Apple Asks Appeals Court to Reverse Smartwatch Import Ban as Masimo Patent Battle Continues

Apple is once again hitting back at Masimo in its patent fight over pulse oximetry technology, recently asking a US appeals court to overturn the International Trade Commission (ITC) tribunal’s October 2023 decision to ban imports of Series 9 and Ultra 2 editions of the smartwatch.

The ITC determined that Apple had infringed on Masimo’s intellectual property by implementing light-based pulse oximetry into its Apple Watch devices, resulting in a limited exclusion order and a cease-and-desist order against Apple which went into effect in late December 2023. The import ban on the products was temporarily lifted the day after initiating the ban after the company persuaded the federal circuit to pause it while seeking an appeal, however, an appeals court reinstated the ban in January 2024.

After the ban was reinstated, Apple announced it would remove the watches pulse oximetry capabilities sold during the appeal process. US Customs and Border Protection, after the redesign announcement, determined that the pulse oximetry-free smartwatches did not violate Masimo’s patents and would not be subject to a ban.

In response to Apple’s redesign decision, Masimo’s legal team filed a notice of supplemental authority in the Emergency Stay Motion granted by a Federal Appeals Court which allowed apple to continue to sell its watches while it awaited a decision on whether the ban would be paused throughout the appeals process fighting ITC’s ruling, according to BTIC analysts.

“[Masimo’s] legal team point out in this notice of supplemental authority that the [Customs and Border Protection] decision that the Apple redesign is outside the scope of the ITC's remedial orders eliminates Apple's argument of irreparable harm under those remedial orders,” Marie Thibault and Sam Eiber wrote in the analysis.

The “irreparable harm” statement Masimo highlights comes from an Apple argument which said that allowing the ban to stay in effect would cause significant harm to the company, its suppliers, and the public, according to Reuters.

Now, however, Apple wrote in its recent appeal filing that the decision to ban the smartwatches was made while relying on Masimo patents that the company said were “purely hypothetical” when filing its complaint in 2021. “The commission exceeded its statutory authority by holding the technical prong satisfied even though the supposedly patent-practicing device identified in the complaint was hypothetical,” according to the complaint.

Due to this, Apple argued that Masimo’s patents were invalid, and the ban could not stand.

Masimo, on the other hand, has been steadfast in its challenge to the tech giant from the beginning, stating as such in a late December 2023 interview with The Washington Post.

“People were telling me I’m crazy and I can’t go against Apple, they have unlimited resources.” said Joe Kiani, CEO of Masimo. “I feel like I have to do this. If I can change the most powerful company in the world from continuing to act badly, that’ll have more impact on the world than anything else I’m doing.”

After the ITC win, Kiani also seemed to be taking the additional twists and turns of the battle in stride, saying in the company’s February fourth-quarter earnings call that, “We were happy that we got our injunction as a patent owner and a company that makes products that are competing in that space. That's ultimately what we wanted.”

As for the newest twist in the patent showdown, Masimo has not yet released a statement responding to the news.

Neither Apple nor Masimo responded to MD+DI’s request for comment.