SUPREME COURT OF THE STATE OF NEW YORK

Appellate Division, Fourth Judicial Department

603 

CA 14-01999 

PRESENT: SCUDDER, P.J., CENTRA, PERADOTTO, SCONIERS, AND VALENTINO, JJ. 

 

RICH PRODUCTS CORPORATION, 

PLAINTIFF-APPELLANT-RESPONDENT, 

V MEMORANDUM AND ORDER

KENYON & KENYON, LLP, 

DEFENDANT-RESPONDENT-APPELLANT. 

 

HODGSON RUSS LLP, BUFFALO (ROBERT J. LANE, JR., OF COUNSEL), FOR

PLAINTIFF-APPELLANT-RESPONDENT. 

HISCOCK & BARCLAY, LLP, BUFFALO (DENNIS R. MCCOY OF COUNSEL), FOR

DEFENDANT-RESPONDENT-APPELLANT. 

 

Appeal and cross appeal from an order of the Supreme Court, Erie

County (Timothy J. Walker, A.J.), entered June 19, 2014. The order

granted in part defendant’s motion for summary judgment and dismissed

the first, second and fourth causes of action, and granted that part

of plaintiff’s cross motion for partial summary judgment on liability

with respect to the third cause of action. 

It is hereby ORDERED that the order so appealed from is

unanimously modified on the law by denying plaintiff’s cross motion in

its entirety and as modified the order is affirmed without costs. 

Memorandum: In this legal malpractice and breach of contract

action, plaintiff appeals and defendant cross-appeals from an order

that granted in part defendant’s motion for summary judgment and

dismissed the first, second and fourth causes of action, and granted

that part of plaintiff’s cross motion for partial summary judgment on

liability with respect to the third cause of action. Plaintiff

retained defendant to file and prosecute domestic and international

patent applications for its invention of a nondairy pourable dessert

product (hereafter, invention). Mexican authorities issued a patent

for plaintiff’s invention, but a Mexican competitor successfully

obtained its invalidation seven years after issuance on the ground

that the application was not filed within 30 months of the priority

date, a decision that was upheld on appeal. Although defendant had

also applied for a patent for plaintiff’s invention in Colombia with

the assistance of local counsel, the application was denied. 

Plaintiff commenced this action, asserting in the first and second

causes of action of the amended complaint that defendant committed

malpractice by “carelessly failing to timely file the Mexican national

phase application of the invention” and breached its contract with
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CA 14-01999 

plaintiff by “failing to timely file the Mexican national phase

application.” Plaintiff asserted in the third and fourth causes of

action that defendant committed malpractice by “carelessly failing to

file the proper documents in Colombia . . . and carelessly failing to

timely file the additional required documents in Colombia,” and that

defendant breached its contract with plaintiff by “failing to file the

proper documents in Colombia, and failing to timely file the

additional required documents in Colombia.”

We note at the outset that, although plaintiff’s notice of appeal

states, inter alia, that plaintiff is appealing from those parts of

the order granting defendant’s motion to the extent that it sought

summary judgment dismissing the first, second and fourth causes of

action, plaintiff did not raise any contention in its brief with

respect to the dismissal of the fourth cause of action and thus has

abandoned any contention with respect to that cause of action (see

Ciesinski v Town of Aurora, 202 AD2d 984, 984).

Contrary to plaintiff’s contention, Supreme Court properly

granted defendant’s motion with respect to the first cause of action

because the record establishes that defendant did not commit legal

malpractice at the time of the representation. The patent was

cancelled seven years after it was issued due to a retroactive change

in Mexican law, and it is well settled that an attorney’s

representation is “measured at the time of representation” (Darby &

Darby v VSI Intl., 95 NY2d 308, 313). In support of its motion,

defendant submitted the affidavit of an expert on Mexican patent law

establishing that the application was timely when it was filed. We

conclude that plaintiff failed to raise a triable issue of fact in

opposition to that part of defendant’s motion (see generally Zuckerman

v City of New York, 49 NY2d 557, 562).

We further conclude that the court properly granted defendant’s

motion with respect to the second cause of action, for breach of

contract, because it was duplicative of the malpractice cause of

action (see Long v Cellino & Barnes, P.C., 59 AD3d 1062, 1062). We

likewise conclude that the court properly denied plaintiff’s motion

for leave to serve a second amended complaint, because plaintiff

sought only to add duplicative claims (see generally Matter of HSBC

Bank U.S.A. [Littleton], 70 AD3d 1324, 1325, lv denied 14 NY3d 710). 

We agree with defendant on its cross appeal, however, that the

court erred in granting that part of plaintiff’s cross motion for

partial summary judgment on liability on the third cause of action. 

Plaintiff failed to meet its initial burden with respect to that part

of the cross motion, inasmuch as plaintiff failed to submit an

affidavit from an expert on Colombian patent law concerning the

interpretation of the Colombian legal documents and laws (see Sea

Trade Mar. Corp. v Coutsodontis, 111 AD3d 483, 484-485; Warin v

Wildenstein & Co., 297 AD2d 214, 215; Jann v Cassidy, 265 AD2d 873,

874-875). We therefore modify the order accordingly.

Entered: May 8, 2015 Frances E. Cafarell

Clerk of the Court