MEMORANDUM OF DECISION AND ORDER ON PLAINTIFF'S
EMERGENCY SPECIAL MOTION BY PLAINTIFF KENNETH CARR TO DISMISS
DEFENDANTS' COUNTERCLAIMS UNDER M.G.L.c. 231, §
Douglas H. Wilkins, Justice
legal malpractice case brought by Kenneth Carr ("
Carr"), the Defendants, Cesari and McKenna LLP and
Thomas O'Konski, have filed a first amended answer,
Affirmative Defenses, and Counterclaims of the Defendants
Cesari and McKenna, LLP [" Cesari" ] and Thomas
O'Konski." (" Counterclaims"). Carr has
brought " emergency Special Motion by Plaintiff Kenneth
Carr to Dismiss Defendants' Counterclaims under M.G.L.c.
231, § 59H and for a Mandatory Award of Attorneys
Fees." (" Motion"). After hearing on March 20,
2017, for the reasons set forth below, the Motion is ALLOWED
IN PART and DENIED IN PART.
court incorporates the description of the allegations of
Carr's Complaint set forth in its Memorandum of Decision
and Order on Defendants' Rule 12(b) Motion to Dismiss,
dated January 31, 2017 (" January Decision"). It
also considers the following facts and allegations from the
Counterclaims, Affidavits and other papers before the Court.
Where necessary the Court supplements this "
Background" and resolves the conflicting factual
assertions in the " Discussion" below.
asserts that it represented Meridian Medical Systems, LLC
(" MMS") and its predecessor since at least 1993
and provided intellectual property advice and services. Carr,
supported by the Affidavit of John McKenna, Esq., a former
Cesari partner, asserts that Cesari also represented him
individually. All of the patents Cesari prosecuted for MMS on
which Carr was the named inventor were assigned to MMS with
one exception, which was assigned to MMS's intellectual
property licensee. However, the parties dispute whether Carr
and McKenna acknowledged that this practice would not apply
to invention in question.
Court assumes that the following allegations of the
Counterclaims are true: In the summer of 2013, when Cesari
learned information about the extent and nature of the
dispute between Carr and MMS, Cesari decided to withdraw from
representing MMS. Carr asked Cesari to continue to represent
MMS, according to Cesari. Carr allegedly told Cesari that
there would be no conflict and that he would provide a
comfort letter to that effect. Based on that representation,
Cesari continued to represent MMS with respect to all of its
intellectual property and patent matters. It is undisputed
that Cesari never obtained a written waiver of conflict from
September 2013, Cesari learned that the law firm of Preti
Flaherty Belliveau & Pachios, Chartered LLP (" Preti
Flaherty") was representing Carr in connection with the
patent application at issue and his dispute with MMS. On or
about September 20, 2013, Preti Flaherty filed a power of
attorney at the United States Patent and Trademark Office
(" USPTO") with respect to the relevant patent
application. Cesari filed a petition to recognize MMS as
" applicant" of that patent application. Neither
Carr nor his counsel objected to that petition or
Cesari's representation of MMS.
has not been paid $85, 000 for legal work it performed on
patent applications for MMS, including work on patents and
applications that, according to Carr, Cesari represented Carr
Motion challenges the Counterclaim as a so-called SLAPP suit,
subject to G.L.c. 231, § 59H (" § 59H").
See Chemrisk, LLC v. Foytlin, 476 Mass. 479, 68
N.E.3d 1180 (2017). Under § 59H, the moving party must
show that the claims against it are based upon " the
petitioning activities alone and have no substantial basis
other than or in addition to the petitioning
activities." Duracraft Corp. v. Holmes Prods.
Corp., 427 Mass. 156, 167-68, 691 N.E.2d 935 (1998),
quoted in Fabre v. Walton, 436 Mass. 517, 522, 781
N.E.2d 780 (2002). " '[B]ased on' does not mean
'in response to': although claims and related
pleadings filed in court may be classified as petitioning
activities, plaintiffs are not thereby immunized from
counterclaims filed in response to the claim."
Duracraft, 427 Mass. at 168, n.20. The Court
therefore does not evaluate the Motion generally to determine
whether, as Carr contends, the counterclaims are "
retaliatory." See Keystone Freight Corp. v. Bartlett
Consolidated, Inc., 77 Mass.App.Ct. 304, 314, 930 N.E.2d
744 (2010) (" attribution of a motive, alone is never
sufficient"). A substantial counterclaim is not
necessarily a SLAPP suit simply because it may be retaliation
for being sued. " A special motion to dismiss will not
succeed against a 'meritorious claim[ ] with a
substantial basis other than or in addition to the
petitioning activities implicated' (emphasis
added)." Fabre, 436 Mass. at 524, quoting
Duracraft, 427 Mass. at 167. If the moving party
makes the threshold showing, the burden shifts to the
opposing party to " demonstrate by a preponderance of
the evidence that the [moving party's] petitioning
activity was devoid of any reasonable factual support or any
arguable basis in law." Fabre, 436 Mass. at
must prove by a preponderance of the evidence " that the
activity at issue is 'petitioning' activity within
the purview of the anti-SLAPP statute and that the claims in
the litigation 'are based on the petitioning activities
alone and have no substantial basis other than or in addition
to the petitioning activities.'" Fabre v.
Walton, 436 Mass. 517, 522, 781 N.E.2d 780 (2002),
quoting Duracraft Corp. v. Holmes Prods. Crop., 427
Mass. at 167-68. See also Office One, Inc. v. Lopez,
437 Mass. 113, 122, 769 N.E.2d 749 (2002); Baker v.
Parsons, 434 Mass. 543, 550, 750 N.E.2d 953 (2001).
Section 59H defines " a party's exercise of its
right of petition" to include " any written or oral
statement made before or submitted to a[n] . . . executive or
judicial body . . ."
many of the Counterclaims challenge Carr's complaint
itself and the allegations made therein. Filing a lawsuit
" is the paradigm of petitioning activity" within
the definition of § 59H. Ehrlich v. Stern, 74
Mass.App.Ct. 531, 538, 908 N.E.2d 797 (2009), citing
Wenger v. Aceto, 451 Mass. 1, 5-6, 883 N.E.2d 262
(2008) (" criminal claim brought in the Dedham District
Court"). See also McLarnon v. Jokisch, 431
Mass. 343, 345, 727 N.E.2d 813 (2000) (application for an
abuse prevention order under G.L.c. 209A). Moreover, the
Anti-SLAPP Act protects more than just the filing of the
lawsuit; it also protects statements in connection with the
lawsuit, including, most obviously, the allegations of the
complaint itself. " [A] party's exercise of its
right to petition" the judiciary, specifically includes
" any written or oral statement made in connection with
an issue under consideration or review by a . . . judicial
body, " or " reasonably likely to encourage
consideration or review of an issue by a . . . judicial body
. . ." G.L.c. 231, § 59H. See generally
Chemrisk, 476 Mass. at 484-85. Duracraft Corp.
v. Holmes Prods. Corp., 427 Mass. at 161-64; Office
One, Inc. v. Lopez, 437 Mass. at 123 (2002) (noting the
" broad definition of petitioning activity protected by
Were filing the [lawsuit] the only conduct on which the
complaint in this action focused, then it is clear that the
case could not proceed." Ehrlich, 74
Mass.App.Ct. at 538. However, it is possible for a lawsuit to
give rise to a cause of action that has a " substantial
basis other than or in addition to the petitioning
activities." Duracraft, 427 Mass. at 168. For
instance, in that case, violation of a " nondisclosure
agreement, . . . constitute[d] a substantial basis other than
Marino's petitioning activity to support Duracraft's
claims." Id. Other examples of legitimate
claims arising from filing suit also exist:
Many preexisting legal relationships may properly limit a
party's right to petition, including enforceable
contracts in which parties waive rights to otherwise
legitimate petitioning. A quintessential example of such a
waiver is a settlement agreement, in which a party releases
legal claims against an adversary that otherwise properly
could be prosecuted by petitioning the court. [Note omitted.]
But neither this example nor contractual or fiduciary
relationships in general exhaust the conceivable occasions in
which a party assumes obligations that in turn limit the
party's subsequent free exercise of speech and
Id. at 165-66. With this background, the Court
follows the Appeals Court's instruction to rule upon each
counterclaim on an all-or-nothing basis:
[T]he anti-SLAPP inquiry produces an all or nothing result as
to each count the complaint contains. Either the count
survives the inquiry or it does not, and the statute does not
create a process for parsing counts to segregate components
that can proceed from those that cannot.
Ehrlich, 74 Mass.App.Ct. at 536. It concludes that
the plaintiff has shown that some, but not all, of the
counterclaims are based upon an exercise of their right to
Section 6F : The Counterclaims contain three
sections that establish their nature, purpose and function to
challenge Carr's exercise of his right to file this
lawsuit. The " Introduction" expressly and directly
challenges Carr's complaint in this case on the ground
that Carr " filed the instant lawsuit in bad faith and
aware that his allegations are false and unsupportable."
Counterclaims at 12. The Defendants essentially repeat these
allegations in paragraphs 45-41 of the Counterclaims, which
they later expressly incorporate into every count .
See Counterclaims, ¶ ¶ 52, 58, 63, 67, 74. As a
result, the Counterclaims, both as a whole and on an
individual basis, all include allegations based on the
allegedly wrongful filing of the complaint. Finally, the
section entitled " Violation of Chapter 231, §
6F" states that " Carr's claims are wholly
insubstantial, frivolous and not advanced in good
faith." Counterclaims at 23. It seeks affirmative
relief, reflected in paragraph C of the Counterclaims'
prayer for relief and is, for all intents and purposes, Count
VI of the Counterclaims, though not expressly labeled as
such. These sections of the Counterclaims go on to
particularize these challenges to the Complaint and,
ultimately to assert a right to relief in the form of
attorneys and costs pursuant to G.L.c. 231, § 6F.
Id., 12-13, 23-24. Carr's Motion (at 7-8) begins
by challenging these passages.
counterclaim alleging violation of § 6F is based on
petitioning activities. See Brooks Automation, Inc. v.
Blueshift Technologies, Inc., No. 05-3973-BLS2
(Mass.Super. 1/24/2006) (Gants, J.) [20 Mass.L.Rptr. 541]
(" This Court declared that, if Blueshift's
counterclaim had been fashioned as a common-law claim of
abuse of process or a statutory claim that Brooks'
complaint was frivolous and in bad faith under G.L.c. 231,
§ 6F, the counterclaim would plainly have been based on
Brooks' petitioning activities"), citing Fabre
v. Walton, 436 Mass. at 523-24; Donovan v.
Gardner, 50 Mass.App.Ct. 595, 740 N.E.2d 639 (2000).
Moreover, there is no plausible claim for violation of §
6F until after " a finding, verdict, decision, award,
order or judgment has been made by a judge or justice or by a
jury, auditor, master or other finder of fact. G.L.c. 231,
§ 6F."  At this point, therefore, the §
6F claim is baseless. To bring such a claim at the pleadings
stage, without legislative authorization, is squarely "
based on petitioning activity" within the meaning of
§ 59H and has no substantial basis beyond the
Abuse of Process : After service of the Motion, but
before filing, the Defendants amended the Counterclaims by,
among other things, nominally removing their Abuse of Process
count (although retaining much of the
verbiage). They argue that this deprives the
Court of authority to consider their potential exposure under
the Anti-SLAPP law for alleging abuse of process in the first
place. Nothing in the statute supports that
position. Section 59H entitles a party to "
bring a special motion to dismiss" if " the civil .
. . counterclaims against said party are based on" the
party's exercise of the right to petition. Unlike some
other fee-shifting provisions, § 59H allows no safe
harbor for a party who files an offending pleading, but
withdraws it before the hearing. Compare Fed.R.Civ.P.
11(c)(2) (A motion for Rule 11 sanctions " must not be
filed or be presented to the court if the challenged paper,
claim, defense, contention, or denial is withdrawn or
appropriately corrected within 21 days after service or
within another time the court sets"). Nor does the
statute confer jurisdiction on a count-by-count basis; as
long as one count is dismissed under § 59H, the Court
has discretion to award fees without necessarily even
excluding time spent on a legitimate, surviving count.
Polay v. McMahon, 468 Mass. 379, 388, 10 N.E.3d 1122
(2014). It follows a fortiori that, as long as the
Court grants the special motion as to any count, the
disposition of other counts imposes no jurisdictional
limitation on the Court's consideration of the entire
complaint. Because the Court in this case ultimately "
grants [a] special motion to dismiss" the plain language
of the statute provides that " the court shall award the
moving party costs and reasonable attorneys fees."
Connolly v. Sullivan, 76 Mass.App.Ct. 316, 318, 921
N.E.2d 1017 (2010), quoting G.L.c. 231, §
allowing a party to file a SLAPP suit and avoid liability if
the other side incurs the expense of defending and filing a
special motion to dismiss would perpetrate the harm that
§ 59H seeks to prevent: " [t]he object of a SLAPP
[footnote omitted] suit is not necessarily to prevail, but
rather, through the difficulty and expense of litigation, to
discourage and intimidate individuals from exercising their
constitutional right of petition." Chemrisk,
476 Mass. at 483. Indeed, in this very case, the Defendants
initially used their abuse of process counterclaim as a
bargaining chip, in an attempt to leverage concessions from
Carr before unilaterally withdrawing that claim. While that
strategy may reduce the amount of fees incurred by the moving
party, the Court does not agree that an offending party can
avoid § 59H liability entirely, through hit-and-run
§ 59H to abuse of process claims can be problematic,
because the tort actually requires proof of petitioning
activity, namely the use of judicial process. See
Vittands v. Sudduth, 49 Mass.App.Ct. 401, 406, 730
N.E.2d 325 (2000). The Courts have interpreted and applied
the anti-SLAPP statute to " continue to permit, where
appropriate and consistent with the intent of § 59H,
claims of abuse of process as delineated by the Massachusetts
common law." Keystone Freight Corp. v. Bartlett
Consolidated, Inc., 77 Mass.App.Ct. 304, 930 N.E.2d 744
(2010). Specifically addressing an abuse of process claim,
the Appeals Court has stated the applicable test:
We are required to determine . . . whether Bartlett has
established that there is no conduct on its part other than
filing the claim . . . To hold that evidence of improper
action, separate and distinct from the exercise of
petitioning activity, is necessary as a threshold requirement
simply means that attribution of a motive, alone is never
sufficient . Considering the foregoing standard,
properly understood, we believe that Bartlett failed to meet
its threshold burden.
Id., 77 Mass.App.Ct. at 314 (Emphasis added.) The
Appeals Court found that the plaintiff alleged improper
conduct by the defendant " before, after and separate
from Bartlett's petitioning activity." Id.,
77 Mass.App.Ct. at 315. The defendant filed a collection
action " immediately after being notified of"
plaintiff's growing concerns over billing practices it
later mailed an offer for " almost twice [the] estimated
fair market value of" the defendant's services, a
tactic which was " arguably consistent with an attempt .
. . to coerce payment of its inflated bill."
Id. These and other facts showed that the "
abuse of process claim [was] more than a bald and ...