Recently shuttered Intellectual Property firm Kenyon & Kenyon LLP Hit With Malpractice Suit Over Patent Issue

Just two days after the long­dissolving intellectual property firm, Kenyon & Kenyon LLP, announced it was shutting its doors, it was served with a legal malpractice suit in New York federal court on Wednesday by Portus Singapore PTE Ltd. over claims the firm did not exercise proper control of its patent portfolio and failed to disclose a conflict of interest.

The Singapore­based company, Portus, whose proprietary technology is used in smart home and smart grid products, declares that Kenyon’s exclusions caused it to lose securing rights that would have extended the term of its patent by at least three years.

It also contends that in both 2008 and 2011 the organization creating conflicted representation by appeared on behalf of Bosch, a potential “infringement and licensee target” in Portus’ patent prosecution, in an intellectual property case.

According to the suit, Kenyon represented Portus’ patent portfolio for over a decade. The company claims its technology patent has “developed valuable and industry­leading smart home systems, including [internet protocol] video surveillance solutions for use in homes and offices,” with companies such as Apple Inc., Comcast Corp. and Cisco Systems Inc. licensing its technology.

In addition to the boutique, the suit lists former individual members Aaron Grunberger, now senior counsel at Norton Rose Fulbright, and Jeffrey S. Ginsberg, now a partner at Patterson Belknap Webb & Tyler LLP.

Portus was the subject of an office action by the U.S. Patent and Trade Office in 2005 regarding a patent term adjustment complication, according to the complaint. The company asserts that the lead on the patent prosecution, Grunberger, and his supervisor, Ginsberg, failed to convert the patent application by filing a continuation of the international application.

The firm only found out about the adjustment issue in 2014, over nine years later. When the then ­Kenyon attorneys filed a petition to claim benefit to extend the patent term by an additional three and a half years, the attempt failed, as the USPTO dismissed the petition, the suit says.

Secondly, the suit alleges Ginsberg represented Bosch in 2008 in an IP case and again in 2011, without clearance from Portus.

This produced a potential conflict of interest because Kenyon was representing Portus at the same time in its prosecution of its patent portfolio even though Bosch was “a potential infringement and licensee target in the patent prosecution,” the suit says.

The suit asserts Portus suffered damages and claims negligence against the firm and the two attorneys.

Portus Singapore is represented by Attorney Marc Bern of Marc J. Bern & Partners LLP and Attorneys Jefferey Ogden Katz and Eric J. Chisholm of the Patterson Law Firm LLC.

The case is Portus Singapore PTE Ltd. v. Kenyon & Kenyon LLP et al., case number 1:16­cv­06865, in the U.S. District Court for the Southern District of New York.