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Fenn v. Yale University

283 F. Supp. 2d 615 (2003)

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Fenn v. Yale University

United States District Court for the District of Connecticut

283 F. Supp. 2d 615 (2003)

Facts

John Fenn (plaintiff) was a professor or professor emeritus at Yale University (defendant) from 1967 until 1994, when he left Yale to work for another university. Fenn was a leading expert in his field of study, mass spectrometry, which determined the masses of atoms and molecules. Throughout Fenn’s employment with Yale, Yale’s administrative policies stated that patentable inventions resulting from faculty members’ work belonged to Yale, not to the individual faculty members. The policies also provided that licensing royalties for those patented inventions would be shared between Yale and the faculty member. The division of royalty payments changed over time, but Yale’s ownership of the patents remained constant across all policy versions. In 1988, Fenn developed a revolutionary method for determining the molecular weight of particles and began discussing its commercial use with major pharmaceutical companies. Fenn did not disclose his invention to Yale until 1989, at which time Yale administrators asked for his assistance in filing a patent application. Fenn delayed assisting them and secretly filed a patent application on his own, financed by Analytica, a company Fenn had previously set up with a graduate student to handle commercial deals relating to Fenn’s other patented inventions, which were owned by Yale. Fenn was awarded a patent but did not inform Yale’s administration. Yale eventually found out about the patent and asked Fenn to assign the patent to Yale. He refused, but Analytica and Yale entered into a licensing agreement by which Yale granted Analytica a license to any interest Yale had in the patent. Analytica began paying royalties into an escrow account rather than to Fenn or Yale directly. Fenn sued Yale for theft and conversion, among other claims. Yale counterclaimed for breach of contract and theft, among other claims.

Rule of Law

Issue

Holding and Reasoning (Droney, J.)

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