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Mass. Court Dismisses CSHL Lawsuit Against Former IP Counsel


Cold Spring Harbor Laboratory’s protracted legal battle against Ropes & Gray, a law firm that once served as the institution’s intellectual property counsel, was dismissed last week after the Massachusetts District Court hearing the case ruled that it did not have jurisdiction over the dispute.

In a motion to dismiss the case filed by Ropes & Gray, the defendant referred to a recent US Supreme Court decision that a statute giving district courts jurisdiction over civil actions relating to patents did not include cases involving allegations of legal malpractice in the handling of a patent matter.

Moreover, since both CSHL and Ropes & Gray are based in New York, a legal standard that gives district courts authority to hear civil cases between parties from different states does not apply, the court found.

As such, CSHL’s lawsuit was dismissed for lack of subject matter jurisdiction, the court said.

In a court filing, Ropes & Gray said it conferred with CSHL about its motion to have the case dismissed, and the “plaintiff confirmed that it does not oppose the relief sought.”

Officials from CSHL were unavailable to comment on whether the matter would be pursued in a state court.

The legal row began in 2010 when CSHL sued Ropes & Gray, along with one of its former lawyers, in a New York district court for allegedly mishandling the prosecution of US two patent applications — Nos. 20040018999, filed May 16, 2001, and 20020162126, filed May 24, 2001 — that related to shRNA inventions made by CHSL researcher Greg Hannon (GSN 2/25/2010).

CSHL charged that attorney Matthew Vincent, who was handling the filings, did not 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.

In doing so, Vincent created the impression that Hannon's work was "either something that Fire invented or was suggested by the Fire application," rather than a novel invention that "represented a considerable advance over the prior art," the suit said.

CSHL said once it had discovered the situation through an internal investigation, the patent applications had been prejudiced, leading to their rejection by the US Patent and Trademark Office. As a result, the institution said it lost out on as much as $82.5 million in licensing revenues and royalties.

Ropes & Gray argued that the patent applications were rejected based on prior art stemming from the work of various RNAi researchers. It also sought dismissal of the case, stating that a New York court was not the proper venue for the litigation since Vincent was based in Massachusetts.

The court agreed, and in early 2011 sent the case to the Massachusetts court (GSN 1/27/2011).

CSHL had some success in that new venue, with the Massachusetts court rejecting an earlier motion to dismiss by Ropes & Gray. However, last week the law firm was successful with its more recent bid to have the case closed.

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