Last November, 3D printing industry leader Stratasys, makers of fused deposition modeling technology, filed a lawsuit against Microboards Technology, LLC, makers of the Afinia H-Series 3D printer. At the time that the lawsuit began, Stratasys had claimed that the Afinia machine infringed upon four of the company’s patents. This challenge to Afinia was, in fact, a challenge to most desktop 3D printers that have hit the market because they all use similar fused filament technology. What happens in this case may set the stage for what happens to a number of commercial desktop printers. Though the full trial has yet to begin, a new development has occurred: last month, the court instructed Stratasys to drop one of its patents from the case.
Michael Weinberg, of Public Knowledge, describes this latest news and outlines the four patents over at Make, saying, “In its original complaint, Stratasys accused Afinia of infringing on four of its patents: the ‘925 patent that related to controlling infill, the ‘058 patent that related to heated build environments, the ‘124 patent that related to Afinia’s extruder, and the ‘239 patent related to a seam layer concealment method.” The defendant responded by arguing the validity of the patents listed and, further, “included affirmative defenses of patent misuse and will be investigating a potential claim for antitrust (by patent) given the significant differences between the asserted claims and the Afinia H Series.” In other words, the makers of the Afinia suggest that the plaintiff has misused the patent system to maintain a monopoly in the market.
Now, the court has eliminated one of the patents for the case, patent ‘925, related to controlling infill. In having a patent granted, one must demonstrate that an invention is new. Afinia, however, argued that prior art for patent ‘925 did exist before Stratasys’ filing, so that this infill technique was not entirely new. Weinberg points out that, interestingly, this prior art was actually created by Stratasys itself, saying, “But this wasn’t just any prior art. Afinia claimed that Stratasys itself already had a patent that included the invention that was being patented (again?) by Stratasys. That old patent should have prevented the ‘925 patent from ever being granted.”
Weinberg goes on to explain that, because Stratasys should have known about its own previous patent filing when filing patent ‘925, Afinia is arguing that keeping this information from the Patent Office was a “breach of good faith” and should be considered “inequitable conduct and patent misuse.” In response, Stratasys volunteered to drop patent ‘925 from the case, if Afinia dropped these counterclaims, which Afinia refused to do.
The two companies filed letters with the court, in which Stratasys argued that, because it had dropped its claim regarding patent ‘925 from the case, all Afinia’s counterclaims should subsequently be dropped, as well, with no original claim to flow from. Afinia’s letter suggested that it should maintain its counterclaims for fear of further suits from Stratasys over ‘925 against other 3D printer manufacturers, that this counterclaim may help them with the ‘058 patent in the case, and to help Afinia pay for the lawyering used in the ‘925 portion of the case.
As a result, the court instructed Stratasys to drop its claims regarding ‘925 and, once it has done so, will reconsider Afinia’s counterclaims. If the court validates these counterclaims, Weinberg suggests that the ‘925 patent could become void, preventing Stratasys from suing other manufacturers for their infill control. Between now and the official full trial date of Dec. 1, 2015, we should hear news about the court’s ruling surrounding this one patent.
I may not know what will happen at the end of next year, but, thanks to Michael Weinberg’s reporting, I do know that I’ve never been so interested in the nitty-gritty of a patent trial.
