United States Magistrate Judge James M. Wicks (E.D.N.Y.) recommended that Defendant Apple Inc.’s (“Apple”) motion to dismiss Plaintiff Joseph Wiesel’s (“Wiesel”) action for infringement of U.S. Patent No. 7,020,514 (the “’514 patent”) be granted for lack of standing and failure to state a claim. Slip Op. at 1-2, 9-10. The ’514 patent is titled “Method of and apparatus for detecting atrial fibrillation” and was asserted against the Apple Watch, with “features that monitor and detect atrial fibrillation . . . and [] a notification feature indicating any irregular pulse detected.” Id. at 1-2.
On standing, the court considered whether Wiesel, who had licensed the ’514 patent to a third-party, could bring suit without joining the licensee. Id. at 5. In 2006, Wiesel entered “an exclusive license” to his patent “with the Taiwanese medical device manufacturer, Microlife Corporation (‘MLC’).” Id. at 3. Under that license, Wiesel “was categorically prohibited from selling, transferring, or assigning ‘all or any portion of the Licensed Technology without the prior written consent of MLC” and “the right to pursue patent infringement committed by third parties would first fall to MLC, and only upon MLC’s not doing so, would [] Wiesel be able to prosecute claims of infringement.” Id. In 2019, on the eve of filing suit, Wiesel and MLC amended the agreement to provide that Wiesel had “the sole right . . . to enforce any rights arising from the [’514 patent], including those related to third-party infringement.” Id. However, the amendment still required Wiesel “to first seek the written consent of MLC before any sale, transfer, or assignment of ‘any portion’ of the [’514 patent] could occur” and gave MLC a right of first negotiation before Wiesel could grant a license to a third party. Id. at 4.
The court explained that these two rights, “the right of enforcement and the right of alienation” are key to the determination of “whether [there] has been a virtual assignment of the patent by the original patentee.” Id. at 11. While the Court found that the 2019 amendment granted Wiesel alone the “right to sue,” his “right of alienation to the ’514 Patent is materially limited.” Id. at 12-13. This arrangement, the court said, “amounts to the so-called ‘hunting license’ in which the only right [Wiesel] has truly retained is the ability to pursue, absent any consent required of MLC, litigation against third-party infringers” which the court characterized as “a particularly disfavored practice.” Id. As a result, the court recommended that the suit be dismissed, albeit without prejudice because it saw “no reason . . . joinder cannot be effectuated.” Id.
On patentability, the court found that the claims were directed to a “method of determining possible atrial fibrillation . . . comprising the steps of: (a) detecting irregular pulse rhythms . . . (b) analyzing the detected irregular pulse rhythms to make a determination of possible atrial fibrillation; and . . . (c) indicating the possible atrial fibrillation from the determination.” Id. at 18. The court determined that the claims “merely ‘recite and are directed to collection, analyzing, and displaying data by conventional means,’” and are thus “‘quintessential abstract concepts—not any particular technology for performing those functions.’” Id. The court explained, “all that is described is that these processes happen, not necessarily by any particular means with specificity that could then ‘narrow’ the device to patent eligible subject matter.” Id. at 19. As a result, the court determined “that the ’514 Patent fails the first step of Alice/Mayo, for its claims are directed at the abstract processes of detecting, analyzing, determining, and indicating data.” Id. It further found that there was no inventive concept because the claims recite a series of steps “that involve ‘detecting[,]’ ‘processing,’ ‘indicating,’ and ‘analyzing’ the physiological data collected by” a generic apparatus. Id. at 21. For those reasons, it “recommend[ed] dismissal, since the claims underlying the ’514 Patent fail to articulate an inventive concept” and are patent ineligible “under § 101.” Id.
The case is Wiesel v. Apple Inc., No. 19-cv-7261 (JMA)(JMW) (E.D.N.Y. Apr. 21, 2025).
