Does 3D Printing Pose a Challenge to the Patent System?

"Quadrifolium 3D Print", Image by fdecomite

“Quadrifolium 3D Print”, Image by fdecomite

Whenever Captain Picard ordered up some of his favorite brew, “Earl Grey tea, hot”, from the Enterprise’s replicator, it materialized right there within seconds. What seemed like pure science fiction back when Star Trek: The Next Generation was first on the air (1987 – 1994), we know today to be a very real, innovative and thriving technology called 3D printing. So it seems that Jean-Luc literally and figuratively excelled at reading the tea leaves.

These five Subway Fold posts have recently covered just a small sampling of the multitude of applications this technology has found in both the arts and sciences. (See also #3dprinting for the very latest trends and developments.)

Let us then, well, “Engage!” a related legal issue about 3D printing: Does it violate US federal copyright law in certain circumstances? A fascinating analysis of this appeared in an article on posted January 6, 2016 on ScientificAmerican.com entitled How 3-D Printing Threatens Our Patent System by Timothy Holbrook. I highly recommend reading this in its entirety. I will summarize and annotate it, and then pose some of my own non-3D questions.

Easily Downloadable and Sharable Objects

Today, anyone using a range of relatively inexpensive consumer 3D printers and a Web connection can essentially “download a physical object”. All they need to do is access a computer-aided design (CAD) file online and run it on their computer connected to their 3D printer. The CAD file provides the highly detailed and technical instructions needed for the 3D printer to fabricate the item. As seen in the photo above, this technology has the versatility to produce some very complex and intricate designs, dimensions and textures.

Since the CAD files are digital, just like music and movie files, they can be freely shared online. This makes it likely that just as music and entertainment companies were threatened by file-sharing networks, so too is it possible that 3D printing will result in directly challenging the patent system. However, this current legal framework “is even more ill-equipped” to manage this threat. Consequently, 3D printing technology may well conflict with “a key component of our innovation system”.*

The US federal government (through the US Patent and Trademark office – USPTO), issues patents for inventions they determine are “nontrivial advances in state of the art”. These documents award their holders the exclusive right to commercialize, manufacture, use, sell or import the invention, while preventing other from doing so.

Infringements, Infringers and Economic Values

Nonetheless, if 3D printing enables parties other than the patent holder to “evade the patent”, its value and incentives are diminished. Once someone else employs a 3D printer to produce an object covered by a particular patent, they have infringed on the holder’s legal rights to their invention.

In order for the patent holder to bring a case against a possible infringer, they would need to have knowledge that someone else is actually doing this. Today this would be quite difficult because 3D printers are so readily available to consumers and businesses. Alternatively, the patent laws allow the patent holder to pursue an action against anyone facilitating the means to commit the infringement. This means that manufacturers, vendors and other suppliers of CAD and 3D technologies could be potential defendants.

US copyright laws likewise prohibit the “inducement of infringement”. For example, while Grokster did not actually produce the music on its file-sharing network, it did facilitate the easy exchange of pirated music files. The music industry sued them for this activity and their operations were eventually shut down. (See also this August 31, 2015 Subway Fold post entitled Book Review of “How Music Got Free” about a recent book covering the history and consequences of music file sharing.)

This approach could also possibly be applied to 3D printing but based instead upon the patent laws. However, a significant impediment of this requires “actual knowledge of the relevant patent”. While nearly everyone knows that music is copyrighted, everyone is not nearly as aware that devices are covered by patents. 3D printers alone are covered by numerous patents that infringers are highly unlikely to know about much less abide. Moreover, how could a potentially aggrieved patent holder know about all of the infringers and infringements, especially since files can be so easily distributed online?

The author of this piece, Timothy Holbrook, a law professor at Emory University School of Law, and Professor Lucas Osborn from Campbell University School of Law, believe that the courts should focus on the CAD files to stem this problem. They frame the issue such that if the infringing object can so easily be produced with 3D printing then “should the CAD files themselves be viewed as digital patent infringement, similar to copyright law?” Furthermore, the CAD files have their own value and, when they are sold and used to 3D print an item, then such seller is benefiting from the “economic value of the invention”. The professors also believe there is no infringement if a party merely possesses a CAD file and is not selling it.

Neither Congress nor the courts have indicated whether and how they might deal with these issues.

My Questions

  • Would blockchain technology’s online ledger system provide patent holders with adequate protection against infringement? Because of the economic value of CAD files, perhaps under such an arrangement could they be written to the blockchain and then have Bitcoin transferred to the patent holder every time the file is downloaded.  (See the August 21, 2015 Subway Fold post entitled Two Startups’ Note-Worthy Efforts to Adapt Blockchain Technology for the Music Industry which covered an innovative approach now being explored for copyrights and royalties in the music industry)
  • Would the digital watermarking of CAD files be a sufficient deterrent to protect against file-sharing and potentially infringing 3D printing?
  • What new opportunities might exist for entrepreneurs, developers and consultants to help inventors protect and monitor their patents with regard to 3D printing?
  • Might some inventors be willing to share the CAD files of their inventions on an open source basis online as an alternative that may improve their work while possibly avoiding any costly litigation?

 


These seven Subway Fold posts cover a series of other recent systems, developments and issues in intellectual property.


If this ends up in litigation, the lawyers will add an entirely new meaning to their object-ions.

New Startup’s Legal Research App is Driven by Watson’s AI Technology

"Supreme Court, 60 Centre Street, Lower Manhattan", Image by Jeffrey Zeldman

[New York] “Supreme Court, 60 Centre Street, Lower Manhattan”, Image by Jeffrey Zeldman

May 9, 2016: An update on this post appears below.


Casey Stengel had a very long, productive and colorful career in professional baseball as a player for five teams and later as a manager for four teams. He was also consistently quotable (although not to the extraordinary extent of his Yankee teammate Yogi Berra). Among the many things Casey said was his frequent use of the imperative “You could look it up”¹.

Transposing this gem of wisdom from baseball to law practice², looking something up has recently taken on an entirely new meaning. According to a fascinating article posted on Wired.com on August 8, 2015 entitled Your Lawyer May Soon Ask for This AI-Powered App for Legal Help by Davey Alba, a startup called ROSS Intelligence has created a unique new system for legal research. I will summarize, annotate and pose a few questions of my own.

One of the founders of ROSS, Jimoh Ovbiagele (@findingjimoh), was influenced by his childhood and adolescent experiences to pursue studying either law or computer science. He chose the latter and eventually ended up working on an artificial intelligence (AI) project at the University of Toronto. It occurred to him then that machine learning (a branch of AI), would be a helpful means to assist lawyers with their daily research requirements.

Mr. Ovbiagele joined with a group of co-founders from diverse fields including “law to computers to neuroscience” in order to launch ROSS Intelligence. The legal research app they have created is built upon the AI capabilities of IBM’s Watson as well as voice recognition. Since June, it has been tested in “small-scale pilot programs inside law firms”.

AI, machine learning, and IBM’s Watson technology have been variously taken up in these nine Subway Fold posts. Among them, the September 1, 2014 post entitled Possible Futures for Artificial Intelligence in Law Practice covered the possible legal applications of IBM’s Watson (prior to the advent of ROSS), and the technology of a startup called Viv Labs.

Essentially, the new ROSS app enables users to ask legal research questions in natural language. (See also the July 31, 2015 Subway Fold post entitled Watson, is That You? Yes, and I’ve Just Demo-ed My Analytics Skills at IBM’s New York Office.) Similar in operation to Apple’s Siri, when a question is verbally posed to ROSS, it searches through its data base of legal documents to provide an answer along with the source documents used to derive it. The reply is also assessed and assigned a “confidence rating”. The app further prompts the user to evaluate the response’s accuracy with an onscreen “thumbs up” or “thumbs down”. The latter will prompt ROSS to produce another result.

Andrew Arruda (@AndrewArruda), another co-founder of ROSS, described the development process as beginning with a “blank slate” version of Watson into which they uploaded “thousands of pages of legal documents”, and trained their system to make use of Watson’s “question-and-answer APIs³. Next, they added machine learning capabilities they called “LegalRank” (a reference to Google’s PageRank algorithm), which, among others things, designates preferential results depending upon the supporting documents’ numbers of citations and the deciding courts’ jurisdiction.

ROSS is currently concentrating on bankruptcy and insolvency issues. Mr. Ovbiagele and Mr. Arruda are sanguine about the possibilities of adding other practice areas to its capabilities. Furthermore, they believe that this would meaningfully reduce the $9.6 billion annually spent on legal research, some of which is presently being outsourced to other countries.

In another recent and unprecedented development, the global law firm Dentons has formed its own incubator for legal technology startups called NextLaw Labs. According to this August 7, 2015 news release on Denton’s website, the first company they have signed up for their portfolio is ROSS Intelligence.

Although it might be too early to exclaim “You could look it up” at this point, my own questions are as follows:

  • What pricing model(s) will ROSS use to determine the cost structure of their service?
  • Will ROSS consider making its app available to public interest attorneys and public defenders who might otherwise not have the resources to pay for access fees?
  • Will ROSS consider making their service available to the local, state and federal courts?
  • Should ROSS make their service available to law schools or might this somehow impair their traditional teaching of the fundamentals of legal research?
  • Will ROSS consider making their service available to non-lawyers in order to assist them in represent themselves on a pro se basis?
  • In addition to ROSS, what other entrepreneurial opportunities exist for other legal startups to deploy Watson technology?

Finally, for an excellent roundup of five recent articles and blog posts about the prospects of Watson for law practice, I highly recommend a click-through to read Five Solid Links to Get Smart on What Watson Means for Legal, by Frank Strong, posted on The Business of Law Blog on August 11, 2015.


May 9, 2016 Update:  The global law firm of Baker & Hostetler, headquartered in Cleveland, Ohio, has become the first US AmLaw 100 firm to announce that it has licensed the ROSS Intelligence’s AI product for its bankruptcy practice. The full details on this were covered in an article posted on May 6, 2016 entitled AI Pioneer ROSS Intelligence Lands Its First Big Law Clients by Susan Beck, on Law.com.

Some follow up questions:

  • Will other large law firms, as well as medium and smaller firms, and in-house corporate departments soon be following this lead?
  • Will they instead wait and see whether this produces tangible results for attorneys and their clients?
  • If so, what would these results look like in terms of the quality of legal services rendered, legal business development, client satisfaction, and/or the incentives for other legal startups to move into the legal AI space?

1.  This was also the title of one of his many biographies,  written by Maury Allen, published Times Books in 1979.

2.  For the best of both worlds, see the legendary law review article entitled The Common Law Origins of the Infield Fly Rule, by William S. Stevens, 123 U. Penn. L. Rev. 1474 (1975).

3For more details about APIs see the July 2, 2015 Subway Fold post entitled The Need for Specialized Application Programming Interfaces for Human Genomics R&D Initiatives