Seed Co. v. Westerman Ex Rel. Estate of Westerman, 2016 U.S. App. LEXIS 14822

Background

Seed and Tamai pursued U.S. patent applications for a correctional-tape dispenser; the effort ultimately failed due to counsel’s noncompliance with Patent Office rules.
A key issue was whether Tamai could be credited with the benefit of a PCT/Japanese filing to defeat Stevens’s prior patent; translations were required for foreign-language filings.
The Board denied Tamai’s motion for benefit for the PCT application because a translation was not filed; Tamai’s Japanese filing alone was insufficient under governing rules.
The law firm split into two, with Westerman handling Seed’s case and Kratz handling it separately; tolling agreements with Seed were entered in 2007.
Seed sued the Westerman and Kratz defendants for legal malpractice; district court granted summary judgment on the merits, but Seed appealed.
The court addresses whether the statute of limitations barred claims against each group and whether the continuous-representation rule tolled the limitations period.

Issues

Issue	Plaintiff's Argument	Defendant's Argument	Held
Does the statute of limitations bar Seed’s claims against Kratz?	Seed contends accrual occurred within three years of tolling and tolling kept claims alive.	Kratz argues accrual occurred before May 2004 and tolling could not retroactively save the claims.	Yes; Kratz claims barred by statute of limitations.
Does the continuous-representation rule toll Seed’s claims against Westerman during the Federal Circuit appeal?	Seed says continual representation by Westerman during the appeal tolls the period.	Westerman contends tolling does not apply during appeals or after the split.	Yes; tolling applies to Westerman during the appeal.
Are Seed’s claims against Westerman subject to summary judgment on the merits, considering judgmental-immunity?	Seed asserts Westerman erred in failing to file translations, violating duties; disputes exist on whether it was judgment or negligence.	Westerman argues the decision was a matter of professional judgment protected by judgmental immunity.	No; genuine issues of material fact on whether the decision was protected by judgmental immunity.
Should the district court remand for adjudication of the contingent counts related to statute-of-limitations advice by Kratz?	Contingent claims survive if primary counts are dismissed on statute grounds.	Contingent counts depend on the resolution of primary counts.	Remand to adjudicate contingent counts.
Should Edward Kenehan and the Westerman firm remain defendants?	All roles in the second count should be considered; potential damages remain.	If statute-barred, some claims may be moot; need clarification on damages and dismissal.	Remand to determine if those defendants should be dismissed.

Key Cases Cited

Stevens v. Tamai, 366 F.3d 1325 (Fed. Cir. 2004) (foreign-application benefit linkage and translation requirements)
Bradley v. Nat’l Ass’n of Sec. Dealers Dispute Resolution, 433 F.3d 846 (D.C. Cir. 2005) (continuous-representation rule; accrual during ongoing representation)
R.D.H. Commc’ns, Ltd. v. Winston, 700 A.2d 766 (D.C. 1997) (continuous-representation rule; tolling during ongoing matter)
Beal Bank, SSB v. Arter & Hadden, LLP, 167 P.3d 666 (Cal. 2007) (continuous-representation rule—limits tolling after attorney leaves firm)
Dunn v. Rockwell, 689 S.E.2d 255 (W. Va. 2009) (tolling; firm-client continuation limitations)
Wagner v. Sellinger, 847 A.2d 1151 (D.C. Cir. 2004) (timing of injury and accrual in malpractice context)
Biomet Inc. v. Finnegan Henderson LLP, 967 A.2d 662 (D.C. Cir. 2009) (judgmental-immunity doctrine; standard of care and reasonable care)
Morrison v. MacNamara, 407 A.2d 555 (D.C. 1979) (standard of care for professionals)
O’Neil v. Bergan, 452 A.2d 337 (D.C. 1982) (professional standard; expertise-based duty)
Gunn v. Minton, 133 S. Ct. 1059 (2013) (jurisdictional principles in patent-related malpractice)