Automotive Body Parts Association v. Ford Global Technologies, LLC
Docket No. 2018-1613
Hughes, Scholl, Stoll
July 23, 2019
Brief Summary: DC decision that Ford’s hood and headlamp design patents are not “primarily functional” designs and not unenforceable under doctrines of exhaustion or repair
Summary: As explained in the opening paragraphs of this opinion, in it the FC panel “decide[s] what types of functionality invalidate a design patent”. ABPA asked the FC panel “to hold that aesthetic appeal-rather than any mechanical or utilitarian aspect-of a patented design may render it functional” and therefore not qualified for a design patent. Ford accused members of the ABPA of infringing Ford’s U.S. design patents D489,299 and D501,685 regarding a vehicle hood and a head lamp, respectively, used on its F-150 truck. Actions brought with the International Trade Commission (ITC) settled. ABPA then sought district court (DC) declaration judgments (DJ) of invalidity or unenforceability of the patents, which were denied (e.g., “ABPA ‘effectively ask[ed] this Court to eliminate design patents on auto-body parts’”) leading to this appeal. The FC panel explained that Title 35 section 171 “authorizes patents claiming ‘new, original and ornamental design[s] for an article of manufacture”. While “a design patent must claims an ‘ornamental’ design, not one ‘dictated by function’”, “a valid design may contain some functional elements” (High Point Design, FC 2013; Sport Dimension, FC 2016 (“a design patent’s claim protects an article of manufacture, which ‘necessarily serves a utilitarian purpose’”, “may not claim a ‘primarily functional’ design”); L.A. Gear, FC 1993 (“If [a] particular design is essential to the use of the article, it can not be the subject of a design patent.”)) While there is no “particular test”, the FC considers whether “alternative designs would adversely affect the utility of the specific article”, “there are any concomitant utility patents”, “advertising touts particular features…as having specific utility”, and if “there are any elements in the design or an overall appearance clearly not dictated by function” (Berry Sterling, FC 1997). ABPA unsuccessfully argued that Ford’s designs are functional by being “aesthetically compatible with” or “match” its vehicles (e.g., “[t]he very ‘thing…for which [the] patent is given, is that which gives a peculiar or distinctive appearance”, “exactly the type of market advantage ‘manifestly contemplate[d]’ by Congress” (Gorham Mfg., US 1871)). The FC panel also explained that while “trademarks and design patents have certain similarities…it does not follow that trademark principles apply equally to design patents” (e.g., Qualitex, US 1995 (permitting “a party to trademark a particular color only after explaining that protection might not be available if the ‘color serve[d] a significant nontrademark function’”, cannot “put competitors at a significant non-reputation-related disadvantage”)). The FC disagreed with ABPA that Best Lock (FC 1996), in which a design patent for a “key ‘blade’” was found invalid because the “design was dictated solely by function” (“admitted fact that no alternatively designed blade would mechanically operate the lock-not that the blade and lock were aesthetically compatible”)), was relevant here (e.g., “Ford introduced abundant evidence for alternative headlamp and hood designs that physically fit its trucks.”)
ABPA also unsuccessfully argued that Ford’s patents are unenforceable under the doctrine of exhaustion (i.e., “when the patentee sells his invention, the thing sold ‘is no longer within the limits of the monopoly’” (Bloomer, US 1852; Impression Prods., US 2017; ExcelStor, FC 2008) (e.g., “the sale of an F-150 truck totally exhausts any design patents embodied in the truck”, that the FC should “create a design-patent-specific rule”). In Quanta (US 2008), the FC panel explained, “the Court rejected an attempt to exempt method claims from exhaustion” (i.e., “method patents are exhausted by the authorized sale of an item embodying the claimed invention”) and its “precedents do not differentiate transactions involving embodiments of patented designs from those involving patented processes or methods.” ABAP similarly failed to persuade the FC panel that Ford’s patents are unenforceable under the doctrine of repair under which a purchaser has “the right to repair the patented article” (Kendall, FC 1996) but “does not…permit a complete reconstruction of a patented device or component” (Heferich, FC 2015), “that purchasers of Ford’s F-150 trucks are licensed to repair those trucks using replacement parts that embody Ford’s hood and headlamp design patents.” The FC panel disagreed since “[u]nfortunately for ABPA”, “the designs for Ford’s hood and headlamp are covered by distinct patents” as “the law permits” (e.g., “Ford could have claimed its design as applied to the whole truck”; Aiken, CCDNH 1865 (separately patented needles of sewing machine); Wilson, US 1850 (knives of cutting machine not separately patented); Morgan Envelope, US 1894 (endorsing Aiken)). The FC panel therefore affirmed the DC’s “ruling that ABPA has not shown that Ford’s designs for an F-150 hood and headlamp are exhausted when Ford sells an F-150 truck.”
Federal Circuit summaries 