`
`United States Court of Appeals
`for the Federal Circuit
`______________________
`
`AUTOMOTIVE BODY PARTS ASSOCIATION,
`Plaintiff-Appellant
`
`v.
`
`FORD GLOBAL TECHNOLOGIES, LLC,
`Defendant-Appellee
`______________________
`
`2018-1613
`______________________
`
`Appeal from the United States District Court for the
`Eastern District of Michigan in No. 2:15-cv-10137-LJM-
`RSW, Judge Laurie J. Michelson.
`______________________
`
`SEALED OPINION ISSUED: July 11, 2019
`PUBLIC OPINION ISSUED: July 23, 2019*
`______________________
`
`ROBERT 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 US LLP,
`
`Washington, DC, argued for defendant-appellee. Also rep-
`resented by KATHERINE BOOTH WELLINGTON; FRANK A.
`
`* This opinion was originally filed under seal and has
`been unsealed in full.
`
`

`

`2
`
`AUTO. BODY PARTS ASS’N v. FORD GLOB. TECHS., LLC
`
`ANGILERI, MARC LORELLI, Brooks Kushman PC, Southfield,
`MI.
`
`______________________
`
`Before HUGHES, SCHALL, and STOLL, Circuit Judges.
`STOLL, Circuit Judge.
`
`This case involves both differences and similarities be-
`tween design patents and utility patents. A design patent
`protects a “new, original and ornamental design for an ar-
`ticle of manufacture.” 35 U.S.C. § 171(a). While estab-
`lished 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.
` Here, 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 utilitar-
`ian 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 dis-
`trict court’s summary judgment.
`BACKGROUND
`I
`Ford’s 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
`
`

`

`AUTO. BODY PARTS ASS’N v. FORD GLOB. TECHS., LLC
`
`3
`
`Vehicle Hood,” claims “[t]he ornamental design for exterior
`of vehicle hood.” Figure 1, below, illustrates the hood.
`
`The 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.
`
`
`The 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 appear-
`ance of the . . . Ford F-150 truck,” that “the design team
`created and selected part designs based on aesthetic ap-
`pearance,” and that although engineers reviewed the final
`designs, “[t]here were no changes to the aesthetic
`
`

`

`4
`
`AUTO. BODY PARTS ASS’N v. FORD GLOB. TECHS., LLC
`
`designs of the[] parts based on engineering or functional
`requirements.” J.A. 2538–39.
`II
`ABPA, an association of companies that distribute au-
`tomotive 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’ [in-
`validity] 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 doc-
`trines,” J.A. 242.
`Undeterred, 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 “ef-
`fectively 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, au-
`thorities, or evidence beyond that which has already been
`considered by this Court,” and stating that it “d[id] not ob-
`ject to the prompt entry of final judgment so that [it could]
`file a notice of appeal.” J.A. 2149. The district court en-
`tered summary judgment, and ABPA appeals.
`
`

`

`AUTO. BODY PARTS ASS’N v. FORD GLOB. TECHS., LLC
`
`5
`
`DISCUSSION
`We review the district court’s sua sponte grant of sum-
`mary judgment under the law of the regional circuit. See
`Charles Mach. Works, Inc. v. Vermeer Mfg. Co., 723 F.3d
`1376, 1378 (Fed. Cir. 2013). In the Sixth Circuit, “[t]he
`substance of the district court’s decision is reviewed de
`novo under the normal standards for summary judgment.”
`Leffman v. Sprint Corp., 481 F.3d 428, 430 (6th Cir. 2007)
`(“The district court’s procedural decision to enter summary
`judgment sua sponte, however, is reviewed for abuse of dis-
`cretion.” (quoting Shelby Cty. Health Care Corp. v. S.
`Council of Indus. Workers Health & Welfare Trust Fund,
`203 F.3d 926, 931 (6th Cir. 2000))). Accordingly, we deter-
`mine whether, after weighing all inferences in favor of
`ABPA, Ford is entitled to judgment as a matter of law.1 See
`Leary v. Daeschner, 349 F.3d 888, 897 (6th Cir. 2003).
`I
`We first address ABPA’s invalidity arguments. Sec-
`tion 171 of Title 35 authorizes patents claiming “new, orig-
`inal and ornamental design[s]
`for an article of
`manufacture.” 35 U.S.C. § 171(a) (emphasis added). Our
`precedent gives weight to this language, holding that a de-
`sign patent must claim an “ornamental” design, not one
`“dictated by function.” See, e.g., High Point Design LLC v.
`Buyers Direct, Inc., 730 F.3d 1301, 1315 (Fed. Cir. 2013).
`We have recognized, however, that a valid design may con-
`tain some functional elements. After all, “a design patent’s
`
`
`1 Ordinarily, we review a district court’s determina-
`tion of whether a patented design is invalid due to func-
`tionality for clear error. See Ethicon Endo-Surgery, Inc. v.
`Covidien, Inc., 796 F.3d 1312, 1328 (Fed. Cir. 2015). ABPA
`invites us to revisit this standard and establish de novo re-
`view. Given the de novo standard inherent in review of
`summary judgment, we do not reach this question.
`
`

`

`6
`
`AUTO. BODY PARTS ASS’N v. FORD GLOB. TECHS., LLC
`
`claim protects an article of manufacture, which ‘necessarily
`serves a utilitarian purpose.’” See Sport Dimension, Inc. v.
`Coleman Co., 820 F.3d 1316, 1320 (Fed. Cir. 2016) (quoting
`L.A. Gear, Inc. v. Thom McAn Shoe Co., 988 F.2d 1117,
`1123 (Fed. Cir. 1993)). But a design patent may not claim
`a “primarily functional” design. Id. “If [a] particular de-
`sign is essential to the use of the article, it can not be the
`subject of a design patent.” L.A. Gear, 988 F.2d at 1123.
`While “[w]e have not mandated applying any particu-
`lar test,” certain considerations assist courts in assessing
`whether a design is dictated by function. Ethicon, 796 F.3d
`at 1329. These include:
`[W]hether the protected design represents the best
`design; whether alternative designs would ad-
`versely 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,
`1456 (Fed. Cir. 1997). We have often emphasized the pres-
`ence or absence of alternative designs, noting that the ex-
`istence of “several ways to achieve the function of an article
`of manufacture,” though not dispositive, increases the like-
`lihood that a design serves a primarily ornamental pur-
`pose. Id. (quoting L.A. Gear, 988 F.2d at 1123); see also
`Nordock, Inc. v. Sys. Inc., 803 F.3d 1344, 1361 (Fed. Cir.
`2015) (affirming ornamentality where record showed “al-
`ternate designs available achieve the same utilitarian pur-
`pose”), vacated on other grounds, 137 S. Ct. 589 (2016);
`Rosco, Inc. v. Mirror Lite Co., 304 F.3d 1373, 1378
`(Fed. Cir. 2002) (“[I]f other designs could produce the same
`or similar functional capabilities, the design of the article
`in question is likely ornamental, not functional.”).
`
`

`

`AUTO. BODY PARTS ASS’N v. FORD GLOB. TECHS., LLC
`
`7
`
`A
`ABPA posits (without record support) that consumers
`seeking replacement parts prefer hoods and headlamps
`that restore the original appearance of their vehicles. It
`concludes that there is a functional benefit to designs that
`are aesthetically compatible with those vehicles. See, e.g.,
`Appellant’s Br. 8–9 (“The function of the claimed designs
`includes their appearance . . . .”). From there, rather than
`arguing that Ford’s designs are functional because they
`achieve some mechanical or utilitarian goal, ABPA argues
`that Ford’s hood and headlamp designs are functional be-
`cause they aesthetically match the F-150 truck. But ABPA
`does not identify, nor can we find, any design patent case
`ruling aesthetic appeal of this type functional.
`We hold that, even in this context of a consumer pref-
`erence for a particular design to match other parts of a
`whole, the aesthetic appeal of a design to consumers is in-
`adequate to render that design functional. As the Supreme
`Court acknowledged almost 150 years ago, “giving certain
`new and original appearances to a manufactured article
`may enhance its salable value, [and] may enlarge the de-
`mand for it.” Gorham Mfg. Co. v. White, 81 U.S. 511, 525
`(1871). But regardless of the market advantage conferred
`by a patented appearance, competitors may not utilize a
`protected design during the patent’s life. See id.; see also
`35 U.S.C. § 289. To hold that designs that derive commer-
`cial value from their aesthetic appeal are functional and
`ineligible for protection, as ABPA asks, would gut these
`principles. The very “thing . . . for which [the] patent is
`given, is that which gives a peculiar or distinctive appear-
`ance,” its aesthetic. Gorham, 81 U.S. at 525. If customers
`prefer the “peculiar or distinctive appearance” of Ford’s de-
`signs over that of other designs that perform the same me-
`chanical or utilitarian functions, that is exactly the type of
`market advantage “manifestly contemplate[d]” by Con-
`gress in the laws authorizing design patents. Id.
`
`

`

`8
`
`AUTO. BODY PARTS ASS’N v. FORD GLOB. TECHS., LLC
`
`B
`ABPA’s contrary arguments are unpersuasive. It first
`asks us to borrow the principle of “aesthetic functionality”
`from trademark law. In that context, courts have ex-
`plained that a party cannot use trademark protection to
`prevent its competitors from using “important product in-
`gredient[s],” Qualitex Co. v. Jacobson Prods. Co., 514 U.S.
`159, 170 (1995), or “from making their products as visually
`entrancing as [its] own,” Pub’ns Int’l, Ltd. v. Landoll, Inc.,
`164 F.3d 337, 339 (7th Cir. 1998) (Posner, J.) (explaining
`that trademark and trade dress protection are unavailable
`“if consumers derive a value from the fact that a product
`looks a certain way that is distinct from the value of know-
`ing at a glance who made it”). In Qualitex, the Supreme
`Court permitted a party to trademark a particular color
`only after explaining that protection might not be available
`if the “color serve[d] a significant nontrademark function.”
`Qualitex, 514 U.S. at 170.
`ABPA acknowledges that no court has applied “aes-
`thetic functionality” to design patents, but it asks us to be-
`come the first. Appellant’s Br. 28–29. We decline. Though
`trademarks and design patents have certain similarities,
`see id. at 29–30, it does not follow that trademark princi-
`ples apply equally to design patents. Trademarks and de-
`sign patents serve different purposes and have different
`governing law. Trademarks promote competition by per-
`mitting a perpetual monopoly over symbols that “distin-
`guish[] a firm’s goods and identif[y] their source, without
`serving any other significant function.” Qualitex, 514 U.S.
`at 166. Trademarks ensure that a particular producer
`reaps the rewards—and bears the risks—of its products’
`quality and desirability. See id. at 163–64. It follows that
`a company may not indefinitely inhibit competition by
`trademarking features, whether utilitarian or aesthetic,
`“that either are not associated with a particular producer
`or that have value to consumers that is independent of
`identification.” Pub’ns Int’l, 164 F.3d at 339; see also
`
`

`

`AUTO. BODY PARTS ASS’N v. FORD GLOB. TECHS., LLC
`
`9
`
`Qualitex, 514 U.S. at 164–65 (holding companies may not
`“inhibit[] legitimate competition” by trademarking desira-
`ble features to “put competitors at a significant non-repu-
`tation-related disadvantage”). In contrast, design patents
`expressly grant to their owners exclusive rights to a partic-
`ular aesthetic for a limited period of time. See Qualitex,
`514 U.S. at 164; see also U.S. Const. art. I, § 8, cl. 8. The
`considerations that drive the aesthetic functionality doc-
`trine of trademark law simply do not apply to design pa-
`tents.
`ABPA also attempts to justify its functionality argu-
`ment with reference to our case law, but it misunderstands
`our precedent. In Best Lock Corp. v. Ilco Unican Corp.,
`94 F.3d 1563 (Fed. Cir. 1996), we considered a design pa-
`tent for a key “blade,” the portion of the key that interacts
`with a lock to open or close it. Id. at 1564. The parties
`agreed that “the key blade must be designed as shown in
`order to perform its intended function—to fit into its corre-
`sponding lock’s keyway. An attempt to create a key blade
`with a different design would necessarily fail because no
`alternative blank key blade would fit the corresponding
`lock.” Id. at 1566. On those facts, we affirmed the district
`court’s finding that the claimed key blade design was dic-
`tated solely by function, and the design patent was invalid.
`Id. ABPA argues that only Ford’s patented designs aes-
`thetically “match” the F-150,2 and attempts to analogize
`Best Lock to the instant case. But Best Lock turned on the
`admitted fact that no alternatively designed blade would
`mechanically operate the lock—not that the blade and lock
`
`
`2 ABPA also briefly suggests that insurers require
`repair parts to use Ford’s original designs with the F-150
`but cites no evidentiary support. ABPA’s own witness ex-
`plained that insurers simply pay a sum of money for re-
`pairs; they do not dictate whether a repair is even made.
`J.A. 1312.
`
`

`

`10
`
`AUTO. BODY PARTS ASS’N v. FORD GLOB. TECHS., LLC
`
`were aesthetically compatible. Id.; see also Static Control
`Components, Inc. v. Lexmark Int’l, Inc., 697 F.3d 387, 395,
`422 (6th Cir. 2012) (holding a printer cartridge design func-
`tional where “each company’s cartridges will work with
`only its brand of printers” and “the design of the printer
`dictated the exact design of the cartridge”).
`Best Lock is distinguished for yet another reason. Ford
`introduced abundant evidence of alternative headlamp and
`hood designs that physically fit its trucks. See Auto. Body
`Parts, 293 F. Supp. 3d at 703 (reproducing images);
`J.A. 2442–43. ABPA’s own witnesses testified to the exist-
`ence of “performance parts” that have a different “design or
`shape” than the manufacturer’s parts so that they have
`“some aesthetic appeal or something like that.” J.A. 940–
`41; see also J.A. 1312–13 (testifying that customers select
`performance parts because “[t]hey want [their vehicles] to
`look different”). And ABPA admitted that a “performance
`part” “will fit the associated vehicle . . . but may differ in
`appearance from the original part.” J.A. 1330; see also
`J.A. 1340 (same). On these facts, Best Lock bears little sim-
`ilarity to this case.
`Similarly, ABPA urges us to rule that Ford’s designs
`are not a “matter of concern” to consumers. We have ex-
`plained that a design is generally not a “matter of concern,”
`and lacks ornamentality, if it may not be observed or if it
`is assessed only for functionality. See In re Webb, 916 F.2d
`1553, 1557–58 (Fed. Cir. 1990). ABPA avers that consum-
`ers assess Ford’s designs only to assess their aesthetic com-
`patibility with the F-150. But by definition, if a consumer
`assesses the aesthetic of a design in considering whether to
`purchase it, the design is a matter of concern. See id. In-
`deed, ABPA and its witnesses admitted that customers se-
`lect replacement parts from among multiple different
`designs based on their preferred aesthetic, further under-
`mining ABPA’s position. See J.A. 940–41, 1312–13, 1330,
`1340. And regardless, the district court found that “it is
`beyond reasonable debate that the design of an auto-body
`
`

`

`AUTO. BODY PARTS ASS’N v. FORD GLOB. TECHS., LLC
`
`11
`
`part is important to consumers at least when they are de-
`ciding which car to buy.” Auto. Body Parts, 293 F. Supp. 3d
`at 701. ABPA fails to explain how that well-supported
`finding constitutes error.
`Finally, ABPA asks this court to rule, as a matter of
`policy, that Ford’s design patents may be enforced only in
`the initial market for sale of the F-150, and not in the mar-
`ket for replacement components. Appellant’s Br. 36.
`ABPA argues that a market-specific rule is appropriate be-
`cause customers have different concerns in different con-
`texts. It declares that customers care about design in the
`initial sales market, but not when they select replacement
`parts. But ABPA cites no supporting facts. Instead, it ig-
`nores abundant record evidence regarding performance
`parts available as replacements for customers who “want
`[their vehicles] to look different.” J.A. 1312–13. It cites no
`patent case to support its argument. And it seeks to side-
`step our precedent, which asks “whether at some point in
`the life of the article an occasion (or occasions) arises when
`the appearance of the article becomes a ‘matter of con-
`cern.’” Webb, 916 F.2d at 1557 (emphasis added). Finding
`neither legal nor factual support for ABPA’s argument, we
`reject it.3 We therefore affirm the district court’s determi-
`nation that ABPA failed, as a matter of law, to prove Ford’s
`designs functional by clear and convincing evidence. See
`Ethicon, 796 F.3d at 1328 (discussing burden and standard
`of proof).
`
`
`3 A bill seeking to create a market-based analysis
`specifically for auto-body design patents was introduced in
`a previous Congress but has not become law. See PARTS
`Act, S. 780, 113th Cong. (2013); J.A. 664. “[I]t is not our
`job to apply laws that have not yet been written.” See Sony
`Corp. of Am. v. Universal City Studios, Inc., 464 U.S. 417,
`456 (1984).
`
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`

`12
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`AUTO. BODY PARTS ASS’N v. FORD GLOB. TECHS., LLC
`
`II
`We next address ABPA’s contention that Ford’s pa-
`tents are unenforceable against its members under the re-
`lated doctrines of exhaustion and repair.
`A
`“The franchise which the patent grants, consists alto-
`gether in the right to exclude every one from making, us-
`ing, or vending the thing patented, without the permission
`of the patentee.” Bloomer v. McQuewan, 55 U.S. 539, 549
`(1852). But when the patentee sells his invention, the
`thing sold “is no longer within the limits of the monopoly.”
`Id.; see also United States v. Masonite Corp., 316 U.S. 265,
`277–78 (1942). This “well-established” rule, dubbed ex-
`haustion, “marks the point where patent rights yield to the
`common law principle against restraints on alienation.”
`Impression Prods., Inc. v. Lexmark Int’l, Inc., 137 S. Ct.
`1523, 1531 (2017). An authorized sale compensates the pa-
`tentee for his invention. After such a sale, the patentee
`may no longer “‘control the use or disposition’ of the prod-
`uct.” Id. (quoting United States v. Univis Lens Co.,
`316 U.S. 241, 250 (1942)). And the purchaser may use or
`dispose of that product without incurring liability for in-
`fringement. See, e.g., ExcelStor Tech., Inc. v. Papst Licens-
`ing GMBH & Co. KG, 541 F.3d 1373, 1376 (Fed. Cir. 2008)
`(“patent exhaustion is a defense to patent infringement”).
`Ford concedes that when it sells an F-150, its patents
`are exhausted as to the components actually sold as part of
`that truck. Oral Arg. at 17:58–18:24, http://oralargu-
`ments.cafc.uscourts.gov/default.aspx?fl=2018-1613.mp3.
`ABPA argues that exhaustion extends further, asserting
`that the sale of an F-150 truck totally exhausts any design
`patents embodied in the truck and permits use of Ford’s
`designs on replacement parts so long as those parts are in-
`tended for use with Ford’s trucks. See Appellant’s Br. 43–
`45. But exhaustion attaches only to items sold by, or with
`the authorization of, the patentee. See Jazz Photo Corp. v.
`
`

`

`AUTO. BODY PARTS ASS’N v. FORD GLOB. TECHS., LLC
`
`13
`
`Int’l Trade Comm’n, 264 F.3d 1094, 1105 (Fed. Cir. 2001)
`(explaining that an authorized sale “‘exhausts’ the pa-
`tentee’s right to control further sale and use of that article”
`but does not permit a “second creation of the patented en-
`tity” (emphasis added)), overruled on other grounds by Im-
`pression Prod., 137 S. Ct. at 1538; see also Bowman v.
`Monsanto Co., 569 U.S. 278, 286 (2013) (“The exhaustion
`doctrine is limited to the ‘particular item’ sold . . . .”).
`ABPA’s members’ sales are not authorized by Ford; it fol-
`lows that exhaustion does not protect them. See Helferich
`Patent Licensing, LLC v. N.Y. Times Co., 778 F.3d 1293,
`1302 (Fed. Cir. 2015) (“[T]he decisions finding exhaus-
`tion . . . have done so only when . . . an authorized acquirer
`was using the same invention by infringing the asserted
`claims.” (emphases added)).
`ABPA asks us to “adapt[]” this rule for design cases.
`See Appellant’s Br. 49. But we apply the same rules to de-
`sign and utility patents whenever possible. See 35 U.S.C.
`§ 171(b) (“The provisions of this title relating to patents for
`inventions shall apply to patents for designs, except as oth-
`erwise provided.”). Accordingly, we have held that princi-
`ples of prosecution history estoppel,
`inventorship,
`anticipation, and obviousness apply to both design patents
`and utility patents. See, e.g., Pac. Coast Marine Wind-
`shields Ltd. v. Malibu Boats, LLC, 739 F.3d 694, 702
`(Fed. Cir. 2014) (“The same principles of public notice that
`underlie prosecution history estoppel apply to design pa-
`tents as well as utility patents.”); Hoop v. Hoop, 279 F.3d
`1004, 1007 (Fed. Cir. 2002) (“We apply the same standard
`of inventorship to design patents that we require for utility
`patents.”); Hupp v. Siroflex of Am., Inc., 122 F.3d 1456,
`1461 (Fed. Cir. 1997) (“In determining whether a design
`patent is invalid based on a description in a printed publi-
`cation, . . . the factual inquiry is the same as that which de-
`termines anticipation by prior publication of the subject
`matter of a utility patent . . . .”); In re Borden, 90 F.3d 1570,
`1574 (Fed. Cir. 1996) (“Design patents are subject to the
`
`

`

`14
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`AUTO. BODY PARTS ASS’N v. FORD GLOB. TECHS., LLC
`
`same conditions on patentability as utility patents, includ-
`ing the nonobviousness requirement of 35 U.S.C. § 103.”).
`We see no persuasive reason to depart from this standard
`for the exhaustion doctrine.
`ABPA points to the Supreme Court’s decision in
`Quanta Computer, Inc. v. LG Electronics, Inc., 553 U.S. 617
`(2008), to assert that we should nevertheless create a de-
`sign-patent-specific rule for exhaustion.
` Appellant’s
`Br. 49. In Quanta, the Court rejected an attempt to exempt
`method claims from exhaustion. See Quanta, 553 U.S.
`at 628. After reviewing the history and purpose of the doc-
`trine, the Court noted that “[o]ur precedents do not differ-
`entiate transactions involving embodiments of patented
`methods or processes from those involving patented appa-
`ratuses or materials.” Id. at 628–29. It therefore held that
`like other utility patents, method patents are exhausted by
`the authorized sale of an item embodying the claimed in-
`vention. Id. at 638. And accordingly, it determined that
`the sale of a microprocessor embodying a method patent
`exhausts that patent. See id. It did not, however, hold that
`purchasers of those microprocessors could make their own,
`new microprocessors using the patented invention, as
`ABPA suggests. Far from supporting ABPA’s position,
`Quanta supports our reluctance to establish special rules
`for design patents—our precedents do not differentiate
`transactions involving embodiments of patented designs
`from those involving patented processes or methods. See,
`e.g., Jazz Photo, 264 F.3d at 1110 (“[T]he principle of ex-
`haustion applies to the design patents as well as to the util-
`ity patents.”).
`
`B
`ABPA’s right of repair argument is equally unpersua-
`sive. The right of use transferred to a purchaser by an au-
`thorized sale “include[s] the right to repair the patented
`article.” Kendall Co. v. Progressive Med. Tech., Inc.,
`85 F.3d 1570, 1573 (Fed. Cir. 1996). The right of repair
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`AUTO. BODY PARTS ASS’N v. FORD GLOB. TECHS., LLC
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`15
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`does not, however, permit a complete reconstruction of a
`patented device or component. See Helferich, 778 F.3d
`at 1303–05 (noting purchaser cannot recreate patented
`product); Kendall, 85 F.3d at 1573–74 (explaining that
`while a purchaser may not undertake a “complete ‘recon-
`struction’” of the patented device, he may replace “individ-
`ual unpatented components” of the patented article
`(emphasis added)). And it does not permit a purchaser to
`infringe other patents by manufacturing separately pa-
`tented components of the purchased article. See Aro Mfg.
`Co. v. Convertible Top Replacement Co., 365 U.S. 336, 346
`(1961) (“[R]eplacement of a spent, unpatented element does
`not constitute reconstruction. The decisions of this Court
`require the conclusion that reconstruction of a patented en-
`tity, comprised of unpatented elements, is limited to such
`a true reconstruction of the entity as to ‘in fact make a new
`article’ . . . .” (emphasis added) (quoting United States v.
`Aluminum Co. of Am., 148 F.2d 416, 425 (2d Cir. 1945)
`(Hand, J.))); Helferich, 778 F.3d at 1303–05 (noting prohi-
`bition on reconstruction).
`ABPA argues that purchasers of Ford’s F-150 trucks
`are licensed to repair those trucks using replacement parts
`that embody Ford’s hood and headlamp design patents.
`But straightforward application of long-standing case law
`compels the opposite conclusion. Over 150 years ago, a
`New Hampshire court considered facts similar to those of
`this case in Aiken v. Manchester Print Works, 1 F. Cas. 245
`(C.C.D.N.H. 1865). There, the patentee sold a patented
`knitting machine whose needles wore out on a regular ba-
`sis. Id. at 245–46. Though the needles were covered by a
`separate patent, the accused infringers argued that they
`could properly manufacture replacement needles to con-
`tinue using the knitting machine they had purchased. The
`court disagreed, holding that “the needle is subject to a pa-
`tent, and in making and using it they have infringed.” Id.
`at 247. It distinguished an earlier Supreme Court case in
`which a purchaser had been permitted to replace the
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`16
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`AUTO. BODY PARTS ASS’N v. FORD GLOB. TECHS., LLC
`
`knives used in a patented cutting machine, noting “the cut-
`ters and knives, in [Wilson v. Simpson, 50 U.S. 109 (1850)],
`were not subject to a patent.” Id. The Supreme Court en-
`dorsed Aiken’s reasoning in Morgan Envelope Co. v. Albany
`Perforated Wrapping Paper Co., 152 U.S. 425, 435–36
`(1894), and its reasoning governs here. Ford’s patents
`claim “[t]he ornamental design for exterior of vehicle hood,”
`see D’299 patent, Claim, and “[t]he ornamental design for
`a vehicle head lamp,” see D’685 patent, Claim. The designs
`may be embodied in the hoods and headlamps that form
`part of the full F-150 truck or in separate hoods and head-
`lamps. But though a sale of the F-150 truck permits the
`purchaser to repair the designs as applied to the specific
`hood and headlamps sold on the truck, the purchaser may
`not create new hoods and headlamps using Ford’s designs.
`Like the needles in Aiken, such new hoods and headlamps
`are subject to Ford’s design patents, and manufacturing
`new copies of those designs constitutes infringement.
`ABPA attempts to distinguish Aiken and its progeny by
`asserting that these cases apply only to utility patents.
`ABPA urges us to adopt a new rule that recognizes the
`“unique nature” of design patents. See Appellant’s Reply
`Br. 18. In particular, ABPA claims that the statutory lan-
`guage authorizing design patents dictates such a rule. Un-
`like 35 U.S.C. § 101, which authorizes utility patents for a
`“process, machine, manufacture, or composition of matter,
`or any new and useful improvement thereof,” 35 U.S.C.
`§ 171 permits design patents for a “design for an article of
`manufacture.” ABPA argues that because “article of man-
`ufacture,” is a term broad enough to include both a product
`component and the product itself, see Samsung Elecs. Co.
`v. Apple Inc., 137 S. Ct. 429, 434 (2016), sale of either the
`component (i.e., the hood or headlamp) or the whole prod-
`uct (i.e., the F-150) totally exhausts a design patent and
`permits unlimited repair. See Appellant’s Br. 43–58.
`We disagree. In our view, the breadth of the term “ar-
`ticle of manufacture” simply means that Ford could
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`AUTO. BODY PARTS ASS’N v. FORD GLOB. TECHS., LLC
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`17
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`properly have claimed its designs as applied to the entire
`F-150 or as applied to the hood and headlamp. To deter-
`mine what repair rights apply, we look to what Ford actu-
`ally claimed. As always, “the name of the game is the
`claim.” Arlington Indus., Inc. v. Bridgeport Fittings, Inc.,
`632 F.3d 1246, 1255 n.2 (Fed. Cir. 2011) (quoting Giles S.
`Rich, The Extent of the Protection and Interpretation of
`Claims–American Perspectives, 21 Int’l Rev. Indus. Prop. &
`Copyright L. 497, 499, 501 (1990)). Ford chose to claim de-
`signs as applied to portions of particular components, and
`the law permits it to do so. See, e.g., Samsung, 137 S. Ct.
`at 435; Gorham, 81 U.S. at 512. That the auto-body com-
`ponents covered by Ford’s patents may require replace-
`ment does not compel a special rule. Just as the patentee
`in Aiken could have only claimed the needles in conjunction
`with the knitting machine, Ford could have only claimed
`its design as applied to the whole truck. Unfortunately for
`ABPA, Ford did not do so; the designs for Ford’s hood and
`headlamp are covered by distinct patents, and to make and
`use those designs without Ford’s authorization is to in-
`fringe. See Aiken, 1 F. Cas. at 247.4
`We thus reject ABPA’s attempts to develop design pa-
`tent-specific exhaustion and repair rules.5 Consequently,
`
`
`4 ABPA asserts that Ford’s purchasers are unaware
`of the design patents covering the hood and headlamp and
`suggests that as a result we should permit their use of the
`patented designs. Appellant’s Br. 56–57. Even if purchas-
`ers are unaware—and ABPA cites no factual support for
`that assertion—direct infringement does not require
`knowledge of a patent. See Glob.-Tech Appliances, Inc. v.
`SEB S.A., 563 U.S. 754, 761 n.2 (2011) (“[A] direct in-
`fringer’s knowledge or intent is irrelevant.”).
`5 As an additional argument for affirmance, Ford as-
`ser