Apple asked a US appeals court on 5 April to overturn an import ban imposed by a US government agency on certain models of the tech giant’s watches, saying that it had “exceeded its statutory authority” and that its patent rulings were “defective”.

In its filing at the US Court of Appeals for the Federal Circuit, the tech giant said that the agency, the US International Trade Commission (ITC), exceeded its statutory jurisdiction by issuing an injunction in a case where the requisite “domestic industry” was non existent. The patent owner, in this case Masimo, is required to show that it has a domestic industry in practising its own patents. It also argued that the ITC compounded the error by issuing “a series of defective patent rulings”.

The ITC instated an import ban in October on certain models of Apple watches for the infringement of two patents covering technology related to reading blood-oxygen levels owned by medtech company Masimo.

Apple appealed the import ban, it was temporarily paused in December, but reinstated by a US court in January on Apple watches that were found to infringe Masimo’s patented pulse oximetry technology.

Apple started selling its newest models in the US – Series 9 and Ultra 2 – without the blood oxygen measuring feature following the ruling. The US Customs and Border Protection has confirmed that the newest models are not subject to the import ban.

In its court filing on 5 April, Apple noted that Masimo was required by statute to identify an existing “article” that practised its asserted patents and domestic investment in that article. It argued that Masimo failed to show significant investment in the US in relation to the article protected by the patent that it was alleged to have infringed.

Apple continued that some of the claims in the two patents in dispute should have been declared invalid for obviousness and for lack of written description reports.

It also said that after a 12-year delay, “Masimo opportunistically acted six days after Watch Series 6 launched” – this was the first model to include the blood oxygen measuring feature.

It added: “While Masimo has had every chance to justify this undue delay, Masimo has provided no explanation.”

Analysis

Joshua Budwin, a principal at national US trial specialist McKool Smith and a regular litigator at the ITC, said: “I find it telling that Apple’s appeal spends only three pages at the end of its 67-page brief disputing that it infringes Masimo’s patents.”

He pointed out that Apple had already taken its “validity shot” in front of the Patent Trial and Appeal Board which – as Apple acknowledges – “denied institution of inter partes review on both patents at issue in this appeal”.

So, he said, “in effect, we have Apple conceding (without actually admitting) that it infringes Masimo’s patents and that they are more than likely valid”.

He noted that the majority of Apple’s appeal focuses on the ITC’s domestic industry requirement and Masimo’s alleged lack of a patent practising “article” or “item” at the time the case was originally filed.

He believed this was an “overly narrow view of the scope of Section 337”, which focuses more broadly on domestic activities of the patent owner than Apple suggests. Section 337 investigations examine imported goods that are alleged to have infringed IP rights.

He continued that because the ITC is an administrative agency, and because the domestic industry requirement is a unique part of the Commission’s authority, the Federal Circuit should “give deference to the agency’s determination that Masimo satisfied the domestic industry requirements”. 

“This deference, coupled with the high affirmance rate for the ITC in front of the Federal Circuit (around 75%, depending upon the year, source and methodology), shows that Apple has a tough road on appeal,” he concluded.