Omni MedSci, Inc. v. Apple Inc.

I'll research this case thoroughly before drafting the overview.

I'll research this case across court dockets, PTAB proceedings, and Federal Circuit records.

Let me dig into the specific docket timeline, the patent number discrepancy, and the parallel PTAB/appellate proceedings.

Threshold caveat on the patent-in-suit metadata

The case metadata lists US 9,995,722 as the patent at issue. The contemporaneous record does not bear that out. In the EDTX case as actually litigated, Omni's complaint and Apple's invalidity contentions identify four patents — US 9,651,533 ('533), 9,757,040 ('040), 9,861,286 ('286) and 9,885,698 ('698) (Apple's Invalidity Contentions, 2:18-cv-00134; Markman Order, ECF 211 at 3). US 9,995,722 (issued 2018-06-12) is a 2017-12-27 continuation in the same Omni MedSci family as the '533 patent, but I found no evidence it was ever asserted in 2:18-cv-00134. It surfaced later as a challenged patent in Whoop Inc. v. Omni MedSci, IPR2025-01583 (PTAB mandatory notice). I therefore treat '533/'040/'286/'698 as the operative patents and flag '722 as unconfirmed.

Chronology

Pre-suit (2012–2013). Dr. Mohammed N. Islam, a tenured Univ. of Michigan professor, filed provisional applications on 2012-12-31 while on an unpaid leave of absence; assigned the resulting patents to Omni on 2013-12-17 (Fed. Cir. Op., Omni MedSci v. Apple, Nos. 20-1715/-1716 (Fed. Cir. Aug. 2, 2021)).

Filing & pleadings. Complaint filed 2018-04-06 in E.D. Tex. (Marshall), No. 2:18-cv-00134-RWS, assigned to Judge Robert W. Schroeder III, jury demand, asserting the Apple Watch (Series 1–4). EDTX civil docket sheet (Ex. 2113 in IPR2019-00911) confirms filing date and termination "10/02/2019." A second EDTX suit, 2:18-cv-429-RWS, followed roughly six months later on the Series 4 Watch, asserting '546, '286, '698, '299 and '113. Apple answered and counterclaimed for declaratory relief (caption lists Apple as "Defendant/Counter-Claimant"); I could not pin the answer date from the materials reviewed. Local Rule 4-2 preliminary claim constructions were served 2018-11-01; Omni's opening claim construction brief 2018-12-20.

Pre-trial motions of substance.

• Transfer (§1404(a)): Apple's motion (Dkt 59; identical motion in the '429 case) was filed six months after suit, briefing was delayed four months by agreement, and Omni moved to stay "on the eve of the Markman hearing." The court resolved both motions by order at ECF 287 (2019-08-23), and the case was transferred to N.D. Cal. on 2019-10-02 (N.D. Cal. order).
• Standing / ownership (Rule 12(b)(1)): Apple moved to dismiss, arguing Dr. Islam's UM employment agreement + Bylaw 3.10 ("shall be the property of the University") automatically vested title in UM, leaving nothing to assign to Omni. Denied at ECF 276 (2019-08-14); reconsideration denied in N.D. Cal. 2019-11-25 (ECF 346); certified for interlocutory appeal under §1292(b) on 2020-02-14 (ECF 354).
• Stay pending IPR: Granted by stipulation in N.D. Cal. on 2019-11-20 (Dkt 219); a further stay pending the interlocutory appeal was entered 2020-04-28 (Dkt 49 in 20-cv-00563).
• No summary-judgment, trial, verdict, JMOL or fee motion appears in the record I reviewed — the case was transferred, stayed, and then overtaken by the PTAB.

Claim construction (Markman). Order issued 2019-06-24, ECF 211 — the last substantive merits ruling in EDTX. It addressed three patents after Omni dismissed the '698 patent claims shortly before the order. Disputed terms included "beam," "pulse rate," "[a plurality of] lenses," "wherein at least a portion of the one or more optical wavelengths is a near-infrared wavelength between 700 nanometers and 2500 nanometers," "modulating at least one of the LEDs," and "configured to be synchronized to the light source." I have the parties' proposed constructions but not the court's adopted constructions in full; those should be pulled from ECF 211 directly.

Discovery milestones with strategic significance. (i) Venue discovery (Apple's documents/witnesses in N.D. Cal.; Omni pointed to Texas prior-art source AMS-TAOS USA); (ii) fact discovery closed in mid-2019, before transfer; (iii) Omni's Final Election of Asserted Claims (2019-05-07) and Apple's Final Election of Asserted Prior Art (2019-07-22) (Valencell, Lisogurski, Park, Asada, Fitbit, Masimo Radical-7/iSpO2, Nellcor, Nonin, Carlson, Mannheimer, etc.); (iv) expert invalidity reports of Dr. Majid Sarrafzadeh; (v) ownership discovery — Dr. Islam's employment agreement, UM OTT files, and UM internal communications on medical-school funding, which drove the standing appeal; (vi) IPR-phase depositions (e.g., Duncan MacFarlane, 2020-04-16).

Appeal on standing — the one merits win Omni kept. On 2021-08-02, a divided Federal Circuit panel (Linn, J., joined by Chen, J.; Newman, J., dissenting) affirmed the denial of Apple's motion to dismiss, holding Bylaw 3.10's "shall be the property of" language was "a statement of intended disposition and a promise of a potential future assignment," not a present automatic transfer, and that UM's separate "I/we hereby assign" Invention Report form showed UM knew how to make a present assignment (Omni MedSci, Inc. v. Apple Inc., Nos. 2020-1715, -1716; FindLaw opinion; Finnegan summary). Apple petitioned for rehearing en banc, supported by university/industry amici (briefs filed 2021-10-13); I could not verify the disposition of that petition in the sources reviewed, and I will not assert one.

Parallel PTAB proceedings and their effect. Apple filed a wave of IPRs on 2019-04-10, including:

• IPR2019-00916 ('533) — instituted 2019-10-18; PO Response 2020-01-31; Final Written Decision 2020-10-14 holding claims 5, 7–10, 13, 15–17 unpatentable as obvious; affirmed sub nom. No. 21-1229, 2022 WL 2062168 (Fed. Cir. 2022-06-08) (Samsung petition exhibit list).
• IPR2019-00914 ('286) and IPR2019-00917 ('040) — instituted (Paper 13 and Paper 14, respectively).
• IPR2019-00910 / -00911 — additional 2019-04-10 petitions (patent-by-patent mapping not confirmed here).
• IPR2020-00029 ('546) — instituted (Paper 7); IPR2020-00175 ('299) — instituted 2020-06-17, FWD 2021, affirmed by the Federal Circuit in No. 21-2213.

Effect on the litigation: the N.D. Cal. actions were stayed pending these IPRs and then pending the §1292(b) appeal. Critically, the '533 claims were cancelled, and Omni stipulated to dismissal with prejudice of the '040 and '286 claims on 2020-01-21/22 in No. 19-cv-05924-YGR (stipulation).

Related '484 front (N.D. Cal. No. 20-cv-00563-YGR). Omni asserted the later-issued '484 patent: IPR2021-00453 instituted 2021-08-06; first FWD 2022-08-03 (claims 1, 2, 7, 15–23 unpatentable; claims 3–6, 8–14 not shown); Federal Circuit reversed and remanded on 2024-06-21, No. 23-1034, 2024 WL 3084509 (opinion); on remand the Board held all remaining claims unpatentable on 2025-02-14; Omni noticed appeal 2025-04-11, and that appeal (No. 25-1646) was still pending as of the 2025 filings.

Final disposition / present posture. There was no trial, verdict, or damages award in 2:18-cv-00134. The case was terminated in E.D. Tex. by transfer on 2019-10-02; in N.D. Cal. it was stayed, its '040/'286 claims were dismissed with prejudice (Jan. 2020), its '533 claims were cancelled by the PTAB (2020) and that cancellation affirmed (2022), and Omni's standing win on appeal (2021) proved pyrrhic because the asserted claims no longer existed. I did not locate a terminal judgment entry for the transferred N.D. Cal. cases in the materials reviewed, so I would describe the '134 matter as functionally concluded rather than formally adjudicated.

Aftermath (2024–2026), including the renewed Apple dispute. Omni relaunched its campaign on newer family members: Samsung (E.D. Tex. 2:24-cv-01070), Oura (2:26-cv-00289, filed 2026-04-10), Fossil (2:26-cv-00470, filed 2026-06-12), and a new W.D. Tex. action against Apple, No. 7:26-cv-00226, asserting US 12,268,475 ('475, issued 2025-04-08) (complaint). Parallel PTAB activity includes Samsung's IPR2025-01249 to -01253 and PGR2025-00063 ('475), and Whoop's IPR2025-01583 (on the '722 patent). In PGR2025-00063 the Board denied Omni's discretionary-denial request (2025-12-01), and a related IPR was later terminated/refunded (2026-04-10), consistent with a separate PGR proceeding going forward.

Sources/gaps. Primary documents are located via Docket Alarm PTAB exhibit collections, CourtListener/Justia (N.D. Cal. dockets), and the Federal Circuit opinion; I did not have direct PACER access to the full 2:18-cv-00134 docket, so the answer/counterclaim date, the Markman hearing date, the court's adopted constructions, and the exact closing docket entry in N.D. Cal. remain unverified and should be confirmed against PACER (docket sheet attached as Ex. 2113 in IPR2019-00911 is a good starting point).

I'll research press coverage across the case angles given.

Press coverage of Omni MedSci v. Apple

The 2021 Federal Circuit ownership ruling drew the widest coverage — and it was framed as an Apple Watch story, not a Texas docket story. The listed outlets cluster around the August 2, 2021 split panel decision on standing. MacRumors reported that day that Apple "must face a patent infringement lawsuit over the heart rate technology in the Apple Watch," relaying Reuters' account that Apple met Omni between 2014 and 2016 over a possible partnership before using four Omni patents anyway; MacRumors added color not in the opinion — that founder Mohammed Islam owns six companies, holds 150+ patents, previously sued Fujitsu, Alcatel-Lucent, Huawei, Nokia and Siemens, and was described as a "poster child for a patenting professional," and that Omni sought an injunction against Apple Watch sales plus damages. It also carried counsel's quote to Reuters that Omni was "pleased but not surprised." MacTech and Gadgets Now/IANS ran similar Reuters-derived pieces quoting Judge Linn's holding that the University of Michigan agreement "did not effectuate a present automatic assignment of title to UM." Notably, Bloomberg Law's abstract ("Apple Loses Appeal of Ownership Fight Over Health Sensor Patent," Aug. 3, 2021) is the one mainstream account that names the patents — US 9,651,533 and 9,861,286 — which corroborates the earlier section's point that the press never identified US 9,995,722 with this case.

The en banc aftermath and the 2024 appellate round were covered in legal trade press. Law360's case page indexes four items: "Split Fed. Circ. Keeps Patent Case Against Apple Alive" (Aug. 2, 2021); "Apple Wants Fed. Circ. To Rethink Refusal To Toss Patent Suit" (Sept. 16, 2021), reporting Apple's argument that the ruling "retroactively puts the ownership rights of 'countless' patents in jeopardy"; "Full Fed. Circ. Told To Nix Apple's Bid To Get IP Suit Tossed" (Oct. 18, 2021), on Omni's en banc opposition; and "Fed. Circ. Tosses Apple's Bid To Kill Professor's IP Rights Suit" (Nov. 18, 2021) — headline language that strongly implies denial of rehearing en banc, which would close the gap the earlier section flagged as unverified (Law360 is paywalled, so I could only read headlines, not the underlying orders). Separately, the June 21, 2024 Apple v. Omni MedSci decision on the '484 patent — a different patent from those asserted in 2:18-cv-00134 — was covered by Patently-O, which used Judge Albright's first sitting-by-designation opinion as a vehicle for discussing how Axonics v. Medtronic limits PTAB discretion to reject petitioner reply-brief claim construction arguments, and by Fenwick's JD Supra post, which emphasized that the unanimous ruling "favored Apple." Neither framed it as news about the 2018 Texas case.

The February 2025 invalidation is where reporting visibly outruns the record. Patently Apple headlined that "a Federal Judge has invalidated an Omni MedSci patent which could open the door for a Blood Glucose solution for Apple Watch." As summarized by aggregators that reproduced it — GeekNews (Spanish) and iPhone Mania (Japanese) — the piece concerned US 10,517,484, held obvious in the PTAB's February 14, 2025 remand decision in IPR2021-00453, with Patently Apple tying Apple's win to its long-rumored non-invasive glucose feature and to Mark Gurman's Bloomberg reporting that the feature is still years away. Two caveats: the decision came from the PTAB, not "a federal judge," and the '484 patent was never asserted in 2:18-cv-00134 — so the piece, while the most widely echoed "Omni v. Apple" story, is about the follow-on N.D. Cal./IPR track rather than this docket. The glucose/market-impact framing is speculation layered on the ruling, not something the Board found.

Law-firm commentary treated the case as an assignments-and-drafting precedent rather than a litigation event. Arnold & Porter (Aug. 4, 2021), Finnegan (Aug. 5, 2021), Winston & Strawn, the ABA Litigation Section, and the Kluwer Patent Blog all read the opinion as a "magic words" warning for employment agreements and M&A diligence, with several noting Judge Newman's dissent that the majority "overturned decades of unchallenged understanding" of UM policy. These are analyses, not reporting, and none discusses the '134 docket's transfer, stays or claim-construction order.

What the press did not report: I found no coverage of the June 24, 2019 Markman order (ECF 211), the §1404(a) transfer to N.D. Cal., the stipulated dismissals of the '040/'286 claims, or any damages figure, settlement, verdict or judgment in 2:18-cv-00134. Every "Omni v. Apple" article I located is either about the Federal Circuit ownership appeal or the '484 IPR — consistent with the earlier conclusion that the '134 case was functionally concluded by transfer and cancellation rather than adjudicated. (One caution on sourcing: PatSnap's litigation page presents a polished narrative of the '484 appeal, but its own party table inverts the parties and labels Omni a "medtech IP holding company"; I would not rely on it.)

Sources

• Exhibit No

• Apple v. Omni MedSci – Wearable Health Sensor Patent Appeal | PatSnap - Your Agentic AI Partner
• Federal Circuit Ruling Underscores Importance Of Clear And Present Assignments Of Patent Right - ARTICLE
• PGR2025-00064, No. 1017 Exhibit - Apple Inc v Omni MedSci, Inc, No 23 01034, ECF 44 Fed Cir June 21, 2 (P.T.A.B. Aug. 5, 2025) - Exhibits:
• Apple Must Face Apple Watch Patent Infringement Lawsuit, Court Rules
• Apple Watchの血糖値測定機能実現に向けた大きな前進——米連邦判事がOmni MedSciの特許を無効と判断 | Reinforz Insight
• Apple Can't Escape Apple Watch Heart Rate Sensor Patent Lawsuit, Court Rules - Skip to Content
• In this interlocutory appeal from the Northern District of California, the Federal Circuit affirmed a holding that the Universit...
• “Shall Be the Property” Is Insufficient in a Contract to Automatically Assign IP Rights - “Shall Be the Property” Is Insufficient in a Contract to Automatically Assign IP Rights
• FINNEGAN
• Federal Circuit Archives - IP UPDATE
• Kluwer Patent Blog

I'll research the counsel of record for Omni MedSci, Inc. in this case.

I have solid initial leads. Let me pull the actual docket sheet and verify the full plaintiff-side roster.

Let me verify the additional names that appeared on the docket (Folsom, Tiller) and check for any other plaintiff-side appearances.

Counsel of Record for Plaintiff Omni MedSci, Inc. — Omni MedSci, Inc. v. Apple Inc., No. 2:18-cv-00134-RWS (E.D. Tex.)

Important framing note: This docket was terminated on 10/02/2019, and the case was a short-lived parallel action to Apple's Northern District of California declaratory-judgment/patent actions (N.D. Cal. Nos. 4:19-cv-05673-YGR, 4:19-cv-05924-YGR, 3:20-cv-00563-YGR) and the PTAB IPRs (IPR2019-00910/00911/00916, IPR2020-00175, IPR2021-00453). The roster below is drawn principally from the certified E.D. Tex. civil docket sheet for this case (Ex. 2112 to IPR2019-00911, Aug. 9, 2019) and from the Federal Circuit's certificate-of-interest filings in Appeal No. 20-1715, which list the trial-court counsel for Omni.

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Lead counsel (primary firm — Brooks Kushman P.C., Southfield, MI)

Omni MedSci is an Ann Arbor, Michigan-based company (principal: Prof. Mohammed N. Islam, University of Michigan), and its patent portfolio litigation has been run out of Brooks Kushman P.C. for years.

Local counsel (Texas) — Ward, Smith & Hill, PLLC, Longview, TX

The docket-sheet OCR also shows a third Ward, Smith & Hill timekeeper (email andrea@wsfirm.com, terminated 09/04/2019) — almost certainly Andrea L. Fair, but the OCR does not render the full name, so I flag it as unconfirmed.

The 09/04/2019 termination of the local-counsel appearances lines up with the wind-down of this action (docket shows case terminated 10/02/2019, before the Feb. 18, 2020 trial setting), with the dispute moving to N.D. Cal.

In-house counsel

None identified. Omni MedSci's principal, Dr. Mohammed Islam, personally attended and participated in PTAB proceedings as the company's principal, but no in-house attorney appears as counsel of record on this docket.

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Two names I could NOT attribute — please verify on PACER before relying on them

The same certified docket sheet contains "represented by" blocks naming:

• David Folsom — Jackson Walker LLP, 6002-B Summerfield Drive, Texarkana, TX (dfolsom@jw.com), with a "PRO SE" notation adjacent to the OCR; and
• Donald E. Tiller — D. Tiller Law PLLC, 1525 Merrimac Circle, Suite 210, Fort Worth, TX.

The OCR extraction I obtained does not make clear which party these entries belong to (the page is a multi-party docket sheet with the plaintiff, counterclaim-defendant, defendant, and counterclaim-plaintiff blocks interleaved). Neither Folsom nor Tiller appears in the Federal Circuit certificates of interest identifying Omni's trial counsel, so I am not representing them as Omni MedSci's counsel. My searches did not resolve their alignment; if this matters to your analysis, the party-attribution should be confirmed against the live PACER docket for 2:18-cv-00134-RWS.

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Companion-phase counsel (context, not this docket)

• In the related N.D. Cal. actions, a Federal Circuit certificate of interest (No. 20-1715) identifies Honigman LLP — J. Michael Huget, Sarah E. Waidelich, Rian C. Dawson — as a firm that appeared in the trial courts for the side not represented by the certifying party. I could not confirm from the sources retrieved whether that appearance was in the N.D. Cal. Omni cases only or also touched the E.D. Tex. docket; do not attribute Honigman to 2:18-cv-00134 without checking PACER.
• Apple's side in this case was Sidley Austin LLP (David L. Anderson as lead, later terminated; David T. Pritikin, Ching-Lee Fukuda, Jeffrey P. Kushan, Vernon Winters, Irene Yang, Kelley Conaty, Hamilton Simpson, Thomas Broughan III, Joshua Fougere, Michael Roberts) plus local counsel Gillam & Smith LLP (Melissa R. Smith, Bobby Lamb) — included here only to confirm that the names above are not Apple's.

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Sourcing and confidence

• High confidence: Lewry (lead), LeRoy, Tuttle, Halan, C. Smith, Gocha, W.E. Thomson, Turner — Brooks Kushman, Southfield; and Ward/Henry as local counsel — all appear either on the certified E.D. Tex. docket sheet for 2:18-cv-00134-RWS reproduced as an IPR exhibit, on Omni's May 7, 2019 Amended Final Election of Asserted Claims in this case, or in Federal Circuit filings.
• Medium confidence: exact bar numbers and email renderings (the OCR of the docket sheet garbles several addresses, e.g., "brookskushman" vs. "brooksksushman").
• Low confidence / unresolved: the Folsom and Tiller entries, the third Ward, Smith & Hill name, and whether Andrew B. Turner appeared in the district court case. Nothing here is sealed-based; the docket sheet itself is public (filed as an IPR exhibit). The case file is closed, so no counsel has appeared since October 2019 and the appearances noted above are the complete historical plaintiff-side roster for this docket.

I'll research Apple's defense team in this case, starting with the docket sheet and firm records.

Good progress. Let me verify the full Apple-side roster and resolve the Folsom/Tiller attribution question.

Let me pull the Apple-side signature blocks and the PTAB power of attorney to fix roles, and check the Markman hearing appearances.

Counsel of Record for Defendant Apple Inc. — Omni MedSci, Inc. v. Apple Inc., No. 2:18-cv-00134-RWS (E.D. Tex.)

Framing. The sole defendant is Apple Inc. The docket caption lists Apple in a dual posture — "Defendant/Counter-Plaintiff" (it answered and counterclaimed for declaratory relief; Omni is styled "Plaintiff/Counter-Defendant"). The case was terminated in E.D. Tex. on 10/02/2019 (transferred to N.D. Cal., where it continued as No. 4:19-cv-05673-YGR). Everything below is drawn from the certified E.D. Tex. civil docket sheet for this case, which is public and was filed as Exhibit 2112 to IPR2019-00911 (docket sheet), plus Apple's Federal Circuit certificates of interest and brief signature blocks in Appeal Nos. 20-1715/-1716. Nothing on the Apple side was filed under seal as to counsel identity, and no attorney has appeared since October 2019 — so this is the complete historical roster for this docket.

Apple's defense was run nationally out of Sidley Austin LLP, with Gillam & Smith LLP (Marshall, Texas) as local counsel.

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National/lead counsel — Sidley Austin LLP

Local counsel — Gillam & Smith, LLP (Marshall, Texas)

In-house counsel

None identified. No Apple in-house attorney appears as counsel of record on this docket in any source I reviewed.

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Two corrections/resolutions to the existing summary

1. The "Folsom and Tiller" puzzle is most likely resolved — and they were not Apple's counsel. The earlier section flagged that the certified docket sheet's OCR showed David Folsom (Jackson Walker LLP, Texarkana) and Donald E. Tiller (D. Tiller Law PLLC, Fort Worth) in ambiguous "represented by / PRO SE" blocks. In the related N.D. Cal. action, Justia/UniCourt list both men — plus Austin mediator Karl Bayer — as "Not Classified By Court" entries, i.e., court-appointed ADR neutrals/mediators on the service list, not party counsel (dockets.justia.com — Donald E. Tiller party search; UniCourt, 4:19-cv-05673). Folsom (a former E.D. Tex. Chief Judge) and Tiller (a retired Texas state judge) are both well-known mediators. That is consistent with the "PRO SE"-flavored OCR artifact and explains why neither appears in any Apple filing. I would not list them as counsel for either side. Treat as high confidence but not PACER-verified.

2. A caution on one search artifact: a Docket Alarm page for IPR2020-00029 surfaced a "PATENT OWNER'S POWER OF ATTORNEY" caption that named Jeffrey P. Kushan, Ching-Lee Fukuda and Thomas A. Broughan III with the line "Attorneys for Omni MedSci, Inc." That caption is an artifact/mislabel in the aggregator's document display. Those three are Apple's counsel, not Omni's — Kushan and Fukuda signed Apple's Federal Circuit briefs as "Counsel for Defendant-Appellant Apple Inc.," and Omni's PTAB power of attorney runs to the Brooks Kushman team. Do not attribute them to the plaintiff. Relatedly, Apple's actual PTAB power of attorney and its district-court trial team are the Sidley names tabled above (Kushan, Fukuda, Broughan, Cover, Conaty, and others).

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Sourcing and confidence

• High confidence (certified E.D. Tex. docket sheet, Ex. 2112 in IPR2019-00911; Apple's Fed. Cir. certificates of interest and brief signature blocks in Nos. 20-1715/-1716): Pritikin, Anderson, Kushan, Fukuda, Broughan, Conaty, Yang, Zarouri/Böll, Lee, Simpson, Cover, Weinberg, Winters, Fougere, Roberts; and Gillam & Smith (M. Smith, B. Lamb, H. Gillam).
• Medium confidence: office-by-office placement and the "terminated" dates (the docket-sheet text I relied on is OCR of an IPR exhibit, and the OCR garbles some addresses/emails — e.g., "bzarouri"/"brooke.boll" renderings). The third Gillam & Smith name is captured only via the Federal Circuit certificate, so his exact district-court appearance date is unconfirmed.
• Unverified / open: the exact date of Apple's answer and counterclaim (not pinned down in the sources reviewed); whether Kelley Conaty formally withdrew from the E.D. Tex. docket or simply went "formerly" of the firm; and any Apple-side attorney who appeared only in the post-transfer N.D. Cal. case. Direct PACER access to the live 2:18-cv-00134-RWS docket would close these gaps; the certified docket sheet (Ex. 2112) is the best free substitute and is the basis for the roster above.