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Maling v. Finnegan, Henderson, Farabow, Garrett & Dunner, LLP

Supreme Judicial Court of Massachusetts, Suffolk

December 23, 2015

CHRIS E. MALING
v.
FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP, & others.[1]

Heard: September 8, 2015.

A motion to dismiss was heard by Janet L. Sanders, J. The Supreme Judicial Court on its own initiative transferred the case from the Appeals Court.

Thomas M. Bond for the plaintiff.

Erin K. Higgins (Christopher K. Sweeney with her) for the defendants.

Heather B. Repicky & Lauren E. Ingegneri, for Boston Patent Law Association, amicus curiae, submitted a brief.

Paul A. Stewart, of California, & Sara E. Hirshon, for Knobbe, Martens, Olson & Bear, LLP, & others, amici curiae, submitted a brief.

Present: Gants, C.J., Spina, Cordy, Botsford, Duffly, Lenk, & Hines, JJ.

CORDY, J.

In this case we consider whether an actionable conflict of interest arises under Mass. R. Prof. C. 1.7, as appearing in 471 Mass. 1335 (2015), when attorneys in different offices of the same law firm simultaneously represent business competitors in prosecuting patents on similar inventions, without informing them or obtaining their consent to the simultaneous representation.[2]

The plaintiff, Chris E. Maling, engaged the defendant law firm Finnegan, Henderson, Farabow, Garrett & Dunner, LLP (Finnegan), including the three individual attorneys named in this suit, to represent him in connection with the prosecution of patents for Maling's inventions for a new screwless eyeglass. After obtaining his patents, Maling learned that Finnegan had been simultaneously representing another client that competed with Maling in the screwless eyeglass market. Maling then commenced this action, alleging harm under various legal theories resulting from Finnegan's failure to disclose the alleged conflict of interest. A judge in the Superior Court dismissed Maling's complaint for failure to state a claim under Mass. R. Civ. P. 12 (b) (6), 365 Mass. 754 (1974). Maling appealed, and we transferred the case to this court on our own motion. We conclude that the simultaneous representation by a law firm in the prosecution of patents for two clients competing in the same technology area for similar inventions is not a per se violation of Mass. R. Prof. Conduct 1.7. We further conclude that based on the facts alleged in his complaint, Maling failed to state a claim for relief. Accordingly, we affirm the judgment of dismissal.

1. Background.

In 2003, Maling engaged Finnegan to perform legal services in connection with the filing and prosecution of patents for Maling's inventions for a new screwless eyeglass, including a screwless eyeglass hinge block design. Finnegan prepared patent applications for Maling's inventions after ordering "prior art" searches. Over the next several years, Finnegan successfully obtained four separate patents for Maling.

Attorneys in Finnegan's Boston office represented Maling from approximately April, 2003, to May, 2009.[3] During this period of time, attorneys in Finnegan's Washington, D.C., office represented Masunaga Optical Manufacturing Co., Ltd. (Masunaga), a Japanese corporation that also sought patents for its screwless eyeglass technology. Upon learning of Finnegan's representation of Masunaga, Maling brought suit, asserting claims stemming from the alleged conflict of interest that arose from Finnegan's simultaneous representation of both clients.[4] We describe the allegations in Maling's complaint germane to our decision.

Maling alleges that he engaged Finnegan to "file and prosecute a patent for [his] inventions for a new screw-less eyeglass, including without limitation, his invention of a 'screwless' eyeglasses hinge block design, " and that in September, 2003, Finnegan ordered prior art searches relating to Maling's inventions.[5] Maling alleges that Finnegan "belatedly" commenced preparation of a patent application for his inventions in or about May, 2004, and that it "[inexplicably] took [fourteen] months" to do so. Maling also alleges that Finnegan filed patent applications for Masunaga more quickly than it did for him. At the same time, Maling acknowledges that Finnegan successfully obtained patents for his inventions. Maling further claims that he paid Finnegan in excess of $100, 000 for its services, and that he invested "millions of dollars" to develop his product. He claims he would not have made this investment had Finnegan "disclosed its conflict of interest and/or its work on the competing Masunaga patent." He further alleges that the Masunaga applications are very similar to the Maling applications, and that Finnegan knew it was performing work in the "same patent space" for both clients. Maling also alleges that he was harmed when Finnegan, in 2008, declined to provide him with a legal opinion addressing similarities between the Masunaga patents and the Maling patents. Because Finnegan did not provide the legal opinion Maling claims, he was unable to obtain funding for his ...


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