District of Massachusetts IP Blog

Patent Malpractice Claim Filed Against National Firm

An individual from Foxborough, MA has sued law firm Finnegan Henderson for malpractice related to eyeglass technology.  The complaint alleges that the firm took over $100k from the plaintiff to obtain a patent in the technology at the same time the firm represented a competitor.  The complaint also alleges failure to submit and IDS to the USPTO and submitting an amendment without authorization. 

Maling v. Finnegan, Henderson, Farabow, Garrett & Dunner LLP, 12-10639-JGD (D. Mass. Apr. 10, 2012)

Internal Disciplinary Documents Must Be Produced In Malpractice Case

Cold Spring Harbor Laboratory is suing Ropes & Gray, LLP and one of its former attorneys for malpractice related to the prosecution of several CSHL patent applications before the Patent Office.  Ropes refused to produce documents related to investigation and termination of the employee, claiming privilege / work product.  Judge Stearns partially disagreed, and ordered production of the materials generated between the date the potential malpractice was raised and the date Ropes discontinued representation of CSHL. 

Cold Spring Harbor Lab. v. Ropes & Gray, LLP, 11-10128-RGS (D. Mass. July 19, 2011)

Malpractice Case Moved to Defendants’ Home Court

Cold Spring Harbor Lab. (Cold Spring Harbor, NY) originally sued law firm Ropes & Gray, LLP (Boston, MA) and one of its former attorneys in the Eastern District of New York (as case no. 10-00661-ADS-AKT, filed Feb. 16, 2010) for malpractice related claims.  

The complaint alleges that the attorney copied portions of a third party’s patent application into certain applications for CSHL without CSHL’s knowledge and that the copying led to substantial delays in the prosecution of CSHL’s patent applications.  The similarities were discovered by an examiner, leading to much prosecution consternation.  The claims are still pending (with new counsel) but the complaint alleges lost revenue for the period (so far) that CSHL has been without patent rights. 

The case was recently transferred to D. Mass. following a motion filed by R&G.

Cold Spring Harbor Lab. v. Ropes & Gray, LLP, 11-10128-NG (D. Mass. Jan. 25, 2011)

Local Boutique Mostly Dodges Malpractice Case

[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)