Holland & Knight sued for breach of contract and negligence by Johns Hopkins professor out $20 million

In 1 on February 3, 2009 at 9:58 am

A Johns Hopkins Hospital neurosurgery professor alleges he is out $20 million because the company hired to pay the annual maintenance fee for a Japanese patent of a pain-relieving drug failed to do so.

Dr. James N. Campbell is suing the Channel Island branch of Computer Patent Annuities, which specializes in managing intellectual property rights for its clients, in Baltimore City Circuit Court. The suit also names the law firm of Holland & Knight, which employed the lawyer who hired Computer Patent.

Attorney Steven E. Tiller, who is representing Campbell and his company ARC 1 Inc., estimated that the renewal fee was less than $1,000.

The complaint further alleges that the law firm continued to bill Campbell for maintaining the patent, even after it had been terminated.

Computer Patent spokeswoman Charlotte Presse said yesterday that she was not aware of the lawsuit, while Christina Calhoun, a spokeswoman for Holland & Knight, said she has not had a chance to look over the pleadings.

The complaint refers to the medication invented by Campbell as Clonidine. Tiller said the drug is used to treat neuropathic pain, which is caused by nerve tissue damage.

It is being used in the U.S. and has been very successful [without] the debilitating side effects that sometimes occur in patients with the more traditional treatments, said Tiller.

The complaint explains that Clonidine is unique, because it is applied topically, or to the surface of the skin, thus affecting only the targeted area.

According to the complaint, the medicine can potentially benefit millions of diabetics and cancer patients.

Discovering the drug involved years if not decades of experience on his part, said Tiller in reference to Campbell, who graduated from Yale University School of Medicine in 1973.

A Georgia lawyer obtained patents for Clonidine in the United States, Australia, Canada, Europe and Japan, the complaint alleges.

The Japanese patent, issued in 1998, was valid until 2011, contingent upon the payment of annual maintenance fees, the pleadings state.

Campbell's patent counsel, according to the complaint, hired Computer Patent Annuities to take care of the renewal fees and then joined Holland & Knight in 2001.

In May 2002, Curatek Pharmaceuticals, which acquired an exclusive license to the patents, directed the law firm to pay the Japanese maintenance fee, the complaint alleges.

Holland & Knight instructed Computer Patent to do just that, the lawsuit alleges, but the company failed to do so.

But, when Computer Patent sent a letter to the law firm in June 2002, noting that a payment for the patent was overdue, Holland & Knight responded that the fee was paid and asked the agent to note that in its records, the complaint alleges.

The lawsuit faults Computer Patent for not independently verifying the law firm's claim. Holland & Knight, in turn, is accused of not properly supervising the company it hired to maintain the patent.

Upon information and belief, Holland & Knight was aware of similar incidents, prior to this one, in which [Computer Patent] failed to pay maintenance fees on a patent, the complaint alleges, adding that the law firm did not have an adequate internal tracking system in place to ensure that maintenance fees were in fact timely paid.

Indeed, neither the law firm nor Computer Patent discovered the error within the one-year period Japanese law provides for reviving a patent, the plaintiffs allege.

Campbell, in fact, was billed for the renewal of the patent after it was already abandoned and terminated in 2003 and 2004, the complaint says.

Japan is considered the second-largest pharmaceuticals market behind the United States, Tiller commented.

I don't know what, if any, use the drug has in Japan as of yet, he said.

Curatek no longer holds any rights to Clonidine and the lawsuit states that Campbell is currently negotiating with potential licensees.

The abandonment of the [patent] has dramatically reduced the potential value of this patent portfolio, the complaint alleges.

The pleadings accuse Holland & Knight as well as Computer Patent Annuities of breach of contract and negligence.

Posted via email from HKLaw Investigation


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