The Federal Circuit has affirmed the denial of a patent ownership challenge in litigation filed by inventor-controlled Omni MedSci, Inc. against Apple. At issue was an employment agreement between the inventor behind that NPE and his former employer, the University ofMichigan (“UM”, or the “university”), stating that he “shall” assign patent rights to the university for inventions developed with its support. On August 2, a panel majority ruled in a precedential decision that this language amounted to a future agreement to assign the patents, meaning that the inventor owned the preceding applications at the time he assigned them to Omni MedSci—as a result, affirming the denial of the defendant’s related motion to dismiss for lack of standing. However, Circuit Judge Pauline Newman dissented, arguing that the intent behind the contract dictated the opposite conclusion.
Omni MedSci, Inc. has filed a third case against Apple (4:20-cv-00563), targeting the Watch with a patent—generally related to measuring “physiological parameters” with a “wearable device” and a smartphone or tablet—that issued on December 31, 2019. Series 3 and Series 5 versions are accused of infringement. Omni MedSci filed the new case in the Northern District of California after its two prior cases were transferred there from the Eastern District of Texas. After transfer, Apple has sought to revisit denial of its Texas motion to dismiss, based on a challenge to Omni MedSci’s standing to bring suit in light of an employment agreement between sole named inventor, professor Mohammed N. Islam, and the University of Michigan.
Omni MedSci, Inc. has filed a second suit against Apple (2:18-cv-00134), asserting three patents from the family already at issue in the April case. The patents generally relate to a “personal device”/wearable using “optical beams”/“near infrared lasers” for measurement, with the NPE targeting the Apple Watch, alleged to measure heart rate using semiconductor LEDs. In April, Omni MedSci asserted four patents from the family, calling out several Watch models, including Series 1, Series 2, Series 3 GPS, and Series 3 GPS + Cellular watches. In the new complaint, Omni MedSci targets those models—together with the Series 4, released in September 2018—with two of the patents already in suit and with the newest family member, just issuing to Omni MedSci on October 16.