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.


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.


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.”


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.


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

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.


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.


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).


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.


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.”


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.

50 Cent Raps Reed Smith With $35M Malpractice Claim

Curtis Jackson Legal Malpractice ClaimLaw.com reported that rapper 50 Cent, fresh off of a $14.5 million settlement of a legal malpractice claim against Garvey Schubert Barer, has filed a $35 million claim against Am Law 100 firm Reed Smith LLP.

The rapper, whose legal name is Curtis Jackson III, alleges that Reed Smith and its attorney, Peter Raymond, mishandled his defense against a lawsuit filed by Lastonia Leviston, the mother of his rival rap artist Rick Ross’ children, who alleged that Jackson violated her privacy by posting a sex tape of her and her then-boyfriend on his website in 2009.

A jury awarded Leviston $5 million in damages, which grew to $7 million after punitive damages were added. The judgment led Jackson to file for Chapter 11 bankruptcy in July, 2015.

Jackson’s malpractice claim accuses Reed Smith of:

  • Not calling prospective witnesses who could’ve swayed the jury or mitigated the damages that were awarded to Leviston;
  • Not adequately preparing for trial;
  • Charging excessive fees.

The main allegation regarding witness testimony is that the Reed Smith and attorney Raymond failed to locate and depose or produce for trial the other party in the sex tape,  Maurice Murray, and then “attempted to hide their negligence by misrepresenting that they made a good faith effort to locate Murray … when, in fact, Murray was easily locatable and available to be interviewed and called as a pre-trial and trial witness.”

Jackson alleges that Murray gave him the sex-tape, and that Murray had the “authority and right” to share and publish it.

Jackson also claims that Reed Smith failed to depose William Ross, who first published the sex video on his music website, and Ross’ Internet Service Provider. “Ross and the Internet provider should also have been deposed to establish Jackson’s defenses [that he did not initially post the video] and, at the very least, would have severely mitigated both the actual and punitive damages against Jackson as found by the jury.”

Jackson also alleges that “Reed Smith and Raymond, without consulting Jackson and without his consent, stipulated with attorneys for Leviston … that Reed Smith would not examine…[Murray and Ross] in pre-trial discovery proceedings and that no witness would be called at trial unless the identity of the witness was disclosed pursuant to the [binding, pretrial] stipulation.”

Regarding the legal fees, Jackson alleges that that Reed Smith and Raymond didn’t notify him before increasing the hourly billing rate that was specified in the retainer agreement. He claims to have paid the firm $1.5 million in legal fees and expenses for its representation in the sex tape matter.

Jackson also alleges that Reed Smith handled his case so poorly, that he had to obtain new counsel on the eve of trial. However, the firm “failed and refused to cooperate with new trial counsel, which caused Jackson to be subject to an unfavorable jury verdict.”

He demands that Reed Smith, which had represented him for 12 years, reimburse him for the $7 million verdict, and pay him an additional $25 million in damages.

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

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.


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 II 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 II. Part I  Part III


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

Two days before the trial ended, ATS&K dropped its third-party claims against Kathy Worthington, and D&S and John Ginley.

On August 14, the jury awarded Protostorm $6,975,000 in compensatory damages, apportioning the fault among ATS&K (75%), Brundidge (15%), Bailey (6%), and Protostorm (4%). It also awarded Protostorm $900,000 in punitive damages against ATS&K, and $100,000 against Brundidge. 

Post-Trial Activity

October: ATS&K, Bailey, and Brundidge notified the Court that they intended to file a motion to set aside the jury verdict, pursuant to Federal Rule of Civil Procedure 50(b).

Oct. 8: Following motions on whether or not the damages apportioned to ATS&K attorneys Brundidge (15%) and Bailey (6%) should be assigned to ATS&K, the Court ruled that they should be.

Oct. 29: with Protostorm concerned about its ability to collect its jury award, the Court issued an order prohibiting ATS&K from paying expenses beyond “operating expenses incurred in the ordinary course of business…as well as a draw for each equity partner in the amount of $12,000.00 per month.”


February 5th: the Court entered an amended judgment for Protostorm against ATS&K, for $6,696,000 in compensatory damages, $900,000 in punitive damages, $1,050,720.60 in pre-judgment interest, and post-judgment interest as applicable, and against Brundidge for $100,000 in punitive damages. The compensatory damages award was 4% less than the amount awarded at trial, because the jury had found Protostorm 4% at fault.

The Court stayed enforcement of the judgment, pending its ruling on defendants’ 50(b) motion.

June 1st: ATS&K informed Protostorm that it had “ceased performing legal services as of April 30, 2015”, although it maintained limited operations.

 Post-Trial Motion to Set Aside the Verdict

Defendants 50(b) motion argued that Protostorm couldn’t show patentability under 35 U.S.C. §§ 101 and 103, which it had to do to establish proximate cause, and it failed to prove its damages.

Under Section 101 “[w]hoever invents or discovers any new and useful process, machine”, etc., “may obtain a patent therefore…” However, defendants claimed that Protostorm’s invention – selecting advertising based on a customer’s interaction with an advertiser’s content – was an abstract concept that was unpatentable, because the U.S. Supreme Court had ruled in Alice Corp. Pty, Ltd. v. CLS Bank International, 134 S.Ct. 2347 (2014), that “an abstract idea…that merely (requires) generic computer implementation” wasn’t a patent-eligible invention.

Defendants also contended that Protostorm failed to establish that its invention wasn’t “obvious”, as required under § 103.

Ruling on Motion

The Court ruled on defendants’ 50(b) motion on June 5, 2015.

Judge Chen ruled that ATS&K was “procedurally barred” from arguing that Protostorm couldn’t show patentability under 35 U.S.C. §§ 101 and 103, and that it failed to prove its damages, because the firm didn’t raise those arguments in its Rule 50(a) motion.

“Although Defendants’ oral Rule 50(a) motions at trial challenged the patentability of   the Protostorm invention, the grounds stated by their trial counsel were altogether dif-  ferent from the Section 101 and 103 arguments raised in the Rule 50(b) motion…Accordingly, the Court holds that Defendants’ Rule 50(a) motions…did not supply a   sufficient predicate for (their) Rule 50(b) motions”.

She also ruled that “Defendants (forfeited) the arguments” that they failed to raise in their Rule 50(a) motions:

Their Section 101 Non−Patentability Argument

Defendants claim that Protostorm’s invention “is directed at an ‘unpatentable market-ing concept’ under post-Alice case law”, but fail to explain why they didn’t raise the Alice argument before or during trial.

“Furthermore, Alice did not, as ATS&K (claims), announce a previously unknown   framework for analyzing patent eligibility under Section 101. The Supreme Court’s   analysis in Alice builds on prior (cases), including Bilski… in which the Court held that  a method for hedging the risk of changing energy prices was too abstract a concept to   be patentable, and Mayo… in which the Court decided that a patent claim to a method   of medical diagnosis was directed at ‘natural law’ and that a step that merely said   ‘apply it’ was, without ‘significantly more’, ineligible for a patent…Bilski and Mayo were decided in 2010 and 2012, respectively, and Alice was decided a month before trial, (so) there was no reason that Defendants could not have raised its Section 101 argument before the case was submitted to the jury.”

ATS&K also argued that “because patent eligibility is a pure question of law”, i.e., it can be decided by referring to the language of the hypothetical claims alone, “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 ATS&K raising it for the first time in its Rule 50(b) motion.

The judge rejected that argument, ruling that:

“While the question of whether a claim is directed at patent−eligible subject matter is   one of law, that determination will often entail the resolution of underlying factual questions…Here, the parties disputed (via experts) how Protostorm’s claims should have been formulated in its patent application and how (they) might have evolved during the patent examination process…(Further), because the jury returned a verdict in Protostorm’s favor, the Court assumes that at least one valid and enforceable patent would have been issued based on the hypothetical claims drafted by Protostorm’s expert…Thus, the question (now) is whether the Court can decide, as a matter of law based on the evidence adduced at trial, that none of Protostorm’s hypothetical claims would survive the Mayo/Alice patentability test…”

She stated that the trial record was insufficient for the Court to decide the issue, and expert testimony was needed to determine if “the computer interactions described in the Protostorm claims were considered ‘well−understood, routine, conventional activity’” from 2001 – 2006, when the PTO would’ve examined them. “Protostorm would be prejudiced by not having had the opportunity to adduce additional evidence in response to Defendants’ belated patent eligibility argument.” Since patent eligibility isn’t “a purely legal matter, Defendants’ failure to raise it in a pre−trial motion prevents them from raising it in this Rule 50(b) motion.”

In a footnote, she added that even if the Court ruled that Defendants didn’t forfeit their patent-eligibility argument, applying Alice “to the time of the patent examination, i.e., 2001-2006, is problematic”. ATS&K cited cases noting that judicial interpretations of federal law must be applied retroactively, and thus contended that Alice would have applied during that time period, but:

“…the Court reiterates…that patentability is assessed with the criteria applied during    examination…Indeed, the Federal Circuit has recognized that prior to Mayo and Alice,  ‘a computer−implemented invention was considered patent−eligible (if) it produced a   useful, concrete and tangible result.’…Unlike a patent infringement case, in which an   alleged infringer may challenge the patent as now ineligible under Alice… Protostorm   claimed that but for Defendants’ malpractice, (its) invention would have been examined by a PTO patent examiner between 2001 and 2006, and that one patent would have issued by June 2006well before Bilski, Mayo, Alice… were decided… Even if the patent (was) invalidated in a later infringement action under Alice…Protostorm would still be entitled to any royalty income (it) earned until then…”

Their Section 103 Non−Patentability Argument

“Defendants’ oral Rule 50(a) motions failed to specifically raise, and therefore preserve, (their) Rule 50(b) argument” that Protostorm failed to establish patentability, because its expert’s testimony concerning non-obviousness under Section 103 was “conclusory and without detail”, i.e., insufficient.

“Although ATS&K contends that its Rule 50(a) motion raised the issue, (it) only argued  that prior art anticipated the hypothetical claims… (However) anticipation and obviousness are distinct issues that require separate analyses, and raising one issue in a pre−verdict Rule 50 motion is insufficient to preserve the other for a post−trial motion.”

If ATS&K had presented the “obviousness” argument at trial, Protostorm would’ve had a chance to rebut it. “ATS&K’s failure to do so thus prejudiced Protostorm. Accordingly, the Court cannot consider” the argument.

These aspects of ATS&K’s 50(b) motion weren’t procedurally barred:

  • Protostorm failed to meet its burden to show patentability under Section 102, because its expert’s testimony failed to rebut the testimony of Defendants’ expert that Protostorm’s invention was anticipated by prior art.
  • The evidence didn’t prove that ATS&K was responsible for drafting the final patent application, i.e., it had no duty to draft the hypothetical claims put forth by plaintiff’s expert, the firm filed the patent application, but wasn’t responsible for prosecuting it, and its attorney-client relationship with Protostorm ended in late 2001.
  • It was entitled to judgment as a matter of law on the statute of limitations defense, because there was no evidence that Protostorm had a reasonable expectation of representation after 2001, i.e., there was no continuous representation.
  • The award of punitive damages was improper, because there was no showing of malicious or willful intent.

Judge Chen ruled:

“…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 absence 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.”

She thus denied ATS&K’s request to set aside the verdict, and refused to hear any mo-tion to reconsider her order.

Shortly thereafter, the Court also vacated its stay on enforcing the judgment.

Further Activity

July: ATS&K filed a Notice of Appeal.

Continued in Part III.

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



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.


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.

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.

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. 

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

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.”


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

Continued in Part II

50 Cent Scores $14.5M Settlement of Legal Malpractice Claim

E50 Cent Legal Malpractice Claimditor’s note: this post was originally published on 10/23/2015. It has been updated to reflect recent developments.

Rapper 50 Cent, best known for the 2003 album “Get Rich or Die Tryin’”, scored a $14.5 million malpractice claim settlement from Seattle-based law firm Garvey Schubert Barer (GSB), according to documents filed in U.S. bankruptcy court in Connecticut.

However, he won’t get to spend any of it, as he owes his share after legal fees to creditors, per the terms of plan he filed to emerge from bankruptcy, which he filed last year (see below).


Business Insider reported that 50 cent, whose legal name is Curtis James Jackson III, sued his former law firm for $75 million in 2015, alleging malpractice and inadequate representation in a licensing deal and other matters.

Headphones Venture

According to the court filings, Garvey Schubert Barer represented Jackson from 2010 through 2014, including in various matters involving Bradenton, Florida-based Sleek Audio LLC, which develops audio headphones.

Jackson reached an agreement with Sleek Audio to develop and market a wireless headphone called “Sleek by 50”, and invested a total of $2 million in the company. He likely hoped to duplicate the success of rapper Andre Young (a/k/a Dr. Dre), who co-founded Beats Electronics, which Apple purchased for $3 billion in 2014.

However, Jackson alleges that Sleek Audio never marketed or sold the Sleek by 50 headphones, so he created SMS Audio, LLC in 2011 to develop and market headphones under his own brands, “Street by 50” and “Sync by 50.”

Jackson appeared on QVC television in 2012 to promote his headphones, and sold over $175,000 worth in nine minutes.

Jackson claims that Garvey Schubert Barer and its attorneys told him that his headphones didn’t infringe on Sleek Audio’s intellectual property rights.


Sleek Audio filed an arbitration claim against Jackson for lost profits and revenues, due to the similarities between the “Sleek by 50” headphones and Jackson’s SMS headphones. Garvey Schubert defended him.

The Bradenton Herald reported that the arbitrator ruled that Jackson breached confidentiality, misappropriated trade secrets and violated a non-disclosure agreement with Sleek Audio in taking the headphone designs, and ordered him to pay Sleek $16.2 million in damages and attorneys fees.

The U.S. District court in Miami affirmed the award in March, 2014.

Legal Malpractice Claim

50 Cent’s malpractice suit alleges that in defending him in the arbitration matter, “GSB and attorneys Beckner, Moon and Trinchero failed to employ the requisite knowledge and skill necessary to confront the circumstances of the case.” Further, “among GSB’s numerous failures was its inexplicable decision not to call technical and damages experts to rebut expert testimony offered by Sleek — failures relied upon by the arbitrator in crediting Sleek’s experts and entering an eight-figure award in Sleek’s favor.”

Law Firm Response

Business Insider reported that the law firm issued this statement in response to Jackson’s lawsuit: “… Mr. Jackson’s complaint against GSB omits a number of relevant facts and misstates a number of others…Our attorneys properly counseled Mr. Jackson and his sophisticated team of financial and operational advisors about the transactions and the arbitrations with Sleek…We look forward to demonstrating that our attorneys handled the Sleek matters appropriately in all aspects.”

Bankruptcy Filing

Jackson filed for bankruptcy in July, 2015, after a jury ruled that he must pay $5M to a woman for posting her sex tape online without her permission. Punitive damages were later tacked on, which brought the total award to $7M.

His bankruptcy filing listed both his total assets and liabilities as being in the range of $10M – $50M.

According to his attorneys, the filing “permits Mr. Jackson to continue his involvement with various business interests and continue his work as an entertainer, while he pursues an orderly reorganization of his financial affairs.”

In May, 2016, a bankruptcy court judge approved a plan that would enable him to emerge from bankruptcy by paying “up to $23.4 million in future earnings to his creditors.”

In addition to the $7M he owed for the defamation suit, and the arbitration award, which had grown to over $18M with interest, Jackson owed “$4 million to mortgage lender SunTrust Banks Inc. and $1.2 million to ASCAP for advance payments on song royalties. All told, his debts total $32.6 million.”

Under the plan approved by the judge, Jackson “will repay between 74% and 92% of his debts over the next five years”. His assets included “a 21-bedroom Connecticut mansion once owned by boxer Mike Tyson, valued at $8.25 million, which will be sold; about $10.6 million in cash and securities; and a Bentley valued at $167,000. He also included 70% of whatever he wins from a pending malpractice lawsuit.” (emphasis added)

After the malpractice claim settled, Jackson’s attorney stated “We are informed that these proceeds, together with other funds contributed by Mr. Jackson should position the estate to provide for the remaining obligations to be satisfied in connection with this successful Chapter 11 reorganization plan,” and he expected Jackson to emerge from bankruptcy “very shortly.”


According to the terms of the malpractice claim settlement, neither party admitted to wrongdoing and both agreed not to disparage each other. That could be why the rapper revised an Instagram post dissing his former lawyers. The post shows a photoshopped image of Jackson sitting on a wallet full of money.

A Garvey Schubert spokesman said that it’s common for parties to settle in the face of uncertain costs.

“In this case, through mediation, we reached an agreement that resolves our differences of opinion and enables both parties to move on,” the firm said.

Further, “GSB maintains sufficient insurance to cover a settlement of this type.”

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.


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.”