Apple still pursuing software fix to avoid Apple Watch import ban altogether

AppleInsider

Apple may have been given a stay on an ITC-recommended Apple Watch import ban, but that doesn't mean the saga is over as the company seeks software fixes to satisfy Customs.

Apple Watch Series 9

A judge ruled that the Apple Watch blood oxygen detection system violated Masimo patents, followed by an International Trade Commission recommendation to ban import of violating products. The ban went into effect December 25, but an appeal to the Federal Circuit Court brought some reprieve as a stay on the ban will last at least until January 10, when the ITC will make a final judgment on a stay that will last the duration of Apple's appeals.

According to a report from Bloomberg, Apple isn't resting easy yet, as it wants to avoid a sales ban by any means necessary. The company has submitted a software update to Customs for investigation, which may allow the company to continue sale of Apple Watch Series 9 and Apple Watch Ultra 2 even if a stay isn't granted.

The ITC could deny the extended stay on or before January 10, but if Apple's software update passes Customs' investigation, the Apple Watches could go back on sale as soon as January 12. Apple's software approach with Customs would prove a victory, according to the ITC.

"That forthcoming Customs decision on the redesigns has no bearing on the status of the infringing Apple Watch products, and in fact, a favorable decision by Customs would further undermine any assertion of irreparable harm," the ITC told the Federal Circuit in a December 26 letter responding to Apple's filings.

An ITC litigator, Smith R. Brittingham IV, says Apple's multi-pronged approach makes sense, as Masimo will be left without recourse if Customs says Apple's solution works. On the other hand, Apple can appeal to the US Court of International Trade and then the Federal Circuit Courts again as it fights to sell the Apple Watch.

If Apple emerges victorious with Customs, there's no appeals process for Masimo since the company isn't a part of the Customs dispute. Masimo's entire case rests within the patent system and its claims process with the ITC, while Customs exists to enforce the ITC ruling. They are separate entities.

Masimo would have to file a new ITC petition claiming Apple is violating the sales ban, but it would have to prove the software update still infringed on Masimo's patents. Apple could appeal again and create an endless loop.

Masimo has said it is willing to settle with Apple, but the company hasn't reached out. Speculation suggests Apple could be trying to use Masimo as an example of how patent trolls can take cases all the way to a ban and still not get a settlement.



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coolfactor

I haven't looked closely at the patents in question, but isn't it the general idea of using light that's at issue? That makes it a hardware violation, not software. I can't think of any other way it can be done, so if it is this light-based approach, it sounds like Mosimo holds the cards no matter how Apple changes the software.

coolfactor

TheVerge has a great breakdown of the history.

https://www.theverge.com/2023/12/28/24016913/apple-patent-dispute-masimo-lagemo-true-wearables#

Pulse oximetry was invented by Takuo Aoyagi, not Masimo. While I have been siding with Masimo for the most part, learning more shows that they are trying to claim ownership of ideas that may not truly be their own. Their claims are based mostly on timing of when the ideas were conceived.

Still, Masimo is pushing for ownership of the health-related patents Lamego developed for Apple. Masimo claims Lamego developed the patents’ subject matter while he was employed by Ceracor and because of this, Lamego “had an obligation to assign said subject matter, patents, and patent applications to their employer, Masimo and Cercacor.”

When I see words like "claims", it raises some red flags.

Kierkegaarden

Well written, informative article Wes.  The last point is interesting — maybe they have drawn a red line, and would rather fight and defend than settle.  The latter does seem to have future ramifications.

Kierkegaarden

coolfactor said:

I haven't looked closely at the patents in question, but isn't it the general idea of using light that's at issue? That makes it a hardware violation, not software. I can't think of any other way it can be done, so if it is this light-based approach, it sounds like Mosimo holds the cards no matter how Apple changes the software.

I can’t imagine there is a piece of hardware in the device that is specific to only the feature in question.  Rather, I would think software uses existing hardware (sensors, light, etc) for multiple purposes.  So maybe this is why Apple is claiming that it comes down to the software.

hodar

“Patent Troll” seems to be an unfair label, in this case; based on this quote from the WSJ:

“A few months later, Mr. Kiani said, he got a call from his chief medical officer, Michael O’Reilly, informing him he was joining Apple, which he said had agreed to double his salary and pay him millions in Apple shares […]

Mr. Kiani is one of more than two dozen executives, inventors, investors and lawyers who described similar encounters with Apple. First, they said, came discussions about potential partnerships or integration of their technology into Apple products. Then, they said, talks stopped and Apple launched its own similar features.“

Kierkegaarden

hodar said:

“Patent Troll” seems to be an unfair label, in this case; based on this quote from the WSJ:

“A few months later, Mr. Kiani said, he got a call from his chief medical officer, Michael O’Reilly, informing him he was joining Apple, which he said had agreed to double his salary and pay him millions in Apple shares […]

Mr. Kiani is one of more than two dozen executives, inventors, investors and lawyers who described similar encounters with Apple. First, they said, came discussions about potential partnerships or integration of their technology into Apple products. Then, they said, talks stopped and Apple launched its own similar features.“

Michael O’Reilly started with Apple in 2013 and the other former Masimo employee mentioned in this situation, Marcelo Lamego, started in 2014.  O’Reilly is still at Apple and Lamego left after just a few months to start his own wearables company.  

Is the Masimo CEO claiming that “talks” started before 2013?  Because I’m assuming that hiring former employees might have an effect on any discussions about working together.  But putting that aside, the WSJ is reporting they claimed that “talks stopped and Apple launched its own similar features”.  The feature they must be referring to was released in 2020.  When did “talks” begin, and when did they end?

teejay2012

coolfactor said:

I haven't looked closely at the patents in question, but isn't it the general idea of using light that's at issue? That makes it a hardware violation, not software. I can't think of any other way it can be done, so if it is this light-based approach, it sounds like Mosimo holds the cards no matter how Apple changes the software.

The basis of O2 saturation sensing is 80 years old. Masimo acquired patents that describe data acquisition from the sensor and their remaining patents (most have now been invalidated by the USPTO) are a 'continuation' with slight modifications. So Apple could very well have a software solution.

beowulfschmidt

teejay2012 said:

coolfactor said:

I haven't looked closely at the patents in question, but isn't it the general idea of using light that's at issue? That makes it a hardware violation, not software. I can't think of any other way it can be done, so if it is this light-based approach, it sounds like Mosimo holds the cards no matter how Apple changes the software.

The basis of O2 saturation sensing is 80 years old. Masimo acquired patents that describe data acquisition from the sensor and their remaining patents (most have now been invalidated by the USPTO) are a 'continuation' with slight modifications. So Apple could very well have a software solution.

Exactly true.

The "software solution" could also be to turn O2 sensing off entirely for new watches.

InspiredCode

Although Mark Gurman said it was a software fix, the only software fix that makes sense is disabling the feature since the two patents don’t cover anything that can be changed in software. I read Apple’s response as a proposed hardware change, but I guess we will see.

Xed

coolfactor said:

TheVerge has a great breakdown of the history.

https://www.theverge.com/2023/12/28/24016913/apple-patent-dispute-masimo-lagemo-true-wearables#

Pulse oximetry was invented by Takuo Aoyagi, not Masimo. While I have been siding with Masimo for the most part, learning more shows that they are trying to claim ownership of ideas that may not truly be their own. Their claims are based mostly on timing of when the ideas were conceived.

Still, Masimo is pushing for ownership of the health-related patents Lamego developed for Apple. Masimo claims Lamego developed the patents’ subject matter while he was employed by Ceracor and because of this, Lamego “had an obligation to assign said subject matter, patents, and patent applications to their employer, Masimo and Cercacor.”

When I see words like "claims", it raises some red flags.

Nearly all patents will reference prior patents. It doesn't mean your patent isn't valid. We're talking about ideas here, but implementations. I've had million good ideas in the shower, but how that gets implemented to be both patent worthy and something worth developing into a product is another issue.

From what I've read, I don't think Masimo has a leg to stand on. Using light for measuring something has countless current applications, but how you implement that is the key, so a SW change could be all that is needed for Apple to bypass what Masimo is claiming (although I'm sure they'll claim it's not good enough -and- find other issues for litigation if the over/under is in their favor).

Personally, I don't care if Apple wins or losses. Pulse oximetry isn't going anywhere so if Apple has to pay or not pay, it is what it is.

InspiredCode

Kierkegaarden said:

hodar said:

“Patent Troll” seems to be an unfair label, in this case; based on this quote from the WSJ:

“A few months later, Mr. Kiani said, he got a call from his chief medical officer, Michael O’Reilly, informing him he was joining Apple, which he said had agreed to double his salary and pay him millions in Apple shares […]

Mr. Kiani is one of more than two dozen executives, inventors, investors and lawyers who described similar encounters with Apple. First, they said, came discussions about potential partnerships or integration of their technology into Apple products. Then, they said, talks stopped and Apple launched its own similar features.“

Michael O’Reilly started with Apple in 2013 and the other former Masimo employee mentioned in this situation, Marcelo Lamego, started in 2014.  O’Reilly is still at Apple and Lamego left after just a few months to start his own wearables company.  

Is the Masimo CEO claiming that “talks” started before 2013?  Because I’m assuming that hiring former employees might have an effect on any discussions about working together.  But putting that aside, the WSJ is reporting they claimed that “talks stopped and Apple launched its own similar features”.  The feature they must be referring to was released in 2020.  When did “talks” begin, and when did they end?

The patent system is dumb.  I’m not sure the timeline even matters. The two patents in question were filed by Masimo after the Apple Watch 6 was released and the patent infringement case is a proxy battle over those employees so not much related to them is directly relevant since they are not named in these patents even though this case has everything to do with them.

Basically Apple releases Apple Watch early September 2020, Masimo files patents late September 2020 that are granted in 2021 that looks just like Apple Watch 6, then Masimo sues Apple over Apple Watch 6 infringing on “their” design. All of this was likely done in retribution over employee poaching that is in itself legal in California. I’m not exactly sure how they get away with this, but probably because Masimo had a prior smart watch even though this was clearly just Masimo patenting Apple’s design.

This nonsense is all too common in our legal system.

tht

InspiredCode said:

Although Mark Gurman said it was a software fix, the only software fix that makes sense is disabling the feature since the two patents don’t cover anything that can be changed in software. I read Apple’s response as a proposed hardware change, but I guess we will see.

They don't have to remove the feature. If they only use 1 LED and 1 light sensor for the blood oxygen measurement, it will be enough. The 2 patents the ITC claims Apple to have infringed upon require 2 or more LEDs and 2 or more light sensors. I don't think Apple will do this and fully intends on using a 4 lights with the software update.

But, who knows with all this patent stuff. A judgement for patent infringement is basically like asking for advice from a soothsayer using goat entrails. Really, the words are like goats entrails.

InspiredCode

tht said:

InspiredCode said:

Although Mark Gurman said it was a software fix, the only software fix that makes sense is disabling the feature since the two patents don’t cover anything that can be changed in software. I read Apple’s response as a proposed hardware change, but I guess we will see.

They don't have to remove the feature. If they only use 1 LED and 1 light sensor for the blood oxygen measurement, it will be enough. The 2 patents the ITC claims Apple to have infringed upon require 2 or more LEDs and 2 or more light sensors. I don't think Apple will do this and fully intends on using a 4 lights with the software update.

But, who knows with all this patent stuff. A judgement for patent infringement is basically like asking for advice from a soothsayer using goat entrails. Really, the words are like goats entrails.

Maybe, but there are 5 infringed clauses and that doesn’t cover all of them.

tht

InspiredCode said:

tht said:

InspiredCode said:

Although Mark Gurman said it was a software fix, the only software fix that makes sense is disabling the feature since the two patents don’t cover anything that can be changed in software. I read Apple’s response as a proposed hardware change, but I guess we will see.

They don't have to remove the feature. If they only use 1 LED and 1 light sensor for the blood oxygen measurement, it will be enough. The 2 patents the ITC claims Apple to have infringed upon require 2 or more LEDs and 2 or more light sensors. I don't think Apple will do this and fully intends on using a 4 lights with the software update.

But, who knows with all this patent stuff. A judgement for patent infringement is basically like asking for advice from a soothsayer using goat entrails. Really, the words are like goats entrails.

Maybe, but there are 5 infringed clauses and that doesn’t cover all of them.

The two patents the ITC claims Apple infringes upon require 2 or more emitters and 2 or more light receptors in all independent claims. The dependent claims are irrelevant if you don’t infringe on the independent claim. 

Apple should be ok if they use 1 emitter and 4 light receptors. For example, the software change can drive one emitter to output the same amount of light as four emitters, use 4 light receptors and end up with a measurement that is 99% the same, but use more energy. 

But, Apple’s software change may use all the sensors and change something else. Who knows which part of the patents they are working around. 

The words in the patents are like goat entrails. Examiners try to find truth by looking at them, and the lawyers try to define what the entrails mean (the meaning of the words) and depending on that, it may or may not infringe. 

charlesn

coolfactor said:

Pulse oximetry was invented by Takuo Aoyagi, not Masimo. 

Still, Masimo is pushing for ownership of the health-related patents Lamego developed for Apple. Masimo claims Lamego developed the patents’ subject matter while he was employed by Ceracor and because of this, Lamego “had an obligation to assign said subject matter, patents, and patent applications to their employer, Masimo and Cercacor.”

When I see words like "claims", it raises some red flags.

People keep raising the fact that Masimo didn't invent pulse oximetry as if it's somehow relevant. It's not. The idea that once a technology is "invented," no further patents which improve upon or change that technology are valid is pretty much ignorant of tech patent history. And why should the word "claims" raise ANY red flags in relation to a lawsuit? One side is always making "claims" against another and the whole point of the trial is to determine whether said claims are valid. Masimo's claim here is pretty straight forward and typical: that whatever Lamego developed while employed by Ceracor became the company's intellectual property which he had an obligation to assign to the company. Is this claim true? I don't have enough information to say. I would need to see the terms of Lamego's contract and also determine whether the IP being claimed by the company as theirs was, in fact, developed by Lamego while employed at the company. 

Also: I have no issue if you think that Apple is on the right side of this case, but don't base it on Masimo being a "patent troll." Masimo is a $6 billion company that is the leader in clinical pulse oximetry technology. That doesn't necessarily mean their claims are valid in this case, but they are anything but a patent troll. Apple doesn't meet with patent trolls to discuss their technology and then proceed to hire away their key senior people to go work for Apple at double their salaries.

I strongly disagree with the conclusion of this article about Apple sending a message to patent trolls. No, the message Apple is trying to send is that it's pointless to sue them, period. That they have the money and determination to keep you tied up in court forever and that even if you "win," you'll never see a dime or get a concession from them, but your legal bills will continue to accrue in an endless battle. Apple is sitting on $195+ BILLION in cash... you got enough to hang in against that?