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August, 1st, 2019

By Christopher J. Stankus and Jacob J. Alexander

In a recent case, Ford showed that design patents are an effective way to prohibit third-party manufacturers from making “knock-off” replacement parts. In Automotive Body Parts Association (“ABPA”) v. Ford Motor Co. (“Ford”), the Federal Circuit held two of Ford’s design patents, D489,299 and D501,685, covering the hood and head lights of the F-150, were valid and fully enforceable.

ABPA, an aftermarket manufacturer, was producing replacement hood and headlamps for the Ford F-150. In an attempt to circumvent the protection of Ford’s design patents, ABPA sued for invalidity and/or unenforceability of the Ford patents.

ABPA asserted the design patents had “aesthetic functionality” that rendered them invalid. The Federal Circuit disagreed, as the purpose of design patents is to “expressly grant their owners exclusive rights to a particular aesthetic for a limited period of time.” [1].

ABPA also argued that once the original F-150 was sold the patent rights were exhausted, which allowed ABPA to make replacement parts to “repair” the truck. The Federal Circuit rejected this argument finding this only applies to authorized sales by the patent owner and does not extend to unlicensed third-party replacement parts. The Federal Circuit stated that the purchaser of an F-150 is permitted to “repair the designs as applied to the specific hood and headlamps sold on the truck, [but] the purchaser may not create new hoods and headlamps using Ford’s designs.” [2].

This decision reinforces the importance of design patents. Many people/companies narrowly focus their patent portfolio on utility patents when they should consider both utility and design patents. Design patents provide additional rights by protecting an invention’s appearance. A comprehensive patent portfolio on a mechanical device (e.g. a car, a welder, a medical device, etc.) should have both utility patents protecting the functionality and design patents protecting the appearance. Even if a utility patent is not available, a design patent may be an effective method to protect an invention.

WHIPgroup’s patent prosecution and litigation practice aggressively seeks protection for inventions and commercial products in the USPTO and actively enforces those protections in the ITC, Federal Courts, and before the U.S. Patent Office’s Patent Trial and Appeal Board (PTAB). WHIPgroup’s attorneys excel in cases on behalf of both plaintiffs and defendants, having successfully litigated numerous cases through trial, obtained favorable settlements, and won appeals at the Federal Circuit.

 

[1] Auto. Body Parts Ass’n v. Ford Global Techs., LLC, No. 2018-1613 9 (Fed. Cir. 2019)

[2] Id., at 19

 

WHIPgroup is leading counsel for U.S. and international technology companies. We specialize in patent and trademark law.

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