By Sara Cracau, J.D.
The design patents for a Ford F-150 truck hood and headlamp were not shown to be invalid or unenforceable and Ford Global Technologies, LLC (Ford)’s patent rights to those designs were not exhausted when Ford sold an F-150 truck, the federal district court in Detroit has ruled. The court denied Ford’s motion to dismiss a declaratory judgment suit filed by a body parts association seeking to invalidate Ford’s design patents. Contrary to Ford’s assertion, the the case was not moot due to Ford’s agreement not to sue less than all association members. The court also denied the associations’ motion for summary judgment of invalidity (Automotive Body Parts Association v. Ford Global Technologies, LLC, February 20, 2018, Michelson, L.).
The Automobile Body Parts Association (ABPA) requested the court to eliminate design patents on auto-body parts held by Ford Global Technologies, LLC (Ford) which held a large portfolio of patents protecting the design for body parts for Ford vehicles. Members of the ABPA imported, made and sold auto-body parts used to repair cars and trucks that were damaged in a collision. The ABPA filed this lawsuit seeking a declaration that two of Ford’s patents protecting the design of two F-150 body parts were either invalid or unenforceable. The two patents at issue here were U.S. Patent No. D489,299 protecting a Ford F-150 hood and U.S. Patent No. D501,685 protecting a Ford F-150 headlamp. After a flurry of enforcement attempts by Ford, the ABPA ultimately sought summary judgment and Ford filed a motion to dismiss.
Mootness. The court concluded that there was a sufficient case or controversy between Ford and NAPW and, because NAPW was a member of ABPA, it followed that ABPA could seek a declaration that the ’299 and ’685 patents were invalid or unenforceable. If Ford was willing to sue those ABPA members for selling the hood and headlamp to NAPW, it appeared to be likely that Ford would sue NAPW members if it, in turn, sold the hood and headlamp to collision repair shops or vehicle owners. According to NAPW, manufacturers of the hood and headlamp covered by the two patents in this case have been told by Ford’s exclusive licensee that if they manufacture the hood and headlamp for anyone else, they would be subject to enforcement efforts by Ford. The court concluded that there was more than mere speculation that NAPW might sell the hood and headlamp. Consequently, the court denied Ford’s motion to dismiss.
Summary judgment motion. The court denied ABPA’s motion for summary judgment seeking to invalidate the two design patents, rejecting its arguments that the designs of the two patents-in-suit were not a "matter of concern" and that the designs were dictated by function. Likewise, the court rejected ABPA’s policy argument. The court concluded that ABPA did not establish a necessary premise of its matter-of-concern argument as none of the relevant precedent limited the matter-of concern inquiry to the consumer’s thought process when replacing an article with a patented design. Furthermore, there was binding precedent that strongly supported a finding that designs for auto-body parts pass the matter-of-concern test for patent eligibility.
Similarly, the dictated-by-function test captures a concept that it an article had to be designed in a certain way to allow for functionality, that the design does not deserve protection. Although this argument had more merit, the court nonetheless declined to import the aesthetic-functionality doctrine from trademark to patent law. No court has done so as these two fields of law serve different purposes. Additionally, there is greater reason for trademark law to be concerned with functionality than design-patent law. The court was not convinced that a design was not entitled to patent protection if it performed an aesthetic function such as matching the aesthetic of a hood to the aesthetic of an F-150. Lastly, the ABPA failed to show that Ford would receive double recovery if it was allowed to protect its designs for F15- body parts, thus rejecting its policy argument.
Furthermore, the court was not persuaded by ABPA’s argument that the patents were unenforceable under the doctrine of patent exhaustion, finding this argument failed as a matter of law. The mere purchase of an F-150 did not convey to the owner the right to make new auto-body parts covered by Ford’s design patents. F-150 owners need not replace the entire vehicle body as if it were a one-piece shell in the event of an accident. The authorized sale of a patented item permits owners to sell and use the single item that they purchased rather than replace the destroyed item.
The case is No. 2:15-cv-10137.
Attorneys: Paul M. Kittinger (Cardelli, Lanfear and Buikema, PC) and Robert Oake, Jr. (Oake Law Office) for Automotive Body Parts Association. Frank A. Angileri (Brooks Kushman PC) for Ford Global Technologies, LLC.
Companies: Automotive Body Parts Association; Ford Global Technologies, LLC
MainStory: TopStory Patent MichiganNews
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