Laboratory Alleges Patent Denied due to Attorney's Plagiarism

Vladimir Drozdoff had just started working at Cold Spring Harbor Laboratory when he was asked to investigate why a patent had been denied for what the lab considered a genetics breakthrough.

Cold Spring, the former home of DNA researcher James Watson, is well known for genetics research. But the U.S. Patent and Trademark Office in 2007 denied one of its top scientists, Gregory Hannon, a patent for technology that would allow researchers to selectively turn off genes.

Drozdoff's probe led him to conclude that Matthew Vincent, a partner at Cold Spring's outside counsel Ropes & Gray, had plagiarized a patent by a rival researcher. Drozdoff, a former senior IP associate at Kaye Scholer, discovered that 11 pages of text in Hannon's patent application had been lifted without citation directly from one by Andrew Fire, a Nobel Prize winner in medicine. Many of Hannon's other patent applications contained similar copied passages.

In February, Cold Spring sued Ropes & Gray (pdf) in the U.S. District Court for the Eastern District of New York, accusing the firm and Vincent of malpractice. Cold Spring, represented by Chad Ziegler at Scully Scott Murphy & Presser in Garden City, N.Y., claims it has lost millions of dollars in potential licensing and royalty revenue, and seeks $37.5 million to $82.5 million, plus punitive damages.

Ropes & Gray, in a motion to dismiss (pdf) filed Tuesday, contends the alleged copying was not the cause of the rejection of the applications. "Cold Spring Harbor Laboratory's lawsuit lacks merit because the determination of the [Patent and Trademark Office] to reject the patent applications is based on the existence of prior work of other respected scientists and not on our firm's efforts," the firm said in a statement. Ropes & Gray argues it is "perfectly ethical and legal" to copy text from others' patents. The Boston-based firm also asked that the case be transferred to Massachusetts.

Meanwhile, Ropes & Gray last year fired Vincent after discovering that a patent database company that billed the firm and its clients more than $730,000 was secretly owned by Vincent.

Vincent, who was based in Boston, resigned from the Massachusetts Bar in July (pdf) with charges pending by the Massachusetts Board of Bar Overseers.

Cold Spring claims it received $10,000 in invoices from Ropes & Gray for work handled by Vincent's company.

Vincent also filed a motion to dismiss Tuesday that incorporated Ropes & Gray's arguments. His attorney, Robert J. Muldoon Jr. at Sherin and Lodgen in Boston, did not respond to requests for comment.

Hannon declined comment. But Fire, whose patent was allegedly plagiarized, responded in an e-mail supporting Hannon.

"As scientists (and non-lawyers) we all rely on our legal colleagues -- for the most part with good results," Fire said. "Of course the system does break down sometimes and I was sorry to hear that this happened on Dr. Hannon's dime. Hannon is a great scientist and has made huge scientific contributions, so I hope the whole thing is not too much of a time sink for him at this point."

LAW FIRM CLAIMS 'COMMON' PATENT BAR PRACTICE

Based in Long Island, N.Y., the 400-scientist Cold Spring Harbor calls itself one of the oldest institutions dedicated to genetic research. Watson, who together with Francis Crick is credited with discovering DNA's double-helix structure, was director and later president of the lab from 1968 to 2003.

Hannon's research has focused on RNA interference, a way of silencing genes. He has received several awards, including the National Academy of Sciences Award for Molecular Biology in 2007.

Hannon applied for numerous patents, which were assigned to Cold Spring Harbor. Those applications were primarily drafted by Vincent, who joined Ropes & Gray in 2001 from Foley, Hoag & Elliot. Ropes & Gray served as the lab's principal outside patent prosecution counsel from 2001 to 2008, earning $1.82 million, according to the complaint.

Beginning with a provisional patent application for Hannon filed in October 2000, Cold Spring said Vincent included text from an earlier patent application by Fire, then at the Carnegie Institution in Washington, D.C.

Fire, now with Stanford University, received the 2006 Nobel Prize in physiology or medicine for his research into RNA interference.

The lab claims Vincent's practice of copying applications continued when he moved to Ropes & Gray.

In April 2005, the patent office rejected one of Hannon's applications, which covered a way of using a sequence of RNA called "short pin RNA" to silence genes. Vincent spent two years trying to get the application back on track. But in September 2007, the patent office rejected an appeal, noting that some of the text "is essentially verbatim" from Fire's application.

In February 2008, Cold Spring hired Drozdoff as a senior licensing associate and patent attorney. His first assignment was to get to the bottom of what had gone wrong with the applications.

Hannon said he had been unaware the applications contained text similar to Fire's patent. Cold Spring said laboratory and other records support the conclusion that Hannon had already conceived of the use of short pin RNA before the patent application was filed.

Cold Spring next approached Ropes & Gray. According to the complaint, Vincent acknowledged that in drafting one of the earliest applications he had copied text from Fire's patent.

Ropes & Gray has contended that copying text is an accepted practice. In a June 2008 letter (pdf) to Cold Spring, Eric Hubbard, a partner at Ropes & Gray, argued that Vincent had not committed malpractice, claiming it was common practice within the patent bar to include text from previously published patents or applications.

"Indeed, incorporating such text, either directly or with slight modification, in patent applications without specific attribution is often done to expediently provide descriptive information such as definitions, lists, descriptions of uses or other information that may be relevant to the invention disclosed in the application," Hubbard wrote.

In its motion to dismiss, Ropes & Gray contended Hannon's patent applications would have been rejected regardless of the copying. Not only did Hannon seek to patent something covered by Fire's patent, but the patent office also rejected his applications because they were anticipated by patents from two other teams of scientists, the firm argued. Hannon would not be the first influential scientist to have his patent application rejected because of Fire's patent, Ropes & Gray said.

The firm added that Vincent did nothing that would preclude the laboratory from still obtaining a patent, something Cold Spring has attempted to do with its new counsel at Wilmer Cutler Pickering Hale and Dorr.

In August 2008, Jane Love, the vice chair of WilmerHale's IP department, filed with the patent office a series of affidavits from Cold Spring lawyers and Hannon seeking to disclose the plagiarism. Love, in a letter to the patent office, wrote that any prior statements made in prosecuting this and other patent applications for Hannon were done without his or other Cold Spring researchers' knowledge.

Patent office files show that after Cold Spring made the disclosures, some of the applications have continued to face rejections on the basis that claims are duplicative of research by past scientists.

Love declined comment.

Patent lawyers say it would be unusual to not include some form of citation.

Lawyers regularly refer to earlier patents in the applications in a section dedicated to background information on what preceded the new technology, said Pierre R. Yanney, an intellectual property lawyer at Stroock & Stroock & Lavan. Even in the section calling for a detailed description of the new technology, Yanney said lawyers might include references to past patents. But that would "absolutely" be done with citations and usually would not be done at length."But if you're talking 11 pages word-for-word, that's really egregious," Yanney said.

That said, Yanney said he is skeptical of the idea that plagiarism by itself would cause a patent to get rejected. Even with citations, the PTO might have seen the applications as pre-dated by Fire's, he said, the argument Ropes & Gray is currently making. "Hypothetically, if they had cited it properly, would it have been rejected the same way?" Yanney said. "And the answer is probably yes."