Wednesday, August 23, 2017

IP Conflicts (Subject Matter, Patent Disputes & More)



McCabe IP Ethics law does some excellent reporting and analysis on IP issues. Here are a few recent stories worth a look: "Portus Drops Subject Matter Conflict Claim Against Kenyon; Alleges Firm’s Prosecution Malpractice Shortened Patent Term By 3+Years" --


  • "For the past year, Portus Singapore Pte. Ltd. (“Portus”), a former client of the now-defunct Kenyon & Kenyon (“Kenyon”) law firm, has been trying to get a claim for legal malpractice to stick against its former IP counsel.   So far, Portus’ efforts have been unsuccessful.  On July 28, 2017, Portus took its third bite at the apple and filed another amended complaint against Kenyon."
  • "The complaint asserts that a Kenyon lawyer defended Bosch in an infringement action against Bosch “in the smart home and IP video surveillance domain” without Portus’ consent.  The complaint also alleges that Kenyon “has prosecuted patents on behalf of Bosch” in the “domain” of smart home and IP video surveillance technology. The complaint alleged that Bosch was a “potential infringement and licensee target in the patent prosecution” being handled by Kenyon."
  • "Notably, neither the complaint nor the amended complaint alleges that “but for” this alleged concurrent representation, Portus would have gotten a “better” patent or broader claims.  Portus also does not allege that it was required to narrow claims or that it lost any patent rights due to Kenyon’s work on any of Bosch’s patent applications."
  • "Notably, Portus no longer alleges that Kenyon engaged in a subject matter conflict of interest based upon its concurrent representation of Bosch in the same technical “domain.”  In light of the Massachusetts Supreme Judicial Court’s opinion in Maling v. Finnegan, Henderson (2015), one can understand why it was prudent for Portus to drop this allegation. Thus, the sole basis for the malpractice claim is now limited to the loss of patent term for failing to file a § 111(a) continuation application."
"Finnegan Henderson Committed Legal Malpractice By Favoring Marking Blade Inventor Over Corporate Patent Client: Lawsuit" --
  • "Who is an IP firm’s patent prosecution client when the firm represents a limited liability company and one of its members is the sole inventor?  Does the answer change if the LLC is never actually formed, and no one ever advises the law firm?  Those are just two questions that appear to be at the center of a malpractice lawsuit filed recently by a Massachusetts business against the IP law firm of Finnegan, Henderson, Farabow, Garrett & Dunner LLP.  Click here for a copy of the Accutrax malpractice complaint."
  • "The Accutrax complaint claims that Finnegan represented Accutrax LLC and negligently failed to document or record properly an assignment of patent rights from the inventor to the company.  The lawsuit also alleges that Finnegan engaged in a conflict of interest by representing the inventor, who purportedly was a member of Accutrax LLC, directly adverse to the interests of Accutrax LLC.  Finnegan’s alleged failure to document an assignment from the inventor to the company, and its alleged conflicting representation of the inventor, allegedly caused Accutrax LLC to lose out on a manufacturing contract.  Accutrax’s lawsuit seeks to recover lost profits and other damages from Finnegan."
  • "The action was filed in a Massachusetts state court, and Finnegan has yet to file its answer.  Nevertheless, in a statement published in the Boston Business Journal, Finnegan denies that it ever represented Accutrax."
  • Ed: See the full update for additional detail and extensive reader commentary on this one.

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