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

By Peter Zura

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)

Full post as published by Two-Seventy-One Patent Blog on February 23, 2010 (boomark / email).