Carr v. Cesari & McKenna, LLP, SUCV2016-2087-H

• Decision Date: 27 March 2017
• Docket Number: SUCV2016-2087-H
• Parties: Kenneth Carr v. Cesari & McKenna, LLP et al No. 136749
• Court: Superior Court of Massachusetts

Kenneth Carr
v.
Cesari & McKenna, LLP et al

No. 136749

No. SUCV2016-2087-H

Superior Court of Massachusetts, Suffolk

March 27, 2017

MEMORANDUM OF DECISION AND ORDER ON PLAINTIFF'S EMERGENCY SPECIAL MOTION BY PLAINTIFF KENNETH CARR TO DISMISS DEFENDANTS' COUNTERCLAIMS UNDER M.G.L.c. 231, § 59H.

Douglas H. Wilkins, Justice

In this legal malpractice case brought by Kenneth Carr (" Carr"), the Defendants, Cesari and McKenna LLP and Thomas O'Konski, have filed a first amended answer, Affirmative Defenses, and Counterclaims of the Defendants Cesari and McKenna, LLP [" Cesari" ] and Thomas O'Konski." (" Counterclaims"). Carr has brought " emergency Special Motion by Plaintiff Kenneth Carr to Dismiss Defendants' Counterclaims under M.G.L.c. 231, § 59H and for a Mandatory Award of Attorneys Fees." (" Motion"). After hearing on March 20, 2017, for the reasons set forth below, the Motion is ALLOWED IN PART and DENIED IN PART.

BACKGROUND

The court incorporates the description of the allegations of Carr's Complaint set forth in its Memorandum of Decision and Order on Defendants' Rule 12(b) Motion to Dismiss, dated January 31, 2017 (" January Decision"). It also considers the following facts and allegations from the Counterclaims, Affidavits and other papers before the Court. Where necessary the Court supplements this " Background" and resolves the conflicting factual assertions in the " Discussion" below.

Cesari asserts that it represented Meridian Medical Systems, LLC (" MMS") and its predecessor since at least 1993 and provided intellectual property advice and services. Carr, supported by the Affidavit of John McKenna, Esq., a former Cesari partner, asserts that Cesari also represented him individually. All of the patents Cesari prosecuted for MMS on which Carr was the named inventor were assigned to MMS with one exception, which was assigned to MMS's intellectual property licensee. However, the parties dispute whether Carr and McKenna acknowledged that this practice would not apply to invention in question.

The Court assumes that the following allegations of the Counterclaims are true: In the summer of 2013, when Cesari learned information about the extent and nature of the dispute between Carr and MMS, Cesari decided to withdraw from representing MMS. Carr asked Cesari to continue to represent MMS, according to Cesari. Carr allegedly told Cesari that there would be no conflict and that he would provide a comfort letter to that effect. Based on that representation, Cesari continued to represent MMS with respect to all of its intellectual property and patent matters. It is undisputed that Cesari never obtained a written waiver of conflict from Carr.

In September 2013, Cesari learned that the law firm of Preti Flaherty Belliveau & Pachios, Chartered LLP (" Preti Flaherty") was representing Carr in connection with the patent application at issue and his dispute with MMS. On or about September 20, 2013, Preti Flaherty filed a power of attorney at the United States Patent and Trademark Office (" USPTO") with respect to the relevant patent application. Cesari filed a petition to recognize MMS as " applicant" of that patent application. Neither Carr nor his counsel objected to that petition or Cesari's representation of MMS.

Cesari has not been paid $85, 000 for legal work it performed on patent applications for MMS, including work on patents and applications that, according to Carr, Cesari represented Carr and MMS.

DISCUSSION

The Motion challenges the Counterclaim as a so-called SLAPP suit, subject to G.L.c. 231, § 59H (" § 59H"). See Chemrisk, LLC v. Foytlin, 476 Mass. 479, 68 N.E.3d 1180 (2017). Under § 59H, the moving party must show that the claims against it are based upon " the petitioning activities alone and have no substantial basis other than or in addition to the petitioning activities." Duracraft Corp. v. Holmes Prods. Corp., 427 Mass. 156, 167-68, 691 N.E.2d 935 (1998), quoted in Fabre v. Walton, 436 Mass. 517, 522, 781 N.E.2d 780 (2002). " '[B]ased on' does not mean 'in response to': although claims and related pleadings filed in court may be classified as petitioning activities, plaintiffs are not thereby immunized from counterclaims filed in response to the claim." Duracraft, 427 Mass. at 168, n.20. The Court therefore does not evaluate the Motion generally to determine whether, as Carr contends, the counterclaims are " retaliatory." See Keystone Freight Corp. v. Bartlett Consolidated, Inc., 77 Mass.App.Ct. 304, 314, 930 N.E.2d 744 (2010) (" attribution of a motive, alone is never sufficient"). A substantial counterclaim is not necessarily a SLAPP suit simply because it may be retaliation for being sued. " A special motion to dismiss will not succeed against a 'meritorious claim[ ] with a substantial basis other than or in addition to the petitioning activities implicated' (emphasis added)." Fabre, 436 Mass. at 524, quoting Duracraft, 427 Mass. at 167. If the moving party makes the threshold showing, the burden shifts to the opposing party to " demonstrate by a preponderance of the evidence that the [moving party's] petitioning activity was devoid of any reasonable factual support or any arguable basis in law." Fabre, 436 Mass. at 524.

A.

Carr must prove by a preponderance of the evidence " that the activity at issue is 'petitioning' activity within the purview of the anti-SLAPP statute and that the claims in the litigation 'are based on the petitioning activities alone and have no substantial basis other than or in addition to the petitioning activities.'" Fabre v. Walton, 436 Mass. 517, 522, 781 N.E.2d 780 (2002), quoting Duracraft Corp. v. Holmes Prods. Crop., 427 Mass. at 167-68. See also Office One, Inc. v. Lopez, 437 Mass. 113, 122, 769 N.E.2d 749 (2002); Baker v. Parsons, 434 Mass. 543, 550, 750 N.E.2d 953 (2001). Section 59H defines " a party's exercise of its right of petition" to include " any written or oral statement made before or submitted to a[n] . . . executive or judicial body . . ."

Here, many of the Counterclaims challenge Carr's complaint itself and the allegations made therein. Filing a lawsuit " is the paradigm of petitioning activity" within the definition of § 59H. Ehrlich v. Stern, 74 Mass.App.Ct. 531, 538, 908 N.E.2d 797 (2009), citing Wenger v. Aceto, 451 Mass. 1, 5-6, 883 N.E.2d 262 (2008) (" criminal claim brought in the Dedham District Court"). See also McLarnon v. Jokisch, 431 Mass. 343, 345, 727 N.E.2d 813 (2000) (application for an abuse prevention order under G.L.c. 209A). Moreover, the Anti-SLAPP Act protects more than just the filing of the lawsuit; it also protects statements in connection with the lawsuit, including, most obviously, the allegations of the complaint itself. " [A] party's exercise of its right to petition" the judiciary, specifically includes " any written or oral statement made in connection with an issue under consideration or review by a . . . judicial body, " or " reasonably likely to encourage consideration or review of an issue by a . . . judicial body . . ." G.L.c. 231, § 59H. See generally Chemrisk, 476 Mass. at 484-85. Duracraft Corp. v. Holmes Prods. Corp., 427 Mass. at 161-64; Office One, Inc. v. Lopez, 437 Mass. at 123 (2002) (noting the " broad definition of petitioning activity protected by the statute").

" Were filing the [lawsuit] the only conduct on which the complaint in this action focused, then it is clear that the case could not proceed." Ehrlich, 74 Mass.App.Ct. at 538. However, it is possible for a lawsuit to give rise to a cause of action that has a " substantial basis other than or in addition to the petitioning activities." Duracraft, 427 Mass. at 168. For instance, in that case, violation of a " nondisclosure agreement, . . . constitute[d] a substantial basis other than Marino's petitioning activity to support Duracraft's claims." Id. Other examples of legitimate claims arising from filing suit also exist:

Many preexisting legal relationships may properly limit a party's right to petition, including enforceable contracts in which parties waive rights to otherwise legitimate petitioning. A quintessential example of such a waiver is a settlement agreement, in which a party releases legal claims against an adversary that otherwise properly could be prosecuted by petitioning the court. [Note omitted.] But neither this example nor contractual or fiduciary relationships in general exhaust the conceivable occasions in which a party assumes obligations that in turn limit the party's subsequent free exercise of speech and petitioning rights

Id. at 165-66. With this background, the Court follows the Appeals Court's instruction to rule upon each counterclaim on an all-or-nothing basis:

[T]he anti-SLAPP inquiry produces an all or nothing result as to each count the complaint contains. Either the count survives the inquiry or it does not, and the statute does not create a process for parsing counts to segregate components that can proceed from those that cannot

Ehrlich, 74 Mass.App.Ct. at 536. It concludes that the plaintiff has shown that some, but not all, of the counterclaims are based upon an exercise of their right to petition.

Section 6F : The Counterclaims contain three sections that establish their nature, purpose and function to challenge Carr's exercise of his right to file this lawsuit. The " Introduction" expressly and directly challenges Carr's complaint in this case on the ground that Carr " filed the instant lawsuit in bad faith and aware that his allegations are false and unsupportable." Counterclaims at 12. The Defendants essentially repeat these allegations in paragraphs 45-41 of the Counterclaims, which they later expressly incorporate into every count . See Counterclaims, ¶ ¶ 52, 58, 63, 67, 74. As a result, the Counterclaims, both as a whole and on an individual basis, all include allegations based on the allegedly wrongful...