On July 23, 2019, the Federal Circuit departed from its utility patent-focused docket to deliver a precedential opinion relating to design patents in Auto. Body Parts Ass’n v. Ford Global Techns., LLC. At issue were the validity and enforceability of design patents on automotive repair and replacement parts. The case arose from a filing by the Automotive Body Parts Association (ABPA) in the Eastern District of Michigan seeking declaratory judgment of invalidity and enforceability of two design patents relating to the hood and vehicle headlamp of the Ford F-150. The ABPA moved for summary judgment, but the District Court entered judgment sua sponte in favor of Ford. The case was taken up on appeal.
The crux of ABPA’s argument rested on the proposition that Ford’s design patents were directed to functional, and not ornamental, aspects of an article, and thus were invalid. Under the law, design patents are authorized if claiming “new, original and ornamental design[s] for an article of manufacture.” 35 U.S.C. § 171(a). Previously, the Federal Circuit has held that an “ornamental design” cannot be “primarily functional.” Sport Dimension, Inc. v. Coleman Co., 820 F.3d 1316, 1320 (Fed. Cir. 2016).
ABPA cited to Best Lock Corp. v. Ilco Unican Corp., 94 F.3d 1563 (Fed. Cir. 1996), in which designs for a blade of a key were determined to be functional based on the admitted fact that no alternatively designed blade would mechanically operate the corresponding lock. The ABPA attempted to analogize the cases, reasoning that because consumers considering F-150 truck replacement parts seek to restore the original appearance of the trucks, replacement parts would not be acceptable and there is a functional benefit to designs that are aesthetically compatible with the vehicles.
The court rejected ABPA’s argument, articulating that, while design patents must claim an ornamental design and not one dictated by function, a valid design may contain some functional elements.
“ABPA argues that Ford’s hood and headlamp designs are functional because they aesthetically match the F-150 truck. But ABPA does not identify, nor can we find, any design patent case ruling aesthetic appeal of this type functional. We hold 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.” (Emphasis added).
The court provided several factors to consider when determining if a design is dictated by function, including whether:
- The protected design represents the best design.
- There are any concomitant utility patents.
- Alternative designs would adversely affect the utility of the specified article.
- Advertising touts features of the design as having specific utility.
- There are any elements in the design, or an overall appearance, clearly not dictated by function.
The court also rejected ABPA’s efforts to apply the aesthetic functionality doctrine of trademarks to design patents.
The Federal Circuit addressed two secondary arguments set forth by ABPA. ABPA posited that, under the doctrines of patent exhaustion and right to repair, when an F-150 is sold, the entirety of any design patents embodied in the truck are exhausted and use of Ford’s designs on replacement parts is permitted if the parts are intended for use with Ford’s trucks. The court clarified that patent exhaustion does apply to design patents but does not apply to new replacement parts sold or created by the purchaser. Regarding the right to repair, the court held that it does not permit a complete reconstruction of a patented component, but rather allows replacement of an individual unpatented component of a patented article, or a purchaser of an F-150 truck to repair specific parts on the truck. Ultimately, the District Court’s ruling was affirmed.
The Federal Circuit’s decision reaffirms the strength of design patents’ rights covering article components and replacement parts – eliminating doubt as to whether design patents are enforceable beyond the initial market for patented designs. Considering the decision, inventors and designers of articles of manufacture, even those in industries other than automotive, should consider adding design patents covering components to their portfolio strategies – either as a first line of offense or to complement utility patents on the components or corresponding articles of manufacture.
To illustrate, a manufacturer may obtain a utility patent on an article of manufacture. But a component of the article may not itself be eligible for a utility patent (e.g., may be seen as novel or obvious). A competitor could then make and sell the component without infringing the utility patent on the article. Yet, as seen in ABPA v. Ford, a component may have independent value, such as in the sale of replacement parts in the secondary market. Therefore, the manufacturer may not have recourse against competitors that make and sell replacement components for the article.
However, if the component has an inventive ornamental appearance, it may be eligible for a design patent. Procuring a design patent on the component may give the manufacturer a means to prevent competitors from making or selling replacements of the component. Furthermore, even if the design patent holder does not wish to make or sell replacements for the component, the design patent gives the holder solid grounds on which to enter into license agreements with suppliers of replacement parts. Therefore, a design patent protecting the component may play multiple roles in a portfolio strategy.