Last week, the United States Court of Appeals for the Federal Circuit unsealed its opinion in Automotive Body Parts Ass’n v. Ford Global Technologies, LLC, 2018-1613 (July 23, 2019). Automotive Body Parts Association (ABPA) filed a declaratory judgment action against Ford seeking a declaration that two of Ford’s design patents, directed to the hood and headlamps of the F-150 pickup truck, were invalid or unenforceable. Design patents must be directed to an ornamental design and are invalid if the design is purely functional. ABPA asserted that the aesthetic appeal of the Ford design patents rendered them invalid as functional, and that the Ford design patents were unenforceable in view of the patent exhaustion and right to repair doctrines. The district court rejected these assertions, and granted summary judgment sua sponte in favor of Ford. ABPA appealed.
The Federal Circuit affirmed. The Court first addressed ABPA’s invalidity argument directed to aesthetic functionality. The Court concluded that, even in the context of consumer preference to match the part’s design to the whole, aesthetic appeal is inadequate to render a design functional. The Court held that while the concept of “aesthetic functionality” may be relevant to trademark cases, it has no application to design patents because the considerations that support its application in trademark law are not relevant in the design patent context. The Court explained that a design’s appeal to customers over other designs is the exact market advantage envisioned by Congress in enacting the laws authorizing design patents.
The Court determined ABPA’s unenforceability arguments were similarly lacking in merit. The Court concluded ABPA’s contention that the sale of the vehicle exhausts the design patents it embodies was incorrect because exhaustion only applies to items sold by or with the authorization of the patentee. The ABPA members were not authorized by Ford to sell the products that copied the patented designs, so exhaustion did not apply. The Court also concluded the right to repair doctrine does not support ABPA’s position because it does not permit the complete reconstruction of a patented device or component. Because Ford’s patents were directed to the designs of the hood and the headlamp alone, not to the designs as applied to the truck, installing a new hood or headlamp would not constitute a repair to the patented component, but rather its complete reconstruction.