Missed Deadline in Med Mal Suit Results in Plaintiff Win in Legal Mal Suit

legal malpractice missed deadlineThe Connecticut Law Tribune reported that a jury ruled in favor of the mother of a deceased young man, who sued the estate of the attorney  who allegedly mishandled her son’s medical malpractice claim.

Background

Peter Gonzalez, 25, sought medical attention from Med-Help, a walk-in center based in Bristol, CT in July, 2010.

He later was admitted to Bristol Hospital, and died from complications of a perforated appendix that had been left untreated.

His mother, Tina Gonzalez, retained Enfield, CT attorney David E. Marmelstein to file a medical malpractice claim, even though Marmelstein reportedly had little, if any experience handling such matters.

Marmelstein allegedly “failed to timely and properly investigate and prepare the medical negligence claim to comply with Connecticut legal requirements.” As a result, the two-year statute of limitation expired before suit was filed.

Marmelstein died of a heart attack in October 2013, about 14 months after the statute of limitations expired.

Lawsuit and Outcome

Tina Gonzalez sued Marmelstein’s estate in Hartford Superior Court.

A six-person jury deliberated for two hours, before finding in her favor.

She and Marmelstein’s estate had reached a confidential settlement agreement prior to trial, payment of which was presumably contingent on the jury ruling in her favor.

It’s not known if Marmelstein had a legal malpractice insurance policy that defended and indemnified his estate for this matter.

Reaction

Gonzalez’ attorney told the Connecticut Law Tribune “This was a very unique case…Legal malpractice is somewhat of a rare claim. But, underneath this is a case within a case. We actually had to put on two cases: medical malpractice and a legal malpractice case.”

He added that the jury agreed that Gonzalez would’ve won the medical malpractice case, if it went to trial, and that Marmelstein was at fault for not filing a claim prior to the statute of limitations expiring.

“He [Marmelstein] got involved in a case that would have been better served by another attorney.”

The attorney also stated that Tina Gonzalez “should not have had this drag on for six years without a resolution. The fact that this is over and there is closure to her son’s death is satisfying to her and the rest of her family.”

Comment

Risk Management Rule #1 for every attorney should be “don’t dabble” in cases that are outside of your area of expertise. This is especially true for litigated matters like this one, because it’s easy to miss an SOL, as happened here, or commit another error, due to lack of understanding of the relevant rules of civil procedure.

The Lawyer.com profile of attorney David E. Marmelstein of Enfield, CT, who’s likely the same attorney that handled this matter, lists his practice areas as Construction, Consumer Protection, Environmental Law, Mental Health, and Land Use & Zoning.

None of these are remotely related to medical malpractice, which is one of the most complex practice areas. These cases generally take a long time and great expense to litigate, and are difficult to win, even if the fact pattern favors the plaintiff. Firms that specialize in Plaintiff Med. Mal. cases are best equipped to handle them

Every attorney should recognize his or her limitations, and refer matters outside of their expertise to local counsel who’s competent in such matters. Such counsel will often pay a referral fee, especially for matters like this one, where the damages are significant.

Referral is thus in the best interests of the referring attorney and the client.  

Failed Real Estate Deal Lands Carlton Fields A Malpractice Claim

Legal Malpractice Carlton Fields

Daily Business Review reported that a former client is suing Am Law 200 member Carlton Fields Jorden Burt, LLP and two of its attorneys, for legal malpractice over a failed $25 million land deal.

Background

Real estate investor 276 Port L.P., sought to buy an 8.5-acre parcel of land in Fort Lauderdale, several minutes from Fort Lauderdale International Airport. 

The property was encumbered by five ground leases with a remaining term of about 40 years. The leaseholder was interested in selling the leases, but Port believed “certain perceived defaults” would allow it to terminate them, including the leaseholder’s removal of a motel and other structures, and failure to post surety bonds.

The parties agreed on a purchase price of $25 million. Port put down a deposit of $200,000, which would become non-refundable after the 60-day due diligence period expired.

According to court filings, “the $25 million purchase price for the property was premised on the assumption that the leases were in default or would be in default at some future time and could be terminated.” If the leases stayed in place, the $25 million price tag would have “been excessive and unjustified”.

Port retained Carlton Fields and its attorneys Gross and Steinman in April, 2016, to work on the deal, including “Review and analyze ground leases for potential defaults and develop strategy for resolving same including possible litigation…”, according to the engagement letter between the parties. The firm charged $595 per hour with a $10,000 retainer.

Port claims that:
“Carlton Fields sent a six page Opinion Letter to Port, opining that there were numerous violations of the Leases based on defaults that had occurred in 2007 and Carlton Fields also opined that:

“We believe that the likelihood of prevailing on some of these claims, at least in connection with terminating the Ground Leases, would be greater than 50% . . . .”

Port said it relied on that opinion, but it turned out be erroneous, which caused it to lose its deposit, when the deal didn’t close.

Port also claims that:
“Carlton Fields terminated its representation of Port on September 12, 2016, and Port had to find successor counsel. Carlton Fields refused to turn over Port’s file until after Port gave the law firm a full release. Carlton Fields attempted to coerce a release from Port and conceal further evidence of its malpractice.”

Berger Singerman, Port’s successor counsel, concluded that “there was no viable way to acquire the Property and then terminate the…Leases, because all such claims were barred as a matter of law. “

Malpractice Claim

Port’s complaint alleges negligence and breach of fiduciary duty against Carlton Fields, Gross and Steinman, and negligent misrepresentation against Carlton Fields and Gross.

“The Carlton Fields Opinion Letter was erroneous. Carlton Fields failed to reasonably investigate the facts and failed to research and analyze the relevant law.

Among other things, the Leases were not in default and could not be terminated because:

-The alleged defaults occurred in 2007 and 2008. Any claims of default under the Leases would be barred by the 5-year statute of limitations, waiver and estoppel.

-In May 2013, the existing landlord had issued an Estoppel Certificate for the benefit of the Tenant’s predecessor in interest, which stated that “Tenant is not in default under any of the Leases.”

“…Carlton Fields was wrong,” said Port’s attorney. “If the opinion had been, ‘You can’t terminate the ground leases,’ my client would have gotten their deposit and gone on to do different things.”

Firm’s Response

Carlton Fields filed an answer alleging that Port had contributory/comparative negligence for its damages, failed to mitigate its damages, etc. It also filed a counterclaim for breach of contract, alleging that Port failed to pay its invoices, which according to Port totaled at least $96,311, and asked the court to award compensatory damages, pre- and post-judgment interest, reasonable costs and other relief.

It denies any wrongdoing, and promised to “staunchly defend” itself against the plaintiff’s attempt “to blame Carlton Fields for its own business decisions.”

“Against Carlton Fields’ advice, Port publicized the litigation strategy to potential investors, which then caused problems between Port and the seller,” said the law firm’s outside malpractice defense counsel. “The deal failed to close for this and other reasons unrelated to the firm’s work.”

The ‘publicity’ counsel referred to was an information package that Port sent to potential investors, which included the Carlton Fields Opinion.

Boies, Schiller & Flexner, which was counsel for the ground lease tenant NAP 17th Street, obtained it, and advised Carlton Fields that NAP 17th Street would sue for slander of title if Port or JDM (the property seller) asserted that the leases were in default or tried to cancel them.

JDM then informed Port that it would not extend the closing on the sale of the property, unless Port agreed to indemnify it, if NAP 17th Street sued it. Port declined to do so, and the transaction did not close, which caused Port to lose its deposit

Analysis
If Port’s allegations are true, then attorney Gross should’ve concluded that the ground leases couldn’t be terminated.

Despite that, the firm appears to have a good contributory negligence claim, as Gross’ letter stating “We believe that the likelihood of prevailing on some of these claims, at least in connection with terminating the ground leases, would be greater than 50%”, while incorrect, was hardly a ringing endorsement, let alone a guarantee of victory.

Also, Port’s hard damages appear to be limited to its lost deposit of $200,000 and the fees it (presumably) paid Berger Singerman. Assuming the total is $250,000 or less, it’s likely within Carlton Fields’ malpractice insurance deductible or self-insured retention.

All of these factors should encourage a settlement of this matter, before litigation expenses mount.

$850K Malpractice Verdict in the Case of the Missing Expert Report

Legal Malpractice Expert Report

The New Jersey Law Journal reported that a Passaic County jury awarded $850,000 to the plaintiff in a legal malpractice case whose attorney failed to obtain an expert report.

Underlying Case

Plaintiff Aref Abuhadba hired Thomas Doerr of Berman Sauter Record & Jardim in December, 2010, to sue various contractors who allegedly designed and built a retaining wall on his property that cracked and bulged right after it was completed, and had to be shored up. The wall was intended to facilitate construction of a residence on a mountaintop lot in Totowa, NJ.

Doerr filed suit on Abuhadba’s behalf in March 2011, but allegedly failed to take any steps to secure expert reports by the agreed-on deadline, or for months afterward.

That led to the court granting defendants’ motion for summary judgment.

Abuhadba’s effort to vacate the summary judgment failed.

Firm Disbands

Berman Sauter shut down after Abuhadba lost his case, but before he sued it.

The firm is also a party to another malpractice suit—Berman, Sauter, Record & Jardim v. Robinson. That suit began as a fee dispute, but one of the defendants filed a counterclaim alleging that Sauter negligently handled a real estate matter.

The case achieved notoriety in legal circles, due to a dispute over whether the same judge could preside over it at both the trial court and appellate levels. The NJ Supreme Court ruled that he wasn’t precluded from doing so. The case is scheduled for a retrial on May 1.

Malpractice Claim

Abuhadba filed a malpractice suit against Attorney Doerr and the Berman Sauter firm, after it had disbanded.

Their defense was that an expert repeatedly promised to produce his report, but failed to do so. However, Doerr claimed all his interactions with the expert were by phone, so there was no correspondence to support that claim.

The jury obviously didn’t believe the firm’s defense. The $850,000 it awarded Abuhadba is the amount that he stood to recover in the legal malpractice case, according to his attorney, and he’ll seek interest and a fee award, pursuant to Saffer v. Willoughbywhich permits fee shifting in legal malpractice cases.

The verdict was covered by Berman Sauter’s malpractice insurance policy.

Analysis

This appears to be an open-and-shut case of legal malpractice, so why was it tried, i.e., why was ‘good money thrown after bad’ defending an apparently unwinnable case?

Since the firm’s malpractice insurer paid the verdict, it also provided a defense. So why didn’t the defense counsel it retained evaluate the case early on as unwinnable, and recommend that it be settled?

Alternatively, if that did happen, and the insurer agreed, but the firm refused to consent a settlement, which is required by all legal malpractice policies, then why didn’t the insurer cite the “hammer clause”, whereby if a firm refuses to agree to a settlement recommended by the insurer, it must pay out-of-pocket any indemnity + defense costs over that amount that the insurer incurs.

It’s unlikely that if Berman Sauter’s insurer did send it a “hammer clause” letter, that the firm, which as noted, had already disbanded, would’ve withheld its consent to a settlement.

By allowing the case to be tried, the insurer and the firm may both be exposed to a fee shifting award (the insurer’s exposure depends on how much, if anything, is left on the per claim limit of the firm’s malpractice policy, after payment of the verdict and defense counsel’s fees).

Most importantly, why didn’t the attorney either retain an expert or tell the plaintiff that he couldn’t find one, and then withdraw from the case?

Wrong Word in Contract Leads to $2M Malpractice Suit

Legal Malpractice Taylor EnglishWrong Word in Contract Leads to $2M Malpractice Suit

Daily Report Online reported that Taylor English Duma, a 133-lawyer firm based in Atlanta, and one of its partners, have been sued for malpractice for allegedly mis-drafting a purchase agreement.

Background

Alpharetta, GA-based Opsolve, LLC provides support services to energy companies.

It agreed to purchase all of the stock of software company Enercom, in 2013. Taylor English partner Jeff Woodward represented OpSolve in the acquisition.

OpSolve claims that the agreed purchase price was Enercom’s 2013 revenue minus a guaranteed payment of $275,000, with the total payment capped at $730,000.

Enercom’s 2013 revenue was about $513,000, so under the agreed-upon formula, the purchase price should have been about $238,000.

However, OpSolve alleges that the agreement drafted by Woodward called for a purchase price of Enercom’s 2013 revenue plus $275,000, again capped at $730,000.

As a result, Enercom’s shareholders demanded $455,000 plus the guaranteed payment—a difference of $217,000. (It’s unclear where the $455,000 figure comes from: $513,000 + $275,000 =$788,000, which would be reduced to $730,000, per the cap. This is the amount Enercom should’ve demanded, if the contract was for revenues plus $275,000, adjusted for the cap).

Litigation

OpSolve alleges that “rather than admitting his negligence and mistake, (Woodward) instead chose to influence his client OpSolve in a manner which required OpSolve to pursue litigation,” against Enercom.

Enercom presented OpSolve with a demand letter, which was rejected, and then sued OpSolve in May 2014, in Fulton County Superior Court.

OpSolve’s defense strategies included that a “mutual mistake” was made by both parties in drafting the agreement, and that it contained “ambiguities” that should allow it to be reformed under Georgia law.

“Predictably, however, the litigation strategy was disastrous,” OpSolve claimed, and cost it “substantial and completely unnecessary legal fees on top of the additional amounts it already owed to Enercom under the clear and unambiguous terms” of the agreement.

OpSolve alleges that two other Taylor English partners, Patton and Weber, reviewed the agreement and Enercom’s demand letter at Woodward’s request; Woodward then advised OpSolve to reject it.

Three months later, Weber sent a memo to Patton, warning that Enercom’s court filings provided “ample support for their legal argument” that the purchase agreement was “unambiguous on its face.”

She also asked whether Enercom had “raised the issue” of Georgia’s frivolous litigation statute. “I think we need to be cautious of how we proceed given the arguments we are
attempting to raise potentially lack both legal and actual authority.”

A  few days later, Patton advised OpSolve’s managing partner via email, that “absent clear evidence” that Enercom “understood the deal the same way we did, we will not win” on the issue.

Patton also advised Woodward in a private email that, “At this point, my opinion is that we are throwing good money after bad” defending the case, and “allowing opposing counsel to run up their legal fees.”

OpSolve claims that Woodward never told it that his colleague Patton had recommended that OpSolve honor the agreement as written and get out of the suit, and that “Woodward persisted in the position that his work was correct and that OpSolve could prevail in the litigation, contrary to the advice” of his colleagues.

In October 2014, Enercom issued a settlement demand for $600,000: $455,000 owed under the contract plus $150,000 in attorney fees and expenses.

OpSolve rejected the demand on the advice of its counsel.

In September 2015, the Court granted Enercom summary judgment on all of its claims.

The parties then agreed to a mediation, at which the matter was settled.

OpSolve alleges that Woodward’s “disastrous” advice to litigate the matter threatened to drive it into bankruptcy.

Aftermath

OpSolve claims that Woodward emailed its managing partner Carr after the settlement, offering to “touch base tomorrow on how [Taylor English] can help with the costs.”

OpSolve then “communicated with [Taylor English] in an attempt to recoup their damages…However, despite Woodward’s tacit admission to committing malpractice and causing harm to OpSolve”, no assistance was forthcoming.

OpSolve’s malpractice counsel said that Taylor English neither offered assistance nor responded to his efforts to discuss the case. “They in essence forced this issue…They never offered anything. They never responded to the demand letter” that he sent in December, 2015.

Malpractice Claim

OpSolve sued Taylor English and Woodward in January, 2017 in Fulton County Superior Court, for legal malpractice, breach of fiduciary duty, breach of contract, and punitive damages, as well as a claim under a Georgia statute that permits the recovery of fees from a party that has been “stubbornly litigious”, and acted in bad faith.

OpSolve seeks more than $600,000 in damages on each of three counts, litigation expenses of at least $150,000, the disgorgement of more than $182,000 in fees it paid Taylor English, and punitive damages of more than $500,000.

Firm’s Response

Taylor English’s general counsel, John Gross said “We are confident that the legal work we provided to OpSolve far surpassed what it has alleged, and we intend to defend this baseless claim vigorously on behalf of our firm and our lawyers.”

Analysis

Assuming OpSolve’s allegations are correct, then there was an obvious risk management failure on Atty. Woodward’s part in not catching the error in the contract.

This wasn’t a misspelling, etc., so it’s not something that a proofreader would likely have caught. It was thus incumbent on Woodward, as the contract drafter, to review the document, and ensure that it reflected his intent.

Further, if he did make the mistake as alleged, he should’ve admitted it. Instead, he apparently compounded his error by not admitting it, and instead encouraging OpSolve to litigate Enercom’s lawsuit, and raise meritless defenses, i.e., “mutual mistake” and “ambiguities” in the contract.

On the other hand, Enercom’s attorney presumably reviewed the contract before Enercom signed it, and discovered the error. If so, wasn’t he or she ethically obligated to point it out? And if not obligated, how about doing it anyway, as a matter of honesty? Instead, Enercom appears to have played “gotcha” with OpSolve.

Also, Woodward’s colleague Patton emailed OpSolve’s managing partner that “absent clear evidence” that Enercom “understood the deal the same way we did, we will not win” on the issue. However, Enercom must have understood the deal the same way OpSolve did, i.e., the agreed-upon price was “revenues minus” , not “revenues plus”, otherwise, Woodward didn’t make a mistake, and there’d be no grounds to sue him for malpractice.

There presumably was a paper trail of emails, letters, phone call notes, contract drafts, etc., stating that the terms were ‘minus’, not ‘plus’. Why not use that to seek rescission of the contract, i.e., present it to the court in response to Enercom’s suit, as proof that the wording in the contract was due to a unilateral error by OpSolve’s counsel, and didn’t reflect the parties’ intent?

If the answer to that is that the courts are reluctant to void a contract due to one party’s mistake, especially when that party was represented by counsel, then Woodward and Taylor English should’ve advised OpSolve to pay Enercom before Enercom filed suit.

The firm should also have considered paying for its mistake, including involving its legal malpractice insurer, many of which offer pre-claim assistance to head off the possibility of a malpractice claim being filed.

By not doing those things, Taylor English invited a malpractice claim, and it got one.

IP Firm’s Appeal of $9M Malpractice Verdict is Denied, Part III of III

Editor’s note: this post was originally published on 10/26/2015. It has been updated to reflect recent developments, and divided into three parts for easier reading. This is part III. Part I  Part II  

Further Activity
2015

July: ATS&K filed a Notice of Appeal.

October 13th: The Court approved Protostorm’s motion to register the Amended Judg-ment in federal district courts, state courts in California, Florida, Texas, etc., “and in such other jurisdictions as Protostorm may determine…that the judgment debtors’ assets have been or may be found”. It subsequently registered the judgment in Minnesota.

October 14th: The court granted Protostorm’s motion to hold ATS&K, its managing part-ner Schiavelli, and its equity partners in contempt for violating the Court’s December, 2014 order, which limited “ATS&K’s ability to transfer monies.” Those limitations were imposed “to provide additional security to Protostorm regarding its ability to recover on the judgment”, and were in lieu of ATS&K posting a bond to stay enforcement of the judgment while its post-trial motion was pending.

The Court Order prohibited ATS&K from “paying expenses beyond ‘operating expenses incurred in the ordinary course of business[.]’” However:

“…it is undisputed that, after informing Protostorm that it had ceased providing legal   services as of April 30, 2015, ATS&K made payments to firm members and various      third parties totaling $118,033 in May 2015.

 (Further), ATS&K unreasonably failed to inform the Court that it had ceased perform-  ing legal services in April or seek guidance from the Court on whether it was permitted to make payments for expenses that logically could be deemed non-operating.”

As a remedy, the Court ruled that the “surplus in ATS&K’s accounts at the close of April 2015 ($60,209.00), plus ATS&K’s total revenues in May 2015 ($163,970.00) compensates Protostorm for ATS&K’s contempt of the December 24 Order…”

The total sanction against ATS&K and Schiavelli was thus $224,179.00, which “shall be enforceable against ATS&K’s assets and Schiavelli’s personal assets.”

October 20th: In a letter (PACER reg. req’d.; document #725) to Judge Chen, ATS&K’s counsel foretold its appeal strategy, stating that since the briefing on the post-trial motions in June:

“there have been numerous additional decisions demonstrating that (i) Protostorm’s   invention is unpatentable under Alice…; (ii) patentability under Alice is to be decided  as a matter of law and thus not waived; (iii) patentability of that alleged invention is  judged under the Alice standard, which applies retroactively; and (iv) a patent prose-  cution malpractice claim fails in the absence of a patentable invention.”

The attorney cited Encyclopedia Britannica v. Dickstein Shapiro LLP, in which “the Court rejected the exact arguments that Protostorm has made here”, Kroy IP Holdings, LLC v. Safeway, Inc., and OIP Technologies v. Amazon.com, Inc.

The attorney concluded “there are significant questions whether (Protostorm) will be able to prevail on appeal.”

October 27th: ATS&K appealed the Contempt Order.

November, 2015 – ATS&K filed its opening brief with the Second Circuit appellate court, reiterating its claim that Protostorm’s invention isn’t patentable under Alice, and without a patentable invention, Protostorm LLC can’t sustain a claim for malpractice. “Because Protostorm had no patentable invention, any alleged malpractice by ATSK did not result in a cognizable harm.”

The firm argued that Alice and similar decisions have held that abstract computerized ideas like Protostorm’s method for providing advertising in the context of Internet video games, cannot be patented under Section 101 of the Patent Act. “Rarely has there been such an abundance of directly applicable, uniformly-decided precedent on the critical question at issue.”

ATS&K also contested District Court Judge Chen’s refusal to set aside the jury verdict, because it didn’t raise these defenses until after the trial, when it filed its 50(a) motion. The firm argued that it “preserved its Section 101 argument by raising it in its post-trial motion…(Further), even if ATSK had not asserted the defense in its post-trial motion…a party can raise a pure question of law such as ATSK’s Section 101 argument for the first time on appeal.”

ATS&K also argued that even if Protostorm’s invention wasn’t fatally flawed, it failed to prove damages, which is an essential part of a New York legal malpractice case. Finally, it claimed that Judge Chen’s order that it pay nearly $225,000 in sanctions was “plainly contrary to law…The order must have been ‘specific and unambiguous,’” the firm said, contending it was not.

2016

March – Protostorm filed a cross-appeal challenging Judge Chen’s ruling that the damages apportioned to ATS&K attorneys Brundidge (15%) and Bailey (6%) should be assigned to ATS&K.

June – former ATS&K attorney Carl Brundidge urged the Second Circuit to deny Protostorm’s cross-appeal, arguing that it agreed to let Judge Chen determine the apportionment of compensatory damages among the defendants, but after final judgment was entered holding ATS&K solely responsible, it tried to change its theory on the apportionment of damages and have Brundidge held jointly and severally liable.

Brundidge argued that Judge Chen was correct to deny Protostorm’s attempt to change the damages apportionment. Further, “Mr. Brundidge would be substantially prejudiced by now applying joint and several liability to hold him liable for $6.696 million in compensatory damages, plus over $1 million in prejudgment interest. It is necessary and appropriate to find waiver here because Mr. Brundidge was deprived of an opportunity to offer evidence relevant to the issue of joint and several liability at trial.”

He concluded that Protostorm must be held to its decisions, and since the apportionment of damages was consistent with Protostorm’s trial strategy, the Second Circuit should affirm the district court’s apportionment decision.

August – ATS&K filed a brief with the Second Circuit reiterating its earlier argument that Protostorm’s patent would be considered an abstract computer idea under Alice, and a patent prosecution malpractice claim can’t be sustained with regard to an unpatentable invention. “When the law is properly applied, Protostorm’s claim crumbles and the judgment against ATSK must be set aside.” It also argued that Protostorm misstated the law when it claimed that Alice cannot be applied retroactively, and wrongly claimed that its invention was more than an abstract computer idea.

Protostorm also filed a brief, which opposed the argument of ATS&K attorneys Brundidge and Bailey that Judge Chen correctly absolved them of individual liability. The company said as agents of ATS&K at the time the patent application was allegedly mishandled, the attorneys are “jointly and severally liable” for the damages and interest awarded to Protostorm. “Under the case law cited in Protostorm’s opening brief, nothing could be clearer than the applicable tort law principles that a principal is liable for the negligent actions of its agent under the doctrine of respondeat superior and the agent, in this case Brundidge and Bailey, remains liable for the agent’s negligent acts,”

Brundidge also filed a brief, which sought to revive the Statute of Limitations defense that had been rejected by the lower court in 2011, via denial of defendants’ MSJ. He claimed that “there is no dispute” that Protostorm filed its malpractice claims against him “many years” after New York’s three-year statute of limitations for such claims had expired.

He also sought to have the $100,000 judgment against him for punitive damages overturned, arguing that Protostorm failed to show that his alleged errors in handling the patent application “were intentional, wanton or malicious”, and that the record demonstrated that he warned Protostorm that its patent would be abandoned by the firm unless it took further action, according to his brief.

November – Oral argument took place before a panel of Second Circuit court judges.

ATS&K, Bailey, Schiavelli, and Brundidge urged the panel to reverse the judgment for Protostorm LLC, because its invention wasn’t patentable, even though they failed to raise the patentability defense at trial.

They relied primarily on Encyclopedia Britannica v. Dickstein Shapiro LLP, (see Part II), which their attorney argued “is on all fours with this present case”.

Protostorm’s counsel countered that the defendants were trying to “undermine” the jury’s findings by making the appeal about patent law instead of legal malpractice. “This is not a patent-law case…We can’t pretend that there was not an actual trial here.”

The sides also argued over what portion of damages each defendant could be held responsible for, and over whether a Judge Chen’s contempt order and sanctions against ATS&K and attorney Schiavelli were proper.

The judges raised the possibility that defendants had waived their Alice defense by not bringing it up before trial, and asked if there weren’t also factual issues to consider, which would preclude a ruling on patentability based solely on the law.

December – The Second Circuit upheld the District Court’s judgment against ATS&K.

The panel ruled that defendants couldn’t raise the argument that Protostorm’s invention was unpatentable on appeal based on Alice, because they failed to preserve the argument in their motions for judgment as a matter of law during trial.

The panel also found that the jury’s verdict was supported by Protostorm’s damages model offered at trial.

Wrapping up the other outstanding issues, the panel:

  • Rejected attorney Brundidge’s arguments that Protostorm’s suit against him was time-barred as a matter of law, ruling “the jury’s verdict on the statute of limitations was legally proper and was supported by sufficient evidence.” Brundidge is thus responsible for the judgment against him of $100,000 in punitive damages, as awarded to Protostorm by the District Court.
  • Reversed Judge Chen’s contempt ruling against former ATS&K Managing Partner Alan Schiavelli for violating the terms of a December 2014 court order barring the firm from making payments outside of normal operating expenses, because he was no longer the managing partner when those payments were made.However, the panel upheld Judge Chen’s contempt ruling against ATS&K itself (and presumably, the sanctions of $224,179.00).
  • Denied Protostorm’s cross-appeal seeking to hold attorneys Brundidge and Bailey jointly and severally liable with ATS&K for the judgment, ruling that its counsel had waived the issue at trial.

III. Next Steps

A. Defendants can request that the Second Circuit rehear the panel’s decision en banc, but this case doesn’t appear to be complex or important enough for the request to be granted.

B. It’s bitterly ironic that the seeming conclusion of this nearly nine year-old legal malpractice claim may spawn further legal malpractice claims:

    • ATS&K may have a viable malpractice claim against its trial counsel for failing to preserve during the trial the argument that Protostorm’s invention was unpatentable, based on Alice. As noted, the appeals court ruled that this omission prevented defendants from raising that argument on appeal.
    • Protostorm may have viable malpractice claim against its trial counsel for waiving its right to seek to hold attorneys Brundidge and Bailey jointly and severally liable with ATS&K for the judgment.

      As mentioned above, Protostorm moved to register the judgment in other jurisdictions where defendants may have assets, a clear sign that it was concerned about its ability to collect. As mentioned in Part II, ATS&K essentially shut down in April, 2015, so it doesn’t have ongoing cash flow. Further, its assets have likely been removed, and Protostorm has no recourse against its former equity partners. Therefore, having Brundidge and Bailey declared jointly liable for the verdict would’ve given Protostorm additional leverage, although it’s unclear if they have sufficient assets to satisfy the balance of the judgment, after ATS&K’s malpractice insurance policy is exhausted.

IV. Lessons

A. Law Practice Risk Management

This case stemmed from the simplest of errors – the failure to check a box on a patent application.

A logical way to prevent such errors is to have a second set of eyes review every patent application before it’s filed; a competent paralegal would’ve easily caught the error.

ATS&K was also undone by failing to utilize two essential law practice risk management techniques:

  1. Engagement letter – one of its main purposes is to specify the scope of services that a firm will provide. If ATS&K and Protostorm had signed an engagement letter stating that the firm would only file the patent application, i.e., not prosecute it, then the court may well have granted its motion for summary judgment. And if the engagement letter stated that the firm would both file and prosecute the patent, then perhaps it would’ve felt compelled to do so, rather than ceasing work on it.

Further, a well-drafted engagement letter includes a fee agreement that specifies the rate the firm will be paid, and the billing and payment cycle, and provides that the firm may withdraw from representation for non-payment of fees.

Having this in writing may have motivated Protostorm to pay ATS&K’s bill, which in turn would’ve motivated the firm to continue handling the matter after 2001. Conversely, it would’ve given the firm solid grounds to withdraw, if Protostorm didn’t pay its bill.

  1. Termination letter – ATS&K’s failure to send one to Protostorm in late 2001 for non-payment of fees (assuming they were still owed), tolled the Statute of Limitations, which in turn led the court to deny the firm’s Motion for Summary Judgment based on the SOL having expired before the complaint was filed.

Instead, the court found that there was a question of fact as to whether or not the attorney-client relationship was terminated before June, 2007, when the firm told Peter Faulisi that the patent application had been abandoned.

Another error that was made didn’t affect the outcome of the case, but is a ‘red flag’ for IP practitioners: ATS&K didn’t object to attorney Worthington, a non-IP practitioner, filing a second provisional patent application that covered new features of Protostorm’s invention.

IP litigator Paul Swanson states:

“The involvement of unsupervised, non-patent practitioners in the preparation and filing of the second provisional patent application cast a large dark cloud of legal uncertainty over Protostorm’s PCT patent application…According to ATS&K’s ethics expert witness…(that) unauthorized filing ‘by itself, would have severely reduced if not eliminated the likelihood that any patent would have ever been enforced in litigation or otherwise.’” 

That in turn would’ve likely led to a malpractice claim.

V. Conclusion

After nine years of litigation, a trial, and an appeal, this case still isn’t over: the parties are involved in ongoing litigation with Minnesota Lawyers Mutual, ATSK’s malpractice insurer.

We’ve covered that in this post.

IP Firm’s Appeal of $9M Malpractice Verdict is Denied, Part I of III

Patent MalpracticeEditor’s note: this post was originally published on 10/26/2015. It has been updated to reflect recent developments, and divided into three parts for easier reading. This is part I. Part II  Part III

In what may be the final chapter in a saga that has spanned more than 16 years and courts from New York to Minnesota, a Second Circuit appellate panel upheld a start-up’s $9 million legal malpractice verdict against an IP law firm, for failing to obtain a patent for the start-up’s ad-targeting technology.

I. Background

A. The Inventors

Peter Faulisi and Courtland Shakespeare, co-founders and principals of Protostorm, LLC, in New York City.

B. The Invention

An online game that required players to interact with simulated pages of advertisers’ websites that were placed in the game, in order to advance in game play. Players had to complete tasks, i.e., use tools to uncover hidden messages and “clean up” the pages, in return for which the advertiser would send them coupons or gifts.

The game enabled dynamic tracking of player activity, real-time delivery of targeted ads based on a player’s interaction with an advertiser’s simulated web pages, and tracking and reporting of those ads’ effectiveness.

By having players interact with sponsor content during game play, the game sought to overcome banner and static ads’ low click-through rates, and the fact that when players did click on ads, they left the host site.

C. The Attorneys 

  • Duval & Stachenfeld (D&S) LLP, and John Ginley, corporate counsel to Protostorm.
  • Kathy Worthington, a non-patent attorney said to be knowledgeable about IP matters.
  • Antonelli, Terry, Stout & Krauss, LLP (ATS&K), an Arlington, VA IP law firm.
  • Dale Hogue, Of Counsel to ATS&K, and later, a solo practitioner.

 D.  The Patent Application

Timeline

2000

February-March: Protostorm’s principals told D&S that they wanted to obtain a patent for their invention. John Ginley advised them to retain patent counsel, and referred them to Worthington, who they retained.

May: following an introduction by Worthington, the principals retained ATS&K and Dale Hogue. According to Peter Faulisi, “[n]o specific limits” on their roles were discussed. “We understood that…we would be relying primarily on Mr. Hogue and…ATS&K to prepare and file any patent applications and to oversee the process to completion”.

June 27th: Fred Bailey, associate at ATS&K, submitted the first provisional patent ap-plication to the USPTO. This enabled the principals to secure their priority as inventors, and gave them until 6/27/01 to submit a final application.

2001

April: attorney Worthington filed a second provisional patent application that covered new features of the invention.

May 8: she advised the principals and D&S that the final application was due on 6/27/01, and they would lose their 6/27/00 priority date if they missed it.

May 17: Hogue, who was no longer ‘of counsel’ to ATS&K, and had opened a solo prac-tice, signed a retainer with Protostorm stating that he would “perform the work necessary to prepare and file the application”, but “the application may be physically filed by” ATS&K.

Peter Faulisi testified that the retainer “simply reaffirmed (Protostorm’s) prior working relationship with Hogue and ATS&K”, with no change in ATS&K’s role.

June 20: Hogue emailed ATS&K the documents necessary to prepare the final patent application, and stated that Worthington would instruct ATS&K “separately on foreign filing”. He testified that he expected ATS&K to “prepare and file the application and prosecute it”, and believed that he had no further responsibilities.

June 21-22, 25: Worthington, upon instruction from D&S, told ATS&K to file an inter-national patent application under the Patent Cooperation Treaty (PCT), instead of a do-mestic application, and to designate every PCT signatory country for patent protection.

June 25: Attorney Bailey of ATS&K filed the final PCT patent application. The box next to every signatory country was checked, i.e., designated for patent protection, except for Mongolia, Zimbabwe, and the United States.

Bailey testified that he knew the US was meant to be included as one of the designated PCT jurisdictions, but didn’t recall whether he had checked if that had been done.

June 27: Bailey sent a copy of the completed PCT application “as filed” to attorneys Worthington, Hogue, and Ginley, and wrote “if any amendments are necessary, we’ll make them”. (Plaintiffs, Worthington, and D&S all stated that the application was missing the page that showed that the box for the United States had not been checked.)

July 2: Worthington emailed Protostorm’s principals that a filing for patent protection in Europe was due on 2/27/02, so they should decide which countries they want protection in.

July 23: the US Receiving Office, to which the patent application had been sent, notified ATS&K of two defects in it. One involved page numbers, which Bailey fixed. The other was that Protostorm hadn’t submitted a Power of Attorney (POA) form, appointing Fred Bailey or partner Carl Brundidge of ATS&K as its representative. Bailey obtained a 30-day extension for it to do so.

August 21-22: ATS&K sent the POA to Kathy Worthington, and she advised Protostorm’s principals and D&S of it, but said she wouldn’t do any more work on the matter until they paid her bill.

August 27: one of Protostorm’s principals signed the POA, and returned it to ATS&K, although the firm claimed that it never received it.

September 25: attorney Brundidge of ATS&K emailed Worthington “we can not perform any further work for Protostorm” until it pays its bill.

October 1: Brundidge wrote to Protostorm’s principals and D&S that the POA was “now due”, and if it wasn’t provided, the “application will become ABANDONED”. Further, be-cause ATS&K hadn’t received the POA and hadn’t been paid, “no further action will be taken” on the matter. Peter Faulisi testified that he didn’t see the letter until June, 2007.

December 11-12: Protostorm’s principals called Brundidge and Hogue, and sent a second POA to ATS&K. They testified that they were told their application was fine otherwise, and the attorneys would handle any further administrative details that arose. ATS&K later claimed that it never received the POA.

Late December: the principals ceased operations and closed Protostorm’s office, pend-ing further developments with their patent application, which their attorneys had said would take several years to process. However, they didn’t disband the company, and continued to seek capital.

2006
Early in the year, Faulisi learned that Google was beginning to test ads targeted to Gmail users based on the content of their messages, and thought that infringed on Protostorm’s invention.

He tried to contact the attorneys several times during the year, but couldn’t find Hogue, and never got a reply from ATS&K.

2007
June: Faulisi was told by Schiavelli, ATS&K’s managing partner, that the patent appli-cation had been deemed “withdrawn”, because no POA or “national stage” submissions had been filed.

He then hired attorney Jonathan Moskin to investigate.

Moskin exchanged emails and letters with Schiavelli, who eventually stated that ATS&K  had abandoned Protostorm’s application in September, 2001. 

2008
January 25: Schiavelli wrote to Moskin, revealing for the first time that the ATS&K had failed to designate the United States in the application.

II. Litigation
Complaint

On March 4th, 2008, Protostorm and Faulisi filed a complaint (PACER reg. req’d.; document #1) in US District Court, Eastern District of NY, alleging legal malpractice, breach of contract, and breach of fiduciary duty against ATS&K, its attorneys Bailey, Brundidge, and Schiavelli, and Hogue, the solo.

ATS&K filed a third-party complaint for indemnification and contribution against attorney Worthington, and D&S and its attorney, John Ginley. Worthington and Hogue then each filed a cross-claim against D&S and Ginley, seeking indemnification and contribution.

Protostorm’s claim against Hogue was stayed, due to an arbitration clause in their re-tainer agreement, and Hogue dismissed his cross-claim against D&S and Ginley.

Motion for Summary Judgment

All parties except Hogue filed for summary judgment.

US District Court Judge Garaufis issued his ruling in November, 2011.

He dismissed plaintiffs’ breach of fiduciary duty claim, because it was “duplicative of the) claim for legal malpractice”, and their breach of contract claim, because they didn’t argue for it in their briefs or refer to it in their motion, and thus “abandoned” it.

The primary remaining issues were:

Statute of Limitations (SOL)

ATS&K asserted that the SOL had expired before the complaint was filed, which was more than six years after the final patent application was filed.

The applicable SOL in New York State is three years, and starts to run on “the day an actionable injury occurs”, not the date the plaintiff discovers it; however, under the “continuous representation doctrine,” the SOL is tolled as long as “there is a mutual understanding” between attorney and client “of the need for further representation on the specific subject matter underlying the malpractice claim.”

The court denied the MSJ on SOL grounds, because there was a question of fact as to whether ATS&K was retained to both file and prosecute Protostorm’s patent application, and whether or not the attorney-client relationship was ever terminated.

“A jury could find (it) reasonable”, the court ruled, that Protostorm “relied on ATS&K to shepherd the application to its conclusion”, i.e., continuously represent it, until June, 2007, when the firm told Faulisi that the patent application had been abandoned. The complaint was filed nine months later.

The Merits of the Malpractice Claim

The Court ruled that if a jury were to resolve in Protostorm’s favor the questions of fact regarding whether ATS&K was retained to prosecute the patent application to completion, and whether the attorney-client relationship persisted after September 2001, then

“it would necessarily find that ATS&K failed to exercise ‘ordinary skill’…Plaintiffs’ motion  for summary  judgment on this limited point…insufficient by itself to establish Defendants’ liability—is therefore granted.

 (However), under New York law, ‘it is for the finder of fact to determine’ the existence   of proximate cause, ‘once the court has been satisfied that a prima facie case has been established’…(Further,) the parties…have also created a question of fact as to whether the application would have led to a valid, and valuable, patent.”

Trial

After almost three more years of litigation, a jury trial was held in July and August, 2014.

Continued in Part II

Texas Supreme Court to Review Dismissal of Malpractice Claim Against Andrews Kurth

Legal Malpractice Andrews Kurth Supreme CourtTexas Lawyer reported that the Texas Supreme Court has agreed to review a decision by the Dallas 5th Court of Appeals, dismissing a legal malpractice claim against Am Law 200 member Andrews Kurth Kenyon LLP.

Background

According to the appeals court’s decision and a synopsis of the original complaint, entitled Rogers v. Zanetti, James Rogers hired Andrews Kurth attorney Victor Zanetti to represent him in his acquisition of 80% of Accent Home Health from its owners, Daniel and Leslie Alexander.

After the deal concluded, Rogers was added as a signatory to Accent’s bank account and opened new bank accounts for Accent. Further, his colleague and co-plaintiff, William Burmeisterer, handled Accent’s accounts payable.

A dispute soon arose over between Rogers/Burmeister and the Alexanders, who alleged that Rogers had been misallocating funds from Accent’s bank account. The Alexanders sued to void the Investment Agreement as unconscionable, unenforceable, illusory and void, and also brought claims for fraud and breach of fiduciary duty.

Rogers/Burmeister asked Victor Zanetti to refer them to a lawyer to defend them; he referred them to his colleague, Charles Perry, at Andrews Kurth, who handled the case for awhile, but was later replaced by counsel from a different firm (see below).

The case was tried in 2004. The jury found the Rogers/Burmeister defendants had committed fraud and breached fiduciary duties, and awarded the Alexanders over $3 million in damages. Further, the trial court also ruled that the Investment Agreement was void.

Defendants appealed the judgment, and the 5th Court of Appeals affirmed.

Malpractice Complaint

The Rogers/Burmeister defendants responded by suing Andrews Kurth, Zanetti, and Perry in 2012 – eight years after the trial – for negligence and for breach of fiduciary, alleging improper acts, including:

  • Zanetti had a fiduciary duty to recommend an outside lawyer, since the contract that he had drafted was at the center of the litigation, but he instead recommended a co-worker, whose fiduciary duties were split between his clients and his firm. “This irreconcilable conflict of interest compromised the entire strategy for defending the case…Perry and Andrews Kurth LLP found themselves in the untenable position of choosing between defending the work product of Zanetti that had sparked the litigation and acting as zealous and competent advocates for the plaintiffs, who were the firm’s clients.”
  • Perry failed to tell his clients that he had received a $450,000 settlement offer from the Alexanders before trial, which “would have released the [Clients] from liability and given them control over Accent.”
  • Perry failed to rebut the Alexanders’ damages claim, i.e., he didn’t hire an expert to counter the Alexanders’ expert’s valuation of their business.
  • Perry advised his clients to prepare documents detailing the services that they were providing to Accent, which were to be used in deposition, but he allegedly tried to “hoodwink” the court by pretending the documents were old invoices, rather than having been prepared for litigation purposes. Rogers was forced to pay $25,000 in sanctions when the court discovered the truth.

    Following the sanction, Andrews Kurth suggested that their clients find new counsel.

Note: Rogers/Burmeister’s counsel stated that the Alexanders’ $3 million judgment against his clients had grown to about $5 million, including interest, at the time they filed their malpractice complaint. Only about $100,000 of that total had been paid.

Settlement Offer

Rogers/Burmeister seemed to believe that their strongest claim was that Perry failed to advise them of the Alexanders’ offer to settle the claim for $450,000, while allowing them to maintain control of Accent Home Health.

According to the Appeals court decision, they elicited deposition testimony from Marketos, the Alexanders’ attorney that

“he sent a settlement demand to (Rogers/ Burmeister) soon after the suit was filed and got no response. The record contains the settlement offer itself, which was dated August 6, 2003. The Alexanders offered to let Rogers continue using the Accent name and to execute mutual releases of all claims if Rogers paid them $450,000 immediately upon executing the settlement agreement. Marketos said the demand was a “starting point,” but he could not remember how much authority he had to go below $450,000.

Rogers testified by affidavit that the Lawyers did not communicate the settlement offer to him and that he did not learn about it until 2013, after the Alexander litigation concluded and this malpractice case began.

Rogers further said, “Had I known that I could have settled the case with the Alexanders and Pucci and received control of Accent for $450,000, I would have instructed my attorneys to negotiate the best possible resolution and release without incurring the time or expense of litigation.”

He also said that the Alexanders later made settlement demands of over a million dollars after the trial court sanctioned him.”

Law Firm Response

Andrew Kurth filed a motion for summary judgment that argued “(1) no evidence of causation, (2) collateral estoppel, (3) the unlawful-acts doctrine, (4) the statute of limitations, and (5) impermissible fracturing of negligence claims into fiduciary breach claims.”

The trial court granted the motion.

Appeals Court

Plaintiffs appealed, and the Fifth Court of Appeals upheld the lower court’s dismissal.

Regarding the settlement offer, the court ruled:

“…the clients contend that they would have avoided a much larger liability and acquired Accent as well if they had known about the settlement offer. For this to be true, they would have had to both reach a settlement and perform its term…But they adduced not evidence that they could pay the Alexanders $450,000, as the actual settlement offer demanded, or any lesser amount that the Alexanders would have accepted. Without such evidence, there is a fatal gap in the but for cause evidence.”

Supreme Court Appeal

Rogers/Burmeister appealed the dismissal to the Supreme Court, arguing that the lower courts erred by applying the “but for” legal malpractice causation evidence standard to their claims. That standard requires that plaintiffs prove that they would have prevailed at trial but for their attorney’s alleged legal malpractice.

The Supreme Court accepted the case for review, and scheduled oral argument for Jan. 11, 2017.

According to Texas Lawyer, Rogers/Burmeister’s lawyer, Brian Lauten, said the review of the case — and whether the “but for” legal malpractice causation evidence should be applied to it — is important.

“The standard that should have been applied is the substantial factor causation test. It means I don’t have to prove I would have won this case, but the lawyer’s negligence was substantial in causing some quantifiable harm…Had the trial court and the Dallas Court of Appeals applied the correct standard, there is absolutely no question that this case should have been decided by a jury and not a court in a one-page order,” he said.

Defendants Brief

Texas Lawyer reported that in its Supreme Court brief, Andrews Kurth and its attorneys argued that their former clients reliance on the “substantial factor” causation standard should fail, and their alleged damages due to the lost settlement opportunity are “sheer speculation”.

“For example, there is no evidence in the summary judgment record that plaintiffs had the financial capacity or desire to settle the case at any amount — much less the (as of yet, hypothetical and unspecified) amount acceptable to Accent… Instead, plaintiffs ask the court to reverse summary judgment based on their sheer speculation that an agreement would have been reached. But plaintiffs’ assertions of ‘possibility, speculation, and surmise’ are ‘no evidence of causation’…Plaintiffs’ lost settlement opportunity thus fails as a matter of law.”

Legal Malpractice: Parental Child Abduction Leads to $1.4M Verdict

Family Law MalpracticeLater this year, the New Jersey Supreme Court will issue its ruling in Innes v. Marzano-Lesnevich, et al, on the issue of whether a non-client who prevails in a legal malpractice action can recover legal fees.[i]

The court heard the matter last October. Marzano-Lesnevich’s attorney, and The New Jersey State Bar Association, which participated as amicus, urged the court not to expand on its 1996 ruling in Saffer v. Willoughby that clients who prevail in a legal malpractice action may recover their legal fees.

Marzano-Lesnevich’s lawyer argued “a lawyer does … owe a duty to a non-client and can be sued, but to now expose the attorney on top of that for attorneys’ fees is going too far.”[ii]

Justice Barry Albin countered “logic, fairness and public policy”[iii] suggest that non-clients should be able to recover counsel fees if they’re the victims of their adversaries’ lawyers’ malpractice.

The court’s ruling will conclude a saga that spans 11 years and two continents.

Custody Dispute and Abduction

In 2004, Peter Innes and Maria Jose Carrascosa, who were divorcing, got into a custody dispute over their five year-old daughter, Victoria.[iv]

During the dispute, Carrascosa, a native of Spain, took Victoria there without Innes’ consent, in violation of their co-parenting agreement, and ignored a court order to bring her back.

She was able to take Victoria to Spain, because a few weeks after signing the co-parenting agreement in October, 2004, she fired her divorce lawyer, who was holding the child’s passport in trust, and he sent it with the rest of his file to her new divorce lawyer, Marzano-Lesnevich, who gave it to Carrascosa during a meeting in December.

Carrascosa took Victoria to Spain in January, 2005, and she has been raised there by Carrascosa’s parents ever since. Innes petitioned a Spanish court to have Victoria returned to the US[v], but his petition was denied, as were his appeals. The Spanish court also ordered Victoria to remain in Spain until she turns eighteen.

The last time Innes saw his daughter was in Spain, in autumn, 2005[vi]. He testified that he hasn’t gone back to Spain, because fourteen criminal complaints had been filed against him there, and three were still pending. He denied committing any crime, or abusing Carrascosa or Victoria, but believed he would be unjustly accused and imprisoned if he went back, given the wealth and position of Carrascosa’s family, and the notoriety of the case, which has been covered by Spain’s media, and sparked demonstrations when American and Spanish judges met in Spain to discuss Victoria’s return to the US.

Innes also testified that he has been unable to maintain a relationship with Victoria, as Carascosa’s family refuses delivery of the Christmas and birthday gifts he sends her. He posts messages for her on victoriainnes.com, a website he maintains.

Divorce and Incarceration

Carrascosa, who is an attorney admitted to practice in the European Union, returned to New Jersey without Victoria in 2006 for her and Innes’ divorce trial.

That August, the court awarded Innes sole custody of Victoria, and ordered Carrascosa to return her to the US, but she failed to comply.

She was arrested in December, 2006, and held until 2009, when she was convicted of willful interference with child custody, and sentenced to 14 years in prison. She was paroled in 2014, and then held in Bergen County Jail until April, 2015[vii], on a contempt of court charge, for violating the order to return her daughter to the US.

She was released after Innes, who has since remarried and now has a young son, wrote to the court saying he was not opposed to her release, if she returns to Spain to be with their daughter.

Legal Malpractice Lawsuit, Trial, and Appeal

Innes sued Marzano-Lesnevich and her firm for his and Victoria’s emotional distress, alleging that Carrascosa used the released passport to “abduct”[viii] Victoria.

The firm filed 3rd-party complaints against Innes’ divorce attorney and Liebowitz, Carrascosa’s prior divorce attorney, but both were dismissed.

It also filed a motion for summary judgment, arguing that Marzano-Lesnevich had no duty to Innes, because she didn’t know the child’s passport was being held in trust, she was never asked to become the trustee of the passport, and the trusteeship remained with Liebowitz, who is named as trustee of the passport in the co-parenting agreement.

Her attorney/partner argued “we had no right to not turn over the passport to the mother”, who was the custodial parent.[ix] The court denied the motion, ruling that “defendants owed a duty to Innes”.[x]

At trial, a jury awarded Innes just over $1.4M: $700,000 for his emotional distress, $424,000 for his daughter’s, and $292,332 in interest and attorneys fees.

Marzano-Lesnevich and her firm appealed the lower court’s denial of their motion for summary judgment, and the jury award. The appeals court upheld the lower court’s denial of the motion, and Innes’ award for emotional distress, interest, and attorneys’ fees, but threw out his daughter’s award, because “there was simply no testimony regarding her emotional distress, meaning the jury’s award was based upon speculation”.[xi]

Innes responded: “Because she is…in Spain, I could not offer any proof of her emotional harm. (But)…a 4-year-old child, who is taken from her father, is certain to have been emotionally harmed”.[xii]

Marzano-Lesnevich then appealed Innes’ award to the New Jersey Supreme Court, which granted review only on the issue of whether Innes can recover his legal fees.

Declaratory Judgment Action

While the Supreme Court was deciding if it would hear Marzano-Lesnevich’s appeal, Innes sued her firm’s legal malpractice insurer to collect his judgment. However, the court granted the insurer’s motion for summary judgment, ruling that its policies don’t cover Innes’ claim, because (1) “it was first made prior to the policies’ term”, and (2) the policy excludes coverage for errors and acts the law firm “could have reasonably foreseen…might become the basis of a claim or suit”.[xiii]

As a result, Innes must collect his judgment, which totals $833,815 in damages + interest, directly from Marzano-Lesnevich and her firm.

Based on the court filings and ruling, this appears to be the sequence of events:

  • The firm didn’t have malpractice insurance when it released the passport in December, 2004.
  • In January, 2006, the firm received a letter from an attorney representing Innes “in an action against your firm”[xiv] (he sued in October, 2007).
  • The firm applied for malpractice insurance in September or October, 2006, but didn’t disclose the letter from Innes’ attorney, or that it had released the passport, or that the child was taken to Spain, even though the application asked if a claim had been made against any of the firm’s attorneys in the past five years, or if any of them knew of any act or error that might lead to a claim being made against them.
  • The first malpractice policy the firm bought after releasing the passport covered errors or omissions it committed only during the policy period, which was 10/23/06 – 10/23/07, i.e., it didn’t cover Prior Acts, which are errors or omissions committed before a policy’s inception date.
  • The firm didn’t seek coverage for Innes’ claim from its malpractice insurer, so Innes sought a declaratory judgment that he was a third-party beneficiary of the firm’s policies, and they covered his claim.
  • The insurer filed a counterclaim, seeking a declaratory judgment that its policies didn’t cover Innes’ claim.

Lessons Learned

I. Law practice risk management:

A. A co-parenting agreement that prohibits a child from traveling abroad unless both parents consent, should include safeguards that prevent any “shenanigans” regarding the child’s passport, i.e., it should specify procedures to be followed if the passport is entrusted to the attorney of one of the parents, and that attorney stops representing the parent.

B. Communication between new, prior, and opposing counsel is vital. Liebowitz should have contacted Innes’ attorney as soon as Carrascosa fired him, and Marzano-Lesnevich, as soon as he found out that she was Carrascosa’s new attorney, and arranged to be replaced as trustee of the child‘s passport.

Failing that, Marzano-Lesnevich should have contacted Innes’ attorney about replacing Liebowitz as passport trustee, as soon as she reviewed the co-parenting agreement.

Instead, Marzano-Lesnevich gave the passport to Carrascosa, and later claimed that this was permissible, because the co-parenting agreement “was moot”, i.e., “it had been repudiated by both parties immediately.”[xv] In that case, she should have contacted

Innes’ attorney about either revising or terminating it.

II. Legal malpractice:

Non-clients can sue attorneys for malpractice. According to attorneys McAvoy and Schnake, “while a lawyer typically does not owe a duty of care to non-clients, an attorney may owe a fiduciary duty to persons, though not strictly clients, (who)…relied on the attorney’s professional capacity.”[xvi]

In this case, the appeals court held that “it was entirely foreseeable that (Carrascosa’s) possession of the daughter’s passport would facilitate her ability to move from the country…giving the passport to the wife was a breach of (Marzano-Lesnevich’s) duty.”

III. Legal malpractice insurance:

The money that Marzano-Lesnevich and her firm saved by not buying malpractice insurance until after releasing the passport, is a fraction of the $833K judgment they owe Innes, which their malpractice insurer would have been obligated to pay, if they had been properly insured.

However, legal malpractice insurance is a claims-made and reported policy, not an occurrence policy, like auto or property insurance, so to trigger it, you must be insured on the date you commit an error, and the date a claim is made against you due to that error, and the date you report that claim to your insurer.

Since you can’t predict any of those dates in advance, and you may not even know you made an error until incurring a claim months or years later – as happened to Marzano-Lesnevich – the only way to always be covered is to buy malpractice insurance when you first open your practice, and renew it every year that your practice remains open.

As long as you do so, your coverage will be retroactive to the inception date of your first policy, i.e., you’ll get another year of Prior Acts coverage with each renewal. Then, if you’re sued for work you did on or after the inception date of your first policy, and before the inception date of your current policy, and you report the claim to your insurer during your current policy period, then your Prior Acts coverage will obligate your insurer to protect you (subject to policy exclusions, etc.)

Conversely, if you don’t renew your policy one year, then you’ll lose all of your Prior Acts coverage; the next policy you buy will cover any errors or omissions you commit only on or after the inception date. For example, if a firm was insured from Jan. 1, 2000 – January 1, 2016, but didn’t renew or buy Extended Reporting Period coverage, then starting at 12:01 AM on January 1, 2016, it would no longer be insured for claims arising out of errors or omissions it committed before then. Even if it bought coverage on Jan. 2, 2016, that policy would cover it only for any errors or omissions it commits between that date and Jan. 2, 2017.

End notes

  1. Booth, Michael, “Justices Mulling Counsel Fees For Non-Clients In Legal Mal Cases”, NEW JERSEY LAW JOURNAL, October 27, 2015, http://www.njlawjournal.com/id=1202740852518/Justices-Mulling-Counsel-Fees-for-NonClients-in-Legal-Mal-Cases?slreturn=20151024210721#ixzz3q7M2ubPP
  2. Id.
  3. Id.
  4. Zaremba, Justin, “Insurance Doesn’t Have to Pay $1.4M Over Law Firm’s Mistake in Custody Dispute”, NJ ADVANCE MEDIA, September 14, 2015,

http://www.nj.com/bergen/index.ssf/2015/09/dad_whose_child_was_illegally_taken_to_spain_loses.html

  1. See PETER INNES and VICTORIA SOLENNE INNES, by Her Guardian PETER INNES, Plaintiffs–Respondents, v. MADELINE MARZANO–LESNEVICH, ESQ., and LESNEVICH & MARZANO–LESNEVICH, Attorneys At Law, i/j/s/a, Defendants–Appellants/Third–Party Plaintiffs, v. MITCHELL A. LIEBOWITZ, ESQ., PETER VAN AULEN, ESQ. and MARIA JOSE CARRASCOSA, Third–Party Defendants, DOCKET NO. A–0387–11T1, http://caselaw.findlaw.com/nj-superior-court-appellate-division/1662710.html
  2. Id.
  3. Kibret, Markos, “Mother in bitter Bergen County child-custody case is freed after 8 years in jail”, THE RECORD, April 24, 2015, http://www.northjersey.com/news/mother-who-moved-child-to-spain-during-custody-battle-released-from-bergen-county-jail-1.1318448
  4. See note 5 above.
  5. Gallagher, Mary Pat, “Matrimonial Firm to Go on Trial for Allegedly Aiding in Child’s Abduction”, NEW JERSEY LAW JOURNAL, July 6, 2010

http://www.law.com/jsp/article.jsp?id=1202463246952&Matrimonial_Firm_to_Go_on_Trial_for_Allegedly_Ai ding_in_Childs_Abduction (found on http://www.bringseanhome.org/forums/index.php?topic=3315.10;wap2)

  1. See note 5 above.
  2. Sampson, Peter J., “Court hands win, loss to Hackensack law firm, Hasbrouck Heights dad seeking girl’s return from Spain”, THE RECORD, April 8, 2014, http://www.northjersey.com/news/court-hands-win-loss-to-hackensack-law-firm-hasbrouck-heights-dad-seeking-girl-s-return-from-spain-1.857685
  3. Id.
  4. See “PETER INNES, Plaintiff, v. SAINT PAUL FIRE and MARINE INSURANCE COMPANY and TRAVELERS COMPANIES, INC., Defendants. United States District Court, D. New Jersey. Civil Action No. 12-234”, http://www.leagle.com/decision/In%20FDCO%2020150915A38/INNES%20v.%20FIRE
  5. Id.
  6. See note 5 above.
  7. McAvoy, Terrence P., and Schnake, Katherine G., “Non-Client Awarded Damages for Emotional Distress”,

Lawyers for the Profession® Alert, May 20, 2014, citing Innes v. Marzano-Lesnevich v. Leibowitz, 435 N.J. Super 198, 87 A.3d 775 (April 7, 2014), http://www.hinshawlaw.com/newsroom-publications-alerts-591.html

Legal Malpractice: Court Upholds $9M Award Against IP Firm Over Abandoned Patent

IP 12%

The New York Law Journal (reg. req’d.) reported that a federal judge refused to overturn a nearly $9 million patent malpractice verdict against an IP law firm, and lifted a stay on enforcing it.

In Protostorm v. Antonelli, Terry, Stout & Kraus, 08-cv-931, Eastern District Judge Pamela Chen said that jurors had “more than adequate evidence in the record” to support a finding that the law firm had a duty to prosecute Protostorm’s patent application.

She also ruled that the law firm didn’t preserve a non-patentability argument tied to the recent U.S. Supreme Court decision in Alice Corp. Pty, Ltd. v. CLS Bank International, 134 S.Ct. 2347 (2014).

Lawsuit
According to its complaint, Protostorm, which was created to develop and market an invention to track online gaming activity and target advertising, retained Antonelli, Terry to submit a provisional patent application to the U.S. Patent Office in June, 2000.

To get the benefit of a priority date, the company had one year to file a non-provisional application that discussed the subject matters the invention claimed to be patenting.

Protostorm claimed that: *Antonelli, Terry filed an international application two days before the deadline, which listed about 86 countries and regions where Protostorm could seek patent protection, but failed to check the box designating the United States as one of those places.

*The law firm concealed its mistake, said the application likely would take years before getting an initial review, and didn’t inform Protostorm that it had lost its patent rights until shortly before the 2008 malpractice action was filed.

Defense
Antonelli, Terry filed a motion for summary judgment, arguing that its attorney-client relationship with Protostorm ended in 2001. Carl Brundidge, who had been a partner at the firm, said he sent a letter to Protostorm that October, saying that Antonelli, Terry wouldn’t take any further action on the application until Protostorm paid part of its outstanding balance.

Peter Faulisi, an inventor and cofounder of Protostorm, said he didn’t get the letter until after he spoke with an attorney at the firm in 2007.

The court denied the firm’s motion for summary judgment.

Trial
The case was tried in July, 2014. The jury awarded Protostorm $6.9 million in compen-satory damages, and $1M in punitive damages: $900,000 against the firm, and $100,000 against Brundidge.

After post-trial litigation on damages allocation, Judge Chen assigned all compensatory damages to the firm for the acts of its attorneys, but reduced them by 4%, because the jury had found that Protostorm was 4% at fault.

She thus entered a judgment for Protostorm of $6.7 million in compensatory damages, just over $1 million in pre-judgment interest, plus the $900,000 punitive damages award against the firm, and the $100,000 punitive damages award against Brundidge

Request to Set Aside the Verdict
Antonelli, Terry; attorney Brundidge; and Frederick Bailey, an attorney at the firm, moved to set aside the verdict pursuant to Federal Rule of Civil Procedure 50(b).

Among the grounds that it cited in its 50(b) motion was the 2014 U.S. Supreme Court decision in Alice Corp. Pty, Ltd. v. CLS Bank International, 134 S. Ct. 2347, in which the Court said that a computer-implemented method to weigh certain risks between parties in foreign currency transactions was not a patent-eligible invention.

According to the firm, an “avalanche of precedent” now examining Alice, said creations like Protostorm’s were “unpatentable abstract ideas”, i.e., ineligible for a patent, thus rendering a patent malpractice action defective.

Ruling
Judge Chen ruled that Antonelli, Terry was “procedurally barred” from arguing that “(1) Protostorm cannot show patentability under 35 U.S.C. §§ 101 and 103, which is nec-essary to establish proximate cause, and (2) Protostorm failed to prove damages”, because it didn’t raise these arguments in its Rule 50(a) motion.

“ATS&K’s Rule 50(b) motion contends that Protostorm did not carry its burden to show proximate cause because it offered insufficient proof on two requirements for patent-ability. Under Point I of its motion, ATS&K asserts that as a matter of law, the hypo-thetical claims drafted by Protostorm’s expert…were directed to an unpatentable ab-stract concept under Section 101, as recently discussed by the Supreme Court in Alice Corp. Pty, Ltd. v. CLS Bank International, 134 S.Ct. 2347 (2014)… Although Defend-ants’ oral Rule 50(a) motions at trial challenged the patentability of the Protostorm invention, the grounds stated by their trial counsel were altogether different from the Section 101 and 103 arguments raised in the Rule 50(b) motion.”

Further, “ATS&K acknowledges that it didn’t “press an argument under Alice and its progeny until after trial.” None of the Defendants offers any explanation for why they did not raise the Alice argument at any point prior to or during the trial, given that Alice was decided a month before trial commenced…The fact plaintiffs might have been aware of a potential Alice issue before trial does not absolve defendants of their responsibility to raise the issue and thereby put plaintiffs on notice,” Chen ruled.

The firm also argued that “because patent eligibility is a pure question of law, it may be raised for the first time in a Rule 50(b) motion…the question of patent eligibility can be answered by reference to the language of the hypothetical claims alone, (so) there were no additional facts that Protostorm could have presented at trial to remedy deficiencies in its proof on causation and patent eligibility, and therefore Protostorm is not prejudiced by the Court addressing the issue at this late stage.”

However, Chen ruled that “the resolution of the patent eligibility issue requires additional facts or expert testimony that is absent from the trial record, and that Protostorm would be prejudiced by not having had the opportunity to adduce additional evidence in re-sponse to Defendants’ belated patent eligibility argument. Since the patent eligibility causation issue is not a purely legal matter, Defendants’ failure to raise it in a pre-trial motion prevents it from raising it in this Rule 50(b) motion”.

Chen then ruled on the parts of Antonelli, Terry’s 50(b) motion that weren’t procedurally barred:

*The evidence failed to demonstrate that the firm was responsible for drafting the final patent application;

*The firm was entitled to judgment as a matter of law on its statute of limitations defense, because there was no evidence that it concealed malpractice or that Protostorm had a reasonable expectation of representation after 2001;

*There was no showing of malicious or willful intent to warrant an award of punitive damages;

*Protostorm’s proof on patentability was deficient because prior art anticipated the Protostorm invention.

Chen ruled that “the Court is compelled to deny the motions unless, when viewing all of the evidence in the light most favorable to the plaintiff, there is “such a complete ab-sence of evidence supporting the verdict. . . ., or the evidence in favor of the movant is so overwhelming that reasonable and fair-minded persons could not arrive at a verdict against it.” This stringent standard has not been met here.”

Chen thus denied the firm’s request to set aside the verdict, and stated that the Court wouldn’t hear any motion to reconsider its order.

Lessons

Law Practice Risk Management
This case stemmed from the simplest of errors – the failure to check a box on a patent application. A logical way to prevent such errors is to have a second set of eyes review every patent application before it’s filed.

Attorney Paul Swanson provides a compelling behind-the-scenes analysis of this case, and also offers these risk management tips:

  1. “Obtain written retainer agreements that include “scope of representation” and “with-drawal from representation” provisions.  Had ATS&K entered into a formal retainer ag-reement, it might have had an opportunity to limit the scope of its representation… according to plaintiff’s expert witness and the revisionist history that often characterizes patent legal malpractice allegations, ATS&K was supposed to have closely inspected the application and discovered its various flaws.  In actuality, ATS&K (wasn’t) involved in any substantive patent application drafting.  Had a written retainer agreement been drafted, the firm may well have been able to limit its representation explicitly.  It could also have included a provision that the firm may withdraw for non-payment of fees or costs reasons.”
  2. *“Send letters confirming the closure of case files and cessation of representation.  Despite the passage of years that could have supported a viable statute of limitations defense in this case, the court could not grant a motion for summary judgment on that ground because of the “continuing representation” rule…(whereby) the statute of lim-itations is tolled for as a long as there is a mutual understanding between the attorney and client of the need for further representation regarding the specific subject matter un-derlying the malpractice litigation.  The continuous representation rule is especially pointed in patent matters because patent prosecution activities take place over long periods of time with sequential periods of inactivity.

Protostorm’s principals were never unequivocally told that ATS&K and Hogue would no longer represent Protostorm.  Rather, the attorneys’ oral conversations with Proto-storm’s principals left them with the impression that their attorneys would be taking care of PCT procedural requirements and that Protostorm should expect nothing to happen with re-spect to patent prosecution for an extended period of time.

Faced with these mixed factual messages, the Court could not grant summary judgment in patent counsel’s favor on statute of limitations grounds.  Had a closing letter been written, however, a statute of limitations defense may well have been a dunk shot for dismissal of Protostorm’s malpractice claims…”

  1. “Do not assist non-practitioners or non-lawyers in preparing and filing patent ap-plications;…you should know the USPTO credentials of those with whom you are col-laborating on patent matters in order to protect yourself from aiding and abetting the unauthorized practice of patent law. The involvement of unsupervised, non-patent practitioners in the preparation and filing of the second provisional patent application cast a large dark cloud of legal uncertainty over Protostorm’s PCT patent application.  While it may be tempting to work with a client’s slicing and dicing arrangements re-garding patent application preparation, doing so can lead to the untoward facts that characterize this case.  According to ATS&K’s ethics expert witness…(the) unauthorized filing of a second provisional patent “by itself, would have severely reduced if not elim-inated the likelihood that any patent would have been ever been enforced in litigation or otherwise.”

Legal Malpractice Insurance
There are two lessons here:
*You can’t predict when you’ll be sued for malpractice, so the only way you’ll always be covered is to buy malpractice insurance when you first open your practice, and renew it every year that your practice remains open.

As long as you do this, your coverage will be retroactive to the inception date of your first policy, i.e., you’ll get another year of Prior Acts coverage with each renewal. Then, if you’re sued for work that you did on or after the inception date of your first policy and before the inception date of your current policy, your Prior Acts coverage will obligate your insurer to protect you (subject to the policy’s exclusions, etc.)

Conversely, if you don’t renew your policy one year, then you’ll lose all of your Prior Acts coverage; the next policy that you buy will provide coverage for any errors or omissions that you commit only on or after the inception date and on or before the expiration date.

In this case, the work was done in 2000 and 2001, and the suit was filed in 2007, so the firm would’ve been covered only if it had coverage in effect on both dates, and had re-newed it every year in between.

*Make sure your policy limits are adequate. Even small firms in practice areas that generate high-value malpractice claims, i.e., Patent/IP, Securities, and Plaintiff’s Med. Mal., need policies with multi-million dollar limits. This is partly because the malpractice policies available to them have “eroding limits”, whereby the insurer deducts legal fees and costs from the policy’s per claim limit as it pays them, which reduces the amount available to pay any settlement or judgment. If the per claim limit is used up before the claim is resolved, then the firm must pay all additional defense costs and any judgment or settlement out-of-pocket.

Of the damages awarded in this case, the $6.7M in compensatory damages and $1M+ in pre-judgment interest would generally be covered by malpractice insurance, if the policy limit was sufficient, and for that to be the case, the limit would had to have been $7.7M plus legal fees, which were likely over $1M, given that the litigation lasted for seven years and the case was tried to a verdict.

In other words, the firm would have needed a policy with a per claim limit of at least $9M, and more likely $10M to be fully covered for this claim. That’s a high limit for what appears to be a small firm, and would carry a high premium, but the alternative is to fund a multi-million dollar judgment out-of-pocket.

For Lawyers, It’s an Especially Good Time to Specialize

choosing-a-personAccording to “The Specialist Economy”, a white paper from staffing firm Robert Half International, which “examines the trend toward specialization (in the economy and the workforce)”, the high demand for workers in “fields that require both a college education and specialization”, such as law, demonstrates that “firms have a critical need for laser-focused professionals who can help them grow their most lucrative service areas and maximize efficiencies.”

In the legal services field “many law firms have a critical need for experienced candidates to help them expand the most lucrative practice groups, including litigation, bankruptcy, and foreclosure.”

It’s no surprise that specialist lawyers are in demand: their expertise enables them to provide better solutions and service to clients than generalists can, and to work more efficiently, which reduces clients’ costs. This competitive advantage increases over time, as specialists continue to develop expertise in their specialty, and they or their employer allocate support staff, technology, or other resources to support them (which may themselves be specialized), i.e., a paralegal experienced in intellectual property matters, software that automates patent filings and searches, etc., to support an IP attorney. Analogous to the network effect – the more nodes or users a network has, the more valuable it becomes to each user and the network owner – the more expertise a specialist develops, the more valuable he or she becomes to clients, employers, etc.

What does this have to do with legal malpractice risk management, the subject of this blog? Plenty, because specialists are less likely than generalists to make a mistake that leads to a malpractice claim. This not only makes intuitive sense, it’s backed by empirical data, i.e., legal malpractice insurer CNA found that “nearly 70% of all business transactions claims are instituted against attorneys who reported that business transactions practice generated 5% or less of their annual revenues.”

The costs of being sued for malpractice – lost billable time defending the claim, expenditure of your malpractice insurance deductible and a higher premium when you renew, stress, etc., – are so onerous, that attorneys will benefit greatly by reducing their malpractice risk.

Specializing in a single area of practice (AOP) is a powerful risk reduction technique, because it enables an attorney to benefit from the “network effect” described above, and eliminates the risk of dabbling in practice areas that an attorney isn’t expert in, while still producing income via referral fees for cases in other AOPs.

It also happens to align with the dynamics of the legal services market, proving once again that good risk management is good practice management.   

About the author:
Curtis Cooper is president of Lawyers Insurance Group – The Attorney’s Insurance Broker, which uses a 3-step process for procuring legal malpractice insurance that minimizes a law firm’s cost and maximizes its coverage:

• We choose from over 50 insurers, based on a firm’s size, location, types of cases, etc.; • We present each firm to suitable insurers, highlighting the factors that make it a good risk, i.e., no recent claims; a moderate caseload per attorney, a high staff-to-attorney ratio,  demonstrated expertise in its practice area(s), etc.; 
• We negotiate with those insurers to get each firm the broadest coverage at the lowest premium.   
 
For free quotes, email ccooper@lawyersinsurer.com, or call 202-802-6415.    

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