A Medical Device Daily
Orbotech (Yavne, Israel) reported that on June 18 GE Healthcare (Chalfont St. Giles, UK) amended its complaint against Orbotech, originally filed on Nov. 4, 2008, in the U.S. District Court for the Eastern District of Wisconsin.
Orbotech said the amended complaint expands the U.S. litigation to include certain of the breach-of-contract claims at issue in the dispute requested to be referred to arbitration in Israel and requests compensatory, consequential, exemplary and punitive damages in an unspecified amount.
The dispute relates, among other things, to a claim for damages related to an assertion that Orbotech was obligated to supply GE Medical Systems Israel (GEMSI; Tirat Carmel, Israel) with CZT modules at a specific price per module pursuant to the terms of an agreement between the company and GEMSI from December 2004 (such agreement was assigned to Orbotech and expired in December 2007) and a claim that Orbotech had an obligation to supply GEMSI with 850 CZT modules by specific dates.
The company said it continues to believe it has good arguments to dismiss the amended complaint as well as good arguments on the merits should the court determine it will hear the case and intends to defend the matter vigorously.
In other legalities, Discus Dental (Culver City, California) reported a lawsuit in Los Angeles federal court against BSML (Boca Raton, Florida) charging BSML with breach of contract and violation of Discus trademark rights. Discus says it seeks to end a license agreement with BSML for use of the Discus-owned BriteSmile trademark, a court order prohibiting BSML from future use of the trademark, and damages to its valuable intellectual property rights associated with the trademarked brand.
In 2006, Discus purchased substantially all assets of BSML's predecessor company, Britesmile, and its related entities, in a transaction valued at $35 million. Discus said it currently owns the rights to the BriteSmile trademark in connection with teeth-whitening services offered in dental offices, where it is the exclusive supplier of BriteSmile teeth-whitening products and procedures.
As part of the transaction, Discus agreed to provide BSML with limited rights to use the BriteSmile trademark, and related patents, for certain teeth-whitening procedures that BSML offers in its spa locations. BSML also retained the limited right to use the trademark for certain types of toothpaste, mouth rinse, and teeth-whitening pens that it offers over the Internet and on the QVC home shopping network, the company noted.
The lawsuit alleges that BSML has breached the license agreement and violated Discus trademark rights by harming the goodwill, reputation, and value of its BriteSmile trademark based on various BSML actions, including reports that it has charged consumer credit cards for services never performed and closed BSML spa locations without notice and refused to refund pre-paid appointment charges. The lawsuit also alleges BSML improperly has sought its own trademark registrations on variations of the BriteSmile mark in further breach of the license agreement.
"Regrettably, we believe that BSML is conducting its business in a way that damages the image and reputation of our BriteSmile brand," said Robert Cartagena, chief operating officer for Discus. "The apparent misconduct of BSML seriously impairs an asset for which we paid a significant sum and is not representative of how Discus works with its valued customers."
Lawyers in the New York and Los Angeles offices of the international law firm Chadbourne & Parke, represent Discus.