Timothy R. Holbrook

Digital Patent Infringement in an Era of 3D Printing

The digital revolution has now moved beyond music and video files. A person can now translate three-dimensional objects into digital files and, at the press of a button, recreate those items via a 3D printer or similar device. Just as digitization placed pressure on the copyright system, so will these digital computer-aided design (CAD) files stress the patent system. Patents directed to physical objects can now have their value appropriated — not by the transfer of physical embodiments — but by the making, selling, and transferring of CAD files designed to print the invention. We term this phenomenon digital patent infringement. We explore the ways the patent system can respond to protect patent owners against the appropriation of their inventions via these digital files. First, we explore whether indirect infringement doctrines sufficiently protect patent holders against these CAD files. Given the nature of likely accused indirect infringers, we conclude, contrary to earlier literature, that these doctrines likely are not up to the task. Second, we offer novel theories of direct “digital” patent infringement based on the CAD files alone. We consider whether offers to sell and sales of these files should constitute direct patent infringement. Because such commercial activity is an appropriation of the economic value of the patented invention, we believe the law should recognize such an infringement theory. Next, rejecting the prior assumptions of the literature, we provocatively explore whether the CAD files alone should be viewed as infringement for making the patented device, given the de minimis effort it takes to create the item via a 3D printer or related device. As a technological matter, the line between digital and tangible has eroded to the point where one could view these files as infringement. As a legal and policy matter, however, such expansion of patent infringement liability could have significant chilling effects on other actors and incentives, giving us pause in extending liability in this context.

The Expressive Impact of Patents

Patents represent a quid pro quo between the public and the inventor: in exchange for disclosing the invention, the inventor receives the right to exclude others from practicing her invention. They therefore serve as a source technical information. Patents also communicate information to markets and companies that serve to reduce various transaction costs, allowing more efficient transactions and investment. Patents consequently communicate various types of information beyond the technical. There is no reason, however, that such messages must be limited to the technical or the pecuniary. This Article explores whether patents, like other governmental acts such as legislation, can create expressive harms. The grant of a patent could communicate a message of inferiority to groups whose identity is tied to their biology. The Article analyzes this potential through the paradigm of granting patents on a gay gene or other biological process that predisposes a person towards a homosexual orientation. Other conditions implicated by my thesis are the deaf, dwarfs, and high-functioning autistics. These groups do not regard themselves as pathological or in need of curing, yet genetic discoveries offer the potential for their elimination through what is effectively privatized eugenics. The grant of a patent on such technologies affords the governments imprimatur of such controversial technologies. The article first reviews scientific status of homosexuality and then explores whether patents regarding sexual orientation could a moral signal of inferiority by the government by suggesting gays and lesbians are pathological. Finally, the article offers various prescriptions to address this problem.

Extraterritoriality and Digital Patent Infringement

Additive manufacturing techniques, colloquially referred to as 3D printing, increasingly will place pressure on the world’s patent systems in a manner akin to the challenges the copyright systems faced due to digital files. Unlike copyright, however, the digital files themselves do not, under present law, constitute the patented invention itself. A co-author and I have advocated that, under current US law, there should be infringement based on the digital files themselves, if someone sells or offers to sell the file that will “print�? the patented invention. We dubbed this “digital infringement.�? Additionally, others have called for mechanisms to protect patent holders from losing control of their invention by, for example, drafting claims that are specific to such digital files. While such digital infringement would afford patent owners greater protections against 3D printing, it also creates issues of its potential the extraterritorial reach. The same case that opened the door to digital infringement in the US – Transocean – also has the potential to dramatically expand the extraterritorial reach of a US patent. In theory, anyone in the world offering to sell or selling the digital file to someone in the US could not be liable for patent infringement in the US. Also, if the sale results in massive copies of the invention outside of the US, it could be possible for a party to responsible for the damages arising from those copies, so long as there was a domestic act of infringement. US case law currently prevents such a damages award, but it is not clear the courts answered the questions correctly. The chapter explores this dynamic and offers possible mechanisms for addressing this concern, such as a consideration of conflict of laws prior to any assessment of liability.

A Comparative Look at Recent US Supreme Court Patent Decisions

This article reviews two recent Supreme Court decisions of comparable importance internationally. In KSR International v. Teleflex Inc., the Supreme Court addressed the U.S. standard for non-obviousness (or inventive step). In the process, the Court inadvertently brought the U.S. law more close in line with Europe. In Microsoft Corp. v. AT&T Corp., the Court interpreted the provision of U.S. patent law that provides extraterritorial protection for U.S. patent holders against the exportation of all or part of the patented invention. The Court offered a narrow interpretation of the provision in part to prevent potential conflicts with foreign law.