Court to Decide Key Question on Patentability of 3D Digital Models

Authored by John F. Hornick and Carlos J. Rosario

Sometime this summer, the U.S. Court of Appeals for the Federal Circuit will decide how patent law should treat digital representations of physical objects, which some people call "3D digital models".

The case stems from a longstanding feud between Align—the maker of the famed Invisalign^® alternative to metal braces—and its competitors OrthoClear and ClearCorrect. Since 2006, Align has asserted patents for methods of producing orthodontic teeth aligners using digital models of patients' teeth. As 3D printing industry observers know, Align uses 3D printers to produce custom orthodontic aligners. Align's orthodontic aligners work incrementally; each patient wears a series of aligners that gradually shift the patient's teeth until the desired tooth positions are achieved.

ClearCorrect also creates digital models of a patient's teeth to use with its custom teeth aligners. Based on the digital models, a similar stepping process is performed, which consists of creating digital models of intermediate tooth positions. The digital models are used to create each incremental orthodontic aligner, to move a patient's teeth from their initial position to a final position.

The case was decided in 2014 by the U.S. International Trade Commission (ITC), a quasi-judicial, bipartisan, federal agency that polices trade in the interest of protecting U.S. industries from unfair trade practices, such as patent and copyright infringement. The ITC became involved in the dispute between Align and ClearCorrect when ClearCorrect, in an alleged attempt to skirt Align's U.S. patents, began performing part of it process abroad. ClearCorrect scans teeth in the U.S., but sends the digital models to Pakistan, where digitals models are created for the intermediate orthodontic aligners. ClearCorrect then sends the digital models of the intermediate aligners back to the U.S. for 3D printing.

Align argued that the electronic transmission of the digital models is an "importation of articles" within the scope of 19 USC § 1337, the law regarding unfair practices in import trade. The ITC sided with Align and held that the electronic transmission of digital models could be considered an illegal importation of "articles". After this ruling, ClearCorrect appealed the ITC's decision to the U.S. Court of Appeals for the Federal Circuit.

If the Federal Circuit upholds the ITC's ruling, the decision could have important implications for 3D printing. For example, companies that 3D print parts from third party digital models without a license could be patent infringers. Perhaps more important is the flipside of this coin. Companies with profitable parts of their businesses worry that their parts may be 3D scanned, that such scans will be converted to 3D printable digital blueprints, and that customers will stop buying such parts because they 3D print them in-house from such blueprints. Thus, such companies would like to have strong IP protection for digital models. If the Federal Circuit rules that digital models are "articles," such companies may be able to patent digital models, giving them a powerful weapon for preventing the copying of parts. However, the Federal Circuit could very well determine that digital models, which are intangible objects, are not "articles" and therefore are not patentable because the patent laws define patentable subject matter as a process, machine, article of manufacture, or a composition of matter.

Our guess, and it is only a guess, is that the Federal Circuit will not want to open the floodgates and allow digital models to be patented. It seems more likely that the court will rule that digital models are intangible objects, and that even if they are "articles" for an ITC case, they are not "articles of manufacture" under U.S. patent law. This may seem like legal mumbo jumbo, but, on such distinctions, important issues can turn. If the court so rules, the battle probably will not end there. As 3D printing from 3D scans becomes more common, parts companies will probably lobby Congress to beef up protection for digital models. Stay tuned.