Federal Judge Awards $1-Million in Damages to Yale U. in Patent Dispute With Nobel Laureate

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In the latest skirmish in a long-running patent dispute, a federal district judge ruled last week that John B. Fenn, a Nobel laureate who taught chemistry at Yale University for many years, must pay Yale at least $1-million in damages.

The ruling, by Judge Christopher F. Droney of the U.S. District Court in Hartford, Conn., found that Mr. Fenn had privately profited from a patent that, under the terms of his contract with Yale, he was required to assign to the university. The court ordered that the patent be reassigned from Mr. Fenn to the university.

The dispute concerns a process that Mr. Fenn invented in the late 1980s for determining the molecular weight of certain organic compounds. Mr. Fenn's process, known as electrospray ionization, has been licensed for use by a variety of biomedical and pharmaceutical companies. In 2002, Mr. Fenn shared the Nobel Prize in Chemistry with two other scholars who had separately developed similar techniques.

Officials at Yale have charged that in his formal "invention disclosure" in 1989, Mr. Fenn lied to the university about the full potential commercial value of his invention. Mr. Fenn then received a patent under his own name in 1992, without disclosing to Yale that he had applied for such a patent. (In a deposition in 2000, Mr. Fenn was asked if he had been deceitful in order to further his own economic interests. He replied, "I was out to get it. Whether you should use the word 'steal' or not, I don't know, yes. Whether you should use the word 'steal' or not, that's what it looks like, yes.")

The conflict seems to have been fueled partly by bitter feelings from an earlier argument between Mr. Fenn and the university. In 1987, Yale forced Mr. Fenn to retire from teaching at the age of 70 and stripped him of his graduate research assistants. He continued to conduct research in the university's laboratories, and two years later invented the electrospray-ionization process.

The dispute has given rise to a complex series of lawsuits and countersuits between Yale and Mr. Fenn, who is now a research professor at Virginia Commonwealth University.

In 2003, Judge Droney upheld Yale's claims that Mr. Fenn had committed breach of contract, breach of fiduciary duty, and fraud. In the ruling issued last Tuesday, he further found that Mr. Fenn had committed civil theft, and, for the first time, the judge set damages in the case.

Under a patent policy established in 1989, Yale retains right of first refusal to all patents based on inventions made by employees at the university. If the patent is licensed for commercial use, the inventors are entitled to 50 percent of the first $100,000 in patent royalties, 40 percent of the second $100,000 in royalties, and 30 percent of all royalties thereafter.

Judge Droney found last week that under that formula, Mr. Fenn had improperly deprived the university of $181,704.61 in royalties -- and that he must pay triple that amount, or $545,113.83, under Connecticut's civil-theft statute. Moreover, the judge found that Mr. Fenn must reimburse the university for $492,435.30 in legal fees, plus any additional legal fees incurred in this case since November 2003.

In a statement last week, Helaine Klasky, a spokeswoman for the university, said: "We are pleased by the result in this case and in particular by the court's vindication of the Yale patent policy. Yale has the highest respect for Dr. Fenn as a scientist."

Neither Mr. Fenn nor his lawyers responded to e-mail queries seeking comment on Sunday. The Hartford Courant reported on Friday that Mr. Fenn said he would probably appeal the decision.

The full text of Judge Droney's ruling is available on the court's Web site (requires Adobe Reader, available free).

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