Omni MedSci, Inc. v. Apple Inc.

Filing 346

ORDER DENYING APPLE INC.'S REQUEST FOR LEAVE TO FILE MOTION FOR RECONSIDERATION REGARDING SUBJECT-MATTER JURISDICTION by Judge Yvonne Gonzalez Rogers ; granting in part 326 Administrative Motion to File Under Seal; denying 327 Motion for Leave to File; granting 335 Administrative Motion to File Under Seal; granting as moot 340 Administrative Motion to File Under Seal; denying 341 Motion to File Amicus Curiae Brief. (fs, COURT STAFF) (Filed on 11/25/2019)

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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OMNI MEDSCI, INC.,

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Case No.: 19-cv-05924-YGR

Plaintiff/Counter Defendant,
v.

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APPLE INC.,
Defendant/Counter Claimant.

ORDER DENYING APPLE INC.’S REQUEST
FOR LEAVE TO FILE MOTION FOR
RECONSIDERATION REGARDING
SUBJECT-MATTER JURISDICTION
Re: Dkt. No. 327

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Now before the Court is Defendant Apple Inc.’s (“Apple”) request for leave to file a motion

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for reconsideration under Civil Local Rule 7-9(a). (Dkt. No. 327.) The present case was transferred

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from the Eastern District of Texas on October 2, 2019. Prior to transfer, the Texas Court denied

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Apple’s motion to dismiss for lack of subject matter jurisdiction based on plaintiff’s alleged lack of

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ownership of the asserted patents. (Dkt. No. 276.) Apple now seeks reconsideration of the

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transferor court’s denial. Having carefully considered the papers in support and in opposition, and

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the authority on which they are based, the Court DENIES the motion for leave.

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Civil Local Rule 7-9(a) requires that a party seeking leave to file a motion for reconsideration
show reasonable diligence in bringing a motion thereunder and one of the following:
(i)

the existence of a material difference in fact or law that was not known at the
time of the order despite the exercise of reasonable diligence;

(ii)

the emergence of new material facts or change of law occurring after the time
of the order; or

(iii)

a manifest failure by the Court to consider material facts or dispositive legal
arguments already presented to the Court. Civil L.R. 7-9(a) and (b).

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A motion for reconsideration offers an “extraordinary remedy, to be used sparingly in the

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interests of finality of conservation of judicial resources.” Kona Enters., Inc. v. Estate of Bishop,

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229 F.3d 877, 890 (9th Cir. 2000) (discussing Fed. R. Civ. P. 59(e)). It is not “a substitute for appeal

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or a means of attacking some perceived error of the court.” Asturias v. Borders, No. 16-cv-02149-

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HSG-PR, 2018 WL 1811967, at *1 (N.D. Cal. Apr. 17, 2018). A party may not repeat any oral or

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written argument made in relation to the order for which it now seeks reconsideration. Civ. L. R. 7-

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9(c). Failure to comply with rule may subject the moving party to sanctions. Id.

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Apple argues that the Texas court committed a “manifest failure” to consider material facts

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and dispositive law under Civil Local Rule 7-9(b)(3) in construing a contract between the Plaintiff’s

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founder and president, Mr. Mohammed Islam, and the University of Michigan, which employed Mr.

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Islam at the time of the invention, as effecting an agreement to assign certain inventions to the

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University in the future. Apple argues that the contract properly effected an immediate assignment

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of all inventions made with the University of Michigan’s resources to the University. As the

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University of Michigan never released its rights in the asserted patents, Apple asserts that Mr. Islam

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lacks standing to bring the current lawsuit.

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Having considered the district court’s prior order, as well as the law and the evidence

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presented, the Court detects no manifest error in its decision. The words “shall be” found in Mr.

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Islam’s agreement with the University of Michigan ordinarily indicate an agreement to assign

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inventions in the future—not a present assignment. Windy City Innovations, LLC v. Facebook, Inc.,

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No. 16-cv-1730 YGR, 2019 WL 4645414, at *3 (N.D. Cal. Sept. 24, 2019) (citing Arachnid, Inc. v.

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Merit Industries, Inc., 939 F.2d 1574, 1581 (Fed. Cir. 1991)). An agreement to assign in the future

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does not effect an immediate assignment or rob the inventor of standing to assert the patents. DBB

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Techs., L.L.C. v. MLB Advanced Media, L.P., 517 F.3d 1284, 1290 (Fed. Cir. 2008). The Texas

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court properly considered the language of the agreement—including that it describes “conditions

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governing assignment” and lacks words of “present conveyance”—to determine that it represented a

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future agreement to assign, rather than a present assignment of future interest.

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Accordingly, the Court finds no manifest failure by the Texas court and DENIES Apple’s
request for leave to file a motion for reconsideration.
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The Court further finds good cause exists and GRANTS IN PART Apple’s motion to seal (Dkt.

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No. 326) as the request relates to the University of Michigan’s confidential information with

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personnel and given the non-dispositive nature of the motion. (Dkt. No. 332.) As the Texas court’s

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order and related motions had been filed under seal, the Court GRANTS Apple’s motion to seal those

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papers. (Dkt. No. 335.) Finally, the Court DENIES the Regents of the University of Michigan’s

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motion to file an amicus brief (Dkt. No. 341) and GRANTS its Michigan’s motion to seal as moot.

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(Dkt. No. 340.)

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This Order terminates Docket Numbers 326, 327, 335, 340, and 341.

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IT IS SO ORDERED.

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DATED: November __, 2019
YVONNE GONZALEZ ROGERS
UNITED STATES DISTRICT JUDGE

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