Background
Gamon Plus, Inc., a maker of specialty retail display fixtures, owns two design patents covering the ornamental design of a gravity-feed dispenser display — a wire-rack style fixture that holds and dispenses canned or packaged goods from the front of a retail shelf. Campbell Soup filed inter partes review (IPR) petitions challenging both design patents as obvious over prior art.
The Patent Trial and Appeal Board (PTAB) found the designs were not obvious, relying heavily on evidence of secondary considerations: the fact that Trinity Industries had copied the design, and the commercial success of Campbell’s gravity-feed display program. Gamon argued these facts demonstrated that the claimed design was not an obvious variation of the prior art. The Board agreed and upheld the patents. Campbell Soup appealed.
The Court’s Holding
The Federal Circuit reversed. Chief Judge Moore, writing for a unanimous panel, held that while the Board correctly identified commercial success and copying as potential secondary considerations of non-obviousness, those factors were legally insufficient because Gamon failed to establish the required “nexus” — a direct causal link between the claimed design specifically and the secondary evidence.
The nexus doctrine requires that commercial success or copying be attributable to features that are actually claimed in the patent, not to aspects of the product that were already present in the prior art. Here, the evidence showed that Trinity had copied the overall product — but the prior art already contained several of the elements that made the display commercially attractive. Gamon did not isolate the nexus to the unique ornamental features of the claimed design versus the functional or pre-existing features of the product. Without that specificity, the secondary consideration evidence could not carry its weight. Weighing all the Graham factors, the Federal Circuit concluded the designs were obvious.
Key Takeaways
- Secondary considerations of non-obviousness (commercial success, copying, long-felt need) must have a “nexus” — a direct causal connection to the claimed features of the patent, not just to the commercial product generally.
- If unclaimed features or prior art features are responsible for commercial success, a party cannot use that success as evidence that the claimed invention was non-obvious.
- In design patent IPRs, the nexus analysis is particularly challenging because design patents protect an overall ornamental impression — distinguishing which product elements are claimed versus functional requires careful expert and fact analysis.
- The decision extends the Federal Circuit’s prior Fox Factory nexus framework from utility patents to design patents, aligning the doctrine across patent types.
Why It Matters
Design patent litigation has grown substantially as companies like Apple, Nike, and consumer goods brands recognize the value of design rights. The Campbell Soup case gives IPR petitioners a roadmap for attacking design patents even when secondary considerations appear strong — if you can show that the evidence of commercial success or copying is attributable to prior art features rather than the unique claimed design, you can undercut the patent owner’s best defense.
For design patent owners, the lesson is the inverse: carefully document and preserve evidence linking commercial success, praise, and copying specifically to the novel ornamental features of the claimed design, not just to the product generally. Broader product attributes — especially functional or pre-existing design elements — will not save an otherwise obvious design claim. The decision reinforces that secondary considerations are a powerful tool only when properly grounded in the claimed invention itself.