Omni MedSci, Inc. v. Apple Inc.
- Yvonne Rogers
- 4:19-cv-05924
- U.S. District Court · Northern District of California
- 3
In Omni MedSci v. Apple, Judge Rogers denied Apple leave to seek reconsideration, granted sealing requests in part, and denied an outside brief request.
Apple Inc., Omni MedSci, Inc., and the Regents of the University of Michigan; the order also concerns confidential University of Michigan information and the handling of patent-ownership arguments.
What happened
Omni MedSci, Inc. v. Apple Inc. involved Apple’s effort to revisit an earlier ruling that rejected its challenge to the court’s authority based on patent ownership. The case had been transferred from Texas to California.
Apple argued that an agreement involving Omni MedSci’s founder and the University of Michigan immediately transferred the inventions to the university, leaving the founder without the right to sue. The court concluded that the agreement instead described a future assignment and that the earlier court had properly considered the agreement.
Judge Yvonne Gonzalez Rogers denied Apple’s request for permission to seek reconsideration. The court granted in part Apple’s request to seal documents, granted sealing of the earlier Texas order and related papers, denied the Regents of the University of Michigan’s request to file an outside brief, and granted its motion to seal as moot.
The detailed version
- Omni MedSci, Inc. v. Apple Inc. · No. 4:19-cv-05924
- Yvonne Rogers
- Nov. 25, 2019
Background
The court considered Apple Inc.’s request for permission under Civil Local Rule 7-9(a) to file a motion asking the court to reconsider the Texas court’s earlier denial of Apple’s motion to dismiss for lack of subject-matter jurisdiction. The case had been transferred from the Eastern District of Texas to the Northern District of California on October 2, 2019.
The earlier jurisdictional dispute concerned whether Omni MedSci’s founder and president, Mohammed Islam, owned the patents asserted in the lawsuit. Apple argued that Islam’s agreement with the University of Michigan immediately assigned inventions made using university resources to the university. Because the university had not released its rights in the patents, Apple argued that Islam lacked standing to bring the lawsuit.
Reconsideration request
Civil Local Rule 7-9 requires a party seeking permission to request reconsideration to show reasonable diligence and one of several specified circumstances, such as previously unknown material facts or law, new material facts or a change in law, or the court’s failure to consider material facts or controlling law. The rule also prohibits repeating arguments already made in connection with the earlier order.
Apple argued that the Texas court had failed to consider material facts and controlling law when interpreting Islam’s agreement with the university. The court found no such failure. It explained that the words “shall be” ordinarily indicate a promise to assign inventions in the future, rather than an immediate assignment. It also noted that the agreement described “conditions governing assignment” and did not use words showing a present transfer. The court therefore concluded that the Texas court had properly treated the agreement as a future assignment agreement, which did not immediately transfer the patents or eliminate the inventor’s standing.
Other motions and disposition
The court denied Apple’s request for leave to file a motion for reconsideration.
The court found good cause and granted in part Apple’s motion to seal as it related to the University of Michigan’s confidential personnel information and because the motion was not dispositive. The court also granted Apple’s motion to seal the Texas court’s order and related motions. The court denied the Regents of the University of Michigan’s motion to file an outside brief and granted the Regents’ motion to seal as moot. The order terminated Docket Numbers 326, 327, 335, 340, and 341.
Read the full 3-page opinion on CourtListener, the free public archive maintained by the Free Law Project.