In court, Pitt asserted they were unaware of the status of the innovation, yet the technology transfer office had received both an invention disclosure form and copies of the patent application. Pitt IP policies indicate that the university should have initiated the patent application themselves, but the process was left entirely in the hands of CTI PET Systems.
Townsend said, "They could have come to me at any point and asked me about this. They never did that. They put everything in a filing cabinet and forgot about it, until they figured out that they had missed a chance to make money. That's when they called in the lawyers."
If Pittâ€™s OTM had exercised due diligence, it would have been an easy task to confirm the patent application process with either CTI PET Systems, their faculty scientist or the U.S. Patent Officeâ€™s website.
After news of the sales of the device broke, Pitt began demanding Townsend assign them rights in the patent. "They got angry during 2003", Townsend said. Pitt and its legal counsel met with the inventors in January 2004 to discuss the issue and the inventors left optimistic that a resolution was on the horizon. But university attorneys filed a lawsuit the day after the meeting, indicating that the legal groundwork had been long prepared.
Townsend later came to believe that the university went into the meeting with no intention of working toward a resolution. "When I read the first filing about conspiracy and fiduciary responsibilities and all the rest of it, to say I was scared would have been an understatement. I mean we were being accused of conspiring to defraud the University of Pittsburgh. It was all nonsense, but the way it was couched in legal terms, it scared me to death. They just throw everything at you and see what sticks. In the end, nothing stuck", Townsend said.
Pittâ€™s lawsuit against the inventors was multi-fold. One argument Pitt forwarded was that Townsend's employment automatically granted the university rights in his research. Another claim by Pitt was that the university had "collaborated" with Townsend and that entitled them to a share in his work.
Townsend readily defended himself against both of these charges in a memorandum filed in the case that read, "Pitt's primary contention is that solely by virtue of being a professor at Pitt, Dr. Townsend either assigned or was obligated to assign all of his interests in any of his intellectual property rights to Pitt. Such a position is contrary to well established law."
He went on to say, "While Pitt trumpets the 'collaboration' in its Amended Complaint, it has not explained during two years of litigation precisely...what contributions it contends were made to the development of the PET/CT scanner at Pitt or what obligations existed between the parties."
Pitt also alleged that the faculty handbook containing the University Policy on Patents put Townsend on notice that the "university claims ownership and control of the worldwide patent rights that result from activities of its faculty, staff and students." However, though the handbook was given to Townsend, he was never asked to sign it or agree to the policies contained within.
Further, the handbook itself contains a disclaimer that the language in the handbook was "...not to be considered or otherwise relied upon as legal terms and conditions of employment and, the language used in this Handbook is not intended to create a contract between the University of Pittsburgh and its employees."
Dr. Townsend was unsure exactly what forces within the university motivated the lawsuit, saying "I don't know who was driving it from the Pitt side... Nobody outside of the legal department ever talked to me. Nobody's name ever came up, outside the legal department, that was driving it. It developed a life of its own within the legal department."