Workshop 1: You First: Manufacturing, IP and the 3D Printing Disruption

© 2016 ROBINS KAPLAN LLP
YOU FIRST: MANUFACTURING, IP AND
THE 3D PRINTING DISRUPTION
APRIL 10, 2016
INSIDE 3D PRINTING CONFERENCE & EXPO
NEW YORK, NEW YORK
BRYAN J. VOGEL

© 2016 ROBINS KAPLAN LLP 3
AGENDA

AGENDA
 Introduction
 IP Strategies
 Patent
– Claim Strategies
– ITC Jurisdiction Over Digital Files
 Contract
– Exhaustion: Repair vs. Reconstruction
– An Example
– Other Contract Issues
 Trade Secret
 Copyright
 Trademark / Trade Dress
 Wrap-Up

INTRODUCTION

THE ROLE OF ADDITIVE MANUFACTURING
 Additive manufacturing “amplifies” risks vs. traditional
manufacturing.
 Volume vs. Production
– Low volume production, mass customization (AM)
– Mass production, limited customization (Traditional)
– Brings manufacturing to the layman (AM)
 Production “Away from Control”

DESIGN AND TEST WITH SPEED
≈
≈
Before
Metal Casting
Now
Additive Manufacturing
Test PrototypeDesign Concept Turnaround

TECHNOLOGY INPUTS
Type of User:
Home User
Small Business
Industry
Design Files
Repository
Design Files
User Generated
with CAD or
simpler tools
3D Printer
manufacturer
Materials
e.g., polymer,
metals,
human cells
ISPs

IP CONSIDERATIONS
 Inventors love to share what they make – but “public
disclosure” can compromise potential patents. Grace
periods are not universal and vary.
 Shorter product cycles can make it more difficult to perform
clear offerings for freedom to operate.

IP CONSIDERATIONS (CONT’D)
 Production can shift from a physical to a digital
supply chain.
– May necessitate adjustments to your IP strategy.
• Consider patent claims and where you file.
• Other types of IP used.
– How can you tell if a third party has taken your build
file? How can you protect a build file?

IP CONSIDERATIONS (CONT’D)
 Increases in portability of design.
– Enhances the ability to collaborate across borders, within and amongst
entities.
– Often easier to deliver or take a digital design file than a physical product.
– Issues to consider include confidentiality agreements, employee
agreements, data security and inventor remuneration.

WHAT DO I NEED TO KNOW?
 Patent Law
– Design patents and utility patents
– Contributory Infringement and Inducement
of Infringement
– Exhaustion—Repair vs. Reconstruction
– Exhaustion—national vs. international
 Contract Law
– Limited use or limited license contracts
– Implied licenses
 Trade Secret Law
– Protection (design/build files, software)
– Varies state to state (UTSA)
– Defend Trade Secrets Act
 Copyright Law
– Protection (design/build files, software)
– DMCA
 Trademark Law
– Passing Off
– Reverse Passing Off
– Implied Reverse Passing Off

IP STRATEGIES

MOTIVES FOR ACTION
 I want to “repair” my “stuff.”
 I want to “repair” the “stuff” others have (for them).
 I want to sell “widgets” to others so they can repair their “stuff.”
 I want to buy used “stuff” from others, “repair” it, and re-sell it.
 I want to make my “stuff” better than when I bought it.
 I want to stop others from doing the activities listed above.
Query – what if you are in more than one category?

THE “GOOD” EXAMPLE - REMANUFACTURING
 Good for Customers
– Remanufactured parts and components provide same-as-new
performance and reliability at fraction-of-new costs, while reducing the
impact on the environment. And over-the-counter availability gives
customers more options at repair and overhaul time.
 Good for Business
– Remanufacturing is based on an exchange system where customers return
a used component (core) in return for remanufactured products. Reman
options are one more way to support customers and help lower owning
and operating costs.
 Good for the Environment
– Returning end-of-life components to same-as-new condition reduces waste
and minimize the need for raw material to produce new parts.

THE “BAD” EXAMPLE – COPYCATS/WILL-
FITTERS
 Free ride on design investment of original manufacturer.
 Often don’t advance the product technology.
 Often violate IP rights.

PATENT

PATENTS
 Patents protect new, useful, non-obvious inventions from
copying (infringement).
 Every unauthorized use of an invention constitutes
infringement, even if the infringement is unintentional.
 Patent infringement litigation can be very expensive, but
damages can be worth the candle.

CLAIM STRATEGIES – PIONEERING THE NEW
FRONTIER
 Patent claims aimed at free-riding behavior of “bad guys”
that copy or facilitate copying of innovative articles of
manufacture.
– Creation or distribution of 3-D model files intended for use in
additive manufacturing.
– Scanning of genuine articles to create 3-D model files.
– Importation of offshore-origin 3-D model files.
 Patent claims aimed at “free-riders” that hide offshore or
that are effectively untouchable due to specific intent
requirement for inducement.

CLAIM STRATEGIES – PIONEERING THE NEW
FRONTIER (CONT’D)
 Claims strategies to consider:
– Digital 3-D Models Claims
– Beauregard-style Claims for 3-D Model Files
– Scan-to-Model File Method Claims

DIGITAL 3-D MODEL CLAIMS
1. A computer-readable three-dimensional model suitable for use in manufacturing a sole assembly for an
article of footwear comprising: a bladder element having: a first polymeric sheet having an outer surface
defining a recess; wherein the outer surface has a heel region, a midfoot region, and a forefoot region in
the recess; wherein the first polymeric sheet has a peripheral outer wall portion extending around the
recess; and a second polymeric sheet attached to the first polymeric sheet at the outer wall portion such
that the first and second polymeric sheets define an interior cavity.
2. The computer-readable three-dimensional model of claim 1, wherein first polymeric sheet defines a ridge
between the recess and the outer wall portion; and wherein the outer wall portion is substantially
perpendicular to a peripheral edge of the second polymeric sheet.
3. A computer-readable three-dimensional model suitable for use in manufacturing a sole assembly for an
article of footwear, wherein the sole assembly has an ornamental appearance as shown and described in
connection with Figures 1 through 4.

DIGITAL 3-D MODEL CLAIMS (CONT’D)
 Digital file/model product claims are likely to face Section 101
rejections at the USPTO and Section 101 challenges in courts.
 Generally, software detached from physical medium is
information in the abstract (see Microsoft v. AT&T discussing a
“component” under 271(f)), but a model file is not software itself.
 Device profile for describing property of a device in a digital
image reproduction system not Section 101 subject matter.
– See Digitech Image Technologies, 2013-1600 (Fed. Cir. July 11, 2014)
 But digital data sets for use in creating dental appliances were
found to be “articles” by ALJ in Section 337 proceeding.
– See ClearCorrect, ITC Inv. No. 337-TA-833, overturned on appeal by
Federal Circuit

BEAUREGARD-STYLE CLAIMS
1. A computer-readable storage medium having data thereon representing a three-dimensional model suitable for use
in manufacturing a sole assembly for an article of footwear comprising: a bladder element having: a first polymeric
sheet having an outer surface defining a recess; wherein the outer surface has a heel region, a midfoot region, and
a forefoot region in the recess; wherein the first polymeric sheet has a peripheral outer wall portion extending around
the recess; and a second polymeric sheet attached to the first polymeric sheet at the outer wall portion such that the
first and second polymeric sheets define an interior cavity.
2. The computer-readable storage medium having data thereon representing a three-dimensional model suitable for
use in manufacturing a sole assembly for an article of footwear of claim 1, wherein first polymeric sheet defines a
ridge between the recess and the outer wall portion; and wherein the outer wall portion is substantially perpendicular
to a peripheral edge of the second polymeric sheet.
3. A computer-readable storage medium having data thereon representing a three-dimensional model suitable for use
in manufacturing a sole assembly for an article of footwear, wherein the sole assembly has an ornamental
appearance as shown and described in connection with Figures 1 through 4.

BEAUREGARD-STYLE CLAIMS (CONT’D)
 Beauregard-style claims proven approach
– USPTO Commissioner states “that computer programs embodied in a
tangible medium, such as floppy diskettes, are patentable subject
matter under 35 U.S.C. Sec. 101…”
– See In re Beauregard et al., 53 F.3d 1583 (Fed. Cir. 1995)
 Also see Microsoft v. AT&T, 550 U.S. 437 (2007)
– A copy of software, but not software in the abstract, qualifies as a
“component” under §271(f).
 Tangible medium claims meet Section 101 requirements, but will
3-D models be transfer via “old fashioned” tangible media in the
“cloud storage” and digital download era?

SCAN-TO-MODEL FILE METHOD CLAIMS
1. A method of creating a computer-readable three-dimensional model suitable for use in manufacturing a sole
assembly for an article of footwear comprising: a bladder element having: a first polymeric sheet having an outer
surface defining a recess; wherein the outer surface has a heel region, a midfoot region, and a forefoot region in the
recess; wherein the first polymeric sheet has a peripheral outer wall portion extending around the recess; and a
second polymeric sheet attached to the first polymeric sheet at the outer wall portion such that the first and second
polymeric sheets define an interior cavity, said method comprising:
a. projecting light onto a three-dimensional sole assembly for an article of footwear master, wherein the master comprises
a bladder element having: a first polymeric sheet having an outer surface defining a recess; wherein the outer surface
has a heel region, a midfoot region, and a forefoot region in the recess; wherein the first polymeric sheet has a
peripheral outer wall portion extending around the recess; and a second polymeric sheet attached to the first polymeric
sheet at the outer wall portion such that the first and second polymeric sheets define an interior cavity;
b. receiving light reflected from said master; and
c. computer-generating a computer-readable three-dimensional model suitable for use in manufacturing a sole assembly
for an article of footwear.

MATERIALS AND IMPROVEMENTS
 Consider materials used in additive manufacturing.
– Development and tuning
 Consider improvements to design as a result of additive
manufacturing.
– Topology optimization
• Reduce cost
• Reduce manufacturing time
• Increase strength/mass ratio
• Less material, lower mass
– Online process feedback control
– Higher added value and functionality

MATERIALS AND IMPROVEMENTS (CONT’D)

ITC JURISDICTION OVER DIGITAL FILES
CLEARCORRECT OPERATING, LLC V.
ITC, 2014-1527 (FED. CIR.)
28

FACTS OF THE CASE
 U.S. International Trade Commission.
 Respondents are ClearCorrect Operating (CCUS) and ClearCorrect Pakistan
(CCPK).
 The asserted patents are directed to systems for repositioning teeth, using
digital data sets to construct orthodontic appliances (also called “aligners”),
such as braces, that incrementally reposition teeth from one arrangement to
another.
 Accused products are digital models, digital data, and treatment plans,
expressed as digital data sets, which are virtual 3D models of the desired
position of patients' teeth at various stages of orthodontic treatment.
 Models are initially created based on impressions of patients' teeth in the U.S.
The models are manipulated in Pakistan by CCPK and transmitted to CCUS.
The digital models are subsequently used to print 3D physical models of a
patient's teeth.

FACTS OF THE CASE (CONT’D)
 Respondents argued that the digital data sets representing
the initial, intermediate, and final positions of patients' teeth
are not “articles” within the meaning of Section
337(a)(1)(B), and therefore cannot be the basis of any
unfair act under the statute.
 Respondents also argued that because the accused data
sets are brought into the U.S. by CCPK by uploading them
to CCUS's server in Houston, Texas, this mode of bringing
the accused products into the U.S. is not an importation
into the U.S. as anticipated by Section 337(a)(1)(B).

ITC FINDINGS
 The Commission affirmed the ALJ's finding that the
accused products are "articles" within the meaning of
Section 337(a)(1)(B) and that the mode of bringing the
accused products into the United States constitutes
importation of the accused products into the United States
pursuant to Section 337(a)(1)(B).

FEDERAL CIRCUIT
 The issue before the Court is whether intangible, digital information is
an “article” described in 19 U.S.C. § 1337.
 The Court held (2-1) that intangible, digital information is not an “article”
described in 19 U.S.C. § 1337; “articles” means material things. As
such, the ITC does not have authority under 19 U.S.C. § 1337 to issue
a remedy directed to electronic transmissions of digital data into the
United States.
 Newman dissent: Section 337 “was designed to reach ‘every type and
form’ of unfair competition arising from importation.” Removal of a
remedy against infringing imports, whatever the subject matter,
including “a preeminent form of today’s technology,” is a “dramatic
withdrawal of existing rights, devoid of statutory support and of far-
reaching impact.”

FEDERAL CIRCUIT (EN BANC)
 Petitions for rehearing en banc denied (11-1)
– Prost, O’Malley, Wallach write concurring opinion
 Newman dissent
– “The court now holds that the word ‘article’ in Section 337 of the
Tariff Act cannot include digital goods, although ‘article’ is the
general term used throughout judicial and agency rulings for goods
in trade, including digital goods. Digital goods are included in the
tariff laws; they are imported, bought, and sold; they are subject to
the patent laws, and have been the subject of many infringement
suits. Infringement does not depend on whether the digital goods
are carried on a hard substrate, or electronically.”

IMPACT ON ADDITIVE MANUFACTURING
 What does this mean for additive manufacturing?
– Build/design files—digital supply chain
– Products
– Prototypes
– Repair of product
– Replacement parts

CONTRACT ISSUES

EXHAUSTION:
REPAIR VS. RECONSTRUCTION

 Legally, activity can be:
– Permissible Repair
– Infringing Reconstruction
 In reality, activity can include:
– Routine Maintenance
– Repair
– Refurbishment
– Overhaul
– Salvage Remanufacturing

 When you make an unrestricted purchase of a patented
system or patented component
– You may repair a patented system or patented component
– You may not reconstruct the patented system or patented
component
 Right of repair is an affirmative defense to “making” a
patented product
 But there is no “bright line” rule
 “Totality of the circumstances” analysis

ARE PATENT OWNER’S RIGHTS EXHAUSTED?
What type of
transaction?
Unrestricted
Purchase
Patent rights may be
exhausted.
If so, then right of repair.
No right to infringing
reconstruction.
Something Else
(Restricted Sale,
License, Rental)
Patent rights not
exhausted.
No right to repair or
reconstruct.

What type of
transaction?
Unrestricted
Purchase
Patent rights may be
exhausted.
reconstruction.
Something Else
(Restricted Sale,
License, Rental)
Patent rights not
exhausted.
reconstruct.

What type of
transaction?
Unrestricted
Purchase
Patent rights may
beexhausted.
reconstruction.
Something Else
(Restricted Sale,
License, Rental)
Patent rights not
exhausted.
reconstruct.

Where did the
“transaction”
take place?
Someplace else

LEXMARK V. IMPRESSION PRODUCTS,
2014-1617, 2014-1619 (FED. CIR.)

FACTS OF THE CASE
 U.S. District Court for the Southern District of Ohio.
 Lexmark manufactures printers and toner cartridges.
 Lexmark sued Impression Products for patent infringement for
acquiring, refilling, and selling used cartridges that Lexmark
initially sold either in the U.S. under a restricted-use license
(“Return Program”) or in another country.

 “Return Program”: cartridge sold at a discount (~20% less) in exchange
for the purchaser’s agreement to use the cartridge only once.

 Impression Products filed 2 motions to dismiss:
– Infringement by certain products sold subject to a single-use contract
restriction: “Return Program” (GRANTED)
– Infringement by products initially sold overseas (DENIED)

DISTRICT COURT FINDINGS
 “Return Program” (GRANTED)
– Cited Quanta Computer, Inc. v. LG Electronics, Inc. (2008), where the
Supreme Court held that authorized sales of patented products exhaust
patent rights, even if those sales are subject to restrictions.
• Any restrictions must be at the time of the “sale.”
– Rejected Lexmark’s reliance on Mallinckrodt, Inc. v. Medipart, Inc. (Fed.
Cir. 1992), where the Federal Circuit concluded that the sale of medical
equipment under a single-use restriction did not exhaust the seller’s patent
rights in that product.
– Lexmark had not established that the distributors of the “Return Program”
cartridges were restricted or conditioned, and therefore the sale of the
cartridges exhausted Lexmark’s patent rights.

DISTRICT COURT FINDINGS (CONT’D )
 “Lexmark does not allege that the authority of the sellers of the Return
Program cartridges were restricted or conditioned in any way. In other
words, the facts alleged by Lexmark do not suggest that the sellers had
anything other than full authority to sell the Return Cartridges that
practiced Lexmark's patents. Instead, Lexmark alleges only that the
Return Program cartridges contained notices of a license restriction
which bound the ultimate purchaser. Under Quanta, those post-sale
use restrictions do not prevent patent rights from being exhausted given
that the initial sales were authorized and unrestricted. Thus, to the
extent that Mallinckrodt holds that such post-sale use restrictions
preclude patent exhaustion after an authorized sale, the Court agrees
with the Static Control II court that Mallinckrodt was overruled by
Quanta sub silentio.”

 Overseas sales (DENIED)
– Cited Jazz Photo Corp. v. U.S. Int’l Trade Comm’n (Fed. Cir. 2001),
where Federal Circuit held that an authorized first sale must have
occurred within the U.S. for exhaustion to apply.
– Rejected reliance on Kirtsaeng v. John Wiley & Sons, Inc. (2012) as
overturning Jazz Photo, where Supreme Court concluded that the
Copyright Act’s parallel “first sale” doctrine did not have a geographical
limitation.

DISTRICT COURT FINDINGS (CONT’D)
 “This Court adheres to the view that copyright law and
patent law are not identical and offer different protections.”
 “In so ruling, however, the Court does not intend to determine
that Jazz Photo ultimately should stand in light of Kirtsaeng. The
Court is cognizant that many of the reasons for rejecting a
territoriality requirement for copyright law may apply equally to
patent law. Nevertheless, given the complete lack of
consideration of the context, history and practical implications of
international patent exhaustion in Kirtsaeng, the Court concludes
that the Supreme Court did not intend to implicitly overrule Jazz
Photo and that Jazz Photo remains controlling precedent on
patent exhaustion abroad.”

FEDERAL CIRCUIT (EN BANC)
 April 14, 2015 Ordered sua sponte hearing en banc.
 Two issues for appeal.

FEDERAL CIRCUIT (EN BANC) (CONT’D)
 The case involves certain sales, made abroad, of articles
patented in the United States. In light of Kirtsaeng v. John
Wiley & Sons, Inc., 133 S. Ct. 1351 (2012), should this court
overrule Jazz Photo Corp. v. International Trade Commission,
264 F.3d 1094 (Fed. Cir. 2001), to the extent it ruled that a
sale of a patented item outside the United States never gives
rise to United States patent exhaustion.

 The case involves (i) sales of patented articles to end users under a
restriction that they use the articles once and then return them and
(ii) sales of the same patented articles to resellers under a
restriction that resales take place under the single-use-and-return
restriction. Do any of those sales give rise to patent exhaustion? In
light of Quanta Computer, Inc. v. LG Electronics, Inc., 553 U.S. 617
(2008), should this court overrule Mallinckrodt, Inc. v. Medi-part,
Inc., 976 F.2d 700 (Fed. Cir. 1992), to the extent it ruled that a sale
of a patented article, when the sale is made under a restriction that
is otherwise lawful and within the scope of the patent grant, does
not give rise to patent exhaustion?

 10-2 decision, 99 pages
– Decision written by Judge Taranto, who was joined by Chief Judge
Prost and Judges Newman, Lourie, Moore, O’Malley, Reyna,
Wallach, Chen and Stoll. A dissenting opinion was filed by Judge
Dyk, who was joined by Judge Hughes.
 Court decided not to disturb two of its longstanding rules:
– Overseas sales of a product do not exhaust a patent owner's right
to sue in the U.S. (Jazz Photo)
– Patent owners can impose restrictions on the use of patented items
after they are sold in order to keep the sale from exhausting their
patent rights. (Mallinckrodt)

 Quanta did not overrule Mallinckrodt.
 In Quanta, the Supreme Court did not address a patentee sale,
let alone a sale made subject to a restriction. Quanta involved a
sale made (to computer maker Quanta) not by the patentee
(LGE) but by a manufacturing licensee (chip maker Intel), which
the patentee (LGE) had authorized to make and sell the articles
at issue (chips for installation in computers that would then be
covered by LGE’s patents). And the patentee’s authorization to
the licensee to make sales was not subject to any conditions,
much less conditions to be embodied in those sales.

 Kirtsaeng did not disrupt the ruling in Jazz Photo.
 Did not address patent law issues.

 Dyk and Hughes dissent
– “There is no indication in the patent laws that there should be a special
exception for patent holders to the general longstanding common law
doctrine that promotes free competition in the resale market and
certainty in commercial transactions. Allowing the patent holder to
impose conditions on the sale of a patented item would indeed largely
eviscerate the exhaustion doctrine, by permitting the imposition of all
manner of post-sale restrictions except for tie-ins, price-fixing, and
other violations of the patent misuse and antitrust law.”
– “There is, in sum, no colorable basis for the majority’s failure to follow
the exhaustion rule for domestic sales as articulated by the Court in
Quanta and numerous other cases.”

 Dyk and Hughes dissent (cont’d)
– “Like the majority I would retain Jazz Photo insofar as it holds that a
mere foreign sale does not in all circumstances lead to exhaustion
of United States patent rights. But the government argues, and I
agree, that the foreign sale should result in exhaustion if the
authorized seller does not explicitly reserve its United States patent
rights.”

 What does this mean for additive manufacturing?
– Are single-use restrictions enforceable to get around exhaustion?
– Do sales outside the U.S. implicate exhaustion in the U.S.?
– Be careful and deliberate in agreements about use restrictions and
craft language appropriately.
• Consider explicitly reserving U.S. rights when making sales abroad
• Consider patentee retaining title to patented goods
• Consider requiring buyers to convey patent restrictions to downstream
buyers

AN EXAMPLE

CONSIDER THIS HYPOTHETICAL PRODUCT

1,234,567
62
PATENT IT
D123,456

SELL IT

CUSTOMER USES PART OF IT

CUSTOMER NEEDS NEW PART

CUSTOMER DECIDES TO PRINT NEW PART

PERMISSIBLE REPAIR OR INFRINGING
RECONSTRUCTION?
D123,456
1,234,567

PERMISSIBLE REPAIR OR INFRINGING
RECONSTRUCTION?
D654,321
More likely infringing
reconstruction?
7,654,321

OTHER CONTRACT ISSUES

WARRANTIES
 During the Term, Company warrants that: (i) the Product shall conform to
and perform, in all material respects, in accordance with the Specifications
and without material Defects; and (ii) to the best of Company’s knowledge,
the Product does not infringe the intellectual property of any third parties.
Company’s sole obligation and liability under this Section shall be to
replace (as provided herein) or correct the Product, so that the Product will
perform in substantial conformance with the Specifications. This limited
warranty does not cover any issues relating to problems attributable to
operator error, the Client’s failure to follow recommended documented
procedures, Client’s use of the Product in a manner not authorized
hereunder, hardware or system failure, use of unspecified software (e.g.,
third party applications) or hardware in conjunction with the Product, or any
other issues not specifically related to the material performance of the
Product in accordance with the Specification.

WARRANTIES (CONT’D)
 EXCEPT AS TO COMPATIBILITY OF THE PRODUCT AS
DESCRIBED IN THE SPECIFICATION, COMPANY MAKES NO
WARRANTIES TO CLIENT WITH RESPECT TO THE CLIENT’S
EQUIPMENT OR SYSTEM OR ITS CAPACITY, AND THIS
WARRANTY DISCLAIMER IS MADE EXPRESSLY IN LIEU OF
ANY AND ALL EXPRESS OR IMPLIED WARRANTIES TO
CLIENT, INCLUDING, WITHOUT LIMITATION, ANY AND ALL
IMPLIED WARRANTIES OF MERCHANTABILITY OR FITNESS
FOR A PARTICULAR PURPOSE, AND ALL WARRANTIES
WITH RESPECT CLIENT’S EQUIPMENT OR SYSTEM OR ITS
CAPACITY ARE HEREBY EXPRESSLY DISCLAIMED.

WARRANTIES (CONT’D)
 The Client represents and warrants that (i) the Client’s use of the
Product shall comply with all applicable federal, state, county
and local laws, ordinances, codes, rule and regulations; (ii) the
Client shall use the Product solely as allowed under this
Agreement, and shall not engage in Prohibited Conduct; (iii) no
content or other materials provided by the Client to Company or
placed by or through the Client on Company’s website shall
infringe the intellectual property or other rights of any third party;
(iv) the Client has secured all necessary licenses and/or
authorizations for Company’s possession and/or use of any
Client materials provided to Company, and (iv) all Equipment or
System Requirements will be met by the Client.

INDEMNIFICATION AND “REMAN”
 Consider inclusion of indemnification provision of appropriate
scope.
 Consider inclusion of “reman” provision of appropriate scope.
 Supplier agrees that it will, at its expense, indemnify, defend,
settle and hold harmless Company and its affiliated companies,
and their directors, officers, agents and employees from and
against any claim, suit, proceeding or allegation, whether or not
such claim, suit, proceeding or allegation is successful, asserting
that any remanufactured product purchased by Company from
Supplier infringes upon any United States patent right of a third
party.

TRADE SECRETS

TRADE SECRETS
 Varies from state to state.
 Most states have adopted Uniform Trade Secrets Act, but
variations exist.
 Commonalities across states:
– Broad definition: anything that provides a competitive advantage,
from a formula, practice, process, design, instrument, pattern, or
compilation of information.
– Not generally known in the industry.
– Appropriate efforts made to keep secret.
 Defend Trade Secrets Act

TRADE SECRETS (CONT’D)
 Trade secrets law plays a role in additive manufacturing IP.
– Design/build files
– Software
 Adaptations, modifications, and processes.
– Development and tuning of materials
– Topology optimization
• Reduce cost
• Reduce manufacturing time
• Increase strength/mass ratio
• Less material, lower mass
– Online process feedback control
– Higher added value and functionality
 Employee mobility.

FISHER/UNITECH, INC. V.
COMPUTER AIDED TECH., INC.,
CASE NO. 13 C 02090 (N.D. ILL.)

FACTS OF THE CASE
 Plaintiff Fisher/Unitech and defendant CATI are competitors of
design software and 3D printing equipment manufactured by
Stratasys.
 Defendant Rodger Reaume resigned from sales position at
Fisher/Unitech and joined CATI.
 While Reaume was still working at Fisher/Unitech, he
appropriated documents from Fisher/Unitech by e-mailing them
to his personal e-mail account or storing them on a portable
thumb drive. He also e-mailed documents to CATI directly.
 Fisher/Unitech sued for misappropriation of trade secrets and
breach of employment agreement.

 The Court entered a TRO prohibiting the dissemination and
use of Fisher/Unitech’s confidential information and
restricting Reame from selling or assisting CATI in selling
3D printing technology in his former Fisher/Unitech territory
or to any customer or potential customer with whom
Reaume had contact while employed by Fisher/Unitech.
 The parties stipulated to convert the TRO into a preliminary
injunction insofar as it relates to Fisher/Unitech’s
confidential information.

 Implement, shore-up and/or double-check internal trade
secret standards and protections.
 Implement, shore-up and/or double-check adequate
provisions in employee agreements, consulting
agreements, data security, etc.

COPYRIGHT

COPYRIGHT
 Copyright attaches automatically to a creative work upon
fixation or physical embodiment.
 Copyright protection usually covers things like writings,
drawings, musical compilations, sculptures and other
original designs.
 Copyright protections do not extend to the function of a
copyrighted work or the idea that a copyrighted work
expresses.

COPYRIGHT (CONT’D)
 Copyright law plays a role in additive manufacturing IP.
– Objects printed by consumers/customers/competitors
– Design/build files
– Software
 Digital Millennium Copyright Act (DMCA)
 “Separability” test
 “Abstraction-Filtration-Comparison” doctrine

IRON THRONE IPHONE DOCK
“Due to a cease and
desist letter from HBO we
are pulling the product
until we can work
something out with HBO.”

“YODA”
130+ Thingiverse
results for “Yoda”

ORACLE V. GOOGLE, CASE NO.
13-1021 (FED. CIR.)

FACTS OF THE CASE
 Dispute related to Oracle's copyright claims on Google's use of
Java in its Android operating system.
 When it implemented the Android OS, Google wrote its own
version of Java. But in order to allow developers to write their
own programs for Android, Google’s implementation used the
same names, organization, and functionality as the Java APIs.
 Google copied 7,000 lines of declaring code and generally
replicated the overall structure, sequence, and organization of
Oracle’s 37 Java API packages.
 Oracle alleged infringement of 37 Java API packages.

 The jury ruled that the API infringed, but deadlocked on Google’s
fair use defense.
 The jury also found that “rangeCheck” infringed, but that neither
the documentation nor the other literal code infringed.
 In May 2012, the Court ruled that the structure of the Java APIs
used by Google was not copyrightable.
 “So long as the specific code used to implement a method is
different, anyone is free under the Copyright Act to write his or
her own code to carry out exactly the same function or
specification of any methods used in the Java API. It does not
matter that the declaration or method header lines are identical.”

FEDERAL CIRCUIT
 On May 9, 2014, the Federal Circuit reversed the district court on
the central issue, holding that the “structure, sequence and
organization” of an API is copyrightable and remanding the issue
of fair use to the district court.
 “Ninth Circuit case law recogniz[es] that the structure, sequence,
and organization of a computer program is eligible for copyright
protection where it qualifies as an expression of an idea, rather
than the idea itself.”
 “If we were to accept the district court’s suggestion that a
computer program is uncopyrightable simply because it ‘carr[ies]
out pre-assigned functions,’ no computer program is
protectable.”

FEDERAL CIRCUIT (CONT’D)
 “We agree with Oracle that, under Ninth Circuit law, an original work—
even one that serves a function—is entitled to copyright protection as
long as the author had multiple ways to express the underlying idea.
Section 102(b) does not, as Google seems to suggest, automatically
deny copyright protection to elements of a computer program that are
functional. Instead, as noted, Section 102(b) codifies the
idea/expression dichotomy and the legislative history confirms that,
among other things, Section 102(b) was ‘intended to make clear that
the expression adopted by the programmer is the copyrightable
element in a computer program.’ Therefore, even if an element directs a
computer to perform operations, the court must nevertheless determine
whether it contains any separable expression entitled to protection.”

SUPREME COURT
 Google’s petition for certiorari was denied by the U.S.
Supreme Court on June 29, 2015.

 What extent IP rights holders in AM can rely on copyright
for software / source code?
– Are structure, sequence and organization of software / source code
copyrightable?

LANARD TOYS V. NOVELTY,
CASE NO. 08-55795 (9TH CIR.)

FACTS OF THE CASE
 Dispute related to Lanard's copyright claims on Novelty’s
sale and offering for sale of its “Shoot Copter” and “Pull-N-
Launch Plan Set” toys.
 Lanard claimed that Novelty’s toys infringed Lanard’s
copyrights in its “Prop Shots” line of flying toys—the “Drop
Copter,” the “High Flyer,” the “Stunt Plane,” and the “Wild
Copters.”

 The district court awarded Lanard damages and profits
attributable to infringement against all defendants, plus the
maximum in statutory damages pursuant to 17 U.S.C. §
504(c)(2), based on jury’s finding of willful infringement by
Novelty.

NINTH CIRCUIT
 Affirmed judgment of district court and remanded for
determination of amount for award of reasonable attorney’s
fees and costs.
 “Numerous courts have recognized that various types of
toys can qualify for copyright protection, in whole or in part,
as ‘pictorial, graphic or sculptural works’ as defined by 17
U.S.C. § 101, even where there is some mechanical or
functional element to the toy.”

NINTH CIRCUIT
 “[T]he two major components of the ‘Drop Copter’ toy are
miniature, fanciful renderings of helicopters that are
launched together into the air by means of the third piece--
a straight plastic rod with a rubber band attached to one
end--and then separate from one another mid-flight and
spin to the ground. A child can make the toy ‘copters’ fly
high into the air, but that ‘flight’ is simply a portrayal of the
real objects, and the toys are not capable of actually flying,
or transporting people or supplies, like real helicopters.”

 Various types of products can qualify for copyright
protection, in whole or in part, as “pictorial, graphic or
sculptural works” as defined by 17 U.S.C. § 101, even
where there is some mechanical or functional element to
the product.
 What extent IP rights holders in AM can rely on copyright
for design/build files?

TRADEMARK / TRADE DRESS

TRADEMARK / TRADE DRESS
 Offers protection to brands regarding possible confusion by
consumers concerning the origin of the product they have
purchased.
 Trade dress refers to the overall appearance and image of
a product.
– Must either be inherently distinctive or have developed a secondary
meaning that serves to help consumers identify the source of the
product.

TRADEMARK / TRADE DRESS (CONT’D)
 Trademark / trade dress law plays a role in additive
manufacturing IP.
– Product configurations that become recognized by consumers and
create a competitive advantage.
– Objects printed by consumers/customers/competitors for sale.

TRADEMARK / TRADE DRESS (CONT’D)
 Passing Off
– D tries to pass off its product as the P’s product
 Reverse Passing Off
– D tries to pass off the P’s product as its own
 Implied Reverse Passing Off
– D taking P’s mark off the product P made

COCA-COLA BOTTLES
25+ Thingiverse
results for “coca
cola”

PORSCHE REPLACEMENT PARTS
Porsche 928 Washer
Fluid Filler Neck
65+ Thingiverse
results for “Porsche”

IKEA REPLACEMENT PARTS
Replacement pulley
for roller blinds
(IKEA TUPPLUR)
530+ Thingiverse
results for “Ikea”

GMC V. LANARD TOYS, CASE
NO. 05-2085 (6TH CIR.)

FACTS OF THE CASE
 Dispute related to GMC's trademark and trade dress claims
on Lanard’s sale and offering for sale of its “THE CORPS!
ATK” toys, which resemble the Hummer vehicle produced
by GMC.
 GMC claimed trade dress in "the exterior appearance and
styling of the vehicle design which includes the grille,
slanted and raised hood, split windshield, rectangular
doors, squared edges, etc."
 GMC owns U.S. Trademark No. 1,959,544.

 The district court granted summary judgment for GMC on
trade dress and trademark infringement claims.
 The district court dismissed all of Lanard’s defenses except
for laches and estoppel.
 The jury denied Lanard’s laches and estoppel defenses
and awarded GMC damages.

SIXTH CIRCUIT
 The Sixth Circuit affirmed the district court’s decisions.
 As to the trademark infringement claims, the Sixth Circuit
concluded that, while the district court did not properly analyze
the Frisch Factors, the weight of the factors favored a finding of
a likelihood of confusion.
 As to the trade dress claims, the Sixth Circuit concluded that
GMC had proven by a preponderance of the evidence that (1)
the trade dress is not functional; (2) the trade dress is distinctive
in the marketplace and has acquired “secondary meaning,”
thereby indicating the source of the goods; and (3) the trade
dress of the accused product is confusingly similar.

SIXTH CIRCUIT
 “We conclude that General Motors must prevail on the
issue of functionality. The trade dress in question has been
defined as ‘the exterior appearance and styling of the
vehicle design which includes the grille, slanted and raised
hood, split windshield, rectangular doors, squared edges,
etc.’ We fail to see what function these elements perform.
While we understand that General Motors bears the burden
of proof of non-functionality, the plain appearance of the
vehicle shows that the elements which comprise its trade
dress are inherently non-functional.”

IN THE MATTER OF CERTAIN
FOOTWEAR PRODUCTS, 337-TA-
936 (ITC)

FACTS OF THE CASE
 Dispute related to Converse's trademark claims on more
than 2 dozen companies’ sale and offering for sale of
Chuck-esque shoes, claiming the similar-looking shoes
infringed certain physical elements of the famous Converse
Chuck Taylor All-Star shoe.
 Converse owns U.S. Trademark Nos. 3,258,103;
1,588,960; and 4,398,753.

U.S. Trademark No. 4,398,753
U.S. Trademark No. 3,258,103
U.S. Trademark Nos. 1,588,960

ALJ FINDINGS
 Mixed ruling:
– ’753 is distinctive, not functional, not generic and not invalid; the
common law trademark is not distinctive, not functional, not generic
and invalid.
– Some of Respondents shoes infringe the ’753 and some do not.
– ’753 is not famous, and the common law trademark is not famous.
Thus, Respondents do not dilute the ’753 or common law
trademark.
– ’103 is not invalid and is infringed.
– ’960 is not invalid and is infringed.

NEXT STEPS
 Commission review of Initial Determination.
 Potential for high-profile rulings on the extent to which
apparel designs can be protected by trademark law.

 Various types of products can qualify for trade mark and
trade dress protection, with the key for many AM products
being proof of the product being non-functional.

WRAP-UP

THE BOTTOM LINE?
 The topics of today are a great foundation.
 If you work in this space, there’s a lot to know.
 Proceed with caution…easy to avoid one trap by falling into
another.
 Weigh benefits of detailed analysis vs. likelihood of an
uncertain outcome due to the nature of the applicable law.

Bryan J. Vogel
New York, NY
BVogel@RobinsKaplan.com
212.980.7403

Workshop 1: You First: Manufacturing, IP and the 3D Printing Disruption

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Workshop 1: You First: Manufacturing, IP and the 3D Printing Disruption