Omni MedSci, Inc. v. Apple Inc.
- Yvonne Rogers
- 4:19-cv-05924
- U.S. District Court · Northern District of California
- 4
In Omni MedSci v. Apple, Judge Rogers granted Apple’s motion to certify standing and jurisdiction rulings for interlocutory appeal.
Apple’s request for interlocutory-appeal certification was granted, and the earlier standing and subject-matter-jurisdiction rulings concerning Omni’s patent claims were certified for appeal. The order also affects the ongoing litigation between Omni MedSci and Apple.
What happened
Omni MedSci sued Apple over patents that had been assigned to Omni by Dr. Mohammed Islam, whose employment agreement with the University of Michigan addressed ownership of inventions. The court had ruled that the agreement did not automatically transfer the patents to the University and therefore did not eliminate Omni’s ability to assert them.
Apple asked the court to certify those rulings for an immediate appeal before the case ended. Omni believed the court had correctly decided the standing issue but did not oppose Apple’s request.
The court granted Apple’s motion and certified the rulings for interlocutory appeal under federal law because they involved an important legal question, reasonable disagreement existed about the contract language, and an appeal could end the case. Judge Rogers entered the order.
The detailed version
- Omni MedSci, Inc. v. Apple Inc. · No. 4:19-cv-05924
- Yvonne Rogers
- Feb. 14, 2020
Background
Apple moved for certification of earlier decisions concerning its motions to dismiss for lack of subject-matter jurisdiction. Those decisions addressed whether Omni MedSci, Inc. had standing—the legal ability to bring the patent claims.
The earlier decisions held that Dr. Mohammed Islam’s employment agreement with the University of Michigan did not automatically transfer ownership of the asserted patents to the University. Instead, the court concluded that the agreement required Dr. Islam to assign his patent rights to the University in the future. Dr. Islam was identified as Omni’s founder and principal, and he had assigned the patents to Omni.
Certification standard
Under 28 U.S.C. § 1292(b), a court may certify an order for interlocutory appeal—a legal appeal before the case is finished—when three conditions are met: the order involves a controlling legal question, there is substantial disagreement about that question, and an immediate appeal could materially advance the end of the litigation.
Court’s analysis
The court found the first condition satisfied because a successful appeal could result in dismissal of the case, and standing and subject-matter jurisdiction are controlling legal issues. It found the second condition satisfied because reasonable legal disagreement existed over whether the contractual language stating that patents “shall be the property of the University” was a present transfer of future patent rights or only a promise to transfer those rights later. The court also noted that the Federal Circuit had not directly addressed the language and that courts had reached different results when interpreting similar language.
The court found the third condition satisfied because a Federal Circuit ruling against Omni on standing would result in dismissal, conserving judicial resources and avoiding potentially unnecessary litigation expenses. The case had already been stayed under a party stipulation while several patent-review proceedings initiated by Apple were pending.
Ruling
The court granted Apple’s unopposed motion and certified the decisions related to Apple’s motions to dismiss for lack of subject-matter jurisdiction, identified as Docket Nos. 151 and 227, for interlocutory appeal under § 1292(b). The order terminated Docket No. 350. The opinion did not itself decide the appeal or change the earlier rulings.
Read the full 4-page opinion on CourtListener, the free public archive maintained by the Free Law Project.