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Law Firm Sued by CSHL for Mishandling IP Asks Court to Dismiss Suit

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By Doug Macron

The law firm hired by Cold Spring Harbor Laboratory to prosecute a series of RNAi-related patent applications, and which CSHL subsequently sued for allegedly mishandling the intellectual property, last month asked a court to dismiss the case, RNAi News has learned.

In a court filing, the firm said CSHL's complaint should be dismissed because its claim of legal malpractice is both "speculative and implausible," and is "flatly contradicted by the indisputable documentary record."

In February, CSHL sued the law firm Ropes & Gray and one of its former attorneys for allegedly improperly prosecuting patent applications covering the work of CSHL investigator Greg Hannon (RNAi News 2/25/2010).

According to the suit, which was filed in the US District Court for the Eastern District of New York, the firm committed "malpractice through their failure to conduct the prosecution according to a reasonable standard of care," which has created the perception that Hannon's work is not "sufficiently unique" from prior art. The US Patent and Trademark Office ultimately rejected Hannon's applications.

Specifically, Ropes & Gray was in charge of prosecuting two US patent applications — Nos. 20040018999, filed May 16, 2001, and 20020162126, filed May 24, 2001 — as well as a related international patent application.

The intellectual property claims "methods for attenuating gene expression in a cell using gene-targeted double-stranded RNA," namely an shRNA, according to the US patent applications' abstracts. "The dsRNA contains a nucleotide sequence that hybridizes under physiologic conditions of the cell to the nucleotide sequence of at least a portion of the gene to be inhibited."

According to CSHL's complaint, Ropes & Gray attorney Matthew Vincent, who was handling the IP, failed to provide "an original, complete description of … Hannon's work … [but instead] relied upon copying extensive portions of text — essentially verbatim — from a prior patent application" published by RNAi pioneers Andrew Fire, of the Carnegie Institution of Washington, and Craig Mello, of the University of Massachusetts Medical School.

Fire and Mello's application gave rise to US patent No. 6,506,559, entitled "Genetic Inhibition by Double-Stranded RNA" — the seminal patent in the RNAi field.

According to the suit, Vincent's actions created the impression that "Hannon's shRNA technology was either something that Fire invented or was suggested by the Fire application," instead of showing that his work "represented a considerable advance over the prior art." CSHL said this prior art includes the Fire patent, "which failed to provide any solution for how to use RNA interference in mammals without killing the treated cells through the so-called interferon or protein kinase response."

As a result, the USPTO rejected Hannon's first application, citing its claims as being anticipated by Fire and Mello's work, CSHL said. The text from the Fire IP was also used by Ropes & Gray's attorney in a follow-up patent application, unfairly prejudicing Hannon's work, the institution added in its suit.

Such actions resulted in the loss of as much as $82 million in licensing and royalty income, CSHL said in its suit.

But in its request to have the lawsuit dismissed, Ropes & Gray said that Hannon's applications were rejected by the USPTO "not only based on [the Fire IP], but also on the separate and independent grounds that … Hannon's alleged invention was not patentable in the view of earlier disclosures by other researchers" in addition to Fire.

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"CSHL does not suggest in its complaint that … Vincent's alleged malpractice did anything to contribute to the [USPTO's] determination that the disclosures of these other scientists besides … Fire precluded claims in the Hannon applications," the law firm stated.

"Subsequent rejections … of the Hannon applications — rejections of separate applications and/or of distinct claims (including those inserted in attempts to overcome prior rejections) — have similarly been based upon multiple examples of preclusive disclosures by other scientists," it added.

The suit "fails to even mention the [patent office's] reliance upon the disclosures of these other scientists, much less to suggest that anything … Vincent did led the [patent office] to conclude that their disclosures provided independent bases for rejecting the claims sought in the Hannon applications," Ropes & Gray said.

The patent examiners who rejected the Hannon applications "made clear that the [IP] would have been rejected in any event," the request for dismissal notes.

Further, CSHL's complaint is based on the idea that the USPTO "misunderstood what [the Fire patent] discloses and that … Vincent's conduct is what caused that supposed misunderstanding," the request for dismissal states. "Such a 'considerable and purely speculative leap' is incompatible with a claim for legal malpractice."

At the same time, this supposed misunderstanding "cannot have been caused by … Vincent's actions because the [patent office] has applied the same understanding of [the Fire IP] in rejecting patent applications by other scientists who were represented by different counsel," the firm adds.

In light of these and other circumstances, Ropes & Gray states in its request, the court should dismiss CSHL's suit.

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