With few substantive decisions addressing design patents, it's always exciting to see new guidance from the U.S. Court of Appeals for the Federal Circuit on how these valuable IP assets are prosecuted and enforced. In two recent decisions, the court clarified the proper application of two different portions of the relevant statutory provision, 35 U.S.C. § 171. In Automotive Body Parts Association v. Ford Global Technologies, the court underscored the low bar of ornamentality for designs by refusing to invalidate two patents incorporated into Ford's F-150 pickup truck. And in Curver Luxembourg, SARL v. Home Expressions, the court emphasized that the scope of a design patent is limited by the article of manufacture recited in the claim. Both decisions provide direction in developing effective patent strategies.
ABPA: Ornamentality Remains a Low Bar
Design patents may be granted to inventors of a "new, original and ornamental design for an article of manufacture." 35 U.S.C. § 171. While the article itself is generally functional, the design sought to be protected may not be one primarily dictated by function. This ornamentality requirement was the basis of the ABPA's declaratory judgment lawsuit.
The ABPA, an association of auto part distributors, argued in the U.S. District Court for the Eastern District of Michigan that two of Ford's design patents — one covering the F-150 hood and the other the headlamp — were invalid as primarily functional. Borrowing from trademark law and arguing that purchasers of replacement parts prefer hoods and headlamps that match the original appearance of the vehicle, the ABPA concluded that the functional benefit of aesthetic compatibility rendered the patents invalid. The district court denied the ABPA's motion for declaratory judgment and held that the patents were not invalid under 35 U.S.C. § 171.
In affirming the lower court, the Federal Circuit similarly rejected the ABPA's theory of functionality, holding that, regardless of consumer preference for matching parts, "the aesthetic appeal of a design to consumers is inadequate to render that design functional." Rather, as Judge Stoll wrote for the court, a preference for Ford's designs over competitor parts that perform the same function "is exactly the type of market advantage 'manifestly contemplate[d]' by Congress in the laws authorizing design patents."
The Federal Circuit declined the ABPA's invitation to extend the trademark law principle of aesthetic functionality to design patents, explaining that although trademarks and design patents have certain similarities, they serve different purposes, and "[t]he considerations that drive the aesthetic functionality doctrine of trademark law simply do not apply to design patents."
While the court has not mandated a specific test to determine whether a design is functional, precedent has often looked to the presence of alternative designs as an indication that the design serves a primarily ornamental purpose. In this matter, the Federal Circuit noted that Ford introduced "abundant evidence" showing that many alternative headlamp and hood designs physically fit its trucks and perform the same functions as the original parts.
Similarly unsuccessful was the ABPA's theory that Ford's patents were unenforceable under the doctrine of exhaustion. Exhaustion is the principle that once a patent holder sells something covered by their patent, the purchaser does not infringe the patent by using the purchased item. It was already well established for utility patents that exhaustion applies only to the specific article sold and does not give the purchaser the right to create additional copies of the patented invention. However, the ABPA argued that a different rule should apply for design patents. In particular, the ABPA urged that the sale of an F-150 truck exhausts Ford's design patent rights and allows the use of the designs on replacement parts intended for use with Ford's trucks. In rejecting this argument, the court noted that "we apply the same rules to design and utility patents whenever possible." The Federal Circuit did not find any reason why design and utility patents should be treated differently with regard to exhaustion, concluding that it "attaches only to items sold by, or with the authorization of, the patentee," and that since "ABPA's members' sales are not authorized by Ford; it follows that exhaustion does not protect them."
The ABPA also argued that its members had a right to repair their trucks and were thus immune from infringement. It is well established that the purchase of a patented article includes the right to repair it. In the context of utility patents, that right does not extend to complete reproduction of the patented article or a license to produce other, independently patented articles. The court declined to make a special rule for design patents with similar reasoning to that used for ABPA's exhaustion argument, finding that Ford's sales of F-150s did not include a right to produce replacement hoods and headlamps because "the designs ... are covered by distinct patents."
The Federal Circuit's ABPA decision demonstrates the important role that design patents can play in protecting the market for replacement parts against aftermarket sales by competing manufacturers. It makes clear that the ornamentality requirement is a low bar and that the aesthetic appeal of a design does not itself render the design primarily functional.
Companies seeking protection in this space should consider the availability of alternative designs to support a claim of ornamentality. They should also carefully consider the scope of design patent claims. The ABPA decision specifically noted that if Ford had patented its designs in the context of the whole truck, rather than just the headlamp or hood, purchases of the truck would have come with a right to repair the truck by replacing those components. Thus, companies should seek to file design patents on distinct components that they expect to be replaced throughout the lifetime of the product as a whole.
Curver Luxembourg: A Case of First Impression
The Federal Circuit similarly weighed in on the scope of design patent claims in Curver Luxembourg, SARL v. Home Expressions, a case of first impression upholding a New Jersey judge's ruling that Home Expressions' baskets showing an overlapping "Y" pattern did not infringe Curver's patent showing a similar design.
While the ornamentality requirement of § 171 was at issue in ABPA, at issue in Curver Luxembourg was the statute's requirement that the design be applied to an article of manufacture. To determine the scope of a design patent, courts have traditionally looked to the figures illustrated in the patent. Critically, however, while the title, description and claim of the patent-in-suit, US D677,946, recite a "pattern for a chair," the figures show only the pattern itself.
Curver sued Home Expressions in New Jersey district court, alleging that Home Expressions made and sold baskets that incorporated Curver's claimed "Y" pattern and thus infringed the '946 patent. Home Expressions moved to dismiss the case under Federal Rule of Civil Procedure 12(b)(6), arguing that its baskets did not infringe because the patented design was limited to chairs. The district court agreed. In applying the "ordinary observer" test for design patent infringement claims, the court construed the scope of the design as limited to the article of manufacture (here, a chair) listed in the patent and concluded that an ordinary observer would not purchase Home Expressions's basket with an overlapping "Y" design believing the purchase to be for an ornamental "Y" design applied to a chair. The court noted that, during prosecution, Curver had amended the title to satisfy the article of manufacture requirement after the examiner concluded that the original title of "Furniture (Part Of)" was too vague.
On appeal to the Federal Circuit, Curver argued that the district court erred by relying on claim language reciting a "pattern for a chair," rather than focusing on the figures, which did not show an article of manufacture. The case thus tasked the Federal Circuit with answering a unique question: how to construe the scope of a design patent when an article of manufacture is recited in the claim but not depicted in the drawings. Concluding that Curver's argument "effectively collapse[d] to a request for a patent on a surface ornamentation design per se," the court declined to construe the scope of design patent law so broadly, looking to precedent and U.S. Patent and Trademark Office practice to support its holding that design patents are granted only for designs applied to an article of manufacture. The answer to the unique question facing the court was thus: "claim language can limit the scope of a design patent where the claim language supplies the only instance of an article of manufacture that appears nowhere in the figures."
The decision in Curver has several implications for companies seeking design patent protection. When initially drafting design applications, companies should balance limiting the scope of prior art with obtaining broad protection in deciding how to define the article of manufacture to which the design is attached. Companies should consider including support for a range of articles of manufacture with differing scope in their applications. Companies with pending applications should also consider filing continuations claiming their designs applied to articles of manufacture of differing scope to the extent their existing specifications support such claims. Finally, should an examiner request an amendment to the title during prosecution, companies should carefully scrutinize any recommended titles to determine the potential impact on claim scope.
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