Massachusetts Seeks Amicus Briefs on Conflicts in Prosecution

This should be of interest to many of you.  I’ve written extensively on conflicts in prosecution, including the latest version of our book on the subject of ethics in prosecution, which, conveniently, you can buy here.  There is not a lot of direct precedent on this complex issue, though several notable recent verdicts, including the $40m one against Baker Botts, but barred by limitations, now on appeal as discussed here.)

Supreme Judicial Court for the Commonwealth of Massachusetts

RE:  No. SJC-11800

CHRIS E. MALING & another


Please take note that the following entry was made on the docket of the above-referenced case:

December 26, 2014 – ANNOUNCEMENT: The Justices are soliciting amicus briefs. Whether, under Mass. R. Prof. C. 1.7, an actionable conflict of interest arose when, according to the allegations in the complaint, attorneys in different offices of the same law firm simultaneously represented the plaintiffs and a competitor in prosecuting patents on similar inventions, without informing the plaintiffs or obtaining their consent to the simultaneous representation.

Francis V. Kenneally, Clerk

Dated: December 26, 2014

About David

Professor of Law, Mercer University School of Law. Formerly Of Counsel, Taylor English Duma, LLP and in 2012-13, judicial clerk to Chief Judge Rader.

7 thoughts on “Massachusetts Seeks Amicus Briefs on Conflicts in Prosecution

  1. 3

    There may be a conflict here, but it is probably not “actionable” under MA law unless the Finnegan attorneys collaborated on their respective patent applications.
    U.S. law on conflicts is overly strict in requiring separate representation in instances where there is no actual harm to clients represented by different offices of the same firm.

    1. 3.1

      Some forms of conflict are waivable.

      Some are not.

      I think your comment glosses over this distinction a little too much.

      1. 3.1.1

        For a single law office, refusal of the second prospective client or withdrawal from both is the best course of action. This case is not so simple for two reasons. (This was a lower court case that was take up sua sponte by the SJC, indicating a bothersome situation.) As the announcement sates, the attorneys were in different law offices and the inventions were only “similar.” Comment [3] to Mass. R. Prof. C. 1.7 says that “On the other hand, simultaneous representation in unrelated matters of clients whose interests are only generally adverse, such as competing economic enterprises, does not require consent of the respective clients.” I vaguely recall a CAFC case that said that filing patents for competitors does not necessarily create a conflict.

        It would help if one could read the complaint, but that does not appear to be on-line

  2. 2

    I would say it would depend on how close the inventions are. Some patent attorneys are “subject matter experts” and prosecute in a particular field for different parties. If merely being related was a conflict, then a large firm probably couldn’t ever take on new clients. If both applications were being prepared at the same time, and one would clearly render the other unpatentable, that is a conflict because the firm could control which application gets filed first.

    One time I was presented with almost identical inventions for clients at around the same time. I was so uncomfortable I told both I had a conflict (without explaining more) and declined both (stinks to lose the work). I find out later, one did derive from the other and I dodged a bullet by not getting involved in that mess.

  3. 1

    If one treats a firm regardless of the location of its attorneys as one lawyer, I think it is clear that a conflict does exist.

Comments are closed.