Automotive Body Parts Association (ABPA), which is an association of companies that sells automotive body parts, had sued Ford Global Technologies LLC in U.S. district court. ABPA wanted its members to be able to create and provide replacement parts, specifically the headlamp and hood, for F-150 truck owners who want to match the overall original truck design, without Ford being able to enforce its design patents against them.
The United States Supreme Court has denied review of this case against Ford, which had also been reviewed on appeal. The Court of Appeals held that the district court had correctly entered summary judgment siding with Ford. The Eastern Michigan U.S. District Court, in siding with Ford, had stated that what ABPA wanted amounted to it eliminating design patents.
A design patent protects a “new, original and ornamental design for an article of manufacture,” as defined by 35 U.S.C. §171(a). While here an article of manufacture such as a vehicle headlamp or a hood can certainly have a utilitarian component, a design patent cannot claim a “primarily functional” design, notes the Court of Appeals (“Court”).
In considering whether design is dictated by function, there had been no particular court-mandated tests, but there are a number of factors that could be considered including:
If there are several designs one could use to accomplish the function, then it is more likely a design serves an ornamental purpose.
The Court rejects ABPA's argument that the design patent is not enforceable for replacement parts. ABPA argued that owners want to repair with a matching headlamp or hood so that it goes with the entire vehicle. In this way, they say, the aesthetic design is functional in that it is compatible with the vehicle. However, ABPA did not argue there was any utilitarian or mechanical benefit in this, and so adopting their point of view would have changed how design patents are currently construed under the law. Instead, the very fact that a consumer might prefer a specific design to match the overall design of the whole supports the very salability and market value of that design and could be said to be precisely the point of having a design patent in place.
ABPA also argued that the design patent should be enforceable only “in the initial market for the sale of the F-150, and not in the market for replacement parts.” The motivation for this argument is clear, since it would give owners and replacement part makers more latitude in creating exact replacements for an already-purchased whole item of manufacture without being covered by that design patent. However, the aesthetic design matters to the customer when they buy the vehicle, and that aesthetic design still matters if the owner needs repairs while wanting to maintain the original Ford design. If they did not care about the aesthetics, they have many choices in replacement parts that would serve the function while looking different from the factory Ford original. There is in fact market demand by owners who want to make their trucks look different and therefore choose one of an abundance of replacement parts that differ in design from the original. This further supports that not all designs and their aesthetic appeal are equal, although their ultimate function might be.
The Doctrine of Exhaustion describes the point at which a patentee may not enforce patent rights against an owner because the owner has compensated the patent owner for their invention, and because the owner should then have the right to use or sell the invention as they please with no interference from the patentee (otherwise known as defeating restraint against alienation).
Ford conceded that its patents are exhausted as to the particular truck sold, but not as to its constituent parts. A patentee’s patent rights are exhausted only as to the authorized sale of that particular sold item, the specific F-150 truck in this case, but not any replacement parts with the same patented design.
The Doctrine of Repair says that an owner’s right to use after a sale includes the right to repair the item they bought. ABPA says this doctrine supports an F-150 owner’s right to purchase or create replacement parts for the truck they have purchased.
This doctrine does not allow reconstruction of patented parts. One can replace spent, unpatented elements, but not the patented ones. Ford patented the specific designs of the hood and headlamp, so replacements are going to be covered by the patent.
This case shows how complex the area of design patents can be. It also went the way of keeping the current understanding of design patents the same, without making any big changes in terms of replacement parts. If you need assistance with design patents or patenting in the automotive industry, please Contact us.