On November 22, 2017, the patent infringement lawsuit filed in Michigan by Ford Global Technologies LLC (FGTL) against ABPA member New World International (New World) was transferred to the Northern District of Texas following the Supreme Court’s landmark patent venue ruling in TC Heartland. The entire case was transferred, which involves thirteen separate design patents. The case was assigned to United States District Court Judge David C. Godbey, who is the district court judge that handled the famous Egyptian Goddess design patent case.

After the transfer, New World filed a motion to refile its motion for summary judgment on the defensive issues of functionality and patent exhaustion. The motion previously had been filed in Michigan but was withdrawn to avoid a potential waiver of the improper venue defense. The motion now is pending court decision in the Northern District of Texas. The issues of functionality and patent exhaustion are the defenses both New World and ABPA are seeking court rulings on to challenge the validity and enforceability of FGTL design patents. Numerous other post-transfer motions also have been filed and the parties are waiting for court rulings.

A motion for summary judgment on the issues of functionality and patent exhaustion also is waiting court decision in Michigan in the original lawsuit filed by ABPA against FGTL. ABPA is proceeding on the basis of associational standing. The Michigan Court raised a jurisdictional issue called mootness because FGTL offered ABPA Member New World a covenant not to sue on two patents. ABPA responded that the covenant not to sue is conditional and therefore the case is not moot. ABPA also responded that the case is not moot because FGTL threatened to enforce its patents against other ABPA members. We are waiting a ruling from the court on the issue of mootness.

In a third lawsuit, New World sued FGTL in the Northern District of Texas seeking a declaration that other FGTL design patents are invalid and unenforceable under the doctrines of functionality and patent exhaustion. This lawsuit was filed before the FGTL v. New World case was transferred to the Northern District of Texas. Associational standing is not an issue in these lawsuits since New World and one other related company are proceeding individually. An appeal on a jurisdictional issue has been briefed and we are waiting an oral argument date by the Federal Circuit Court of Appeals.

The courts are continuing to review and decide cases involving design patent functionality, patent exhaustion, and definiteness, and we are closely monitoring these cases and how they may impact the arguments we are making in our cases. The legal issues of functionality and patent exhaustion have been fully briefed and we are waiting a decision from the Michigan and Texas courts on these two important issues.