The Patent Trial & Appeal Board (PTAB) of the US Patent and Trademark Office (USPTO) has ruled in favour of Continuous Composites by denying six out of seven petitions filed by Markforged for Inter Partes Review (IPR) challenging the validity of claims of its foundational patents involved in their ongoing patent infringement lawsuit.
Continuous Composites first filed its lawsuit against Markforged in July 2021, with Markforged calling for a trial by jury to resolve the dispute in 2022, suggesting the technology described in Continuous Composites' patents was 'unpatentable'.
In September of 2022, the USPTO concluded that 'based on the arguments in the Petition and the Preliminary Response, and the evidence of record, we determine that Petitioner (Markforged) has not established a reasonable likelihood that it would prevail on its challenge that claims 1-15 and 17-41 of the '543 patent are unpatentable.' Thus, it has ordered that 'the Petition is denied and no trial is instituted.'
The initial lawsuit filed by Continuous Composites alleged the infringement of four of its foundational patents – though in its latest public communication regarding the lawsuit, published on February 10, 2023, Continuous Composites claims five of its foundational patents have been infringed upon. These patents are said to be part of a family of up to 11 patents (nine granted and two pending at the time of the initial filing), the first of which had been filed before Markforged started operating as a business in 2013. In its latest press release addressing the matter, Continuous Composites says two additional foundational patents and an allowance on another foundational application – all of which are said to have a 2012 priority date – have been granted.
The IP at the centre of the lawsuit relates to ‘a method and apparatus for the additive manufacturing of three-dimensional objects’ in which ‘two or more materials are extruded simultaneously as a composite, with at least one material in liquid form and at least one material in a solid continuous strand completely encased within the liquid material.’ Patents (including 9,511,543, 9,987,798, 10,744,708 and 10,759,109) filed by Continuous Composites also describe ‘a means of curing the liquid material after the extrusion hardens the composite’ and states ‘a part is constructed using a series of extruded composite paths.’ It is also said that ‘the strand material within the composite contains specific chemical, mechanical or electrical characteristics that instil the object with enhanced capabilities not possible with only one material.’
Last year, Markforged countered Continuous Composites’ lawsuit with seven petitions for IPR, requesting cancelation of Continuous Composites’ asserted patent claims. PTAB has recently ruled in favour of Continuous Composites in six of the cases by denying institution of the IPRs. Markforged had previously filed a motion to dismiss the claims made by Continuous Composites, though a hearing held in February 2022 resulted in the judge denying the motion.
In Continuous Composites’ original filing, it claimed that the allegedly infringed patents are ‘critical to the functionality of Markforged’s continuous fibre printers’, which would include the Mark Two, Onyx Pro, X5, X7 and the FX20 products. Continuous Composites was therefore seeking ‘remedies in the form of monetary damages for past infringement’ and ‘injunctive relief prohibiting Markforged from continuing to use the intellectual property protected by Continuous Composites patents.’
Markforged, however, insisted in its counter actions that its continuous fibre technology differs from the patented processes and only cross over on ‘unpatentable ideas.’
Continuous Composites is said to be pleased with this latest USPTO ruling, while Markforged has declined to comment as legal proceedings continue.
Markforged was previously entangled in a patent infringement lawsuit with Desktop Metal, with the company cleared in July 2018. It later sued Desktop Metal for breach of contract & unfair and deceptive acts.
