Federal Circuit Explains the Nexus Standard for Assessing Graham Factor 4—Objective Indicia of Non-Obviousness—in the Design Patent Context

September 30, 2021

In Campbell Soup Co. v. Gamon Plus, Inc., --F.4th--, 2021 WL 3671163 (Fed. Cir. Aug. 19, 2021), the appellate panel addressed obviousness and application of the Graham factors in the design patent context, particularly Graham factor 4 and the required nexus between the objective indicia of non-obviousness and the claims.  Id. at *3.  In this case, the PTAB ruled that the design patent claims at issue were not shown in IPR to be obvious, Appellants appealed, and the panel reversed.

Here are some highlights from the decision:

1.    The presumption of nexus will not apply if the objective indicia evidence is not shown to be linked to a specific product that is “coextensive” with the claimed design.  The standard for determining coextensiveness is the same as that applied in the utility patent context. Id. at **3-4.  As the panel explained, the question asked when determining coextensiveness is not “whether unclaimed features are insignificant to a product’s ornamental design,” but “whether unclaimed features are ‘insignificant’ period.” Id. (emphasis in original).  Such unclaimed features include unclaimed functional elements. Id.

2.    While the panel found it difficult “to envision a commercial product that lacks any significant functional features such that it could be coextensive with a design patent claim,” they did not go so far as to hold that the presumption of nexus can never apply in the design patent context. Id. at *4, n.1.

3.    The standard for establishing a nexus-in-fact is the same for design and utility patents: the objective indicia must be directly linked to the claim’s unique characteristics. Id. at **4-5.