Dive Brief:
- U.S. Customs and Border Protection (CBP) decided Friday that Apple smartwatches redesigned without pulse oximetry are “outside the scope” of U.S. International Trade Commission (ITC) orders in the agency’s investigation of Masimo’s patent infringement claims, a Masimo attorney told a federal court in a Monday.
- The decision by the CBP, which enforces ITC exclusion orders, follows the ITC’s October finding that Apple infringed two of Masimo’s pulse oximetry patents. The ITC banned Apple from selling its Series 9 and Ultra 2 watches with blood oxygen sensors in the U.S., and the Biden administration last month let the decision stand. The watches remain for sale pending appeal.
- “Apple’s claim that its redesigned watch does not contain pulse oximetry is a positive step toward accountability. It is especially important that one of the world’s largest and most powerful companies respects the intellectual property rights of smaller companies and complies with ITC orders when it is caught infringing,” a Masimo spokesperson said in an email to MedTech Dive.
Dive Insight:
While it awaits the outcome of its appeal, Apple is laying the groundwork to bring to market a redesigned smartwatch without the pulse oximetry function at the center of its patent dispute with Masimo.
In Masimo’s letter to the U.S. Court of Appeals for the Federal Circuit, the company’s attorney said Apple explained to the CBP that its redesigned watch products “definitively do not contain pulse oximetry functionality.”
Apple did not respond to a request for comment on its watch redesign. The website 9to5Mac was the first to report on the news.
Apple briefly stopped selling the Series 9 and Ultra 2 watches last month, just before the ITC ban became final on Dec. 26, but resumed sales when a federal appeals court granted a temporary stay of the order.
The Federal Circuit court is now considering whether to extend the stay as it reviews Apple’s appeal of the ITC’s sales ban.
Joe Kiani, Masimo CEO and founder, has said he is open to a settlement over the blood oxygen measuring technology.
BTIG analyst Marie Thibault said the CBP decision is a disappointment for Masimo but the outcome on the stay motion may be more important given “the potential for a settlement between the two parties.”
That ruling could come in the next few weeks, the Masimo spokesperson said.