On November 3, the Intellectual Property Law Society (IPLS) hosted Timothy Holbrook, one of the nation’s leading scholars on patent law. A professor at Emory University School of Law in Atlanta, Professor Holbrook discussed his recent article with Professor Lucas Osborn, Digital Patent Infringement in an Era of 3D Printing.

3D printing is a relatively new technology that follows a computer-aided design (CAD) file and incrementally adds material to create a 3D-printed item. Technically, this process is known as additive manufacturing. Almost anything nowadays can be 3D printed, from prosthetics and prototypes, to guns and even human tissue. 3D printed material has even been used by designers on Project Runway. However, with the increasing popularity and accessibility of 3D printing, new challenges in the law have increased as well. For example, how can the state regulate guns when they can be 3D printed at home? In patent law, 3D printing has had profound impacts on assessing liability.

How can patent-holders protect their patented items when infringers have access to a 3D printer? In patent law, there are two types of infringement: direct and indirect. Direct infringement occurs when an individual or entity makes or uses a protected product without permission. Indirect infringement occurs when one has knowledge of an existing patent on a product, yet actively induces another to infringe the patent.

Professor Holbrook explained that there are significant difficulties that arise when applying conventional approaches to direct infringement. He likened the infringement of creating patented items using 3D technology as similar to the issues raised by Napster, a peer-to-peer file sharing web forum in which users could easily engage in copyright infringement and avoid liability due to the nature of the service. As with Napster, the direct infringers, like the individuals utilizing Napster to obtain copyrighted music, are dispersed and difficult to track down. This makes it difficult for patent owners to learn who they should actually bring suit against. In addition, these direct infringers are often potential customers of the patent owners. Bringing suit against potential customers is generally considered bad business. Finally, direct infringers are often ordinary people, who lack the deep pockets that make the time, effort, and expense of bringing a lawsuit worth it. So, the question becomes, who can be held liable for this infringement?

One possible option is to sue manufacturers of 3D printers. But, Professor Holbrook pointed out, this would need to be done on a theory of indirect infringement, which would require that the manufacturers of actual knowledge that individuals will be using the printers to print patented objects. This would be difficult to prove.

Professors Holbrook and Osborn propose a theory of digital infringement to resolve these issues. Couldn’t it be possible that use of CAD files (which are needed to 3D print an object) directly infringe a patent on an underlying physical device? While many in the IP field assume the answer is no, the authors argue otherwise. Under their theory of digital infringement, there are a few possible options for showing infringement.

First, courts can adopt a standard where one who sells or offers to sell a CAD file is infringing the underlying physical product. The sale/potential sale is an economic, non-tangible appropriation of the invention, Professor Holbrook explained. This type of approach was adopted in a different context by the Federal Circuit in Transocean Offshore Deepwater Drilling v. Maersk Drilling. There, a drilling rig that was offered for sale was different from the rig that was actually sold. However, the Federal Circuit still found that the offered rig infringed the patent because a purpose of infringement liability is to prevent the generation of interest in a potential infringing product to the commercial detriment of the rightful patentee. Professor Holbrook analogized this offer of sale to CAD files, because the interest in purchasing a CAD file is not the file itself, but instead the patented item.

Second, courts could adopt an approach under the doctrine of equivalents, which basically means that one can be held liable for infringement of a patent even if the infringing product is not the same as the patented product, so long as it is equivalent to the patented product. This doctrine could be appropriate in this context, if one accepts the argument that a CAD file is substantially the same as the physical device it helps to produce.

Another option to resolve issues of infringement in 3D printing is to have patent applicants include claims specific to CAD files in their patents for the object. However, this potentially poses issues with the patentability of CAD files. Patents are generally not granted for intangible property. CAD files are intangible, which could prevent them from being patented.

At the end of the day, the growing availability and use of 3D printers is a technological problem that poses new challenges for the patent system. Professor Holbrook’s digital approach to infringement liability may well operate as the way to apply patents in a digital world.