United States District Court, E.D. Michigan, Southern Division
OPINION AND ORDER DENYING FORD'S MOTION TO
DISMISS THE CASE AS MOOT  AND DENYING THE ABPA'S
MOTION FOR SUMMARY JUDGMENT 
J. MICHELSON U.S. DISTRICT JUDGE.
Automotive Body Parts Association effectively asks this Court
to eliminate design patents on auto-body parts. Members of
the ABPA import, make, and sell auto-body parts that are used
to repair cars and trucks damaged in a collision. Ford Global
Technologies, LLC holds a large portfolio of patents that
protect the designs for body parts for Ford vehicles. The
ABPA, on behalf of its members, filed this lawsuit asking
this Court to declare that two of Ford's patents
protecting the design of two F-150 body parts are either
invalid or unenforceable. But the ABPA's arguments are
not specific to those two patents. Instead, the ABPA argues
that designs for auto-body parts are simply not eligible for
patent protection because consumers seeking to repair their
vehicles do not select body parts for their design and
because the designs were dictated by the body parts'
function. In the alternative, the ABPA says that patents
protecting the designs of auto-body parts are unenforceable
against its members because the patent rights are exhausted
upon the first authorized sale of the vehicle.
ABPA now seeks summary judgment. (R. 39.) It asks this Court
to declare as a matter of law that two of Ford's design
patents are invalid or unenforceable. The Court has carefully
considered the parties' arguments made not only in this
case but in a related case presenting the same invalidity and
unenforceability questions. Having done so, the Court finds
that the ABPA has not shown that Ford's designs for an
F-150 hood and headlamp are not eligible for design patent
protection and has not shown that Ford's patent rights to
those designs are exhausted when Ford sells an F-150 truck.
Automotive Body Parts Association is an association of
companies that distribute automotive body parts.
(See R. 2, PID 10-11.) Members of the ABPA sell
auto-body parts to collision repair shops or even directly to
Ford Global Technologies, LLC owns a portfolio of well over a
hundred patents protecting the designs for auto-body parts.
(See R. 62, PID 1253-1321.) Two are at issue in this
case: U.S. Patent No. D489, 299 and U.S. Patent No. D501,
685. The '299 patent protects the design for a Ford F-150
hood and the '685 patent protects the design for an F-150
appears that the first significant dispute between Ford and
the ABPA arose in 2005. That year, Ford filed an action with
the United States International Trade Commission against
seven members of the ABPA. (R. 68, PID 1453, 1585.) Ford
initially accused these ABPA members of infringing 14 of its
design patents for auto-body parts, including the two at
issue in this case. (See R. 68, PID 1585.) Ford
later dropped those two patents from the ITC action. The ITC
action (and a second one) settled in 2009, with Ford granting
a single ABPA member, LKQ Corporation, the exclusive right to
sell auto-body parts protected by Ford's design patents.
(See R. 62, PID 1329.)
relevant to this case, things between Ford and the ABPA
remained relatively quiet until 2013, with Ford sending only
two cease-and-desist letters to ABPA members in 2011 and
2012. (See R. 68, PID 1466, 1471.) But in 2013, the
tension between Ford and ABPA member New World International,
Inc. escalated. (R. 62, PID 1250.) Ford wrote to New World,
“We purchased several articles from New World
International that are covered by Ford design
patents[.]” (R. 62, PID 1260.) Ford referenced one of
the design patents at issue in this case, the '299
patent. (Id.) Ford asked New World to “refrain
from importing or selling parts covered by Ford design
patents.” (R. 62, PID 1251.) New World did not comply
(or at least that is what Ford thought), so in November 2013,
Ford sent New World another letter. The second letter warned
that if New World did not stop offering certain auto-body
parts on its website, Ford “w[ould] be forced to
consider all avenues available to protect and enforce its
intellectual property rights.” (R. 61, PID 1245.)
than two weeks after Ford's November 2013 letter, the
ABPA filed this lawsuit in the Eastern District of Texas.
See Auto. Body Parts Assoc. v. Ford Global Techs.,
No. 13-00705 (E.D. Tex. filed Nov. 25, 2013.) The ABPA asked
the federal court in Texas to declare six of Ford's
design patents, including the '299 and the '685
patents, invalid or unenforceable.
months later, Ford challenged the ABPA's standing to seek
such relief. One way for an association to have standing to
sue is for the association to satisfy the Hunt test:
“(a) its members would otherwise have standing to sue
in their own right; (b) the interests it seeks to protect are
germane to the organization's purpose; and (c) neither
the claim asserted nor the relief requested requires the
participation of individual members in the lawsuit.”
Hunt v. Wash. State Apple Advertising Comm'n,
432 U.S. 333, 343 (1977). In September 2014, the federal
court in Texas found that the ABPA had satisfied this test.
Auto. Body Parts Ass'n v. Ford Glob. Techs.,
LLC, No. 4:13-CV-705, 2014 WL 4652123, at *8 (E.D. Tex.
Sept. 17, 2014). As to the first Hunt requirement,
the court found that “in its cease and desist letters,
Ford accused New World of infringing the design patents,
which is sufficient to establish that New World would have
standing in its own right to bring an action for declaratory
judgment against Ford.” Id. at *8.
that determination, the ABPA amended its complaint. Instead
of seeking a declaration that six of Ford's design
patents for auto-body parts were invalid or unenforceable, it
only sought that declaration as to the '299 and '685
patents. (See R. 2.)
January 2015, the federal court in Texas transferred the case
to the Eastern District of Michigan and it was assigned to
this Court's docket. (See R. 1.)
two weeks later, Ford filed a separate lawsuit against New
World in the Eastern District of Michigan. Ford Global
Techs., LLC v. New World Int'l, Inc. et al., No.
15-10394 (E.D. Mich. filed Jan. 29, 2015). Ford initially
accused New World of infringing the two patents at issue in
this case along with several others. Like in the ITC action,
Ford later dropped its claims that New World had infringed
the two patents at issue here. Ford's case against New
World was reassigned to this Court's docket as a
companion to this case.
October 2016, the ABPA filed the motion for summary judgment
now pending before this Court. (R. 39.) According to the
ABPA, the '299 and '685 patents are invalid because
they do not protect ornamental designs and they are
unenforceable against ABPA members because when Ford sells an
F-150 truck, its patent rights in the design of the
truck's hood and headlamp are exhausted. (See R.
39, PID 566.)
same month, New World, which is represented by the same
counsel as the ABPA, filed for summary judgment in the
companion to this case. New World essentially made the same
invalidity and unenforceability arguments as did the ABPA.
Although New World subsequently withdrew that motion, Ford
then filed a mirror-image motion for summary-judgment: it
claimed that its design patents were not invalid for
failing to protect ornamental designs and that they were
not unenforceable under the doctrine of exhaustion.
Given that ABPA's motion in this case and Ford's in
the companion addressed the same two issues, the parties
agreed that the Court should consider the arguments presented
in all the briefs in both cases in deciding both motions.
this Court was in the midst of drafting its opinion on the
two motions, a threshold issue arose in each case. The first
was a result of TC Heartland LLC v. Kraft Foods Group
Brands LLC, 137 S.Ct. 1514 (2017). There, the Supreme
Court held that a corporation can be sued for patent
infringement only in its state of incorporation. See
Id. at 1517. New World's was Texas. So this question
arose: should Ford's suit against New World remain in the
Eastern District of Michigan?
other threshold issue involved this case. Although it had
made similar statements earlier, in its summary-judgment
briefing, Ford made clear that it was not accusing New World
of infringing the two patents at issue in this case.
(See R. 54.) As noted above, under Hunt,
the ABPA's standing to seek a declaratory judgment was
premised on New World's standing to do so. So the Court
asked the parties to brief the issue of mootness.
(See R. 54.) In that briefing, Ford went a step
further: it offered a covenant never to sue New World (and a
few others) for infringing the '299 and '685 patents.
(See R. 61, PID 1104.) So this question arose: is
this case moot?
Court has already answered one of the two threshold
questions. In particular, the Court found that under TC
Heartland, the Eastern District of Michigan was not the
proper venue for Ford's suit against New World and that
New World had not waived the defense of improper venue.
See generally Ford Glob. Techs., LLC v. New World
Int'l Inc., No. 2:15-CV-10394, 2017 WL 5635451 (E.D.
Mich. Nov. 7, 2017). The Court thus transferred Ford's
infringement case to the Northern District of Texas. See
Ford Glob. Techs., LLC v. New World Int'l Inc., No.
3:17-cv-03201-N (N.D. Texas filed Nov. 22, 2017.) Ford's
summary-judgment motion-the one that mirrors the one the ABPA
asks this Court to decide-remains pending before the federal
court in Texas.
Court now turns to the other threshold issue: whether this
case is moot.
surface, it seems so. Based on the covenant it has offered
and associated representations it made at oral argument, Ford
is willing to irrevocably commit to never suing New World
(and three other entities) for infringing the two patents at
issue in this case, the '299 and '685 patents.
(See R. 63, PID 1104, 1348.) And, as explained, the
federal court in Texas found that the ABPA had standing in
this case because Ford had sent New World cease-and-desist
letters. In other words, the ABPA's standing to seek a
declaration that the two patents-in-suit are invalid or
unenforceable was built ...