Dispute Details
Primary Issues Encountered
The core legal issue for the University was the value of the patents, both perceived and actual. The University of Pittsburgh asked the court for ownership of the PET/CT patents so they could license an emerging technology and gain millions of dollars in royalty revenue.
The inventors, Townsend and Nutt, both technical and scientific experts in this field, understood that the patents' actual value was zero. This is further evidenced by the fact that though Siemens owns the first patent (the Townsend/Nutt patent), they have never litigated with GE or Philips over production of a similar device.
Who then, would pay to license a patent on a technology already in practice? No one.
This is a case that illustrates the difficulties encountered when a technology transfer office is dealing with a complex technology and does not engage the inventor in the patent and licensing process to facilitate understanding of the intricacies of marketplace opportunities. If Pitt had reviewed Townsend's conflict of interest disclosures thoroughly and communicated any concerns from the outset, this costly lawsuit may have been avoided.
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