Court says Automobile Hoods and Headlights aren’t Functional
In a warning shot to manufacturers and sellers of aftermarket automobile parts, a Michigan federal court denied a bid to invalidate design patents to body parts of automobiles, holding they are non-functional as a matter of law. Automotive Body Parts Association v. Ford Global Technologies, LLC, No. 2:15-cv-10137 (E.D. Mich. Feb. 20, 2018).
U.S. Design Patent Law
Under U.S. law, design patents can be obtained on “any new, original and ornamental design for an article of manufacture.” 35 U.S.C. § 171. So, if an article’s appearance is new, not obvious over existing designs, and not dictated by function, then the U.S. Patent Office can grant a design patent on the article. If an article’s appearance is dictated by function, then the design cannot be patented for two reasons.
First, the design-patent statute’s purpose is to promote the decorative arts. Consequently, if an article’s appearance is dictated by how it works, then the article’s design is not ornamental.
Second, if design patents could protect designs dictated by their function, then design-patent owners could be granted a monopoly on the function without having to pass the PTO’s more rigorous examination of utility-patent applications.
Design patents remain in force 14 years from their issue date.
The Automotive Body Parts Association is an association of companies that make and sell automotive-body parts. The parts are used to repair damaged cars and trucks. The companies’ customers are collision shops and consumers.
In 2013, the ABPA sued Ford seeking a declaration that several Ford design patents—including one on a Ford F-150 hood and another on the F-150 headlamp—were invalid. The ABPA alleged the patents were invalid because the hood and headlamp designs were dictated by their function.
Ford’s design patent for the F-150 hood includes the drawing below, while Ford’s design patent for the F-150 headlamp includes the drawing following the hood.
According to the ABPA, the two designs were functional because they needed to fit onto a Ford F-150 truck, mate with surrounding body parts, and connect to the truck’s frame. Moreover, the designs had to match the F-150’s overall aesthetic. The court disagreed.
As for functionality based on the need to fit the hood and headlamp onto the F-150 truck, the court pointed out alternative “performance” hood and headlamp designs that can also be fit onto the F-150. The alternative designs were unlike those Ford had patented and, per the court, they “strongly suggest that the designs are not dictated by function.”
The court also rejected the ABPA’s aesthetic-functionality argument. The court found no authority to apply the aesthetic-functionality doctrine outside of trademark law, let alone in the design-patent context. The court thus concluded that given the different purposes served by patent and trademark law, it wouldn’t either. The court entered judgement for Ford.
What does the decision mean to our clients?
Automotive OEMs have long been obtaining design patents on automobile-body parts. After all, the patents give them a 14-year monopoly to extract royalty payments from third parties to make and sell replacements. This decision suggests the status quo will remain, at least with Article III courts.
Rather than challenging Ford’s design patents in court, however, the ABPA could have challenged them in the PTO in a post-grant proceeding.
In post-grant proceedings, patent challengers have a lower standard of proving invalidity than in courts – a preponderance of evidence versus clear and convincing evidence. Moreover, patent claims are given their broadest reasonable interpretation in post-grant proceedings.
That aside, the PTO’s examination of design-patent applications is not as rigorous as for utility applications. For example, the PTO almost never rejects design-patent applications during examination. And, of the handful of applications that are, only 4% are prior-art based. See Dennis Crouch, Design Patents: Sailing Through the PTO, Patently-O Blog (Fed. 22, 2018), http://patentlyo.com/patent/2009/04/design-patents-sailing-through-the-pto.html. So, prior art submitted against a design patent in a petition seeking a post-grant proceeding will likely be the first time the PTO takes a hard look at existing designs when assessing a design’s patentability.
As of January 2018, the PTO had received 41 petitions directed to design patents, with an overall institution rate of around 41%. Eight design patent IPRs have led to final written decisions, with six determinations of unpatentability (75%).