Manufacturers Locking-In Consumers with Design Patents

by Dennis Crouch

Automotive Body Parts Ass’n v. Ford Global Techs. (Fed. Cir. 2019)

Car manufacturers regularly use design patents to control the repair marketplace.  In this case, Ford accused members of the ABPA of infringing its U.S. Patent No. D489,299 (F150 truck hood) and U.S. Patent No. D501,685 (F150 headlamp) andn APBA responded with a declaratory judgment lawsuit — arguing that the patented designs are functional rather than ornamental and therefore invalid.

A design patent must be directed to an “ornamental design for an article of
manufacture” and not one “dictated by function.”  High Point Design LLC v.
Buyers Direct, Inc., 730 F.3d 1301, 1315 (Fed. Cir. 2013) (interpreting 35 U.S.C. § 171(a)).   Although the article of manufacture itself is typically functional, the design itself may not be “primarily functional.”

The Federal Circuit has applied a multi-factor approach that basically asks whether the claimed design is “essential to the use of the article.” Factors:

[W]hether the protected design represents the best design; whether alternative designs would adversely affect the utility of the specified article; whether there are any concomitant utility patents; whether the advertising touts particular features of the design as having specific utility; and whether there are any elements in the design or an overall appearance clearly not dictated by function.

Berry Sterling Corp. v. Pescor Plastics, Inc., 122 F.3d 1452 (Fed. Cir. 1997).

ABPA’s argument here is that anyone repairing a damaged F150 truck will want replacement parts that match the original design.  In particular, APBA “argues
that Ford’s hood and headlamp designs are functional because they aesthetically match the F-150 truck.”  On appeal, the Federal Circuit rejected this theory of functionality: “the aesthetic appeal of a design to consumers is inadequate to render that design functional” —  “even in this context of a consumer preference for a particular design to match other parts of a whole.”  According to the court, market advantage via aesthetic appeal is the exact type of market advantage that design patents are supposed to provide.

The holding here gives a powerful nod of approval to the already rampant use of design patents to lock-in consumers for repair parts and for manufacturers to use design patents to prohibit unauthorized interconnections.  In this form, the case sits closely alongside the Federal Circuit’s decision on Google v. Oracle that is pending certiorari before the Supreme Court.  The case also reaffirms the tradition that the functional limit in design patents is a very weak test — even weaker than that of copyright and trademark law. 

Auto insurance companies have long lobbied congress to weaken design patent coverage on repair parts. This case may trigger a resurgence in that activity.  The case also suggests a potential marketplace for after-market parts that are slightly different from OEM but still functional.  I’d probably prefer an F150 that doesn’t look like the original.  

47 thoughts on “Manufacturers Locking-In Consumers with Design Patents

  1. 6

    Avoiding infringement of a design patent by a product “design around” changing of the ornamental aspects is not as easy as some folks think. [Even though the Fed. Cir. has held that design patent claims should be narrowly construed re the solid lines in the drawings.] Because in Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 678 (Fed. Cir. 2008), the Federal Circuit held that the “point of novelty” test should no longer be used in the analysis of a claim of design patent infringement. The Federal Circuit now holds that the “ordinary observer” test should be the sole test for determining whether a design patent has been infringed. Under that test, infringement will be found if the accused article “embod[ies] the patented design or any colorable imitation thereof.” [Jurors get to play “ordinary observers.”]

    1. 6.1

      The “well duh” reply is that design around is NOT making a colorable imitation.

      If you are wanting a colorable imitation (but still “different”), you are not engaging in a design around.

  2. 5

    Getting back to the substance of the opinion, the court got it mostly right, but for its stubborn reiteration of the “considerations” for determining design patent functionality from Berry Sterling. While the court did a good job of distinguishing between design patent and trade dress functionality principles, the “considerations” (quoted above by Dennis) from Berry Sterling are eerily similar to the Morton-Norwich factors for determining trade dress functionality, and really have no place in design patent law. Moreover, in Berry Sterling, the list of considerations was at the end of the opinion, and was pure dicta; perhaps the result of a law clerk’s sloppy research on functionality. Interestingly, although quoting the “considerations,” the court did not bother to apply them, instead relying on the time-honored test for design patent functionality, namely whether there are alternative designs that perform substantially the same function.

    In the same vein, the quote from L.A. Gear that a design patent is functional if it is “essential to the use of the article,” harks back to the trade dress cases of Qualitex and TrafFix that said a trade dress feature is functional if it “is essential to the use or purpose” of the feature, or affects “its cost or quality”. This mixing up of trade dress law and design patent law is unfortunate and has led to a lot of wasteful litigation.

    1. 5.1

      That all sounds right.

  3. 4

    It is ludicrous to argue that there isn’t a design element to all the visible parts.

    So really this isn’t hard to understand. You should be able to see replacement parts that are functional but don’t match the design of the original parts.

    Fairly simple.

    1. 4.1

      All this comment reminds me of the intense debate in Europe, when we were writing the EU Registered Designs Law, about spare parts and the design registrations protecting them, and the tricky issues of “must fit” and “must match” enacted in the end in Article 8.

      Apart from “not invented here” issues, what else does the USA have against the EU Registered Design Law, especially its Art 1 through 8 provisions on registrability?

      link to euipo.europa.eu

      1. 4.1.1

        The “must fit” and “must match” exclusions in the RCD regulations are a testament to the insurance companies’ and knock-off parts manufacturers’ lobbies in Europe. Although, as pointed out by Dennis, they have been so far unsuccessful here, there may be a resurgence of such efforts, that had been spearheaded by ex-Representative Darryl Issa. I think one major difference contributing to this divergence is the fact that RCDs are simply registered, while U.S. design patents are examined. And note that in spite of the RCD restrictions, they do not exist in the design laws of a number of car manufacturer-friendly countries, such as Italy.

        1. 4.1.1.1

          I agree that must fit and must match was a serious point of difference, when the EU Regulation was being written, between those EU Member States who wanted to support OEM’s and those who wanted to support the business of making and selling cheap spare parts.

          You invite me to “note” the national law of Italy. But Italy is an EU Member State subject to the EU Directive on national design law:

          link to en.wikipedia.org

          so, sooner or later, it has to harmonise its national law with the Directive.

    2. 4.2

      Not that simple, see 2.1.2 and 6. Plus, most car or truck owners do not want their car or truck to not look like the original.

      1. 4.2.1

        Plus, most car or truck owners do not want their car or truck to not look like the original.

        Completely inapposite to the legal point at hand.

        Which is why I saw humor and made post 1.

        1. 4.2.1.1

          Not at all “inapposite to the legal point at hand” because such design patents prevent the normal legal option of making or selling a non-infringing replacement part product, in a major market.
          Furthermore, especially with the current Fed. Cir. design patent infringement test, it seems much more difficult than for most utility patents to clearly predict in advance what will be held to be infringed or not prior to a jury trial.

          1. 4.2.1.1.1

            prevent the normal legal option of making or selling a non-infringing replacement part product,…

            By definition, you do not have “non-infringing” in this scenario — “looking like” is WHY the design patent is obtained in the first place.

            … in a major market.

            There is NO “major/minor” differentiators in the law.

            Perhaps you are confused in that for major markets there are Efficient Infringer groups wanting to change the law…

  4. 3

    Setting aside for the moment the fact that design patent “law” is a hot steaming mess, this particular argument:

    “…Ford’s hood and headlamp designs are functional because they aesthetically match the F-150 truck.”

    is absurd to the point of being sanction-worthy. C’mon people. Try harder.

    1. 3.1

      I agree with you.

      The fact of the matter is that the functional part is the hood or headlamp and the fact that different brands have different designs for these items makes the designs themselves de facto NOT functional as that term is used in Design Patent Law.

      1. 3.1.1

        functional as that term is used in Design Patent Law

        How does the definition of “functional” differ from the use of the term in utility patent law?

        1. 3.1.1.1

          How does ANY term really translate between Design Patent Law and Utility Patent Law?

          Leastwise, any term connected to my view expressed already at post 2….

          1. 3.1.1.1.1

            How does ANY term really translate between Design Patent Law and Utility Patent Law?

            The rubber would seem to meet the road at this exact point, which represents the dividing line between the two schemes: the definitions of “functional” and “ornamental”. Why would one expect those terms to have different meanings?

            Does the term “expressive” or the term “information” have a different meaning in patent law versus copyright law? I don’t see why they would.

            1. 3.1.1.1.1.1

              Why would one expect those terms to have different meanings?

              To be clear, I mean to ask why would one expect either term to have a meaning in utility patent law that is different from the meaning of the same term in design patent law if, in fact, those terms are the descriptive terms that distinguish between the two schemes.

              1. 3.1.1.1.1.1.1

                Try again – your question is still too muddled.

    2. 3.2

      There is no “functional” exception to utility patent law. That whole point of a utility patent is that the invention is useful.

      But there is a parallel doctrine of functionality in trade dress law. And there an argument like this one would be a solid one.

      So it is not sanctionable, IMO, although the Federal Circuit came out the right way, I think.

      1. 3.2.1

        That whole point of a utility patent is that the invention is useful.

        And “useful” means … what? “Having utility”?

        Instructions are useful. Facts are useful. Correlations are useful. “Entertaining” is a “function.”

        These are perhaps the most critical questions in patent law at the moment, in case you haven’t been paying attention to the shenanigans in Congress as they attempt to create pure chaos for the purpose of exploitation/extortion by the usual suspects.

        Shall we try to have a conversation about the actual meaning of these terms? Shall we lock Bildo and Company out of the room first? Or should we just shrug and wait for the judiciary to figure it out while Bildo and Company screech “NOT WHAT CONGRESS MEANT NOT WHAT CONGRESS MEANT” like they will inevitably do when that inevitably happens.

        1. 3.2.1.1

          Your willful ig n0r ance as to the Useful Arts is noted.

          1. 3.2.1.1.1

            Your willful ig n0r ance as to the Useful Arts is noted.

            Define the term “Useful Arts” in a meaningful way for everyone. You’re a very serious person! Ask Clarence Thomas for help.

            1. 3.2.1.1.1.1

              We’ve been on this Merry Go Round already – anything not in the Fine Arts.

              1. 3.2.1.1.1.1.1

                We’ve been on this Merry Go Round already

                Yes, I have seen you on the Merry Go Round, Bildo!

                Wheeeeee! You are having so much fun! Dennis loves you very much.

                1. Did you have a point with this last reply of yours, or are you going to pretend that you do not understand what the Fine Arts are?

              2. 3.2.1.1.1.1.2

                So, if it isn’t fine arts it must be useful arts? Nothing in between? How about, for example, the art of conversation? The art of cross-examining a witness? The art of creative accounting? The art of dissembling? The art of charming your audience? The art of bringing people around to vote for you? The art of being economical with the truth?

                In the context of the patents clause, the “useful arts” means something distinct from “all arts that are useful”.

                1. You act as if the list of “Arts” you rattle off cannot be placed in one or the other of Useful Art and Fine Arts…

                  (while it is self evident that they can be)

                  In ANY event, it is a known FACT that the US Sovereign choice of Useful Arts is more than the EP “Technical Arts.” We can at least agree upon that, eh MaxDrei?

                  (even if YOU refuse to ever actually define the “Technical” in your Technical Arts)

                2. In the context of the patents clause, the “useful arts” means something distinct from “all arts that are useful”.

                  Exactly right. “The term ‘technological arts’… ha[s] a connotation in these times roughly equivalent to that which ‘useful arts’ had in the eighteenth century.” In re Waldbaum, 457 F.2d 997, 1003 (C.C.P.A. 1972) (Rich, J., concurring).

                3. When SCOTUS finally gets around to telling us what, in the context of the patents clause of the Constitution, is the meaning of “the Useful Arts”, I am in little doubt that it will correspond more or less to what GATT-TRIPS calls “any field of technology” and what the world beyond the USA calls “technical” (a convenient abbreviation for all fields of technology).

                  So, no, we do not agree that, in the ultimate, in the end, when SCOTUS has spoken, useful arts is wider than technical character. For the definition “All arts under the sun, with the sole exception of the fine arts” I would not recommend holding your breath. That day will never dawn.

                4. When SCOTUS finally gets around to telling us what, in the context of the patents clause of the Constitution, is the meaning of “the Useful Arts”, I am in little doubt that it will correspond more or less to what GATT-TRIPS calls “any field of technology”…

                  This will probably be a slightly controversial assertion, but I do not think that SCotUS will ever have occasion to delineate the boundaries of “useful arts” with particularity because it has no actual significance. The exact phrase in which “useful arts” occurs (Art. I, §8, cl. 8) provides that “[t]he Congress shall have power… [t]o promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.” Despite the fact that neither “Science” nor “Useful Art” suggest as much today, “Science” (in XVIII century English) gives rise to the constitutional authorization of the copyright system, and “Useful Arts” gives rise to the authorization of the patent system.

                  Except, “Science” in XVIII century English meant roughly the same as “knowledge” in contemporary English. In other words, the constitutional logic for a copyright system is that such a system promotes the progress of knowledge. Is even half (even a quarter) of present day copyrighted material even plausibly promoting knowledge? Do Sega games, or Playboy Magazine, or t-shirts with Mickey Mouse on them, or Vanilla Ice MP3s—or any of the myriad other things about which copyright litigation gets fought—have any plausible effect on the diffusion of knowledge? No, of course not.

                  And yet no one seriously entertains the idea that one could successfully avoid a charge of copyright infringement by arguing that the U.S. copyright act is facially invalid as extending beyond the scope of constitutional authorization. In other words, it is fairly well accepted in the copyright context that it is just fine that the system extends protection well beyond what is necessary to “promote the progress of Science.”

                  Why then do we imagine (if the question were ever squarely put to the Court) that the patent act might be tanked on the grounds that it extends protection beyond that which is necessary to “promote the progress of… the Useful Art”? It seems much more likely to me (based on Eldred v. Ashcroft and Golan v. Holder) that the Court—if asked to decide this question—would simply hold that conformity to Art. I, §8, cl. 8 is examined under a rational basis test, and therefore the precise outer limits of Art. I, §8, cl. 8 are unimportant, because they are satisfied by any actual patent statute that any actual Congress is ever like to enact.

                5. I’m grateful to Greg for showing me that the patents clause does not include the word “invention”. Rather:

                  copyright = science = authors = writings

                  and

                  patent = useful arts = inventors = discoveries

                  respectively. Inventors discover stuff, it seems. But wait. Perhaps, Greg, the word “discover” is here used in an 18th century “discovery process” sense, to “make available for scrutiny”?

                  In other words, does the patents clause visualise rights of a scope commensurate with the extent of the contribution to the art, that is, confined to that which is enabled by what the inventor “discovers” to the public in the patent application as filed? If so, bravo.

                  Otherwise, it seems that every “invention”, however conceived, is nothing more than a “discovery”. That too is an interesting thought.

                  As to your main point, Greg, that defining “useful arts” is not needed, that it is inherent in any patent statute, why then do Americans say that Europe needs to define “technical”?

                6. It is interesting to note that Mr. “High Road” provides as his support an earlier statement of dicta from a concurrence, when a later statement was much more direct and on point that there is NO “technical arts” test in US patent jurisprudence.

                7. [D]oes the patents clause visualise rights of a scope commensurate with the extent of the contribution to the art, that is, confined to that which is enabled by what the inventor “discovers” to the public in the patent application as filed?

                  Possibly. My point is that we will never know, because the SCotUS has evidently decided that they are not interested in policing the degree of “commensurate” between the scope of the monopoly granted and the scope of the advance disclosed.

                  It would be terrible public policy for the Congress to craft a patent act that granted patents on playing cards, or sweet cherries, or cured rubber—terrible policy, but no constitutional infirmity. Congress is not nearly limited to granting patents only on the advance over the art. Congress wisely chooses not to grant patents that go farther than the disclosed contribution, but only because to do otherwise would have untoward policy consequences, not because of a constitutional limitation that constrains such a grant.

                  In other words, even though “useful arts” = “technological arts,” Congress’ power to grant patents is not limited to the technological arts. There is no “technological arts” test to the patent grant, nor is there any constitutional reason why there should be (although that leaves open a possible policy argument for such a test). Speculation about the outer bounds of the realm of “technological arts” is an interesting question in its own right, but simply irrelevant to any actually live issue in U.S. patent law.

                8. Greg states:

                  There is no “technological arts” test to the patent grant, nor is there any constitutional reason why there should be

                  and yet, the patent grant MUST provide that utility is present.

                  Hmmmm.

                9. “So, if it isn’t fine arts it must be useful arts? Nothing in between? How about, for example, the art of conversation? The art of cross-examining a witness? ”

                  I jest cain’t belieb you left out “The Art Of The Deal”.

                  link to amazon.com

        2. 3.2.1.2

          Come down to Planet Earth.

          “useful” is an express statutory requirement in Section 101 of the Patent Act. Granted it is rarely an issue (other than perpetual motions machines and other such quirks.) But it is still a requirement.

          And that is in contrast to design patents for which the statutory requirement is that they be “ornamental.” That is in distinct contrast to 101’s “useful” requirement for utility patents.

          The point is, that utility and design patents are at polar opposites — one protects useful inventions, the other ornamental inventions. That is why design patent law has a functional doctrine, while utility patent law does not.

          1. 3.2.1.2.1

            That is why design patent law has a functional doctrine, while utility patent law does not.

            Last time I checked, “utility patent law” has a “doctrine” sometimes referred to as the “printed matter doctrine” which is a subject matter eligibility test that requires testing the “functional” relationship of certain elements in a claim to certain other elements in a claim. Note that the doctrine’s application is not limited to “printed” matter. It certainly could be applied (and undoubtedly has been applied) to address the patentability (as in utility patent) of “designs printed on a manufacture.”

            So again: what does the term “functional” mean in the context of these two systems?

            1. 3.2.1.2.1.1

              Sounds like you might be ready to (finally) accept my invitation to discuss (in an inte11ectually honest manner) my Simple Set Theory explication of the exceptions to the judicial doctrine of printed matter.

              Let me know if this is so (or if you are merely doing your usual internet style shout down drive-by monologue with no interest in actually acknowledging, understanding, and integrating the counter points to your view that are already on the table).

    3. 3.3

      Agreed, in particular

      “[the] designs are functional because they aesthetically match”

      is laughable.

  5. 2

    On a more substantive note, I would love for the entire concept of “Design Patents” to be overhauled and set straight.

    The concept is a b@$tardization of patents (meant to protect utility) and copyright (meant to protect expression), and is a mess in its current “force-fed-into-the-patent-statute” anyway.

    1. 2.1

      What’s the big deal? Don’t make an exact knock off part. You can make one that fits the slot (functional), but just don’t make an exact mold copy of the design patent in toto.

      1. 2.1.1

        The big deal is the conceptual framework of the different systems.

        Your added comment appears to shift the focus to somehow being about transgression of the law. My comment is quite different as to why the law is as it is in the first place. You appear to be focused NOT on that same aspect, and thus is a bit of a non-sequitur to my post at 2 (and truthfully, fits my less substantial comment at post 1 instead).

      2. 2.1.2

        Yes, one could make or sell an auto replacement part that fits [function] but carefully avoid as many as possible of the solid line features of the design patent drawing [its claim]. Of course for headlight or tail light covers you will need to sell and replace both of them, not just the broken one, to avoid a cockeyed car appearance.

      3. 2.1.3

        just don’t make an exact mold copy of the design patent in toto.

        So if it’s not “exact” then you don’t infringe? I seem to recall that the law was somewhat different …

    2. 2.2

      With kudos to Bored Lawyer and Perry, let me amend the mess of duality to be a tri-partite mess with the addition of the Commerce Clause foundation of Trade Dress.

      I will even “tip the hat” to MaxDrei and entertain that the US might learn something with a separate “Registered Design” Law.

  6. 1

    Had to chuckle at the parting shot of “I’d probably prefer an F150 that doesn’t look like the original.

    As the ready answer is: don’t buy an F150 in the first place.

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