Overview of Patent-Related Issues Concerning
Libraries Providing 3-D Prin.ng Services
Harj Mann
Anissimoff Mann
Professional Corpora2on
&
Margaret Ann Wilkinson
Faculty of Law
Western University
December 4 th , 2015
B a r r i s t e r s & S o l i c i t o r s
Patent & Trademarks Agents

•   Specifica2on
•   Descrip2on
•   Preferred Embodiment
•   Variants
•   Claims
•   Define Scope of Monopoly
•   Drawings

•   Claims read from perspec2ve of a person skilled in the art to which the inven2on relates.
•   Iden2fy essen2al elements of claims.
1.
A protec2ve case for a mobile device…comprising: a body for covering the rear face of the mobile device… a camera-exposing cutout provided at an edge of the body… a detachable lens cover comprising a slide cover and a plug-in cover…
[that slides or plugs into] the camera-exposing cutout… and cover the camera lens.

•   Claims read from perspec2ve of a person skilled in the art to which the inven2on relates.
•   Iden2fy essen2al elements of claims. i.
“body” (mobile phone case); ii.
“cutout” (missing sec2on on case); iii.
“cover” (slide/plug-in piece).
1.
A protec2ve case for a mobile device…comprising: a body for covering the rear face of the mobile device… a camera-exposing cutout provided at an edge of the body… a detachable lens cover comprising a slide cover and a plug-in cover…
[that slides or plugs into] the camera-exposing cutout… and cover the camera lens.

•   S. 42 of the Patent Act grants:
•   “the exclusive right, privilege and liberty of making, construc2ng and using the inven2on and selling it to others to be used”.
•   O]en shortened to: “the exclusive right to make, use, and sell” (the inven2on).

•   Ac2ons that interfere with or deprive the patentee of the full enjoyment of the monopoly granted by the patent. ( see Monsanto v. Schmeiser , 2004 SCC )
•   Infringement occurs when all the essen2al elements of a claim are present in the subject ar2cle. ( see Free World Trust v Électro Santé Inc , 2000 SCC
66; and Whirlpool Corp v Camco Inc , 2000 SCC 67 )
•   i.e. a “body” with a “cutout” and a “cover”

Patent
•   Experimental use
•   Repair
Notable Difference from
Copyright
•   Fair use excep2on does not apply to patent rights.

•   Experimental Use
•   Non-commercial;
•   Tes2ng;
•   Not for stockpiling pre-expiry.
•   Repair
•   Repair permided, but not to the level of “remanufacture”.
•   Replacement parts may themselves be infringing or noninfringing.

•   Inducement is patent infringement by “inducing” another to carry out the infringing ac2vity.
•   Three-part test for inducement:
1.
Act of direct infringement must be completed by a third party;
2.
“Inducer” must have influenced the third party, such that the act of infringement would not have been completed, but for the influence of the “inducer”; and
3.
“Inducer” must have knowledge that their influence would lead third party to complete act of direct infringement.
(see Corlac Inc. v. Weatherford Canada Inc.
, 2011 FCA 228)

•   Numerous;
•   Difficult to iden2fy/locate;
•   Expensive to enforce rights against numerous infringers separately for small amount.
•   The presence of an ins2tu2onal or commercial
“inducer” connected to numerous (direct) infringers presents an appealing enforcement target for rights holders.

•   Example: Patented
Mobile Phone Case
•   Easy to print from cheap materials;
•   Simple design; and
•   Claims may cover numerous possible variants.
•   Prin2ng a mobile phone case (“body”), having a
“cutout” for the camera lens, and a “cover” that slides or plugs into the
“cutout” may infringe.

•   CAD drawings may be “original” work and; therefore, not infringe any other copyright.
•   Nonetheless, once printed – the ar2cle defined by the CAD drawing may infringe a third party’s patent rights.
•   “Freeware” or “open source” CAD drawings are no guarantee of a non-infringing printed ar2cle.
•   Creator’s knowledge and inten2on are irrelevant.
•   Exclusive rights (under patent) are not limited to
“copying” or “reproducing” – it is the exclusive right to “make, use, or sell” the inven2on.

•   CAD Creator – poten2al “inducer”
•   CAD Uploader – poten2al “inducer”
•   CAD Repository – poten2al “inducer”
•   CAD Downloader – no patent liability, for downloading only
•   3-D Printer Operator – poten2al (direct) infringer
•   End User – poten2al (direct) infringer

•   CAD Creator and CAD Uploader may be doing nothing unlawful.
•   CAD repository may be out of the jurisdic2on.
•   Normally, CAD downloader, 3-D printer operator, and End User are the same person.
•   End users are difficult to prosecute.
•   This makes an ins2tu2on involved in the chain the most adrac2ve target for enforcement ac2ons.
•   Eg. By providing the 3-D printer equipment for use by members the public.

•   Providing 3-D prin2ng equipment for use by members of the public;
•   Providing supplies for 3-D prin2ng (plas2c, etc.);
•   Reviewing 3-D models and gran2ng permission before patrons allowed to print;
•   Opera2ng 3-D prin2ng equipment for patrons; and
•   Charging a fee for the above services.
•   As the level of involvement increases, so does the poten2al liability.

•   Three requirements: (i) “direct infringement”, (ii)
“influence”, and (iii) “knowledge”.
•   Reviewing and approving a 3-D model, then providing access to a 3-D printer, for prin2ng the approved 3-D model by a patron.
•   May sa2sfy “influence” and “knowledge” requirements of the inducement test.
•   If the ar2cle printed by the patron infringes any third party patent rights – Library may be liable for patent infringement as an “inducer”.

•   Legal defences to patent infringement are limited.
•   The limited quan2ty of infringing ar2cles that can be produced on a 3-D printer may limit damages.
•   Not so where ar2cles are very expensive.
•   Limited involvement in opera2on of 3-D printer may limit liability.
•   No opera2on of equipment, no review and approval of
3-D designs, no charging for printed ar2cles, etc.

•   End Users who are sued by a patent holder may bring the library into the lawsuit, by way of a
Third Party Claim.
•   End User may argue that, by reason of using the library’s equipment and an “open source”
3-D design, their ac2ons were lawful.
Plain2ff
Defendants
End User
1
Third Party
Patent
Holder
End User
2
Library
End User n

•   Increasing awareness of 3-D prin2ng capability.
•   Improvements in 3-D prin2ng technology may lead to risk of infringing patent rights in a broader range of technological fields.
•   Widespread use of 3-D prin2ng technology may increase enforcement pressure on IP rights holders.

Harj Mann harj@anissimoff.on.ca
Anissimoff Mann Professional Corpora2on
&
Margaret Ann Wilkinson mawilk@uwo.ca
Faculty of Law, Western University
December 4 th , 2015
B a r r i s t e r s & S o l i c i t o r s
Patent & Trademarks Agents