By: Chris Katsantonis
On February 11, 2020, the Automotive Body Parts Association (“ABPA”) filed a petition for certiorari with the U.S. Supreme Court. More than half a year earlier, the U.S. Court of Appeals for the Federal Circuit (“Federal Circuit”) decided Automotive Body Parts Ass’n v. Ford Global Technologies, LLC, affirming the validity of Ford Global Technologies, LLC’s (“Ford”) U.S. design patents related to the Ford F-150 pickup truck hood and headlamp. In doing so, the Federal Circuit reinforced the notion that the patent exhaustion doctrine does not bar the enforcement of design patents of replacement parts and further clarified that the “ornamental” requirement in 35 U.S.C. section 171 has a narrow scope.
With respect to the Federal Circuit’s holding regarding the patent exhaustion doctrine, the ABPA – in its petition for certiorari – asserts that such a holding “allows a patentee to greatly diminish or eliminate the right to repair and allows improper broadening of design patent protection over unclaimed portions of a design.” Therefore, the question presented to the Supreme Court is “[h]ow should the article of manufacture be determined when applying the patent exhaustion and repair doctrines in design patent cases?”In essence, as it did before the Federal Circuit stated, the ABPA asks the Supreme Court to expand the doctrines of exhaustion and repair to recognize the “unique nature” of design patents.
With respect to the patent exhaustion issue, in Bowman v. Monsanto Co., the Supreme Court recently reaffirmed that making a new patent article constitutes patent infringement. In Bowman, a farmer bought and planted patented seeds without the patent owner’s authorization. The planted seeds eventually reproduced identical seeds, thus creating new and infringing copies of the patented seeds. Similarly, the ABPA created hood and headlamps parts that were covered by Ford’s individual design patents for the Ford F-150’s pickup truck hood and headlamp. Thus, as in Bowman, the ABPA is infringing Ford’s design patents under the well-understood doctrine of patent exhaustion.
Regarding the doctrine of repairs, the ABPA contends that it is simply replacing parts to repair the car as whole and therefore, is not infringing Ford’s patents.However, there has been a longstanding rule that a party infringes a patent when it reconstructs a patented article, but it is generally not infringing to recondition an article worn out by use. More specifically, the Supreme Court has previously ruled that a repair infringes a part so long as there is a patent for that part. Critically, as noted, the ABPA’s argument fails because Ford owns individual patents for the F-150’s hood and headlamp. Nevertheless, ABPA attempts to distinguish their issue from previous patent repair cases as they relate to utility patents and due to the uniqueness of design patents, asks the Supreme Court to create a design-patent-specific remedy.
Unfortunately for the ABPA, this is not entirely true as design patents are generally governed by the same rules that apply to utility patents, such as prosecution history estoppel. Moreover, design patents should be treated the same as utility patents as they have substantially similar statutory schemes. After all, while there are some rules unique to design patents,utility and design patents share many common statutory schemes and purposes.Ultimately, there is well established precedent in opposite of the ABPA’s contentions. Further, courts have consistently applied patent repair and exhaustion precedent to both utility and design patents. Accordingly, the Supreme Court should deny ABPA’s petition for certiorari as it would frustrate the established legal basis and precedent related to
Tiffany Hu, Justices Urged To Abandon Design Patent Test In Ford Case,Law 360(Feb. 11, 2020), https://www.law360.com/articles/1242986.
Auto. Body Parts Ass’n v. Ford Glob. Techs., 930 F.3d 1314, 1315 (Fed. Cir. 2019).
35 U.S.C. § 171 (2019); John Evans, Ph.D. et al., ABPA v. Ford: Design Patent Defenses Run Out of Gas on Appeal – A U.S. Court of Appeals for the Federal Circuit decision strengthens U.S. design patent protection for replacement parts, JD Supra(Feb. 12, 2020),https://www.jdsupra.com/legalnews/abpa-v-ford-design-patent-defenses-run-31911/.
Auto. Body Parts Ass’n v. Ford Glob. Techs., 930 F.3d 1314 (Fed. Cir. 2019), petition for cert. filed, ___ U.S.L.W. ____ (U.S. Feb. 11, 2020) (No. 19-____); Dennis Crouch, Infringe Ford’s Design Patents by Repairing your Car, Patentlyo(Feb. 11, 2020), https://patentlyo.com/patent/2020/02/infringe-patents-repairing.html.
Auto. Body Parts Ass’n, 930 F.3d at1316.
Bowman v. Monsanto Co., 569 U.S. 278, 287 (2013) (explaining that under the exhaustion doctrine, “a patentee retains an undiminished right to prohibit others from making the thing his patent protects.”).
Id. at 280.
Auto. Body Parts Ass’n, 930 F.3d at 1324.
Auto. Body Parts Ass’n v. Ford Glob. Techs., 930 F.3d 1314 (Fed. Cir. 2019), petition for cert. filed, ___ U.S.L.W. ____ (U.S. Feb. 11, 2020) (No. 19-____).
Aro Mfg Co. v. Convertible Top Replacement Co., 365 U.S. 336, 345 (1961)
See id. at 346(1961) (“In order to call the monopoly, conferred by the patent grant, into play for a second time, it must, indeed, be a second creation of the patented entity . . . .”).
Crouch, supra note 4.
Evans, Ph.D. et al., supra note 3
Devon C. Beane & Jacob C. Vannette, Towards a Uniform Theory of Patent Law: The Federal Circuit Declines to Create Design-Patent-Specific Rules for Exhaustion or Repair, K&L Gates(July 25, 2019), https://www.klgates.com/towards-a-uniform-theory-of-patent-law-the-federal-circuit-declines-to-create-design-patent-specific-rules-for-exhaustion-or-repair-07-25-2019/?nomobile=perm.
JD Houvener, Utility Patent vs. Design Patent (everything you need to know…), BoldIP(Dec. 3, 2018), https://boldip.com/blog/utility-patent-vs-design-patent/ (explaining one substantive difference between design patents and utility patents is the duration for which each lasts, fifteen years and twenty years respectively).
Jason J. DuMont & Mark D. Janis, Comment, The Origins of American Design Patent Protection, 88 Ind. L.J. 837, 841 (2013) (“[T]he modern design patent system relies on substantive rules that were developed for patents on inventions—utility patent rules.”).
D. Brian Kacedon & Jevin D. Rodkey, Impression Products v. Lexmark Intl., Finnegan(Oct. 3, 2017),https://www.finnegan.com/en/insights/impression-products-v-lexmark-intl.html (showing the patent repair and exhaustion doctrine date back at least 130 years).