The Effect of University Monopoly Licensing in 3d Printing

Inkjet powder 3d printers provide a useful case study for the effects of university exclusive patent licensing.  In the early 90s, MIT researchers developed inkjet 3d printers.  They built off much of the technology platform used for selective laser sintering powder-bed printers, which had been developed at the University of Texas in the mid 1980s, with a series of patents issuing.  Here’s a brief overview.

The feed and build tables, the counter-rotating roller used for spreading the powder, and the idea of storing a control file in computer memory to control the build were all out there, available to be used.  The idea of building things out of powders in layers goes back yet earlier–to at least the work of Ross Housholder, who patented in 1981 an approach using heat to selectively bind powder deposited in layers.  Charles Hull, in the mid 1980s, developed a method (“stereolithography”) for creating objects by shining uv light on the surface of a liquid polymer, under computer control.  That ended up as patent 4575330 and Hull founded 3D Systems (which has just recently acquired Z Corporation).

In 1979, Joseph Beaman, with a doctorate from MIT, goes to the University of Texas and coins the term “solid freeform fabrication”.  The inventive work on laser sintering takes place in his lab.  The first laser sintering 3d patent is 4863538, issued to Carl Deckard and assigned to the University of Texas.  Here is the first claim:

1. A method of producing a part comprising the steps of: depositing a first portion of powder onto a target surface; scanning the aim of a directed energy beam over the target surface; sintering a first layer of the first powder portion corresponding to a first cross-sectional region of the part by operating the beam when the aim of the beam is within boundaries defined by said first cross-sectional region; depositing a second portion of powder onto the first sintered layer; scanning the aim of a directed energy beam over the first sintered layer; sintering a second layer of the second powder portion corresponding to a second cross-sectional region of the part by operating the beam when the aim of the beam is within boundaries defined by said second cross-sectional region, including the substep of–joining the first and second layers during the sintering of the second layer; and depositing successive portions of powder onto the previous sintered layers and sintering each successive portion to produce successive sintered layers joined to a previous sintered layer and a part comprising a plurality of sintered layers.

This is pretty basic.  Put down a layer of powder.  Selectively bind it with a laser.  Repeat.   To give you a feel for the amount of activity, this patent has been cited by 262 later patents.  It is an ur-patent.  Subsequent continuations-in-part filed by Texas claim the usual stuff–this method applied to producing a part, or using various sorts of materials, or using a computer to control the laser.

You can see the pattern–form an object in layers under computer control, using various methods to spread the powder, bind the powder, and add another layer.   Different sorts of powders, different apparatus for doing the binding.  Heat, radiation, fluid.  It’s pretty much covered.

The University of Texas licensed its inventions early on to a company called DTM Corporation, which was co-founded by Texas faculty.    Texas used a continuation-in-part strategy to file and issue a number of additional patents, including 5431967, which issued in 1995 and claimed a variety of nanocomposite powders and a computer-aided database, resulting in higher densities and structural strength.   DTM Corporation also continued to invent, with Carl Deckard, the first University of Texas inventor, participating in the company work.

In 1993, DTM obtained a patent (5252264) on a laser sintering method using “multi-directional powder delivery”.  This invention taught a method of distributing powder to a build table from two directions.  First a roller moved powder from a feed bin across the table and swept the excess into a bin that was also filled with powder, which then was raised by a piston and the roller swept powder back the other way when it was time to do so.   Diagrams are here.  Figures 3a and 3b clearly show that the roller sweeps excess powder into a bin or cavity.  It just happens that the cavity has powder in it.   This patent, like most of the Texas patents, has now expired.  The art is in the public domain–counter-rotating rollers to distribute powder, feed bins and build bins with pistons to control height, computer controls for the pistons and for the distribution of powder and a solid model properly set up to control where the powder in each layer is to be bound.

The big realization over at MIT in the early 1990s appears to have been that they could use an inkjet printhead to deliver a fluid to bind the powder, instead of using a laser or heat.  There will thus be a different “material system”–different powders (and mixtures), something wet (a binder or solvent–and mixtures of various sorts), and some different binding issues–how droplets drop and dry rather than how a laser aims and burns; how to deal with powder dust.  But the overall invention is a substitution of one thing for another.  Everything else is jiggery pokery improvements based on particular implementation choices.

In 1991, Michael Cima and Emanuel Sachs published a core article on “three dimensional printing”.  The article reviews the development of stereolithography (and the use of computer control to guide formation of objects) and discusses conventional powder forming processes, which involve mixing particles and a binder or liquid.   They conclude (my emphasis):

Methods to rapidly prototype functional components directly from a CAD model are now a reality. Conventional powder-processed components such as ceramics can be produced by techniques like three dimensional printing. We have demonstrated the production of shells and cores for investment casting by 3DP. Even at this early stage of development,
3DP has revealed itself as a method toroduce [sic] components that cannot be produced by conventional processing methods. There seem to be no conceptual obstacles to applying 3DP to other materials.

In 1993, Sachs and Cima, with others, repeated the claim:  “3D Printing can form any material that can be obtained as a powder–which is just about any material” (Sachs, et al., 257–behind a paywall).  MIT’s 3DP Lab advertised the breadth of material that could be used with its slogan “any geometry, any material”.   Any material was, we might say, “obvious” even at an “early stage of development.”

It’s hard to understand how Z Corp can then obtain patents filed years later on any “material systems” that don’t show something non-obvious about the compositions of the powders.  But there’s 6610429 filed in 2001 and citing a ton of prior patents that claims printing with plasters. Here’s claim 1:

1. A product of a reaction of a mixture comprising: a particulate material including plaster; an aqueous fluid; an at least partially water-soluble adhesive; and an accelerator; wherein only a portion of said plaster is reacted with at least a portion of said aqueous fluid to form an essentially solid prototype article including hydrated plaster; said article including a plurality of essentially evenly distributed layers of said reaction product.

Plaster is one of the oldest of the powders that have been formed into solids.   Essentially, this claim recites the basic recipe for 3d printing, but with the addition of a plaster and stuff to bind it and accelerate the binding–things that have been worked into plaster for a very long time.   Without something novel about the accelerator over conventional powder forming processes using accelerators, there’s nothing here that isn’t in the prior art.   All Z Corp is doing is claiming inventions composed mostly of the public domain in various combinations.   The strategy is, essentially, MIT’s 3d printing + something in the public domain = a new invention!   The ‘429 patent doesn’t recite the articles by Sachs and Cima.  Funny thing.  What we get, then, are “clever” patents–in that they cleverly deke the patent examiner–but these are not innovative inventions.

What’s the outcome of the licensing programs at Texas and MIT?  Both programs supported the start of new companies.  For proponents of the present near-ubiquitous approach to university “commercialization”, this is a totally good thing.  Texas licensed exclusively (apparently) to DTM, which was acquired by 3D Systems (which was then subject to an antitrust suit brought by the government).  MIT licensed (as they call it “co-exclusively”–essentially an exclusive field of use) to Z Corporation.  Both companies have held monopoly positions for the life of the licensed patents.  During this time, the development of 3d printing by any other organizations has been pretty much at a standstill–that means, no innovation in materials, devices, methods except when the monopoly companies feel like it.    Texas and MIT make money, their licensees have monopolies, and the practice community is entirely dependent on whatever these manufacturers decide to produce.

Z Corp, however, has taken it beyond the MIT patents, and even beyond their own patents.   The company does two things to make it difficult for anyone to develop new materials for use in 3d printing.  First, they tie the purchase of their materials to service contracts.  If you don’t use their proprietary materials, then they void the warranty and refuse to service the equipment.   If you’ve spent $15K on a new 3d printer, then it’s tough to think you will have to service it on your own if you use materials from any other supplier.  Luckily, for some of the older Z Corp products–really nicely made stuff–it is rather easy to service the printer youself.  Think lawn mower, not jet engine.

Second, Z Corp has moved to a cartridge system for materials.  This means they put their material in a cartridge with a digital chip that the printer detects.  You can’t refill the cartridge with your own materials and if you try to reprogram the chip, I expect the company hopes to argue DMCA/copyright infringement even though the chip is not protecting  copyright material (just powder).  This is akin to the issues that arose over the HP ink jet cartridges.   If the powder is in the public domain, then it can be put in a cartridge that takes it out of the public domain.  Very clever.

Z Corp thus prevents competitive third party and low cost materials from entering the market for poweder-based 3d printing–salt, sugar, gypsum, ceramic cements, wood, glass, powdered chocolate–the list is extensive.  But you won’t see it any time soon available for Z Corp printers–though you should.  There’s a similar situation for binders, where stuff like rice wine ($5/gal) and cheap vodka do fine, rather than expensive, proprietary Z Corp binders.

Low cost powders and binders/solvents are essential in 3d printing for draft design (print parts low cost until the design is finalized, then use a high end process for a finished part), for training (students need to be able to learn without racking up huge bills), for one-use foundry molds, and for large objects (which with Z Corporation powders would run quickly into the tens of thousands of dollars).   Z Corp advertises the cost of using its material systems as $2 to $3 a cubic inch.  With non-proprietary powders, such as Hydroperm, one can print at something closer to 10 cents a cubic inch.

A continuing Z Corp monopoly on 3d printing means equipment costs $15K rather than $1K, materials cost 50x more than they should, and there’s essentially no competing printer suppliers, no mixed mode printing (can’t print with ink-jet and laser modalities), no mixed material printing (since Z Corp hasn’t got around to it), no competition, no alternatives.   Twenty years after the development of 3d printing, university monopoly licensing has created an impossible position for practice, limited the development of 3d printing, and jacked the costs out of reach of most practitioners.

Even if the price came down on Z Corp powders and binders, they would not be the ideal combination for a lot of powder-based 3d printing.  Now with Z Corp using intellectual property strategies to extend their monopoly position, there’s virtually no prospect of innovation in the US outside of the Z Corp paywall.  If it’s not anti-competitive behavior, it is certainly anti-innovation.   But this, for university licensing offices, is sweet success.  This is what all those AUTM stats are about:  startups and income from monopoly positions, held for as long as possible–who cares what happens later.  At one time Stanford had a policy that it would not grant an exclusive license for more than eight years.  That makes a lot of sense for universities, as it allows others to enter the market before a monopolist can establish a huge patent thicket that keeps everyone out–everyone gets patents, everyone has a motivation to cross-license or develop standards for interoperability, and the practitioner and consumer get products at competitive prices, with choices, with innovation.

In inkjet 3d printing, we’ve had 20 years of monopoly.  Now we have a once-innovative company aggressively extending its monopoly by tying servicing of its products to the purchase of company proprietary materials when almost any material would work, and designing new machines so that one has to use proprietary cartridge systems even with powders that would be otherwise in the public domain and available from many sources.  Their purpose in inventing is to cleverly extend their monopoly, not to meet new practice needs.

If you are handy with arduino boards and design, you can make an inkjet powderbed 3d printer at home in a few weeks using many of the same components and strategies used for reprap printers.   It might cost a few hundred in materials.  Once the designs are published, most anyone could do it in a weekend.  You can print in sugar or salt or wood–stuff Z Corp won’t sell to you.   Even though the original MIT patents have expired, and even though the MIT inventors argued that pretty much any powder would work, it appears that decades later in the US, we are still not going to be given the chance to do this.  Z Corp has patents that they assert to prevent anyone from doing so.  They send nastygrams if you publish recipes for powders or binders or make 3d printers based on the Texas and MIT literature.   How long until we have competition in inkjet 3d printing?

What are the practice lessons for universities from this study example?

1.  Limit exclusive licenses for commercial sale to a few years.

2.  Reserve rights immediately for practice as well as research–if someone can build it themselves, then they should be able to use it without interference.

3.  Grant research and practice rights immediately under a general license, without the need for anyone to negotiate or sign anything.

4.  Contribute IP to open standards.

5.  Limit long-term exclusive positions to “non-essential” claims–stuff that doesn’t affect the core practice of the new, university-developed technology.

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