Case 2:18-cv-00134-RWS Document 38 Filed 07/19/18 Page 1 of 32 PageID #: 425
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`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`Omni MedSci, Inc.,
`
`Plaintiff/Counter Defendant,
`
`vs.
`
`Apple Inc.
`
`Defendant/Counter Claimant.
`
`Civil Action No. 2:18-cv-00134
`Jury Trial Demanded
`
`
`DEFENDANT AND COUNTER CLAIMANT APPLE INC.’S AMENDED ANSWER,
`AFFIRMATIVE DEFENSES, AND COUNTERCLAIMS TO COMPLAINT OF
`PLAINTIFF AND COUNTER DEFENDANT OMNI MEDSCI, INC.
`
`
`
`Defendant/Counter Claimant Apple Inc. (“Apple”) hereby amends its Answer, affirmative
`
`defenses, and Counterclaims to the Complaint of Plaintiff/Counter Defendant Omni MedSci, Inc.
`
`(“Omni MedSci”) filed on April 6, 2018 (“Complaint”). Each of the paragraphs below
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`corresponds to the same-numbered paragraph in the Complaint. Apple denies all allegations in
`
`the Complaint, whether express or implied, that are not specifically admitted below. Apple further
`
`denies that Omni MedSci is entitled to the requested relief or any other relief.
`
`THE PARTIES
`
`1.
`
`Apple admits that Omni MedSci purports to be a Michigan corporation having its
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`principal place of business at 1718 Newport Creek Drive, Ann Arbor, Michigan 48103. Apple
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`lacks knowledge or information sufficient to form a belief as to the truth of the remaining
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`allegations in this paragraph and therefore denies the same.
`
`2.
`
`Apple admits that it is a California corporation having its principal place of business
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`in Cupertino, California. Apple admits it may be served with process through its registered agent
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`for service of process.
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`1
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`IPR 2020-00175
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`JURISDICTION AND VENUE
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`3.
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`Apple admits that the Complaint purports to state a claim for patent infringement
`
`under the Patent Laws of the United States, but denies that the claim has any merit. Apple
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`admits that this Court has subject matter jurisdiction under 28 U.S.C. §§ 1331 and 1338. Apple
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`denies any remaining allegations in this paragraph.
`
`4.
`
`Apple admits that this Court has personal jurisdiction over it in this particular
`
`action. Apple admits that venue in this District is proper under 28 U.S.C. §§ 1400(b), but denies
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`that venue is convenient for this case. Apple admits it has lawfully transacted business in this
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`District but denies that it has committed the alleged infringement in this District or elsewhere.
`
`Apple denies any remaining allegations of this paragraph.
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`THE PATENTS-IN-SUIT
`
`5.
`
`Apple admits that U.S. Patent No. 9,651,533 (“the ’533 Patent”) was issued by the
`
`U.S. Patent and Trademark Office (“USPTO”) on May 16, 2017. Apple admits that a purported
`
`copy of the ’533 Patent is attached to the Complaint as Exhibit A. Apple admits that Mohammed
`
`N. Islam is identified on the cover of the ’533 Patent as an inventor. Apple lacks knowledge or
`
`information sufficient to form a belief as to the truth of the remaining allegations in this paragraph,
`
`and therefore denies the same.
`
`6.
`
`Apple admits that U.S. Patent No. 9,757,040 (“the ’040 Patent”) was issued by the
`
`USPTO on September 12, 2017. Apple admits that a purported copy of the ’040 Patent is attached
`
`to the Complaint as Exhibit B. Apple admits that Mohammed N. Islam is identified on the cover
`
`of the ’040 Patent as an inventor. Apple lacks knowledge or information sufficient to form a belief
`
`as to the truth of the remaining allegations in this paragraph, and therefore denies the same.
`
`7.
`
`Apple admits that U.S. Patent No. 9,867,286 (“the ’286 Patent”) was issued by the
`
`USPTO on January 9, 2018. Apple admits that a purported copy of the ’286 Patent is attached to
`
`
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`Case 2:18-cv-00134-RWS Document 38 Filed 07/19/18 Page 3 of 32 PageID #: 427
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`the Complaint as Exhibit C. Apple admits that Mohammed N. Islam is identified on the cover of
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`the ’286 Patent as an inventor. Apple lacks knowledge or information sufficient to form a belief
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`as to the truth of the remaining allegations in this paragraph, and therefore denies the same.
`
`8.
`
`Apple admits that U.S. Patent No. 9,885,698 (“the ’698 Patent”) was issued by the
`
`USPTO on February 6, 2018. Apple admits that a purported copy of the ’698 Patent is attached to
`
`the Complaint as Exhibit D. Apple admits that Mohammed N. Islam is identified on the cover of
`
`the ’698 Patent as an inventor. Apple lacks knowledge or information sufficient to form a belief
`
`as to the truth of the remaining allegations in this paragraph, and therefore denies the same.
`
`9.
`
`Apple admits that the Complaint purports to state a claim for patent infringement
`
`of the ’533 Patent, the ’040 Patent, the ’286 Patent, and the ’698 Patent.
`
`10.
`
`Apple lacks knowledge or information sufficient to form a belief as to the truth of
`
`the allegations in this paragraph, and therefore denies the same.
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`BACKGROUND FACTS
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`11.
`
`Apple lacks knowledge or information sufficient to form a belief as to the truth of
`
`the allegations in this paragraph, and therefore denies the same.
`
`12.
`
`Apple lacks knowledge or information sufficient to form a belief as to the truth of
`
`the allegations in this paragraph, and therefore denies the same.
`
`13.
`
`At the present time, Apple lacks knowledge or information sufficient to form a
`
`belief as to the truth of the allegations in this paragraph, and therefore denies the same.
`
`14.
`
`Apple admits that Dr. Islam met with Dr. Michael O’Reilly in June of 2014. At the
`
`present time, Apple lacks knowledge or information sufficient to form a belief as to the truth of
`
`the allegations in this paragraph, and therefore denies the same.
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`
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`15.
`
`Apple admits that Dr. Islam met with certain Apple employees in February of 2015.
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`At the present time, Apple lacks knowledge or information sufficient to form a belief as to the
`
`truth of the remaining allegations in this paragraph, and therefore denies the same.
`
`16.
`
`At the present time, Apple lacks knowledge or information sufficient to form a
`
`belief as to the truth of the allegations in this paragraph, and therefore denies the same.
`
`17.
`
`Apple admits that Dr. Islam met with certain Apple employees in July of 2016. At
`
`the present time, Apple lacks knowledge or information sufficient to form a belief as to the truth
`
`of the remaining allegations in this paragraph, and therefore denies the same.
`
`18.
`
`At the present time, Apple lacks knowledge or information sufficient to form a
`
`belief as to the truth of the allegations in this paragraph, and therefore denies the same.
`
`19.
`
`Denied.
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`APPLE’S ACCUSED APPLE WATCH PRODUCTS
`
`20.
`
`Apple admits that it has made and sold several models of its Apple Watch
`
`product, including, for example, “Series 1,” “Series 2,” “Series 3 GPS,” and “Series 3 GPS +
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`Cellular” watches (collectively, “Apple Watches”). Apple admits that Apple’s website,
`
`https://www.apple.com/watch/compare/, contains information about Apple Watches. Apple
`
`admits that images of watches purported to be exemplary Apple Watches are shown in paragraph
`
`20 of the Complaint. Apple denies the rest of allegations in paragraph 20, and specifically denies
`
`that it committed any act of infringement.
`
`21.
`
`Apple admits that the Apple Watches are wearable devices that are able to measure
`
`heart rate.
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`22.
`
`Apple admits that Apple Watches measure heart rate non-invasively and include
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`semiconductor light emitting diodes (“LEDs”).
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`
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`23.
`
`At the present time, Apple lacks knowledge or information sufficient to form a
`
`belief as to the truth of the allegations in this paragraph, and therefore denies the same.
`
`24.
`
`At the present time, Apple lacks knowledge or information sufficient to form a
`
`belief as to the truth of the allegations in this paragraph, and therefore denies the same.
`
`25.
`
`At the present time, Apple lacks knowledge or information sufficient to form a
`
`belief as to the truth of the allegations in this paragraph, and therefore denies the same.
`
`26.
`
`At the present time, Apple lacks knowledge or information sufficient to form a
`
`belief as to the truth of the allegations in this paragraph, and therefore denies the same.
`
`27.
`
`At the present time, Apple lacks knowledge or information sufficient to form a
`
`belief as to the truth of the allegations in this paragraph, and therefore denies the same.
`
`28.
`
`At the present time, Apple lacks knowledge or information sufficient to form a
`
`belief as to the truth of the allegations in this paragraph, and therefore denies the same.
`
`29.
`
`At the present time, Apple lacks knowledge or information sufficient to form a
`
`belief as to the truth of the allegations in this paragraph, and therefore denies the same.
`
`30.
`
`At the present time, Apple lacks knowledge or information sufficient to form a
`
`belief as to the truth of the allegations in this paragraph, and therefore denies the same.
`
`31.
`
`At the present time, Apple lacks knowledge or information sufficient to form a
`
`belief as to the truth of the allegations in this paragraph, and therefore denies the same.
`
`32.
`
`At the present time, Apple lacks knowledge or information sufficient to form a
`
`belief as to the truth of the allegations in this paragraph, and therefore denies the same.
`
`33.
`
`Apple admits that the Apple Watches can communicate with an Apple smart phone
`
`or tablet.
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`
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`5
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`COUNT 1 – INFRINGEMENT OF THE ‘533 PATENT
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`34.
`
`Apple repeats and realleges its responses to the foregoing paragraphs as if fully set
`
`forth herein.
`
`35.
`
`36.
`
`37.
`
`38.
`
`Denied.
`
`Denied.
`
`Denied.
`
`Apple admits that Claim 5 of the ‘533 patent recites, among other things, “A
`
`measurement system comprising: a light source comprising a plurality of semiconductor sources
`
`that are light emitting diodes.” Apple denies the remaining allegations in Paragraph 38, and
`
`specifically denies that it commits any acts of infringement.
`
`39.
`
`Apple admits that Claim 5 of the ‘533 patent recites, among other things, “the light
`
`emitting diodes configured to generate an output optical beam with one or more optical
`
`wavelengths, wherein at least a portion of the one or more optical wavelengths is a near-infrared
`
`wavelength between 700 nanometers and 2500 nanometers.” Apple denies the remaining
`
`allegations in Paragraph 39, and specifically denies that it commits any acts of infringement.
`
`40.
`
`Apple admits that Claim 5 of the ‘533 patent recites, among other things, “the light
`
`source configured to increase signal-to-noise ratio by increasing a light intensity from at least one
`
`of the plurality of semiconductor sources and by increasing a pulse rate of at least one of the
`
`plurality of semiconductor sources.” Apple denies the remaining allegations in Paragraph 40, and
`
`specifically denies that it commits any acts of infringement.
`
`41.
`
`Apple admits that Claim 5 of the ‘533 patent recites, among other things, “an
`
`apparatus comprising a plurality of lenses configured to receive a portion of the output optical
`
`beam and to deliver an analysis output beam to a sample.” Apple denies the remaining allegations
`
`in Paragraph 41, and specifically denies that it commits any acts of infringement.
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`42.
`
`Apple admits that Claim 5 of the ‘533 patent recites, among other things, “a receiver
`
`configured to receive and process at least a portion of the analysis output beam reflected or
`
`transmitted from the sample and to generate an output signal.” Apple denies the remaining
`
`allegations in Paragraph 42, and specifically denies that it commits any acts of infringement.
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`43.
`
`Apple admits that Claim 5 of the ‘533 patent recites, among other things, “wherein
`
`the receiver is configured to be synchronized to the light source.” Apple denies the remaining
`
`allegations in Paragraph 43, and specifically denies that it commits any acts of infringement.
`
`44.
`
`Apple admits that Claim 5 of the ‘533 patent recites, among other things, “a
`
`personal device comprising a wireless receiver, a wireless transmitter, a display, a microphone, a
`
`speaker, one or more buttons or knobs, a microprocessor and a touch screen, the personal device
`
`configured to receive and process at least a portion of the output signal, wherein the personal
`
`device is configured to store and display the processed output signal.” Apple denies the remaining
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`allegations in Paragraph 44, and specifically denies that it commits any acts of infringement.
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`45.
`
`Apple admits that Claim 5 of the ‘533 patent recites, among other things, “wherein
`
`at least a portion of the processed output signal is configured to be transmitted over a wireless
`
`transmission link.” Apple denies the remaining allegations in Paragraph 45, and specifically denies
`
`that it commits any acts of infringement.
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`46.
`
`Apple admits that Claim 5 of the ‘533 patent recites, among other things, “a remote
`
`device configured to receive over wireless transmission link an output comprising the at least a
`
`portion of the processed output signal, to process the received output status to generate processed
`
`data and to store the processed data.” Apple denies the remaining allegations in Paragraph 46, and
`
`specifically denies that it commits any acts of infringement.
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`7
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`COUNT 2 – INFRINGEMENT OF THE ‘040 PATENT
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`47.
`
`Apple repeats and realleges its responses to the foregoing paragraphs as if fully set
`
`forth herein.
`
`48.
`
`49.
`
`50.
`
`Denied.
`
`Denied.
`
`Apple denies the allegations of infringement in this paragraph and paragraphs 51-
`
`62. Apple specifically denies that it commits any acts of infringement.
`
`51.
`
`Apple admits that Claim 1 of the ‘040 patent recites, among other things, “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 denies the remaining allegations in
`
`Paragraph 51, and specifically denies that it commits any acts of infringement.
`
`52.
`
`Apple admits that Claim 1 of the ‘040 patent recites, among other things, “the
`
`measurement device configured to generate, by modulating at least one of the LEDs having an
`
`initial light intensity.” Apple denies the remaining allegations in Paragraph 52, and specifically
`
`denies that it commits any acts of infringement.
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`53.
`
`Apple admits that Claim 1 of the ‘040 patent recites, among other things, “an input
`
`optical beam having one or more optical wavelengths, wherein at least a portion of the one or more
`
`optical wavelengths is a near-infrared wavelength between 700 nanometers and 2500 nanometers.”
`
`Apple denies the remaining allegations in Paragraph 53, and specifically denies that it commits
`
`any acts of infringement.
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`54.
`
`Apple admits that Claim 1 of the ‘040 patent recites, among other things, “the
`
`measurement device comprising one or more lenses configured to receive and to deliver a portion
`
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`of the input optical beam to tissue.” Apple denies the remaining allegations in Paragraph 54, and
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`specifically denies that it commits any acts of infringement.
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`55.
`
`Apple admits that Claim 1 of the ‘040 patent recites, among other things, “wherein
`
`the tissue reflects at least a portion of the input optical beam delivered to the tissue.” Apple denies
`
`the remaining allegations in Paragraph 55, and specifically denies that it commits any acts of
`
`infringement.
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`56.
`
`Apple admits that Claim 1 of the ‘040 patent recites, among other things, “the
`
`measurement device further comprising a reflective surface configured to receive and redirect at
`
`least a portion of light reflected from the tissue.” Apple denies the remaining allegations in
`
`Paragraph 56, and specifically denies that it commits any acts of infringement.
`
`57.
`
`Apple admits that Claim 1 of the ‘040 patent recites, among other things, “the
`
`measurement device further comprising a receiver configured to: capture light while the LEDs are
`
`off and convert the captured light into a first signal and captured light while at least one of the
`
`LEDs is on and convert the captured light into a second signal, the captured light including at least
`
`a portion of the input optical beam reflected from the tissue.” Apple denies the remaining
`
`allegations in Paragraph 57, and specifically denies that it commits any acts of infringement.
`
`58.
`
`Apple admits that Claim 1 of the ‘040 patent recites, among other things, “the
`
`measurement device configured to improve a signal-to-noise ratio of the input optical beam
`
`reflected from the tissue by differencing the first signal and the second signal.” Apple denies the
`
`remaining allegations in Paragraph 58, and specifically denies that it commits any acts of
`
`infringement.
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`59.
`
`Apple admits that Claim 1 of the ‘040 patent recites, among other things, “the light
`
`source configured to further improve the signal-to-noise ratio of the input optical beam reflected
`
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`from the tissue by increasing the light intensity relative to the initial light intensity from at least
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`one of the LEDs.” Apple denies the remaining allegations in Paragraph 59, and specifically denies
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`that it commits any acts of infringement.
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`60.
`
`Apple admits that Claim 1 of the ‘040 patent recites, among other things, “the
`
`measurement device further configured to generate an output signal representing at least in part a
`
`non-invasive measurement on blood contained within the tissue.” Apple denies the remaining
`
`allegations in Paragraph 60, and specifically denies that it commits any acts of infringement.
`
`61.
`
`Apple admits that Claim 1 of the ‘040 patent recites, among other things, “the
`
`wearable device configured to communicate with the smart phone or tablet.” Apple admits that
`
`Apple Watches can communicate with an Apple smart phone or tablet. Apple denies the
`
`remaining allegations in Paragraph 61, and specifically denies that it commits any acts of
`
`infringement.
`
`62.
`
`Apple admits that Claim 1 of the ‘040 patent recites, among other things, “the smart
`
`phone or tablet comprising a wireless receiver, a wireless transmitter, a display, a voice input
`
`module, a speaker, and a touch screen, the smart phone or tablet configured to receive and to
`
`process at least a portion of the output signal, wherein the smart phone or tablet is configured to
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`store and display the processed output signal, wherein at least a portion of the processed output
`
`signal is configured to be transmitted over a wireless transmission link.” Apple denies the
`
`remaining allegations in Paragraph 62, and specifically denies that it commits any acts of
`
`infringement.
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`COUNT 3 – INFRINGEMENT OF THE ‘286 PATENT
`
`63.
`
`Apple repeats and realleges its responses to the foregoing paragraphs as if fully set
`
`forth herein.
`
`64.
`
`Denied.
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`65.
`
`66.
`
`Denied.
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`Apple denies the allegations of infringement in this paragraph and paragraphs 67-
`
`78. Apple specifically denies that it commits any acts of infringement.
`
`67.
`
`Apple admits that Claim 16 of the ‘286 patent recites, among other things, “A
`
`wearable device for use with a smart phone or tablet, the wearable device comprising: a
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`measurement device including a light source comprising a plurality of light emitting diodes (LEDs)
`
`for measuring one or more physiological parameters.” Apple denies the remaining allegations in
`
`Paragraph 67, and specifically denies that it commits any acts of infringement.
`
`68.
`
`Apple admits that Claim 16 of the ‘286 patent recites, among other things, “the
`
`measurement device configured to generate, by modulating at least one of the LEDs having an
`
`initial light intensity.” Apple denies the remaining allegations in Paragraph 68, and specifically
`
`denies that it commits any acts of infringement.
`
`69.
`
`Apple admits that Claim 16 of the ‘286 patent recites, among other things, “an
`
`optical beam having a plurality of optical wavelengths, is a near-infrared wavelength between 700
`
`nanometers and 2500 nanometers.” Apple denies the remaining allegations in Paragraph 69, and
`
`specifically denies that it commits any acts of infringement.
`
`70.
`
`Apple admits that Claim 16 of the ‘286 patent recites, among other things, “the
`
`measurement device comprising one or more lenses configured to receive and to deliver a portion
`
`of the optical beam to tissue.” Apple denies the remaining allegations in Paragraph 70, and
`
`specifically denies that it commits any acts of infringement.
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`71.
`
`Apple admits that Claim 16 of the ‘286 patent recites, among other things, “wherein
`
`the tissue reflects at least a portion of the optical beam delivered to the tissue.” Apple denies the
`
`
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`remaining allegations in Paragraph 71, and specifically denies that it commits any acts of
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`infringement.
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`72.
`
`Apple admits that Claim 16 of the ‘286 patent recites, among other things, “wherein
`
`the measurement device is adapted to be placed on a wrist or an ear of a user.” Apple denies the
`
`remaining allegations in Paragraph 72, and specifically denies that it commits any acts of
`
`infringement.
`
`73.
`
`Apple admits that Claim 16 of the ‘286 patent recites, among other things, “the
`
`measurement device further comprising a 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 convert the captured light into a second signal, the captured light including at least a
`
`portion of the optical beam reflected from the tissue.” Apple denies the remaining allegations in
`
`Paragraph 73, and specifically denies that it commits any acts of infringement.
`
`74.
`
`Apple admits that Claim 16 of the ‘286 patent recites, among other things, “the
`
`measurement device configured to improve a signal-to-noise ratio of the optical beam reflected
`
`from the tissue by differencing the first signal and the second signal.” Apple denies the remaining
`
`allegations in Paragraph 74, and specifically denies that it commits any acts of infringement.
`
`75.
`
`Apple admits that Claim 16 of the ‘286 patent recites, among other things, “the light
`
`source configured to further improve the signal-to-noise ratio of the optical beam reflected from
`
`the tissue by increasing the light intensity relative to the initial light intensity from at least one of
`
`the LEDs.” Apple denies the remaining allegations in Paragraph 75, and specifically denies that it
`
`commits any acts of infringement.
`
`76.
`
`Apple admits that Claim 16 of the ‘286 patent recites, among other things, “the
`
`measurement device further configured to generate an output signal representing at least in part a
`
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`non-invasive measurement on blood contained within the tissue.” Apple denies the remaining
`
`allegations in Paragraph 76, and specifically denies that it commits any acts of infringement.
`
`77.
`
`Apple admits that Claim 16 of the ‘286 patent recites, among other things, “wherein
`
`the receiver includes a plurality of spatially separated detectors.” Apple denies the remaining
`
`allegations in Paragraph 77, and specifically denies that it commits any acts of infringement.
`
`78.
`
`Apple admits that Claim 16 of the ‘286 patent recites, among other things, “wherein
`
`at least one analog to digital converter is coupled to the spatially separated detectors.” Apple denies
`
`the remaining allegations in Paragraph 77, and specifically denies that it commits any acts of
`
`infringement.
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`COUNT 4 – INFRINGEMENT OF THE ‘698 PATENT
`
`79.
`
`Apple repeats and realleges its responses to the foregoing paragraphs as if fully set
`
`forth herein.
`
`80.
`
`81.
`
`82.
`
`Denied.
`
`Denied.
`
`Apple denies the allegations of infringement in this paragraph and paragraphs 83-
`
`93. Apple specifically denies that it commits any acts of infringement.
`
`83.
`
`Apple admits that Claim 1 of the ‘698 patent recites, among other things, “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.” Apple
`
`denies the remaining allegations in Paragraph 83, and specifically denies that it commits any acts
`
`of infringement.
`
`84.
`
`Apple admits that Claim 1 of the ‘698 patent recites, among other things, “the
`
`measurement device configured to generate, by modulating at least one of the LEDs having an
`
`
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`13
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`initial light intensity.” Apple denies the remaining allegations in Paragraph 84, and specifically
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`denies that it commits any acts of infringement.
`
`85.
`
`Apple admits that Claim 1 of the ‘698 patent recites, among other things, “an input
`
`optical beam having one or more optical wavelengths, wherein at least a portion of the one or more
`
`optical wavelengths is a near-infrared wavelength between 700 nanometers and 2500 nanometers.”
`
`Apple denies the remaining allegations in Paragraph 85, and specifically denies that it commits
`
`any acts of infringement.
`
`86.
`
`Apple admits that Claim 1 of the ‘698 patent recites, among other things, “the
`
`measurement device comprising one or more lenses configured to receive and to deliver a portion
`
`of the input optical beam to issue.” Apple denies the remaining allegations in Paragraph 86, and
`
`specifically denies that it commits any acts of infringement.
`
`87.
`
`Apple admits that Claim 1 of the ‘698 patent recites, among other things, “wherein
`
`the tissue reflects at least a portion of the input optical beam delivered to the tissue.” Apple denies
`
`the remaining allegations in Paragraph 87, and specifically denies that it commits any acts of
`
`infringement.
`
`88.
`
`Apple admits that Claim 1 of the ‘698 patent recites, among other things, “the
`
`measurement device further comprising a receiver, wherein the receiver includes a plurality of
`
`spatially separated detectors.” Apple denies the remaining allegations in Paragraph 88, and
`
`specifically denies that it commits any acts of infringement.
`
`89.
`
`Apple admits that Claim 1 of the ‘698 patent recites, among other things, “the
`
`detectors 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 convert the captured light
`
`into a second signal, the captured light including at least a portion of the input optical beam
`
`
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`reflected from the tissue.” Apple denies the remaining allegations in Paragraph 89, and specifically
`
`denies that it commits any acts of infringement.
`
`90.
`
`Apple admits that Claim 1 of the ‘698 patent recites, among other things, “wherein
`
`at least one analog to digital converter is coupled to the spatially separated detectors and is
`
`configured to generate at least a first data signal from the first signal and at least a second data
`
`signal from the second signal.” Apple denies the remaining allegations in Paragraph 90, and
`
`specifically denies that it commits any acts of infringement.
`
`91.
`
`Apple admits that Claim 1 of the ‘698 patent recites, among other things, “the
`
`measurement device configured to improve a signal-to-noise ratio of the input optical beam
`
`reflected from the tissue by differencing the first data signal and the second data signal.” Apple
`
`denies the remaining allegations in Paragraph 91, and specifically denies that it commits any acts
`
`of infringement.
`
`92.
`
`Apple admits that Claim 1 of the ‘698 patent recites, among other things, “to
`
`generate an output signal representing at least in part a non-invasive measurement on blood
`
`contained within the tissue.” Apple denies the remaining allegations in Paragraph 92, and
`
`specifically denies that it commits any acts of infringement.
`
`93.
`
`Apple admits that Claim 1 of the ‘698 patent recites, among other things, “wherein
`
`the modulating at least one of the LEDs has a modulation frequency and wherein the receiver is
`
`configured to use a lock-in technique that detects the modulation frequency.” Apple denies the
`
`remaining allegations in Paragraph 93, and specifically denies that it commits any acts of
`
`infringement.
`
`COUNT 5 – WILLFUL INFRINGEMENT
`
`94.
`
`Apple repeats and realleges its responses to the foregoing paragraphs as if fully set
`
`forth herein.
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`95.
`
`96.
`
`Denied.
`
`Denied.
`
`DEMAND FOR RELIEF
`
`Apple denies all allegations that Omni MedSci is entitled to any of the relief requested
`
`against Apple in its Demand for Relief, or any other relief.
`
`AFFIRMATIVE AND OTHER DEFENSES
`
`Apple asserts the following affirmative defenses, without assuming the burden of proof
`
`when such burden would otherwise be on Omni MedSci. In addition to the affirmative defenses
`
`described below, Apple specifically reserves all rights to assert additional affirmative defenses as
`
`additional information becomes available.
`
`FIRST DEFENSE
` (Non-infringement)
`
`155. Apple does not and has not infringed, either literally or under the doctrine of
`
`equivalents, either directly, contributorily, by inducement, or jointly, any valid claim of the ‘533,
`
`‘040, ‘286, and ‘698 patents.
`
`SECOND DEFENSE
`(Invalidity)
`
`156. The claims of the ‘533, ‘040, ‘286, and ‘698 patents are invalid because they fail to
`
`satisfy one or more conditions for patentability set forth in 35 U.S.C. § 101 et seq., including but
`
`not limited to sections 101, 102, 103, and 112, and the applicable provisions of Title 37 of the
`
`Code of Federal Regulations. Prior art that invalidates the asserted patents will be set forth in
`
`Apple’s invalidity contentions, amendments, and proposed amendments thereto.
`
`
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`THIRD DEFENSE
`(Prosecution History Estoppel)
`
`157. Omni MedSci’s claims for relief are barred in whole or in part by prosecution
`
`history estoppel and/or argument-based estoppel. Omni MedSci is estopped, based on statements,
`
`representations, and admissions made during the prosecution before the USPTO of the patent
`
`applications resulting in the ‘533, ‘040, ‘286, and ‘698 patents, as well as patent applications and
`
`proceedings related to any of the ‘533, ‘040, ‘286, and ‘698 patents, from asserting that Apple has
`
`infringed, directly or indirectly, any claim of the ‘533, ‘040, ‘286, and ‘698 patents, either literally
`
`or under the doctrine of equivalents.
`
`FOURTH DEFENSE
`(Equitable Doctrines)
`
`158. Omni MedSci’s claim for damages is barred or limited by the equitable doctrines
`
`of laches, estoppel, unclean hands, and/or waiver.
`
`FIFTH DEFENSE
`(Limitations on Recovery)
`
`159. Omni MedSci’s claim for damages is limited by 35 U.S.C. § 286.
`
`160. Omni MedSci is barred in whole or in part from recovering any damages for any
`
`alleged infringement of the Asserted Patents pursuant to 35 U.S.C. § 287.
`
`161. Omni MedSci is precluded from recovering costs under 35 U.S.C. § 288.
`
`SIXTH DEFENSE
`(Insufficient Pleading)
`
`162. Omni MedSci fails to state a claim upon