Infringing Ford’s design patents by repairing your car


Auto body parts Ass’n c. Ford Global Techs, LLC (Supreme Court 2020) [19-__PetitionForAWritOfCertiorari]

Ford has implemented an aggressive patenting strategy for the various parts of its new vehicles. Many of these new patents are design patents: Wheels; wings; airbag compartments; grids; bumper; rear lights; headlights; console; hood; mirror; etc.

After an accident, a vehicle owner usually wants to repair the vehicle. While repair of the vehicle may appear permitted under a burnout doctrine, the difficulty arises when examining the individual parts. Repairing the vehicle may require the replacement / rebuilding of a patented part (such as the rearview mirror pictured above). The repair industry (and insurance companies) would like to use cheaper repair parts – one way is to buy off-brand parts – especially for less tech items like a fender or cover -Lighthouse. But, design patents prevent that from happening.

In its new certiorari brief petition, Automotive Body Parts Ass’n asks the Supreme Court to provide a broader view of the exhaustion doctrine:

Under the doctrine of patent exhaustion, a patentee’s decision to sell a product exhausts all of their patent rights over that item. Unrestricted sale creates an implied license to use, which includes the right to repair. The analysis of the existence of a right of repair requires the identification of the correct article of manufacture.

The Federal Circuit held that the rights to repair and identify the manufactured item should be determined solely by what is claimed in the patent. This ownership allows the patent owner to significantly reduce or eliminate the right to repair and unduly extend patent protection of designs to unclaimed parts of a design. The question asked is:

How is the article of manufacture to be determined when applying the exhaustion and remedy doctrines in design patent cases?

These issues have already been discussed in some respects by the Supreme Court in Aro Mfg. Co., Inc. vs. Convertible Top Co., 365 US 336 (1961) and Aro Manufacturing Co. v. Convertible top replacement Co., 377 US 476 (1964). However, the petitioner largely puts these cases aside – arguing that design patents are particularly problematic – and that the Supreme Court can craft a specific remedy for design patents.


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