Nomir Medical Technologies Inc. and its former patent law firm, McDermott Will & Emery LLP, are trading accusations in a nasty spat over patents Nomir accuses the law firm of allowing to lapse.
Waltham, Mass.-based Nomir sued MWE in July, accusing the firm of "negligence, fraud, negligent misrepresentations, breach of fiduciary duty, breach of contract, breach of the implied covenant of good faith and fair dealing and unfair and deceptive practices," according to court documents, for failing to file documents with the U.S. Patent and Trademark Office needed to protect Nomir’s intellectual property.
In its response, filed in the U.S. District Court for Massachusetts, the law firm denied the accusations and accused Nomir of failing to pay nearly $500,000 in legal bills.
Nomir, which makes devices that use optical energy to treat a variety of conditions, claims the law firm’s actions caused "damages in excess of $143 million," according to court documents, and is seeking damages, lost profits and legal fees.
The company hired MWE in 2004 to handle its patent applications and patents, maintaining the relationship until 2008. The lawsuit stems from a patent application filed in October 2004 for "Use of Secondary Optical Emission as a Novel Biofilm Targeting Technology." In January 2005, the lawsuit alleges, the USPTO notified MWE that additional information on the patent was required and set a two-month deadline. The law firm’s docket system allegedly failed to alert it to the deadline and the patent application allegedly "became abandoned on March 13, 2005, and remained abandoned for over 21/2 years," according to court documents.
That allegedly caused a string of lapses with the USPTO that led to Nomir losing control of some of its intellectual property, according to court documents. The company claims that the law firm concealed some of the lapses and that, when they came to light, a potential backer delayed a September 2007 investment of about $1.4 million. The total loss of financing allegedly ran to between $2 million and $3 million, according to the lawsuit, and the situation allegedly forced Nomir to delay clinical trials.
"Total actual damages exceed $600,000 and the present value of anticipated lost revenues as of January 1, 2009 are expected to reach $22.4 million," according to court documents. "As a result, Nomir has suffered and continues to suffer short-term damages which include but are not limited to unabsorbed overhead, unallocated costs, and extra expenses of about $125,000. … Furthermore, Nomir has suffered and continues to suffer long-term damages from the loss of patent protection … which include but are not limited to, lost profits with a present value as of January 1, 2009, expected to reach $120.6 million."
Nomir claims the law firm billed more than $1.1 million for its services; MWE says that number is more like $1.3 million.
In its response to the lawsuit, MWE denies the vast majority of the allegations and claims it "properly discharged all professional obligation and duties," according to court documents. The law firm also invoked the doctrine of "unclean hands," meaning Nomir has no standing to claim relief because of its bad faith in failing to pony up about $491,000 in legal bills owed to the law firm and accused Nomir of breach of contract.