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Hitachi, Toshiba and a host of other manufacturing giants are mobilizing their defenses against a coatings patent infringement lawsuit, now that a federal judge has allowed the suit to go forward.
Former University of Texas at Dallas colleagues Carl B. Collins and Farzin Davanloo filed suit in U.S. District Court in July 2007, claiming that the dozen-plus companies are using a “diamond-like coating” that the researchers invented in the early 1990s.
The researchers developed the patented nanophase diamond film while at UTD. Under their contracts, the university owned the patent, but the school released those rights to Collins and Davanloo in 2001.
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Drac2000 / Wikimedia Commons |
Diamond-like carbon coatings (like that shown on the right side of this valve part) have become popular in many industries, including the oil and gas sector.
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That initial release did not include the right to sue for past, present and future infringement. In 2003, however, the university drafted an additional agreement, specifically granting the inventors those rights. That eventually cleared the way for the current lawsuit.
Diamond Coatings
Diamond-like coatings have become “standard in a variety of industries, including the electronics industry,” the researchers note in their complaint. “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.”
That was not the case in the early 1990s, when Collins and Davanloo were doing their research, they say. In fact, the researchers say, they coined the term “nanophase diamond” when inventing their coating, which featured “extremely desirable properties, including physical hardness, low electrical conductivity, high thermal conductivity, and optical transparency.”
The scientists say their films were “unique inventions with the potential to be valuable additions to a number of commercial products.”
Patents Challenged
The manufacturers have been attempting to block the suit.
Most recently, they argued in a Motion to Dismiss that the coating technology had been developed as a result of a grant from the Naval Research Lab and was thus a “government-funded invention”—barred from transfer under the Bayh-Dole Act without the approval of the funding agency.
The university had contracted with the Navy to investigate gamma ray lasers under the “Star Wars” funding initiative.
The researchers said that they investigated the use of “diamond-like carbon” (DLC) films then in use for the gamma ray laser research but disbanded that effort about 1988. They then embarked on a new line of research solely funded by the university and private sponsors. Their patented coatings, they say, were the result of that new phase of research.
U.S. District Court Judge T. John Ward agreed, ruling in a 13-page order late last month that Collins’ and Davanloo’s coatings were “not ‘subject inventions’ of the Navy contract” and that the suit could proceed.
In addition to three Hitachi companies, three Toshiba companies and Western Digital, the defendants are:
• Seagate Technology/Seagate Technology LLC
• Fujitsu Ltd./Fujitsu Computer Products of America
• Buffalo Inc./Buffalo Technology Inc.
• EMC Corp.
• Imation Corp.
• La Cie S.A./La Cie Ltd.
• Systemax Inc.
• Compusa.com Inc.
• J & R Electronics Inc.
• TigerDirect Inc.
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