A Long Island genetics laboratory is marching ahead with its three-year effort to bring patent malpractice claims against Boston’s Ropes & Gray and former partner Matthew Vincent, this time in Massachusetts state court.
The case, Cold Spring Harbor Laboratory v. Ropes & Gray, resurfaced on March 20 in Suffolk County Superior Court, less than a week after a Boston federal court dismissed the case.
Judge Richard Stearns of the District of Massachusetts issued an electronic order citing last month’s U.S. Supreme Court ruling in Gunn v. Minton to explain the dismissal. The high court held that state courts have jurisdiction over patent malpractice claims.
Cold Spring first sued Ropes & Gray and Vincent in February 2010 in the Eastern District of New York. The defendants transferred the case to the Boston federal court in January 2011.
Ropes & Gray was the laboratory’s primary outside patent counsel from 2001 until late 2008, with Vincent doing most of the work.
In September 2006, the U.S. Patent and Trademark Office rejected all claims in a particular Cold Spring application as anticipated by a different patent. That ruling triggered the laboratory to investigate Vincent’s work.
Cold Spring claimed it eventually discovered that Vincent plagiarized parts of another party’s patent on three of its patent applications.
When Cold Spring confronted Ropes & Gray in 2008, it claims the firm asked the laboratory to sign a waiver releasing the firm from any future liability before the firm would speak to the patent office about Vincent’s actions.
The firm fired Vincent in April 2009, according to the complaint. Vincent collected $733,771.30 from the firm from April 2002 through September 2008 through a shell company he set up to bill the firm for patent database searches. Vincent resigned from the practice of law in September 2009, according to a Massachusetts Board of Bar Overseers database.
Cold Spring’s complaint also faults the defendants for representing other license partners, including those with which Vincent had financial ties. The lab claims that Vincent disclosed its trade secrets and co-opted its inventions for the benefit of other entities.
Cold Spring claims it ultimately paid Ropes & Gray $420,000 for three patents related to a cellular mechanism for RNA interference, plus $1.4 million for other patent work. The laboratory claims that it "lost millions of dollars in potential licensing fees" because of Ropes & Gray’s and Vincent’s actions.
Cold Spring’s claims include legal malpractice, breach of fiduciary duty, fraud and fraudulent concealment and negligence.
On January 13, 2012, Stearns denied motions by the firm and Vincent to dismiss the malpractice claims. At the time, he wrote, "Vincent and [Ropes & Gray] were necessarily made privy to confidential information about [Cold Spring Harbor's] patent licensing strategy. By putting themselves in a position where they could reveal such information to potential competitors,…defendants created a direct conflict of interest."
One of Cold Spring’s lawyers, Chad Ziegler, a partner at Scully Scott Murphy & Presser in Garden City, N.Y., said, "This is one of a few patent malpractice cases dismissed from federal court in light of the Gunn v. Minton decision. The decision to dismiss had nothing to do with the merits of the case. We are equally confident in the merits of the case before the state court."
Mirick O’Connell in Worcester, Mass., filed the state court complaint for Cold Spring.
Ropes & Gray spokesman Tim Larimer said, "The lawsuit lacks merit and we expect to prevail."
Vincent could not be located for comment. He does not yet have lawyers in the Massachusetts state court case. His lawyers in the dismissed federal case, at Boston’s Sherin & Lodgen and L’Abbate, Balkan, Colavita & Contini in Garden City, N.Y., did not respond to a request for comment.
Sheri Qualters can be contacted at firstname.lastname@example.org.
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