Page 3 - IP

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Intellectual Property | Monday, august 4, 2014 | 3

many laser-based consumer scanners more those objects copied using 3D printers that IP litigation, it has become increasingly popular. meantime, taking the time to understand the

affordable.
are purely design-oriented. Similarly, CAD Courts look to a variety of factors to determine technology and the impact it will have on
design files that direct 3D printers to make whether the claimed information is in fact a IP rights provides an instructive lesson on
3D Printing Patent Problems
unique sculptures and other artistic objects trade secret, including the extent to which the the struggles old laws have to address new
should enjoy copyright protection—as should information is known outside the business, the innovations—and an opportunity to consider
Patent litigation involving 3D printing the object themselves as derivative works. As measures taken to guard its secrecy and the how to protect the existing IP rights at stake
machines, methodologies, and materials is a result, companies that make and sell copy- ease or difficulty with which the information in the coming 3D printing disruption.
inevitable. While patent validity will always rightable objects like toy figurines and decora- could be acquired by others. Once established,
depend on specific circumstances, certain tive home designs may also have enforceable proving misappropriation requires a showing •••••••••••••••••••••••••••••
themes are likely to occur that may make copyrights. Those rights will make the exact that someone other than the trade secret own- 1. See “Gartner: 3D printing to result in $100 billion
IP losses per year,” www.3ders.org, Oct. 14, 2013, http://
some future 3D printing patent disputes more replication of their copyrighted creations er knowingly acquired the secret directly or www.3ders.org/articles/20131014-gartner-3d-printing-to-
difficult.7
qualify as possible copyright infringement.
indirectly through improper means or through result-in-100-billion-ip-losses-per-year.html.
First, many claimed innovations in 3D print- But other parts of copyright protection breach of a duty to keep it secret.
2. See l.Gilpin, “3D printing: 10 factors still holding
ing may exist in the software that runs the present harder questions. While purely 3D printing will likely see its fair share of it back,” techreublic.com, Feb. 19, 2014, http://www. techrepublic.com/article/3d-printing-10-factors-still-
printers. The u.S. Supreme Court’s recent deci- functional items are ineligible for copyright misappropriation of trade secret claims.21 holding-it-back/.
sion in Alice Corp. v. CLS Bank8 preserves soft- protection, functional items that also include More and more companies are turning to 3. Carl R. Deckard’s patent for Selective laser Sinter-
ware patentability but requires “an inventive design elements may qualify for copyright trade secret law as way to protect innova- ing (SlS) technology arguably expired in January 2014.
concept” beyond computer implementation protection. In those kinds of cases, copyright tions outside of the patent system. In addi- See “let the revolution begin: Key 3D printing patent
of an abstract idea to achieve patentability. law uses a “separability test” to determine tion, as 3D printing patents age, new market 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
like other software-based patents, 3D print- available copyright protection. Separability,
entrants can turn to trade secret law to lever-
patents also set to expire this year include three patents
ing patents based on software risk becoming from 3D Systems and six from Stratasys. Id.
mired in the post-Alice wonderland of defining 4. See, e.g., “What is 3D Printing?” 3D Printing.com, http://3dprinting.com/what-is-3d-printing/.
just what is that necessary inventive concept.
5. Manu Mannoor, et al., “3D Printed Bionic Ears,”
Additionally, some 3D printing advance- nano letters (2013). http://scholar.princeton.edu/ma- Copyright law will play a large role in 3D printing IP—especially
ments may be too new to allow the creation nus/files/M.S.%2520Mannoor-nanoletters-2013.pdf; Ke when it comes to objects printed at home by consumers. Copy-
of specifications sufficient to allow a person Sun, et al., “3D Printing of Interdigitated li-Ion Microbat-
of “ordinary skill in the art” to practice the tery Architectures,” 25 Advanced Materials 33, Sept. 6, 2013 at 4539.
right protection will clearly apply to those objects copied using 3D
6. David Rotman, “Microscale 3-D Printing,” MIT Tech-
claimed invention needed to survive a validity nology news (Spring 2014), http://www.technologyre- printers that are purely design-oriented.
challenge.9 Prior art that provides guidance view.com/lists/technologies/2014/.
on the validity of the plain language of the 7. Patent infringement claims based on items created on a 3D printer are also possible. For a discussion of pat-
specifications may simply not exist.10
ent rights in those situations, see Bryan J. vogel, “Cast- however, has no definitive test and can be age proprietary adaptations, modifications
Conversely, some seemingly revolution- ing 3D Printing’s Coming IP litigation: usual Suspects expensive to prove and litigate.18
and processes in an effort to scale their use
ary innovations may end up being not “new and Dark Horses,” 86 PTCJ 1209, Oct. 10 2013, at p.2.
For now, allegations of copyright infringe- to a commercial scale. The success of those
enough” and face claims of invalidity for 8. Alice Corporation Pty. v. CLS Bank Int’l., _ u.S. _, no. ment in the 3D printing world have been claims will depend on the efforts made to keep
anticipation under the doctrine of inheren- 13-298, 2014 u.S. lexis 4303 (June 19, 2014).
9. See, e.g., Boston Scientifc v. Johnson & Johnson, 647 largely restricted to the confines of the Digi- the claimed advantage secret and the applica-
cy.The inherency doctrine provides that F.3d 1353, 1366 (Fed. Cir. 2011) (citation omitted).
tal Millennium Copyright Act (DMCA). under tion of the particular jurisdiction’s laws and
11 10. See, e.g., Butamax Advanced Biofuels v. Gevo, 109
the discovery of a previously unappreciated u.S.P.Q. 2d 1701 (Fed. Cir. 2014). Patent holder’s claimed the DMCA, websites that host content act as precedent to the unique circumstances of
property of a prior art composition, or of a invention relied on the use of a recombinant yeast micro- organism “comprised of inactivated genes” that disabled an impartial messenger between those who the case at hand.
scientific explanation for the prior art’s func- a competing synthetic pathway. Prior art agreed deacti- upload material to that site and those who
tioning, does not render the old composition vation desirable, only one reference described process.
potentially hold a copyright in that material. Other 3D Printing IP:
patentably new to the discoverer.”12 Further, 11. See, e.g., Schering v. Geneva Pharms., 339 F.3d 1373 Once notices are sent, the alleged infringer Trade Dress and Design Patent
the claiming of a new use, new function, or (Fed. Cir. 2003). A single prior art reference that disclos- can either take down the content or leave it up
unknown property which is inherently pres- es each and every limitation of the claimed invention can invalidate a patent for anticipation, and that prior and risk litigation.19 So far, various rights hold-
ent in the prior art does not necessarily make art reference may anticipate without disclosing a feature ers have used the DMCA to issue take down A subset of trademark law, trade dress
of the claimed invention if that missing characteristic is
the claim patentable.13
an “inherent” part of that anticipating reference.
notices on several 3D printing file-sharing.20 refers to the protections afforded the overall
Finally, as 3D printing technologies evolve, 12. Atlas Powder Co. v. Ireco, 190 F.3d 1342, 1347 (Fed. Cir. 1999).
Moving forward, however, using the DMCA to appearance and image of a product. As with
processes that use different kinds of materi- 13. In re Best, 562 F.2d 1252 (CCPA 1977). There is no protect 3D printing infringement of copyrights trademark protections,22 trade dress seeks to
als in a single fabrication may encounter the requirement that a person of ordinary skill in the art may become overwhelming—especially as protect consumers and avoid confusion about
difficulties that surround a product-by-pro- would have recognized the inherent disclosure at the consumer use of home 3D printers increases.
the origins of purchased products.23 Trade
cess invention.14 Though product-by-process time of invention, but only that the subject matter is in dress protections only occur when the trade
claims continue to require the necessary fact inherent in the prior art reference. Schering, 339 F.3d at 1377.
Other 3D Printing IP: Trade Secrets
dress involved is inherently distinctive or has
inventive concept, they are not infringed 14. In re Thorpe, 777 F.2d 695, 698 (Fed. Cir. 1985).
developed a secondary, source-identifying
by processes other than the one claimed.15 15. Abbot Labs v. Sandoz, 566 F.3d 1282, 1292 (Fed. Cir. 3D printing’s multiple technologies, the meaning.
2009).
That means product-by-process claims must 16. See Bryan J. vogel, “3D Printing, Materials Devel- opment, and IP: Protecting What’s in the Printer,” Bloom- industry’s rapid expansion and a general Similarly, design patents can protect the
meet traditional patenting standards when berg BnA Patent, Trademark & Copyright Journal (June increase in employee mobility make 3D printing way a product looks. Design patent protection
it comes to validity, but that granted patent 13, 2014).
ripe for misappropriation of 3D printing indus- extends exclusively upon the descriptions
rights offer less protection when it comes to 17. See 17 u.S.C. §102.
try trade secrets and trade secret conflicts.
and illustrations within the patent itself.24
infringement.16
18. See Chosun Int’l v. Chrisha Creations, 413 F.3d 324 As a general rule, what qualifies as a trade Trade dress protection and design patent
(2d Cir. 2005). Additionally, it’s not clear what copy- rights exist, if any, for a file created in CAD (rather than secret gets a fairly broad definition. Anything protection are not mutually exclusively and
scanned) when the design covers a useful object not from a formula, practice or process to a a design element may have both protections
Other 3D Printing IP: Copyright
eligible for copyright protection and whether unauthor- design, instrument, pattern, or compilation at the same time or one right after another.
unlike patents, copyright attaches auto- ized use of the file to create an object on a 3D printer of information may be a protectable trade Trade dress protections are unlikely to play
constitutes copyright infringement.
matically to a creative work upon fixation or 19. See 17 uSC §512.
20. HBO issued a takedown notice to a site offering secret, but certain conditions must be met. a large role in 3D printing rights-related litiga-
physical embodiment.17 Copyright protection to sell a 3D-printed, smartphone charging dock shaped Though specific definitions and requirements tion—consumers likely won’t be confused
usually covers things like writings, drawings, like the Iron Throne from HBO’s “Game of Thrones” Tv vary, trade secret protection attaches when about the origins of designs and, as with
musical compilations, sculptures and other series; Games Workshop issued a takedown notice for whatever is claimed as a secret is not gen- copyright, enforcing individual consumer
original designs. Copyright protections do 3D printing files for figurines based on its Warhammer game.
erally known in the industry, the owner or infringement will be difficult. Design patent
not extend to the function of a copyrighted 21. See, e.g., Fisher/Unitech v. Computer Aided Tech., holder of the secret has made appropriate rights do offer a way to prevent infringement
work or the idea that a copyrighted work 2013 u.S. Dist. lEXIS 50744, no. 13 C 02090 (n.D. Ill. April efforts to keep it secret, and the secret confers of proprietary designs—but once again,
expresses. Registration is not a prerequisite 9, 2013) (following industry merger between former 3D a competitive advantage. Some form of trade enforcement of consumer violations will be
printer manufacturing rivals, 3D printer reseller alleges
to copyright protection—though registration misappropriation of trade secrets against other reseller).
22. While 3D replication of an item including a trade- secret protection exists in all 50 states. Most difficult to scale and expensive to pursue.
of copyright provides multiple benefits.
mark has the potential to violate trademark law, creating states use some version of the uniform Trade
Copyright law will play a large role in the item without the mark would be unlikely to qualify Secrets Act and the few that don’t offer simi- Conclusion
3D printing IP—especially when it comes as a trademark violation, especially if the item is only lar protection based on common law rules.
to objects printed at home by consumers. made for home use.
23. See 15 u.S.C. §1125(a). Because trade secret litigation can be less The full extent of the disruptive effect 3D
Copyright protection will clearly apply to
24. See 35 u.S.C. §171.
expensive and burdensome than other forms of
printing will have remains to be seen. In the