Fed Circ refuses to ‘rewrite’ design patent law in Ford win
The US Court of Appeals for the Federal Circuit refused yesterday to import the doctrine of ‘aesthetic functionality’ from trademark law into the realm of design patents, as it ruled in favour of Ford in an appeal from the Automotive Body Parts Association (ABPA).
According to the Federal Circuit, the ABPA had invited “us to rewrite established law to permit ABPA to evade [Ford’s] patent rights”.
Ford had accused the ABPA, an association of automotive parts distributors, of infringing two of its design patents in relation to car hoods and headlamps on the Detroit carmaker’s F-150 pickup truck.
The US District Court for the Eastern District of Michigan had entered sua sponte judgment in favour of Ford in 2018, prompting the ABPA to appeal to the Federal Circuit.
On appeal, the ABPA argued that the Federal Circuit should apply the principle of “aesthetic functionality” to design patents.
In trademark law, the court explained, a party cannot use a trademark registration to prevent competitors from using “important product ingredients”.
According to the federal circuit, however, “trademarks and design patents serve different purposes and have different governing law”, noting that the purpose of trademarks is simply to distinguish the economic source of a good or service.
“The considerations that drive the aesthetic functionality doctrine of trademark law simply do not apply to design patents,” the ruling added.
The ABPA also argued that Ford’s design patents should be enforced only in relation to initial sales of the F-150, rather than replacement components.
According to the Federal Circuit, the ABPA’s argument that customers cared about design with respect to initial designs but not replacement parts had no basis in supporting evidence or case law.
In its appeal, the ABPA also contended that “the sale of an F-150 truck totally exhausts any design patents embodied in the truck and permits use of Ford’s designs on replacement parts so long as those parts are intended for use with Ford’s trucks”.
The Federal Circuit rejected this argument, ruling that exhaustion applied only to items sold with the authorisation of the patent owner.
“ABPA’s members’ sales are not authorised by Ford; it follows that exhaustion does not protect them,” the judgment said.
The other cornerstone of the ABPA’s argument was that purchasers of the F-150 were licensed to repair the vehicles using replacement parts embodying Ford’s design patents, the judgment said.
According to the Federal Circuit, however, this argument was “equally unpersuasive”.
While acknowledging the right to repair a patent protected good, “the right of repair does not, however, permit a complete reconstruction of a patented device or component,” the court ruled.
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