July 30, 2019
In a case that discusses both some of the differences and similarities between design patents and utility patents, the Federal Circuit rejected a patent challenger’s argument that the aesthetic appeal of a patented design – as opposed to a mechanical or utilitarian aspect of the design – is functional. Automotive Body Parts Association v. Ford Global Technologies LLC (Fed. Cir. July 23, 2019).
A design patent protects a “new, original and ornamental design for an article of manufacture.” 35 U.S.C. § 171(a). While established law bars design patents on primarily functional designs for lack of ornamentality, utility patents must be functional to be patentable. In many other ways, however, design and utility patents are similar. Section 171(b) of Title 35 demands as much, directing that the requirements that apply to “patents for inventions shall apply to patents for designs” unless otherwise provided. Here, the court decided what types of functionality invalidate a design patent and analyzed whether long-standing rules of patent exhaustion and repair rights applicable to utility patents also apply to design patents.
Specifically, plaintiff Automotive Body Parts Association (ABPA) argued that the aesthetic appeal of a patented design- rather than any mechanical or utilitarian aspect – may render the design functional. The ABPA further urged the Federal Circuit to expand the doctrines of exhaustion and repair to recognize the “unique nature” of design patents. The court declined to rewrite established law as the ABPA argued, and upheld Ford’s patent rights.
Ford’s U.S. Patent Nos. D489,299 and D501,685 protect, respectively, an ornamental vehicle hood design and an “ornamental design used in a vehicle head lamp.” Both designs are used in models of Ford’s F-150 trucks. The inventors of these designs are artists who had “full control and responsibility for the exterior appearance of the . . . Ford F-150 truck” that “the design team created[,] and selected part designs based on aesthetic appearance[.]” Although engineers reviewed the final designs, “[t]here were no changes to the aesthetic design of the parts based on engineering or functional requirements.”
Under these circumstances, the Federal Circuit held that the aesthetic aspect of a functional design has value apart from the function. The court stated that, “by definition, if a consumer assesses the aesthetic of a design in considering whether to purchase it, the design is a matter of concern…. Indeed, ABPA and its witnesses admitted that customers select replacement parts from among multiple different designs based on their preferred aesthetic.”
The APBA also argued that, after Ford sold an F-150 truck, the APBA was entitled to use the patented designs in its own replacement components and to then sell those. The Federal Circuit rejected that contention and held that Ford’s sale did not exhaust its rights in its design patents. While Ford’s sale may have exhausted its rights in the component parts themselves that were within the truck, this did not entitle the APBA to copy the patented design and sell its own versions of the components. In this regard, the court found that the same rules for patent exhaustion apply to design patents as utility patents.
Author: Elaine K. Lee