Protecting Individual Replacement Parts
In Automotive Body Parts Ass’n v. Ford Global Techs. (Fed. Cir. 2019), Ford accused the Automotive Body Parts Association (ABPA) of infringing Ford’s design patents that cover individual parts of Ford’s F-150 truck. The ABPA argued that the patented designs are functional. ABPA further argued the application of doctrines of exhaustion and repair to these patented designs.
The design patent D489,299, titled “Exterior of Vehicle Hood,” claims “[t]he ornamental design for exterior of vehicle hood,” as shown in Figure 1 below.
The design patent D501,685, titled “Vehicle Head Lamp,” claims “[t]he ornamental design for a vehicle headlamp, as shown below in Figures 1 and 2.
A design patent must be directed to an “ornamental design for an article of manufacture” and not one “dictated by function.” High Point Design LLC v. Buyers Direct, Inc., 730 F.3d 1301, 1315 (Fed. Cir. 2013) (interpreting 35 U.S.C. § 171(a)). Although the article of manufacture itself is typically functional, the protected design elements themselves may not be “primarily functional.”
As to functionality, ABPA states that consumers seeking replacement parts prefer hoods and headlamps that restore the original appearance of their vehicles. As such, ABPA concludes that there is a functional benefit to designs that are aesthetically compatible with those vehicles. Specifically, ABPA argues that Ford’s protected hood and headlamp designs are functional because they aesthetically match the F-150 truck.
The Court disagreed with the ABPA’s functionality arguments. Specifically, the Court held that even in the context of a consumer’s 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.
As to exhaustion, ABPA asserts that the sale of an F-150 truck 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 Court declined to apply exhaustion to the protected hood and headlamp designs sold by a third party as replacement parts, the Court noting that exhaustion attaches only to items embodying the protected designs sold by, or with the authorization of, the patentee.
As to the right or repair, ABPA argues that purchasers of Ford’s F-150 trucks are licensed to repair those trucks using replacement parts that embody Ford’s hood and headlamp design patents.
The Court also rejected ABPA repair argument noting that the right of repair does not permit a complete reconstruction of a patented device or component. As such, a purchaser may replace “individual unpatented component” of the patented article but does not permit the purchaser to infringe other patents by manufacturing separate patented components of the purchased article. Accordingly, the new hoods and headlamps in question are subject to Ford’s design patents, and manufacturing new copies of those designs constitutes infringement.
This decision reinforces the use of design patents to protect the manufacturer of individual replacement parts to be used in a purchased article.