An accusation of screwing up a patent application is one thing. But allegedly not telling the client about the gaffe? An electronic billboard maker suing a Morgan, Lewis & Bockius patent lawyer for malpractice says that's on a whole different level.
Landmark Screens -- whose picture-changing billboard can be seen on Highway 101 near San Carlos, Calif. -- filed a malpractice suit against Morgan Lewis and San Francisco partner Thomas Kohler in federal court last week. Landmark accuses Kohler of messing up a patent application for the billboard and then of not telling the client about it quickly enough. Damages could be in the millions, said Clark Stone, a MacPherson Kwok Chen & Heid lawyer representing the plaintiff. The Technology Law360 Web site first reported the suit Tuesday.
"If the company would've known about the error shortly after the error occurred, they could've gotten other counsel and taken other steps to remedy the situation," said Stone.
Keker & Van Nest partner Elliot Peters, who is representing Morgan Lewis and Kohler, was in court and couldn't be reached for comment Tuesday afternoon. A Morgan Lewis spokeswoman said the firm had no comment, and Kohler did not return a call seeking comment Tuesday afternoon.
Diane Karpman, a legal ethics expert, said that not keeping a client informed can be a serious accusation. But she said lawyers do have an undefined period of time to try to fix the problem before they have to come clean.
Landmark originally filed a malpractice suit in Santa Clara County Superior Court in 2005 against Morgan Lewis, Kohler and Pennie & Edmonds, whose Palo Alto, Calif., office was swallowed by Morgan Lewis in late 2003. Kohler had been working on the patent application while at Pennie and then at Morgan, according to the suit.
In March, Pennie & Edmonds and Landmark came to a settlement during arbitration, according to the complaint.
Now Landmark is pursuing its case against Kohler for his alleged actions taken as a Morgan Lewis lawyer.
Landmark claims that Kohler, while at Pennie, filed a patent application for the electronic billboard in 2002. After dropping some claims -- which describe the invention in question -- in response to a patent office requirement, he refiled them as part of a follow-on application known as a "divisional application."
The suit claims the divisional applications contained errors, that the patent office sent it back in June 2004, and that it then rejected the patent lawyer's petition for appeal that November. Kohler and Morgan Lewis found out the petition had been denied in early December 2004.
The result was a loss of "continuity" -- that is, the claims in the divisional application couldn't be tied to the original filing date or the "parent" application. And since the billboard had been erected and the original patent application had been published in the meantime, the claims were invalidated because the invention was no longer novel, according to the suit.
"By losing the filing date of the parent, then the screen itself becomes prior art as does the publication of the parent," said Stone.
Landmark claims it didn't learn from its lawyers that it had lost its patent rights until March 2005, and that it should've been notified sooner, when the lawyers found out the divisional application had problems.
But legal ethicist Karpman said there's not a hard-and-fast rule. She said a lawyer definitely has an obligation to tell the client about an error if nothing can be done to fix it, but there is some leeway to remedy the situation.
"There's a period known as repair," Karpman said. "Once it can't be repaired you have a duty to go to the client."