DCT

1:19-cv-00334

Postprocess Tech Inc v. Joseph M McMahon

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:19-cv-00334, W.D.N.Y., 03/13/2019
  • Venue Allegations: Venue is alleged to be proper as Defendants reside in the judicial district and/or a substantial part of the events giving rise to the claims occurred there.
  • Core Dispute: Plaintiff seeks a declaratory judgment of non-infringement and invalidity of a patent assigned to Defendant, alleging the patent covers technology invented by Plaintiff's founder and was procured through fraud and improper inventorship.
  • Technical Context: The technology relates to automated machinery for post-processing three-dimensionally printed parts by removing residual support material.
  • Key Procedural History: The complaint alleges a complex history where Plaintiff's founder, Daniel Hutchinson, engaged Defendant AMC as a potential contract manufacturer for his post-processing technologies. Plaintiff alleges that AMC then secretly filed patent applications on Hutchinson's inventions, named its own employees as inventors, and fraudulently obtained an assignment from Hutchinson. The complaint notes that Defendant sent Plaintiff a "settlement demand" and a statutory "notice" letter under 35 U.S.C. § 154(d) regarding the patent-in-suit, creating the basis for this declaratory judgment action.

Case Timeline

Date Event
2014-00-00 Inventor Hutchinson begins interacting with AMC (late 2014)
2015-06-16 AMC files provisional application ('476 application)
2016-04-01 Inventor Hutchinson assigns IP rights to Plaintiff's predecessor
2016-06-16 Parties execute agreement; Hutchinson allegedly signs fraudulent assignment
2018-02-21 AMC makes "settlement demand" to Plaintiff
2018-10-30 U.S. Patent No. 10,112,344 issues
2019-03-13 Complaint filed

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 10,112,344 - "Machine for removing substrate material, for washing, and for drying parts produced by a 3-D printer," issued October 30, 2018

The Invention Explained

  • Problem Addressed: The patent's background section notes that parts produced by a 3-D printer may have scaffolding or substrate material attached after the printing process is complete, which requires a finishing process to remove. (’344 Patent, col. 1:24-28).
  • The Patented Solution: The invention is a machine for processing these 3-D printed parts. It features a housing with a working chamber, a support structure (e.g., an open lattice) to hold the part, and a spray header. (’344 Patent, col. 1:35-42). A pump conveys washing and rinsing fluids at varying pressures through the spray header, which is disposed along the perimeter of the chamber to spray the part from multiple directions. (’344 Patent, col. 1:42-48). The fluid then contacts the part, removes the substrate, and drains through the support structure into a sump below. (’344 Patent, col. 1:45-48).
  • Technical Importance: The invention provides an automated, contained system for the cleaning and finishing of 3-D printed objects, a crucial but often manual step in the additive manufacturing workflow. (Compl. ¶¶ 7-8).

Key Claims at a Glance

  • The complaint seeks a declaration of non-liability for the '344 patent generally, without specifying claims. (Compl. ¶58). The analysis focuses on the broadest independent claim, Claim 1.
  • Independent Claim 1 Elements:
    • A machine for processing a part produced by a 3-D printer, the part having a substrate.
    • A housing with a working chamber.
    • A support structure at the bottom of the chamber for supporting the part, with at least one opening.
    • A spray header along at least a portion of the chamber's perimeter.
    • A pump to convey a washing fluid and a rinsing fluid at varying pressures through the spray header, where the washing fluid has chemical properties suitable for dissolving at least a portion of the substrate.
    • A heater for warming the washing and/or rinsing fluid.
    • Wherein fluid contacts the part, passes through the support structure opening, and flows to a fluid outlet.
    • Wherein the spray header comprises an assembly of vertical and horizontal tubes with apertures.
  • The complaint does not mention any dependent claims.

III. The Accused Instrumentality

Product Identification

As this is a declaratory judgment action, the "accused instrumentalities" are the Plaintiff's (PostProcess Technologies, or PPT) own products, which Defendant (AMC) has allegedly threatened to sue over. (Compl. ¶¶ 53, 56). These products are based on two core technologies developed by PPT's founder: "Volumetric Velocity Dispersion" (VVD) and "Submersed Vortex Cavitation" (SVC). (Compl. ¶10).

Functionality and Market Context

  • VVD Technology: This technology is described as using "a collection of computer-controlled nozzles spraying particular chemicals, under highly controlled temperature and pressure conditions, at 3D printed parts to remove unneeded support material." (Compl. ¶11). PPT sells machines that incorporate this VVD technology. (Compl. ¶11).
  • SVC Technology: This technology is described as using "precisely controlled temperatures and flows of particular chemicals, as well as a uniquely placed ultrasound transducer, to submerge, rotate and agitate a 3D printed part to remove unneeded support material." (Compl. ¶12). PPT also sells machines that incorporate this SVC technology. (Compl. ¶12).
  • The complaint positions PPT as an "award winning Buffalo, New York startup company" in the business of inventing and selling equipment for post-processing 3D printed parts. (Compl. ¶7).

IV. Analysis of Infringement Allegations

The complaint seeks a declaratory judgment of non-infringement and invalidity; therefore, this section summarizes the Plaintiff's (PPT's) arguments against liability rather than alleging infringement by the Defendant. The complaint does not include a claim chart. No probative visual evidence provided in complaint.

Summary of Non-Infringement and Invalidity Allegations

  • Non-Infringement Theory (Based on Ownership/License): PPT's primary argument for non-liability is not based on a technical mismatch between its products and the patent's claims. Instead, PPT argues that it cannot be liable for infringement because it is the rightful owner of the invention, or at a minimum, possesses a license to practice it. (Compl. ¶58). This argument rests on the allegation that PPT's founder, Mr. Hutchinson, was the true inventor and assigned his rights to PPT's predecessor before he was allegedly fraudulently induced to sign an assignment to AMC. (Compl. ¶¶ 21, 58). Alternatively, PPT claims its predecessor possessed an "automatic shop right" to practice the invention, which constitutes a nonexclusive license and is a complete defense to infringement. (Compl. ¶58).
  • Invalidity Theory (Based on Inventorship): PPT alleges that the '344 patent is invalid and unenforceable due to "misjoinder of inventorship." (Compl. ¶59). The complaint asserts that Mr. Hutchinson was the sole inventor of the novel aspects of the claimed technology and that any contribution from AMC personnel was already embodied in a "publicly used cage and bottle cleaner." (Compl. ¶59). Under 35 U.S.C. § 102(a)(1), patenting subject matter that was in public use more than one year before the effective filing date is prohibited. The complaint alleges the '344 patent incorrectly names AMC employees as inventors and that, until inventorship is corrected to name Mr. Hutchinson as the sole inventor, the patent is invalid. (Compl. ¶59).

Identified Points of Contention

  • Ownership and Fraud: The central dispute is not technical, but transactional and equitable. The key question for the court will be to determine the rightful owner of the '344 patent. This involves adjudicating the allegations of fraud surrounding the June 16, 2016 assignment document. (Compl. ¶¶ 36-38).
  • Inventorship: A core factual question is: Who actually conceived of the claimed invention? The case will likely require a detailed factual inquiry into the respective contributions of Mr. Hutchinson and the named AMC inventors to determine if inventorship is correct as listed on the patent or if, as PPT alleges, Mr. Hutchinson was the sole inventor. (Compl. ¶¶ 24, 59).
  • Shop Rights: A secondary legal question is whether, based on the relationship and resources used, PPT's predecessor acquired a "shop right," which would provide a royalty-free, non-exclusive license to practice the invention even if AMC were determined to be a legitimate owner. (Compl. ¶58).

V. Key Claim Terms for Construction

While the core of the complaint revolves around ownership and inventorship, the construction of certain claim terms could become relevant if the dispute proceeds to a technical infringement analysis.

The Term: "washing fluid has chemical properties suitable for dissolving at least a portion of the substrate" (Claim 1)

Context and Importance

This term defines the nature of the "washing fluid." The scope of "dissolving" could be a point of contention. Practitioners may focus on this term because whether a fluid "dissolves" a material can be a complex chemical and physical question, potentially distinguishing the claimed invention from processes that use purely mechanical abrasion or water jets.

Intrinsic Evidence for Interpretation

  • Evidence for a Broader Interpretation: The specification describes the washing fluid as potentially comprising a "mixture of water and chemicals with different ph values, cleaning solution, or the like depending on the material that the part is manufactured from." (’344 Patent, col. 4:40-43). This language suggests a broad of possible agents, not limited to a specific chemical reaction.
  • Evidence for a Narrower Interpretation: The claim's use of the active term "dissolving" might be argued to imply a specific chemical action of solvency, as opposed to a process where a fluid merely assists in the mechanical breaking and washing away of support material.

The Term: "spray header disposed along at least a portion of the perimeter of the working chamber" (Claim 1)

Context and Importance

This term defines the location and configuration of the spray apparatus. The definition of "perimeter" and "along at least a portion" will determine the required geometric arrangement of the spray nozzles.

Intrinsic Evidence for Interpretation

  • Evidence for a Broader Interpretation: The phrase "at least a portion" explicitly suggests that the spray header does not need to fully encircle the chamber. This supports a construction covering a wide variety of nozzle placements.
  • Evidence for a Narrower Interpretation: The specification shows figures where the spray header appears to form a "generally rectangular structure" that frames the chamber. (’344 Patent, Fig. 4; col. 4:28). An argument could be made that "perimeter" implies the outer boundary, and the invention is distinguished from systems with, for example, a single, centralized spray arm.

VI. Other Allegations

The complaint contains multiple counts beyond the declaratory judgment of non-infringement, which are central to the overall dispute:

Breach of Contract

PPT alleges that AMC breached the June 16, 2016 agreement by filing patent applications on technology disclosed by PPT and by claiming ownership of that IP, which was to remain the property of the "disclosing party" (PPT). (Compl. ¶¶ 63-64).

Fraud

PPT alleges that AMC and its principals fraudulently induced Mr. Hutchinson to attend a meeting and sign a patent assignment under the false pretext that he was merely signing documents to be added as an inventor, which was necessary to confirm PPT's ownership. (Compl. ¶¶ 36, 70).

Trade Secret Misappropriation

PPT alleges that its concepts for improving 3D printing post-processing were trade secrets and that AMC misappropriated them by filing patent applications on them in breach of a confidential relationship. (Compl. ¶¶ 95-98).

Other State Law Claims

The complaint also includes counts for unjust enrichment, conversion, and constructive trust, all based on the same alleged scheme to wrongfully take ownership of PPT's intellectual property. (Compl. ¶¶ 75-93).

VII. Analyst’s Conclusion: Key Questions for the Case

This case appears to be less a standard patent infringement dispute and more a multifaceted intellectual property ownership battle. The central questions for the court are likely to be:

  1. A core issue will be one of inventorship and ownership: Who is the rightful inventor of the technology claimed in the '344 patent? This factual determination is a prerequisite to resolving ownership and will likely decide the outcome of the fraud, conversion, and breach of contract claims, as well as the request to correct inventorship.

  2. A key transactional question will be the validity of the assignment: Was the patent assignment signed by Mr. Hutchinson on June 16, 2016, the product of fraud, as alleged? The enforceability of this document is critical to determining whether AMC has any legitimate claim to the patent.

  3. A pivotal legal question will be the existence of equitable rights: Even if AMC can establish some claim to the patent, did its course of conduct and its relationship with PPT's founder give rise to a "shop right" or other license, which would serve as a complete defense to the threatened infringement action and resolve the declaratory judgment claim in PPT's favor?