August 01, 2019
Intellectual Property Alert
Intellectual Property Alert
Author(s): Jennifer Hayes
In Automotive Body Parts Association v. Ford Global Technologies, LLC, the United States Court of Appeals for the Federal Circuit (Federal Circuit) held that the aesthetic appeal of a design to consumers is inadequate to render that design functional. The Federal Circuit also confirmed that patent exhaustion principles apply to design patents but that patent exhaustion does not apply to replacement parts covered by design patents. The Federal Circuit also held that the repair doctrine does not apply to the manufacture of replacement parts covered by design patents. This decision highlights the value of a patent portfolio that includes design patents.
The Federal Circuit’s decision in Automotive Body Parts Association v. Ford Global Technologies, LLC confirms that aesthetic appeal of designs does not render design patents invalid as being functional and that patent exhaustion and repair apply to design patents in the same way they apply to utility patents.
Ford owned two design patents related to the ornamental design of the hood and the ornamental design for the vehicle head lamp of a Ford F-150 truck. Following the settlement of several ITC actions involving Ford and the distributors of automotive parts covered by the design patents, the ABPA, an association that included those companies as members, filed a district court action seeking declaratory judgment that the design patents were invalid or unenforceable. The district court entered a judgment sua sponte in favor of Ford that the design patents were not invalid and not unenforceable, which ABPA appealed.
On appeal, the Federal Circuit confirmed that design patents must claim an ornamental design—not one dictated by function—but recognized that a valid design may contain some functional elements. In determining whether a design is dictated by function, courts may consider the following factors:
The Federal Circuit ultimately rejected ABPA’s efforts to apply the aesthetic functionality of trademark law to design patents because design patents expressly grant to their owners exclusive rights to a particular aesthetic for a limited period of time and held that even in the 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. The court found that the type of market advantage contemplated by Congress in the laws authorizing design patents includes customers’ preference for a peculiar or distinctive appearance of the patented designs over other designs that perform the same mechanical or utilitarian functions.
The Federal Circuit confirmed that the doctrines of patent exhaustion and repair apply to design patents, but held that the doctrines of patent exhaustion and repair did not render Ford’s design patents unenforceable. In particular, the Federal Circuit rejected ABPA’s arguments that the design patents can only be enforced in the initial market for sale of the F-150, and found that exhaustion and repair attach only to items sold by, or with the authorization of, the patent owner. Because Ford chose to claim designs of particular components of the Ford F-150, as opposed to the designs in the truck as a whole, as it was permitted to do, the repair doctrine did not apply to the component parts. Thus, manufacturing new copies of designs constitutes infringement of design patents.
This decision confirms that design patents are a valuable tool in any company’s patent portfolio.
The foregoing has been prepared for the general information of clients and friends of the firm. It is not meant to provide legal advice with respect to any specific matter and should not be acted upon without professional counsel. If you have any questions or require any further information regarding these or other related matters, please contact your regular Nixon Peabody LLP representative. This material may be considered advertising under certain rules of professional conduct.
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