Apple says ITC watch ban ‘an exploitation of vast injunctive powers’
Tech giant asks appeals court to overturn import ban as ITC ‘overstepped authority and erred in rulings on Masimo patents’ | Apple accuses Masimo of applying for new patent claims to ‘ensnare’ Apple Watch.
Apple has asked the Federal Circuit to overturn an import ban of certain Apple Watch models to the US, telling the court that the International Trade Commission (ITC) exceeded its authority by issuing the remedial order and made a series of flawed substantive rulings.
The tech giant’s submission to the US Court of Appeals for the Federal Circuit on Friday (April 5) relates to an ITC decision in October last year that the Apple Watch infringed two patents held by Masimo, US patent numbers 10,912,502 and 10,945,648.
Apple said that the resulting import ban of its Series 9 and Ultra 2 Watch models was an “opportunistic exploitation of the commission’s vast injunctive powers to harm a real domestic industry—and the public interest—without any commensurate benefit to US trade”.
It told the court that the ITC’s decision should be reversed, or at a minimum, vacated and remanded.
Stay request denied
In January this year, the Federal Circuit denied Apple’s request to extend a stay of the import ban of its watches pending appeal, and lifted an interim stay that had been granted on December 27, 2023.
The Series 9 and Ultra 2 Apple Watch models had been found to integrate Masimo’s light-based pulse oximetry technology, covered by the ‘502 and ‘648 patents.
Apple has redesigned the infringing products to remove this functionality and their importation and sale has since been permitted, but the company told the court last week that this change had eliminated the ability of new Watch customers to access this feature and jeopardised health studies that relied on it.
Masimo watch ‘never actually existed’
In Friday’s appeal, Apple told that court that Masimo had failed to identify an existing ‘article’ that practised its asserted patents and show domestic investment in it, as required by statute under 19 U.S.C. § 1337(a)(2)-(3).
Masimo’s complaint pointed to a purported ‘Masimo Watch’, Apple said, alleging that Masimo had since conceded that the device pictured in CAD drawings submitted to the court never actually existed and that a watch referred to as the ‘W1’ was not actually built until several months after the complaint was filed.
Apple argued that Masimo had failed to show it had made significant investments in the US with respect to the article protected by the patents, as it “could not possibly show investment in the purely hypothetical item” identified in the complaint.
To protect a domestic industry that did not actually exist, the ITC had issued an import ban “against a flagship device made by a company headquartered in California that directly or indirectly employs over a half-million American employees”, Apple said.
ITC ‘failed in gatekeeping responsibilities’
It also alleged that the healthcare tech firm had acted opportunistically, by “brushing off” a 12-year-old patent application and applying for new claims “manifestly written to ensnare Apple’s new Watch”.
Among the issues presented to the court, Apple also contended that the ITC had erred in concluding that Masimo’s patents were not invalid with regards to obviousness and written description, and in its finding that Apple’s products had infringed them.
Affirming the Commission’s decision would open the door of the agency’s trade forum “to complainants who lack an actual domestic industry but possess pleading creativity and CAD software”, Apple said, telling the court that the ITC had failed to properly exercise its jurisdictional gatekeeping responsibilities.
WilmerHale is representing Apple in its appeal against the ITC decision with a team of Mark Selwyn, Thomas Sprankling, Derek Gosma, Joseph Mueller, Sarah Frazier and David Yin.
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