  United States Court of Appeals
      for the Federal Circuit
                ______________________

CAMPBELL SOUP COMPANY, CAMPBELL SALES
 COMPANY, TRINITY MANUFACTURING, LLC,
               Appellants

                           v.

                GAMON PLUS, INC.,
                       Appellee
                ______________________

                 2018-2029, 2018-2030
                ______________________

    Appeals from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in Nos. IPR2017-
00091, IPR2017-00094.
                 ______________________

             Decided: September 26, 2019
               ______________________

    TRACY ZURZOLO QUINN, Holland & Knight LLP, Phila-
delphia, PA, argued for all appellants. Appellants Camp-
bell Soup Company, Campbell Sales Company also
represented by STEVEN E. JEDLINSKI, Chicago, IL.

   MARTIN B. PAVANE, Cozen O'Connor, New York, NY, for
appellant Trinity Manufacturing, LLC. Also represented
by DARREN SCOTT MOGIL.
2               CAMPBELL SOUP COMPANY v. GAMON PLUS, INC.




   ANDREW L. TIAJOLOFF, Tiajoloff & Kelly LLP, New
York, NY, argued for appellee.
                ______________________

Before PROST, Chief Judge, NEWMAN and MOORE, Circuit
                       Judges.
    Opinion for the court filed by Circuit Judge MOORE.
    Dissenting opinion filed by Circuit Judge NEWMAN.
MOORE, Circuit Judge.
    Campbell Soup Company, Campbell Sales Company,
and Trinity Manufacturing, LLC (“Appellants”) appeal the
final written decisions of the Patent Trial and Appeal
Board holding Appellants did not demonstrate that the
claimed designs of U.S. Patent Nos. D612,646 and
D621,645 would have been obvious over U.S. Patent No.
D405,622 (“Linz”) and G.B. Patent Application No.
2,303,624 (“Samways”). Because substantial evidence does
not support the Board’s finding that Linz is not a proper
primary reference, and substantial evidence supports the
Board’s finding that Samways is not a proper primary ref-
erence, we affirm-in-part, vacate-in-part, and remand.
                      BACKGROUND
    Gamon Plus, Inc. owns the ’646 and ’645 patents, which
each claim: “The ornamental design for a gravity feed dis-
penser display, as shown and described.” The sole figure of
the ’646 patent is depicted below.
4                CAMPBELL SOUP COMPANY v. GAMON PLUS, INC.




    area is generally about the same as the height of
    the cylindrical object lying on its side. The height
    of the cylindrical object (lying on its side) is longer
    than its diameter. The cylindrical article is posi-
    tioned partially forward of the label area. Two rec-
    tangular lugs, or stops, are positioned in front of
    the cylindrical object on each bottom side and stand
    vertically. The rectangular lugs are taller verti-
    cally than they are wide horizontally and they
    stand vertically adjacent the cylindrical object
    about halfway up the diameter of the cylindrical
    object.
J.A. 67 (internal citations omitted). The only figure of the
’645 patent is identical, except the edges at the top and bot-
tom of the cylindrical object lying on its side and the stops
at the bottom of the dispenser are shown in broken lines.
Additionally, the figure of the ’645 patent includes a small
circle shown in broken lines near the middle of the label
area.
    Appellants petitioned for inter partes review, and the
Board instituted on the grounds that the sole claim in each
of the ’646 and ’645 patents would have been obvious over
(1) Linz in view of Samways, (2) Samways, or (3) Samways
in view of Linz. Linz discloses a “display rack” as shown in
the figure below. J.A. 696.
CAMPBELL SOUP COMPANY v. GAMON PLUS, INC.                 5




J.A. 697.
    Samways discloses a dispenser with “a serpentine de-
livery path . . . along which cylindrical objects to be dis-
pensed can move under the action of gravity.” J.A. 701. An
example of Samways’ dispenser is shown in the figure be-
low.
6               CAMPBELL SOUP COMPANY v. GAMON PLUS, INC.




J.A. 704.
    The Board held that Appellants did not establish un-
patentability by a preponderance of the evidence because it
found that neither Linz nor Samways was similar enough
to the claimed designs to constitute a proper primary ref-
erence. Appellants timely appealed. We have jurisdiction
under 28 U.S.C. § 1295(a)(4)(A).
CAMPBELL SOUP COMPANY v. GAMON PLUS, INC.                   7



                        DISCUSSION
    We review the Board’s legal determinations de novo
and its factual findings for substantial evidence. In re Van
Os, 844 F.3d 1359, 1360 (Fed. Cir. 2017). “Obviousness is
a question of law based on underlying facts.” Arctic Cat
Inc. v. Bombardier Recreational Prods. Inc., 876 F.3d 1350,
1358 (Fed. Cir. 2017). The obviousness inquiry requires
consideration of the four Graham factors: “(1) the scope and
content of the prior art; (2) the differences between the
claims and the prior art; (3) the level of ordinary skill in
the art; and (4) objective considerations of nonobvious-
ness.” Id. These are questions of fact we review for sub-
stantial evidence. Id.
     “In the design patent context, the ultimate inquiry un-
der section 103 is whether the claimed design would have
been obvious to a designer of ordinary skill who designs ar-
ticles of the type involved.” Durling v. Spectrum Furniture
Co., 101 F.3d 100, 103 (Fed. Cir. 1996). “To determine
whether one of ordinary skill would have combined teach-
ings of the prior art to create the same overall visual ap-
pearance as the claimed design,” the fact finder must first
“find a single reference, a something in existence, the de-
sign characteristics of which are basically the same as the
claimed design.” Apple, Inc. v. Samsung Elecs. Co., 678
F.3d 1314, 1329 (Fed. Cir. 2012) (internal quotation marks
omitted). To identify a primary reference, one must:
“(1) discern the correct visual impression created by the pa-
tented design as a whole; and (2) determine whether there
is a single reference that creates ‘basically the same’ visual
impression.” Durling, 101 F.3d at 103. If a primary refer-
ence exists, related secondary references may be used to
modify it. Id.
                              I
    The Board found that Linz was not a proper primary
reference. Specifically, it found that “Linz does not disclose
any object, including the size, shape, and placement of the
8                CAMPBELL SOUP COMPANY v. GAMON PLUS, INC.




object in its display area” and “fails to disclose a cylindrical
object below the label area in a similar spatial relationship
to the claimed design.” J.A. 33–34; see also J.A. 94–95. It
stated that “[a]dding a hypothetical can to Linz before com-
paring the designs is improper under Durling because such
comparison does not consider the design ‘in existence’ and
the modification has a noticeable impact on the overall de-
sign.” J.A. 34 (quoting Durling, 101 F.3d at 103); J.A. 95
(same).
     Appellants argue substantial evidence does not sup-
port the Board’s rejection of Linz as a primary reference.
They argue unrebutted testimony shows that a designer of
ordinary skill would have understood the Linz dispenser
was designed to hold cylindrical objects and that six of the
seven references cited on the first page of Linz are directed
to dispensers for cylindrical objects. They argue the
Board’s rejection of Linz for needing modification was im-
proper where it “otherwise conveys basically the same vis-
ual impression as the claimed designs.” Appellants’ Br.
36. 1
    Appellee argues the Board correctly rejected Linz as a
primary reference because Linz (1) does not have basically


    1   The parties also raised a dispute regarding claim
construction. Appellants argue the Board failed to give the
claims their broadest reasonable interpretation by includ-
ing portions of the drawings shown in broken lines that are
unclaimed. They argue the unclaimed portions are “di-
rected to particular spatial relationships between the label
area, the can, the gap between the label area and the can,
and the relative height and width of the label area itself.”
Appellants’ Br. 31–32. Appellee argues the construction
was proper, and the spatial relationship between the label
area and the cylindrical object forms part of the claimed
invention even though the boundary of the label area is un-
claimed. We see no error in the Board’s claim construction.
CAMPBELL SOUP COMPANY v. GAMON PLUS, INC.                   9



the same design characteristics as the claimed design ab-
sent substantial modifications, and (2) cannot be modified
as Appellants argue absent impermissible hindsight, im-
proper application of utility patent principles, and mislead-
ing artwork. First, it argues Linz does not show or describe
its displayed article. Second, it argues Appellants’ drawing
of Linz with a hypothetical cylindrical object is based on
irrelevant utility patent principles having “no regard for
appearance of an object” and hindsight bias, and there was
nothing in Linz to suggest the appearance of articles to be
displayed. Appellee’s Br. 26-27.
     This case presents the unusual situation where we re-
verse the Board’s factual finding that Linz is not a proper
primary reference for lack of substantial evidence support.
The parties do not dispute that the claimed designs of the
’645 and ’646 patents and the design of Linz are for dis-
pensing cans and that a can would be used in the system.
Instead, they dispute the dimensions of a can that would
be used in Linz in comparison with that in the claimed de-
signs. Oral Argument at 26:16–20 (Counsel for Gamon ar-
guing the “size of the can or what it would look like in this
[Linz] device is not clear”); 26:30–33 (“It would be a Red
Bull can, but it would be in a different position. It wouldn’t
be as far forward.”); 26:38–48 (“One [distinction] is that the
sign has dimensions which are kind of analogous to the
shape and the height and width of the Campbell Soup can,
which is lying sideways there.”); 27:39–46 (Counsel for
Gamon disagreeing that Gamon’s patents claim any type of
can, rather than just the Campbell Soup can and stating
“we’re talking about the actual dimensions of this can and
the associated height and location of the sign above it”);
31:13–16 (Counsel for Gamon stating, with respect to Linz,
“[t]he question is what size can are you going to put in there
and what’s it going to look like.”).
    Accepting the Board’s description of the claimed de-
signs as correct, the ever-so-slight differences in design, in
light of the overall similarities, do not properly lead to the
10               CAMPBELL SOUP COMPANY v. GAMON PLUS, INC.




result that Linz is not “a single reference that creates ‘ba-
sically the same’ visual impression” as the claimed designs.
See Durling, 101 F.3d at 103. The parties do not dispute
that Linz’s design is made to hold a cylindrical object in its
display area. In light of these facts, the Board’s finding
that Linz is not a proper primary reference is not supported
by substantial evidence.
                               II
    The Board further found that Samways was not a
proper primary reference. Specifically, it found that “sig-
nificant modifications would first need to be made to Sam-
ways’ design, such as combining two distinct embodiments
of the utility patent,” which is “not a design in existence.”
J.A. 44; J.A. 105. It found that “[c]onsidering the designs
as a whole, the design characteristics of Samways are not
basically the same as the claimed design.” J.A. 50; J.A.
110. It pointed to Samways’ (1) “dual dispensing area with
the addition of central tabs, or stops”; and (2) its front label
area, which “extends across both of the dual dispensing ar-
eas” and is “taller than the label area of the claimed design
with a small gap between the cylindrical objects and the
label area.” J.A. 50; J.A. 110–11.
    Appellants argue the Board “wrongly limited its anal-
ysis to only the particular illustrations in Samways, rather
than the teachings of Samways as a whole.” Appellants’
Br. 38. They argue “Samways in its entirety clearly dis-
closes a dispenser having design characteristics that are
basically the same as those of the claimed . . . designs.” Id.
at 39. They argue considering Samways as a whole does
not constitute “modification” of the reference through “im-
permissible hindsight.” Reply Br. 18.
    Appellee argues the Board correctly rejected Samways
as a primary reference. It argues Appellants’ proposal is a
major modification because it changes the shape and di-
mensions of Samways’ jars and removes parts to make it
function with the changed articles. It argues even with the
CAMPBELL SOUP COMPANY v. GAMON PLUS, INC.                11



modification, Samways “would not give basically the same
visual impression as the claimed designs.” Appellee Br. 36.
    Accepting the Board’s description of the claimed de-
signs as correct, substantial evidence supports the Board’s
finding that Samways is not a proper primary reference.
Samways has a dual dispensing area, compared to the sin-
gle dispensing area of the claimed designs, and has a front
label area with different dimensions that extends across
both dispensing areas. Given these differences, substantial
evidence supports the Board’s finding that Samways does
not create basically the same visual impression as the
claimed designs.
                       CONCLUSION
    As to Linz, substantial evidence does not support the
Board’s finding that Linz is not a proper primary reference.
In light of this finding, we vacate the Board’s conclusion
that the claimed designs would not have been obvious over
Linz in view of Samways. Because substantial evidence
supports the Board’s finding that Samways is not a proper
primary reference, we affirm the Board’s conclusions that
the claimed designs would not have been obvious over Sam-
ways or Samways in view of Linz. We do not reach Appel-
lants’ remaining arguments. On remand, the Board should
also consider the non-instituted grounds for unpatentabil-
ity consistent with the Supreme Court’s decision in SAS
Institute Inc. v. Iancu, 138 S. Ct. 1348 (2018).
  AFFIRMED-IN-PART, VACATED-IN-PART, AND
                REMANDED
                          COSTS
   No costs.
  United States Court of Appeals
      for the Federal Circuit
                 ______________________

CAMPBELL SOUP COMPANY, CAMPBELL SALES
 COMPANY, TRINITY MANUFACTURING, LLC,
               Appellants

                            v.

                 GAMON PLUS, INC.,
                        Appellee
                 ______________________

                  2018-2029, 2018-2030
                 ______________________

    Appeals from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in Nos. IPR2017-
00091, IPR2017-00094.
                 ______________________

NEWMAN, Circuit Judge, dissenting.
    The Patent Trial and Appeal Board (“Board” or
“PTAB”) correctly applied the law of design patents, and
held that neither the reference design of Linz nor that of
Samways creates a visual impression substantially similar
to the claimed design. Substantial evidence supports the
Board’s findings, leading to correct conclusions of law.
From my colleagues’ contrary finding as to the Linz design
and the ensuing remand, I respectfully dissent.
2               CAMPBELL SOUP COMPANY v. GAMON PLUS, INC.




                        DISCUSSION
    Design patents are evaluated from the viewpoint of the
ordinary observer or, when appropriate, the ordinary de-
signer. Ordinary observation resolves this case.
     Obviousness of a design requires the threshold exist-
ence of a “primary reference,” see In re Rosen, 673 F.2d 388,
391 (CCPA 1982) (“[T]here must be a reference, a some-
thing in existence, the design characteristics of which are
basically the same as the claimed design in order to support
a holding of obviousness.”). To determine whether this
threshold is met by a reference design, the observer must
“(1) discern the correct visual impression created by the pa-
tented 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, 1312 (Fed. Cir. 2013) (quoting Durling v.
Spectrum Furniture Co., 101 F.3d 100, 103 (Fed. Cir.
1996)). That is, the reference design and the patented de-
sign must be basically the same, see MRC Innovations, Inc.
v. Hunter Mfg., LLP, 747 F.3d 1326, 1331 (Fed. Cir. 2014)
(“The ‘basically the same’ test requires consideration of the
‘visual impression created by the patented design as a
whole.’” (citation omitted)).
    Gamon claims “The ornamental design for a gravity
feed dispenser display,” shown as follows in Gamon’s De-
sign Patent No. D612,646:
CAMPBELL SOUP COMPANY v. GAMON PLUS, INC.                 3




The cited prior art is two dispenser designs, the Linz dis-
penser and the Samways dispenser; the PTAB found that
neither of these designs constitutes a primary reference in
design patent terms. The Linz design is shown in Design
Patent No. D405,622, for “[t]he ornamental design for a dis-
play rack, as shown and described:”
4               CAMPBELL SOUP COMPANY v. GAMON PLUS, INC.




    The Samways reference is G.B. Patent Application No.
2,303,624, entitled “Serpentine dispenser,” with the follow-
ing drawing:




The Board held that neither the Linz nor the Samways de-
sign is substantially the same as the Gamon design, and
thus is not a primary reference. My colleagues agree with
the Board as to Samways, and I share that view. With re-
spect to the Linz design, the Board similarly concluded that
an ordinary observer would not reasonably find “substan-
tial identity of design,” the words of Gorham Co. v. White,
81 U.S. 511, 527 (1871). The Board stated that “examining
the design of Linz in existence, Petitioner has not estab-
lished persuasively that the designs of Linz and the ’645
patent are substantially the same.” Board Op. at 32. Alt-
hough my colleagues disagree, the Board’s conclusion is
correct.
   Gamon had stated that only the front portion of its dis-
penser design is free of dashed lines; that is, the label area
CAMPBELL SOUP COMPANY v. GAMON PLUS, INC.                     5



and the cylindrical object lying on its side. The Board ex-
amined the Gamon design from this viewpoint, and held
that even if the Gamon dispenser design is deemed limited
to the label area and the horizontal cylinder, Linz is not a
primary reference for it shows no cylinder at all. The Board
explained:
    The biggest difference between the designs is that
    Linz does not disclose a cylindrical object in its dis-
    play. The claimed cylindrical object, and its spatial
    relationship to the label area in the ’645 patent, is
    half of the scope of the design claim.
Id. at 33. The Board concluded that Campbell Soup “failed
to establish sufficiently how a designer of ordinary skill in
the art would first consider Linz a primary reference.” Id.
     My colleagues propose that since “Linz’s design is made
to hold a cylindrical object in its display area,” Maj. Op. at
10, the Linz design must be viewed with judicial insertion
of the missing cylindrical object. This analysis is not in ac-
cordance with design patent law. Only after a primary ref-
erence is found for the design as a whole, is it appropriate
to consider whether the reference design may be modified
with other features, selected to match the patented design.
See In re Jennings, 182 F.2d 207 (CCPA 1950):
    In considering patentability of a proposed design
    the appearance of the design must be viewed as a
    whole, as shown by the drawing, or drawings, and
    compared with something in existence—not with
    something that might be brought into existence by
    selecting individual features from prior art and
    combining them.
Id. at 208; see also Durling, 101 F.3d at 103 (“Once this
primary reference is found, other references may be used
to modify it to create a design that has the same overall
visual appearance as the claimed design.”).
6               CAMPBELL SOUP COMPANY v. GAMON PLUS, INC.




     The Board correctly stated that “[a]ny reasoning that
first requires a modification to Linz in order to arrive at a
substantially similar design is improper under Durling.”
Board Op. at 30. My colleagues hold that the designs are
substantially the same despite the absence in Linz of the
cylindrical object, reasoning that it may be assumed that
the Linz dispenser is for a cylindrical object. However,
even on Gamon’s position that its only claimed design ele-
ments are the label area and the cylindrical object, the cy-
lindrical object is a major design component. The absence
from the primary reference of a major design component
cannot be deemed insubstantial.
    The Board correctly explained that Campbell Soup “im-
properly molds concepts of utility obviousness into the de-
sign patent obviousness analysis. For example, [Campbell
Soup] alleges that if Linz ‘does not inherently disclose a cy-
lindrical can, it would be obvious to a designer of ordinary
skill in the art to use the display rack of Linz to dispense
cylindrical cans.’” Board Op. at 30 (quoting Petition for In-
ter Partes Review at 30). The Board stated that “[Camp-
bell Soup’s] analysis considers not a design currently in
existence, but a potential design based on [the witness’] as-
sumption of how utilitarian features like curved rails indi-
cate that a can could be displayed.” Id. at 31 (quoting
Gandy Decl. ¶ 50 (stating “that the Linz display rack is in-
tended for use with cylindrical cans”)).
    My colleagues err in design patent law—in modifying
the Linz design by adding a can, Maj. Op. at 10, in order to
create a design more similar to the Gamon design.
Whether viewing the designs in their entirety, or only the
portion that Gamon enclosed in solid lines, substantial ev-
idence supports the Board’s finding that Linz does not “cre-
ate basically the same visual impression” as the claimed
design. MRC Innovations, 747 F.3d at 1331. Thus Linz
cannot serve as a primary reference. From my colleagues’
contrary finding and its action based thereon, I respectfully
dissent.
