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By Abigail Rubenstein
Law360, New York (March 25, 2010) -- Ropes & Gray LLP has asked a federal judge to toss a lawsuit accusing the firm and a former partner of costing former client Cold Spring Harbor Laboratory millions of dollars in potential licensing fees by botching patent applications.
The firm filed a motion to dismiss the suit Tuesday in the U.S. District Court for the Eastern District of New York, calling the core of its former client's allegations “speculative and implausible on its face” and maintaining that it is also “flatly contradicted by the indisputable documentary record.”
Cold Spring Harbor lodged the suit in February, claiming that the U.S. Patent and Trademark Office rejected its applications to patent an invention by its scientists because ex-Ropes & Gray partner Matthew Vincent, who worked out of the firm's Boston office until he was terminated in April 2009, improperly described the inventions.
The research laboratory alleges that without informing the client, Vincent prepared the patent applications for its scientists' invention — the expression of short hairpin, double-stranded RNAs in mammalian cells to effect RNA interference — by copying text from an earlier RNAi patent application by a different scientist, prejudicing the USPTO to erroneously deem the invention not sufficiently unique to warrant patent protection.
The suit asserts claims of malpractice, breach of fiduciary duty, fraud and fraudulent concealment, and seeks damages of no less than $37.5 million to $87.5 million plus punitive damages.
In its motion to dismiss, Ropes & Gray said such copying is common practice and that the USPTO denied the patent applications not only because the invention was too similar to the one disclosed in the one Vincent allegedly copied from but also on separate and independent grounds unrelated to the alleged malpractice.
According to the firm, the USPTO has rejected patent applications prepared by other law firms for similar inventions because of the same earlier patent.
The agency also cited earlier disclosures by other researchers besides the one whose patent Vincent allegedly copied when it rejected the patent applications, Ropes & Gray said.
As such, the firm maintained that Cold Spring Harbor cannot prove that it would have obtained the patent “but for” Vincent's alleged misconduct.
Moreover, Ropes & Gray contended that Vincent's actions will not preclude the laboratory from obtaining a patent on the invention, noting that Cold Spring Harbor retained WilmerHale to prosecute the same patent applications.
Ropes & Gray further alleged that the breach of fiduciary duty claim merely restates the same allegations as the legal malpractice claim and that the fraud claim only states that Vincent concealed his alleged malpractice.
As for the fraudulent concealment claim, which stems from Vincent allegedly billing Cold Spring Harbor for services performed by a company that he owned, the firm said that the lab does not show that it suffered damage as a result of the alleged conduct.
The law firm also claimed that the court should toss the whole suit on procedural grounds for lack of venue because the venue for legal malpractice claims lies where the defendant attorney committed the allegedly negligent acts, which in this case would be Massachusetts.
“Ropes & Gray's Rule 12 motion is pretext for presenting unsupported attorney argument. It lacks merit and we look forward to proceeding with discovery in this case,” said Scully Scott Murphy & Presser PC's Chad E. Ziegler, who represents the plaintiff.
A Ropes & Gray spokesman declined to comment on the case Thursday.
Cold Spring Harbor Laboratory is represented in this matter by Scully Scott Murphy & Presser PC.
Ropes & Gray is represented by Patterson Belknap Webb & Tyler LLP.
Vincent is represented by L'Abbate Balkan Colavita & Contini LLP.
The case is Cold Spring Harbor Laboratory v. Ropes & Gray LLP et al., case number 2:10-cv-00661, in the U.S. District Court for the Eastern District of New York.
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