DCT
1:18-cv-10524
Desktop Metal Inc v. Markforged Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Desktop Metal, Inc. (Delaware)
- Defendant: Markforged, Inc. (Delaware) and Matiu Parangi
- Plaintiff’s Counsel: Latham & Watkins LLP
- Case Identification: 1:18-cv-10524, D. Mass., 03/19/2018
- Venue Allegations: Venue is alleged to be proper in the District of Massachusetts as both corporate defendants are residents with established places of business in the district, and a substantial part of the events giving rise to the claims allegedly occurred there.
- Core Dispute: Plaintiff alleges that Defendant’s Metal X 3D printing system infringes two patents related to the use of a specialized interface layer that enables the easy removal of support structures from metal 3D-printed parts after sintering.
- Technical Context: The lawsuit concerns additive manufacturing of metal parts, a technology where complex geometries often require temporary support structures during fabrication; ensuring these supports can be cleanly separated from the final part is a significant technical challenge.
- Key Procedural History: The complaint does not mention prior litigation or administrative challenges to the patents-in-suit. The timeline suggests a rapid sequence of events, with the accused product being announced by Markforged shortly before the patents-in-suit issued to Desktop Metal, leading to this litigation.
Case Timeline
| Date | Event |
|---|---|
| 2016-04-14 | Earliest Priority Date for ’118 and ’839 Patents |
| 2017-01-XX | Defendant Markforged announces its Metal X printer |
| 2017-11-14 | U.S. Patent No. 9,815,118 issues |
| 2017-12-05 | U.S. Patent No. 9,833,839 issues |
| 2018-01-03 | Plaintiff Desktop Metal publicly announces patent issuance |
| 2018-01-XX | Defendant Markforged exhibits Metal X printer at CES |
| 2018-03-19 | Complaint filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,833,839 - Fabricating an Interface Layer for Removable Support
- Patent Identification: U.S. Patent No. 9,833,839, “Fabricating an Interface Layer for Removable Support,” issued December 5, 2017.
- The Invention Explained:
- Problem Addressed: In additive manufacturing of sinterable materials (like metal powders), temporary support structures are often needed for features like overhangs. During the high-heat sintering process required to densify the part, these supports can fuse or sinter together with the main object, creating a single, inseparable structure and rendering the part unusable (ʼ839 Patent, col. 1:40-52).
- The Patented Solution: The invention is a method that introduces a distinct "interface layer" between the support structure and the surface of the object being printed. This layer is made of a material specifically chosen to resist bonding during the sintering process. By preventing the support and the object from fusing together, the interface layer allows the support structure to be easily removed by hand after the final part has been formed ('839 Patent, col. 2:1-12; Abstract).
- Technical Importance: This solution enables the creation of more complex metal geometries via 3D printing by solving a key post-processing challenge, potentially making the technology more accessible and versatile for manufacturing applications (Compl. ¶12).
- Key Claims at a Glance:
- The complaint asserts at least independent claim 1 (Compl. ¶28).
- Essential elements of Claim 1 include:
- A method for fabricating a support structure from a first material.
- Fabricating an interface layer adjacent to the support structure.
- Fabricating a surface of an object from a second material, which includes a powdered material and a binder system.
- The binder system retains the object's "net shape" during processing.
- Processing includes "debinding" (removing binder) and "sintering" (densifying the powder).
- The interface layer "resists bonding" of the support structure to the object during sintering.
- The complaint does not explicitly reserve the right to assert dependent claims.
U.S. Patent No. 9,815,118 - Fabricating Multi-Part Assemblies
- Patent Identification: U.S. Patent No. 9,815,118, “Fabricating Multi-Part Assemblies,” issued November 14, 2017.
- The Invention Explained:
- Problem Addressed: The patent addresses the same fundamental issue as the ’839 Patent: the difficulty of separating support structures from objects after sintering in additive manufacturing processes that require post-build thermal cycles ('118 Patent, col. 1:40-52).
- The Patented Solution: This patent frames the solution as a method for fabricating two distinct but mechanically related objects (e.g., the primary part and its support structure) in a single process. An interface layer is applied between the first and second objects. The key properties of this interface layer are that it resists bonding during sintering and, critically, that it "reduces to a powder" during the sintering of the first material, allowing for clean separation ('118 Patent, col. 2:21-28; Abstract).
- Technical Importance: By creating a release mechanism that activates during the necessary sintering step (i.e., turning to powder), this method streamlines the post-processing workflow for complex, supported metal parts (Compl. ¶21).
- Key Claims at a Glance:
- The complaint asserts at least independent claim 1 (Compl. ¶42).
- Essential elements of Claim 1 include:
- A method for fabricating a "first object" from a first material containing a powdered material and a binder system.
- Applying an "interface layer" adjacent to a surface of the first object.
- Fabricating a "second object" from a second material adjacent to the interface layer.
- The second object is "structurally independent from and mechanically related to" the first object.
- The interface layer "resists bonding" between the first and second objects during sintering.
- The interface layer "reduces to a powder during sintering" of the first material.
- The complaint does not explicitly reserve the right to assert dependent claims.
III. The Accused Instrumentality
Product Identification
- Product Identification: The Markforged Metal X 3D print system, which is described as an "end-to-end manufacturing solution" (Compl. ¶27, 35).
Functionality and Market Context
- Functionality and Market Context: The complaint alleges the Metal X system operates via a process Markforged calls Atomic Diffusion Additive Manufacturing (ADAM). This process involves three main stages: (1) printing an object using "metal powder bound in plastic"; (2) a "washing stage to remove some of the binder" (debinding); and (3) sintering the part in a furnace where "the metal powder fuses into solid metal" (Compl. ¶30, 32). An infographic from the Markforged website illustrates this multi-stage process (Compl. ¶30). The complaint alleges that Markforged's system uses a "ceramic release layer" that "turns to dust" or "sinters right off in the furnace for easy support removal," which is positioned between the primary part and its support structure (Compl. ¶23-24, 33). The system is positioned to compete directly with Plaintiff's Studio System (Compl. ¶25).
IV. Analysis of Infringement Allegations
’839 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A method for fabricating, from a first material, a support structure for an object; | The Markforged Metal X system produces a support structure made of the "native material" (Compl. ¶24). An annotated image shows a support structure beneath the main object (Compl. ¶29). | ¶24, 29 | col. 44:40-44 |
| fabricating an interface layer adjacent to the support structure; | The system allegedly fabricates a "white layer in between the support structure and the part," which is described as a "'Release layer' for clean separation of supports after sintering" (Compl. ¶24, 29). | ¶24, 29 | col. 44:45-50 |
| fabricating a surface of the object from a second material... the second material including a powdered material for forming a final part and a binder system including one or more binders... | The object is printed from a "media cartridge" containing "bound powder," described as "metal powder bound in plastic" (Compl. ¶30). | ¶30 | col. 15:50-60 |
| wherein the one or more binders retain a net shape of the object during processing of the object into the final part... | "Before" and "After" images from a publication about the Markforged system allegedly show that the object retains its net shape through the sintering process (Compl. ¶31). | ¶31 | col. 15:54-58 |
| wherein processing of the object into the final part includes debinding the net shape... and sintering the net shape... | Markforged's website allegedly states that "printed parts go through a washing stage to remove some of the binder" and are then "sintered in a furnace" (Compl. ¶32). | ¶32 | col. 5:5-14 |
| and wherein the interface layer resists bonding of the support structure to the object during sintering. | Markforged materials allegedly state the interface layer "turns to dust during the sintering process" and provides for "easy metal support removal" because the "ceramic release layer sinters right off in the furnace" (Compl. ¶33). | ¶33 | col. 10:25-28 |
’118 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A method for fabricating a first object from a first material, wherein the first material includes a powdered material and a binder system, the binder system including one or more binders that resist deformation of a net shape... | The primary part is fabricated using "metal powder bound in plastic," and "Before" and "After" images allegedly show that the object retains its net shape during processing (Compl. ¶43, 44). | ¶43, 44 | col. 1:59-65 |
| applying an interface layer adjacent to a first surface of the first object; | The system applies an interface layer, described as a "'Release layer' for clean separation of supports after sintering," adjacent to a surface of the first object (the primary part) (Compl. ¶45). | ¶45 | col. 2:1-3 |
| and fabricating a second surface of a second object from a second material at a location adjacent to the interface layer... | The system fabricates a support structure (the "second object") adjacent to the interface layer (Compl. ¶45). | ¶45 | col. 2:4-7 |
| wherein the second object is structurally independent from and mechanically related to the first object... | The complaint alleges the second object serves as a support (mechanically related) and that its removal in the "After" image demonstrates it is structurally independent (Compl. ¶46). | ¶46 | col. 2:7-10 |
| wherein the interface layer resists bonding of the first surface to the second surface during sintering... | Markforged materials allegedly describe the layer as providing for "easy metal support removal" because it "separates cleanly from the supports" (Compl. ¶47). | ¶47 | col. 2:10-12 |
| and wherein the interface layer reduces to a powder during sintering of the first material. | The complaint cites a publication stating that the "'release layer' turns to dust during the sintering process" and quotes a Markforged VP stating the "ceramic release layer sinters right off in the furnace" (Compl. ¶47). | ¶47 | col. 2:26-28 |
- Identified Points of Contention:
- Scope Questions: A central dispute for the ’118 Patent may be whether a temporary, disposable "support structure" qualifies as a "second object" that is "structurally independent from and mechanically related to the first object." The defense may argue this language requires two functional, permanent components of a final assembly, whereas the complaint alleges the support structure satisfies the limitation.
- Technical Questions: For both patents, a question for the court will be whether the alleged function of Markforged's "Release layer" is the same as the claimed function of the "interface layer." The complaint presents direct evidence from Markforged's own marketing and personnel stating the layer "turns to dust" and "sinters right off," which maps closely to the "resists bonding" and "reduces to a powder" limitations ('118 Patent, claim 1).
V. Key Claim Terms for Construction
The Term: "interface layer" (asserted in claim 1 of both patents)
- Context and Importance: This term is the core of the asserted inventions. Its construction will determine whether Markforged’s "Release layer" falls within the scope of the claims. Practitioners may focus on this term because the patents define it by its function ("resists bonding") and, in the '118 Patent, its physical transformation ("reduces to a powder").
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification may support a functional definition, describing the layer as any material placed between a support and an object that prevents them from fusing during sintering ('839 Patent, col. 2:8-12).
- Evidence for a Narrower Interpretation: The specification provides specific examples, such as a "powdered ceramic" ('118 Patent, col. 2:28-29) or a layer that forms a "brittle interface" ('118 Patent, col. 18:41-43), which could be used to argue for a narrower construction limited to these embodiments.
The Term: "second object...structurally independent from and mechanically related to the first object" (asserted in claim 1 of the ’118 Patent)
- Context and Importance: The viability of the infringement claim for the ’118 Patent depends on construing the accused support structure as this "second object."
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent's summary suggests the invention applies to fabricating "multi-part assemblies" including "bearings or gear teeth" ('118 Patent, Abstract), but the detailed description also extensively discusses the use of interface layers with support structures, suggesting supports could be considered objects in this context ('118 Patent, col. 18:27-33).
- Evidence for a Narrower Interpretation: A defendant may argue that the term "object" implies a component of the final intended product, not a piece of disposable manufacturing scaffolding. The examples of "gears" and "bearings" could be cited to support the view that the claims are directed to assemblies of two or more useful, final parts ('118 Patent, col. 2:45-50).
VI. Other Allegations
- Indirect Infringement: The complaint alleges inducement by asserting that Markforged encourages and instructs customers to use the Metal X system in an infringing manner through its advertising, website, and by offering an "end-to-end manufacturing solution" (Compl. ¶35, 49). Contributory infringement is alleged on the basis that the Metal X printer is specifically designed to perform the patented methods and is not a staple article of commerce suitable for substantial noninfringing use (Compl. ¶36, 50).
- Willful Infringement: Willfulness is alleged based on Markforged's purported knowledge of the patents since at least January 3, 2018, when Desktop Metal publicly announced their issuance. The complaint notes that Markforged subsequently exhibited the accused Metal X printer at CES and gave interviews explaining its infringing use (Compl. ¶39, 53).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: can the term "second object," used in the '118 patent's context of "multi-part assemblies," be construed to cover a temporary and disposable support structure as alleged by the Plaintiff, or is its meaning limited to a permanent, functional component of a final product?
- A key evidentiary question will be one of functional identity: does the accused product's "ceramic release layer" operate in the same way as the claimed "interface layer"? The complaint's reliance on Defendant’s own public statements that its layer "turns to dust" provides a factual basis that aligns closely with the claim limitation that the layer "reduces to a powder," presenting a focused issue for discovery and claim construction.