A Medical Device Daily

Lumenis (Yokneam, Israel) reported that it has filed a complaint in the Tel Aviv District Court of Israel against Alma Lasers (Caesarea, Israel) and its four founders, Ziv Karni, Yoav Avni, Nadav Bayer, and Ivgeni Kodritzki, all former employees of Lumenis. Lumenis claims that the four misappropriated its trade secrets for the use of the technology in Alma's primary Harmony products, sold worldwide.

Alma, meanwhile, is seeking a review of Lumenis patents in the U.S.

Lumenis is seeking an injunction against Alma's use of what it says is its core technology, and damages of 200 million shekels, based on the profits allegedly earned by Alma from the utilization of Lumenis technology. Lumenis said it will file a similar action against Alma (Buffalo Grove, Illinois), the U.S. subsidiary and distribution arm of Alma Lasers, in a U.S. federal court.

The complaint alleges that certain core components of Alma's Harmony products are identical to Lumenis components developed around the time the Alma founders departed Lumenis, and that when the four Alma founders left to establish Alma, they were each involved in the development of Lumenis technology and products: Karni as the head of Lumenis R&D; Avni as a mechanical engineer; Bayer as manager of the electronics department, and Kodritzki as an electronics engineer.

The claim alleges that Alma has unjustly earned significant revenues from the sales of Harmony products and that Alma's founders were recently paid substantial amounts by TA Associates as part of an investment agreement in Alma, profits allegedly resulting from Lumenis technology.

In June 2007, Lumenis filed an action against Alma for patent infringement in the U.S. District Court in Chicago, claiming that Alma infringed seven of Lumenis' patents in the design of the Harmony product.

Alma reported that the U.S. Patent Office will reexamine all seven of Lumenis' patents that are at issue in an infringement suit being litigated in the U.S. District Court in Chicago. Alma said the court has also stayed the litigation, pending reexamination of the patents.

In December 2007, Alma submitted 22 prior art references to the PTO for consideration with respect to the seven Lumenis patents. Alma said the PTO found a "substantial new question of patentability" with respect to each of the seven patents, and commenced reexamination of them.

With respect to one of those patents, the PTO, on Feb. 8, issued an Office Action rejecting 26 claims of the patent as obvious or anticipated by the prior art. On Feb. 21, the District Court ordered the litigation stayed pending the PTO's reexamination.

Lumenis initiated the Chicago litigation by filing suit against Alma on June 28, 2007. On Jan. 25, 2008, Alma filed counterclaims and, among other things, asked the court to declare six of the seven Lumenis patents unenforceable due to inequitable conduct in procuring those patents.

Alma alleged that, when applying for those six patents, the applicants breached their duty of candor, good faith and honesty to the PTO and made false presentations to the PTO and by failing to disclose material prior art to the PTO.

Lumenis denied the allegations.