More patent decisions are being handed down as several long-running patent lawsuits between Masimo Corporation (Nasdaq: MASI) and Apple Incorporated (Nasdaq: AAPL) wrap up. Last week, a jury in the matter of Apple Inc. (Plaintiff) v. Masimo Corporation and Sound United LLC (Defendants) rendered a verdict on a case where Apple accused Masimo of infringing on six of its Apple Watch patents.
Technically, Apple got a win…but realistically, it was a huge victory for Masimo.
See the outcome of Apple v. Masimo in Delaware court
Both Masimo and Apple continue to fight over patent issues, an effort that seemed to pick up steam once Masimo was successful in getting infringing Apple Watch models temporarily pulled off the market until Apple disabled the infringing technology and Customs allowed them to import these neutered versions for sale again. That rare victory by a relatively small player like Masimo, getting products banned by a huge brand like Apple, caused the tech giant to unleash a flurry of actions against Masimo in California and Delaware courts, in the Patent Trial and Appeal Board, at the Appeals Court, and with the International Trade Commission.
A Quick Backgrounder on This Dispute
As long time readers of Strata-gee know, Masimo is a manufacturer of medical products, largely for use in hospitals and other medical facilities. The company has particular expertise in pulse oximetry, the non-invasive measuring of blood oxygen levels. Apple is a large consumer tech company, whose successful Apple Watch product is popular, largely due to its various health tracking sensors.
The two companies engaged in discussions centered around some form of technology partnership or perhaps a joint venture to add pulse oximetry capability to Apple Watch. Those discussions broke down, and according to Masimo, Apple surreptitiously hired its key personnel away – personnel who brought with them company’s trade secrets and technology for use in Apple Watch. Masimo went on to launch a couple of smartwatches of its own that track the users health. The two companies have battled over this situation since that time.
Not All Cases are Going Well for Apple
Not all of those cases by Apple are going well for them. As mentioned above, Masimo was able to convince the U.S. International Trade Commission to ban certain Apple Watch models that infringed on Masimo patents. And now, another case in point: a lawsuit that came to fruition last week, when a jury returned its verdict handing Apple a win…sort of.
Filed back in late 2022 in the U.S. District Court for the District of Delaware, in this particular case Apple alleged that the Masimo smartwatch (and accessory charger) had infringed on three of Apple’s utility patents and another three design patents. The matter was being heard before the Honorable District Judge Jennifer L. Hall.
Over the last two years, there has been an intense back-and-forth between the parties with Judge Hall finally whittling down all of the claims to just one claim against each patent for a total of six matters to be decided by a jury. That trial was held last week and lasted a full five days of testimony. At the end of the day on Friday, a quick verdict came in from the jury.
The Patents at Issue
DESIGN PATENTS
- U.S. Patent No. D883,279 (the “D’279 Patent”)
- U.S. Patent No. D947,842 (the “D’842 Patent”)
- U.S. Patent No. D735,131 (the “D’131 Patent”)
UTILITY PATENTS
- Claim 16 of U.S. Patent No. 10,627,783 (the “‘783 Patent”)
- Claim 1 of U.S. Patent No. 10,987,054 (the “‘054 Patent”)
- Claim 13 of U.S. Patent No. 11,474,483 (the “‘483 Patent”)
Apple: Masimo Infringement Was ‘Willfull’
Apple additionally contends in this action that Masimo’s infringement was “willful.” The concept of a willful infringement is important in patent litigation, as it means that the defendant knowingly and deliberately infringed on a patent that it fully knew about. Plaintiffs must offer “clear and convincing evidence” to establish willfulness – a higher standard of proof than necessary in other patent matters which only require “a preponderance of evidence.”
As Judge Hall noted in her instructions to the jurors, “Defendants Masimo and Sound United deny that they have infringed the Asserted Claims of these patents and contend that certain asserted claims are invalid.”
Masimo Products at the Center of Apple’s Lawsuit
Without getting too deep into the weeds on all of this, Apple’s claims were related to the following Masimo products – W1 smartwatch, Freedom smartwatch, and Health Module. For each of these models, there is an Original Design (the first version of the smartwatch) and a Wave Design (a newer design smartwatch that replaced the Original Design version). Apple further alleged that an accessory Charger from Masimo also infringed on their patent (D’131 patent).
What this means is that for each product, the Original Model and the Wave Model each represents a separate infringement claim.
The Verdict
In the matter of the three design patents, the jury found in favor of Apple in the case of the D’842 Patent for the Original Design (discontinued models) of the Masimo W1, Freedom, and Health Module, as well as the Original Design of the Charger (D’131 Patent). On all of Masimo’s current products, the jury found no infringement.
In the case of the utility patents, the jury found totally in favor of Masimo, finding no infringement of any Apple utility patent in any Masimo product – Original or Wave. Furthermore, the jury found that Masimo successfully proved “by clear and convincing evidence” that Claim 13 of Apple’s ‘483 Patent is invalid due to obviousness.
Apple Awarded a Grand Total of $250
In a final punctuation of this whole matter, the jury awarded Apple – a $3.55 trillion company – just $250 as a “statutory remedy” for Masimo’s infringement. By the way, $250 is the minimum that the jury could penalize Masimo for this infringement.
“Apple told the court that the ‘ultimate purpose’ of its lawsuit was not money, but to win an injunction against sales of Masimo’s smartwatches after an infringement ruling,” according to a report by the Reuters News Agency. Apple added that it was “glad the jury’s decision today will protect the innovations we advance on behalf of our customers.”
Even More Pleased With This Outcome is Masimo
Masimo, on the other hand, seemed much more pleased with the outcome, saying it appreciated the jury’s verdict “in favor of Masimo and against Apple on nearly all issues,” Reuters noted. The health products company added that the jury’s decision “…only applied to a ‘discontinued module and charger.’ Apple primarily sought an injunction against Masimo’s current products, and the jury’s verdict is a victory for Masimo on that issue.”
Masimo said this lawsuit was all about retaliation for its original win against Apple late last year. It also noted that Apple deliberately chose this venue (Delaware District Court) in order to avoid the California court where most of the patent dispute has been heard.
Learn more about Apple at apple.com.
See all that Masimo has to offer at masimo.com.
Leave a Reply