Seed Company Limited v. Westerman
2012 U.S. Dist. LEXIS 1222
| D.D.C. | 2012Background
- Seed filed JP 371 in Japan (1991) and a PCT in 1992 for Tamai’s correction tape dispenser.
- Kratz, Quintos, & Hanson filed US applications 183 (1993) and 839 (1994) for Seed.
- Stevens filed UK and US designs; USPTO declared an interference with Stevens; Board allowed Seed priority based on JP date but not on PCT date due to translation filing.
- The Kratz firm translated JP 371 but omitted PCT translation; Board required separate English translation of PCT for priority; Board denied reconsideration.
- Federal Circuit reversed Board’s priority decision in 2004, holding Seed lacked foreign-date priority under 35 U.S.C. § 119(a) and that Seed failed to file an English translation; Seed declined Stevens settlement offers due to allegedly negligent advice.
- Tolling agreements (May 2007) extended the filing period; plaintiffs filed suit February 2008; discovery requested on failure-to-file claim and causation questions.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether the failure‑to‑file claim is time‑barred | Seed contends discovery tolling and lulling extend accrual. | Westerman argues accrual occurred July 2002; three‑year limit lapses by July 2005. | Denied without prejudice; discovery allowed on failure‑to‑file claim. |
| Whether Kratz can be held liable for prior advice affecting settlement | Seed relied on Kratz’s advice influencing settlement decisions. | Kratz argues only later Westerman actions causally link to losses; not liable for Westerman’s conduct. | Denied without prejudice on causation to permit discovery. |
| Whether to grant discovery under Rule 56(d) to develop causation and damages | Discovery needed to show reliance and damages from erroneous advice. | Discovery not yet warranted; record insufficient. | Court permits discovery on failure‑to‑file and causation issues. |
Key Cases Cited
- Knight v. Furlow, 553 A.2d 1232 (D.C. 1989) (discovery rule start; accrual)
- Byers v. Burleson, 713 F.2d 856 (D.C. Cir. 1983) (discovery rule; jury fact questions for accrual)
- First Chicago Int’l v. United Exchange Co., 836 F.2d 1375 (D.C. Cir. 1988) (summary judgment after discovery period typically requires discovery)
- Stella v. Mineta, 284 F.3d 135 (D.C. Cir. 2002) (discretion to permit discovery before ruling on summary judgment)
- Herbin v. Hoeffel, 806 A.2d 186 (D.C. 2002) (elements of legal malpractice; duty, breach, causation, damages)
- Celotex Corp. v. Catrett, 477 U.S. 317 (1986) (summary judgment standard; burden on movant)
- Anderson v. Liberty Lobby, 477 U.S. 242 (1986) (material facts and genuine disputes; inferences in nonmovant’s favor)