[Full disclosure: I used to be employed by the Defendant here, though I had no knowledge of the case during my employment.]
Max-Planck (MP) had sued local Boston IP boutique Wolf, Greenfield & Sacks for malpractice stemming from Wolf’s handling of patent prosecution for MP. Judge Saris ruled on cross motions for summary judgment.
MP was one of four assignees of a first group of patent applications (Group 1) relating to RNA inventions. MP was also the sole assignee of a second group of patent applications (Group 2) related to similar technology, and sharing a common inventor. Wolf handled the prosecution of Group 1 before the USPTO. A dispute arose between Max-Planck and the other Group 1 assignees about whether certain subject matter should be included in the Group 1 applications (MP believed the subject matter belonged in Group 2 exclusively). MP asked Wolf to remove the information from Group 1 and remove the priority claim to Group 2 in Group 1. Wolf did not do so, based upon contrary instructions from one of the other Group 1 assignees, another Wolf client. MP’s claims in Group 2 were later rejected and blamed Wolf’s failure to follow MP’s instructions.
Judge Saris ruled that Wolf engaged in sufficient activity with regard to MP to result in an attorney-client relationship and fiduciary duty. But she also ruled that Wolf could not have followed MP’s instructions due to contrary instructions from the other client. At best, all Wolf could have done was withdraw, thus the only damages MP could claim are limited to its attorneys fees in petitioning to substitute counsel. In any event, she also ruled that MP’s tort claims (including malpractice and breach of fiduciary duty) were time barred for failure to bring them within three years of when MP was aware of the harm. A claim by MP for a declaration that Wolf is required to cease its prosecution of the Group 1 patents was allowed to remain, as the dispute over control of the Group 1 prosecution was ongoing.
Max-Planck-Gesellschaft Zur Foerderung der Wissenschaften E.V. v. Wolf, Greenfield & Sacks, P.C., 09-11168-PBS (D. Mass. Sep. 14, 2010)
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