Patent Infringement in 3D – Who to Sue?

Lauren Leahy is a guest blogger and is a summer student at Gilbert’s LLP in Toronto, where she works alongside Law in the Making co-founder Paul Banwatt. Contributions also made by Jamie Goodman, an associate at Gilbert’s LLP in Toronto.

The market for 3D printing is expected to grow to over $8.4 billion by 2025. As 3D printers increasingly become staple business and household items, open source designs for a wide range of products will become available for download – if they aren’t already. It is all but inevitable that these designs will include the subject matter of patented inventions. As a result, potential patent infringers will no longer be limited to large manufacturers but will also include the typical consumer.

Suppose that X sold a scanner to Y who used it to scan a patented product and post the design online. W (the consumer) then used that design to print the object using a 3D printer sold to him/her by Z.

Even though it is hard to say that anyone but W has infringed the patent in the example above, to enforce their patents in the 3D printing world, companies will likely have two options:

  1. Sue W for directly infringing the patent – though this may be unwise given that they are likely to also be the patent holder’s (potential) customers and there may be a lot of them;
  2. Sue Y [the “supplier”] for inducing W to infringe the patent.

In Canada, it is possible to infringe a patent by inducing someone else to commit the infringing act. The three basic requirements for inducing infringement have long been established: (1) there must be an infringing act committed by the direct infringer; (2) this infringing act must have been influenced by the alleged inducer; and (3) the influence must have been knowingly exercised and intended by the inducer (this requires more than mere passivity).[1]

In 2010, Bauer Hockey Corp v Easton Sports Canada, concluded that the inducer does not need to know about the infringed patent at the time of the inducement to be liable – instead, liability will arise so long as the inducing act had been done knowingly (deliberately). In this case, Easton Sports was found to have infringed Bauer Hockey’s patent for their “Vapor 8” ice skate model by inducing a third party into directly infringing the patent. While the manufacturing of the Easton skates was outsourced to the third party, it was clear that Easton had control of the process as they came up with the design and oversaw the production of the skates.[2]

In the context of 3D printing, it is irrelevant whether or not the supplier knew that, by using his/her designs, the consumer would infringe a patent. What matters is that the supplier influenced the consumer, knowing that his/her influence would lead to the production of the (patented) product.

Nevertheless, simply selling articles that might be used for the infringement of a patent is likely not enough to constitute inducement.[3] The supplier may have to do more than just make the designs available to consumers to download, for his/her actions to constitute inducement.  On the other hand, an argument might be made that a 3D printer is a device that makes infringement much more likely. This could shift the analysis towards whether the device performs a legitimate non-infringing function – an idea that has been applied in the copyright world as “substantial non-infringing uses,” but not yet to patent law.

Yet the question still remains, specifically, what degree of control (influence) is required to “induce” another. Bauer Hockey v Easton Sports was considered a “very unique circumstance,” as there was a clear relationship of influence (as mentioned above). However, a much earlier case concluded that it was not necessary “for the supplier to have had any personal contact with the infringing consumer, to know his identity, or to have sold the article directly to that person.”[4] If no relationship is required, then the supplier would not need to know the consumer who ultimately uses the design to 3D print a patented product in order to be said to have influenced them.

Ultimately, the degree of action required by the supplier to “induce” could depend on how the designs themselves are interpreted – for example whether they are equivalent to providing specific instructions or whether it is determined that a supplied design could only be used by infringing the patent holder’s product (that is, you could only use the design to make the patented product).

Perhaps an argument can be made that providing designs for 3D printed objects is equivalent to providing instructions to print that object. Or, Bauer Hockey v Easton Sports could be distinguished because there was a blatantly obvious relationship of influence in that case, on the facts, and so a clear relationship may not necessarily be a requirement for proving inducement (but it certainly would help).

How exactly a case for inducing infringement in the context of 3D printing will play remains to be seen, in part because the law is not 100% clear and also because the technology raises questions that have yet to be considered. On the bright side, given the acceleration of 3D printing technology and its increasing availability, we may not have to wait too long before the courts are forced to answer these questions.

[1] MacLennan v Produits Gilbert Inc, 2008 FCA 35.

[2] Bauer Hockey Corp and Nike International Ltd v Easton Sports Canada Inc, 2010 FC 361 [Bauer v Easton].

[3] Procter & Gamble v Bristol-Myers Canada, [1978] FCJ 812 [Procter v Bristol-Myers].

[4] Procter v Bristol-Myers.

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