3D Printing: Potential Patent Law Problems, Other IP Law Protections
October 8, 2014
3D printing is on the verge of exploding in both commercial and consumer settings. As yet, it remains unclear just how big the disruptive effect of this expansion will be. Experts predict, however, that severe financial losses are ahead.
Patent disputes will certainly make up a significant portion of the legal controversies surrounding 3D printing. But the troubled state of patent law and patent infringement litigation may send 3D printing innovators—and other IP rights holders affected by 3D printing—to alternative IP theories for protection of proprietary innovations. While copyright, trade dress, and design patent each have their benefits, they also present their own potential issues. Fully protecting proprietary innovation and existing IP, then, requires an understanding of both the technology and the IP laws that might apply if and when the 3D printing goes mainstream.
A primer on 3D printing and scanning
There are several 3D printing methodologies in use today, including stereo lithography, fused deposition modeling, selective laser sintering, and multi-jet modelling. All work to create a physical, three-dimensional object by depositing or curing successive layers of the intended object. Currently, plastic, ceramics, metal, and metal alloys dominate the 3D printing market. But research labs across the country have begun experimenting with everything from living human cells and bacteria to microscopic electrodes and semiconductors.
Many 3D printers create objects using CAD/CAM computer files generated by a 3D scanner. Most 3D scanners collect visual data that produces point clouds or voxel data that then allows computer extrapolation of a three-dimensional shape. Industrial scanners emphasize precision by combining robotics and lasers to generate the hundreds of thousands of high-end data points. Consumer models, including hand-held scanners, desktop and mobile apps, and accessory scanners, offer a varying degree of accuracy. Alternatively, many 3D printers work with “slicing” software that translates the 3D image into individual 2D layers.
3D printing and scanning technologies have long been in use in industrial settings. More recently, that use has begun to extend to the consumer arena. This expansion is partially due to patent expirations as well as the lowering prices of key component parts like lasers because of Blu-ray mass production. The more affordable these technologies become, the more innovators will be drawn to 3D printing—and the more 3D printing litigation is likely to result.
3D printing & patent litigation: possible problems
As with any patent dispute, the validity of a 3D printing patent will depend on the specific circumstances at issue. But certain themes are likely to occur that may make some future 3D printing patent disputes more difficult:
- The “inventive concept” requirement: The Supreme Court recently ruled that “an inventive concept” beyond computer implementation of an abstract idea must exist to achieve software patentability. As a result, 3D printing patents based on software risk getting caught up in the debate around what qualifies as that satisfactory “inventive concept.”
- The necessity for plain language specifications: To survive a validity challenge, patents must come with plain language specifications. These specifications must allow a person of “ordinary skill in the art” to practice the claimed invention. Unfortunately, some 3D printing advancements may be too new to allow the creation of such specifications. Prior art that provides guidance on the validity of the plain language of the specifications may simply not exist.
- The doctrine of inherency: 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.” Also, claiming a new use, new function, or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. So it is possible that some innovations may not be “new enough” and may face claims of invalidity.
- The limitations of a “products-by-process” invention: 3D printing processes that use different materials in a single fabrication may encounter the difficulties that surround a “product-by-process invention.” Though product-by-process claims continue to require the necessary inventive concept, they are not infringed by processes other than the one claimed. 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.
To avoid getting caught up in these patenting battles, 3D printing innovators may prefer to look toward other IP options.
Patent alternative #1: Copyright protection
Copyright law will likely play a large role in 3D printing IP—especially when it comes to consumer-printed objects created at home. To see how it will apply, one must first understand the basics of copyright law.
Copyright attaches automatically to a creative work upon fixation or physical embodiment. Its protection usually covers creations like writings, drawings, musical compilations, sculptures, and other original designs. Protection does not extend to the function of a copyrighted work or the idea that a copyrighted work expresses. While registration is not a prerequisite to copyright protection, it does provide multiple benefits.
When applied to the 3D printing setting, copyright protection will clearly attach to purely design-oriented 3D objects. Similarly, CAD design files that direct 3D printers to make unique sculptures and other artistic objects should enjoy copyright protection. As a result, companies that make and sell copyrightable objects like toy figurines and decorative home designs should have enforceable copyrights. Those rights will make any exact replication of the copyrighted creations as possible copyright infringement.
Other aspects of copyright protection are not quite so clear. By example, functional items that include design elements may qualify for copyright protection. In those cases, copyright law uses a “separability test” to determine available copyright protection. Separability, however, has no definitive test and it is often expensive to prove and litigate.
Up to this point, 3D printing copyright infringement allegations have been largely restricted to the Digital Millennium Copyright Act (“DMCA”). For instance, various rights holders have used the DMCA to issue takedown notices on several 3D printing file-sharing sites. Moving forward, however, using the DMCA to protect 3D printing copyright infringement may become overwhelming—especially as consumer use of home 3D printers increases.
Patent alternative #2: Trade Secret
3D printing will likely see its fair share of misappropriation of trade secret claims. This is especially true considering its multiple technologies, the industry’s rapid expansion, and the general increase in employee mobility. So what exactly does a trade secret protect and what will innovators encounter when attempting to enforce their IP rights?
Trade secrets cover a broad umbrella of proprietary IP, including formulas, practices, processes, designs, instruments, patterns, and compilations of information. To qualify for protection, the claimed secret must meet certain conditions. Though specific definitions and requirements vary, some form of trade secret protection exists in all 50 states. In general, trade secret protection may attach 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.
Trade secret protection has become increasingly popular due to the fact that trade secret litigation can be less expensive and less burdensome than other forms of IP litigation.
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 others could acquire the information.
Once the owner establishes that a trade secret exists, the owner must then prove that misappropriation occurred. This requires showing that someone other than the owner knowingly acquired the secret directly or indirectly through improper means or through breach of a duty to keep it secret.
Many companies are already turning to trade secret law as a way to protect innovations outside of the patent system. More will likely follow suit. And, as 3D printing patents age, new market entrants will likely join the trend. This will allow them to leverage proprietary adaptations, modifications, and processes in an effort to scale their use to a commercial setting. The success of any trade secret claim in 3D printing will depend on the efforts the trade secret owner made to keep the claimed advantage secret. Success will also depend on how a particular jurisdiction’s laws and precedent apply to the unique circumstances of the case at hand.
Patent alternative #3: Trade Dress and Design Patent
As a final alternative, 3D printing innovators may turn to trade dress and design patent protection. These protections are options for those seeking rights solely to the appearance of a 3D printed project.
- Trade dress affords protection to the overall appearance and image of a product. Trade dress protections only occur when the total image is inherently distinctive or has developed a secondary, source-identifying meaning.
- Design patents also protect the way a product looks. Design patent protection extends exclusively to the descriptions and illustrations within the patent itself.
These protections are not mutually exclusively—a design element may have both protections at the same time or one right after another.
In the context of consumer violations, it is unlikely that either of these will play a large role in future 3D printing rights-related litigation as IP rights holders may find it difficult and expensive to pursue enforcement. For other violations, however, 3D printing innovators may turn to trade dress and design patent protection.
Like other disruptive technologies before it, 3D printing and the multiple innovations it inspires will challenge innovators, IP rights holders, and IP law. As 3D printing gains a foot-hold in the consumer market, those who create 3D printing technologies and those who own IP impacted by 3D printing need to understand the technology and the options that exist for protecting their rights—or risk being left behind in what many predict will be the next industrial revolution.
 Gartner analyst group predicts 3D printing will result in global annual IP losses of approximately $100 billion by 2018. 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
 See, e.g., What is 3D Printing?
 A point cloud is a set of data points in some coordinate system. The term “voxel” refers to volume element.
 Possible 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.
 Alice Corporation Pty. Ltd. v. CLS Bank Int’l., __ U.S. __ , No. 13-298, 2014 U.S. Lexis 4303 (June 19, 2014).
 See, e.g., Boston Scientifc Corp. v. Johnson & Johnson, 647 F.3d 1353, 1366 (Fed. Cir. 2011) (citation omitted).
 See, e.g., Butamax Advanced Biofuels LLC v. Gevo, Inc., 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 was desirable, but only one reference described the process.
 Atlas Powder Co. v. Ireco Inc., 190 F.3d 1342, 1347 (Fed. Cir. 1999).
 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 Corp. v. Geneva Pharms., Inc., 339 F.3d 1373, 1377 (Fed. Cir. 2003).
 See, e.g., Schering Corp., 339 F.3d at 1377. 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.
 In re Thorpe, 777 F.2d 695, 698 (Fed. Cir. 1985).
 Abbot Labs v. Sandoz, Inc., 566 F.3d 1282, 1292 (Fed. Cir. 2009).
 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).
 See 17 U.S.C. § 102.
 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.
 Under the DMCA, websites that host content act as an impartial messenger between those who upload material and those who potentially hold a copyright in that material. Once a copyright holder sends a takedown notice, the alleged infringer can either remove the content or leave it up and risk litigation. See 17 USC § 512.
 For example, 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.
 See, e.g., Fisher/Unitech, Inc. v. Computer Aided Tech., Inc., 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).
 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.
 See 35 U.S.C. § 171.
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