components highlighted, shows a distinct difference of the appearance of Linz

relative to the 645 patent for a number of reasons.

Specifically, Linz also does not show or suggest these other features of the

appearance of the claimed design of the 645 patent:

1. a cylindrical object, or any object, on display; and

2. a curved label area that extends essentially to the sides of the rack, Linz

23
 having instead flat strips extending laterally inward from the sides a non-

negligible distance that makes the curved label area between the strips extend

across only about 5/6 of the rack width.

See, Declaration of Terry Johnson, para. 16.

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.

4. Petitioners have improperly created and added a cylindrical

article of arbitrary appearance to Linz to try to make it a
primary reference.

Petitioners expert concedes that the Linz patent does not disclose a can. See,

Declaration of James Gandy, page 20, para. 44. Petitioners expert however argues

that Linz indicates to a designer of ordinary skill in the art that it is designed to

dispense cans, and proposes a modified Linz reference with a can of his own

creation. Id. at page 20, para. 45. However, these argued alterations of Linz to try to

make it look more like the design of the 645 patent are impermissible and

unjustifiable on the record, and Linz cannot be altered to be used as a primary

reference.

24
 a. The addition of a cylindrical can to Linz is not a de
minimis modification of the reference.

Where there are differences between the proposed primary reference and the

claimed design, they must be de minimis in nature and unrelated to the overall esthetic

appearance of the design. In re Harvey, 12 F.3d at 1065-66. The absence of a can in

Linz is not a de minimis deficiency of Linz as a primary reference.

Whether the creation and addition of a can of arbitrary appearance to the rack

of Linz is obvious, as Petitioners assert, or whether the change would negatively

impact the fundamental characteristic of Linz that the Board considered in its

reasoning in instituting this IPR, are irrelevant issues. The only question is whether

the argued alteration of Linz is more than de minimis, and consequently improper.

By Petitioners logic, the proposed addition of their arbitrarily configured can

to Linz makes it a suitable primary reference that looks basically the same as the

design of the 645 patent. However, Linz without the Petitioners proposed can lacks

a significant element of the overall appearance of the design, and, without the can

added, clearly fails to give a visual impression that is basically the same as the 645

patent. The argued change to Linz is therefore substantial, and not de minimis, in

terms of changing the visual appearance of the reference. The argued addition of the

can to Linz is therefore not permissible under In re Harvey, and the Linz reference

design with an added cylindrical can of arbitrary appearance cannot be asserted as a

25
primary reference against the 645 patent.

b. Petitioners arguments for placement of a cylindrical can in the

Linz display are based on a hindsight-guided theory of inherency
and on utility patent concepts of obviousness that have no place in a
design patent analysis.

Petitioners assert that Linz inherently discloses that it is used with

cylindrically shaped objects, e.g., cans based on 1. the curved shape of the bottom

of Linz, and 2. a curved loading area for the dispenser. See, Declaration of James

Gandy, page 21, para. 45.

First, the can with its arbitrary appearance that Petitioners have formulated in

the Linz rack cannot be inherent to Linz. Inherency requires that the undisclosed

feature necessarily is present in the reference. See, e.g., In re Giuffrida, 527 Fed.

Appx. 981, 984-985 (Fed. Cir. July 18, 2013), citing Atofina v. Great Lakes Chem.

Corp., 441 F.3d 991, 999 (Fed. Cir. 2006). See also Cont'l Can Co. USA v.

Monsanto Co., 948 F.2d 1264, 1268 (Fed. Cir. 1991). Mere probability is not

enough to find that the prior art inherently discloses something not explicitly present.

In re Oelrich, 666 F.2d 578, 581 (CCPA 1981).

Clearly, a variety of cylindrical and non-cylindrical articles might be used with

the Linz rack. See Declaration of Terry Johnson, para. 19. The particular can with its

arbitrary appearance as proposed by Petitioners might arguendo be one of those

possibilities, but it is not the only necessary article that could be used. Therefore its

26
addition cannot be supported on a theory of inherency.

Since the Linz reference itself does not inevitably necessitate the presence of

the can proposed by Petitioners, that can and its appearance are clearly not inherent

in Linz, and can only be the result of Petitioners using improper hindsight in trying

to create a viable primary reference out of Linz.

In addition, and probably more significantly, in considering any reference in the

ornamental design context, the focus must be on appearances and not uses of the prior

art. In re Harvey, 12 F.3d at 1064. Relying on design concepts rather than actual

appearances of the prior art reference is improper. Id.

Petitioners argue insertion of a specific cylindrical object of their own

imagining because it appeared that Linz was designed to receive and display a

cylindrical object, e.g., a can. Petitioners proposed can addition to Linz is based

not only on their general functional analysis of the rack, but it is infused with

hindsight of the appearance of a cylindrical object as seen in the 645 patent design.

This use of the design concept of Linz in modifying the reference is directly

contrary to the holding in In re Harvey, which rejected a finding of obviousness based

on reliance on the use of the prior art for determining patentability of an ornamental

design. See, In re Harvey, 12 F.3d at 1064. In that case, the Federal Circuit held that

the Board should have focused on actual appearances, rather than design concepts.

Id.

27
 The reading of Linz urged by Petitioners is clearly based on a utility-patent-

type functional obviousness analysis and design concepts about the functional

operation of the Linz display. However, those functional theories are irrelevant to the

ornamental appearance of Linz, and the actual appearance of an object in the Linz

display rack is completely unknown, as the Board noted repeatedly in the decision to

institute this IPR. See Institution Decision at 13 and 14.

Furthermore, the doctrine of inherency is applied usually to anticipation in the

utility patent area, and its extension to an obviousness analysis in the utility patent

area is a very high standard to meet. See, e.g., Par Pharmaceuticals, Inc. v. TWI

Pharmaceuticals, Inc., 773 F.3d 1186, 1195-96, 112 U.S.P.Q.2d 1945, 1952 (Fed.

Cir 2014). Bringing the utility-patent inherency across to the design patent area to

address an issue of obviousness in the design-patent area seems to be unavoidably

improper.

The Federal Circuit, in fact, has held as much in In re Cho, 813 F.2d 378, 1

U.S.P.Q.2d 1662 (Fed. Cir.1987). In that case, the Board of Patent Appeals and

Interferences analyzed the prior art as if for a utility patent and determined that it

would have been obvious to supply recessed flaps in a bottle cap in the utility

context. Id., 813 F.2d at 382. The Board then concluded that such bottle caps would

inherently include whatever aesthetic value is furnished by the design in question.

Id. The Federal Circuit reversed, holding that design obviousness does not follow

28
from utility obviousness. Id.

The hindsight-guided creation of a can in Linz on the theory that it is obvious

is therefore impermissible because the argued alteration is more than de minimis. The

Petitioners assertion that a can of the given appearance is inherent in Linz is based

on utility/functionality theories is guided by hindsight and cannot be applied to an

analysis of ornamental appearance in the design patent context.

Absent some indication of the actual appearance of the displayed object(s)

in Linz, as required by In re Harvey, Linz is simply an empty rack that does not

provide basically the same visual impression as the combination ornamental design

of the 645 patent.

As a result, Linz cannot be asserted as a primary reference against the 645

patent, and Petitioners assertion of obviousness relying on it necessarily fails.

IV. Even if the Linz and Samways references were combined, the resulting
design would not have the same overall appearance to a designer of
ordinary skill in the art.

If the first part of the test for obviousness is satisfied, i.e., a proper primary

reference shows a design that is basically the same as the claimed design, then the

obviousness analysis of the design proceeds to the second part of the test, whether

other references can modify the reference to create a design that has the same overall

visual appearance as the claimed design. Apple, Inc. v. Samsung Electronics Co. Ltd.,

29
678 F.3d 1314, 1329 (Fed. Cir. 2012). Obviousness must be evaluated from the

perspective of the designer of ordinary skill. Apple, 678 F.3d at 1329.

Here, even assuming arguendo that either Samways or Linz could properly

serve as a primary reference, applying the second part of the test, it is clear that

Petitioners cannot show that a designer of ordinary skill in the art could combine the

teaching of the Linz and Samways references in any proper way to produce exactly

the same as the overall appearance of the design of the 645 patent to a designer of

ordinary skill in the art. The relatively ungainly and unappealing display racks of Linz

or Samways do not remotely suggest what a designer of ordinary skill in the art would

immediately recognize as the esthetic advantages of the overall appearance of the

design of the 645 patent. See Declaration of Terry Johnson, para. 26.

The design of the 645 patent was developed for the cans of condensed soup

sold by Petitioners Campbell Soup Company and Campbell Sales Company, and the

cylindrical article shown in the 645 patent is dimensioned the same as a Campbells

condensed soup can. Id. at para. 27. Those cans have a height of about four inches

and a diameter of about 2.5 inches, with a ratio of height to diameter of approximately

1.6:1. Id.

The curved label area or door above the cylindrical article in the 645 patent

has a height to width ratio that is approximately the same as the height to width ratio

of the soup cans, and to a degree gives the visual impression of a larger version of the

30
cylindrical article below it. Id.. This impression is enhanced by the fact that the curved

surface above cylindrical article extends substantially the entire width of the display

and the height of the can on its side. Id..

For ornamental or esthetic reasons, the curved label area in the 645 patent is

supported at a height above the sideways cylindrical article that is about the height of

the label area, and the label area is recessed somewhat rearward so that the cylindrical

article is largely forward of the label area and out from under it, to make it seem more

accessible to a customer. See Declaration of Terry Johnson, para. 28.

label area
most of the
cylindrical article
is forward of the
label area

height of
label area

The 645 patent, annotated to show spatial relationships

As may be seen in the annotated diagram of the figure of the 645 patent above,

31
these spatial relationships give rise to a sense of space and availability of the

cylindrical article. Id., para. 28.

This overall esthetic appearance would be understood by a designer of ordinary

skill in the art, and it is clearly not offered by Linz or Samways.

A. Linz does not remotely suggest the overall esthetic

appearance of the 645 patent.

Linz does not remotely suggest such an overall esthetic appearance such as that

of the design of the 645 patent.

5/6d
1/12*d 1/12*d

Linz, FIG. 2, annotated

As may be seen in the diagram above from FIG. 2 of Linz, the curved label of

Linz is held and extends between two flat strips that together take up about 1/6 of the

32
lateral width of the rack of Linz, allowing the curved label area only 5/6 or about 83%

of the lateral width of the rack. See Declaration of Terry Johnson, para. 29. This

narrowed lateral width of the curved label area results in a loss of the sense in the

645 patent that the label area is similar to a large can. Declaration of Terry Johnson,

para. 31. That is especially the case where a series of racks are on a shelf, as in Linz

FIG. 6, reproduced below, because the width of the flat strips is doubled between the

labels of adjacent racks, and this interrupts the series of curved shapes. Id. m.

Linz, FIG. 6 (highlighted)

Of course, no appearance or relative dimensions of an article in the display of

Linz can be determined for comparison to the shape and size of the label area,

assuming arguendo that an article could be permissibly inserted in Linz.

33
 Furthermore, Linz does not have its label area recessed rearwardly from the

front of the rack to the degree that the 645 patent design does, as is clear from the

annotated side view of Linz FIG. 3. Id., para. 32.

front of label area

space

hypothetical article
(purely arguendo)

Linz, FIG. 3 annotated

Petitioners cannot establish what the shape or size of an article in the Linz rack

would be, and also it is not clear where exactly it would be located, but, placing a

hypothetical article purely arguendo in the figure as far forward as possible, it is still

mostly rearward of the front end of the label area. Id., para. 33. Moreover, the

cramped opening available to access the article in the space behind the curved front

part of the Linz rack is esthetically far from the open sense created by the 645 patent

34
design. Id., para. 33.

Also, because the appearance of any article that might be placed in the Linz

rack is not shown, the relationship of the size and shape of the label area of Linz to

the size and shape of such an imagined article is not shown, and Linz therefore also

fails to suggest that dimensional relationship in the 645 patent of the cylindrical

object to the label area.

Linz therefore does not remotely suggest the overall appearance of the

important spatial and dimensional relationships of the components of the 645 patent

design.

B. Samways even less suggests the overall esthetic visual appearance

of the 645 patent.

Samways even less suggests the overall esthetic visual appearance of the 645

patent than Linz, as may be seen in the diagram below.

35
 height of fascia

1/5 * height
of fascia

Samways, FIG. 5, annotated

The fascia of Samways may be of similar aspect to that of the coffee jar 100 of

its display, but the fascia is twice as wide as the coffee jars are tall, and it is supported

at a height that is only about 1/5 of its height above the coffee jar. Declaration of

Terry Johnson, para. 35. The huge difference in size of the fascia relative to the coffee

jar distinguishes it from the coffee jar esthetically, and the fascia extends so low in

the display that the coffee jar is visible as coming from a side of a thin slot at the

bottom of the dispenser. Id.

This is in marked contrast with the label area and cylindrical article of the 645

patent, in which the label area and cylindrical can are more tied together by being

36
closer in size and symmetrically placed, but where the label area doesnt intrude

below the upper half of the front of the display.

Samways therefore also comes nowhere near suggesting the overall esthetic

appearance of the 645 patent.

Neither Samways nor Linz come near to suggesting the exact overall visual

appearance of the 645 patent, nor can the two references be fairly combined to do so

because the overall esthetic of the patented design is completely absent from both

references.

To the extent that Petitioners would seek to cherry-pick different attributes of

the two references and combine them with a resulting esthetic advantage not found

in either reference of the challenges, it is important to note that, in the design patent

context, it is reversible error to compare the visual impressions of selected, separate

features of the prior art designs to the [claimed design], rather than the visual

impression of the designs as a whole. In re Harvey, 12 F.3d 1061, 1065 (Fed. Cir.

1993) (citations omitted; emphasis added).

For the foregoing reasons, the Board should find that Petitioners have failed to

meet their burden of proving unpatentability of the claim of the 645 patent on

Grounds 1, 2 and 3.

37
V. Secondary Considerations indicate that the 645 patent design is not
obvious.

In addition to the above-expressed reasons why Petitioners have failed to

meet their burden to establish obviousness of the 645 patent, there are a number of

significant secondary considerations in the present case that serve as objective

evidence that the patented design is not obvious. Evidence of secondary

considerations may often be the most probative and cogent evidence of record, and

it may establish that an invention appearing to have been obvious in light of the

prior art was not. Alco Standard Corp. v. TVA, 808 F.2d 1490, 1 U.S.P.Q.2d 1337,

1344 (Fed. Cir. 1986).

In the context of an Inter Partes Review, Patent Owners evidence of

secondary considerations such as commercial success and industry praise are

weighed against the evidence of obviousness, and may result in a determination that

that the petitioner has not shown by a preponderance of the evidence that any claims

are unpatentable. See, World Bottling Cap, LLC v. Crown Packaging Technology,

Inc., IPR2015-01651, Paper 34 at *28 (PTAB January 19, 2017)

Secondary considerations that indicate nonobviousness include commercial

success, long felt need, and failure of others. Graham v. John Deere Co., 383 U.S.

1, 17-18, 148 U.S.P.Q. 459 (1966). In addition, it is compelling evidence of

nonobviousness when there is copying of the claimed invention. See Advanced

38
Display Sys. v. Kent State Univ., 212 F.3d 1272, 1285 (Fed. Cir. May 18, 2000), see

also Specialty Composites v. Cabot Corp., 845 F.2d 981, 991, 6 U.S.P.Q.2D (BNA)

1601, 1608 (Fed. Cir. 1988) (reasoning that an accused infringer's close copying of

the "claimed invention, rather than one in the public domain, is indicative of

nonobviousness").

There has been massive commercial success of the invention of the 645

patent both in terms of sales of display racks that provide the patented design to

cans of soup on display, as well as in sales of soup displayed with the ornamental

appearance of the design of the 645 patent.

Also, Petitioners Campbell Soup and Campbell Sales Company, originally

customers of Patent Owner, have widely used display racks made in concert with

Petitioner Trinity Industries for their soup products that were copied directly from

racks made by Patent Owner Gamon so as to display cans of Campbell soup with

the patented design.

A. The claimed design has experienced a great deal of commercial

success.

In late 2002, Gamon International, a corporate affiliate of Patent Owner Gamon

Plus, Inc., first delivered to Petitioner Campbell Soup Company, or its sales affiliate

Petitioner Campbell Sales Company, a number of display racks for condensed

Campbell Soup cans. Declaration of Terry Johnson, para. 38. Exemplary photographs

39
of that model of display may be seen in Exhibit 2005, which is a photograph of the

model of rack provided, and Exhibit 2006, which shows an actual installation with

Campbell condensed soup cans and advertising in place on the doors of the racks. See

Declaration of Terry Johnson, para. 38. These display racks displayed the condensed

Campbell Soup cans in the exact configuration of the design of the 645 patent. Id.

Campbell Soup subjected these displays to market testing in or around

Oakland, California, and after the test Terry Johnson, CEO of Gamon Plus, Inc., was

advised that the test showed that the use of the display racks resulted in an increase

in sales of condensed Campbell Soup cans in a range of about 9% to 14%. Id., para.

39.

Petitioner Campbell Soup was very excited about the increased sales from use

of the display rack that provided the 645 patent design, which it named the IQ-Shelf-

Maximizer, and entered into an exclusive Supply Agreement with Patent Owner in

June 2003 to buy the display racks. Id., para. 40.

By February 2004, Petitioner Campbell Soup had installed racks made by

Patent Owner Gamon in about 2,800 stores, with plans to expand to 14,000 more

stores by October 2005. Id. See Exhibit 2007.

During this period, Gamon began to also provide display racks for not only the

Campbell condensed soup cans (the specific can shown in the 645 patent design) but

also for Campbell Ready-To-Serve soups, which are in cans that are slightly larger

40
(5x3 inches instead of 4x2.5 inches). Id., para. 41. Gamon modified its racks by

scaling them up in size to correspond with the larger size of the Ready-To-Serve soup

cans, and the result was a larger version of the rack providing the design of the 645

patent. Id., para. 42; see also Exhibit 2008 (showing the relative size of the label area

and cans of a Gamon display for Campbell Ready-To-Serve soup).

Gamon also at some point provided a slight redesign of the Gamon display

racks for both the condensed and Ready-To-Serve soups cans by providing the label

areas of the Gamon displays with a frame around the prevent theft of the advertising

for the soups. Id.. The frame was very narrow and did not affect the essential visual

appearance of the display, i.e., the label area extending substantially the width of the

display or the height of the can lying in the rack. Id.

Petitioner Campbell Soup found that use of Gamons display racks resulted in

increased sales, and continued to order display racks from Patent Owner Gamon,

renewing the Supply Agreement in 2005 and in 2008. Id., para. 44. Campbell Soup

reported increases in soup sales in the years 2003 to 2008 and in its Form 10K annual

corporate reports to the SEC in 2005, 2006 and 2007 ascribed at least some the

increase in sales of soup to the gravity feed shelving systems installed in retail

stores, meaning the Gamon display racks. Id. See, also, Exhibit 2009, Campbell

Soup Company, SEC Form 10K for 2005; Exhibit 2010, Campbell Soup Company,

SEC Form 10K for 2006; Exhibit 2011, Campbell Soup Company, SEC Form 10K

41
for 2007. By about 2009, Petitioner Campbell Soup had installed the Gamon display

racks in about 30,000 stores, which represented almost all of the significant

supermarkets and stores in the US marketplace. Declaration of Terry Johnson, para.

45. Total sales of the Gamon display racks to Campbell Soup by 2009 had totaled

approximately $31,000,000.00. Id.

Sales of Campbell Soup from this group of stores can be estimated to have

represented at least 95% of Campbell Soups U.S. sales of condensed and Ready-To-

Serve soup, and total US sales of those soups represented over $1 billion a year for

the years 2005, 2006 and 2007. Id., para. 46.

If even a conservative one-percent of sales of those soups resulted from the use

of Gamon display racks, it would constitute $10 million in increased sales annually,

and if the increase due to the Gamon racks and use of the 645 patent design was

responsible for a 9 to 14 percent increase in sales, as the market test indicated, the

Gamon design would have produced an additional $80 million to $120 million

annually in increased sales. Id.

The design of the 645 patent was a significant component in the desirability

of the gravity feed shelving systems, and the increased sales using the Gamon

displays is clearly linked to the use of the patented Gamon display racks and design.

Id., para. 47. The increased sales and profits, which by now should total in the

hundreds of millions, that Petitioner Campbell Soup took in as a result of use of the

42
645 patent design in selling its soups constitute massive commercial success of the

patented design. This indicates that the claim of the 645 patent is nonobvious and

overcomes any purposed showing of obviousness here.

There are, however, other even more conclusive secondary considerations than

commercial success; in this case, Petitioners copying of the claimed design.

B. Petitioners Campbell Soup and Trinity appropriated Patent Owners

design by making and using more than 300,000 display racks that
display Petitioners products according to the patent design.

In or about late 2008, Patent Owner became aware of the fact that Campbell

Soup had begun to use other display racks that employed the design features of the

display racks that Patent Owner had been selling to Campbell Soup. Declaration of

Terry Johnson, para. 49. Despite protests of Patent Owner, the Petitioners have

continued to use theses display racks since then, apparently without any change in

configuration. Id.

The appropriation of the design of the 645 patent is apparent from photographs

of the display racks made by Petitioner Trinity Industries and used by Petitioners

Campbell Soup or Campbell Sales.

Exhibit 2012 shows a current Campbell Soup store display for condensed soup

cans, and Exhibit 2013 shows a current Campbell Soup store display for Ready-To-

Serve soup cans. Id., para. 51. It is readily apparent that these displays are copied

directly from the design of Patent Owners display rack, as each of these racks has a

43
can with dimensions similar to those of the cylindrical article in the 645 patent, each

has a curved label area with similar dimensions and relative placement relative to the

can to those of the label area of the 645 patent. Id.

There is no real issue as to whether there has been copying by Petitioners of

Patent Owners rack and product design here, and that the copying has been

substantial. Patent Owner estimates that there are about 300,000 of these copied

display racks in US stores. Id., para. 52. The great commercial success of the

claimed design and the slavish copying by Petitioners of the patented design

establishes the desirability and nonobviousness of the patented design, which here

overcomes any purported showing by Petitioners of unpatentability.

VI. CONCLUSION

For the reasons stated above, the Board should find that Petitioners have

failed to meet their burden of proving unpatentability based on any of Grounds 1, 2

and 3.

Respectfully submitted,

June 30, 2017 /Andrew L. Tiajoloff/

Andrew L. Tiajoloff
Registration No. 31,575
Tiajoloff & Kelly LLP Attorney for Patent Owner
Chrysler Building, 37th floor Gamon Plus, Inc.
405 Lexington Avenue
New York, NY 10174
tel. 212-490-3285
fax 212-490-3295

44
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE
THE PATENT TRIAL AND APPEAL BOARD
_________________________________________________________________

Case No.: IPR2017-00094

U.S. Patent No.: D612,646

Issue Date: March 30, 2010

Title: GRAVITY FEED DISPENSER DISPLAY

CERTIFICATE OF COMPLIANCE

Pursuant to 37 C.F.R. 42.24, I hereby certify that the foregoing Patent

Owners Preliminary Response complies with the relevant type-volume

limitations of 37C.F.R. 42.6 and 42.24. This brief is typed in Times New

Roman (14-point) and contains 8,938 words according to Microsoft Word.

Dated: June 30, 2017 By: /Andrew L. Tiajoloff/

Andrew L. Tiajoloff
Reg. No. 31,575

45
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE
THE PATENT TRIAL AND APPEAL BOARD
_________________________________________________________________

Case No.: IPR2017-00094

U.S. Patent No.: D612,646

Issue Date: March 30, 2010

Title: GRAVITY FEED DISPENSER DISPLAY

CERTIFICATE OF SERVICE

The undersigned certifies, in accordance with 37 C.F.R. 42.205, that service

was made on the Petitioner as detailed below.

Date of Service: Dated: June 30, 2017

Manner of service: Federal Express (priority overnight)

Documents served: PATENT OWNERS MERITS RESPONSE

Persons served: Martin B. Pavane, Esq.

COZEN OCONNOR
277 Park Avenue
New York, NY 10172

June 30, 2017 /Andrew L. Tiajoloff/

Andrew L. Tiajoloff

46