Omni MedSci, Inc. has filed a single Eastern District of Texas complaint against Fossil, OnePlus, Oura Health, and Samsung (2:24-cv-01070), alleging infringement of five patents: two new to litigation, two previously asserted against Apple, and one litigated by an associated, but different, plaintiff. The list of accused products here is long, with the plaintiff justifying joinder by pleading that "[b]ecause Samsung, Fossil, OnePlus, and Ōura wearable devices are configured to measure physiological parameters and to transmit associated data signals wirelessly to smartphones and tablets, including Samsung and OnePlus smartphones and tablets, there is significant overlap of the components of the accused systems provided and supported by each Defendant".
Each of the asserted patents (9,055,868; 9,651,533; 10,517,484; 10,874,304; 11,160,455) names as its sole inventor Mohammed N. Islam, "a tenured Professor of Optics and Photonics in the Electrical and Computer Engineering Department, and a Professor of Biomedical Engineering, at the University of Michigan's College of Engineering". The '533 and '484 patents have appeared previously in this campaign, in suits filed against Apple, of which there have been three, one filed in April 2018 in the Eastern District of Texas and subsequently transferred to the Northern District of California (asserting the '533 patent together with the 9,757,040; 9,861,286; and 9,885,698 patents), one filed in October 2018 following the same path (the '286; '698; 10,098,546; 10,188,299; and 10,213,113 patents), and one filed in January 2020 directly in the Northern District of California (targeting the Watch with the '484 patent).
Central to the Apple litigation has been the defendant's motion challenging Omni MedSci's standing to sue in the first place. Apple argued that the University of Michigan, not the plaintiff, owned the asserted patents. District Judge Yvonne Gonzalez Rogers disagreed, as did the Federal Circuit. In August 2021, the appeals court ruled in a precedential decision that "shall assign" language within Islam's employment agreement amounted to a future agreement to assign the patents, not an actual assignment. This reading means 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. For more detailed coverage of this standing dispute, see here.
The first case whittled down to just the '533 patent. Apple filed two Patent Trial and Appeal Board (PTAB) petitions challenging claims from the '698 patent; the parties stipulated to a dismissal with prejudice as to that patent, ending the dispute over it in June 2019, which terminated the PTAB proceedings before institution decisions were handed down. Apple filed a motion for partial summary judgment as to the '286 and '698 patents; the parties then stipulated to their dismissal. After the Federal Circuit affirmed the cancellation of all asserted claims from the '533 patent, the last of the case was dismissed, in August 2022. Likewise, the second case eventually concerned only the '299 patent, the asserted claims of which were cancelled via inter partes review (IPR), prompting an August 2022 end to the suit.
Left standing was the third case, over the '484 patent. In August 2022, the PTAB handed down a final written decision finding claims 1-2, 7, and 15-23 unpatentable but coming to the opposite conclusion with respect to claims 3-6 and 8-14. Appeals were taken, with Western District of Texas Judge Alan D. Albright authoring a first opinion sitting by designation at the Federal Circuit in which the appeals court remanded for further proceedings, in particular to consider claim construction positions that Apple offered in reply. In mid-October, the PTAB held a hearing to consider the scope of the remand; meanwhile, the Northern District of California case remains stayed.
In the new complaint, against all four defendants, Omni MedSci emphasizes alleged infringement of claims 11-12 of the '533 patent; the PTAB canceled claims 5, 7-10, 13, and 15-17 of that patent, in response to Apple's petition for IPR. Omni MedSci asserts the '484 patent against Fossil, OnePlus, and Samsung (but not against Oura), highlighting claims 3 and 8-10. While the '304 patent (against all four defendants) and the '455 patent (against all but Oura) appear to making their litigation debut, the '868 patent has been "litigated" before, albeit very briefly.
In February 2022, Omni MedSci transferred 11 Islam patents to Omni Continuum LLC (formed in Michigan in November 2013), among them the '868 patent, which Omni Continuum moved to Cheetah Omni LLC (formed in Texas in August 2002, naming Islam as its "director") on June 1, 2022. Between September 2001 and June 2022, Cheetah Omni received Islam patents through more than 70 transfers from Islam himself or from Islam controlled entities, including Cheetah Optics, Inc. (formed in Delaware in April 2000), Omni Sciences, Inc. (formed in Michigan in April 2004), and Omni Continuum.
Cheetah Omni has launched four litigation campaigns, one of which remains active today. In one of them, Cheetah Omni asserted the '868 patent against WHOOP, targeting its wearables. The Western District of Texas suit was dismissed without prejudice within three months of its June 2023 filing. On October 16, 2024, Cheetah Omni moved the '868 patent to Omni MedSci, which has now asserted it against all four defendants in the new complaint. In its largest campaign, concerning optical networking, and ending in October 2020, Cheetah Omni hit Samsung, as well as AT&T, Fujitsu, Nokia (Alcatel-Lucent), and Verizon, among others.
Omni Continuum is actively in litigation. It first sued NKT Photonics over one patent, only to drop that case after multiple motions to dismiss the complaint for pleading inadequacies; then, this past April, Omni Continuum refiled against NKT Photonics, this time asserting two different patents. On December 16, 2024, District of Massachusetts Judge Indira Talwani denied a partial motion to dismiss, again for pleading inadequacies.
Omni MedSci was formed in Michigan in October 2010 as part of what it earlier pleaded is "the Omni family of companies, which create, develop, and commercialize Dr. Islam's optical technology in various fields". Omni MedSci's website has identified a director of research—Mike Freeman, "a licensed professional engineer with a broad electronics design and computer programming background"—and a director of engineering—Larry Peterson, "an adjunct professor for 25 years at the University of Michigan". In 2017, Omni MedSci sued Leica Microsystems over several models of microscopes, the case ending in voluntary dismissal after several relatively uneventful months of litigation. Between 2018-2019, Omni MedSci also sued DexCom in a Southern District of California case that was dismissed with prejudice just before claim construction, in light of a settlement.
Davis Firm, PC and Nixon Peabody LLP filed the new complaint for Omni MedSci. It has yet to be assigned to a judge. The plaintiff discloses that it is a subsidiary of Omni Technology Holdings, Inc., yet another "Omni" entity, this one formed in Michigan in October 2013 (and also under Islam's control). 12/20, Eastern District of Texas.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
