Imagine That IP Law Blog

The advantages of 3D printing in the automotive industry are clear — reduce the overhead spend on standard manufacturing tools and procedures while also increasing speed of production. Computer-aided design (CAD) software, generally provided in the form of an electronic file for use on a computer, is fundamental to the 3D printing manufacturing process in that the end product is based upon the CAD file. While a company’s actual 3D-printed products can be protected by both design and utility patents, securing the intellectual property of the manufacturing process, including the CAD file can be tricky when it comes to patent eligibility rejections. Major original equipment manufacturers (“OEMs”), such as Ford and Toyota, as well as automotive part suppliers, and emerging startups, alike, are well advised to consider what areas of their 3D printing operations can be protected: just the resultant 3D printed products or also the 3D manufacturing process?

A recent Supreme Court petition for a writ of certiorari in Janke v. Vidal, filed on December 28, 2022, provides some insight into potential considerations when pursuing IP protection on 3D printed products, including approaches to protecting CAD files used in a company’s manufacturing process.

In particular, Petitioner, Garth Janke’s invention entitled Product and Process for Enabling a Clog-Resistant Feature in a Hand-Held Leaf Rake (published as US2021/0337724A1) features 3 claims that are helpful in developing further understanding of IP strategies for 3D printing:

• Claim 1: A leaf rake head product for enabling a clog-resistant feature in a hand-held leaf rake.
• Claim 21: A process for enabling a clog-resistant feature in a hand-held leaf rake, comprising installing a first mathematical model on a computer, the first mathematical model describing . . . [the product of Claim 1].
• Claim 26: The process of claim 21, further comprising applying the first mathematical model on a commercially available 3D printer to result in transforming the first mathematical model into a real leaf rake head product as defined . . . [in product of Claim 1].

Device claim 1 was determined by the Examiner to be allowable, while process claims 21 and 26 were rejected under 35 U.S.C. § 101. Process claims 21 and 26 are representative as showing how claiming 3D printing may become difficult. Process claims 21 and 26 are directed to installing a mathematical model (for example a CAD file) on a computer and applying the mathematical model (such as a CAD file) on a 3D printer.

Interestingly, Janke’s Petition acknowledges that process claims 21 and 26 are patent ineligible subject matter under § 101. The question that Janke raises to the Court is: how can process claims 21 and 26 (for making the leaf rake head by applying a mathematical model of the leaf rake head on a 3D printer) be patent ineligible under § 101, while the actual, known patentable product of device claim 1 (i.e., the leaf rake head) can be patent eligible under § 101?

Rather than actually contesting the Examiner’s § 101 rejection of claims 21 and 26, Janke’s Petition simply contests the jurisprudence and basis of support for MPEP 2106 regarding § 101 Patent Subject Matter Eligibility, in particular, two cases: Gottschalk v. Benson, 409 U.S. 63 (1972) and Parker v. Flook, 437 U.S. 584 (1978).

Not to digress into Benson and Flook, the key takeaway of Janke’s relevance to 3D printing in the automotive industry concerns the idea that companies should recognize that product (device) claims to a manufactured product will likely achieve greater success during prosecution, while process claims, such as those implementing a CAD file onto a computer or 3D printer, may meet greater resistance under § 101 – even when the actual product, itself, is found to be patent eligible.  

Clearly, 3D printing in the automotive industry adds new legal considerations for companies engaged in the manufacture and supply of automotive parts. So how should an automotive company protect its 3D printing operation? To apply the lessons from the § 101 rejection of Janke’s process claims 21 and 26, patent claims directed to a process of installing a CAD file on a computer or 3D printer will likely be met with the same treatment under § 101 as Janke’s mathematical model.

An initial IP strategy for a company that manufactures automotive parts via 3D printing may be to file both utility patents and design patents to protect its products. While a utility patent will cover a product’s function, a design patent protects the ornamental features of a design, in other words, how an article looks, while the functional aspects of the design are excluded from protection.

Securing the company’s 3D printing operation with method or process claims, on the other hand, may require additional planning, particularly when a company’s process involves installing a mathematical model (for example a CAD file) on a computer and applying the mathematical model (such as a CAD file) on a 3D printer.

Because a process claim directed to installing a CAD file on a 3D printer may encounter a similar § 101 eligibility rejection as Janke’s process claims 21 and 26, a design patent application directed to the ornamental features of the design, itself, within the CAD file may be an alternative approach for building a robust company IP portfolio.   

With the understanding that online access to CAD files creates a larger population of potential infringers who can 3D print a company’s product, developing a strong IP portfolio becomes increasingly important.

In addition, collaboration and cross-licensing with other 3D printing manufactures in the automotive industry may provide additional protection against would-be infringers and litigants. For example, effective negotiations with other OEMs, suppliers or emerging startups may provide a measure of security from formation of partnerships and defensive patent groups. As a caveat, when such collaboration takes the form of licensing arrangements to jointly invent a new concept to a commercially satisfactory stage of development, be sure to review the terminology in the agreements for terms that may jeopardize the longevity of a company’s patent assets.

In the dynamic and highly-completive automotive industry, OEMs, automotive-part suppliers, and emerging startups are encouraged to identify their respective IP strategies early. A well thought out IP strategy that secures the company’s IP assets should consider whether and how the company’s 3D printed products and 3D manufacturing processes may be protected from infringement and litigation.