Posted by Post Authored by Kenny Matuszewski
On July 23, 2019, the Federal Circuit issued a precedential opinion and affirmed the validity of two design patents owned by Ford in Automotive Body Parts Association v. Ford Global Technologies, LLC, No. 2018-1613 (Fed. Cir. July 23, 2019). The design patents, USD489,299 and USD501,685 (“design patents”), respectively protected an exterior of a vehicle hood and vehicle headlamp.
Automotive Body Parts Association (“ABPA”), a company that distributes automotive parts, began by filing a declaratory judgment against Ford alleging the designs of the Ford F-150 hood and headlamp were invalid and unenforceable. The district court granted summary judgment for Ford, rejected ABPA’s theory that the designs were invalid under aesthetic functionality, and concluded that patent exhaustion and repair did not apply. Automotive Body Parts Association v. Ford Global Technologies, LLC, 293 F. Supp. 3d 690, 694 (E.D. Mich. 2018). As a result, the design patents were found to be valid and enforceable.
ABPA then appealed the decision to the Federal Circuit, which completely affirmed the district court’s opinion. ABPA, No. 2018-1613 at 2. In its decision, the Federal Circuit found that the aesthetic functionality principle in trademark law did not apply in design patent law. Id. at 8-9. Under trademark law, aesthetic functionality prevents trademark owners from obtaining trade dress or trademark rights in a product or packaging’s functional features, such as the configuration of a candy bar.
While there are similarities between trademarks and design patents, the Federal Circuit illustrated the fundamental difference between the two: trademarks serve as source identifiers and can, theoretically, last indefinitely. On the other hand, design patents give owners the exclusive rights to the design for only 14 years; afterward, they enter the public domain.
ABPA also tried arguing that the design patents were functional because consumers preferred replacement parts that matched the appearance of the original truck parts. However, even if consumers preferred Ford’s designs, the court found there were several differently designed hood ornaments and vehicle headlamps that adequately met the trucks’ functional needs. ABPA, No. 2018-1613 at 10.
For the issue of patent exhaustion, the Federal Circuit held that Ford’s rights were exhausted when it first sold the Ford F-150 cars, hood ornaments, and headlamps. ABPA, No. 2018-1613 at 12. Notably, only the patent owner, or an authorized seller, can exhaust patent rights. As a result, the court declined to create a special rule for patent exhaustion in the design patent context, since ABPA sold unauthorized parts. Id. at 13-14.
Finally, the Federal Circuit rejected ABPA’s arguments about the right to repair. Under patent law, the right to repair allows for patent owners or licensees to repair patented products and designs. It does not allow a party to “create new hoods and headlamps.” ABPA, No. 2018-1613 at 16. In other words, because Ford did not give ABPA permission to repair its cars and ABPA did not use parts approved by Ford to make the repairs, the right to repair defense did not have any merit.
Key takeaways from this case include:
- Design patents not only protect the complete product, but also replacement parts.
- Design patent rights are similar to utility patent rights, not trademarks. Therefore, patent exhaustion and repair apply to both utility and design patents.
- A design can be patented if there is at least one alternative design that can perform the same function as the claimed design.
- Companies should obtain permission from the design patent owner if they want to repair products using the patentee’s design with parts that are not owned by the patentee.
About the Author:
Kenneth “Kenny” Matuszewski is a Patent Attorney who concentrates his practice in patent litigation. Kenny has extensive experience litigating software, electrical and mechanical patents in federal court and the PTAB. He also advises clients about design rights and trademarks. A firm believer that learning is a lifelong process, Kenny will graduate with a B.S. in Computer Science from Oregon State University in December 2019. Previously, he double-majored in Biological Sciences and Spanish at the University of Notre Dame and earned his J.D. at Chicago-Kent College of Law. In addition to serving as a Project Officer, Kenny is one of the Head Editors for the @theBar blog and a Co-Chair for the YLS IP Committee. He also received the YLS’ Rising Star Award for Leaders with Exceptional Promise in 2019. In his spare time, Kenny plays tuba and euphonium in the CBA’s Symphony Orchestra and Barristers’ Big Band.