Holwell Shuster & Goldberg Secures Favorable Settlement for Cold Spring Harbor Laboratory in Patent Malpractice Case

NEW YORK—Holwell Shuster & Goldberg LLP has reached a settlement on behalf of the private, not-for-profit research institution Cold Spring Harbor Laboratory (CSHL) in a four-year-long patent malpractice case. The case had been scheduled to go to a jury in Massachusetts state court this week.

Brought by CSHL in 2010 against Ropes & Gray and the firm's former attorney, Matthew P. Vincent, the underlying dispute in the case related to the licensing of CSHL's short-hairpin RNA (shRNA) technology, used in cancer research and drug development. The shRNA technology at issue was developed by CSHL Professor Gregory Hannon, Ph.D, and represents a significant advance over other technologies – including the long-stranded RNA technology developed by Nobel Prize winners Drs. Andrew Fire and Craig Mello.

The suit charged that malpractice impeded the timely issuance of a CSHL patent on shRNAs. CSHL's lawsuit focused on the actions of Vincent, who was engaged by CSHL in 2000 to file the patent on Dr. Hannon's shRNA technology. The application Vincent submitted, however, contained copied text from an earlier patent application submitted by Drs. Fire and Mello, resulting in the filing of the malpractice suit against the law firm and Vincent

"This is a big victory for Cold Spring Harbor Laboratory," said John DiMatteo, Counsel to CSHL and Head of HSG's IP litigation practice. "While the acts of malpractice were pretty straightforward, the underlying patent prosecution issues and science were very complex."

After transferring the applications from Ropes & Gray, CSHL obtained three U.S. patents in addition to patents in Europe.

"The resolution of this case will enable CSHL to focus on the continued development of its technology and to ensure that the companies actively using the technology in drug development have the appropriate licenses moving forward," DiMatteo added.

CSHL is represented by HSG attorneys John M. DiMatteo, Marc E. Montgomery, and Karen A. Sebaski, and by John O. Mirick of Mirick O'Connell DeMallie & Lougee LLP.