Automotive Body Parts Association, Plaintiff-Appellant
Ford Global Technologies, LLC, Defendant-Appellee
Decided: July 11, 2019
Are design patents that cover auto body parts “aesthetically functional” and therefore invalid? 35 USC §171(a) says that a design patent may be granted to protect a “new, original and ornamental design for an article of manufacture.” A valid design patent claim may include some functional elements (because all manufactured articles necessarily serve some “utilitarian purpose”); but a primarily functional design patent claim is invalid.
Auto makers often acquire design patents that cover visually distinctive portions of a vehicle such as hoods, fenders, wheels, and headlamps. These patents are most often enforced against aftermarket suppliers in the multi-billion dollar market for replacement auto body parts.
As its name suggests, the Automotive Body Parts Association (ABPA) represents a group of aftermarket suppliers that manufacture replacement auto body parts. Ford brought an action in the ITC against some of the ABPA’s member companies for allegedly infringing patents covering ornamental designs for the F-150 pickup truck’s hood and headlamps. Later, the ABPA filed a declaratory judgment action in Michigan that challenged the validity of these same two design patents, but they also presented a slew of arguments that “effectively ask[ed the District] Court to eliminate design patents on auto body parts.” The Michigan court rejected them all, and sua sponte granted summary judgment in Ford’s favor.
On appeal, the ABPA presented two main theories: first, all design patents covering auto body parts are functional and therefore invalid; and second, even if auto body design patents are valid, the doctrines of exhaustion and repair render them unenforceable against ABPA’s member companies.
In addressing the ABPA’s invalidity arguments, the Federal Circuit explained that a design patent is invalid if the claimed design is dictated by the article’s function; and in determining this, courts often look to whether there are alternative designs that can achieve the same utilitarian purpose as the claimed design—such as to provide illumination, or to cover a vehicle’s engine compartment). But the ABPA did not argue that Ford’s patented designs for the F-150’s hood and headlamp are functional because they achieve a purely utilitarian goal; rather, they made the case that Ford’s patented designs are functional “because they aesthetically match the F-150 truck.” That is, because Ford’s patented designs are consistent with the original appearance of its truck, they are “aesthetically functional,” and therefore invalid; in other words, their “function” is to look good when installed on a Ford F-150.
In rejecting this novel argument, the panel noted that the primary reason design patents are granted is to protect an article’s appearance or aesthetic; and if “aesthetically pleasing” always means “functional,” all design patents that cover OEM parts would be invalid. The Court was unwilling to sign off on such a radical change in the law.
The ABPA also took the position that the “aesthetic functionality” doctrine in trademark law—in which a party may not protect (via trademark or trade dress) features that do not serve to identify the manufacturer/source of a product—should also apply to design patents. The Federal Circuit dismissed this argument, noting that although there is some overlap between the bodies of law covering trademarks and design patents, they serve fundamentally different purposes, and the “conditions that drive the aesthetic functionality doctrine in trademark law do not apply to design patents.”
In yet another line of argument, the Association asked the court to rule that Ford’s design patents may be enforced in the market for new vehicles—but not in the market for replacement parts—because “customers care about design in the initial sales market, but not when they select replacement parts.” Because the ABPA presented no evidence and cited no patent cases to support this claim, the panel rejected it as well.
The Association’s next arguments were directed to the related doctrines of exhaustion and repair. Under the exhaustion doctrine, an authorized sale of a patented product exhausts the patent owner’s rights to that product; therefore, after an authorized sale, the purchaser may use, sell, or dispose of that product without liability for infringement. In the ABPA’s view, the doctrine should be extended so that the initial sale of an F-150 truck exhausts all design patents (but not utility patents) embodied in that vehicle, which would prevent Ford from asserting its design patents on replacement parts intended for the F-150. This argument also failed. The Federal Circuit said that exhaustion applies only to the particular items that were the subject of a sale to an “authorized acquirer;” and because Ford did not authorize sales by the ABPA’s member companies, exhaustion does not apply. The Court also declined the Association’s request to create a set of exhaustion rules for design patents that are separate and distinct from those that apply to utility patents.
The panel found the ABPA’s final argument that an F-150’s purchaser has the right to repair their truck (and therefore purchase whatever replacement parts they wish) “equally unpersuasive.” The panel explained that a purchaser’s right of repair does not “permit a complete reconstruction of a patented device or component;” that is, even though “a sale of the F-150 truck permits the purchaser to repair the designs as applied to the specific hood and headlamps sold on the truck, the purchaser may not create new hoods and headlamps using Ford’s [patented] designs.” The Court suggested that their ruling might have come out differently if the design patent at issue was for the entire F-150 truck, and not for individual components of the truck (the truck’s hood and headlamp). But in this case, the “designs for Ford’s hood and headlamp are covered by distinct patents, and to make and use those designs without Ford’s authorization is to infringe.”
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