Opinion Issued: July 23, 2019 [*]
from the United States District Court for the Eastern
District of Michigan in No. 2:15-cv-10137-LJM-RSW, Judge
Laurie J. Michelson.
Glenn Oake, Jr., Oake Law Office, Allen, TX, argued for
plaintiff-appellant. Also represented by Paul Kittinger,
Cardelli Lanfear PC, Royal Oak, MI.
Jessica Lynn Ellsworth, Hogan Lovells U.S. LLP, Washington,
DC, argued for defendant-appellee. Also represented by
Katherine Booth Wellington; Frank A. Angileri, Marc Lorelli,
Brooks Kushman PC, Southfield, MI.
Hughes, Schall, and Stoll, Circuit Judges.
case involves both differences and similarities between
design patents and utility patents. A design patent protects
a "new, original and ornamental design for an article of
manufacture." 35 U.S.C. § 171(a). While established
law bars design patents on primarily functional designs for
lack of ornamentality, utility patents must be functional to
be patentable. In many other ways though, design and utility
patents are similar. Section 171(b) of Title 35 demands as
much, directing that the requirements that apply to
"patents for inventions shall apply to patents for
designs" unless otherwise provided.
we decide what types of functionality invalidate a design
patent and determine whether long-standing rules of patent
exhaustion and repair rights applicable to utility patents
also apply to design patents. Automotive Body Parts
Association (ABPA) asks us to hold that the aesthetic
appeal-rather than any mechanical or utilitarian aspect-of a
patented design may render it functional. And it asks us to
expand the doctrines of exhaustion and repair to recognize
the "unique nature" of design patents. Both
theories invite us to rewrite established law to permit ABPA
to evade Ford Global Technologies, LLC's patent rights.
We decline ABPA's invitation and affirm the district
court's summary judgment.
U.S. Patent No. D489, 299 and U.S. Patent No. D501, 685
protect designs used in certain models of Ford's F-150
trucks. The D'299 patent, titled "Exterior of
Vehicle Hood," claims "[t]he ornamental design for
exterior of vehicle hood." Figure 1, below, illustrates
D'685 patent, titled "Vehicle Head Lamp,"
claims "[t]he ornamental design for a vehicle head
lamp," as shown in Figures 1 and 2, reproduced below.
inventors of these designs are artists holding Bachelor of
Fine Arts degrees from the College for Creative Studies. In a
declaration, one inventor explained that the inventors had
"full control and responsibility for the exterior
appearance of the . . . Ford F-150 truck," that
"the design team created and selected part designs based
on aesthetic appearance," and that although engineers
reviewed the final designs, "[t]here were no changes to
the aesthetic designs of the parts based on engineering or
functional requirements." J.A. 2538-39.
an association of companies that distribute automotive body
parts, clashed with Ford at the International Trade
Commission when Ford accused a number of ABPA members of
infringing the D'299 and D'685 patents, among others.
The ITC actions eventually settled, but only after the
administrative law judge ruled that "respondents'
[invalidity] defense that the asserted patents do not comply
with the ornamentality requirement of 35 U.S.C. § 171
has no basis in the law," J.A. 256, and that "there
is no legal basis for respondents' assertion of
[unenforceability based on] either the patent exhaustion or
permissible repair doctrines," J.A. 242.
ABPA sued Ford in district court, seeking a declaratory
judgment of invalidity or unenforceability of the D'299
and D'685 patents. ABPA eventually moved for summary
judgment. The district court considered ABPA's arguments
and denied the motion, noting that ABPA "effectively
ask[ed] this Court to eliminate design patents on auto-body
parts." Auto. Body Parts Ass'n v. Ford Glob.
Techs., LLC, 293 F.Supp.3d 690, 694 (E.D. Mich. 2018).
Though Ford had not moved for summary judgment, the district
court announced its intention to enter judgment in favor of
Ford sua sponte pursuant to Federal Rule of Civil Procedure
56(f)(1). Id. at 707. ABPA responded, agreeing that
it had not "include[d] any additional argument,
authorities, or evidence beyond that which has already been
considered by this Court," and ...