Monday, February 22, 2010

Disclosure Cut-and-Pasted From Another Patent Leads to Malpractice Claim

Cold Spring Harbor Lab v. R&G, Case No. 2:10-cv-00661(E.D.N.Y.)

This case involved the prosecution of a series of patent applications on behalf of CSHL directed to RNAi technology developed by a Dr. Hannon.  According to the plaintiff,

[R]ather than providing an original, complete description of Dr. Hannon's work, [the prosecuting attorney] instead relied upon copying extensive portions of text -- essentially verbatim -- from a prior patent application (WOI99132619) published by a team led by another researcher in the RNAi field, Dr. Andrew Fire (collectively, "Fire"), to at least, in part, describe Dr. Hannon's inventions. About one half of the "Detailed Description of Certain Preferred Embodiments" found in the three earliest filed Hannon Applications consists of text copied from the Fire application. As described below, [the prosecuting attorney] continued to rely upon this text to describe Dr. Hannon's inventions, and in particular, the shRNA technology that is the subject of the pending Hannon Applications.  By relying extensively on the copied text, [the prosecuting attorney] failed to fully describe and distinguish Dr. Hannon's inventions from the different technology invented by Fire.

During the course of prosecution, [prosecuting attorney] filed numerous follow-up continuation and continuation-in-part ("CIP") applications, allowing several opportunities to properly re-draft the Hannon Applications in such a way that relied on an original description of Dr. Hannon's own work to accurately describe the shRNA technology that Dr. Hannon invented. Instead, [prosecuting attorney] continued to rely upon the text copied from the Fire application, which falsely implied that Dr. Hannon's shRNA technology was either something that Fire invented or was suggested by the Fire application.

[Prosecuting attorney's] failure to provide an adequate description of Dr. Hannon's technology in these applications seriously compromised the ability of these applications, in particular the '557 application, to serve as priority support for Dr. Hannon's patent claims. This fact has deprived CSHL of the opportunity to obtain allowance of claims covering Dr. Hannon's inventions entitled to the respective filing dates of these applications, based on the support from these applications.
 Accordingly, the plaintiff is seeking "lost licensing opportunities for the Hannon technology, which is estimated to be worth no less than $36,500,000 to $81,500,000; and [] disgorgement of all attorneys' fees paid by CSHL to R&G since 2001, which is estimated to be no less than $1,400,000."

Read/download the complaint here (link)

19 Comentários:

Anonymous said...

OK, not to condone the attorney's action, BUT, where was the inventor in the application drafting and review process?

Rico said...

Lazy/sloppy for both parties. It will likely settle or Plaintiff and Defendant both will have egg on their face. Is malpractice comparative fault?

Anonymous said...

an you post the application number or a full link tothe decision?

I would love to see if the inventor duly signed the declaration signifying that what was originally presented was the inventor's work.

Don said...

By the way, there is more to this story The attorney in question also was self dealing. He formed an IP search firm without telling the firm and then approved bills to be paid. Attorney netted approximately $700K! Attorney was disbarred for this.

See http://www.mass.gov/obcbbo/bd09-075.htm

Anonymous said...

Great story, Peter, how'd you find out about this? As to the self-dealing, the issue didn't appear to be the self-dealing per se. The issue was that (a) he didn't *tell* the clients or the firm what he was doing (setting up an outside patent search firm to do search work for his clients, to be ordered through his firm) and (b) he didn't keep records, suggesting that at least some of the work done by the search firm wasn't really done, and at least giving the appearance of impropriety.

But I have to agree with the comments above - where was the inventor in this? He signed the declaration, he knows how to read, it seems kind of a stretch to say that a Howard Hughes researcher was duped when his lawyer tried to pass of another researcher's work as his own.

Anonymous said...

Great Posts but let's get realistic, signing the declaration does not mean the inventor is supposed to know that the language has been copied and plagiarized from another approved application. It is the prosecuting attorneys job to make sure the differences are displayed. There is a reason why they charge such high fees. This will be an interesting one.

Anonymous said...

Anonymous 8:23 - the plagiarism isn't really relevant to the complaint. The complaint is that the copying made it impossible to claim the invention properly. The inventor should have recognized whether his invention was described, irrespective of whatever other background information was included.

Anonymous said...

ya'll are nuts to even suggest the client is at fault. first, nobody reads contracts or other important docs when they DON'T have an atty. when they DO have one, they rely on them! otherwise, hire a paralegal. second, if the lawyer needs to use a description, ASK THE CLIENT! don't just assume you take the other side's argument! come on.

Anonymous said...

Hey 7:14pm Anon,

It appears that the attorney in this case was engaged in, shall we say, less-than-ethical behavior, misconduct, maybe even fraud. As a result, I will grant the benefit of the doubt to CSHL that he really did screw things up royally and shaft them on the applications he drafted and prosecuted for them. That said, speaking more generally:

Regarding your second point, it's not entirely clear what you are attempting to argue. I suspect that you don't understand what is meant by "patent prosecution".

A client-inventor has a legal obligation to read the application. If she doesn't read the application, it really is her own fault for failing to correct anything as basic as whether the invention is fully explained in the application. The USPTO has a little form that it requires inventors to sign, called a "declaration", which tells them that reading their application before filing is mandatory.

Here's the form:
http://www.uspto.gov/web/forms/sb0001.pdf

And the relevant language:
"I hereby state that I have reviewed and understand the contents of the above identified application, including the claims, ..."

I've had clients rewrite half an application, or come in to the office to go over large sections of an application to ensure that the document was complete. The worst was a fourteen-hour meeting in which we exhaustively went over nearly every word before they were satisfied. (On the plus side, the client sent out for lunch boxes and microwaved some dinner for us!!! Woohoo!!!)

Regarding your first point about not reading contracts, either you're being sarcastic or you're a complete idiot. Failing to read a shrinkwrap software license on a video game is one thing. When you are a researcher at a major biotech lab, either you or the lab had better be reading the legal documents you sign.

Relying on the attorney to write claims language that complies with past legal rulings is one thing; claims are finicky and rely on decades of precedent for meanings of individual words and phrases, like the difference between "coupled to" and "connected to" -- the difference can make or destroy a patent infringement lawsuit. Relying on the attorney to draft an adequate general plain-language detailed description is quite another; this is something that inventors can and must verify.

From what little has been explained here, it appears that the detailed description was inadequate, and that is something that an inventor-client can and should have fixed before filing.

However, again, since the attorney in question apparently was disbarred for related actions, I'll give CSHL the benefit of the doubt on this one.

Anonymous said...

11:23 Anon - well said, from multiple perspectives. There's enough "blame" to pass around.

But even considering the lack of diligence by the inventor at the declaration reading point, is his claim for equitable relief something the court should a) listen to, b) listen to and deny, or c) listen to and reward?

Anonymous said...

Plenty of fault to go around on all sides. The inventor should have read the damn application. After reading the SJC judgment, I found interesting that (a) there was no allegation of misfeasance, instead it was a straight failure to disclose/maintain records. In other words, there's nothing to suggest Mr. Vincent didn't actually DO the work he billed for.

I concede a certain amount of grudging respect for his seeing an economic opportunity (i.e., doing patent searches himself, rather than handing them off to some third party). I just wish he could have DOCUMENTED the work done for the $734k in fees he billed. And of course, he damn well better make sure his product was (a) cheaper, and (b) better than the competition.

Anonymous said...

11:23 back again. Your kind words are much appreciated, 6:22.

In rereading my comments in the dark of a new night, I should not have been snarky; my apologies, particularly to 7:14. Too many late nights, my bad.

I've fully read the complaint now, and I really find it quite striking that CSHL and Dr. Hannon repeatedly write that the copied text did not adequately represent or disclose Hannon's invention. Paragraphs 31 and 35 reference points at which Hannon and CSHL could have stopped the problem in its tracks if they'd taken the time to check over the applications with due care, IF the applications didn't cover his work. If the applications did cover it, however, then it's hard to see any way that they could have stopped Vincent's plagiarism and failure-to-disclose the Fire application on an IDS, which still caused quite a bit of harm to them (even aside from the on-the-merits prosecution mess, by creating inequitable conduct issues that could invalidate the entire patent family).

Paragraphs 41-42 (pp. 14-15) claim that Vincent tried to argue, based on the text he'd copied from Fire, that the Hannon application was patentable over Fire! While this may not be exactly how it happened, if it's close, the argument couldn't possibly fly. Moreover, by then, Dr. Hannon MUST have known of Fire's work, since that's what Vincent was having to argue against.

On the other hand, just for starters, Vincent blatantly failed to comply with his duty-of-disclosure to the USPTO. Didn't the guy ever hear of inequitable conduct before? If the Fire patent application was so close to Hannon's technology that Vincent was copying text from it, then he should have handed it to the USPTO on an IDS form at filing time. That would have gotten his misconduct out in the open much earlier, though (which is probably why he didn't do it). Paragraph 53 items (4)-(5) are absolute killers to his reputation. He appears to have given up his law license; I wonder if the USPTO OED has done anything about him.

Yet it wasn't until after September 2007 that one of CSHL's employees started investigating what was going on, reading the applications and Office actions in a critical light, and so on. (Paragraphs 51-54.)

I feel quite bad for CSHL and Dr. Hannon, I truly do. The level of misconduct described is shocking. Their third claim (paragraphs 78-88) sounds like a slam-dunk to me. First claim, I don't know how they could prove that they would have gotten claims allowed "but for" Vincent. I wish them the best of luck at trial and with the USPTO (maybe with new counsel, they can salvage something out of their applications).

But yes, I think the court should listen to them, certainly on their third claim, and at least giving them a chance on the rest. While they may be overstating the inadequacy of the applications, the plagiarism and inequitable conduct issues were harmful and pf willful.

Jessica said...

I would love to see if the inventor duly signed the declaration signifying that what was originally presented was the inventor's work.

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Anonymous said...

Looked at the file histories. Fire *was* cited early in prosecution, in most cases before the first office action. So not sure what the late citing reference is all about. Another interesting note. The original application was about the discovery of the enzymes involved, not the RNA. Looks like these guys (Hannon) tried to rewrite the claims to cover where the science went after the fact.

Anonymous said...

And now tried to lay the blame on someone else for not recognizing an invention they in fact did not make.

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auto insurance quotes said...

If Dr Hannon was that clever to invent something worth millions, he should have been wise enough to check the documents presented on his behalf. Accountants and lawyers only act on the instructions of their clients.

free credit report said...

What an expensive case. patents can be tricky also as you can create something which you think is your design but then find out somebody has already patended something similar

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