Biofilm Patent Infringement Case

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        McDermott Files Counterclaim in Suit by Medical Device Maker

        Sheri Qualters

        McDermott Will & Emery is countersuing medical device maker Nomir Medical Technologies Inc. in Boston federal court for breach of contract and nearly $491,000 in damages following the company’s $143 million claim against the firm for missing patent deadlines.

        Nomir filed suit against McDermott Will in Suffolk County Superior Court in Massachusetts on July 1, claiming that McDermott Will missed four crucial patent deadlines when it represented the company. McDermott Will removed the case to the District of Massachusetts on July 27. On Aug. 26, the law firm and three individual defendants filed a joint answer and counterclaim alleging that the medical laser company owes it $490,857.65 in unpaid legal bills. The firm claims that Nomir is liable for breach of contract because the two parties entered into “one or more valid, enforceable contracts.” According to the counterclaim, McDermott Will agreed to provide Nomir with legal advice and representation in exchange for Nomir’s payment of fees and expenses. McDermott Will claims its legal work and costs for Nomir between 2004 and 2008 added up to more than $1.3 million.

        Boston’s Goulston & Storrs is representing McDermott Will in the case, Nomir Medical Technologies Inc. v. McDermott, Will & Emery.

        According to a written statement from a firm spokesman, the firm has known about the situation with Nomir for several years. “Nomir, a development stage company, has asserted claims that we believe are without merit, alleging speculative damages for lost sales in connection with products that have never reached the market,” stated the spokesman. “We will defend the case vigorously.”

        Nomir’s lawyer on the case, Robert Cohan of Boston’s Cohan Rasnick Myerson, called the firm’s response and counterclaims “predictable and to be expected. If they’re asking to be paid for inadequate services I would doubt my clients are willing to do that,” Cohan said.

        Nomir also named three former McDermott Will lawyers in the case: Mark Lappin and G. Matthew McCloskey of Massachusetts and Simona Levi-Minzi of Florida. None of the individual defendants could be reached for comment.

        Nomir’s legal claims include negligence, fraud, breach of fiduciary duty, breach of contract, breach of the implied covenant of good faith and fair dealing and violations of the Massachusetts consumer protection law. The company is asking the court for an award of lost profits, multiple damages, plus attorney fees and costs.

        Nomir claims the company’s faulty docketing system caused it to miss a U.S. Patent and Trademark Office’s January 2005 notice to provide additional information about an invention for using laser technology to target biofilm — which are microorganisms that adhere to each other — as a treatment for periodontal disease. The PTO classified the patent as abandoned that year. The patent issued in September 2009 after Nomir hired a new firm.

        Nomir claims McDermott Will’s errors related to this patent cost it $2 million to $3 million in financing, more than two and a half years in patent protection, $600,000 in actual damages and estimated lost revenue of $22.4 million through 2008.

        Nomir also claims McDermott Will missed deadlines for converting two July 2005 provisional applications about technology related to biofilm-targeting. The company planned to use the technology to fight biofilms in infected prosthetic joints. The company pegged $125,000 in costs and about $120.6 million in lost profits to the loss of these two patents.

        Nomir further claimed McDermott Will failed to file an amendment for a fourth patent that would have expanded the capabilities of its application for a technology designed destroy live biofilm bacteria in the dental root canal system without harming nearby healthy tissue.

        With regard to the first patent, the firm’s court filing admits that one of its lawyers filed a PTO petition attributing the missed deadline to a docketing system failure. Also, the firm and other defendants claim the two provisional applications were abandoned according to Nomir’s instructions. They also deny allegations that the firm is responsible for not amending the fourth patent.

        Source: – Legal News, Legal Technology, In-House Counsel, Small Firms

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