I. Introduction

There was a time when the vast majority of things a person could think of were doomed to remain just that – mere thoughts; however, the state of technology today makes it more possible than ever to remove those ideas from the mind and turn them into reality. Nothing exemplifies this more than the growing industry of additive manufacturing, more familiarly referred to as 3D printing.[1]

3D printing has already gained a foothold in the industrial sector as a revolutionary tool for manufacturing, providing many benefits over traditional methods, including allowing for rapid prototyping, easier customization, and more efficient replacement of parts. However, as the cost of 3D printers declines and the quality of the finished products created via 3D printing is improved, average consumers, especially hobbyists and craftsmen, are embracing the technology. While some of these individuals are printing their own designs, many also turn to existing designs, either to produce as is or to print with additional modifications that they add themselves. A wide range of designs for use with 3D printing can easily be found online to accommodate such users.

As 3D printing continues to gain popularity, commentators have begun to take notice and consider the implications of this evolving technology. One of the common questions being raised pertains to the effect that this technology will have on the ability of patent owners to enforce their rights against potential infringers[LF1] .

This paper will examine how 3D printing creates unique problems for identifying and preventing patent infringement and proposes workable solutions for addressing these new complications. Part II of this paper will provide a brief background of the 3D printing technology. Part III will detail an overview of liability under the current patent laws and its application to the particular situations that arise under 3D printing. Part IV will discuss the shortcomings of two of the more common solutions proposed by commentators, particularly creating patent law changes analogous to the Digital Millenium Copyright Act (DMCA) and implementing digital rights management (DRM) software. Part V proposes modifying patent law to provide a narrow provision to protect innocent infringers. Part VI proposes modifications to existing law, which would require online providers of 3D designs to provide notices to users regarding their rights and obligations under patent laws. Part VII concludes.

II. 3D Printing: The Technology

The process of 3D printing was invented in the mid-1980s.[2] Unlike traditional methods of manufacturing, which typically involve removing material from a slab until the desired shape is created[3], 3D printing produces layers of material that build upon one another to form the final physical object. [4] Originally, 3D printing was carried out by the process of stereolithography.[5] While this technique is still in use today, other methods, such as laser-sintering and fused deposition modeling, have also developed and grown into popular use.[6] Regardless of the particular technique used,[7] the underlying process involves software that reads and interprets a digital model of the object to be printed, often a computer-aided design (CAD) drawing.[8] The specifications contained in the CAD file tell the printer what shape each individual layer must have in order to create the article represented by the CAD drawing.[9]

There are various methods for obtaining a CAD drawing of the object that will be printed.[10] A person can use CAD software to create the drawing from scratch.[11][LF2] Alternatively, 3D scanners are available, which will scan a physical object and create a CAD drawing representing the object.[12][LF3] There are also websites where a person can access numerous CAD files that have already been created.[13][LF4]

3D printing has not yet altogether supplanted traditional manufacturing methods;[14] however, it does provide distinct advantages in a myriad of situations.[15] From its inception, 3D printing was initially relegated to a more technical and industrial field.[16] While traditional methods are still more cost and time effective for mass production of goods[17], 3D printing is an ideal method for creating prototypes and custom designs.[18] This is because the underlying CAD files are easily modified and allow for infinite design variations without expending much time or effort.[19] 3D printing allows these design alternatives to be turned into physical objects instantaneously without requiring retooling of machines to accommodate each change.[20] Further, the layering process of 3D printing enables the creation of more intricate and complex design forms that are not possible to achieve using traditional cutting away methods.[21] The layering process of 3D printing can also produce articles with internal moving parts without having to go through the intermediate assembly step that is required in such situations when using traditional manufacturing methods.[22] There is also a growing trend in industries to use 3D printing as a means of creating spare and replacement parts, especially those that are outdated and would entail a large amount of time and expense to obtain.[23]

While some industrial-use 3D printers can cost as much as $1 million,[24] there are lower cost options emerging that are making this technology more accessible to the average person.[25] More minimalist 3D printers are available for at-home use,[26] and some can be purchased for as little as $200.[27] Even if a person does not want to commit to purchasing a 3D printer for their own home, they can employ one of the many services, such as Shapeways, that will perform the 3D printing for them. Therefore, no matter what level of interest a person may have in experimenting with 3D printing technology, there is an option available that will meet his or her needs.

As personal use of 3D printing technology is on the rise, an inventive commons is being created where users are reaching out to each other to share their 3D designs and ideas via websites, such as Thingiverse. By having access to these online CAD banks, users can find an existing file for the object they have in mind to print, build of off an existing file to create modifications to suit their particular needs or even create entirely new designs inspired by what they have found.

III. Patent Infringement and 3D Printing

In the realm of patent law, one of the main problems that the current system on 3D printing poses is preventing the printing of objects covered by valid patents. As access to 3D printing, as well as the underlying CAD files, becomes more widespread, so will instances of infringement. There are various parties involved in the 3D printing scheme, ranging from the makers of the printers, to the hosts of online CAD banks, to those users actually doing the printing itself. All of these users have the potential to infringe a patent in one way or another.

A. Direct Liability

Patents do not give their holders the right to affirmatively do anything with the patented invention; rather, patent law grants the holder “the right to exclude others from making, using, offering for sale, or selling the invention throughout the United States or importing the invention into the United States.” If a third party does any of these enumerated things without the permission of the patent holder, he or she is directly infringing the patent and will be liable to the patent holder.

With respect to 3D printing, the direct infringers would be those users who print an object that is covered by a valid patent. A user who prints an infringing product from their personal 3D printer is clearly making the invention and is in all likelihood also using the invention (or giving the object to another person who would then also be directly infringing once he or she used the object.)

Companies, such as Shapeways, that perform the 3D printing for third parties may be directly infringing if they are deemed to be selling the infringing products; however, this is not a foregone conclusion, as they could be said to be selling the printing service rather than the items produced by the 3D printing. Regardless, these companies would still be direct infringers once they print a patented object because, like the home user, they would still be making the patented invention. Further, the person requesting the 3D printing service would be directly infringing once he or she uses the physical object that was ordered.

In all likelihood, patentees will pursue actions against the larger companies that offer their 3D printing services rather than trying to go after the individual at-home users. In part, this is because they are easier to identify than those users printing from home. These companies are also more likely targets of infringement actions because they will tend to have more individual instances of infringement compared to the home user and, therefore, will yield greater damages in the event that the patentee receives a favorable judgment. Further, these larger companies likely have more financial resources than the average home user and likely would be more able to pay any such damages. However, if the 3D printing company is savvy enough to realize this potential liability, they will create protection mechanisms. For example, Shapeways includes a provision in its Terms and Conditions that requires its users to pay any and all costs associated with any legal action that Shapeways may face as a result of an individual user’s content.

B. Indirect Infringement

If an individual is not “making, using, offering for sale, or selling the [patented] invention” then he or she will not directly infringe the patent; however, other actions the individual might take could make them liable as an indirect infringer, either by inducing infringement or contributing to infringement.

With regard to 3D printing, the online CAD banks, such as Thingiverse, may be liable as indirect infringers if they host CAD files that represent patented inventions. The hosting site would not be a direct infringer in such situations since the CAD files are not the patented inventions themselves, but, rather, they would be instructions for making the patented invention; however, by offering these files to its users with knowing that the intention is to print the physical object, they may be indirectly infringing a patent by playing a role in the user’s direct infringement.

The main obstacle that patentees face in proving indirect infringement is whether the indirect infringer had the requisite knowledge. According to the Supreme Court’s decision in Global-Tech Appliances, Inc. v. SEB S.A., whether the theory of indirect liability is inducement or contributory infringement, the indirect infringer must have knowledge of the existence of the patent that is infringed. Further, the knowledge requirement will be met if it is found that the indirect infringer was willfully blind. Willful blindness occurs where the party (1) has a subjective belief that there is a high probability that a fact exists and (2) takes deliberate actions to avoid learning of that fact.

With respect to online CAD banks, patentees may find it extremely difficult to prove this knowledge requirement since they are passive hosts of the content. These sites do not need to inquire where the content is coming from or have users prove that they have the necessary usage rights files. In fact, Shapeways affirmatively shifts this burden to its users via its Terms and Conditions by simply requesting that the users “not infringe other people's intellectual property rights.” Therefore, Shapeways generally can assume that its users are following this and the CAD files being uploaded do not infringe.

IV. Shortcomings of Commonly Proposed Solutions

Recognizing the difficulties posed by 3D printing for patentees wanting to enforce their rights, many commentators have begun to offer up potential solutions. Ultimately, however, it seems that those solutions garnering the most attention are either unnecessary or unworkable.

A. A Patent Corollary to the Digital Millennium Copyright Act Is Unnecessary

Perhaps the most common solution being offered by commentators to address the potential risks that 3D printing poses for the patent regime is to create a patent law corollary to the DMCA. Comparisons are being drawn between the hardships that copyright law faced as technological advances made digital copying and distribution rampant. However, it seems that not enough weight is being given to the fundamental differences between patent law and copyright law. If it were, it would become clear that the changes that the DMCA made to copyright law are unnecessary in the realm of patent law.

The DMCA shields online service providers from copyright liability that they may otherwise have been exposed to as a result of the content that users post on their websites. In order to qualify under this safe harbor provision, they must follow specific guidelines, including promptly blocking access to allegedly infringing material once they receive a notification of infringement from a copyright holder.

This safe harbor provision is important in the dominion of copyrights because such online service providers open themselves up to direct liability under copyright law simply by displaying infringing content. Unlike under patent law, these host sites would not be able to avoid liability by proving that they did not have knowledge of the valid copyright. Under copyright law, knowledge matters when a party asserts that he or she independently created the copyrighted work; there, the party alleging independent creation would attempt to show that they had no knowledge of the copyrighted work and therefore did not copy it. The defense of independent creation is not available to the host sites because they are not creating the displayed works themselves; rather, they display works posted by their users, which the users may or may not have rights to. Therefore, prior to the DMCA, these online service providers exposed themselves to a large degree of liability under copyright law. The DMCA safe harbor provision was necessary to create reasonable limits on this potential liability.

In the world of 3D printing, host sites, such as Thingiverse, can already avail themselves of the DMCA safe harbor provisions to protect themselves from liability from copyright infringement. Therefore, any extension or adaptation of the DMCA to patent laws would have to provide patentees or the host sites with options that are not otherwise available under existing laws in order to justify the costs associated with creating legal change.

Under existing patent law, a similar safe harbor provision would be superfluous. As previously explained, if a website only hosts content that can be used for 3D printing, rather than carrying out the printing itself, then it opens itself up to liability for indirect patent infringement; however, the patentee would have to prove that the host site had knowledge of the allegedly infringed patent. Therefore, under patent law, the host sites already have a strong defense against any claims of patent infringement. The DMCA does not afford any greater protection to service providers with respect to copyrights; in fact, the DMCA explicitly provides that actual knowledge of infringement or willful blindness disqualifies a provider from receiving the protections afforded by the DMCA. Hence, with respect to limiting the scope of liability faced by host sites, a DMCA safe harbor provision would add nothing to the protections afforded by existing patent law.

The DMCA’s safe harbor provision’s procedure for notice and takedown of infringing material would also not add to a patentee’s enforcement rights if extended to patent law. The use of cease-and-desist letters is already a common practice amongst patentees as a means of deterring alleged infringement. With respect to 3D printing, a patentee can already notify the host site that one or more of the CAD files it is making available to its users covers a patented invention. There is no need to alter the law to affirmatively state that patentees may continue this long-standing practice.

Although a host site receiving a cease-and-desist notification would not be required to remove a CAD file that allegedly covers a patented invention (a requirement that the DMCA does not impose with respect to copyrighted material either), it would be in its best interest to do so, or at least investigate the validity of the patentee’s claim. By receiving the cease-and-desist notification, the host site now has the knowledge of the infringed patent that is required to prove indirect infringement. Therefore, if the contested CAD file is not taken down, the patentee has a much stronger case against the host site as an indirect infringer.

Since an extension of the DMCA to patent law would not result in any appreciable changes, it is not a solution that should be pursued. If it were, it would only result in a waste of time, money and resources better spent elsewhere.

B. Digital Rights Management Software for 3D Printers is Unworkable

Aside from a patent corollary to the DMCA, another proposed solution that is gaining recognition is implementing DRM software to put limits on which files the 3D printers can actually print. DRM software can be used to control the use of digital content. In October of 2012, Inventive Controls obtained a patent for technology that will prohibit a 3D printer from printing if the underlying CAD file does not have the requisite authorizations.

While this type of control is not without merit, ultimately it is not an effective solution to the problems posed by 3D printing. Patentees can most certainly utilize software to limit the use of CAD files that they themselves distribute. Further, companies, such as Shapeways, that offer 3D printing services can choose to only print authorized files in order to limit their liability. However, as an effective means of preventing infringement, DRM software would overly burden the 3D printing community.

DRM software alone cannot be used to determine whether a CAD file covers an invention disclosed in an existing patent. The software would simply tell the printer whether the CAD file has the necessary permissions to allow the physical object it represents to be printed. Therefore, the real question comes down to defining valid authorization.

To be a truly effective means of preventing infringement, home users would not be allowed to authorize any CAD files that they produce themselves. This is because the home user could create a CAD design that infringes a valid patent. A truly innocent infringer might conceive of a design completely on his or her own that just happens to fall within the scope of an existing patent. On the other extreme, an individual may affirmatively be attempting to copy a patented design. For example, the individual may choose to recreate the CAD file from scratch, using either the patented item or an existing protected CAD file as a reference, or he or she can use a 3D scanner to copy the patented item and create a representative CAD file. While the latter conduct clearly should not be condoned, both the innocent infringer and willful infringer alike would ultimately be guilty of infringement. While a home user can most certainly create 3D designs that fall outside the scope of any valid patent, DRM software alone will not be able to distinguish between these non-infringing designs and infringing designs. Therefore, to effectively control 3D printing of infringing items, authorized files would have to exclude home user generated files all together. This solution would unduly burden the 3D printing community and ultimately prevent home users from using 3D printing as a creative tool[LF5] .

V. Narrow Innocent Infringer Provision

Ultimately, the real threat that 3D printing poses is exposing the average home users to potentially large liability for patent infringement. This is because lack of knowledge of the infringed patent is not a defense to a claim of direct infringement. Therefore, an individual may create a design completely on his or her own; alternatively, the individual may download a design from an online CAD bank, such as Thingiverse, thinking that they are free to use it; however, regardless of how the design was obtained, if it falls within the scope of a valid patent, the individual will be infringing that patent the second they print the physical object. Companies providing 3D printing services, such as Shapeways, minimize this risk by shifting this liability to their users; however, individuals have no means of doing the same.

In light of the growing access to CAD files without any meaningful way to determine whether or not use of those files could result in liability for patent infringement, some restrictions should be created to regulate the risk that individual users expose themselves to while still allowing themselves to avail themselves of the benefits of 3D printing. While liability for indirect infringement already has limits imposed by the knowledge requirement previously discussed, these home users will tend to be direct infringers. Therefore, a limited innocent direct infringer provision should be considered.

Equity should require the patentee to also prove knowledge on the part of these direct infringers. If the alleged infringer had no knowledge of the patent and was not using it for commercial purposes, the patentee should not recover any damages for infringing acts. However, if the innocent direct infringer had been using the patented design for a commercial purpose, the patentee should be able to recover some damages for these actions. In determining damages the court should apply an equitable approach balancing the hardships of the innocent infringer and the patentee. Any award of damages should not leave the innocent infringer in a destitute state. A preferred approach would be to have damages equal some percentage of the profits that the innocent infringer realized from his infringing activities.

VI. Actions Required of Online CAD Banks

A. Notices

While sites like Thingiverse and Shapeways already contain provisions in their service terms that shift liability to users for any infringement causes of action brought against the sites and provisions that providing cursory advisements of potential liability under intellectual property laws, these terms and services are often found in an external link at the bottom of the site page. A user may never read or even see these terms of services but will still have full access to the site.

Because of the potentially enormous liability that individual users may face, these online CAD banks should be required to provide conspicuous notices in plain English to its users advising them of the potential patent liability they may face by using or sharing the CAD files. Further, before either uploading or downloading a CAD file, the site should require the users to acknowledge that they are aware of these notices and have read them.

B. Records

Further, in order to provide patentees with a more meaningful way of finding infringers, these online CAD banks should be required to maintain records of those individuals who upload files for use by others. The CAD banks should be required to obtain sufficient information to allow the uploading party to be identified in the event that the CAD design he or she shared is found to infringe.

VII. Conclusion

....

VIII.

[1] 3D Printing Scales Up; http://www.economist.com/news/technology-quarterly/21584447-digital-manufacturing-there-lot-hype-around-3d-printing-it-fast

[2] How 3D Printers Work; http://www.economist.com/news/technology-quarterly/21584449-how-3d-printers-work

[3] IT WILL BE AWESOME IF THEY DON’T SCREW IT UP: 3D Printing, Intellectual Property, and the Fight Over the Next Great Disruptive Technology