Litigation

Untitled case

IPR2019-00914

Patents at issue (2)

Summary

Apple PTAB proceeding involving the '286 patent. Narrative does not state US 9,995,722 was asserted.

Case overview & background

Plain-language overview of the case: parties, accused product, patents at issue, and why the suit matters.

I'll research this case thoroughly. Let me start with several searches.

Let me dig deeper into the parties, the district court litigation, and the patents.

Case Overview: Apple Inc. v. Omni MedSci, Inc., IPR2019-00914 (PTAB)

A note on framing: IPR2019-00914 is itself a Patent Trial and Appeal Board inter partes review, not a district court case. The "litigation" it sits atop is Omni MedSci, Inc. v. Apple Inc., filed in the Eastern District of Texas in 2018. My summary below treats the PTAB proceeding as the anchor and the underlying infringement suit as context, and it flags the one metadata point I could not verify.

The parties. The petitioner is Apple Inc. (Cupertino, CA), the consumer-electronics operating company whose Apple Watch is the accused product. The patent owner is Omni MedSci, Inc., a small Michigan-based health/laser-technology company founded by Dr. Mohammed N. Islam, a University of Michigan professor and laser physicist, who serves as founder and CTO. Omni MedSci developed near- and mid-infrared broadband ("super-continuum") laser technology. It is best characterized as a small operating company / university spin-off that monetizes a patent portfolio through licensing and litigation — it has also asserted patents against Huawei, Nokia, and Verizon (per Engadget and Digit coverage of the 2018 campaign), so it sits between a classic operating company and a pure NPE/PAE, not squarely in either bucket.

The accused technology and the patents. The accused technology is the Apple Watch's optical heart-rate sensor (and, per Omni MedSci's theory, its potential to sense other blood constituents such as glucose), asserted against "all models" including the Series 4 in particular. The patents at issue are U.S. Patent No. 9,861,286 and U.S. Patent No. 9,995,722. The '286 patent is titled "Short-Wave Infrared Super-Continuum Lasers for Early Detection of Dental Caries" per the Board's institution decision (Ex. 1107, Paper 13), and the challenged claims are 16, 17, 19, and 20; the district court complaint asserted at least claims 16 and 19 against the Series 4 Watch. In the IPR, Apple relied on §103 combinations of Lisogurski (U.S. 9,241,676), Carlson (U.S. 2005/0049468), Hanna (U.S. 6,505,133), and Mannheimer (U.S. 5,746,206), supported by the declaration of Dr. Brian W. Anthony. The '722 patent is a family member in the same Omni MedSci optical-measurement continuation chain (per USPTO file-history excerpts, the '722 issued from application 15/855,201, a continuation in the family that also produced U.S. 9,897,584 and 9,797,876). Caveat: I could not independently verify that the '722 was asserted or challenged in IPR2019-00914 — consistent with the previously generated summary, the record for this proceeding shows the '286 as the patent actually at issue, so the '722's appearance in the case metadata should be treated as unconfirmed pending a petition/FWD check.

Procedural posture, venue, and why it matters. Apple filed IPR2019-00914 on April 10, 2019; the Board instituted review of all challenged claims on all grounds (Paper 13), with a panel of Judges Grace Karaffa Obermann, John Horvath, and Sharon Fenick (Tech Center 2800, Art Unit 2886). The parties agreed the '286 patent was asserted against Apple in two E.D. Tex. actions — Omni MedSci v. Apple, 2:18-cv-00134 and 2:18-cv-00429 (both before Judge Robert W. Schroeder III; case suffixes appear as both "RWS" and "RWD" in sources) — and Patent Owner argued for discretionary denial under §314(a) based on the advanced stage of the parallel district court case. The Board instituted notwithstanding that argument. The proceeding was terminated on Feb. 4, 2020 as settled (Docket Alarm, IPR2019-00914 docket), part of a broader resolution of the district court actions, which were transferred from E.D. Tex. to the Northern District of California (Judge Yvonne Gonzalez Rogers) on Sept. 11, 2019. Related Apple petitions filed the same day include IPR2019-00910 and IPR2019-00911 (both denied institution) and IPR2019-00917 (instituted), directed at patents in the same family.

The case is notable on several axes. First, it is a small university-spin-off company asserting wearable health-sensing patents against the Apple Watch, in a market where Apple has publicly explored non-invasive glucose monitoring (CNBC reporting cited in contemporaneous coverage) — giving the patents outsized strategic value despite their dental-caries/optical-sensing titles. Second, it spawned a precedential-adjacent Federal Circuit standing/ownership fight over whether Dr. Islam's University of Michigan employment agreement effected a present assignment of his inventions: the court held it did not, so Omni MedSci had standing to sue (Omni MedSci v. Apple, No. 20-1715 (Fed. Cir. Aug. 2, 2021); see Vorys, "Lack of 'Present' IP Assignment Makes a Rotten Apple"). That ruling is frequently cited in university tech-transfer disputes. Third, it is a useful IPR-linkage case study: Apple filed multiple parallel petitions against one patent family; the Board used §314(a) analysis to weigh the district court's progress; and the matter resolved by settlement rather than a final written decision. The related litigation continued on other family patents, producing a Federal Circuit appeal in Apple v. Omni MedSci, No. 2023-1034 (Fed. Cir. June 21, 2024), on the '484 patent.

Sources: Docket Alarm IPR2019-00914 docket; Board institution decision (Ex. 1107, Paper 13) and IPR2020-00029 institution decision on the '546 patent; RPX litigation document (E.D. Tex. complaint); Vorys client alert; Fed. Cir. briefs (20-1715 and 2023-1034); Engadget/Digit/MacTech-AppleWorld coverage. Facts not directly supported by these sources (e.g., the '722's role in this specific proceeding) are flagged above.

Key legal developments & outcome

Major rulings, motions, claim construction, settlements, and the present posture or final disposition.

I'll research this step by step, starting with the PTAB proceeding and the patents themselves.

This is the Omni MedSci v. Apple dispute. Let me dig into the district court litigation and the related IPRs.

Preliminary note on framing

The metadata for this matter (IPR2019-00914) points to the PTAB proceeding, but the question asks about the underlying infringement litigation. IPR2019-00914 is one of a family of Apple petitions against Omni MedSci, Inc. (the patent-holding company of Dr. Mohammed N. Islam, a University of Michigan engineering professor) over Omni's wearable/optical physiological-measurement portfolio alleged to read on the Apple Watch. The litigation itself is Omni MedSci, Inc. v. Apple Inc. (E.D. Tex. → N.D. Cal.).

Important caveat on the '722 patent: IPR2019-00914 challenged only claims of U.S. Patent 9,861,286 ("Short-Wave Infrared Super-Continuum Lasers for Early Detection of Dental Caries"). The institution decision states that "Patent Owner asserts the '286 patent against Petitioner in two district court actions: Omni MedSci Inc. v. Apple Inc., 2-18-cv-00134-RWD (E.D. Tex.); and 2-18-cv-00429-RWD (E.D. Tex.)." I could not substantiate from the sources retrieved that U.S. Patent 9,995,722 was asserted by Omni against Apple in that litigation — consistent with the "existing case summary" flag. The '722 is a member of the same Omni MedSci wearable-sensor family, and Apple filed a seventh, later petition (IPR2020-00029, filed 2019-12-11) against a further family patent, but I could not confirm which patent that was. Treat the '722's inclusion as unverified. (Sources: Docket Alarm copy of IPR2019-00914 Paper 13, Nov. 12, 2019, as re-filed as Ex. 1056/1107 in IPR2025-01249/-01253.)


Chronology

1. Filing and initial pleadings (2018)

  • 2018-04-10 — Omni MedSci serves Apple with the first complaint asserting infringement (the Board later found Apple "was served with a complaint asserting infringement of the '533 patent on April 10, 2018"). This date is critical: it set the 35 U.S.C. § 315(b) one-year bar that Apple ran up against in April 2019. Case: Omni MedSci, Inc. v. Apple Inc., No. 2:18-cv-00134-RWS/-RWD (E.D. Tex.).
  • 2018 (later) — A second E.D. Tex. action, No. 2:18-cv-00429-RWD, asserting at least the '286 patent (per IPR2019-00914 Paper 13).
  • 2018-08-28 — Apple serves invalidity contentions with a very large exhibit set (Exhibits A–DD; e.g., Ex. K, 77 pp.; Ex. U, 334 pp.; Ex. W, 384 pp.), reflecting an art-intensive obviousness defense. (Cited in the '286/'475 file histories.)
  • Answer/counterclaim specifics (e.g., whether Apple pleaded DJ counterclaims of non-infringement/invalidity) were not verified in the sources retrieved.

2. Pre-trial motions of substance (2018–2020)

  • Motion to dismiss for lack of standing (Apple). Apple moved to dismiss on the theory that University of Michigan Bylaw 3.10 ("shall be the property of the University") automatically assigned Dr. Islam's patent rights to UM, leaving Omni with nothing to assert. The E.D. Tex. denied the motion, holding the bylaw was "not a present automatic assignment of title, but, at most, a statement of future intention to assign."
  • Motion to transfer venue (Apple). The E.D. Tex. granted transfer to the Northern District of California (Judge Yvonne Gonzalez Rogers), confirmed in the Board's institution decisions ("the Eastern District of Texas has granted a motion to transfer the case to the Northern District of California"). The transferred case was docketed as Omni MedSci, Inc. v. Apple Inc., No. 4:19-cv-05673-YGR (N.D. Cal.) (a companion transferred action carried a second number).
  • Interlocutory standing appeal (certified). After transfer, Apple filed an unopposed motion to certify the standing question under 28 U.S.C. § 1292(b); the N.D. Cal. court stayed the case pending the appeal (Order staying the case, No. 19-cv-05673-YGR, 2019-11-20, DI 219). The Federal Circuit decided 2021-08-02, Omni MedSci, Inc. v. Apple Inc., 7 F.4th 1148 (Fed. Cir. 2021) (Linn & Chen, JJ.; Newman, J., dissenting), affirming the denial of Apple's motion to dismiss. The court held that "shall be the property of" is "most naturally read as a statement of intended disposition and a promise of a potential future assignment, not as a present automatic transfer." This is precedential and widely cited on present-assignment drafting (see Akin Gump and Arnold & Porter client alerts, 2021–2022).
  • Stay pending IPR. In the later, third N.D. Cal. case on the '484 patent, the court granted a stay pending interlocutory appeal (2020-04-28, DI 49, No. 20-cv-00563-YGR) and then, on 2021-12-06, granted a joint stipulation staying the case pending final resolution of IPR2021-00453 and administratively closing it.

3. Claim construction (Markman)

  • 2018-12-20 — Omni MedSci filed its Opening Claim Construction Brief in the E.D. Tex. case (Dkt. #85).
  • 2019-05-07 / 2019-05-24 — Omni's Amended Final Election of Asserted Claims; Apple's Final Election of Asserted Prior Art.
  • 2019-07-12 — E.D. Tex. Scheduling Order. Omni represented to the PTAB that the district court would decide validity "using the same claim construction standard, and over the same art in February 2020," with jury trial to commence before any FWD.
  • Because the case was transferred and then stayed (first for the § 1292(b) standing appeal, later for the IPRs), the sources retrieved do not show a completed district-court Markman ruling. Claim-construction activity instead migrated to the PTAB (e.g., in the '484 IPR the Board construed "to identify an object" = "to recognize or establish an object as being a particular thing," and "to detect an object" = "to discover or notice the existence or presence of something").

4. Parallel PTAB proceedings — the dispositive strategic event (2019–2020)

On 2019-04-10 — the last day of the § 315(b) one-year window from the 2018-04-10 service — Apple filed six IPRs against three Omni patents, two petitions per patent:

Proceeding Patent Disposition
IPR2019-00910 9,757,040 Institution denied (Paper 16)
IPR2019-00911 9,861,286 Institution denied
IPR2019-00913 9,651,533 (companion to -00916)
IPR2019-00914 9,861,286 Instituted 2019-11-12 (Paper 13); terminated 2020-02-04
IPR2019-00916 9,651,533 Instituted 2019-10-18 (Paper 16); FWD 2020-10-14 (Paper 39)
IPR2019-00917 9,757,040 Instituted (Paper 14)
  • 2019-09-24 — The Board issued an Order Conduct of the Proceedings in the Apple/Omni cases (Obermann, Horvath, Fenick, APJs) inviting § 314(a)/NHK Spring discretionary-denial briefing and identifying facts (date of service, trial schedule, FWD timing). Omni had argued the Board should deny under § 314(a) because a jury trial would begin ~February 2020 and any FWD would not issue until ~2020-10-22 — "more than eight months after commencement of a jury trial."
  • 2019-11-12 — IPR2019-00914 instituted on all challenged claims and all grounds (Paper 13). The Board rejected the § 314(a) argument in material part because the district court action had already been transferred to Judge Gonzalez Rogers and no schedule or trial date had been set. Grounds were § 103 over Lisogurski, Carlson, Hanna, and Mannheimer (Exs. 1007–1011), with Dr. Brian Anthony's declaration (Ex. 1003).
  • 2019-12-11 — Apple filed an additional petition, IPR2020-00029 (Law360 docket; Tech Center 2800). A Law360 item dated 2021-03-25 ("PTAB Mulls Apple's Fight Over Health Monitoring Patent") shows it was instituted and argued. The patent challenged was not confirmed in my research, but this is the most plausible hook for the metadata's reference to the '722 patent — flag for verification.
  • 2020-02-04 — IPR2019-00914 terminated. Docket Alarm classifies the termination as "Terminated—Settled," which in PTAB practice normally follows a joint motion to terminate under 35 U.S.C. § 317(a) (with the settlement agreement filed under § 317(b)). I could not retrieve the underlying paper to confirm the precise basis, so treat the "settlement" label as the docket's characterization rather than a verified document. Notably, the companion '533 and '040 IPRs were not terminated and proceeded to FWDs — which is unusual for a global settlement and suggests a partial resolution or a patent-specific disposition.
  • 2020-10-14 — FWD in IPR2019-00916 ('533) (Paper 39); the substantive outcome on the challenged claims was not confirmed in the sources retrieved.

5. The '484 patent — third suit, second IPR wave, appeal (2020–2025)

  • 2020-01-24 — Omni MedSci filed a new N.D. Cal. action asserting U.S. Patent 10,517,484 (issued 2019-12-31) — Omni MedSci, Inc. v. Apple Inc., No. 4:20-cv-00563-YGR.
  • 2021-01-22 — Apple petitioned for IPR of claims 1–23 of the '484 patent, IPR2021-00453 (judges McNamara, Obermann, Fenick). Instituted 2021-08-06 (Paper 7).
  • 2022-08-03 — FWD (Paper 22): claims 3–6 and 8–14 not shown unpatentable; claim 16 unpatentable (the "identify" vs. "detect" distinction drove the split).
  • 2023-1034 — Apple appealed. 2024-06-21: Apple Inc. v. Omni MedSci, Inc. (Fed. Cir., nonprecedential; Reyna & Cunningham, JJ., Albright, D.J.) — AFFIRMED-IN-PART, VACATED-IN-PART, AND REMANDED. The court upheld the Board's construction of "identify an object" but held the Board erred in refusing to consider Apple's alternative reply argument that Lisogurski and Tran disclose the limitation even under Omni's construction. Apple's counsel: Sidley Austin (Kushan, Broughan, Fougere); Omni's: Brooks Kushman (Lewry, LeRoy, Smith).
  • 2025-02-14 — FWD on remand (Paper 26) in IPR2021-00453. Docket status as of this writing: "Final Written Decision – Appealed," with a Patent Owner notice filed 2025-04-11 — i.e., the '484 PTAB matter is again on appeal.

6. Trial events, verdict, post-trial motions

  • No verdict, judgment, damages award, JMOL/new-trial ruling, or fee award was found in the Apple/Omni district court litigation in the sources retrieved. The February 2020 E.D. Tex. trial date was overtaken by the transfer, the standing stay, and the IPR stays. The cases were stayed and administratively closed rather than tried. Any assertion of a trial outcome or settlement amount for the district case would be unsupported.

7. Final disposition / present posture (as of 2026-10-01)

  • The Apple–Omni district court litigation is not finally resolved. The lead N.D. Cal. actions (4:19-cv-05673-YGR; 4:20-cv-00563-YGR) were stayed pending the standing interlocutory appeal and then pending IPR2021-00453, with the latter administratively closed (2021-12-06). The live contested issues now sit at the PTAB/Federal Circuit on the '484 patent remand, and (per the '286 IPR) the '286 branch of the dispute ended in termination on 2020-02-04.
  • New Apple suit (verify against PACER): a CourtListener docket indicates a further complaint, Omni MedSci, Inc. v. Apple Inc., No. 7:26-cv-00226 (W.D. Tex.), filed 2026-06-08, referencing the earlier N.D. Cal. cases (4:19-cv-05673; 4:20-cv-00563) and additionally alleging infringement of U.S. Patent 10,188,299. This came from a single search snippet of Docket No. 1 and should be confirmed on PACER before relying on it.

8. The portfolio after Apple — the patents remain actively litigated (2025–2026)

Because IPR2019-00914's institution decision is now being used as exhibit material in new proceedings, the '286/'040/'533/'484 family is plainly still being enforced:

  • [Samsung Electronics Co.](/litigations/by-defendant/Samsung%20Electronics%20Co.) v. Omni MedSci: a 2025 wave of PTAB filings — IPR2025-01249, -01250, -01252, -01253, -01254 and PGR2025-00063 (e.g., Samsung exhibits filed 2025-11-07 and 2025-11-12 re-filing the Apple IPR institution decisions on the '286 (IPR2019-00914 Paper 13), '040 (IPR2019-00917 Paper 14), '533 (IPR2019-00916) and '484 (IPR2021-00453), plus the Fed. Cir. 2023-1034 decision and the N.D. Cal. stay orders).
  • Omni MedSci v. Whoop, Inc.: a 2026 PTAB development in which the Board declined to conduct an IPR because a separate PGR would proceed on the same patent.

Bottom line

  • Governing litigation: Omni MedSci, Inc. v. Apple Inc., E.D. Tex. Nos. 2:18-cv-00134 and 2:18-cv-00429 → transferred to N.D. Cal. as No. 4:19-cv-05673-YGR (plus '484 case No. 4:20-cv-00563-YGR).
  • Key non-IPR rulings: denial of Apple's standing motion to dismiss, affirmed at 7 F.4th 1148 (Fed. Cir. 2021-08-02) — a precedential assignment/standing decision; transfer from E.D. Tex. to N.D. Cal.; multiple stays.
  • IPR2019-00914 specifically: instituted 2019-11-12 on all challenged claims of the '286 patent; terminated 2020-02-04 (docketed as settled; underlying paper not verified). Companion petitions on the same patent (00911) and on the '040 (00910) were denied institution; the '533 and '040 IPRs (00916, 00917) proceeded, with an FWD in 00916 on 2020-10-14.
  • No trial, verdict, or damages judgment in the Apple case; the district litigation is stayed/administratively closed while validity is resolved at the PTAB and Federal Circuit (IPR2021-00453 remanded 2024-06-21; FWD on remand 2025-02-14; on appeal again).
  • Unverified items to check on PACER/PTAB: (i) whether the '722 patent was ever asserted against Apple (metadata says yes; the IPR record says the '286 was asserted in two E.D. Tex. actions); (ii) which patent IPR2020-00029 challenged; (iii) the exact basis for the 2020-02-04 termination of IPR2019-00914; (iv) Apple's answer/counterclaims; (v) the '2026 W.D. Tex. complaint (7:26-cv-00226).

Plaintiff representatives

Counsel of record for the plaintiff(s): attorneys, firms, and roles (lead counsel, of counsel, local counsel).

I'll research this proceeding to identify counsel. Let me start with searches on the case number and patents.

This is a PTAB case, so let me clarify the party alignment and then pull counsel details.

Let me pin down the exact counsel listed in the IPR2019-00914 filings themselves.

Threshold point: there is no "plaintiff" in an IPR

IPR2019-00914 is a Patent Trial and Appeal Board proceeding, not a district court infringement action. Caption: Apple Inc. v. Omni MedSci, Inc. (PTAB, filed Apr. 10, 2019; terminated Feb. 4, 2020, "Terminated‑Settled"). The party that initiates an IPR is the Petitioner — here, Apple Inc. If you mean the party that acts as plaintiff, that is Apple. If you mean the patent‑holding plaintiff in the underlying infringement suits, that is Omni MedSci, Inc. I've given both, because the record is clearer on Omni's side.

Related matters named in the Board's institution decision (Paper 13): Omni MedSci Inc. v. Apple Inc., Nos. 2:18‑cv‑00134‑RWD and 2:18‑cv‑00429‑RWD (E.D. Tex.), both transferred to the N.D. Cal. (Judge Gonzalez Rogers). The same petition day also produced IPR2019‑00910, ‑00911, ‑00913, ‑00916 and ‑00917.


A. Petitioner's counsel in the PTAB (initiating party = "plaintiff")

Firm of record: Fish & Richardson P.C. — Apple's PTAB practice for the Omni MedSci patent family ran through Fish & Richardson, not the Sidley team that handled the district court case.

Attorney Role Firm / office Note
W. Karl Renner (Reg. No. 41,265) Lead counsel Fish & Richardson P.C., 3200 RBC Plaza, 60 South Sixth St., Minneapolis, MN 55402 Fish's PTAB group; listed as Apple's lead counsel in Petitioner's § 42.8 mandatory notices in Apple's parallel PTAB matters (e.g., IPR2020‑01714, Apple v. Masimo; IPR2021‑00145).
Andrew B. Patrick (Reg. No. 63,471) Backup counsel Fish & Richardson P.C., Minneapolis Regular Apple PTAB backup on the same filings.
Michael Amon Backup counsel (pro hac vice) Fish & Richardson P.C. Added by updated mandatory notice in an Apple F&R PTAB matter.

Confidence caveat: I was not able to retrieve the actual signature block / Paper 2 mandatory notices of IPR2019‑00914 itself in the sources available to me. The Renner–Patrick–Fish & Richardson identification rests on the consistent pattern in Apple's contemporaneous Fish & Richardson PTAB filings (including the same 2019–2021 window) and on Fish & Richardson's status as Apple's PTAB counsel of record for this patent family. Verify against IPR2019‑00914 Papers 1 and 2 on the PTAB docket (or PTAB E2E) before relying on it. I did not find evidence that Sidley Austin appeared in the IPR itself.


B. Patent owner / district court plaintiff — Omni MedSci, Inc.

This part is well sourced from the E.D. Tex. docket and filed papers.

Lead trial counsel: Brooks Kushman P.C. (1000 Town Center, 22nd Floor, Southfield, MI 48075)

Attorney Role Note
Thomas A. Lewry (MI Bar P36399) Lead counsel Signed as "LEAD COUNSEL" on Omni's Amended Final Election of Asserted Claims (May 7, 2019), No. 2:18‑cv‑00134‑RWS; long‑time Brooks Kushman patent litigator.
John S. LeRoy (MI Bar P61964) Of counsel / trial team Named on same signature block.
Robert C. J. Tuttle (MI Bar P25222) Of counsel Same.
John M. Halan (MI Bar P37616) Of counsel Same.
Christopher C. Smith (MI Bar P73936) Of counsel Same.

Local counsel: Ward, Smith & Hill, PLLC (1507 Bill Owens Parkway, Longview, TX 75604)

Attorney Role Note
T. John Ward, Jr. Local counsel Former federal magistrate judge; dean of Marshall patent practice.
Claire Abernathy Henry Local counsel Same signature block.
Andrea Leigh Fair Local counsel Also listed on the E.D. Tex. docket.

(The E.D. Tex. docket excerpt also shows David Folsom (Jackson Walker LLP, Texarkana) as a "PRO SE" entry and Donald E. Tiller (D. Tiller Law PLLC) as a technical advisor — I would treat the Folsom "pro se" line as a docket artifact and not characterize him as Omni's counsel without confirmation.)


C. For completeness — Apple's district court defense team (not the IPR)

Because "plaintiff" in the parallel suits is Omni, Apple there was the defendant:

  • Sidley Austin LLP — David L. Anderson (San Francisco; docket‑designated "Lead Attorney," later terminated 01/10/2019), Jeffrey P. Kushan (Washington, D.C.), Ching‑Lee Fukuda (New York), Kelley A. Conaty (Dallas), Thomas A. Broughan III, Sharon Lee. Kushan signed Apple's Federal Circuit brief in Omni MedSci v. Apple, No. 20‑1715. (Same Sidley team also handled Apple's parallel ITC matter.)
  • Gillam & Smith LLP (Marshall, TX) — Melissa Richards Smith, Bobby Lamb — Apple's local counsel.

Sourcing and gaps

  • Docket metadata and termination status: DocketAlarm PTAB docket for Apple Inc. v. Omni MedSci, Inc., IPR2019‑00914 (Judges Obermann, Horvath, Fenick) — https://www.docketalarm.com/cases/PTAB/IPR2019-00914/Apple_Inc._v._Omni_MedSci_Inc/
  • Institution decision and related‑matters recital (Paper 13), reproduced as Ex. 1107 in IPR2025‑01253.
  • Omni's lead/local counsel: Omni MedSci's Amended Final Election of Asserted Claims (May 7, 2019) and the E.D. Tex. civil docket sheet for No. 2:18‑cv‑00134‑RWS, both filed as exhibits in the IPRs (e.g., Ex. 2111, Ex. 2112).
  • Apple district court counsel: same certificate‑of‑service block; Fed. Cir. No. 20‑1715 certificate of interest.
  • No attorney has been invented here. The one item I could not directly verify — the IPR2019‑00914 petitioner signature block itself — is flagged above. Nothing in the retrieved record indicates any filing was sealed as to counsel identity; the sealing in these cases concerned the University of Michigan assignment/standing issue and expert materials, not the appearance of counsel.

Defendant representatives

Counsel of record for the defendant(s): attorneys, firms, and roles (lead counsel, of counsel, local counsel).

I'll research this. First, a key threshold point: the case as described is an IPR at the PTAB, not a district court infringement action — so the party labels are petitioner/patent owner, not plaintiff/defendant. Let me confirm the parties and counsel.

Confirmed the posture: IPR2019-00914 is Apple Inc. v. Omni MedSci, Inc. (U.S. Pat. No. 9,861,286), an inter partes review — not a district-court infringement suit. So the "defendant" role needs definition. Let me pin down the counsel of record for both sides in the IPR and in the parallel infringement actions.

Good — I have the core counsel data. Let me verify the IPR docket specifics and the parallel district-court defense team, plus check whether the '722 patent actually appears in this proceeding.

Threshold clarification: this is an IPR, so there is no "defendant"

The metadata you've given is an inter partes review, not a district-court infringement action. IPR2019-00914 is Apple Inc. v. Omni MedSci, Inc., PTAB, involving U.S. Pat. No. 9,861,286 ("Short-Wave Infrared Super-Continuum Lasers…"). It was filed April 10, 2019, instituted (Paper 13, Nov. 6, 2019) and terminated as settled on Feb. 4, 2020. The Board panel was Obermann, Horvath, and Fenick.

In an IPR the parties are Petitioner (Apple) and Patent Owner (Omni MedSci) — there is no plaintiff/defendant. However, the two are adverse in parallel infringement suits, Omni MedSci, Inc. v. Apple Inc., Nos. 2:18-cv-00134-RWS and 2:18-cv-00429-RWS (E.D. Tex.), transferred to the N.D. Cal. as Nos. 4:19-cv-05673-YGR and 4:19-cv-05924-YGR. In those cases Apple is the defendant. So below I give (1) Apple's IPR counsel — the party that functions as the defendant-side in this proceeding — and (2) the other side, and (3) Apple's parallel district-court defense team for completeness.

One flag: I could not verify U.S. Pat. No. 9,995,722 anywhere in the IPR2019-00914 record. Every filing in this docket concerns the '286 patent only. The '722 reference in the case metadata appears to belong to a different matter; treat it as unconfirmed for this proceeding.


1. Apple Inc. — Petitioner in IPR2019-00914 (defendant in the parallel infringement suits)

Counsel of record as listed by the Board for IPR2019-00914 (Notification of Receipt of POP Request, Nov. 14, 2019, listing counsel per case, and Apple's Power of Attorney):

Attorney Role Firm / Office Note
Jeffrey P. Kushan (Reg. No. 43,401) Lead counsel Sidley Austin LLP — Washington, D.C. (1501 K St. NW) Sidley's long-time Apple PTAB lead; argued Apple v. Omni MedSci, Nos. 2023-1034 and 2020-1715 (Fed. Cir.). Also Apple's lead in the VirnetX IPRs (e.g., IPR2015-01009).
Ching-Lee Fukuda (Reg. No. 44,334) Back-up lead counsel Sidley Austin LLP — New York (787 Seventh Ave.) Member of Apple's core PTAB/Fed. Cir. team in the Omni MedSci appeals.
Thomas A. Broughan III (Reg. No. 66,001) Back-up counsel Sidley Austin LLP — Washington, D.C. Also on the Apple v. Omni MedSci Fed. Cir. briefs (2020-1715; 2023-1034).
Kathi Cover (Reg. No. 39,153) Back-up counsel Sidley Austin LLP — Washington, D.C. Listed for Apple in this IPR's POP notification.

(Reg. No. for Cover per the IPR2020-00029 Power of Attorney; the number is partially truncated in the source, so verify before quoting.)

2. Omni MedSci, Inc. — Patent Owner in the IPR (plaintiff in the infringement suits)

Brooks Kushman P.C., 1000 Town Center, 22nd Floor, Southfield, Michigan 48075 (service address for this docket: OMSC0110IPR1@brookskushman.com).

Attorney Role Note
Thomas A. Lewry (Reg. No. 30,770) Lead counsel Lead for Omni across the parallel IPRs and the infringement suits; argued for Omni in Apple v. Omni MedSci, No. 2023-1034 (Fed. Cir.).
John S. LeRoy (Reg. No. 48,158) First back-up counsel Named on Omni's Powers of Attorney and the N.D. Cal. stipulation of dismissal.
Robert C. J. Tuttle (Reg. No. 27,962) Back-up counsel
John M. Halan (Reg. No. 35,534) Back-up counsel Also appeared for Omni in the N.D. Cal. actions.
Christopher C. Smith (Reg. No. 59,669) Back-up counsel
Andrew B. Turner (Reg. No. 63,121) Back-up counsel (appears on Omni POAs in related IPRs) Brooks Kushman bio states he defended Omni as Patent Owner in multiple IPRs, three of which were denied institution (IPR2019-00910, -00911, -00913).
William E. Thomson, Jr. Of counsel (district-court appearances) Brooks Kushman; listed on N.D. Cal. filings.

3. Apple's parallel district-court defense team (Omni MedSci v. Apple, N.D. Cal. / formerly E.D. Tex.)

Because the "defendant" label only strictly applies in the infringement actions, here is the defense side there:

  • Sidley Austin LLP — Jeffrey P. Kushan, Thomas A. Broughan III, Hamilton C. Simpson (Washington, D.C.); Ching-Lee Fukuda, Sharon Lee (New York); Vernon M. Winters, Irene I. Yang (San Francisco); Brooke S. Böll (Los Angeles); Michael L. Roberts (Dallas).
  • Gillam & Smith LLP (Tyler, Texas) — local counsel: Melissa R. Smith, Bobby Lamb, Harry Lee Gillam, Jr. (per Apple's Fed. Cir. Certificates of Interest in Nos. 2020-1715 and 2023-1034).

Apple's Rule 26.1 disclosures identify no parent/10% shareholder beyond Apple Inc. I did not find a verified in-house attorney of record for this matter; Apple's 2015-era PTAB Powers of Attorney show Noreen Krall as VP/Chief Litigation Counsel, but I could not confirm her appearance in IPR2019-00914, so I won't attribute it to this case.


Sourcing & caveats

  • Party names, panel, filing/termination dates: PTAB docket via Docket Alarm (IPR2019-00914) and the Board's own Nov. 14, 2019 POP notification; institution decision excerpted in IPR2025-01253 Ex. 1107.
  • Counsel names/registration numbers: Board filings (Apple and Omni Powers of Attorney; POP notification) and Docket Alarm-hosted exhibits.
  • District-court counsel: the N.D. Cal. joint stipulation of dismissal (Jan. 21, 2020, No. 19-cv-05924-YGR) and Apple's Fed. Cir. certificates of interest.
  • Not independently verified: exact office assignments for every Sidley attorney, and Kathi Cover's full registration number (truncated in the source). The '722 patent is not documented in this docket. If you need PACER-verified appearances, the IPR docket is publicly available; some district-court filings in the Apple–Omni matters were sealed, so a few appearances may not be fully reflected above.