May 16, 2014
Law360
Authored by Elizabeth D. Ferrill, P. Andrew Riley, and Benjamin T. Sirolly
Car lovers watched in horror as explosions destroyed a 1960 Aston Martin DB 5 in the 2012 James Bond movie Skyfall. The explosions were real. So was the car. But the producers did not destroy a priceless Aston Martin; they blew up a 3D-printed replica.1
The moviemakers created a 1/3 size replica using a 3D printer, which creates real-world objects to exacting specifications—down to the millimeter. The printers perform a type of additive manufacturing, creating objects by adding hundreds or even thousands of layers of material, one on top of the next. By using 3D printers, the makers of Skyfall made a near-perfect Aston Martin for a fraction of the cost of buying this rare sports car.
3D-printed Aston Martins don't just show up in the movies. They also show up in New Zealand garages, where Ivan Sentch gained fame by printing a DB-5 body piece-by-piece with a $500 printer and a free design downloaded from the Internet.2
Companies have joined the car-printing game, too. For example, KoreLogic's new URBEE 2 aims to be the first car to have its entire interior and exterior 3D printed.3This lightens its weight, improves its aerodynamics and lowers its cost. KoreLogic's first URBEE achieved fuel efficiency of up to 200 mpg.
3D printing is not limited to niche applications, however. Boeing produced 22,000 3D-printed parts in the last decade, ranging from electronics covers to air ducts that cool electrical equipment.4The head of General Electric's manufacturing and technology group predicts that in 10 years 3D printers may make up half of the parts in GE's energy turbines and aircraft engines.5They currently print fuel injectors and other parts for jet engines.6Saving "millions of dollars in the product development process," Ford has used 3D printing to create prototypes and nearly 500,000 parts since the 1980s.7Their engineers use 3D printing in a range of applications, from making small components (cylinder heads, intake manifolds and air vents) to large ones (brake rotors and four-cylinder engines).8
But 3D printers cannot make everything. Current printers have trouble with complicated electronics, specialized materials, items with multiple moving parts, and things composed of multiple types of materials, though some new printers are adding capabilities in these areas. Today, a 3D printer could not, for example, print a GPS unit and display screen. Nor could it print a smartphone. Indeed, the cars discussed above were just empty shells; their internal components would still require traditional manufacturing and assembly. 3D printing technology, however, continues to improve, presenting opportunities and hazards for manufacturers.
Soon, 3D printers will be capable of many more uses, including printing metal parts, simple electric circuits and glass objects. For example, metal parts can be made by laser sintering, a process that layers metal powder and then uses lasers to melt the powder, bonding it together to make a three-dimensional object.9Simple electronic circuits can be made with conductive nanoparticles, as Optomec recently unveiled.10And Shapeways sells 3D-printed glass, though the technology is primitive compared with regular glass and the final result is more porous and brittle and much less transparent.11
3D printers are not just getting better; they are getting cheaper, too. Four years ago, home machines cost upward of $20,000. Today, desktop models sell for as little as $500, less than most laptops.12These models can print small plastic objects. Likewise, the prices for more advanced 3D printers are falling as well.
3D scanners are also changing the way the auto industry does business. These scanners live up to their name: they create digital representations—scans—of three-dimensional objects. For instance, Shining 3D offers a high-precision scanner it touts as useful for "reverse engineering" procedures.13The device can accurately create detailed digital models of physical designs. So an engineer could create a clay model (or use a competitor's product) as a starting point and almost instantly create a digital model, rather than painstakingly redesigning it on a computer. In turn, 3D printers can make a physical copy of the model in a production-grade material for testing. Thus, when used in combination, 3D scanners and 3D printers can be used to convert an idea or an object into a physical copy in almost no time at all.
As technology advances and prices drop, more businesses and consumers will use 3D printers to make automotive replacement parts. For example, a local auto-parts store might rent out 3D printer time for customers to make parts, like Staples rents copier time. An auto-body shop might buy a 3D printer so it can avoid waiting for rare parts to arrive through shipment. Or a hobbyist might make hard-to-find or out-of-production parts in their garage, as Jay Leno has done for the better part of a decade.14Finally, overseas parts makers may find it easier and cheaper to use a 3D scanner to produce a near-perfect digital copy of a replacement part and then use traditional manufacturing techniques to make it.
Designers, manufacturers and resellers of automotive parts should take a hard look at their product lines to determine if and when 3D printing will pose a threat. Some companies may find many of their sales come from simple, printable parts. Others, such as those in the hard-to-find and out-of-production markets, may find that 3D printers can manufacture their goods more quickly and at a lower cost than their traditional methods. But, some companies will not have to worry, because certain products like complicated electronics may never be 3D printed. Companies that find themselves threatened by potential 3D printing infringement should take steps now to protect themselves, including protections readily available in intellectual-property law.
Protecting innovation in the automotive industry has always required creativity and the strategic pursuit of traditional intellectual property rights. In addition to standard competition, automakers face a variety of less-legitimate threats, like overseas copying, knockoffs, or lower-quality replacement parts. Traditionally, parts makers have pursued various legal remedies against those who copy or imitate their inventive auto parts.
For example, windshield-wiper-blade maker Robert Bosch LLC asserted a number of utility patents covering its "beam" wiper blades against Pylon Manufacturing Corporation, which had allegedly infringed the patents and sold the products to retailers such as Wal-Mart.15Also, Ford, facing imported aftermarket collision parts, alleged infringement of its design patents at the International Trade Commission.16And Bentley asserted its trade-dress rights against the manufacturers of a "Bentley Body Kit," allegedly designed as a do-it-yourself makeover to turn a Chrysler Sebring into a Bentley knockoff. Bentley Motors Ltd. v. McEntegart, Case No. 8:12-cv-1582-T-33TBM (M.D. Fla. 2014). This set of cases is not unique. Almost any survey of automotive-industry cases will reveal that automobile manufacturers use several forms of intellectual property to protect their products—utility patents, design patents, trade dress.
Each form of IP protection has its own niche. Utility patents, like those asserted by Robert Bosch, protect new, useful and nonobvious processes, machines or articles of manufacture. In a word, utility patents protect the way something works. On the other hand, Ford's design patents protected the way something looks, the ornamental features. This species of patent is useful to prevent visually similar knockoffs. And Bentley's trade-dress rights protected its distinctive, nonfunctional designs against those who might try to copy the look and feel of its auto bodies in order to create consumer confusion over who made the part in the first place. Trade dress is a powerful tool, but it protects only designs signifying a source of the product to consumers. Bundled together, these traditional legal rights may carve out strong market protection for a range of products.
But 3D printers shift IP considerations by making infringement happen not only faster but much harder to find. 3D printing accelerates the time it takes for infringing products to enter the market. For example, a knockoff manufacturer could start making a part before it hits the stores by using a 3D scanner to capture a new car design at a prerelease event like a trade show. The scanner does not need to be complicated; Autodesk offers a free app that turns an iPhone into a 3D scanner by analyzing photos taken by the user.17With a digital scan of the new design, the manufacturer can make a 3D printed replica, which in turn forms the basis for a production mold. Before 3D printers and scanners, developing a production mold required extensive reverse engineering. Soon, the process will be hardly more complicated than taking a few cell phone pictures. Thus, future knockoffs may come to market rapidly after a design debuts because of the capabilities of 3D printing and scanning.
3D printing also may exponentially increase the number of potential infringers, thus complicating the task of locating the source of infringing products. With traditionally manufactured goods, finding the source of a product is relatively easy: many products originate from one source. But with 3D printers, each infringing good may come from a unique location. Individual consumers, for example, may make individual parts in their garages. Finding these thousands of potential infringers, each printing a door handle, is probably cost-prohibitive. It may also be nearly impossible. And even if 3D printers don't populate every home, they may eventually appear in most auto-parts stores and garages. Placed in locations far and wide, 3D printers could significantly chip away at the market for specialized or aftermarket parts. Also, they can turn customers into competitors. For example, an auto-body shop that once bought parts might start printing them to save on costs. Rights holders will probably think twice before trying to enforce their IP against their own customers.
3D printing and scanning challenge the traditional means to protect inventions and new designs. But automotive companies are not without recourse. They may continue to enforce their rights using traditional IP protection. While 3D printing makes finding infringers far tougher, IP laws nevertheless still apply to infringers once they are found.
Moreover, fighting on an infringer's home turf may curb infringement. For instance, you may consider filing for IP rights in countries where you suspect an infringer may manufacture its goods, even if you do not make your products there.
Also, you should consider educating your customers on why they should buy genuine goods made by your company, not the inferior goods 3D printed by a competitor. For example, your parts may be carefully designed to minimize passenger harm in accidents. But 3D-printed replicas may lack these safety features, as they may have different compositions or internal structures that produce different safety characteristics. Also, 3D-printed parts may simply not be able to replicate the longevity and quality possible through traditional manufacturing. By teaching your customers the benefits of buying genuine parts from you, they may steer away from the 3D-printed knockoffs.
Finally, 3D printers may create new markets and opportunities. For example, some designers of specialty and aftermarket parts may find that 3D printing is a more profitable means of producing limited-run parts. Others may find that well-designed 3D-printer files are in high demand among hobbyists and car enthusiasts. And others still might imagine ways to customize their existing inventory to provide new options for their customers. By keeping your eyes open, you may find that your bottom line can benefit from the 3D scanning and printing revolution as well.
3D printing poses a fast-moving threat—and an opportunity. Its potential to disrupt industry is great, but only if manufacturers fail to take steps to protect themselves. Auto-parts makers should consider whether their current IP strategies adequately protect them against potential 3D-printing infringement, and they should study the field for new opportunities. In the end, those that stay on the cutting edge of technology and IP strategy will likely come out ahead of the game.
Endnotes
1Andrew Liszewski, Skyfall Filmmakers 3D-Printed This Rare Aston Martin So They Wouldn't Damage the Original, GIZMODO (Nov. 12, 2012) http://gizmodo.com/5959717/skyfall-filmmakers-3d-printed-this-rare-aston-martin-so-they-wouldnt-damage-the-original.
2James Vincent, Would you download a car? Man 3D prints life-size Aston Martin DB4, THE INDEPENDENT (Aug. 2, 2013) http://www.independent.co.uk/life-style/gadgets-andtech/news/would-you-download-a-car-man-3d-prints-lifesize-aston-martin-db4-8744159.html.
3Urbee2, KORELOGIC, http://korecologic.com/ (last visited May 2, 2014).
4Paul Davidson, 3-D printing could remake U.S. manufacturing, USA TODAY (July 10, 2012) http://usatoday30.usatoday.com/money/industries/manufacturing/story/2012-07-10/digitalmanufacturing/56135298/1.
5Id.
6Clint Boulton, Printing out Barbies and Ford Cylinders, THE WALL STREET JOURNAL (June 5, 2013) http://online.wsj.com/news/articles/SB10001424127887323372504578469560282127852.
7Id.; Ford's 3D-Printed Auto Parts Save Millions, Boost Quality, FORD (Dec. 12, 2013) https://media.ford.com/content/fordmedia/fna/us/en/news/2013/12/12/ford_s-3d-printed-autoparts-save-millions--boost-quality.pdf.
8Id.
9See, e.g., Sean Michael Ragan, An Open Source Laser Sintering 3D Printer, MAKEZINE (Feb. 21, 2012) http://makezine.com/2012/02/01/an-open-source-laser-sintering-3d-printer/.
10Are You Ready to 3D Print Electronics on to Your 3D Printed Designs?, THE SHAPEWAYS BLOG: 3D PRINTING NEWS & INNOVATION (Feb. 13, 2013) http://www.shapeways.com/blog/archives/1922-are-you-ready-to-3d-print-electronics-on-to-your-3d-printed-designs.html.
11You can now 3D Print in Glass With Shapeways, THE SHAPEWAYS BLOG: 3D PRINTING NEWS & INNOVATION (Apr. 14, 2010) http://www.shapeways.com/blog/archives/401-you-can-now-3dprint-in-glass-with-shapeways.html.
12The History of 3D Printing, REDORBIT http://www.redorbit.com/education/reference_library/general-2/history-of/1112953506/the-historyof-3d-printing/ (last visited May 29, 2014).
13Automotive Car Body, SHINING 3D, http://www.shining3dscanner.com/enus/solution_whole_car.html (last visited May 7, 2014).
14Jay Leno, Jay Leno's 3D Printer Replaces Rusty Old Parts, POPULAR MECHANICS (June 8, 2009) http://www.popularmechanics.com/cars/jay-leno/technology/4320759.
15Robert Bosch LLC v. Pylon Mfg. Corp., 659 F.3d 1142, 1145 (Fed. Cir. 2011).
16In re Certain Automotive Parts, Inv. No. 337-TA-651 (2009).
17Turn Ordinary Photos Into Extraordinary 3D Models With 123D Catch, AUTODESK, http://www.123dapp.com/catch (last visited May 7, 2014).
Originally printed in Law360 (www.law360.com). Reprinted with permission. This article is for informational purposes, is not intended to constitute legal advice, and may be considered advertising under applicable state laws. This article is only the opinion of the authors and is not attributable to Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, or the firm's clients.
Hybrid Conference
2024 California Intellectual Property Law Institute
October 21-22,2024
San Francisco
Conference
2024 Licensing Executives Society USA – Canada Annual Meeting
October 20-23, 2024
New Orleans
Conference
4th Annual Passport to Proficiency on the Essentials of Hatch-Waxman and BPCIA
October 8-24, 2024
Virtual
Conference
2024 Corporate Counsel Women of Color: Career Strategies Conference
October 2-5, 2024
Las Vegas
Hybrid Conference
2024 Patent Law Institute: Critical Issues & Best Practices
September 30 - October 1, 2024
New York
Due to international data regulations, we’ve updated our privacy policy. Click here to read our privacy policy in full.
We use cookies on this website to provide you with the best user experience. By accepting cookies, you agree to our use of cookies. Please note that if you opt not to accept or if you disable cookies, the “Your Finnegan” feature on this website will be disabled as well. For more information on how we use cookies, please see our Privacy Policy.
Finnegan is thrilled to announce the launch of our new blog, Ad Law Buzz, devoted solely to breaking news, developments, trends, and analysis in advertising law.