Seed Co. v. Westerman
62 F. Supp. 3d 56
D.D.C.2014Background
- Seed and Tamai sued Westerman and Kratz defendants for legal malpractice related to USPTO interference and settlement advice.
- Plaintiffs allege failure to attach a certified English translation of the PCT '947 application to a Priority Motion and erroneous settlement advice.
- The Priority Motion included a translation for the JP '371 application but not for the PCT '947 application; USPTO denied priority due to missing translation.
- Appeals and post-2003 representational changes led to tolling agreements; Westerman and Kratz firms represented plaintiffs through the relevant proceedings.
- Federal Circuit later held Stevens was entitled to priority only as to certain filings; USPTO final judgment followed in 2004; Supreme Court denied certiorari in 2004.
- Plaintiffs filed this action on February 28, 2008; Count II damages were abandoned as duplicative of Count I, with Counts III–IV rendered moot depending on statute of limitations ruling.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether the claims are barred by statute of limitations | Seed timely despite filing after accrual due to tolling agreements. | Claims time-barred under DC three-year rule. | Timeliness sustained due to tolling; counts timely filed. |
| Whether the continuous representation rule tolled the statute through the appeal | Continuous representation tolls accrual during appeal. | No tolling beyond initial filing. | Continuous representation extended through the appeal; tolling ended with final judgments in 2004. |
| Whether defendants breached duty of care by not translating the PCT '947 application | Failure to translate violated professional duty under applicable rules. | Judgmental immunity and unsettled-law doctrine bar liability; Stevens v. Tamai governs. | No breach; judgmental immunity applies; Stevens established unsettled-law exception that defeats claim. |
| Relation back and mootness of Counts III–IV | Counts III–IV relate back to original pleading. | If Count I dismissed on statute grounds, Counts III–IV moot. | Counts III–IV moot; Count I timely and survives. |
| Reliance on unsettled-law exception and Biomet framework | Biomet requires evaluating professional judgment for unsettled law claims. | Unsettled-law exception applies; hindsight cannot create liability. | Court adopts Biomet’s judgmental immunity; no duty breach. |
Key Cases Cited
- Biomet Inc. v. Finnegan Henderson LLP, 967 A.2d 662 (D.C.2009) (judgmental immunity; unsettled-law exception to malpractice liability)
- Stevens v. Tamai, 366 F.3d 1325 (Fed. Cir.2004) (English translation required for priority in interference)
- Bradley v. Nat’l Ass’n of Securities Dealers Dispute Resolution, Inc., 433 F.3d 846 (D.C.Cir.2005) (exhaustion of appeals not required for continuous representation)
- Winston v. R.D.H. Commc’ns, Ltd., 700 A.2d 766 (D.C.1997) (continuous representation to protect attorney-client privilege)
- De May v. Moore & Bruce, LLP, 584 F.Supp.2d 170 (D.D.C.2008) (extends continuous representation through appeal in DC context)
- Hillbroom v. PricewaterhouseCoopers LLP, 17 A.3d 566 (D.C.2011) (discovery rule in DC legal malpractice actions)
- Knight v. Furlow, 553 A.2d 1232 (D.C.1989) (attorney fees cognizable damages in malpractice)
- Byers v. Burleson, 713 F.2d 856 (D.C.Cir.1983) (discovery rule components in malpractice)
- Mills v. Cooter, 647 A.2d 1118 (D.C.1994) (unsettled law exception to malpractice liability)