A weekly summary of the precedential patent-related opinions issued by the Court of Appeals for the Federal Circuit and the opinions designated precedential or informative by the Patent Trial and Appeal Board.
Automotive Body Parts Ass’n v. Ford Global Technologies, LLC, No. 2018-1613 (Fed. Cir. (E.D. Mich.) July 23, 2019). Opinion by Stoll, joined by Hughes and Schall.
The Federal Circuit addressed the meaning of an “ornamental” design in a design patent. The court also addressed the doctrines of exhaustion and repair in the context of a design patent, noting that “the same rules” apply to design and utility patents “whenever possible.”
Automotive Body Parts Association (ABPA) sought a declaratory judgment that two Ford design patents are invalid and unenforceable. The patents cover the ornamental design of the hood and headlamps in Ford F-150 trucks. The district court entered summary judgment in favor of Ford, and ABPA appealed.
Addressing ABPA’s invalidity arguments, the Federal Circuit explained that an “ornamental” design cannot be “primarily functional,” although “a valid design may contain some functional elements.” ABPA argued that Ford’s hood and headlamp designs are functional because they aesthetically match the F-150 truck. The Federal Circuit disagreed with that view, “hold[ing] 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.” The Federal Circuit therefore affirmed the district court’s determination that ABPA failed, as a matter of law, to prove Ford’s designs functional.
Next, the Federal Circuit rejected ABPA’s argument that Ford’s design patents are unenforceable under the doctrines of exhaustion and repair. Ford conceded that when it sells an F-150, its patents are exhausted as to the components actually sold as part of the truck. ABPA argued, however, that exhaustion extends further, totally exhausting any design patents embodied in the truck and thus permitting use of Ford’s designs on replacement parts. The Federal Circuit rejected ABPA’s argument because “exhaustion attaches only to items sold by, or with the authorization of, the patentee.” Sales of replacement parts by ABPA’s members are not authorized by Ford, and so “it follows that exhaustion does not protect them.”
Regarding the repair doctrine, ABPA argued that purchasers of F-150 trucks are licensed to repair those trucks using replacement parts that embody Ford’s hood and headlamp design patents. The Federal Circuit ruled that “straightforward application of long-standing case law compels the opposite conclusion.” Although a sale of an 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.” Manufacturing “new copies of those designs constitutes infringement.” The Federal Circuit therefore affirmed the district court’s rulings as to exhaustion and repair.