As established companies seek to protect their market share against mounting competition from an increasing number of new 3D printing companies, the battlefield for dominance in the 3D printing industry is becoming increasingly fierce. So naturally, 3D printing companies increasingly find themselves in court to assert or defend against patent infringement claims. Case in point, shortly after announcing announcing that it had raised $35 Million in Series B funding, Massachusetts-based Formlabs, Inc.—creator of the popular, relatively low cost Form 1+ and Form 2 Vat Photopolymerization 3D printers—found itself accused of patent infringement by a competitor for the second time in four years.
In the first suit, Formlabs settled the patent infringement suit filed by 3D Systems in 2014. On September 12, 2016, EnvisionTEC, Inc. filed a Complaint in the federal court in the Central District of California, accusing Formlabs of infringing two of its U.S. patents directed to vat photopolymerization (aka stereolithography or SLA) by making, using, and selling its Form 1+ and Form 2 SLA products. The first, U.S. Patent No. 7,052,263, claims an SLA 3D printing apparatus that includes a trough for holding material that can be solidified under the influence of light, a transparent plate under the trough, and a resilient layer on the transparent plate and side wall of the trough from which solidified material is easier to detach than from the transparent plate. The second, U.S. Patent No. 7,195,472, claims an SLA 3D printing apparatus for separating hardened 3D printed material from the build plate using a film-like material between the build plate and hardened material.
The EnvisionTEC Complaint asks for a jury trial, a declaration that Formlabs infringes the ’263 and ’472 patents, monetary damages to compensate for lost profits resulting from the alleged infringement, and a permanent injunction preventing Formlabs from making, using, selling, or offering for sale, its Form 1+ or Form 2 products. While patent owners routinely request both monetary damages and an injunction in their Complaints, it is uncommon for courts to grant injunctions under current case law. Courts today usually award only money damages if infringement is proven. To obtain an injunction, EnvisionTEC needs to prove (1) that it has suffered an irreparable injury as a result of Formlabs’ infringement; (2) that monetary damages are inadequate to compensate for that injury; (3) that when balancing the hardships between EnvisionTEC and Formlabs, an injunction is warranted; and (4) that an injunction would not be contrary to the public interest. This is not easy to do under current law.
Along with the Complaint, EnvisionTEC’s CEO, Al Siblani, made the following statement about the company’s decision to file a lawsuit against Formlabs:
“EnvisionTEC has been inventing, developing, manufacturing and selling 3D printers, materials and other related technologies and services for nearly 15 years. Today, we hold numerous patents around the world covering a variety of our 3D printing products, methods and more. This intellectual property was researched and developed over many years by our innovative team of professionals and is invaluable to our business serving a variety of medical, professional and industrial markets around the world. We are committed to aggressively protecting our intellectual property in accordance with the laws of the countries in which we operate.”
Formlabs now has several options for responding to EnvisionTEC’s first salvo. First, Formlabs will probably respond to the EnvisionTEC Complaint by arguing that it does not infringe the EnvisionTEC patents, and that the patents are invalid for various reasons. Formlabs may also choose to assert its own patents against EnvisionTEC. Formlabs may also challenge the validity of the EnvisionTEC patents, or some of their claims, in the U.S. Patent Office. The parties could also negotiate a settlement. Because most patent infringement cases never reach the jury, settlement seems likely, although maybe not immediately.
If the lawsuit goes to trial, it could take years. On average, patent cases in the Central District of California take nearly 40 months from the time a Complaint is filed to termination by jury trial. But fewer than 1% of patent cases in the Central District of California actually end in trial. Nearly 70% of patent cases in the Central District of California result in voluntary dismissals or settlement. The average time to settlement is about 12 months.
The ’263 and ’472 patents in EnvisionTEC’s Complaint have never been litigated, so there are no prior rulings that foreshadow the potential outcome of this case. Defendants in patent cases in the Central District of California prevail about 60% of the time. If Formlabs chooses to challenge the validity of the ’263 and ’472 patents (or some of their claims) in a separate venue, Formlabs could file IPR petitions at the U.S. Patent Office, where the chances of invalidating the patents or claims is about 85%, based on the frequency with which the Patent Office has invalidated patents/claims in other cases.
EnvisionTEC has launched a first volley against Formlabs by filing a Complaint for patent infringement in the Central District of California. The parties’ strategies and the outcome remain to be seen.
John Hornick and Rob Wells