by Dennis Crouch
December 25th, marked the deadline for President Biden to reject the U.S. International Trade Commission’s (USITC) ruling banning imports of certain Apple Watch models. With no action from the White House, Apple now faces a federal government order to halt imports and sales of Apple Watch Series 9 and Ultra 2 devices because it incorporates light-based pulse oximetry technology covered by the claims of Masimo’s U.S. Patent Nos. 10,945,648 (claims 24 and 30) and 10,912,502 (claim 22).
Historically courts regularly issued injunctions to protect the patent monopoly. However, injunctive relief has become much rarer following the after the landmark case of eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388 (2006), where the Supreme Court found no presumption of injunctive relief even against adjudged patent infringers. Rather, before an injunction can issue, a patentee must show that money damages are insufficient and that it will suffer irreparable harm due to any ongoing infringement. But, eBay only applies in district court cases, and does not apply to USITC decisions. In fact, injunction (via exclusion order) is the agency’s primary form of relief granted.
In early 2023, an ITC administrative law judge (ALJ) issued its initial determination that Apple was in violation of Section 337 of the 1930 Tariff Act by importing/selling the watches using. The ALJ sided with Masimo on the ‘648 patent, but sided with Apple on four other patents. Of course, one claim is all you need to show infringement. In October, the ITC Commissioners largely agreed with the ALJ and issued its exclusion order. Under the statute, the exclusion order then goes to the US President who has power to veto the the exclusion order. That timeline ended on December 25 and the exclusion order is no in effect, with Homeland Security (Customs & Border Patrol) authorized to take enforcement action if needed.
In its emergency appeal filed December 26, Apple argues the ITC erred in several ways, including by finding that Masimo had established a domestic industry related to the ‘648 patent at the time its complaint was filed. (Existence of a domestic industry is a prerequisite for the USITC to take action). Apple claims Masimo failed to provide any actual devices practicing the ‘648 patent when requested during discovery. Apple also argues the ITC improperly required the prior art to enable more than the ‘648 patent claims require to invalidate the claims.
Here, the Commission left in place the ALJ’s mistaken conclusion that the five remaining, live claims in this matter are not anticipated or obvious because the prior art allegedly does not enable blood oxygen measurements on the wrist (as opposed to elsewhere on the body)—even though neither patent at issue requires or teaches such measurements on the wrist. . . . But the evidence established that Apple’s prior art reference (Lumidigm) discloses that its sensor can be incorporated into any “portable electronic device,” including wearable
devices.
The USITC is a branch of the US government designed to protect US industry against unfair foreign competition, including importation of infringing products in a way that may harm a domestic industry. See Section 337 of the Tariff Act of 1930. An oddity of this case is that the patentee (Masimo) and the infringer (Apple) are both US companies. But, Apple still imports its products from Asia into the US and so is subject to agency action.
Emergency motion at 5. The emergency motion rhetorically cites what it calls the
“Epstein/Paulsen rule.” See In re Epstein, 32 F.3d 1559 (Fed. Cir.
1994); In re Paulsen, 30 F.3d 1475 (Fed. Cir. 1994). By referring to the legal principles derived from these cases as a particular named rule, Apple is wanting us to recognize that the rule is well-established, binding, and that the result is inevitable. As far as I know, no one has previously referred to the cases in this way.
Additionally, Apple asserts Masimo should have been barred under the doctrine of laches given it kept its application family alive for more than a decade and then filed the application that led to the infringed patent just a week after Apple launched its Apple Watch products. “Masimo has failed to provide any explanation for this convenient timing, which prejudiced Apple by causing it to expend tremendous time and money in developing versions of Apple Watch that Apple might otherwise have altered to avoid any alleged conflict with the asserted claims.” Emergency Motion. This argument is parallel to the ruling in Sonos v. Google.
Apple has moved for both an immediate interim stay of the ITC’s orders, as well as a broader stay pending appeal. Apple contends that without a stay it will suffer irreparable harm from being unable to sell its newest Apple Watch models. It also notes there is a parallel Customs proceeding evaluating whether a redesigned version of Apple’s Watch falls outside the scope of the ITC’s orders, with a decision expected January 12th. Thus, Apple argues that even just a temporary stay until that date would allow it to largely continue business as usual. Note, the particular redesign is current being kept secret by Apple – I expect that it is a software redesign that maintains some oxygen measurement functionality — even if less accurate.
In a December 26th letter, the ITC opposed Apple’s request for both an interim stay and a broader stay pending appeal. The ITC argued that “Apple’s motion for an interim stay fails to establish a likelihood of success on the merits given that Apple raises no genuine legal issues but essentially requests that the Court reweigh the evidence with respect to the Commission’s factual findings on invalidity and domestic industry.” Further, the ITC claimed Apple would not suffer irreparable harm from import restrictions on Apple Watch models with pulse oximetry features. The ITC distinguished the facts here from Allergan Ltd. v. ITC, where restrictions implicated the movant’s entire business.
One question I had about the case is whether, assuming Apple wins on appeal, Masimo will need to repay Apple for the harm caused by the injunction. I heard from Michael Renaud, top IP attorney at Mintz, who told me that costs are possible, but “not commonly granted unless there is a demonstrable record of misconduct.” Renaud is a licensing guy and suggests that Apple built its own woodshed by “deciding to go for the win instead reaching a commercially reasonable resolution.”
Mark Selwyn is lead counsel on appeal for Apple along with his WilmerHale team. Ronald Traud and Houda Morad are the ITC attorneys handling the appeal thus far. Attorneys for Masimo have not yet entered appearances at the Federal Circuit, but I expect that it will be Stephen Jensen & Joseph Re along with their Knobbe Martens team.
Existence of a domestic industry is a prerequisite for the USITC to take action … Apple claims Masimo failed to provide any actual devices practicing the ‘648 patent when requested during discovery.
I mean, Apple’s products practice the ‘648 patent to the extent they infringe it. Can infringing products constitute a domestic industry? It would be an odd loophole in ITC jurisdiction if not. I confess I’m not an expert on the finer points of ITC jurisdiction, but most of the “qualifying activities” cases seem to be about either the patentee’s activities or those of its licensees.
Imagine a case in which there is a valid, enforceable patent that is being flagrantly infringed by all the relevant companies in the US. Suppose further that a reasonable royalty would nonetheless be a substantial one, such that an infringing company can significantly undercut one that took a license. Can the patentee argue that those infringing users constitute a domestic industry, or alternatively that the infringing users have prevented the formation of a non-infringing domestic industry by undercutting them on price?
It doesn’t seem like “everyone’s doing it” should be a valid defense, even given the ITC’s limited jurisdiction.
I don’t think all those facts are necessarily present here, though.
Quick note:
“Must Make” is not the only recognized domestic industry (no matter how hard the Efficient Infringers want to make it so).
I mean, Apple’s products practice the ‘648 patent to the extent they infringe it. Can infringing products constitute a domestic industry? It would be an odd loophole in ITC jurisdiction if not.
No, you may not point to the infringer’s goods as “domestic industry” when you are trying to get an ITC exclusion order. This should be obvious if you pause to think on it. By definition, an ITC exclusion order is there to prevent importation of infringing goods. Once again, by definition, imported goods are not produced domestically. Therefore, you cannot point to those goods that you are trying to exclude as the “domestic industry” that is a precondition to the ITC’s authority to issue an exclusion order.
A fair point as far as it goes, but let’s add that there are both domestic producers who infringe the patent and companies who import infringing goods. The patentee can only seek an exclusion order against the latter, of course, but can they point to the former as evidence of a domestic industry?
Alternatively, suppose there are no domestic producers, only companies importing infringing goods. Can the patentee point to that and say “we’re trying to get a domestic industry going, but we can’t because these infringing imports undercut them”?
Section 337 “appl[ies] only if an industry in the United States, relating to articles protected by the [IP right] concerned, exists or is in the process of being established” (emphasis added). Likewise under Section 337 the domestic industry requirement can be satisfied by a showing of “Substantial investment in exploiting the IP, including engineering, research and development, or licensing.” So you can see how the second scenario could potentially apply, though I don’t know if it has ever come up or how the ITC or Federal Circuit responded.
Pointing to “trying to” IS possible – but needs corroboration.
Yes, you are correct to point to the “in the process” language.
BUT, as I have suggested, the “Substantial investment in exploiting” angle is MET by more than merely “must make,” and includes many other business arrangements (especially including any licensing programs).
Greg may need to be reminded of this as while he professes (falsely) that he cannot see my posts, he may 1gn0re the point unless shoved in his face.
OT, but this is an interesting case. To my mind this is weird in that copyright violation has traditionally been measured by the output not the input.
link to wsj.com
Imagine, a song writer saying that the songs of say Taylor Swift violated copyright laws not because of the similarity in the Swift’s songs with the song writer’s songs but because Taylor Swift learned music by practicing their songs.
Just weird. I think this line of thought goes along with the totalitarian Woke virus that is running through out country and the world. The legal theory seems to violate all that we have cherished that has built our country.
Yeah – the input side is DOA in most all instances (given how lax the precedent provided by the Supreme Court, and other courts, have made “transformative,” and CLEARLY (anyone understanding that the AI engines are actually using mathematical techniques), the training exercise easily falls to Fair Use.
I would actually enjoy seeing these cases adjudicated more quickly so that this type of nonsense filing would be ended.
The more interesting side is contributory/vicarious infringement. The NYT complaint (amusingly) shows exactly how you can trick the models to make copies of their articles. And, of course, we’ve all seen the examples where the AI models output a Getty image clone *with watermark still intact*
Now, MS/OpenAI’s response is presumably that those are the customers’ infringements, not theirs. But…MS/OpenAI also brags to their business customers how well they can block inappropriate output, and have literally exercised that power to prevent reddit trolls from generating satirical (very non-PC) movie posters having Pixar’s animation style.
In legal terms, hasn’t MS/OpenAI established “the right and ability to prevent/supervise the infringing conduct”? Also, given that the AI models generate the pictures/text, aren’t they “materially contributing”?
OC,
Not sure where you have seen the support for, “ presumably that those are the customers’ infringements, not theirs”
Last I heard, they were offering blanket-wide immunity from any such prosecution.
Granted, I could be wrong on this (doubtful, as this would support their current business model).
>In fact, injunction (via exclusion order) is the agency’s primary form of relief granted.
It would be an interesting advantage for domestic manufacturing (MAGA?)…though I suspect the domestic industry requirement sharply reduces that advantage in most real-world cases.
Renaud is a licensing guy and suggests that Apple built its own woodshed by “deciding to go for the win instead reaching a commercially reasonable resolution.”
Strongly agree. I think that Kevin Drum was on to something when he wrote
Sorry, I forgot to close my blockquote there. The last sentence is my own, not part of the Drum quote.
block”q”uote…
More Yglesias schlock – that OMB-TDS in the face of what Biden has wrecked with the nation’s worst (?!) inflation (never mind those Treasury printing presses going full speed – says the Oz-like man behind the curtain as he attempts the latest gaslighting…)
“a”gree —
“everyone except” is no more than the Pharisees do…
Especially when one considers the Woke-like Malcolm’s “one-bucket approach.
Greg – LGM needs to do better.
This obviously would be easy for the CAFC judges to invalidate under 101.
Doesn’t say how it “determine measurements of oxygen saturation of the user.”
And if it did include details, then it would be mere mathematical manipulations that are meant for all to use.
I “get” that you are putting down the CAFC, but some might be confused between claims (the what) and the specification (the how), So I just wanted to add this small note.
anon, this is a broad claim that doesn’t give a how. It just says take the signals and determine. This is typically the type of claim that runs into problems at the CAFC. Their language of claiming all ways magically invalidates claims such as these.
My comment wasn’t just to put down the CAFC.
again – as a point that you yourself have recognized in the past – claims themselves are NOT where the “how” is provided.
Claims must be read in light of the specification. That is where the ‘how’ (and ALL known equivalents to the legal fiction known as Person Having Ordinary Skill In The Art) resides.
anon, I know. The point is not whether this should be eligible for patentability or not but how the meat grinding CAFC will deal with the claim.
The CAFC judges are filth.
Good point. There is a regrettably wide delta between “what a straightforward reading of §101 would class as eligible” and “what the CAFC will acknowledge as §101-eligible.”
bet”w”een…
Why hide the Noah (desperate) attempt to find some excuse other than the quite obvious “Go Woke, Go Broke” catastrophe of the Sprint Left?
Merry Christmas Apple!
You stole Masimo’s innovations. You stole Masimo’s employees.
But you couldn’t steal Masimo’s heart.
Claim 1 includes the limitations of “one or more processors configured to receive one or more signals from at least one of the photodiodes and determine measurements of oxygen saturation of the user.”
I smell a future invalidation for being directed to a judicially-created exception to patentable subject matter.
claims 24 and 30 of the ‘648 patent are at issue here:
20. A user-worn device configured to non-invasively determine measurements of a user’s tissue, the user-worn device comprising:
a plurality of light emitting diodes (LEDs);
at least four photodiodes configured to receive light emitted by the LEDs, the four photodiodes being arranged to capture light at different quadrants of tissue of a user;
a protrusion comprising a convex surface and a plurality of through holes, each through hole including a window and arranged over a different one of the at least four photodiodes; and
one or more processors configured to receive one or more signals from at least one of the photodiodes and determine measurements of oxygen saturation of the user.
24. The user-worn device of claim 20, wherein the protrusion comprises opaque material configured to substantially prevent light piping.
30. The user-worn device of claim 20, wherein the protrusion further comprises one or more chamfered edges.
Also, claim 22 of the ‘502.
19. A user-worn device configured to non-invasively measure an oxygen saturation of a user, the user-worn device comprising:
a plurality of emitters configured to emit light, each of the emitters comprising at least two light emitting diodes (LEDs);
four photodiodes arranged within the user-worn device and configured to receive light after at least a portion of the light has been attenuated by tissue of the user;
a protrusion comprising a convex surface including separate openings extending through the protrusion and lined with opaque material, each opening positioned over a different one associated with each of the four photodiodes, the opaque material configured to reduce an amount of light reaching the photodiodes without being attenuated by the tissue;
optically transparent material within each of the openings; and
one or more processors configured to receive one or more signals from at least one of the four photodiodes and output measurements responsive to the one or more signals, the measurements indicative of the oxygen saturation of the user.
20. The user-worn device of claim 19 further comprising a thermistor.
21. The user-worn device of claim 20, wherein the one or more processors are further configured to receive a temperature signal from the thermistor and adjust operation of the user-worn device responsive to the temperature signal.
22. The user-worn device of claim 21, wherein the plurality of emitters comprise at least four emitters, and wherein each of the plurality of emitters comprises a respective set of at least three LEDs.
The ‘502 claim is interesting in terms of claim drafting. Most patent attorneys don’t employ this level of layering of dependent claims.
Most patent attorneys don’t employ this level of layering of dependent claims.
Did you see the priority claim?
This application is a continuation of U.S. patent application Ser. No. 16/834,538, filed Mar. 30, 2020, which is a continuation of U.S. patent application Ser. No. 16/725,292, filed Dec. 23, 2019, which is a continuation of U.S. patent application Ser. No. 16/534,949, filed Aug. 7, 2019, which is a continuation of U.S. patent application Ser. No. 16/409,515, filed May 10, 2019, which is a continuation of U.S. patent application Ser. No. 16/261,326, filed Jan. 29, 2019, which is a continuation of U.S. patent application Ser. No. 16/212,537, filed Dec. 6, 2018, which is a continuation of U.S. patent application Ser. No. 14/981,290 filed Dec. 28, 2015, which is a continuation of U.S. patent application Ser. No. 12/829,352 filed Jul. 1, 2010, which is a continuation of U.S. patent application Ser. No. 12/534,827 filed Aug. 3, 2009, which claims the benefit of priority under 35 U.S.C. § 119(e) of the following U.S. Provisional Patent Application Nos. 61/086,060 filed Aug. 4, 2008, 61/086,108 filed Aug. 4, 2008, 61/086,063 filed Aug. 4, 2008, 61/086,057 filed Aug. 4, 2008, and 61/091,732 filed Aug. 25, 2008. U.S. patent application Ser. No. 12/829,352 is also a continuation-in-part of U.S. patent application Ser. No. 12/497,528 filed Jul. 2, 2009 , which claims the benefit of priority under 35 U.S.C. § 119(e) of the following U.S. Provisional Patent Application Nos. 61/086,060 filed Aug. 4, 2008, 61/086,108 filed Aug. 4, 2008, 61/086,063 filed Aug. 4, 2008, 61/086,057 filed Aug. 4, 2008, 61/078,228 filed Jul. 3, 2008, 61/078,207 filed Jul. 3, 2008, and 61/091,732 filed Aug. 25, 2008. U.S. patent application Ser. No. 12/497,528 also claims the benefit of priority under 35 U.S.C. § 120 as a continuation-in-part of the following U.S. Design Patent Application Nos. 29/323,409 filed Aug. 25, 2008 and 29/323,408 filed Aug. 25, 2008. U.S. patent application No. 12/829,352 is also a continuation-in-part of U.S. patent application No. 12/497,523 filed Jul. 2, 2009, which claims the benefit of priority under 35 U.S.C. § 119(e) of the following U.S. Provisional Patent Application Nos. 61/086,060 filed Aug. 4, 2008, 61/086,108 filed Aug. 4, 2008, 61/086,063 filed Aug. 4, 2008, 61/086,057 filed Aug. 4, 2008, 61/078,228 filed Jul. 3, 2008, 61/078,207 filed Jul. 3, 2008, and 61/091,732 filed Aug. 25, 2008. U.S. patent application No. 12/497,523 also claims the benefit of priority under 35 U.S.C. § 120 as a continuation-in-part of the following U.S. Design Patent Application Nos. 29/323,409 filed Aug. 25, 2008 and 29/323,408 filed Aug. 25, 2008.
This is what happens when one has a patent application that is intended to be litigated. The claims get continually tweaked from one application to the next.
Applications/claims that are drafted knowing that they are going to be litigated get drafted/prosecuted in a very different way than those applications intended to be simply part of a portfolio that never sees the light of day.
The last time I saw a priority claim that long, I saw a break in the chain that got overlooked. In the filewrapper history of one application in a family of patents, in response to an Office Action, the applicant did nothing more than attempt to fix a priority claim in the specification (they failed to address the rejections nor was any petition filed regarding the belated priority claim). The Examiner would not enter the response as the Examiner did not view it as a bona fide response. No further response was filed by applicant. That application was abandoned A continuation application was filed (prior to the abandonment) that claimed priority to that application (despite the fact the response was not entered by the Examiner) and prior applications. Several further generations of continuation applications were filed thereafter. Information regarding the broken priority chain was provided to the litigators. The case settled shortly thereafter. The patent owner continued to assert infringement of patents in that family against other defendants in the years that followed.
OT, but I am curious – any movement on that design patent case of yours?
claims 24 and 30 of the ‘648 patent are at issue here:
Claim 24: “one or more processors configured to receive one or more signals from at least one of the photodiodes and determine measurements of oxygen saturation of the user.”
Claim 19: “one or more processors configured to receive one or more signals from at least one of the four photodiodes and output measurements responsive to the one or more signals, the measurements indicative of the oxygen saturation of the user.”
Sounds abstract to me. As abstract as a vehicle axle. Or a camera.
… but on another recent thread, Wt thinks 101 is no big deal (apparently), as ‘Congress would surely act if real money was involved’ (single quotes, as I haven’t bothered with an Exact quote for the Grammar Popo).
He’s real deep there.
Anon appears to be confused as to the difference between Congress possibly acting on AI (a hot topic in society as a whole) should it show the potential to generate useful inventions (it hasn’t as of yet) and Congress acting on 35 USC 101 (something that would bore 99.9% of voting populace to tears).
There you go, projecting again.
There is no confusion on my part.
Your past positions, though (i.e., Congress would be concerned if real money was at stake), exhibits either confusion, or shallowness, or both.
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