In November, 2013, 3D printing leader Stratasys filed a lawsuit against Microboards Technology LLC, the company behind the Afinia brand of 3D printers, claiming infringement against their FDM patents. Last week, news was released that the USPTO would not perform an Inter Partes Review (IPR) of Stratasys’ FDM patents. In other words, the government body would not reexamine several patents in the lawsuit to determine whether or not they were actually valid. Today, Afinia has responded to the decision by the Patent Trial and Appeal Board’s decision, bringing new evidence to light against Stratasys in their lawsuit.
In filing a patent, one must demonstrate that the patent covers a new technology; however, when originally responding to the Stratasys suit, Afinia’s defense argued that Stratasys had actually re-patented a technology that they had already patented previously. This newer patent, related to infill during the 3D printing process, should never have been granted in the first place. This led the judge to throw out the infill patent, one of four patents being examined in the case. The other three patents – related to heated build environments, extruder design, and seam layer concealment – were still on the table, however. For that reason, Afinia petitioned the USPTO to reexamine their validity, which the USPTO declined.
Afinia’s defense points out that Stratasys’ press release may have been a bit misleading, in that the decision not to perform an Inter Partes Review does not mean that the patents cannot still be brought up in the actual trial, to begin this December. More importantly, though the USPTO has decided not to perform an IPR of the patents, Afinia believes that Stratasys’ own prior art was withheld from the USPTO, something they plant to bring up in the trial itself.
In a statement, Afinia lead defense counsel Bill Cass of Cantor Colburn says that “Afinia will assert Stratasys’ products and product manuals as prior art against Stratasys’ FDM patents in federal court.” Cass writes that Stratasys own prior product manuals, containing prior art (that should prevent a subsequent Stratasys patent from being issued), were withheld from the USPTO when its latter patent was filed.
In rejecting Afinia’s petition for an IPR of US Patent No. 5,866,058 (‘058 Patent), related to heated build environments, the USPTO board argues that, upon examination of the product manual for the Stratasys’ FDM 1600 3D printer, the ‘058 Patent does not specifically disclose a temperature environment of greater than 700C:
Even if the local region temperature were the same as the envelope temperature, the temperature of 70ºC is the same as the solidification temperature for ABS thermoplastic, not in excess of the solidification temperature as required by claim 1.
The Petition does not show adequately that the claimed local region temperature is inherently disclosed by FDM when the modeling temperature is 270ºC and the enclosure temperature is 70ºC in the FDM device. See Pet. 15–22; Ex. 1005, F16-23 (MB080).
What the Afinia defense has since discovered is that “the FDM 1650 [3D printer] was designed to operate up to 750C, yielding a local temperature that exceeded 750C,” which was not previously disclosed to the USPTO. By not disclosing the fact that this other legacy 3D printer did print at temperatures greater than 700C, Cass writes that, “Afinia contends that Stratasys breached its obligations to the Patent Office and the public, and will pursue further action with the appropriate authorities.”
Cass ends his statement with a call to action to other firms that rely on FFF 3D printing technology, writing, “If your company has been accused of infringing the ‘058 patent, please contact John Westrum at Afinia [email protected].” What this means is unclear, but I can only imagine that, when the case does go to trial in December, that a troupe of surprise witnesses will be paraded into the courtroom one after the other: the mime that has to relay his testimony in pantomime, an elderly woman with poor eyesight, and a Jersey mechanic that “seen the whole thing go down.”
