Federal Circuit Upholds Validity of Design Patents for Automotive Replacement Parts

Monday, July 29, 2019

On July 23, 2019, the U.S. Court of Appeals for the Federal Circuit (the “Federal Circuit”) issued a precedential opinion affirming summary judgment in a case that challenged the validity and enforceability of design patents related to the Ford F-150 hood and headlamp. The case, Automotive Body Parts Association v. Ford Global Technologies, LLC, No. 2018-1613, bolsters U.S. patent design protection particularly for coverage of replacement parts.

 Background

The Automotive Body Parts Association (“ABPA”) brought suit against Ford Motor Company (“Ford”) in the United States District Court for the Eastern District of Michigan. It sought a declaratory judgment that two of Ford’s design patents, covering designs for the hood and headlamps of Ford’s F-150 trucks, were invalid or unenforceable.

At the trial court, the ABPA argued that Ford’s design patents were invalid and/or unenforceable because they were both functional and exhausted, and moved for summary judgment. The district court entered summary judgment for Ford, rejecting both of ABPA’s arguments.

Court Ruling

On appeal, the ABPA asserted two primary arguments. First, it argued that the patents were “primarily functional” and thus invalid. Section 171 of Title 35 allows for design patents related to “new, original and ornamental design[s] for an article of manufacture.” The ABPA alleged that consumers have a preference for Ford’s hoods and headlamps when restoring or repairing F-150 trucks, and, therefore, there is a functional benefit to using Ford’s designs for replacement parts. In further support of its functionality argument, the ABPA advocated the Federal Circuit to borrow a standard from trademark law known as “aesthetic functionality,” which holds “that a party cannot use trademark protection to prevent its competitors from using important product ingredients . . . or from making their products as visually entrancing as its own.” Slip op. At 7 (citing Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 170 (1995) and Pub’ns Int’l, Ltd. v. Landoll, Inc., 164 F.3d 337, 339 (7th Cir. 1998))

The Federal Circuit rejected these arguments, holding that “even in this context of a consumer preference for a particular design to match other parts of a whole, the aesthetic appeal of a design to consumers is inadequate to render that design functional.” Id. The court declined to extend the concepts of “aesthetic functionality” from trademark law to design patents.

Second, the ABPA argued that the sale of Ford trucks that include the patented hoods and headlamps permits the sale of replacement parts under the exhaustion and repair doctrines.  With respect to patent exhaustion, the court noted that “exhaustion attaches only to items sold by, or with the authorization of, the patentee.” Id. at 12-13.  Explaining earlier law, the Federal Circuit outlined that the doctrine applied to the components actually sold as part of the F-150 trucks, but not to the new replacement components sold by members of the ABPA who had been alleged to infringe Ford’s patents, because they were not authorized to sell the patented components.

With regard to permissible repair, the court concluded that the doctrine did not apply because although the “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 designs.” Id. at 16.

Practical Significance

The ABPA case reaffirms the fact that design patents continue to be important tools to protect innovation and design. The decision refuses to expand the judicially created functionality doctrine beyond utilitarian functionality and also refuses to change how repair and exhaustion law is applied to design patents.