Cold Spring Harbor Laboratory v. Ropes & Gray LLP
762 F. Supp. 2d 543
E.D.N.Y2011Background
- CSHL sued Ropes & Gray LLP and Vincent for legal malpractice, breach of fiduciary duty, and fraud over drafting/prosecuting Hannon RNAi patent applications.
- Vincent copied portions of the Fire patent text into the Hannon Applications and allegedly failed to distinguish Hannon's shRNA technology from Fire and other prior art.
- PTO repeatedly rejected Hannon Applications as anticipated by Fire; defendants used Fire text in responses and did not disclose this copying to CSHL.
- CSHL discovered the copying in 2008; Vincent was terminated by R&G in 2009; Wilmer Hale later took over prosecution.
- The court found venue improper in the Eastern District of New York and transferred the case to the District of Massachusetts; it did not reach 12(b)(6) or amendment issues.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Is venue proper for the legal malpractice claim | CSHL asserts venue lies where substantial events occurred (Eastern District of NY). | Venue should be where defendants performed the work and communicated; Vincent worked from Massachusetts; NY venue improper. | Venue improper in EDNY for the legal malpractice claim; transfer required. |
| Whether pendent venue applies to the fiduciary claim | Pendent venue may apply due to common nucleus of facts with the federal-centered claim. | Focus on primary claim; pendent venue not justify EDNY for this case. | Courts treated primary claim (legal malpractice); no EDNY pendent venue for fiduciary claim to save venue. |
| Whether the case should be transferred under 28 U.S.C. § 1406(a) | Transfer should not occur if venue were proper; request is improper here. | Court should transfer to Massachusetts where key acts occurred. | Transfer to District of Massachusetts appropriate; case transferred. |
| Impact on remaining state-law claims | Pendent venue could salvaged state claims; damages alleged accordingly. | No proper federal venue to support pendent venue for state claims. | State claims dismissed or not addressed due to improper venue on primary federal claim. |
Key Cases Cited
- Immunocept, LLC v. Fulbright & Jaworski, LLP, 504 F.3d 1281 (Fed. Cir. 2007) (jurisdiction over legal malpractice tied to patent law issues under 1338(a))
- Gulf Ins. Co. v. Glasbrenner, 417 F.3d 353 (2d Cir. 2005) (venue proper where substantial events occurred; not limited to most substantial events)
- Solow Bldg. Co. v. ATC Assocs., Inc., 175 F. Supp. 2d 465 (E.D.N.Y. 2001) (venue analysis for 1391(b)(2)/substantial events)
- Jenkins Brick Co. v. Bremer, 321 F.3d 1366 (11th Cir. 2003) (substantial events must have close nexus to claims; tangential events insufficient)
- Bates v. C&S Adjusters, Inc., 980 F.2d 865 (2d Cir. 1992) (receipt of communication in district can be a substantial event when closely linked to claim)