## Facts

- John B. Fenn, a tenured Yale professor and later Professor Emeritus/Senior Research Scientist, conducted research at Yale using Yale facilities and resources.
- Yale maintained long-standing patent policies requiring faculty to disclose patentable inventions arising from Yale research and to assign resulting patent rights to Yale (absent an express release), with inventor royalty sharing.
- While affiliated with Yale, Fenn developed an electrospray ionization invention in mass spectrometry that resulted in U.S. Patent No. 5,130,538, issued in 1992.
- Fenn obtained the patent in his own name, did not properly disclose the invention’s significance through Yale’s patent process, and did not assign the patent to Yale.
- Fenn entered licensing arrangements and received royalties personally.
- Fenn sued Yale for conversion, theft, tortious interference, and CUTPA violations, alleging the patent rights belonged to him and Yale wrongfully interfered with his licensing.
- Yale counterclaimed seeking assignment/accounting and damages, including for breach of contract, breach of fiduciary duty, fraud, and related restitutionary and statutory claims.
- After a bench trial, the court issued findings of fact and conclusions of law.

## Issues

1. Whether Yale’s patent policy and Fenn’s employment relationship made Yale the owner of the ’538 patent.
2. Whether Fenn’s failure to disclose and assign the invention, and his personal patenting and licensing, breached contractual duties imposed by Yale’s policy.
3. Whether Fenn’s conduct constituted fraud (and related misrepresentation) against Yale concerning the invention’s value and Yale’s rights.
4. Whether Fenn proved Yale committed conversion, theft, tortious interference, or unfair trade practices by asserting ownership and acting to secure patent rights.

## Decision

- The court held the invention was developed in the course of Fenn’s Yale work using Yale resources and therefore fell within Yale’s patent policy.
- The court concluded Yale’s patent policy functioned as part of the parties’ contractual arrangement and bound Fenn.
- The court found Fenn breached his contractual obligations by failing to disclose and assign the invention and by patenting and licensing it in his own name.
- The court found Fenn breached fiduciary duties owed to Yale in the context of Yale’s reliance on faculty candor and disclosure for patent administration.
- The court found Fenn committed fraud by misrepresentations and omissions that deprived Yale of its rights while he secured personal patent and royalty benefits.
- The court rejected Fenn’s affirmative claims, concluding Yale’s conduct was consistent with Yale’s ownership and enforcement of its contractual rights.
- Judgment entered for Yale on its successful counterclaims, with relief consistent with Yale’s ownership interest (including assignment/accounting and damages on prevailing claims).

## Legal Principles

- A university patent policy may be enforceable as part of the employment relationship and may allocate ownership of inventions developed through university research, absent an express institutional release.
- When such a policy requires disclosure and assignment, a faculty inventor’s failure to disclose material information and refusal to assign can constitute breach of contract.
- A faculty inventor working within the university’s research enterprise may owe fiduciary duties of loyalty and candor regarding patentable inventions and related commercialization opportunities.
- Patenting and licensing a university-owned invention in the inventor’s own name, coupled with material omissions or misstatements about ownership and value, can support liability for fraud.
- When the institution is the rightful owner, institutional steps to secure assignment and protect commercialization rights do not constitute conversion, theft, tortious interference, or unfair trade practices as asserted by the inventor.

## Conclusion

The court determined Yale owned the ’538 patent under Yale’s patent policy and found Fenn liable for breach of contract, breach of fiduciary duty, and fraud for withholding disclosure and privately patenting and licensing the invention; Fenn’s tort and CUTPA claims against Yale failed because Yale was enforcing its own rights.


Fenn v. Yale Univ., 283 F. Supp. 2d 615 (D. Conn. 2003)