DCT

2:18-cv-00429

Omni MedSci Inc v. Apple Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:18-cv-00429, E.D. Tex., 02/26/2019
  • Venue Allegations: Venue is based on allegations that Apple maintains two regular and established places of business in the Eastern District of Texas and offers for sale and sells the accused products in the district.
  • Core Dispute: Plaintiff alleges that Defendant’s Apple Watch products infringe five patents related to using near-infrared light sources and associated signal processing techniques for non-invasive physiological monitoring.
  • Technical Context: The technology concerns optical sensors in wearable devices, a key feature in the consumer market for health and fitness tracking, enabling functions such as heart rate monitoring.
  • Key Procedural History: The complaint notes a separate, pending lawsuit between the parties in the same district involving some of the same patents (Case No. 2:18-cv-00134-RWS). It also alleges a history of communications between Omni MedSci’s principal and Apple personnel from June 2014 to December 2017, during which Apple was allegedly made aware of the patent-pending technology and offered a license, which it declined. This history forms the basis for the willfulness allegation.

Case Timeline

Date Event
2012-12-31 Earliest Patent Priority Date Alleged
2014-06-11 Plaintiff alleges meeting with Apple to discuss technology
2015-02-05 Plaintiff alleges meeting with Apple to discuss technology
2015-04-24 Apple Watch (original/Series 1) first released
2016-07-18 Plaintiff alleges meeting with Apple to discuss technology
2016-09-16 Apple Watch Series 2 released
2017-09-22 Apple Watch Series 3 released
2017-12-21 Plaintiff alleges emailing allowed claims of future patents to Apple
2018-01-09 ’286 Patent Issued
2018-02-06 ’698 Patent Issued
2018-09-21 Apple Watch Series 4 released
2018-10-16 ’546 Patent Issued
2019-01-29 ’299 Patent Issued
2019-02-26 ’113 Patent Issued
2019-02-26 Complaint Filing Date

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 10,098,546 - "Wearable Devices Using Near-Infrared Light Sources"

  • Patent Identification: U.S. Patent No. 10,098,546, "Wearable Devices Using Near-Infrared Light Sources," issued October 16, 2018.

The Invention Explained

  • Problem Addressed: The patent addresses the challenge of obtaining accurate non-invasive physiological measurements from wearable devices, which can be corrupted by noise and other interferences ('546 Patent, Abstract).
  • The Patented Solution: The invention uses a plurality of light emitting diodes (LEDs) to direct a near-infrared optical beam onto a user's tissue. A key aspect of the solution is a signal processing method to improve the signal-to-noise ratio (SNR). This is achieved by capturing a light signal when the LEDs are off (representing background noise) and a second signal when at least one LED is on (representing the physiological signal plus noise), and then "differencing" the two signals to isolate the desired measurement ('546 Patent, Abstract; col. 4:26-34). The invention also proposes improving SNR by increasing the light intensity of the LEDs ('546 Patent, Abstract).
  • Technical Importance: This approach suggests a method for enhancing the accuracy and reliability of physiological sensors, such as heart rate monitors, in consumer wearable devices ('546 Patent, Abstract).

Key Claims at a Glance

  • The complaint asserts independent claim 1, along with dependent claims 2, 4, 5, 7-13, and 15-18 (Compl. ¶39).
  • Essential elements of independent claim 1 include:
    • A wearable device with a measurement device including a light source with multiple LEDs for measuring physiological parameters.
    • The measurement device is configured to generate a modulated optical beam with a near-infrared wavelength.
    • One or more lenses are configured to deliver the optical beam to tissue.
    • A receiver with multiple, spatially separated detectors and one or more analog-to-digital converters.
    • The receiver is configured to capture light while LEDs are off (first signal) and while at least one LED is on (second signal).
    • The measurement device is configured to improve SNR by "differencing the first signal and the second signal and by differencing the two receiver outputs."
    • The device is further configured to improve SNR by increasing LED light intensity.
    • The device is configured to generate an output signal for a non-invasive blood measurement, using in part a "Fourier transform of signals from the receiver."
    • The receiver includes one or more spectral filters.
  • The complaint reserves the right to assert additional claims (Compl. ¶39).

U.S. Patent No. 9,861,286 - "Wearable Devices Using Near-Infrared Light Sources"

  • Patent Identification: U.S. Patent No. 9,861,286, "Wearable Devices Using Near-Infrared Light Sources," issued January 9, 2018.

The Invention Explained

  • Problem Addressed: Similar to the ’546 Patent, this patent addresses the need for accurate physiological monitoring in wearable devices that can communicate with other electronics like smartphones or tablets ('286 Patent, Abstract).
  • The Patented Solution: The invention is a wearable device, for use with a smart phone or tablet, that uses modulated near-infrared LEDs to illuminate tissue. It employs a receiver that captures light during both "LEDs off" and "LEDs on" states to create two distinct signals. The device then "differences" these signals to improve the SNR of the final physiological measurement, a technique designed to cancel out ambient light noise ('286 Patent, Abstract; col. 4:26-34).
  • Technical Importance: This technology suggests a method to make wearable health sensors more robust and accurate in varied lighting conditions by actively measuring and subtracting background noise ('286 Patent, Abstract).

Key Claims at a Glance

  • The complaint asserts independent claim 16 and dependent claim 19 against the Apple Watch Series 4 (Compl. ¶55).
  • Essential elements of independent claim 16 include:
    • A wearable device for use with a smart phone or tablet, comprising a measurement device with multiple LEDs.
    • The device generates a modulated optical beam with a near-infrared wavelength.
    • One or more lenses deliver the beam to tissue.
    • The device is adapted to be placed on a user's wrist or ear.
    • A receiver is configured to capture light while LEDs are off (first signal) and while at least one LED is on (second signal).
    • The device is configured to improve SNR by "differencing the first signal and the second signal."
    • The light source is configured to further improve SNR by increasing LED intensity.
    • The device generates an output signal representing a non-invasive measurement of blood.
    • The receiver includes multiple, spatially separated detectors and at least one analog-to-digital converter.
  • The complaint reserves the right to assert additional claims (Compl. ¶55).

Multi-Patent Capsule: U.S. Patent No. 9,885,698

  • Patent Identification: U.S. Patent No. 9,885,698, "Wearable Devices Using Near-Infrared Light Sources," issued February 6, 2018 (Compl. ¶8).
  • Technology Synopsis: The patent describes a wearable device that uses modulated LEDs to generate a near-infrared optical beam for physiological measurement. It uses spatially separated detectors to capture light when LEDs are on and off, creating first and second data signals which are then differenced to improve the signal-to-noise ratio. The receiver is also configured to use a lock-in technique to detect the modulation frequency (Compl. ¶¶ 73-83).
  • Asserted Claims: Claims 1, 2, 3, and 5 are asserted, with claim 1 being independent (Compl. ¶71).
  • Accused Features: The complaint accuses the Apple Watch Series 4 of infringing the ’698 patent (Compl. ¶¶ 70-71).

Multi-Patent Capsule: U.S. Patent No. 10,188,299

  • Patent Identification: U.S. Patent No. 10,188,299, "System Configured for Measuring Physiological Parameters," issued January 29, 2019 (Compl. ¶9, date corrected).
  • Technology Synopsis: The patent claims a system that includes a light source with LEDs, a lens, and a detection system, along with a separate "personal device" (e.g., an iPhone) and a "remote device." The personal device wirelessly receives the output signal from the detection system, processes it, and transmits it to the remote device (e.g., iCloud), which can then store a history of the physiological parameters (Compl. ¶¶ 88-98).
  • Asserted Claims: Claims 1-9 and 14-20 are asserted, with claim 1 being independent (Compl. ¶86).
  • Accused Features: The complaint accuses the system of Apple Watches, personal devices like the iPhone, and the Apple iCloud service (Compl. ¶¶ 94-96).

Multi-Patent Capsule: U.S. Patent No. 10,213,113

  • Patent Identification: U.S. Patent No. 10,213,113, "Physiological Measurement Device Using Light Emitting Diodes," issued February 26, 2019 (Compl. ¶10).
  • Technology Synopsis: The patent describes a wearable device with at least a first and second LED and a receiver with first and second spatially separated detectors. The device generates distinct optical beams from the LEDs and is configured to receive and compare reflected portions of those beams at the separate detectors to generate an output signal. The device is also configured to modulate at least one LED and synchronize the receiver to that modulation frequency (Compl. ¶¶ 108-118).
  • Asserted Claims: Claims 1-15, 19, 22-27, and 29-31 are asserted, with claim 1 being independent (Compl. ¶106).
  • Accused Features: The complaint accuses the Apple Watches of infringing the ’113 patent (Compl. ¶¶ 105-106).

III. The Accused Instrumentality

Product Identification

  • The accused instrumentalities are Apple Watch models designated as "Series 1," "Series 2," "Series 3 GPS," "Series 3 GPS + Cellular," and "Series 4" watches (collectively, "Watches") (Compl. ¶21). For the ’299 Patent, the accused instrumentality is a system comprising the Watches, a personal device such as an iPhone, and a remote device such as Apple's iCloud service (Compl. ¶¶ 94, 96).

Functionality and Market Context

  • The complaint alleges the Watches are wearable devices that perform non-invasive physiological monitoring, namely heart rate measurement (Compl. ¶22). To do so, they allegedly use a plurality of light emitting diodes, including some that emit near-infrared wavelengths, to illuminate a wearer's skin (Compl. ¶¶ 23-24). The complaint alleges the Watches modulate this light and employ techniques to improve the signal-to-noise ratio, such as increasing the intensity and pulse rate of the LEDs and capturing ambient light while the LEDs are off for subsequent signal processing (Compl. ¶¶ 25, 27-28, 32, 35). A photograph of the back of an Apple Watch shows multiple light-emitting diodes and detectors used for physiological sensing (Compl. p. 8). The Watches are alleged to have at least two detectors, one or more lenses to deliver light, and analog-to-digital converters to process the reflected light received by the detectors (Compl. ¶¶ 29, 31, 33). The Watches are also alleged to be capable of communicating with an Apple smartphone or tablet (Compl. ¶36).

IV. Analysis of Infringement Allegations

’546 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
A wearable device, comprising: a measurement device including a light source comprising a plurality of light emitting diodes (LEDs) for measuring one or more physiological parameters. The Apple Watches are wearable devices that use multiple LEDs to measure heart rate. ¶41 col. 4:5-8
the measurement device configured to generate, by modulating at least one of the LEDs... an optical beam having a plurality of optical wavelengths, wherein at least a portion of the optical beam includes a near-infrared wavelength between 700 nanometers and 2500 nanometers. The Watches modulate their LEDs, which include infrared LEDs, to emit an optical beam with wavelengths in the 700-2500 nm range. ¶42 col. 4:8-15
the measurement device comprising one or more lenses configured to receive and to deliver at least a portion of the optical beam to tissue. The Watches include lenses that deliver the optical beam from the LEDs to the wearer's tissue. ¶43 col. 4:15-18
the measurement device further comprising a receiver, the receiver having a plurality of spatially separated detectors. The Watches include a receiver with multiple, spatially separated photodiode detectors. ¶45 col. 4:19-21
the receiver configured to: capture light while the LEDs are off and convert the captured light into a first signal and capture light while at least one of the LEDs is on and to convert the captured light into a second signal... The receiver in the Watches captures light when the LEDs are off (first signal) and when they are on (second signal). ¶47 col. 4:26-31
the measurement device configured to improve a signal-to-noise ratio of the optical beam... by differencing the first signal and the second signal and by differencing the two receiver outputs. The measurement device in the Watches improves the SNR by differencing the first and second signals and the two receiver outputs. ¶48 col. 4:31-34
the measurement device configured to further improve the signal-to-noise ratio... by increasing the light intensity... from at least one of the LEDs. The measurement device in the Watches improves the SNR by increasing LED brightness. ¶49 col. 4:35-39
the measurement device further configured to generate an output signal representing... a non-invasive measurement on blood contained within the tissue. The measurement device in the Watches generates a signal representing the heart rate from blood in the tissue. ¶50 col. 4:39-42
wherein the output signal is generated at least in part by using a Fourier transform of signals from the receiver... The Watches allegedly apply a Fourier transform to signals from the receiver to help generate the output signal. ¶51 col. 5:8-13
wherein the receiver further comprises one or more spectral filters positioned in front of at least some of the plurality of spatially separated detectors. The Watches allegedly include spectral filters in front of one or more of the Watch lenses. ¶52 col. 5:14-17
  • Identified Points of Contention:
    • Evidentiary Question: The complaint alleges specific signal processing steps, such as "differencing" signals and applying a "Fourier transform" (Compl. ¶¶ 48, 51). The complaint cites Apple marketing materials and third-party patent publications as support. A central question will be whether discovery confirms that the accused products' software and hardware actually perform these specific mathematical operations as required by the claim.
    • Scope Question: What is the scope of "spectral filters positioned in front of at least some of the plurality of spatially separated detectors"? The complaint alleges the filters are on the lenses (Compl. ¶52). The analysis may turn on whether the physical location and function of components in the Apple Watch satisfy this claim language as it would be construed by a court.

’286 Patent Infringement Allegations

Claim Element (from Independent Claim 16) Alleged Infringing Functionality Complaint Citation Patent Citation
A wearable device for use with a smart phone or tablet, the wearable device comprising: a measurement device including a light source comprising a plurality of light emitting diodes (LEDs) for measuring one or more physiological parameters. Apple sells Series 4 Watches, which are wearable devices that use multiple LEDs and are used with smart phones. ¶57 col. 4:3-8
the measurement device configured to generate, by modulating at least one of the LEDs having an initial light intensity. The Series 4 Watch modulates its LEDs, which fluctuate in brightness. ¶58 col. 4:8-10
an optical beam having a plurality of optical wavelengths, wherein at least a portion... is a near-infrared wavelength between 700 nanometers and 2500 nanometers. The Series 4 Watch includes infrared LEDs that emit wavelengths between 700 and 2500 nm. ¶59 col. 4:10-14
the measurement device comprising one or more lenses configured to receive and to deliver a portion of the optical beam to tissue. The Series 4 Watch includes one or more lenses that deliver the optical beam to the user's skin. ¶60 col. 4:14-17
wherein the measurement device is adapted to be placed on a wrist or an ear of a user. The Series 4 Watch is adapted to be placed on a user's wrist. ¶62 col. 4:21-23
the measurement device further comprising a receiver configured to: capture light while the LEDs are off... into a first signal and capture light while at least one of the LEDs is on... into a second signal... The Series 4 Watch includes a receiver with sensors that capture light while the LEDs are off (first signal) and on (second signal). ¶63 col. 4:24-30
the measurement device configured to improve a signal-to-noise ratio of the optical beam... by differencing the first signal and the second signal. The Series 4 Watch allegedly improves the SNR by differencing the first and second signals. ¶64 col. 4:30-34
the light source configured to further improve the signal-to-noise ratio... by increasing the light intensity... from at least one of the LEDs. The Series 4 Watch allegedly improves the SNR by increasing the brightness of its LEDs. ¶65 col. 4:34-38
  • Identified Points of Contention:
    • Technical Question: As with the ’546 patent, a key question is evidentiary. The complaint alleges specific internal operations related to improving SNR by "differencing" signals and increasing LED brightness (Compl. ¶¶ 64-65). The infringement analysis will depend on whether the actual operation of the Series 4 Watch, as revealed in discovery, matches the functions required by the claims.
    • Scope Question: Does the term "adapted to be placed on a wrist or an ear of a user" require more than the mere possibility of placing the device on an ear? The infringement case may explore whether the device is specifically designed or intended for ear placement, although infringement may be found based on the wrist adaptation alone.

V. Key Claim Terms for Construction

  • The Term: "differencing the first signal and the second signal" (from ’546 Patent, Cl. 1 and ’286 Patent, Cl. 16)

  • Context and Importance: This term is central to the patents' claimed method for improving signal-to-noise ratio by cancelling ambient light. The outcome of the case may depend on whether Apple's method of accounting for background light—whatever it may be—falls within the court's construction of "differencing." Practitioners may focus on this term because the complaint's allegations regarding this specific function rely on inference rather than direct evidence of the accused product's internal software operations.

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: The patents' abstracts state generally that the "Signal-to-noise ratio is improved by differencing the first and second signals" ('546 Patent, Abstract; '286 Patent, Abstract). This lack of specific definition in the high-level summary could support a broad interpretation covering any form of mathematical subtraction or comparison between the "LEDs on" and "LEDs off" states.
    • Evidence for a Narrower Interpretation: The specifications do not appear to provide a specific, limiting definition or a unique algorithm for "differencing." A defendant, however, might argue that the term implies a direct, one-to-one subtraction of raw signals, and that a more complex algorithm used in the accused device would not meet this limitation.

  • The Term: "spatially separated detectors" (from ’546 Patent, Cl. 1 and ’286 Patent, Cl. 16)

  • Context and Importance: The physical layout of the sensors on the back of the Apple Watch is a key factual element of the case. The definition of "spatially separated" will be critical to determining if the physical arrangement of Apple's photodiode detectors meets this claim limitation.

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: The plain meaning of the term suggests that the detectors are simply not in the same location. The patent specifications state "the receiver having a plurality of spatially separated detectors" without further explicit limitation ('546 Patent, col. 4:20-21; '286 Patent, col. 4:40-41).
    • Evidence for a Narrower Interpretation: While no explicit definition is provided, a defendant could argue that the context of the invention implies a functional purpose for the separation (e.g., to receive light reflected from different tissue depths or angles). The absence of a specified minimum separation distance, however, may weaken arguments for a narrower construction.

VI. Other Allegations

  • Willful Infringement: The complaint includes a count for willful infringement (Compl. ¶¶ 119-121). The allegation is based on purported pre-suit knowledge stemming from a series of alleged meetings and communications between Omni MedSci's principal, Dr. Islam, and Apple personnel between 2014 and 2017 (Compl. ¶¶ 15-20). The complaint alleges that Dr. Islam disclosed the patent-pending technology, shared published patent applications, and later sent copies of allowed claims for certain patents-in-suit to Apple employees, but that Apple declined to license the technology and ultimately stated it did not "wish to receive any information about any of your IP" (Compl. ¶¶ 19-20, 120).

VII. Analyst’s Conclusion: Key Questions for the Case

  • A key evidentiary question will be one of technical operation: The complaint makes specific allegations about the internal signal processing logic of the Apple Watch, such as "differencing" signals and applying "Fourier transforms." Does discovery of Apple's source code and hardware specifications confirm that the accused devices perform these precise functions, or will it reveal a fundamentally different technical approach to noise cancellation and signal processing?
  • A central issue for the ’299 patent will be one of divided infringement: The patent claims a system comprising a Watch, an iPhone, and iCloud. Can Omni MedSci establish that Apple is liable for infringement of the entire system, either directly or by inducing its customers to assemble and use the system in an infringing manner, or will Apple successfully argue that no single entity performs all the claimed steps?
  • A critical issue for willfulness and damages will be one of state of mind: Given the detailed allegations of pre-suit meetings and correspondence, can Apple persuade the fact-finder that its alleged infringement was not willful, particularly in light of its alleged statement that it did not "wish to receive" further information about Omni MedSci's intellectual property?