Formlabs Inc v. DWS SRL

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Formlabs, Inc. (Delaware)
  • Defendant: DWS SRL. (Italy)
  • Plaintiff’s Counsel: Redmon, Peyton & Braswell, LLP; Wolf, Greenfield & Sacks, P.C.
• Case Identification: 1:18-cv-00810, E.D. Va., 06/29/2018
• Venue Allegations: Plaintiff alleges venue is proper because Defendant is a foreign corporation and patentee not residing in the United States, subjecting it to personal jurisdiction and venue in the district under 35 U.S.C. § 293.
• Core Dispute: Plaintiff seeks a declaratory judgment that its Form 2 3D printers do not infringe Defendant’s patent related to temperature control systems for stereolithography machines.
• Technical Context: The technology concerns stereolithography (SLA) 3D printing, which uses light to selectively solidify layers of a liquid photopolymer resin to build an object.
• Key Procedural History: The complaint asserts that an actual controversy exists based on a pattern of litigation initiated by Defendant DWS in Italy, Germany, and Turkey. These foreign lawsuits accuse Plaintiff's Form 2 printer of infringing foreign patents that are alleged to be "virtually identical" to the U.S. patent-in-suit. This U.S. action appears to be a preemptive suit by Formlabs to obtain a declaration of non-infringement.

Case Timeline

Date	Event
2009-08-03	Priority Date for ’456 Patent
2015-02-03	Issue Date for U.S. Patent No. 8,945,456
2017-01-04	DWS files lawsuit in Italy against Formlabs
2017-08-22	DWS files lawsuit in Germany against Formlabs GmbH
2017-12-18	DWS files lawsuit in Turkey against Formlabs
2018-06-29	Complaint for Declaratory Judgment filed

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

• Patent Identification: U.S. Patent No. 8,945,456, "Stereolithography Machine," issued February 3, 2015 (the “’456 Patent”).

The Invention Explained

• Problem Addressed: The patent describes a drawback in conventional stereolithography machines when using "hybrid" resins, which contain multiple components (e.g., plastic mixed with ceramics or wax) ('456 Patent, col. 1:35-39). In such machines, the different components can separate and form "agglomerates," which prevents correct solidification and degrades the quality of the final printed object ('456 Patent, col. 1:57-61).
• The Patented Solution: The invention proposes to solve this separation problem by actively managing the temperature of the resin ('456 Patent, col. 1:61-64). The machine includes a "temperature control unit" that maintains the support plate, on which the resin container sits, at a predetermined temperature. Heat is conducted from the support plate to the container and the resin, keeping the resin mixture homogeneous and ensuring "optimal solidification" ('456 Patent, col. 2:55-63; Fig. 2).
• Technical Importance: This method of temperature control is presented as enabling the effective use of advanced hybrid resins, thereby expanding the material properties and types of objects that can be created with stereolithography ('456 Patent, col. 1:47-53).

Key Claims at a Glance

• The complaint identifies independent claims 1 (apparatus) and 11 (method) as being at the center of the controversy (Compl. ¶¶32-33).
• Independent Claim 1 (Apparatus): A stereolithography machine comprising:
  • a container suited to contain a fluid substance, said container having a transparent bottom;
  • a support plate provided with a hole, designed to house the container so the transparent bottom faces the hole;
  • a radiation source arranged below the support plate to convey a radiation beam towards the transparent bottom through the hole; and
  • a temperature control unit suited to maintain the support plate at a predetermined temperature, wherein the support plate in turn maintains the container and fluid substance at that temperature.
• Independent Claim 11 (Method): A stereolithography method comprising the operations of:
  • preparing a fluid substance (a mixture of components that tend to separate at room temperature) suited to solidify when exposed to radiation;
  • preparing and filling a container with a transparent bottom;
  • housing the container in a support plate with a hole;
  • conveying a radiation beam through the hole to the fluid; and
  • using a temperature control unit to heat the support plate to a predetermined temperature, which in turn heats the container and fluid to prevent the separation of components.
• The complaint notes that the dependent claims of the ’456 patent are also in controversy (Compl. ¶¶32-33).

III. The Accused Instrumentality

Product Identification

• The Plaintiff’s "Form 2" 3D printer (Compl. ¶8).

Functionality and Market Context

• The Form 2 is described as a stereolithography ("SLA") 3D printer that creates three-dimensional objects by using a laser to harden layers of a photopolymer resin (Compl. ¶8). The complaint presents a photograph of the Form 2 printer holding a completed object (Compl. ¶9). It is alleged to be a well-known product that allows for rapid prototyping and manufacturing and has been recognized as the "BEST SLA Printer" by Make: magazine (Compl. ¶¶8-9).

IV. Analysis of Infringement Allegations

The complaint, being an action for declaratory judgment of non-infringement, does not contain a traditional claim chart mapping patent claims to the accused product. Instead, it presents a narrative theory of non-infringement.

Formlabs alleges that its Form 2 printer does not infringe the ’456 Patent because it does not satisfy the limitations related to the "temperature control unit" in either of the independent claims (Compl. ¶¶31-33). For apparatus claim 1, the complaint asserts that the Form 2 does not have "a temperature control unit suited to maintain said support plate at a predetermined temperature wherein said support plate at said predetermined temperature maintains said container and said fluid substance at said predetermined temperature" (Compl. ¶32). Similarly, for method claim 11, the complaint asserts that the Form 2 does not perform the required step where a "temperature control unit heating said support plate to a predetermined temperature... heat[s] said container and said fluid substance, to said predetermined temperature" (Compl. ¶33). The complaint does not provide specific technical details about the Form 2's actual operation to support these conclusory statements of non-infringement.

• Identified Points of Contention:
  • Technical Questions: A central factual question will be whether the Form 2 printer includes any hardware or software that performs the function of maintaining the resin container or its support structure at a specific, predetermined temperature to ensure resin homogeneity. The complaint provides no technical evidence regarding how, or if, the Form 2 manages thermal conditions during operation.
  • Scope Questions: The dispute raises the question of how broadly the claims can be interpreted. Does the term "temperature control unit" require a dedicated, active heating system as shown in the patent's embodiments, or could it be read to cover more general thermal management systems that might be present in the Form 2?

V. Key Claim Terms for Construction

• The Term: "temperature control unit" (claims 1, 11)
• Context and Importance: This term appears to be the crux of the non-infringement argument presented in the complaint (Compl. ¶¶32-33). The determination of whether the Form 2 infringes will likely depend on whether any of its components fall within the court's construction of this term.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The patent describes the unit functionally as being "suited to maintain the support plate 2 at a predetermined temperature" ('456 Patent, col. 2:55-58) and being configurable "to maintain the plate 2 at any temperature chosen within a predefined interval" ('456 Patent, col. 2:63-66). A party could argue this functional language supports a construction that covers any component or system capable of achieving the specified temperature maintenance, regardless of its specific structure.
  • Evidence for a Narrower Interpretation: The specification discloses specific embodiments of the unit, such as one comprising "one pair of heating elements 6, thermally coupled with said support plate 2" ('456 Patent, col. 3:3-5), a "temperature sensor 7" (col. 3:13-14), and "electric resistors 6a" housed within a "recess 14" of the plate (col. 3:25-33; Fig. 4). A party could argue these specific disclosures limit the term to an active heating-and-sensing system directly integrated with the support plate.

VI. Other Allegations

• Indirect Infringement: The complaint includes a general denial of any induced or contributory infringement of the ’456 Patent (Compl. ¶31). No specific facts related to this denial are provided.
• Willful Infringement: This allegation is not applicable, as the complaint is a declaratory judgment action for non-infringement brought by the accused infringer.

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

This declaratory judgment action appears to center on the following pivotal questions:

1. Jurisdictional Prerequisite: A threshold issue for the court will be whether the series of infringement lawsuits filed by DWS in foreign jurisdictions on related foreign patents creates a sufficient "actual, substantial, and continuing justiciable controversy" to support federal court jurisdiction over this declaratory judgment action for the U.S. patent (Compl. ¶4, ¶28).

2. Factual Infringement: The core technical question is one of fact: does the Formlabs Form 2 printer practice the specific temperature control method and apparatus claimed in the ’456 Patent? The outcome will depend on evidence, to be developed in discovery, regarding the thermal management systems and operational characteristics of the Form 2 printer.

3. Claim Construction: The case will likely turn on a question of definitional scope: how will the court construe the term "temperature control unit"? Whether this term is interpreted broadly to cover any form of thermal regulation or narrowly to require the specific active heating-and-sensing structures disclosed in the patent will be critical to the ultimate finding of infringement or non-infringement.