Case 2:18-cv-00429-RWS Document 42 Filed 01/28/19 Page 1 of 25 PageID #: 353
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`UNITED STATES DISTRICT COURT
`EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`Omni MedSci, Inc.,
`
`Plaintiff/Counter-Defendant,
`
`v.
`
`Apple Inc.,
`
`Defendant/Counter-Plaintiff.
`
`Case No. 2:18-cv-429-RWS
`
`AMENDED COMPLAINT FOR PATENT
`INFRINGEMENT AND DEMAND FOR JURY TRIAL
`
`Plaintiff, Omni MedSci, Inc. (“Omni MedSci”), alleges as follows:
`
`The Parties
`
`1.
`
`Plaintiff Omni MedSci is a Michigan corporation having its principal place of
`
`business at 1718 Newport Creek Drive, Ann Arbor, Michigan 48103. Dr. Mohammed N. Islam
`
`is the principal of Omni MedSci. Dr. Islam is a tenured Professor of Optics and Photonics in the
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`Electrical and Computer Engineering Department, and a Professor of Biomedical Engineering, at
`
`the University of Michigan’s College of Engineering. Omni MedSci is part of the Omni family
`
`of companies, which create, develop, and commercialize Dr. Islam’s optical technology in
`
`various fields. The Omni companies also develop and provide unique optical products to the
`
`U.S. Department of Defense and intelligence community.
`
`2.
`
`Defendant Apple Inc. (“Apple”) is a California corporation, having a regular and
`
`established place of business at 1 Infinite Loop, Cupertino, California 95014. Apple may be
`
`Petitioner Apple Inc. - Exhibit 1004, p. 1
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`

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`Case 2:18-cv-00429-RWS Document 42 Filed 01/28/19 Page 2 of 25 PageID #: 354
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`served with process through its registered agent for service of process C T Corporation System
`
`(C0168406).
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`Jurisdiction and Venue
`
`3.
`
`This is a complaint for patent infringement under 35 U.S.C. §§ 101, et seq. The
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`Court has subject matter jurisdiction under 28 U.S.C. §§ 1331 and 1338.
`
`4.
`
`The court has personal jurisdiction over Apple, and venue under 28 U.S.C.
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`§§1391(a)(1) and 1400(b) is proper in this district, because Apple has two regular and
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`established places of business in this district and because Apple offers for sale and sells
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`infringing Apple Watches in this district at those locations.
`
`5.
`
`A lawsuit, Case No. 2:18-cv-134-RWS,
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`is currently pending in this district
`
`between Omni MedSci and Apple involving several of the same patents and much of the same
`
`Apple Watch technology as is at issue in the present lawsuit.
`
`The Patents-in-Suit
`
`6.
`
`On October 16, 2018, the U.S. Patent and Trademark Office issued U.S. Patent
`
`No. 10,098,546 (“the ‘546 patent”) (Exhibit A) to Dr. Mohammed N. Islam.
`
`7.
`
`On January 9, 2018, the U.S. Patent and Trademark Office issued U.S. Patent No.
`
`9,861,286 (“the ‘286 patent”) (Exhibit B) to Dr. Mohammed N. Islam. This patent is also
`
`asserted against Apple in Case No. 2:18-cv-134-RWS. In the present lawsuit, the ‘286 patent is
`
`asserted only against the Series 4 Apple Watch, a watch that did not exist at the time of the
`
`complaint in Case No. 2:18-cv-134-RWS and was not accused in that Case.
`
`8.
`
`On February 6, 2018, the U.S. Patent and Trademark Office issued U.S. Patent
`
`No. 9,885,698 (“the ‘698 patent”) (Exhibit C) to Dr. Mohammed N. Islam. This patent is also
`
`asserted against Apple in Case No. 2:18-cv-134-RWS. In the present lawsuit, the ‘698 patent is
`
`2
`
`Petitioner Apple Inc. - Exhibit 1004, p. 2
`
`

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`Case 2:18-cv-00429-RWS Document 42 Filed 01/28/19 Page 3 of 25 PageID #: 355
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`asserted only against the Series 4 Apple Watch, a watch that did not exist at the time of the
`
`complaint in Case No. 2:18-cv-134-RWS and was not accused in that Case.
`
`9.
`
`On February 29, 2018, the U.S. Patent and Trademark Office issued U.S. Patent
`
`No. 10,188,299 (“the ‘299 patent”) (Issue Notification attached as Exhibit D) to Dr. Mohammed
`
`N. Islam.
`
`10.
`
`The ‘546 patent, the ‘286 patent, the ‘698 patent, and the ‘299 patent are,
`
`collectively, the “Patents-in-Suit.”
`
`11.
`
`Omni MedSci has been, and remains, the owner by assignment of the Patents-in-
`
`Suit.
`
`Background Facts
`
`12.
`
`By 2012, Omni MedSci had invented technology for using lasers in medical and
`
`other applications, including wearable measurement devices incorporating lasers and other
`
`components that can detect and monitor physiological parameters such as glucose, ketones, heart
`
`rate, blood constituents, and dental carries.
`
`13.
`
`On December 31, 2012, Omni MedSci filed a set of patent applications covering
`
`its developments using lasers for medical and other applications.
`
`14.
`
`Between June 2014 and July 2016, Dr. Islam had a series of meetings and email
`
`exchanges with Apple personnel regarding the technology underlying his then-pending patent
`
`applications, including some of the now-issued Patents-in-Suit. In those exchanges, Apple was
`
`offered the opportunity to license or acquire Omni MedSci’s patented and patent-pending
`
`technology, but Apple declined.
`
`3
`
`Petitioner Apple Inc. - Exhibit 1004, p. 3
`
`

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`15.
`
`On June 11-12, 2014, Dr. Islam met with Apple employees Drs. Michael O’Reilly
`
`and Michael Hillman at Apple’s headquarters in Cupertino, California to discuss Omni MedSci’s
`
`then patent-pending technology.
`
`16.
`
`Dr. Hillman then arranged for a meeting with Dr. Islam and approximately ten
`
`Apple employees at Apple’s headquarters in Cupertino, California to discuss technical details of
`
`Omni MedSci’s then patent-pending technology. The meeting took place at Apple on February
`
`5, 2015.
`
`17.
`
`On July 14, 2016, Apple employee Greg Joswiak emailed Dr. Islam inviting him
`
`to provide additional information about his technology. Mr. Joswiak indicated that he would
`
`share the information with his team at Apple.
`
`18.
`
`Four days later, Apple employees Drs. Ed Hull and Shonn Hendee arranged a
`
`meeting with Dr. Islam and approximately ten Apple employees at Apple’s headquarters in
`
`Cupertino, California to discuss technical details of Omni MedSci’s then patent-pending
`
`technology. The meeting took place at Apple on July 18, 2016. At the meeting, Dr. Islam
`
`shared the published patent application for the ‘546 patent and the published parent patent
`
`applications for the ‘698 and ‘286 patents.
`
`19.
`
`Dr. Islam continued to correspond with Apple employees regarding the status of
`
`his pending patent applications and technological development. On December 21, 2017, Dr.
`
`Islam emailed Drs. O’Reilly, Hull, and Hendee enclosing copies of the allowed claims for the
`
`‘268 and ‘698 patents. In response, Dr. O’Reilly emailed Dr. Islam stating, “We [Apple] don’t
`
`wish to receive any information about any of your IP [Intellectual Property].”
`
`4
`
`Petitioner Apple Inc. - Exhibit 1004, p. 4
`
`

`

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`Apple’s Infringing Apple Watch Products
`On information and belief,1 Apple has made and sold several models of its Apple
`
`20.
`
`Watch product, including, for example, “Series 1,” “Series 2,” “Series 3 GPS,” “Series 3 GPS +
`
`Cellular,” and “Series 4” watches. Omni MedSci asserts infringement by all models, including
`
`the models sold to date and models sold in the future, which are covered by the claims of the
`
`Patents-in-Suit (collectively, “Watches”). Exemplary Watches advertised on Apple’s web site
`
`(https://www.apple.com/watch/compare/, captured on March 8, 2018 and October 10, 2018) as
`
`shown below:
`
`21.
`
`The Watches are wearable devices that measure a physiological parameter,
`
`namely, heart rate.
`
`1 For allegations based on information and belief, Omni MedSci believes that the
`allegations will have evidentiary support after a reasonable opportunity for investigation and
`discovery.
`
`5
`
`Petitioner Apple Inc. - Exhibit 1004, p. 5
`
`

`

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`22.
`
`The Watches measure heart rate non-invasively using light emitting diodes
`
`(“LEDs”).
`
`23.
`
`The light emitted from the LEDs in the Watches includes near-infrared
`
`wavelengths.
`
`24.
`
`25.
`
`The Watches can modulate the light emitted from the LEDs.
`
`The Watches can use a lock-in technique, such as synchronous demodulation,
`
`which is used to detect the modulation frequency.
`
`26.
`
`The Watches can improve the signal-to-noise ratio of the LED light reflected from
`
`the skin by increasing the intensity of the light emitted from the LEDs.
`
`27.
`
`The Watches can also improve the signal-to-noise ratio of the LED light reflected
`
`from the skin by increasing the pulse rate of the LEDs.
`
`28.
`
`The Watches have one or more lenses that deliver the light from the LEDs to a
`
`Watch wearer’s skin.
`
`skin.
`
`29.
`
`30.
`
`31.
`
`32.
`
`The one or more lenses in the Watches include a spectral filter.
`
`The Watches have at least two detectors that receive LED light reflected from the
`
`The detectors in the Watches capture light while the LEDs are off.
`
`The Watches have one or more analog to digital converters that process the
`
`reflected light received by the detectors.
`
`33.
`
`34.
`
`A receiver in the Watches can be synchronized to the LED light sources.
`
`The Watches can capture light while the LEDs are off to improve the signal-to-
`
`noise ratio of the light captured from the LED light reflected from the skin by differencing
`
`6
`
`Petitioner Apple Inc. - Exhibit 1004, p. 6
`
`

`

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`between the light captured while the LEDs are off and the light captured from the LED light
`
`reflected from the skin.
`
`35.
`
`The Watches can communicate with an Apple smart phone or tablet.
`
`Count 1 – Infringement of the ‘546 Patent
`
`36.
`
`Omni MedSci
`
`reasserts and incorporates the allegations contained in the
`
`paragraphs above.
`
`37.
`
`Apple has directly infringed and is directly infringing the ‘546 patent by making
`
`using, offering for sale, and selling the Watches, and importing the Watches into the United
`
`States.
`
`38.
`
`Based on publicly available information, the Watches infringe at least claims 1, 2,
`
`4, 5, 7-13, and 15-18 of the ‘546 patent. Omni MedSci may assert additional claims of the ‘546
`
`patent after a reasonable opportunity for investigation and discovery.
`
`39.
`
`Apple’s infringement is described further below with respect to exemplary claim
`
`1. The analysis below is based on publicly available information.
`
`40.
`
`Claim 1 recites: “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 sells Watches, which are wearable, and that include a
`
`measurement device that can measure heart rate, which is a physiological parameter. The
`
`measurement device in the Watches uses multiple light emitting diodes for measuring the heart
`
`rate.
`
`See,
`
`e.g., Apple’s website
`
`at
`
`support.apple.com/en-us/HT204666
`
`and
`
`www.ifixit.com/Teardown/Apple+Watch+Series+3+Teardown/97521.
`
`41.
`
`Claim 1 further recites: “the measurement device configured to generate, by
`
`modulating at least one of the LEDs having an initial light intensity, an optical beam having a
`
`7
`
`Petitioner Apple Inc. - Exhibit 1004, p. 7
`
`

`

`Case 2:18-cv-00429-RWS Document 42 Filed 01/28/19 Page 8 of 25 PageID #: 360
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`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 include
`
`infrared LEDs, which emit an optical beam with more than one wavelength. At least a portion of
`
`the wavelengths emitted are between 700 nanometers and 2500 nanometers. The LEDs are
`
`modulated and have an initial light intensity. See, e.g., Apple website at support.apple.com/en-
`
`us/HT204666;
`
`www.ifixit.com/Teardown/Apple+Watch+Series+3+Teardown/97521;
`
`U.S.
`
`Patent Publication No. 2017/0281024.
`
`42.
`
`Claim 1 further recites: “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 one or more lenses that receive the optical beam from the LEDs and deliver a portion of
`
`that beam to a wearer’s tissue.
`
`43.
`
`Claim 1 further recites: “wherein the tissue reflects at least a portion of the optical
`
`beam delivered to the tissue.” The wearer’s tissue reflects at least part of the optical beam
`
`delivered to the tissue. See, e.g., U.S. Patent Publication No. 2016/0058367.
`
`44.
`
`Claim 1 further recites: “the measurement device further comprising a receiver,
`
`the receiver having a plurality of spatially separated detectors.” The Watches include a receiver,
`
`with multiple photodiode detectors, each detector being separated from the others in space. See,
`
`8
`
`Petitioner Apple Inc. - Exhibit 1004, p. 8
`
`

`

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`
`e.g.,
`
`www.ifixit.com/Teardown/Apple+Watch+Series+3+Teardown/97521;
`
`support.apple.com/en-us/HT204666; U.S. Patent Publication No. 2016/0058367.
`
`45.
`
`Claim 1 further recites that the receiver includes “one or more analog to digital
`
`converters coupled to the spatially separated detectors, the one or more analog to digital
`
`converters configured to generate at least two receiver outputs.” The receiver in the Watches
`
`uses analog to digital converters, coupled to the detectors, which generate at least two output
`
`signals.
`
`See,
`
`e.g.,
`
`www.ifixit.com/Teardown/Apple+Watch+Series+3+Teardown/97521;
`
`support.apple.com/en-us/HT204666; U.S. Pub. No. 2016/0058312; U.S. Pub. No. 2016/0038045.
`
`46.
`
`Claim 1 further recites: “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 captured light including at
`
`least a portion of the optical beam reflected from the tissue.” The receiver in the Watches can
`
`capture light while the LEDs are off and convert that light into a first signal.
`
`It also captures
`
`light from the LEDs, which light includes light reflected from the tissue, and converts that light
`
`into a second signal. See, e.g., U.S. Pub. No. 2016/0058367.
`
`47.
`
`Claim 1 further recites: “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 and by differencing the two receiver outputs.” The measurement device in the
`
`Watches improves the signal-to-noise ratio of the light reflected from the tissue by differencing
`
`the first signal and the second signal. It also improves the signal-to-noise ratio of the light
`
`reflected from the tissue by differencing the two receiver outputs. See, e.g., U.S. Pub. No.
`
`2016/0058367; U.S. Pub. No. 2016/0058312; U.S. Pub. No. 2016/0038045; U.S. Pub. No.
`
`2016/0296173.
`
`9
`
`Petitioner Apple Inc. - Exhibit 1004, p. 9
`
`

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`48.
`
`Claim 1 further recites: “the measurement device 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.” The measurement
`
`device in the Watches improves the signal-to-noise ratio of the light reflected from the tissue by
`
`increasing LED brightness. See, e.g., Apple website at http://support.apple.com/en-
`
`us/HT204666.
`
`49.
`
`Claim 1 further recites: “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.” The measurement device in the Watches generates a signal that represents the
`
`heart rate of the blood in the tissue. See, e.g., Apple website at http://support.apple.com/en-
`
`us/HT204666; U.S. Pub. No. 2016/0058367.
`
`50.
`
`Claim 1 further recites: “wherein the output signal is generated at least in part by
`
`using a Fourier transform of signals from the receiver including at least one of the first and
`
`second signals and signals from the at least two receiver outputs.” The Watches apply a Fourier
`
`transform to at least one of the signals from the receiver to, in part, generate the output signal.
`
`See, e.g., U.S. Pub. No. 2016/0051201.
`
`51.
`
`Claim 1 further recites: “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 include spectral filters in front of one or more of the Watch lenses.
`
`See,
`
`e.g.,
`
`www.ifixit.com/Teardown/Apple+Watch+Series+3+Teardown/97521;
`
`support.apple.com/en-us/HT204666.
`
`10
`
`Petitioner Apple Inc. - Exhibit 1004, p. 10
`
`

`

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`
`Count 2 – Infringement of the ‘286 Patent
`
`52.
`
`Omni MedSci
`
`reasserts and incorporates the allegations contained in the
`
`paragraphs above.
`
`53.
`
`Apple has directly infringed and is directly infringing the ‘286 patent by making
`
`using, offering for sale, and selling the Series 4 Watch, and importing the Series 4 Watch into the
`
`United States.
`
`54.
`
`Based on publicly available information, the Series 4 Watch infringes at least
`
`claims 16 and 19 of the ‘286 patent. Omni MedSci may assert additional claims of the ‘286
`
`patent after a reasonable opportunity for investigation and discovery.
`
`55.
`
`Apple’s infringement is described further below with respect to exemplary claim
`
`16. The analysis below is based on publicly available information.
`
`56.
`
`Claim 16 recites: “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 light emitting diodes.
`
`See, e.g., Apple’s website at http://support.apple.com/en-us/HT204666.
`
`57.
`
`Claim 16 further recites: “the measurement device configured to generate, by
`
`modulating at least one of the LEDs having an initial light intensity.” The Series 4 Watch
`
`modulates at least one of the LEDs, which fluctuate in brightness (intensity). See, e.g., Apple’s
`
`website at http://support.apple.com/en-us/HT204666.
`
`58.
`
`Claim 16 further recites: “an optical beam having a plurality of optical
`
`wavelengths, wherein at least a portion of the plurality of optical wavelengths is a near-infrared
`
`wavelength between 700 nanometers and 2500 nanometers.” The Series 4 Watch includes
`
`infrared LEDs, which emit wavelengths between 700 nanometers and 2500 nanometers. See,
`
`11
`
`Petitioner Apple Inc. - Exhibit 1004, p. 11
`
`

`

`Case 2:18-cv-00429-RWS Document 42 Filed 01/28/19 Page 12 of 25 PageID #: 364
`
`e.g., Apple website at http://support.apple.com/en-us/HT204666; U.S. Patent Publication No.
`
`2017/0281024.
`
`59.
`
`Claim 16 further recites: “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 capable of receiving and delivering a portion of an optical beam to
`
`skin.
`
`60.
`
`Claim 16 further recites: “wherein the tissue reflects at least a portion of the
`
`optical beam delivered to the tissue.” When the Series 4 Watch delivers the optical beam to the
`
`skin, the skin reflects at least a portion of that optical beam. See, e.g., U.S. Patent Publication
`
`Nos. 2016/0058309 and 2016/0058367.
`
`61.
`
`Claim 16 further recites: “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 the user’s wrist.
`
`62.
`
`Claim 16 further recites: “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.” The Series 4 Watch includes a receiver with sensors, which capture light while the
`
`12
`
`Petitioner Apple Inc. - Exhibit 1004, p. 12
`
`

`

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`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 reflected from the skin. See, e.g., Apple website at
`
`http://support.apple.com/en-us/HT204666; U.S. Patent Publication No. 2016/0058367.
`
`63.
`
`Claim 16 further recites: “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.” The Series 4 Watch reduces the signal-to-noise ratio of the optical beam
`
`received from the skin by differencing the first signal and the second signal. See, e.g., U.S.
`
`Patent Publication No. 2016/0058367.
`
`64.
`
`Claim 16 further recites: “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.” The Series 4 Watch improves
`
`the signal-to-noise ratio of the optical beam reflected from the skin by increasing the brightness
`
`(intensity) of the Series 4 Watch LEDs. See, e.g., Apple website at http://support.apple.com/en-
`
`us/HT204666.
`
`65.
`
`Claim 16 further recites: “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.” The Series 4 Watch can generate an output signal, which represents the user’s
`
`heart rate. See, e.g., Apple website at http://support.apple.com/en-us/HT204666; U.S. Patent
`
`Publication No. 2016/0058367.
`
`66.
`
`Claim 16 further recites: “wherein the receiver includes a plurality of spatially
`
`separated detectors.” The Series 4 Watch includes a receiver with multiple photodiode sensors,
`
`13
`
`Petitioner Apple Inc. - Exhibit 1004, p. 13
`
`

`

`Case 2:18-cv-00429-RWS Document 42 Filed 01/28/19 Page 14 of 25 PageID #: 366
`
`which are spatially separated. See, e.g., Apple website at http://support.apple.com/en-
`
`us/HT204666.
`
`67.
`
`Claim 16 further recites: “wherein at least one analog to digital converter is
`
`coupled to the spatially separated detectors.” The Series 4 Watch includes at least one analog to
`
`digital converter, which is coupled to the spatially separated photodiode sensors. See, e.g., U.S.
`
`Patent Publication No. 2019/0038045.
`
`Count 3 – Infringement of the ‘698 Patent
`
`68.
`
`Omni MedSci
`
`reasserts and incorporates the allegations contained in the
`
`paragraphs above.
`
`69.
`
`Apple has directly infringed and is directly infringing the ‘698 patent by making
`
`using, offering for sale, and selling the Series 4 Watch, and importing the Series 4 Watch into the
`
`United States.
`
`70.
`
`Based on publicly available information, the Series 4 Watch infringes at least
`
`claims 1, 2, 3 and 5 of the ‘698 patent. Omni MedSci may assert additional claims of the ‘698
`
`patent after a reasonable opportunity for investigation and discovery.
`
`71.
`
`Apple’s infringement is described further below with respect to exemplary claim
`
`1. The analysis below is based on publicly available information.
`
`72.
`
`Claim 1 recites: “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 sells Series 4 Watches, which are wearable devices that use
`
`multiple light emitting diodes.
`
`See, e.g., Apple’s website at http://support.apple.com/en-
`
`us/HT204666.
`
`14
`
`Petitioner Apple Inc. - Exhibit 1004, p. 14
`
`

`

`Case 2:18-cv-00429-RWS Document 42 Filed 01/28/19 Page 15 of 25 PageID #: 367
`
`73.
`
`Claim 1 further recites: “the measurement device configured to generate, by
`
`modulating at least one of the LEDs having an initial light intensity.” The Series 4 Watch
`
`modulates at least one of the LEDs by fluctuating the LEDs’ brightness (intensity). See, e.g.,
`
`Apple’s website at http://support.apple.com/en-us/HT204666.
`
`74.
`
`Claim 1 further recites: “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.” The Series 4 Watch includes
`
`infrared LEDs, which emit wavelengths between 700 nanometers and 2500 nanometers. See,
`
`e.g., Apple website at http://support.apple.com/en-us/HT204666; U.S. Patent Publication No.
`
`2017/0281024.
`
`75.
`
`Claim 1 further recites: “the measurement device comprising one or more lenses
`
`configured to receive and to deliver a portion of the input optical beam to tissue.” The Series 4
`
`Watch includes one or more lenses capable of receiving and delivering a portion of an optical
`
`beam to skin.
`
`76.
`
`Claim 1 further recites: “wherein the tissue reflects at least a portion of the input
`
`optical beam delivered to the tissue.” When the Series 4 Watch delivers the optical beam to the
`
`15
`
`Petitioner Apple Inc. - Exhibit 1004, p. 15
`
`

`

`Case 2:18-cv-00429-RWS Document 42 Filed 01/28/19 Page 16 of 25 PageID #: 368
`
`skin, the skin reflects at least a portion of that optical beam. See, e.g., U.S. Patent Publication
`
`Nos. 2016/0058309 and 2016/0058367.
`
`77.
`
`Claim 1 further recites: “the measurement device further comprising a receiver,
`
`wherein the receiver includes a plurality of spatially separated detectors.” The Series 4 Watch
`
`includes a receiver with multiple photodiode sensors that are spatially separated. See, e.g., Apple
`
`website at http://support.apple.com/en-us/HT204666; U.S. Patent Publication No. 2016/0058367.
`
`78.
`
`Claim 1 further recites: “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 reflected from the tissue.” The Series 4 Watch includes
`
`sensors, which 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 reflected
`
`from the skin. See, e.g., Apple website at http://support.apple.com/en-us/HT204666; U.S. Patent
`
`Publication No. 2016/0058367.
`
`79.
`
`Claim 1 further recites: “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.” The Series 4
`
`Watch includes at least one analog to digital converter, which is coupled to the spatially
`
`separated photodiode sensors, 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. See, e.g., U.S. Patent
`
`Publication No. 2019/0038045.
`
`16
`
`Petitioner Apple Inc. - Exhibit 1004, p. 16
`
`

`

`Case 2:18-cv-00429-RWS Document 42 Filed 01/28/19 Page 17 of 25 PageID #: 369
`
`80.
`
`Claim 1 further recites: “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.” The Series 4 Watch reduces the signal-to-noise ratio of the
`
`optical beam received from the skin by differencing the first signal and the second signal. See,
`
`e.g., U.S. Patent Publication No. 2016/0058367.
`
`81.
`
`Claim 1 further recites: “to generate an output signal representing at least in part a
`
`non-invasive measurement on blood contained within the tissue.” The Series 4 Watch can
`
`generate an output signal, which represents the user’s heart rate. See, e.g., Apple website at
`
`http://support.apple.com/en-us/HT204666; U.S. Patent Publication No. 2016/0058367.
`
`82.
`
`Claim 1 further recites: “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.” The Series 4 Watch LEDs have a modulation frequency of
`
`hundreds of times per second. Further, on information and belief, the Series 4 Watch receiver
`
`uses a lock-in technique that detects the modulation frequency. See, e.g., Apple website at
`
`http://support.apple.com/en-us/HT204666; U.S. Patent Publication No. 2008/0297487.
`
`Count 5 – Infringement of the ‘299 Patent
`
`83.
`
`Omni MedSci
`
`reasserts and incorporates the allegations contained in the
`
`paragraphs above.
`
`84.
`
`Apple has directly infringed and is directly infringing the ‘299 patent by making
`
`using, offering for sale, and selling the Watches, and importing the Watches into the United
`
`States.
`
`17
`
`Petitioner Apple Inc. - Exhibit 1004, p. 17
`
`

`

`Case 2:18-cv-00429-RWS Document 42 Filed 01/28/19 Page 18 of 25 PageID #: 370
`
`85.
`
`Based on publicly available information, the Watches infringe at least claims 1-9
`
`and 14-20 of the ‘299 patent. Omni MedSci may assert additional claims of the ‘299 patent after
`
`a reasonable opportunity for investigation and discovery.
`
`86.
`
`Apple’s infringement is described further below with respect to exemplary claim
`
`1. The analysis below is based on publicly available information.
`
`87.
`
`Claim 1 recites: “A system comprising: a light source comprising a plurality of
`
`light emitting diodes.” Apple sells Watches that include multiple light emitting diodes used for
`
`measuring the heart rate. See, e.g., Apple’s website at support.apple.com/en-us/HT204666 and
`
`www.ifixit.com/Teardown/Apple+Watch+Series+3+Teardown/97521.
`
`88.
`
`Claim 1 further recites: “each of the light emitting diodes configured to generate
`
`an output 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.” The Watches include infrared LEDs, which emit an optical beam with one or
`
`more wavelengths. At least a portion of the wavelengths emitted are between 700 nanometers
`
`and 2500 nanometers. The LEDs are modulated and have an initial light intensity. See, e.g.,
`
`Apple
`
`website
`
`at
`
`support.apple.com/en-us/HT204666;
`
`www.ifixit.com/Teardown/Apple+Watch+Series+3+Teardown/97521; U.S. Patent Publication
`
`No. 2017/0281024.
`
`89.
`
`Claim 1 further recites: “a lens positioned to receive at least a portion of at least
`
`one of the output optical beams and to deliver a lens output beam to tissue.” The Watches
`
`include lenses that receive the optical beam from the LEDs and deliver a portion of that beam to
`
`a wearer’s tissue.
`
`18
`
`Petitioner Apple Inc. - Exhibit 1004, p. 18
`
`

`

`Case 2:18-cv-00429-RWS Document 42 Filed 01/28/19 Page 19 of 25 PageID #: 371
`
`90.
`
`Claim 1 further recites: “a detection system located to receive at least a portion of
`
`the lens output beam reflected from the tissue.” The Watches include a receiver, with multiple
`
`photodiode detectors. Each detector can receive at least a portion of the beam output by the lens
`
`that
`
`is
`
`reflected
`
`from
`
`the
`
`wearer’s
`
`skin.
`
`See,
`
`e.g.,
`
`www.ifixit.com/Teardown/Apple+Watch+Series+3+Teardown/97521;
`
`support.apple.com/en-
`
`us/HT204666; U.S. Pub. No. 2016/0058367.
`
`91.
`
`Claim 1 further recites that the detection system is “configured to generate an
`
`output signal based on the received portion of the lens output beam reflected from the tissue, the
`
`output signal having a signal-to-noise ratio.” The detection system in the Watches generates at
`
`least one
`
`output
`
`signal, which
`
`signal has a
`
`signal-to-noise
`
`ratio.
`
`See, e.g.,
`
`www.ifixit.com/Teardown/Apple+Watch+Series+3+Teardown/97521;
`
`support.apple.com/en-
`
`us/HT204666; U.S. Pub. No. 2016/0058367.
`
`92.
`
`Claim 1 further recites: “wherein the detection system is further configured to be
`
`synchronized to the light source.” The detection system in the Watches works by synchronizing
`
`with the light source. See, e.g., U.S. Pub. No. 2016/0058367.
`
`93.
`
`Claim 1 further recites: “a personal device comprising a wireless receiver, a
`
`wireless transmitter, a display, a microphone, a speaker, one or more buttons or knobs, a
`
`19
`
`Petitioner Apple Inc. - Exhibit 1004, p. 19
`
`

`

`Case 2:18-cv-00429-RWS Document 42 Filed 01/28/19 Page 20 of 25 PageID #: 372
`
`microprocessor, and a touch screen, the personal device conf