Thursday, February 17, 2005

Electrospray mass spectrometry of John Fenn; Bayh-Dole dispute

Nobel Laureate (chemistry 2002) John Fenn lost a law suit to Yale University, concerning who had rights in US 5,130,538 on electrospray ionization mass spectrometry. Fenn argued that he himself had rights under the Bayh-Dole Act.

from Susie Poppick of the Yale Daily News (Feb. 14, 2005):

A Nobel Laureate and former Yale professor must pay the University more than $1 million for stealing, licensing and unjustly profiting from his own prize-winning invention, a federal judge ruled Thursday.

Though John Fenn GRD '40 argued that he had rights to his discovery under the Bayh-Dole Act, a federal patent law, U.S. District Judge Christopher Droney determined that Fenn knew Yale rightfully owned his invention -- a method of mass spectrometry for analyzing large biological molecules -- under the University's official patenting policy.

"Dr. Fenn only obtained the patent through fraud, civil theft, and breach of fiduciary duty; he may not profit from his own wrongdoing," Droney wrote in the decision. "A patent is property which, when wrongfully obtained, may be reassigned to its rightful owner."

Droney ordered that Fenn, 87, pay Yale for penalties, royalties and legal bills and hand over the rights to his patented invention, which earned him a share of the 2002 Nobel Prize in chemistry.

The judge's decision stated that Fenn misled the University about the value of his invention, while he secretly obtained a patent in 1992 and sold licensing rights to Analytica, a company he jointly owned.

"Clearly, Dr. Fenn's motives included an intentional desire to 'show up' and embarrass Yale by depriving the institution of a valuable patent, but also included a desire to keep permanently the patent and the profits it generated," Droney wrote.

Yale's patenting policy states that the University collects a portion of faculty royalties to fund further research. But Yale does not claim any ownership of inventions unrelated to an employee's designated activities or made without use of University facilities.

All University inventions must be reported to the Office of Cooperative Research, whether or not Yale will claim joint ownership. OCR Managing Director Jonathan Soderstrom said patenting policies like Yale's are common in academia.

Fenn said he never intended to deceive the University and is considering an appeal, but he would not comment further on the case, as his attorneys are still examining the implications of the court decision.

"My side of story is a good one, which has not been heard very much in this case," Fenn said. "That will be clear when more of the facts come out."

Fenn said he completed development of electrospray ionization after Yale's retirement policies forced him to forfeit laboratory space and graduate assistants when he turned 70.

The legal conflict began when Fenn and his Analytica business partner, graduate student Craig Whitehouse, entered litigation over patenting rights. Fenn sued Yale in 1996, after the University struck a licensing deal with Analytica without his involvement. Yale then filed counterclaims, seeking assignment of the patent and damages for charges ranging from breach of contract and fiduciary duty to theft.

Fenn said he believes Yale's division of royalties is unfair. Under current policy, the first $100,000 of net royalties is split 50-50 between the inventor and University, with 40 percent of the second $100,000 and 30 percent of anything above $200,000 going to the inventor.

Fenn's patent, No. 5,130,538, has already earned more than $5 million in royalties and will not expire for six years.

Some patents with Fenn as inventor:

US 4,531,056 issued July 23, 1985 filed April 20, 1983

Cited by 63 US patents as of Feb. 17, 2005.

Inventors: Labowsky; Michael J. (Wayne, NJ); Fenn; John B. (Branford, CT); Yamashita; Masamichi (Tokyo, JP)

An electrospray ion source for a mass spectrometer capable of generating ions from samples dissolved in a solution comprises a capillary tube through which the said solution is pumped into a first chamber maintained substantially at atmospheric pressure and in which an inert gas is flowing in a direction counter to the flow of the solution, and a small orifice in the end wall of the chamber opposite to and aligned with the capillary. A high potential difference is applied between the capillary and the end wall so that the solution is electrosprayed into the chamber and ions characteristic of the sample are formed. These ions are desolvated to a controllable extent by the inert gas, which may also be heated to improve the efficiency of the process and increase the maximum permissible flow rate of solution. The ions so formed pass through the small orifice into a second chamber maintained at a reduced pressure, and into a mass spectrometer. Alternatively an additional pressure reduction stage can be included, so that the ions pass into a third chamber maintained at a still lower pressure in which the mass spectrometer is situated through a conventional nozzle and skimmer arrangement. The ion source is particularly effective for the production of unfragmented and unsolvated ions from thermally unstable or involatile samples, and may be used as a liquid chromatograph--mass spectrometer interface.

First claim:

1. In a method of generating ions for mass spectral analysis from a sample dissolved in a solution by electrospray ionization the improvement comprising:

(a) causing said solution to flow through a capillary tube or jet;

(b) maintaining a high electrical potential difference between said capillary tube or jet and a first conductive wall spaced from and disposed facing the outlet of said capillary tube or jet thereby causing said solution to be electrosprayed from said outlet;

(c) maintaining the ambient pressure between said outlet and said wall at substantially atmospheric pressure;

(d) providing between said wall and said outlet a flow of inert gas substantially counter to the flow from said outlet;

(e) providing an orifice in said wall in alignment with the axis of said capillary tube or jet at the outlet thereof; and

(f) maintaining the pressure on the side of said wall remote from said outlet at a reduced pressure whereby gas containing ions from said solution characteristic of said sample flows through said orifice.

US 4,542,293 issued Sept. 17, 1985 filed April 20, 1983


US 5,130,538 issued July 14, 1992 filed Oct. 10, 1991

This is a file wrapper continuation application of application Ser. No. 07/683,105, filed Apr. 10, 1991, which is a file wrapper continuation application of Ser. No. 07/354,393 filed May 19, 1989, both now abandoned.

US 5,306,412 issued April 26, 1994
assigned to Analytica of Branford, Inc. (Branford, CT)

***US 5,581,080 issued Dec. 3, 1996 filed September 21, 1994


The U.S. Government has a paid-up license to this invention and the right in limited circumstances to require the patent owner to license others on reasonable terms as provided for by the terms of Grant No. 2R01 GM31660-04A1 awarded by the National Institutes of Health.

The present application is a divisional of application No. 07/911,405, filed Jul. 10, 1992, now abandoned, which is a divisional of application No. 07/773,776, filed Oct. 10, 1991 (Pat. No. 5,130,538), which is a continuation of application No. 07/683,105 filed Apr. 10, 1991 (abandoned), which is a continuation of application No. 07/354,393, filed May 19, 1989 (abandoned).


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