In a win for companies looking to use design patents to protect replacement parts, the U.S. Court of Appeals for the Federal Circuit upheld a Michigan district court’s decision validating two of Ford Motor Company’s design patents covering hoods and headlamps on its F-150 truck. Law360 reached to Finnegan attorney Elizabeth Ferrill, who has extensive experience with design patents, for her thoughts on the ruling.
The case began when Ford sent cease-and-desist letters to members of the Automotive Body Parts Association (ABPA), demanding that they stop making replacement parts for the F-150 truck. ABPA filed a lawsuit claiming the patents were invalid and unenforceable. However, according to U.S. patent law, design patents can be issued on “new” and “ornamental” designs for an article of manufacture. A design patent cannot be issued on something that is essential to the primary function of the article. ABPA tried to argue that vehicle owners shopping for replacement parts want the parts to look the same as the original, and so the designs are functional. The Federal Circuit disagreed, stating that “aesthetic functionality”—a concept in trademark law—cannot be applied to design patent law. Beth said, “The Federal Circuit says this is a trademark idea that has not been applied to designs and they see no reason to apply it to designs. In my mind, they cabin the functionality discussion to a discussion that’s based on mechanical functionality versus aesthetic functionality. I think it comes out of the fact that functionality in design patents and functionality in trade dress, in particular, are very different concepts.”
The subject of exhaustion was also addressed in the case, as ABPA argued that exhaustion applies to the use of Ford’s designs on replacement parts. The Federal Circuit disagreed, stating that exhaustion is applicable only to items sold by the patent owners, not ABPA members. Beth said, “Up until now, we haven’t had a nice recitation of exhaustion with respect to design patents. I was happy to see what I think is relatively clear guidance from the Federal Circuit on this point.”
