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Automotive Body Parts Association v. Ford Global Technologies, LLC

Design Patents May Bar Replacement Parts Matching Physical Appearance of Originals

Automotive Body Parts Association v. Ford Global Technologies, LLC, __ F.3d __, 2019 WL 3294047 (Fed. Cir. July 23, 2019) (Hughes, Schall, STOLL) (E.D. Mich.: Michelson) (3 of 5 stars)

Fed Cir affirms summary judgment that ABPA was not entitled to declaratory judgment of invalidity or unenforceability as to Ford’s design patents. Ford’s design patents addressed designs for F-150 pickup truck components (viz. its hood and head lamps). The opinion rejects ABPA’s contention that the designs were functional because they aesthetically matched other aspects of the F-150. “[E]ven 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.” Op. at 7. The opinion discusses Gorham Manufacturing, 81 U.S. 511 (1871), as describing how design patent protection is accorded based on the items’ “peculiar or distinctive appearance.” The opinion also rejects ABPA’s proposal that “aesthetic functionality” principles present in trademark law (which preclude the use of trademark protection to prevent competitors from replicating certain aesthetic/functional details) should apply here. “Trademarks and design patents serve different purposes and have different governing law.” Op. at 8. ”The considerations that drive the aesthetic functionality doctrine of trademark law simply do not apply to design patents.” Id. at 9. Best Lock, 94 F.3d 1563 (Fed. Cir. 1996), is not contradictory because the design features there were expressly functional, and not merely aesthetic. The opinion also declines to hold that Ford’s design patents may be enforced only in “the initial market for sale of the F-150,” and not the replacement component market. It finds no factual or legal support for such an argument, but notes that a bill seeking to introduce such a policy was introduced in a previous Congress.

ABPA also did not demonstrate unenforceability for Ford’s design patents. Ford’s sale of F-150s incorporating the components at issue exhausted design patent rights as to those components, but did not “totally exhaust[ ] any design patents embodied in the truck[.]” Op. at 12. The opinion notes that this is the reasoning applied for utility patents, and finds no persuasive reason to depart for design patents, discussing Quanta Computer, 553 U.S. 617 (2008). The opinion also rejects ABPA’s argument that consumers’ right of repair includes a right to use replacement parts embodying the design patents, as per Aiken, 1 F. Cas. 245 (C.C.D.N.H. 1865), and Morgan Envelope, 152 U.S. 425 (1894), amid others. It declines to limit those cases to utility patents, and rejects ABPA’s argument that § 101 supported such a restriction.

KEYWORDS: DESIGN PATENTS; REPLACEMENT PARTS