Case 4:19-cv-05673-YGR Document 238 Filed 02/14/20 Page 1 of 4
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`UNITED STATES DISTRICT COURT
`NORTHERN DISTRICT OF CALIFORNIA
`OAKLAND DIVISION
`Case Nos.: 19-cv-05673-YGR
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`[PROPOSED] ORDER GRANTING APPLE
`INC.’S UNOPPOSED MOTION FOR AN
`ORDER CERTIFYING THE STANDING
`QUESTION FOR INTERLOCUTORY
`APPEAL UNDER 28 U.S.C. § 1292(B) AS
`MODIFIED BY THE COURT
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`OMNI MEDSCI, INC.,
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`Plaintiff/Counter Defendant,
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`v.
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`APPLE INC,
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`Defendant/Counter Claimant.
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`Now before the Court is Defendant and Counter-Claimant Apple Inc.’s (“Apple”) unopposed
`Motion for an Order Certifying the Standing Question For Interlocutory Appeal Under 28 U.S.C. §
`1292(b). The Court has considered Apple’s motion. Plaintiff Omni MedSci, Inc. believes that the
`standing issue was decided correctly, but it does not oppose Apple’s motion. Accordingly, the Court
`GRANTS the motion for that reason and adopts the proposed order as set forth below.
`Apple’s motion seeks an order certifying the decisions related to Apple’s motions to dismiss
`for lack of subject-matter jurisdiction for interlocutory appeal. Dkt. Nos. 151 & 227. Those
`decisions found that the employment agreement between the University of Michigan (“University”)
`and Dr. Mohammed Islam—the founder and principal of Plaintiff and Counter-Defendant Omni
`MedSci, Inc. (“Omni”)—did not automatically convey title to the asserted patents with the
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`ORDER GRANTING APPLE INC.’S MOT. FOR CERTIFICATION, CASE NO. 19-CV-05673-YGR
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`Petitioner Apple Inc. - Ex. 1064, p. 1
`Apple Inc. v. Omni MedSci, Inc., IPR2020-00175
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`Case 4:19-cv-05673-YGR Document 238 Filed 02/14/20 Page 2 of 4
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`University, and thus did not deprive Omni of standing to assert the patents after they were assigned
`to Omni from Dr. Islam. Instead, the employment agreement obligated Dr. Islam to assign his rights
`in the asserted patents to the University in the future. The relevant language from Dr. Islam’s
`employment agreement, University Bylaw 3.10, provides that:
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`Patents and copyrights issued or acquired as a result of or in connection with
`administration, research, or other educational activities conducted by members of the
`University staff and supported directly or indirectly (e.g., through the use of University
`resources or facilities) by funds administered by the University… shall be the property
`of the University.
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`Mot. to Dismiss Ex. 2A at UM00000049, Dkt No. 90-2 (emphasis added).
`Section 1292(b) allows for interlocutory appeal when (1) an order involves a controlling
`question of law; (2) there is a substantial ground for difference of opinion regarding that legal
`question; and (3) an immediate appeal may materially advance the ultimate termination of the
`litigation.
`Regarding the first prong of the § 1292(b) inquiry, if the appellant’s success on appeal would
`result in dismissal of the case, as is the case here, the appeal involves a “controlling question of
`law.” See, e.g., Canela v. Costco Wholesale Corp., Case No. 13-cv-03598-BLF, 2018 WL 3008532
`at *1 (N.D. Cal. June 15, 2018). Standing and subject-matter jurisdiction are controlling issues of
`law. See, e.g., id. (“Article III standing” is a controlling question of law). Moreover, standing and
`subject matter jurisdictions are reviewed de novo on appeal.
`Regarding the second prong of the § 1292(b) inquiry, the Court finds that there is substantial
`ground for difference of opinion whether the contractual language at issue here—“shall be the
`property of the University”—operates as a present assignment of future rights or an obligation to
`assign rights in the future. A decision may be certified when it presents a “novel legal issue[ ] . . . on
`which fair-minded jurists might reach contradictory conclusions,” and “not merely where they have
`already disagreed.” Reese v. BP Expl. (Alaska) Inc., 643 F.3d 681, 688 (9th Cir. 2011).
`The Federal Circuit has not directly confronted the assignment language at issue here,
`making this a novel legal issue appropriate for interlocutory appeal. See, e.g., Sky Techs. LLC v.
`SAP AG, 576 F.3d 1374 (Fed. Cir. 2009); Int’l Gamco, Inc. v. Multimedia Games, Inc., 504 F.3d
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`ORDER GRANTING APPLE INC.’S MOT. FOR CERTIFICATION, CASE NO. 19-CV-05673-YGR
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`Petitioner Apple Inc. - Ex. 1064, p. 2
`Apple Inc. v. Omni MedSci, Inc., IPR2020-00175
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`Case 4:19-cv-05673-YGR Document 238 Filed 02/14/20 Page 3 of 4
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`1273, 1274 (Fed. Cir. 2007); Ritz Camera & Image, LLC v. SanDisk Corp., 700 F.3d 503, 505 (Fed.
`Cir. 2012); Tri-Star Elecs. Int’l, Inc. v. Preci-Dip Durtal SA, 619 F.3d 1364, 1365 & n.2 (Fed. Cir.
`2010). Moreover, courts considering similar language have reached different results. Compare C.R.
`Daniels, Inc. v. Naztec Int’l Grp., LLC, Civil Action No. EHL11- 1624, 2012 WL 1268623, at *4
`(D. Md. Apr. 13, 2012) (finding “hereby agree[s] that without further consideration to [him] any
`inventions or improvements that [he] may conceive, make, invent or suggest during [his]
`employment . . . shall become the absolute property of [the employer]” effectuates an automatic
`assignment), Affymetrix, Inc. v. Illumina, Inc., 446 F. Supp. 2d 292, 296 (D. Del. 2006) (finding
`“shall be the exclusive property of [Affymax]” effectuates an automatic assignment), and
`Alzheimer’s Inst. of Am., Inc. v. Avid Radiopharmaceuticals, Civil Action No. 10-6908, 2011 WL
`3875341, at *10 (E.D. Pa. Aug. 31, 2011) (finding “[a]n invention which is made in the field or
`discipline in which the employee is employed by the University or by using University support is the
`property of the University and the employee shall share in the proceeds therefrom” “unambiguously
`vests ownership of . . . employees’ inventions in the University”), with Windy City Innovations, LLC
`v. Facebook, Inc., ___F. Supp. 3d ___, Case No. 16-cv-1730 YGR, 2019 WL 4645414, at *4 (N.D.
`Cal. Sept. 24, 2019). There is thus a substantial ground for a difference of opinion on the issues of
`law here—standing and subject matter jurisdiction.
`Regarding the third prong of the § 1292(b) inquiry, a reversal by the Federal Circuit
`regarding Omni’s standing to bring this suit would result in dismissal of the case, “conserv[ing]
`judicial resources and spar[ing] the parties from possibly needless expense if it should turn out that
`[the standing] rulings are reversed.” Bennett v. Islamic Republic of Iran, 927 F. Supp. 2d 833, 846
`n.15 (N.D. Cal. 2013) (citation omitted). That is “especially” true when, as here, the “action will
`likely [already] be stayed.” Su v. Siemens Indus., Inc., Case No. 12-cv-03743-JST, 2014 WL
`4775163, at *3 (N.D. Cal. Sept. 22, 2014). Pursuant to a stipulation between the parties, the Court
`stayed this action on November 20, 2019 pending resolution of several inter partes review
`proceedings initiated by Apple. Dkt. No. 219.
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`ORDER GRANTING APPLE INC.’S MOT. FOR CERTIFICATION, CASE NO. 19-CV-05673-YGR
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`Petitioner Apple Inc. - Ex. 1064, p. 3
`Apple Inc. v. Omni MedSci, Inc., IPR2020-00175
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`

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`Case 4:19-cv-05673-YGR Document 238 Filed 02/14/20 Page 4 of 4
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`Accordingly, the Court GRANTS Apple’s motion and certifies the decisions related to Apple’s
`motions to dismiss for lack of subject-matter jurisdiction, Dkt. Nos. 151 & 227, for interlocutory
`appeal pursuant to 28 U.S.C. § 1292(b).
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`This Order terminates docket number 232.
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`It is therefore ORDERED.
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`DATED:
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`The Honorable Yvonne Gonzalez Rogers
`United States District Judge
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`February 14, 2020
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`ORDER GRANTING APPLE INC.’S MOT. FOR CERTIFICATION, CASE NO. 19-CV-05673-YGR
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`Petitioner Apple Inc. - Ex. 1064, p. 4
`Apple Inc. v. Omni MedSci, Inc., IPR2020-00175
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