Take for example, Dr. David Townsend who had been collaborating for years with Dr. Ronald Nutt on a new technology that combined the PET (positron emitting tomography) and CT (computerized axial tomography) scanners into one device, which would become a superior tool in the fight against cancer. In 2000, Time Magazine selected the combined PET/CT scanner as its Medical Invention of the Year.
Nine years earlier, in 1991, the two inventors had what became known as their "epiphany in the Alps" in Geneva, Switzerland when they first conceived the device. While Townsend was on faculty at the University of Geneva, he and electrical engineer Ronald Nutt initially began exploring the idea of mating PET and CT with the goal of vastly improving imagery technology for doctors, particularly those looking for tumors in cancer patients.
Shortly after their epiphany, the University of Pittsburgh hired Dr. Townsend away from the University of Geneva to run the physics and instrumentation program of their PET facility. But after a decade of loyal service, the university turned on him, dragging Dr. Townsend and Dr. Nutt into court on a host of charges including fraud, conspiracy, breach of contract, conversion and unjust enrichment.
Townsend reflected on the four-year legal odyssey he endured between 2003 and 2007, saying, "A bunch of university lawyers sat together and said we have a case here, he screwed the university and let's put together a suit that accuses him of everything short of murder."
So what were the events that led to this dramatic parting of ways and this ensuing legal battle? Had the inventors actually deceived the University of Pittsburgh (Pitt), or was it simply a belated chase after millions in royalty revenue to cover up sloppy work by Pitt's Office of Technology Management (OTM)? No matter what the reason was, the inventors found themselves mired in prolonged litigation that unfairly tarnished their reputations and weighed heavily on their professional lives. As Scott G. Hamilton, a patent attorney at Columbia University told author Daniel Greenberg for his book Science for Sale, "All big winners end up in litigation."
Long before relocating to Pitt, Townsend had signed a consulting agreement with Nutt's Knoxville based company, CTI, and they continued collaborating on the combined PET/CT device as well as other PET related projects. It was revealed in court that although Pitt knew Dr. Townsend had an existing consulting agreement with CTI, in the decade that he both worked at Pitt and collaborated with CTI on their PET projects, the university never once asked to review the agreement or request any information from him about it.
Moreover, Townsend followed university policy by listing his consultancy each year on a required annual Conflict of Interest document, yet Pitt argued later that this information was kept from them. Pitt never produced many of these university disclosure forms during the litigation even though they were in the historical record.
Perhaps Pitt underestimated the potential for the PET/CT device or was just careless in their recordkeeping. The inventors themselves had no idea of the prospective commercial value either. Despite the diagnostic possibilities of the combined PET/CT device, Dr. Townsend told IPAO in a recent interview, "Our perception was that the combined scanner wouldn't be a huge success because PET wasn't reimbursed and making it more expensive by adding CT to it wasn't going to help it be more successful."
However, once Townsend and Nutt were able to demonstrate that they could perform the combined PET/CT scan faster and better, and insurance companies began covering PET scans, the project suddenly seemed viable. Shortly thereafter, Siemens launched a joint venture with CTI, called CTI PET Systems (CPS), to build the prototype. The concept was so viable in fact, that leading manufacturers G.E. and Philips began developing versions of a combined scanner as well.
All of these developments were public in nature and Townsend kept the university informed about his consulting efforts with CTI and the newly formed CPS. As required by university policy, Dr. Townsend submitted an Invention Disclosure Document for the PET/CT scanner in 1999 and listed CTI as an interested party. Although the form requested he do so, Dr. Townsend did not assign his interest in the work to the university because it had already been assigned to CTI.
In October of 2000, CTI PET Systems (CPS) applied for a patent on the device concept, and Pitt was not only informed, but was also provided a copy of the application. Pitt never challenged their own Invention Disclosure Document, never asked for a modification of it, and never pursued the issue. In 2002, Townsend gave a similar form to the university wherein he noted again that he was the inventor of a new technology and that an "application had been filed for a patent on the PET/CT scanner" and that the "patent application was filed by CPS."
In May 2001, G.E. launched the first PET/CT scanner, called the Discovery PET/CT. Siemens followed in August of 2001 with the introduction of their Biograph system. When these manufacturers went to market with their devices, the Townsend-Nutt patent had not yet been approved. By the time Townsend and Nutt's patent application was approved in late 2003, even technology giant Philips had also entered the market with their own PET/CT device.