Federal Circuit Affirms Summary Judgment Of Validity of Automotive-Part Design Patents, Rejecting The Argument That In The Automotive Context, The Parts’ Aesthetic Appeal Is Functional
On July 23, 2019, the Court of Appeals for the Federal Circuit (“CAFC”) made public an opinion affirming a district court’s sua sponte summary judgment that design patents covering the hood and headlamps of Ford’s F-150 truck are not invalid for claiming functional features. Automotive Body Parts Assoc. v. Ford Global Techs., LLC, ___ F.3d ___ (Fed. Cir. July 23, 2019). The CAFC rejected arguments that the aesthetic appeal of replacement parts that match the original equipment makes the designs functional. The CAFC also rejected an argument for a design-patent-specific exception to the permissible-repair doctrine.
The case began in the U.S. International Trade Commission (“ITC”), where Ford accused several members of the Automotive Body Parts Association (“ABPA”) of infringing U.S. Patent Nos. D489,299 and D501,685. Those patents claim the designs of the hood and headlamps of the Ford F-150 truck. The ITC investigation was settled, but not before the administrative law judge rejected respondents’ arguments that the design patents were (1) functional and therefore invalid, and (2) unenforceable under the doctrine of permissible repair. The ABPA then sued Ford in the U.S. District Court for the Eastern District of Michigan, seeking a declaratory judgment that the F-150 patents are invalid or unenforceable based on the same arguments. The ABPA moved for summary judgment; the district court not only denied the motion, but sua sponte entered summary judgment in favor of Ford. The ABPA appealed to the CAFC, and the CAFC affirmed.
The ABPA argued that the designs claimed in Ford’s patents are functional because they aesthetically match the F-150 truck, and because consumers prefer replacement parts that “restore the original appearance of their vehicles.” The CAFC rejected this argument, noting significant evidence to the contrary and holding that “even in the 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 CAFC noted that the ABPA’s position would “gut” the principles underlying design patents and that “[i]f customers prefer the ‘peculiar or distinctive appearance’ of Ford’s designs over that of other designs that perform the same mechanical or utilitarian functions, that is exactly the type of market advantage ‘manifestly contemplate[d]’ by Congress in the laws authorizing design patents.”
The ABPA also argued that the CAFC should find that the doctrine of permissible repair allows F-150 owners to use replacement parts that embody the claims of design patents. The CAFC declined, reiterating that it will apply the same rules to utility and design patents “whenever possible” and finding no reason to deviate from those rules in this instance. Applying those rules, the CAFC held that the doctrine of repair permits a purchaser to repair a patented article, but does not permit the purchaser to use unauthorized replacement parts when the parts themselves are patented. Because the design patents were directed, not at the truck as a whole, but rather to the designs of the hood and headlamps themselves, using unauthorized replacement parts embodying the claimed designs is not permissible to repair.