United States Court of Appeals 

for the Federal Circuit ______________________ 

OMNI MEDSCI, INC.,

Plaintiff-Appellee

v.

APPLE INC.,

Defendant-Appellant

______________________ 

2020-1715, 2020-1716

______________________ 

Appeals from the United States District Court for the 

Northern District of California in Nos. 4:19-cv-05673-YGR, 

4:19-cv-05924-YGR, Judge Yvonne Gonzalez Rogers.

______________________ 

Decided: August 2, 2021

______________________ 

THOMAS A. LEWRY, Brooks Kushman PC, Southfield, 

MI, argued for plaintiff-appellee. Also represented by 

JOHN S. LEROY, CHRISTOPHER C. SMITH. 

 JEFFREY PAUL KUSHAN, Sidley Austin LLP, Washington, DC, argued for defendant-appellant. Also represented 

by JOSHUA JOHN FOUGERE; BROOKE SHANELLE BOLL, Los 

Angeles, CA; MICHAEL ROBERTS, Dallas, TX; IRENE YANG, 

San Francisco, CA.

 SARAH E. WAIDELICH, Honigman LLP, Ann Arbor, MI, 

argued for amicus curiae The Regents of the University of 

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2 OMNI MEDSCI, INC. v. APPLE INC. 

Michigan. Also represented by J. MICHAEL HUGET; RIAN 

DAWSON, Detroit, MI.

 ______________________ 

Before NEWMAN, LINN, and CHEN, Circuit Judges.

Opinion for the court filed by Circuit Judge LINN. 

Dissenting opinion filed by Circuit Judge NEWMAN. 

LINN, Circuit Judge. 

In this certified interlocutory appeal, Apple seeks to 

overturn the denial of its motion to dismiss Omni MedSci’s 

(“Omni”) patent infringement complaint for lack of standing. For the reasons below, we affirm the district court’s 

holding that the University of Michigan (“UM”) bylaws did 

not effectuate a present automatic assignment of Dr. Islam’s patent rights and therefore affirm the district court’s 

denial of Apple’s motion to dismiss. 

BACKGROUND

Dr. Islam is a tenured professor of electrical and computer engineering at UM. In 2011, Dr. Islam received an 

additional appointment to the Cardiovascular Center 

(“CVC”) at UM’s medical school. J.A. 895. When Dr. Islam 

joined the UM faculty, he executed an employment agreement that included a provision agreeing to abide by UM’s 

bylaws. UM Bylaw 3.10, the focus of the issues in this appeal, “stipulates the conditions governing the assignment 

of property rights to members of the University Faculty 

and Staff.” J.A. 592. It provides the disposition of intellectual property under three distinct conditions:

1) 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 

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OMNI MEDSCI, INC. v. APPLE INC. 3

by the University regardless of the source of such 

funds, and all royalties or other revenues derived 

therefrom shall be the property of the University. 

* * *

4) Patents, copyrights, and property rights in 

computer software resulting from activities which 

have received no support, direct or indirect, from 

the University shall be the property of the inventor, 

author, or creator thereof, free of any limitation 

which might otherwise arise by virtue of University 

employment. 

5) In cases which involve both University-supported activity and independent activity by a University staff member, patents, copyrights, or other 

property right in resulting work products shall be 

owned as agreed upon in writing and in advance of 

an exploitation thereof by the affected staff member and the Vice-Provost for Research in consultation with the Committee on Patents and 

Copyrights and with the approval of the University’s Office of the General Counsel. It is understood that such agreements shall continue to 

recognize the traditional faculty and staff prerogatives and property rights concerning intellectual 

work products.

Id. (emphases added). 

In 2012, Dr. Islam took an unpaid leave-of-absence 

from UM to “start[] a new Biomedical Laser Company.” 

J.A. 603.1 During his leave, Dr. Islam filed multiple 

1 Apple labels the leave an unpaid sabbatical. The 

label is not determinative of our decision here. We use the 

phrase “leave of absence” because that is what Dr. Islam 

communicated to UM in his April 27, 2012 letter. J.A. 603.

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4 OMNI MEDSCI, INC. v. APPLE INC. 

provisional patent applications. Upon returning to UM in 

2013, he filed non-provisional applications claiming priority to those provisional applications. After those applications issued as patents, Dr. Islam assigned the patent 

rights to Omni on December 17, 2013 and recorded their 

assignment with the Patent and Trademark Office. One of 

those patents is an ancestor of the patents-in-suit here.

Neither UM nor Apple substantively dispute that the 

patents at issue are not directly related to Dr. Islam’s 

teaching, but rather grew out of his time on leave. In 2013, 

Dr. Islam requested that UM’s Office of Technology Transfer (“OTT”) confirm Dr. Islam’s ownership of his inventions. 

OTT denied the request, noting the expenditure of medical 

school funds to support the cost of Dr. Islam’s space and 

administrative time required to process Dr. Islam’s appointment to the CVC. J.A. 895. In internal communications, UM also noted that UM provided “medical school 

faculty partners who have helped springboard ideas with 

him.” J.A. 885. After a number of communications, various 

officials at UM—including the Director of Licensing at 

OTT, the Executive Director of OTT, an Associate Dean at 

the Engineering School, and the University’s Director of Licensing—reiterated that they considered UM to be the 

owner of the patents and noted that Dr. Islam and Omni 

considered Omni to be the owner of the patents. Dr. Islam 

was notified of a formal appeals process to challenge UM’s 

determination of its ownership, but he did not pursue that 

appeal process.

In 2018, Omni sued Apple in the Eastern District of 

Texas, asserting infringement of U.S. Patent Nos.

9,651,533 and 9,861,286 (the “asserted patents”). Apple 

filed a motion to dismiss for lack of standing under Fed. R. 

Civ. P. 12(b)(1), alleging that UM, not Omni, owned the 

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OMNI MEDSCI, INC. v. APPLE INC. 5

asserted patents.2 Apple argued that Dr. Islam agreed “to 

abide by all University rules and regulations” including 

UM bylaw 3.10 when he joined the UM faculty. Apple specifically argued that paragraph 1 of bylaw 3.10 automatically transferred legal title to the patents at issue to UM, 

leaving Dr. Islam with no rights in the invention to assign 

to Omni. Apple thus contended that Omni lacked standing 

to assert the patents against Apple.

The Eastern District of Texas concluded that paragraph 1 of bylaw 3.10 was not a present automatic assignment of title, but, at most, a statement of a future intention 

to assign. Omni Medsci, Inc. v. Apple Inc., No. 2:18-cv00134, ECF No. 276 (E.D. Tex. Aug. 14, 2019) (“District 

Court Op.”). The district court thus concluded that dismissal was improper. Id. at 1. The case was thereafter transferred to the Northern District of California. Apple filed 

for reconsideration, which the district court denied, finding 

“no manifest error” in the Eastern District’s decision. 

Omni MedSci, Inc. v. Apple Inc., No. 19-cv-05924, ECF No. 

346 (N.D. Cal. Nov. 25, 2019). Apple filed an unopposed 

motion for certification of the standing question to this 

court, which the Northern District granted. ECF No. 354 

(Feb. 14, 2020). Apple appeals the denial of dismissal. We 

have jurisdiction under 28 U.S.C. §§ 1292(c)(1) and 1295. 

2 The parties dispute whether instead of filing a Rule 

12(b)(1) motion, Apple should have filed a Rule 12(b)(6) motion to dismiss because Apple was asserting only that Omni 

lacked statutory, not constitutional, standing. Because we 

affirm the district court’s denial of dismissal on the ground 

that Omni is the assignee of the asserted patents as a matter of law, we do not address this issue. See Lone Star Silicon Innovations v. Nanya Tech. Corp., 925 F.3d 1225, 

1235–36 and n.6 (Fed. Cir. 2019).

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DISCUSSION

We review the district court’s determination regarding

patent ownership based on the interpretation of an employment contract de novo. DDB Techs, LLC v. MLB Adv. Media, L.P., 517 F.3d 1284, 1289 (Fed. Cir. 2008). We review 

any underlying factual determinations for clear error. Id. 

We apply federal law to determine whether the contract 

here created an automatic assignment or created an obligation to assign, because that question is “intimately 

bound up with the question of standing in patent cases.” 

Id. at 1290.

Omni’s standing to assert the patents at issue turns on 

whether it has an exclusionary right in the asserted patents. This turns on a legal question of contract interpretation: whether paragraph 1 of bylaw 3.10 automatically 

and presently assigned legal title of Dr. Islam’s inventions 

to UM.3 A patent assignment clause may presently assign 

a to-be-issued patent automatically—in which case no further acts to effectuate the assignment are necessary—or 

may merely promise to assign the patent in the future. Id.

at 1289. Which type of assignment is intended “depends 

on the contractual language.” Id. “In most circumstances, 

an inventor must expressly grant his rights in an invention 

to his employer if the employer is to obtain those rights.” 

Bd. Of Trustees of Leland Stanford Jr. Univ. v. Roche Mol. 

Sys., Inc., 563 U.S. 776, 786 (2011) (“Roche”). Further, we 

3 Although the district court expressed skepticism 

about whether the present invention fell within the scope 

of paragraph 1 of bylaw 3.10, see District Court Op. at 11 n. 

1, it did not purport to make determinative fact findings 

with respect to that question, id. (noting that its determination that Dr. Islam did not use UM funds to create the 

invention was “not necessary to the Court’s determination”). We need not and do not opine on that question on 

appeal.

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OMNI MEDSCI, INC. v. APPLE INC. 7

note that the general rule is that rights in an invention belong to the inventor. Id. at 785.

We agree with the Eastern District of Texas that paragraph 1 of bylaw 3.10 does not presently automatically assign Dr. Islam’s rights to the patent but rather, at most, 

“reflects a future agreement to assign rather than a present assignment.” See District Court Op. at 6. 

On its face, paragraph 1 of bylaw 3.10 does not unambiguously constitute either a present automatic assignment or a promise to assign in the future. See id. It does 

not say, for example, that the inventor “will assign” the patent rights—language that this court has previously held 

to constitute an agreement to assign rather than a present 

assignment. See Arachnid, Inc. v. Merit Indus., Inc., 939 

F.2d 1574, 1580 (Fed. Cir. 1991). Nor does it say that the 

inventor “agrees to grant and does hereby grant” title to 

the patent—language that this court has previously held to 

constitute a present automatic assignment of a future interest. See FilmTec Corp. v. Allied-Signal Inc., 939 F.2d 

1568, 1573 (Fed. Cir. 1991) (“FilmTec I”) (explaining that 

the contract “expressly granted to the Government MRI’s 

rights in any future invention”).

We conclude that paragraph 1 of bylaw 3.10 is most 

naturally read as a statement of intended disposition and 

a promise of a potential future assignment, not as a present

automatic transfer. This is evident from both the text of

bylaw 3.10 taken as a whole and a comparison of the language therein to language interpreted in our precedent. 

First, by its own terms, bylaw 3.10 merely “stipulates the 

conditions governing the assignment of property rights.” 

J.A. 592. (emphasis added) (“Regents’ Bylaws 3.10 stipulates the conditions governing the assignment of property 

rights to members of the University faculty and staff.”). It 

does not purport to effectuate the present transfer of a present or future right. 

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8 OMNI MEDSCI, INC. v. APPLE INC. 

Second, paragraph 4 of bylaw 3.10 shares the same operative language, “shall be the property of,” as paragraph 1, but cannot logically be read as a present 

automatic assignment. Paragraph 4 directs that patents 

“resulting from activities which have received no support, 

direct or indirect, from the University, shall be the property 

of the inventor.” J.A. 592 (emphasis added). The only reasonable reading of this operative language is as a statement of an intended outcome rather than a present 

assignment. To interpret it otherwise would require that 

the inventor presently automatically transfer title to himself. In general, the identical phrase in two paragraphs of 

a provision of a contract should be read identically. See 

Imation Corp. v. Koninklijke Philips Elects. N.V., 586 F.3d 

980, 990 (Fed. Cir. 2009) (citing New York state law for the 

proposition that “[a] proper interpretation of a contract 

generally assumes consistent usage of terms throughout 

the Agreement”). See also Drouillard v. Am. Alternative 

Ins. Corp., 929 N.W.2d 777, 779 (Mich. 2019); Sullivan v. 

Stroop, 496 U.S. 478, 484 (1990) (noting the “normal rule 

of statutory construction that identical words used in different parts of the same act are intended to have the same 

meaning” (internal citations omitted)). The similar operative language in paragraph 5 of bylaw 3.10, “shall be owned 

as agreed upon in writing,” also cannot reasonably be read 

as a present automatic assignment of a future right because paragraph 5 explicitly calls for a future determination of ownership after a negotiation between UM and the 

inventor. Id. (emphasis added) (“In cases which involve 

both University-supported activity and independent activity by a University staff member, patents . . . in resulting 

work products shall be owned as agreed upon in writing.”). 

Apple proffers no convincing reason to read the “shall be” 

language differently between paragraph 1 on the one hand 

and paragraphs 4 and 5 on the other. Because the operative language of “shall be the property of” and “shall be 

owned” cannot be a present automatic assignment in 

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OMNI MEDSCI, INC. v. APPLE INC. 9

paragraphs 4 and 5, the same language in paragraph 1 also 

should not be read as a present automatic assignment. 

Third, the language of paragraph 1 of bylaw 3.10 does 

not use present tense words of execution. Each case in 

which this court found a present automatic assignment examined contractual language with a present tense executing verb. SiRF Tech., Inc. v. Int’l Trade Comm’n, 601 F.3d 

1319, 1326 (Fed. Cir. 2010) (“the Employee assigns all of 

his or her right, interest, or title in any invention to the 

Employer” (emphasis added)); DDB Techs., 517 F.3d 

at 1290 (“agrees to and does hereby grant and assign” (emphasis added)); Speedplay, Inc. v. Bebop, Inc., 211 F.3d 

1245, 1253 (Fed. Cir. 2000) (“hereby conveys, transfers, and 

assigns” (emphasis added)); FilmTec, 939 F.2d at 1570

(MRI “agrees to grant and does hereby grant to the Government the full and entire domestic right, title and interest” 

(emphasis added)). Such present-tense active verbs effectuate a present action. See DDB Techs., 517 F.3d at 1290 

n.3 (holding that a contract included a present automatic 

assignment based on “clear language of the present, automatic assignment provision in the agreement”).

The language in the above cases stands in relief against 

passive verbs in indefinite or future tense. See Arachnid, 

939 F.2d at 1576 (holding that “shall be the property of 

[Arachnid], and all rights thereto will be assigned by 

IDEA . . . to [Arachnid]” was not a present assignment); 

FilmTec I, 939 F.2d at 1573 (distinguishing the present automatic assignment contract at issue from one that “merely 

obligate[d] MRI to grant future rights”). See also Chou v. 

Univ. of Chicago, 254 F.3d 1347, 1357 (Fed. Cir. 2001) 

(holding that “[e]very patentable invention . . . shall be the 

property of the University, and shall be assigned, as determined by the University, to the University” obligated Chou 

to assign her inventions to the University); Regents of 

Univ. of New Mexico v. Knight, 321 F.3d 1111, 1119–20 

(Fed. Cir. 2003) (holding that “such inventions and discoveries belong to the University” obligated the inventors to 

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10 OMNI MEDSCI, INC. v. APPLE INC. 

assign to the university their inventions and all related patents and applications). Looking more specifically at the 

exemplary facts in Arachnid, the Defendant, Merit, traced 

its license rights to patentee Arachnid’s contractor. The 

contractor, IDEA, had signed an agreement that included 

the following provision: 

Any inventions conceived by IDEA or its employees . . . in the course of the project covered by this 

agreement, shall be the property of [Arachnid], and 

all rights thereto will be assigned by IDEA . . . to 

[Arachnid].

Arachnid, 939 F.2d at 1576 (first emphasis added, second 

emphasis added by the Arachnid court). This court interpreted this provision to be “an agreement to assign, not an 

assignment.” Id. at 1580. We see no meaningful distinction between the language in Arachnid and the language 

here. Both use the operative phrase “shall be the property 

of” without additional present-tense verbs of execution. 

Apple argues that Arachnid is distinguishable because paragraph 1 of bylaw 3.10 lacks the “will be assigned by” language that was key to Arachnid’s holding. We do not agree. 

The word “will” in Arachnid is used as a command and 

statement of intention, just as the word “shall” is here, and 

adds nothing to clarify the temporal question before us. 

The “shall be the property of” language here lacks the present-tense active verb of the first set of cases and follows 

more closely the second group of cases.4

4 Contracts are “are interpreted in the light of all the 

circumstances” and “as a whole.” Restatement (Second) of 

Contracts, § 202 (Oct. 2020). Although the presence or absence of present language of assignment is an important 

indicator of the parties’ intent as explained above, we do 

not hold that this indicator is necessarily determinative in 

all cases.

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OMNI MEDSCI, INC. v. APPLE INC. 11

Fourth, the language in paragraph 1 of bylaw 3.10 

stands in contrast to language used by UM’s OTT in the 

Invention Report. That form asks for information about 

contributors to the invention and includes a declaration 

referencing bylaw 3.10, which states: “As required, I/we 

hereby assign our rights in this invention and all resulting 

patents . . . to the Regents of the University of Michigan.” 

J.A. 1731. This form executes UM’s Technology Transfer 

Policy reporting requirement that itself implements the bylaws. J.A. 605 (“This Policy implements Section 3.10 of the 

Bylaws of the Board of Regents.”); District Court Op. at 11. 

Notably, this form notes that the assignment is “required” 

rather than previously executed under bylaw 3.10 and uses 

unambiguous language of present automatic assignment 

(“hereby assign[s] our rights in this invention”). Apple argues that the Invention Report is merely confirmatory of 

the prior assignment automatically effectuated by the bylaw. But the language of the Invention Report is not language of confirmation or merely a mirror of the bylaw—it 

is distinct unambiguous language of present assignment. 

The language in the Invention Report undermines Apple’s 

position that paragraph 1 of bylaw 3.10 executed an automatic assignment, which “no further acts” were required to 

effectuate, because the unambiguous language of the Invention Report is itself a further act. See DDB Techs., 

517 F.3d at 1290 (quoting Filmtec I, 939 F.2d at 1273). 

Apple presents several arguments in favor of interpreting the contract as a present automatic assignment, but 

they are unconvincing. Primarily, Apple argues that the 

“shall be the property of the University” language in paragraph 1 of bylaw 3.10 is similar to language the Supreme 

Court has categorized as “unambiguously” automatically 

vesting title. See Roche, 563 U.S. at 787 (discussing 

42 U.S.C. § 2182, 51 U.S.C. § 20135(b)(1) and

42 U.S.C. § 5908, all vesting title to intellectual property in 

the government). Apple argues that two of this court’s 

cases also interpreted “shall” as effectuating a present 

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12 OMNI MEDSCI, INC. v. APPLE INC. 

automatic conveyance. See FilmTec Corp. v. Hydranautics, 

982 F.2d 1546, 1548 (Fed. Cir. 1992) (“FilmTec II”) (interpreting “title to [a subject] invention shall vest in the 

United States”) and Heinemann v. United States, 796 F.2d 

451, 453. (Fed. Cir. 1986) (interpreting an executive order 

that “[t]he Government shall obtain the entire right, title 

and interest in and to all inventions made by any Government employee” as a transfer of legal and equitable title). 

These cases are inapposite. In Roche, the Supreme 

Court categorized 42 U.S.C. §§ 2182 and 5908, and 

51 U.S.C. § 20135(b)(1) as “providing unambiguously that 

inventions created pursuant to specified federal contracts 

become the property of the United States.” 563 U.S. at 786. 

Although each of these statutes uses the word “shall,” none 

of them purports to govern assignments as between private 

parties. Rather, these statutory provisions specify the initial vesting of rights in certain inventions in the government and direct the United States Patent and Trademark 

Office (“USPTO”) to issue patents therefor directly to the 

government. These are statutory exceptions to the “general rule that rights in an invention belong to the inventor.” 

Id. at 785. None of these statutes concerns assignments

between private parties. Id. at 785.

U.S. Code Title 42, Section 2182, for example, governs 

inventions related to nuclear materials and states that 

such inventions “shall be vested in, and be the property of, 

the Commission” and instructs the Director of the United 

States Patent and Trademark Office to issue any such patents to the Commission. 42 U.S.C. § 2182. Similarly, 51 

U.S.C. § 20135, governs inventions made under contract to 

NASA and explains that inventions within its purview 

“shall be the exclusive property of the United States” and 

directs that any patent thereto “shall be issued to the 

United States.” 51 U.S.C. § 20135(b)(1) and (b)(2). Likewise, 42 U.S.C.§ 5908 explains that title to an invention 

within the scope of the statute “shall vest in the United 

States, and if patents on such invention are issued, they 

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shall be issued to the United States.” 42 U.S.C. § 5908(a). 

The Supreme Court’s statement in Roche is merely a recognition of the statutory imperative that title to certain patents relating to specified inventions vests in the United 

States. Nothing in Roche should be taken as a holding that 

the word “shall” implies any sort of transfer, immediate or 

otherwise. Indeed, none of the statutes noted by the Supreme Court addresses how, when or under what circumstances rights in inventions are or shall be conveyed, 

transferred or assigned as between private parties. FilmTec II is distinguishable for these same reasons. FilmTec

II, 982 F.2d at 1548 (“[T]itle to [a subject] invention shall 

vest in the United States” (emphasis added)).

In Heinemann v. United States, 796 F.2d 451, 456 (Fed. 

Cir. 1986), this court held that the Commissioner of Patents and Trademarks and the Department of the Army did 

not act arbitrarily and capriciously or otherwise violate the 

APA by concluding that Heinemann’s invention—made 

within the course of his employment with the government—was not his property due to the provisions of an Executive Order. Executive Order 10096 stated that the 

“Government shall obtain the entire right, title and interest in” the subject inventions. Id. at 453. According to Apple, because “shall obtain” there made the government the 

“owner” of the patent, id. at 456, bylaw 3.10 here necessarily created a present assignment. Apple is incorrect. 

The procedural posture in Heinemann was a review under 

the Administrative Procedures Act of a decision delegated 

to two executive agencies interpreting an Executive Order. 

This is a far cry from the straightforward interpretation of 

language in a contract between two private parties. Moreover, the fundamental issue on review in this court in 

Heinemann was whether Heineman could maintain a suit 

alleging a taking against the government, under circumstances in which the government had at least some form of 

ownership of the patent being asserted. This court did not 

consider the nature of the government’s ownership (legal 

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14 OMNI MEDSCI, INC. v. APPLE INC. 

and/or equitable or the timing of the transfer) of the asserted patent, though that issue was referenced by at least 

one party.5 Heinemann does not help answer the question

here of the nature of the assignment contained in bylaw 3.10. 

More broadly, Apple cautions that whether an agreement confers an assignment or a mere license “depends on 

the substance of what was granted rather than formalities 

or magic words.” See Lone Star Silicon, 925 F.3d at 1229. 

Apple’s point is well taken. Our focus here is not on any 

magic words, but rather on the absence of an active verbal 

expression of present execution in paragraph 1 of bylaw 3.10. The absence of an active verbal expression of present execution is a substantive indication that a present 

automatic assignment was not intended. 

Next, Apple argues that UM’s Technology Transfer Policy confirms that bylaw 3.10 is meant to effectuate a present automatic transfer. Apple refers specifically to the 

section titled “Granting Rights Back to Inventors” and 

notes that it sets conditions under which the University 

can “[a]ssign or license its rights in University Intellectual 

Property back to one or more inventors.” J.A. 1211, § VI.1 

(emphasis added). See also J.A. 1207, § II.3 (“University 

generally will retain ownership of Intellectual Property 

produced by Employees while participating in sabbaticals 

or other external activities if they receive salary from the 

University for such activity” (emphasis added)). Omni responds that the Technology Transfer Policy does not explain or indicate how the University obtains its rights—

whether by automatic operation of bylaw 3.10 or by a 

5 Adding to the unusual posture of the case, Heinemann did, in fact, separately assign the patent to the 

United States, although that assignment was held invalid, 

a determination that was not at issue on appeal. Heinemann, 796 F.2d at 452.

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OMNI MEDSCI, INC. v. APPLE INC. 15

separate instrument of assignment. It argues that the “retain” language does not help answer the question of who 

has the rights in a particular invention. Omni points to the 

Invention Report, discussed above, as the actual instrument of transfer, and interprets the provisions of the Technology Transfer Policy implying university ownership as 

concerning inventions already transferred via the Invention Report or other document of assignment. 

We agree with Omni that the Technology Transfer Policy, if anything, supports and does not undermine Omni’s 

position. While the Technology Transfer Policy indicates 

that the University “will retain ownership of Intellectual 

Property produced by Employees while participating in 

sabbaticals,” J.A. 606, it says nothing about how the University obtains its intellectual property. Furthermore, 

nothing in the Technology Transfer Policy relies on the operation of bylaw 3.10 to effectuate any transfer of any intellectual property rights. The “retain” language Apple 

cites is inapposite to the question of whether paragraph 1 

of bylaw 3.10 affects a present automatic assignment.

Finally, Apple argues that Dr. Islam’s and the University of Michigan’s prior conduct demonstrate a joint understanding that paragraph 1 of bylaw 3.10 executed a present 

assignment rather than a mere promise to assign. See 

DDB Tech., 517 F.3d at 1292 (“[G]eneral contract law [recognizes] . . . that conduct of the parties which indicates the 

construction that the parties themselves placed on the contract may . . .be considered in determining the parties’ true 

intent.”). In particular, Apple points to a 2007 “re-assignment” letter agreement that Dr. Islam signed with respect 

to an unrelated patent, stating: “Inventor acknowledges 

that pursuant to the University’s Regents Bylaw 3.10 the 

Invention and Patents are the Property of the University.” 

J.A. 1155. According to Apple, this letter showed Dr. Islam’s acknowledgment that paragraph 1 of bylaw 3.10 effectuated a present automatic assignment, because Dr. 

Islam did not otherwise assign the patent discussed 

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16 OMNI MEDSCI, INC. v. APPLE INC. 

therein. Omni responds that this letter agreement was a 

form letter that Dr. Islam reluctantly signed, despite 

clearly maintaining his belief that he always retained ownership of that patent. Omni also argues that UM’s conduct 

shows its understanding that paragraph 1 of bylaw 3.10 did 

not effectuate a present automatic assignment because in 

2010, UM “waived” any claim to ownership in three provisional applications filed by Dr. Islam but made no offer to 

assign the rights in the inventions covered by those applications to Dr. Islam. According to Omni, such an assignment (rather than a waiver) would have been required if 

bylaw 3.10 had previously effectuated a present automatic 

assignment thereof to UM. See J.A. 677. Finally, Omni 

argues that the parties’ conduct with respect to the patents 

at issue here supports its position: Dr. Islam sought a release rather than a reassignment of the inventions, and 

UM was at first willing to sign the release before changing 

its mind. See J.A. 885–86.

The parties’ past conduct is not particularly helpful 

here with respect to the interpretation of paragraph 1 of 

bylaw 3.10. Dr. Islam’s signing of a letter agreement in 

2007 to “reassign” an unrelated patent back to him at the 

University’s request is, at best, weak evidence of his understanding of the scope of bylaw 3.10. Similarly, the fact that 

UM “waived” rather than “reassigned” three patent applications in 2010 does not necessarily indicate that UM considered the operation of bylaw 3.10 not to be automatic. 

UM was acting under the belief that no University funds 

or resources were expended in the acquisition of those inventions and that the University therefore did not have an 

ownership claim to the inventions, regardless of how bylaw 3.10 is read. Finally, one University official’s willingness (later reconsidered) to sign a release rather than a 

reassignment with respect to the patents at issue here does 

not necessarily indicate the University’s interpretation of 

bylaw 3.10. The parties’ past conduct does not change our 

interpretation of the language of the bylaws.

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OMNI MEDSCI, INC. v. APPLE INC. 17

CONCLUSION

For the foregoing reasons, we conclude that paragraph 1 of bylaw 3.10 is, at most, a statement of a future 

intention to assign the patents at issue. It did not effectuate a present automatic assignment of title to UM and thus 

did not negate Dr. Islam’s assignment of the inventions to 

Omni. Accordingly, the district court’s denial of Apple’s 

motion to dismiss for lack of standing is affirmed.

AFFIRMED

Case: 20-1715 Document: 84 Page: 17 Filed: 08/02/2021
United States Court of Appeals 

for the Federal Circuit ______________________ 

OMNI MEDSCI, INC.,

Plaintiff-Appellee

v.

APPLE INC.,

Defendant-Appellant

______________________ 

2020-1715, 2020-1716

______________________ 

Appeals from the United States District Court for the 

Northern District of California in Nos. 4:19-cv-05673-YGR, 

4:19-cv-05924-YGR, Judge Yvonne Gonzalez Rogers.

______________________ 

NEWMAN, Circuit Judge, dissenting.

This certified question arises from the suit by Omni 

MedSci, Inc. (“Omni”) against Apple Inc. for patent infringement. Apple presented the defense that Omni does 

not own the patents in suit because the inventor, Mohammed Islam, is an employee of the University of Michigan, 

and his employment agreement requires that his inventions and patents are the property of the University. Thus 

Apple argued that Omni does not have standing to sue for 

infringement. The district court held that Omni has

Case: 20-1715 Document: 84 Page: 18 Filed: 08/02/2021
2 OMNI MEDSCI, INC. v. APPLE INC. 

standing to sue1 and my colleagues agree. I respectfully 

dissent for these patents are the property of the University. 

DISCUSSION

“Standing is a constitutional requirement pursuant to 

Article III.” Abraxis Bioscience, Inc. v. Navinta LLC, 625 

F.3d 1359, 1363 (Fed. Cir. 2010). “[T]he touchstone of constitutional standing in a patent infringement suit is 

whether a party can establish that it has an exclusionary 

right in the patent that, if violated by another, would cause 

the party holding the exclusionary right to suffer legal injury.” WiAV Sols. LLC v. Motorola, Inc., 631 F.3d 1257, 

1265 (Fed. Cir. 2010); see also Morrow v. Microsoft Corp., 

499 F.3d 1332, 1339−41 (Fed. Cir. 2007) (a party that does 

not have the exclusionary right lacks constitutional standing).

In the district court Professor Islam did not dispute his 

obligations to the University under his employment agreement and the University’s Bylaws and Technology Transfer Policy; he instead argued that these inventions are not 

subject to those obligations because the patent applications

were not filed with University support. However, the district court did not decide this ground; the court stated: 

“Having found that Dr. Islam’s employment agreement did 

not operate as an automatic assignment of any patent 

rights, the Court need not reach the other arguments asserted by Apple.” Dist. Ct. Op. at 11.

The district court held that the employment agreement 

and other University documents did not achieve their intended purpose of assigning inventions and patent rights

to the University, despite the decades of implementation of

1 Omni MedSci., Inc. v. Apple Inc., Nos. 18-CP-00429 

and 18-CV-00134 (E.D. Tex 2019) (“Dist. Ct. Op.”); and 

Nos. 4:19-CV-05673 and 4:19-CV-05924 (N.D. Cal. 2020).

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OMNI MEDSCI, INC. v. APPLE INC. 3

that policy. Thus the district court held that Professor Islam retained ownership of these inventions and that he

validly assigned the patents to Omni, a company that he 

formed for the purpose of exploiting these inventions. My 

colleagues affirm the district court’s denial of Apple’s motion to dismiss for lack of standing. 

This ruling is not correct as a matter of contract interpretation, and overturns decades of unchallenged understanding and implementation of the University’s 

employment agreement and policy documents. Omni does 

not own these patents and does not have standing to sue 

for infringement. 

A 

Prof. Islam’s employment agreement requires 

that patents based on activities supported by 

the University “shall be the property of the 

University” 

In August, 1992, Dr. Mohammed Islam was hired by 

the University of Michigan for the position of Assistant 

Professor of Engineering and Computer Science, and since 

November 2011 he has also held an appointment at the 

Cardiovascular Center of the University’s Medical School. 

His employment agreement states the University’s Bylaw

3.10, including the following text: 

Regents’ Bylaws 3.10 stipulates the conditions governing the assignment of property rights to members of the University faculty and staff. Unless 

otherwise provided by action of the Regents: 

1) 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, regardless of the source of such 

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4 OMNI MEDSCI, INC. v. APPLE INC. 

funds, and all royalties or other revenues derived 

therefrom, shall be the property of the University. 

* * * 

4) Patents, copyrights, and property rights in computer software resulting from activities which have 

received no support, direct or indirect, from the 

University shall be the property of the inventor,

author, or creator thereof, free of any limitation 

which might otherwise arise by virtue of University 

employment. 

Appx592 (Emphases added). The employment agreement 

concludes with: 

I agree to abide by the University’s rules and regulations.

[Signed] Mohammed N. Islam [Date] 8/7/92 (Appx592).

The patent provisions are elaborated in a University

document entitled “Policy on Intellectual Property: Including their Disclosure, Commercialization, and Distribution 

of Revenues from Royalties and Sale of Equity Interests.” 

This document includes the following: 

II. Ownership of Intellectual Property

1. Intellectual Property made (e.g., conceived or 

first reduced to practice) by any person, regardless 

of employment status, with the direct or indirect 

support of funds administered by the University 

(regardless of the source of such funds) shall be 

the property of the University, except as provided by this or other University policy. Funds administered by the University include University 

resources, and funds for employee compensation, 

materials, or facilities... 

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OMNI MEDSCI, INC. v. APPLE INC. 5

Tech Transfer Policy, Rev. June 1, 2009 (emphasis added)

(Appx1207). 

In the district court, Omni argued that the inventions 

and patents at issue were not made with University support, and thus were owned by Professor Islam in accordance with paragraph four of Bylaw 3.10, supra. Apple and 

the University offered contrary evidence and argument. 

The district court did not decide this question. Instead, the 

district court held that the University did not own these 

patents, because “Bylaw 3.10 only addresses existing IP,” 

whereby the contractual provision that patents “shall be 

the property of the University” “did not operate as an automatic assignment of any patent rights.” Dist. Ct. Op. at 11. 

The court stated that “the only plausible interpretation of 

Bylaw 3.10 is as a requirement for a future determination 

and assignment, rather than a present assignment of a future interest.” Dist. Ct. Op. at 8.

The district court concluded that Omni owns these patents by valid assignment from the inventor. The panel 

majority agrees, holding that Professor Islam’s inventions 

made during his employment by the University, and patents thereon, did not automatically become University 

property because “shall be the property of the University” 

is stated in the future tense and thus does not automatically assign future inventions. The panel majority holds 

that the employment agreement “did not negate Dr. Islam’s 

assignment of the inventions to Omni,” Maj. Op. at 17. 

I cannot agree with my colleagues’ interpretation of the 

employment agreement and University Bylaws and Tech 

Transfer Policy documents, for this interpretation contravenes these documents’ plain meaning and long-understood interpretation. 

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6 OMNI MEDSCI, INC. v. APPLE INC. 

B 

The University’s employment agreement, 

signed when employment starts, necessarily 

applies to inventions made in the future 

“A contract is read in accordance with its express terms 

and the plain meaning thereof.” C. Sanchez & Son, Inc. v.

United States, 6 F.3d 1539, 1543 (Fed. Cir. 1993). The 

plain meaning of “shall be the property of the University” 

is that inventions made during employment and patents 

thereon shall belong to the University.

The panel majority holds that the University’s documents fail to achieve the University’s purpose because 

“shall be the property of the University” is in the future 

tense and therefore does not establish ownership of future 

inventions. The majority holds that the employee’s “shall 

be” promise is “merely” a “promise to assign in the future,” 

Maj. Op. at 6, and therefore precludes automatic vesting of 

property rights when the invention is made. 

On this reasoning, the majority holds that ownership 

of the employee’s future inventions is not transferred by

“shall be the property of the University” and that University ownership does not automatically vest for inventions

made with University support during employment. This 

holding defeats the purpose of the University’s Bylaw and 

Technology Transfer Policy and contradicts the employment agreement. 

The University and Apple cite precedent in which the 

courts have considered whether an employment agreement 

provides for ownership by the employer of the employee’s 

future inventions. In C.R. Daniels, Inc. v. Naztec Int’l Grp., 

LLC, 2012 WL 1268623 (D. Md. Apr. 13, 2012), the employment agreement stated that the employee’s inventions 

“shall become the absolute property of” the employer “without further consideration,” id. at *4, and the court observed 

that “conspicuously absent from the [agreements] is any 

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OMNI MEDSCI, INC. v. APPLE INC. 7

language indicating that some other act had to be performed for the assignments to be completed.” Id. at *12. 

The court reasoned that since no assignment mechanism 

was stated in the employment agreement, the parties intended the automatic vesting of ownership of future inventions, with no need for specific assignment. Id. at *16. The 

University draws analogy between the C.R. Daniels agreement’s future tense “shall become the absolute property of 

the employer” and the University’s future tense “shall be 

the property of the University.” See Appx592.

The University explains that its policy of automatic 

vesting of employee inventions facilitates University administration of patent and licensing activity and fulfillment of Bayh-Dole obligations. The University points to 

its implementation of Bylaw 3.10 and the Technology 

Transfer Policy, by the employment agreement’s automatic 

vesting of University ownership of employee inventions. 

The University states that the grammatical usage 

“shall be the property of the University” is appropriate for 

inventions and patents not in existence, and is designed to 

achieve automatic vesting when any invention is made. 

The University’s Director of Licensing, Mr. Bryce Pilz, testifying as the University’s Rule 30(b)(6) witness, described 

this long-established implementation of Bylaw 3.10 and 

the Technology Transfer Policy. Appx3964, 3965, 3967, 

3968, 3971, 3974.

C 

The employment agreement signed by Professor Islam conforms to the University’s rules 

and policy

The University stresses the Bylaw provision whereby 

employee inventors may request assignment or license 

back to them of rights to their invention, and the implementing provisions in the Technology Transfer Policy:

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8 OMNI MEDSCI, INC. v. APPLE INC. 

VI. Granting Rights Back to Inventors

1. Upon request by one or more Inventors, the University may in its discretion elect to assign or license its rights in University Intellectual Property 

back to one or more inventors when permissible under University policies, related sponsorship agreements, and/or federal law ... 

Tech Transfer Policy (Appx4201). The University points 

out that such an assignment- or license-back mechanism is 

necessary because the University has automatic ownership 

of employee inventions. The University states that it has 

granted rights back to inventors, including to Professor Islam for an unrelated invention, and that Professor Islam 

acknowledged, on receiving the assignment, that: 

B. Inventor acknowledges that pursuant to the 

University’s Regents Bylaw 3.10 the Invention and 

Patents are the property of the University.

[Signed] Mohammed N. Islam [Date] 5/23/07 (Appx4137).

Despite this history of consistent and undisputed interpretation and implementation, the majority holds that the

documents providing that inventions and patents “shall be

the property of the University” are fatally defective, with 

the result that the employee, not the University, owns the 

inventions and patents. The majority reasons that “paragraph 1 of bylaw 3.10 is most naturally read as a statement 

of intended disposition and a promise of a potential future 

assignment, not as a present automatic transfer,” Maj. Op. 

at 7. Thus the majority rules that the employment agreement does not place ownership in the University.

According to my colleagues, this fatal flaw in the University’s documents could have been avoided simply by using the present tense “is the property of the University” 

instead of the future tense “shall be the property of the University.” However, these documents necessarily apply only

to future inventions, for which the future tense is 

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OMNI MEDSCI, INC. v. APPLE INC. 9

appropriate usage and affords clear understanding. Indeed, throughout this litigation, neither Professor Islam 

nor Omni asserted ambiguity or confusion of meaning or 

intent. See, e.g., United States v. Choctaw Nation, 179 U.S. 

494, 531 (1900) (“[A]s a general rule in the interpretation 

of written instruments the intention of the parties must 

control, and [] such intention is to be gathered from the 

words used―the words being interpreted, not literally nor 

loosely, but according to their ordinary signification.”) See 

also Moran v. Prather, 90 U.S. 492, 499 (U.S. 1875) (“[T]he 

words of the instrument which have reference to the usual 

transactions of life must be interpreted according to their 

plain, ordinary, and popular meaning[.]”); Restatement 

(Second) of Contracts § 202 (1) (Am. L. Inst. 1981) (“Words 

and other conduct are interpreted in light of all the circumstances, and if the principal purpose of the parties is ascertainable it is given great weight.”).

The explicit provision in the employment agreement 

notifies the employee of this condition of University employment. However, the majority holds that despite the 

undisputed intent and purpose of the University’s documents, the district court did not err in sustaining Omni’s 

ownership and its constitutional standing to sue.

Apple and the University point out that the employment agreement has a long history of understanding and

performance by the University and its employees, including Professor Islam. “Conduct of the parties which indicates the construction that the parties themselves placed 

on the contract may ... be considered in determining the 

parties’ true intent.” DDB Techs., LLC v. MLB Adv. Media, 

L.P., 517 F.3d 1284, 1292 (Fed. Cir. 2008) (citation omitted, 

ellipsis in original). 

The University’s Director of Licensing testified that the 

provision “shall be the property of the University” is well 

understood and has long been applied to effect the 

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10 OMNI MEDSCI, INC. v. APPLE INC. 

automatic vesting of University ownership of employee inventions. Appx4015 (Pilz Dep. at 219:8−220:5).

D 

Precedent illustrates a variety of contractual

usages implementing employer ownership of

employee inventions

Employer ownership of employee inventions requires 

agreement and authorization. Precedent illustrates varied 

usages for this purpose.

In FilmTec Corp v. Hydramantics, 982 F.2d 1546 (Fed. 

Cir. 1992) the contract with the government stated that 

any inventions “shall vest in the United States.” The court 

held that “shall vest” means that ownership “immediately 

vested in the United States by operation of law ... when the 

invention was conceived,” without any need for additional 

assignment or other documentation. Id. at 1553. There is 

no distinction of legal effect between “shall vest in the 

United States” and “shall be the property of the University.”

In Heinemann v. United States, 796 F.2d 451 (Fed. Cir. 

1986), an Executive Order concerning ownership rights in 

inventions “creat[ed] the presumption that [the] Government shall obtain the entire, right, title and interest in the 

invention” made by a Government employee. Id. at 453. 

The court held that “his invention became the property of 

the Government” although not affirmatively assigned. Id. 

at 456.

In Affymetrix, Inc. v. Illumina, Inc., 446 F. Supp. 2d 

292 (D. Del. 2006), a consulting contract stated that “The 

Work Product ... produced by Consultant under this Agreement and all proprietary rights therein shall be the exclusive property of ARI.” Id. at 294. The court held that the 

consulting agreement effected “a present assignment of future interests and that, upon conception, legal title to the 

invention was transferred [] by operation of law,” id. at 297, 

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OMNI MEDSCI, INC. v. APPLE INC. 11

referring to the mutual understanding and contractual intent of the parties. There is no distinction of legal effect 

between “shall be the exclusive property of ARI” and “shall 

be the property of the University.” Both achieve the intended automatic transfer of ownership. 

In Alzheimer’s Institute of America, Inc. v. Avid Radiopharmaceuticals, 2011 WL 3875341 (E.D. Pa. Aug. 31, 

2011) the employment agreement stated: “An invention 

which is made in the field of discipline in which the employee is employed by the University [of Pennsylvania] or 

by using University support is the property of the University.” The court held that the University’s property right 

vests automatically when the invention is made. Id. at *7, 

*10.

Some of the agreements discussed in precedent use the 

present tense favored by the majority. In SiRF Technology, 

Inc. v. International Trade Commission, 601 F.3d 1319, 

1326 (Fed. Cir. 2010), the employment agreement states:

“The Employee assigns all of his or her right, interest, or 

title in any Invention to the Employer ....” The court held 

that “[b]y using the language ‘Employee assigns,’ the 

agreement expressly grants rights with no further action 

needed on the part of the employee.” Id.

In Preston v. Marathon Oil Co., 684 F.3d 1276, 1288 

(Fed. Cir. 2012) the court held that “[b]ecause the assignment clause in the April Employee Agreement states that 

the employee agrees to and does ‘hereby assign’ all ‘Intellectual Property,’ it is an express assignment of rights in 

future inventions, and automatically assigned rights to 

Marathon without the need for any additional act.” The 

panel majority herein approves of the usage “does hereby 

assign,” as free of the “shall be” future tense defect.

An agreement to execute a future assignment is seen 

in Advanced Video Techs. LLC v. HTC Corp., 879 F.3d 1314 

(Fed. Cir. 2018), where the agreement states that the employee 

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12 OMNI MEDSCI, INC. v. APPLE INC. 

will promptly make full written disclosure to the 

Company, will hold in trust for the sole right and 

benefit of the Company, and will assign to the Company all my right, title, and interest in and to any 

and all inventions, original works of authorship, 

developments, improvements or trade secrets 

which I may solely or jointly conceive or develop or 

reduce to practice, or cause to be conceived or developed or reduced to practice, during the period of 

time I am in the employ of the Company.

Id. at 1317 (emphasis omitted). The court held that this 

provision is not an automatic assignment, that a separate 

assignment document is required, and that such assignment to the employer is obligatory. Id. at 1317−18. The 

court enforced the obligation to assign, in conformity to the 

agreement.

Another variant is seen in Chou v. University of Chicago, 254 F.3d 1347 (Fed. Cir. 2001), where the employment agreement provided that the employee’s inventions 

“shall be the property of the University, and shall be assigned, as determined by the University, to the University, 

to an organization sponsoring the activities, or to an outside organization deemed capable of administering patents.” Id. at 1357. The court held that this provision 

created an obligation in Chou to assign, but that assignment to the University is not automatic because an intermediate step requires the University to identify the 

assignee. 

In Regents of the University of New Mexico v. Knight, 

321 F.3d 1111 (Fed. Cir. 2003), an employment agreement 

requiring the employee inventor to cooperate in the patent 

prosecution process, and an assignment of a parent patent 

application stating that the inventor does “sell, assign, and 

transfer unto [UNM] all right, title, and interest” in the patents and “in and to any and all divisions, reissues, continuations, and extensions thereof” vested ownership in the 

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OMNI MEDSCI, INC. v. APPLE INC. 13

University and was “more than sufficient” to obligate the 

employee to assign the invention to the University, for the 

contract established that the employee’s inventions are the 

property of the University. Id. at 1119−20. 

In overview, a provision that inventions “shall be assigned” to the employer is generally deemed to require a 

separate assignment document, as in Arachnid, Inc. v. 

Merit Industries, Inc., 939 F.2d 1574, 1580 (Fed. Cir. 1991). 

And a provision that inventions are or shall be the property 

of the employer is generally deemed to vest ownership by 

operation of law. Precedent implements that the focus is 

on contractual intent, see Restatement (Second) of Contracts § 202 (Am. L. Inst. 1981): 

(1) Words and other conduct are interpreted in the 

light of all the circumstances, and if the principal 

purpose of the parties is ascertainable it is given 

great weight... ; 

* * *

(3) Unless a different intention is manifested, (a) 

where language has a generally prevailing meaning, it is interpreted in accordance with that meaning; (b) technical terms and words of art are given 

their technical meaning when used in a transaction 

within their technical field... ; 

* * *

(5) Wherever reasonable, the manifestations of intention of the parties to a promise or agreement are 

interpreted as consistent with each other and with 

any relevant course of performance, course of dealing, or usage of trade.

Restatement, § 202. 

Professor Islam entered into an employment agreement that used the words “shall be the property of the University.” This is an unambiguous statement of intended 

and agreed ownership. It is not disputed that the purpose 

of Bylaw 3.10 is to establish University ownership of 

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14 OMNI MEDSCI, INC. v. APPLE INC. 

inventions made with University support. It cannot reasonably be concluded that the parties intended that Professor Islam would nonetheless own inventions made with 

University support. See Evoqua Water Techs., LLC v. M.W. 

Watermark, LLC, 940 F.3d 222, 229 (6th Cir. 2019) (“Under 

Michigan law, the primary goal in the construction or interpretation of any contract is to honor the intent of the 

parties”) (internal quotation marks and alteration omitted).

The interpretation of employment contracts, including 

obligations of employer and employee with respect to ownership of inventions and patents, is a matter of state contract and property law. See Jim Arnold Corp. v, Hydrotech

Sys., Inc., 109 F.3d 1567, 1572 (Fed.Cir.1997) (“[T]he question of who owns the patent right and on what terms typically is a question exclusively for state courts.”). The 

Federal Circuit is in accord with Michigan law that the inquiry as to meaning of contract terms “depends on the substance of what was granted rather than formalities or 

magic words.” Lone Star Silicon Innovations LLC v. Nanya 

Tech. Corp., 925 F.3d 1225, 1229 (Fed. Cir. 2019). When 

contract “provisions are clear and unambiguous, they must 

be given their plain and ordinary meaning.” Alaska Lumber & Pulp Co. v. Madigan, 2 F.3d 389, 392 (Fed. Cir.

1993). The usage “shall be the property of the University” 

supports no plain and ordinary meaning other than that 

the University is vested as owner when the property comes 

into being. 

It is noteworthy that Professor Islam did not invoke the 

formal “Appeal Process” provided in the Technology Transfer Policy. It is also noteworthy that Professor Islam does 

not argue that these inventions were made during his 4-

month leave of absence; he stated in his request for leave: 

“I intend during the period to focus on fund-raising for the 

new company, setting its technical direction, and pulling 

together the foundational intellectual property.” Letter 

“RE: Request for Leave of Absence Fall 2012,” February 7, 

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OMNI MEDSCI, INC. v. APPLE INC. 15

2012 (Appx4085). He filed seven patent applications during that period, and two more within two weeks thereafter.

Professor Islam’s agreement that patents on inventions 

supported by the University “shall be the property of the 

University” defeats his purported assignment to Omni. 

Even on the majority’s “conclu[sion] that paragraph 1 of 

bylaw 3.10 is most naturally read as a statement of intended disposition and a promise of a potential future assignment,” Maj. Op. at 7, this conclusion precludes validly 

assigning these patents to an entity other than the University.

“[T]he person seeking to invoke the jurisdiction of the 

court must establish the requisite standing to sue.” Ortho 

Pharm. Corp. v. Genetics Inst., Inc., 52 F.3d 1026, 1032−33 

(Fed. Cir. 1995) (citing Whitmore v. Arkansas, 495 U.S. 

149, 154 (1990). Since it is necessary for Omni to show that 

“it held enforceable title to the patent at the inception of 

the lawsuit,” Abraxis, 625 F.3d at 1364, Omni does not 

have standing to bring these infringement suits.

From the court’s contrary ruling, I respectfully dissent.

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