October 11, 2011
Case: CARNEGIE MELLON UNIVERSITY v. MARVELL TECHNOLOGY GROUP (W.D.Pa. 9-28-2011) What happened: Carnegie Mellon University tech transfer office circulated an invention disclosure relating to disc drives. The tech transfer office was informed that a different inventor from Seagate had previous worked on a similar technology, but the Seagate inventor stated that, “[The Carnegie Mellon professors’] invention is related, but goes beyond my work and is probably more interesting." It is unclear whether the tech transfer office knew that Seagate had already filed a patent application on the earlier work of its inventor. Perhaps not surprisingly given the encouragement of the Seagate inventor, Carnegie Mellon filed patent applications on the work of its inventors. In the fullness of time, Seagate got a patent for its early work and Carnegie Mellon got two patents for its later developments and refinements. Carnegie Mellon proceeded to sue Marvell for patent infringement. Marvell is defended based on the theory that many of the claims of the Carnegie Mellon patents were anticipated by the prior art Seagate patent. Decision: No summary judgment of invalidity because the claims of the Carnegie Mellon patents had certain limitations not disclosed in the Seagate patent. Comment: It does not appear that the Seagate work was cited to the U.S. Patent Office during examination of the Carnegie Mellon patents. If the Seagate work was not cited, then this may have been due to the fact that the Seagate application was not published (this was back in the 1990’s) and further because the Seagate patent had not yet issued (it would not issue until several years after the initial Carnegie Mellon application was issued). It is not clear how much the Carnegie Mellon tech transfer office even knew about the specifics of the earlier Seagate work when they were prosecuting the Carnegie Mellon patent applications. It is difficult to say whether Carnegie Mellon would have been in a better or worse position if the tech transfer office had investigated the early Seagate work as soon as they found out about it, and had explicitly dealt with the early Seagate work in the text of the Carnegie Mellon patent applications themselves. Importantly, the district court opinion does not suggest there was any duty to investigate the early Seagate work on the part of the Carnegie Mellon tech transfer office. From a practical perspective, things seem to be going well for Carnegie Mellon on these patents at least at this point.