MARSHALL, Texas (CN) – Two researchers have a standing to go after the companies that they say infringe on their patents for diamond-like coatings, a federal judge ruled, rejecting claims that the technology belongs to the government because of contracts to study gamma-ray lasers under the Star Wars project of the 1980s.
Former University of Texas at Dallas professor Carl Collins and his former UTD colleague, research scientist Farzin Davanloo, filed a federal patent complaint against 17 companies, including giants like Hitachi and Toshiba. They say the companies sell computer hard drives that incorporate the nanophase diamond-film technology they invented at UTD in the 1990s.
The scientists describe the film as a diamond-like coating. “The extreme hardness and optical transparency of diamond-like material makes it an ideal coating for a number of products, particularly those products that endure a great deal of friction and are required to maintain smooth, abrasion-resistant surfaces,” the researchers say.
“The ‘nanophase diamond films’ developed by plaintiffs in their lab possessed extremely desirable properties, including physical hardness, low electrical conductivity, high thermal conductivity, and optical transparency,” according to the complaint.
Three Hitachi defendants and Western Digital Technologies filed a motion to dismiss for lack of standing.
U.S. District Judge T. John Ward denied the motion in a 13-page order.
Ward’s order explains that the inventors’ patents previously belonged to the Board of Regents of the University of Texas System, but that Collins and Davanloo received the rights to the patents in 2001.
Because the 2001 release did not give the inventors the right to sue for patent infringement, the university system transferred that right via a quit-claim assignment in 2003. But Hitachi and Western Digital claimed that such assignment violated the Business Patent Procedures Act of 1980 since UTD received grants from the Naval Research Lab.
Also known as the Bayh-Dole Act, this federal law “requires title to inventions flowing from government-funded research to remain with the government in certain circumstances,” Ward explained.
It also “prohibits nonprofit organizations – such as the UT system – from assigning the rights to an invention developed as a result of a government research contract without the approval of the funding agency.”
UTD had contracted with the Navy to study gamma ray lasers under the so-called Star Wars funding initiative, but Ward concluded that the diamond-film technology was part of a separate initiative.
“Plaintiffs have provided abundant evidence that the patented nanophase diamond films claimed in the patents-in-suit were developed as part of a separate, privately funded research project from the gamma ray laser project funded by the Navy and that the patented nanophase diamond films have substantially different characteristics from the 1988 DLC [diamond-like carbon] Films disclosed to the Navy during the gamma ray laser project,” Ward wrote.
Ward turned down Dr. Suhas Wagal’s motion to intervene in a separate order. Wagal argued that helped Collins conceive the technology for a previous patent at UTD, leading to the two patents at issue in Collins and Davanloo’s complaint.
Collins and Davanloo countered that Wagal was in India when they invented the actual patented technology involved in their complaint.
Ward found that Wagal waited far too long to make his case, and the judge threw out his motion, saying it was barred by laches.