Bressler Risk Blog

Perhaps old hat to some, this presented detail that was new and fascinating to me: “What Lawyers Should Be Thinking About before Entering into an Of Counsel Relationship” —

• “The ‘of counsel’ designation, as envisioned by the authors of various ethics opinions around the country, refers to something altogether different from a traditional attorney within a firm. These opinions generally define the term ‘of counsel’ as an attorney who is not a partner, associate, shareholder, or member of a firm, and further state that an attorney may only be designated ‘of counsel’ to a firm if the attorney will have a close and continuing relationship with that firm.”
• “Thus, any attorney who works at a firm and has a significant degree of shared liability with that firm or has any managerial responsibilities to that firm and/or its staff should never be designated as ‘of counsel.’ And be aware that related terms such as ‘special counsel,’ ‘tax counsel,’ ‘senior counsel,’ and the like are understood to have the same meaning as “of counsel” and thus the requirement of a close and continuing relationship will apply here as well.”
• “The requirement of a close and continuing relationship has been defined as providing for close, ongoing, regular, and frequent contact for the purpose of consultation and advice. Further, the of counsel attorney must be more than an advisor on only one case or just a forwarder or receiver of legal business. Now you know why attorneys sometimes find themselves in ethical hot water after designating an attorney, whose sole role is to act as a referral source, as ‘of counsel’ to a firm. Use of the term in this manner is considered to be a misleading client communication.”
• “For conflict purposes the of counsel affiliation means that the affiliated firm and the of counsel attorney will often be treated as one entity. This does mean that the conflicts the of counsel attorney brings to the table may prevent the affiliated firm from continuing to represent current or future clients.”
• “Likewise, the of counsel attorney must be concerned about apparent or actual conflicts between his own clients and those of the affiliated firm. The imputed disqualification rule is a two-way street and there is little that can be done to correct the problem once it has arisen. Conflict checks can be burdensome and the potential cost in lost business if a conflict is ever missed can be substantial. Always address the conflict issue prior to establishing of counsel relationships so that everyone understands what the additional burden will be and can agree that the benefits outweigh the costs.”

Fascinating piece from Kwok Kit Cheung, partner at Deacons. The article is worth reading in full for much more context, detail and analysis: “An arbitrator’s duty to avoid conflicts of interest” —

• “In Secretariat Consulting Pte Ltd v A Company [2021] EWCA Civ 6, England’s Court of Appeal held that, depending on the terms of the retainer, the relationship between a provider of litigation support services/expert and his or her client, may have one of the characteristics of a fiduciary relationship, namely a duty of loyalty or, to put it another way, a duty to avoid conflicts of interest. In this case, there was a contract with an express clause dealing with conflicts of interest and since a fiduciary duty of loyalty would not add to or enhance the obligations arising from that clause, considering the issue further was unnecessary for the disposition of the appeal.”
• “In March 2019, the respondent’s solicitors approached Secretariat Consulting Pte Ltd (SCL), a Singapore subsidiary of the Secretariat group (which group provides litigation support services and act as delay and quantum experts in construction arbitrations) to provide arbitration support and expert services in Arbitration 1, in connection with the causes of delay and disruption to packages A and B.”
• “Having received the Confidentiality Agreement, the respondent’s solicitors wrote to K (the individual at SCL who was going to be the lead expert and who had signed the Confidentiality Agreement) asking him to confirm that he was not conflicted to act as independent expert witness in the matter, which he did.”
• “In October 2019 Secretariat International UK Ltd (SIUL) was approached by the third party to provide arbitration support and expert services in respect of quantum in Arbitration 2. SIUL ran a conflict check (which involved all entities in the Secretariat group) which revealed the engagement of SCL by the respondent. K wrote to the respondent’s solicitors stating that since the third party’s contract with the respondent was for EPCM works for the full complex, and their engagement was in relation to the evaluation of delays on the construction subcontract for non-process buildings, their view was that working on the two matters (in different offices) would not constitute a ‘strict’ legal conflict and that his firm also had the ability to set the engagements up in a manner so that there was the required physical and electronic separation between the teams.”
• “On 5 March 2020, the respondent’s solicitors wrote to K to say that they would like to expand the scope of their instructions to include expert witness services in the matter of an arbitration in which the respondent was defending claims brought by the third party. Then, on 10 March 2020, the third party wrote to the tribunal in Arbitration 2 to confirm that M of Secretariat had been engaged as the third party’s quantum expert and was already working. On 12 March 2020, the respondent’s solicitors wrote to SCL to say that there was a conflict which could give rise to a risk that SIUL might use the respondent’s confidential information.”
• “The Technology and Construction Court granted an injunction preventing SIUL from doing any further work in Arbitration 2. It held that SCL owed its client (the respondent) a fiduciary duty of loyalty, which meant that SIUL could not provide similar expert services to a third party, who was making a claim in another arbitration against the same respondent arising out of the same project and concerned with the same or similar subject matter.”
• “It said that where a fiduciary duty of loyalty arises, it is not limited to the individual concerned, but also extends to the firm or company and may extend to the wider group. The court distinguished the issue of confidential information and said that the fiduciary obligation of loyalty is not satisfied simply by putting in place measures to preserve confidentiality and privilege. Such a fiduciary must not place himself in a position where his duty and his interest may conflict. This was the first time in the English jurisdiction that an expert had been found to owe a fiduciary duty to its client.”
• “The Court said that none of this should be taken as saying that the same expert cannot act both for and against the same client. Of course, an expert can do so. Large multinational companies often engage experts on one project and see them on the other side in relation to a dispute on another project. That is inevitable. But a conflict of interest is a matter of degree, the Court said, and the overlaps of parties, role, project and subject matter made it plain that in the present case, there was a conflict of interest.”
• “The Court said that the result in this case was a reflection of the terms of the original retainer. It was perfectly possible for a group like Secretariat, if it thought it commercially sensible to do so, to make plain that its representations as to conflict of interest and its undertakings for the future were based solely on the entity involved, and that, despite the scope of the conflict check that they had undertaken, no such representations or undertakings were given in relation to any other entity in the Secretariat group.”

“Rackspace founder Graham Weston sues San Antonio lawyer” —

• “Rackspace Technology Inc. co-founder Graham Weston calls it ‘perhaps the most blatant violation and betrayal of the attorney-client relationship in the history of Texas jurisprudence.'”
• “Davis and his law firm, Davis & Santos, accepted more than $2.9 million in legal fees to represent Weston in various matters over the years — only to ‘secretly’ agree later to serve as Elizabeth Weston’s counsel in the couple’s divorce, the suit alleges. The complaint was filed Wednesday.”
• “As part of his representation of Elizabeth Weston, the complaint says, Davis conducted a “secret investigation” to develop criminal, civil and family law claims against Weston — all while still representing him and entities he manages in three lawsuits.”
• “In an answer filed Thursday afternoon, Davis says the lawsuit is an attempt to “bully” him and his client because ‘they dared to stand up’ to Weston. Davis describes himself as her lawyer and “longtime, trusted confidant.” He has represented Weston entities, for which Elizabeth Weston has served as authorized representative while managing their litigation, the document says. Davis disputes he ever represented Graham Weston individually, save for a matter involving Rackspace that ended in 2012.”
• “In his order, Waldrip found ‘an impermissible conflict of interest arose when Davis agreed to assist Elizabeth in investigating claims now within this divorce proceeding, including allegations of personal injury and family violence against Graham.’ Davis sought to overturn Waldrip’s ruling, but the 3rd Court of Appeals in Austin last week denied the request without explanation.”
• In a declaration attached to Davis’ answer Thursday, Elizabeth Weston said she filed for divorce because ‘I could no longer withstand the emotional, psychological, physical, and sexual abuse I suffered by Graham for many years.’ Weston has said the allegations are fabricated. He has accused his wife of recording him and hiring a private investigator to track him for a year and a half.”

“New Local Rule Allows Disclosure of Litigation Funding in NJ’s Federal Courts” —

• “New local Rule 7.1.1 (effective Aug. 5, 2021), changes the landscape of litigation funding disclosure in New Jersey’s federal courts. The District of New Jersey will now require all parties to file statements setting forth information about any non-party person or entity that is ‘providing funding for some or all of the attorney fees and expenses for the litigation on a non-recourse basis’ in exchange for either ‘a contingent financial interest based upon’ the litigation’s results or a ‘non-monetary result that is not in the nature of a personal or bank loan, or insurance.'”
• “The emerging trend has been to extend privacy protections to litigation funding materials under the work-product doctrine, and generally to deny production or use of such materials in litigation. New Jersey federal courts seem to be charting a different path, and one that may influence other courts to reexamine their own rules and practices.”
• “Part of the stated basis for the new Rule 7.1.1 is to allow judges sufficient information to decide recusal issues for potential pecuniary interest and conflict. However, the Rule’s actual impact may be broader, as the Rule also provides that a party may seek discovery “of the terms of any such agreement upon a showing of good cause that the non-party has authority to make material litigation decisions or settlement decisions, the interests of the parties or the class (if applicable) are not being promoted or protected, or conflicts of interest exist, or such other disclosure is necessary to any issue in the case.” So, although information about the funding is disclosed, a party seeking discovery about the terms must still demonstrate good cause to get additional information. That line of thinking is consistent with the case-by-case analysis generally applied to discovery of litigation funding documents.”
• “New Jersey’s new local federal rule seems intended to strike a balance, requiring a showing of good cause before chasing down records that might be compromising. However, the idea that a funder is a real party in interest to be disclosed at the outset is, in and of itself, not insignificant, particularly as mainstream financial institutions continue to take on this type of funding arrangement. The implications for recusal are real, and courts should have the existence of the agreement and identity of the funder as a basis for decision.”

“Why Don’t Malpractice Policies Typically Cover Consulting Work? Understanding the Ancillary Services Coverage Concern” —

• “Ancillary services are often the issue. It might be a lawyer is planning on offering both legal and non-legal services under the banner of their practice. Think regulatory compliance and consulting in the cybersecurity sector, employment law and consulting or investigation services in the employment law sector, or business formation and consulting in the business sector.”
• “It might be a lawyer planning to team up with a local CPA to offer legal and nonlegal services under one roof. Heck, the plan might be as simple as deciding to offer do-it-yourself legal forms from the law firm’s website. Suffice it to say the length of this list is only going to be limited by the creativity of lawyers and we can be a creative bunch.”
• “Here’s the rub. A lawyer’s professional liability policy does not cover any and all liability that a lawyer may face. At the most basic level, a legal malpractice policy will only cover allegations of negligence in the performance of professional services that were provided to clients of the named insured, a law firm.”
• “The definition of the term “professional services” is typically a rather broad definition that covers the legal advice and services traditionally provided in an attorney-client relationship… The important point here is to help you understand that ancillary services that are nonlegal in nature, such as consulting, are not going to be covered under a lawyer’s professional liability policy nor will any work done on behalf of someone who is not in an attorney-client relationship with you.”
• “Since you should have coverage for both your law practice and your ancillary business, anything you do to help underscore the presence of a separate and distinct delivery model for the legal and nonlegal services you wish to offer will make it easier to properly insure both risks by way of separate policies.”

“Firm Beats DQ Bid Over Ex-Judge’s Role In Malpractice Suit” —

• “Superior Court Judge Keith E. Lynott on Wednesday knocked down plaintiff Noemi Escobar’s bid to disqualify Wilentz Goldman on the grounds that ex-state Appellate Division Judge John E. Keefe is a witness after having served as a mediator in an underlying case where a $102 million child abuse judgment was thrown out on appeal.”
• “The judge found that a state professional ethics rule at issue applied to Keefe’s participation in the present suit as an attorney but not as a witness.”
• “As long as Judge Lynott is “satisfied that Judge Keefe is screened from acting as an attorney for the defendants,” Wilentz Goldman and firm attorney Brian J. Molloy may continue serving as counsel for Mazie Slater and fellow defendant, firm partner David A. Mazie, according to the judge’s written opinion. ‘This is so notwithstanding the fact that Judge Keefe will be a potential fact witness whom either side may summon to appear at a deposition or at the trial,’ Judge Lynott said.”
• “Wilentz Goldman and Molloy have implemented ‘adequate screening procedures,’ even though the firm has said it never intended for Keefe to serve as an attorney in the matter, the judge said. Those procedures include preventing Keefe from accessing the firm’s files in the case or getting a cut of the fees paid to the firm for its work on the suit, the judge said.”
• “The dispute largely centered on the meaning of the phrase ‘any participation’ under New Jersey’s Rule of Professional Conduct 1.12(b). According to that provision, a firm in such a scenario would be barred unless ‘the disqualified lawyer is timely screened from any participation in the matter.'”
• “But Judge Lynott on Wednesday found that it’s ‘appropriate to construe the phrase ‘any participation,’ as used in this rule, to mean participation as an attorney and not as a witness.'”

“7th Circuit upholds spoofing conviction despite Sullivan & Cromwell conflict” —

• “The 7th U.S. Circuit Court of Appeals rejected a former high-speed trader’s challenge to his conviction on spoofing charges, saying that while his law firm Sullivan & Cromwell had a conflict of interest in the case, it did not affect the 2015 trial.”
• “Spoofing involves placing bids to buy or offers to sell futures contracts with the intent to cancel them before execution. By creating an illusion of demand, the tactic can sway prices to benefit the trader’s market positions.”
• “Coscia then filed a civil rights lawsuit seeking to set aside his conviction over Sullivan & Cromwell’s alleged conflict, and sought a new trial based on trade data he had obtained after his conviction.”
• “The court said attorney Kenneth Raisler and his firm’s representation of ICE, ‘and the failure to disclose such conflict, is cause for concern that loyalties may have been divided,’ but said Coscia did not show it adversely affected his defense.”
• “Coscia had argued Sullivan & Cromwell was ineffective for failing to obtain the full ICE data, but the panel said that data would not have changed the trial’s outcome.”

“Pediatrician blasts use of bone scanners as ‘fairness hearing’ begins on Flint settlement” —

• “A Flint pediatrician and former hospital CEO blasted the use of industrial scanners — not designed for use on human beings — to document Flint residents’ exposure to lead-contaminated drinking water, as a federal judge began a multi-day hearing Monday on whether a proposed $641.25 million partial settlement is a fair one.”
• “Also during Tuesday’s daylong hearing, lawyers in the Flint water crisis civil litigation accused one another of unethical behavior and conflicts of interest.”
• “Napoli and another lead attorney, Corey Stern of New York, hit back at Cuker, accusing him of inconsistencies that include questioning the safety of the portable bone scans while at the same time complaining that his clients cannot get access to the scanning, controlled by Napoli’s firm.”
• “Napoli and another lead attorney, Corey Stern of New York, hit back at Cuker, accusing him of inconsistencies that include questioning the safety of the portable bone scans while at the same time complaining that his clients cannot get access to the scanning, controlled by Napoli’s firm.”
• “They also accused Cuker of having a conflict of interest by representing hundreds of clients who want a share of the Flint settlement while at the same time representing a handful of clients who oppose the settlement. That is a conflict because if the settlement gets torpedoed as a result of objections Cuker raises, it will almost certainly hurt his clients who want to settle, they said.”

“Facebook Gets Law Firm Leading Major Antitrust Case Disqualified” —

• “Facebook Inc. succeeded in disqualifying one of the firms leading antitrust litigation over its alleged scheme to squash rival startups, when a federal judge in California ruled that Keller Lenkner LLC was compromised when it hired a lawyer who had worked on the tech giant’s antitrust defense.”
• “Judge Lucy H. Koh removed Keller Lenkner from the proposed consumer class action in the U.S. District Court for the Northern District of California, where it’s one of several parallel lawsuits accusing Facebook of exploiting its troves of data to target competing apps that posed a potential threat.”
• The judge noted: “The court notes, nonetheless, that the record does not reflect that there has been any disclosure of Facebook confidential information. However, such a disclosure is not required for disqualification… The purpose of a disqualification order is prophylactic, not punitive.”
• For more history on this one

“NYSBA Ethics Opinion Gives Green Light To Lawyers’ Involvement With Marijuana Businesses” —

• “Earlier this week, the Committee issued Ethics Opinion 1225, which addresses lawyers’ ethical obligations when engaged in activities regulated by New York’s Recreational Marijuana Law. The Opinion answered three questions:
• “May an attorney ethically provide legal services to assist a client to comply with New York’s Recreational Marijuana Law?:”
  • “the Committee previously concluded that a New York lawyer could assist a client to comply with the Compassionate Care act, which regulated medicinal marijuana.”
• “May an attorney ethically use marijuana recreationally and grow it at home for personal use?”
  • “The Opinion reasoned that “the scope of federal forbearance provides inquirer with a ‘reasonablegood-faith belief that no valid obligation exists” to comply with federal narcotics laws that would otherwise prohibit her ownership of an interest in a cannabis business, her home cultivation of marijuana plants for personal use, and her recreational use of marijuana, where and when such activities are authorized by New York State law.'”
• May an attorney accept an equity interest in a client’s cannabis business in exchange for providing legal services?”
  • “…the Opinion concluded that a lawyer may accept an equity interest in a client’s cannabis business provided the lawyer follows the appropriate conflict of interest rules.”
  • “The Opinion also reasoned that the lawyer should determine whether her equity interest in the client’s business would give rise to a personal interest conflict under RPC 1.7(a)(2). If so, the lawyer may still proceed with the representation provided “(i) the lawyer reasonably believes she can provide competent and diligent representation despite the conflict and (ii) the lawyer obtains the client’s informed consent, confirmed in writing” as required by RPC 1.7(b).”

“Britney Spears’ conservatorship hearing could create change in the system as a whole” —

• “Allowing Spears to choose her own counsel could create systemic change since ABC10 has found this is a rarity in probate courts statewide.”
  “It wasn’t until an army of Britney Spears fans caught wind of the legal system controlling the pop icon’s life as well as her $60 million estate. Today they’ve become known as the Free Britney movement, formed from passionate, emblazed fans across the world, determined to use their voice to help an idol they grew up influenced by, listened to and watched.”
• “The sentiment advocates shared throughout the course of our investigation is that Spears has brought attention to the problem with conservatorships, and therefore the possibility of change. Many of the advocates told ABC10 that ‘the elderly aren’t sexy,’ and that ‘no one cares about grandma,’ which is why they believe change has not happened yet.”
• “Spears was permitted to select attorney Mathew Rosengart, a prominent Los Angeles attorney and former federal prosecutor, after her court-appointed attorney, Sam Ingham, resigned following her explosive testimony calling the conservatorship “abusive” in a June 23 hearing. Ingham had been appointed to represent Spears in 2008.”
• “In our year-long investigation, nearly every conservatorship we reviewed had a court-appointed attorney assigned to represent the conservatee. Court-appointed attorneys are supposed to serve as an unbiased party and represent the best interest of their client.”
• “Our investigation found a pattern in Sacramento County of court-appointed attorneys representing proposed conservators, then conservatees with the same proposed conservator in other cases, posing the question of conflict of interest.”
• “For Spears’ case, MacCarley believes Ingham did not serve in Spears’ best interest because in her June 23 hearing she alleged the conservatorship allowed control over her life, even controlling her cell phone and isolating her.”

“Workers’ Counsel Slams Seafood Joint’s DQ Bid In Wage Suit” —

• ” A proposed class of restaurant servers has urged a New York federal court to deny a seafood eatery’s motion to disqualify its counsel on claims they improperly solicited employees to join a wage suit, saying the DQ bid is an attempt to infringe on their attorney-client relationship.”
• “Lead plaintiff Joseph Pagan and his lawyer at the Ottinger Firm PC asked the court Thursday to instead sanction C.I. Lobster Corp., which runs City Island Lobster House in New York, and its attorney at Milman Labuda Law Group PLLC for bringing a ‘frivolous’ motion to disqualify the former server’s law firm from his Fair Labor Standards Act suit.”
• “C.I. Lobster asked the court in June to disqualify the Ottinger Firm, claiming it made prohibited solicitations in person or by telephone as it represented Pagan in his proposed FLSA class and collective action against the restaurant and its family owners. The seafood restaurant additionally sought other sanctions such as a monetary penalty and an order finding that Ottinger may not collect any fees for work performed in soliciting any opt-in plaintiffs.”
• “In addition, the eatery said, Ottinger has a conflict of interest with Pagan because it has been unwilling to discuss a settlement without certification of a class or collective action, which goes ‘inherently against’ Pagan’s interests due to the time delays involved in litigation, the restaurant said.”
• “However, Pagan in his Thursday opposition to C.I. Lobster’s DQ motion alleged that the only settlement offer to take place was when the parties engaged in a mediation with a qualified and neutral third-party mediator, who conveyed the restaurant’s settlement offer and proposal to both Pagan and his counsel simultaneously over a Zoom call, which Pagan rejected.”
• “Further, he said, C.I. Lobster has provided no solid evidence of any supposed solicitation of employees to join the suit. Ottinger never spoke to any individuals on the phone or indicated via text message that he was soliciting their participation in the litigation, he said.”

“Ransomware-hit law firm gets court order asking crooks not to publish the data they stole” —

• “A barristers’ chambers hit by a ransomware attack has responded by getting a court order demanding the criminals do not share stolen data.”
  “4 New Square chambers, which counts IT dispute experts among its ranks, obtained a privacy injunction from the High Court at the end of June against “person or persons unknown” who were ‘blackmailing’ the firm.”
• “Handed down by Mrs Justice Steyn, the injunction orders the ransomware criminals not to “use, publish or communicate or disclose to any other person” any of the (unspecified) data they stole in June. No data from 4 New Square appears to have been published on the known ransomware gangs’ Tor-hosted leak blogs, though the injunction return date is this Friday (9 July).”
• “We have asked 4 New Square’s CEO about the firm’s reasoning for getting the order and will update this article if we hear back from her. It seems odd to get a piece of paper asking foreign criminals not to ‘publish data stolen from us’ when that is how they do their business.”
• “It is very difficult to see what effect, if any, a civil non-disclosure order will have on a ransomware gang potentially based in a hostile foreign country – especially when such criminals attack multiple countries’ critical national infrastructure with apparent impunity.”

We previously noted this “pinky promise” conflict fight. Here’s the latest: “Alleging ‘Ongoing Breaches,’ Gaming Company Seeks to Expand Lawsuit Against Eckert Seamans” —

• “However, the amended complaint disputes those arguments and seeks to allege that Stewart and Skjoldal further ‘arranged’ for the Harrisburg firm Hawke McKeon & Sniscak to act as conflict counsel for Parx Casino so the attorneys could continue ‘surreptitiously directing the representation of Parx Casino’ against Pace-O-Matic’s interests.”
• “Specifically, the gaming company alleged the lawyers drafted court filings, encouraged participation of the casino gaming regulatory agency and advocated for legal theories and strategies for Parx Casino.”
• “‘In addition to covertly advocating against POM in relation to the Commonwealth Court litigation, Eckert, Mr. Stewart and Mr. Skjoldal actively encouraged criminal, administrative, regulatory and legislative actions against POM and POM games, both while Eckert was representing POM and after that representation ended,’ the amended complaint said.”
• “Along with raising a breach of duty claim, the amended complaint also seeks to add a fraud claim against the firm.”

“Robbins Geller DQ Doesn’t Muddy Investor Law, 2nd Circ. Told” —

• “A Mexican media company urged the Second Circuit on Wednesday to uphold an order disqualifying Robbins Geller Rudman & Dowd LLP from securities litigation stemming from the FIFA corruption scandal, saying the firm’s ‘sky-is-falling’ arguments are just an attempt to distract from its alleged ethical violations.”
• “Grupo Televisa SAB said Robbins Geller has exaggerated the precedential effects of a New York federal judge’s finding that the firm committed ‘fraud’ on the court by failing to disclose short positions held by Colleges of Applied Arts and Technology Pension Plan, the former lead plaintiff in a certified securities class action over bribes Grupo Televisa allegedly paid to FIFA officials.”
• “Robbins Geller warned in its June appeal that requiring institutional investors to disclose all their third-party investments would throw securities litigation into disarray. But Grupo Televisa said these arguments conveniently skirt around the real reason for the firm’s disqualification: that it allegedly lied to the court for more than a year about CAAT’s investment portfolio.”
• “U.S. District Judge Louis L. Stanton removed CAAT as class representative in June 2020 after it came to light that the investment fund, which claimed to have lost $986,000 in Grupo Televisa’s alleged stock drop, in fact gained $11 million from shares it held in a Canadian hedge fund that had shorted the stock.”
• “Judge Stanton then disqualified Robbins Geller in May after finding that the firm had been aware of CAAT’s short positions all along without telling the court. The firm appealed, arguing with the help of legal titans like David Boies and a group of pension funds that filed an amicus brief that the ruling would ‘cripple’ the ability of institutional investors to serve as lead plaintiffs in securities cases.”
• “But Grupo Televisa said Thursday that the facts belie those arguments. In the year since Judge Stanton’s initial order booting CAAT, the media company said, no issues or uncertainties tied to third-party investments have arisen in other lead plaintiff battles.”

Hat tip to my IP expert colleague Chris Kave for flagging this one (make sure to read until the end): “Carpmaels & Ransford sued for missed appeal deadline” —

• “One of the UK’s leading patent attorney firms is facing a claim brought by their client, chemical company BASF. BASF is suing Carpmaels for a reported €1.05 billion, because of a missed EPO appeal deadline.”
• “The EPO has stringent criteria for allowing requests for re-establishment. Re-establishment requires a party to show that they used ‘all due care’ to meet the relevant deadline (Article 122(1) EPC) (IPKat). The requirement for ‘all due care’ to have been shown applies to the applicant/patentee, their representative, and even none European patent agents (IPKat). For the ‘all due care’ requirement to be fulfilled, patent attorney firms must show that the failure to meet a deadline was as a result of an isolated mistake in an otherwise well-functioning system (Case Law of the Boards of Appeal, III-E-5.4).”
• “The request for re-establishment was submitted by the Carpmaels patent attorney responsible for the case. The patent attorney had been a partner at Carpmaels for over quarter of a century, during which it was submitted, he “had never missed a due date for filing a Notice of Appeal or any other critical deadline before the EPO”. Shortly before the incident with the appeal deadline, the patent attorney had retired. To manage the hand-over of work, the attorney continued to take some responsibility for a certain number of cases as a consultant and only visited the office occasionally.”
• “Carpmaels argued that the missing of the appeal deadline was an isolated error in an otherwise ‘extremely reliable system.’The EPO sent the minutes of oral proceedings and the revocation decision relating to the case stapled together, with the minutes of oral proceedings in front. Importantly, it is the revocation decision that sets the appeal deadline, not the minutes of oral proceedings. The Carpmaels records department did not notice the revocation decision and thus no appeal deadline was docketed. The responsible attorneys did not notice the mistake, and it was BASF who themselves contacted Carpmaels about the appeal deadline after noticing the decision on the EP register. Carpmaels were then instructed by BASF to work on a statement of grounds of appeal. Still, however, the appeal deadline was not docketed.”
• “Importantly at the time Carpmaels was still reliant on paper files. The retired partner ultimately responsible for the case was predominantly working away from the office and relied on documents that had been emailed to him by BASF and not the physical file. The attorney therefore failed to spot that the documents received by Carpmaels from the EPO had not been processed correctly by the records department. The retired partner was also travelling at the time the appeal deadline came due and only noticed that it had been missed on his return.”
• “The Board noted the failure of the record department to cross-check the incoming mail, the failure of the attorney responsible for signing the delivery receipt to properly review the documents, and the failure of the responsible retired partner to double-check the appeal deadline whilst he was working on the statement of grounds.”
• “Carpmaels’ admit to missing the appeal deadline. Their argument in defence to BASF’s claims is that the patent was clearly invalid anyway, and that the decision of the opposition division to revoke the patent would have been upheld by the Board of Appeal. Carpmaels have therefore placed themselves in the rather unusual position of arguing against the validity of a patent they once defended.”