|Friday, January 28, 2000||
Volume 65, Issue 83
New rulings uphold discrimination claims
|University of Alabama's
suing UH over superconductor patent
By Ken Fountain
The University of Alabama Board of Regents has sued UH, contending that two UA physicists are the original inventors of a significant superconducting composition patented by C.W. "Paul" Chu, director of the Texas Center for Superconductivity at UH.
In the suit, filed Feb. 18 in U.S. District Court in Houston, UA-Huntsville asks the court to overturn a 1999 U.S. Patent Office order that awarded "priority of ownership" of the substance to Chu after the two universities filed competing patent applications in 1987.
The suit claims UA's Maw-Kuen Wu and James R. Ashburn invented the composition, based on mixed oxides of yttrium, barium and copper, in January 1987. The substance, called the "Y-Ba-Cu-O composition," "exhibits zero electrical resistance at a temperature of 77 Kelvin or above," according to the lawsuit, making it an important breakthrough in superconductivity research.
A superconductor is a perfect conductor of electricity, meaning it dissipates no energy through "resistive heating." Superconducting materials, such as the one mentioned in the suit, can be used to create more compact and powerful electrical equipment with lower operating costs.
Superconductors thus have many potential applications in electrical power, transportation and medicine, among other industries.
Shortly after Wu and Ashburn's January 1987 discovery, the suit claims, the two came to UH to perform experiments to confirm the composition performed superconductivity at temperatures of 77 Kelvin or above. UA filed its patent application Feb. 13, 1987, but UH beat it by seven days with an application listing Chu as the composition's inventor.
The U.S. Patent and Trademark Office awarded priority, the right to obtain a patent, to UH and Chu on Feb. 24, 1999. But the lawsuit claims one of the three patent judges who made the decision expressed reservations: "I am left with the distinct feeling that I have missed something," the judge said. "(If) the subject matter is explained to us in ‘plain English,' we should, and probably will be able to, understand the technology sufficiently to make an informed decision. I fear we may not have been given the opportunity to do so in this proceeding."
The Patent Office denied UA's request for a reconsideration Dec. 22, 1999.
Paul Janicke, co-director of the UH Law Center's Intellectual Property Program, said a party competing for a patent can appeal the Patent Office's decision to a U.S. Court of Appeals, in which case no new evidence can be heard, or it can file a civil lawsuit, as UA did, allowing the court record to be open and the right to subpoena live witnesses' testimony.
UA is asking for a judgment that Wu and Ashburn be listed true inventors of the composition, or "at least joint inventors of the subject matter disclosed and claimed in the application filed by Houston."
Chu, who is one of the hosts of a Houston superconductivity conference this week, was not available for comment Monday, but UH General Counsel Dennis Duffy said the University would "vigorously defend against (the suit)." Duffy said UH would file its answer to the suit within the prescribed 20 days.
Paul Pedigo of the Charlotte, N.C., law firm of Alston & Bird, listed
as co-counsel for UA, would not comment on the case.
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