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A patent case filed against Apple and its watch products provides some interesting food for thought, says Paul J Sutton of Sutton Magidoff.
Apple is no stranger to being named as either a plaintiff or a defendant in patent infringement lawsuits. It is believed that Apple is sued for infringement several times every year.
Among those who have brought patent suits against Apple are the following: Eastman Kodak Company, Qualcomm Technologies, Samsung Electronics, THX, VirnetX Holding Corporation (in April a Texas jury awarded VirnetX $502.6 million in patent infringement damages against Apple), Nokia Technologies, GPNE, ITUS Corporation, Israeli-based Corephotonics, MEC Resources (wholly owned by Native American tribes Mandan, Hidatsa, and Arikara Nation), Prowire, Universal Secure Registry (a small Massachusetts-based tech company), and most recently, Michigan-based Omni MedSci.
Of course, as can be expected, when Apple is sued it usually rightfully defends itself with all the power and might of a company with the largest market capitalisation of any publicly traded company in the US.
At last count, Apple’s market cap was twice as large as that of number two, Exxon Mobil. This makes the company a formidable opponent with the resources to drive up the costs of litigation. While the median costs associated with a party’s prosecuting or defending a patent infringement lawsuit has risen to $5 million, one would expect these costs to reach far more than that figure when opposed by Apple.
On April 6 Apple’s attorneys Thomas Lewry, John LeRoy, Robert Tuttle, John Halan, and Christopher Smith of the Southfield Michigan-based Brooks Kushman law firm, together with Longview Texas-based attorney John Ward, Jr of the Ward, Smith & Hill firm, executed and filed a complaint for patent infringement on behalf of Ann Arbor Michigan-based Omni MedSci against Apple.
This complaint alleges that Apple’s various watch products infringe four patents owned by Omni MedSci, all of which name Mohammed Islam as inventor. These four patents-in-suit include US numbers 9,651,533, granted on May 16, 2017; 9,757,040, granted on September 12, 2017; 9,861,286, granted on January 9, 2018; and 9,885,698, granted on February 6, 2018.
Inventor Islam is a tenured professor of optics and photonics in the electric and computer engineering department and a professor of biomedical engineering at the University of Michigan’s College of Engineering. Islam’s goal has been to create, develop and commercialise optical technologies to the US defence community and other fields.
"Those monitoring this lawsuit should not be surprised if Apple asks the court to transfer the entire lawsuit to another jurisdiction."
Islam is associated with at least six companies which hold around 150 patents. Thus, Apple will not be facing a novice in this litigation, but rather a sincere and gifted inventor of cutting-edge technology.
In its complaint, Omni MedSci alleges that after Islam invented the subject matter of the four patents-in-suit, during the period between June 2014 and July 2016, he approached and was greeted by employees of defendant Apple. He claims to have had a series of meetings and email exchanges with Apple personnel regarding the technology underlying his then-pending patent applications, including the now-issued patents-in-suit.
During those exchanges, Apple was offered the opportunity to be licensed under, or to acquire, Omni MedSci’s patented and patent-pending technology. Apple declined and as of December 21, 2017 it knew the claim scope of all four patents-in-suit and stated that it did not wish to receive any information about any of the plaintiff’s IP.
Omni MedSci can best be described as a technology startup company whose focus has been on near-infrared and mid-infrared broadband lasers with uses related to physiological parameters, which might explain why the Apple Watch and its heart rate sensor technology are at the centre of this patent infringement lawsuit.
Apple’s accused infringing watches
Omni MedSci asserts that several versions of the Apple Watch infringe its four patents. For example, Apple’s Series 1, Series 2, Series 3 GPS, and Series 3 GPS+Cellular watches are accused infringing targets.
These watches are described in the complaint as having the characteristics of being wearable devices that measure physiological parameters such as heart rate; watches that non-invasively measure heart rate using semiconductor light emitting diodes (LEDs) of near-infrared wavelengths; watches that are able to modulate the light emitted from the LEDs; watches that use a lock-in technique, such as synchronous demodulation to detect modulation frequency; watches capable of improving the signal-to-noise ratio of LED light reflected from the skin by increasing the pulse rate of the LEDs; lens technology that delivers light from the LEDs to a watch wearer’s skin; detector technology for receiving LED light reflected from the skin, and analogue to digital converters that process the reflected light received by the detectors; and the ability of such watches to communicate the foregoing with an Apple smartphone or tablet.
One infringes a patent by making, using, offering for sale, or selling something that the patent lawfully claims as its invention. Omni MedSci accuses Apple in this lawsuit of doing all these things. The first four counts of the complaint correspond to the four patents-in-suit, while a fifth count asserts that Apple’s infringement has been wilful, based on the communications and meetings between Islam and Apple personnel.
Apple’s watches have certainly received the advertising and public relations resources that portray the products as revolutionary and possessing lifestyle-changing features. A visit to Apple’s apple.com website illustrates its watches as enabling their wearers to, among other things, (i) take a call while out on the water; (ii) instruct Siri to send messages;
(iii) stream the user’s favourite songs among 45 million available songs with Apple Music while on the run; (iv) make calls and send texts with just the watch; (v) get alerts from the user’s favourite apps; (vi) instruct Siri to set reminders, send calendar invitations, obtain travel directions, monitor hydration, monitor and improve sleep habits and general health; and (vii) most relevant to the patents-in-suit, keep tabs on the wearer’s resting, walking and workout heart rates. Apple boasts that all this is accomplished without the need to carry or stay connected to one’s phone.
The original Apple Watch, introduced on April 24, 2015, included a heart rate sensor, indicating an intent to advance health-related sensors over time. Apple’s development of its line of watches certainly began well before this 2015 launch date.
The improvements featured in its watch product evolution have included and expanded on the heart rate capability.
As for Apple’s boasts about the wearer’s ability to remain connected without carrying a smartphone, this feature was already available and featured in Samsung’s Gear line of watches and probably reflects an intention to catch up from being behind in the marketplace.
The significance of Apple’s early watch development relates to the effective filing date(s) of Omni MedSci’s patents-in-suit. The first of these patents, while granted as a continuation patent on May 16, 2017, is based on and claims the benefit of a December 17, 2013 parent application filing date. It is the first of the plaintiff’s patents to focus on a wearable measurement device for measuring one or more physiological parameters.
Omni MedSci filed its patent lawsuit against Apple in the US District Court for the Eastern District of Texas, Marshall Division. This court has been recognised as the most patent-friendly haven for owners of patents seeking to enforce them against infringers. During 2015 the number of patent cases filed in Marshall exceeded 2,500.
The majority of patent infringement lawsuits filed in the Eastern District are filed before or heard in Marshall by District Judge James Rodney Gilstrap and Magistrate Judge Roy Payne.
Marshall has become known as ‘the town that patent trolls built’, given the vast number of lawsuits filed by such companies, sometimes referred to as non-practising entities. This, however, is expected to change, now that the US Supreme Court, in the TC Heartland v Kraft Foods decision, has ruled unanimously that patent holders will no longer be allowed to arbitrarily choose where infringement lawsuits may be filed.
This is bad news for the many businesses in Marshall that have come to rely on the presence of teams of lawyers to patronise them.
It is expected that Apple will defend itself in the Omni MedSci lawsuit by, first, denying patent infringement and, second, by attacking the validity of the four patents-in-suit. Apple will probably include in its answer to the complaint at least one affirmative defence in which it will seek a court judgment of patent invalidity. Those monitoring this lawsuit should not be surprised if Apple asks the court to transfer the entire lawsuit to another jurisdiction, such as a California federal district court near Apple’s headquarters.
In fact, Apple itself is the owner of several US patents and patent applications directed to its line of Apple Watches. Suffice to say, this lawsuit will represent another of the many opportunities for patent litigators to enjoy the fruits of the enormous fees required to prosecute and defend suits brought by the owners of US patents.
While the number of patent cases filed during any year may vary, there will always be a need for patent owners to enforce their rights against infringers, or risk losing those rights.
Paul J Sutton is a founding partner of IP boutique law firm Sutton Magidoff. As adjunct professor at NYU’s Polytechnic Institute, he teaches the courses of intersections of law, business, engineering and psychology; and IP strategies for engineers and scientists. He can be contacted at: email@example.com
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