Holders of design patents received some welcome news recently from a case in which some auto parts distributors sought declaratory judgment for invalidity of design patents to sell parts that were covered by a major vehicle manufacturer’s designs. The U.S. Court of Appeals for the Federal Circuit decision sheds some valuable light on the type of functionality that can render a design patent invalid — and the type that won’t — as well as the importance of design patents.
Distributors drive into court
Ford Global Technologies, LLC, owns two design patents related to its F-150 series of pickup trucks, one for a vehicle hood and the other for a headlamp. Automotive Body Parts Association (ABPA) is an association of companies that distribute parts, including parts for Ford trucks.
The designs were invented by artists with Bachelor of Fine Arts degrees, who had full control and responsibility for the truck’s exterior appearance and selected part designs based on aesthetic appearance. Although engineers reviewed the final designs, no changes were made based on engineering or functional requirements.
Ford alleged infringement by several ABPA members in a complaint filed with the International Trade Commission. That case was settled after an administrative law judge ruled that the defendants’ invalidity defense was unfounded.
ABPA subsequently sued Ford, seeking a declaratory judgment that the patents were invalid. The trial court entered judgment for Ford without trial, noting that the association was effectively asking it to eliminate design patents on auto parts, and ABPA appealed.
Appeal hits dead end
Design patents must cover “ornamental” designs for manufactured items, not designs dictated by function. The Federal Circuit has previously acknowledged, though, that a valid design may include some functional elements.
Nonetheless, the court here said, if a particular design is essential to the use of the item, it can’t be the subject of a design patent. The court also emphasized the presence of alternative designs to achieve the function of the manufactured item.
ABPA argued (without evidence) that consumers seeking replacement parts prefer hoods and headlamps that restore their vehicles’ original appearance — so designs that are aesthetically compatible with those vehicles have a functional benefit. Thus, it asserted, Ford’s designs were functional because they matched the F-150 truck. The court, however, held that the aesthetic appeal of a design to consumers isn’t enough to make the design functional, even in the context of a consumer preference for a design that matches.
Trademarks vs. patents
ABPA also urged the Federal Circuit to borrow the principle of “aesthetic functionality” from trademark law. Courts have explained that a party can’t use trademark protection to prevent its competitors from using important product ingredients. For example, the U.S. Supreme Court has noted that trademark protection for a particular color might not be available if the color served a significant nontrademark function.
The court declined to become the first to apply aesthetic functionality to design patents. It pointed out that trademarks and design patents serve different purposes and are subject to different laws.
A trademark promotes competition by giving its holder a perpetual monopoly on a mark that identifies the source of goods. A company can’t trademark aesthetic features that aren’t associated with a particular producer or that have value to consumers other than identification.
Design patents, by contrast, give their owners exclusive rights to a particular aesthetic for a limited period of time. The considerations behind the aesthetic functionality doctrine in trademark law, the court concluded, “simply do not apply to design patents.”
The whole isn’t bigger than the parts
In this case, rather than patenting its design only on the whole truck, Ford obtained distinct patents for the hood and headlamp. Thus, among other things, the Federal Circuit’s ruling illustrates the importance of securing individual design patents on a product’s replacement parts, in addition to patenting the design of the product as a whole.
Automotive Body Parts Ass’n v. Ford Global Techs., LLC, No. 18-1613, July 11, 2019, Fed. Cir.
|Exhaustion and repair doctrine arguments fail, too
The plaintiff in Automotive Body Parts Ass’n v. Ford Global Techs., LLC (see main article) also tried to persuade the U.S. Court of Appeals for the Federal Circuit to expand the doctrines of exhaustion and repair to design patents. Both are defenses to patent infringement.
Patent exhaustion occurs when a patentee sells its patented item. After the sale, the patentee loses the right to control the use or disposition of its invention. Automotive Body Parts Association (ABPA) claimed the sale of a truck exhausts any design patents embodied in it, allowing use of the designs for replacement parts for those trucks. But the court found exhaustion applies only to items sold by, or with the authorization of, the patentee. And Ford didn’t authorize ABPA members’ sales.
The repair doctrine recognizes that the authorized sale of a patented item transfers the right to repair the item. ABPA contended that purchasers of trucks are licensed to repair them using replacement parts that embody the patented designs. The court disagreed, finding that using the designs without authorization constitutes infringement.