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2016 Winter Newsletter - Maling v. Finnegan – Important Guidance from the SJC as to Patent...
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  Winter 2016

  BPLA Newsletters

 Volume 47, Issue 1

Maling v. Finnegan – Important Guidance from the SJC as to Patent Subject Matter Conflicts

by Patrick J. Concannon, of Nutter McClennen & Fish LLP, and Lauren Ingegneri of Abiomed, Inc.

Patrick J. Concannon

Lauren Ingegneri

The BPLA recently submitted an amicus brief advocating against a broad interpretation of the Massachusetts Rules of Professional Conduct (MRPC) conflict of interest rules as they apply to patent attorneys’ responsibility to avoid subject matter conflicts of interest.[1]  The BPLA’s position and that of other bar advocates was adopted by the Massachusetts Supreme Judicial Court (SJC) in its December 23, 2015 Chris E. Maling v. Finnegan, Henderson, Farabow, Garrett & Dunner LLP[2] decision, which garnered national attention.  The decision can be accessed by searching “Maling” at this link:


All lawyers, patent lawyers included, must consider whether representing two clients with competing interests would impair the lawyer’s ability to effectively represent either.  Ethical violations and/or malpractice liability can result from a failure to timely identify and address such conflicts.  In the specific case of patent prosecution, one client’s success in securing patent rights might mean that a patentee client can preclude another client’s ability to use or license critical technology.


As referenced in the BPLA’s amicus brief and in the SJC’s decision, the fact that two patent prosecution clients have competing economic interests is not sufficient, by itself, to prevent an attorney from ethically representing them both.  Where the patent claims of two clients are identical or are obvious variants, the clients’ interests are legally adverse such that representing both is prohibited under the MRPC.  But what about a situation where the claims are highly similar, not obvious variants, and were invented by two competitors?


In the Maling case, the SJC addressed whether the MRPC are violated per se when patent attorneys practicing in different offices of the same firm represent business competitors in prosecuting patents on merely similar inventions without informing them about the concurrent representation.


Plaintiff Chris Maling hired lawyers in Finnegan, Henderson, Farabow, Garrett & Dunner, LLP’s (“Finnegan”) Boston-area office to assist with filing and prosecuting patents for Maling’s screwless eyeglass inventions.  The prosecution resulted in the successful issuance of two patents to Maling.  Finnegan’s Washington, D.C. office during the same timeframe represented a company named Masunaga Optical Manufacturing Co., Ltd. (Masunaga) in successfully prosecuting patents for similar screwless eyeglass technology.  Only after Maling’s patents were granted and he sought an opinion from Finnegan as to his legal position vis-à-vis Masunaga’s patents did Maling learn about the dual representation.  He brought suit in Massachusetts Superior Court alleging breach of fiduciary duty, malpractice, unfair or deceptive trade practices and inequitable conduct before the United States Patent and Trademark Office.


Maling claimed that he suffered “tremendous financial hardship” as a result of Finnegan’s failure to inform him about its efforts on behalf of Masunaga to secure a patent for similar, competing technology in parallel with Finnegan’s work on his patents.  If Finnegan had informed Maling about its work on Masunaga’s patent claims, as was Finnegan’s duty according to Maling, Maling would not have invested “millions of dollars” in developing his product.  He also alleged that he failed in securing financing as a result of Finnegan’s refusal to render an opinion as to whether Mailings patents and the Masunaga patents conflicted.


The Superior Court granted Finnegan’s motion to dismiss Maling’s complaint for failure to state a claim for which relief can be granted, and the SJC took the case under direct appellate review. 


In its amicus brief, the BPLA argued that the adoption of a new conflict of interest rule that would prevent a patent practitioner from representing applications filed by competitors on “similar inventions” would create a great deal of uncertainty for both applicants and patent practitioners.  Further, if this blanket rule were adopted, applicants might attempt to monopolize the marketplace for lawyers with specific expertise in order to gain a competitive advantage.


The Court adopted the BPLA’s view and held that Finnegan’s having represented a business competitor in prosecuting patents for similar technologies was not per se an ethical rules violation.  Moreover, Maling had not adequately alleged negligent conduct by Finnegan.  The SJC concluded that Mailing’s complaint did not allege that the respective patent claims were so similar that Finnegan should have foreseen the potential for direct legal adversity (such as an interference proceeding which would trigger ethical prohibitions against representing both parties under MRPC Rule 1.7(a)(1)).  As to the more important question—whether the concurrent representation materially limited Finnegan’s ability to exercise independent judgment in violation of MRPC Rule 1.7(a)(2)—the Court ruled that Maling’s complaint did not allege Finnegan’s misconduct.  For example, the complaint did not allege that the scope of Maling’s patent claims was limited as a result of the dual representation, that client confidences were betrayed to his detriment, or that the procedural handling of his patents somehow favored Masunaga at Maling’s expense.  Nor did the complaint allege that Finnegan reasonably should have anticipated a conflict with Masunaga.


While Finnegan succeeded in avoiding liability due to the facts of the case and the failings of Maling’s complaint, this decision does not ease the burden on law firms to continue screening for subject matter conflicts.  In fact, the SJC does not describe in any detail just how firms must go about identifying subject matter conflicts.  Instead, the SJC opinion reminds counsel about their “obligation to implement robust processes that will detect potential conflicts”.  (Emphasis added.)  The Court also warned that conflicts are imputed across the firm, so the fact that the Finnegan attorneys representing Maling and Matsunaga were located in different offices made little difference.  Finally, practitioners should note that the Court raised, without answering, the difficult question as to whether and to what degree patent attorneys hired to conduct prior art searches have an ongoing obligation to continuously discover and disclose prior art while representing a client, such as when one client’s published patent application is prior art to another client’s patent application.

[1] The BPLA’s amicus brief was prepared by Heather Repicky, a partner at Nutter McClennen and Fish LLP, and Lauren Ingegneri, Patent Counsel at Abiomed, Inc.

[2] No. SJC-11800, Commonwealth of Massachusetts Supreme Judicial Court, Slip. Op. (Dec. 23. 2015).




Boston Patent Law Association

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Quincy, MA 02169

Phone: 617.507.5570





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One Batterymarch Park, Suite 101
Quincy, MA 02169
Phone: 617.507.5570

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