Guest post by Prof. Lucas Osborn, Campbell University School of Law.
In the Matter of Certain Digital Models
The ITC’s recent decision demonstrates the increasing importance of digital patent infringement – infringement based not on tangible products, but rather on computer files. It also indicates the coming importance of three-dimensional printing (“3D printing”) technology to intellectual property law.
The case involved patents covering methods of making Align Technology, Inc.’s (“Align”) Invisalign® products. Align’s products avoid the need for metal braces by using a series of plastic teeth aligners (essentially molds worn over the user’s teeth) that slowly guide the user’s teeth to the proper alignment. Scans of the user’s teeth are converted into digital files, which are used to design a series of digital models of the teeth aligners, each one successively moving the teeth closer to the proper alignment. The patents largely cover methods of making the aligners by generating the digital data sets for the aligners and then making (usually by 3D printing) the actual aligners. Some claims do not require the step of making the physical aligners, and would thus be infringed by merely creating the digital data sets.
Align alleged that ClearConnect Operating, LLC’s (ClearConnect) products and methods violate Section 337 and constitute patent infringement. ClearConnect created the initial teeth scans in the U.S., sent those files to Pakistan where the intermediate digital data sets were computer-generated, accepted digital transmission from Pakistan of the complete data sets into the U.S., and finally 3D printed the physical aligners in the U.S.
The parties vigorously argued whether the electronic transmission of digital data sets constituted “importation of . . . articles” within the meaning of 19 U.S.C. § 1337, and the Commission received written submissions from Google and the Motion Picture Association of America, among others, on the topic. In the end (after 30+ pages of discussion), the Commission found (over a dissenting commissioner) that the digital data sets were “articles.” The Digital Models opinion concluded this issue, stating,
In sum, our task is to determine whether the phrase “importation of . . . articles” encompasses this modern form of international commerce, or should be understood as limited to the kinds of international transactions in existence when the statute was first enacted. Having carefully reviewed the plain language of the statute, its legislative history and purpose, pertinent case law, and the arguments of the parties and public commenters, we conclude that the statutory phrase “importation . . . of articles” should be construed to include electronic transmission of digital data because the digital data sets at issue in this investigation are true articles of international commerce that are imported into the United States and their inclusion within the purview of section 337 would effectuate the central purpose of the statute.
Digital Models, p. 55.
The Digital Models decision is interesting in its own right, but it also raises some interesting questions for the future of 3D printing technology and patent law. 3D printing is rapidly progressing into a consumer technology – soon the alleged infringers of Align’s patents won’t be companies, but individuals who will generate their own digital data sets on home computers and print the aligners with their desktop 3D printers.
Two of the many issues raised by 3D printing technology are (1) how should patent law treat claims directed to digital representations of physical objects, and (2) how should patent law treat claims directed only to physical articles where the alleged infringement involves only or primarily digital renderings of the physical articles. Align’s patents fall under the first question, because they positively recite the digital data files (essentially 3D CAD files) in the claimed steps. Claims directed to digital representations are very similar to traditional software application claims; they may face patentable subject matter challenges under 35 U.S.C. § 101 and questions about when and whether they are “components,” “materials,” or “products” under the various subsections of § 271. Companies looking to protect their physical products should increasingly think about protecting digital versions of them as well.
The second issue raised by 3D printing may be the most interesting. Traditionally, companies have not sought to protect digital representations of physical products; their patent claims were simply directed to the physical objects. Much as music and movie industries had to battle digital copyright infringement, patent owners may be on the cusp of their own digital patent war. People can create, modify, and transmit 3D CAD files just as easily as they can .mp3 files. Coupled with the Internet, 3D printing technology decentralizes and largely anonymizes the manufacture of tangible objects. If the physical object is only a click away from being produced by a person’s 3D printer, should a court hold that the digital file infringes a patent claim to the physical object, either directly or under the doctrine of equivalents? If not, will claims of indirect infringement be an effective tool against the individuals and websites that host and transmit the CAD files? These questions will be of increasing importance in an era of ubiquitous 3D printing technology.
Lucas Osborn is an Associate Professor of Law and Campbell University School of Law in Raleigh, NC. He has explored 3D printing technology’s effects on the law here and here, and continues to explore these issues in his research, including a project with Tim Holbrook of Emory University School of Law.