The Automotive Body Parts Association (ABPA) is continuing its efforts to challenge the validity and enforceability of design patents directed toward automotive body repair parts.
On July 23, 2019, the Court of Appeals for the Federal Circuit published an opinion addressing the issues of functionality and patent exhaustion, which are part of ABPA’s legal case based on associational standing. The case involves two design patents allegedly directed toward a Ford F-150 hood and headlamp. Both patents have expired.
After reviewing the opinion, the ABPA is pleased that the Federal Circuit addressed the merits of ABPA’s arguments and did not find that the Court lacked jurisdiction based on any absence of associational standing, mootness, or patent expiration. Since this case is believed to be the first patent case involving contested associational standing in the United States, the Court’s willingness to address substantive arguments based on association standing is significant and will assist ABPA in future legal challenges.
ABPA also is pleased that in its opinion the Federal Circuit changed an important principle in the law of design patent functionality that provides an additional opportunity to challenge the validity of design patents directed toward automotive body repair parts. Previously, it was thought that functionality only could be proven if there were no alternative designs that could perform the same mechanical function as the patented design. In the words of the Federal Circuit in the 2015 Ethicon Endo-Surgery v. Covidien case, alternative designs were “an important – if not dispositive – factor” to be considered. Other so-called Berry-Sterling factors, such as whether the design constituted the “best” design, could provide useful guidance, but according to the Federal Circuit in Ethicon, “an inquiry into whether a claimed design is primarily functional should begin with an inquiry into the existence of alternative designs.”
The ABPA opinion changes the law and makes it clear that the factor of “alternative designs” is not a dispositive factor and that other factors, such as whether the patented design is the “best” design, also can be considered on an equal basis. This is true even though there may be alternative designs that can accomplish the same mechanical function. This change in the law provides an opportunity to argue as a factual matter that a repair part design that returns the vehicle back to its original condition and appearance constitutes the “best” design for a number of reasons. ABPA members currently in litigation over design patents directed toward automotive repair parts should be able to take advantage of this new change in the law.
In its opinion, the Federal Circuit held that when considering the issue of alternative designs, only mechanical and utilitarian aspects of the design are to be considered and aesthetic aspects are to be ignored. ABPA respectfully continues to believe that aesthetic considerations should be considered on the alternative design issue and is disappointed that the Federal Circuit did not address or consider ABPA’s argument that a repair design that copies the original design is invalid as functional because it does not involve a conscious design choice. ABPA will make full use of the procedural rules at the Federal Circuit that allow for a petition for panel rehearing and rehearing en banc (before the full Court) to continue making its functionality arguments, particularly since conscious design choice is the essence of the ornamentality required for a valid design patent.
The Federal Circuit also held in its opinion that the hood and headlamp design patents were not exhausted because the article of manufactures originally sold were the hood and headlamp and not the F-150 truck. The Court reasoned that since “Ford chose to claim designs as applied to portions of particular components” and not “as applied to the whole truck,” the articles of manufacture sold were the hood and headlamp and not the truck. The Court apparently reached this conclusion by referring to the title of the patents, which are “[t]he ornamental design for exterior of vehicle hood,” and “[t]he ornamental design for a vehicle head lamp.” ABPA respectfully continues to believe this reasoning is incorrect, because the title of a patent does not define the scope of a design patent claim. Further, in the 2016 Samsung Electronics v. Apple iPhone design patent case decided by the Supreme Court concerning the issue of damages, the article of manufacture sold was not determined as a matter of law solely by reference to the title of the patent, but rather according to a four-factor test proposed by the United States. In its brief, the United States stated “the factfinder should not treat the patent’s designation of the article as conclusive” out of a concern that the patentee could manipulate the result through its characterization of the article in the title.
The two design patents in question also do not claim the design of a hood, headlamp, or of an F-150, but for a portion thereof. The ABPA respectfully believes the Federal Circuit provides no persuasive reasoning in its opinion for why the portion claimed cannot be considered to be embodied in the F-150 truck as well as in the hood and headlamp, which ABPA contends would lead to patent exhaustion. Indeed, both patents expressly state that the hood and headlamp are intended for attachment to a vehicle. For these and other reasons, ABPA will be continuing to pursue its patent exhaustion arguments in petitions for rehearing at the Federal Circuit, and if necessary, in a petition for writ of certiorari to the Supreme Court.
We invite those interested in contributing to the ABPA legal fund to do so by clicking the PayPal button below. You may also contact ABPA Executive Director Ed Salamy at 800-323-5832.