Apple Watch changes are enough to work around ITC ban

Apple's software fix to disable a blood oxygen sensing feature in the Apple Watch could be enough to thwart the ITC import ban, U.S. Customs and Border Protection has determined.

The Apple Watch Series 9 and Apple Watch Ultra 2, among other models, are the subjects of a currently-stayed ITC import ban brought about by a Masimo patent infringement complaint. However, it seems that Apple's attempt to work around the ban with changes is enough for U.S. Customs to allow imports to continue.

A Monday Federal Circuit filing from Masimo refers to a January 12 decision by the Exclusion Order Enforcement Branch of U.S. Customs and Border Protection. The filing, spotted by 9to5Mac, explains that the branch has "decided that Apple's redesign falls outside the scope of the remedial orders in the ITC investigation underlying Apple's appeal."

As part of the request, Apple claimed "its Redesigned Watch products definitely (1) do not contain pulse oximetry functionality," the Masimo filing quotes.

However, since Apple maintained that some of the information in the proceeding is confidential, Masimo didn't provide a copy of the decision in the filing. No public release of the filing exists either.

Ultimately, Masimo's attorneys explain, the "EOE Branch decision finding the redesign outside the scope of the remedial orders would eliminate any irreparable harm alleged by Apple."

Minimal sales impact

At face value, the discussion by Masimo in the filing indicates that Apple has done something to the Apple Watch to mean the claims of patent infringement no longer apply, at least in the eyes of U.S. Customs and Border Protection.

However, it isn't explained what has changed. The discussion of a "redesign" could mean physical changes to the hardware, but that would require extensive work and resource consumption to perform in a short timeframe.

The more likely result is Apple's rumored software update, which it submitted to Customs for investigation in late December. Again, while there isn't explicit detail on what the update does, it is likely to simply disable the blood oxygen features.

To consumers, who can still buy a current-gen Apple Watch in the United States since the ITC ban is stayed for the moment, the decision won't immediately change things. Existing stocks of Apple Watch units in the country that have the feature enabled will continue to do so.

What it will affect are units imported into the United States. At that point, Apple will theoretically be selling the Apple Watch with the relevant features disabled.

Apple is highly likely to comment on the situation before it occurs.

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39 Comments

Anilu_777 578 comments · 8 Years

About 10 months ago

Since the patent does not apply to Canada I sincerely and seriously hope that it’s a US only disabling of the feature. Heck - the US gets features that no-one else does or far ahead of others so it should apply in reverse. P.S. I still think Apple should buy Masimo. Problem solved.

tech_traveller 46 comments · New User

I am glad. Whether you like or dislike Apple, medical devices should have some exception to other product categories.

That being said, I hope Masimo gets reimbursed for their troubles.

sdw2001 17460 comments · 23 Years

tech_traveller said:

I am glad. Whether you like or dislike Apple, medical devices should have some exception to other product categories.

That being said, I hope Masimo gets reimbursed for their troubles.

So medical devices should be exempt from intellectual property laws? I don’t think so.

This whole thing is about money. I know that sounds obvious, but what I mean is Apple controls the entire process. They decided it would be more cost-effective to fight it and make changes on the periphery. They could’ve simply cut a big check to license the technology. Who knows what they want for that. Let’s say they wanted $250 million. That’s a core technology for them and the company has a market cap of a little over 6 billion. Apple likely figured that fighting it in court and making changes would cost less. Let’s say 50 million. Ultimately, Apple will win either way. They’re not simply going to tuck their tail between their legs and not sell the Apple Watch anymore. If push comes to shove, could buy Masimo 30 times over just with its cash-on-hand.

teejay2012 409 comments · 12 Years

tech_traveller said:

I am glad. Whether you like or dislike Apple, medical devices should have some exception to other product categories.

That being said, I hope Masimo gets reimbursed for their troubles.

Masimo has become a bit of a troll and it seems the ITC has over reached on their decision.
From iMore, Florian Mueller is a patent expert and legal expert has written, “Apple sometimes engages in bullying, but the ITC’s attack is gratuitous, disingenuous and irresponsible,” noting the ITC’s own record shows that Apple created the disputed pulse oxymetry technology independently and that Masimo “tactically designed the patents-in-suit after Apple’s independent innovation, and more than 10 years after the original applications, in order to read on the relevant Apple Watch feature.”

I think Masimo should get 'rewarded' for the trouble they have caused themselves and their shareholders LOL. They have spent 100 million on this and they only make 120 million a year in profit!

tht 5632 comments · 23 Years

Anilu_777 said:

Since the patent does not apply to Canada I sincerely and seriously hope that it’s a US only disabling of the feature. Heck - the US gets features that no-one else does or far ahead of others so it should apply in reverse. P.S. I still think Apple should buy Masimo. Problem solved.

It’s an import ban for products going into the USA. It won’t affect Watches not sold in the USA.

Apple should not buy Masimo. They do not offer anything of value for Apple. I know a lot of people respond with buying out a patent troll, but all that does is reward the C-suite and major stockholders. The regular workers have a rather high risk of buying laid off.

Apple and Masimo are still in court over this. If Apple invalidates the patents or proves they don’t infringe, the feature comes back to US watches. In the meanwhile they will redesign the feature for future Watches.

I think the odds are good that Masimo will sue Apple for AirPods doing this or that. We will see.