In "Unusual" Step, Federal Circuit Reverses PTAB Factual Finding On Proper Primary Reference

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.