The potential infringers filed a declaratory judgment action seeking to invalidate the patentee’s design patents related to the headlights and hoods of a Ford F-150 truck. The District Court entered judgment for the patentee, finding that the accused infringer’s arguments “effectively ask[ed] this court to eliminate design patents on auto-body parts.” On appeal, the Federal Circuit affirmed.
The potential infringers argued that the patentee’s design patents were invalid because they were “directed by function,” rather than ornamental design. This is because, according to the potential infringers, “consumers seeking replacement parts prefer hoods and headlamps that restore the original appearance of their vehicles.” As such, the accused infringer argued that “there is a functional benefit to design that are aesthetically compatible with those vehicles.” The Federal Circuit rejected that argument because “even in this context of consumer preference for a particular design to match other [auto] parts of a whole, the aesthetic appeal of a design to consumers is inadequate to render that design functional.”
The potential infringers also argued that the patentee’s design patents were unenforceable under the patent law doctrines of exhaustion and repair. Specifically, the potential infringers argued that once an F-150 truck was sold, its sale either exhausted the patentee’s rights to enforce its headlight and hood design patents, or the patentee could not enforce the design patents if the headlights were being replaced as a post-sale repair. Citing case law regarding utility patents, the Federal Circuit rejected these arguments because the exhaustion doctrine only exhausts further sale and use of the actual article sold (e.g., an original headlight) and the repair doctrine does not permit a complete reconstruction or replacement of the patented article.