New York Law Journal
August 4, 2014
The Gartner analyst group has projected that, by 2018, 3D printing will result in global annual IP losses of approximately $100 billion.1 Patent disputes will certainly make up a significant portion of those controversies. In the last decade, the Patent and Trademark Office has received more than 6,800 3D printing/additive manufacturing patent applications,2 and many key 3D printing industry patents have or will expire in 20143—meaning battles for patent rights cannot be far behind.
But the IP issues in 3D printing will not be limited to patent disputes. Changing patent laws as well as renewed interest in trade secret law benefits and rights from copyright, trade dress and design patent law will all play a role in 3D printing IP disputes. Staying ahead of 3D printing's financial impact on IP rights requires an understanding of both the multiple technologies at stake as well as the IP issues 3D printing innovations raise.
3D Printing Innovations: Machines, Materials, Modeling
3D printing—also known as additive manufacturing—create physical objects by depositing successive layers of material in a manner often likened to the work of an inkjet printer. Several specific printing methodologies exist, including:
- Stereo lithography (SLA)—uses photopolymerization of a polymer liquid in coordination with a moving platform to produce successive horizontal "slices" of a three-dimensional object.
- Fused deposition modeling (FDM)—uses a heated extrusion nozzle print head to feed metal wire or thermoplastic to a print head producing fairly robust objects to a high degree of accuracy.
- Selective laser sintering (SLS)—builds objects by using a laser to selectively fuse together successive layers of a cocktail of powdered wax, ceramic, metal, nylon or one of a range of other materials.
- Multi-jet modelling (MJM)—builds up objects from successive layers of powder, with an inkjet-like print head used to spray on a binder solution that glues only the required granules together.4
Expensive industrial printers have long taken advantage of these technologies. Much of the attention 3D printing has generated in the last years has occurred because patent expirations and lowering of key component parts like lasers (associated with Blu-ray mass production) now make it possible to offer consumers models—many that cost less than $1,000—based on industrial 3D printing technologies.
Currently, plastic, metal and metal alloys dominate the commercial 3D printing market, including the home market. But research labs across the country have begun experimenting with everything from living human cells to bacteria, microscopic electrodes, and semiconductors.
Combining these material innovations with 3D printing capabilities, researchers have printed everything from a bionic ear to a lithium-ion microbattery the size of a grain of sand.5
Researchers at Harvard have also invented a single fabrication process that uses a multiple nozzle printer loaded with different cell tissue and matrix materials that researchers hope will eventually print vascularized, fully functional organs.6
Whatever the methodology or material, many 3D printers create the objects they print using CAD/CAM computer files generated by a 3D scanner. Most 3D scanners collect visual data that produces "point clouds"—a set of data points in some coordinate system—or voxel (volume element) data that then allow computer extrapolation of a three-dimensional shape. Industrial scanners often combine robotics and lasers to generate the hundreds of thousands of high-end data points required to produce scans with the precision manufacturers require. Consumer models—offering a varying degree of accuracy—include hand-held, desktop and mobile phone/tablet app and accessory scanners. As with 3D printers, the greater affordability of lasers attributable to Blu-ray advancements has helped to make many laser-based consumer scanners more affordable.
3D Printing Patent Problems
Patent litigation involving 3D printing machines, methodologies, and materials is inevitable. While patent validity will always depend on specific circumstances, certain themes are likely to occur that may make some future 3D printing patent disputes more difficult.7
First, many claimed innovations in 3D printing may exist in the software that runs the printers. The U.S. Supreme Court's recent decision in Alice Corp. v. CLS Bank8 preserves software patentability but requires "an inventive concept" beyond computer implementation of an abstract idea to achieve patentability. Like other software-based patents, 3D printing patents based on software risk becoming mired in the post-Alice wonderland of defining just what is that necessary inventive concept.
Additionally, some 3D printing advancements may be too new to allow the creation of specifications sufficient to allow a person of "ordinary skill in the art" to practice the claimed invention needed to survive a validity challenge.9 Prior art that provides guidance on the validity of the plain language of the specifications may simply not exist.10
Conversely, some seemingly revolutionary innovations may end up being not "new enough" and face claims of invalidity for anticipation under the doctrine of inherency.11 The inherency doctrine provides that the discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art's functioning, does not render the old composition patentably new to the discoverer."12 Further, the claiming of a new use, new function, or unknown property which is inherently present in the prior art does not necessarily make the claim patentable.13
Finally, as 3D printing technologies evolve, processes that use different kinds of materials in a single fabrication may encounter the difficulties that surround a product-by-process invention.14
Though product-by-process claims continue to require the necessary inventive concept, they are not infringed by processes other than the one claimed.15 That means product-by-process claims must meet traditional patenting standards when it comes to validity, but that granted patent rights offer less protection when it comes to infringement.16
Other 3D Printing IP: Copyright
Unlike patents, copyright attaches automatically to a creative work upon fixation or physical embodiment.17 Copyright protection usually covers things like writings, drawings, musical compilations, sculptures and other original designs. Copyright protections do not extend to the function of a copyrighted work or the idea that a copyrighted work expresses. Registration is not a prerequisite to copyright protection—though registration of copyright provides multiple benefits.
Copyright law will play a large role in 3D printing IP—especially when it comes to objects printed at home by consumers. Copyright protection will clearly apply to those objects copied using 3D printers that are purely design-oriented. Similarly, CAD design files that direct 3D printers to make unique sculptures and other artistic objects should enjoy copyright protection—as should the object themselves as derivative works. As a result, companies that make and sell copyrightable objects like toy figurines and decorative home designs may also have enforceable copyrights. Those rights will make the exact replication of their copyrighted creations qualify as possible copyright infringement.
But other parts of copyright protection present harder questions. While purely functional items are ineligible for copyright protection, functional items that also include design elements may qualify for copyright protection. In those kinds of cases, copyright law uses a "separability test" to determine available copyright protection. Separability, however, has no definitive test and can be expensive to prove and litigate.18
For now, allegations of copyright infringement in the 3D printing world have been largely restricted to the confines of the Digital Millennium Copyright Act (DMCA). Under the DMCA, websites that host content act as an impartial messenger between those who upload material to that site and those who potentially hold a copyright in that material. Once notices are sent, the alleged infringer can either take down the content or leave it up and risk litigation.19 So far, various rights holders have used the DMCA to issue take down notices on several 3D printing file-sharing.20 Moving forward, however, using the DMCA to protect 3D printing infringement of copyrights may become overwhelming—especially as consumer use of home 3D printers increases.
Other 3D Printing IP: Trade Secrets
3D printing's multiple technologies, the industry's rapid expansion and a general increase in employee mobility make 3D printing ripe for misappropriation of 3D printing industry trade secrets and trade secret conflicts.
As a general rule, what qualifies as a trade secret gets a fairly broad definition. Anything from a formula, practice or process to a design, instrument, pattern, or compilation of information may be a protectable trade secret, but certain conditions must be met. Though specific definitions and requirements vary, trade secret protection attaches when whatever is claimed as a secret is not generally known in the industry, the owner or holder of the secret has made appropriate efforts to keep it secret, and the secret confers a competitive advantage. Some form of trade secret protection exists in all 50 states. Most states use some version of the Uniform Trade Secrets Act and the few that don't offer similar protection based on common law rules.
Because trade secret litigation can be less expensive and burdensome than other forms of IP litigation, it has become increasingly popular. Courts look to a variety of factors to determine whether the claimed information is in fact a trade secret, including the extent to which the information is known outside the business, the measures taken to guard its secrecy and the ease or difficulty with which the information could be acquired by others. Once established, proving misappropriation requires a showing that someone other than the trade secret owner knowingly acquired the secret directly or indirectly through improper means or through breach of a duty to keep it secret.
3D printing will likely see its fair share of misappropriation of trade secret claims.21 More and more companies are turning to trade secret law as way to protect innovations outside of the patent system. In addition, as 3D printing patents age, new market entrants can turn to trade secret law to leverage proprietary adaptations, modifications and processes in an effort to scale their use to a commercial scale. The success of those claims will depend on the efforts made to keep the claimed advantage secret and the application of the particular jurisdiction's laws and precedent to the unique circumstances of the case at hand.
Other 3D Printing IP: Trade Dress and Design Patent
A subset of trademark law, trade dress refers to the protections afforded the overall appearance and image of a product. As with trademark protections,22 trade dress seeks to protect consumers and avoid confusion about the origins of purchased products.23 Trade dress protections only occur when the trade dress involved is inherently distinctive or has developed a secondary, source-identifying meaning.
Similarly, design patents can protect the way a product looks. Design patent protection extends exclusively upon the descriptions and illustrations within the patent itself.24 Trade dress protection and design patent protection are not mutually exclusively and a design element may have both protections at the same time or one right after another.
Trade dress protections are unlikely to play a large role in 3D printing rights-related litigation—consumers likely won't be confused about the origins of designs and, as with copyright, enforcing individual consumer infringement will be difficult. Design patent rights do offer a way to prevent infringement of proprietary designs—but once again, enforcement of consumer violations will be difficult to scale and expensive to pursue.
Conclusion
The full extent of the disruptive effect 3D printing will have remains to be seen. In the meantime, taking the time to understand the technology and the impact it will have on IP rights provides an instructive lesson on the struggles old laws have to address new innovations—and an opportunity to consider how to protect the existing IP rights at stake in the coming 3D printing disruption.
Reprinted with permission from the “August 4, 2014” edition of the “The New York Law Journal” © 2014 ALM Media Properties, LLC. All rights reserved.
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Endnotes:
1. See "Gartner: 3D printing to result in $100 billion IP losses per year," www.3ders.org, Oct. 14, 2013, http://www.3ders.org/articles/20131014-gartner-3d-printing-to-result-in-100-billion-ip-losses-per-year.html.
2. See L.Gilpin, "3D printing: 10 factors still holding it back," techreublic.com, Feb. 19, 2014, http://www.techrepublic.com/article/3d-printing-10-factors-still-holding-it-back/.
3. Carl R. Deckard's patent for Selective Laser Sintering (SLS) technology arguably expired in January 2014. See "Let the revolution begin: Key 3D printing patent expires today," www.3ders.org, Jan. 14, 2014, http://www.3ders.org/articles/20140128-let-the-revolution-begin-key-3d-printing-patent-expires-today.html. Other patents also set to expire this year include three patents from 3D Systems and six from Stratasys. Id.
4. See, e.g., "What is 3D Printing?" 3D Printing.com, http://3dprinting.com/what-is-3d-printing/.
5. Manu Mannoor, et al., "3D Printed Bionic Ears," Nano Letters (2013). http://pubs.acs.org/doi/abs/10.1021/nl4007744; Ke Sun, et al., "3D Printing of Interdigitated Li-Ion Microbattery Architectures," 25 Advanced Materials 33, Sept. 6, 2013 at 4539.
6. David Rotman, "Microscale 3-D Printing," MIT Technology News (Spring 2014), http://www.technologyreview.com/lists/technologies/2014/.
7. Patent infringement claims based on items created on a 3D printer are also possible. For a discussion of patent rights in those situations, see Bryan J. Vogel, "Casting 3D Printing's Coming IP Litigation: Usual Suspects and Dark Horses," 86 PTCJ 1209, Oct. 10 2013, at p.2.
9. See, e.g., Boston Scientifc v. Johnson & Johnson, 647 F.3d 1353, 1366 (Fed. Cir. 2011) (citation omitted).
10. See, e.g., Butamax Advanced Biofuels v. Gevo, 109 U.S.P.Q. 2d 1701 (Fed. Cir. 2014). Patent holder's claimed invention relied on the use of a recombinant yeast microorganism "comprised of inactivated genes" that disabled a competing synthetic pathway. Prior art agreed deactivation desirable, only one reference described process.
11. See, e.g., Schering v. Geneva Pharms., 339 F.3d 1373 (Fed. Cir. 2003). A single prior art reference that discloses each and every limitation of the claimed invention can invalidate a patent for anticipation, and that prior art reference may anticipate without disclosing a feature of the claimed invention if that missing characteristic is an "inherent" part of that anticipating reference.
12. Atlas Powder Co. v. Ireco, 190 F.3d 1342, 1347 (Fed. Cir. 1999).
13. In re Best, 562 F.2d 1252 (CCPA 1977). There is no requirement that a person of ordinary skill in the art would have recognized the inherent disclosure at the time of invention, but only that the subject matter is in fact inherent in the prior art reference. Schering, 339 F.3d at 1377.
14. In re Thorpe, 777 F.2d 695, 698 (Fed. Cir. 1985).
15. Abbot Labs v. Sandoz, 566 F.3d 1282, 1292 (Fed. Cir. 2009).
16. See Bryan J. Vogel, "3D Printing, Materials Development, and IP: Protecting What's in the Printer," Bloomberg BNA Patent, Trademark & Copyright Journal (June 13, 2014).
17. See 17 U.S.C. §102.
18. See Chosun Int'l v. Chrisha Creations, 413 F.3d 324 (2d Cir. 2005). Additionally, it's not clear what copyrights exist, if any, for a file created in CAD (rather than scanned) when the design covers a useful object not eligible for copyright protection and whether unauthorized use of the file to create an object on a 3D printer constitutes copyright infringement.
19. See 17 USC §512.
20. HBO issued a takedown notice to a site offering to sell a 3D-printed, smartphone charging dock shaped like the Iron Throne from HBO's "Game of Thrones" TV series; Games Workshop issued a takedown notice for 3D printing files for figurines based on its Warhammer game.
21. See, e.g., Fisher/Unitech v. Computer Aided Tech., 2013 U.S. Dist. LEXIS 50744, No. 13 C 02090 (N.D. Ill. April 9, 2013) (following industry merger between former 3D printer manufacturing rivals, 3D printer reseller alleges misappropriation of trade secrets against other reseller).
22. While 3D replication of an item including a trademark has the potential to violate trademark law, creating the item without the mark would be unlikely to qualify as a trademark violation, especially if the item is only made for home use.
23. See 15 U.S.C. §1125(a).
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