Encyclopaedia Britannica Sues Dickstein Shapiro for $250 Million

Karen Sloan

The National Law Journal

Encyclopaedia Britannica is suing Dickstein Shapiro for more than $250 million, claiming that the firm botched a patent application.

The suit, filed Thursday in the U.S. District Court for the District of Columbia, alleges that Dickstein Shapiro mishandled several technology patents, leading the encyclopedia maker to lose a patent infringement suit it brought against several GPS manufacturers in 2007.

According to the malpractice lawsuit, Dickstein acted in self-interest when it learned of the problems with the patents and tried to remedy the situation with the U.S. Patent and Trademark Office.

"The errors and omissions that led to this valuable property loss and Dickstein's response to the admittedly negligent performance at issue are quintessential examples of hornbook malpractice," the lawsuit says.

Attorney Robert Cummins, who is representing Encyclopaedia Britannica, declined to comment on the lawsuit. Dickstein Shapiro will fight the suit, said John Aldock, a partner at Goodwin Procter who is representing the firm.

"The complaint is based on a mischaracterization of the facts and the law," Aldock said. "The lawsuit is without merit and will be vigorously defended."

The malpractice suit stems from a long and complicated patent dispute that goes back more than 20 years and involves technology covering the use of multimedia on CD-ROM. In 2007, Encyclopaedia Britannica sued several GPS manufactures for more than $250 million, claiming they infringed two patents that were outgrowths of a patent the company originally filed for in 1989. Defense attorneys for the GPS manufacturers argued that the two patents were invalid because of problems with the original 1989 patent. That original patent actually dated back only to 1994 -- not 1989 -- because a patent continuation application was mishandled in 1993, they argued. A federal judge agreed and declared the two patents invalid in 2009, and Encyclopaedia Britannica is appealing.

Encyclopaedia Britannica's malpractice suit blames Dickstein Shapiro partner Jon D. Grossman for "fatal prosecution errors that led to the invalidity" of its patents. Grossman said the problems with the continuation application he filed in 1993 were a result of clerical errors and that Encyclopaedia Britannica had not intentionally abandoned its patent, according to a affidavit he submitted to the PTO.

The malpractice suit claims that Grossman's attempts to remedy his earlier mistakes with the PTO further hurt Encyclopaedia Britannica's patent infringement case against the GPS manufacturers.

The encyclopedia company is suing for professional negligence and breach of fiduciary duty.