[Dkt. ##127, 128, 129]

MEMORANDUM OPINION

RICHARD J. LEON, United States District Judge.

Plaintiffs Seed Company Limited ("Seed") and Shigeru Tamai ("Tamai") (together "plaintiffs")1 brought this action on February 28, 2008 against the Westerman defendants2 and the Kratz defendants3 (together "defendants"), seeking damages for alleged legal malpractice. See Complaint ("Compl.") [Dkt. #1].4 Now before the Court are defendants' Motions for Summary Judgment and plaintiffs' Motion for Partial Summary Judgment. See Westerman Defendants' Motion for Summary Judgment ("Westerman MSJ") [Dkt. #127]; Kratz Defendants' Motion for Summary Judgment ("Kratz MSJ") [Dkt. #128]; Plaintiffs' Motion for Partial Summary Judgment ("Pls.' MSJ") [Dkt. #129]. Upon consideration of the parties' pleadings, relevant law, and the entire record in this case, the Westerman defendants' Motion for Summary Judgment is GRANTED, the Kratz defendants' Motion for Summary Judgment is GRANTED, and the plaintiffs' Motion for Partial Summary Judgment is DENIED.

BACKGROUND

This legal malpractice case is based on the defendants' alleged negligence in failing to attach an English-language translation of plaintiffs' international stage patent application to a motion filed in an interference action before the United States Patent and Trademark Office ("USPTO"), and for providing erroneous legal advice that resulted in plaintiffs rejecting two settlement offers related to the interference action. See Am. Compl. at ¶ 1.

On July 31, 1991, Seed filed Japanese Patent Application No. 3-68371 ("JP `371 application") for a corrective tape dispenser, listing Tamai as the inventor. See Pls.' Facts at ¶ 12; Westerman Defendants' Statement of Undisputed Material Facts ("Westerman Facts") at ¶ 1 [Dkt. #127-2]; Kratz Facts at ¶ 2. Seed filed the JP `371 application in the Japanese language only. See Pls.' Facts at ¶ 12. On July 24, 1992, Seed filed Patent Cooperation Treaty Application No. PCT/JP92/100947 ("PCT `947 application") — in Japanese — containing claims virtually identical to those in the JP `371 application. See Pls.' Facts at ¶ 13; Westerman Facts at ¶ 2; Kratz Facts at ¶ 3. On March 13, 1993 Seed — acting through Mr. Kenji Itami and the Itami Patent Office ("Itami") — engaged the Kratz defendants5 to act as legal counsel in prosecuting the national stage of the PCT `947 application before the USPTO. See Pls.' Facts at ¶ 14; Westerman Facts at ¶ 3; Kratz Facts at ¶ 4. The Kratz defendants filed United States Patent Application No. 08/030,183 ("`183 application") — the national stage of the PCT `947 application — with the USPTO on March 29, 1993. See Pls.' Facts at ¶ 16; Westerman Facts at ¶ 4; Kratz Facts at ¶ 5. The `183 application is — for all intents and purposes — an English translation of the PCT `947 application. See Pls.' Facts at ¶ 16; Westerman Facts at ¶ 4.

On February 7, 1994, Christopher Stevens ("Stevens") — another inventor — filed United States Patent Application No. 08/192,471 with the USPTO for a corrective tape dispenser similar to the one described in Seed's `183 application. See Pls.' Facts at ¶ 18; Westerman Facts at ¶ 7; Kratz Facts at ¶ 6. On February 15, 1994, the Kratz defendants filed United States Patent Application No. 08/196,839 ("`839 application") — as a continuation-in-part of the `183 application — with the USPTO. See Pls.' Facts at ¶ 17; Westerman Facts at ¶ 6; Kratz Facts at ¶ 7. On February 28, 1995, the USPTO issued Stevens U.S. Patent No. 5,393,368 ("Stevens patent") for his design.6 See Pls.' Facts at ¶ 18; Westerman Facts at ¶ 7; Kratz Facts at ¶ 8.

On May 9, 1997, the USPTO declared Patent Interference No. 103,662 ("Interference") between the plaintiffs' `839 application and the Stevens patent, seeking to determine which of the two had priority, as both sought protection for inventions that were not patentably distinct. See Pls.' Facts at ¶ 21; Westerman Facts at ¶ 8; Kratz Facts at ¶ 8. Plaintiffs and Stevens — through their attorneys — both filed motions with the USPTO under 37 C.F.R. § 1.633(f), seeking to have their applications back-dated to the respective overseas filing dates, in order to be accorded the benefit of the earliest possible priority date. See Pls.' Facts at ¶¶ 25-26; Westerman Facts at ¶ 9; Kratz Facts at ¶ 9. In its motion ("Priority Motion"), Seed sought to be accorded the benefit of the filing dates of the JP `371 application and the PCT `947 application — July 31, 1991 and July 24, 1992, respectively. See Pls.' Facts at ¶ 26; Westerman Facts at ¶ 9; Kratz Facts at ¶ 9. The Kratz defendants attached an English-language translation of the JP `371 application to the Priority Motion, however, they did not attach an English translation of the PCT `947 application. See Pls.' Facts at ¶¶ 27-28; Westerman Facts at ¶ 10; Kratz Facts at ¶ 10. On June 25, 2002, the USPTO ruled in Seed's favor, awarding the priority filing date of the JP `371 application — July 31, 1991, but denied Seed the benefit of the PCT `947 filing date — July 24, 1992.7 See Pls.' Facts at ¶ 29; Westerman Facts at ¶ 11; Kratz Facts at ¶ 10. The USPTO based its decision — denying Seed the benefit of the PCT `947 application filing date — on the fact that the Priority Motion did not attach an English language translation of the PCT `947 application.8 See Pls.' Facts at ¶ 29; Westerman Facts at ¶ 11; Kratz Facts at ¶ 10.

On May 12, 2003, Stevens' attorneys filed a Notice of Appeal of the USPTO's decision with the United States Court of Appeals for the Federal Circuit. See Pls.' Facts at ¶ 33; Westerman Facts at ¶ 19; Kratz Facts at ¶ 19. On October 1, 2003 — while Stevens' appeal was pending before the Federal Circuit — defendants Westerman, Kong, and Kenehan left the Kratz defendants' law firm9 and — along with several other attorneys — founded the law firm of Westerman, Hattori, Daniels & Adrian, LLP ("Westerman firm"). See Pls.' Facts at ¶ 34; Westerman Facts at ¶ 28; Kratz Facts at ¶ 20. Following the formation of the Westerman firm in October 2003, the Kratz defendants were discharged as counsel, and the Westerman defendants continued to represent plaintiffs with regards to the `839 application, including the Interference proceedings and Stevens' appeal of the USPTO decision to the Federal Circuit. See Pls.' Facts at ¶ 35; Kratz Facts at ¶ 21.

On January 14, 2004, Sanford — owner of the Stevens' patent — offered to settle the Interference with plaintiffs. See Am. Compl. at ¶ 28; Westerman Facts at ¶ 23; Kratz Facts at ¶ 22. Specifically, the settlement offer proposed that

Ex. 29 to Westerman MSJ at 1-2 [Dkt. #127-32]. Plaintiffs — allegedly relying on the Westerman defendants' legal advice — declined to accept the settlement offer. See Am. Compl. at ¶ 30.

On May 4, 2004, the Federal Circuit affirmed in part and reversed in part the USPTO's decision below. See Stevens v. Tamai, 366 F.3d 1325 (Fed.Cir.2004). The Federal Circuit held that plaintiffs were not entitled to the benefit of the PCT `947 application's filing date — because the Priority Motion did not include an English language translation — or the JP `371 application — because JP `371's filing was more than one year before the `183 application was filed, in violation of 35 U.S.C. § 119 — and consequently awarded priority to Stevens.10 See id. at 1331, 1334-35. On September 14, 2004, the USPTO entered a final judgment in favor of Stevens — and against plaintiffs — pursuant to the Federal Circuit's decision in Stevens v. Tamai. See Pls.' Facts at ¶ 37. Following the Federal Circuit's denial of plaintiffs' petition for rehearing en banc, the Westerman defendants filed a writ of certiorari to the United States Supreme Court, which was denied on October 18, 2004. See Kratz Facts at ¶¶ 26-27.

In December 2006, plaintiffs contacted Paul Meiklejohn and his law firm, Dorsey & Whitney, LLP, about pursuing potential legal malpractice claims against the defendants. See Kratz Facts at ¶ 36. On May 3, 2007, defendants William Westerman and Westerman, Hattori, Daniels & Adrian, LLP entered into an agreement with plaintiffs, tolling the statute of limitations for any legal malpractice claims in connection with the Interference. See Ex. 29 to Kratz MSJ at 1 [Dkt. #128-30]. On May 10, 2007, plaintiffs entered into two additional tolling agreements: one with the Kratz defendants, see Ex. 30 to Kratz MSJ at 1 [Dkt. #128-31], and the second with defendants Edward Kenehan and John Kong, see Ex. 31 to Kratz MSJ at 1 [Dkt. #128-32].11

On February 28, 2008, plaintiffs filed the instant action seeking damages for the defendants' alleged legal malpractice in connection with the Interference before the USPTO. Plaintiffs then filed their Amended Complaint on May 21, 2008, adding two additional "contingent claims." See Am. Compl. at ¶¶ 53-66.12 Plaintiffs allege — in Count I — that the defendants committed legal malpractice by failing to attach a certified English-language translation of the PCT `947 application to their motion seeking the benefit of earlier filing dates and — in Count II — further committed malpractice by providing erroneous legal advice that allegedly caused plaintiffs to reject Sanford's two settlement offers. See Am. Compl. at ¶¶ 44, 49-50.

STANDARD OF REVIEW

Under Federal Rule of Civil Procedure 56(a), summary judgment is appropriate when the evidence in the record demonstrates that "there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law." Fed. R. Civ. P. 56(a); see, e.g., Celotex Corp. v. Catrett, 477 U.S. 317, 322, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986). When evaluating cross motions for summary judgment, "the court shall grant summary judgment only if one of the moving parties is entitled to judgment as a matter of law upon material facts that are not genuinely disputed." Select Specialty Hosp.-Bloomington, Inc. v. Sebelius, 774 F.Supp.2d 332, 338 (D.D.C.2011) (citation omitted). The court must accept as true the evidence of, and draw "all justifiable inferences" in favor of, the party opposing summary judgment. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 255, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986) (citation omitted). A genuine issue exists only where "the evidence is such that a reasonable jury could return a verdict for the nonmoving party." Id. at 248, 106 S.Ct. 2505. The nonmoving party may not rely solely on unsubstantiated allegations or conclusory statements. See Greene v. Dalton, 164 F.3d 671, 675 (D.C.Cir.1999).

ANALYSIS

As a preliminary matter, plaintiffs concede that they cannot identify any damages associated with Count II of the Amended Complaint that are distinct from damages associated with Count I. Therefore, plaintiffs have withdrawn the claim for damages contained in Count II of the Amended Complaint, but maintain that the factual allegations are still relevant to rebutting defendants' statute of limitations defense. See Pls.' Opp'n to Kratz MSJ at 41; Pls.' Opp'n to Westerman MSJ at 9 [Dkt. #138]; see also Am. Compl. at ¶¶ 47-52.

I. Statute of Limitations

Defendants argue that the statute of limitations for legal malpractice in the District of Columbia bars all of the plaintiffs' claims in this matter. See Westerman MSJ at 20-25; Kratz MSJ at 8-17. In the District of Columbia, legal malpractice claims must be brought within three years of the claimed injury. See Hillbroom v. PricewaterhouseCoopers LLP, 17 A.3d 566, 572 (D.C.2011) (citing D.C. Code § 12-301(8) (2001)). In normal negligence actions — where the harm is often apparent — an injury occurs when the harm is suffered. See Ft. Myers Seafood Packers, Inc. v. Steptoe and Johnson, 381 F.2d 261, 262 (D.C.Cir.1967) (citing Hanna v. Fletcher, 231 F.2d 469, 472 (D.C.Cir.1956)). In legal malpractice actions, however — when the harm is often not immediately identifiable — courts apply the "discovery rule" to determine when the statute of limitations begins to run. See Byers v. Burleson, 713 F.2d 856, 860 (D.C.Cir.1983). The discovery rule states that a claim accrues when the plaintiff becomes aware — or by the exercise of reasonable diligence should have become aware — of (1) the harm, (2) its cause in fact, and (3) some evidence of wrongdoing.13 See id.; Bleck v. Power, 955 A.2d 712; 715 (D.C.2008); Wagner v. Sellinger, 847 A.2d 1151, 1154 (D.C.2004). Moreover, "attorney's fees and costs expended as a result of an attorney's alleged malpractice constitute legally cognizable damages for purposes of stating a claim for such malpractice." Knight v. Furlow, 553 A.2d 1232, 1235 (D.C.1989).

Here — applying the discovery rule — plaintiffs were aware of their potential legal malpractice claim no later than March 13, 2003, when the USPTO denied the request for reconsideration. At that point, plaintiffs knew that (1) they spent over $11,000 on a motion for reconsideration, (2) because no English-language translation was attached to the PCT `947 application, and (3) it was due to defendants' "procedural mistake." See Westerman Facts at ¶ 18; Kratz Facts at ¶ 18. The discovery rule, however, does not end the inquiry into when the statute of limitations began to run on plaintiffs' malpractice claims. How so?

D.C. law also recognizes the continuous representation rule, which tolls the statute of limitations on legal malpractice claims until "the attorney's representation concerning the particular matter in issue is terminated." R.D.H. Commc'ns, Ltd. v. Winston, 700 A.2d 766, 768 (D.C.1997) ("Winston") (quoting Weisberg v. Williams, Connolly & Califano, 390 A.2d 992, 995 (D.C.1978)). Some courts have held that the continuous representation rule requires exhaustion of all possible appeals before a malpractice claim can accrue. See, e.g., Woodruff v. Tomlin, 511 F.2d 1019 (6th Cir.1975) (applying Tennessee law); Bowman v. Abramson, 545 F.Supp. 227 (E.D.Pa.1982) (applying Pennsylvania law); Haghayegh v. Clark, 520 So.2d 58 (Fla.Dist.Ct.App.1988) (applying Florida law). However, the D.C. Court of Appeals has held — and our Circuit Court has adopted the position — that the resolution of an appeal is not the sole determinative factor of whether the particular matter at issue has been resolved. See Bradley v. Nat'l Ass'n of Securities Dealers Dispute Resolution, Inc., 433 F.3d 846, 852 (D.C.Cir.2005) (stating District of Columbia does not recognize the exhaustion of appeals rule); Knight, 553 A.2d at 1234-36; Winston, 700 A.2d at 771 ("[T]his court has rejected an exhaustion of appeals rule.").

As it is largely a fact-based determination, there is little guidance on what constitutes a "particular matter at issue" in the context of the continuous representation rule. See Winston, 700 A.2d at 768. Several courts have stated that "subsequent general representation of the plaintiffs regarding matters unrelated to [the initial transaction] does not warrant the application of the [continuous representation] doctrine." De May v. Moore & Bruce, LLP, 584 F.Supp.2d 170, 181 (D.D.C.2008) (ESH) (quoting Dignelli v. Berman, 293 A.D.2d 565, 566, 741 N.Y.S.2d 66 (N.Y.App.Div.2002)) (emphasis added) (internal quotation marks omitted); see also Bastys v. Rothschild, 154 Fed.Appx. 260, 261-62 (2d Cir.2005); Greene v. Morgan, Theeler, Cogley & Petersen, 575 N.W.2d 457, 460 (S.D.1998). In De May, Judge Huvelle decided that — while D.C. law does not recognize the exhaustion of appeals rule — an appeal does not necessarily sever the period of continuous representation.14 See De May, 584 F.Supp.2d at 183.

Judge Huvelle distinguished De May from Bradley — which stated that requiring exhaustion of appeals as a condition precedent to the accrual of a legal malpractice claim "stretch[es] the continuous representation exception beyond its limits," Bradley, 433 F.3d at 852 — based on the fact that the attorneys who allegedly caused the harm in De May continued to represent their clients during the appeal of the same matter, whereas the attorneys in Bradley changed at the time of appeal. See De May, 584 F.Supp.2d at 183. Moreover, Bradley did not "decide whether the continuous representation rule extends to appeals; rather, the issue [was only] whether a cause of action for malpractice accrues only after an appeal is exhausted." Id.

Because the purpose of the continuous representation rule is to respect the attorney-client privilege and to avoid placing the client in "the untenable position of suing his attorney while the latter continues to represent him," Winston, 700 A.2d at 768 (internal quotation marks and citation omitted), an approach that allows for the application of the rule throughout an appeal — if the factual situation so warrants — makes perfect sense. Because the attorneys who allegedly caused the harm in De May continued to represent the plaintiff throughout the appeal of the very subject matter that served as the basis for the malpractice claim, the court appropriately applied the continuous representation rule and tolled the statute of limitations throughout the appeal. See De May, 584 F.Supp.2d at 183.

Applying the same reasoning used by my colleague in De May, I find that the continuous representation rule extends through the appeals process in this case. Here, like in De May, the attorneys remained the same throughout the appeals process, and the subject matter on appeal was the very basis for the potential legal malpractice claim. Any other ruling would run afoul of the continuous representation rule's purpose: to avoid placing the client in "the untenable position of suing his attorney while the latter continues to represent him," Winston, 700 A.2d at 768 (internal quotation marks and citation omitted).

Accordingly, the statute of limitations for plaintiffs' legal malpractice claims was tolled until "the attorney's representation concerning the particular matter in issue [was] terminated." Id. Here, that date is — at the earliest — September 14, 2004, when the USPTO entered its final judgment in accordance with the Federal Circuit's decision in Stevens — and, at the latest — October 18, 2004, when the Supreme Court denied to grant plaintiffs' petition for a writ of certiorari. Because the parties entered into tolling agreements within three years of the date on which plaintiffs' claims accrued, and because plaintiffs' filed their Complaint within sixty days of the expiration of those tolling agreements, their claims were timely filed.15

II. Duty of Care

The Westerman defendants argue that, even if the plaintiffs' claims were timely filed, Seed cannot establish that defendants breached their duty of care by not attaching an English-language translation of the PCT `947 application to the Priority Motion. See Westerman MSJ at 28. I agree.

In order to avoid malpractice liability, a lawyer must "exercise that degree of reasonable care and skill expected of lawyers acting under similar circumstances." Biomet Inc. v. Finnegan Henderson LLP, 967 A.2d 662, 665 (D.C. 2009) (quoting Morrison v. MacNamara, 407 A.2d 555, 561 (D.C.1979)). The D.C. Court of Appeals also requires that "those with special training and experience adhere to a standard of conduct commensurate with such attributes." O'Neil v. Bergan, 452 A.2d 337, 341 (D.C.1982) (citation omitted). In Biomet, the D.C. Court of Appeals formally recognized the judgmental immunity doctrine, which provides that an "informed professional judgment made with reasonable care and skill cannot be the basis of a legal malpractice claim." Biomet, 967 A.2d at 666. Biomet also makes clear that "no claim of legal malpractice will be actionable for an attorney's reasoned exercise of informed judgment on an unsettled proposition of law."16 Id. at 668; see also Encyclopaedia Britannica, Inc. v. Dickstein Shapiro, LLP, No. 10-0454, 2012 WL 8466139, at *17 (D.D.C. Feb. 2, 2012) (recognizing "unsettled law exception to malpractice liability" relied on in Biomet) (citation omitted).

In this case, the Priority Motion filed with the USPTO — seeking the benefit of the JP `371 application and the PCT `947 application priority dates — specifically references 37 C.F.R. § 1.633, which provides a list of motions that may be filed in an interference action before the USPTO. See Ex. 13 to Westerman MSJ at 1 [Dkt. #127-16]. 37 C.F.R. § 1.637(f) — which lists the requirements for motions seeking the benefit of an earlier priority date — requires that, "[w]hen the earlier application is an application filed in a foreign country, [the applicant must] certify that a copy of the application has been served on all opponents. If the earlier filed application is not in English, the requirements of § 1.647 must also be met." 37 C.F.R. § 1.637(f)(2). 37 C.F.R. § 1.647 states that "[w]hen a party relies on a document or is required to produce a document in a language other than English, a translation of the document into English and an affidavit attesting to the accuracy of the translation shall be filed with the document." 37 C.F.R. § 1.647.

The Priority Motion included a certified English-language translation of the JP `371 application, but no translation of the PCT `947 application. See Ex. 13 to Westerman MSJ at 1-2. In fact, the Priority Motion specifically states that it includes a translation of the JP `371 application, but says nothing — in the very next line of text — about a PCT `947 application translation.17 It is clear that defendants were aware of the requirements and, in the exercise of their professional judgment, believed that the rules required an English language translation of the JP `371 application, but not the PCT `947 application. Moreover, Stevens and the USPTO already had an English translation of the PCT `947 application: the `183 application filed — in English — on March 29, 1993. See Pls.' Facts at ¶ 16; Westerman Facts at ¶¶ 4, 9; Kratz Facts at ¶ 5; see also Exs. 12-13 to Westerman MSJ.

Defendants argue that the legal authorities available in 1997 — the year in which defendants filed the motion — support their interpretation of the rules as not requiring a certified English language translation of PCT applications. See Westerman MSJ at 30-34. 35 U.S.C. § 363 — the U.S. codification of PCT Article 11(3) — states that "[a]n international application designating the United States shall have the effect, from its international filing date under article 11 of the treaty, of a national application for patent regularly filed in the Patent and Trademark Office." 35 U.S.C. § 363. Moreover, in 1997 the Manual of Patent Examining Procedure ("MPEP") clarified this statute, stating that "[a]n international application designating the U.S. has two stages (international and national) with the filing date being the same in both stages," and "[f]or all legal purposes, the filing date [of a national stage application] is the PCT international filing date." MPEP § 1893.03(b) (6th Ed., Rev.2, July 1996). Defendants' informed professional judgment was that the filing of a PCT `947 application established the legal filing date for the national stage application — the `183 application — for all legal purposes, and thus they were not required to file an English translation with the Priority Motion in the Interference proceedings.

Plaintiffs' only counter to this argument is to continually cite the opinion of the Federal Circuit in this case. In Stevens v. Tamai, the Federal Circuit interpreted for the first time whether a party to an interference action must file a certified English translation of a PCT application in order to be accorded the benefit of its filing date. See Stevens v. Tamai, 366 F.3d 1325 (Fed. Cir.2004). Biomet requires that lawyers must exercise reasonable care, but does not require them to foretell the future. See Biomet, 967 A.2d at 667-68. As plaintiffs do not cite any other cases — prior to Stevens v. Tamai — that require an English-language translation of a PCT application, it does not appear as though they dispute that Stevens is a novel decision. As Stevens was the first time the Federal Circuit stated that an English translation of a PCT application is required in order to be accorded the benefit of the earlier filing date, any decision by this Court finding that defendants' breached their duty of care by not filing such a translation would assign liability based on hindsight, and would fly in the face of Biomet." Because an "informed professional judgment made with reasonable care and skill cannot be the basis of a legal malpractice claim," Biomet, 967 A.2d at 666, I find that the judgmental immunity doctrine applies here, and defendants have breached no duty of care owed to plaintiffs.

CONCLUSION

Accordingly, for all the foregoing reasons, the Court GRANTS the Westerman defendants' Motion for Summary Judgment, GRANTS the Kratz defendants' Motion for Summary Judgment, and DENIES plaintiffs' Motion for Partial Summary Judgment. An Order consistent with this decision accompanies this Memorandum Opinion.