News of advancements in 3D printing has exploded. At the 2016 Consumer Electronics Show (CES 2016), manufacturers displayed faster and cheaper printers, and included new materials like honeycomb fruit candy and nylon mesh multi-material fabrics for shoes.¹ As 3D printers become more advanced, questions have been raised about how innovators can protect their inventions and designs. To print an object, a 3D printer requires a design file that specifies the exact shape of the object to be printed. This file contains information about where the print head should deposit material in three-dimensional space (X, Y, and Z axes) as well as the density of materials to deposit at each point in space. A design file may be created from scratch using a CAD (Computer Aided Design) program or by scanning an existing object using a 3D scanner. Already, many websites have cropped up offering to sell (or in many cases give away) these design files,² and many of these websites are located outside the United States.³  If downloaded and printed in the United States, many of these design files may infringe the rights of American patent and trademark owners.

Enforcement of Intellectual Property Rights for 3D Printing
Just as copyrights were at the forefront of the music industry’s fight against file sharing, patents and trademarks will be central to addressing IP theft via 3D printing. Design patents in particular provide an important tool in the 3D printing environment as they offer protection for novel, ornamental designs of three-dimensional articles. But enforcing design patent rights against individuals printing at home will likely prove nearly impossible as a practical matter. Instead, effective IP enforcement will likely mean trying to stop the sellers or distributors of the digital files. 

One Possible Venue: The U.S. International Trade Commission (USITC)
The USITC investigates claims regarding various types of IP rights violations involving imported goods. Under Section 337 of the Tariff Act of 1930, 19 U.S.C. § 1337 “Section 337”), the USITC has the authority to investigate and remedy “[t]he importation into the United States, the sale for importation, or the sale within the United States after importation . . . of articles that... (i) infringe a valid and enforceable United States patent.” To enforce a patent right under Section 337, the patent owner must show (1) infringement of a U.S. patent by the accused imported product; (2) importation into the United States of the accused product; and (3) the patent owner has a domestic U.S. industry protected by the IP right. The USITC can be used to stop the importation of articles that infringe utility or design patents.

Many thought that one possible venue to stop the importation of such digital files was the USITC International Trade Commission. But in ClearCorrect Operating, LLC v. International Trade Commission, No. 2014-1527 (Fed. Cir. Nov. 10, 2015), a divided panel of the Federal Circuit ruled that the USITC’s jurisdiction to remedy unfair acts involving the importation of “articles” extends only to physical things. The Federal Circuit therefore overturned the USITC’s earlier determination that it had the authority to block the electronic importation of digital data files into the United States. The digital files at issue in ClearCorrect are used by ClearCorrect to make orthodontic appliances called aligners for incrementally repositioning teeth. The digital models are generated in Pakistan and then transmitted digitally to the United States where they are 3D printed to physical models used to manufacture the aligners. Although in ClearCorrect the digital data files were just one aspect of the patented methods for producing orthodontic appliances, the Federal Circuit addressed the USITC’s jurisdiction to remedy patent infringement by blocking the importation of digital data files broadly. Thus, under ClearCorrect, the USITC has no authority to ban the transmission of digital data files originating abroad that are subsequently used to manufacture infringing products in the United States via 3D printing.

Other Possible Routes to Prove Infringement
Looking to the federal district courts—where patent infringement enforcement power is not limited to material “articles”—enforcing design patent rights against distributors of digital data files used to 3D print infringing articles will likely turn on the law of indirect or induced infringement. There are two types of indirect infringement under the Patent Act—active inducement of infringement and contributory infringement. Each theory presents unique enforcement challenges in the realm of 3D printing file distribution. Active inducement requires a showing that the inducer intended to induce acts of infringement, which in turn requires actual knowledge of the patent or willful blindness of the patent’s existence. This may be difficult to show with respect to unsophisticated individuals creating the files or the passive websites hosting them. On the other hand, proving contributory infringement requires a showing of a sale or offer for sale of a “component” of the patented invention. It is uncertain whether a digital data file for 3D printing an infringing article would be considered a “component” of the patented invention. Moreover, the requirement of an underlying sale or offer for sale of the component may foreclose contributory infringement liability where digital data files are provided for free.  

Legal scholars have also explored theories for expanding direct infringement to cover 3D printing activities. Professor Holbrook of Emory University and Professor Osborn of Campbell University have proposed removing the tangibility requirement of direct infringement—what they call “direct digital infringement”—so that direct infringement could be based on sales of and offers to sell 3D printing digital data files.⁴  This could represent a much easier way to hold direct infringers liable, in much the same way that downloading copyrighted files from the Internet is copyright infringement alone.

Releasing the USPTO from a “Technological Antiquity”?
Much of the ClearCorrect decision applies a statutory trade scheme created before the Internet to an increasingly digital world. In her dissent, Judge Newman said the majority’s interpretation limiting “articles” to material things locked the USITC into “technological antiquity.” ClearCirrect, Newan Dissent at 14. Perhaps the Supreme Court or Congress will take up Judge Newman’s call. But for now, ClearCorrect removes the USITC as an avenue for pursuing liability against distributors of 3D printing digital data files originating abroad.