Apple Inc. V. Masimo Corporation Et Al
Case Background
On October 20, 2022, Apple Inc. filed a patent infringement lawsuit against Masimo Corporation for violating its smartwatch and wireless charger design patents. The case was filed in the United States District Court, Delaware (Wilmington). Judge Jennifer L. Hall presided over this case. [Case number: 1:22cv1377]
Cause
In 2015, Plaintiff Apple launched the Apple Watch, a groundbreaking wearable device that combined advanced technology with stylish design, using high-quality materials. Thanks to substantial investments, the Apple Watch became the best-selling smartwatch ever, protected by various patents.
Apple held several key patents, including U.S. Patent Nos. D735,131; D883,279; D947,842; and D962,936, collectively known as the “Patents-in-Suit.”
Defendant Masimo offered products that infringed on these patents, notably the Masimo W1 device and its charger, known as the “Wireless Charger.” This combination was referred to as the “W1.” Although Masimo traditionally focused on hospital equipment, it entered the consumer wearables market with the W1, choosing to imitate Apple while also filing lawsuits against the Apple Watch.
Masimo had a history in clinical-grade pulse oximetry, primarily selling devices like the Masimo Radical. Its revenue mainly came from disposable biometric sensors. However, as its patents began to expire around 2019, expected royalty income declined, prompting concerns about increased competition.
Recognizing a shift toward consumer health technology, influenced by Apple, Masimo sought to compete in this market despite its lack of experience. In January 2020, it filed a lawsuit against Apple, gaining access to confidential Apple Watch design information. In June 2021, Masimo filed an ITC complaint to ban Apple Watch imports, aiming to eliminate competition.
Masimo introduced the W1 in January 2022 amidst ongoing litigation, showing signs of design copying from the Apple Watch. To expedite the W1’s release, Masimo acquired Defendant Sound United for $1.025 billion in February 2022, launching the W1 on August 31, 2022.
These actions violated Apple’s patent rights, leading Apple to initiate legal proceedings against Masimo.
Damages
Apple owned all rights, title, and interest in the Patents-in-Suit. This ownership included the right to exclude others and seek damages and injunctive relief. Apple requested enhanced damages under 35 U.S.C. Section 284. Additionally, Apple sought pre-and post-judgment interest at the highest rate allowed by law.
As a result of the patent infringements, Apple has suffered extensive damages. Furthermore, Apple faced irreparable harm and would continue to do so unless the Defendants’ infringement was enjoined.
Key Arguments and Proceedings
Legal Representation
- Plaintiff(s): Apple Inc.
- Counsel for Plaintiff(s): David Ellis Moore | Andrew Mark Moshos | Benjamin N. Luehrs | Bindu Ann George Palapura | David J. Cho | David J. Shaw | Dominic Vote | Eli Balsam | Emily Weber | Jamie L. Kringstein | Jeffrey S. Seddon, II | Jennifer Milici | John M. Desmarais | Jordan N. Malz | Joze Welsh | Kerri-Ann Limbeek | Kyle Curry | Lee Matalon | Leon B. Greenfield | Lindsey E. Miller | Maria Tartakovsky | Marie Weisfeiler | Mark A. Ford | Patrick Reilly | Paul A. Bondor | Peter C. Magic | Raymond N. Habbaz | Taeg Sang Cho | William A. Vieth
- Defendant(s): Masimo Corporation | Sound United, LLC
- Counsel for Defendant(s): John C. Phillips, Jr. | Megan C. Haney | Adam B. Powell | Ben K. Shiroma | Benjamin A. Katzenellenbogen | Brian C. Claassen | Brian C. Horne | Carol M. Pitzel Cruz | Douglas B. Wentzel | Irfan A. Lateef | Jared C. Bunker | Jeremy A. Anapol | Jonathan E. Bachand | Joseph R. Re | Justin J. Gillett | Kendall M. Loebbaka | Logan P. Young | Mark Lezama | Marko R. Zoretic | Nicholas M. Zovko | Perry D. Oldham | Raymond Lu | Rhett D. Ramsey
Key Counsel Remarks
Apple accused Masimo of employing legal tactics, including actions in the ITC and other courts, to facilitate its competing smartwatches.
Apple’s attorney, John Desmarais, informed jurors, “We’re not here for the money.” He explained that the company aimed to compel Masimo to “stop copying our design.”
In contrast, Masimo described Apple’s lawsuit as “retaliatory” and an attempt to circumvent ongoing legal matters between the two firms.
Claims
U.S. Patent No. D883,279, titled “Electronic Device,” was officially granted to inventors Jody Akana and others on May 5, 2020. U.S. Patent No. D947,842, also titled “Electronic Device,” was issued to the same inventors on April 5, 2022. On September 6, 2022, U.S. Patent No. D962,936, again titled “Electronic Device,” was awarded to Jody Akana and his team. Additionally, U.S. Patent No. D735,131, titled “Charger,” was granted to them on July 28, 2015. These patents were for the ornamental designs applied to Apple’s products.
It was claimed that the Defendants’ infringement of the above-mentioned patents was willful. The design of the Masimo W1 closely resembled the Apple Watch, indicating that the Defendants likely copied Apple’s design. Apple claimed that the Defendants intentionally ignored Apple’s patent rights.
Additionally, the Defendants infringed the D’131 Patent by making, using, selling, or offering for sale products in the United States that reflected the design claimed in the patent, including the Masimo W1.
The design of the W1 Wireless Charger closely mirrored the D’131 Patent’s design, which could easily mislead an ordinary observer. This infringement violated 35 U.S.C. Section 271.
Defense
The claims of D131, D279, D842, and D936 (collectively, “Apple Patents”) lacked validity due to failing to meet patentability conditions outlined in Title 35 of the United States Code, specifically §§ 102, 103, and 112. This included claims of functional or generic elements, as detailed in Masimo’s invalidity counterclaim.
Masimo denied allegations of patent infringement. The defense argued that Apple pursued U.S. Patent Nos. D883,279, D947,842, and D962,936 against Masimo, despite knowing these patents were fraudulently obtained (“the Sensor Design Patents”). These patents are unenforceable due to inequitable conduct.
While prosecuting the Sensor Design Patents, Apple concealed that these designs were functional and not ornamental, as evidenced by a prior utility patent. Apple also misrepresented the true inventors of the designs. This concealment aimed to mislead the USPTO, which would not have issued the Sensor Design Patents if aware of these misrepresentations.
Apple’s concealment of key material information about inventorship and functionality aimed to deceive the USPTO. The false claims regarding inventorship led to the issuance of the Sensor Design Patents, rendering all related patents equally unenforceable.
Jury Verdict
On October 25, 2024, the Delaware jury sided with Apple. They determined that earlier versions of Masimo’s W1 and Freedom watches and chargers had willfully infringed Apple’s patent rights in smartwatch designs. The challenge for Apple was that these infringements pertained to an older product, which was no longer available for sale. This situation made Apple’s request for an injunction irrelevant.
However, the jury also concluded that Masimo’s current smartwatch models did not infringe on Apple’s patents. This outcome represented a significant win for Masimo.
The jury awarded Apple Inc. $250 million as a statutory remedy for Masimo’s infringement of Apple’s Design Patents.
“Apple mainly aimed for an injunction against Masimo’s current products, and the jury’s decision favored Masimo on that front,” stated Masimo in its response. Masimo added it appreciated the jury’s verdict “in favor of Masimo and against Apple on nearly all issues,” and that the decision only applied to a “discontinued module and charger.”
On the other hand, Apple expressed satisfaction with the jury’s conclusion that Masimo “wilfully infringed Apple’s patented designs.” The company emphasized that its competitor “took shortcuts by launching a device that imitates the Apple Watch and violates our intellectual property.”
Court Documents:
Available upon request
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