An Impressive Patent Portfolio
Amit Goyal holds 50 patents, giving ORNL dominance over a key element in commercial high-temperature superconducting wire.
As a graduate of the distinguished Indian Institutes of Technology, the only university in the world to which Business Week devoted a special issue, ORNL researcher Amit Goyal sometimes wonders if he chose the wrong business. "I read that, during the dotcom boom, 40 percent of all dotcom companies started in the Silicon Valley were founded by IIT graduates," says Goyal. "Some of these graduates have a materials science degree like me."
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Amit Goyal in the "clean room," where nickel-tungsten substrates are rolled to make a "roadbed" for high-temperature superconducting wire.
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Goyal still has a strong chance to realize the same kind of financial reward as his fellow IIT alumni. He is one of ORNL's most prolific inventors. He holds 50 issued patents in his portfolio with many more pending.
American Superconductor Corporation owns the rights to at least 16 of Goyal's patents. American Superconductor is the world's largest company focused on manufacturing second-generation (2G), high-temperature superconducting (HTS) wire for transmission cables, transformers, motors, generators, electromagnets, fault current limiters and levitating fast trains.
A recent news release stated that the company has sold more than 2.7 kilometers of HTS wire to customers working on demonstration projects in eight countries. The wire is fabricated in part using ORNL's patented technique for making the "road-bed" for the superconductor. If any of the possible applications for American Superconductor wire are adopted worldwide, Goyal and ORNL stand to reap significant revenues in the form of royalties. The accompanying publicity for the Laboratory, while not measured in dollars, would be equally valuable.
"Having such a prolific inventor on our staff certainly enhances ORNL's reputation within the scientific community," says Casey Porto, director of technology transfer at the Laboratory. She notes that Goyal is a UT-Battelle Distinguished Inventor who represented ORNL last year at Battelle's awards ceremony for inventors from the five Department of Energy national laboratories that Battelle helps to manage.
In the early 1990s Goyal led the development at ORNL of rolling assisted biaxially textured substrates (RABiTS). These metallic templates, working through appropriate buffer layers, align the deposited crystals of yttrium, barium, and copper oxides (YBCO) so they act as high-temperature superconducting films. RABiTS, an acronym invented by Goyal, is the approach adopted by American Superconductor for the manufacture of 2G HTS wire. In January 2006 American Superconductor announced a focus on the manufacture of 2G wire, followed in May by a news release stating the company would no longer make first-generation HTS wire.
Seeking Protection
The breadth of Goyal's 50 patents is impressive. "The original patent dealt with one way of making biaxially textured flexible substrates," he says. "Then, to make our patent portfolio impenetrable, we decided to find other ways of making these substrates that were not covered in our original patent."
Goyal was concerned that researchers in other companies and countries would seek a way around the ORNL patents. He imagines an inventor saying, "I like what you have done, and it's fascinating. But I can make the same thing you do in a different way that's not covered in your patent."
As the work progressed, Goyal and his colleagues recognized the need for substrates with different physical properties. They forged stronger substrates including those that exhibit no magnetism when a current runs through the coated conductor. Goyal sought patent protection for these materials. Most of the patented substrates are made of alloys that can be textured when properly processed. American Superconductor uses nickel-tungsten alloy, which is less magnetic than the other substrates.
"Our original substrates were polycrystalline substrates where the three axes of all the grains were fairly well aligned and the substrate resembled a crystal with a large mosaic," Goyal says. "We later found several ways of making single-crystal substrates containing only a single grain that may have applications beyond superconductivity. We subsequently obtained patents on different kinds of buffer layers of interest and of value to the application. We have additional patents on other device layers that can be deposited on epitaxial buffer layers over RABiTS substrates."
Buffer layers shield the YBCO layer from harmful interactions with the substrate. At the same time buffer layers transfer the substrate texture to the YBCO layer, aligning the film's crystalline grains sufficiently to carry current without resistance.
Goyal's patent portfolio covers all aspects of the substrates, buffer layers and superconductor that can be used for 2G HTS wire. "The portfolio includes various ways of making these layers that someone else could conceive of so they would not necessarily have to license our technology if they want to make HTS wire," he says. "We wished to protect our technology from people who could get similar results coming from a different angle."
RABiTS Riches
The patents for the superconducting wire technology competing with RABiTS are owned by a variety of people and organizations in Japan, Germany and the United States, particularly Lawrence Berkeley National Laboratory, Stanford University and Los Alamos National Laboratory. Because ORNL has dominance over the RABiTS patent portfolio, companies desiring to make products using 2G HTS wire will find licensing ORNL's superconducting wire technology to be simpler, faster and cheaper.
Goyal claims he has "20 to 30 invention disclosures in other areas," such as diamond films, electronic materials and chemical vapor deposition, that have no patent protection. These inventions fall in areas in which ORNL lacks major programs, so UT-Battelle at present has little incentive to pay for patenting these innovations. If UT-Battelle declines to file for a patent on a particular invention, the Department of Energy has the option to apply for a patent on the related ORNL technology. If DOE also declines, the inventor has the option to file a patent application if willing to invest the required money and time. Goyal says he may eventually file for some patents on his own.
"I appreciated the need for a patent portfolio that provided ORNL with broad patent coverage but I had a hard time selling my idea internally," Goyal says. He eventually succeeded. The ultimate winners could be not only the inventor but also ORNL and UT-Battelle.
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