Medical device maker Nomir Medical Technologies Inc. is suing McDermott Will & Emery and three of its former lawyers in Massachusetts state court for $143 million for missing four key patent filing deadlines.
The medical laser maker filed its case, Nomir Medical Technologies Inc. v. McDermott, Will & Emery, in Suffolk County Superior Court in Massachusetts on July 1. The case was transferred to the Massachusetts Superior Court’s business litigation session on July 13.
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 to award lost profits, multiple damages, plus attorney fees and costs.
Nomir is also suing three former McDermott lawyers: Mark Lappin and G. Matthew McCloskey of Massachusetts and Simona Levi-Minzi of Florida.
Nomir claims it retained McDermott in 2004, which charged it more than $1.1 million in intellectual property legal fees from 2005 through 2008. According to Nomir’s lawsuit, the applications “represented clinically proven breakthrough technology of tremendous value for the treatment of infectious disease, and the plaintiff’s core technology.”
In the lawsuit’s first example, Levi-Minzi initially filed Nomir’s patent application for a method of using laser technology to target biofilm — micro-organisms that adhere to each other — as a treatment for peridontal disease, at Lappin’s request in October 2004.
Because of a faulty docketing system, the lawsuit alleges, the firm missed the U.S. Patent and Trademark Office (PTO)’s January 2005 notice to provide additional information. The PTO declared the patent abandoned in March 2005. In July 2007, the suit alleges, McCloskey learned the application was abandoned. Nomir claims the firm waited 41 days to notify it of the problem.
Meanwhile, Nomir claims that it relied on the patent technology for “various contemplated business and financing transactions.”
The company claims that investors delayed a $1.4 million payment scheduled for Sept. 30., 2007, until the patent was revived. The company also said it was forced to suspend a clinical trial of the technology and postpone additional fundraising activities.
Nomir hired a new law firm, and the patent was eventually issued in September 2009, but the company claims the unintended abandonment placed it at a time disadvantage in the race to offer periodontal disease treatments. The company also claims it delayed research related to using the technology for wound decontamination.
Overall, the company claims it lost $2 million to $3 million in financing, more than two and a half years in the life of the patent, $600,000 in actual damages and estimated lost revenue of $22.4 million through 2008. Nomir also claims its reputation was harmed, particularly among potential investors and marketing partners.
Nomir further claims McDermott Will failed to convert two July 2005 provisional applications covering technology related to the biofilm-targeting invention to standard applications within the 12-month deadline. The patents would have expanded the use of the original technology into a method for combating biofilms in infected prosthetic joints.
Because the original application became prior art, the complaint alleges the two applications filed later were “essentially useless.” Nomir claims it also learned of this problem in August 2007.
Nomir said the mistakes related to the two later patents generated $125,000 in additional costs for the company. It also claims it lost about $120.6 million in profits through 2008 because it wasn’t able to patent the other two inventions.
The fourth patent at issue in the case is for an “instrument for delivery of optical energy to the dental root canal system for hidden bacteria and live biofilm thermolysis.” The company claims the technology is designed to treat “bacterially fueled inflammatory diseases” by destroying live biofilm bacteria without destroying nearby healthy tissue. Nomir claims McDermott filed its application in June 2004, but missed a deadline to amend it and add a claim related to photo damage.
Lappin, Levi-Minzi and McCloskey could not be reached for comment.
Nomir’s lawyer on the case, Robert Cohan of Boston’s Cohan Rasnick Myerson, acknowledged that it’s generally difficult to prove lost profits, but said the “unique nature of the technology” in this case should make it “a good bit easier.”
“The failure to meet deadlines is certainly easy enough to prove,” Cohan said. “The difficulty lies in establishing the value of the loss. I think it’s an unfortunate situation that points up the importance of having an up-to-date, working docketing system,” Cohan said.
In a statement, McDermott Will said 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 firm. “We will defend the case vigorously.”
Sheri Qualters can be contacted at email@example.com.